Seattle Trademark Lawyer

The Los Angeles Times today features an LA-based lawyer on the hunt for fake designer jeans.

The lawyer likens his job to playing “Whac-a-Mole.”

The statistics bear that out: the International Anticounterfeiting Coalition estimates the global trade in counterfeit goods has grown from $5.5 billion per year in 1982 to $600 billion today.

And the Los Angeles Police Department only has six detectives assigned to finding counterfeit merchandise. The division seized $17 million in counterfeit goods this year and typically busts only three to four sellers per month. (I’m sure the numbers are even more modest in smaller markets like Seattle.)

That puts a big burden on the manufacturers themselves. True Religion Brand Jeans, the designer featured in the article, says it has “tentacles spread through major metropolitan areas” looking for fakes.

The article says: “Investigators aim to go up the supply chain. Companies typically sue the merchants, who then give up the names of their suppliers. Getting to the suppliers’ suppliers is the next big step.”

“But it’s hard to catch the people at the top….”

For years, True Religion’s attorney has been looking for a supplier he calls the “Big Fish” that informants tell him sells $7 million in counterfeit jeans per year.

“With this kind of investigation you really don’t know who’s behind it, but as you start bringing more people into the lawsuit, you find out more,” he says.

Back from a few days in the cool city pictured above, I came across a Sept. 1 New York Times story on trademark filings with the U.S. Patent and Trademark Office.

The gist is the Web is driving marketing, so it’s also driving brands.

Apparently, filings last year hit a record: 394,000 — the most since the dot-com go-go days.

Nice to read this: “[S]ome legal experts say trademark issues may take on a higher profile, fueled by the escalating value of brands in general and trademark holders increasingly trying to assert their rights, especially on the Internet.”

Assert away!

The article also has a nice rundown on recent developments in trademark law — from cybersquatting to keyword advertising to modernizing the PTO.

Thanks to Jefferson Coulter of Seattle’s Copyright or Wrong for sending this my way.

Why didn’t Washington State’s Congressional delegation prevent the Ted Stevens Olympic and Amateur Sports Act from granting a monopoly over the word “Olympic” without carving out a broader exception for Washington-based Internet sales?

That’s the question Seattle-area blogger Trish Wareing recently asked.

I think it’s a darn good one.

As previously discussed, the statute excepts trade names and trademarks from the United States Olympic Committee’s monopoly over the term when “it is evident from the circumstances that such use of the word ‘Olympic’ refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998, and not to the corporation or any Olympic activity” and “such business, goods, or services are operated, sold, and marketed in the State of Washington west of the Cascade Mountain range and operations, sales, and marketing outside of this area are not substantial.”

The last phrase is what’s unhelpful: “and … sales, and marketing outside of this area are not substantial.” Nowadays, everyone markets everywhere through the Internet. Couldn’t Washington’s legislators have figured that out when the statute was revised in 1998, and nipped this problem in the bud?

Ms. Wareing writes:

“As a Washington State resident and small business owner, I’m outraged that Washington State’s Congressional delegation was asleep at the wheel when this little ‘stay in Washington State’ clause was allowed to slip through unchallenged in the Stevens Act. Western Washington State is a tech savvy place. It is the home of Amazon.com (not to mention Microsoft and innumerable other dot coms, past and present). Was the value of internet marketing (especially for a growing small business) that obscure in 1998? If so, how come Amazon CEO Jeff Bezos was Time’s Man-of-the-Year in 1999?”

That’s a great point. Failing to foresee the havoc the statute would cause Washington’s many Olympic-named businesses when the statute was first enacted in 1978? Understandable.

But failing to foresee it when the statute was revised in 1998? Unforgivable. 

Clever graphic: BlogFromAHermit.com

On Aug. 22, the American Automobile Association filed a trademark infringement suit in the Western District against Tacoma-based AAA Insurance Inc.

The mark at issue? Take a wild guess.

Plaintiff registered AAA as a trademark in 1967 for “automobile association services”; AAA LIFE INSURANCE COMPANY in 1978 for “underwriting of life and accident services”; AAA GUARANTEED LIFE in 1989 for “life insurance underwriting services”; and AAA and Design in 1998 for “adjusting and collecting insurance damage claims” and “insurance brokerage services.”

Plaintiff complains that defendant’s use of AAA in connection with competing insurance services, and the use of its aaainsure.com domain name to solicit customers, has caused actual consumer confusion and is likely to cause additional consumer confusion.

Defendant has not yet answered plaintiff’s complaint.

AAA started as a weak trademark but through the magic of secondary meaning and incontestability, I would say it’s now quite strong.

The case cite is American Automobile Association v. AAA Insurance Inc. (No. 08-5515).

On Aug. 13, the California Supreme Court declined to consider an appeal involving ex-members of The Doors and the damages they were found to have caused by touring in 2003 as The Doors of the 21st Century, Law.com reports.

The article states the decision (or lack thereof) cemented the $3.2 million in damages that keyboardist Ray Manzarek and guitarist Robby Krieger must pay drummer John Densmore, the parents of the deceased lead singer Jim Morrison, and the parents of Mr. Morrison’s deceased wife.

Messrs. Manzarek and Krieger could be liable for another $2 million in attorney’s fees. An appellate court is considering their appeal that the award was excessive.

In the suit, Mr. Densmore said he didn’t object to Messrs. Manzarek and Krieger playing The Doors songs, as long as they didn’t call themselves The Doors or use the former band’s logo and imagery.

Messrs. Manzarek and Krieger made use of The Doors’ name, logo, and imagery anyway in 2003 when they went on tour with Ian Astbury, former lead singer of The Cult. The tour netted $3.2 million, none of which went to the plaintiffs.

Their doing so was found to have breached the band’s written contract requiring unanimity on business decisions.

In March, the Ninth Circuit found in Mr. Manzarek’s favor in a bad faith claim stemming from his insurers’ refusal to pay the plaintiffs’ damages award. (STL post here.)