Study questions, Day 4

Constitution and Trademark statutes

  1. Look at Article I once again. Which provision(s) of Article I, section 8 might be used to justify the U.S. Congress creating federal trademark laws?
  2. Could Congress create federal trademark laws for a trademark that is used only in Akron, OH for Ohio consumers? Why or why not? Consider Article I, section 8, clause 3, as well as 15 U.S.C. §§ 1114(1), 1125(a).
  3. Can Professor Nathenson register the following marks? See 15 U.S.C. § 1052.
    1. ABRAHAM LINCOLN for hats.
    2. WILLIAM JEFFERSON CLINTON for saxophones.
    3. DEAN ALFREDO GARCIA for legal education services.
    4. PROFESSOR NATHENSON for online legal education services.
    5. LIVING LEATHER for expensive coats made of fake leather.
    6. REDSKINS for a football team.
    7. NIKEE for athletic shoes.
    8. LKDGIEJHLS for computer keyboards.
    9. CHEESY for pizza.
    10. CHEESE for cheese.
  4. Shelly is an expert in making pork pizzas and decides to open a new restaurant. Shelly plans to call it PORK-U-PIES. Shelly plans to open the restaurant in December but won’t be offering any pizzas for sale until then. Shelly is worried that somebody else might steal the idea and start selling PORK-U-PIES pizzas before the restaurant opens. Does 15 U.S.C. § 1127 provide any support for the proposition that a “trademark” can include Shelly’s intended mark?
  5. Suppose I have been using the trademark SCOOTER for 30 years throughout the United States as a valid common-law unregistered mark in connection with frozen beverages. If somebody else starts selling SCOOTER beverages in competition with me, can I use trademark law to sue them? See 15 U.S.C. §§ 1114(1), 1125(a).


  1. Who are the parties?
    1. Plaintiff? Defendant?
    2. Petitioner? Respondent?
    3. Note that the petitioner need not be a plaintiff and is instead the person who is appealing to the Supreme Court.
  2. Describe the nature of the trademark at issue in Qualitex. Is it a word? A logo? Something else?
  3. According to Qualitex, where in the Abercrombie spectrum does color fall as a mark?
  4. Can color ever be inherently distinctive? If not, can it ever serve as a trademark?
  5. Does the Court’s decision make it easier or more difficult to assert trademark rights in a color?
  6. Do colors ever have utilitarian purposes? Come up with examples.
  7. Could I obtain trademark rights in:
    1. A unique smartphone ringtone.
    2. The smell of pizza used in connection with pizza.
    3. The smell of pizza used for stationery.
    4. The taste of apples used on the back of stickers.


  1. Consider your studies from Day 1 through Day 3. Do any of the earlier cases use trademark-like reasoning? If so, which one(s)?
  2. In light of question 1, what social policies should be advanced by trademark rights?
    1. To protect consumers from confusion in the marketplace.
    2. To lower consumer search costs in the marketplace.
    3. To provide incentives to create products of high quality.
    4. To provide incentives to create new trademarks.
    5. To reward the creators of distinctive and famous trademarks.
    6. To prevent unfair competition and free-riding.
  3. How broad are trademark rights? Formulate arguments using the skills you have developed so far.
    1. Could United Airlines sue the United Way?
    2. Could Best Buy and Apple prevent me from advertising computers at Nathenson’s PC Store in an ad where I say “Come to Nathenson’s PC Store for a best buy on Macintosh computers!”?
    3. Could Apple Computer prevent Google from advertising “Buy an Android, they are much more powerful than an Apple iPhone”?
    4. Could Mercedes prevent a pizza shop from calling its pies “The Mercedes of pizza!”?