Resolving Intellectual Property Rights


Assignment 2: Resolving Intellectual Property Rights

Due Week 10 and worth 220 points

Note: The companies mentioned herein are merely hypothetical organizations with characteristics developed to enable students to respond to the assignment. You may create and / or make all necessary assumptions needed for the completion of this assignment if those assumptions are consistent with the facts presented. Do not make assumptions which obviate the need to conduct a legal analysis of the issues.

In this assignment, you will act as the fictional character of Betty Fuller, Head of Marketing at Simply Green Products, while you draft a memorandum to the company President. In this memorandum, you must explain how you would resolve the legal issues discussed in the scenario.


Simply Green Products (SGP) is a $10 million company that produces biodegradable packing materials that orchards use in the Shenandoah Valley to transport their apples, peaches, and pears nationwide. Biodegradable materials are more eco-friendly because they break down into the environment. Such packing materials are marketed under the name “SafePac,” which is heavily advertised in trade journals. Simply Green Products have had the name “SafePac” imprinted on all of their packing material since 2008. Although SGP never filed for either state or federal trademark protection, following the advice of one of their summer interns, they did register the domain name “” With the movement toward more eco-friendly agricultural production, the fact that such packing materials are biodegradable provides a primary marketing advantage over non-biodegradable competitors.

Despite the fact that SGP is highly eco-friendly, it is not particularly technologically advanced. SGP mostly advertises in trade journals and magazines, with most orders coming via the mail or phone orders. Shep Howard, President of SGP realizes his company needs to increase its marketing presence and recently hired Betty Fuller, a recent Strayer graduate with an MBA, to be the new Director of Marketing for the company. Ms. Fuller has been charged with bringing SGP’s marketing plan into the 21st century.

In preparing the new Marketing plan, Ms. Fuller, quickly noticed that although SGP owned, the name SafePac, itself had never been registered with the Trademark and Patent Office. Accordingly, one of the first things Ms. Fuller did was start the registration process. When searching the USPTO office database to see if a mark has already been filed she found the following entries shown below:


She immediately realized SGP had a problem. Ms. Fuller did some additional research and found that a company called Safe Choices, Inc. uses the SafePack name to market an emergency weather kit in the form of a backpack; and had received a federal registration for the mark from the Patent and Trademark Office in 2002. This backpack is sold both online at and in sporting goods stores nationwide.

Note: “A complete search is one that will uncover all similar marks, not just those that are identical. In this regard, searching for trademark availability is not the same as searching to register a domain name. A domain name search may focus on exact or “dead on” hits, with no consideration given to similar names or use with related products and services. Basically, a domain address is either available or it is not. The trademark process, on the other hand, is more complex. As part of the overall examination process, the USPTO will search its database to determine whether registration must be refused because a similar mark is already registered for related products or services (i.e., even identical marks may co-exist if used on goods or services not considered to be related in any way). Please note that the USPTO does not offer advisory opinions on the availability of a mark prior to filing of an actual application.”

Legal Issues

Ms. Fuller contacted Shep Howard to discuss SGP intellectual property problems and to devise a plan on how to proceed. In her meeting with Howard Ms. Fuller explained the legal issues to Howard as follows:

SGP has been using the product name SafePac since 2008 but never trademarked or otherwise registered that named. A company called Safe Choice had registered the names SafePack and SafePacs back in 2002 and those names were listed live marks by the USPTO. Arguably, SafePac may be confusingly similar to Safe Choices marks to preclude registration of the marks. Moreover, use of the name may “constitutes a false designation of origin which is likely to confuse customers as to the source of the goods”. However, safe Choice and SGP are in different product lines and, therefore, arguably are not competitors, a requirement for infringement. The intellectual property issue at hand involves the Lanham Act.
Even if the USPTO finds that SGP’s proposed mark and Safe Choices marks are not similar or that SGP and Safe Choice are not competitors, registrations may nonetheless be denied under the provisions of the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c). For additional information, see Duvall, S.A. (2007). The Trademark Dilution Revision Act of 2006: balanced protection for famous brands. The Trademark Reporter, 97(6), 1252-1285.
Since we purchased the domain name, Safe Choice may attempt to accuse SGP of cybersquatting and try to have that domain name transferred to their control. Any such action would proceed under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d).

Finally, she outlined her plan on how to proceed with the marketing plan based on how she though the legal issues would be resolved. Mr. Howard then asked Ms. Fuller to put the information she had just given him in memo form.

Assignment Requirements

In the role of Betty Fuller, prepare the memorandum requested by Shep Howard. The memo should be three to four (3-4) pages in which you:

Decide whether or not SGP can register SafePac as a trademark given the issues discussed in “legal issue: a”.
Decide whether or not the Trademark Dilution Revision Act of 2006 would be violated if the USTPO granted SGP a trademark on SafePac.
Decide whether or not the Anticybersquatting Consumer Protection Act would be violated by SGP’s use of
Describe how your resolution would affect the marketing options available to the company.
Use at least three (3) quality academic or legal resources in this assignment, such as a government Website, Law school Websites, Restatements of laws, and other treatises of Law. Your paper must include internal citations indicating the sources of your legal statements.
Note: Wikipedia and other Websites do not qualify as academic or legal resources.
Format your assignment according to the following formatting requirements:
Typed, double spaced, using Times New Roman font (size 12), with one-inch margins on all sides.
Include a cover page containing the title of the assignment, the student’s name, the professor’s name, the course title, and the date. The cover page is not included in the required page length.
Include a reference page. Citations and references must follow APA format. The reference page is not included in the required page length.




