Exam #_______

Federal Trademark & Copyright Registration PracticeSpring, 2014 Final Examination

May 8, 2014 Lembree

Instructions:

This exam counts as 25% 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. Reference to and information about individuals, applications, and registrations is entirely

or significantly fictional or modified for purposes of this exam. When you retrieve your graded exam from the Registrar’s Office, it will include a detailed rubric with references to the cases from which the exam questions were derived.

Following is the point distribution:

Question Number Point Value1 through 10

(the multiple choice questions)7 points each, for a total of 70 points

11 2012 10

Total: 30

Part I of this exam consists of 10 multiple choice questions. Place the answer to the multiple choice question within your blue book, electronic blue book, or scantron sheet, as applicable.

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

1

to the facts in the question, you will receive full or partial credit for your answer. In some cases, the “best answer” is very, very close to the second best answer, the final decision on which is the “best” being made by what the experts (e.g. TTAB judges or PTO examining attorneys) decided in the actual case. Because reasonable people can differ on these very close calls, if you pick the second best answer and it is very, very close to the actual best answer and you included an explanation, you will receive full credit. Consequently, it is advisable to explain your answer.

Part II of the exam consists of 2 fact patterns, with short essay/form completion questions. Please write your answer to Part II in your blue book (or electronic blue book).

Part I. Multiple Choice

1. Over the last 30 years, SWATCH ® watches have been sold in the U.S. Swatch owns several incontestable registrations covering SWATCH for watches, including in standard character form.

On July 5, 2007, Berger filed an intent-to-use (ITU) application for IWATCH (in standard characters) for watches, watch boxes, watch parts, and clocks, all of which are in International Class 14. The Identification of Goods (ID) includes a number of specific types of watches and clocks in addition to the general terms watches, namely, jewelry watches, stop watches, pocket watches, watch fobs, and watches containing a game function. The ID includes a number of specific types of clocks, also, namely, pendulum clocks, small clocks, table clocks, and wall clocks.

No proof of use document has been filed on this application, and it remains in ITU status. In response to a request for more information from the examiner in the first office action, specifically for “samples of advertisements or promotional materials for goods of the same type,” Berger submitted the below images which were described as “samples of promotional materials of both watches and clocks.”

Swatch opposed registration, including on the grounds of likelihood of confusion, lack of a bona fide intent to use, and fraud.

2

For purposes of this question, consider the following evidence, most of which was produced in deposition testimony:

Over the last 60 years, M. Z. Berger (Berger) has manufactured, imported, and sold watches in the U.S., shipping over 20 million timepieces (at least 50% watches) in the year 2010, and selling approximately one million different watch styles over the last 60 years. With this proven history in manufacturing and selling timepieces, Berger can have a timepiece of its typical designs ready for sale in a short period of time.

Berger’s Chief Executive Office (CEO) (Bernard Mermelstein) instructed his paralegal (Monica Titera), who routinely files trademark applications for the company, to file the TM application for IWATCH for watches. Ms. Titera testified that she used Berger’s “standard” ID of G/S for clocks and watches (described above), which leaves Berger open to go in any direction they need to with the brand.

Berger’s Chief Marketing Officer (Marci Gordon) testified that she takes notes during meetings where watch brands and ideas are discussed. However, she throws the notebook in a dumpster at the end of the year. The 2007 notebook was thrown away in the usual course, which also happened to be two months after Swatch filed its opposition. She also testified that Berger has no documents, notes, or files related to IWATCH that Berger could produce in discovery.

Four days before the filing date of the application, Ms. Titera ran a trademark search on IWATCH for all goods listed in IC 14 and produced a search report.

Per Mr. Mermelstein’s testimony, on the filing date, there was no certainty on specifics of watch design other than it would be high-tech and outside their typical designs and that IWATCH would not be used, per his understanding, for clocks.

Berger’s VP of Merchandising recalled perhaps discussing licensing IWATCH to another party before the filing date of the application, but could not remember the party or any specifics.

Mock-ups of the watches were made 7 months after the filing date by Berger’s creative director for the purposes of responding to the office action requesting more information; the mock-ups are the above images. Mock-up images like the ones produced are commonly used in Berger’s regular operations to enter into negotiations with potential resellers.

Did Berger have a bona fide intent to use IWATCH for its application as required under the Lanham Act?

A. Yes, because the objective determination, based on all the circumstances, is that Berger can produce timepieces at a moment’s notice and the trademark search report, licensing discussions, and mock-up images supply sufficient objective evidence corroborating that intent.

3

B. Yes, because the subjective intent of the actual person who filed the application, Ms. Titera, is that Berger has a good faith intent to produce timepieces under the IWATCH mark and Swatch failed to prove her subjective intent was otherwise.

