Seattle Trademark Lawyer

I’m happy to report that Thomson-West has published “Expert Witnesses: Intellectual Property Cases” (table of contents; index).

I wrote the first two chapters: “Disclosing Expert Witnesses Under the Federal Rules: an Overview” and “Trademark Experts.”

My law partner, Kathleen Petrich, wrote the chapter on patent experts. Mark Lee of Manatt, Phelps & Phillips, LLP, wrote the chapter on copyright experts. Melvin Jager of Ocean Tomo, LLC, wrote the chapter on trade secret experts.

I can safely say the book fulfills a clear need in the market for intellectual property reference books. There just isn’t much written about the nuts-and-bolts practicalities of using experts in intellectual property cases. The trademark chapter covers typical subject areas in which expert testimony is offered, survey evidence, and why experts are excluded. It also includes sample expert reports and testimony.

A lot of Saturdays and Sundays went into my part of the book. I’m glad it’s done and hope folks will find it useful.

Thomson-West has priced it at $200.

In this down economy, there’s at least one outfit hiring — the federal government!

The U.S. Patent and Trademark Office is looking for two administrative law judges to serve on the Trademark Trial and Appeal Board. Here are highlights from the job posting. No surprises to trademark practitioners:

“An Administrative Trademark Judge of the TTAB exercises original jurisdiction in the USPTO in inter partes proceedings arising under the Federal trademark registration statutes, serving in a capacity similar to that of a trial judge, conducting interlocutory proceedings, hearing oral arguments, and rendering final decisions in cases involving adverse parties. The Administrative Trademark Judge also exercises appellate jurisdiction in deciding ex parte appeals from refusal of the trademark-examining attorney to register a trademark.”

The job requires at least five years of “comprehensive, professional trademark experience,” a law degree, and bar membership in a U.S. jurisdiction. It is “desirable” for candidates to have comprehensive knowledge of common and statutory laws, the Federal Rules of Evidence, and the Federal Rules of Civil Procedure.

The salary range is $138,380 to $158,500 per year.

In other employment news, the Eastern District is taking applications for a federal judgeship. The position replaces the spot vacated by Judge Fred Van Sickle, who has gone on senior status.

Plaintiff Boyds Coffee Co. is a Portland, Ore.-based company that sells coffee, sauces, and seasonings under its BOYDS registered trademarks.

Defendant Cowboy Boyd’s, LLC, is a St. Louis-based company that sells barbecue sauces, salsas, chili mixes, and coffee under its COWBOY BOYD’S trademark.

In 2007, the president of Boyds met the principal and sole employee of Cowboy Boyd’s at a trade show and informed him that Boyds had various trademarks incorporating the name “Boyd.” Cowboy Boyd’s later filed an application to register COWBOY BOYD’S for sauces, marinades and seasonings, but it was refused on the ground that it was confusingly similar to Boyds’ registered marks.

Two demand letters later, Boyds filed suit against Cowboy Boyd’s for trademark infringement in the District of Oregon.

Cowboy Boyd’s moved to dismiss based on lack of personal jurisdiction.

District of Oregon Magistrate Judge Dennis James Hubel found that “Boyds has made a prima facie showing that, before this action was filed, 1) Cowboy Boyd’s knew Boyds was engaged in a business similar to that of Cowboy Boyd’s and produced many of the same kinds of products as Cowboy Boyd’s, claimed trademarks using the name Boyds, and considered Cowboy Boyd’s marks to be infringing; 2) Cowboy Boyd’s knew its application for the trademark Cowboy Boyd’s had been refused by the USPTO on the ground that it was similar to the federally registered trademarks of Boyds; and 3) Cowboy Boyd’s knew that Boyds did business in Oregon.”

Cowboy Boyd’s argued that its contacts with Oregon were not sufficient to make the exercise of jurisdiction reasonable, and that Missouri would be an alternative — and far more convenient — forum for a defendant with only one employee who lives and works in Missouri.

