Federal Trademark & Copyright Registration Practice

Exam #______

Federal Trademark & Copyright Registration Practice

Spring, 2011 Final Examination

May 4, 2011 Lembree

Instructions:

· This exam counts as 35% of your grade.

· The total possible points assessed for this exam is 100 points.

· Use your exam number; do not use your name anywhere.

· This is a closed book exam.

· Please return this exam to the proctor when you are finished; you may not take it with you, as other students may be taking the exam on a different date. You are responsible for ensuring that no information about this exam is heard or made known to any student who has not yet taken this exam and fully completed it. I ask you to place your exam number on this document not because it should contain answers but to ensure you return it to the proctor and so you may get it back when you are ultimately able to retrieve your graded exam.

· All questions pertain to the United States federal trademark and/or copyright registration systems. The term “PTO” refers to the United States Patent and Trademark Office.

· Section 2 of the Lanham Act is attached for your reference.

· Following is the point distribution:

Question Number / Point Value
1 through 8
(the multiple choice questions) / 5 points each, for a total of 40 points
9(a) through 9(f) / 30
10(a) through 10(f) / 30
Total: / 100

Part I of this exam consists of 8 multiple choice questions. Place the answer to the multiple choice question within your blue book (or electronic blue book, as the case may be).

For each multiple choice question, select the letter that corresponds to the best answer. Select only one letter for each question. You may explain your answer, although you do not need to explain any answer to a multiple choice question. If you choose to write an explanation, it will not result in the loss of points for a correct answer no matter what your explanation says. If your explanation of an incorrect answer shows an ambiguity or problem in a question or response option and your explanation shows that you understand the relevant concept and its application to the facts in the question, you will receive full or partial credit for your answer.

Part II of the exam consists of 2 central fact patterns, each with 6 short answer questions. Please write your answer to Part II in your blue book (or electronic blue book, as the case may be).

Part I. Multiple Choice

1. An applicant filed for federal trademark registration for the mark FOR EYES (standard character) for “retail optical store services.” The optical services include optometrist visits, contact lens fittings, and eyeglasses fittings and sales. The store opened for business six months ago. The trademark examiner for the PTO searched for conflicting marks and found none. She did, however, reject the mark as being merely descriptive. In a response to an office action, the Applicant submitted a Wikipedia entry about nicknames, excerpts of which appear below:

The Applicant also submitted an article that includes the following excerpt:

If the PTO examiner is persuaded by the Applicant’s argument supported by the above evidence and if no opposition to the mark is filed, will the mark achieve registration?

(A) Yes, but the examiner will approve the mark for registration on the Supplemental Register because the entire mark is merely descriptive.

(B) Yes, but the examiner will approve the mark for the Principal Register with a disclaimer of EYES as being merely descriptive.

(D) Yes, the entire mark will be approved for publication on the Principal Register without a disclaimer requirement or 2(f) declaration.

(E) Yes, but the examiner will approve the mark for registration on the Principal Register with a 2(f) declaration.

2. Applicant filed an application to register the mark FUJITECH (plus design), shown below, in International Class 9 for MP3 players, CDs, smart media cards (blank), and various types of cables used with multimedia equipment.

The PTO examiner rejected the mark under Section 2(d) of the Lanham Act for a likelihood of confusion with a number of existing registrations, all of which are in International Class 9.

With respect to the similarity or dissimilarity of the marks factor only, which of the following registered marks is most similar to the applied-for mark?

(A)

(B)

(D) FUJI (standard character)

(E)

ELECTRIC disclaimed

3. Thomas Nelson, Inc. (TNI) has been the substantially exclusive seller of New King James Version bibles continuously since 1979, selling over 62 million NKJV bibles and earning over $500 million in sales revenue from NKJV bible sales over that time period. TNI recently filed an application for registration of the mark NKJV (standard character) for “bibles” in International Class 16. It has been made of record that TNI owns the following registrations:

The PTO examiner rejected the pending application on the basis that NKJV is merely descriptive for bibles. For both registrations and the pending application, TNI is and has been represented by Attorney Edward D. Lanquist, Jr. Attorney Lanquist’s responses to the examiner’s office actions filed with the PTO in the pending application have consistently argued, in the first instance, that NKJV is not merely descriptive and, alternatively, that NKJV has acquired distinctiveness.

Does Attorney Lanquist have an argument that is both persuasive and ethical?

(A) Yes, because NKJV is fanciful, not descriptive.

(B) Yes, because NKJV has acquired distinctiveness.

(D) No, because NKJV lacks acquired distinctiveness.

4. Applicant Gateway Health Plan, L.P. filed a federal trademark registration application for the mark BEEMSS (standard character) for the following services in International Class 36: “Administration of Medicaid managed health care plans” under Section 1(b) of the Lanham Act. The Applicant supplied the below fact sheet as a specimen along with its statement of use (I have supplied the yellow box around the most relevant portion of the specimen for your assistance):

The PTO examiner rejected the specimen and the Applicant appealed to the Trademark Trial and Appeal Board.

Did the TTAB affirm or reverse the PTO examiner?

(A) Affirm, because the specimen does not convey the commercial impression of a mark identifying the source of origin for the Applicant’s services.

(B) Affirm, because the specimen is not substantially exact to the Mark Drawing.

