Seattle Trademark Lawyer

The King County Bar Association’s Bar Bulletin published a piece this week on “niche law blogs.” STL got a nice mention, along with the Seattle-based Trial Ad (and other) Notes and Lawlady’s Divorce Blog. 

Interestingly, the Lawlady’s most recent post is entitled “Trademarking your Brand, Lawlady Didn’t.” It’s about how she regrets not seeking trademark advice earlier — now that another “Lawlady” has emerged and begun marketing her brand.

A colleague passed on a new application for MONEYTAX. She said it had the longest goods and services description she’d seen in a while. She’s not kidding. It has hundreds of parenthetical phrases describing the applicant’s administration services, advisory services, assistance services, business services, business consulting services, business investigation services, business management services, business risk management services, consulting services, financial records services, and many, many others. In alphabetical order. Ad nauseum.

This kitchen-sink approach raises several issues. First, a U.S. trademark owner does not gain legal real estate simply by grabbing as many categories as the Patent and Trademark Office will allow. Trademark ownership here arises through use, not registration. 

Second, a trademark owner need not specify every last category used in connection with the mark. After an owner establishes its rights, it is protected against junior uses that create a likelihood of confusion. That means a competitor likely can’t register MONEYTAX (or a similar mark) in connection with “business advice and Information about a corporate executive whose wealth amounts to at least a billion dollars, pounds, or the equivalent in other currency” if a senior user has already registered MONEYTAX in connection with “business advice and Information about a corporate executive whose wealth amounts to at least a million dollars, pounds, or the equivalent in other currency.” (To be safe, the MONEYTAX applicant seeks to register both categories of service.) Listing every last little variation of good or service provided seems like overkill. Correction: it is overkill.

Third, a kitchen-sink applicant sets itself up for having its registration cancelled on grounds of fraud. In the future, if a competitor determines that the registrant is not making actual use of even one of the hundred-plus categories of goods or services listed, the competitor may be able to have the entire registration cancelled. If it’s important to obtain a registration, it’s got to be equally important to maintain it. I can think of no good reason why an applicant should not split up a laundry list of goods and services into different applications. Sure, the applicant has to pay additional filing fees, but if one registration becomes vulnerable to challenge, the others won’t be affected. 

My advice? (As if you wanted more.) Keep it simple. Long goods and services descriptions may look impressive. But in actuality, they cause a lot more harm than good.

The end has come for the false advertising dispute between competing makers of magnetic toy construction sets.

On Dec. 5, Western District Judge James Robart granted summary judgment in favor of the defendant, dismissing the remaining claim in PlastWood SRL v. Rose Art Industries, Inc.

STL readers may recall that PlastWood brought suit over Rose Art’s MAGNETIX construction sets. One claim was that Rose Art’s use of the phrase “Ages 3 to 100” on its packaging misrepresented that its pieces are safe even for small children. In November 2007, the court dismissed the claim on the ground it was preempted by safety rules set by the Consumer Product Safety Commission.  

The remaining claim stemmed from Rose Art’s statement that its pieces can form “500 designs.” PlastWood alleged the claim constituted false advertising because many of the structures collapsed under their own weight.  

In discovery, PlastWood identified only three structures that could not be built as advertised: the “airplane,” the “building,” and the “sphere.” In response, Rose Art hired an expert “builder of construction toys” who constructed all three structures on videotape using only the parts included in Rose Art’s toy sets and without using any glue or other adhesive. The court found this was enough to defeat PlastWood’s claim.

“PlastWood has not conducted any studies to determine whether any consumers were actually deceived by Rose Art’s allegedly false advertising. At oral argument, PlastWood confirmed that it is not pursuing a false advertising claim based on misleading advertisement but that it had limited its theory for liability to a claim of literal falsity. PlastWood therefore correctly contents that if the statement at issue — i.e., whether the structures can be built as advertised — is literally false, the court must assume that it actually mislead and confused consumers, without requiring any evidence of such deception from PlastWood. While PlastWood’s contention is correct, as discussed below, it does not have any evidence that Rose Art’s advertisement is literally false and cannot therefore rely on these cases in arguing that it need not show actual deception.”

The court added that PlastWood failed to establish a genuine issue of material fact in support of its assertions that the three structures could not be built.

“In the face of video evidence that each structure can be built, PlastWood now contends that Rose Art’s expert modified the structures while building them and that they are not identical to those depicted on the Magnetix toy box. The court has reviewed the videos provided by both parties and compared those to the structures depicted on the Magnetix packaging and finds that there are no discernible differences. More importantly, the court finds that no reasonable jury could conclude that the structures on the Magnetix box cannot be built as represented on the box.”

The case cite is PlastWood SRL v. Rose Art Industries, Inc., No. 07-458 (W.D. Wash. Dec. 5, 2008) (Robart, J.).

On Dec. 3, Microsoft filed 13 suits in the Western District against alleged counterfeiters.

In a press release distributed the next day, the company said the suits were part of a worldwide crackdown against counterfeiters that includes 63 actions in 12 countries.

The suits target online auction sales of a fictitious “Blue Edition” version of Microsoft products, along with allegedly counterfeit copies of Windows XP software.

In one of the suits, Microsoft Corp. v. Sandoval, Microsoft sued a seller of purported Microsoft products on eBay. Microsoft alleges its investigators purchased Office 2007 and Office 2003 from defendant’s company in an online auction. After analyzing the software it purchased, Microsoft claims it determined the software was counterfeit. Microsoft says it notified the defendant of its belief, but defendant continued selling counterfeit product. Microsoft claims violation of the Lanham Act and Copyright Act, constructive trust, and accounting.

Microsoft filed its cases in the United States (16), Germany (12), France (12), the United Kingdom (7), Argentina, Brazil, Canada, Columbia, the Dominican Republic, Japan, Mexico, and New Zealand.

The International Trademark Association applauded the suits. “Legal actions like these send an important message around the world that intellectual property infringement, wherever it occurs, is a global crime that endangers consumers as well as brand owners,” it said.

The case cite (one of 63) is Microsoft Corp. v. Sandoval, No. 08-1739 (W.D. Wash.).

Please forgive a slight slowdown in my posting frequency over the next couple of months. I’ve got a bunch of pre-trial work to do in December, an out-of-town trial for much of January, vacation (thankfully) for the first week of February, and I start teaching trademark law at the University of Washington in February and March.

I expect to post plenty of new stuff between now and then. I’ll just be mighty busy.