Prof. David Kera

INSTRUCTIONS:

1. This is an open book examination.

2. Please type or print your answers or write your answers in clear handwriting.

3. There are three questions. The point value of each question is printed at the beginning.

4. Please number your answers.

5. For Question two, simply answer T or F. Do not copy the question.

6.Place your examination number on each page of your answer and staple the pages.

Question 1. [50 points]

Quincy Software Company uses the trademark WORCESTER for computer programs for use in drawing geological maps. The WORCESTER software is written and produced in Sunnyvale, California. The city of Worcester, Massachusetts is known as a center of geographical studies but not as a center of computer software development or manufacturing.

Quincy has used the trademark WORCESTER for fifteen years Sales per year have averaged 500,000 discs with a total wholesale value of $5,000,000. Advertising has been published in consumer software magazines and in professional magazines for geographers, geologists and map makers. The advertising campaign has been continuous for fifteen years at an average cost of $100,000 per year. In addition, for the last three years, WORCESTER software has been advertised on the Internet on Quincy's website, QUINCY.COM.

WORCESTER was registered in the Patent and Trademark Office in 1992 for the-goods made and sold by Quincy. The application had been filed on the basis of use of the mark in interstate commerce.

The trademark examiners did not object to the application on the ground that WORCESTER was either geographically descriptive or geographically deceptively misdescriptive.

In 1998, Quincy filed a Declaration of use under 15 USC 1058.

In 1996, Quincy granted a license to Boston Software Partners LLC to use the trademark WORCESTER on computer programs that give the postal zip code and telephone area code when an address anywhere in the United States is entered in the computer. Quincy inspected and approved a prototype of Boston's computer program and Boston's proposed packaging when the license agreement was first negotiated but has not inspected or used the program since that time.

In 1997, Concord Computer, located in New York City, began to use WORCESTECH as a trademark for computer programs on CD Roms that contain over 90 million names, addresses, and telephone numbers. WORCESTECH had been previously used as a trademark by Nashua Associates on computer programs that produced marine charts on PC's for boat owners. Nashua assigned the trademark WORCESTECH to Concord in 1996 for $25,000. Nashua did not transfer to Concord anything except whatever rights Nashua had in the trademark.

Prior to the transfer, Nashua had used the trademark WORCESTECH since 1091 on the computer programs that produced marine charts on PC's. After the assignment of the trademark to Concord, Nashua used the trademark MARINERMAP for its computer programs that produced charts on PC's.

In 1999, Quincy learned of Concord's use of WORCESTECH. Quincy demanded that Concord stop using WORCESTECH. Concord rejected the demand.

Quincy thereupon filed an action against Concord Computers in the United States District court for the Southern District of New York.

1 . What cause of action should be alleged by Quincy?

2. What facts should Quincy allege in support of each cause of action?

3. What defenses should Concord plead in response to Quincy's causes of action?

4. What counterclaims, if any, should Concord plead against Quincy?

5. What facts should Concord plead in support of each counterclaim?

6. What defenses should Quincy plead in response to Concord's counterclaims?

7. What relief, if any, should be awarded to each party (disregard the possibility of damages or accounting of profits)?

Question 2. [20 points] Each of the following True or False questions is worth 2 points:

Every Federal Court of Appeals and District Court uses the same list of factors in deciding likelihood of confusion issues.

Merely descriptive words and deceptive words are treated the same under Sections 1052 of the Trademark Art.

It is not possible to protect trade dress without proving that it has acquired distinctiveness.

d. A word that is primarily geographically deceptively misdescriptive may be registered if it

has acquired distinctiveness regardless of when the distinctiveness was acquired.

e. The relationship of an owner of a trademark is the same with a licensee as it is with a

contract manufacturer.

f. There is a specific definition of goodwill which is the same for all assignments.

g. The configuration or design of a product may be a trademark for that product provided only that the purchasing public recognizes the design.

h. A person's ordinary surname may be a registrable service mark if it is used in the person's business.

i. The standards or criteria for the registration of a trademark are generally the same for the protection of a mark in litigation.

j. The registration of a trademark becomes incontestable on the fifth anniversary date of the
registration.

Question 3 [30 points]

a. (10 points) List the advantages of obtaining a registration of a trademark or service mark

on the Principal Register.

b. (20 points) Describe the policy choices that were made by the drafters of the Trademark

Act in Sections 1052 (d), (e), and (f).

* * * END OF EXAM * * *