Seattle Trademark Lawyer

STL’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. Sales, Inc., claims infringes its WORM FACTORY registered trademark.

The Western District has entered a preliminary injunction in Cascade’s favor (STL post here). The court also has found Providnet to be in contempt of that order for continuing to use the words “factory” and “worm factory” in marketing its products (STL post here).

In connection with its contempt order, the court ordered Providnet to inform the court about its efforts to comply with the injunction. Providnet filed a response, which prompted Cascade to file a motion for summary judgment on its trademark infringement claim.

On Sept. 29, Judge Ronald Leighton denied the motion. The court concluded: “After reviewing the materials filed by both parties in the tortured history of this case, the Court is convinced that there are material issues of fact related to the fact and extent of ‘confusion’ between the various product names used by the parties. This is true even though the Court remains convinced that the preliminary injunction was properly granted. Moreover, legitimate issues regarding the Defendants’ efforts to avoid infringement suggest to the court that the relief sought by the Plaintiff in the current Motion would do little to narrow the issues remaining for trial. The Court also wants to point out that the Defendants are not represented by counsel, and have not been able to provide the Court with adequate references to the law. The material submitted has instead consisted of a ‘document dump’ unaccompanied by an explanation of what the documents mean in the context of the larger dispute. Defendants are strongly encouraged to retain counsel, and if they are not able to do so, to prepare to provide the Court legal argument and authority.”

The case cite is Cascade Mfg. Sales, Inc. v. Providnet Co Trust, 2009 WL 3169449, No. 08-5433 (W.D. Wash. Sept. 29, 2009) (Leighton, J.).