Seattle Trademark Lawyer

DUNKIN’ DONUTS, POTSDAMER PLATZ, BERLIN - As expected, I’ve spent much quality time with my fellow trademark lawyers at the 130th annual International Trademark Association’s annual meeting here in Berlin. Consequently, I haven’t had much time to post. That will change once I return home. I’ve got an INTA recap and some photos from the “Meet the Bloggers IV” gathering I’m looking forward to posting — by the end of the Memorial Day weekend at the latest. Until then, thanks for your patience. For those who came to INTA, safe travels home!

Slight blogging slowdown ahead as I travel to Berlin to join thousands of other trademark lawyers from around the world at the 130th annual meeting of the International Trademark Association. What a conference! Please say hello if you see me there.

I will definitely be at the “Meet the Bloggers IV” gathering discussed here. All trademark law bloggers, readers, and friends are welcome. If you want to meet up some other time, you also can reach me on my BlackBerry via the STL “Email me” link at right (or at matkins at grahamdunn.com). I hope to see you there!

By popular demand, here are the jury instructions in the Adidas America, Inc. v. Payless Shoesource, Inc. case. All 60 pages of them. The ten pages of instruction on dilution start on page 38.

Besides a reader’s request for the instructions on dilution, everyone is commended to check out the entire instructions. This case was the full meal deal — it had instructions on trademarks, trade dress, trademark infringement, likelihood of confusion, unfair and deceptive practices, dilution, and damages. This is good stuff.

The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).

Interesting to see juror notes become a part of the docket in the recently-decided case of Adidas America, Inc. v. Payless Shoesource, Inc. As many will recall, an Oregon jury last week found Payless’ use of two- and four-stripe designs for athletic shoes infringed Adidas’ three-stripe design for its competing athletic shoes.

In an undated note to District of Oregon Judge Garr M. King, a juror asked: “If this case was found for adidas, would adidas own 2 and 4 stripes?”

The court’s response: “The legal ownership of two and four stripes, generally, is not an issue in this case. The issues for consideration involve only the shoes accused in this case.”

This guidance undoubtedly is correct. But for a litigator it’s always fascinating (and, I’ll admit it, sometimes scary) to see what goes through jurors’ minds. This was important enough a question for a juror to ask — and the response essentially was an instruction that the juror was barking up the wrong tree. I’ve participated in mock trials and seen mock jurors in deliberation latch onto something that neither side argued and that had no basis in the law. Imperfect though our system is, you just hope and ultimately trust that the jury’s collective wisdom will figure out on whose side justice lies.

The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).

After the Settlement: Portions of Blue Nile’s and James Allen’s 
“BUILD YOUR OWN RING” and “Design Your Own” Web pages

On May 8, Western District Judge Thomas Zilly dismissed Blue Nile, Inc.’s lawsuit against competing online jeweler James Allen Diamonds, Inc. and JamesAllen.com LLC based on the parties’ stipulation. The complaint had alleged that defendants’ use of BUILD YOUR OWN RING as a trademark infringed Blue Nile’s prior common law rights in the same mark. Defendants had denied Blue Nile’s allegations and asserted in counterclaims for declaratory judgment that their use of the words did not infringe Blue Nile’s trademark rights and that BUILD YOUR OWN RING was invalid because it did not function as a protectable trademark.

The terms of the settlement are not known to STL, but it appears that defendants have changed their alleged use of “Build Your Own Ring” to “Design Your Own” and “Design Your Own Ring” on their Web site. Plaintiff continues to use BUILD YOUR OWN RING on its Web site.

The case cite is Blue Nile, Inc. v. James Allen Diamonds, Inc., No. 07-1443 (W.D. Wash.) (Zilly, J.).