GOLDEN GATE UNIVERSITY
SCHOOL OF LAW

FINAL EXAM
TRADEMARK LAW

FALL 2001

PROFESSOR FLOUM

THIS IS AN OPEN BOOK. OPEN MATERIALS EXAM. You may use any notes, books or other materials to assist you in responding to the questions.

There are three (3) essay questions on this exam. The first question is worth thirty-four (34) points and the remaining two questions are worth thirty-three (33) points each. You have three hours to complete this exam. You are not required to spend the entire time working on the exam - the average time for completion is between two and three hours. You should outline your response to each question, before writing the response. I recommend that you spend one third of the time on each question creating your outline, and the remainder of your time writing your answer. For example, if you spend 1 hour per question, devote 20 minutes to the outline, and 40 minutes writing the answer.

Within each question, important issues will be given greater weight for grading purposes than minor issues. Answer each question as fully as you can, keeping in mind that issue-spotting is the primary purpose of this test. You may also cite any appropriate cases, industry standards, and statutes that are relevant. Write your answer in a blue book, or type it on plain, unmarked typing paper. PLACE YOUR EXAM NUMBER ON EACH BLUE BOOK OR TYPED PAGE. At the end of the exam, please turn in your exam books, scratch sheets, and exam questions.

DO NOT WRITE ON BOTH SIDES OF THE PAGE. WRITE LEGIBLY OR PRINT IF YOUR HANDWRITING IS DIFFICULT TO READ. WRITE ON EVERY OTHER LINE. If I cannot read your response to a question, your grade will be adversely affected.

QUESTION 1

Healthco is a non-profit corporation which educates the public about nutrition. Healthco forms a subsidiary, Subco, to sell food products. All of the profits from Subco will go to educating school children about proper nutrition.

Subco's president reads an article in a food trade magazine claiming that sodas leach the calcium out of pregnant women's bones. In response, Subco develops an allnatural, calcium-fortified soda which has a Mocha flavor, which it calls "Mocha Cola".

Subco creates a television ad which compares "Mocha Cola" to Coca Cola. The ad features an impersonator of a well-known soap opera star, who says "Unlike Coke, this won't leach the calcium out of your bones!" A computer-simulation then shows the impersonator shrinking due to bone loss, until he is only 1 foot tall. At the end of the ad, the narrator says "this commercial is just a humorous joke, but your bone health is no laughing matter. Drink Mocha Cola!" The colors on the can of Mocha Cola used in the ad are similar to Coke's: red and white.

Healthco's president asks you to review the ad and advise him on the following issues: 1) Does the Subco Ad and Mocha Cola product violate any laws, and if so, what laws are violated?; and 2) If Healthco/Subco is sued, who is likely to bring the suit, and what causes of action will be asserted? What defenses are available to Healthco/Subco in response to that lawsuit?

QUESTION 2

Mapco has been manufacturing and selling laminated fold-up maps for use while driving for 15 years. Mapco sells the maps under the mark "Find-Fast", which was registered on the U.S. principal register 4 years and 11 months ago. Mapco licenses its maps to third parties, inspecting the quality of the licensees' maps once every 5 years.

Competeco has sold competing maps under the mark "Locate Quickly" for 3 years. Mapco knows about Competeco, but has ignored that company, since it "doesn't bother with small fry."

Your client is a third company, Carcomp, which provides computerized in-dash map services for luxury cars. Specifically, Carcomp uses global positioning satellite (GPS) technology to tell the driver where he/she is on a city map at any given moment.. The maps are sold under the "PhastFind" mark.

Mapco has written a cease and desist letter to Carcomp, threatening to file a lawsuit and seek a preliminary injunction unless Carcomp immediately changes the name of its in-car map services.

Outline and discuss what legal and factual elements Mapco will have to prove in order to obtain a preliminary injunction in this case. What defenses are available to Carcomp in response to Mapco's effort to obtain an injunction? Who is likely to win in the injunction hearing, and why?

QUESTION 3

Canco runs a successful chain of house cleaning services in Canada under the mark "Clean Sweep". Canco is gearing up to offer its services in the U.S. To date, Canco has not done any house cleaning jobs in the U.S., but its sales representatives have made sales presentations in the U.S., and given free house cleaning demonstrations in California.

Canco has hired you to obtain a U.S. federal trademark for "Clean Sweep". A trademark search turns up an intent-to-use application for the mark "CleanSweeper.com", submitted by Coalco, a company which cleans industrial furnaces at coal burning power plants. The only other remotely similar mark which you find is "Sweep-Clean", a federally registered mark owned by Broomco for use on brooms. Canco's president is a friend of the president of Broomco, and Broomco offers to sell "Sweep-Clean" to Canco for $10,000.00. Broomco no longer uses that mark on its brooms, but instead uses 2 other marks which Broomco has registered.

What legal problems do you anticipate Canco will encounter in the trademark registration process? What steps may Canco take, and what legal arguments may it make, in response to these problems?