EXAM PROBLEM 1: INJUNCTION

The court should grant injunctive relief if the plaintiff establishes that the defendant’s use of
the mark has created likelihood of confusion about the origin of Defendant’s goods or
services.

1. THE PARTY HAS A SUBSTANTIAL LIKELIHOOD OF SUCCESS ON THE MERITS

OF THE CLAIM  It's not a frivolous claim because the ___ is going to win:

CLAIM 1: Trademark Infringement or Unfair Competition (same test): If registration 

sue for TM infringement; IF no registration, you can only sue for unfair competition.

A. Priority of A Valid Trademark:

PLAINTIFF: P can have priority because they’re registered or the senior user:
 Registration: In order to bring a claim for trademark infringement, P must show that it
owns the asserted mark and that the mark is valid and legally protectable. Registration is
prima facie evidence of a valid mark.
o Show that the prima facie evidence in backed up by actual evidence.
o Ownership is showed through use
o A valid and protectable mark must be inherently distinct to identify the source of the
goods  descriptive (secondary meaning shown through use, testimony, surveys),
suggestive, fanciful, or arbitrary.
 Senior User: However, without registration, the moving party must prove prior use and
that the mark is valid and legally protectable. To demonstrate prior use, you must show
that the user is making an offering of his good or service to the public. See Planetary
Motion. Actual sales are not needed, just the mere option to make a purchase of the
users goods is necessary. Id. Mere preparation to use the mark in commerce will not
suffice to demonstrate use. Aycock. By utilizing the Mendes Test, we must provide
evidence that first shows adoption of the mark, and second shows use in a way
sufficiently public to identify or distinguish the marked goods in an appropriate segment
of the public mind. There will only be actual use if the mark is physically associated
with the good and these goods are sold and transported in commerce.
o Use facts to show senior user is offering of the good/service to the public.
o Show adoption of the mark.
o Show use in a public way.
o Show how the word‚ name‚ phrase‚ logo‚ or symbol used to identify the source of
products or services and distinguish those products from others.
o Show physical association of mark with good.
o Show use in interstate commerce or in more than one state or in this and a foreign
country. Aycock.

DEFENDANT: Plaintiff’s trademark is not valid (see outline pg. 28-29 for timing of defenses)
 Rebut use and validity: mark does not identify source of goods, abandonment (lack of
use for 3 years is prima facie evidence of abandonment  intent to use is not enough
Ayecock), genericide; fraud in obtaining registration, illegal use.
 Rebut secondary meaning: concurrent use by competitors.
B. Likelihood of Confusion  Plaintiff claims there is a likelihood of confusion. Defendant
claims there is no likelihood of confusion. When assessing likelihood of confusion, each
circuit uses a slightly different test to analyze whether there would be confusion in the minds
of consumers. Because we are in the [XX circuit], the factors that the court will use are the
following:

1. Strength of the Mark: The strength of the mark refers to the distinctiveness of the mark
and its tendency to identify the goods or services sold under the mark as emanating from
a particular source. When assessing the strength of the mark there are two types of
strength to consider: conceptual strength and commercial strength. Conceptual strength
refers to the strength of the mark in the consumers mind. Commercial strength looks to
the degree of actual recognition in the marketplace by viewing sales, promotions,
publicity, and recognition of the brand in the market.
o We are looking at the strength of the plaintiff’s mark!
o Conceptual Strength: look at the degree of distinctiveness (see attack pg. 1) 
descriptive (secondary meaning), suggestive, arbitrary, fanciful.
 If descriptive, first, explain why using tests; second, go through secondary
meaning factors (see attack pg. 2).
o Commercial Strength: look at the degree of actual recognition in the marketplace

PLAINTIFF: Plaintiff’s mark is both conceptually and commercially strong.

DEFENDANT: Plaintiff’s mark is not conceptually strong because it uses characteristics
used by many other companies. The mark is not commercially strong because...
o Rebut testimony, commercial. Impressions, etc.

2. Similarity of the Mark: The similarity of the mark focuses on the overall appearance of
the mark. We look at appearance, sound, commercial impression, and connotation.

PLAINTIFF: Plaintiff’s and defendant’s marks use the same...

DEFENDANT: Plaintiff’s and defendant’s marks can be distinguished because

3. Relatedness of the Goods and Services (proximity of products): Next, we look at the
relatedness of the Goods and Services. The goods/services don’t need to be directly
related (as originally held in Borden), but only competitively related (Fleischmann
Distilling).

