INTELLECTUAL PROPERTY FINAL EXAMINATION SUMMER 2022 Multiple-Choice/True-False/Fill-In Value: 1 Point Each The period between the issuance of the ____1____ and the issuance of the ____2____ is called the ____3____. 1) A) Notice of Allowance B) Statement of Use C) Notification of Notice of Publication D) Blackout Period _____ 2) A) Notice of Allowance B) Statement of Use C) Notification of Notice of Publication D) Blackout Period _____ 3) A) Notice of Allowance B) Statement of Use C) Notification of Notice of Publication D) Blackout Period _____ 4) The shortest amount of time (calculated from the filing date of the application) in which a Federal Trademark registration can register is about: A) 3 Months B) 9 Months C) 16 Months D) 24 Months _____ 5) Assuming you file a Federal Trademark application for registration under section 1(b) and assuming that you wait until the last day to respond to both a first office action and a final office action, then you take all available Statement of Use Extensions, what is the longest amount of time you can expect between filing of the application and issuance of the trademark? A) 18 Months B) 24 Months C) 36 Months D) 48+ Months _____ 6) A United States Utility Patent issued based on an application filed in 2022 will expire: A) 17 years from the date of issue B) 20 Year from the date of issue C) 20 years from the date of filing D) 17 years from the date of filing _____ 7) The Lanham Act can be found in title ______ of the United States Code. A) 9 B) 15 C) 28 D) 35 _____ 8) An office action related to a FEDERAL Trademark Application is issued on May 31, 2022. What is deadline for filing a response? A) August 31, 2022 B) January 1, 2023 C) November 30, 2022 D) December 1, 2022 _____ 9) A FINAL OFFICE ACTION related to a FEDERAL Trademark Application is issued on January 4, 2022. What is the deadline for filing an appeal? A) February 4, 2022 B) April 4, 2022 C) July 4, 2022 D) July 5, 2022 _____ 10) The process by which a mark may move from a registerable or registered mark to an unprotectable status, without the action of a 3rd party, is called: A) Degradation B) Cancellation C) Genericide D) Loss of seniority _____ 11) Trade secret protection lasts for _____. A) The life of the creator or author, plus 70 years. B) 17 years. C) 75 years, or 95 years, if the author is a corporation. D) As long as the material is not publicly know. _____ 12) A corn chip company, without obtaining permission, imitates the voice of a famous singer in one of its commercials. What right of the singer would this action violate? A) Right of publicity B) Right of Expression. C) Copyright D) Freedom of speech _____ 13) Literal Trademark infringement requires a comparison of at least both ________________________ and ______________________________________________________________________________. 14) If Costco were to file an application for its "Kirkland" trademark for Diapers, which it has made, but not yet sold, then when it puts the diapers on the market, next week, it should mark the product with: A) An symbol B) A TM symbol C) Nothing D) Trademark Pending _____ 15) If Costco were to file a 1(a) trademark application today for its "Kirkland" Vodka, which it has been making and selling across state lines for several years, then it should immediately begin marking the product with: A) An symbol B) A TM symbol C) Nothing D) Trademark Pending _____ 16) A simultaneous trademark filing overseas, in multiple countries, can be filed as a single filing under: A) The London Protocol B) The Paris Convention C) The Madrid Protocol D) The Berne Convention _____ 17) In order to claim the benefit of priority to a prior-filed US TM application, a trademark application under the Paris convention must be filed within: A) 30 Days of the US Filing B) 3 Months of the US Filing C) 6 Months of the US Filing D) 6 Months of the Date the US Office Allows the Trademark _____ 18) If a patent examiner issues a FINAL office action, you can: A) File an appeal B) File a response to office action C) File a Request for Continued Examination D) Any/All of the above _____ 19) In a trademark dispute over who used the mark first, the person who used the mark first is referred to as : A) The Principal user B) The Principle user C) The Senior user D) The Superior user _____ 20) Your firm's client seeks to register the word trademark "Weiss" in connection with confectionary. You question the client and learn that "Weiss" is the German word for "White." You search the USPTO website and discover a registered mark for "Blanco" (White in Spanish) in connection with candy. The client should be advised that: A) Registration will likely be approved, as the words do not sound or look similar to a consumer. B) Registration will likely be approved, as there is a significant difference in trade channels for the different goods. C) Registration will likely be denied, as "Weiss" is too generic. D) Registration will likely be denied, as the marks themselves are legally identical and are in identical classes. _____ 21) Blue and Gold BAKERY in Berkeley has been in existence since 1889 under the same name and files a Federal Trademark application on December 1, 2021 for the mark "BAKERY." Unbeknownst to Blue and Gold BAKERY, Blue and Gold CONFECTIONARY filed a trademark application on "Blue and Gold" on November 3, 2021. What is the likely outcome of Blue and Gold BAKERY's filing and why? A) The mark would not register, because of Blue and Gold CONFECTIONARY's Application. B) The mark would not register, because the mark would be deemed generic. C) The mark would not register, because it could be successfully opposed by Blue and Gold Confectionary D) The mark would register, because another blue and gold opened first _____ 22) Blue and Gold BAKERY in Berkeley has been in existence since 1889 under the same name and files a Federal Trademark application on December 1, 2021 for the mark "Blue & Gold." Unbeknownst to Blue and Gold BAKERY, Blue and Gold CONFECTIONARY (a NEW COMPANY, based in L.A) filed a trademark application on "Blue and Gold" on November 3, 2021. What is the likely outcome of Blue and Gold BAKERY's filing and why? A) The mark would register, because of Blue and Gold CONFECTIONARY used first. B) The mark would not