Seattle Trademark Lawyer

Is KUMO going to be Microsoft’s new search engine brand?

That’s what some tech bloggers are wondering.

What’s cool is they confirmed their hunch by mining the WHOIS database of domain name registrations and found that Microsoft has amassed a number of KUMO-related domain names.

Seattle technology writer Todd Bishop dug a little deeper. In a post published yesterday in TechFlash, he noted that in August someone named Dascar Samira Facendo from Venezuela filed an intent-to-use application to register KUMO for “computer services, namely, providing search engines for obtaining data on a global computer network.”

That’s quite a coincidence, unless Sr. Facendo is somehow related to Microsoft.

I ran his name through the PTO’s TESS database for clues. I struck out — this is Sr. Facendo’s only application. 

I then ran his name through Google and found he is the administrative contact for the domain name edu.edu. The only page associated with that domain name has a picture and quote from Albert Einstein. The registrant is “Escolas e Universidades Chaves,” which Babel Fish tells me means something to the effect of “Key Schools and Universities” in Portuguese. Yes, they speak Spanish in Venezuela, but the only decent translation I could find was from Portuguese.

So is this gentleman a squatter? If so, how’d he know five months ago that Microsoft might become interested in this mark?

All of this raises more questions than answers. But they’re good questions.

I’m psyched bloggers are using our tools of the trade to get ahead of a story. This is exciting stuff.

Today, Western District Judge James Robart entered a Consent Judgment and Permanent Injunction in Pinkberry, Inc. v. Yoberry, Inc.

As STL readers may recall, the burgeoning Los Angeles-based frozen yogurt seller Pinkberry sued the Seattle-based frozen yogurt seller Yoberry for trademark infringement, alleging a likelihood of consumer confusion between the parties’ word marks and swirl designs.

The agreed order enjoins Yoberry from using its YOBERRY word mark, any other mark that uses the word “BERRY” in a non-descriptive manner, and any logo that consists of a swirl design.

Yoberry also agreed to destroy within 30 days all goods, apparel, merchandise, labels, signs, and packaging that display the subject marks.

I gotta wonder if the apparently-unrelated Yoberry of San Jose or Yo! Berry of Boston will suffer the same fate. Or Seattle’s Mooberry, as I’ve previously speculated.

N.B. I stopped by the shop (which was closed) on my way home from work. Yoberry appears to have taken down all signs of YOBERRY and now operates under the shortened name YO. Query whether this will satisfy Pinkberry, as the store appears to continue to display the swirl design mark to which Pinkberry objected.

The case cite is Pinkberry, Inc. v. Yoberry, Inc., No. 08-1360 (W.D. Wash. Dec. 1, 2008) (Robart, J.).

Another year! That’s right — two years ago this weekend I was tapping away at my first-ever post. Ron Coleman outted me before I was ready for prime-time. I’m still not ready, and this ain’t prime-time, but the rest is history. It’s been fun, and I’m grateful for those who’ve paid me a visit. Here’s to another year! Trademark owners out there: Keep suing! Courts out there: Keep those opinions coming!

On Nov. 17, the Western District transferred the cybersquatting case of eNom, Inc. v. Philbrick to the District of New Hampshire.

Judge Robert Lasnik took that step based on the first-to-file rule and in the interests of justice in light of a case between the parties in the District of New Hampsire that has been pending for 14 months. The case Philbrick’s Sports owner Daniel Philbrick filed against Bellevue-based domain name registrar eNom, originally focused on philbricksports.com and philbricksports.net — domain names that Mr. Philbrick claims are identical or confusingly similar to his trade name and trademark.

After filing suit, Mr. Philbrick stated his intent to seek leave to add claims involving a third domain name, philbrickssports.net. eNom then filed its action in the Western District for declaratory judgment that its registering, using, and trafficking in the third domain name does not constitute cybersquatting or violate trademark laws.

