TRADEMARK LAW MEMO ASSIGNMENTS – FALL 2012

Each memo assignment for Trademark Law – Fall 2012 will be posted here approximately two weeks before the memo is due. Time in class will be set aside to discuss questions relating to each assignment.

For students who want to know more about the writing assignments for this course, this is a link to the memo assignments from the Fall 2009 version of the course. This is a link to the best memos written in response to the first assignment from the Fall 2008 version of the course.

You may also review this “How to Memo” document, which summarizes my advice for writing a great memo in my Trademark Law and Copyright Law courses.

Assignment Three

To: Junior Lawyer
From: Senior Lawyer
Re: Anheuser-Busch and Flight
Date: November 27, 2012

As you know, we represent Anheuser-Busch, the producer of Budweiser beer and related products and the owner of the many “Budweiser” trademark registrations (for the name “Budweiser” and for related design marks and trade dress; collectively, these are the “Budweiser marks”). As you may also know, one of the company’s vice presidents complained publicly recently, in the media, about the portrayal of Anheuser-Busch products in the Hollywood motion picture “Flight.” (The plot of the movie features a commercial airline pilot who is an alcoholic. At least at one point during the film, I believe, he is seen drinking Budweiser beer while intoxicated and while driving.) Needless to say, the producers of “Flight” did not obtain Anheuser-Busch’s permission to use the Budweiser marks in the film. The company has publicly taken the position that all copies of the film should be edited digitally, to obscure (blur) the Budweiser marks, so that the company’s products are not associated publicly with alcohol abuse.

The Anheuser-Busch marketing department went ahead with this public demand before the company’s counsel – us – had completed a review of the possible trademark law implications of the appearance of the Budweiser marks in “Flight.”

Can you please write up a brief summary of the possible, plausible legal arguments that Anheuser-Busch could advance if the client decides to pursue formal litigation here? You may assume that Anheuser-Busch owns valid registrations with respect to each of the Budweiser marks that appeared in the film. Even though the media coverage of this dispute has raised the possibility that use of the Budweiser marks might constitute a form of trademark fair use (or otherwise be permitted under some applicable defense), you may assume for now that we are concerned only with Anheuser-Busch’s potential case in chief, and not with fair use or with any other exception, limitation, or defense. What claim(s) might Anheuser-Busch allege, and what specific facts would we need to prove (and how would we go about proving them) with respect to each claim? Where are the claims strong, and where are they weak?\

I need your written, four-page memorandum not later than Friday, December 21, 2012 at 12 noon.

Thank you.

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 of these “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 21, 2012, at 12 noon. Memos may be turned in either to the Registrar’s Window or to Ms. Melissa Shimko, in Room 314, or handed personally to Professor Madison. 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 Associate
From: Senior Lawyer
Re: Primanti Bros. Sandwiches
Date: Nov. 2, 2012

Our client, Primanti Brothers Restaurant Corporation, has engaged our firm over the last few years to implement a robust trademark registration strategy. On our advice, the company has obtained several new registrations, including a design mark in a drawing of the famous Primanti Bros. sandwich (Reg. No. 4,159,845, registered June 19, 2012 on the Principal Register) and a standard character (word) mark in the phrase “Home of the Original Pittsburgh Sandwich.” (Reg. No. 4,227,987, registered October 16, 2012 on the Supplemental Register). Both marks were registered after initial Office Actions by the Examining Attorney rejected the marks on grounds of lack of distinctiveness. In the case of the design mark, we were able to overcome that rejection. In the case of the character mark, we were not able to overcome that rejection.

The client is happy with our work so far, but he (Demetrios Patrinos, the president of Primanti Brothers) wants us to take one more step: He wants to obtain a trademark registration on the famous Primanti Brothers sandwich itself. He is concerned that competitors like Denny’s (the Meat and Potatoes Sandwich) and King’s Family Restaurant’s (the Pittsburgh-Style Sandwich) are appropriating the goodwill of Primanti Brothers by selling similar sandwiches – with French Fries stuffed into the middle of the sandwich, as Primanti Brothers sandwiches do – but without using Primanti Brothers existing design or character trademarks. He believes, and I tend to agree, that these other restaurants are intentionally taking advantage of the fact that Primanti Brothers is famous for this style of sandwich.

However, I am skeptical that the law would permit us to obtain a design mark on an actual food product (in addition to a mark on a drawing, graphic design, or description of a food product). It would be a kind of trade dress, I suppose. I need you to do some thinking for me, so that I can counsel our client. It seems to me that the functionality doctrine in trademark law is the place to start, although if you have additional good ideas, I don’t want to limit your creativity.

Whatever legal doctrine(s) you focus on, I need you to come up with the best possible legal arguments in favor of obtaining a trademark registration for the sandwich itself, and I need you to identify with some specificity the kinds of facts (that is, the kinds of supporting evidence) that we would need to collect in order to support the application in the best possible way. Obviously, I also welcome your thoughts on the likelihood that the application, even with all of its supporting evidence, would be successful.

If it helps you get started, here is the description of the Primanti Brothers sandwich contained in Reg. No. 4,159,845: “a sandwich consisting of French Fries, cole slaw, tomatoes and meat all between two piece of Italian bread.” I have also included a photo, below, of a Primanti Brothers sandwich.

I need your written analysis not later than Monday, November 19, 2012.

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 of these “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 19, 2012, at 3:00 pm. Memos may be turned in either to the Registrar’s Window or to Ms. Melissa Shimko, in Room 314, or handed personally to Professor Madison. 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

To: Junior Associate
From: Senior Lawyer
Re: Chipotle Trademark Strategy
Date: Sept. 28, 2012

Our client, Chipotle Mexican Grill (CMG), has asked us to take a hard look at its current trademark strategy. As you may have seen, CMG recently filed a trademark infringement lawsuit against Jack in the Box concerning Jack in the Box’s use of CMG’s registered “Chipotle” mark in connection with offering Jack in the Box sandwiches for sale. Trademark infringement litigation today is often subject to public scrutiny on blogs and the like, both by members of the public and by trademark practitioners. CMG’s management is concerned by the fact that its Complaint against Jack in the Box attracted some significant public criticism, apparently on the ground that the word “chipotle” refers to a chili pepper that is a common ingredient in some Mexican food, among other things. On the one hand, CMG’s management does not want to engage in a trademark management and litigation strategy that leads to public ridicule. On the other hand, the company has invested a lot of money in its Chipotle brand and related marks, and it is unwilling to allow competitors to damage that good will.

The lawsuit against Jack in the Box was filed on behalf of CMG by a different law firm, not by us.  As things stand right now, that law firm has not been advised by CMG that the company has engaged our firm to undertake this review.

The client has authorized us to prepare a comprehensive review and recommendation regarding its trademark interests going forward, including the Jack in the Box lawsuit. In connection with that assignment, I’d like you to write up a short memo that addresses the following questions:  What steps should CMG take to protect its trademark position, without exposing the company to unneeded legal and business risks?  Are there any steps or actions that CMG should avoid? How should CMG go about dealing with possible trademark concerns (such as arguable infringement problems) in the future?  In each context, of course, the justifications or reasons for your recommendation(s) will be as important to the client as the recommendations themselves.

So that you can see the lawsuit against Jack in the Box, I have created a link to a copy. You can find it here.

I need your written analysis not later than Friday, October 12, 2012.

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 of these “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, October 12, 2012, at 3:00 pm. Memos may be turned in either to the Registrar’s Window or to Ms. Melissa Shimko, in Room 314, or handed personally to Professor Madison. 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.