Trademark Law Memo Assignments – Fall 2009

Assignment Three

To:    Junior Lawyer
From:   Senior Lawyer
Date:   November 24, 2009
Re:   Alumni Connections

I just got off the phone with our newest client, February Smith. Ms. Smith wants to start a new company, and she wants us not only to do the corporate formation work but also to advise her on potential trademark problems. Here is the basic idea: Ms. Smith has observed that American colleges and universities have, on the whole, thousands upon thousands of alumni who are alienated from their institutions because the universities usually track them down only in order to solicit donations (or worse – because the universities ignore them). If you take the financial pressure out of the equation, she believes, then these alumni would be enthusiastic about becoming part of online social networks that are based on the alumni affiliation. Inside these networks, alumni could post notes about their lives and hobbies, could network for career advancement, could swap tips about families and vacations, and post remembrances and photos of their days in school. They would not be asked to (or even be able to) contribute money to the university. Alumni of the University of Michigan would sign up for the “U of M Social Network,” and so on. (She’s also thinking globally. Alumni of the Australian National University, for example, would sign up for the “ANU Social Network.”) And she also believes that advertisers would be willing to pay to feed ads to those social networks, thereby creating a viable business for her.

All of this would be set up via a single URL – something like www.alumniconnections.com, though the precise URL is to be determined, since that URL is taken. Users would log in to that site, create an account, then sign up for the alumni network(s) of their choice, each of which would exist in a separate area of the main site. Advertisers, however, would be able to send single ads to multiple alumni networks; in the “Advertisers’ Area” of the site, prospective advertisers would check off boxes next to a college or university name in order to select networks to which their ads would be sent. As more networks were selected, the advertising rates would become more favorable to the advertiser.

The hitch here is that Ms. Smith has no interest in negotiating with each university over rights to use the university’s name or logo or color scheme in her online site and subsidiary sites. It is going to be much easier and simpler – and more lucrative for her – to simply go ahead with the plan and let each alumni network grow naturally via sign ups, word of mouth, and low-cost advertising on Facebook, LinkedIn, and other professional networks.

As of right now, Ms. Smith has not come up with a specific site design or site architecture. That’s good for us, I think, because we can offer her advice without having to ask her to change something that is already in use. Instead, she wants us to advise her regarding possible trademark problems associated with her plan. For any possible problems that we foresee, she wants us to offer solutions that would minimize her risk.

I need your four-page memo no later than Friday, December 18, 2009, at 12 noon.

Rules and Guidelines for Assignment Three

To the extent that these rules may appear to conflict with general advice regarding memos that appears in course-related webpages, these rules take precedence.

This is an “open” problem, meaning that there are no limits on the resources that you may bring to bear on your work. Among other things, you may consult with your classmates and other human beings. If you discuss the merits of the assignment with anyone, however, you must disclose that person’s identity on or in your memo.  Write the names of any student “consultants” at the top of the first page of the memo.

Use your own name in the “From” field.  The memos are not anonymous.

Format

Memos must be typed or printed using a computer. Each memo, including any attachments, must be not longer than four [4] typewritten or printed pages, double-spaced, with 1″ minimum margins on all sides. (“To,” “From,” “Re,” and “Date” headings may be single spaced.) You do not need to include a comprehensive statement of the facts; instead, you may refer to the factual background in my memo to you. A factual summary may be helpful, however, in framing and presenting the analysis of the memo.   No footnotes are permitted. The following font must be used: Twelve [12] point Times New Roman.

Grading

Memoranda will be graded based on form, format, and writing quality as well as on content. The assignments are designed so as not to have any single correct or even best solution. Each problem may present a range of issues that the memorandum should identify, analyze, and solve in a creative way.

Due date

One hard copy of the work product prepared for this assignment must be turned in not later than Friday, December 18, 2009, at 12 noon. Memos may be turned in either to the Registrar’s Window or to Ms. Melissa Shimko, in Room 314. Electronic (e-mailed) copies are not acceptable. Memos slipped under anyone’s door are not acceptable. There were be no extensions or exceptions to this deadline. Memoranda that do not conform to the format instructions above, or that are turned in late, are subject to grade reductions.