PLAINTIFF: Plaintiff’s and defendant’s marks are related because...

DEFENDANT: Plaintiff’s and defendant’s marks are not related. One is a [___], while the
other is a [___].

4. Similarity of Retailers/Purchasers: The similarity of retailers and purchasers prong

looks at where the goods or services are being sold.

PLAINTIFF: Plaintiff’s and defendant’s marks are likely to be sold by the same retailers
and purchased by the same purchasers.
 DEFENDANT: Plaintiff’s and defendant’s marks are sold in different retailers and have
different purchasers. Elaborate.

5. Likelihood Prior Owner will “Bridge the Gap:” If it is probable that the senior user
will expand into the junior user’s product area, the more likely there will be confusion.

6. Similarity of Advertising: The similarity of advertising factor looks to channel where

each mark user advertises.

PLAINTIFF: Plaintiff’s and defendant’s marks both advertise on...

DEFENDANT: Plaintiff’s and defendant’s advertising practices are distinct from one
another

7. Intent: Next, we must determine whether the user of the mark at issue intend to infringe
on the senior user’s mark. This prong, typically being a matter of inference and/or
presumption, is difficult to prove. Here, however...

PLAINTIFF: Defendant’s use of its mark clearly shows bad intent. Defendant clearly
knew of plaintiff’s mark and intended to copy it by using similar [___].
DEFENDANT: Defendant did not intend to infringe on the senior user’s mark.

8. Actual Confusion: Lastly, we look for proof of actual consumer confusion. To

demonstrate actual confusion the parties may present surveys as circumstantial evidence
of actual confusion and call experts to testify as to the survey methodology.
o What type of confusion? Initial interest, point-of-sale, post-sale, direct, reverse?
Focus on point-of-sale!!

PLAINTIFF: Evidence shows that consumers have been actually confused as to the source
of the two products.
o If there is no evidence of actual confusion, say through conducting surveys, plaintiff
could show it. However, this prong is not required to show confusion.
DEFENDANT: There is no proof of actual confusion – stress this!!!

9. Sophistication of the Buyers: The second circuit looks to the sophistication of the
buyers. The standard is that of a “reasonably prudent buyer,” i.e., a common buyer class.
However, courts assume a greater level of prudence and care on the part of the customer
where the goods are expensive because professional buyers more knowledgeable and
better able to discriminate among suppliers, thereby reducing the likelihood of
confusion.

PLAINTIFF: reasonably prudent buyer is unsophisticated  high likelihood of confusion

DEFENDANT: specialty class  sophisticated buyer
CLAIM 2: Dilution: The owner of this mark will be subject to injunctive relief in the case
where another person (a junior user) uses his mark or trade name in commerce that is likely to
cause dilution—this is regardless of any presence or absence of actual, or likely confusion, of
competition, or of actual economic injury. For dilution, the mark must be famous and the junior
user’s use of the mark must be after the mark has become famous. Only a likelihood of dilution
need be shown. There are two types of dilution: burring and tarnishment.

PLAINTIFF:
 Their mark is famous
 The junior user made commercial use of the famous mark
 The junior user began using famous mark after it became famous
 Junior user’s use caused both tarnishment and blurring

A. Tarnishment: Dilution by tarnishment is association arising from the similarity between a

mark or trade name and a famous mark that harms the reputation of the famous mark. Toys R
Us; Victoria’s Secret. This claim must be supported by evidence that the plaintiff’s mark will
suffer negative associations from the defendant’s use.

PLAINTIFF:
o Establish that the mark is famous.
o Discuss unsavory content inferior or offensive product or service (e.g., association with
sex, drugs, or nudity) that mark is being associated with
o Thus, mark is being tarnished  show evidence that plaintiff’s mark will suffer negative
associations from defendant’s use.
o Must show harm!

DEFENDANT: Not famous, not commercial, not unsavory, not tarnishing...

o If P shows tarnishment, rebuttable presumption is on D to prove no tarnishment. Mosley.

