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interoffice memorandumto:Lisa Howard [mailto: lhoward@]from:ashley bauer [mail to: ashleybauer@]subject:research plan outlinedate:July 7, 2017cc:sweet lorraine’s bakery, llc.Dear Lisa,This assignment is to draw up a research plan to give to our client, Sweet Lorrain’s Bakery, LLC., as she just received an e-mail from a Mr. Sawyer that owns and operates a “Sweet Lorraine’s Café’ and Bar” in Detroit Michigan with his wife. In his e-mail Mr. Sawyer says that he and his wife have a Trademark on the phrase ‘Sweet Lorrain’s’ for all restaurants, catering and baking services in the United States. The Sawyers have accused our client of Trademark Infringement and have threatened to commence litigation if our client does not change the name of her business. Given the fact that our client has only been open for six months and is new to business, this research plan outline will give our client an indication of how much time we will put into her case and how much this project will cost her in deciding whether The Sawyers claims have any merit and if she should in fact change the name of her business.In doing so I have prepared our clients research plan outline as follows:Factual Vocabulary List:1. Damages/Statutory6. Misfeasance2. Willful Trademark Infringement7. Interference3. Actual Damages and Profits8. Breach4. Trademark Infringement 9. Innocent Infringement5. ViolationLegal Vocabulary List:1. 17 US Code 504- Remedies for Infringement2. Trademark Dilution Revision Act of 2006; Pub 1., 109-3123. Burdon of Proving4. 15 USCA 1114, 1116, 11185. Trademark Act (15 USCA 1051 et. Seq. Ch. 540, 60 stat. 427 [1988 & supp. V. 1993]) otherwise known as Lanham Act of 1946; 15 U.S.C. 1127.ISSUES:1. Is Sweet Lorraine’s Bakery, LLC. Likely to cause dilution to The Sawyers Sweet Lorrain’s Café’ and Bar, and Sweet Lorrain’s Mac n’ Cheez franchise?2. Is Sweet Lorraine’s Bakery, LLC. Infringing on The Sawyers Trademarked phrase, “Sweet Lorraine’s”?3. Should Sweet Lorraine’s Bakery, LLC. Change its name to avoid litigation over Trademark Infringement? PRIMARY sources of law intended to use:1. Leelany Wine Cellars LTI v. Black & Red, Inc., 118 fed. Appx. 942 2004 US App. LEXIS 272072. Kibler v. Hall, 843 F. 3d. 10683. Innovations Ventures, LLC. V. Bhellion Enters. Corp., 2014 U.S. Dist. 112 S.P.O. 2d (BNA) 1529** LEXIS 1184234. Innovations Ventures, LLC. V. Bhellion Enters. Corp., 529 fed. Appx. 560, 2013 U.S. App LEXIS 1363 (6th cir. Mich., 2013)5. Lanham Act 1946 15 U.S.C. 11276. 15 USCA 11147. Trademark Dilution Revision Act of 2006; Pub. 1, 109-312SECONDARY, sources intended to use:1. Journal of Intellectual Property Law -O’ Melveny2. About Trademark Infringement USPTO: 3. Law Encyclopedia4. Black’s Law Dictionary (7th ed.) by: Bryan A. Garner5. Law Review of Trademark Infringement6. McCarthy on Trademark and Unfair Competition (4th ed. 2014)Estimated Hours:I am estimating that this plan should take about 10-15 hours to thoroughly research.CONCLUSION:This research plan has thoroughly outlined all of the essential elements to our clients possible Trademark Infringement on The Sawyers Trademarked phrase ‘Sweet Lorraine’s” I have included all of the major aspects of the case including: Case Law, The Lanham Act of 1946, all possible vocabulary to be researched including synonyms and antonyms. With the information in this plan the research could be executed as is.interoffice memorandumto:Supervising Attorney from:Ashley Bauersubject:SBL Researchdate:July 14, 2017cc:Sweet lorraines bakery, LLC. Mid-term research briefsDear Supervising attorney,As per your e-mail giving me the green light to execute the outlined research plan for her case and the potential that she is in fact committing trademark Infringement I have researched the following:The Lanham act is a primary source of law. The sections I intend to use in writing a predictive memo are:1.) Lanham Act 15 U.S.C.- 1125 (1) (a) Which states: is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.I Intend to use this section because our clients name is Sweet Lorraine’s Bakery, LLC. And the company, Sweet Lorraine’s Café’ and Bar with whom has a registered trademark on the phrase “Sweet Lorraine’s” and claims to be opening a location of their new franchised “Sweet Lorraine’s Mac’ n Cheez” and the likely hood for consumer confusion is present.2.) Lanham Act 15 U.S.C.S.-1125 (2) (b) Dilution by blurring which states: Association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: The degree of similarity between the mark or trade name and the famous mark.;The degree of inherent or acquired distinctiveness of the famous mark; The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; The degree of recognition of the famous mark;Whether the user of the mark or trade name intended to create an association with the famous mark;Any actual association between the mark or trade name and the famous mark;is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.The case law to be used for our clients possible Trademark Infringement case are as follows:1.) District Court case for the State of Michigan, this case is a primary source of law and it is a Mandatory Authority as is coming out of the State of Michigan, which is where the lawsuit will likely take place.Aero-Motive Co. v. U.S. Aeromotive, 922 F. Supp. 29 1996 U.S. Dist. LEXIS 4519FACTS: Plaintiff, Aero-Motive Co. against Defendant, U.S. Aeromotive, Inc. Plaintiff Aero-Motive company is a Michigan corporation with its principal manufacturing facilities in Kalamazoo, Michigan. Aero-Motive is a large Manufacturing and distributor of: Cord reel, cable reel, hose reels, balance reels, spring motors, and self-propelled carriers for applying tension to elongated flexible elements