The magistrate sympathized with Cowboy Boyd’s but denied its motion to dismiss.

It concluded: “Although Cowboy Boyd’s has articulated some considerations that weigh against the exercise of personal jurisdiction, particularly the argument that its purposeful direction of activities toward Oregon has not been extensive, Cowboy Boyd’s has not presented a compelling case that the exercise of jurisdiction would be unreasonable.”

On Sept. 30, District of Oregon Judge Robert Jones adopted the magistrate’s findings and recommendations.

The case cite is Boyds Coffee Co. v. Cowboy Boyd’s, LLC, 2008 WL 4461846, No. 07-1516 (D. Or.) (Hubel, M.J.).

The October issue of InsideCounsel magazine reports on ICANN’s plan to release an almost infinite number of new top-level domain names.

The Internet Corporation for Assigned Names and Numbers will expand beyond the 21 generic top-level domains currently available (such as .com, .net, and .org) by allowing companies to apply for the right to use any combination of characters as a top-level domain — paving the way for Amazon.com to become Amazon.amazon, for example.

ICANN adopted the changes in June. They will become effective as early as the second quarter of 2009.

New top-level domains could provide good branding opportunities for well-funded trademark owners. Each application will cost at least $100,000.

As the article puts it: “Companies could use their trademarks as TLDs. Dell Computer, for instance, could create a .dell TLD. Then potential customers seeking information on Dell laptops could go to www.laptops.dell or send their queries to info@laptops.dell. Job hunters could go to www.jobs.dell, while bargain hunters could check out www.coupons.dell.”

For those that see value in this, there still is the problem of cybersquatting. The article notes that eBay has registered 20,000 domain names under the limited set of generic top-level domains now available. When an infinite number of top-level domains become available, cybersquatters may drive trademark owners crazy.

The article quotes one lawyer who isn’t so sure that’s going to happen. “If a new TLD is .tires, Firestone should get domain names there, but Marriott, which has nothing to do with tires, doesn’t need to register all permutations of its name in that TLD.”

That remains to be seen. Maybe this is the wave of the future. But maybe Amazon.com is content being accessible at Amazon.com.

Plaintiff Melvin Ott sued Ingenix, Inc., in the Eastern District for listing him as a consultant in a proposal it made to the State of Montana. The State of Montana awarded Ingenix the bid — to develop fee schedules for the state — but Ingenix did not use Dr. Ott as a consultant. This, Dr. Ott argued, amounted to false association and unfair competition in violation of the Lanham Act.

Ingenix moved for summary judgment based on Dr. Ott’s alleged lack of standing to assert such a claim.

On Sept. 30, Eastern District Judge Fred Van Sickle granted the motion because the State of Montana, as the allegedly deceived entity, was not a party to the suit. Dr. Ott also admitted at oral argument that his professional identity was not the equivalent of a trademark, which is needed to make a false association claim 15 U.S. § 1125(a)(1)(A).

The court similarly rejected Dr. Ott’s reliance on Section 4 of the Restatement (Third) of Unfair Competition. Comment f to Section 4 states: “If the person falsely associated with the actor or with the actor’s goods or services is in competition with the actor, reliance on the misrepresentation by prospective purchasers may divert trade from that person to the actor. Subsequent dissatisfaction with the actor’s goods or services may also result in harm to the other’s reputation and good will.”

The court found that “Dr. Ott was not competing with Ingenix for the Montana project. To the contrary, he was willing, even eager, to help Ingenix obtain the project as long as Ingenix utilized his services. Consequently, he is not alleging a competitive injury. Nor is he alleging harm to his reputation: a point that he emphasized during oral argument. Absent either a competitive injury to his reputation, his claim does not fall within the scope of § 4 of the Restatement.”

The case cite is Ott v. Ingenix, Inc., 2008 WL 4459411, No. 07-201 (E.D. Wash. Sept. 30, 2008) (Van Sickle, J.).