C. No, because the objective determination, based on all the circumstances, is that Berger merely intended to reserve rights in a mark, corroborated by Mr. Bernstein’s testimony concerning use on clocks and intended watch functionality, Ms. Titera’s testimony concerning choice of items in the Identification, and Berger’s inability to meet its burden to prove its bona fide intent-to-use because of lack of the 2007 notebook, lack of specifics on the intended licensee for IWATCH products, and lack of a specific explanation for why the mock-up images were created.

D. No, because Swatch proved that the subjective intent of the actual person who filed the application, Ms. Titera, was to take the brand in any direction, which was too lacking in specificity.

2. Using the same Swatch v. Berger fact pattern above, and assuming the TTAB decision was issued in 2013, answer this second question:

Did Berger’s submission of the mock-up images constitute fraud?

A. Yes, because the images were not “samples of promotional materials of both watches and clocks,” and Ms. Titera’s filing was a material false statement.

B. Yes, because the images were not “samples of promotional materials of both watches and clocks” and because the current standard for fraud for TTAB proceeding final orders decided after 2009 is Medinol v. Neurovasix under which knowing false statements and statements the maker should have known are false is equated to an intent to deceive.

C. No, because describing the mock-up images as “samples of promotional materials of both watches and clocks” was a true statement because the PTO might be interested in purchasing an IWATCH watch or clock should Berger ever produce a watch or clock like the ones in the images.

D. No, because although the images were not “samples of promotional materials of both watches and clocks,” there is no evidence that Ms. Titera had a subjective intent to deceive the PTO, acted with reckless disregard, or had imputed knowledge of the law as required by the In re Bose decision, which applies to TTAB proceeding final orders decided after 2009.

4

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

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

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

C. The NSA sends you a notice that it intercepted an electronic transmission and lets you know that it appears to have been an innocuous trademark filing.

D. You receive an email from the PTO telling you that your client has signed the declaration.

E. You receive your monthly billing statement for your PTO deposit account and it shows that the account balance is lower than it was the prior month.

4. Microsoft Corporation is headquartered in Redmond, Washington, USA. It owns almost 1,000 live pending trademark applications and registrations in the U.S. (nearly 2,400 when including dead applications and registrations), which is a large portfolio. Microsoft sells a significant number of these products and services around the world.

How should Microsoft protect its trademarks outside the U.S. and why?

A. By filing trademark registration applications through Madrid Protocol where available because it is faster, easier, and less expensive to file for protection through Madrid and also because Microsoft can transform its applications in designated countries to national applications if its U.S. underlying application or registration is limited or becomes subject to central attack.

B. By filing national trademark registration applications directly in each country in which it desires protection so that it is not limited by the U.S. application/registration, including the U.S. requirement of proving use in commerce, because the potential greater scope of protection is worth the extra cost to obtain it.

C. By filing trademark registration applications through Madrid Protocol where available, because it will achieve greater protection than national filings since Madrid Protocol allows protection to the full extent of the U.S. registration and U.S. registrations tend to be broader in scope than in other Madrid countries because of U.S. PTO examination policies.

D. By relying on common law trademark rights in countries other than the U.S., because it will save millions of dollars in filing and legal fees and this money can better be used to stop infringers.

5

5. Applicant Dunville Peat and Herbal Products Limited, an incorporated Irish corporation located in Ireland, owns an Irish trademark registration for ÓGRA (in standard characters) for “hygienic and beauty care for human beings” in International Class 44. Using the Madrid Protocol, Dunville applied under Section 66(a) of the Lanham Act (request for extension of protection) for registration of the same mark for the same services in the United States. In the application, Dunville provided a translation of the mark into English as “youth/young people.” The examiner rejected the application on the basis of mere descriptiveness, asserting that Dunville’s services are presumed to be provided to young people, as there is no limitation on the scope of the identification as describing services provided to “human beings,” combined with the assertion that the word ÓGRA would be translated by consumers. In support of this argument, the examiner provided two pieces of evidence: (1) an Irish dictionary definition for ÓGRA matching the “youth/young people” translation provided by Applicant Dunville, and (2) third party websites showing that “hygienic and beauty care” services provided by third parties are directed to young people.

What is Applicant Dunville’s best argument to attain registration in the U.S.?

A. That its “hygienic and beauty care” services are not marketed to or purchased by young people, nor are the services designed to make consumers look or feel younger, but rather that their services are marketed to and purchased by elderly persons and focused on basic hygiene that would not make these consumers look or feel younger (if true);

B. That its “hygienic and beauty care” services are not marketed to or purchased by young people, but the services are designed to make consumers look younger and are primarily purchased by women in the age range of 25 to 65, with the average age at 40, which is suggestive of applicant’s services, not descriptive (if true);

C. That the dictionary definition is improper evidence because it is an Irish dictionary and not an English dictionary, where English is the predominant language in the United States, the relevant territory for the U.S. trademark application.

