Seattle Trademark Lawyer

Coca-Cola or Chica-Locca?

A STL first: a reader’s infringement safari!

Seattle lawyer Kevin Halverson just returned from an enviable vacation to Mexico. “Warm-water surfing,” as he put it. Seriously, that right there is reason enough to practice law. I’m super-jealous.

But onto the infringement. The famous Coca-Cola logo morphs into “Chica-Locca” on trucks, t-shirts, and signs in Sayulita advertising the Chica Locca Magical Tour company’s boat tours, he says.

So what’s wrong with Chica Locca’s having a little fun with the Coca-Cola logo? No one really thinks they have something to do with Coca-Cola, right?

Probably not, but its use still amounts to trademark dilution. Under the Lanham Act (and many state statutes), dilution occurs when a famous trademark is used by a third party without the famous brand owner’s permission. The problem is not with a likelihood of confusion, but with watering down the famous brand. While consumers seeing the Coca-Cola logo used to think only of cola made by the Coca-Cola Company, consumers that have visited Sayulita now think of both the Coca-Cola Company and the Chica Locca Company. It’s an eroding of the power of Coca-Cola’s famous mark solely to stand for the company that makes Coke. It’s also an unfair free ride that Chica Locca has taken on the Coca-Cola Company’s fame.

But not to get too heavy. It’s a great find for a lawyer on vacation.

Counterfeit jerseys, vodka, motor oil, and hats 

Counterfeit goods. They were everywhere at the International Trademark Association’s annual meeting.

That’s where I was last week: in Dallas, meeting with trademark colleagues from around the world. There were 9,500 of us. And a lot of counterfeit goods.

Jerseys, vodka, motor oil, hats. There was no shortage of examples on display.

A counterfeit good is a brand name put on a good that wasn’t made by the brand owner. Consumers often think they’re getting the real McCoy, but they’re actually buying a fake. Who knows who made what was purchased, or what the quality is. And it’s not all fake purses. Vodka? Motor oil? Counterfeiting can pose a real threat to the safety of unsuspecting purchasers.

That’s a point INTA wanted to help drive home. And they succeeded.

But INTA wasn’t all about counterfeiting. I took some time off to attend the decidedly genuine ninth annual “Meet the Bloggers” reception — a great success and a lot of fun. It’s always the highlight of the conference. Thanks to our hosts, which included luminaries Marty Schwimmer (Trademark Blog), Ron Coleman (Likelihood of Confusion), and John Welch (TTABlog)! It was a blast!

I almost got his autograph, too:
TTABlog’s John Welch at “Meet the Bloggers IX”

Costco advertised some rings in its store as being “Tiffany” rings.

Problem is, Tiffany didn’t make them.

Costco says it wasn’t confusing anyone. It was just describing the setting style, which it says is known as a “Tiffany” setting.

Tiffany’s now suing Costco; Costco is counter-suing Tiffany, saying the “Tiffany” name has become generic.

In other words, Costco is saying that Tiffany’s invaluable brand no longer functions as a trademark; it instead denotes the good itself — a type of setting — the same way that nylon, aspirin, and elevator lost their proprietary meanings and became common words.

KIRO-Radio talked to me about this issue last week.

Do you think “Tiffany” has become generic?

Me? No way. Slam-dunk win for Tiffany.

We’ll see if the court agrees.

NEWSBOYS and NEW BOYZ:
Similar marks for bands, but no likelihood of confusion  

Newsboys, Inc. v. Warner Music Inc., illustrates that similar marks paired with similar goods or services may not create a likelihood of confusion.

The secret is enough of a difference in the goods or services.

Plaintiff’s mark is NEWSBOYS.  Defendants’ mark is NEW BOYZ. Both marks look and sound a lot alike. And both are used in connection with live musical performances.

But plaintiff uses its mark in connection with Christian rock. And defendants use their mark in connection with hip-hop. What’s more, according to plaintiff’s complaint, defendants’ group sings “‘sexually-charged,’ ‘sexually-explicit’ lyrics.”

The Middle District of Tennessee found this difference was enough to grant the defendants’ motion to dismiss plaintiff’s complaint. The services were just too different as a matter of law for confusion to be likely.

“[G]iven the stark differences in Plaintiff’s ‘Christian-based music’ versus New Boyz’s ‘sexually-charged’ hip-hop music,” the court wrote, it is “implausible that ‘Newsboys’ and ‘New Boyz’ are likely to cause confusion in the marketplace” — despite plaintiff’s claimed evidence of actual confusion.

This finding is unusual. The court itself acknowledged that “dismissal for failure to state a claim upon which relief can be granted is appropriate in only the most extreme trademark infringement cases….”

The case cite is Newsboys, Inc. v. Warner Music Inc., No. 12-0678 (M.D. Tenn. April 19, 2013).

Folks who talk with a lawyer for the first time often wonder, “Is this confidential?”

I know they wonder it, because they often wonder it out loud.

The answer is yes. Even if you haven’t signed anything, or paid your lawyer anything, what you tell your lawyer in that first phone call or during that first meeting is completely confidential.

That means it would be illegal for the lawyer you’re meeting with to disclose anything you say to anyone else without your permission. No one can force your new lawyer to say what you’ve told him or her, either. There’s a statute that prohibits a lawyer from testifying against you. It codifies the attorney-client privilege. If your lawyer violated that trust, he could lose his license. That means he’d lose his livelihood. As you might guess, lawyers take that very seriously.

So why does your lawyer want to know things about your trademark that you think are confidential?

Without knowing what your trademark is, he or she can’t advise you about its enforceability or the risks it might pose through its use. Not to mention its registrability, meaning whether your trademark is likely to be registered by the U.S. Patent and Trademark Office. He or she can’t tell you that it is descriptive, scandalous, primarily a surname, or likely to cause confusion with a prior-filed registration — any of which could frustrate your ability to register your mark.

Your lawyer also wants to know about your mark so he can make sure he doesn’t represent someone else who has an interest in your mark. In other words, to make sure he doesn’t have a conflict of interest with another client. This is to make sure he can represent you with only your interests at heart.

In other words, when your lawyer asks you questions about your trademark, or your business, she isn’t being nosy. She just wants to learn the information she’ll need to best advise you.

So confidently tell all, knowing your new lawyer’s job is to give you the best advice he or she can.