George McCoy of Florida has been manufacturing and distributing a cheesecake for more than five years, labeling his product with a picture of a cheesecake, which serves as a background for a Florida bathing beauty and under which is written the slogan "McCoy All Spice Florida Cheese Cake." George McCoy has not registered his trademark. Subsequently, Leo McCoy of California begins manufacturing a similar product on the West Coast using a label similar in appearance to that of George McCoy, containing a picture of a Hollywood star and the words "McCoy's All Spice Cheese Cake." Leo McCoy begins marketing his products in the eastern United States, using labels with the word "Florida" added, as in George McCoy's label. Leo McCoy has registered his product under the Federal Trademark Act. To what relief, if any, is George McCoy entitled?

George McCoy of Florida has been manufacturing and distributing a cheesecake for more than five years, labeling his product with a picture of a cheesecake, which serves as a background for a Florida bathing beauty and under which is written the slogan "McCoy All Spice Florida Cheese Cake."

Q1: A label with a picture and slogan is entitled to what type of IP protection?

Patents

Copyright

Trademark

Trade secret

Why?

Q2: Not patent protection because patents protect?

inventions

phrases

secrets

Q3: Not a trade secret because a product label is not a?

inventions

phrases

secret

Q4: Not a copyright because copyrights don't protect short?

inventions

phrases

secrets

Q5: A product label is a potential trademark because it identifies a?

business

product

service

Q6: Trademarks, in order to be protected, must be distinctive?

Yes

No

Q7: Is George McCoy's label entitled to trademark protection?

Yes

No

Maybe

George McCoy has not registered his trademark.

Q8: Did George register his trademark?

Yes

No

Q9: Does that mean he loses trademark protection?

Yes

No

Q10: What does trademark registration do?

1.

gives notice of the trademark to others

protects trademarks for 70 years

keeps the trademark a secret

2.

protects trademarks for 70 years

provides a date of first use

keeps the trademark a secret

Q11: In this case, who first used the trademark?

George

Leo

Leo McCoy of California begins manufacturing a similar product on the West Coast using a label similar in appearance to that of George McCoy, containing a picture of a Hollywood star and the words "McCoy's All Spice Cheese Cake." Leo McCoy begins marketing his products in the eastern United States, using labels with the word "Florida" added, as in George McCoy's label. Leo McCoy has registered his product under the Federal Trademark Act.

Q12: Did Leo register the trademark?

Yes

No

Q13: Who has the presumption of first use?

George

Leo

Q14: Who is presumed to own the trademark?

George

Leo

Q15: If Leo had stayed out West with his cheesecake would George care?

Yes

No

Q16: What did Leo do to make this an issue? Leo started marketing in theselect with florida in the label

West

East

Q17: Who used the trademark first on the East coast?

George

Leo

Q18: To overcome Leo's presumption of first use since Leo registered the trademark, what does George need to prove? George must show Leo's use of the mark created confusion about theSelect of the product

inventor

origin

Q19: Is George likely to prevail?

Yes

No

If yes, in what market?

Q20: WhereSelect products were sold

Leo

George's

...labeling his product with a picture of a cheesecake, which serves as a background for a Florida bathing beauty and under which is written the slogan "McCoy All Spice Florida Cheese Cake."

Q21: What about the trademark- is everything in it distinctive?

Yes

No

Q22: The personal name, McCoy?

Yes

No

Q23:, unless it acquires?

secondary meaning

primary meaning

Q24: The word Cheesecake?

Yes

No

Q25: Why? It simply describes the?

product

service

Q26: The term All Spice?

Yes

No

Q27: Why? It simply describes the?

product

service

Q28: The word Florida?

Yes

No

Q29: Why?

1.

geographical

fancy

distinctive

2.

the cheesecake is produced there

fancy

distinctive

Q30: The picture of a bathing beauty?

Yes

No

Q31: Why? This would not be protected unless Leo used similar design and colors to create?

allure

confusion

Q32: All together is the label a distinctive mark worthy of trademark protection?

Yes

No

Q33: What is the overall purpose of providing legal protections for trademarks? To avoid consumer confusion as to the origin of?

goods

services

Q34: What if George had registered his trademark years earlier? George would have had the benefit of a?

presumption

award of first use in any lawsuit

Q35: Which of the following statements is not a benefit of a presumption?

Makes George's case easier to prove

George is automatically entitled to damages

Leo would have to overcome the presumption by proving he was the first user

Leo may not have distributed his cheesecake in the East

CH08_Blueprint_IPTrademark