Seattle Trademark Lawyer

On May 5, hair salon franchisor Fantastic Sams Franchise Corp. filed suit in the Western District against rival hair salon franchisor Regis Corp. and other defendants. Fantastic Sams alleges that Regis convinced the corporation that owned the right to develop and grant third parties FANTASTIC SAMS franchises in the Seattle-Tacoma market to sell its salons to Regis. Fantastic Sams alleges that immediately after closing on its purchase, Regis began operating the salons under its HAIR MASTER brand but failed to remove all of the FANTASTIC SAMS marks from the premises. This, Fantastic Sams alleges, is likely to confuse consumers and amounts to service mark infringement and unfair competition.

Regis has not yet filed an answer.

The case cite is Fantastic Sams Franchise Corp. v. Regis Corp., No. 08-706 (W.D. Wash.).

On May 5, a nine-person jury in the District of Oregon found Payless Shoesource, Inc., liable for infringing Adidas America, Inc.’s three-stripe trademark and awarded Adidas $305 million. The jury found Payless infringed or diluted Adidas’ mark or trade dress by using a two- and four-stripe logo on its competing athletic shoes. Trial lasted 14 days. The jury deliberated for two days. 

An attorney representing Adidas said he thought it was the biggest verdict in a trademark infringement case ever. Collective Brands Inc., which operates Payless and Stride Right stores, said the award was “excessive and unjustified” and vowed to have it set aside or overturn.

An excerpt from the jury verdict form showing Payless’ shoes.
“Yes” indicates infringement.

From the jury verdict form:

“Section III.  Monetary Recovery

8) State the amount of actual damages that should be awarded to adidas, if any.

$30,610,179

9) Do you find that Payless acted willfully or in bad faith with regard to any of the claims in Question Nos. 1-7 above for which you answered ‘Yes’?

   X    Yes                No

10) If you answered ‘Yes’ to Question No. 9, state the amount of Payless’s profits that should be awarded to adidas, if any.

$137,003,578

11) Concerning a possible award of punitive damages, do you find that Payless has acted with malice, or in wanton and reckless disregard of the rights of adidas, or if deterrence is called for and Payless’s conduct is particularly aggravated?

   X    Yes                No

12) If you answered ‘Yes’ to Question No. 11, state the amount of punitive damages that should be awarded to adidas, if any.

$137,003,578”

The docket entry describes the result as follows: MINUTES OF SIXTEENTH DAY OF JURY TRIAL - Completed. Jury deliberations conclude. 9 juror lunches ordered from the Lotus Cafe. Jury verdict returned in favor of the Plaintiff. Jury polled and discharged. (See Verdict and Clerk’s List of Witnesses).

Gotta love the court’s “just the facts, ma’am” style.

Wow, what a result!

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

The case between a Seattle law firm and its Web development vendor goes to jury trial on May 21. STL readers may recall that the Seattle-based law firm The Christensen Firm sued Chameleon Data Corp. and its president, Derek Dohn, on the ground that defendants allegedly transferred ownership of plaintiff’s four domain names (thechristensenfirm.com, thechristensenfirm.net, christensenfirm.com, and cc-lawfirm.com) to themselves without plaintiff’s authorization, and shut down email service to addresses associated with plaintiff’s primary domain name, cc-lawfirm.com, in order to get leverage over plaintiff in a dispute over the defendants’ bill.

This interesting dispute became less of a trademark case on Jan. 18, when Judge Zilly dismissed plaintiff’s Lanham Act and Washington State cybersquatting claims on the basis that the plaintiff’s marks were either generic (cc-lawfirm) or descriptive (The Christensen Firm).

One trademark issue still alive at trial is defendants’ claim for attorney’s fees as an “exceptional case” under the Lanham Act. Defendants’ trial brief argues:

“In this case, it was obvious that the Alleged Marks were generic, yet Christensen pursued her bogus trademark claims with full force. This alone warrants a determination that this case is exceptional and an award of Defendants’ reasonable attorneys’ fees and costs.

“Further Christensen never even produced any credible evidence that she had used the Alleged Marks as trademarks. Christensen is her surname, as well as the surname of numerous other people, all of whom have the right to use that name in connection with their own businesses. “CC law firm” has a number of generic meanings as indicated above. During the course of this trial, Christensen never produced any evidence indicating the Alleged Marks were anything other than generic. She produced no evidence indicating consumers view either of the Alleged Marks as denoting her as the single source of services offered in connection with that mark. …”

Given the arguments made in its motion for reconsideration (which the court denied), plaintiff undoubtedly disputes these allegations, though it does not address the fees issue in its trial brief.

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

As STL readers may recall, on Dec. 28 Seattle-based Summit Capital Group, LLC, and affiliated financial services companies filed suit in the Western District against the Boston-based Summit Partners, LP, venture capital firm, seeking a declaration of non-infringement and non-dilution of the defendant’s SUMMIT PARTNERS trademark. Plaintiffs claimed they had used SUMMIT CAPITAL PARTNERS since at least 1986. Defendants’ demand letter to plaintiffs giving rise to the lawsuit claimed it had used SUMMIT PARTNERS, SUMMIT CAPITAL PARTNERS, and SUMMIT PARTNERS VENTURE FUND names and marks since 1984.

The parties apparently have settled their differences. On May 2, Summit Capital filed a Voluntary Notice of Dismissal with Prejudice seeking dismissal of its claims without fees or costs to any party. The parties appear to have begun discussions soon after the suit was filed since the docket shows no substantive filings other than the complaint. Defendants never filed an answer.

The case cite is Summit Capital Group, LLC v. Summit Partners, LP, No. 07-2082 (W.D. Wash.).

“Meet the Bloggers IV” at Potsdamer Platz 1, Berlin, Germany

Organizer Jeremy Phillips of IPKat fame has given his fellow trademark bloggers the green light to spread the word. So, mark your calendars: the fourth annual “Meet the Bloggers” reception at the International Trademark Association’s annual meeting will be held from 8:30 to 10:30 p.m. on Monday, May 19, at the top of Potsdamer Platz 1, 10785 Berlin, Germany. Jeremy suggests RSVP’ing to gracious host Olswang. 

To me, this event is the highlight of every INTA meeting. Come schmooze with bloggers, blog readers, and hangers on from around the globe. Here’s a partial list of expected attendees:

• Afro-IP
• Catch Us If You Can !!!
• Class 46
• IMPACT 
• IP Finance
• IPEG 
• IPJUR 
• IPKat
• Lucentinus 
• Naked Law
• Petit Musee des Marques
• Peter Groves
• Rychlicki.net
• Seattle Trademark Lawyer
• SOLO IP
• Spicy IP
• Trademark Blog
• Transblawg
• TTABlog

What a lineup! I can’t wait to take in the night views of Berlin with a cold Helles Lagerbier in hand and some great conversation. This is going to be a blast. I hope to see you there!