Intellectual Property Law
Seattle Trademark Lawyer 
Reports on trademark law developments from Seattle and beyond. Covers trademark infringement, dilution, cybersquatting, right to publicity, domain name disputes, and the like, with an emphasis on happenings in the Seattle area and Ninth Circuit.
Post Frequency: 1/day Last Entry: November 18, 2009 at 23:47:00 Recent Entries: 331
By Michael Atkins
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Ninth Circuit Remands Cybersquatting Case to Western District
Posted on November 18, 2009In 2007, the Western District of Washington found that counterclaim plaintiff Vericheck, Inc., had proven its cybersquatting case against counterclaim defendant David Lahoti. (STL post on the summary judgment order here; post on the bench trial decision here...
Topline Agrees to Injunction to Settle Adidas Lawsuit Over Shoe Stripe Designs
Posted on November 17, 2009As folks may remember, Adidas America, Inc., sued The Topline Corp. in the Western District for trademark infringement. (STL post here.) Looks like the parties have settled. On Nov. 13, they filed a proposed Permanent Injunction on Consent and Stipulated Dismissal, which will dismiss the parties’ claims and counterclaims against each other...
Twilight-Themed Restaurant Re-Thinking Its "Volterra" Name
Posted on November 17, 2009Fans can get their fix at a forthcoming Twilight-themed restaurant,though it may not be named Volterra. The owners of a forthcoming Twilight-themed restaurant are thinking twice about their name. Tim and Annette Root own Dazzled by Twilight, a Forks, Wash...
Car-Freshner Corp. Sues Getty Images for Trademark Infringement
Posted on November 16, 2009Plaintiffs claim defendant licenses this and other photos containingtree designs that are confusingly similar to their own. On Nov. 9, Car-Freshner Corp. and Julius Samann Ltd. (JSL) filed suit in the Northern District of New York against Seattle’s Getty Images, Inc...
Court Allows Owner to Delete Unused Goods from Trademark Registration
Posted on November 12, 2009Plaintiff One True Vine, LLC, sells wine under the LAYER CAKE trademark. Defendant The Wine Group LLC under the CUPCAKE trademark. OTV sued Wine Group in the Northern District of California for trademark infringement. Some background: OTV filed an intent-to-use application for the LAYER CAKE mark with the PTO in March 2006...
Topline Sues Boot Designer Over Use of FLIRT Trademark
Posted on November 11, 2009Rocky Brands’ Web site advertising its FLIRT boots On Nov. 6, Bellevue, Wash.-shoe designer Topline Corp. filed suit in the Western District against Rocky Brands Wholesale LLC and other shoe sellers that market women’s boots under the trademark FLIRT...
Seattle Court Dismisses FOIA Suit for Information on Counterfeit Seizures
Posted on November 10, 2009Seattle IP lawyer Samuel Watkins sued the U.S. Bureau of Customs and Border Protection (CBP) under the Freedom of Information Act (FOIA) for the release of Notices of Seizure of Infringing Merchandise from various ports, including the Port of Seattle...
Marilyn Monroe's Licensing Company Sues Calendar Publisher in Seattle
Posted on November 08, 2009The calendar plaintiffs say violates Marilyn Monroe’s publicity rights On Nov. 3, CMG Brands, LLC, and Marilyn Monroe, LLC, filed suit in King County Superior Court against publisher Moseley Road, Inc., and bookseller Borders Group, Inc...
Competitor Sues ZymoGenetics for False Advertising; Obtains Three TROs
Posted on November 05, 2009On Nov. 2, King Pharmaceuticals, Inc., Monarch Pharmaceuticals, Inc., King Pharmaceuticals Research and Development, Inc., and Gentrac, Inc., filed suit against Seattle-based ZymoGenetics, Inc., in the Eastern District of Tennessee. The complaint alleges a variety of false advertising and trademark infringement claims related to ZymoGenetics’ topical thrombin products...
Court Finds Name Not a Trademark, So No False Designation of Origin
Posted on November 04, 2009Plaintiff Melvin Ott sued Ingenix, Inc., for false association under section 43(a)(1)(A) of the Lanham Act, claiming it falsely used his name and resume in bidding for a contract with the State of Montana. In September 2008, the Eastern District of Washington dismissed his claim on summary judgment, finding he had not suffered any competitive injury and lacked standing to assert such a claim...
NYU's Seoul Campus or Dentist's Office?
Posted on November 02, 2009Purple lettering and familiar torch logo: It’s apparently not what you think. One last report about Korea. I saw this building one day. I thought it was cool that New York University had an outpost in Seoul. Purple lettering, torch logo — what else could it be? No, the driver said...
Korea Trip Rates a Thumbs-up
Posted on November 01, 2009STL’s trip to Korea rates a thumbs-up Those Soulites love their thumbs-up. That much became clear after just a few minutes in the Land of the Morning Calm. Cartoon thumbs-up signs are everywhere. My favorites were the things without thumbs — like an oyster and a dentist’s cartoon tooth...
Court Finds Ex Parte TRO Not Justified in Trade Dress Case
Posted on October 21, 2009Plaintiff’s (left) and defendant’s trade dress: Ex parte relief not appropriate Ruiz Food Products, Inc., filed suit in the Eastern District of California against Camino Real Foods, Inc., alleging that Camino’s burrito packaging is confusingly similar to its own...
Seoul Long!
Posted on October 21, 2009STL will be on vacation in Seoul for about ten days. I expect to be refreshed and back to my usual tricks on Nov. 2. (Photo credit: karendotcom127)
District of Oregon Declines to Adopt Magistrate's Decision as Inconsistent
Posted on October 20, 2009In Adidas America, Inc. v. Calmese, District of Oregon Magistrate Judge Janice Stewart recommended that the court grant Adidas’ motion for summary judgment that its use of “prove it” does not infringe defendant Michael Calmese’s PROVE IT! registered trademark but that the court deny Adidas’ motion that its use of “prove it” is not a false declaration of origin...
Ninth Circuit Affirms Injunction Against Nutritional Supplement Seller
Posted on October 18, 2009Plaintiff CytoSport, Inc., sued Vital Pharmaceuticals, Inc., in the Eastern District of California for trademark and trade dress infringement. CytoSport then moved for a preliminary injunction enjoining Vital from marketing, selling, advertising or promoting a liquid protein-based nutritional supplement using the name MUSCLE POWER or any other trademark confusingly similar to plaintiff’s MUSCLE MILK trademark...
Attending the International Association of Korean Lawyers Annual Conference?
Posted on October 15, 2009If you’re planning to attend the International Association of Korean Lawyers’ annual conference next week in Seoul, please let me know. I’ll be there and would love to get together!
No Doubt About It, Federal Courts Have the Power to Enforce Their Orders
Posted on October 15, 2009I sometimes get this question from a skeptical foreign law student: Can’t a party simply ignore a court order? In some countries, perhaps. But not in the States. Especially not in federal court. I explain that federal judges are a big deal...
Why Can't Foreign Lawyers with a U.S. LLM Take the Washington Bar?
Posted on October 14, 2009Why is it that foreign lawyers who earn an LL.M. from an ABA-accredited law school can’t even sit for the Washington State Bar Exam? Shocking, I know, but I have it on good authority this is true. You practice trademark law in Japan or Italy for a number of years, you get an LL...
Chicago Tribune Reports on USOC's Enforcement Efforts in the Windy City
Posted on October 13, 2009The Chicago Tribune yesterday ran a piece on the USOC’s enforcement efforts over there. In summary, it’s pretty much the same heavy-handed story we’ve experienced over here. Case in point: Olympic Meat Packers Inc., which after 40 years changed its name to “Olympia Meat Packers” to avoid a USOC suit...
Western District Denies Worm Grower's Motion for Summary Judgment
Posted on October 11, 2009STL’s been covering the “Worm Factory” case a while. Among other things, I dig that plaintiff and defendant worm growers both come from Washington. As readers may recall, this dispute’s about defendant Providnet Co. Trust’s use of WORM FACTORY and similar words in connection with its decomposting bins, which plaintiff Cascade Mfg...
Apple Doesn't Have a Monopoly on Fruit Trademarks, PC World Blog Says
Posted on October 08, 2009The PC World blog has a rundown on Apple’s dispute over Woolworths Ltd.’s apple-ized logo. It concludes that Apple doesn’t have a monopoly on fruit trademarks. It’s case in point — Washington State Apple Commission’s logo...
Topics Entertainment Sues Rosetta Stone for Declaration of Noninfringement
Posted on October 07, 2009Trade dress infringement?Topics Entertainment’s (left) and Rosetta Stone’s packaging On Oct. 5, Renton, Wash.-based Topics Entertainment, Inc., filed suit in the Western District against Rosetta Stone, Ltd., seeking a declaratory judgment that the packaging of its INSTANT IMMERSION-branded language learning software does not infringe Rosetta Stone’s trademark or trade dress rights...
The USOC Strikes Again -- This Time Against Olympia's Newspaper
Posted on October 06, 2009This headline is what bugs me about the USOC: “USOC fights Olympian newspaper’s trademark.” Now, what the Seattle Times means is the USOC is opposing McClatchy U.S.A. Inc.’s application to register its trademark, THE OLYMPIAN...
Alpine Mortgage Settles Trademark Dispute with Alpine Mortgage
Posted on October 04, 2009In January, Seattle- and Marysville, Wash.-based Alpine Mortgage Services, Inc., filed suit in the Western District against Lake Oswego, Ore.-based Alpine Mortgage, LLC, for trademark infringement and breach of a settlement agreement. Turns out, plaintiff sued the wrong “Alpine” entity, which led the defendant to deny liability and counterclaim seeking an award of attorney’s fees based on a prevailing-party clause in the parties’ settlement agreement...
Ninth Circuit Affirms Judgment Sanction and $1M Award Against Counterfeiter
Posted on September 30, 2009You destroy evidence; you lose. That’s what the Ninth Circuit concluded when it affirmed the District of Nevada’s sanction of default judgment against alleged counterfeiters Sungale Group, Inc., Sungale Electronics, Ltd., and Amoisonic Electronics, Inc...
Olympic Lawsuit Statistics, Domain Name Dispute Over Chicago2016.com
Posted on September 29, 2009Last week a reader asked if the U.S. Olympic Committee has filed the same number of trademark lawsuits in recent years that it has filed in the past. Interesting question. The federal courts’ PACER database only goes back to 1988 (as best I can tell)...
Restaurant Holding Company Chow Food Sues Over Seattle's New Chao-Bistro Bar
Posted on September 28, 2009Local tongues are wagging over this one — Chow Food Management Services LLC is suing Yamashiro’s, LLC, d/b/a Chao-Bistro Bar. The suit, filed Sept. 23 in King County Superior Court, alleges that Capitol Hill’s newly-opened Chao-Bistro Bar infringes Chow Food’s state registration for CHOW...
A First for STL: A Trademark Tax Case
Posted on September 24, 2009This is first for STL: a tax case. In Blistex Bracken v. City of Seattle, the City imposed a business and occupation (B & O) tax on the licensor of the BLISTEX, BLISTIK and BLIST-FZE trademarks it owns for lip balm and skin care products to Blistex, Inc...
One More Sports Illustrated Story on the USOC's Ham-Fisted Enforcement Efforts
Posted on September 23, 2009Last Olympic post for a while, I promise. And I’m almost certain it’s the last time this year I’ll quote from Sports Illustrated. But here’s another gem from SI about the USOC’s ham-fisted efforts to enforce its rights to all things Olympic...
Olympic Businesses Everywhere: Sports Illustrated Nails the USOC's "Comic Opera"
Posted on September 22, 2009A reporter put me onto an excellent Sports Illustrated article written during the 1988 Summer Games in Seoul. Author Leigh Montville writes about being “On the Trail of the O-Word,” in which he concludes that ”[d]espite official efforts to curb unsanctioned use of the word ‘Olympic,’” it is “here, there and everywhere...
Despite Sending Many Letters, the USOC Has Only Brought Three Suits Since 2008
Posted on September 21, 2009For all of the reasons discussed here, here, and here, STL has not been a fan of the United States Olympic Committee’s efforts to enforce its near monopoly rights in the U.S. over commercial use of the word “Olympic...
Ninth Circuit Finds No Secondary Meaning, No Foul in Trade Dress Case
Posted on September 17, 2009Art Attacks’ “Spoiled Brats” designs (top) and MGA’s “Bratz” dolls:No secondary meaning, no foul Plaintiff Art Attacks Ink, LLC, sells a “Spoiled Brats” collection of t-shirts featuring cartoonish, predominantly female characters, with oversized eyes, disproportionately large heads and feet, makeup, and bare midriffs...
Ninth Circuit Reverses Dismissal of False Advertising Claim Over Wasp Larvae
Posted on September 16, 2009Spalding Laboratories, Inc., sued its competitor, Arizona Biological Control, Inc. (“Arbico”), for false advertising under the Lanham Act related to claims Arbico made about the developmental state of its wasps used for killing flies...
Courts Here Don't Rubber Stamp Stipulated Motions for a Protective Order
Posted on September 15, 2009It happens every so often in these parts — the court denies a stipulated protective order. Suffice it to say, courts around here don’t rubber stamp litigants’ attempts to privatize court proceedings. A case in point from a Western District trademark infringement suit last week: “The parties request an expansive protective order for all confidential information that may be disclosed during the discovery phase of this proceeding...
Malaysian Court Says MCCURRY Does Not Infringe MCDONALD'S
Posted on September 09, 2009McCurry’s owners get a happy result in victory against McDonald’s.Photo credit: AP/Mark Baker On Sept. 8, a 3-judge panel of Malaysia’s federal court found a restaurant’s use of MCCURRY does not infringe McDonald’s Corp...
Ninth Circuit Reverses Dismissal of Two Trademark Claims, Affirms One
Posted on September 03, 2009In Wyatt Technology Corporation v. Smithson, the plaintiff filed suit in the Central District of California alleging trademark claims and other business torts against the defendants arising out of the bankruptcy of the Proterion Corporation. The Central District of California dismissed three of Wyatt’s trademark claims on summary judgment...
That's Hot! The Ninth Circuit Favors Paris Hilton in Suit Against Hallmark Cards
Posted on September 02, 2009Hallmark’s “Paris Hilton” card. Photo credit: The Smoking Gun The Ninth Circuit yesterday found in favor of Paris Hilton in her suit against Hallmark Cards for violating her Lanham Act rights and right of publicity by publishing a birthday card with an image of her face and using her THAT’S HOT registered trademark without her permission...
Paris Museum Illustrates that Counterfeiting Affects Everyone
Posted on September 01, 2009No laughing matter: counterfeit condoms at the Musée de la ContrefaçonPhoto credit: Yves Forestier / Getty Images I’m all for combining tourism and trademarks. Next time I’m in Paris, I’m heading straight for the Musée de la Contrefaçon — the Museum of Counterfeiting...