B. Blurring: Dilution by blurring is association arising from similarity between a mark or trade
name and a famous mark that impairs the distinctiveness of the famous mark. In other
words, blurring occurs when a mark previously associated with one product also becomes
associated with a second—the gradual whittling away or dispersion of the identity and hold
on the public’s mind of the mark or name by its use upon non-competing goods. This
weakens the mark’s ability to evoke the first product in the minds of consumers. The factors
considered when determining whether or not blurring is likely to occur are:

1. Similarity between mark or trade name: The similarity between the mark focuses on
the overall appearance of the marks. Similar to a likelihood of analysis, we look at
appearance, sound, commercial impression, and connotation. However, under a blurring
analysis, substantial similarity is not required (Starbucks).
o Assess the similarity between the famous mark and the mark at issue.

2. Degree of inherentness or distinctiveness: Next, we look to the degree of inherentness

or distinctiveness of the famous mark. This mark, being [descriptive, suggestive,
arbitrary, fanciful] is inherently distinct. Explain why...
o Assess the degree of inherent or acquired distinctiveness of the famous mark.
 3. Extent to which owner was engaging in use of the mark: Next, we look to the extent
to which the owner of the famous mark is engaging in substantially exclusive use of the
mark.
o Assess whether the owner of the famous mark is engaging in substantially exclusive
use of the mark.

4. Degree of recognition of the famous mark: The degree of recognition of the famous
mark looks from the point of view of the consumer.

5. Whether use of mark intended to create an association: Next, we must determine

whether the user of the mark at issue intended to create an association with the famous
mark. This inquiry, similar to the intent factor in the likelihood of confusion analysis,
looks at whether there was bad faith.
o Assess whether the non-famous user intended to create an association with the
famous mark?

6. Actual association: Lastly, we look to see if there was any actual association between
the two marks. Crucially, this prong requires only actual “association,” not actual
confusion. Starbucks.
o Determine whether there was any actual association?

AFFIRMATIVE DEFENSES:

Defenses for TM Infringement:

 Genericism: A mark can go from distinctive to generic over time. The act of turning generic
is known as genericide.

 Abandonment: When a mark owner discontinues use of the mark, it is deemed abandoned,
unless the mark owner shows something beyond mere subjective intent to resume use within
the foreseeable future (Emergency One).

 Fraud: A trademark is procured through fraud if the applicant made a false representation to
USPTO; the false representation is material to the registrability of a mark; applicant had
knowledge of the falsity; and applicant made representation with the INTENT to deceive the
USPTO. Bose.

 Laches: Laches occurs where a TM holder knowingly allowed the infringing mark to be
used without objection for a lengthy period of time. When a party seeking injunctive relief
in a trademark infringement case excessively delays seeking such relief, the presumption of
harm to the plaintiff becomes inapplicable. To determine laches, the court must ask first,
was the plaintiff’s delay in bringing the suit unreasonable and second, what the defendant
prejudiced by the delay.
o Show why the answer to 1 and two are YES. For 2, stress that defendant invested time
and energy in its good/service.
 Defenses for Dilution:
 Fair Use: Fair use reflects the limited nature of TM rights, ensuring that TM rights do not
become gross property rights that result in the removal of words from the language. Fair use
of a famous mark by another person in a comparative commercial advertising or promotion
to identify the competing goods or services of the owner of the famous mark. (See R.G.
Smith v. Chanel, Inc.) is a valid defense to a dilution claim. However, proof of actual
confusion may preclude the successful assertion of the fair use defense. (KP Permanent
Make-Up, Inc.)
o Show how this is fair use  Cairnes Factors for Fair Use:
 Does the use falsely suggest a connection, affiliation or sponsorship?
 Is the use necessary or appropriate to convey information about the user’s or
another’s product, service or business?
 Is the use descriptive of the nature, characteristics, or quality of the material?
o [FOR DESCRIPTIVE FAIR USE] Here, the mark was used only for description, not as
a mark; and in good faith (See Fortune Dynamic v. VS; Winfrey, pg. 58-59).

 Non-commercial use of the mark: When a mark is not used commercially (i.e. not in
commerce), there will be no dilution. Speech is not “purely commercial” when it does more
than propose a commercial transaction. Mattel, Inc. v. MCA Records. Such speech, e.g.,
literary titles, is entitled to First Amendment protection. For example, in Mattel, the court
held that the Barbie Girl song was parody, i.e., not purely commercial, and thus protected
under the First Amendment and within the noncommercial use exemption to Dilution.
Likewise, the mark here is not purely commercial.
o Explain how the mark does more than propose a commercial transaction.
o If there is confusion with non-commercial usage  Non-commercial use implicates the
First Amendment, but in relation to TM use, such a right is not absolute. When proof of
confusion is present, the court must weigh the public interest in free expression against
the public interest in avoiding consumer confusion. If a mark is likely to cause
confusion, the mark will be found invalid, despite a noncommercial use. See Anheuser-
Busch.
o Rogers Test (to determine parody):
 TM must have artistic relevance to the underlying work.
 Use cannot mislead consumers as to the source or content of the work.

