Seattle Trademark Lawyer

I think it’s a great model. Pick a geographic region, and try to cover it well. In recent weeks I’ve come across two regional trademark law blogs that embrace this approach. Both are well worth checking out.

First is the Maryland Intellectual Property Law Blog. Sure, it’s not only about trademarks, but publisher Brian Higgins offers plenty of interest for those who practice in our area. I particularly like his statistical analysis of new trademark filings — both in federal court and with the Patent and Trademark Office (with sweet bar graphs — I’ve got to figure out how to do that). Good Maryland case summaries too. No wonder this blog has become so popular.

The other is the Los Angeles Intellectual Property Trademark Attorney Blog, published by Milord Keshishian. This blog helps practitioners stay on top of active trademark happenings in southern California. (Indeed, according to the Maryland Intellectual Property Law Blog, California is ranked tops in the nation in terms of new federal trademark cases filed.) Recent cases summaries include an infringement suit against a former franchisee, a counterfeit claim brought by Nike, and a lawsuit between garden products makers over use of the mark FENG SHUI. There’s a lot here to check out.

Of course, it goes without saying that I’ve long been a fan of other regional trademark blogs, like the Canadian Trademark Blog, Chicago IP Litigation Blog, Las Vegas Trademark Attorney, and Australian Trade Marks Law Blog. Hopefully we’ll continue to see more regionally-based trademark law blogs in the future. They’re a great resource.

This morning, a client forwarded me an email it received from a company ostensibly doing business in China. The email read as follows:

RE: Intellectual property rights

Dear CEO,

We are the domain name registration organization in Asia, which mainly deal with international company’s in Asia. We have something important we need to confirm with your company. On the April 14, 2008, we received an application formally. One company named [Fake Company] wanted to register following Domain names:

clientstrademark.asia
clientstrademark.cn
clientstrademark.com.cn
clientstrademark.com.hk
clientstrademark.com.tw
clientstrademark.hk
clientstrademark.tw

Internet Trademark: clientstrademark

through our body.

After our initial examination, we found that the keywords and domain names applied for registration are the same as your company’s name and trademark. These days we are dealing with it. If you do not know this company, we doubt that they have aims other than to buy these domain names. Now we have not finished the registration of [Fake Company] yet, in order to deal with this issue better. Please contact us by telephone or email as soon as possible.

My client’s question: “Is this real?”

My response: “No.”

Later in the day, another client forwarded me a similar email from a purportedly different Chinese company. We’ve periodically gotten emails like this in the past, but this seems to be turning into an epidemic. At best, these messages are overly-aggressive attempts to drum up business by scaring trademark owners into registering domain names they don’t need. At worst, they’re outright fraudulent.

For instance, on Monday a client called me about a bill he received from an overseas company for work it allegedly had performed to obtain a “world trademark registration.” My client was relieved to hear it was a scam. He would have been less happy to get that news if he had already paid the bill. Beware!

Senegal citizen Elimane Tall got involved in counterfeiting. In 2003, he pled guilty to one count of “counterfeit of a registered mark” in violation of California Penal Code § 350(a)(2), which imposes criminal penalties on any person who “willfully manufactures, intentionally sells, or knowingly possesses for sale any counterfeit of a mark registered with the Secretary of State or registered on the Principal Register of the United States Patent and Trademark Office…” In 2004, Mr. Tall pleaded guilty to nine new counts of “counterfeit of a registered mark” and one count of “counterfeit of a registered mark with a prior,” which landed him in prison.

After serving his time, the U.S. Department of Homeland Security sought to have him deported under the Immigration and Nationality Act as an alien convicted of a crime of “moral turpitude.” The immigration judge adopted the government’s position that “fraud is so inextricably woven into the statute as to clearly be an ingredient of the crime,” and ruled that Mr. Tall’s counterfeiting crimes indeed involved “moral turpitude.”

Mr. Tall appealed to the Ninth Circuit, which affirmed the immigration judge in a published decision. Its analysis is interesting for trademark lawyers because it characterizes counterfeiting as a form of fraud and theft:

“Under the categorical approach, § 350(a) is a crime involving moral turpitude because it is an inherently fraudulent crime. Either an innocent purchaser is tricked into buying a fake item; or even if the purchaser knows the item is counterfeit, the owner of the mark has been robbed of its value. The crime is really a species of theft. All of the conduct punished by § 350(a), ‘willfully manufactur[ing], intentionally sell[ing], or knowingly possess[ing] for sale any counterfeit … mark,’ is inherently fraudulent because each type of conduct ‘involve[s] knowingly false representations to gain something of value.’”

That’s a pretty good summary why counterfeiting — and even trademark infringement — is worth fighting against.

The case cite is Tall v. Mukasey, 517 F.3d 1115, No. 06-72804 (9th Cir. Feb. 12, 2008).