Western District Finds No Likelihood of Confusion between HELIX Trademarks
Posted on August 31, 2009In December 2007, Seattle’s RealNetworks, Inc., filed suit in the Western District against QSA Toolworks, LLC, seeking a declaration that its HELIX and HELIX and Design trademarks used in connection with digital media software do not infringe QSA Toolworks’ HELIX marks used in connection with relational database technology...
Plaintiffs File Right of Publicity Class Action Suit Against Corbis
Posted on August 27, 2009Corbis Web site with licensable images of plaintiff Bonnie Pointer On Aug. 5, plaintiffs Anna Maria Alberghetti, Bonnie Pointer, and Judy Tenuta filed a class action lawsuit in the Central District of California against Seattle-based Corbis Corporation for allegedly making their images available for commercial purposes without their consent...
Counterfeiting in Seattle: Need a Logo on that Kate Spade Purse?
Posted on August 25, 2009The Seattle PI today ran a story about counterfeiting in Seattle. It said local police and federal agents last year served search warrants on 10 homes and businesses in one case and seized $242,000 and 7,873 alleged fakes from seven suspects...
Court Finds "Custom RV Interiors" Trade Name Generic, So Not Protectable
Posted on August 24, 2009We don’t get many state-court trade name decisions in Washington, and when we do, they don’t get as much attention as they should. Here’s one of them — from last year, unfortunately — that remained under the radar until last week when Westlaw picked it up...
Ninth Circuit Reverses Dismissal of Jarritos' Trademark Infringement Claim
Posted on August 20, 2009Mexican soda maker Jarritos, Inc., sued the owners of San Francisco’s Los Jarritos restaurant for trademark infringement. As STL readers may recall, the Northern District of California dismissed the plaintiff’s claims on summary judgment in 2007...
It's "Plausible" that Right of Publicity Amendments Apply to Hendrix Case
Posted on August 19, 2009Do last year’s amendments to Washington’s right of publicity statute affect the ongoing case between the Jimi Hendrix Estate’s licensing company and the seller of Jimi Hendrix artwork? Western District Judge Thomas Zilly concluded it’s “plausible...
Blawg Review #225
Posted on August 17, 2009The Pike Place Market: STL’s Blawg tour starts here. (All photos by STL) Today is the 102nd anniversary of Seattle’s Pike Place Market. Opened on August 17, 1907, in response to public outcry over the price of onions, the Market has evolved into what some call the “soul” of Seattle and one of the world’s best public markets...
STL's Top-Five List of Trademark Cases Decided Since Last September
Posted on August 13, 2009A colleague asked me for my top-five list of trademark cases decided since last September. Here’s my response: Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (finding keyword sale of trademark constitutes “use” in commerce, vacating dismissal in favor of Google) Board of Supervisors for Louisiana State University Agricultural and Mechanical College v...
STL to Host Blawg Review on Monday -- So Please Send Me Your Links Soon!
Posted on August 12, 2009I’m happy to report STL is hosting Blawg Review #225 on Aug. 17 — the 102nd anniversary of Seattle’s beloved Pike Place Market. I’m counting on my fellow blawggers to send me content to include in my inaugural review...
Is Nike Connected with FRS Energy Drinks? Its Logos Are
Posted on August 11, 2009I assume Nike is on board with its shirts and jackets being featured in ads for FRS energy drinks. Not all FRS endorsers appear to wear Nike, but the two most prominent do — enough to suggest a connection exists. Or am reading too much into this?
NWA Claims Spokane Company's Use of "Northwest" Infringes Its Rights
Posted on August 10, 2009Northwest Airlines, Inc. (now a subsidiary of Delta Airlines, Inc.), has challenged a Spokane, Wash.-based online travel guide’s use of GO NORTHWEST! as a trademark. The travel guide publisher, Go Northwest, LLC, obtained a federal registration for its mark last year, claiming it has used the mark in commerce since 1999...
Law.com Highlights Keyword Lawsuits Against Google
Posted on August 06, 2009Law.com yesterday highlighted the keyword lawsuits against Google — and Google’s recent success in defending them. Blogger Eric Goldman thinks the suits may be ill-fated. “We’re starting to see some of these lawsuits crack,” he said...
USDA's Organic Labeling Requirements Function as a Solid Certification Mark
Posted on August 05, 2009The SF Gate had a good article this weekend about the U.S. Department of Agriculture’s National Organic Program. The USDA ORGANIC seal functions as a certification mark, as only producers meeting the NOP’s specifications can use it in connection with their goods...
Ninth Circuit Affirms Dismissal of Author's Claim of Trademark Infringement
Posted on August 03, 2009Pro se plaintiff Cherie Phillips wrote a book titled “Wisdom Bible of God.” She claimed she has trademark rights in that title because it is arbitrary and inherently distinctive, and because it has acquired secondary meaning. In her complaint, filed in 2007 in the District of Hawaii, she alleged that defendant Mike Murdock’s book, “The Wisdom Bible,” infringes her trademark rights...
It's Too Hot to Talk About Trademark Law
Posted on July 30, 2009It’s hot here. Seattle hit a record 103 degrees today. My wife and I went from air conditioned offices to an air conditioned movie theater to an air conditioned restaurant. Now we’re sweltering in our un-air conditioned hot house that we call home...
Western District Trademark Case Among Eight Nationwide Against Google
Posted on July 29, 2009Eric Goldman reported a while back that a Western District case is one of eight currently pending against Google, Inc., for trademark infringement. In Soaring Helmet Corp. v. Bill Me, Inc., Soaring Helmet alleges that competing motorcycle helmet seller Bill Me, Inc...
Would Smith's Owner Have Had a Claim for Trade Dress Infringement?
Posted on July 27, 2009It’s not going to turn into a lawsuit, but check out the photos below of Seattle’s Smith bar and Starbucks’ adjacent 15th Street Coffee & Tea, which opened on Friday. Smith owner Linda Derschang initially cried foul about Starbucks’ design, saying it copied the look-and-feel of her neighborhood pub...
No Peso's-Matador Redux; Seattle Bar Owner Says She's "Over" Copied Features
Posted on July 22, 2009Seattle bar queen Linda Derschang called off her meeting with Starbucks over the features she believed the coffee company copied from her neighboring bar, “Smith.” (Previous STL post here.) “I feel already over it,” Ms. Derschang told the Seattle Post-Intelligencer...
Peso's-Matador Redux? Seattle Bar Claims Neighbor Copied Its Trade Dress
Posted on July 20, 2009The owner of Capitol Hill’s Smith (left) claims Starbucks’ forthcoming shop next door unfairly mimics her bar’s look-and-feel.Photo credit: Joshua Trujillo / Seattle PI Capitol Hill bar maven Linda Derschang claims a neighboring Starbucks store that’s undergoing renovation has copied the look and feel of her Smith restaurant and bar...
Seattle Law Professor Takes on AT&T and the PTO's Registration of Signal Bar Design
Posted on July 15, 2009UW School of Law Professor Sean O’Connor, guest blogging at Legal Satyricon, writes about AT&T’s trademark registration of the bars indicating cell phone signal strength (depicted left). “The bars are purely functional representations of the strength of cell service and a standardized one at that,” he writes...
Court Enters Judgment for Perfumer's Workshop Based on Fees Award
Posted on July 14, 2009On July 13, the Western District entered judgment in favor of The Perfumer’s Workshop International, Ltd., against Sportsfragrance, Inc. As readers may recall, Sportsfragrance sued Perfumer’s for trademark infringement on claim that Perfumer’s use of ROCK & ROLL in connection with its perfumes infringes Sportsfragrance's ROCK ‘N ROLL mark in connection with perfumes...
Bainbridge Island Design Firm Claims Amazon.com Infringes Its Trademark
Posted on July 13, 2009Seattle’s technology news blog TechFlash ran a story on Friday about a Bainbridge Island, Wash.-based design firm that claims Amazon.com is infringing its trademark. The dispute involves Web designer Geoffrey Daigle’s registration for WINDOW SHOPPING for “information services, namely, providing information on a wide variety of topics, namely news, weather, arts, counseling services, automobiles, childcare, consumer products, sports, travel, and entertainment, namely, movies, videos, and music via a global computer network...
Western District Holds Maker of Worm Composting Products in Contempt
Posted on July 09, 2009As STL reported in November, the Western District found that defendants Providnet Co. Trust and Barry Russell likely infringed plaintiff Cascade Manufacturing Sales, Inc.’s trademark rights in WORM FACTORY in connection with the sale of worm composting bins, and imposed a preliminary injunction against them...
Western District Finds Use of Hendrix Name Fair But Use of Signature Infringing
Posted on July 08, 2009Screen shot from defendants’ former Web site depicting Hendrix mark Defendants’ use of HENDRIX and JIMI HENDRIX was fair use of plaintiffs’ trademarks to describe the images depicted on their products, the Western District preliminarily found on July 2...
Ninth Circuit Adopts Standard for Recalls in Trademark Infringement Cases
Posted on July 06, 2009On July 2, the Ninth Circuit decided that a district court must find a “substantial risk of danger to the public” or other special circumstances before entering a preliminary injunction requiring a product recall in a trademark case...
Gosling's Protects Its Rights in the "Dark 'n Stormy" Cocktail Name, NYT Reports
Posted on July 05, 2009The creator of the Dark ‘n’ Stormy cocktail is taking care to ensure that every drink bearing its name is made with Gosling’s Black Seal rum and a splash of ginger beer, the NYT reports today. This is a rarity in the world of cocktails, where bartenders usually have free rein to imprint their own personality on a classic drink...
Do Counterfeiters Drive Auction Sales of Empty Wine Bottles?
Posted on July 01, 2009The NYT’s Freakonomics blog today discusses the sale of empty wine bottles on eBay. It suggests that because the highest-priced empty bottles are the ones that fetch the highest prices when full, bidders may be motivated by the prospect of re-using them to sell counterfeit wine...
Court Enjoins Beauty School from Using Competitor's Marks in Signs and Ads
Posted on June 30, 2009The Western District today found it was likely the plaintiff beauty school could establish at trial that the defendant beauty school took out ads in the Yellow Pages, posted signs on an office suite, and obtained business licenses using plaintiffs’ trademarks, constituting trademark infringement and a violation of the Washington Consumer Protection Act...
Court Strikes Unclean Hands Defense as Not Sufficiently Related to Claims
Posted on June 29, 2009STL has previously reported on Campagnolo S.R.L. v. Full Speed Ahead, Inc., the Western District case involving the defendant bicycle parts manufacturer’s alleged statements about the qualities of the parties’ respective bicycle cranksets...
Allegation of Willful Infringement Enough for Attorney's Fees Award
Posted on June 24, 2009Plaintiff Chevron U.S.A., Inc. alleged defendant In N Out Minimart on Broadway, Inc., willfully infringed its trademark. In N Out failed to answer, so the Western District ordered it to be in default. The first time around, the court denied Chevron’s motion for entry of default judgement with an award of fees and costs because Chevron did not set forth the basis for the award...
CUPCAKES Brand Cupcakes?
Posted on June 23, 2009I wouldn’t call it a safari, but I did have the good fortune to spend the weekend in the great city of Vancouver, BC. While there, I came across this tasty example of a generic trademark: CUPCAKES brand cupcakes. I later learned the shop’s name actually is CUPCAKES BY HEATHER & LORI...
Obama Taps IBM Attorney to Lead Patent and Trademark Office
Posted on June 20, 2009The White House June 18 announced its nominee for Under Secretary of Commerce for Intellectual Property and Director of the PTO: David J. Kappos. Mr. Kappos is Vice President and Assistant General Counsel, Intellectual Property Law for IBM Corp...
Bicycle Maker Sues Nutritional Supplement Maker Over "Kona" Brand
Posted on June 18, 2009Plaintiff Kona USA, Inc., makes KONA-branded mountain bikes. Defendant DBM Nutrition makes KONA ENDURANCE-branded nutritional supplements. Apples and oranges, right? Not according to Kona USA — at least when DBM began sponsoring a bicycle racing team...
Seattle Seller of Leather Products Sues Scientist for False Advertising
Posted on June 17, 2009“To call it ‘leather’ is outright deception, outright fraud.” Those are the words Seattle-based Design Resources, Inc., alleges Dr. Nicholas Cory said in Furniture Today about Design Resources’ NEXTLEATHER bonded leather products, which Design Resources claims amounts to false advertising, defamation, and product disparagement...
TTAB's Accelerated Case Resolution Procedures Probably Should Be Required
Posted on June 16, 2009Trademark Trial and Appeal Board Chief Judge David Sams writes in today’s INTA Bulletin (password required) about the availability of TTAB’s new Accelerated Case Resolution (ACR) procedures. What is ACR? It’s the “TTAB initiative that provides parties to Board inter partes proceedings the opportunity to stipulate to final determination on the merits of cases at the pre-trial phase without the time or expense of a full trial...
Ninth Circuit Amends Opinion on Tribal Court Jurisdiction in Trademark Case
Posted on June 14, 2009On June 11, the Ninth Circuit amended its January 20 opinion (STL discussion here) in the case of Philip Morris USA, Inc. v. King Mountain Tobacco Co., Inc. The question was whether colorable tribal court jurisdiction existed over a non-tribe member’s trademark claims against tribal defendants for alleged passing off of cigarettes on the Internet, on another tribe’s reservation, and elsewhere...
Licensee Lacks Standing to Claim Common Law Trademark Infringement
Posted on June 11, 2009Plaintiff trademark licensee Beijing Tong Ren Tang USA Corp. doesn’t have standing to assert a claim for common law infringement, the Northern District of California found on June 2. Therefore, the court granted defendant TRT USA Corp.’s motion to dismiss...
As a Litigator, Judge Sotomayor Handled Many Trademark Matters
Posted on June 10, 2009Judging by her answers on the U.S. Senate Committee on the Judiciary’s Questionnaire for Judicial Nominees, Judge Sonia Sotomayor litigated an impressive amount of trademark issues. Here are some excerpts (with slight edits by STL): “I left the District Attorney’s office in 1984, and joined the firm of Pavia & Harcourt...
Failure to Defend Can Lead to Default and Finding Infringement was Willful
Posted on June 09, 2009As STL discussed here, 15 U.S.C. § 1117(c) was amended last fall to double to $2 million the range of statutory damages if a defendant’s counterfeiting is found to be “willful.” So what’s willful? A magistrate judge in the Eastern District of California recently addressed this question in recommending the court award Microsoft Corp...
Does Artist Have Trademark Claim Against Bar Influenced by His Work?
Posted on June 08, 2009The Slog raises an interesting issue. A local bar is about to open that reportedly was influenced by a work called “Ransom Note” by Seattle neon artist Jeremy Bert. The work spells out the words “Leave Nineteen Million Dollars in Unmarked Bills” (pictured above)...
Allied Sues Allied Over ALLIED
Posted on June 03, 2009On May 19, Spokane-based Allied Safe & Vault Co., Inc., filed suit in the Eastern District against Otis Orchards-based Allied Fire Sprinklers, Inc., alleging that defendant’s use of “Allied” infringes plaintiff’s registered trademarks for ALLIED FIRE & SECURITY...