register, because the mark would be deemed generic. C) The mark would not register, because of Blue & Gold's prior application. D) The mark would register, because they were in existence first _____ 23) You filed a federal trademark application on January 1, 2021 and receive a notice of publication on January 2, 2022. The mark published for opposition on May 1, 2022 and the mark registration certificate was mailed on July 1, 2022. You received the registration certificate on July 3, 2022. What is the possible last date an opposition could have been filed? A) June 1, 2022 B) May 31, 2022 C) July 1, 2022 D) None of the above _____ 24) You filed a federal trademark application on January 1, 2021 and receive a notice of publication on January 2, 2022. The mark published for opposition on May 1, 2022 and the mark registration certificate was mailed on July 1, 2022. You received the registration certificate on July 3, 2022. What is the first possible date you could use the R in the Circle Symbol on your product? A) January 1, 2021 B) July 3, 2022 C) May 31, 2022 D) July 1, 2022 _____ 25) On January 1, 2022 you advertise your product "WHEN" for sale online, but you haven't made the product yet. On January 2, 2022, a friend says they'll sell your product on consignment in Utah. You quickly make and ship the product via FEDEX from CA to UT. You ship the product on January 15, 2022 and it crosses the CA/NV border on January 16, 2021 and the NV/UT border on January 17, 2022. What is the date that the trademark "WHEN" was first used in INTERSTATE commerce? A) January 2, 2022 B) January 15, 2022 C) January 16, 2022 D) January 17, 2022 _____ 26) On January 1, 2022 you advertise your product "WHEN" for sale online, but you haven't made the product yet. On January 2, 2022, a friend says they'll sell your product on consignment in Utah. You quickly make and ship the product via UNITED STATES POSTAL SERVICE PRIORITY MAIL from CA to UT. You ship the product on January 15, 2022 and it crosses the CA/NV border on January 16, 2022 and the NV/UT border on January 17, 2022. What is the date that the trademark "WHEN" was first used in INTERSTATE commerce? A) January 2, 2022 B) January 15, 2022 C) January 16, 2022 D) January 17, 2022 _____ 27) To maintain a trademark in force, a Section ______ affidavit must be filed between the 5th and 6th years after a trademark registers. 28) To maintain a trademark in force, Section ______ and ______affidavits must be filed between the 9 th and 10th years after a trademark registers. 29) If you wish to make your trademark incontestable, you should file a section ______ affidavit anytime after the ______ year after your trademark registers. 30) The Acronym for the Administrative agency that hears Patent Appeals is ____________. TRUE or FALSE 31) You may mark your product with Pat. Pend. the same day you file a patent application _____ 32) The "look and feel" of a website can be protected under US copyright law _____ 33) The expression "You're in good hands" cannot be protected under copyright law _____ 34) The maximum number of bars of music that may be copied without an infringement occurring is four. _____ 35) Typically, a Federal TM application takes at least 9 months to register _____ 36) There are 3 major parts to a patent application: Specification, Power of Attorney and Claims _____ 37-40Fill in the Patent Table 35 USC 101 Enablement 35 USC 103 Novelty INTELLECTUAL PROPERTY FINAL EXAMINATION SUMMER 2022 PRACTICAL Point Value: 20 Attached please find a FINAL office action that we recently received from the USPTO. Review the office action and provide one-two SENTENCES you would compose to a client explaining each of the following: 1) What a FINAL office action is procedurallyi.e. what does final mean? 2) What the FINAL office action says in very simple layman's terms 3) What the client's options are in responding to the Final Office Action (DO NOT RESPOND, JUST VERY CRUDE OUTLINE OF HOW YOU WOULD RESPOND and the available options) 4) Deadlines for the various action(s) recommendedhint there is more than one option. 5) Any way in which the client's rights might be impacted by the response/lack of response 6) The last possible day to address the FINAL Office Action. DO NOT COMPOSE A RESPONSE FOR THIS PART ANSWER ONLY THE QUESTIONS PRESENTED ABOVE IN A LETTER TO THE CLIENT INTELLECTUAL PROPERTY SUMMER 2022 ESSAY Draft a response (four Pages Max.) to the Office Action discussed and provided in the PRACTICAL section of this exam. Be sure to structure arguments using IRAC or ICRAC form and use the relevant DuPont Factors being sure to avoid combining DuPont Factors (remember that the argument may be similar, but the factor is independent). Some relevant information you can ASSUME and may be helpful is provided below: 1) Our Client's website is www.caligirlcosmetics.com, this is a live site (DO NOT CONTACT THE CLIENT) 2) Going forward the client will expressly only sell products that are $125 and up and will ONLY SELL to professional cosmetologists licensed by their respective states. 3) The client DOES NOT SELL or EVER INTEND TO SELL any items other than brushes or professional cosmetics (available for purchase by licensed cosmetologists only) 4) A LICENSE will be required in order to purchase the client's products. 5) The registrant of the mark Caligirl Cocktail has not renewed their registration and it has been more than 6.5 years since the mark registered. 6) ASSUME we have evidence (call it exhibit A) of a business plan from California Girl that shows they NEVER intend to manufacture cosmetics brushes. 7) ASSUME that we have evidence (Call it Exhibit B) that California Girl will only sell online and in retail establishments to the general public for a price point no higher than $25/item. 8) Assume that we can assert by affidavit that no actual confusion has ever taken place in the 2+ year that both companies have been around selling their products. The DuPont Factors, not including the "other relevant facts" factor are: Similarity of Marks Similarity of Goods Similarity of Trade Channels Sale Type (impulse/considered) Fame of the Marks Other Similar Marks Actual Confusion Concurrent Use? Variety of Uses of Marks Market Interface How Strong Is Right to Exclude Potential Confusion