such as cable hoses, and power transmission lines. Plaintiff employs over 200 people and has a sales range in the tens of millions of dollars annually. Plaintiff began his business under a different name in 1939, and then updated its original registered mark when it obtained a federal registration number in 1967. Plaintiff Registered a second trademark number in 1988 for the mark “Aero-Motive as applied to industrial mechanical manipulators and articulating balance arms. Both registered trademarks are incontestable.Defendant, U.S. Aeromotive, Inc. is an Ohio corporation having its principal based business in Dayton, Ohio. Defendant is engaged in the contract manufacturing business. Defendants sales have totaled more than 5 million annually for the past decade. It machines and assembles components utilized in the manufacturing of automobiles and aircraft to customers’ designs and specifications. Defendant has no significant line of his own and also produces minority-owned business Department of Defense ground support equipment. Defendant started out its business in 1976, and in 1991 Defendant changed its name to their current name to accurately describe the business. The name U.S. Aeromotive, Inc. was submitted for clearance search to the Dayton, Ohio, intellectual property firm of Killworth, Gottman, Hagan and Schaeff, which rendered an opinion clearing the name for use by defendant in a letter dated July 10, 1991.On August 23, 1991, Defendant through Killworth law firm, filed an intent to use trademark registration application in the U.S. Patent and Trademark Office, attempting to register the mark “U.S. Aeromotive.” Plaintiff first became aware of defendant’s application when it was published for opposition in the Official Gazette of the U.S. Patent and Trademark Office on March 22, 1994. Immediately upon learning of defendant’s application, Plaintiff filed an opposition in the Patent and Trademark Office. The opposition has been suspended because of the instant case. Plaintiff commenced litigation for service mark infringement, and dilution of trade name under Michigan common law and the Lanham Act of 1946, as amended, 15 U.S.C.S.-1051, et seq., and unfair competition under the common law of Michigan, Plaintiff sought permanent injunction, damages and attorney fees.ISSUES: 1.) Is there a likelihood of confusion between Aero-Motive Co. and U.S. Aeromotive, Inc?2.) Would relevant consumers likely to believe that the products or services offered by the parties were affiliated in some way?3.) Does Aero-Motive Co.’s mark have a distinctive Secondary meaning beyond the products set forth in its registration?RULES:Lanham Act of 1946 15 U.S.C.S. 1114 (1) (a) and 1125 (a) (1), and Chrysler Corp. v. Newfield Publications, Inc., 880 F. Supp. 504, 509 (E.D Mich. 1995) : Proof of likelihood of confusion is all that is required to subject a trademark of trade name infringer to availability. Wynn Oil Co. v. American Way Serv. Corp. (Wynn Oil II), 943 F. 2d.595, 604 (6th Cir. 1991). The Federal Eight Factors test that must be considered when determining if there is a likelihood of confusion between trademarks (1) Strength of Plaintiffs mark. (2) The relatedness of the products or services. (3) Similarity of the marks (4) Evidence of actual confusion. (5) The marketing channels used. (6) likely degree of purchaser care and sophistication (7) The intent of the defendant in selecting it’s mark (8) the likelihood of expansion of the product lines using the mark.Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F. 2d 1100, 1106 (6th Cir. 1991) : When determining a marks destination (1) Marks inherent distinctiveness (2) The marks acquired distinctiveness through advertising, reputation and the like as a marks acquired distinctiveness is it’s “Secondary meaning”Two Pesos v. U.S., at 768 1125 ct. at 2757: A marks classified as “descriptive” are not considered inherently distinctive and will not receive the protection of the Lanham Act unless the marks holder proves that the mark has acquired a “Secondary Meaning” in the market place thereby making it distinctive.ANALYSIS: Due to the laws of Chrysler Corp, Wynn Oil Co. Two pesos, Homeowners Group, and the Lanham Act, It is determined that the balance of the Eight-factor test determining the likelihood of confusion, the strength of plaintiffs trademark, and the irreparable harm plaintiff would suffer, weighed in favor of a permanent injunction. The Court found that plaintiff has established a secondary meaning within the manufacturing sector of the aerospace and automotive industries. Court found that the products offered by the litigants are somewhat related but not competitive, this factor does not favor any party. Court found that reliance on counsel supported a finding that defendant acted without intent to infringe on the trademark of another. Court found that Plaintiffs mark was inherently descriptive, and would be protected under Lanham Act. CONCLUSION:Yes, the defendant was guilty if trademark infringement, Plaintiffs motion for permanent injunction and damages was granted, but the request for attorney fees was denied because while the balance of the eight-factor test for the likelihood to cause confusion and other elements necessary to prove infringement weighed in plaintiff’s favor, defendant did not willfully infringe plaintiffs trademark.2.) Sixth Circuit case no. 1 this case is a primary source of law and is a Mandatory Authority as it is from the State of Michigan.K’Arsan Corp. v. Christian Dior Perfumes, Inc., 1998 U.S. App. LEXIS 27658FACTS: Plaintiff, K’ Arsan, a local cosmetics company filed an action against Defendant, Christian Dior Perfumes, Inc., a foreign cosmetics company alleging unfair competition, trademark infringement and dilution