Fantastic Sams and Regis Settle Western District Trademark Dispute
Posted on June 02, 2009Last May, Fantastic Sams Franchise Corporation filed a trademark infringement case in the Western District against Regis Corporation. It alleged that Regis converted several Seattle-area FANTASTIC SAMS salons into its own HAIRMASTER salons and caused a likelihood of consumer confusion when it failed to remove all of the FANTASTIC SAMS trademarks from the premises...
Expedia and Hotels.com Sue Priceline.com for False Advertising
Posted on June 01, 2009On May 20, Bellevue-based Expedia, Inc. and Hotels.com, L.P. filed suit in the Western District against rival travel seller Priceline.com Inc. for false advertising. Plaintiffs claim Priceline.com “makes the unqualified claim that consumers can save ‘half off’ or ‘up to half off’ hotel prices with Priceline compared to Expedia and Hotels...
Western District Dismisses Defendant in Rockin' Perfume Trademark Dispute
Posted on May 28, 2009As discussed here, Sportsfragrance, Inc., sued The Perfumer’s Workshop International, Ltd., in the Western District for trademark infringement. The crux of the dispute was Sportsfragrance’s allegation that Perfumer’s use of ROCK & ROLL in connection with its perfumes infringes Sportsfragrance’s ROCK ‘N ROLL mark in connection with perfumes...
STL Spends Memorial Day Weekend in the "Other" Washington
Posted on May 26, 2009Hope everyone had a great Memorial Day weekend. My wife and I spent four days after INTA unwinding (and not blogging) in Washington, D.C. Speaking of INTA, here are a few final thoughts: There’s a lot of information and fun in the INTA Daily News dispatches...
"Meet the Bloggers V": Fun was Had by All
Posted on May 19, 2009Thanks to everyone who came to “Meet the Bloggers V” tonight at Graham & Dunn on Seattle’s beautiful waterfront. I, for one, had a blast! I know I’m missing some folks, but at a minimum we had trademark law bloggers and readers from France, Spain, England, China, Australia, New Zealand, Brazil, Germany, Canada, Finland, Switzerland, South Africa, the Netherlands, and many cities throughout the United States...
Harley-Davidson Tops List of Most Tattooed Brands in Australia
Posted on May 17, 2009What a great idea. I only wish I’d thought of it. Nicholas Weston (home of the Australian Trade Marks Law Blog) has announced the results of its first-annual “Tattooed Brands” survey of the trademarks most found inked onto Aussies’ flesh...
See You at Meet the Bloggers V!
Posted on May 15, 2009Trademark law bloggers and trademark law blog readers: Can’t wait to see you at “Meet the Bloogers V!” As a reminder, it’s on Monday, May 18, from 6-9 p.m. at Graham & Dunn, Pier 70, 2801 Alaskan Way, Suite 300, Seattle — just over one walking mile from the Washington State Convention and Trade Center...
Adidas Sues Topline over Stripes and Shoe Designs
Posted on May 13, 2009Adidas’ 3-stripe “Superstar” shoe (left) and Topline’s allegedly infringing four-stripe shoe On May 11, Adidas America, Inc., filed a trademark infringement lawsuit in the Western District against Bellevue-based shoe maker The Topline Corporation...
STL's Guide to INTA Seattle - Part 3: Bars and Hotel Lobbies
Posted on May 12, 2009Hopefully you’ve enjoyed the first two parts of STL’s biased and incomplete mini-guide to INTA-going Seattle: Part 1 - Breakfasts and Coffees, and Part 2 - Lunches and Dinners. Here’s the final installment, Part 3 - Bars and Hotel Lobbies...
STL's Guide to INTA Seattle - Part 2: Lunches and Dinners
Posted on May 11, 2009Seattle’s a pretty good eating town, so INTA-visitors, you’re in for a treat. Here’s Part 2 of my mini-guide to Seattle for INTA attendees: Lunches and Dinners. Seattle is known for its fish, seafood, and Pacific Northwest take on world cuisine...
STL's Guide to INTA Seattle - Part 1: Breakfasts and Coffees
Posted on May 07, 2009For those who are traveling to Seattle for INTA, there’s still a little time to plan. Have coffee booked with a foreign associate but don’t know where to meet? Leave it to STL. Here’s my biased and incomplete mini-guide to the best INTA breakfasts and coffee; lunches and dinners; and bars and hotel lobbies...
Landslide Article on the PRO-IP Act is the Best Summary Yet
Posted on May 06, 2009I’ve talked before about the PRO-IP Act (signed Oct. 13, 2008), which amended the Lanham and Copyright Acts as part of Congress’ most recent attempt to crack down on counterfeiters and copyright infringers. On the trademark side of things, the Act doubled the range of statutory damages available in counterfeiting cases (to the range of $1,000 to $200,000 and up to $2 million if the counterfeiting is willful) and clarified that treble damages and an award of attorney’s fees are mandatory in willful counterfeiting cases regardless of whether the defendant is a direct, vicarious, or contributory infringer...
Guest Post: Bob Cumbow's Musings on Rescuecom Keyword Advertising Case
Posted on May 03, 2009Following is a teaser guest post by my partner, Bob Cumbow (though this and the last paragraph are mine): For some time now, “keyword search advertising” has been a marketplace reality in the US. In the typical keyword search advertising situation, a search engine sells to an advertiser the right to have the advertiser’s ad or sponsored link appear whenever a user of the search engine inputs a particular search term...
InsideCounsel Reports on Contrasting BlockShopper and Dozier Linking Lawsuits
Posted on April 29, 2009InsideCounsel always seems to have a good trademark story. The May issue is no exception. There’s a good recap of the Jones Day v. BlockShopper hyperlinking-is-trademark-infringement lawsuit, including a nice quote from University of Michigan Professor Jessica Litman: “If it had gone to trial, BlockShopper would have won...
Upcoming Talk: How Bands Should Protect Their Brand
Posted on April 28, 2009I’m working on a talk I’m giving on Wednesday: “Bands & Brands: Essential Trademark Law for Musicians.” It’s long been an interest of mine but the first time I’ll be presenting on the subject. Here’s a rough outline of my plan: Trademark basics Searching and clearing trademarks Ownership issues Licensing essentials Right of publicity Trademark protection strategies The talk is sponsored by the Washington Lawyers for the Arts...
If You Ask Me, Wineries Still Have a Lot to Learn About Branding
Posted on April 21, 2009Five wines among many at Seattle’s Roosevelt Safeway I’m no marketing expert. But when you think of trademarks, isn’t the whole point to enable a consumer to purchase from you again if she liked what she purchased last time? Wineries are starting to learn this lesson, but in my book they have a long way to go...
Gallo Sues Seattle Retailer for Selling Spanish-Made Gallo-Branded Pasta
Posted on April 21, 2009On April 13, E. & J. Gallo Winery filed a trademark infringement suit in the Eastern District of California against Seattle-based speciality food store The Spanish Table, Inc. (which also has stores in Santa Fe, Berkeley, and Mill Valley, Calif...
Seattle Sounders FC Uses Space Needle Design in Its Logo
Posted on April 19, 2009Seattle Sounders FC’s logo, with Space Needle Corporation’s registered design marks The new Seattle Sounders FC is the hottest ticket in town. Seattleites could watch Saturday’s 2-0 loss to L.A.’s Chivas USA on local television no less than three times (and I caught parts of all three)...
Annual Western District CLE Scheduled for May 1
Posted on April 16, 2009This year’s Annual District CLE looks promising. It will include a report from Western District federal judges on the state of the court in the Western District as well as an update about the Ninth Circuit from the newest member of that bench, Circuit Judge N...
Western District Remains Strict in Considering Stipulated Protective Orders
Posted on April 14, 2009When it comes to protective orders, Seattle courts are stricter than most. As previously noted, this includes the Western District. On April 7, Western District Judge Benjamin Settle illustrated this bent when he denied the parties’ stipulated protective order in the trademark infringement case of American Automobile Association v...
Frito-Lay Opposes Roller Derby Skater's Application to Register CRACKERJACK
Posted on April 13, 2009Remember Starbucks’ TTAB tangle with the Rat City Rollergirls? (See STL posts here and here.) Looks like another roller-rink trademark dispute may get going. Roller derbier Colleen Bell, a/k/a “Crackerjack,” applied to register her nickname as a trademark with the U...
Ninth Circuit Affirms Award of Fees to World Triathlon Corporation
Posted on April 09, 2009In 2006, the District of Hawaii granted summary judgment in favor of World Triathlon Corporation on its trademark infringement claims against John Dunbar and a number of other individual defendants doing business as the “Hawaiian Ironman Triathlon Organizing Committee...
The Circle-R Symbol Must Be Earned; the Lanham Act Should Punish Misuse
Posted on April 08, 2009One example of many: The applied-for CarbonZero and Designmark is unregistered but nonetheless displays the Circlce-R symbol. The Circle-R symbol indicates that a mark is federally registered. It’s irksome when parties use it without having met the rigors needed for its lawful use...
"Generic" May Not be the Best Trademark, But It's Not Generic at All
Posted on April 07, 2009When adopting a new trademark, owners usually run from generic terms. Since generic terms aren’t protectable, the owner of BOWL-brand bowling alleys, for example, won’t make much headway attempting to protect its “brand” against use by competing bowling alleys...
Cricket and Hipcricket Settle Trademark Infringement Lawsuit
Posted on April 05, 2009STL’s reported (here) on Cricket Communications’ trademark infringement lawsuit against Hipcricket, as well as the Western District’s denial of Hipcricket’s request to assert a supplemental counterclaim against Cricket (here)...
Mitchell Study on Trademark Litigation: Another Valuable Online Resource
Posted on April 01, 2009Yesterday, Prof. Kenneth Port of William Mitchell College of Law unveiled the online, searchable Mitchell Study on Trademark Litigation. Here’s how he describes it: “In this study I compile and report on all 2,762 reported cases under the Lanham Act since its inception in 1947 that terminated a trademark law suit...
Court Grants 56(f) Continuance in Bicycle Components False Advertising Case
Posted on March 30, 2009In Campagnolo S.R.L. v. Full Speed Ahead, Inc., well-known bicycle component manufacturer Campagnolo claims that Woodinville, Wash.-based Full Speed Ahead has made misrepresentations about the stiffness-to-weight ratios of the parties’ bicycle cranksets...
Ninth Circuit Affirms Trademark Infringement Fees Award
Posted on March 29, 2009On March 24, the Ninth Circuit affirmed the District of Nevada’s award of attorney’s fees to the plaintiff trademark owner in Invision Production & Media Services, Inc. v. Glen J. Lerner Legal Services. This is the second time the court has considered the issue...
Court Dismisses Three Individuals from Suit Over "Copycat" Theater Troupe
Posted on March 25, 2009Promotional graphic from defendants’ Web site Who can forget the Moscow Cats Theatre case? Plaintiffs Yuri and Dimitri Kuklachev sued their former producer, several performance venues (including the Seattle Repertory Theatre), two ticket outlets, and a number of individuals for their alleged involvement in promoting a competing cat show under plaintiffs’ “Moscow Cats Theatre” name...
Embedding Hyperlinks in Court Filings: A Great Leap Forward
Posted on March 24, 2009I recently received a notice from the Eastern District of Washington’s electronic filing system saying I can now file documents with hyperlinks to other documents within the system. This means I can file a brief that cites to my witness’ declaration and make that testimony accessible with a click...
The "Dawn Donut Rule" Fifty Years Later: Still Relevant Today?
Posted on March 24, 2009Partner, professor, and philosopher Bob Cumbow explores trademark “use” in a forthcoming article in ABA’s Landslide magazine. In “Use Is the New Protectability, Dawn Donuts Are Still Hot This Season, and Other Trademark Issues,” Bob revisits Dawn Donut fifty years after the Second Circuit decided the case...
Sharp Dissent Over Laches Analysis in Ninth Circuit Trademark Case
Posted on March 22, 2009In Internet Specialties West, Inc. v. Milon-Digiorgio Enterprises, Inc., the plaintiff owner of ISWest.com alleged that defendant’s use of ISPWest.com infringed its trademark rights. Both parties use their domain names in connection with their competing Internet service provider services...
A Brief History of March Madness: the Trademark
Posted on March 18, 2009It’s that time of year. Spring’s around the corner, basketball’s on the tube, and many hours of work are about to be wasted. With me off to Vegas in two days, I’m in the throes of March Madness. Big time. So how did “March Madness” come about — as a trademark? The Fifth Circuit provided a pretty comprehensive answer a few years ago in March Madness Athletic Association, LLC v...
Wisconsin's "Live Like You Mean It" Slogan Faces (Misguided) Resistance
Posted on March 17, 2009Yesterday, Wisconsin announced a new promotional slogan: “LIVE LIKE YOU MEAN IT.” According to an AP story, some trademark owners lost little time criticizing the selection, noting they already have adopted the phrase to promote real estate, clothing, a diet book, and dietary supplements...
Ruminating Over Trademark Registrations
Posted on March 16, 2009A colleague passed on a link to a great post about how it pays to think like a PTO examining attorney. When you’re trying to get your client’s trademark registered, that is. Turns out the post was one of the first in a fine new blog called Registration Ruminations, published by former PTO examining attorney and Virginia solo practitioner Michael Hall...
Losing Seattle Post-Intelligencer Will Hurt Public and Trademark Community Alike
Posted on March 15, 2009The Seattle P-I: It’ll be a sad day when the printing presses stop. This week may mark the end of the the 146 year-old Seattle Post-Intelligencer, one of two daily newspapers here. The loss of jobs — and, more importantly, the loss of viewpoints — will impoverish our city...
Blogging Slowdown Appears Over
Posted on March 15, 2009I’m happy to say I’m over the hump. After a trial and trademark law classes three times a week, I’m as ready for spring break as my students. I knew I’d have to slow down my posting a little, but hopefully that’s now behind me...
AdJuggler Obtains Default Judgment in Trademark Case Against Adjog.com
Posted on March 10, 2009In 2008, AdJuggler, Inc., sued Adjog.com in the Western District for trademark infringement, cybersquatting, and other forms of unfair competition. AdJuggler places online advertisements. It alleged that Adjog.com registered the Adjog.com domain name and began using ADJOG on a Web site in connection with “various services including ad serving and ad serving management and related solutions on the Internet...
Experience Hendrix Sues Company with Alleged Connection to Enjoined Promoter
Posted on March 08, 2009Experience Hendrix, LLC, has sued HendrixLicensing.com, Ltd., d/b/a Hendrix Artwork, for trademark infringement. The complaint, filed in the Western District on March 5, alleges that HendrixLicensing.com and its owner, Andrew Pitsicalis, sell products under the HENDRIX, JIMI HENDRIX, and HENDRIX ARTWORK word marks, and Jimi Hendrix “headshot” and “signature” design marks...
