Trademark Law

1EXAM NO. ________GEORGETOWN UNIVERSITY LAW CENTER

EXAMINATION IN TRADEMARK LAW(Take-Home Examination)

Professor Rebecca Tushnet

INSTRUCTIONS:

1. This is an OPEN book exam. You may consult any inanimate object; however, no credit will be given for citations to any materials that were not assigned for this course. You may not discuss the content of this exam with any other person, whether or not that person is enrolled in this class. Although the questions are based on real situations, I have changed the facts in ways subtle and not-so-subtle, so you could really do yourself more harm than good by looking for outside information on the fact patterns.

2. This 8 hour exam must be picked up and returned using the Online Exam/Paper Management System. This exam will be available throughout the exam period. You may only work on the exam for 8 hours.

3. Structure: There are 5 questions. Each is worth a stated percentage of the total exam grade. You should allocate your effort accordingly.

4. There is no specific word limit. Thus, please think, organize, and prioritize carefully before you write. Cogent, well-structured answers that devote the most analysis to the most important issues will be graded more highly; poorly-organized, ungrammatical, or chronically misspelled answers will receive lower grades. Please do not waste space by restating the question or the facts of cited cases. If you need additional facts to answer a question, please state the specific facts needed and how they would affect your analysis. Also, please don’t call a person “he” if she’s clearly identified in the facts as female. I reserve the right to deduct points if you do.

5. This exam is final. There will be no clarifications or any changes. If you believe there is an error, inconsistency, or omission in the exam, please state your assumptions about the issue within your discussion of that issue.

6. Citation to relevant materials is required in order to receive full credit. Please indicate why the cited materials are relevant. You do not need to use Bluebook form. For example, simply state: (Wal-Mart) or (§43(a)) or (§1127(a)) – either form for the statutory citation is fine. You can use italics, bold, or whatever you’re most comfortable with to indicate case names.

7. In answering these questions, assume that jurisdiction is proper and that there are no statute of limitations or other general procedural bars.

This exam consists of 13 pages, including this cover page. Please be sure your exam is complete.

Please be sure that you use your exam number (not your student ID number or social security number).

BY SUBMITTING THIS EXAM THOUGH THE ONLINE SYSTEM, I AFFIRM ON MY HONOR THAT I AM AWARE OF THE STUDENT DISCIPLINARY CODE, AND I HAVE NOT WORKED MORE THAN 8 HOURS ON THIS EXAM.

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Trademark Law

Question 1: (10%)

On January 23, 2006, Danielle Brown filed an ITU application for the mark CALZOR for “clothing, namely, T-shirts, shoes, caps, and sweat-shirts” and “skateboards, skateboard decks, and skateboard wheels.” The application was published for opposition.

Julie Black began selling homemade CALZOR skateboards built in her garage and CALZOR T-shirts in 1976. Black sold her business to Brown in 1987, including the CALZOR trademark, and became Brown’s employee until 1992. Over time, Brown’s focus on the CALZOR brand decreased, and Black’s duties were reduced, from design team manager to just a salesperson, until finally Black quit.

During this period, sales of CALZOR-branded products were declining, and Brown ceased production in 1999, though CALZOR skateboards were being sold in small numbers until 2000. In 2004, Brown conceived of a “revamp” of the entire brand, and hired a new design team to work on the project. Brown met with major skateboard manufacturers to discuss partnerships during the last half of 2004, and in January 2005 signed a deal with the fourth-largest manufacturer. Problems sourcing the proper materials delayed introduction of the revamped skateboard line, however. Brown also met with clothing manufacturers to discuss clothing licensing deals, and in June 2005 Brown signed a deal with Target to sell Calzor-branded clothing in the Spring 2006 season.

In 2005, Black—unaware of Brown’s plans—once again began using the CALZOR mark. Black sold ten CALZOR skateboards on November 2, 2005, and a small number of CALZOR T-shirts on December 15, 2005. In early December 2005, Black also sent out promotional materials to a number of skating magazines and websites, and paid for a booth at a major skateboarding exposition to be held in May 2006. The biggest skateboarding magazine ran a short blurb on “the return of the indie legend Calzor, under the helm of the woman who first created it,” and several websites ran similar stories, though a number of other skateboarding-focused outlets ignored Black’s promotional materials. Black also purchased the keyword “CALZOR” on Google, though as of December 2006 her total keyword ad expenditure was under $100, representing under 40 clicks. Black’s sales throughout 2006 averaged fifteen skateboards per month (though there were three months when she sold zero skateboards) and between four and sixteen T-shirts per month.