under federal law, and common-law trademark infringement under Michigan law. Plaintiff received its registration for “K’ Arsan SUN POWDER” on October 21, 1986. Primarily selling it’s goods through Michigan drug stores and boutiques, but with scattered outlets across the country. K’ Arsan enjoyed initial success, with net sales in 1986 of $ 159, 333.00. Net sales then steadily declined bottoming out in 1992 and settling to $44, 806.30 in 1995 the last year submitted to the district court. In 1989, Defendant began planning the introduction of a sunless tanning agent to the American market, Defendant planned to introduce its product as “Terra Bella poudre de Soleli Sun Powder.” Thus, defendant searched the trademark registry for “Terra Bella” found no conflict, and obtained registration on January 8, 1991 for “Tera Bella.” Defendant launched their product in May 1990; department stores began selling the powder in August.In the winter of 1995-96 K’ Arsan president and founder visited a Jacobson’s department store and encountered Defendants ‘Terra Bella” cosmetic Defendants packaging alarmed her. The Plaintiffs box has a white background and a prominent display of the words “K’ Arsan SUN POWDER. TM” Nothing else sullies the front cover apart from a yellow circle graphic and the phrase “For Healthy Natural Look.” Defendants Dior’s cosmetic products: a royal blue box banded with a navy-blue stripe and a yellow oval containing text. The words “TERRA BELLA POUDRE DE SOLEIL SUN POWDER” appear in the oval, as does the phrase “Christian Dior PARIS.” The two products share some ingredients, and have comparable prices per ounce. Confronted with another company’s use of the words “SUN POWDER”, K’ Arsan sued. Plaintiff alleged that she had rights in both “K’Arsan SUN POWDER” and in “SUN POWDER” and sought relief under five theories: Trademark Infringement in violation of section 32 of the Lanham Act, 15 U.S.C.-1114; federal unfair competition under section 43 (a) of the Lanham Act, 15 U.S.C.-1125 (a); trademark dilution in violation of the Federal Trademark Dilution Act of 1995, 15 U.S.C. 1125 (c); unfair competition under Michigan law; and a claim for infringement of the Michigan common-law trademark “SUN POWDER.” After permitting discovery, the district court held a hearing on Defendants motion for summary judgment. Court granted defendants motion, dismissing the complaint on the grounds that no genuine factual disputes existed concerning factors material to whether defendants packaging risked consumer confusion. Plaintiff appealed. ISSUES:Does Christian Dior’s “Terr Bella SUN POWDER” packaging risk consumer confusion when side by side with plaintiff’s “K’Arsan SUN POWDER”? RULES:Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1105 n.1 (6th Cir. 1991) and The Federal Trademark Dilution Act of 1995, 15 U.S.C.-1125 (c) governs “famous” marks and may well require a separate test of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.Daddy’s Junky Music Stores, 109 F.3d at 280: Holiday Inns Inc. v. 800 Reservation, Inc., 86 F.3d at 623, 619 (6th Cir. 1996) : the eight factors in evaluating if confusion is likely (1) the strength of the plaintiffs mark; (2) the relatedness of the goods; (3) the similarity of the goods; (4) evidence of actual confusion; (5) the marketing channels used; (6) the likely degree of purchaser care; (7) the defendants intent in selecting the mark; (8) the likelihood of expansion of the product lines.ANALYSIS: After applying the rules of Homeowners Group, Inc., Daddy’s Junky Music Stores, and Holiday Inns Inc. The court found that five of the factors did not require any further discussion. K’Arsan admitted that it offered no evidence of actual confusion (factor four). Similarly, nothing suggests that the (nearly-identical) product lines will expand (factor eight). The Sixth Circuit Court of Appeals also found that the district court properly entered summary judgment for defendant on plaintiff’s federal trademark infringement and unfair competition claims. While the “likelihood of confusion” test may not govern federal dilution claims, plaintiff failed to advance this argument. Further even had the district court conducted a separate dilution inquiry plaintiff offered no evidence to support the conclusion that its marl is “famous”CONCLUSION: No, even upon appeal Plaintiff, K’Arsan did not succeed in her trademark infringement claim against defendant, Christian Dior. Court concluded that there was no cause to show any consumer confusion in products.3.) Sixth Circuit Court of Appeals case no. 2In this second Sixth Circuit case intended to be used in the predictive memo the Law is primary and it is a Persuasive Authority as the case is based out of Kentucky.V Secret Catalogue, Inc. v. Mosely, 259 F.3d 646 2001 U.S. App. LEXIS 16937 2001 FED App. 0247P (6th Cir.) 59 U.S.P.Q.2D (BNA) 1650 FACTS: Plaintiff, Victoria’s Secret Catalogue sued defendant, Mosely. Plaintiff is the record owner of the “Victoria’s Secret” mark, which has been registered in the United States Patent and Trademark Office since January 20, 1981. V Secret Catalogue Licenses Plaintiff Victoria’s Secret Catalogue, LLC and Plaintiff Victoria’s Secret Stores, Inc. to use the “Victoria’s Secret” mark. Plaintiff sells a complete line of women’s lingerie, as well as other clothing and accessories.In February 1998, defendants Victor and Cathy Moseley opened “Victoria’s Secret” a store in a strip mall in Elizabethtown selling a wide variety of items, including men’s and women’s lingerie, adult videos, sex toys and “adult novelties”. The Moseley’s assert that they were not aware of Victoria’s Secret’s catalogue or stores until they received a cease and desist letter from counsel for plaintiff. The Moseley’s subsequently