TRADEMARK LAW

REGISTRATION

INSTRUCTIONS AND QUESTIONS

In each of the scenarios below, using the facts given, identify any possible impediments to the registration sought and analyze whether the applicant will likely succeed in obtaining the registration.

In your analysis, identify any additional information that may be important to the outcome (but do not attempt to find such information yourself).

CASE 1: Paris Texas:

Paris Texas is a footwear brand, founded in 2015 and based in Milan, Italy. Paris Texas shoes and boots are all designed and made in Italy, a fact that is noted on the footwear themselves, as well as on a card included in every shoe box. The company's advertising also promotes its footwear as Italian-made. The company's founders describe its name as based on the idea of "contrasts," namely that "Paris is sophisticated, and Texas is wild and edgy." The company's products include, for example, refined versions of cowboy boots.

Paris, Texas is a city of 25,000 residents in northeast Texas, about 100 miles from Dallas, notable primarily for the name of the city itself. The name of the city was used as the title of an award-winning film in 1984.

Paris Texas has applied under Lanham Act 1(a) to register the standard character mark PARIS TEXAS for the sale of "footwear."

CASE 2 Swanley Paper Company:

The Swanley Paper Company is a company based in Swanley, England that manufactures and sells a variety of disposable tableware, such as paper plates, paper napkins, plastic cups, and plastic silverware. The company was established in 2010, has its head office in Swanley, and manufactures the majority of its products in and around Swanley. Thus far, Swanley Paper has sold products only in the United Kingdom.

Swanley, England is a town of 16,000 residents located approximately 15 miles southeast of London and is considered part of Greater London. Residents of Swanley are split roughly in half between those who commute to jobs in Central London and those who work in and around Swanley, mostly in light manufacturing jobs. The town is adjacent to some minor tourist attractions, such as the Lullingstone Castle and World Garden.

There is no connection between the Swanley Paper Company and Robert Swanley, a veteran of the Royal Navy in the UK who made news in 2020 for his efforts to raise funds for coronavirus relief. Robert Swanley was written about not only in the British press, but also in U.S. sources such as the New York Times. There is no one else with a last name of Swanley who has received any appreciable news coverage in the last two decades.

Swanley Paper Company has applied under Lanham Act 1(b) to register the standard character mark SWANLEY for the sale of "disposable tableware."