Western District Denies Hipcricket's Motion to File Additional Counterclaim
Posted on March 01, 2009Save the Date for "Meet the Bloggers V" at INTA - Seattle on the Waterfront
Posted on February 25, 2009The offices of Graham & Dunn, on Pier 70 in lovely Puget Sound:Site of the upcoming “Meet the Bloggers V”!! Doing my best to carry on the tradition started by my betters, STL is proud to host “Meet the Bloggers V” during this year’s International Trademark Association annual meeting — which not coincidentally is being held right here in Seattle...
Seattle Craft Microbrewery Resolves Trademark Dispute by Changing Its Name
Posted on February 24, 2009Smouha Fabrics’ Lucky Buddha (left) and Laughing Buddha’s beer bottles On Feb. 24, Seattle craft microbrewery Laughing Buddha Brewing Co. announced it has agreed to resolve a trademark dispute with Smouha Fabrics, owner of the Lucky Drink Company of Australia, by changing its name...
Seattle's Gary Locke May Become New Commerce Secretary
Posted on February 23, 2009Seattle’s own Gary Locke may become Commerce secretary, the AP writes today. That would put Washington’s former two-term Democratic governor in charge of the Patent and Trademark Office. Or at least in charge of the folks who are in charge...
Western District Denies Rose Art's Motion for Award of Fees Following Dismissal
Posted on February 22, 2009In 2007, PlastWood SRL sued competing toy maker Rose Art Industries, Inc., in the Western District, alleging that many of the structures depicted on the packaging of Rose Art’s Magnetix-branded magnetic construction sets could not be built and collapse under their own weight...
Federal Circuit Reverses $8 Million False Advertising Award in Baden v. Molten
Posted on February 19, 2009On Feb. 13, the Federal Circuit reversed Western District Judge Marsha Pechman’s denial of judgment as a matter of law in Baden Sports, Inc. v. Kabushiki Kaisha Molten, 541 F.Supp.2d 1151 (W.D. Wash. 2008), relating to the jury’s award of $8,054,579 for false advertising under Section 43(a) of the Lanham Act...
Can Tort Theory Enable Plaintiff to Recover UDRP Filing Fees?
Posted on February 17, 2009Here’s a novel legal theory: Cybersquatter registers a domain name that infringes the trademark owned by Owner. Owner prevails in a UDRP arbitration and the panel transfers the domain name to Owner. Owner is as whole as the UDRP can make it. But Owner is out the (not insubstantial) amount it paid to file the complaint...
Hendrix Clan Settles Trademark Lawsuit; Plaintiffs Get Injunction and $3.2 Million
Posted on February 17, 2009Does this mean the parties have made nice? Probably not, but on Feb. 12, the Western District entered a stipulated Supplemental Judgment and Permanent Injunction ending the Hendrix family’s trademark dispute in Experience Hendrix, LLC, v. Electric Hendrix, LLC...
Ninth Circuit Finds "First Publication" Exclusion Applies to Infringement Claims
Posted on February 10, 2009On Feb. 2, the Ninth Circuit addressed whether the “first publication” exclusion contained in an insurer’s excess insurance policy applied to an insured’s injury arising from a third party’s trade dress claim. Sunset Health Products, Inc...
InformationWeek Blog Slams Nordstrom for Alleged TTAB Conduct
Posted on February 10, 2009Interesting story today in InformationWeek’s Global CIO Blog. Citing a Cato Institute newsletter, it accuses Seattle-based Nordstrom, Inc., of bad conduct before the Trademark Trial and Appeal Board. The blog tells quite a story, one that starts with the PTO erroneously accepting Nordstrom’s intent-to-use application for a trademark that is confusingly similar to a registered trademark owned by two Colorado women, and ends with Nordstrom using its financial might to beat back the registrants who believe they have been wronged...
Use of Unoriginal Trademarks Risks Confusing Consumers
Posted on February 08, 2009Dueling USA Networks: the Christian channel I found on vacation (top) and the well-known one owned by NBC Universal I’m back from vacation. I must say, I didn’t think much about trademark law while I was gone. One of the few times was when I came across a channel called “USA Network” on my hotel TV...
See You in Hawaii!
Posted on January 31, 2009My better half and I are taking a week off in Kauai. I’ll be the relaxed sunburned guy with a smile on my face. If you see me, please say hello. Back to blogging in about a week. If I return, that is. Photo credit: Matt Wright
An Expert Witness Shares Insights on Trademark Surveys
Posted on January 28, 2009As previewed yesterday, Graham & Dunn hosted an INTA roundtable on “Survey Evidence in Trademark Disputes.” We did things a bit differently than usual — we invited a testifying expert witness to speak. Deborah Jay, Ph.D...
Woolrich Sues Eddie Bauer in Pennsylvania for Trademark Infringement
Posted on January 28, 2009Plaintiff Woolrich, Inc., owner of a federal registration for THE ORIGINAL OUTDOOR CLOTHING COMPANY, has filed trademark infringement and dilution claims against Eddie Bauer, Inc., based on the Seattle company’s use of the mark THE ORIGINAL OUTDOOR OUTFITTERTM (as depicted in the sale flyer pictured above)...
Stanford IP Litigation Clearinghouse Database Appears to be Incomplete
Posted on January 25, 2009As recently discussed, I’m a fan of the Stanford IP Litigation Clearinghouse. However, in working on my annual Western District Statistics post, I noticed a large discrepancy between the numbers that PACER indicates and the numbers the Clearinghouse counts...
Ninth Circuit Finds Federal Law, Not Tribal Law, Governs Infringement Dispute
Posted on January 22, 2009On Jan. 20 the Ninth Circuit considered whether colorable tribal court jurisdiction existed over a nonmember’s federal trademark claims against tribal defendants for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere...
Extra! Extra! Trial Forces Blogging Slowdown!
Posted on January 11, 2009MILWAUKEE, WISC. - That’s right, you heard it here first. The big news is I’m in Milwaukee preparing for a trial that starts on Monday. I expect to be here for two weeks. That means my posting will be a little less frequent between now and then, though I’ll post something if I get the chance...
Third Seattle Law Blogger Meetup Scheduled for January 7
Posted on January 05, 2009Seattle law bloggers will gather on Jan. 7 for the third Seattle Law Blogger Meetup. This installment will be co-hosted by Employment Law Blogger D. Jill Pugh and new Washington State DUI and Criminal Traffic Blogger James Kotlowski...
Stanford IP Litigation Clearinghouse Is Well Worth a Look
Posted on January 05, 2009The Chicago IP Litigation Blog put me onto Stanford Law School’s new IP Litigation Clearinghouse. This is a neat site. While not completely built out, it lets users (registration required) quickly access IP case information, organized by type of case, forum, or law...
Court Finds No Trademark Abandonment Despite Unclear Standard of Proof
Posted on December 29, 2008On Dec. 17, the Northern District of California found on summary judgment that defendant grocery store Albertsons Inc. had not abandoned its LUCKY trademark even though it shuttered all of its LUCKY-branded stores by 1999 following its merger with the owner of that chain...
District of Nevada Finds EVISA Likely to Dilute VISA Under "New" Standard
Posted on December 28, 2008Happy holidays from STL! A little time has passed since this decision, but I didn’t want to let it go without comment. On Dec. 16, the District of Nevada found on summary judgment that defendant JSL Corp.’s use of EVISA as a trademark and domain name was likely to dilute by blurring Visa International Service Association’s VISA trademark...
Seattle Weather Calls to Mind the U.S. Postal Service's Registered Trademarks
Posted on December 21, 2008Its motto was tested yesterday. Yes, Seattle’s famous for rain, but when we get snow, this hilly town shuts down. True to its word, the post office nonetheless got the mail through. Mostly bills and junk mail, but I suppose it can’t be blamed for that...
Microsoft Appears to Leapfrog Competing ITU Application for Search Engine Mark
Posted on December 16, 2008On Dec. 2, I talked about how cool it was that local tech bloggers investigated WHOIS and PTO databases to learn more about Microsoft’s apparent intent to adopt KUMO as its new search engine brand. One snag that TechFlash blogger Todd Bishop pointed out was on Aug...
The Bare Facts about Naked Licensing
Posted on December 15, 2008This morning I spoke at the Washington State Bar Association’s CLE on “Licensing Essentials.” (STL preview here.) I focused on naked licensing. Here are my slides. (Note that some formatting was altered during the upload).
Ninth Circuit Affirms Renoir-Guino False Advertising Decision
Posted on December 14, 2008The Ninth Circuit Dec. 9 affirmed the jury’s verdict and the District of Arizona’s findings in favor of the defendants/counterclaim plaintiffs in the false advertising portion of Societe Civile Succession Richard Guino v. Renoir. The claim involved the alleged marketing of copied statutes as originals...
King County Bar Association's Bar Bulletin Features Niche Law Blogs
Posted on December 11, 2008The King County Bar Association’s Bar Bulletin published a piece this week on “niche law blogs.” STL got a nice mention, along with the Seattle-based Trial Ad (and other) Notes and Lawlady’s Divorce Blog. Interestingly, the Lawlady’s most recent post is entitled “Trademarking your Brand, Lawlady didn’t...
Western District Dismisses Toy Maker's False Advertising Claim
Posted on December 09, 2008The end has come for the false advertising dispute between competing makers of magnetic toy construction sets. On Dec. 5, Western District Judge James Robart granted summary judgment in favor of the defendant, dismissing the remaining claim in PlastWood SRL v...
Overly-Long Goods and Services Descriptions Hamper Trademark Filings
Posted on December 09, 2008A colleague passed on a new application for MONEYTAX. She said it had the longest goods and services description she’d seen in a while. She’s not kidding. It has hundreds of parenthetical phrases describing the applicant’s administration services, advisory services, assistance services, business services, business consulting services, business investigation services, business management services, business risk management services, consulting services, financial records services, and many, many others...
Microsoft Sues Alleged Counterfeiters in Worldwide Push
Posted on December 07, 2008On Dec. 3, Microsoft filed 13 suits in the Western District against alleged counterfeiters. In a press release distributed the next day, the company said the suits were part of a worldwide crackdown against counterfeiters that includes 63 actions in 12 countries...
Slight Blogging Slowdown Ahead
Posted on December 04, 2008Please forgive a slight slowdown in my posting frequency over the next couple of months. I’ve got a bunch of pre-trial work to do in December, an out-of-town trial for much of January, vacation (thankfully) for the first week of February, and I start teaching trademark law at the University of Washington in February and March...
Yoberry Cries Uncle, Agrees to Pinkberry's Permanent Injunction
Posted on December 01, 2008Today, Western District Judge James Robart entered a Consent Judgment and Permanent Injunction in Pinkberry, Inc. v. Yoberry, Inc. As STL readers may recall, the burgeoning Los Angeles-based frozen yogurt seller Pinkberry sued the Seattle-based frozen yogurt seller Yoberry for trademark infringement, alleging a likelihood of consumer confusion between the parties’ word marks and swirl designs...
Seattle Trademark Lawyer Turns 2!
Posted on November 30, 2008Another year! That’s right — two years ago this weekend I was tapping away at my first-ever post. Ron Coleman outted me before I was ready for prime-time. I’m still not ready, and this ain’t prime-time, but the rest is history...
First-to-File Rule Convinces Western District to Transfer Cybersquatting Case
Posted on November 25, 2008On Nov. 17, the Western District transferred the cybersquatting case of eNom, Inc. v. Philbrick to the District of New Hampshire. Judge Robert Lasnik took that step based on the first-to-file rule and in the interests of justice in light of a case between the parties in the District of New Hampsire that has been pending for 14 months...
Considerations in Drafting Trademark License Agreements
Posted on November 23, 2008On Dec. 15, I’ll be presenting on “Litigation Planning for Licensing Attorneys” as part of the Washington State Bar Association’s CLE on “Licensing Essentials” (brochure here). Here are some drafting and negotiating considerations for trademark license agreements I put together while gearing up for the program: Parties...
Western District Partially Grants Summary Judgment on Trademark Claims
Posted on November 20, 2008On Nov. 14, Western District Judge Robert Bryan granted and denied in part plaintiff’s motion for summary judgment on the trademark claims in Suarez Corporation Industries v. Earthwise Technologies, Inc. Suarez Corporation Industries sells consumer products, including portable electric space heaters, under its EDENPURE and SUN-TWIN trademarks...
Trademark Owner Has Standing to Sue Despite Noncompeting Goods
Posted on November 19, 2008On Nov. 12, the Ninth Circuit handed down a reminder that a trademark registrant has standing to sue for infringement even when the parties’ goods do not compete. In doing so, it vacated the Central District of California’s summary judgment dismissal of plaintiff’s trademark claims in Halicki Films, LLC v...
Dead Celebrities (Or Their Heirs) Should Thank Trademark Law
Posted on November 18, 2008Forbes has come out with its 2008 list of Top-Earning Dead Celebrities. Jimi Hendrix isn’t on the list, though the issue made me think that dead celebrities (and especially their heirs) owe a lot to trademark law. Without statutory rights of publicity and licensing doctrines, a celebrity’s ability to turn their charisma into cash would pretty much die with them...
Western District Finds "Worm Factory" Trademark Likely Infringed by Competitor
Posted on November 16, 2008Plaintiff 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...
Wineries Say Soil Distinguishes Their Wines from the Competition
Posted on November 13, 2008The Seattle Times today reports on Washington wineries’ efforts to become recognized as an official wine appellation. A neat wrinkle is the wineries not only hail from the same Naches Heights region northwest of Yakima, but they also all pledge to be organic...
First Amendment Protects Grand Theft Auto Against Trademark Infringement
Posted on November 10, 2008The First Amendment protects the makers of the Grand Theft Auto: San Andreas video game against claims of trademark infringement, the Ninth Circuit found Nov. 5. In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., the owner of the Play Pen strip club sued the video game maker that allegedly depicted the club and its trademark in its fictional version of Los Angeles called “Los Santos...
Failure to Allege Fame Results in Denial of Default Judgment in Dilution Case
Posted on November 10, 2008On Nov. 4, the Northern District of California provided a reminder that a dilution claim requires fame — on a nationwide basis. Failure to allege nationwide fame was sufficient reason for the court to deny the plaintiff’s motion for entry of default judgment in Corsair Memory, Inc...
Charter Construction Settles Logo Dispute with Charter Mechanical Contractors
Posted on November 06, 2008Plaintiff Charter Construction’s logo (top), withdefendant Charter Mechanical’s old (middle) and new logos Plaintiff Charter Construction, Inc., is a Seattle-based general contractor with an office in Portland, Ore...
Will Mooberry Be Next on Pinkberry's List?
Posted on November 03, 2008This weekend in Seattle’s Ballard neighborhood I came across Mooberry, another frozen yogurt shop that uses BERRY in its name as well as a swirl as part of its design mark. STL readers may recall that the frozen yogurt maker Pinkberry filed suit in the Western District last month against a Seattle-based frozen yogurt shop called Yoberry...
