Seattle Trademark Lawyer

Even though MONY Life Ins. Co. prevailed in its counterclaim to cancel Van Well Nursery, Inc.’s trademark registration, on March 10 the Eastern District of Washington found it was not a prevailing party in its third party action against the National Licensing Association, of which Van Well Nursery is a member. Since it was not a prevailing party, the court found it necessarily could not establish its case was “exceptional” for attorney’s fees purposes. (Previous STL coverage here.)

For background purposes, in May 2004 the NLA brought suit in the Eastern District against MONY and others alleging trademark and patent infringement. However, the court dismissed NLA’s complaint without prejudice based on NLA’s lack of standing and the court’s lack of subject matter jurisdiction.

In July 2004, Van Well Nursery and Hilltop Nurseries brought suit in the Eastern District against MONY and others, repeating the claims the NLA had previously asserted. In a counterclaim, MONY sought to cancel Van Well Nursery’s SCARLET SPUR registration for apple trees. MONY also asserted third-party claims against the NLA for misuse of trademark statutes, among other things.

In March 2006, Judge Lonny Suko granted MONY’s motion for summary judgment, finding as a matter of law that SCARLET SPUR was generic. As a result, the court ordered the registration cancelled.

In February 2007, Van Well, Hilltop, and MONY settled their differences and stipulated that all claims and counterclaims between them be dismissed with prejudice and without attorney’s fees or costs awarded to any party. The court then entered an order to that effect, leaving only MONY’s third-party claims against the NLA, which remain pending today.

In January 2008, MONY moved for an order finding its claim against the NLA constitutes an “exceptional case” entitling it to an award of attorney’s fees. The court found the threshold issue was whether MONY could be considered a “prevailing party” vis-a-vis the NLA, when the NLA was not a named party with regard to the trademark and patent infringement claims asserted by Van Well and Hilltop.

The court concluded it could not:

“Despite the fact that NLA was ‘pulling the strings’ and ‘working behind the scenes’ in the lawsuit brought by Van Well and Hilltop against MONY, the fundamental stumbling block is the fact that NLA was not a party to that lawsuit. To be a ‘prevailing party,’ one must receive some relief on the merits ‘which alters the legal relationship of the parties.’ The court cannot say that NLA was effectively a real party in interest in the claims asserted by Van Well and Hilltop against MONY [in the instant case] because to do so would be contrary to the court’s finding in [the previously-dismissed case] that NLA did not have standing to pursue those very same claims. MONY has effectively realized this by filing third-party claims against the NLA, thereby making NLA a party to those particular claims which, as noted, have yet to be adjudicated.”

The case cite is Van Well Nursery, Inc. v. MONY Life Ins. Co., No. 04-245 (E.D. Wash. March 10, 2008) (Suko, J.).

Paid for by Concerned Citizens for a Better America? 
Photo credit: Monica Guzman/Seattle P-I

The Seattle Post-Intelligencer’s Big Blog last week reported on some controversial political billboards popping up around Seattle. The ads say they’re paid for by “Concerned Citizens for a Better America.” The Southern Calif.-based Citizens for a Better America, however, says it’s not behind the ads, and it’s none too happy that another organization has infringed its registered trademark and misled the public into believing it’s responsible. Clear Channel, the billboards’ owner, apparently is keeping mum about who’s been writing the checks.

Last year, STL reported on Utah’s Trademark Protection Act, which potentially prohibited advertisers from purchasing trademarks owned by others as search engine keywords (see posts here and here). As the Google Public Policy Blog explained, “[I]f a department store like Macy’s wanted to advertise that they sell Nike shoes, under the Utah law they would not have been able to use the term ‘Nike’ to trigger an ad for their store.” (As would be expected, Google Inc. criticized Utah’s regulation.)

That one state purported to regulate the Internet illustrated the problems localized regulations can cause for users of a system that knows no borders.

Though the statute was never enforced, it is now officially dead. A March 5 amendment repealed the provisions allowing for the registration and enforcement of an “electronic registration mark,” the means the statute used to prevent advertisers from purchasing third parties’ trademarks as keywords without permission.

