Seattle Trademark Lawyer

Plaintiff SafeWorks, LLC, sells and rents lifting and hoisting equipment for use in construction under its SPIDER registered trademarks. Defendant Teupen America, LLC, rents and sells track-mounted aerial lift machinery in connection with the term “spiderlift” and applied to register the mark THE SPIDERLIFT COMPANY.

In August 2008, Teupen and affiliated companies sued SafeWorks in the District of Massachusetts seeking a declaration of noninfringement on the ground that “spiderlift” was generic. SafeWorks then sued Teupen and its affiliated companies in the Western District for trademark infringement. The cases were consolidated in the Western District.

The case was tried to Western District Thomas Zilly in May. Following are highlights from the court’s Findings of Fact and Conclusions of Law, entered today: 

• “By obtaining an approved federal trademark application, defendants have made clearly inconsistent statements to the USPTO and to this Court: on the one hand, that the Mark SPIDERLIFT is distinctive and entitled to federal registration with the USPTO; and on the other hand, that the Mark SPIDERLIFT is generic and therefore not protectable or registrable under any circumstances.”
• SPIDERLIFT is not generic.
• SafeWorks has demonstrated that it has a valid and senior SPIDER® Mark. Application of the Sleekcraft factors demonstrates that there is a likelihood of confusion between SafeWorks’ SPIDER® Marks and defendants’ use of the term “spiderlift” based on the similarity of the terms, the strength of the SPIDER® Marks, the defendants’ intent to infringe, the overlap of customers and channels of trade, and incidents of actual confusion.”
• The defendants are ordered within 20 days to take “all necessary steps to cease using the domain name www.spiderlifts.com”; to destroy all marketing materials that use the infringing Mark “spiderlift”; and to abandon its federal trademark application for THE SPIDERLIFT COMPANY.
• SafeWorks is awarded defendants’ net profits during the period of infringement, from August 2004 through December 31, 2009, in the amount of $56,882.
• The case was an “exceptional case” justifying an award of attorney’s fees.
• “Defendants’ deliberate and willful acts include, without limitation, deliberate indifference to: (1) the constructive notice conferred by the long time registration of the SPIDER® Marks, (2) the repeated warnings sent by SafeWorks, and (3) defendants’ agreement to stop infringing, which agreement they then breached.”
• The Court ordered SafeWorks to move for an assessment of reasonable attorney’s fees within 20 days.

The case cite is SafeWorks, LLC v. Teupen America, LLC, No. 08-01219 (W.D. Wash.) (Zilly, J.).