Essay Questions

1. In 1967, two friends from California designed a sailing surfboard that combined the sports of sailing and surfing. They originally called it a “sailboard. ” They filed for and received a patent, which was assigned to Windsurfing International, Inc. (WSI). In 1968, WSI’s Seattle dealer coined the term “windsurfing. ” WSI applied for and was granted trademarks for various terms using the word “Windsurfer. ” Between 1969 and 1976, WSI produced a particular type of board called the Windsurfer. During this time period, WSI controlled over 95% of the market. To promote sales, WSI and its employees repeatedly referred to the sport as “windsurfing” and to the sport’s participants as “windsurfers. ” Participants, trade magazines, and the general public also used the terms, as there were no other general terms that could be used to describe this sport.

In 1977, WSI began policing the use of its trademarked terms, “windsurfer” and “windsurfing. ” The general public continued using the terms to refer to the sport and its participants, however.

In 1984, one of WSI’s competitors sued to have WSI’s trademarks cancelled. What theory is the competitor espousing? How should the court rule on this issue, and why2. Gentes Products, Inc. (GPI) produces a high-end line of perfumes and fragrances, which it markets under the mark “Gentes. ” It registered this mark in 1986 and has used it consistently since then. GPI is a major competitor in the fragrance industry. In the past 7 years, GPI has spent more than $60 million on advertising of its products, resulting in sales in excess of $150 million. Its products are sold only through department stores and boutiques and GPI has worked hard to establish an air of exclusivity for its mark.

Malinova Enterprises produces a line of personal care products, such as shampoos, lip balms, and deodorants. It has marketed its newest lip balm product under the mark “Gentes. ” This product is sold through drugstores and discount stores. Malinova uses a different typeface for its mark than does GPI. The president of Malinova testified that at the time it chose its mark, it was unaware of GPI’s mark and had chosen “Gentes” because it would evoke the word “gentle” in the mind of the consumer.

a. GPI has filed suit against Malinova for trademark infringement. What factors would the court consider in evaluating this claim? How should the court rule on this claim, and why? Explain your answer thoroughly.

b. GPI has also filed suit against Malinova for tarnishment. How should the court rule on this claim, and why? Explain your answer thoroughly.

c. GPI has also filed suit against Malinova for blurring. What factors would the court consider in evaluating this claim? How should the court rule on this claim, and why? Explain your answer thoroughly.

d. Malinova has decided that it would rather adopt a new mark for its lip balm than become involved in lengthy and expensive litigation with GPI. It is trying to decide between two new marks: LipSooth and Mymadjen (which was the name of the CEO’s pet hamster when she was a child). Considering only the legal effects of the two name choices, which would you recommend that Malinova select, and why?