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