Brown’s Calzor-branded clothes duly arrived at Target in late February 2006. They were moderately successful by Target’s standards, selling under 20,000 units throughout the Spring season. Target did not renew the deal. Production delays on Brown’s CALZOR skateboards continued until July 2006, when the skateboards were finally released. Sales were brisk, on the order of four hundred to a thousand per month. Reviews were glowing, and many people commented that Brown’s CALZOR skateboards “did honor to the legend” or “carried on the tradition of the original,” and so on.

Black opposed Brown’s ITU application and filed a use-based registration application for CALZOR claiming a first use date of 1976. Determine who has priority and explain why. Ignore any potential post-1992 contractual duties Black might owe to Brown.

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Trademark Law

Question 2: Pizza! (20%)

Little Caesar’s has an incontestable registration for PIZZA!PIZZA! for restaurant services and for pizza, a slogan in use since 1980. The slogan is spoken in all its TV ads and also used in much of its other advertising. Little Caesar’s is a national brand with several thousand locations across the United States, and is the fourth largest pizza chain. It has experienced significant sales increases in the past six years. It spends millions of dollars in advertising each year and has received substantial press coverage for, among other things, feeding people after Hurricane Katrina and other disasters, hiring veterans, and offering lucrative franchise opportunities.

When regular restaurant-goers are asked to name the first pizza restaurant that comes to mind, fewer than 2% of regular restaurant-goers name Little Caesar’s. However, over 75% of regular restaurant-goers correctly identify Little Caesar’s as a pizza chain (when presented with a list of names, some real and some made up, and asked whether the names on the list are fast food restaurants and, if so, what they sell).

New Haven pizza is, for historical reasons, often known as “apizza.” Recently, a small New Haven-style pizza restaurant chain opened in the state of Concordia. Its formal name is Pete’s New Haven Style Apizza. Devotees of the New Haven style insist that the proper pronunciation of “apizza” is, roughly, “apeetz,” and that’s how the announcer pronounces it in the radio ads Pete’s has been running on local radio to complement its print ads in local papers and internet ads. The ad explains that New Haven pizza is special—“so special that it goes by a different name, apeetz. And now it’s available around Concordia, at Pete’s New Haven Style Apeetz.”

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Trademark Law

Closeup of logo:

Despite the ads, most people call the restaurant Pete’s Apizza and pronounce the restaurant’s name “Pete’s Apeetza.” Review sites such as Yelp generally identify the restaurant as Pete’s Apizza. Pete’s website is petesapizza.com. Pete’s is the first result in Google searches for the phrase “Pete’s Apizza,” although there are more than ten times as many search results for “Pete’s New Haven Style Apizza” (for which Pete’s is also the first result).

Little Caesar’s has not received any reports from consumers who believe that Little Caesar’s is related to Pete’s, nor has Pete’s.

Little Caesar’s sues Pete’s in federal court. Concordia law includes a provision stating: “Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.” Evaluate Little Caesar’s claims and explain who should win.

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Trademark Law

Question 3: Ivy League (25%)

Yale’s Freshman College Council designed a $25 t-shirt to sell to students before the Harvard/Yale football game. As per tradition, the Yale shirt mocks the other school. The front read “How to be successful at Harvard / Step 1: Drop Out,” and then noted that “Bill Gates, Mark Zuckerberg, Matt Damon” and others “liked” this, using the Facebook thumbs-up icon. Bill Gates (founder of Microsoft), Mark Zuckerberg (founder of Facebook), and Matt Damon (Hollywood marquee actor) are all, in fact, highly successful Harvard dropouts. The back used Yale’s “Y.” The shirt is Yale blue, while Harvard is associated with crimson.

Identify potential legal claims based on this shirt and evaluate them.

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Trademark Law

Question 4: CC (25%)

Viacom, which owns the cable channel Comedy Central, in late December 2010 began to use a new logo, the letters CC (one C reversed) with “Comedy Central” written below it (Central reversed):

As of January 1, 2011, this logo is now in use on all Comedy Central-related promotions, including the network “bug” that now appears at the bottom right corner of the screen throughout the presentation of all non-ad content.

Comedy Central is available on all major cable networks. Its Daily Show with Jon Stewart averages 1.5 million viewers nightly and is the most-watched late night show among people 18-49. Other hits include South Park (3.7 million viewers) and its specials, including a recent roast of Charlie Sheen (6.4 million viewers).

