TRADEMARK LAW MEMO ASSIGNMENTS – FALL 2015

Each memo assignment for Trademark Law – Fall 2015 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.

Sample questions and model answers:  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 are strongly encouraged to read and re-read 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

[The following is a fictionalized story that borrows from real life people, firms, and events.]

To: Junior Lawyer, Dewey, Cheatem & Howe
From: Senior Lawyer, Dewey, Cheatem & Howe
Date: November 30, 2015
Re: Helmets case

I know that it’s been a busy Fall for trademark work. We have one more matter to review.

To mark the release of the upcoming Star Wars film (“The Force Awakens”), our client the National Football League released images of imaginary professional football helmets decorated with themes from the fictional Star Wars universe. Each helmet is a humorous mash-up of an actual NFL team helmet style and a theme or item or character from Star Wars. The NFL controls all rights to the logos of the reall NFL teams, of course, and we can assume that the NFL cleared relevant IP rights with the original designer of the helmets (apparently, that is an artist named John Raya) and with Lucasfilm and Disney, which the NFL assumed owns rights to everything associated with Star Wars. You can see the full lot of the helmets here: http://www.nfl.com/photos/0ap2000000323761/0ap2000000323747

This matter concerns only one of the helmets, for the “Eiseley Troopers,” which is a mash-up of the Indianapolis Colts football helmet and a portrait of an imperial StormTrooper. A photo of the helmet appears below.

Here is an image of the original Stormtrooper helmet design:

The NFL has received notice from the designers of the original Stormtrooper costume, Andrew Ainsworth and the Shepperton Design Studio (SDS), that promotion of the helmets by the NFL violates their rights in the design of the costume under US trademark law. Ainsworth is British and SDS is located in the UK, but of course the costumes have been widely distributed and promoted in the US and around the world. The application of US trademark law isn’t really in question here.  But it has previously been adjudicated both in US and UK courts that Ainsworth and SDS do not own US copyrights in the costumes. Lucasfilm does. So the current claim smells to me a bit like an end-run around US copyright law. Is it? What are the odds of Ainsworth and SDS succeeding here, if they go ahead with a lawsuit? Are there any other defenses to the claim that we might raise?  Are there any other considerations that we should take into account in preparing advice and counsel for the client?

I need your work product — a 4-page memo, max — not later than 12 noon on Friday, December 18, 2015.

Thanks.

Rules and Guidelines for Assignment Three

[The following is substantially identical to the 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.

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

One copy of the work product prepared for this assignment must be turned in not later than Friday, December 18, 2015, 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 Two for this course. 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, Dewey, Cheatem & Howe
From: Senior Lawyer, Dewey, Cheatem & Howe
Re: Wine Trademarks
Date: October 30, 2015

I need you to take a look at a new trademark problem that just walked in the door.

Our client is Union Oaks Wine Co., which is headquartered in the wine country of Sonoma Valley, California. It produces several different varieties of wine under the “Union Oaks” name and mark, including Chardonnay, Merlot, Cabernet, and Sauvignon Blanc. (If you’re not a wine drinker, that’s fine; these are all, in essence, names of grape varieties that are used to distinguish types of wine.) Union Oaks started producing wine in 2000 and started selling it nationally under the “Union Oaks” mark in 2007. Each bottle of Union Oaks wine sold since then had had the words “Union Oaks” printed prominently on the top of the main (front) label of the bottle, in an attractive, stylized script. Union Oaks owns a federal trademark registration for “Union Oaks” as a standard character mark associated with wines and wine-related products. The application was filed on February 18, 2013, and the registration issued on March 25, 2015. No opposition was filed.

However, Union Oaks Wine has received a letter from counsel for a winery based in the Napa Valley, which is also part of California’s wine country but which is one valley to the East of Sonoma Valley. The letter is sent on behalf of the “Oakville Union Winery.” Oakville Union also sells high quality wines, including Merlot, Cabernet, and Sauvignon Blanc wines. It started business in 1992 and started selling wine in bottles in 1995. Oakville Union sells to customers across the US. The letter claims that there is an obvious likelihood of confusion between the “Union Oaks” mark and their “Oakville Union” mark, and it demands that our client cease using the “Union Oaks” mark – or else Oakville Union will petition the Trademark Office for cancellation of the Union Oaks registration.
Because the wine business is a collection of small business owners who, mostly, know each other and each other’s products, our client brought in representative bottles of Oakville Union wines. I’ve taken a quick look, and what leaps out at me is the fact that the current bottles have one label, on the front, which say “Oak Leaf” in a large script at the top, followed by an image of three green oak leaves in a cluster, and below that the name of the wine (Merlot, etc.). At the bottom of the label is the phrase “Oakville Union Winery, Oakville, CA,” in a smaller version of the same script in which “Oak Leaf” appears above.

