Question one. Below is a record from the United States Patent and Trademark Office (USPTO) reflecting a real application to register a trademark in international class 025 for the mark OBAMA BIN LADEN. The trademark office rejected the application. Why? See 15 U.S.C. § 1052. Be prepared to explain in class what bases under section 1052 might justify the USPTO’s refusal to register the mark.
Question two. Your judge has asked for your opinion on a pending trademark dispute that she read about online. The BLUEBOOK is a citation manual used by many law schools, law students, and law reviews. Any lawyer knows about the BLUEBOOK. The BLUEBOOK mark is owned jointly by the law reviews of Harvard, Yale, and several other schools. Recently, a law professor and a well-known attorney felt that they could produce a citation manual that did a better job in a more organized fashion in less space and for less cost. They initially planned to call their book BABY BLUE. After objections from the BLUEBOOK trademark owners, they decided to call their citation manual THE INDIGO BOOK.
Your judge is curious as to whether the publishers of THE INDIGO BOOK could withstand a trademark infringement lawsuit by the owners of THE BLUEBOOK. Although trademark infringement analysis looks to a long list of non-exclusive factors such as mark strength, similarity of goods, similarity of consumers, and more, the only factor she wants you to consider is the degree of similarity of marks. To analyze similarity of marks, consider the overall commercial impression of the marks as well as the context in which they will appear to consumers. You should also consider the similarities of the marks in terms of sight, sound, and meaning. Be prepared to explain your conclusions and the reasons for your conclusions.
Hint: Go to http://www.nathenson.org/courses/ils/assignments/trademark-exercises/ for full-color versions of these images. That may help with your analysis.