 All forms of news reporting and commentary: All forms of news reporting and
commentary are protected by the First Amendment and thus permitted even if found to be
dilutive. See Matel.

2. PLAINTIFF WILL SUFFER IRREPARABLE INJURY ($) IF THE INJUNCTION IS

NOT ISSUED

PLAINTIFF: The plaintiff will suffer irreparable harm because money will not be able to fix the
damage done to the mark, nor its reputation. In Toys R Us v. Akkaoui, the preliminary
injunction was granted because there was irreparable injury done to Toys R Us with the
establishment of Adults R Us as a sex shop. Toys R Us had been using its “R” well before
Adults R Us registered its site and this association is completely inconsistent with the image it
tried to maintain.
 o Use facts to explain why the injury to client and the mark itself cannot be fixed by money.

DEFENDANT: There is no demonstration of irreparable harm because the harm asserted is merely
speculative. Assuming, arguendo, that there is harm, the plaintiff can be made whole again with
money.
o Show why harm is merely speculative
o Explain why injury could be fixed with money

3. THE THREATENED INJURY TO THE PLAINTIFF OUTWEIGHS WHATEVER

DAMAGE THE PROPOSED INJUNCTION MAY CAUSE TO THE DEFENDANTS

PLAINTIFF: The injury that the plaintiff has faced and continues to face outweighs any trivial
damage that the defendant may face if the injunction is granted.
o Use the facts to explain why P’s injury will be worse by D’s use than D’s injury will be by
D’s non-use.

DEFENDANT: On balance, if the defendant is forced to stop, the harm resulting to the defendant
will greatly outweigh the harm faced by the plaintiff. While it is true that there is a presumption
of irreparable injury in trademark cases, this presumption can be rebutted. Here, Defendant
asserts that its harm outweighs the minor harm to the plaintiff. If the injunction is granted,
Defendant would no longer be able to conduct their business. Additionally, this Court would be
infringing on the Defendant’s First Amendment Free Speech rights.
o Use facts to show harm to the Defendant.

4. GRANTING THE INJUNCTION WOULD NOT BE ADVERSE TO THE PUBLIC

INTEREST

PLAINTIFF: Granting an injunction would not be adverse to public interest. In fact, consumers
would be served by the issuance of this injunction because it will prevent consumer confusion.
o Argue that the consumers would be served by the issuance because there will be no
confusion.

DEFENDANT: Granting the injunction would be adverse to public interest. This court has a
responsibility to foster healthy competition and encourage free speech. However, this injunction
would inhibit healthy competition and stifle free speech. Additionally, the public has an interest
in many different options in choices. However, if the injunction is granted, consumer will have
one less choice as to where they can get specific goods/services.
o Argue that we want to foster healthy competition; encourage free speech; and we want the
public to have choices.

 IN ADDITION, YOU MAY ALSO BE [ENTITLED TO/LIABLE FOR]:

1. Damages

 Compensatory: Compensatory damages require that a wrongfully injured trademark

owner be restored back to his rightful position that he would have occupied had the
wrong not been committed. To recover, a plaintiff must demonstrate causation; plaintiff
 must show he likely would have made the claimed sales, likely would have earned the
claimed profit, but for the D’s infringement. Additionally, the plaintiff must show actual
consumer confusion resulting in the diversion of sales.
o Show damage requiring compensation
o Show causation

 Punitive:
o Typically, only awarded when bad faith is shown (e.g., counterfeit cases)

 Accounting of profits: Accounting for Profits authorizes a TM owner to recover an

infringer’s profits resulting from its violation of the Act. The actual damages remedy
allows an aggrieved IP owner to recover her own losses, including lost profits, to the
extent she can prove their amount and causation. A TM owner may obtain an accounting
without proof of either actual customer confusion or economic loss. Profits may be
awarded based on unjust enrichment, deterrence, and compensation. An accounting is
only proper where the defendant is willfully attempting to gain value of an established
name of another (Lindy Pen: no accounting because infringement was innocent).
o P has the burden to show infringer’s gross revenue (sales);
o D has the burden in apportioning the gross revenue between infringing and non-
infringing activities;
o D must make proper deductions from gross revenues.

