scenarios on trademarks

scenarios on trademarks

“DO NOT JUST SAY YES OR NO”

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#3 Scenarios on Trademarks

1. A snowboard manufacturer sells snowboards bearing the trademark “Temporize.” The key selling point for boards is durability. The manufacturer certifies that every Temporize board will last for ten years under normal use, and the company offers full refunds for any boards that do not.

Question: Is Temporize a trademark or a certification mark?

1. Techi Inc. is a small respected testing laboratory. It tests electronics products to see if they conform to Techi Inc.’s criteria for safety and efficiency. Products that conform may use the certification mark, “Techi Inc. Certified.” Techi Inc is bought by Craven Conglomerate. Craven fires all the scientists at Techi, sells the lab and equipment, and only keeps the certification mark. Craven proceeds to sell the use of the mark to licensees without the licensee meeting any standards or even undergoing any testing. Many companies buy the license to use the mark. Gidgetal Cameras start using the mark without paying the licensing fee or getting permission. 

Question: Can Craven enforce its rights to the certification mark? 

1. The Chamber of Commerce for Manilla County seeks to promote the local grape industry. They register the certification mark “CCMC Certified”  to certify the grapes are grown in Manilla County. After Manilla grapes receive good press, sales skyrocket. The CCMC Certified mark is widely recognized and grapes bearing the mark command a hefty premium. After a county-wide election, the Chamber of Commerce becomes controlled by cronies of the Snopes family, a local grape growing dynasty. The Chamber thereafter refuses to license use of the mark to anyone other than the Snopes family or their affiliates, who only use the mark on grapes frown in Manilla County. The Chamber even refuses permission to potential users who meet the qualifications for certification and offer to pay the fee. 

Question: Does the Chamber have a valid certification mark?

1. Snowboard Manufacturer finished its design and testing of a line of snowboards. It is now considering what to use as a trademark. Which of the following meet the requirements for a trademark?

• A. A word they coined: Zzzzzamplitude 
• B. An image copied from a painting by Vincent Van Gogh
• C.  The Reapers: a phrase copied from the title of a painting by Van Gogh
• D.  A phrase from the US Constitution: Promote the progress of science and the useful arts
• E.  A recording of a nightingale singing
• F.  The smell from a spouting whale
• G.  The melody from Beethoven’s Ninth Symphony, played on a tuba

5.  The leading messenger service in Toledo, Ohio identifies its services with the term “Lightening Messengers.” The term appears on its envelopes, on clothing and bikes of its messengers, on advertising and stationery. People in Toledo are well-acquainted with the firm and regularly advise anyone needing quick service delivery to contact “Lightening.” 

Question: Is Lightening Messengers a distinctive service mark for the messenger firm?

6. Startup Company is planning to sell water in little cardboard boxes, similar to juice boxes already sold for children. They are choosing a potential trademark. The following marks are already in use: Poland Springs, somewhat well known for adult-sized plastic water bottles. Sesame Street for juice boxes (and a famous mark for children’s products). Which of the following would be protected if used as a mark by Startup?

• Tasty Water
• Poland Springs
• Sesame Avenue
• Doctor Dally (a trademark search reveals no use of similar symbol)

7.  Better Batter Co’s advertising campaign for Baffin, a new brand of frozen waffles, appears in the media. The first ads seek to arose curiosity, stating simply,” Baffin: your mornings will never be the same.” Subsequent ads reveal Baffin to be a brand name for frozen waffles and depict the great pleasure consumers will take in toasting and eating the waffles. The campaign is very successful. Consumer surveys show broad public awareness of Baffin as a brand name for waffles, even though not a single Baffin waffle has even been sold or shipped yet. 

Question: Is Baffin an enforceable trademark for waffles?

8.   Impetuous Irma has filed an intent-to-use application for the service mark “Chicken Coop”, which she intends to use to identify her investment advice services. Irma has not yet rendered services to clients, but she is rapidly arranging for the launch of her business in a few months. 

Question: Does Irma have a protectable service mark in “Chicken Coop” used for investment advice services? What if Irma had rendered services in commerce and used the mark in widespread advertising but had not been granted a registration?

