Seattle Trademark Lawyer

Microsoft Corp. announced yesterday it filed 21 federal lawsuits against alleged software pirates. The suits are filed in Georgia, California, Massachusetts, Ohio, South Carolina, Tennessee, Texas, Virginia, Oregon, Arkansas, Colorado, Florida, Illinois, and Washington. The Washington suits are against Twilight Computers of Burien and 1 Source Computer Solutions of Vancouver (complaint here).

Microsoft said that eight of the lawsuits are against companies with whom it previously settled. That’s a big deal if the defendants agreed to permanent injunctions, which I assume they did.

The company said at least some of the defendants loaded unlicensed or non-genuine software onto computer hard-disks and then sold the computers to unsuspecting customers.

As Microsoft put it: “These legal actions are about protecting Microsoft’s customers from falling victim to some dealers who operate a business model of peddling pirated and counterfeit software. Some companies previously involved in these lawsuits have discontinued their illegal business practices; others have not. The cases announced today are indicative of the need to ensure that dealers cease their illegal activity so that customers can be sure that they purchase genuine, fully licensed software.”

The Washington case cites are Microsoft Corp. v. Twilight Computers, No. 08-902 (W.D. Wash.) and Microsoft Corp. v. 1 Source Computer Solutions, No. 08-5368 (W.D. Wash.).

On June 5, the Southern District of New York decided that Wolfe’s Borough Coffee, Inc.’s use of MR. CHARBUCKS and MISTER CHARBUCKS in connection with coffee was not likely to cause dilution by blurring or dilution by tarnishment of Starbucks Corp.’s famous STARBUCKS marks. This is the same result the court reached in 2005 under the Federal Trademark Dilution Act. In 2007, the Second Circuit vacated the decision (STL post here) in light of the new standards established by the Trademark Dilution Revision Act, paving the way for last week’s decision.

The court framed the issue as follows: “…Plaintiff must demonstrate that Defendant’s use of its ‘Mr. Charbucks’ and ‘Mister Charbucks’ marks for one of its coffee blend products creates associations arising from similarity to the Starbucks marks that are likely to impair the distinctiveness of the Starbucks mark or tarnish that mark by harming its reputation.

On Starbucks’ blurring claim, the court found: “…Starbucks’ marks are distinctive and famous. Thus, several of the specified factors weigh in its favor. However, Defendant’s marks, as used in commerce, are not substantially similar to Plaintiffs’ Starbucks marks, and the association Defendant intended to evoke in consumers’ minds through its playful dissimilar mark is not one that would be likely to dilute the Starbucks marks as unique identifiers of Starbucks’ goods and services. Rather, it is dependent on an identification of those marks with Starbucks’ own products and a characteristic of the taste of those products. The record is, therefore, insufficient to demonstrate the requisite likelihood that the association arising from the similarity of the core terms is likely to impair the distinctiveness of Starbucks’ mark, and Plaintiff is not entitled to injunctive relief under that statute.”

Does that sound right to you? Let’s say I used to think solely of Starbucks when I encountered STARBUCKS coffee, but now after encountering CHARBUCKS coffee, I think of both Starbucks and Wolfe’s Borough Coffee. Isn’t that classic dilution by blurring?

As for dilution by tarnishment, the court found in a footnote that Starbucks’ own survey failed to support its claim:

“In its December 2005 Decision, the Court noted that the survey used the open-ended question ‘If the name ‘Charbucks’ were used for a type of coffee, how would you describe the coffee?,’ and found that only 6.3% of the survey respondents provided what was characterized as a ‘generally negative’ response.’ Further, while 15.2% of respondents described a hypothetical coffee named Charbucks as ‘charred,’ ‘burnt,’ ‘bitter,’ or ‘smokey,’ and 34.9% described the hypothetical flavor as ‘strong,’ ‘dark,’ ‘black,’ or ‘rich-flavoured,’ many of those same respondents expressed a favorable view of a coffee with these qualities.”

Given these stats, I agree that Starbucks didn’t make the grade on dilution by tarnishment.

The case cite is Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., No. 01-5981 (S.D.N.Y. 2008) (Swain, J.).