(D) Reverse, because the specimen is substantially exact to the Mark Drawing.

5. Applicant applied to register the mark OUT OF TOWN CAT AND HOUND (standard character), paying the filing fee for one mark and one International Class and listing the following within the Identification of Goods/Services portion of the Application:

animal leashes; clothing for animals; clothing for domestic pets; collars for pets; garments for pets; leashes for animals; luggage; luggage for pets; pet accessories, namely, bowls for pets, beds for pets, and toys for pets

The PTO examiner’s first office action included the following statements about the Identification:

The Applicant does not wish to pay additional filing fees to expand into more than one class, and tells you his most important products are the pet luggage and leashes.

What is Applicant’s best amended Identification to persuade the examiner to withdraw his refusal and maintain as broad of a registration as possible?

(A) Pet accessories, including animal leashes, clothing for animals, clothing for domestic pets, collars for pets, garments for pets, luggage, and luggage for pets

(B) Pet accessories, including animal leashes, clothing for animals, clothing for domestic pets, collars for pets, garments for pets, luggage, luggage for pets, beds for household pets, bowls for feeding pets, and pet toys

(C) animal leashes; clothing for animals; clothing for domestic pets; collars for pets; garments for pets; leashes for animals; luggage; luggage for pets

(D) animal leashes; clothing for animals; clothing for domestic pets; collars for pets; garments for pets; luggage; luggage for pets

6. When making an electronic filing with the PTO, you know the filing has been submitted to the PTO when what has happened?

(A) A serial number is newly assigned after filing a response to an office action.

(B) A screen appears in your web browser entitled “Success” (i.e. the “Success Screen”).

(D) You receive your monthly billing statement for your USPTO deposit account and it shows that the account balance is lower than it was the prior month.

7. The PTO examiner issued a final office action for a mark application on May 4, 2011. In the final office action, the examiner requests a disclaimer of an element of the mark which the examiner asserts is merely descriptive. The Applicant’s attorney realizes that he failed to supply a dictionary definition of the element in question. The dictionary definition could be used to support an argument that the Mark is incongruous. The Applicant instructs its attorney that it will not agree to the disclaimer.

What should be the Applicant’s lawyer’s next steps?

(A) File a petition to revive the application with the Director of the PTO within two months of the date the final office action was issued.

(B) Immediately file a Notice of Appeal with the Trademark Trial and Appeal Board.

(C) Within six months of the issuance of the final office action, file a response in which the Applicant amends its application to comply with the examiner’s disclaimer requirement.

(D) File a request to reconsider the final office action with the PTO, attaching all evidence (including the definition) in support of Applicant’s claim within six months of the issuance of the final office action and file a notice of appeal with the Trademark Trial and Appeal Board within that same time period.

8. A client requesting representation in securing a federal trademark registration for her planned business engages your services. She has not yet begun to sell her product, but she has a prototype nearly at perfection. She asked you to run trademark searches for her top choice names, but has not yet made a decision on which name. Because your trademark search highlights some risk involved with the trademark application, she wants you to go ahead and file the trademark application for her first choice mark but is not yet ready to form her business entity; rather, she will wait until and unless the PTO examiner approves the mark. You file the trademark application for her, and it is registered (once the mark was approved for publication, she began selling the products under the mark as a sole proprietor), despite your fear of a rejection. The client then proceeds to form her business entity and continues selling her products under the mark, but now through the business entity.

What is the appropriate next step in your legal representation?

(A) Nothing. The registration has issued, so there is nothing more to do.

(B) You need to assign the trademark registration, along with all of its goodwill, from the woman who is the individual registrant to the business entity. This should be recorded at the U.S. PTO within three months of the date of the assignment.

(C) You need to assign the trademark registration, along with all of its goodwill, from the woman who is the individual registrant to the business entity. This should be recorded with the Secretary of State’s Office for the state of her location using a UCC-1 form as soon as practicable to perfect the business’ interest in the registration.

(D) File another trademark registration application. The first application used the incorrect applicant, because it listed the individual and not the business entity that actually owns and uses the mark. Using the incorrect applicant causes the application to be void (if a successful challenge emerges). An assignment will not be effective to cure the problem, because it would be without goodwill.

Part II – Short Essay

9. Although ABBYY Software Ltd. asserts that it began using the mark LINGVO for dictionaries, translation software, language learning software, and electronic voice interpretation software in the year 1995, it is undisputed that ABBYY’s use of LINGVO for these goods began at least as early as the year 2000. ABBYY boasts that 5 million users in Russia use its product and that it is the most popular dictionary software in Russia.

On July 30, 2004, Ectaco Inc. filed a federal trademark application for LINGVOSOFT (standard character) under Section 1(a) of the Lanham Act. Following is the TESS page for the LINGVOSOFT registration:

(a) Assume for purposes of this subpart of the question only that today is September 25, 2008 and that you represent ABBYY. If ABBYY wishes to challenge Ectaco’s use of LINGVOSOFT as a trademark using PTO avenues, what would you do as ABBYY’s attorney? Please name the nature of the proceeding you would initiate and describe the grounds within that proceeding and whether said grounds are authorized by the Lanham Act.

(b) Assume for purposes of this subpart of the question only that today is May 4, 2011 (the “real” today) and that you represent ABBYY. Do any of your answers to subpart (a) of this question change? How?