In deciding Mr. Philbrick’s motion to dismiss or, in the alternative, to transfer the action, the court found: “Despite the additional claim in this case [for declaratory judgment], the factual and legal issues in the two cases are overwhelmingly similar. Both cases involve liability under the [Anticybersquatting Consumer Protection Act], the Lanham Act, the New Hampshire Consumer Protection Act and New Hampshire common law. Both cases involve the legality of eNom’s registration, use and trafficking of the third domain name. An adjudication of the parties’ rights in one case would necessarily affect their rights in the other case. Moreover, substantially the same evidence will be presented in both actions. Both cases arise out of the same nucleus of operative facts, so simultaneous adjudication of both cases would waste judicial resources, multiply the proceedings, undermine judicial efficiency, and risk conflicting determinations of the parties’ legal rights.”

The court also found if it didn’t transfer the case based on the first-to-file rule, it would do so pursuant to 28 U.S.C. § 1404(a), which permits a court to transfer a civil action “for the convenience of the parties and witnesses [and] in the interest of justice … to any other district or division where it might have been brought.

“In this case, Philbrick suffered the alleged injury in New Hampshire. New Hampshire is Philbrick’s chosen forum, and he filed suit long before eNom filed this action. Philbrick’s witnesses are in New Hampshire, but eNom’s are in this district. Both parties assert claims under New Hampshire state law. Finally, transferring this action will likely result in consolidation of the two cases, so the issues will be tried efficiently, expeditiously, and in a cost-effective manner. Therefore, the relevant factors weigh in favor of transferring this case to the United States District Court for the District of New Hampshire.”

The case cite is eNom, Inc. v. Philbrick, 2008 WL 4933976, No. 08-1288 (W.D. Wash. Nov. 17, 2008) (Lasnik, J.).

On Dec. 15, I’ll be presenting on “Litigation Planning for Licensing Attorneys” as part of the Washington State Bar Association’s CLE on “Licensing Essentials” (brochure here). 

Here are some drafting and negotiating considerations for trademark license agreements I put together while gearing up for the program:

• Parties. Identifies the licensor and licensee.
• Description of mark. Identifies the licensed mark.
• Form of use. Identifies any restrictions on use of the licensed mark, including on the goods/services sold under the mark.
• Term. Identifies the duration of the agreement.
• Consideration/royalty. Describes the means in which the licensor will be compensated.
• Territorial scope. Identifies geographic restrictions on the licensed mark.
• Quality control. Clarifies licensor’s right and means to control quality of goods/services sold under the licensed mark.
• Self-renewing/non-self-renewing. Clarifies whether the agreement will automatically renew and, if not, the conditions under which the agreement will be renewed.
• Exclusive/nonexclusive. Clarifies whether the licensor may license the trademark to parties other than the licensee.
• Sublicensable/non-sublicensable. Clarifies whether the licensee may sublicense the mark and, if so, under what conditions.
• Assignable/non-assignable. Clarifies whether the parties may assign the agreement and, if so, under what conditions.
• Ownership of mark. (Favors licensor) Clarifies the licensee does not acquire any rights to the licensed mark, and may not challenge the licensor’s exclusive right to the licensed mark.
  
• Goodwill inures to licensor’s benefit. (Favors licensor) Clarifies that licensee’s use of the licensed mark benefits the licensor and does not give the licensee independent trademark rights.
• Right/duty to enforce trademark rights. Clarifies which party has the right to enforce the licensed mark, and which party has the duty to do so.
• Termination. Describes conditions in which the agreement may be terminated.
• Tax liability. (Favors licensor) Clarifies the licensee is liable for all taxes assessed in connection with the licensed goods/services.
• Indemnity. (Favors licensor) Clarifies the licensee must indemnify the licensor for tort and other claims third parties bring against the licensor in connection with the licensed mark.
• Insurance for tort claims. (Favors licensor) Clarifies the licensee must obtain adequate liability insurance to cover claims brought in connection with the licensed mark.
• Irreparable injury/right to obtain injunctive relief. Clarifies that any breach of the agreement will cause irreparable harm and the non-breaching party may obtain injunctive relief to cure the breach.
• Licensee’s ability to register domain names. Clarifies whether the licensee is permitted to register domain names containing the mark.