Seattle Trademark Lawyer

On Sept. 10, the District of Oregon entered findings of fact and conclusions of law in a trademark infringement case between two charter bus companies, plaintiff Meridian Transportation Resources, LLC, and defendant Magic Carrier Resources, LLC. After a one-day trial, Magistrate Judge Janice Stewart found that defendant’s MCR-WEST trademark infringed plaintiff’s MTR WESTERN mark.

Seattle-based MTR Western operates 30 buses in Portland and is Oregon’s second-largest charger motor coach carrier. The court found it uses the following trade dress: “a solid gold painted motor coach with a decal on its side, close to the windows that reads MTR WESTERN in its stylized trademark format. This stylization includes ‘MTR’ in bold and italic font, and ‘Western’ in cursive font, accompanied by a logo with two swirls in contrasting colors … close to the driver’s side window of the motor coach. The Swirl Design logo and the MTR Western (Stylized) trademark are colored in orange, black, and white. The trade dress also includes an operating authority decal which includes the phrase ‘PROUDLY OWNED AND OPERATED BY’ preceding the operating authority information required by the U.S. Department of Transportation.”

Defendant Magic Carrier is owned by two Ukrainian brothers, Nikolay and Vitaly Uzko. The brothers formed the company in 2006 after reading an article about one of MTR Western’s owners and wanting to emulate his success. The Yuzkos purchased one used white Prevost motorcoach, which is the same model used for most of MTR Western’s fleet. To learn more about the business, the brothers visited MTR Western’s facility in Portland and talked to its sales manager, who shared information about where they could obtain service and maintenance. Nikolay Uzko chose the name “Magic” because he had used the name for his first company, Magic Wheels. The court found the brothers chose the other words “Carrier” and “Resources” as descriptive of the business but also with the intent to adopt a name similar, but not identical to, MTR Western.

Magic Carrier added an operating decal on one side of its bus with the same tag line used by MTR Western (“PROUDLY OWNED AND OPERATED BY”) preceding the operating authority information required by the U.S. Department of Transportation. Similar to MTR Western, Magic Carrier’s operating decal was stamped in black capital letters, although in a different font. The court found that although other busses also use the same or similar tag lines, the Yuzkos intended to adopt an operating decal name similar, but not identical to, MTR Western’s operating decal.

Magic Carrier registered the domain name mcr-west.com and developed a Web site for use in connection with its services. It also developed a business card containing the name MCR-West in stylized script above Magic Carrier’s full name, as well as a photograph of the coach. Using Photoshop, a friend of the brothers inserted an image of the coach in front of the Vatican and the Eiffel Tower and dropped a logo and the name MCR-West onto the image of the coach. The logo is common clip art and consists of a swirl design in gold and black. The court found the swirl was similar to MTR Western’s swirl design logo, but was more linear and without complete circles. Although shown on the business card, the logo was never painted onto the coach.

Upon being served with the summons and complaint, Magic Carrier destroyed its business cards, took down its Web site, and stipulated to a preliminary injunction, which the Court entered in June. Before trial, Magic Carrier stipulated to entry of a permanent injunction.

The court found most of the Sleekcraft factors weighed in favor of finding likelihood of confusion. Therefore, the court found Magic Carrier’s use infringed MTR Western’s trademarks and the Oregon state analog. However, the court refused to award MTR Western its attorneys fees as either an “exceptional case” under the Lanham Act or as the prevailing party under Oregon’s unfair and deceptive practices statute because it found the lawsuit had been unnecessary to avoid the damage that Magic Carrier’s infringement had caused.

The court explained that if MTR Western had “approached Magic Carrier less aggressively or had MTR Western’s lawyers first sent a cease and desist letter to Magic Carrier explaining trademark infringement, then this lawsuit would likely have been avoided. MTR Western gave Magic Carrier too little time to comply before engaging in litigation.”

The case cite is Meridian Transp. Resources, LLC v. Magic Carrier Resources, LLC, No. 06-820, 2007 WL 2688129 (D. Or.).