SUBJECT: Resolving Intellectual Property Rights.

I am writing to you in response to the procedure of the marketing plan of Simply Green Products. The plan will have the basis on how the legal issues of intellectual property rights will be resolved.


Legal Issues Supporting SGP to Use SafePac as their Trademark
According to my research, Simply Green Products (SGP) has the right to register SafePac as its trademark. From my findings, both Safe Choice and SGP are not competitors. SGP produces biodegradable packing materials for transporting apples and pears from the orchards. On the other hand, Safe Choices produces emergency weather kits that are in the form of a backpack. The products of the two firms are not substitutes for each other. United States Patent and Trademark Office (USPTO) allow coexistence of trademarks that are identical. The coexistence of identical trademark will only hold if commodities either registry are unrelated (Cimoli et al., 2014).

A complete search shows that there exist a similar trademark but not identical to SafePac. Safe Choices has a similar mark by the name SafePack and SafePacs. SafePack and SafePacs are similar to SafePac, but the trademarks are not identical. There is a high chance that USPTO will not reject the registration of SafePac as a trademark for SGP.

Trademark Dilution Revision Act of 2006 Consideration in use of
The Trademark Dilution Act of 2006 defines dilution in two ways: by tarnishment and also dilution by blurring. According to Rosén (2012), dilution by tarnishment is said to occur when an association arise from the similarity between a mark and the famous mark which in turn harm the reputation of the famous trademark. Dilution by blurring refers to an association that ruins a trademark’s uniqueness.

The violation of the Trademark Dilution Act of 2006 will be in terms of dilution by blurring but not dilution by tarnishment. Dilution by blurring will occur since Safe Choices’ trademarks will no longer be unique. Dilution by tarnishment will not occur since SGP’s trademark will not harm the reputation of the existing Safe Choices’ marks. Simply Green Products and Safe Choices produce different products. Therefore, the two firms are not competitors in any way. Though, the USPTO will grant SGP the permission to use SafePac as our mark, there is a likelihood of violating the law through by blurring.

The Trademark Dilution Act of 2006 also states that a trademark should qualify for dilution protection if it is widely famous (Merges, 2011). Safe Choices’ marks are more famous than SafePac since they were registered in the year 2002. Also, Safe Choices have run the online marketing of its marks.


Consideration of Anticybersquatting Consumer Protection Act (ACPA)
ACPA is one of the American Law passed in the year 1999. The law established the path of action for trafficking in, registering or using a confusing mark (Meiners, Ringleb & Edwards, 2012) .Anticybersquatting Consumer Protection Act will be violated if SGP uses The trademark for Safe Choices and Simply Green Products are similar. The similarity of the two companies’ marks is likely to bring confusion to the consumers. Customers will have a wrong designation of the origin of the products. Safe Choices may blame Simply Green Products with an attempt of cybersquatting. SGP will be accused with an intention of having the domain reassigned to their control. Though, the intention of SGP in registering SafePac as their mark is not in bad faith of reducing the profits of Safe Choices.

Effects of My Resolutions on the Marketing Option available to the Company

Simply Green Products is an eco-friendly firm. The firm has a high chance of increasing its sales if it uses technology in its marketing of its products. There is a need to embrace technology by the firm for productive results. Chaudhry & Zimmerman (2013), argues that it’s essential for a firm to protect its intellectual property right.

One of my resolutions is to register SafePac as our trademark. The effects of this resolution are that it will give SGP’s products a brand name that will be recognized nationwide. There is a high possibility of the United States Patent Trademark Office accepting SafePac as our new trademark. USPTO will consider that the Safe Choices’ marks are only similar but not identical to our trademark. SGP will have an upper hand of their mark being registered after a complete search.

The repercussion of using the SafePac as SGP’s trademark may result in a conflict with Safe Choices. There will be dilution by blurring that is Safe Choices’ marks will no longer be unique. The dilution will lead to the violation of the Trademark Dilution Revision Act of 2006. The dilution will occur since Safe Choices’ trademarks are more famous and were registered earlier. The Safe Choices firm has been marketing its products using online platform thus increasing its fame.


Moreover, Safe Choices may have a perception that SGP intends to transfer Safe Choices’ domain name by registering SafePac as our trademark. There is a likelihood of the consumer’s confusion. The confusion will arise as some of the customers may not be sure of the origin of the products. SGP’s use of SafePac as its trademark will lead to violation of Anticybersquatting Consumer’s Protection Act of the United States.

In Summary, Simply Green Products need to register their trademark as it will enable them enter the online market. Online marketing is beneficial to the firm as it increases the volume of sales through creating awareness in the market.










Chaudhry, P., & Zimmerman, A. (2013). Protecting your intellectual property rights. New York, NY: Springer.

Cimoli, M., Dosi, G., Maskus, K. E., Okediji, R. L., Stiglitz, J. E., & Reichman, J. H. (2014). Intellectual property rights: legal and economic challenges for development. Oxford University Press.

Meiners, R., Ringleb, A., & Edwards, F. (2012). The legal environment of business. Mason, OH: South-Western Cengage Learning.

Merges, R. (2011). Justifying intellectual property. Cambridge, Mass.: Harvard University Press.

Rosén, J. (2012). Individualism and collectiveness in intellectual property law. Cheltenham, UK: Edward Elgar.



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