STL Weekend Update - Developments in Peso's, Hendrix Electric Trademark Cases
Posted on October 26, 2008Apologies for the blogging slowdown. I’ve been in depositions in the cool (and I do mean cold) city pictured above, and will return on Tuesday for more. (Hint, it’s where Seattle’s last professional sports team was moved before the Sonics went to Oklahoma City...
Peso's and Matador Settle "Restaurant Wars" Trade Dress Case
Posted on October 22, 2008Owners of Peso’s and the Matador restaurants have settled their trade dress and unfair competition case, a lawyer involved in the trial told me today. (Last STL post on the case here.) But darn it, the Seattle Weekly scooped me with this post...
The Government's Hiring Judges!
Posted on October 16, 2008In this down economy, there’s at least one outfit hiring — the federal government! The U.S. Patent and Trademark Office is looking for two administrative law judges to serve on the Trademark Trial and Appeal Board. Here are highlights from the job posting...
Expanded Top-Level Domain Scheme to Challenge Trademark Owners
Posted on October 14, 2008The October issue of InsideCounsel magazine reports on ICANN’s plan to release an almost infinite number of new top-level domain names. The Internet Corporation for Assigned Names and Numbers will expand beyond the 21 generic top-level domains currently available (such as ...
Eastern District Dismisses Lanham Act Claim for Lack of Standing
Posted on October 12, 2008Plaintiff Melvin Ott sued Ingenix, Inc., in the Eastern District for listing him as a consultant in a proposal it made to the State of Montana. The State of Montana awarded Ingenix the bid — to develop fee schedules for the state — but Ingenix did not use Dr...
Federal Trademark Office Launches "Consistency Initiative"
Posted on October 08, 2008Ever file three trademark applications with only slight variations, only to get three different examining attorneys arrive at three different decisions? That kind of result is what the U.S. Patent and Trademark Office hopes to avoid...
Pinkberry Sues Yoberry for Federal Trademark Infringement
Posted on October 07, 2008Berry similar? Pinkberry accuses Yoberry of ripping off its marks In September, the Pinkberry, Inc., chain of frozen yogurt shops filed a trademark infringement suit in the Western District against the Seattle-based Yoberry, Inc...
Ninth Circuit Affirms Fees Award in Counterfeit Jeans Case
Posted on October 07, 2008In 2005, D.A.D.S. Denim, Inc., filed suit in the Central District of California against Lillian Ramirez on the ground that she had sold and offered for sale hundreds of counterfeit jeans bearing its trademark. In 2006, D.A.D.S. presented evidence at trial that Ms...
Update in Ongoing Peso's v. Matador Trade Dress Trial
Posted on October 05, 2008On Friday, I talked with one of the lawyers representing the owners of Peso’s in their claims against the owners of the Matador in Seattle’s restaurant wars trade dress trial. (Most recent STL post on the case here.) Here’s an update: The case is about halfway through the expected six-week trial...
Western District Finds No Basis for Declaratory Judgment Claim
Posted on October 03, 2008Excerpt from plaintiff’s Web site at kooks.com No case or controversy exists between Global DNS, LLC, and Kook’s Custom Headers, Inc. That’s what Western District Judge Robert Lasnik found on Sept. 22 when he dismissed plaintiff’s declaratory judgment claim that its registration and use of kooks...
Congress Passes Anti-Counterfeiting Bill
Posted on September 30, 2008The “PRO-IP” bill, otherwise known as the “Prioritizing Resources and Organization for Intellectual Property Act of 2008,” passed the House on Sept. 28 and is headed for the White House. If signed, the bill would revise a number of existing statutes relating to counterfeiting, including the Lanham Act...
Mark Can Be Counterfeit Even When the Genuine Mark Is Not Used on Same Goods
Posted on September 29, 2008On Sept. 26, the Ninth Circuit found that a mark can be counterfeit even when the genuine mark is not used on the same goods. Defendant Able Time, Inc., imported a shipment of watches bearing the mark TOMMY, which is a registered trademark owned by Tommy Hilfiger Licensing, Inc...
Washington Mutual Failure Serves as a Painful Reminder that Goodwill Is Fragile
Posted on September 28, 2008Tough times ahead: Message from WaMu’s Web site Washington Mutual’s failure and subsequent fire sale to New York-based JPMorgan Chase will undoubtedly hurt the Seattle legal community, not to mention Seattle as a whole. WaMu was downtown Seattle’s biggest tenant...
Microsoft, Starbucks, and Amazon.com Remain Seattle's Top 3 Brands
Posted on September 25, 2008Seattle’s three biggest brands all gained value this year, according to Interbrand Corp.’s “Best Global Brands 2008” survey. Like last year, Microsoft Corp., Amazon.com, Inc., and Starbucks Corp. were the only three Seattle-based brands to make the list...
Amici File Brief Supporting Dismissal of Jones Day's Trademark Infringement Suit
Posted on September 22, 2008Amici Public Citizen, the Electronic Frontier Foundation, and the Citizen Media Law Project have come the rescue of Blockshopper.com, Brian Timpone, and Edward Weinhaus in their defense against law firm Jones Day’s trademark infringement suit...
Approving Corporation's Trademark Infringement Can Cause Personal Liability
Posted on September 21, 2008The default judgment in Century 21 Real Estate, LLC v. Raritan Bay Realty, Ltd., illustrates that an officer can be personal liable for its employer’s trademark infringement. All that’s needed is authorization and approval. In Century 21, the defendant corporation entered into a franchise agreement with the plaintiff and continued to use the licensed trademarks after plaintiff terminated the agreement...
From Two Pesos to Peso's: More Local Press on Tex-Mex Trade Dress Suit
Posted on September 18, 2008The local press is loving the restaurant trade dress war that’s being played out this week in King County Superior Court. The case pits the owners of Peso’s against the owners of the Matador in what could be a Seattle re-telling of Two Pesos v...
Adidas-Payless Court Found Decorative Design Can Cause Dilution
Posted on September 17, 2008This case is too meaty to let go. So here’s one last bite — a rundown on how the District of Oregon analyzed the dilution claim in Adidas America, Inc. v. Payless Shoesource, Inc. The unhappy Payless moved for a new trial based in part on its claim that the Trademark Dilution Revision Act and its predecessor, the Federal Trademark Dilution Act, both require the defendant to use a trademark to blur or tarnish the plaintiff’s famous trademark...
No Unfair Competition in Trial Over Competing Spiritual Seminars
Posted on September 16, 2008A Thurston County Superior Court jury yesterday found in favor of spiritual teacher JZ Knight and against her former student, Whitewind Weaver, local newspapers report. Ms. Knight, founder of the Ramtha School of Enlightenment in Yelm, Wash. (pictured left), sued Ms...
Adidas-Payless Court Finds No Juror Misconduct, Reduces Damages to $65M
Posted on September 15, 2008On Sept. 12, the District of Oregon explained the mysterious “juror letter” in the Adidas America, Inc. v. Payless Shoesource, Inc., trademark infringement case and found that it did not contain sufficient grounds for a new trial...
Local Media Spotlight Restaurant Trade Dress Trial
Posted on September 13, 2008The Peso’s vs. Matador restaurant ripoff case starts Monday. The lawsuit, which Peso?s Kitchen and Lounge owners El Diablo, Inc., and Brian Hutmacher filed against Mel-Opp & Griff LLC and the other owners of competing Tex-Mex restaurant The Matador, accuses the latter of copying the former’s distinctive menu and decor...
Ninth Circuit Finds Mustang Ranch Purchasers Have Trademark Rights
Posted on September 11, 2008The 2003 eBay purchasers of Nevada’s Mustang Ranch have trademark rights in that mark, the Ninth Circuit has decided. The court’s Sept. 4 decision affirmed the District of Nevada’s rejection of plaintiff David and Ingrid Burgess’ claim that L...
Electric Hendrix Appeals Western District's Infringement Decision
Posted on September 09, 2008Not surprisingly, the marketers of Hendrix Electric vodka have decided to appeal. On Aug. 7, Electric Hendrix, LLC, and the other defendants lost cross-motions for summary judgment in which Western District Judge Thomas Zilly found their HENDRIX ELECTRIC, HENDRIX ELECTRIC VODKA, JIMI HENDRIX ELECTRIC, and JIMI HENDRIX ELECTRIC VODKA trademarks infringe the AUTHENTIC HENDRIX, EXPERIENCE HENDRIX, and JIMI HENDRIX marks owned by plaintiffs Experience Hendrix, LLC, and Authentic Hendrix, LLC...
Please Bear with the Technical Difficulties
Posted on September 08, 2008I’ve had some technical difficulties today. My apologies. Thanks for hanging in there. Things should be back to normal soon.
Bungie Sues Xtreme Beverages Over "Bungie" Mark
Posted on September 08, 2008On Aug. 27, Kirkland, Wash.-based video game maker Bungie, LLC, filed suit in the Western District against New Jersey-based energy drink maker Xtreme Beverages, LLC, and its owners for trademark infringement. At issue are the beverages defendants market under the names “Bungie Energy Drink” and “Bungie Sugar-Free Energy Drink,” which plaintiff claims infringe its federally-registered BUNGIE trademark in connection with computer games...
Los Angeles Times Features Investigator of Counterfeit Jeans
Posted on September 06, 2008The Los Angeles Times today features an LA-based lawyer on the hunt for fake designer jeans. The lawyer likens his job to playing “Whac-a-Mole.” The statistics bear that out: the International Anticounterfeiting Coalition estimates the global trade in counterfeit goods has grown from $5...
New York Times Discusses Trends in Trademark Filings
Posted on September 03, 2008Back from a few days in the cool city pictured above, I came across a Sept. 1 New York Times story on trademark filings with the U.S. Patent and Trademark Office. The gist is the Web is driving marketing, so it’s also driving brands...
Current "Olympic" Naming Problem Was Foreseeable in 1998
Posted on August 27, 2008Why didn’t Washington State’s Congressional delegation prevent the Ted Stevens Olympic and Amateur Sports Act from granting a monopoly over the word “Olympic” without carving out a broader exception for Washington-based Internet sales? That’s the question Seattle-area blogger Trish Wareing recently asked...
AAA Sues AAA over AAA
Posted on August 26, 2008On Aug. 22, the American Automobile Association filed a trademark infringement suit in the Western District against Tacoma-based AAA Insurance Inc. The mark at issue? Take a wild guess. Plaintiff registered AAA as a trademark in 1967 for “automobile association services”; AAA LIFE INSURANCE COMPANY in 1978 for “underwriting of life and accident services”; AAA GUARANTEED LIFE in 1989 for “life insurance underwriting services”; and AAA and Design in 1998 for “adjusting and collecting insurance damage claims” and “insurance brokerage services...
The Doors of the 21st Century Must Pay Damages for Using The Doors Name
Posted on August 26, 2008On Aug. 13, the California Supreme Court declined to consider an appeal involving ex-members of The Doors and the damages they were found to have caused by touring in 2003 as The Doors of the 21st Century, Law.com reports. The article states the decision (or lack thereof) cemented the $3...
Chrysler's Ad Tells Consumers Its JEEP SUVs Are Special, Not Generic
Posted on August 24, 2008My reading isn’t exactly up to date. Yesterday I came across this ad in the Sept. 17, 2007, issue of The New Yorker. The text reads: “They invented ‘SUV’ because they can’t call them Jeep®. “Jeep is a registered trademark...
Ninth Circuit Finds Contempt Order Not Immediately Appealable
Posted on August 22, 2008On Aug. 20, the Ninth Circuit decided Koninklijke Philips Electronics, N.V. v. KXD Technology, Inc., involving the appealability of a contempt order stemming from the violation of a temporary restraining order and preliminary injunction. The District of Nevada granted the plaintiff injunctive relief enjoining the defendants from selling any product that infringed the plaintiff’s registered trademarks...
Microsoft Settles with Alleged Australian Cybersquatters
Posted on August 19, 2008In April, Microsoft Corp. sued Trellian Pty. Ltd. of Australia and other defendants in King County Superior Court for cybersquatting, trademark infringement, false designation of origin, and other trademark claims related to the defendants’ alleged registration of domain names that are identical or confusingly similar to Microsoft’s trademarks...
Trafficking in Counterfeit Labels Renders Alien Inadmissible to Stay in United States
Posted on August 18, 2008On Aug. 6, the Ninth Circuit concluded that willingly trafficking in counterfeit goods constitutes “inherently fraudulent” conduct that renders an alien ineligible for a visa to remain in the United States. Mr. Hung Lin Wu, a 45-year-old permanent resident of the United States and citizen of Taiwan, pleaded guilty to trafficking in counterfeit labels...
Beware of Official Looking Trademark Monitoring Services
Posted on August 18, 2008I’ve written about deceptive pitches to trademark applicants and registrants in the past. I came across another one today. Or, rather, my client did. My client, a small business owner, has a few pending applications that have just cleared examination and are about to be published...
Mind the Requirements Contained in Routine Orders
Posted on August 15, 2008On August 14, Western District Judge Robert Lasnik on his own initiative ordered the defendant in a trademark and cybersquatting case to show cause why it should not be sanctioned for failing to comply with two court orders. The orders? The court’s scheduling order and its order regarding initial disclosures, joint status report, and early settlement...
Lawsuit Alleges Joint Trademark Ownership Indicates Band's Partnership
Posted on August 13, 2008Ex-Sugarland founder Kristen Hall has sued her former band mates Jennifer Nettles and Kristian Bush. Her complaint, filed July 29 in the Northern District of Georgia, alleges claims for breach of an unwritten partnership agreement in which each member agreed to share equally in the country group’s profits and losses...
"Marketplace" Radio Show Features Summertime Trademark Dispute
Posted on August 12, 2008Tonight’s “Marketplace” show on NPR (one of my favorites) featured a summertime trademark dispute I couldn’t pass up: Mister Softee cracking down on ice cream truck copycats. (Audio and transcript here.) Turns out there are lots of ice cream trucks out there with the same blue-and-white colors, stylized graphics, and jingle that bring Mister Softee to mind...
Western District Finds HENDRIX ELECTRIC Infringes Hendrix Company's Trademarks
Posted on August 09, 2008The maker of HENDRIX ELECTRIC vodka infringes three JIMI HENDRIX trademarks owned by the licensing company that controls the late musician’s marks. That’s what Western District Judge Thomas Zilly found in his August 7 order on the parties’ cross-motions for summary judgment in Experience Hendrix, LLC v...
Court Finds Lessened Standard No Excuse for Delaying Dilution Suit
Posted on August 06, 2008The July 29 Hobbit Travel decision, which the Las Vegas Trademark Attorney discusses comprehensively here, is of particular interest to STL for its treatment of laches in the context of dilution. (STL digs dilution cases.) In Saul Zaentz Co...
