TRADEMARK LAW MEMO ASSIGNMENTS – FALL 2013

Each memo assignment for Trademark Law – Fall 2013 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.  The rubric used to mark the memos is available here.

Assignment Three

To: Junior Lawyer
From: Senior Lawyer
Date: Dec. 1, 2013
Re: Dr. Martens Matter

Our firm has been retained to represent the defendant CELS Enterprises in a new case, AirWair v. CELS, filed in the federal district court for the Northern District of California. The client wants us to move forward full-steam ahead on a defense; its view is that fashion designers have been pushing too hard and succeeding too broadly with anti-counterfeiting lawsuits. We are going to take a hard-line stand here. That includes possible arguments that the plaintiff’s marks are invalid as well as that our client has not infringed and/or diluted those marks.

Please take a look at the plaintiff’s Complaint (link below), paying special attention to the factual allegations. At this point, of course, these are merely allegations rather than facts or evidence. I’d like you to draft a summary of the key points of attack – factual and legal – which we will later work into a formal discovery plan and overall strategy. We can’t know right now, of course, which lines of argument are going to succeed, but I’d like you to highlight the key factual and legal questions to ask and the key areas where we should be doing investigation and fact-gathering.

A copy of the Complaint is available here for your review.

Please put your thoughts into a memo of not more than four (4) pages. I need your memo no later than Friday, December 20, 2013 at 12 noon.

Rules and Guidelines for Assignment Three

[The following is substantially identical to the 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, December 20, 2013, at 12 noon. Memos may be turned in either to the Registrar’s Window or to Ms. Caitlin O’Connell, in Room 514, 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 Attorney
From: Senior Attorney
Date: November 1, 2013
Re: To Kill a Mockingbird matter

Our firm has been contacted by the defendant in a trademark infringement lawsuit brought by Harper Lee, the author of the famous American novel To Kill a Mockingbird. The defendant is the Monroe County Heritage Museum in Monroe County, Alabama, which is accused of the unauthorized use of the phrase “To Kill a Mockingbird” in association with the sale of merchandise and other marketing matters.

We are bidding for this work against other law firms that have also been contacted about the representation. I need your help in constructing a strategy that I will propose to the Museum’s Executive Director in the hope that it will lead to our firm’s being retained.

A copy of the Complaint is available here for your review.

As you may know, and as the Complaint describes, Harper Lee and the Museum are also engaged right now in an opposition proceeding in the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office. Harper Lee has applied to register the mark “To Kill a Mockingbird”; the Museum has filed an opposition.

A copy of the Opposition is available here, and a copy of Harper Lee’s response is available here.

Our firm has not been contacted in connection with representing the Museum before the TTAB, but of course the Museum will be interested in understanding how its strategy in the lawsuit and its strategy before the TTAB are related.

I’d like to get your thoughts on the three to five most important arguments to raise in the case, the legal and factual uncertainties associated with each one, and the likelihood of their respective success.

Please put your thoughts into a memo of not more than four (4) pages. I need your memo no later than Friday, November 15, 2013 at 3 p.m.

Rules and Guidelines for Assignment Two

[The following is substantially identical to the 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, November 15, 2013, at 3:00 pm. Memos may be turned in either to the Registrar’s Window or to Ms. Caitlin O’Connell, in Room 514, 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 Partner
Re: “Lucky’s” mark
Date: September 30, 2013

Our office represents Bob Callahan, known as “Lucky.” The nickname has something to do with a childhood run-in with a neighborhood dog; I’ve known him as Lucky even since I met him as a client, 10 years ago, and he claims that he has been known as Lucky to family and friends since he was in high school.

Lucky Callahan owns a restaurant in town, currently called “Lucky’s Cantina.” He has owned a restaurant at that one location under the name “Lucky’s” since 1998; it has been titled, at different times, “Lucky’s Inn,” “Lucky’s Diner,” “Lucky’s Grill,” and, since 2009, “Lucky’s Cantina.”

Recently I came across an opinion from the Sixth Circuit titled Lucky’s Detroit v. Double L, Inc. The upshot of the case, involving two restaurants called “Lucky’s,” appears to be a judgment that forbids the defendant from using that name.

Can you please take a look at that opinion and give me your thoughts as to how it might apply to our client? What’s the risk that he may be required to change the name of his restaurant? Should we advise him to do that now, in order to eliminate that risk? As you might imagine, Lucky Callahan would be reluctant to do that, given his own history, the reputation that he has cultivated over the years, and the expense of making a change now. But please tell me if this recent case suggests that he should, and tell me if there is anything else we should know, or find out, before making that call.

I need your written analysis not later than Friday, October 11, 2013.

The Sixth Circuit opinion is here.

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 11, 2013, at 3:00 pm. Memos may be turned in either to the Registrar’s Window or to Ms. Caitlin O’Connell, in Room 514, 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.