In Sonoma Foods, Inc. v. Sonoma Cheese Factory, LLC, plaintiff cheese maker sued defendant cheese maker in the Northern District of California. At issue was Sonoma Cheese Factory’s use of Sonoma Foods’ registered trademarks, SONOMA CHEESE FACTORY and DESIGN and SONOMA JACK (the “Bull Trademarks”), allegedly constituting infringement and a false description or passing off.

According to Sonoma Cheese Factory, before December 31, 2001, Sonoma Foods owned and operated the Sonoma Cheese Factory retail store. On that date, the corporation was restructured; Sonoma Cheese Factory, LLC, was formed; and Sonoma Foods transferred the retail store to the new entity. When Sonoma Cheese Factory acquired the store, it continued to use the same signs and packaging that Sonoma Foods had used. It is that use about which Sonoma Foods complains.

    
Two Photos Sonoma Cheese Factory submitted in support of its
motion for partial summary judgment based on laches.

Sonoma Cheese Factory responded by moving for partial summary judgment on the ground of laches. It argued:

“Sonoma Cheese Factory used the Bull Trademarks on two signs in its retail store. These signs hung above the store’s front door and above its main cheese counter, just inside the front door. Both signs were displayed continuously from December 31, 2001 until after this suit was filed. During the same period, Sonoma Cheese Factory sold cheeses and other products packaged in paper bags imprinted with U.S. Trademark No. 1,099,709. Sonoma Cheese Factory also used U.S. Trademark No. 1,111,024 on mailing envelopes at least as early as February 2002.

“These signs, bags, and envelopes were used in commerce, in connection with the sales of cheese products — including products that compete with Plaintiff’s cheeses. Sonoma Foods’ officers knew the defendants were using the Bull Trademarks but took no action for over five years. The statute of limitations therefore provides a complete defense to Sonoma Foods’ second and sixth claims.”

Judge Jeffrey White denied the motion. (Order not available online.) The court found:

“Regardless of whether a statute of limitations defense is applicable to Plaintiff’s trademark infringement claim, the alleged violations are ongoing, and thus, ‘the statute of limitations is conceivably only a bar to monetary relief for the period outside of the statute of limitations.’ Defendants’ alleged infringement activity is ongoing. Therefore, even assuming a statute of limitations defense may bar some portion of Plaintiff’s trademark infringement claim, Plaintiff would still be entitled to pursue damages based on the infringement activity that occurred within the statute of limitations period.”

This strikes me as wrong. Laches exists to cut off a plaintiff’s claim when the plaintiff has unreasonably delayed in bringing suit and caused the defendant prejudice as a result. Here, Sonoma Cheese Factory alleged that Sonoma Foods knew of its alleged infringement since December 31, 2001, and delayed bringing suit more than five years — long after the analogous statute of limitations had run. For the court to find this delay merely cuts off damages Sonoma Foods can recover undermines the equitable principles on which laches is based. By this reasoning, Sonoma Foods could wait 30 years to sue and still be entitled to recover damages from Sonoma Cheese Factory’s “continuing violation.” To my mind, laches stands for the proposition that when it comes to sitting on one’s rights, at some point enough is enough. Laches bars a claim; it does not merely limit the damages a plaintiff can recover.

The case cite is Sonoma Foods, Inc. v. Sonoma Cheese Factory, LLC, No. 07-554, 2008 WL 913279 (N.D. Calif. April 3, 2008) (White, J.).

The owner of Peso’s Kitchen and Lounge (top) has sued the owner of
The Matador restaurant for trade dress infringement, including the
metal work shown above, allegedly made by the same designer.

Last year, El Diablo, Inc. filed suit for trade dress infringement in King County Superior Court against Mel-Opp & Griff LLC and other defendants alleging confusing similarity between the look-and-feel of the parties’ competing Mexican/Tex-Mex restaurants and bars. El Diablo owns Peso’s Kitchen and Lounge in lower Queen Anne. Mel-Opp & Griff owns The Matador, located in Ballard, West Seattle, Redmond, Tacoma, and Portland, Oregon.

El Diablo claims that its former employees and independent contractors jumped ship and opened The Matador, copying what it considers to be its distinctive trade dress, which it describes in part as follows: “ornamentation, designs, and decorative elements in sconces, lighting, chandeliers, wall surface treatment and colors, ceiling panels and colors, furnishings, Mexican ‘Day of the Dead’ themes and the adoption of a matador graphic design and icon on the menu cover….” 

El Diablo also claims the defendants copied its distinctive recipes and menu.

The defendants deny the allegations.

On March 14, Judge Catherine Shaffer denied defendants’ motion for partial summary judgment to dismiss a claim under Washington’s dilution statute.

Trial is scheduled for July.

The case cite is El Diablo, Inc. v. Mel-Opp & Griff LLC, No. 07-2-01203-6 SEA (King County Super.).