TRADEMARK LAW

GOLDEN GATE UNIVERSITY LAW SCHOOL

PROFESSORS HIARING & SPELMAN

FINAL EXAM

MAY 11, 2000


INSTRUCTIONS


This is a closed book exam. There are TWO PARTS to this examination - MULTIPLE CHOICE and ESSAY.

 

PART II - ESSAY QUESTION


The ESSAY segment is worth 100 points out of 200. When answering the essay question be as complete as time allows; please take at least ten minutes before you begin to write your answer. Historically, answers which receive the highest grade are those that are both substantively thorough and thoroughly organized.

 The total exam time is three hours; use your time as you see fit. You may go back and forth between the multiple choice and essay questions. You may not need the entire three hours.

 

Question

Plaintiff develops and designs software to provide his customers with services for secure delivery of electronic mail ("email") over the Internet. Using plaintiff's software, a customer can send secure email correspondence to an email recipient, each using predetermined account identification numbers which, upon validation, allow the recipient to view a secure document which was sent by plaintiff's customer.

The recipient receives the correspondence as an attachment to an email message sent by plaintiff's customer. When the recipient clicks on the attachment, the image of the face of an envelope appears on recipient's screen. The envelope bears plaintiff's logo with a black keyhole design. Plaintiff has placed this logo on all of its marketing materials. Computer software labels, manuals and documentation as well as packaging, promotional and advertising billboards and at a local ballpark prominently. When the recipient's predetermined account identification numbers are validated, for a brief instance, as the underlying document is opened, a large smiley face appears. When the recipient closes its email, the smiley face character appears again and the words "Thank You" appear in a cartoon balloon over the image.

Defendant offers web-based services for delivering, storing, managing and collaborating on information securely over the Internet. Specifically, defendant allows registered users of the service to send secure email documents to email recipients. A security password, rather than an inscription algorithm, creates the security.

Defendant offers other services which allow people to access documents stored in one centralized secure location, a web-based document storage service. All web pages that defendant's users encounter include the defendant's logo in the upper left corner of the page.

Defendant's logo is a black outline drawing of a rectangular file folder with a black keyhole design at the center in graduated, horizontal lines extending from the left edge.

When defendant's user types in the correct password, access to the secure document is facilitated. During the facilitation transfer, a simple, classic, yellow smiley face without any further ornamentation appears.

Plaintiff has filed a complaint for injunctive relief and damages against defendant alleging trademark infringement and false designation of origin, trademark dilution and unfair competition. You are the Clerk of the Court who has been asked to prepare a memorandum for the Judge in preparation for this preliminary injunction hearing.

With regard to both the envelope/keyhole logos and the happy face transition screens, please provide the Judge with an exhaustive outline and analysis of the relevant issues and the suggested, tentative ruling.

 

INSERT IMAGES