Intellectual Property Law

Chapter 6 Discussion Answers

1. The mark FLIGHT TIME was published for opposition in the Official Gazette on
November 18. Your client timely filed a first 30-day request for extension of time
to oppose the mark and would now like to file a second request.

• When will the next request for extension of time expire?
Because the first request was for 30 days, it expired on
December 18. The second request may request 60 days (and
must allege good cause), and thus it will expire on February 16.

• What is the absolute last date to file an opposition to FLIGHT TIME
(assuming the applicant consents to such)?
The time for filing an opposition cannot be extended beyond
180 days from the date of publication. In this case, 180 days
after publication is May 16.

2. Give the appropriate time limits to cancel the following marks:

• AVIARA (registered on the Supplemental Register)
A mark registered on the Supplemental Register can be
cancelled at any time.

• MYSTERY PATH (registered on the Principal Register and sought to
be cancelled as descriptive)
A petition to cancel a mark for descriptiveness must be
brought within 5 years.

• MONITOR (registered on the Principal Register and sought to be
cancelled on the grounds it is generic)
A petition to cancel a mark on the basis that it is generic
may be filed at any time.

• The color beige used for wrapping or mailing paper (registered on the
Principal Register)
A petition to cancel a mark on the basis that it is
functional (that is the likeliest reason to petition to
cancel this mark) can be filed at any time.

• Chef’s Delight (registered on the Principal Register and sought to be
cancelled as abandoned)
A petition to cancel a mark on the basis that it has been
abandoned may be filed at any time.

3. Discuss whether you believe BAGEL HUT is confusingly similar to BAGEL
CHALET (both marks are used in connection with the retail sale of bagels).
Although the marks share a common element (the word “bagel”), that
word is descriptive in connection with the services/goods offered
under the mark. Thus, the marks must be compared on the basis of
their nondescriptive elements. In this case, “Hut” and “Chalet” both
connote places/stores, etc. Nevertheless, it seems unlikely that the
marks would be confusingly similar because there are likely
numerous similar marks for similar services that coexist. Although
the purchasers are the same, the goods are sold in the same channels
of trade, and the goods are inexpensive (factors which tend to show
likelihood of confusion), the weakness of these marks and their ability
to be distinguished on the basis of their non-common elements tends
to show that there is no likelihood of confusion. When marks include
compound words (as is the case here), some courts consider whether
there is a dominant portion of the mark and give less weight to the
common or descriptive elements. Because the descriptive prefix or
word “Bagel” is likely commonly used in connection with the sale of
bagels, courts would look at the remaining part of the marks (“hut”
and “chalet”) and likely hold that the marks can coexist.

4. Indicate whether the following uses by ABC Inc. might constitute dilution by
blurring or tarnishment (or might not be actionable):

• TWITTER (for shoes): Blurring
• CARTIER (for computers): Blurring
• COCA-COLA (mentioned in the Wall Street Journal article about
beverage sales in the United States): Not actionable as dilution,
per the wording of the statute because this is permissible news
commentary
• DISNEYLAND (for adult bookstores): Tarnishment
• METRO PLAN (for insurance services): Not actionable—this
mark is not famous.
• STARBUCKS (for furniture): Blurring

5. A client uses MOISTURESOFT for moisturizer and has been sued by the owner
of MOISTURESENSE (for moisturizer). You have discovered existing
registrations for MOISTURELOCK, MOISTURERIGHT, MOISTUREWEAR,
and MOISTURECURE (all used in connection with moisturizer). What defense
should be asserted by the client?
When marks include compound words (as is the case here), some
courts consider whether there is a dominant portion of the mark and
give less weight to the common or descriptive elements. Because the
descriptive prefix or word “Moisture” is so commonly used in
connection with moisturizing products, it is likely that the remainder
of the marks (“soft” and “sense”) are distinguishable. Moreover, the
existence of these numerous other similar marks for similar goods
shows that there should be room for another mark. If numerous other
marks are similar and coexist, this shows that confusion is unlikely.

6. ABC Inc., the owner of the registered mark TONY’S DONUT HOUSE (for retail
sale of baked goods) writes a letter to XYZ Co. indicating that ABC objects to
XYZ’s use of BILL’S DONUT SHOP (for retail sale of baked goods) and states
that it is reviewing the matter and will contact XYZ. XYZ then spends significant
sums of money in promoting its mark and services. Three years after the date of
the letter, ABC sues XYZ for trademark infringement. What defenses should
XYZ assert?
XYZ should assert that ABC acquiesced in its use of the mark. Its
words (that it would review the matter and contact XYZ) and then its
failure to comply with its promise to contact XYZ led XYZ to logically
assume ABC did not believe XYZ’s use was infringing. Moreover,
XYZ should assert the defense of laches, meaning that ABC has
delayed an unreasonable amount of time and this delay prejudiced
XYZ who in the intervening three years has been expending money in
promoting its mark and thus should be allowed to continue using its
mark.

7. United States chocolate maker Hershey Company has authorized Calico Inc. to
distribute its chocolate bars in Venezuela, although the chocolates distributed
there differ from the chocolates distributed in the United States in taste, variety,
and price. ABC has been purchasing the chocolates from Calico and then
importing them into the United States and selling them with the Hershey marks. Is
this permissible? Discuss.
No. These are gray market goods. The import and sale of genuine
gray market goods is not infringement; however, if the goods are
materially different from the authorized imports (as they are in this
case), then it may create a likelihood of confusion and the imports
may be banned.