Trademark Case Study

Length – minimum of three pages ;

Topic/Case Study Response:

You were approached by a friend in the fashion industry who has experience designing shoes, ;

and based on an idea you and your friend had, you developed a computer-implemented modeling ;

and design algorithm which scans any person’s foot to create a computer generated model. ;

Based upon that model, the design algorithm creates a unique and fashionable shoe that is ;

customized to the user’s foot. ;In fact, the shoes are so customized and fit so well that people ;

who have worn the prototype shoes made for them are amazed and say that the shoes create a ;

“seal” around their feet. ;In addition, the shoes are particularly fashionable, and are similar to, if ;

not more appealing than the style and fit of many hand-made Italian shoes. ;As a result, you and ;

your friend used your personal savings to begin to market your shoes under the name “Seal ;

Couture”, and so far, things couldn’t be going any better.

You hired a marketing consultant, who pitched the idea to a group in California who focuses on ;

trying to help small businesses succeed. ;The California group also has ties to the film and music ;

industry, and liked your business model and idea so well they decided to have you design shoes ;

for all of the artists who were nominated for Grammys. ; Before you knew it, you were being ;

flown out to Los Angeles to create custom shoes for musicians including Kanye West and Taylor ;

Swift, both of which said your shoes were the most comfortable and fashionable shoes they ever ;

had worn and ordered several pairs. ;In fact, your shoes were so popular that you were getting ;

requests from the Hollywood rich and famous, including George Clooney, Jennifer Lopez, Sarah ;

Jessica Parker, Kate Winslett, Johnny Depp, and Julia Roberts. ;Vanity Fair and GQ magazines ;

have featured your spring line of shoes in their latest issues, publishing photographs of models ;

wearing your shoes. ;With all of the success your idea has gained, you are about to launch your ;

custom shoe line, “Seal Couture”. ;Your shoes are marketed as ultra-high end, custom footwear ;

which are sold to the rich, and often famous, at prices beginning at $1,400 a pair, and will only ;

be available at your high-end “Seal Couture” boutiques on Rodeo Drive and Manhattan. ; ;

After you received your Computer Science degree, you went to law school, and with your ;

knowledge of intellectual property law, you knew that you needed to secure protection for your ;

mark, “Seal Couture”. ;As a result, you applied to the United States Patent and Trademark Office ;

for a federally registered trademark on your “Seal Couture” mark, used in connection with your ;

goods identified as “footwear, including shoes and boots”. ;

Today you received a letter from the United States Patent and Trademark Office refusing your ;

registration for a trademark for “Seal Couture” based on a likelihood of confusion with an ;

existing federally registered trademark for the mark “Seal” used in connection with “clothing, ;

namely, tee-shirts, shorts, swim suits, dresses, hats, and socks”. ;The United States Patent and ;

Trademark Office considered that the similarity of the marks, similarity of the goods, and ;

similarity of trade channels of the goods were the most relevant factors supporting the likelihood ;

of confusion determination. ;In particular, the United States Patent and Trademark Office stated ;

that your mark is similar in appearance and sound to the existing “Seal” mark because both ;

“Seal” and “Seal Couture” share the common term “Seal”. ;Furthermore, the United States Patent ;

and Trademark Office stated that because your goods are identified as “footwear, including shoes ;

and boots” and the existing “Seal” mark is applied to “clothing, namely, tee-shirts, shorts, swim ;

suits, dresses, hats, and socks”, the goods are related. ;Specifically, the United States Patent and ;

Trademark Office stated that the goods are related enough to cause consumers to be confused ;

into thinking that your “footwear, including shoes and boots” marketed under the name “Seal ;

Couture”, may actually be associated with the mark “Seal”, because “clothing, namely, tee-

shirts, shorts, swim suits, dresses, hats, and socks” are often sold in the same stores as “footwear, ;

including shoes and boots”, and under the same trademark. ;As a result, the United States Patent ;

and Trademark Office concluded that because the two trademarks are similar and the goods are ;

related, confusion as to source is likely, and thus refused registration for your trademark. ;

Since your trademark for “Seal Couture” is being rejected as being too similar to the mark “Seal” ;

for similar products, you did some research. ;It turns out that the owners of the “Seal” mark make ;

and sell, and apply their “Seal” mark to beachwear-themed tee shirts, shorts, swim suits, dresses, ;

hats, and socks which are light, pastel colored and include prints, patterns, and cartoons of ocean ;

wildlife, including seals, whales, and dolphins. ;The ocean-themed tee-shirts, shorts, swim suits, ;

dresses, hats, and socks which bear the “Seal” trademark are sold at a price range between $5 ;

and $45, at stores such as Kohl’s, JC Penney, Marshall’s, and TJ Maxx. ;

For this case study, write a response to the United States Patent and Trademark Office arguing ;

why the your mark and goods are different enough from the existing “Seal” mark that no ;

consumer confusion is likely. ;In preparing your argument, use the rules from the PerfumeBay v. ;

eBay case.

NOTE: It’s important to use the rules from ;PerfumeBay v. ;eBay case.