Intellectual Property Law

Chapter 3 Discussion Answers

1. A client wishes to use the mark BEACH BABY for its June promotion of beach
clothing. What type of search should be conducted?
A knockout search (meaning a search of the USPTO records/database
and a Google-type search) should likely be sufficient for this mark
that will be used so briefly and in such a limited locale. Although it
would be ideal to conduct full or comprehensive searches for all
marks, a knockout search should be sufficient in this case.

2. A client wishes to use the mark WILLOW GARDENS for its new hotels, which
will be located throughout the country and in western Europe. What type of
search should be conducted?
After the knockout search is conducted, a full or comprehensive
search should be conducted. The launching of a mark on a national
basis is a critical decision and the firm does not want the client to
expend money adopting a mark that the USPTO later refuses to
register or expose the client to a risk of an infringement action by
some other party. An international search should also be conducted.
The firm should retain the services of a foreign associate to conduct a
search of marks in western Europe and report on the results.

3. A client wishes to use the mark HARVEST BITES for its snack food product.
Your preliminary search discloses BOOST BITES, BERRY BITES, and LAST
BITE for various food products. What, if anything, does the coexistence of these
marks suggest?
The coexistence of marks that include the term “BITE(S)” in
connection with food items indicate that the mark is somewhat weak
when used in connection with such goods (likely because it is
suggestive or possibly descriptive). Thus, it seems likely that there
should be room for the client’s mark HARVEST BITES for snack
foods. When consumers encounter numerous similar marks, they
become adept at distinguishing among them.

4. Your preliminary search for the mark ALOHA GRILL for restaurant services
discloses that a previous registration for ALOHA HAWAIIAN GRILL has
expired. What should you do, if anything?
These two marks are highly similar in sound and in respect of the
services offered under the mark (both involve restaurant services).
Thus, a searcher should conduct some investigation to see if the
expired mark is still in use. One could call or visit the restaurant,
check to see if its website is still being updated, etc. If the restaurant is
no longer in operation and the mark is not being used, the path is
clear for the client to register its mark. If the mark is still in use,
however, unless the client can obtain a license or consent to use the
mark or can purchase it outright, the existence/use of ALOHA
HAWAIIAN GRILL poses a direct conflict with the client’s use of
ALOHA GRILL for restaurant services. Consumers would likely
believe that the two restaurants were offered by the same company.

5. Your client has used its registered mark NUTRAGOLD in the United States for
its sunscreen for several years and now wishes to offer the product in Italy, Spain,
and Portugal. What should you do, if anything, to help the client achieve
registration in these countries?
The firm should retain the services of a foreign associate to conduct
searches in the three countries and provide a report as to his/her
opinion on the registrability of the mark in those countries. There are
a number of reasons to use the services of a foreign associate: U.S.
firms are generally not that familiar with another country’s laws or
its databases and thus, their search results may be incomplete or
flawed; the foreign associate can assist with any translation of the
mark that may need to be done; the foreign associate will be more
familiar with the process of registration in these countries and may be
able to offer suggestions to overcome objections, if any, by the foreign
trademark office.