Intellectual Property Law

Chapter 4 Internet Resources Solutions

1. Access the USPTO website and locate the Acceptable Identification of Goods and
Services Manual. Indicate the International Class for the following goods and
services: bicycle locks, computer mouse pads, score sheets for games, baby
blankets, and interior design services (such as furniture selection).
Bicycle locks are in I.C. 6; computer mouse pads are in I.C. 9; score
sheets are in I.C. 16; baby blankets are in I.C. 24; and interior design
services (such as furniture selection) are in I.C. 42.

2. Access the USPTO website and locate U.S. Registration 3,800,634. What is this
mark? Was any part of the mark disclaimed? Describe.
This mark is FAITH HILL PARFUMS. The word “Parfums” was
disclaimed.

3. Access the USPTO website and locate the mark HONEY NUT CLUSTERS
registered in 2006 to General Mills, Inc. Review the Office Action issued
September 8, 1997, and the response by General Mills on November 17, 1997.
Why did the USPTO refuse registration, and how did General Mills overcome the
USPTO’s refusal of registration?
The USPTO refused registration on the basis that the mark was
merely descriptive. General Mills responded by adding a claim of
distinctiveness on the basis that the mark had acquired secondary
meaning as a result of its extensive advertising and sales. General
Mills had owned a prior registration for CLUSTERS since 1987 and
showed that since the use of HONEY NUT CLUSTERS began in
1996, it had sold 14 million boxes of cereal, achieved $42 million in
sales, and it had expended $4.5 million in advertising and promotional
expenses.

4. Access the USPTO website and review both the fee schedule and the Acceptable
Identification of Goods and Services Manual. Indicate the filing fee for an
application for YOUTH EDGE, filed as a TEAS RF application, for the following
goods: colognes, eyebrow pencils, glass jars for makeup utensils, hair coloring,
gloves for massage, and bath gloves or mitts.
Colognes, eyebrow pencils, and hair coloring are in I.C. 3; glass jars
for makeup utensils are in I.C. 21; gloves for massage are in I.C. 10;
and bath gloves or mitts are in I.C. 24. Thus, there are four
International Classes. The filing fee for a TEAS RF application is
$275 per class of goods. Thus, the total filing fee is $1,100.

5. Review Chapter 13 of the TMEP. What would be an acceptable specimen to show
use of the mark FREEDOM SQUARE in connection with a client’s band’s live
musical and entertainment services?
TMEP 1301.04(h)(ii) provides the following: For live entertainment
services, acceptable specimens include a photograph of the group or
individual in performance with the name displayed, e.g., the name
printed on the drum of a band. For any entertainment service,
advertisements or radio or television listings showing the mark may
be submitted, but the specimen must show that the mark is used to
identify and distinguish the services recited in the application, not just
the performer.

6. Locate Trademark Registration No. 4111254.
a. What is the mark?
The mark is PUPPY PAINT NATURAL AS MUD NON
TOXIC ODORLESS ECO-FRIENDLY.

b. Is the drawing a standard character drawing?
No.

c. What words were disclaimed?
The words “Non-Toxic,” “Odorless,” and “Eco-Friendly” were
disclaimed.

d. What type of “TEAS” application was filed for this mark?
This was a TEAS-Plus application.

7. Locate U.S. Serial Number 86331889.
a. What is this mark? The mark is #HELFIE.

b. Access the TSDR database and review the outgoing Office Action dated
October 23, 2014. What was the primary reason the USPTO refused
registration of the mark?

The USPTO stated that the mark was merely a hashtag for
social media services and did not function as a service mark.

8. Locate U.S. Serial Number 86/356985.
a. What is this mark?
The mark is MARIJUANA PACKAGING.

b. Access the TSDR database and review the outgoing Office Action dated
October 28, 2014. What was the primary reason the USPTO refused
registration of the mark in I.C. 16 and 21?
The application was refused because the goods offered under
the mark are not in lawful use in commerce.