ISSUE-SPOTTING OUTLINE FOR FINAL EXAM

U.S. TRADEMARK LAW. FALL 2002. PROF. FLOUM
(Prepared by Professor Floum for Students' Review After Final)

QUESTION 1

Distinctive? Descriptive? Degree of imagination test. Is "Chariots" in common usage in society currently? Secondary meaning? Generic?

Use of own name: "Charlie", "Bob", "Chariotte", "Chang"? Secondary meaning?

Abandonment by Charlie due to non-use?

Naked licensing when Charlie let Loser use name? Quality control?

Abandonment in gross when sold mark to Alan? Different goods/services?

Sleekcraft likelihood of confusion analysis (for each of 3 defendants):
1 Similarity of marks (sight, sound, meaning)
2 Relatedness/proximity of goods or services
3 Strength of plaintiffs mark
4 Similarity of marketing channels
5 Degree of care by purchasers (sophistication)
6 Defendant's intent
7 Evidence of actual consumer confusion 8 Likelihood of expansion (bridging gap)
+ Anything else relevant.

Doctrine of foreign equivalents -- translation of common language (Cantonese)?

Priority: what if Alan's mark not abandoned or chain broken? What if it was?
§ 44 priority for Chariotte or TsingTao?

Extra credit: Concurrent use with Bob's Buggies?
Extra credit: Tacking?

QUESTION 2

General injunction discussion

Is the Slogan "merely descriptive"?

Is it misdescriptive? If so, is it deceptive? If not, secondary meaning?

Suit by U.S. Government:

Section 2(a): Bring national institution or symbol into contempt or disrepute?

Section 2(b) of the Trademark Act. registration of marks which consist of or comprise (whether consisting solely of, or having incorporated in them) the flag, coat of arms, or other insignia of the United States, or simulation of such symbols?

Extra credit: False advertising or misuse of names to indicate a federal agency is proscribed by 18 U.S.C. §709.

TM or 43(a) suit by U.S. Government? Government can own trademarks.
Likelihood that public would think affiliated, sponsored or endorsed by military, since past association?

Is government's mark, if any, famous? Dilution?

Suit by Anti-Defamation Society:

Scandalous?

Disparaging?

Immoral?

Does Society have standing?

Suit by Jeep:

False advertising: Implies H3 will keep driver safe, even from terrorists.

False or misleading description or representation of fact in connection with goods/services?
In interstate commerce?
Tendency to deceive consumers?
Material misrepresentation (affects purchasing decisions)?
Standing?
Literally or explicitly false? Or need to look at consumers?

Extra credit: Trade dress infringement? (The facts don't really indicate)

Defenses:

Parody?
Likelihood of confusion trumps parody.
If parody is of third party, instead of plaintiff, then not a defense.

Puffing?

Non-trademark/fair use/free speech?

QUESTION 3

Website, t-shirts, bumper stickers: Trademark infringement and dilution with the "All you need is a Coke and a smile" and "things go better with Coke" slogans (the "Slogans" ) ?

Slogans posted at www.nudists.com/Coca-Cola. What comes after the slash is not part of main domain name, but rather internal computer designation (Goped) case.

Nudists pays several of the most popular internet search engines to put Nudists' web page at the top of the search results when someone types in "Coca-Cola". Trademark infringement by Nudists? Dilution? Blurring? Tarnishment?

Is Coca-Cola's smell a trademark? Smells can be! If Coke didn't put in a registration, 43(a), common law trademark? Trademark infringement. Dilution?? Is Coke's smell a strong and famous mark? Blurring? Tarnishment, since adding non-edible tree smell to edible Coke smell might put off consumers?

Other potential legal violations:
Unfair competition? Remember this is broader than trademark infringement!
False advertising?

Defendants:
Nudists.
Magazine company? Contributory infringement?
Search engine company? But did search engine company use the mark in commerce?
Extra Credit: other manufacturers and distributors, e.g. t-shirt maker?

Defenses
Has Coke abandoned their old marks through non-use? Intent not to resume use? Extra credit. If Coke's registrations more than 5 years, incontestible, so Nudists can't contest validity or ownership of Coke's marks.

Puffing (not applicable)?

Parody? Is this like Mattel (Barbie) case? Is this valid social commentary? Would Nudists' lawyers, after reading Mattel, argue that Coke is superficial, capitalizes on people's desire to be successful in relationships, etc.?

Non-profit uses, but t-shirts are not traditional media for speech. Are ads traditional media? Bumper stickers? Also if for profit use, but not used to sell goods or services contained in parody, then noncommercial use and may be protected (e.g. L.L. Bean case)?

More protection for non-commercial speech.

Judges may not like nudity.

Statutory fair use?
Nominative fair use (New Kids). Does Nudist need to describe Coke's product to do its ad?
Free speech?