Assignment Two

To:     Junior Lawyer
From:   Senior Lawyer
Date:   October 30, 2009
Re:     Bongo Java

I just got off the phone with one of our long-time clients, Bob Bernstein, the owner of Bongo Productions.  Bongo Productions, as you may know, is a long-time fixture of the Nashville, Tennessee coffee scene.  The company operates coffee houses and roasts coffee beans, which it sells in its coffee houses and independently to restaurants and via mail order to retail customers, under the name “Bongo Java.”  Bongo Productions owns two federal trademark registrations for the “Bongo Java” mark, No. 2199249 (for coffee and coffee beans), which issued in September 1996, and No. 2250003 (for coffee house restaurant services), which issued in June 1999.  In both, the company disclaimed any exclusive rights in the word “Java,” either in its original form or its English translation, which is “coffee bean” or “coffee plant.”

Bob is usually a pretty easy-going guy.  In fact, around Nashville he is sometimes known as “Bongo Bob” because of all he has done to help build up Nashville’s reputation as a community that welcomes people interested in progressive arts and culture.  But today he was peeved at a company out in Buena Vista, Colorado, up in the Rocky Mountains above Colorado Springs, which is using the name “Bongo Billy’s Coffees” to market their own coffees.  Apparently, a few years ago Bob heard about the company and had his former lawyer send out some kind of cease and desist letter.  He doesn’t have a copy of the letter, unfortunately, and he thinks that nothing ever came of it.  Buena Vista is still selling Bongo Billy’s Coffees, and Bob heard about them again today.  To quote him, Bob is “peeved” that the company is “stealing our trademark.”

Can you look into this for him?  “Stealing a trademark” isn’t the right way to think about this matter; what Bob wants to know is what he should do here.  What I want to know is what we need to find out in order to give him an answer.  I don’t need to know all of the facts right away, though some facts would be helpful.  Instead, I need a quick summary of what steps we will need to take in order to gather the information needed to assess the problem.  Of course, to figure out what we need to know, you will need to map out the relevant legal rules and tactical options.  So, as part of telling me what we do know and what we need to know, you should explain why we need to know it, or why, in other words, these facts would matter.

I need your memo by Friday, November 13, at 4:30 p.m.

Rules and Guidelines for Assignment Two

To the extent that these rules may appear to conflict with general advice regarding memos that appears in course-related webpages, these rules take precedence.

This is an “open” problem, meaning that there are no limits on the resources that you may bring to bear on your work. Among other things, you may consult with your classmates and other human beings. If you discuss the merits of the assignment with anyone, however, you must disclose that person’s identity on or in your memo.  Write the names of any student “consultants” at the top of the first page of the memo.

Use your own name in the “From” field.  The memos are not anonymous.

Format

Memos must be typed or printed using a computer. Each memo, including any attachments, must be not longer than four [4] typewritten or printed pages, double-spaced, with 1″ minimum margins on all sides. (“To,” “From,” “Re,” and “Date” headings may be single spaced.) You do not need to include a comprehensive statement of the facts; instead, you may refer to the factual background in my memo to you. A factual summary may be helpful, however, in framing and presenting the analysis of the memo.   No footnotes are permitted. The following font must be used: Twelve [12] point Times New Roman.

Grading

Memoranda will be graded based on form, format, and writing quality as well as on content. The assignments are designed so as not to have any single correct or even best solution. Each problem may present a range of issues that the memorandum should identify, analyze, and solve in a creative way.

Due date

One hard copy of the work product prepared for this assignment must be turned in not later than Friday, November 13, 2009, at 4:30 p.m. Memos may be turned in either to the Registrar’s Window or to Ms. Melissa Shimko, in Room 314. Electronic (e-mailed) copies are not acceptable. Memos slipped under anyone’s door are not acceptable. There were be no extensions or exceptions to this deadline. Memoranda that do not conform to the format instructions above, or that are turned in late, are subject to grade reductions.

