TRADEMARK LAW MEMO ASSIGNMENTS – FALL 2014

Each memo assignment for Trademark Law – Fall 2014 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 One

To: Junior Lawyer
From: Senior Lawyer
Date: Sept. 26, 2014
Re: Pick Chow!

Our client, Online Tools (OT), just lost a summary judgment motion in a trademark case against the U.S. Department of Agriculture. The district court ruled against OT based on the defendant’s likelihood of confusion argument, but the judge took some shots in dicta at the validity of our client’s mark. I’d like you to take a look at the relevant law and facts and come up with a game plan for defending the mark’s validity should this defendant – or anyone else – pursue an argument that the mark is invalid, and either try to have the court order that the registration be cancelled or ask the Trademark Office directly to have it cancelled.

The basic facts are pretty clear, and I’m providing you with the relevant documents. The Amended Complaint (which you can read here) describes the background; our client developed an app for children based on the idea of healthy eating, and the design of the app was registered as a mark with the United States Patent and Trademark Office (you can see the registration here). The registration process apparently was smooth (no opposition was filed), and the mark was registered based on the client’s claim of inherent distinctiveness.

The court’s order on the motion for summary judgment (which you can read here) makes what the client believes are some unnecessary and unwarranted comments about the validity of the mark. I have to say that I, too, am scratching my head a bit. Nonetheless, we need to line up our arguments in anticipation of a more direct attack on the mark’s validity. As I noted above, what is the relevant law, what are our strongest legal claims (and what are our weaknesses, in light of the law), and what additional facts or factual research should we undertake to bolster the mark’s validity?

In addition to the linked documents, here is a link to the client’s mark as it appears in context, on the relevant website. And just for your information, here’s the accused infringing mark from the litigation against the USDA.

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 copy of the work product prepared for this assignment must be turned in not later than Friday, October 10, 2014, at 3 pm. Memos may be turned in (i) via the course TWEN page (on Westlaw), by depositing an electronic copy in the TWEN “Drop Box” for Assignment One for this course, or (ii) via hard copy 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 Associate
From:   Senior Partner
Date:   November 2, 2014
Re:       Quick Eats

Here’s a tasty case for you.  Our client is Quick Eats (QE). QE owns restaurants operating under various names around the Eastern seaboard of the United States, including a small chain of restaurants called “In and Out Eats.” “In and Out Eats” is the name of QE restaurants that have been operating in various beachfront communities in New Jersey, Maryland, Virginia, and North and South Carolina for many decades (in some cases). The first In and Out Eats restaurant opened in Virginia Beach, Virginia, to serve returning U.S. military personnel and their families, sometime after the end of World War II. A second restaurant opened in Wildwood, New Jersey in the early 1950s, and there are a total of 20 restaurants now operating in the chain. The company is a real mom-and-pop outfit, which does almost no advertising outside of the community where each restaurant is located. However, QE has shared with me that it has been exploring possible restaurant locations in other vacation areas in the Eastern U.S. and along major interstate highways on the East Coast, not necessarily restricted to the coastline. It has also shared with me that it has been approached about being acquired by a national restaurant company.

Each In and Out Eats restaurant is a sit-down, family-style restaurant that serves grilled sandwiches, pasta, and drinks that include sodas, milkshakes, and fruit juices. The restaurants serve lunch and dinner, and they sell grilled cheese sandwiches and French Fries on a limited children’s menu. They do not currently offer a take-out or To-Go menu, but apparently the first few restaurants were early, primitive drive-ins.

Quick Eats just received a cease-and-desist letter from In-N-Out Burger, a fast-food hamburger chain that operates well over 150 restaurants under that name from California across the desert Southwest to Texas. In-N-Out sells burgers, fries, sodas, lemonade, and milkshakes in restaurants that apparently look stereotypically “Californian”:  lots of white tile and red trim, palm trees, and a drive-through line. In the letter, In-N-Out claims that it owns a federal registration in the word mark “In-N-Out Burger” that dates to 1976 – and which is now incontestable — and that its common law rights date to the late 1940s. Over the last decade, apparently it has been on an impressive expansion push, moving out of its historic base in Southern California. In-N-Out claims that it just learned recently about QE’s restaurants, via word of mouth in the restaurant industry about QE’s plans to expand. The letter demands that QE change the name of all of QE’s restaurants, because the In-N-Out mark (which I take to refer to the character mark, not any design marks or trade dress) is so well-known throughout the United States.

