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 ceaseand-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.