changed the name of their store to “Victor’s little Secret.” Not finding the additional “little” to the Victor’s Secret mark sufficient to quell its concerns, Plaintiff sued the Moseley’s alleging inter alia that defendants used a trademark which blurred and tarnished plaintiffs mark in violation of the Federal Trademark Dilution Act (FTDA). Defendants appealed the judgment of the United States District Court for the Western District of Kentucky which granted motion for summary judgment and enjoined defendants use of their mark. Both parties filed motions for summary judgment.ISSUES:1.) Has the Moseley’s mark diluted Victoria’s Secret mark?2.) Is Victoria’s Secret Mark Famous and distinctive?3.) Can Victoria’s Secret prove actual, present injury to its mark to state a Federal Dilution claim?4.) Is Victoria’s Secret deserving of a high degree of trademark protection?RULES: Frisch’s Restaurant, Inc., v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982) : The eight rules: : the eight factors in evaluating if confusion is likely (1) the strength of the plaintiffs mark; (2) the relatedness of the goods; (3) the similarity of the goods; (4) evidence of actual confusion; (5) the marketing channels used; (6) the likely degree of purchaser care; (7) the defendants intent in selecting the mark; (8) the likelihood of expansion of the product lines.Kellogg Co. v. Exxon Corp., 209 F.3d 562 (6th Cir. 2000) and Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999) The Federal Dilution test, the senior mark must (1) be famous (2) distinctive use of the junior mark (3) be in commerce (4) have been subsequent to the senior mark becoming famous; and (5) cause dilution of the distinctive quality of the senior mark. FDTA: provides that (A) the degree of inherent or acquired distinctiveness of the mark; (B) The duration and extent of use of the mark in connection with the goods or services with which the mark is used; (C)the duration and extent of advertising and publicity of the mark; (D) the geographical extent of the trading areas in which the mark is used; € the channels of trade for the goods or services with which the mark is used; (F) the degree of recognition of the mark in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought; (G) the nature and extent of use of the same or similar marks by third parties; and (H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905 or on the principal register.Ringling Bros, -Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel., 955 F. Supp. 605, 614 (E.D. Va. 1997): In order to dilute a more senior mark, the junior mark must be sufficiently similar.ANALYSIS: Given the rules of Ringling Bros, the court found the defendants mark to be sufficiently similar to the plaintiff’s mark and likely to cause dilution. And in the rules of FDTA, Kellogg Co. v. Exxon Corp. and Frichs’s Restaurant Inc. v. Big Boy the appellant court held that plaintiffs mark was admittedly famous and was used prior to defendants’ use of their mark, and that plaintiffs’ arbitrary and fanciful mark was sufficiently distinctive to warrant protection from dilution. Moreover, the FDTA permitted an interference of likely harm rather than requiring a showing of actual harm, and the semantic and geographic similarities between the marks supported a finding of dilution. CONCLUSION: Yes, Plaintiffs mark was tarnished by the likely association of plaintiffs’ mark with defendant’s adult products and plaintiffs mark was also blurred by the likely linking of numerous outlets to defendant’s single retail establishment. Plaintiffs mark deserved protection of its trademark in the highest degree, and defendants use of plaintiff’s mark was likely to cause consumer confusion.4.) United States Supreme Court Case. This case is a Primary source of law and is a Persuasive authority as the case is out of the State of Texas.Two Pesos, Inc., v. Taco Cabana, Inc.,505 U.S. 763; 112 S. ct. 2753; 120 . Ed. 2d 615; 1992 U.S. LEXIS 4533; 23 U.S.PQ.2D (BNA) 1081; 60 U.S.L.W. 4762; 92 Cal. Daily Op. Services 5571; 92 Daily Journal DAR 8910; 6 Fla. L. Weekly Fed. S 643FACTS: Respondent, the owner operator of a chain of Mexican restaurants with a certain theme, sued Petitioner whom opened up a similar chain of Mexican restaurant’s copying the same theme. Respondent filed suit against petitioner for trade dress infringement. At trial, the jury found respondent’s trade dress was inherently distinctive, but that the trade dress had not acquired a secondary meaning. The appellate court correctly rejected the argument raised by petitioner, the alleged trade dress infringer, that finding of no secondary meaning contradicted a finding of inherent distinctiveness. Certiorari was granted to the United States Court of Appeals for the fifth Circuit.ISSUES: Is secondary meaning required to make Two Pesos trade dress protectible under 43 (a) of the Lanham Act 15 U.S.C.S. -1125 (a)?RULES: Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 83 L. Ed. 73, 59 S. Ct. 109 (1938): Proof of secondary meaning is not required tp prevail on a claim under 43 (a) of the Lanham Act, 15 U.S.C.S.- 1125 (a) where the trade dress at issue is inherently distinctive.Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (CA5 1989): the trade dress of a product is essentially its total image and overall appearance.Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (CA2 1976): marks are generally classified in categories of generally increasing distinctiveness of: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.ANALYSIS: Based on the rules found in Kellogg CO., Blue Bell Bio-Medical, and Abercrombie, the Certiorari decided that there was no persuasive reason to apply to trade dress a general requirement of secondary meaning which would be at odds with the principals generally applicable to infringement suits under 15 U.S.C.S.