Seattle Post-Intelligencer Interviews "Spam King" Robert Soloway
Posted on August 05, 2008The Seattle Post-Intelligencer today ran a great feature arising out of “Spam King” Robert Soloway’s first local interview. The paper portrayed Mr. Soloway’s story as one of rags-to-riches-to-rags. He suffers from Tourette’s syndrome and was the unpopular kid in high school...
What's the Plural Form of a Trademark?
Posted on August 04, 2008What’s the plural form of a trademark? That’s what a reader recently asked a (non-lawyer) blogger with respect to her BLUETOOTH headsets: “What’s the plural form of ‘bluetooth’ now that I have two of them?” Trick question, of course...
Plaintiffs Didn't Show Bad Faith Needed for Malicious Prosecution Claim
Posted on August 02, 2008I can’t summarize the facts any better than Chief Judge Alex Kozinski did the Ninth Circuit’s June 30 decision in Fisher Tool Co., Inc. v. Gillet Outillage: “Defendant Gillet Outillage is a French company that makes hose clamp pliers; it owns French and U...
Records Show Starbucks Hasn't Yet Opposed Rollergirls' Logo
Posted on July 31, 2008I hope I’m not jumping the gun here, but it looks like Starbucks Corp. isn’t opposing the Rat City Rollergirls’ application to register its logo as a trademark after all. In May, STL reported (among others) that Starbucks had filed for an extension of time to oppose the Seattle roller derby league’s application through July 16...
King County Superior Court Sends Local Trade Dress Dispute to the Jury
Posted on July 30, 2008Restaurant wars: The owner of Peso’s (left) has sued the owners of The Matador over trade dress, dilution and other issues. As STL readers may recall, El Diablo, Inc., and its owner sued Mel-Opp & Griff, LLC, and others in King County Superior Court for trade dress infringement, dilution, and other claims relating to the parties? competing Tex-Mex restaurants and bars...
Olympic Cellars and USOC Settle "Olympic" Trademark Dispute
Posted on July 30, 2008The Seattle Times reported yesterday that the United States Olympic Committee and the Olympic Peninsula’s Olympic Cellars Winery have entered into a settlement in which the winery will keep its “Olympic” name and domain name on the condition that its “wine sales east of the Cascade Mountains are not ‘substantial...
Payless Shoesource's Insurer Balks at Paying $305M Verdict
Posted on July 28, 2008As the Trademark Blog reports, American Guarantee & Liability Insurance Co. is balking at the prospect of paying any part of the $305M judgment Adidas America, Inc., obtained against Payless Shoesource, Inc., earlier this year. The insurer filed suit on July 24 in the District of Kansas for a declaration that it is not liable under any of its policies...
New Trademark Filings Suggest New Team Won't Be Called "Supersonics"
Posted on July 27, 2008Forget the Oklahoma City Supersonics, thank goodness. The team’s new owners abandoned their intent-to-use applications for those trademarks less than one week after filing them. (Previous STL discussion here.) What now appears to be in play is the Oklahoma City Barons, Bison, Energy, Marshalls, Thunder and Wind...
Law Firm Appeals in Chameleon Data Cybersquatting Case
Posted on July 25, 2008On July 22, the unsuccessful plaintiff law firm filed a notice of appeal to the Ninth Circuit in The Christensen Firm v. Chameleon Data Corp. The appeal identifies five alleged errors, including the Western District’s dismissal of its cybersquatting claim against the defendant Web development firm with whom plaintiff contracted, the court’s rulings relating to the parties’ jury trial, and the court’s denial of plaintiff’s motion for a new trial...
Please Bear with the Technical Difficulties
Posted on July 22, 2008Pages aren’t looking right and are loading slowly. Sorry about that. My people are on it, or so they say. Thanks — I hope things will be back to normal soon.
Is State Trademark Registration Appropriate for Your Mark (Part 2)?
Posted on July 22, 2008Yesterday’s post looked at the advantages of state trademark registration. Indeed, registration at the state level offers many advantages over common law protection and sometimes even over federal protection. Yet, dollar-for-dollar, most trademark owners get the most benefit out of federal registration...
Seattle's "Spam King" Sentenced to Four Years
Posted on July 22, 2008Since Spam Notes’ Venkat Balasubramani is temporarily off the grid, I’ll pinch hit for him by mentioning that Robert Soloway — Seattle’s very own “Spam King” — was sentenced today. Western District Judge Marsha Pechman gave him 47 months...
Is State Trademark Registration Appropriate for Your Mark (Part 1)?
Posted on July 20, 2008Don’t buy more than you need. For some trademark owners, getting a state registration is just as good as — and sometimes better than — getting a federal registration issued by the U.S. Patent and Trademark Office. This post summarizes the advantages of state rather than federal registration...
Interesting Remedy for Trademark Infringement in China: An Apology
Posted on July 16, 2008I’ve read a little about the trademark infringement lawsuit that Japanese cosmetics giant Shiseido Co. Ltd. filed against alleged copycats in China. Apparently, a decision is due from the Pudong New Area People’s Court any day now. According to one article, Shiseido alleged that defendants Li Wei and Ma Yan, and their companies Shanghai Jingdian Cosmetic Co...
New Team Owner Files ITU Applications for OKLAHOMA CITY SUPERSONICS
Posted on July 15, 2008As sports fans everywhere know, after 41 years, Seattle has lost its beloved basketball team. The one thing that seemed right about the City of Seattle’s settlement with Clay Bennett’s Professional Basketball Club, LLC — the group that bought the team and then moved it to Oklahoma City — was that the Sonics’ name and legacy was supposed to stay here in Seattle...
Seattle Times Reports on Oral Argument in the Hendrix Electric Vodka Case
Posted on July 13, 2008The Seattle Times yesterday reported on the July 11 oral argument in the parties’ cross motions for summary judgment in Experience Hendrix, LLC, v. Electric Hendrix, LLC. The case will decide whether the defendant can market its vodka products using the deceased musician’s name, likeness, and signature...
Sometimes It Pays to Be Pro Se
Posted on July 10, 2008Can you imagine if an attorney tried this?In Microsoft Corp. v. Marturano, Microsoft sued John Marturano, d/b/a J & T Computers and Parts, in the Eastern District of California for allegedly distributing counterfeit and infringing software despite Microsoft’s requests that he cease and desist from such conduct...
Russian Clowns Sue Seattle Repertory Theatre Over Alleged Copycat Show
Posted on July 08, 2008Counterfeit cat theater? Last month, father-and-son Russian clowns Yuri Kuklachev and Dimitri Kuklachev filed suit in the Eastern District of New York against alleged impostors who have passed themselves off in the United States as the plaintiffs’ Moscow Cats Theatre troupe...
Western District Trademark Lawsuits Up in First Half of 2008
Posted on July 08, 2008The Western District saw an uptick in trademark lawsuits in the first half of 2008.From January 1 to June 30 of this year, plaintiffs filed 22 new lawsuits in the Western District that PACER recognized as being “trademark” suits. That’s up from 16 during the same period last year, though down from 30 in the first half of 2006...
PepsiCo Shines in Gentle Demand Letter to Church
Posted on July 02, 2008A reader emailed me a photo of her church’s new t-shirt design. It looks like Mountain Dew’s. The church’s slogan? “Do the Pew.” The reader thought something was wrong with borrowing someone else’s logo. She’s got good instincts...
Hendrix Electric Vodka Case Doesn't Settle in Mediation; Motions Pending
Posted on July 02, 2008The parties’ trademark claims in Experience Hendrix, LLC, v. Electric Hendrix, LLC — regarding the defendants’ ability to use Jimi Hendrix’s name, likeness, and signature in connection with their vodka products — will be decided on summary judgment...
InsideCounsel Magazine Discusses the Problem of Fraud
Posted on June 30, 2008The June issue of InsideCounsel has a nice piece on fraud on the Trademark Office. It accurately frames the problem as follows:“In the past few years, the [Trademark Trial and Appeal Board] has adopted an extremely tough attitude toward trademark filings that contain overly broad statements of use...
Will Supreme Court's Decision on Punitive Damages Affect Trademark Cases?
Posted on June 29, 2008On June 25, the U.S. Supreme Court found in Exxon Shipping Co. v. Baker that punitive damages under maritime common law cannot exceed the amount of compensatory damages when such awards are “substantial.” Will this decision affect punitive damages awards in trademark cases? It shouldn’t under federal law — even by analogy — because the Lanham Act does not provide for punitive damages...
Seattle Law Blog Meetup Meets Up Again
Posted on June 27, 2008A dozen Seattle law bloggers congregated tonight to talk shop. Blogs represented included the Washington Employment Advisory, Law According to Michael Rice, Trial Ad (and Other) Notes, Copyright or Wrong, China Law Blog, Employment Law Blog, Criminal Defense Law with an Apple, Speeding Ticket Blog, Seattle Trademark Lawyer, and our host, the Avvo Blog...
Seattle Law Bloggger Meetup Meets Up Again
Posted on June 27, 2008A dozen Seattle law bloggers congregated tonight to talk shop. Blogs represented included the Washington Employment Advisory, Law According to Michael Rice, Trial Ad (and Other) Notes, Copyright or Wrong, China Law Blog, Employment Law Blog, Criminal Defense Law with an Apple, Speeding Ticket Blog, Seattle Trademark Lawyer, and our host, the Avvo Blog...
Will a Cryptic "Juror Letter" Unravel Adidas' $300 Million Victory?
Posted on June 25, 2008Is this another instance of jurors playing Sudoku?Cryptic docket entries about a “juror letter” and sealed court records suggest something’s gone awry in the Adidas v. Payless Shoesource case that resulted in what reportedly was the largest damages award ever in a case of trademark infringement...
Coming Full Circle in Christensen Firm v. Chameleon Data
Posted on June 24, 2008This isn’t a strictly a trademark update, but I can’t help but come full circle in the case of The Christensen Firm v. Chameleon Data Corp. (for background see STL coverage from Feb. 14, Feb. 20, May 5, and June 1). This is the case where the law firm claimed its Web developer took over three of the firm’s domain names and disabled the firm’s email system in an effort to gain an upper hand in a dispute over the Web developer’s bill...
Failure to Allege Factors Leads Court to Find Mark Not Famous Despite Default
Posted on June 24, 2008In Alfa Corp. v. Alfa Mortgage Inc., the plaintiff alleged that its federally-registered marks containing the word ALFA are famous and that defendant’s use of ALFA constituted dilution, among other trademark-related causes of action. Plaintiff is an Alabama-based company that uses ALFA in connection with financial services, including insurance and reinsurance services...
STL to Road Trip to Boise for Technology Law Conference
Posted on June 22, 2008I’ll be heading to Boise, Idaho, on July 10 to speak at Law Seminar International’s Technology Law conference. I’ll be presenting on “Practical Tips for Use of Trademarks,” which the brochure describes as: “How should search engines, web linking, and new logo placement opportunities affect your trademark licensing program? What are the minimum requirements and for best practices policing trademark misappropriation on the Internet?” As the title suggests, I intend to focus on practical tips, such as essential elements in trademark licensing agreements and how to avoid having your cease-and-desist letter embarrass your client and you when it’s posted on the Internet...
Parties Settle Cybersquatting Case Involving Whitecap.com
Posted on June 21, 2008On June 20, plaintiffs White Cap Construction Supply, Inc., and HD Construction Supply, Ltd., filed a Stipulation and Order of Dismissal of its cybersquatting case against defendants the Domain Name Whitecap.com, in rem, and the domain name registrar A W Registry, Inc...
Starbucks Trademark Dispute Brewing Over Mr. Rainier Coffee Logo?
Posted on June 19, 2008I’ve heard rumblings about this but can’t get any confirmation. Is Starbucks suing a Japanese coffee company with a green-and-white concentric circle logo? That’s what this post from February 2006 — repackaged in another blog’s post this week — suggests:“Starbucks is also suing Japan’s Mt...
Managing IP Magazine Publishes Guide to Trademark Blogs
Posted on June 17, 2008Managing Intellectual Property magazine recently published a “short guide to some of the more popular blogs covering trade mark and other IP law around the world,” which I’m happy to report includes STL. It’s a good resource for discovering new international trademark blogs that U...
Ninth Circuit Upholds Clothier's Fees Award If Related to Trademark Claim
Posted on June 16, 2008On June 11, the Ninth Circuit upheld the Western District’s award of attorney’s fees on the false designation of origin claim in Derek Andrew, Inc. v. Poof Apparel Corp. However, the court cautioned that if the award included fees based on the Copyright Act, then the award was erroneous because Derek Andrew did not timely register its copyrights and, therefore, could not sustain its copyright claim for statutory damages...
Seattle Times Features Western District Judge Marsha Pechman
Posted on June 15, 2008It’s not a trademark story, but the Seattle Times today has an in-depth feature on Western District Judge Marsha Pechman and how she is likely to run her courtroom in the City of Seattle v. Professional Basketball Club LLC trial — the case that will decide whether the Seattle Supersonics will immediately be moved to Oklahoma City...
NYT Article Illustrates How Champagne Region May Be Watering Down Its Brand
Posted on June 14, 2008Today’s New York Times reports on the imminent expansion of the Champagne appellation in France. (NYT map here; past STL discussion here.) Most of the article discusses the reason for the expansion — to make winemakers more money...
Microsoft Sues 21 for Alleged Software Piracy -- Including Repeat Defendants
Posted on June 11, 2008Microsoft Corp. announced yesterday it filed 21 federal lawsuits against alleged software pirates. The suits are filed in Georgia, California, Massachusetts, Ohio, South Carolina, Tennessee, Texas, Virginia, Oregon, Arkansas, Colorado, Florida, Illinois, and Washington...
Cricket Communications Sues Hipcricket for Trademark Infringement
Posted on June 11, 2008On June 2, the Southern District of California transferred a trademark infringement case to the Western District of Washington. San Diego-based Cricket Communications, Inc., contends that Bellevue-based Hipcricket, Inc.’s HIPCRICKET name and registered mark infringes and dilutes Cricket’s CRICKET registered mark...
New York Court Again Finds that MISTER CHARBUCKS Does Not Dilute STARBUCKS
Posted on June 09, 2008On June 5, the Southern District of New York decided that Wolfe’s Borough Coffee, Inc.’s use of MR. CHARBUCKS and MISTER CHARBUCKS in connection with coffee was not likely to cause dilution by blurring or dilution by tarnishment of Starbucks Corp...
Still No USOC Lawsuits Over Seattle-Area Use of OLYMPIC as Trademark
Posted on June 08, 2008Not to tempt fate, but I couldn’t help but notice that the U.S. Olympic Committee has not flooded the Western District of Washington with lawsuits over Seattle-area companies’ use of OLYMPIC in their names and trademarks. (See STL posts on this issue from August 12, 2007; Jan...
Microsoft Collects on Default Judgment Against Spammer
Posted on June 04, 2008In October 2004, Microsoft Corp. filed suit against John Does 1-50, d/b/a Myauctionbiz.biz, for alleged “unauthorized use of Microsoft’s computers and computer systems to send millions of misleading and deceptive unsolicited commercial e-mail messages, or ‘spam,’ in violation of federal and state law and Microsoft policies...
