Intellectual Property Law

Chapter 4 Discussion Answers

1. Discuss whether the following would be an acceptable identification of goods:
“golf accessories, golf sleeves for clubs, golf tees, golf ball markers, and the like.”
No. The inclusion of the wording “and the like” is too indefinite. The
USPTO requires that an applicant indicate all of the goods for which
the mark will be used. Thus, an identification that implies that other,
unspecified goods will be offered will be rejected.

2. Describe an appropriate specimen for applications for the following marks:

• LEADER (for t-shirts and hats)
An acceptable specimen would be labels or tags that are
affixed to the goods themselves, packaging for the
goods, etc.

• OASIS (for day spa services)
An acceptable specimen would be brochures or
advertisements for the services, a “menu” of services
offered, etc.

• PURE FARM GREEN (for apples)
An acceptable specimen would be stickers attached to
the goods themselves or to baskets in which the goods
are sold, packaging for the goods that shows the mark,
point-of-sale displays showing the mark, etc.

3. After Emma Harris filed her trademark application for HEART BY CITY GIRL
for her clothing line, consisting of sweaters and mittens, the USPTO refused
registration on the basis of a preexisting mark for athletic wear, including hoodies
and caps, for CORAZON BY CHICA. Discuss whether you think the marks are
confusingly similar.
The marks are confusingly similar because the meaning of
“CORAZON BY CHICA” is “HEART BY GIRL,” which is nearly
identical in appearance and meaning to Emma’s mark “HEART BY
CITY GIRL. Moreover, the goods are related (goods offered under
both marks are clothing). Thus, consumers may well believe that there
is a single source offering goods under both marks. Thus, a refusal on
the basis of likelihood of confusion seems likely to be upheld.

4. The mark EYE PACK for moisturizing lotions was published in the Official
Gazette on April 14. Discuss the deadlines applicable to this mark if a client
wishes to oppose registration.
An opposition or a first request for a 30-day extension must be filed
by May 14. Alternatively, a first request for a 90-day extension will be
granted upon a showing of good cause, in which case, that extension
would expire on July 14. If the first request was for 30 days, a second
request for a 60-day extension will be granted upon a showing of good
cause, which extension would expire July 14. A final request for a 60-
day extension will be granted if the applicant consents or if there is a
showing of extraordinary circumstances, in which case the extension
would expire on October 12. In no case may the opposition be filed
later than October 12, which is 180 days from April 15.

5. On August 15, 2015, the USPTO issued a notice of allowance for the mark
JEWELS BY CHOICE, filed as an intent-to-use application. Give all dates
applicable to this mark (for filing a statement of use or extension for such).
The applicant will have six months, or until February 15, 2016, to file
a statement of use or to request an extension to file such. Thereafter,
the applicant may file additional extension requests every six months
for a total of 36 months. In this case, if the applicant does not file the
statement of use by August 15, 2018, the application will be deemed
abandoned.

6. Your client has a trademark registration for CRUNCH TIME PEANUTS (with
the word “Peanut” disclaimed) for snack foods with peanuts. The client has
observed that the marks MUNCH TIME PEANUTS (with the word “Peanut”
disclaimed) and HAPPY HOUR PEANUTS (with the word “Peanut” disclaimed),
both for snack foods with peanuts, have been published in the Official Gazette.
Discuss whether you believe the marks are confusingly similar such that the later
applications should be opposed.
MUNCH TIME PEANUTS is likely confusingly similar. Ignoring the
disclaimed wording, the marks CRUNCH TIME and MUNCH TIME
are similar in appearance, sound, and commercial impression, and
they are used in connection with the same goods. Consumers may well
believe that a single source offers goods under both marks. The mark
HAPPY HOUR PEANUTS, however, is not confusingly similar to the
client’s mark. Ignoring the disclaimed element of PEANUTS, the
marks can be distinguished in that CRUNCH TIME and HAPPY
HOUR are not similar in sound, appearance, or commercial
impression. Thus, an opposition should be filed to oppose MUNCH
TIME PEANUTS but not HAPPY HOUR PEANUTS.