- 1125 (a).CONCLUSION: Yes, inherently distinctive trade dress is protectable under the 43 (a) of the Lanham Act 15 U.S.C.S. -1125 (a), without a showing that it had acquired a second meaning.To: Supervising AttorneyFrom: Ashley BauerDate: 07//29/2017Subject: Predictive MemoCc: Sweet Lorraine’s Bakery, LLC. Predictive MemorandumPredictive MemorandumFacts:Our client, Sweet Lorraine’s Bakery, LLC. (“SLB”) is a family owned business that opened its only location in Charlotte, North Carolina six months ago. Sweet Lorraine’s Bakery specializes in French and Italian style pastries, Artisan breads and on special order makes occasion (wedding) cakes. SLB has a website, but no online business. The bakery also has a Facebook and Twitter account. Besides word of mouth, all advertising for SLB is done through social media. Things have been going very well for the new bakery until recently, when our client received a nasty email from a gentleman named Edward Sawyer. The email from Mr. Sawyer stated that he was the Vice President of “Sweet Lorraine’s Café’ and Bar” located in Detroit Michigan. Mr. Sawyer said that both he and his wife currently operate “Sweet Lorraine’s Café’ and Bar” which specialize in American fare and have some baked goods. In addition to their Café’ the Sawyers have a website to which sells salad dressing and apparel items across the Country. Mr. Sawyer said that he and his wife have also recently started a franchise of macaroni and cheese establishments called “Sweet Lorraine’s Mac’ n Cheez” to which they have two open locations in the suburbs of Detroit and are looking to extending their franchise into North Carolina. Mr. Sawyers email further stated that he and his wife has a trademark on the phrase “Sweet Lorraine’s” for all restaurants, catering, and baking services in the United States. The Sawyers trademark has been confirmed with the United States Patent and Trademark Office. In his email Mr. Sawyer threatened that if our client does not change the name of her business he would commence litigation against our client in federal district court.Questions Presented:1.) Is it likely that Mr. Sawyer would succeed in his claim of Trademark Infringement against our client?2.) What damages might our client face if Mr. Sawyer sues our client and wins?3.) Should our client change the name of her business?Short Answers:1.) Yes, Mr. Sawyer has a strong case, and it is very likely that he will succeed in his claim of Trademark Infringement.2.) In the worst-case scenario, the Sawyers would be entitled to: profits, up to three times the sum of actual damages, court cost, attorney fees, and a permanent Injunction against our client using the phrase “Sweet Lorraine’s”3.) Yes, considering the analysis of this case, it determined that it would in our client’s best interest to avoid possible litigation, and change the name of her business.Analysis: Our client, Sweet Lorraine’s Bakery, LLC. Recently received a cease and desist email from Mr. Sawyer claiming our client to be infringing on his and his wife’s registered trademark phrase, “Sweet Lorraine’s” which applies to all restaurants, catering, and baking services in the United States. In his email to our client Mr. Sawyer threatened that if our client did not change the name of her business, he would commence litigation against her in federal district court. In this case the validity of the Sawyers trademark infringement claim depends upon whether the courts would find our client in violation of the (Lanham Act of 1946) 15 U.S.C. 1051 et. Seq.; 19 C.F.R.- 133.1 et., seq. sections 1125(a) and 1125(c ).(Lanham Act of 1946) 15 U.S.C. -1125(a). Is a statute that provides for a cause of action for trademark infringement of unregistered marks. 1125(a) provides protection against trademark infringement and prohibits the use of a mark in commerce identical or similar to that used by another seller in a way that confuses the public about the actual source of the goods or services in question. The test to determine liability for infringement is, “likelihood of confusion.” The rules of the Lanham Act 15 U.S.C. 1125(a) would apply to our client’s case as the law states that under 1125(a) Plaintiff is not required to show proof of actual confusion, but just show the “likelihood of confusion” since our client’s mark is that of a very similar mark to the Sawyers, and sells food items, the courts are very likely to find our client in violation of 15 U.S.C. 1125(a) and grant the Sawyers a motion for Injunction.FTDA 15 U.S.C. -1125 ( c). Is a section of the Federal Trademark Dilution Act (FDTA) that provides for cause of action for dilution of a famous mark, and prohibits the tarnishing, dilution, blurring or lessening of a famous mark. Remedies for violation of 1125 ( c) include the courts awarding plaintiff: Profits, damages, court cost, attorney fees, and a permanent injunction prohibiting the use of the mark by defendant. The rules of 15 U.S.C.