D. That the mark is fanciful to the relevant consumers, because the examiner has failed to present prima facie evidence that U.S. consumers would stop and translate ÓGRA into “youth/young people,” combined with rebuttal evidence that Irish is spoken by a small number of citizens in the U.S.

6

6. For purposes of this question, assume today is May 8, 2014 (the scheduled day of the exam). On July 12 and 23, 2013, respectively, the New York corporation Brand Packaging Group filed an intent-to-use trademark application for SPORTSFIT (in standard characters and plus design, show below) for “nutritional supplements” in International Class 5.

The PTO examiner issued an office action rejecting the application in light of the mark SPORTFIT (plus design) for “non-alcoholic beverages, namely, energy drinks and sports drinks” in International Class 32. Below is the mark drawing for the SPORTFIT mark:

Which of the following statements is correct?

A. If the application for SPORTFIT (plus design) was filed after July 23, 2013, then SPORTSFIT (both in standard character and plus design) has priority for purposes of a TTAB inter partes proceeding, regardless of the actual date of first use of the SPORTFIT (plus design) mark.

B. If the application for SPORTFIT (plus design) has a publication date on or after May 8, 2014, Brand Packaging Group may file a Notice of Opposition against the application on the grounds of likelihood of confusion.

C. Both A and B are correct.

D. If SPORTFIT (plus design) has a registration date after May 8, 2009 and if Brand Packaging Group files a petition to cancel today, then registration for SPORTFIT (plus design) may be canceled on the grounds of abandonment if Brand Packaging Group believes the mark has been abandoned and proves abandonment to the TTAB.

E. If SPORTFIT (plus design) has a registration date before May 8, 2009, does not have incontestability status, and if Brand Packaging Group files a petition to cancel today, then registration for SPORTFIT (plus design) may be canceled on the grounds of likelihood of confusion if Brand Packaging Group proves likelihood of confusion to the TTAB.

7

7. On April 14, 2005, Applicant Marisa Acocella Marchetto, through her attorney, filed the below intent-to-use CANCER VIXEN (plus design) mark with the U.S. PTO for the below-listed goods and services:

In International Class 9: Pre-recorded DVDs, videotapes, featuring animated comic strips

In International Class 16 (paper goods): Cartoons prints, cartoons strips and comic strips in newspapers and magazines; Comic books; and, Fiction and non-fiction books on the subject of autobiographies

In International Class 41 (educational and entertainment services): Entertainment services, namely, providing animated comic strips via the internet,

television, and film

On October 31, 2006, the PTO issued a Notice of Allowance. As of April 26, 2007, Ms. Marchetto was selling a “graphic novel”/autobiographic book series titled Cancer Vixen: A True Story on amazon.com, had her comics published in The New Yorker and Glamour magazines, and had her animated video viewable on her publisher’s website, with DVDs of her videos still in production and not yet sold. Images from her amazon.com listing, two of her comic strips, and screen shots of her animated video are below.

8

9

10

11

On April 26, 2007, Ms. Marchetto (through her attorney) made a filing with the PTO. Which of the following makes sense as what she filed to gain the best protection for the mark?

A. A statement of use for all items in all International Classes, for a total filing fee of $300.

B. An extension to file a statement of use for all items in all International Classes, for a total filing fee of $450.

C. A statement of use deleting all of International Class 9 and declaring the mark is in use in commerce for all of International Class 16 and 41, for a total filing fee of $200.

D. An extension to file a statement of use for International Class 9, a statement of use for International Classes 16 and 41, and a request to divide the application to make the IC 9 portion the parent

application and the IC 16 and 41 portions the child application, for a total filing fee of $450 plus the filing fee of a new application for the child application.

8. Assume for purposes of this question only that registration issued for all of the goods and services listed for CANCER VIXEN (plus design) described in the above question on September 11, 2007. Assume also for purposes of this question only that today is September 10, 2013 and that Ms. Marchetto is using the mark for books but not comic strips published in magazines and is no longer using the mark in animated videos sold on DVD. The mark has never been challenged in court or any other proceeding.

Which of the following is not a true statement concerning what Ms. Marchetto’s attorney may file?

A. If she does so today, Ms. Marchetto’s attorney may file a Section 8 affidavit for IC 16 and 41 only if she deletes IC 9 and the item “cartoons prints, cartoons strips and comic strips in newspapers and magazines” from IC 16.

B. If she does so today, Ms. Marchetto’s attorney may file a Section 15 affidavit for IC 16 and 41 only if she deletes IC 9 and the item “cartoons prints, cartoons strips and comic strips in newspapers and magazines” from IC 16.

