Seattle Trademark Lawyer

Interesting story today in InformationWeek’s Global CIO Blog. Citing a Cato Institute newsletter, it accuses Seattle-based Nordstrom, Inc., of bad conduct before the Trademark Trial and Appeal Board.

The blog tells quite a story, one that starts with the PTO erroneously accepting Nordstrom’s intent-to-use application for a trademark that is confusingly similar to a registered trademark owned by two Colorado women, and ends with Nordstrom using its financial might to beat back the registrants who believe they have been wronged. I don’t want to re-tell a re-telling, so check out the post yourself. However, here’s the punch line — from the unhappy trademark owners to the Commissioner of Trademarks:

“We filed for a trademark so that we could reasonably secure ourselves from someone else using that name. If your office cannot protect us from this, why would we, or anyone, file an application? The law is supposed to be accessible to all people. Just because Nordstrom has money and we do not does not give them the right to use the name for which we have the trademark…. [T]he cost to work through the TTAB will easily exceed $70,000 just to fix the problem The Trademark Office made in the first place. We understand that we must stand behind and police our trademark. How is this possible for a small company to stand up to a behemoth like Nordstrom for $70,000? Your office has ensured our demise.”

Decide the facts for yourself. Here are links to the subject registration; the prosecution history of one of Nordstrom’s intent-to-use applications; the TTAB docket to Nordstrom’s now-dismissed cancellation proceeding; and the TTAB docket to the registrant’s ongoing opposition proceeding.

On Feb. 2, the Ninth Circuit addressed whether the “first publication” exclusion contained in an insurer’s excess insurance policy applied to an insured’s injury arising from a third party’s trade dress claim.

Sunset Health Products, Inc., hired Spectrum Worldwide, Inc., to advertise and distribute Sunset’s HOLLYWOOD 48-HOUR MIRACLE DIET drink. Soon thereafter, two of Spectrum’s executives formed their own company, Celebrity Products, Inc., and began selling and marketing a similar product, THE ORIGINAL HOLLYWOOD CELEBRITY DIET drink. Spectrum then terminated its contract with Sunset and began marketing its competing product.

In December 1998 and March 1999, Sunset demanded that Spectrum cease infringing its MIRACLE DIET trademark. In October 2001, Sunset filed a trade dress infringement claim against Spectrum, alleging that Spectrum deliberately made the packaging of Spectrum’s CELEBRITY DIET drink confusingly similar to the packaging of Sunset’s MIRACLE DIET drink.

In 2001, Spectrum purchased a $1 million excess third party liability policy from United National Insurance Co. The policy contained a clause indemnifying Spectrum for “advertising injury” liability, including “misappropriation of advertising ideas or style of doing business.” The policy also contained an exclusion for “advertising injury … arising out of oral or written publication of material whose first publication took place before the beginning of the policy period.”

After cross-motions for summary judgment, the parties were left with Sunset’s core trade-dress infringement claim. Spectrum and Sunset settled for $3.2 million, of which United contributed $420,000.

United then sued for reimbursement of the amount it paid pursuant to the “first publication” exclusion. The Central District of California eventually granted summary judgment in its favor.

The Ninth Circuit affirmed the decision. It found: ”[T]he United Policy’s first publication clause is clear and explicit, and must be given its proper effect.” Thus, the court found the exclusion applied to trade dress infringement injury that “arose from an oral or written publication of material first published before the policy became effective.”

The case cite is United National Ins. Co. v. Spectrum Worldwide, Inc., __ F.3d. __, 2009 WL 224520, No. 07-55833 (9th Cir. Feb. 2, 2009).

Dueling USA Networks: the Christian channel I found on vacation (top) 
and the well-known one owned by NBC Universal

I’m back from vacation.

I must say, I didn’t think much about trademark law while I was gone. One of the few times was when I came across a channel called “USA Network” on my hotel TV. I had expected to find edited-for-basic-cable movies and shows like “Monk” that are on the USA Network I get as part of my cable TV package at home. Not so. I instead found what appeared to be a channel offering 24-hour Christian content.

Hmmm. The marks are identical — USA NETWORK— and the services are identical — television services. So are these channels somehow related? I don’t think so, but I can’t tell. I guess you could say that I am confused.

Assuming the marks are not owned by NBC Universal, Inc. (which owns the USA Network I get at home), it may be that USA NETWORK is such a weak (if not downright generic) trademark when used in connection with television services that NBC Universal can’t stop lesser-known competitors from using the identical mark for identical services. If that’s the case, it’s not much of a trademark, is it?

Another possibility is that NBC Universal owns the Christian channel I came across. If that’s the case, NBC Universal is confusing viewers and watering down its own brand. That wouldn’t seem terribly smart.

One lesson to take from this is that a company adopts a weak trademark at its own peril. Why pour money into promoting a mark that you can’t protect? And if you have a protectable mark, don’t weaken it by associating it with incongruous goods or services. Doing so will only confuse consumers. Like me.

My better half and I are taking a week off in Kauai. I’ll be the relaxed sunburned guy with a smile on my face. If you see me, please say hello.

Back to blogging in about a week. If I return, that is.

Photo credit: Matt Wright

Plaintiff Woolrich, Inc., owner of a federal registration for THE ORIGINAL OUTDOOR CLOTHING COMPANY, has filed trademark infringement and dilution claims against Eddie Bauer, Inc., based on the Seattle company’s use of the mark THE ORIGINAL OUTDOOR OUTFITTERTM (as depicted in the sale flyer pictured above). Woolrich brought suit in the Middle District of Pennsylvania — Woolrich’s home district — on Jan. 6. The suit alleges that both companies compete in the outdoor clothing market and distribute their clothing through the same channels of trade. Eddie Bauer has not yet appeared or answered.

The case cite is Woolrich, Inc. v. Eddie Bauer, Inc., No. 09-0016 (M.D. Pa).