- 1125 ( c) would likely apply to our clients case because our clients establishment is small and the Sawyers sell their products all over the Country of which it is likely that their mark could considered “famous” and the courts would find our client in violation of 1125( c) that our client is diluting the Sawyers mark, and award the Sawyers not only an injunction, but possible profit, damages and court cost as well.Trademarks used in interstate commerce are protected under the Lanham Act of 1946. Unlike copyrights and patents, trademarks may be protected under state law, federal law, or both. Registration is not necessary for the protection of a trademark. In, Two Pesos, Inc., v. Taco Cabana, Inc.,505 U.S. 763; 112 S. ct. 2753; 120. Ed. 2d 615; 1992 U.S. LEXIS 4533; 23 U.S.PQ.2D (BNA) 1081; 60 U.S.L.W. 4762; 92 Cal. Daily Op. Services 5571; 92 Daily Journal DAR 8910; 6 Fla. L. Weekly Fed. S 643, the courts ruled in favor of the Defendant. In Two Pesos, Inc., v. Taco Cabana, Inc., Owner of a chain of Mexican food restaurants sued Plaintiff, who similarly opened his own Mexican restaurant chain. Defendant did not have a registered trademark, but claimed Plaintiff to have committed Trade Dress Infringement by copying the Defendants restaurant décor’. Upon appeal, the Plaintiff argued that Defendant did not actually have a registered trademark and therefore could not recover damages for Trade Dress Infringement. In Two Pesos, Certiorari was granted and the Court held that the trade Dress of a business may be protected under 43(a), based on a finding of inherent distinctiveness, without proof that the trade dress has secondary meaning because (1) Recovery for Trademark Infringement is generally available without proof of secondary meaning and (2) requiring a secondary meaning for inherent distinctive trade dress would undermine the purpose of the Lanham Act 15 (U.S.C.S. 1*051 et. Seq.) The rules of Two Pesos, Inc. v. Taco Cabana, Inc. would not apply to our client’s case because the Sawyers have a registered Trademark the phrase “Sweet Lorraine’s” which gives them prima facie evidence of both validity and ownership of the mark, as well as, the right to use the mark in commerce. In, V Secret Catalogue, Inc. v. Mosely, 259 F.3d 646 2001 U.S. App. LEXIS 16937 2001 FED App. 0247P (6th Cir.) 59 U.S.P.Q.2D (BNA) 1650, the court ruled in favor of the Plaintiff. Plaintiff, owner of a registered mark of a nationally marketed women’s lingerie, clothing and accessories chain known as “Victoria’s Secret” sued Defendant which operated a single retail store called “Victoria’s Little Secret”, that sold adult novelty items, alleging Defendant used a mark which blurred and tarnished Plaintiffs mark in violation of the FDTA 15 U.S.C.S. 1125(c). In V. Secret Catalogue Inc., v. Moseley’s, the Plaintiff was required to, and did to prove that: (1) it’s mark was “famous”; (2) the defendant was making a commercial use of a mark in commerce; (3) the use of its mark came the Plaintiffs mark became famous; and (4) the defendants use of its mark dilutes the quality of Plaintiffs mark. The courts found Defendants consumers likely to automatically think of the senior mark linking the two, and therefore supported a finding of dilutions, granting Plaintiff’s motion for permanent Injunction. The rules of V. Secret Catalogue, Inc., v. Mosely would apply to our client’s case because the Sawyers sell their items across the Country and have multiple “Sweet Lorraine” establishments, with plans of opening more which would make the Sawyers mark famous, and protected under FDTA 15 U.S.P.C.S. 1125 (c) from dilution or blurring of the Sawyers mark.The test for registered and unregistered Infringement is the same and requires the courts to measure the “likelihood of confusion” by conducting a test of eight elements: Strength of mark, proximity of goods, similarity of mark, evidence of actual damage, marketing channels used, type of goods and the degree of care likely to be exercised by the purchaser, Defendants intent in selecting the mark, likelihood of expansion. In K’ Arsan Corp., v. Christian Dior Perfumes Inc., 1988 U.S. App. LEXIS 27658, the courts ruled in favor of the Defendant. In K’ Arsan, Plaintiff, owner of registered mark filed suit against defendant for alleged trademark infringement of her “Sun Powder” product and that of Defendants similar sun-powder product. In K ’Arsan Corp., v. Christian Dior Perfumes, Inc., the plaintiff was required, yet failed to advance the argument for “likelihood of confusion” test. Plaintiff could not offer any evidence to support her mark was “famous”, nor was the Plaintiff able to show that her product line showed promise of expansion. The rules of K ’Arsan Corp., v. Christian Dior Perfumes, Inc., not apply to our client’s case because the Sawyers have plans for expanding their franchise and can most likely prove their mark to be “famous”. The courts would likely rule in favor of the SawyersIn Aero-Motive Co. v. U.S. Aeromotive, 922 F. Supp. 29 1996 U.S. Dist. LEXIS 4519, The courts ruled in favor of the Plaintiff. In Aero-Motive Co., v. U.S. Aeromotive, Plaintiff was the owner of registered trademark that manufactured automotive parts. Defendant through attorney was also the owner of his registered trademark whose company made custom automotive parts and held a contract with the United States Defense to make airplane parts. In Aero-Motive, the courts applied the eight-factor test and determined, Plaintiffs mark had established a secondary meaning, and there was a “likelihood of confusion”, the strength of Plaintiffs mark would likely suffer irreparable harm and awarded Plaintiff’s motion for permanent injunction, and damages. Attorney’s fees and court cost were not awarded because defendant was not found to have willfully infringed because he did in fact go through his attorney before registering his mark. The rules of Aero-Motive Co., v. U.S. Aeromotive, would apply to our client’s case because although our client did not willfully infringe it is likely that the courts would find there is “likelihood of confusion.”Conclusion:Based on the Statutes, caselaw, and analysis mentioned above, the facts of our client’s case contain all the necessary elements of a prima facie case for Trademark Infringement. If our client chooses to not change her name, it is very likely that Mr. Sawyer would win his case and our client would be found guilty of trademark infringement and Mr. Sawyer would be entitled to profits, damages, court cost and attorney fees, and the courts will likely place a permanent injunction reframing our client from any further use of the phrase “Sweet Lorraine’s.” For these reasons, it is in our client’s best interest to avoid prosecution, and change the name of her business. References:Lanham Act of 1946 15 U.S.C. 1051 et. Seq.; 19 C.F.R.