Assignment One

Memorandum

To: Junior Associate

From: Senior Associate

Date: September 28, 2009

Re: Chippendales USA Appeal

For background to this assignment, please read the opinion of the Trademark Trial & Appeal Board (TTAB) in In re Chippendales USA, Inc., 90 U.S.P.Q.2d 1525 (TTAB 2009). Here is a link to the opinion in case you can’t put your hands on it quickly: http://madisonian.net/downloads/chippendales.pdf

Our client is Chippendales USA, and as you might imagine, the client is appealing the judgment by the TTAB that its Cuffs & Collar mark is not eligible for registration by virtue of its inherent distinctiveness. The case is now in front of the Courts of Appeals for the Federal Circuit.

I need your help in organizing our brief and structuring our appellate argument. I need you to put together a memo that outlines and prioritizes our best arguments.

The point that the client wants to highlight, and that you should analyze, is that neither the TTAB majority nor the dissent really engage with our core argument. That core argument is this: The Trademark Manual of Examining Procedure (TMEP), at section 1301.02(c), provides for registration of a “three-dimensional costume design … for entertainment services.” Clothes worn as a costume, not as “apparel” as such, can be protected as a trademark, at least where the costume is used to portray a particular character, such as Mickey Mouse. The question is whether a “configuration” of apparel such as the Cuffs & Collar mark constitutes a “costume” even though the situation does not involve a specific character, but a concept, or an iconic “type” that audiences recognize based on the costume. We think that this is a solid case for inherent distinctiveness. We developed some good evidence (which the TTAB discusses) that supports the theory, and we offered a legal test that would make the evidence relevant. But both the majority and the dissent on the panel seem to have missed the point. We need to find a compelling way to get the Federal Circuit to accept our test and our evidence. Your job is to start with this core argument and explain in more detail, step by step, how to make that argument persuasive on appeal.  What authorities and what interpretations and applications of those authorities back it up?  If we’re making a novel case, then how do we get the court to extend the law?

In your work, don’t worry about standards of review. I have a strong hunch that we’ll make the case that the TTAB erred as a matter of law in any case.

I need your memo by Monday, October 12, at 4:30 p.m.

Rules and Guidelines for Assignment One

To the extent that these rules may appear to conflict with general advice regarding memos that appears in course-related webpages, these rules take precedence.

This is an “open” problem, meaning that there are no limits on the resources that you may bring to bear on your work. Among other things, you may consult with your classmates and other human beings. If you discuss the merits of the assignment with anyone, however, you must disclose that person’s identity on or in your memo.  Write the names of any student “consultants” at the top of the first page of the memo.

Use your own name in the “From” field.  The memos are not anonymous.

Format

Memos must be typed or printed using a computer. Each memo, including any attachments, must be not longer than four [4] typewritten or printed pages, double-spaced, with 1″ minimum margins on all sides. (“To,” “From,” “Re,” and “Date” headings may be single spaced.) You do not need to include a comprehensive statement of the facts; instead, you may refer to the factual background in my memo to you. A factual summary may be helpful, however, in framing and presenting the analysis of the memo.   No footnotes are permitted. The following font must be used: Twelve [12] point Times New Roman.

Grading

Memoranda will be graded based on form, format, and writing quality as well as on content. The assignments are designed so as not to have any single correct or even best solution. Each problem may present a range of issues that the memorandum should identify, analyze, and solve in a creative way.

Due date

One hard copy of the work product prepared for this assignment must be turned in not later than Monday, October 12, 2009, at 4:30 p.m. Memos may be turned in either to the Registrar’s Window or to Ms. Melissa Shimko, in Room 314. Electronic (e-mailed) copies are not acceptable. Memos slipped under anyone’s door are not acceptable. There were be no extensions or exceptions to this deadline. Memoranda that do not conform to the format instructions above, or that are turned in late, are subject to grade reductions.