The Technology and Marketing Blog’s eulogy: “[T]he Utah legislature is the Dr. Frankentein of Internet regulation. With their track record, I consider the Utah legislature the flagship example of why Internet federalism doesn’t work.

“And among the bad experiments by the Utah legislature is the Utah Trademark Protection Act, one of the worst pieces of legislation of all time. Fortunately, the Utah legislators responsible for the act ultimately realized the errors of their ways and decided to repeal the substantive provisions.”

With the last year’s language stricken, the “infringement” section of the statute falls back in line with the Lanham Act and International Trademark Association’s Model State Trademark Bill: 

70-3a-402. Infringement.
(1) Subject to Section 70-3a-104 and Subsection (2), any person is liable in a civil action brought by the registrant for any and all of the remedies provided in Section 70-3a-404, if that person:
(a) uses a reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter:
(i) without the consent of the registrant; and
(ii) in connection with the sale, distribution, offering for sale, or advertising of any goods or services on or in connection with which that use is likely to cause confusion, mistake, or to deceive as to the source of origin, nature, or quality of those goods or services; or
(b) reproduces, counterfeits, copies, or colorably imitates any mark and applies the reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this state of goods or services[; or]
[(c) uses an electronic registration mark to cause the delivery or display of an advertisement for a business, goods, or a service:]
[(i) of the same class, as defined in Section 70-3a-308, other than the business, goods,or service of the registrant of the electronic registration mark; or]
[(ii) if that advertisement is likely to cause confusion between the business, goods, or service of the registrant of the electronic registration mark and the business, goods, or service advertised.]

I was fortunate enough to fill in for my esteemed partner, Bob Cumbow, last night in his trademark law class at Seattle University. The subject was trade dress — one of my favorites. Here’s a copy of my PowerPoint talking points. Why was Bob absent? He’s in the “other” Washington speaking at Howard University School of Law’s Institute of Intellectual Property and Social Justice CLE on “Louis Vuitton, Starbucks, and the Red Hot Chili Peppers: The Trademark Year in Review.” Wish I could be there for that one, but am so glad I could get back to teaching — if only for one night.

Following up on my post here, on Feb. 22, the Western District denied clothier Derek Andrew, Inc.’s motion asking the court to reconsider its partial denial of Dererk Andrew’s motion for preliminary injunction against fitness drink maker Vital Pharmaceuticals, Inc. STL readers may recall that Judge James Robart imposed a preliminary injunction enjoining Vital from using the word REDLINE by itself on clothes advertising its drinks, but did not enjoin Vital from using REDLINE in connection with the words, “The ultimate energy rush.” The injunction stemmed from Derek Andrew’s RED LINE trademark for clothing.

In response to Derek Andrew’s motion, the court found:

“Plaintiff argues that because the parties’ earlier briefing did not focus on the added slogan ‘The ultimate energy rush,’ Plaintiff did not adequately address the likelihood of confusion between RED LINE and ‘REDLINE, The ultimate energy rush.’ The court is not persuaded that Plaintiff’s failure to address this issue during briefing is a sufficient basis for the court to reconsider its prior order. Whether adding the slogan would alleviate consumer confusion was discussed at length during the hearing on Plaintiff’s motion. The court declines to further clarify its order on preliminary injunction regarding the font size of the slogan. The court is satisfied that its order enjoining Defendant from using ‘the REDLINE trademark, by itself, on any form of clothing and related products, such as t-shirts, shirts, plants, tops, tank tops, sweatshirts, sweat pants, hats, caps, shoes, and slippers,’ sufficiently informs Defendant of the type of clothing it may not distribute.

“Because Plaintiff has not shown a manifest error in the prior ruling, or facts or legal authority which could not have been brought to the attention of the court earlier, Plaintiff’s motion for reconsideration is DENIED.”

The case cite is Derek Andrew, Inc. v. Vital Pharmaceuticals, Inc., No. 07-1364 (W.D. Wash. Feb. 22, 2008) (Robart, J.).