9.  Shod seeks to register the mark “Nuzzling Hiking Boots”, which he has been using on the hiking boots he sells. The USPTO examining attorney indicates that she will determine the mark is registrable provided that Shod disclaim the term ”hiking boots.” Shod is greatly affronted at the suggestion that his products do not qualify as hiking boots. He is ready to submit affidavits from any number of hikers who will attest that Shod’s shoes are not just hiking boots, but are some of the best hiking boots around. 

Question: Is it appropriate for Shod to disclaim the Hiking Boots component of the mark?

10.  Artisan makes custom precision instruments for scientific laboratories using the trademark “Salt Flats.” One day, Artisan receives a cease-and-desist letter from Fertilizer Corp. Fertilizer has used the mark “Salt Flats” on bags of manure for decades, although it has remained an obscure mark. Fertilizer obtained a federal registration in 1991 (before Artisan began using the mark) and has kept the registration in place. Fertilizer claims it has nationwide priority in the mark and that Artisan must either license the use of the mark or stop using it. 

Question: Does Fertilizer have priority?

11.  Feit, a sharp operator, seeks to make money from the demand for Westman sunglasses. Feit sets up a Web site that offers Westman glasses for an excellent price, along with a ten-year warranty and insurance against loss. Feit receives hundreds of orders but does not ship the buyers anything. He simply banks the money and goes on to his next venture. When Optig sues for infringement, Feit argues that he has not made the requisite use of the trademark because he did not ship any purported Westman sunglasses. 

Question: Has Feit made the requisite use of the mark for infringement?

12.   Dylan purchases a set of Jake tires. Dylan gets several flat tires over the next year, which he blames on the lousy quality of the tires. Dylan unsuccessfully seeks a refund, along with expenses, from Goodday, the owner of the Jake trademark. Dylan, who lives on a busy road, puts a billboard in his front yard reading, “Jake tires STINK!”  Goodday sues Dylan for infringement of the Jake mark. 

Question: Has Dylan infringed the Jake mark?

13.   Blue Moon is a registered mark for general restaurant services. Coors Brewing subsequently uses Blue Moon as a mark for beer, using a somewhat different design but the same words. The Blue Moon restaurant chain claims infringement. Beer is often served in restaurant they argue, so of course consumers are likely to be confused.

Question:  Likelihood of confusion?

14.  Virgin Enterprises operates numerous businesses under the famous trade name Virgin, including an airline, large record stores, and an Internet information service. It uses the Virgin name on music recordings, computer games, books, luggage, and a variety of electronics products. It was on the verge of going into the cell phone business when it learned that a small operation had begun selling Virgin cell phones and cell phone services.

Question:  Infringement or winning the race?

15.    Bug also uses the term Coca-Cola in the text of her Website, but only in portions that are not visible to humans. She hopes that the uses will be detected by software that searches and indexes Web pages. In fact, her page is listed in various indexes and databases. She has certainly deceived some computers, in the sense software designed to create links to pages associated with various trademarks has linked her page to Coca-Cola. 

Question: There is no showing yet that her use is likely to confuse a human. Trademark infringement?

16.     Haute Diggity Dog sells Chewy Vuiton, a humorous chew toy imitating the famous Louis Vuitton line of handbags. 

Question: Is this trademark infringement?

17. Herbal Products sells an organic remedy for indigestion. In its advertising, Herbal Products states that the product “reduces stomach acids by 25%.” Herbal Products has never done any testing to determine whether the claim is true. A competitor sues for false advertising under Section 43(a). The competitor does not perform the lengthy and expensive human trials that are necessary to prove or disprove the claim. An expert testifies that the claim is not supported by any scientific evidence but is not impossible. 

Question: Is Herbal Products liable for false advertising?

18. Nails has operated several hardware stores in Camptown for many years using the federally registered service mark MugBug Hardware. A local farmer starts selling produce from a roadside stand under the sign “MugBug Veggies”. 

Question: Could Nails bring an action under the federal trademark statute for dilution of the MugBug Hardware mark?

19. National Fast Food Chain introduces a new sandwich under the trademark name Vivoom. The sandwich rapidly becomes famous nationwide. National Fast Food Chain learns that a chain of retail stores in North Dakota has been using the Vivoom mark for several years prior to their registration. National Fast Food Chain sends them a cease-and-desist letter, claiming that further use would dilute the famous Vivoom mark for sandwiches. 

Question: Could the North Dakota stores using Vivoom be subject to an injunction for dilution?

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