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Trademark Law

The new logo has attracted favorable attention in the press, including several design awards. "The upside down typography represents an 'irreverent wink,'" said Bob Salazar, senior VP, brand creative director at Comedy Central. The new look fits with all type of comedy and with all audiences, on all platforms, he added. Comedy Central personnel stated that logo was also designed to work on new digital platforms, where it would fit in with the familiar logos of Facebook and Twitter. "The new clean image is ideal in small spaces, like in social media," said Comedy Central president Michele Ganeless said. The design firm that created the mark said:

Because the copyright symbol is the ultimate emblem of the corporate world, we saw this as Comedy Central literally turning that notion on its head. Though it is subtle in its humor, we felt this logo brands Comedy Central as funny without having to paint them as wacky. The network has grown up a lot over the years and we see this logo as a sort of empty container that can take on any form the comedy requires.

©, or c in a circle, is the symbol used in copyright notices for works other than sound recordings. The use of the symbol is described in United States copyright law, and, internationally, by the Universal Copyright Convention. Although no longer required by law, the symbol is still in extensive use. Commercial entities almost invariably include it on or in their publications to signal their claims of ownership, e.g., © New York Times Co. or © Viacom.

cc in a circle is the symbol used for Creative Commons licenses, which are standardized licenses allowing various uses of copyrighted works without individual negotiation with the creators. The symbol can appear in any colors, but it is most commonly black on white. Creative Commons was founded in 2001 and adopted the symbol at that time. As of 2010, over 400 million works used the CC license, including over 100 million on the popular photography site Flickr.

Creative Commons has an incontestable registered mark for (the cc in a circle in white against a black background) for “licensing intellectual property and for “Providing use of on-line non-downloadable software for use by artists and other authors of digital works; and providing an on-line computer database in the field of dissemination of digital works.” It also has a registration for

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Trademark Law

(the cc in a circle followed by “creative commons”) for licensing intellectual property.

The Chicago Cubs, a well-known baseball team, have used the following logo for decades:

Despite the use of “tm” in the image above, the mark is in fact incontestably registered for clothing, pre-recorded videotapes relating to baseball, pre-recorded videodiscs relating to baseball; pre-recorded audio discs relating to baseball; video and computer game discs, video and computer game cassettes and video game controllers; computer accessories, namely, mouse pads, computer game programs, and computer application programs downloadable from a global computer network in the field of baseball; and many, many other things across all media.

Finally, the mark above was registered in March 2011 by Springer Media for “Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of Corporate Governance and Compliance; providing advertising service to distribute advertisements for display on Internet, namely, in websites, social conversations over the Internet, emails, microblogs, blogs, electronic messages, instant messages, text messages, multimedia messages, social networks, status updates, forums, and electronic bulletin boards.” The application was filed July 13, 2010 with a first use date of May 3, 2010.

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Trademark Law

In June 2011, Viacom applied to register the following mark, described as a design mark incorporating the letters CC:

Viacom seeks registration of this mark for “entertainment services, namely television programs featuring live action, drama, comedy, animation, music, news, and general entertainment; providing online information in the field of entertainment concerning television programs; television broadcasting services; broadcasting pre-recorded videos via computer and other communications networks; video on demand transmission services; broadcasting services, namely, the electronic transmission and streaming of digital audio, video, graphics, text and data via the internet, broadband systems, telephones, and portable and wireless communication devices.” It submits no evidence of secondary meaning specific to the CC-only mark.

A. (5%) How should the examiner classify the mark? Should the examiner find that the mark is distinctive?

B. (20%) Regardless of your answer to part A, assume that the mark has been published for opposition. Creative Commons, the Cubs, and Compliance Insider all oppose the registration. How should their oppositions be resolved?

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Trademark Law

Question 5: Skechers (20%)Skechers has sold its “Twinkle Toes” line of shoes for over 7 years. This is a Skechers “Twinkle Toe” shoe.

So is this:

So is this:

So is this:

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Trademark Law

So is this (the pattern on the upper is camouflage):

So is this:

So is this:

So is this:

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Trademark Law

So is this:

This boot is also part of the “Twinkle Toes” line:

Skechers defines its trade dress as the combination of the following design elements: “a vulcanized canvass sneaker; a toe cap adorned with crystals, rhinestones, sequins or a plurality of other similar shiny elements; and canvass uppers distinguished by colorful art designs or patterns.” Skechers has spent millions of dollars on advertising, mainly in popular/fashion magazines and on billboards; Skechers ads prominently feature images of the shoes, including Twinkle Toes sneakers. Skechers operates 272 retail stores, and its shoes, including Twinkle

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Trademark Law

Toes, are also available through department stores and online retailers including Amazon and Zappos. It sells about $400 million worth of shoes per quarter, about 7% of which are Twinkle Toes sales.

Steve Madden’s “Stevies” brand shoes look like this:

Steve Madden’s name is written in large letters on the bottom and on the tongue of the shoe:

Assess Skecher’s trade dress infringement claim against Madden and explain who should win.

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