Seattle Trademark Lawyer

John Welch today reports on Seattle-based Fine Spirits Distribution, LLC’s loss on summary judgment in the Trademark Trial and Appeal Board opposition proceeding that E. & J. Gallo Winery brought objecting to Fine Spirits’ application to register FALCON for distilled spirits. Gallo successfully argued that mark was likely to cause confusion with Gallo’s FALCON RIDGE trademark for wine. Central to the decision was Fine Spirits’ failure to respond to Gallo’s requests for admission (or to withdraw or amend those admissions).

As the TTABlog explains:

“These admissions established that the involved goods are ‘related and competitive,’ that the goods are ‘impulse items, sold to customers at retail,’ that such consumers ‘will assume they are related,’ and that Gallo has priority of use. The Board therefore granted the motion for summary judgment.”

In my experience, requests for admission usually are most effective when they go unanswered. Which sometimes happens.

The case cite is E. & J. Gallo Winery v. Fine Spirits Distribution, LLC, Opposition No. 91175854 (May 22, 2008) (not precedential).

On May 27, Gucci America, Inc., filed suit against Cassandra Black, Cece’s Bargain Boutique, CecesBargainBoutique.com, and ten unknown persons for selling allegedly counterfeit Gucci merchandise.

The complaint alleges that Ms. Black is a resident of Kent, Wash. The defendants’ Web site describes Cece’s Bargain Boutique as a seller of “replica” merchandise (partial screen shot below).

The John Doe defendants are described as persons who reside or conduct business in this judicial district who are either “directly and personally contributing, inducing and engaging in the sale of counterfeit products” or are “directly engaging in the sale of counterfeit products” as “partners or suppliers to the named Defendants.”

The complaint alleges that “Gucci has discovered the Defendants are promoting and otherwise advertising, distributing, selling and/or offering for sale counterfeit products, including at least handbags and wallets bearing trademarks which are exact copies of one or more of the Gucci Marks….”

The defendants have not yet answered Gucci’s complaint.

The case cite is Gucci America, Inc. v. Black, No. 08-830 (W.D. Wash.) (Lasnik, J.).

On May 28, a Western District jury found for the defendant Web development vendor in a case Seattle-based law firm The Christiansen Firm brought against Chameleon Data Corp. and its president, Derek Dohn. The plaintiff had accused defendants of transferring ownership of plaintiff’s four domain names to themselves without authorization in order to get leverage over plaintiff in a dispute over the defendants’ bill. (For more background, see STL posts on May 5, February 20, and February 14.)

In a five-day trial, the jury found for defendants on plaintiff’s breach of fiduciary duty claim and on defendants’ counterclaim for breach of contract. However, the jury did not award the defendants any damages on that claim.

The court awarded defendants costs but did not address their argument that they should receive attorney’s fees for prevailing in an “exceptional” case under the Lanham Act based on the court’s previous order granting them summary judgment because the four domain names at issue (thechristensenfirm.com, thechristensenfirm.net, christensenfirm.com, and cc-lawfirm.com) were either generic (cc-lawfirm) or descriptive (The Christensen Firm).

After plaintiff rested, the court granted defendants judgment as a matter of law on plaintiff’s claim for conversion but declined to do so on plaintiff’s claim for breach of fiduciary duty.

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash.) (Zilly, J.).

 
Confusingly similar? Likely to cause dilution?

Sorry for the delay, but this hit the media while I was at INTA…. Starbucks Corp. has been granted an  extension of time to oppose the Rat City Rollergirls, LLC’s application to register its design mark used in connection with “Coordination of recreational sporting opportunities for individuals who wish to participate in team league sports; Promoting sports competitions and/or events of others.”

The Rat City Rollergirls are Seattle’s roller derby league.

The Seattle Post-Intelligencer quotes a Starbucks spokesperson as saying: “We haven’t opposed it — we have asked for more time to look at it.” She added: “There’s a lot of room for us to work together to find a mutually beneficial conclusion here.”

The paper also quotes Rat City’s lawyer as saying: “The Starbucks lawyer said that the girls on the roller derby team look scary, and she didn’t think, in her own personal opinion, (that) Starbucks would want to associate themselves with the scary characters of Rat City Rollergirls.”

Starbucks now has until July 16 to oppose the application.

Other media reports here, here, and here.

Meet the Bloggers IV: Trademark law bloggers of the world unite!

It’s hard to recap a four-day conference involving thousands of trademark lawyers from around the world. Despite my nagging jet lag, I’m still energized. For me, this year’s INTA transcended the usual meeting and greeting. Maybe it’s because I’ve gone to a few of these now and the folks I met for the first time three years ago in San Diego are now becoming good friends. But I started thinking that INTA’s annual meeting could be something of an agent of peace. Take the Meet the Bloggers event (photo above), for example. That night, I met folks kind of like me from England, Italy, Spain, South Africa, the United States, and many points in between. Our own United Nations. The night ended, quite late, over burgers and beer with old and new friends from the States, Holland, and Australia. I thought: this is what it’s all about. Sure, INTA is about making business contacts. But the best business contacts are friends. I’m already looking forward to seeing my friends again next year, when INTA comes to Seattle. Here’s to a peaceful year between now and then.

Photo credit: Tribbey Thornton. Thanks again to this year’s host Jeremy Phillips (pictured in front).