Seattle Trademark Lawyer

As previewed yesterday, Graham & Dunn hosted an INTA roundtable on “Survey Evidence in Trademark Disputes.” We did things a bit differently than usual — we invited a testifying expert witness to speak. Deborah Jay, Ph.D., from the Field Research Corporation shared practical thoughts with the 15 trademark practitioners who attended.

Here are a few items of interest:

• It costs in the range of $75k to $100k through a survey expert’s report (for a likelihood of confusion survey).
• The expert will usually know if the survey will assist the litigation (i.e., whether it will deliver a helpful conclusion) after about $25k worth of work.
• If the attorney doesn’t get the results they want, they can terminate the survey and start over with a new expert. The terminated survey shouldn’t be discoverable since it is the work of a non-testifying expert.
• Giving an expert eight weeks of lead time to design and conduct the survey builds in time to start over if needed. However, some surveys can be done very quickly if necessary (i.e., within a few days).
• An expert’s critique of an opposing party’s survey costs in the range of $10k to $30k.
• Flaws generally do not lead to a survey’s exclusion; rather, they tend to diminish its weight.
• The most common reasons for exclusion are the use of leading questions and surveying the wrong universe of consumers (e.g., only surveying consumers in Seattle to determine consumer attitudes throughout Washington).

On Tuesday, Graham & Dunn will host the first INTA roundtable of 2009. The topic’s a good one — “Survey Evidence in Trademark Disputes.” Here’s what INTA says we will cover:

• Reviewing and analyzing surveys from past trademark cases;
• Finding out what is required in using surveys as evidence; and
• Learning strategies and techniques for developing proper surveys.

In addition, special guest Deborah Jay, Ph.D., will join us. Dr. Jay is CEO of San Francisco-based Field Research. Her experience as a testifying expert will provide extra insight into the strategic use of survey evidence in trademark cases.

Here’s a link to the discussion outline. I think INTA wants folks to have already registered, so if you have, I hope to see you there!

Hat’s off to my partner Kathleen Petrich for organizing!

As recently discussed, I’m a fan of the Stanford IP Litigation Clearinghouse. However, in working on my annual Western District Statistics post, I noticed a large discrepancy between the numbers that PACER indicates and the numbers the Clearinghouse counts. For example, the Clearinghouse states that 28 trademark cases were filed in the Western District last year. PACER puts the number at 51. The 2008 cases the Clearinghouse did not count were spread fairly evenly throughout the year, so it does not appear to be a matter of its database simply not being up-to-date. Most of the missing cases were both opened and closed in 2008, though not all fit that pattern. I can’t figure out why 23 cases show up in PACER but not the Clearinghouse, since I imagine PACER is the source of the Clearinghouse’s data. Perhaps someone from the Clearinghouse can shed some light. This is no knock against the Clearinghouse, which I view as an ambitious project that already provides a lot of value. (Among other things, it provides a docket sheet for all cases included in its database free of charge.) However, its database does not appear to be complete. Users should be aware of this apparent shortcoming. Hopefully, it will be corrected in the near future.

On Jan. 20 the Ninth Circuit considered whether colorable tribal court jurisdiction existed over a nonmember’s federal trademark claims against tribal defendants for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere.

Philip Morris USA, Inc., brought suit against King Mountain Tobacco Co., Inc., in the Eastern District of Washington. Philip Morris’ packaging bears a distinctive “red roof” design, featuring two red triangles filling the top corners of its otherwise white package such that there is a white peak with red above it. King Mountain’s cigarette packages feature an image of a snowcovered mountain against a red backdrop.

Philip Morris alleged likelihood of confusion with aspects of its package design and likelihood of dilution. King Mountain argued that its packaging depicts Mt. Adams — known as “Pahto” in the Yakima Nation — a mountain of spiritual and cultural significance to the Yakima Tribe and that any resemblance to Philip Morris’ packaging is inadvertent and incidental.

In response to Philip Morris’ effort to enjoin King Mountain’s continued use of its packaging, King Mountain argued that Philip Morris had failed to exhaust tribal remedies, and that it had not shown a likelihood of success on the merits of its Lanham Act claims. Eastern District Judge Robert Whaley denied Philip Morris’ requested injunctions and granted King Mountain’s motion to stay the federal case to allow the Tribal Court to address its own jurisdiction.

Philip Morris appealed. Applying principles of tribal jurisdiction, the Ninth Circuit found that the Yakima Tribal Court did not have colorable jurisdiction over King Mountain’s tribal action for declaratory relief insofar as it implicates Philip Morris’ federal trademark infringement claim against King Mountain and its principals, members of the Yakima Tribe. Thus, exhaustion of tribal remedies would serve no purpose other than delay.

The Ninth Circuit reasoned: “[S]urely the district court is not suggesting that the tribe would have regulatory authority over federal trademark registration. Significantly, Philip Morris holds federal trademarks and trade dress registered under the Lanham Act, trademarks whose validity King Mountain apparently challenges.”

Framed this way, the Ninth Circuit reversed and remanded the Eastern District’s order, finding the issue was one properly decided in federal court applying federal law.

The case cite is Philip Morris USA, Inc. v. King Mountain Tobacco Co., Inc., No. 06-36066, __ F.3d. __, 2009 WL 115589 (9th Cir.).

MILWAUKEE, WISC. - That’s right, you heard it here first. The big news is I’m in Milwaukee preparing for a trial that starts on Monday. I expect to be here for two weeks. That means my posting will be a little less frequent between now and then, though I’ll post something if I get the chance.

By the way, Milwaukee’s nice — kind of a little Chicago, complete with river and partially-frozen Lake Michigan (pictured above, from my hotel room). I can’t resist reporting the local news predicts a high next Thursday of -8 degrees. And that’s the high, folks.

Hope all’s well where you are. Stay warm.