I was scratching my head a little bit, but the client explained that Oakville Union is known for playing around with its labels. Originally, in 1995, Oakville bottles had a front label that consisted of the “Oak Leaf” name, the leaf design, and the grape, and a back label printed in a simple, small Times New Roman typeface that contained production information (the percentages of each grape type included in that type of wine, and where the grapes had been grown), and the phrase, “Produced by Oakville Union Winery, Oakville, CA.” In 2006, Oakville Union dropped the back label. In 2008, the back label returned, but it only included the “Produced by Oakville Union, Oakville Winery, Oakville, CA” phrase in the same small, simple Times New Roman typeface and nothing else. In June 2015, the back label disappeared again, but the “Oakville Union” phrase began to appear on the front label. I also took a look in the TESS system at the Trademark Office; Oakville Union has no trademark registration for an “Oakville Union” mark.

It seems obvious to me that there’s no real likelihood of confusion between the two names, but the client insists that we prepare a strong response to this letter that argues that the Oakville Union mark is invalid in the first place, or, even if it’s valid, that it’s not prior in time to our client’s mark.

Can you please work up a short memo, not more than 4 pages in length, that sketches Oakville Union’s likely arguments on these points and outlines how we should respond? If there are factual questions that need to be answered in order for you to complete your analysis that I haven’t answered above, indicate what those are and how and why they matter.

I need your work product not later than 3 pm on Friday, November 13, 2015.

Thanks.

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.

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

One copy of the work product prepared for this assignment must be turned in not later than Friday, October 9, 2015, at 3 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 Two for this course. 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

[Helibacon is a real company.  I caution you against searching YouTube for relevant videos.  Hellabacon is a fictional company, selling fictional products.  The fact pattern below is fictional and is made up solely for purposes of this course.]

To: Junior Lawyer, Dewey, Cheatem & Howe
From: Senior Lawyer, Dewey, Cheatem & Howe
Date: September 25, 2015
Re: Hellabacon

Our client is a company known as “Hellabacon,” which produces and sells “Hellabacon” brand bacon products – lean bacon, smoked bacon, flavored bacon, and so on, all under the “Hellabacon” mark.  It’s a startup company based in Austin, Texas, founded early in 2015 by a group of recent University of Texas graduates who figured that they would capitalize on the present fascination with bacon by combining it with the fresh and organic food sensibility that is central to the success of Whole Foods chain of food markets – which is headquartered in Austin.  All of the bacon sold by Hellabacon is produced from farm-raised free range pigs, fed only the highest quality hormone-free organic feed.  Stress-free pigs make tasty bacon, goes the company’s philosophy.  Though the company was started in Austin, it has grown quickly and now sells Hellabacon in organic meat sections of markets in Santa Fe, Boulder, Nashville, and Madison, Wisconsin.

In light of that, Hellabacon was especially surprised and disappointed to receive a cease-and-desist letter recently from a company identifying itself as “Helibacon,” which offers hunting-by-helicopter services in Texas.  Texas, it appears, has a serious problem with feral (wild) pigs consuming farmers’ crops, particularly rice.  There are millions of wild hogs running amok in Texas, destroying hundreds of millions of dollars’ worth of crops each year.  And, it turns out, there is a market for hunters who are enthusiastic about shooting them from the air.  Helibacon has been in business since before 2015, operating legally under Texas law, and, it appears, it claims exclusive rights in the word “Helibacon.” It also claims exclusive trademark rights in its logo, a picture of which appears below.  The design seems to me to evoke the “nose art” with which US airmen decorated their airplanes during World War II.

According to the cease-and-desist letter, our client’s name infringes Helibacon’s trademark rights.  Helibacon is demanding that Hellabacon stop using a sound-alike name.

I did a quick search; Helibacon appears not to have a federal trademark registration or pending application.  I couldn’t find a quick way to search Texas state trademark registrations, so let’s assume for now that Helibacon does not have a state registration, either.  But the letter relies on Helibacon’s common law rights under Section 43 of the Lanham Act, and Helibacon claims that its marks are “inherently distinctive,” whatever that means, and that our client’s name is causing consumer confusion.

Our client has asked us to come up with a quick analysis and strategy for responding to this claim.  I assume that this means that we should start from the ground up, namely, is Helibacon’s claim to the word “Helibacon” even valid in the first place?  If it is, then I suspect that we’ll advise the client to change its name (thoughts on what name to adopt would be welcome – the client wants to use something that means “great bacon”).  But if it is not, the client may want to come back with a strong response.  Much better to come up with a good argument that might force the helicopter hunters to go a different direction.  It’s possible that we need to dig deeper into the facts to figure out what advice to give. So, if we need to gather more information, you should include in your analysis what we need to know, how to figure it out, and why it’s important.

I need your work product by October 9.  Four pages maximum, please.  The client doesn’t want to read any more, and neither do I.

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.

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

One copy of the work product prepared for this assignment must be turned in not later than Friday, October 9, 2015, at 3 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 for this course. 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.