FINAL EXAM
TRADE-MARK PRACTICE: TRIAL AND APPEAL BOARD
SUMMER 2002
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
dais 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.
So that non-native English speakers are not penalized, the pronunciation and meaning of some
words is provided; The word "Board" when used in this test refers to the Trademark Trial and Appeal Board.
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 statues 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
Spongeco uses the mark "SOAK-IT-UP" on sponges. Spongeco applied for a
federal registration for the mark in 1996, claiming a first use date of 1990. Spongeco
received a federal registration for the mark on the principal register in 1997.
Diaperco filed an application for the mark "SEW-KID-UP" in 2001 for an extra-absorbent diaper which stays up ( i.e. doesn't fall off easily), since it includes a belt made
out of sewing-thread type string to hold the diapers firmly in place. Diaperco claims a
first use date of 1989 for SEW-KID-UP.
The examining attorney publishes the SEW-KID-UP mark for opposition in 2002,
and Spongeco immediately files a notice of opposition. Diaperco filed a counter-claim for
cancellation of Spongeco's mark.
During the discovery period, Diaperco serves the following set of special
interrogatories on Spongeco:
(1) State all years in which you have used the mark SOAK-IT-UP (the
"Mark") in commerce.
(2) State, in gross dollars, the amount of sales of SOAK-IT-UP brand
sponges for each year you have sold that product in the United States.
(3) State, in gross dollars, the amount you spent to advertise SOAK-IT-UP
brand sponges for each year you have sold that product in the United States.
(4) Identify all documents relating to Spongeco's intent to discontinue using
the Mark in conjunction with sponges.
(S) If you plan to use the Mark on any product other than sponges, identify
such product(s).
(6) Identify all witnesses who you plan to depose during your testimony
period.
(7) Identify all experts you have retained to assist in any way with your
Board litigation with Diaperco.
(8) Identify all surveys which you have conducted regarding the Mark.
(9) Describe the channels of trade in which you sell SOAK-IT-UP brand
sponges.
(10) Describe the advertising channels (i.e. magazines, television, radio, etc.)
you use to promote SOAK-IT-UP brand sponges.
(11) Describe all instances of actual confusion among potential customers of SOAK-IT-UP
brand sponges and SEW-KID-UP brand diapers.
(12) Identify all customers of SOAK-IT-UP brand sponges.
(13) Identify all documents containing the names of customers of SOAK-ITUP brand sponges.
(14) Identify the classes of customers of SOAK-IT-UP brand sponges.
(15) State all facts which support your contention that the Mark is not a name for
(16) State all facts which support your contention that the Mark does not describe your
sponges.
(17) State the year in which you first used the Mark in commerce.
(18) Describe all trademark searches you or your agents have conducted concerning the
Mark.
(19) Describe the opinion(s) that you or your agents formed concerning the trademark search
results identified in your response to the immediately proceeding interrogatory.
(20) State the names and addresses of all of Spongeco's officers.
(21) State all countries in which you, your agents, distributors, affiliates, subsidiaries, parent
company or business partners have sold SOAK-IT-UP brand sponges.
Which interrogatories may Spongeco object to? On what grounds? You do not need to address
any interrogatories which are not objectionable. You should focus on substantive objections (e.g.
relevance or privilege) and not any problems with format (e.g. compound, vague, ambiguous, etc.).
QUESTION 2
Doc Cray owns the registration for the mark "DOC CRAY" for a country music band which plays
nation-wide. "Doc" is short-hand slang for "Doctor". DOC CRAY is based in Dallas, Texas. Doc Cray
obtained a registration for the mark DOC CRAY in 1996.
DR. TRE, a hip-hop rap group based in Brooklyn, New York, has been using the mark "DR. TRE"
since 1997. "Dr." is the abbreviation for "Doctor". "TRE" is pronounced the same as the word "tray". DR.
THE performs on the East Coast, but otherwise has not toured, received radio play, or sold records anywhere else except Wichita, Kansas (in the
center of the United States), where the band knows some local disc jockeys. DR. TRE does not have a
website.
DOCTOR TRE is for a hip-hop band located in Oakland, California. The band files a concurrent use
application for the mark "DOCTOR TRE". "TRE" is pronounced "T-R-E" with the letters spelled out.
DOCTOR TRE performs on the West Coast and no where else, except Topeka Kansas, where the band has
family. DOCTOR TRE does not have a website. The concurrent use application names DR. TRE and DOC
CRAY as exceptions.
DOC CRAY answers DOCTOR TRE's concurrent use application and his attorneys request that the
Board enjoin DR. TRE's use of that mark and that the Board award damages of $3 million dollars for
trademark infringement. DR. TRE calls DOCTOR TRE and is reassured that the two bands can divide their
territories in a friendly manner, and so DR. TRE does not file an answer.
The examining attorney publishes the concurrent use application for opposition, and the matter
goes to the Board for consideration. During the concurrent use proceeding, DOCTOR TRE and DR. TRE
sign a settlement agreement whereby DR. THE can use its mark only in the Eastern United States, DOCTOR
TRE can use its mark only in the West, and neither can use its mark in the middle portion of the United
States.
What will the Board decide as to the concurrent use application? Will the Board uphold the
settlement agreement between DR. THE and DOCTOR TRE? What will the Board decide as to DOC CRAY's
requests for injunctive relief and monetary damages?
QUESTION 3
A citizen of Saudi Arabia with the first name Ben and the last name Laden, with no relationship to
Osama Bin Laden or any Islamic militant group, files an application for the mark "BEN LADEN
CONSTRUCTION" (the "Mark") for use on construction services in the United States.
The specimens submitted with the application consist of a printout from applicant's Saudi-based
website. The specimens show the phrase "BEN LADEN CONSTR." once on each page next to the
company's phone; number and contact information.
The examining attorney issues several office actions tentatively refusing registration based on (1)
abandonment due to applicant's non-use of the Mark in the United States for the period between the first
use date (2000) and the filing date of the application (2002); and (2) likelihood of confusion based upon a
prior registration of the mark "BEEN LOADIN' " for construction services ("loadin' " is short-hand slang
for "loading"). After a series of office actions and responses by the applicant, the examining attorney dropped the abandonment issue but issued a final refusal based on likelihood of
confusion.
Applicant appeals the refusal to the Board. The Board remands back to the
examining attorney for further findings based upon several grounds for refusal that the
examining attorney should have raised. Outline and discuss all possible grounds for
refusal which may potentially be included in the remand by the Board. How should the
examining attorney decide such potential grounds for refusal?