From their business’s very inception, Mike and Emma were confronted with the complexities of the legal
landscape of business. They received a cease-and-desist letter from a national sub-sandwich chain claiming
that Mike and Emma’s brand, “Big Mike’s Subs,” was infringing upon its registered trademark and trade dress.
Their investor friend consulted a prominent Ann Arbor intellectual-property attorney. The news was grim: They
were indeed infringing on the national chain’s marks. Fortunately, it’s early enough to change the brand name
without impacting sales. The entrepreneurs have a working replacement, “Submarine City,” but experience has
taught them they need several options.
Their investor has advised them it’s worth hiring an IP attorney to conduct a full trademark search using more
sophisticated databases and to register the trademark for them. It could spare them future cease-and-desist
letters in the long run. It’s anyone’s guess what the busy entrepreneurs will do with this advice. In the
meantime, they have access to the next best thing: a class of Business Law students at a nearby community
college. The class’s instructor couldn’t resist their offer of a month of free subs, so in exchange you were
volunteered for the task of recommending safe brand names.
Discussion Board Instructions
Part 1: Research Brand-Name Ideas
Paragraph 1: Create at least three possible brand names for the Ann Arbor-based sub-sandwich shop, formerly
known as Big Mike’s Subs.
Paragraph 2: Using the internet, familiarize yourself with the terms associated with trademark strength —
fanciful, arbitrary, suggestive, descriptive, and generic. Now, label each of your brand-name ideas with one of
these terms and explain your reasoning for the labels. Keep in mind that a word or logo can only be considered
a trademark if it’s distinctive.
Paragraph 3: Since you don’t want to try to register a trademark that’s confusingly similar to an existing one,
conduct a Google search and answer the questions, Is this brand-name idea already being used for identical
goods and services (sandwiches and restaurant service)? and, As a result of your Google search, are you
more or less confident in your brand-name idea?
Paragraph 4: If you’re confident in your brand-name idea based on your Google search, stick with it. If you’re
not, select the next strongest from your list. Now, visit the USPTO’s trademark database to determine whether
any similar brand names have been applied for or registered. Use the “Basic Word Mark Search (New User)”
option. Answer the questions, Did any word marks appear from your search? and, If so, what was the status for
the top three marks listed? For example, if you search for Submarine City, you’ll notice an entry for “SUBCITY,”
a mark once used in Arkansas; fortunately, it’s listed as “dead,” meaning the trademark has been canceled and
is no longer active
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