Seattle Trademark Lawyer

Last week was an interesting week in the blawgosphere.

The Trademark Blog wrote about Horphag Research Ltd. v. Garcia, the Ninth Circuit dilution case Seattle Trademark Lawyer recently discussed.

The TTABlog reported that the Trademark Trial and Appeal Board has lifted its prohibition on citing unpublished TTAB decisions. Now, “a decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.” The TTAB’s notice, which appeared in the January 23 Official Gazette, is available here. This is good news for TTAB practitioners.

The 43(B)log and the TTABlog both discussed Google’s RICO lawsuit against Leo Stoller’s companies. In it, Google alleges that Mr. Stoller’s companies “are engaged in a scheme of falsely claiming trademark rights for the purpose of harassing and attempting to extort money out of legitimate commercial actors, both large and small,” including attempts to settle an alleged dispute over the GOOGLE trademark for $150,000. The New York Times and many others have written about Mr. Stoller’s alleged practice of purporting to own trademarks in gross, opposing third-party efforts to use or register such marks, and offering to “settle” with those parties. Mr. Stoller’s alleged practices have local implications. He has offered to “settle” with at least one Seattle company and probably others. It will be interesting to see what happens with Google’s suit.

Finally, TMBrandingCap discussed O’Charley’s Management Co., Inc. v. Darden Concepts, Inc., in which plaintiff alleged that defendant’s ROCKY RIVER trademark for restaurants is confusingly similar with plaintiff’s STONEY RIVER mark for restaurants. The lawsuit was filed last week in the Middle District of Tennessee.

Three things come to mind. First, the restaurant vs. restaurant trademark suit happens everywhere, including Seattle. Just last week, STL reported on the lawsuit over MOONSTRUCK and MOONRAY for cafes. In recent memory, the Western District has also seen disputes over IN-N-OUT BURGERS and IN-N-OUT PIZZA, and THE ROCK WOOD FIRED PIZZA & SPIRITS and ROCKO’S BRICK OVEN PIZZA. Second, these disputes are not limited to restaurants. The lessons they provide apply equally well to other trademark uses. And third, these disputes are easy to avoid. As Neil Melliship of the Canadian Law Blog recently wrote in the context of real estate development, these disputes “can normally be avoided by conducting due diligence through comprehensive trademark searches before committing to a particular mark for a new project.” This means trademark lawyers need to educate clients (and other lawyers in their firm) about trademark issues early on — and not only the clients with big trademark portfolios. It means talking with all clients, from the owner of a one-location restaurant to the hotel chain that’s planning its next development.

Let’s hope this coming week’s events are just as interesting.