Trademark project III (2017): knock-out search

MEMORANDUM

THOMAS, THOMAS, AND THOMAS

A Pretend Limited Liability Partnership

From: Ira Steven Nathenson, “Managing Partner,” T3 PLLP
To: Spring 2017 T-Cubed “Associates”
Date: Feb. 28, 2017
Re: Trademark project 3: trademark “knock-out” search

Assignment.

Background.  Broadly speaking, there are two kinds of trademark searches: a “knock-out” search and a full clearance search.  Whereas a “knock-out” is intended to determine whether any obvious impediments exist regarding the proposed mark, a full search is more comprehensive and is geared towards possible clearance for actual use and registration.  Your assignment is to do a “knock-out” search on a fictional trademark.  You have been assigned a mark and will engage in a “knock-out” search on that mark using real-world search tools.  For background guidance on trademark searching, see Tamar Niv Bessinger, Ethics Issues in Searching Trademarks and Offering Opinions, available here.

Educational goals.  In the real world, you will do more than legal research and analysis: you will also utilize and develop a broad spectrum of legal skills, such as factual investigation, communication, and counseling.  You will soon recognize that professional values—those embodied in ethics codes as well as broader societal concerns—also play a huge role in the actions you take as a lawyer.  As noted in proposals for reforms for legal education, it is vital that law schools find ways to treat students as apprentices, with a holistic approach that pulls together analysis, skills, and values.  In 1992, the MacCrate Report provided a detailed taxonomy of lawyering skills and recommended that those skills be better incorporated into legal education.  In 2007, two additional significant documents, the Carnegie Report and Best Practices in Legal Education, further advocated for curricular reform.  Therefore, in this assignment, you will apply the legal doctrine that we have studied in a practical way.

Details of assignment.

  1. Client and trademark. Your client and trademark have been assigned to you. Your client is Acme, Inc., the same company you have worked for previously. The CEO of Acme is the person listed as CEO besides your name on this page.
  1. Conduct “knock-out” searching. Use the trademark search tools available through the Trademark Office website (http://www.uspto.gov). Try various tools and search strategies. Your searching should not be limited just to the Trademark Office website: you may and should consider using other search tools. Print out documentation that reflects your search strategies and the results of various searches. Bring preliminary results of your search to class on March 14. 
  1. Draft a client letter. No more than ten (10) pages in 12-point Times New Roman, with page numbering, single-spacing, spaces between each paragraph, and normal 1″ margins, discussing each of the following matters:

a.Search strategy. The first part of the memo should explain the search strategies you used (be specific) and should briefly explain the results obtained (such as numbers of hits and the helpfulness of your strategies in finding relevant applications/registrations) [Noted in class week of 3/14, posted online 3/21, and announced again 3/21]

Tips: I would recommend that you organize your search results carefully, and that your memo’s discussion of the search strategy correspond to how you organize your search results. The goal is to make it easy for your partner/client to work through the memo and underlying documentation.

b. Registrability with USPTO. Whether registration of the client’s proposed mark would be barred by Section 2 of the Lanham Act (for example, whether the mark is merely descriptive without secondary meaning).

Tips: In this part, your client is interested in learning whether it can register its chosen mark, or if the mark is instead barred by Section 2. Relevant issues here may include whether your client’s chosen mark is completely barred as being scandalous, immoral, or illegal, or is barred as being generic or functional. You only need address Section 2 issues that are reasonably raised by your client’s mark. So do not engage in negative issue-spotting. Further note that: 1) you need not here address problems with 2(e) descriptiveness because that should instead be discussed under “protectability”; and 2) you need not here address problems with 2(d) likelihood of confusion with preexisting marks because that should instead be discussed under “risk of liability.”

c. Protectability against junior users. The degree to which the distinctiveness of the client’s proposed mark may help to protect the client as senior user against later junior users (for example, a suggestive or arbitrary mark may get broader protection against newcomers than a descriptive mark);

Tips: This part imagines who your client might be able to sue successfully. It addresses how easily your client should be able to protect its chosen mark against later junior users who might adopt identical or confusingly similar marks. This requires you to determine where your client’s mark arguably falls in the Abercrombie spectrum. The higher in the spectrum, the stronger the client’s mark, and the easier it may be for your client to protect against junior users.

d. Risk of liability to senior users. The extent to which the client’s use or registration of the proposed mark as a junior user might cause a likelihood of confusion or dilution or other liability with any pre-existing senior marks belonging to third parties;

Tips: This part discusses who might sue your client successfully. This part relies on your searching. You should discuss the most pertinent (relevant) hits from your search. You should analyze whether your client’s chosen mark might create a likelihood of confusion (“LOC”) with the pertinent senior hits. Think carefully about how to organize this part of the memo. You might be able to do one LOC analysis, or you may have to do several. Whether you do one or several LOC analyses depends on how you should group the pertinent marks. So think about whether you can group sets of marks together for shared analyses. You will definitely have to discuss LOC (infringement). Whether you also need to address dilution will depend on your mark and the results of y our search. Note that you do not need to discuss every mark you find; instead, discuss the most pertinent marks.

e. Bottom-line recommendation. Whether you recommend that your client proceed with a full search or instead select a different mark.

