Intellectual Property Law

Chapter 6 Discussion Questions

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?

• What is the absolute last date to file an opposition to FLIGHT TIME
(assuming the applicant consents to such)?

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

• AVIARA (registered on the Supplemental Register)

• MYSTERY PATH (registered on the Principal Register and sought to
be cancelled as descriptive)

• MONITOR (registered on the Principal Register and sought to be
cancelled on the grounds it is generic)

• The color beige used for wrapping or mailing paper (registered on the
Principal Register)

• Chef’s Delight (registered on the Principal Register and sought to be
cancelled as abandoned)

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).

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

• TWITTER (for shoes):
• CARTIER (for computers):
• COCA-COLA (mentioned in the Wall Street Journal article about
beverage sales in the United States):
• DISNEYLAND (for adult bookstores):
• METRO PLAN (for insurance services):
• STARBUCKS (for furniture):

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?

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?

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.