Branding & Trademark: Project X 2018

MEMORANDUM

THOMAS, THOMAS, AND THOMAS

A Pretend Limited Liability Partnership

Thomas, Thomas, and Thomas, PLLP
16401 NW 37th Ave.
Miami Gardens, FL 33054
Phone 305-474-2454; Fax (305) 623-2390
From: Ira Steven Nathenson, “Managing Partner,” T3 PLLP
To: Fall 2018 “Associates”
Date: Nov. 8, 2018
Re: Branding knock-out search project (project X)

Note to public: this assignment is created for teaching purposes. This project uses real-world materials in order to provide a meaningful learning experience. However, no actual affiliation with any person or entity exists. 

Background and goals. 

Once again, your client is Acme, Inc. of Dania Beach. You have already filed a trademark registration application and you have done searching.

Now you’ll report your search results as well as take enforcement action regarding a potential trademark infringer.

Regarding searching, there are two kinds of trademark searches: a “knock-out” search and a full clearance search.  Whereas a “knock-out” is intended to determine whether any obvious impediments exist regarding the proposed mark, a full search is more comprehensive and is geared towards possible clearance for actual use and registration.  Your assignment is to do a “knock-out” search on a fictional trademark.  You have been assigned a mark (password protected) and have engaged in a “knock-out” search on that mark using real-world search tools.  For background guidance on trademark searching, see Tamar Niv Bessinger, Ethics Issues in Searching Trademarks and Offering Opinions, available here. In the end, you’ll compile your search results (listing and pertinent marks) in an organized fashion, and provide your supervising partner with a memo analyzing your findings.

Regarding enforcement, you have been provided with a scenario (password sent via email) that presents possible infringement, dilution, or other claims arising from a new junior user. You will draft a cease-and-desist letter along with a draft civil complaint for federal court, as well as provide objective analysis of the sceanario.

Main instructions.

  1. Client and trademark. You will continue working with the same client and mark, which have been posted here.
  2. Conduct and document “knock-out” searching. Use the trademark search tools available through the Trademark Office website. Go to http://www.uspto.gov. In the upper-right hand corner, select “Quick Links” and then “TESS.” Try various tools and search strategies. Your searching should not be limited just to the Trademark Office website: you may and should consider using other search tools. Print out documentation that reflects your search strategies and the results of various searches.
  3. Review the enforcement scenario. You have been provided with a scenario (password sent via email) that presents possible trademark offenses. Consider what rights your client may have against the junior user. This scenario provides information on your client’s first date of use, your client’s (sudden!) federal registration, and your opponent’s conduct.

Case file.

Your case file should be well-organized, be in printed form, and include:

  1. Compiled search results. Put together, in organized fashion, your search results. Things to include would be TESS listings (showing the searches done) along with printouts of pertinent individual apps/registrations. It may also include Google searches and web printouts.
  2. Memo to your senior partner on searching and enforcement. Draft a memo to your senior partner (me) reporting on your searching and enforcement. You must use the template provided here. Retain the formatting used in the memo template. The template provides information on page limitations. It also provides guidance on the required sections you must include in the memo, which are:
    • Searching:
      • Search strategy
      • Registrability with USPTO
      • Risk of liability to senior users
      • Bottom-line recommendation regarding your search
    • Enforcement
      • Nature of the opponent’s conduct
      • Analysis of merits
      • Your enforcement strategy
      • Bottom-line recommendation regarding enforcement
    • Certification:
      • Remember, to get a score, you must fill out and sign the certification form.
      • Fill out and sign the certification form that is at the end of the memo template.
      • Attach any templates you used (such as complaints or C&D letters), but you need not provide copies of my original memo/complaint templates.
  3. Cease and desist letter with attached ready-to-file federal civil complaint.
    • Draft a cease-and-desist letter. You can use any template you find online (but reveal it in certification). Sample C&Ds are shown at the end of this page. For further guidance on C&D letters, see this handout. Choose wisely, adapt thoughtfully and carefully in light of facts, law and your goals.
    • Draft a civil complaint. Use this template for your complaint. Retain the formatting. You’ll have to use some Civ Pro here (such as Twombly, PJ, SMJ, and venue). You have to determine which federal district to sue in, which may vary with the facts of your particular scenario.

Due date: Monday, Dec. 3, 2018.

Your file is due no later than Monday, Dec. 3, 4:00PM EST. Give your well-organized paper case file to me in person, or if I am not available, to the faculty admin assistants (Mariela Torres, Suzanne Gelin, or Maite Rodriguez).

Permitted and prohibited assistance and sources.

As noted in earlier classes, I encourage each of you to seek out, and to provide assistance to, your current Branding & Trademark classmates. Lawyering is a collaborative learning experience, and I want you to learn from your apprentice colleagues. That means you can ask and answer questions, seek and provide suggestions, and seek and receive comments on forms and drafts. Although each of you can give one another advice and feedback,  you cannot crowdsource or collaborate on language or content of your memo, complaint, or C&D. Your work must still be your own.

Along similar lines, you can and should seek out documents and templates (such as an existing identification of goods) to help you. Obviously, you must still do your own work by updating materials to reflect your own facts in light of the governing law. Regardless of what a form or template may say, the lawyer who uses it is always responsible for making sure it is factually correct, legally sound, appropriate for the situation, and proper for the client’s needs.

In return for being able to seek out B&T classmates for advice and comments, and using third-party templates, you must fully and truthfully fill out the attribution form, in which you will state who you helped, who helped you, and how. You must also identify and attach any templates or pre-existing materials that you use in drafting your forms or memo. Err on the side of revealing too much information rather than too little.

In sum, you absolutely may not seek out or accept information or assistance from anyone who is not currently enrolled in this course (such as other students at STU). This prohibition includes, without limitation:

  • STU students not currently enrolled in this course.
  • Lawyers and other legal professionals.
  • Anybody at the U.S. Patent and Trademark Office.

Attribution/Certification.

Please sign and submit a hard copy of the Certification of Originality and Attribution. To receive a score in any project, a certification form must be filled out and signed. Cf. FRCP 11(a).

Scoring and additional guidance.

Scoring for each component will be done on a 4.0 scale.

Searching Strategy and docs 15%
Registrability 5%
Liability to senior users 20%
Enforcement Explanation of D’s conduct/analysis of merits against junior user 20%
Discussion of strategy 5%
C&D letter 10%
Civil complaint 10%
Writing 10%
Organization 5%
Certification form filled out fully, signed, with attached materials used (unscored but required to obtain a score) 0%
Total 100%

Responses to student questions

  • Acme address? Acme address is in prior project materials. Listed address is its PPOB. It is incorporated under the laws of the state of Florida.
  • Fringe address? Varies by scenario. Fringe’s address is 5150 Copyist Drive., [CITY], [STATE]. For zip code figure out a plausible zip code for that city.

Project-related links.

Revised Nov. 13, 2018