- 133.1 et., seq. (revision 1988)15 U.S.C. 1125 (a) (1946). (revision 1988).FTDA 15 U.S.C. 1125 (c ) (1995)Aero-Motive Co. v. U.S. Aeromotive, 922 F. Supp. 29 1996 U.S. Dist. LEXIS 4519V Secret Catalogue, Inc. v. Mosely, 259 F.3d 646 2001 U.S. App. LEXIS 16937 2001 FED App. 0247P (6th Cir.) 59 U.S.P.Q.2D (BNA) 1650Two Pesos, Inc., v. Taco Cabana, Inc.,505 U.S. 763; 112 S. ct. 2753; 120. Ed. 2d 615; 1992 U.S. LEXIS 4533; 23 U.S.PQ.2D (BNA) 1081; 60 U.S.L.W. 4762; 92 Cal. Daily Op. Services 5571; 92 Daily Journal DAR 8910; 6 Fla. L. Weekly Fed. S 643K’ Arsan Corp., v. Christian Dior Perfumes Inc., 1988 U.S. App. LEXIS 27658Howard & MillsAttorney at Law999 Manhattan Blvd. 5th FLR. STE # 105Charlotte, NC. 94583Tel. 1-800-767-8000 Fax. 1-800-767-8001lhoward@bmills@August 4, 2017VIA FIRST CLASS MAILMargret Donnelly1234 Thisa Way Charlotte, NC. 94583Re: SLB Trademark Infringement Dear Ms. Donnelly,I am writing this letter to you in response to your recent inquiry regarding the recent cease and desist email you received from Mr. Sawyer and his threat to commence litigation against you over the use of his registered mark “Sweet Lorraine’s.” In this letter, I will first restate the facts, as I know them to confirm their accuracy. Next, I will provide you with an explanation of the law and how it will likely apply in your case, and lastly, I will give you my opinion on whether or not you should change the name of your business. Approximately six months ago your business, a bakery named “Sweet Lorraine’s Bakery, LLC”, which specializes in French and Italian style pastries, artisan breads and special order “occasion” wedding cakes, opened its doors in Charlotte, North Carolina. In addition to your one location SLB has a website to which no business is conducted. SLB also has a Facebook and Twitter account where all advertising takes place. Things have been going great until recently when you received a nasty email from a gentleman named Edward Sawyer. The email from Mr. Sawyer stated that he was the Vice President of a café ‘that he and his wife run located in Detroit Michigan named “Sweet Lorraine’s Café’ and Bar” which specializes in American fare and also has some baked goods. Their Café has a website that does conduct business through the sales of their salad dressing and apparel across the Country. Mr. Sawyer and his wife are also in the process of starting a franchise of restaurant establishments called “Sweet Lorraine’s Mac’ n Cheez” in which they already have two locations up and running in the suburbs of Detroit and are thinking of expanding by opening another location somewhere in North Carolina very soon. Mr. Sawyer further stated in his email that he and his wife are the registered owners through The United States patent and Trademark of the phrase “Sweet Lorraine’s” for all restaurant, catering and baking services in the United States and threatened that if you do not change the name of your business he will commence litigation against you in a federal district court for trademark infringement. My findings and opinion rely on the facts stated above. Statutory Law provides a Statute known as The Lanham Act of 1946 which provides protection of registered marks and is used in court of law by applying specific test to determine trademark infringement. The two subsections of the Lanham Act I have determined would apply to your case are 15 U.S.C.-1125 (1) (a) which provides protection of a mark if there is a “likelihood of confusion” Under this section one must show: (1)Strength of mark; (2) proximity of goods; (3) similarity of mark; (4) evidence of actual damage(4) marketing channels used; (5) type of goods and the degree of care likely to be exercised by the purchaser; (6) Defendants intent in selecting the mark, and (7) likelihood of expansion. and; FDTA 15 U.S.C.-1125 (1) (c), which provides protection against the dilution, blurring or tarnishing, or lessening in any way, to accomplish this one must show: (1) it’s mark was “famous”; (2) the defendant was making a commercial use of a mark in commerce; (3) the use of its mark came the Plaintiffs mark became famous; and (4) the defendants use of its mark dilutes the quality of Plaintiffs markIn conducting some legal research on the question as to whether Mr. Sawyers claim of trademark infringement had any merit, and what damages you might suffer if he did succeed. I found four different cases of trademark infringement that had similar circumstances where the law is likely to apply given the facts of your case. According to a federal district case out of the State of Michigan, called Aero-motive Co. v. U.S. Aeromotive, (1996) 922 F. where both plaintiff and defendant were both registered owners of their marks the court found the defendant guilty of trademark infringement because the marks were similar and in the same industry; the likelihood of confusion was present, and that plaintiffs mark was likely to suffer irreparable harm by defendants use. Although your mark is not registered the facts of Aero-Motive Co., v. U.S. Aeromotive, and your case are similar, so there is a chance that you would suffer the loss of the court awarding: damages, court cost, attorney fees, and a permanent injunction against you, in which you will be forced to stop using the phrase “Sweet Lorraine’s” immediately and will prevent you from any future use of the mark. There was another case out of Michigan called, V. Secret Catalogues, Inc., v. Mosely’s, (2001) 