Intellectual Property Law
Chapter 2 Discussion Answers
1. Classify the following marks as trademarks, service marks, collective marks, or
certification marks.
• CYI (to show that services are provided by certified yoga instructors who
have met certain standards)
certification mark
• The song Double A–TOOT TOOT–M C O used by AAMCO for its auto
repair services
service mark (sound mark)
• COLORSTAY ULTIMATE STAY (for cosmetics)
trademark
• ACADEMY OF DENTISTRY INTERNATIONAL (to show membership
in a group for dentists)
collective mark
• HAAGEN-DAZS for ice cream
trademark (arbitrary mark)
2. Discuss whether a company could trademark a neon green color for a line of
running shoes.
It seems unlikely that the color neon green could be trademarked or
monopolized by one company such that no others could use it. The
color appears to be functional in that it promotes visibility of runners
and thus improves the safety of runners.
3. Could the shape of a cap for a pen that prevents drying out of the ink in the pen be
trademarked?
No. Because the shape of the cap clearly improves the functioning of
the item, it is functional and cannot be trademarked. No one party
should be able to monopolize such a useful feature and prevent others
from using it.
4. Each year Henderson Co. sells pastel candy eggs under the mark BABY BUNNY
EGGS for the six-week period before Easter. Is the mark “in use” so as to support
a trademark application although the goods offered under the mark are only
offered for a few weeks each year? Discuss.
Short-term use of the mark is likely acceptable to show that it is “in
use” because the use is customary in the industry. By its very nature,
Easter candy will only be of interest to consumers for a short period
of time.
5. Discuss whether a person could likely obtain a trademark registration for the
following marks for the goods or services indicated, and then discuss the
objections, if any, that the USPTO might raise to registration of the mark.
Mark Goods or Services
NEW MEXICO CHILES Chiles from Illinois
No. The mark is geographically deceptively misdescriptive. New
Mexico is known for its chilies and consumers would be deceived by
the mark.
ELEPHANT Insurance services
This should be (and is) registrable. It is an arbitrary mark. It has no
meaning in connection with insurance services.
AUBURN EDGE Hair color and dyes
This mark should be registrable. It appears to be a suggestive mark
and thus should be registrable without proof of secondary meaning.
O’MALLEY Backpacks
The mark is likely not registrable because it is primarily merely a
surname.
COOKIES Cookies
The mark is not registrable. The mark is merely the generic term for
the product.
COOKIES Stationery and paper goods
The mark should be registrable. Its use in connection with goods
unrelated to cookies makes it arbitrary.
MARTHA STEWART’S HEAVENLY COOKIES Cookies
The mark cannot be registered without the written consent of Martha
Stewart. Even if Ms. Stewart consents, the owner would likely need to
disclaim “cookies.”
BISCOTTI Cookies
When translated, the term “biscotti” means “cookies” or “small
cookies.” Thus, it is merely a generic term in a foreign language and
thus is not registrable.
RED CROSS SWIM SAFETY Swimming lessons and water safety services
Unless the services are offered by the Red Cross, the mark is
unregistrable because marks of the Red Cross are protected by special
statutes.
JODY’S CHEESE SPREAD Spread not made of cheese
The mark is not registrable because it is deceptive. Consumers would be
deceived by a product called “cheese spread” that has no cheese in it.
CHEESE SPREAD Prepared cheese spread
The mark is not registrable because it is generic for the goods offered
under the mark. If a design or other wording (such as “Jody’s”) were
added to the mark, it would be registrable (if the descriptive wording
“Cheese Spread” were disclaimed.)