Seattle Trademark Lawyer

The creator of the Dark ‘n’ Stormy cocktail is taking care to ensure that every drink bearing its name is made with Gosling’s Black Seal rum and a splash of ginger beer, the NYT reports today. This is a rarity in the world of cocktails, where bartenders usually have free rein to imprint their own personality on a classic drink.

Sure enough, Gosling’s Export (Bermuda) Limited owns two U.S. trademark registrations on the mark in connection with booze: DARK ‘N STORMY for “Pre-mixed alcoholic cocktail, namely rum and ginger beer” and DARK ‘N STORMY for “A kit containing Gosling’s BLACK SEAL rum and ginger beer for preparing an alcoholic cocktail.”

“We defend that trademark vigorously, which is a very time-consuming and expensive thing,” E. Malcolm Gosling Jr. says in the article. “That’s a valuable asset we need to protect.”

Gosling’s says it draws the line at the presence of other rums in its drink. When competing rum makers use its mark to promote their product, “They’re really just trying to cheat and to capitalize on our investment.”

Wikipedia (for what it’s worth) appears to take a less proprietary approach to describing the drink. It says a Dark ‘n’ Stormy cocktail is made with “dark rum and ginger beer over ice.” It adds that “local rum is usually used, for example, Bundaberg in Australia or Goslings in Bermuda.”

Photo credit: Michael Appleton/NYT.

Hot off the presses is an important new law review treatment of franchise law. Off topic here at STL? Not when one of the three elements of a franchise is that the franchisee’s business is “substantially associated with” a trademark that is licensed or owned by the franchisor. This article, written by three of my colleagues, updates a seminal article published by longtime University of Washington School of Law Professor Donald Chisum in 1973. A lot’s happened in Washington franchise regulation in the 36 years since that work was published. This article fills in the gaps. It’s a must-read for anyone practicing franchise law in Washington, and anyone practicing trademark law that occasionally strays into franchise law territory.

The cite is: Douglas C. Berry, David M. Byers & Daniel J. Oates, State Regulation of Franchising: The Washington Experience Revisited, 32 Seattle University Law Review 811 (2009).

The NYT’s Freakonomics blog today discusses the sale of empty wine bottles on eBay. It suggests that because the highest-priced empty bottles are the ones that fetch the highest prices when full, bidders may be motivated by the prospect of re-using them to sell counterfeit wine. Scary thought. But I guess I’m not surprised that bottles that used to hold the most sought-after wines fetch the most at auction. Other than a uniquely-shaped bottle or perhaps a uniquely-designed label, how else would one value an empty container? I’m sure counterfeit wine exists, but I kind of doubt this motive drives auction sales. Creative idea, though.

The Western District today found it was likely the plaintiff beauty school could establish at trial that the defendant beauty school took out ads in the Yellow Pages, posted signs on an office suite, and obtained business licenses using plaintiffs’ trademarks, constituting trademark infringement and a violation of the Washington Consumer Protection Act.

“Plaintiffs are international companies which operate over 200 hairdressing salons and academies under their ‘Toni&Guy’ brand including an academy in Bellingham, Washington. Defendants own and operate Bellingham Beauty School in Bellingham, Washington. Upon learning of the possibility of the opening of an authorized Tony&Guy franchise in Bellingham, Defendants registered ‘Toni & Guy Hairdressing Academy, Inc.’ as a for-profit corporation with the State of Washington in November, 2007. Defendants’ Tony & Guy Hairdressing Academy, Inc. then obtained a business license with the City of Bellingham and the State of Washington and a listing in the Yellow Pages for a telephone number which is never answered. These advertisements and business registrations list 203 W. Holly Street, Suite 206, Bellingham Washington as the location of the academy. This location is an office suite which bears ‘Tony & Guy Hairdressing Academy’ signs but remains empty with locked doors.

