Seattle Trademark Lawyer

Plaintiff Basel Action Network and defendant International Association of Electronics Recyclers (IAER) both provide certified electronics recycling programs.

But IAER has something Basel doesn’t have: a federal registration for CERTIFIED ELECTRONICS RECYCLER as a certification mark.

Basel thinks that mark is generic and should be available for anyone to use. Based on that belief, it sued to have IAER’s registration cancelled (complaint here; STL post here).

In December 2010, the Western District dismissed Basel’s claims (STL post here). Basel then filed an amended complaint, alleging that IAER engaged in unfair competition by confusing consumers as to origin and by falsely advertising its status, again seeking to have the registration cancelled.

IAER again moved to dismiss.

On June 7, the court granted IAER’s motion with respect to Basel’s confusion-of-origin theory but denied it with respect to its false advertising theory.

Basel alleged that consumers who attended a September 2010 conference at which both Basel and one of the defendants presented were confused between the two. The court rejected that contention.

“The court finds that Basel has not stated a confusion-of-origin claim based on anything more than Defendants’ use of the generic term ‘certified electronics recycler.’ In Basel’s example based on the September 2010 conference agenda, there is no suggestion that anything other than the term ‘certified electronics recycler’ caused attendees to confuse [defendant Institute of Scrap Recycling Industries’] presentation for Basel’s. Indeed, the agenda identified ISRI as the presenter for the morning session, and Basel as the presenter for the afternoon session. If attendees were confused, there is no plausible allegation that they were confused by something other than ISRI’s use of the generic term ‘certified electronics recycler.’”

The court allowed Basel to proceed on its false advertising claim that defendants have said they alone can provide “the trademarked designation of ‘CERTIFIED ELECTRONICS RECYCLER®.’”

The court wrote that “[i]f ‘certified electronics recycler’ is a generic term, then Defendants’ claim that only they provide the ‘trademarked designation of ‘CERTIFIED ELECTRONICS RECYCLER®’ is true, but incomplete.”

The court went on to find that defendants are obligated “not to abbreviate the truth in a way that misleads consumers. It is not plausible that Defendants chose to tout the registration of their certification to advertise that they hold a meaningless registration for a generic term. The question thus arises: why are Defendants advertising their registration? It is plausible that Defendants intend to convey that they hold a PTO registration is significant in a way that matters to consumers. It is plausible, for example, that Defendants hope that the public will perceive their PTO registration as a favorable substantive judgment on their certification program. It is plausible that Defendants hope that the public will perceive that their use of the term ‘certified electronics recycler’ is somehow ‘official’ or government-sanctioned. ….

“If Defendants convey any of the messages listed above, they misrepresent the import of their PTO registration, and thus engage in false advertising in violation of the Lanham Act. Cancelling Defendants’ registration would remedy the harm about which Basel complains. With their registration cancelled, Defendants would no longer be able to tout their registration in advertisements. Accordingly, the court concludes not only that Basel has stated a Lanham Act false advertising claim, but that this claim is a valid independent cause of action for which cancellation is a remedy, in accordance with the court’s prior order.”

The case cite is Basel Action Network v. International Association of Electronics Recyclers, No. 10-0931 (W.D Wash. June 6, 2011) (Jones, J.).