TTAB Grants Summary Judgment Against Seattle Spirits Distributor
Posted on June 03, 2008John Welch today reports on Seattle-based Fine Spirits Distribution, LLC’s loss on summary judgment in the Trademark Trial and Appeal Board opposition proceeding that E. & J. Gallo Winery brought objecting to Fine Spirits’ application to register FALCON for distilled spirits...
Gucci Sues Alleged Local Counterfeiters
Posted on June 02, 2008On May 27, Gucci America, Inc., filed suit against Cassandra Black, Cece’s Bargain Boutique, CecesBargainBoutique.com, and ten unknown persons for selling allegedly counterfeit Gucci merchandise. The complaint alleges that Ms. Black is a resident of Kent, Wash...
INTA Recap: Our Own United Nations
Posted on May 28, 2008Meet the Bloggers IV: Trademark law bloggers of the world unite!It’s hard to recap a four-day conference involving thousands of trademark lawyers from around the world. Despite my nagging jet lag, I’m still energized. For me, this year’s INTA transcended the usual meeting and greeting...
See you at INTA!
Posted on May 16, 2008Slight blogging slowdown ahead as I travel to Berlin to join thousands of other trademark lawyers from around the world at the 130th annual meeting of the International Trademark Association. What a conference! Please say hello if you see me there...
Adidas v. Payless Jury Instructions
Posted on May 15, 2008By popular demand, here are the jury instructions in the Adidas America, Inc. v. Payless Shoesource, Inc. case. All 60 pages of them. The ten pages of instruction on dilution start on page 38. Besides a reader’s request for the instructions on dilution, everyone is commended to check out the entire instructions...
Oregon Jury Awards $305 Million to Adidas for Payless Shoe Infringement
Posted on May 07, 2008On May 5, a nine-person jury in the District of Oregon found Payless Shoesource, Inc., liable for infringing Adidas America, Inc.’s three-stripe trademark and awarded Adidas $305 million. The jury found Payless infringed or diluted Adidas’ mark or trade dress by using a two- and four-stripe logo on its competing athletic shoes...
Fantastic Sams Sues Rival Regis for Not Removing Trademarks from Premises
Posted on May 07, 2008On May 5, hair salon franchisor Fantastic Sams Franchise Corp. filed suit in the Western District against rival hair salon franchisor Regis Corp. and other defendants. Fantastic Sams alleges that Regis convinced the corporation that owned the right to develop and grant third parties FANTASTIC SAMS franchises in the Seattle-Tacoma market to sell its salons to Regis...
Domain Name Misappropriation Case Set for Trial in the Western District
Posted on May 06, 2008The case between a Seattle law firm and its Web development vendor goes to jury trial on May 21. STL readers may recall that the Seattle-based law firm The Christensen Firm sued Chameleon Data Corp. and its president, Derek Dohn, on the ground that defendants allegedly transferred ownership of plaintiff’s four domain names (thechristensenfirm...
Summit Capital Dismisses Declaratory Judgment Action Against Summit Partners
Posted on May 04, 2008As STL readers may recall, on Dec. 28 Seattle-based Summit Capital Group, LLC, and affiliated financial services companies filed suit in the Western District against the Boston-based Summit Partners, LP, venture capital firm, seeking a declaration of non-infringement and non-dilution of the defendant’s SUMMIT PARTNERS trademark...
Mark Your Calendar for "Meet the Bloggers IV" at INTA in Berlin
Posted on May 02, 2008“Meet the Bloggers IV” at Potsdamer Platz 1, Berlin, GermanyOrganizer Jeremy Phillips of IPKat fame has given his fellow trademark bloggers the green light to spread the word. So, mark your calendars: the fourth annual “Meet the Bloggers” reception at the International Trademark Association’s annual meeting will be held from 8:30 to 10:30 p...
More Background on Washington's Amended Right of Publicity Statute
Posted on April 30, 2008For those attending tomorrow’s discussion on Washington’s amended right of publicity statute, I thought I’d add some more background (STL post about the gathering here). In particular, here’s a cheat sheet on the amendment I cribbed from the the House Bill Report’s summary of the amendment:”When ApplicableThe provisions of the bill apply to all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose...
How to Find the Right Expert Witness for Your Trademark Case (Part 2)
Posted on April 27, 2008STL’s previous post offered some strategies for finding the right expert witness in trademark cases. On Friday, the Las Vegas Trademark Attorney blog added a few suggestions, including the following: “One popular online source is the online expert witness directory JurisPro...
How to Find the Right Expert Witness for Your Trademark Case
Posted on April 24, 2008Expert witnesses can be hugely important in trademark cases. Particularly through survey evidence, they can help establish if a mark is generic (and hence unprotectable); that a descriptive mark has acquired secondary meaning (and therefore is protectable); that a mark has actually confused or is likely to confuse consumers with another mark; that a mark is famous; and that one user’s mark is likely to cause dilution by blurring or dilution by tarnishment...
KCBA Members to Discuss Amendments to Right of Publicity Statute
Posted on April 23, 2008Still wondering about the new amendments to Washington’s right of publicity statute? You don’t have to be alone. On May 1, the King County Bar Association’s Intellectual Property Section will host a brown-bag lunch program on “Emerging Issues in Right of Publicity Law...
Seattle-Based McSweet Faces McDonald's in TTAB Opposition Proceeding
Posted on April 21, 2008On Friday, the Puget Sound Business Journal ran a story about a Trademark Trial and Appeal Board case involving Maple Valley, Wash.-based McSweet LLC. McSweet, which has sold MCSWEET-branded pickled cocktail onions for almost 20 years, decided to apply to register its mark with the Patent and Trademark Office...
Two More Regional Trademark Law Blogs Worth Checking Out
Posted on April 20, 2008I think it’s a great model. Pick a geographic region, and try to cover it well. In recent weeks I’ve come across two regional trademark law blogs that embrace this approach. Both are well worth checking out. First is the Maryland Intellectual Property Law Blog...
Unscrupulous Companies Target Unsuspecting Trademark Owners
Posted on April 16, 2008This morning, a client forwarded me an email it received from a company ostensibly doing business in China. The email read as follows:RE: Intellectual property rightsDear CEO,We are the domain name registration organization in Asia, which mainly deal with international company’s in Asia...
Ninth Circuit Finds Counterfeiting Constitutes Crime of Moral Turpitude
Posted on April 15, 2008Senegal citizen Elimane Tall got involved in counterfeiting. In 2003, he pled guilty to one count of “counterfeit of a registered mark” in violation of California Penal Code § 350(a)(2), which imposes criminal penalties on any person who “willfully manufactures, intentionally sells, or knowingly possesses for sale any counterfeit of a mark registered with the Secretary of State or registered on the Principal Register of the United States Patent and Trademark Office…” In 2004, Mr...
Five-Year Delay May Cut Off Trademark Infringement Damages, But Not Claim
Posted on April 14, 2008In Sonoma Foods, Inc. v. Sonoma Cheese Factory, LLC, plaintiff cheese maker sued defendant cheese maker in the Northern District of California. At issue was Sonoma Cheese Factory’s use of Sonoma Foods’ registered trademarks, SONOMA CHEESE FACTORY and DESIGN and SONOMA JACK (the “Bull Trademarks”), allegedly constituting infringement and a false description or passing off...
Peso's Sues Matador in Rare Seattle Restaurant Trade Dress Case
Posted on April 11, 2008The owner of Peso’s Kitchen and Lounge (top) has sued the owner of The Matador restaurant for trade dress infringement, including themetal work shown above, allegedly made by the same designer.Last year, El Diablo, Inc. filed suit for trade dress infringement in King County Superior Court against Mel-Opp & Griff LLC and other defendants alleging confusing similarity between the look-and-feel of the parties’ competing Mexican/Tex-Mex restaurants and bars...
Yacht Maker Sues Competitor Over ALEUTIAN Trademark
Posted on April 08, 2008On April 2, Seattle-based Grand Banks Yachts Pte. Ltd. filed a trademark infringement suit in the Western District against Tacoma-based Aleutian Yachts, LLC. At issue is the parties’ use of ALEUTIAN in connection with their competing yacht building businesses...
No, Right of Publicity Statutes Prevent You from Using Britney's Face
Posted on April 04, 2008In the wake of American Apparel’s billboards featuring Woody Allen, and Mr. Allen’s lawsuit in response thereto, Mainstreet.com asks, “Can You Use Britney’s Face To Promote Your Bake Sale?” The short answer is no, not without her permission...
30 Years of Seattle Mariners Trademarks
Posted on April 02, 2008As I write this, the Seattle Mariners are 1-0 in the 2008 season. At this rate, they’ll not only make the playoffs for the first time in seven years — they’ll win the World Series with an undefeated record. Ah, the optimism a new season brings...
Ninth Circuit Finds Endorsement No Reason to Dismiss Advertising Injury Case
Posted on April 01, 2008Ex-members of The Doors and surviving relatives of Jim Morrision sued Ray Manzarek, a founding member of The Doors, and Doors Touring, Inc., in two lawsuits, alleging that Mr. Manzarek and his new band were liable for infringing THE DOORS name, trademark, and logo in conjunction with their planned national and international tours...
Hazelden Band Name Dispute Pits Drug Treatment Center Against Indie Rockers
Posted on March 31, 2008This month, Los Angeles-based indie rock band Hazelden received a cease-and-desist letter from the Minnesota-based drug and alcohol treatment center of the same name. The Hazelden Foundation claims the band has infringed and diluted its HAZELDEN family of registered trademarks...
Derek Andrew Settles TWISTED HEART Suit with Chrome Hearts
Posted on March 26, 2008In November 2007, Bellevue-based clothier Derek Andrew, Inc., filed suit against California-based jeweler and clothier Chrome Hearts, Inc. Derek Andrew sought a declaratory judgment from the Western District that its TWISTED HEART line of clothing does not infringe Chrome Hearts’ CHROME HEARTS registered fleur de lis design marks, among other claims...
Derek Andrew Settles TWISTED HEART Trademark Suit with Chrome Hearts
Posted on March 26, 2008In November 2007, Bellevue-based clothier Derek Andrew, Inc., filed suit against California-based jeweler and clothier Chrome Hearts, Inc. Derek Andrew sought a declaratory judgment from the Western District that its TWISTED HEART line of clothing does not infringe Chrome Hearts’ CHROME HEARTS registered fleur de lis design marks, among other claims...
Western District Finds Lanham Act Claim Deficient But Allows it to be Amended
Posted on March 23, 2008In the Western District case of Teragren, LLC v. Smith & Fong Co., the parties are competing bamboo floor paneling processors. Smith & Fong responded to Teragren’s complaint for patent infringement by asserting six counterclaims, including that Teragren was liable for making false statements that amounted to unfair competition prohibited by the Lanham Act...
Western District: Read the Local Rules, then Seek a Settlement Judge
Posted on March 19, 2008The parties in Carey Licensing, Inc. v. Sandler have had a little trouble trying to book a Western District magistrate judge for a settlement conference in their trademark infringement and cybersquatting case. But as the Western District reminded them this week, magistrate judges don’t participate in settlement conferences — only parties do...
Champagne Region Expands in Order to Expand Vintners' Profits
Posted on March 18, 2008Champagne sparkling wine only comes from the Champagne region of France, right? Until the Champagne region of France moves, that is. The Institut national de l’origine et de la qualite, which governs the Appellation d’Origine Controlee designation for Champagne, is set to expand the appellation’s boundaries, which currently spans 319 villages in north-eastern France...
Federal Courts Release Report on 2007 Case Statistics
Posted on March 17, 2008Last week, the Administrative Office of the United States Courts released its annual report on the “Judicial Business of the United States Courts.” There’s a lot of statistical information in there. Most is organized by judicial district, but some is broken down into both case area and judicial district...
Infringement Safari: Seattle
Posted on March 16, 2008Apple’s iPod ad campaign has been copied and spoofed dozens of times. Nonetheless, Apple can’t be too happy about San Francisco-based Specialty’s Cafe and Bakery’s latest ads. I saw this placard yesterday in downtown Seattle...
Does ZOVA for Women's Apparel Infringe ZOVO for Lingerie?
Posted on March 12, 2008On March 7, Seattle-based Zovo Lingerie Co., LLC, filed a trademark infringement suit in the Western District against DHM Enterprises and Deanna Hodges, collectively doing business as Zova LA. At issue is whether defendants’ ZOVA and ZOVA LA trademarks are likely to confuse consumers with plaintiff’s registered ZOVO and ZOVO LINGERIE marks...
Trademark Claim Winner Not a Prevailing Party Against Association
Posted on March 11, 2008Even though MONY Life Ins. Co. prevailed in its counterclaim to cancel Van Well Nursery, Inc.’s trademark registration, on March 10 the Eastern District of Washington found it was not a prevailing party in its third party action against the National Licensing Association, of which Van Well Nursery is a member...
Signs of Confusion
Posted on March 10, 2008Paid for by Concerned Citizens for a Better America? Photo credit: Monica Guzman/Seattle P-IThe Seattle Post-Intelligencer’s Big Blog last week reported on some controversial political billboards popping up around Seattle. The ads say they’re paid for by “Concerned Citizens for a Better America...
Utah Repeals Keyword Advertising Ban
Posted on March 09, 2008Last year, STL reported on Utah’s Trademark Protection Act, which potentially prohibited advertisers from purchasing trademarks owned by others as search engine keywords (see posts here and here). As the Google Public Policy Blog explained, “[I]f a department store like Macy’s wanted to advertise that they sell Nike shoes, under the Utah law they would not have been able to use the term ‘Nike’ to trigger an ad for their store...
Class Notes: Trade Dress Presentation
Posted on March 06, 2008I was fortunate enough to fill in for my esteemed partner, Bob Cumbow, last night in his trademark law class at Seattle University. The subject was trade dress — one of my favorites. Here’s a copy of my PowerPoint talking points...
Western District Denies Derek Andrews' Motion for Reconsideration
Posted on March 05, 2008Following up on my post here, on Feb. 22, the Western District denied clothier Derek Andrew, Inc.’s motion asking the court to reconsider its partial denial of Dererk Andrew’s motion for preliminary injunction against fitness drink maker Vital Pharmaceuticals, Inc...
Lifestyle Lift Sues Owner of RealSelf.com Web Site for Trademark Infringement
Posted on March 03, 2008In January, Lifestyle Lift Holding, Inc., filed suit in the Eastern District of Michigan against Seattle-based Realself, Inc. Lifestyle licenses its registered LIFESTYLE LIFT trademark to cosmetic and plastic surgery centers. Realself owns the www...