12

C. If she does so today, Ms. Marchetto’s attorney may file both a Section 8 and 15 for all items except IC 9, because she need only submit one specimen per IC.

D. Ms. Marchetto may make her maintenance filing as late as March 11, 2014 if she pays an extra fee for filing within the six month grace period.

9. You are an attorney of record on an ITU trademark application. The deadline to file a response to office action was two days ago and you failed to file. Which of the following is a true statement?

A. The application will go abandoned and there is no other option but to file a new application if registration is still desired and there is still a bona fide intent to use in commerce.

B. The application will not go abandoned because you have a three month grace period for filing the response that you may utilize if you pay a fee for the grace period filing.

C. The application will go abandoned but you can file an appeal with the TTAB to revive the application so long as you submit a declaration that the delay was unintentional because you did not receive a copy of the office action; the appeal must be filed within six months of the notice of abandonment.

D. The application will go abandoned but you can file a petition to revive the application with the PTO Director along with a declaration that the delay was unintentional (if true) and a response to the office action within two months of the notice of abandonment.

10. Your client is a bank that has loaned money to a business with a patent, trade secrets, a business plan, and a pending intent-to-use trademark application. The bank has taken the patent, trade secrets, and trademark application as collateral by having the business owner sign a document called a security instrument. As attorney for the bank, what is the best way to protect your client’s interest in the business should the business declare bankruptcy?

A. Record the original, signed security instrument with the PTO under both the patent number and trademark serial number.

B. Record the original, signed security instrument with the U.S. Copyright Office.

C. Retain a signed copy of the security instrument in your file.

D. Record a Uniform Commercial Code financing statement with the appropriate state office for the state of the business (debtor).

13

Part II – Short Essay

11. In 2007, Rick Riordan finished writing his book, Percy Jackson and the Olympians: The Titan’s Curse. It is the third book in the Percy Jackson and the Olympians series of five books, authored by Mr. Riordan. Book one of the series, Percy Jackson and the Olympians: The Lightening Thief, introduced and developed key characters and plot points for the series, including the key characters of Percy Jackson, Annabeth Chase, and Grover Underwood, not to mention the same Greek gods you learned about in Greek mythology and the adventures of their demi-god children. These characters and plot points were continued in the future books in the series, book two being named Percy Jackson and the Olympians: The Sea of Monsters. A picture of the front cover (taken from Amazon.com, with thanks) of the third book (Titan’s Curse) is found here, as is a screenshot of the Copyright Office record of the registration for this book.

Like book one of the Percy Jackson and the Olympians series, book two was made into a movie, which was released in theaters on August 7, 2013. Below is the website movie promotional image for movie 2, The Sea of Monsters.

Twentieth Century Fox Film Corporation, which bought the rights to the entire series from Mr. Riordan, is currently working on production of a screenplay for the movie based on book 3, Percy Jackson and the Olympians: The Titan’s Curse. Between book and motion picture is the creation of a screenplay (also known as a script), where the book dialogue, plot points, and actions are converted into a series of very literal instructions and dialogue for the actors and director of the motion picture. The screenplay is a derivative work of the book.

14

Twentieth Century Fox hired screenwriters to write the screenplay for movie 3, namely, Scott Alexander (P.O. Box 820342, Vancouver, WA, 98682, DOB June 16, 1963, U.S. citizen), Marc Guggenheim (4160 Dixie Canyon Ave., Sherman Oaks, CA 91316, DOB September 24, 1970, U.S. citizen), and Larry Karaszewski (2300 Malaga Road, Los Angeles, CA, DOB November 20, 1961, U.S. citizen). Scott, Marc, and Larry are joint authors on the screenplay. Rick Riordan passed his rights to Twentieth Century Fox who gave permission to the screenwriters Scott, Marc, and Larry. Scott, Marc, and Larry all signed written assignments assigning their copyrights in the screenplay into Twentieth Century Fox Film Corporation (P.O. Box 900, Beverly Hills, CA 90213). The script is unpublished and was completed in 2013. The screenplay was not preregistered. Movie 3 is scheduled to be released in December 2015.

Write in the blue book (or electronic blue book) how you would fill out the pages of the electronic copyright registration application shown in this exam if you represent Twentieth

Century Fox Film Corporation.

15

Multiple entries for the two Author screens on this page of the exam may be submitted.

16

17

12.If

you filed the copyright registration application for the script for Twentieth Century Fox on February 5, 2014 and an entrepreneurial group of Percy Jackson fans today (May 8, 2014) commence writing a script and musical works for a musical production for middle school (ages

18

11 - 13) students based on book and movie The Titan’s Curse, what can Twentieth Century Fox do about that and what could it receive for remedies?

THE END

19

20