“An authorized Tony&Guy Hairdressing Academy opened in Bellingham in November 2008. Sometime before March 2009, Plaintiffs learned of Defendants’ use of the ‘Toni & Guy’ name. On April 14, 2009, Plaintiffs filed a complaint alleging violations of sections 32 of the Lanham Act (15 U.S.C. § 1114), 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), and Washington’s Consumer Protection Act.”

These findings, Judge Marsha Pechman concluded, were sufficient to support a preliminary injunction.

“The court finds that Plaintiffs have demonstrated a likelihood of success on the merits of some of its claims and that Plaintiffs stand to be irreparably injured if Defendants are not enjoined from using the Toni & Guy mark. The Court also finds that Plaintiffs have raised a serious question concerning public policy and that the balance of hardships scale tips in Plaintiffs’ favor. Plaintiffs’ prayer for relief includes enjoining Defendants from using the marks, removing local signage, and transferring the telephone number listed in the Yellow Pages to Plaintiffs. These actions would reasonably prevent further harm by removing the infringing marks from the public sphere. These actions should be accomplished within three days of the receipt of this order.”

It’s worth noting that defendants responded to plaintiffs’ motion by filing affidavits but did not file an opposition brief.

The case cite is MBL/Toni&Guy Products, L.P. v. Kennard, No. 09-501 (W.D. Wash. June 29, 2009) (Pechman, J.). 

Full disclosure: STL’s firm represents the plaintiffs in this case.

STL has previously reported on Campagnolo S.R.L. v. Full Speed Ahead, Inc., the Western District case involving the defendant bicycle parts manufacturer’s alleged statements about the qualities of the parties’ respective bicycle cranksets.

The parties filed a number of motions relating to Full Speed Ahead’s affirmative defense of unclean hands, including a motion for protective order seeking to preclude discovery about the defense, a motion to compel discovery about the defense, and two motions for sanctions against Full Speed Ahead for refusing to withdraw the defense.

On June 26, Judge Ricardo Martinez granted the motion to strike and denied the remaining motions as moot. The court found: “FSA’s claims are far too attenuated from the claims raised by Campagnolo to justify their inclusion in this lawsuit. For instance, Campagnolo brings this lawsuit based solely on representations made by FSA regarding Campagnolo’s crankset, a bicycle component that Campagnolo manufactures and develops. Campagnolo specifically contends that in 2008, FSA published several misleading advertisements regarding the stiffness-to-weight ratio of Campagnolo’s crankset in bicycle publications and on the web. Meanwhile, FSA counters that in three of Campagnolo’s own catalogues from 2004 through 2006, Campagnolo falsely advertised the weight of its own crankset. FSA does not allege that Campagnolo made any false claims about FSA’s cranksets. Thus, FSA’s claims do not directly relate to Campagnolo’s allegations, but rather accuse Campagnolo of ‘misconduct in the abstract.’”

The court added that “FSA mistakenly assumes that because the subject matter of the instant dispute is the weight of the parties’ respective cranksets, any and all conduct of Campagnolo with respect to its crankset is fair game. As mentioned above, the unclean hands defense does not stretch that far. Instead, ‘[t]he misconduct which brings the clean hands doctrine into operation must relate directly to the transaction upon which the complaint is made, i.e., it must pertain to the very subject matter involved and affect the equitable relations between the litigants.’ Therefore, in the instant case, FSA’s claims would have to directly relate to Campagnolo’s allegations regarding FSA’s misrepresentations about Campagnolo’s cranksets. This is the subject matter of this lawsuit. General allegations regarding Campagnolo’s prior history regarding its own advertisements are not the subject matter of this lawsuit. These are extraneous claims as Campagnolo’s advertising history does not directly relate to the alleged misrepresentations by FSA about Campagnolo’s cranksets.”

The case cite is Campagnolo S.R.L. v. Full Speed Ahead, Inc., No. 08-1372 (W.D. Wash. June 26, 2009) (Martinez, J.).