Intellectual Property Law

Chapter 5 Discussion Answers

1. Hanover Inc., the owner of the registered mark PAPER DOLLS, recently merged
into Strong Construction, Inc., with Strong acquiring all of Hanover’s assets. Can
Strong file the documents due in two months to renew PAPER DOLLS? Discuss.
No. Only the owner of a registered mark can file the appropriate
documents to renew the mark. The USPTO records currently reflect
that Hanover is the owner of the mark. Thus, the parties need to file
the appropriate documents with the USPTO (an assignment
agreement, merger agreement, etc.) to show that Strong is now the
owner of the mark. Once they do so (and the documents are accepted),
Strong will be able to file the pertinent documents with the USPTO to
maintain the registration.

2. The Chief Executive Officer of WRP Inc. stated three years ago that the company
was struggling financially. He also stated that the company was suspending use of
its registered mark TIP TOUCH because the company did not have the ability to
market the products offered under the mark. He also stated that if the company
could find funding or obtain a bank loan to make the products offered under TIP
TOUCH it would once again use the mark. Discuss whether TIP TOUCH has
been abandoned.
The mark has likely been abandoned. There is a presumption that
three years nonuse of a mark constitutes abandonment of a mark. To
rebut this presumption, WRP would have to show evidence of use
(which it cannot) or proof of its intent to resume use. Vague
statements such as “If we can obtain funding to make products, we
can use the mark” are likely insufficient to show intent to resume use.
It appears that WRP is not using the mark for purely economic
reasons that make selling the product under the mark unprofitable.
These are exactly the types of “deadwood” marks the USPTO wants
to eliminate so that others might use them.

3. In 2011 Harris Inc. registered the mark DUET-PEN. Over the years, Harris has
begun showing the mark as DUET PEN.

a. Discuss whether the USPTO is likely to accept an Affidavit of Use
showing use of the mark as DUET PEN.
The USPTO must determine if this change is material. In this
case, a mere omission of a hyphen is likely to be viewed as an
immaterial change. The commercial impression of the two
marks is the same. Harris should, however, amend its
registration so that it conforms to the mark as presently used.

b. Would your answer be different if Harris had begun showing the mark as
DUO PEN?
Yes. DUO PEN and DUET PEN create different commercial
impressions. It seems likely that the USPTO would determine
that this change in the mark is material and would thus refuse
to accept the Affidavit of Use, in which case, Harris should file
a new trademark application for DUO PEN.

4. The mark QUICK CLIP was registered on April 14, 2016. Give the earliest and
latest dates that its Section 8 affidavits of use and Section 9 application for
renewal may be filed.
The Section 8 Affidavit may be filed between April 14, 2021 and April
14, 2022 (or within the six-month grace period after April 14, 2022,
which would be October 14, 2022).
The Section 9 Application for Renewal may be filed between April 14,
2026 and April 14, 2027 (or within the six-month grace period
thereafter, or until October 14, 2027)

5. Indicate which of the following is a correct or incorrect use of a trademark:

• I love Yoplait yogurt.
Acceptable use. Mark is used as an adjective.

• Give me another Starbucks.
Unacceptable use. Mark is used as a noun.

• I need a new pair of Reeboks.
Unacceptable use. Mark is used as a plural noun.

• I’ll be giving out Dove ice cream bars at the picnic.
Acceptable use. Mark is used as an adjective.

• I’m buying my niece a Malibu Barbie.
Unacceptable use. Mark is used as a noun.