Due Week 10 and worth 220 points
companies mentioned herein are merely hypothetical organizations with
characteristics developed to enable students to respond to the assignment. You
may create and / or make all necessary assumptions needed for the completion of
this assignment if those assumptions are consistent with the facts
presented. Do not make assumptions which obviate the need to conduct a
legal analysis of the issues.
In this assignment, you will act as the fictional character of Betty
Fuller, Head of Marketing at Simply Green Products, while you draft a
memorandum to the company President. In this memorandum, you must explain how
you would resolve the legal issues discussed in the scenario.
Simply Green Products (SGP) is a $10 million company that produces
biodegradable packing materials that orchards use in the Shenandoah Valley to
transport their apples, peaches, and pears nationwide. Biodegradable materials
are more eco-friendly because they break down into the environment. Such
packing materials are marketed under the name “SafePac,” which is heavily
advertised in trade journals. Simply Green Products have had the name “SafePac”
imprinted on all of their packing material since 2008. Although SGP never filed
for either state or federal trademark protection, following the advice of one
of their summer interns, they did register the domain name “SafePac.com.” With
the movement toward more eco-friendly agricultural production, the fact that
such packing materials are biodegradable provides a primary marketing advantage
over non-biodegradable competitors.
Despite the fact that SGP is highly eco-friendly, it is not particularly
technologically advanced. SGP mostly advertises in trade journals and
magazines, with most orders coming via the mail or phone orders. Shep Howard,
President of SGP realizes his company needs to increase its marketing presence
and recently hired Betty Fuller, a recent Strayer graduate with an MBA, to be
the new Director of Marketing for the company. Ms. Fuller has been charged with
bringing SGP’s marketing plan into the 21st century.
In preparing the new Marketing plan, Ms. Fuller, quickly noticed that
although SGP owned Safepac.com, the name SafePac, itself had never been
registered with the Trademark and Patent Office. Accordingly, one of the first
things Ms. Fuller did was start the registration process. When searching the
USPTO office database to see if a mark has already been filed she found
the following entries shown below:
She immediately realized SGP had a problem. Ms. Fuller did some
additional research and found that a company called Safe Choices, Inc. uses the
SafePack name to market an emergency weather kit in the form of a backpack; and
had received a federal registration for the mark from the Patent and Trademark
Office in 2002. This backpack is sold both online at SafePack.com and in
sporting goods stores nationwide.
complete search is one that will uncover all similar marks, not just those that
are identical. In this regard, searching for trademark availability is not the
same as searching to register a domain name. A domain name search may focus on
exact or “dead on” hits, with no consideration given to similar names or use
with related products and services. Basically, a domain address is either
available or it is not. The trademark process, on the other hand, is more
complex. As part of the overall examination process, the USPTO will search its
database to determine whether registration must be refused because a similar
mark is already registered for related products or services (i.e., even
identical marks may co-exist if used on goods or services not considered to be
related in any way). Please note that the USPTO does not offer
advisory opinions on the availability of a mark prior to filing of an actual
Ms. Fuller contacted Shep Howard to discuss SGP intellectual property
problems and to devise a plan on how to proceed. In her meeting with Howard Ms.
Fuller explained the legal issues to Howard as follows:
SGP has been
using the product name SafePac since 2008 but never trademarked or otherwise
registered that named. A company called Safe Choice had registered the names
SafePack and SafePacs back in 2002 and those names were listed live marks by
the USPTO. Arguably, SafePac may be confusingly similar to Safe Choices marks
to preclude registration of the marks. Moreover, use of the name may
“constitutes a false designation of origin which is likely to confuse customers
as to the source of the goods”. However, safe Choice and SGP are in different
product lines and, therefore, arguably are not competitors, a requirement for
infringement. The intellectual property issue at hand involves the Lanham Act.
Even if the
USPTO finds that SGP’s proposed mark and Safe Choices marks are not similar or
that SGP and Safe Choice are not competitors, registrations may nonetheless be
denied under the provisions of the Trademark Dilution Revision Act of 2006, 15
U.S.C. § 1125(c). For additional information, see Duvall, S.A. (2007). The
Trademark Dilution Revision Act of 2006: balanced protection for famous brands.
The Trademark Reporter, 97(6), 1252-1285.
purchased the domain name SafePac.com, Safe Choice may attempt to accuse SGP of
cybersquatting and try to have that domain name transferred to their control.
Any such action would proceed under the Anticybersquatting Consumer Protection
Act (ACPA), 15 U.S.C. § 1125(d).
Finally, she outlined her plan on how to proceed with the marketing plan
based on how she though the legal issues would be resolved. Mr. Howard then
asked Ms. Fuller to put the information she had just given him in memo form.
In the role of Betty Fuller, prepare the memorandum requested by Shep
Howard. The memo should be three to four (3-4) pages in which you:
or not SGP can register SafePac as a trademark given the issues discussed in
“legal issue: a”.
or not the Trademark Dilution Revision Act of 2006 would be violated if the
USTPO granted SGP a trademark on SafePac.
or not the Anticybersquatting Consumer Protection Act would be violated by
SGP’s use of safepac.com.
your resolution would affect the marketing options available to the company.
Use at least
three (3) quality academic or legal resources in this assignment, such as a
government Website, Law school Websites, Restatements of laws, and other
treatises of Law. Your paper must include internal citations indicating
the sources of your legal statements.
Note: Wikipedia and other Websites do not qualify
as academic or legal resources.
assignment according to the following formatting requirements:
spaced, using Times New Roman font (size 12), with one-inch margins on all
Include a cover
page containing the title of the assignment, the student’s name, the
professor’s name, the course title, and the date. The cover page is not
included in the required page length.
reference page. Citations and references must follow APA format. The reference
page is not included in the required page length.
The specific course learning outcomes associated with this assignment
legal environment of business, the sources of American law, and the basis of
authority for government to regulate business.
Use technology and
information resources to research issues in business law.
and concisely about business law using proper