Western District Denies Motion to Dismiss Contributory Infringement Claim
Posted on March 02, 2008In ProteoTech, Inc. v. Unicity International, Inc., plaintiff ProteoTech alleges the University of Washington granted it an exclusive license to use certain technology. Thereafter, ProteoTech granted an exclusive, limited field of use license with respect to the technology to third-party defendant Rexall Sundown, Inc...
Chinese Court Redresses Trademark Infringement with Huge Damages Award
Posted on March 01, 2008The China Business Law Blog recently published two posts (here and here) about a 20 million yuan ($2.8 million) trademark infringement award by the Hangzhou Intermediate People’s Court. That’s a far cry richer than the 500,000 yuan ($64,000) Starbucks won last year in its trademark infringement suit (STL post on the decision here; discussion of the damages calculation in that case here)...
Profile of Western District Judge Benjamin Settle Published
Posted on February 27, 2008Mary Whisner points out in her Trial Ad (and other) Notes blog that the Federal Bar Association of the Western District of Washington has published a profile of Benjamin Settle, one of the Western District’s newest judges (article starts on page 7)...
European Court Protects Geographic Designation for Parmesan Cheese
Posted on February 26, 2008As STL readers know, Champagne only comes from the Champagne region of France (STL post here). And Wild American Shrimp only come from “their native habitat in the coastal waters of the Gulf and East Coasts of the United States” (STL post here)...
Trademark Dilution Weekend (Part 2)
Posted on February 24, 2008On Feb. 21, the Ninth Circuit took the unusual step of amending its six-month old decision in Jada Toys, Inc. v. Mattel, Inc., deciding the “new” standards established in the October 2006 Trademark Dilution Revision Act apply to Mattel’s dilution counterclaim, not the old standards set forth in the Federal Trademark Dilution Act...
Trademark Dilution Weekend (Part 1)
Posted on February 23, 2008There’s a whole lotta dilution goin’ on. That’s why this weekend is Trademark Dilution Weekend. Today: XEROX and GOOGLE. Tomorrow: the Ninth Circuit’s amended decision applying the “new” Trademark Dilution Revision Act standards in Jada Toys v...
Western District Grants Preliminary Injunction Against Fitness Drink Maker
Posted on February 21, 2008On Feb. 5, Western District Judge James Robert granted in part and denied in part Bellevue-based apparel designer Derek Andrew, Inc.’s motion for preliminary injunction against fitness drink manufacturer Vital Pharmaceuticals, Inc. Derek Andrew sells a line of clothing and related products under its RED LINE trademark...
"Meet the Bloggers" Lineup Reveals Some Great Trademark Blogs
Posted on February 20, 2008Jeremy Phillips of IPKat fame (among other blogs) is graciously organizing this year’s “Meet the Bloggers” gathering at the International Trademark Association’s annual meeting, which will be held in May in Berlin. His list of expected attendees provides a treasure-trove of trademark- and IP-dedicated blogs — most of which are published outside the States, and many of which I have never stumbled upon...
Qpass Files Trademark Suit Against Kupass
Posted on February 19, 2008Seattle-based Qpass, Inc., filed suit in the Western District on Feb. 6 against Kupass Corp. Both parties allegedly provide application provider services. According to the complaint, Qpass started using its registered trademark QPASS in 1998 in connection with making software available to end-users to facilitate on-line membership services, payment services, and the sale of goods and services over computer networks...
Cautionary Tale: Hire Trademark Attorney or Change Name -- Three Times
Posted on February 16, 2008The Seattle Times’ Feb. 15 Retail Report offers a cautionary tale for business owners who adopt a trademark before talking to a trademark attorney:”Zenith Vineyard in Oregon’s Willamette Valley might win the viticultural prize for having the most names in the shortest period...
Circuits Split Over Which Trademark Dilution Standard Applies
Posted on February 14, 2008Let me finish a post I’ve been wanting to write for a few days now. With the Northern District of California’s understandable decision this week in Phase Forward Inc. v. Adams (STL post here) to follow its appellate court’s lead in Jada Toys, Inc...
Western District Dismisses Law Firm's Cybersquatting Claim Against Vendor
Posted on February 14, 2008Seattle-based solo law firm The Christensen Firm claims it’s having trouble with its Web development vendor. Last March, if filed suit in King County Superior Court against Chameleon Data Corp. and its president, Derek Dohn, on the alleged ground that defendants transferred ownership of plaintiff’s four domain names (thechristensenfirm...
Court Grants Reconsideration of Dilution Dismissal Based on Jada Toys v. Mattel
Posted on February 12, 2008In Phase Forward Inc. v. Adams, plaintiff brought suit in 2005 against defendant Mary Noel Adams stemming from defendant’s use of the trademark PHASE FORWARD.After the Trademark Dilution Revision Act was enacted in October 2006, defendant moved for summary judgment on the ground that plaintiff’s mark did not meet the amended definition of a “famous mark” as one “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner...
Wineries to Duke It Out Over FOOTE Trademark
Posted on February 12, 2008On Feb. 8, the owners of Washington’s E.B. Foote Winery filed suit in the Western District against the owners of southern California’s Foote Printe Winery. Plaintiffs allege that defendants’ use of FOOTE PRINT WINERY and Design infringe plaintiffs’ registered trademarks, E...
Western District Stays But Does Not Dismiss 1-800-JUSTICE Infringement Case
Posted on February 09, 2008Plaintiff Just Enterprises, Inc., owns a federal registration for 1-800-JUSTICE for “legal referral services.” Defendant Phillips & Webster, PLLC, is a Woodinville, Wash.-based personal injury law firm. Just Enterprises alleges in its complaint filed in the Western District of Washington that P&W has licensed and currently uses 888-JUSTICE in connection with its law firm in a manner that is likely to cause confusion with Just Enterprises’ mark...
WSBA's 13th Annual Intellectual Property Institute Coming March 7
Posted on February 07, 2008The Washington State Bar Association has great lineup for the 13th Annual Intellectual Property Institute, scheduled for March 7 at the Washington State Convention and Trade Center. This year’s copyright and trademark track includes sessions on the following: Trademark Year in Review; Revisions to the Trademark Trial and Appeal Board and Practical Tips; Fair Use and the First Amendment; Licensing Intellectual Property; Second Life and Online Liability; and Ethics in Intellectual Property Counseling...
Florida Court Dismisses Trademark Dispute Over '80s Band Expose'
Posted on February 06, 2008In November, Crystal Entertainment & Filmworks, Inc., brought suit in the Southern District of Florida against members of the 1980s band Exposé on the ground that it — not performers Jeanette Jurado, Ann Curless Weiss, Gioia Bruno, and Kelly Moneymaker — owns the EXPOSÉ name and common law trademark...
Chinese Official Explains How His Court Calculated Infringement Damages
Posted on February 05, 2008The December 2007 issue of China Intellectual Property magazine had a nice write-up about the Starbucks Corp. v. Shanghai Xingbake Cafe Corp. Ltd. trademark infringement case that Shanghai’s No. 2 Intermediate People’s Court decided last year...
No Judgment as a Matter of Law in Baden v. Molten False Advertising Case
Posted on February 03, 2008STL readers may remember the patent infringement and false advertising case of Baden Sports, Inc. v. Kabushiki Kaisha Molten and Molten U.S.A., Inc., that went to trial in the Western District last August. The jury awarded Baden more than $8 million to compensate it for Molten’s intentionally falsely advertising that its basketballs were “innovative technology that is proprietary to Molten...
Wrestler "Warrior" Avoids Game Maker's Motion to Dismiss Trademark Claims
Posted on January 30, 2008Ultimate Creations, Inc., the licensing company owned by former professional wrestler Warrior (his legal name) brought suit in the District of Arizona against video game maker THQ Inc. over video games that use Ultimate’s WARRIOR registered trademark and and trade dress in the wrestler’s costume and image...
No Temporary Restraining Order Enjoining Use of COMMON SENSE
Posted on January 30, 2008When things are slow in Seattle……STL reports on trademark issues elsewhere. That’s what I’ve been doing for the last couple of days.Here’s a new trademark decision from the Northern District of California. Plaintiff Common Sense Media, Inc...
United States Olympic Committee Doesn't Sue "Olympic" Businesses Very Often
Posted on January 29, 2008A reporter recently asked me how often the United States Olympic Committee has sued the owner of an “Olympic”-named business in Washington. The answer? In the Western District of Washington, where I would expect such a suit to be brought: never...
Microsoft Wins Trademark Counterfeiting Case on Summary Judgment
Posted on January 27, 2008In the Northern District of California case of Microsoft Corp. v. E&M Internet Bookstore, Microsoft brought suit against a company doing business as emeshop.net, and its alleged owner Chien-Wei Chen, for selling counterfeit Microsoft software on eBay...
Network Solutions Reportedly Monitors Domain Name Availability Searches
Posted on January 24, 2008I’m a faithful “lurker” in the International Trademark Association’s listserve. I’ve found my passive participation pays off, since there often is a quality tip or issue for discussion. Recent days have been no exception...
Palantir.net Gets Preliminary Injunction Against Palantir Technologies
Posted on January 24, 2008Palantir Technologies Inc. v. Palantir.net, Inc. is a trademark case from the Northern District of California concerning the parties’ right to use the trademark PALANTIR. For added color, the case involves a bit of lore from the Lord of the Rings...
Western District Dismisses Breach of Contract Counterclaims
Posted on January 23, 2008In Amiga, Inc. v. Hyperion VOF, plaintiff sued defendant in the Western District for breach of contract, trademark infringement, trademark dilution, false designation of origin, and unfair competition relating to the development of a software operating system...
Microsoft Wins Most of Georgia Counterfeiting Case
Posted on January 20, 2008In 2006, Microsoft Corp. brought suit in the Northern District of Georgia against Silver Star Micro, Inc., and its principal, Chase Campbell, for trademark and copyright infringement. On Jan. 6, Judge William Duffey, Jr., granted in large part Microsoft’s motion for summary judgment and imposed a permanent injunction against the defendants...
Judge Coughenour Not Accepting New Trademark Cases
Posted on January 17, 2008Western District Judge John Coughenour appears to have stopped taking new trademark cases. New matters assigned to him reportedly are reassigned to other judges with the statement that “Judge Coughenour does not accept trademark cases...
Seattle Law Blogger Meetup Recap
Posted on January 16, 2008Last night was the long-awaited Seattle Law Blogger Meetup at my firm, Graham & Dunn. We had a nice turnout — 15 law bloggers and five “aspiring” law bloggers. We had a spirited two-hour discussion, and about half hung around for another hour, so we must have been having fun...
STL Gearing up for the Seattle Law Blogger Meetup
Posted on January 14, 2008On Jan. 15, yours truly will host what I hope will become an annual event — the Seattle Law Blogger Meetup. The event is intended for local law bloggers to socialize and discuss the blogging experience. The agenda is open, but I personally want to hear what my fellow law bloggers have to say about the following:Why do you blog?What goals do you have?What’s been your most rewarding experience?What’s been your biggest disappointment?What’s been your biggest challenge?How did you overcome it?If there is anything you could change about your blog, what would it be?Where do you see legal blogging going in the future?Of course, I’m also interested in learning new tips on developing new content, expanding readership, avoiding problems in court, and maintaining law firm support...
U.S. Olympic Committee Says Olympic Cellars Must Turn Away Some Customers
Posted on January 13, 2008The U.S. Olympic Committee’s demands of Washington’s Olympic Cellars Winery has made a lot of news around here lately. On Dec. 30, the Peninsula Daily News broke the story. Then came National Public radio affiliate KUOW’s take on Jan...
Business Owner Says Overzealous USOC Threatens Washington's Economy
Posted on January 11, 2008Jason Bausher, owner of the Olympic Mountain School and publisher of the “Best of the Olympic Peninsula” travel guide, has done a little research since getting his first cease-and-desist letter from the U.S. Olympic Committee regarding his use of the word “Olympic...
Financial Firms Fight Over SUMMIT CAPITAL PARTNERS Trademark
Posted on January 08, 2008On Dec. 28, Seattle-based Summit Capital Group, LLC, and affiliated financial services companies filed suit in the Western District against the Boston-based Summit Partners, LP, venture capital firm, seeking a declaration of non-infringement and non-dilution of the defendant’s SUMMIT PARTNERS trademark...
How Western District Trademark Cases Were Decided in 2007 (Part 2)
Posted on January 07, 2008As discussed yesterday, the Western District of Washington disposed of fifty-one trademark cases in 2007. These consist of cases that PACER identified as being “trademark” matters that parties filed in 2005, 2006, and 2007, and that were listed as being closed in 2007...
How Western District Trademark Cases Were Decided in 2007 (Part 1)
Posted on January 06, 2008Continuing my similar analysis from last year (see posts here and here), I’ve looked at cases that were opened and cases that were closed in the Western District of Washington in 2007. To get a more accurate picture of 2007 activity, I analyzed cases filed from 2005 to 2007 that the federal courts’ PACER database flagged as involving primarily “trademark” issues...
Laches Bars Infringement Suit by Wailers (Tacoma) Against Wailers (Jamaica)
Posted on January 03, 2008STL readers will recall that the Wailers rock and roll band from Tacoma brought suit in June against the Wailers reggae band from Jamaica for trademark infringement, dilution, unfair competition, and cybersquatting, based on plaintiffs’ WAILERS registered trademark...
Happy New Year!
Posted on January 01, 2008STL is taking a quick New Year’s break while I enjoy a little R&R in San Francisco. I’ll be back at it on Jan. 3. In the meantime, here’s a shot from my favorite New Year’s Eve ever — with my wife on the Spanish Steps in Rome...
Use of Same Trademark for a Different Product Didn't Infringe Registered Mark
Posted on December 30, 2007The Ninth Circuit yesterday clarified what it takes for the owner of a federally registered trademark to succeed in an infringement action against another user of the mark in connection with goods or services that are different than those specified in the owner’s trademark registration...
Seattle Racing Helmet Manufacturer Loses at TTAB
Posted on December 27, 2007In 2005, Lloyd Lifestyle Limited and Lloyd IP Limited filed an opposition proceeding with the U.S. Trademark Trial and Appeal Board opposing Tukwila, Wash.-based Soaring Helmet Corp.’s intent-to-use application to register NITRO as a word mark for “motorcycle helmets and protective clothing...
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Can driving accident be cause for termination?
If your state is an at-will state, the company can fire you for any reason or fo...
Must I refinance my house aftering taking full ownership after a divorce via a quit claim?
When financing there are at least two documents...the mortgage and the note. The...
What rights does a father have when a woman waits 13 years to tell a man he is a father & he missed out on the growing up of that child?
Actually, he has as much right as she to request a paternity test, plus he can f...
I signed myself out of a hospital because I thought the care was negligent. I am a nurse and know a great deal about medical care. I was in the hospital a year ago for less then 12 hours and they sent me a bill for over
If you can prove tha the care was negligen you need to get a lawyer and try to n...
How to prevent an arrest from appearing in the local newspaper?
Dont know the law in Minnesota but in most jurisdictions an arrest is a matter o...
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