TRADEMARKS AND DECEPTIVE PRACTICES

Mid-Semester Quiz-March 4, 1999

Professor Susan M. Richey


INSTRUCTIONS:

The quiz is open-book and you may take any written material that you wish into ,the exam with you. Do not work with any of your classmates during the quiz. All statutory references are to the Lanham Act unless otherwise indicated.

Use the Scantron -answer sheet provided and select the single best answer for each question. Clearly mark your choice on the Scantron answer sheet. Be certain to follow the proctor's instructions for filling out the Scantron answer sheet; misplaced marks may be read by the scanning machine as incorrect answers. Place your exam number on the Scantron sheet.

You have one hour to complete the quiz unless otherwise instructed by the proctor. You may earn a total of 30 points on this quiz-the quiz contains 12 questions worth 2.5 points each, so pace yourself accordingly.

Fact situation for Questions I and 2

Since 1967, Chimes, Inc., has manufactured and sold handcrafted grandfather's clocks in commerce in the United States. The company prides itself on the unique shapes it chooses for each line of clocks and only markets a particular shape for four years before it discontinues it and releases a new shape of grandfather's clock. The company's promotional materials make clear that the purpose behind a short life for any given shape is to encourage collectors to purchase each new shape as it is released.

1. Cuckoo4U is a partnership formed to market do-it-yourself kits for individuals interested in clockmaking. Cuckoo4U's most popular kit allows purchasers to build a replica of one of Chimes' clocks that was discontinued five years ago; the clock in question is shaped like an upright spoon. If Chimes sues Cuckoo4U for trade dress infringement as a result of sales of the aforementioned kit, what is Cuckoo4U's best defense?

(a) The trade dress is not inherently distinctive, and four years is not a sufficient period of time in which to acquire secondary meaning.

(b) The trade dress has been abandoned by Chimes.

(c) The trade dress is de jure functional.

(d) Chimes has acquiesced in Cuckoo4U's use of the trade dress.

(e) No federal registration exists for the trade dress at issue.

2. Chimes' clocks retail for approximately $30,000 apiece, and there is a brisk secondary market in repair and sale of used clocks whose shapes have been discontinued. Cuckoo4U sells its kits of the spoon-shaped grandfather's clocks for $50. In the trade dress infringement action mentioned above, Chimes is likely to urge what theory in support of the validity and enforceability of its trade dress?

(a) lack of de facto functionality

(b) the Abercrombie & Fitch categories

(c) residual goodwill

(d) Cuckoo4U's lack of quality control over the replicas built from its kits

(e) de facto secondary meaning


Fact situation for Questions 3 and 4

Schoolz, Inc., is a manufacturer of student supplies and has recently patented a new type of ink that can be erased with saliva; thus, all a student need do to erase a mistake is spit on his or her finger and wipe the ink off the page. The patent predicts that the ink, trademarked "Wipe Out," will be the new standard in the industry and states that industry-accepted tests prove the ink to be more easily eraseable than any other commercially-available ink.

3. As trademark counsel to Schoolz, what advice should you give your client with regard to protecting the mark "Wipe Out"?

(a) You advise your client to allow you to review all advertising for the product prior to publication to ensure proper trademark usage.

(b) You advise your client to object in writing to any advertiser or publication that uses the mark "Wipe Out" as a noun or as a verb.

(c) You advise your client to run several advertisements to educate the public that "Wipe Out" is its trademark and should not be used other than as an adjective.

(d) All of the above.

(e) None of the above.

4. Assume that the patent correctly predicted the success of Schoolz' new product. After the patent expires, a competitor desiring to utilize the designation "Wipe Out" to market the same ink would need to be able to prove:

(a) that a majority of the consuming public perceives "Wipe Out" to designate the entire category or genus of goods, i.e., eraseable ink.

(b) that a majority of the consuming public is motivated to purchase Schoolz' eraseable ink because it enjoys the ability to erase ink easily and does not know or care who manufactures the product.

(c) that 1/3 of all potential purchasers of the ink respond to the "Thermos Survey" by stating that "Wipe Out 'is a brand as opposed to a common name of an object.

(d) all of the above.

(e) none of the above.

5. Buff, Inc., owner of a nationwide chain of gyms, offers bodybuilding services and a monthly newsletter to its gym members. Buff s management recently learned that a world-class weightlifter, who advocates home weight training, plans to publish a magazine entitled "Cheat Mother Nature." Fearing that the gym's customers would subscribe to the publication and let their memberships lapse, Buff s management decided to add the subtitle, "Cheat Mother Nature," to its existing newsletter entitled "Buff Stuff," and to refocus the newsletter to tout the benefits of working out in a gym setting. The newsletter containing both marks was mailed to Buff s customers approximately two weeks before the weightlifter's magazine was available on newsstands across the nation. As between Buff and the weightlifter, who has prior rights in the mark "Cheat Mother Nature" for use in conjunction with the sale of printed publications and why?

(a) Buff, because it was first to use the mark in commerce.

(b) Buff, because the weightlifter's use of the mark was a bad faith attempt to reserve a mark in violation of 45.

(c) The weightlifter, because he conceived, i.e., thought about, using the mark before Buff.

(d) The weightlifter, because his use of the mark in commerce satisfies the requirements of 45 and Buff s use does not.

(e) Neither party has prior rights because neither party owns a federal registration for the mark.

