Branding & Trademark (project 2): enforcement

MEMORANDUM

THOMAS, THOMAS, AND THOMAS

A Pretend Limited Liability Partnership

Thomas, Thomas, and Thomas, PLLP
16401 NW 37th Ave.
Miami Gardens, FL 33054
From: Ira Steven Nathenson, “Managing Partner,” T3 PLLP
To: Fall 2023 “Associates”
Date: Oct. 27, 2023
Re: Branding enforcement project (project 2)

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. 

Sections of this page.

Click any of the links below to jump to a section of the assignment.

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 take enforcement action regarding a potential trademark infringer.

You will be provided with a scenario via email that presents possible infringement, dilution, or other branding-related claims [state and/or federal] arising from a new junior user. You will draft a cease-and-desist letter, attempt to negotiate a resolution of the dispute, and later provide objective analysis of the scenario.

Main instructions.

1. Client and trademark. You will continue working with the same client and mark, along with an enforcement scenario. I will email you an updated attorney/mark table, which will include additional facts regarding possible trademark offenses. Consider what rights your client may have against the junior user. If you believe you need more information, request it in writing via email!!

2. Draft a cease-and-desist letter. Draft a cease-and-desist letter to your assigned opponent. You can use any template you find online (but disclose and annotate any templates you use in your certification). Sample C&Ds are shown at the end of this page. For further guidance on the paradigmatic elements of C&D letters, see this handout. Choose wisely, adapt thoughtfully and carefully in light of facts, law and your goals. See also my tips on drafting and sending C&D letters.

3. Transmit your cease-and-desist letter and negotiate. When and only when I give you an express written go-ahead, transmit your C&D letter to the defendant. Do not transmit any correspondence to anyone prior to my express written approval, and you may only transmit your C&D to the email address approved by me in writing. After you send your letter you can expect your opponent to respond. Negotiate with them, acting ethically on behalf of  your client. As Florida lawyers, you will be bound by the Florida Rules of Professional Conduct (rev. 7.23.21), and are cautioned not to let your zealousness lead you astray. See the Assignments page for the date by which you will need to transmit your C&D.

In responding further & negotiating, I would encourage you to watch out for opponent conduct that seeks to deflect, district, or delay (DDD). If you have made an error—whether factual, legal, ethical, or even a typo—that your opponent is using to DDD, then try to resolve it professionally and move back to the merits that you originally wrote about. Also, I caution you to avoid the temptation to “punt,” i.e., simply reiterating your demands and threats. If your opponent has pointed out plausible counterarguments or weaknesses in your case, then be persuasive. Explain on the merits why your opponent should comply with your demands or should be otherwise willing to reach a negotiated compromise. Remember what you’re trying to accomplish. A good C&D is intended to:

  • Provide notice of the claim;
  • Permit an argument later on that your opponent’s continued conduct is willful;
  • Adduce useful facts from your opponent;
  • Establish a favorable paper trail for court and for public;
  • Show Acme’s good faith (and not bullying); and
  • Attempt good-faith resolution of the conflict.

As you should realize, simply making a demand, ignoring a meritorious reply, and doubling down on your threat is not going to be very effective in accomplishing the above-stated regards. In fact, such conduct may be viewed as trademark bullying with undesirable consequences for your client and yourself, such as declaratory judgment suits, claims of abuse of process, requirements of payment of your opponent’s attorneys fees, bar complaints, and negative press. (Some of these may even be threatened or sought by opponents when your demands are well-based!) So have a clear-headed view of the merits of your case before you make your demands. Your case may have its holes and weaknesses, but in litigation, counsel must deal with the facts as they have been dealt and not how the litigator would like them to be.

4. Draft an objective memorandum. Regardless of the results of your negotiation, you will need to draft an objective memorandum. The required and optional parts of the memo are further detailed in the memo template. Your memo should be no longer than ten (10) pages, not counting the certification form and any attachments. Also, note that I am a stickler for good formatting. I chose the formatting and typography of your memo template quite intentionally; do not change the formatting, spacing, or typography. For general guidance on effective and persuasive typography for lawyers, see Matthew Butterick, Typography for Lawyers (2d ed. 2018), as well as his Typography for Lawyers.

5. Complete the attribution and certification form. The required certification form will be found at the end of the memo template.

  • The template should be digitally signed.
  • Indicate the names of any persons who you helped or helped you, and how.
  • Indicate whether you want to submit your course work for consideration for the Excellence in IP award.
  • Attach copies of any forms or templates used for your own work product (such as existing C&D letters, civil complaints, or other memos).
  • Annotate any forms and templates to indicate any language you have used or adapted. I suggest you use Foxit (available for Mac and PC) or any other PDF annotation program. Highlight any language you used or adapted.

Required contents of case file.

What not to submit. I will already have your C&D letter and the correspondence between you and your opponent. You do not have to resubmit that on the final due date.

What to submit. On the due date, you will have to submit additional documents. Assemble them into a single PDF using Adobe Acrobat, Combine PDF, or some other tool.

  1. Cover sheet.
  2. Memorandum using the memo template.
  3. Attribution/certification form along with copies of any exhibits, annotated as noted above. The certification form can be found in the memo template.
  4. Any other information you would like to include.

Project case file due date.

See the Assignments page for the due date. Submit it by uploading it to a Canvas link that I will post to the Assignments page.

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 work product. Your work must still be your own.

Along similar lines, you can and should seek out documents and templates 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. Finally, you must annotate those attachments to indicate the language you have used or adapted. 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.

As noted above, please sign and submit the Certification of Originality and Attribution (it is attached to the memo template), which includes information on submitting your course work product for consideration for the Excellence in IP award. To receive a score in any project, a certification form must be filled out and signed. You must attach and annotate any templates or other materials that you used in drafting your own work product, such as C&D letters. Cf. FRCP 11(a).

Scoring and additional guidance.

This project constitutes 40% of your course score. The remaining portions are project 1 (35%) and class participation (25%).

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

Category %
C&D letter 25%
C&D correspondence 25%
Memorandum 50%
Attribution & certification 0%*
Total 100%

*: Overall project penalty of up to -0.5 if certification is not initially and properly filled out and e-signed, with templates provided and annotated. If project is not signed at all, I may give you an opportunity to cure the defect. If I give you an opportunity to cure and you do not correct the lack of signature, the penalty is 100%. Just like in court, unsigned projects must be stricken. Cf. FRCP 11(a).

Responses to student questions

Will be added on scenarios page if scenario-related.

Project-related links.

Revised July 23, 2022 (updating memo template)