Quick Eats wants to know what its options are in responding to the letter. Based on my experience with these folks, they’re pragmatists. They’ve got enough money to stand and fight if that’s the prudent thing to do, but they’re wise enough to know not to throw money away. I want you to figure out what the relevant law on this question says, and then I want you to work up a set of issues (both facts and law) that I need to go over with the client. It may be the case that we’ll need to do some factual research here; I don’t want you to do the research itself but instead work up a game plan. What do I need to know before I can give advice here, and why do I need to know it?

Have your memo back to me by 5:00 p.m. on Sunday, November 16.

Rules and Guidelines for Assignment Two

[The following is substantially identical to the Rules and Guidelines for Assignment One, except that the format requirements and submission requirements have been changed.]

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.

So that the memos can be uploaded to the TWEN system in Westlaw (see below), and graded electronically, you must use Microsoft WORD for the final version of the memo.

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

The work product prepared for this assignment must be turned in not later than Sunday, November 16, 2014, at 5:00 pm.

Memos must be turned in via the course TWEN page (on Westlaw), by depositing an electronic copy in the TWEN “Drop Box” for Assignment One TWO for this course.

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 Three

To: Outside Counsel
From: Chief Financial Officer, Penn Petroleum
Date: November 24, 2014
Re: Branding Problem

As you know, over the last 5 years Penn Petroleum has had tremendous success nationwide with the introduction of the first premium fuels for automobiles that blend ethanol (produced from grain, principally corn) and gasoline (produced from petroleum). Our fuels are sold at more than 500 fueling stations and mini-marts (7-11, Casey’s General Store, and the like) under the “E-Go!” mark (the “E” refers to the positive ecological impact of the product, when compared with gasoline), and a stylized logo that we refer to as the “Candy Corn” mark. Both the E-Go! name and the Candy Corn logo are registered marks with the USPTO, and Penn Petroleum has spent upwards of $10 million per year for the last 5 years establishing brand awareness for those marks among travelers and other fuel purchasers.

Many of our distributors are Penn Petroleum franchisees operating fueling stations that, by contract with us, are authorized to sell only E-Go! products. However, some of our distribution is handled by third parties – see the references above to 7-11 markets and Casey’s General Store markets, for example — and that’s where our current problem has arisen. Out in West Des Moines, Iowa, a Casey’s General Store that has been handling E-Go! fuels for the last 3 years (under a 10-year contract with us, which has 7 years left to run) has decided to offer non-E-Go! branded ethanol/gasoline blends in addition to E-Go! fuels. The store has 6 fuel pumps in all. Four of them offer E-Go! branded fuels; two of them offer other – less expensive – ethanol/gasoline blends labeled “Local Gro” (the fuel apparently is supplied by a local ethanol plant). The Local Gro fuels are sold for 10 cents per gallon less than the E-Go! branded products available just a few steps away. So far as I know, each pump is accurately labeled with stickers or signage that tells the customer the brand of the fuel that’s dispensed by that pump.

The store advertises itself on site with a standard tall gas station pole, visible from a significant distance away, that bears 5 foot x 5 foot lighted “Candy Corn” signs supplied by us (here’s an image of the sign). Our contract with Casey’s is not an exclusive distribution arrangement, but that doesn’t mean that Casey’s or anyone else is entitled to free ride on our brands or undermine our business. It’s pretty clear to us that this particular Casey’s is using our brand to attract customers, then selling them cheaper gas (which, we believe, provides Casey’s a better profit margin). Customers in this business often don’t pay a lot of attention to what’s in the pump; we believe that they tend to follow signage that they see from the road and assume that the fuel matches the sign.

This particular Casey’s is visible from the Interstate highway, so it attracts a lot of business from travellers criss-crossing the US. But Casey’s is a giant Middle West operation, with a lot of stores in small, rural communities. Not only are we peeved by what’s happening in West Des Moines, but we’re worried about what might happen on a broader scale.

You’re the trademark expert. What are our options here? I need a workup of our possible legal claims and their strengths and weaknesses (4 pages maximum) by 12 NOON on Friday, December 19, which is the last day of final exams.

Rules and Guidelines for Assignment Three

[The following is substantially identical to the Rules and Guidelines for Assignment One, except that the format requirements and submission requirements have been changed.]

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.

So that the memos can be uploaded to the TWEN system in Westlaw (see below), and graded electronically, you must use Microsoft WORD for the final version of the memo.

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

The work product prepared for this assignment must be turned in not later than Friday, December 19, 2014, at 12 NOON.

Memos must be turned in via the course TWEN page (on Westlaw), by depositing an electronic copy in the TWEN “Drop Box” for Assignment THREE for this course.

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.