259 F.3d that closely parallels your situation where court found the defendant guilty of infringement because the plaintiffs mark was “famous”, and the Defendants consumers were likely to automatically think of the senior mark linking the two, which supported a finding of dilution, blurring and tarnishing of the plaintiff’s quality mark. The facts of this case are also very similar to the facts of your case, and it is possible that even if the courts do not award damages or court cost, there is a strong chance for the courts to grant the Sawyers a permanent injunction. In a Supreme court case, out of Texas called Two Pesos, Inc., v. Taco Cabana, Inc., (1992) 505 U.S. 763 the court found the that trademarks used in commerce registered or not are to be protected under the Lanham Act if there is an inherent distinctiveness of its mark found. The facts of this case are dissimilar to your case because the Sawyers mark is registered, which gives them the full right to use their mark in commerce and that i be protected under Lanham Act meaning the court would likely find that you are willfully infringing on the Sawyers mark and could possibly award the Sawyers the sum of actual damages times three, court cost, as well as a permanent injunction. There was one case I was able to locate out of the state of Michigan named K’ Arsan Corp., v. Christian Dior Perfumes Inc., (1988) U.S. where the plaintiff alleged trademark infringement, however the case was dismissed because the Plaintiff was unable to prove that its mark was famous and that its products were likely to expand. Unfortunately, the facts of this case would be dissimilar to the facts of your case, because the Sawyers, through their online sales across the Country, and recent franchise expansion plans, would be able to prove that their make was “famous” and that their franchise showed the likelihood of expansion. Although there is a chance that the court will rule in your favor and dismiss the Sawyer’s trademark infringement case against you. My legal research suggests that it is highly likely that Mr. Sawyer would succeed in his claim of trademark infringement. My research also found that, in the worst-case scenario the court could potentially award the Sawyers: profits, up to three times the sum of actual damages, court cost, attorney fees, and a permanent Injunction prohibiting any further use of the phrase “Sweet Lorraine’s.” For the forgoing reasons, it would be in your best interest to avoid prosecution, and is my professional opinion that you should change the name of your business. As you are aware this is a very serious decision, and should not be taken lightly. Please take some time to consider my opinion, and call my office to set up an appointment sometime next week to discuss the appropriate next steps.Sincerely,Lisa HowardAttorney at LawJBK:aabPleg 135 portfolio Project ReflectionIn taking the time to reflect on all that I have learned after completing my portfolio project for Pleg 135, I have come to realize that a lot of time and effort goes into legal research, and the creation of case briefs, opinion letters, predictive memos Knowing what these documents are and how to produce them before I enter the position as a paralegal will likely make me more valuable within the legal field. Once in the position as a working paralegal it is almost certain that I will be asked to produce these documents on a regular basis for each new case my leading attorney excepts, which shouldn’t be a problem because I will already know how to write these complicated documents.In learning to produce each of the legal documents in my portfolio project I would say that my thought process has changed because I no longer panic when it is time to produce my legal documents, instead I have come up with my own formula as to how to format and draft each of the legal documents, and stick to it to clearly convey my findings.My advice to new students that are starting their pleg 135 portfolio project is to make sure to read your directions. Do not be afraid to ask questions. Stick to it, there are a few assignments in this project that are lengthy and require a lot of time and research, but do not give up. There is a huge sense of accomplishment and personal growth at the end.The program out comes that I feel I fulfilled by completing this project are: 1.) Apply appropriate paralegal specific knowledge, skills and behaviors to analyze and interpret primary and secondary law sources and related legal documents. This outcome was fulfilled by completing this project as I had to learn to interpret different cases and extract the fact, issues, rules to be able to effectively apply them to our case.2.) Design and compose legal documents, including but not limited to correspondence, pleadings, briefs, and memoranda, that are relevant to different substantive areas of law. I feel this is the outcome that I fulfilled the most because this project called for us to locate four different cases out of different courts, and a statute. 3.) Utilize electronic and print resources to locate primary and secondary law-related legal documents to research, summarize, and evaluate legal issues. In completing this project, I became much more familiar with the use of Lexis and how and where to locate different legal documents and cases. I learned to use the search box to accurately research legal issues, to accurately locate specific cases out of certain courts and circuits to cases to use and apply that information to my case.After completing my portfolio project I feel confident in my new skill to conduct accurate legal research, and my ability to produce case briefs, opinion letters, and predictive memos. ................
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