Intellectual Property Law

Western District Finds "Worm Factory" Trademark Likely Infringed by Competitor

By Michael Atkins

Plaintiff Cascade Manufacturing Sales, Inc., sells a composting bin it calls the WORM FACTORY. It owns a federal registration for that mark. 

Defendant Provident Co. Trust and its principal, Barry Russell, sell a competing product known as the GUSANITO WORM FACTORY.

Plaintiff alleges that defendant’s trademark infringes its WORM FACTORY trademark. It brought suit in the Western District and moved for a preliminary injunction.

On Nov. 12, Judge Ronald Leighton found WORM FACTORY is not likely generic because the mark in its truly generic sense would “suggest a factory where worms are built, not a composting bin in which worms are effectively the factory workers.”

The court found the mark is not merely descriptive under the Ninth Circuit’s “imagination” and “need” tests. “It cannot be said that Providnet ‘needs’ to use the term worm factory to describe its worm composting bins. The words ‘worm ’ and ‘compost’ and perhaps ‘bin’ are needed; the word ‘factory,’ while useful and distinct, is not needed to describe or market a vermiculture product using worms and worm castings to enhance the composting process. As Cascade cleverly points out, the mark is ‘crawling’ with products incorporating the term ‘worm’ without using the term ‘factory’ to denote worm-related composting products. Under these tests, Cascade’s mark is not merely descriptive; it is a stronger, suggestive mark.”

Having found that WORM FACTORY is protectable, the court then decided that GUSANITO WORM FACTORY is likely to confuse consumers. “It is clear to the court that, assuming the marks are valid, Cascade has demonstrated that customers are likely to be confused by Providnet’s use of “Gusanito worm factory” to identify its product, which directly competes with Cascade’s “worm factory.” Indeed, there is anecdotal evidence that such confusion is already occurring, among the very customers Providnet claims would exercise more than ordinary care to avoid.”

Given these findings, the court granted plaintiff’s motion for preliminary injunction. It denied defendants’ request for a $250,000 bond and instead imposed a bond in the amount of $10,000. 

The case cite is Cascade Manufacturing Sales, Inc. v. Providnet Co. Trust, 2008 WL 4889716, No. 08-5433 (W.D. Wash. Nov. 12, 2008) (Leighton, J.).

Full post as published by Seattle Trademark Lawyer on November 16, 2008 (boomark / email).