6. The fact that the first seller to market chocolates in heart-shaped boxes on Valentine's Day in the United States may not prevent others from using the same container shape for the same purpose illustrates the operation of what doctrine in trademark law?

(a) inherent distinctiveness

(b) genericness

(e) abandonment

(d) de facto secondary meaning

(e) aesthetic functionality

Fact situation for Questions 7 and 8

Bananarama Co., is a newly-formed company planning to specialize in the sale of golf apparel. All of the company's clothing is to bear two trademarks: a small but obvious embroidered yellow banana as well as the word mark "Bananarama." Prior to introduction of Bananarama golf apparel. several hundred pairs of pants were shipped
from the company's manufacturing facilities in New Mexico to retail outlets in Texas for sale to retailers and, ultimately, to consumers. Due to a mistake at the factory, none of the pants contained in the first shipment bore the yellow banana; however, tags bearing the trademark "Bananarama" had been attached to each pair of pants prior to shipment.

7. Will the company be able to rely upon the date of the aforementioned shipment of goods to establish priority for purposes of its use of the yellow banana trademark and why or why not?

(a) Yes, because shipment of goods across state lines constitutes use in commerce under 45.

(b) No, mere transport of trademark-bearing goods across state lines can never constitute use in commerce under 45.

(c) No, because the yellow banana mark was not affixed to the pants prior to the shipment from New Mexico to Texas.

(d) Yes, because tags bearing the trademark "Bananarama" had been attached to the pants prior to the shipment from New Mexico to Texas.

(e) Yes, based on the rule announced in the Qualitex case.

8. Shortly after sale of its first shipment of goods, Bananarama defaulted on its payments under the loan it had received to finance its manufacturing operations. In the loan documents, Banarama had conditionally assigned an intent-to-use application for federal registration of the yellow banana trademark; upon default, the assignment of the application to the lender became immediately effective. What problem, if any, do you see with this assignment?

(a) There is no problem with the assignment.

(b) The assignment must be on file with the United States Trademark Office in order to be perfected.

(c) An assigmnent of an intent-to-use application violates the anti-assignment in gross rule.

(d) The security interest had not yet attached to the assignment.

(e) The terms of the assignment did not take into account UCC provisions.

Fact situation for Questions 9 and 10

Starsite, Inc., is a well-known California corporation offering astrological forecasting services on the Internet under its servicemark "Starsite." The company has obtained a domain name registration for "starsite.com" and maintains a web page at that address where it offers free monthly horoscopes and an opportunity to subscribe to a daily horoscope service by e-mailing credit card information to the company.

9. The fact that NSI granted Starsite the domain name registration in question indicates that:

(a) NSI determined that no other individual or entity had registered the domain name "starsite.com."

(b) NSI determined that Starsite uses the designation "starsite.com" appropriately as a servicemark in its advertising.

(c) NSI determined that granting the registration to Starsite would not infringe the rights of any federal trademark registration owner.

(d) all of the above.

(e) none of the above.

10. Starsite has learned that a number of other domain names have been registered that utilize a variation of the designation "starsite," for example, ~4starssight.com" for a website where candid photos of movie stars are offered for sale and "starsight.com" for a website where telescopes are offered for sale. Starsite has filed an in rem proceeding in the Eastern District of Virginia to protect its trademark "starsite" from such domain name uses. Of what benefit is such a proceeding?

(a) It gives the court jurisdiction over the names themselves and not the registrants who may be difficult to identify and locate for purposes of service of the complaint.

(b) It allows the company to seek redress of its trademark rights in one lawsuit as opposed to numerous lawsuits throughout the United States and abroad wherever the registrants may be located.

(e) It permits Starsite to comply with its duty to police potentially infringing or diluting uses of its trademark on the Internet.

(d) All of the above.

(e) None of the above.

Fact situation for Questions 11 and 12

Dwayne and Delilah Tarbow are a brother and sister singing duo who have been performing country music on the rodeo circuit in the Southwestern United States since January 1998. Recently, Dwayne and Delilah received a letter from a lawyer for Tarbow Records demanding that the two singers cease and desist from performing under the designation "The Tarbows." The letter indicates that the company has used the trademark "Tarbow Records" in conjunction with the sale of classical violin recordings in all major urban areas on the Atlantic Coast since September 1997, and that the company has held a use-based federal registration for the mark since September 1998.

11. Assume that Dwayne and Delilah-as well as everyone else on the rodeo circuit-were unaware of Tarbow Records until they received notification from the company's lawyer. If they choose to continue performing as "The Tarbows," what will be their best defense to issuance of an injunction against them:

(a) that their surname is "Tarbow" and, therefore, they have the unconditional right to continue to use it in conjunction with country music concert services.

(b) the Rectanus defense.

(c) that their quantum of use of the mark has been too sporadic, casual and nominal to qualify as use in commerce for purposes of 45.

(d) the Dawn Donuts defense.

(e) none of the above.

12. In order to settle their dispute with the record company, Dwayne and Delilah offer to take a license for use of the designation "The Tarbows" in exchange for payment of a flat annual royalty fee of $500. The company's president orally agrees to the arrangement, and no additional terms are discussed. As trademark counsel for Tarbow Records, you offer the following advice:

(a) an oral license of trademark rights is invalid.

(b) the royalty fee is too low and is apt to result in abandonment of the mark.

(c) licensing the disputed mark is not a proper way to settle infringement litigation.

(d) the license agreement should have included a written indication of what quality or characteristic the group is known for and a statement of which performer controls that quality.

(e) none of the above.

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