Props to the Las Vegas Trademark Attorney for blogging this earlier today.

Not to tempt fate, but I couldn’t help but notice that the U.S. Olympic Committee has not flooded the Western District of Washington with lawsuits over Seattle-area companies’ use of OLYMPIC in their names and trademarks. (See STL posts on this issue from August 12, 2007; Jan. 10, 2008; Jan. 13, 2008; and Jan. 28, 2008). In fact, the USOC has not filed a single lawsuit in the Western District despite hundreds of Washington businesses making use of the word that has caused the USOC to send letters to some demanding that they cease and desist such use. Its heavy-handed demand letters notwithstanding, the USOC seems to have a lighter touch when it comes to filing suit. Knock on wood.

Fellow Seattle law blogger Sarah Bird, general counsel of Seattle search engine optimizer SEOmoz, Inc., tipped me off in her post this week about her company’s efforts to oppose a California resident’s application to register “SEO” as a trademark with the Patent and Trademark Office.

According to PTO records, in May 2007, Jason Gambert filed a use-based application for the mark in International Class 35 for “marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers.”

SEOmoz and two other companies then filed notices opposing the application. SEOmoz’s notice of opposition summarizes the examining history as follows:

“In August 2007, the reviewing attorney correctly refused the application on the grounds that ‘SEO’ is (1) generic and (2) merely descriptive of the Applicant’s services. The reviewing attorney cited multiple examples of ‘SEO’ being used in relation to computers and Search Engine Optimization.

“Between September 2007 and January 2008, Gambert used select, unreliable internet sources to persuade the reviewing attorney that ‘SEO’ is commonly used to describe the ‘process’ of search engine optimization and not marketing services. He also amended his application to remove all traces of search engine optimization services. Gambert also greatly generalized the description of his goods and services….

“The reviewing attorney approved the application for publication in January 2008. Publication began on March 25, 2008.” 

Mr. Gambert did not file an answer, leading SEOmoz to move for a default judgment. Mr. Gambert did, however, file what he characterized as a “motion to strike” (not available online), which led the TTAB this week to grant him until July 15 “to file an answer herein which complies with Fed. R. Civ. P. 8.” 

Mr. Gambert states his position in an open post to the “Search Engine Marketing Community” here. In short, he hopes to “establish an approved SEO process, which can be sold as an ‘SEO service,’” which he likens to the Generally Accepted Accounting Principles to which accountants subscribe.

He says: “My goal in owning the trademark for the word SEO is not to try to force people to change their SEO process, but rather, prevent companies from selling ‘SEO’ as a service under false pretenses.”

Additional coverage of the dispute from the SEO community here, here and here.

The case cite is SEOmoz, Inc. v. Gambert, Opposition No. 91183449 (TTAB). The related oppositions are styled as JE Hochman & Associates, Inc. v. Gambert, No. 91184116 (TTAB), and Drysdale v. Gambert, Opposition No. 91183740 (TTAB). 

In October 2004, Microsoft Corp. filed suit against John Does 1-50, d/b/a Myauctionbiz.biz, for alleged “unauthorized use of Microsoft’s computers and computer systems to send millions of misleading and deceptive unsolicited commercial e-mail messages, or ‘spam,’ in violation of federal and state law and Microsoft policies.”

Eventually, Microsoft identified a number of the unknown defendants, including Saul Waizer, a Florida resident, who Microsoft alleged was involved as an affiliate in the spam operation.

Mr. Waizer did not answer Microsoft’s complaint and in November 2006, a default judgment was taken against him in the amount of $57,000.

The news here is that Microsoft appears to have collected the full amount of this judgment. On May 28, 2008, it filed a Full Satisfaction of Judgment Against Saul Waizer stating:

“Microsoft … hereby acknowledges receipt of full satisfaction of the judgment against Judgment Debtor/Defendant Saul Waizer under the Judgment entered by the Court on November 27, 2006 …, along with all interest that has accrued on the judgment and any related fees and costs.”

Collecting on a default judgment? Against an out-of-state spammer? That’s remarkable!