Intellectual Property Law

Chapter 5 Internet Resources Solutions

1. Access the USPTO database and locate U.S. Registration No. 3219671.
a. Who was the registrant?
The registrant was the United States Government Printing
Office.

b. Review the TSDR documents. Why is this registration “Dead”?
The registration was cancelled because the registrant did not
file an acceptable declaration under Section 8.

2. Access the USPTO database and locate the registered mark THE DISNEY
CHANNEL. Review the assignment documents. Describe the three assignments
or changes of ownership of this mark.
The mark was originally registered to Walt Disney Productions. In
1986 it was assigned from Walt Disney Productions to The Walt
Disney Company (name change). In 1988 it was assigned from The
Walt Disney Company (a California corporation) to The Walt Disney
Company (a Delaware corporation). In 1996, it was assigned from The
Walt Disney Company to Disney Enterprises Inc. (change of name).

3. Access the USPTO database and review the following four registrations:
0348834; 0526830; 1527213; 4381229. What do you notice about the design used
in these marks?
These marks all display the QUAKER OATS man. Over the years,
the design of the man has been modernized. This is an example of the
fact that marks change over the years.

4. Smith Inc., the owner of the registered mark EAGLE POINT, would like to file an
affidavit of incontestability for the mark. Smith is currently a plaintiff in an action
alleging infringement of the mark. May Smith file the Section 15 Affidavit of
Incontestability? Review the TMEP to answer this question.
Smith may file the Section 15 Affidavit of Incontestability. The statute
requires that Smith allege that there has been no final decision
adverse to its claim of ownership (or its right to register the mark)
and that there is no proceeding involving said rights pending in a
court. Smith is the plaintiff in an action involving the mark. This is
not a proceeding that would be adverse to the mark.
TMEP 1605.04 provides the following: “The USPTO does not
consider a proceeding involving the mark in which the owner is the
plaintiff, where there is no counterclaim involving the owner’s rights
in the mark, to be a ‘proceeding involving these rights’ that would
preclude the filing or acknowledgement of a § 15 affidavit or
declaration.”

5. Jacobsen Co. intends to assign 12 registered trademarks to Glen Optics, Inc.
Calculate the fee if the assignment for all 12 marks is recorded in one document.
The fee for the first mark in the document is $40; the fee for
remaining marks in the same document is $25 each. Thus, the fee is
$315.00.

6. Access Microsoft’s website and search for “General Microsoft Trademark
Guidelines.” What example does Microsoft give for the incorrect use of its marks
in text in the possessive or plural form?
“Widget Software Company included some Power Points in its
presentation.”