2. Attorney’s Fees: Attorney’s fees are only awarded in “exceptional” cases where the D
engaged in culpable conduct circumstances are “exceptional” enough to warrant a fee award.
Such fees are normally seen in cases of intentional infringement and counterfeiting, where
bad faith is present.

While your case presents a strong argument in favor of [claim], all remedies in trademark cases are
subject to principles of equity and broad discretion of the trial judge.
EXAM PROBLEM 2: REGISTRATION PROBLEM

Dear client, you’ve been refused on the basis of _____, this is the test for ______, I think we should
answer like this...

Bases for Rejection:

 § 2(a) prohibits against deceptive marks or marks which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute; or a geographical indication which, when used on or in connection
with wines or spirits, identifies a place other than the origin of the goods.

 § 2(b) prohibits marks that include flags or code of arms of the United States, state or foreign
nation;

 § 2(c) prohibits marks that include a name, portrait or signature of a living individual without
individual’s consent; or the name, signature, or portrait of a deceased President of the U.S.
during the life of his widow, if any, except by the written consent of the widow;

§ 2(d) prohibits marks that would likely cause confusion with an existing registered mark or
prior pending mark. In determining likelihood of confusion, [Federal Courts, TTAB, or PTO]
analyze the thirteen factors set out in DuPont. This court rejected Applicant’s mark on the basis
of factors [XXX]. Although the court contends that Applicant’s mark is [___], you attorney
recommends demonstrating...

 § 2(e) prohibits marks that are

1) Merely descriptive or deceptively misdescriptive;
 For merely descriptive, to argue against this you could say there is secondary
meaning.
 For deceptively misdescriptive, consider whether that feature is something that would
affect the buyer’s purchasing decision.
2) Primarily geographically descriptive;
3) Primarily geographically deceptively misdescriptive (e.g. “Napa” wine from Ohio);
 Would purchasers be likely to believe the goods came from the geographic place
identified in the mark?

TEST for § 2(e)(2) & § 2(e)(3):

o Is the primary significance of the mark a generally known geographic location?
o Do the goods or services originate in the place identified in the mark?
 RULE: If the goods actually came from the location, it is primarily geographically descriptive and
registrable only if it has acquired secondary meaning (Appalachian Log Homes: geographic term, no
secondary meaning, unprotectable).
 RULE: If the goods do not come from the geographical location, you must determine if it is
deceptive or geographically deceptively misdescriptive.
o Secondary meaning does not cure deceptiveness!

4) Primarily merely a surname.

 Look at whether: the surname is rare, anyone connected with applicant has involved
term as a surname, term has any other recognized meaning, term has look and feel of
 a surname (United Distillers: “Hackler” is a rare surname that has secondary
meaning).

 § 2(f): [DEFENSE] Acquired Secondary Meaning: Allows registration of a mark used by the
applicant which has become distinctive of the applicant's goods in commerce. Objections based
on § 2(e)(1) merely descriptive, § 2(e)(2) primarily geographically descriptive, and §2(e)(4)
primarily merely a surname can be overcome by secondary meaning. Secondary meaning is
proof of substantially excusive and continuous use of the trademark in commerce for five years
before the date on which the claim of distinctiveness is made.

Alternatively, SUPPLEMENTAL REGISTER: If you are unable to prove that your mark is
fanciful, arbitrary, suggestive or merely descriptive/descriptively misdiscriptive with secondary
meaning, then bear in mind that you may want to consider filing for Supplemental Register.
Supplemental Register is available for trademarks that are not registerable under the Principal
Register, but are still capable of distinguishing an applicant’s goods or service. Although filing for
supplemental registration does not provide for prima facie evidence of your exclusive right to use
the mark, nor is it constructive notice of claim of ownership, it does allow you to reapply to be the
principal register after five years, when you can establish evidence of secondary meaning. Consider
it a parking place for your application that may not meet Lanham Act protectability, because you
are still in the process of acquiring secondary meaning. Supplemental Registration does allow you
to bring suit for infringement, and it can be cited by the examiner against future trademark
applications for confusingly similar marks on either Principal or Supplemental Registers. Keep in
mind that this is considered an admission that the trademark is weak, but it is an option that you
may consider if you desire. Additionally, you can only seek the supplemental register once the mark
is used in commerce.