Tips: Since you have not done a full search, you should not give a thumbs-up to the client to register and use its chosen mark. It would be improper to give a thumbs-up because your search is limited in scope and source. Instead, either tell your client that its chosen mark is knocked out (and why), or suggest that it may want to consider a full search (and the benefits of a full search).

4. Components of case file. Your case file should include:

a. Your client letter.

b. Well-organized and thorough printed documentation showing your search strategy and search results. This will include documentation from the USPTO website and should likely also include information from other searches you do such as internet searches.

c. Your signed Attribution/Certification form

d. Any other information you would like to include. You need not ask permission to include additional information.

Case file format: hard-copy only.

Turn in a well-organized paper file including: a) the client letter; b) documentation of your searches/strategy; and c) your signed Attribution/Certification form.

Case file due date.

Your file is due at the beginning of class, Thursday, March 30, 2PM EST. [revised date]. Give your paper case file to me in person, or if you will not be in class that day, to the faculty admin assistants (Mariela Torres, Diana Barrosso) or faculty receptionist (Suzanne Gelin).

Attribution/Certification form.

Please sign and submit a hard copy of the Certification of Originality and Attribution. To receive a score in any project, a certification form must be filled out and signed. Cf. FRCP 11(a).

Scoring criteria.

Scoring for each component will be done on a 4.0 scale. Below is brief explanation of what I look for in each category.

Search strategy & documentation 25%
Registrability 15%
Protectability 5%
Liability 30%
Bottom line recommendation 5%
Writing/organization 20%
Total 100%

Search strategy & documentation (25%). Include documentation of: 1) your searches; 2) the results of your searches and 3) draw attention to the most pertinent results. Has your searching revealed the most pertinent results? How thoughtful and thorough was the search strategy? Has the attorney used a variety of search terms, including formatives and sight-sound-meaning variants? Searched by international class? Goods/services? Used various methods? Has the student used search tools besides the USPTO website?

Client letter: Registrability (15%). Discussion of whether the mark is registrable. Issues to be discussed will vary with the mark but may include matters such as the spectrum of distinctiveness, descriptiveness, surnames, and geographic indicia.

Client letter: Protectability (5%). How strong will the selected mark be? Is the client’s chosen mark strong enough that potential junior users will need to steer clear, or is it so descriptive or highly suggestive that newcomers might be able to get “closer” to the chosen mark?

Client letter: Liability (30%). What is the likelihood of infringement (or if appropriate, dilution) between the client’s chosen mark and senior users? Does the client letter discuss liability surrounding the most pertinent search results? Does the memo supply reasonable analysis by counsel or is it written to “rubber-stamp” the client’s plans?

Bottom line (5%). What do you recommend the client do? Have you made it clear that this is a knock-out report and not a clearance? Is the analysis and recommendation reasonable advice of counsel, or is it instead a “rubber-stamp” of the client’s plans?

Writing/organization (20%). This category looks to matters such as:

  • Case file: Is the case file well-organized?
  • Search documentation: Are searches, search results, and the most pertinent hits well-organized so that client and supervising lawyer can easily work through the file?
  • Client letter/memo:
    • Is the client letter well-written?
    • Are issues and sub-issues well-organized?
    • Are pertinent “hits” (search results) grouped separately in an intelligent way that fosters analysis?
    • When the memo breaks up pertinent hits into separate groups, does it also provide separate likelihood of confusion analyses?

Caveats & warnings.

  • This project is cumulative. This project uses the cumulative knowledge and skills you have gained so far, including the Abercrombie spectrum, the Lanham Act’s section 2 bars, Sections 32 and 43, and recent assignments regarding the likelihood of confusion factors. It will also require you to gain knowledge from upcoming assignments such as those on dilution and defenses.
  • Talk to your client. As you did with Project II, to get clarification regarding the goods or services, you should consult with Acme’s CEO.
  • Limits of your “bottom line.” This is a “knock-out” search, and its goal is solely to determine whether further searching is worth the effort. Your conclusion should not be an unequivocal “thumbs-up” for the client to use and register the mark.
  • Your own work. 
    • Your work must be your own. Each student’s work product must be their own, though you may seek the advice and provide advice to your colleagues who are enrolled in this semester’s class.
    • You may not seek the assistance of anybody who is not registered in this class this semester.
    • Do not contact or call the USPTO.

Resources & tips.

Tips discussed in 3/28 class and emailed same day: A lot of the comments below are aimed at making your client memo and your project file useful for your audience: the client.

  • Use headings (and if applicable, subheadings). This will provide signals to the client on the function of each section and give clear understanding re your letter’s structure.
  • In section on  search strategy, be sure to briefly state: the client’s requested mark and the goods/services/potential classification(s). That helps  reader to understand why you searched the way you did.
  • In section on liability, you will be analyzing the most pertinent (relevant) hits. When listing those hits, you should include each pertinent senior mark, the registration # (or application # if not registered), the owner, class(es), a brief statement on goods/services (it need not be exhaustive since printouts of pertinent hits will also be in the file), and status (registered/pending/dead, etc.). This will help the reader to understand more deeply the relevance of the pertinent hits.

Links:

Revised Mar. 21, 2017 (re client letter section on search strategy; adding two days to due date; adding tips)

Revised Mar. 28, 2017 (adding tips)