Seattle Trademark Lawyer

In January, Lifestyle Lift Holding, Inc., filed suit in the Eastern District of Michigan against Seattle-based Realself, Inc. Lifestyle licenses its registered LIFESTYLE LIFT trademark to cosmetic and plastic surgery centers. Realself owns the www.RealSelf.com Web site it describes as an “independent health and beauty community for consumers to engage in an authentic conversation about ‘anti-aging’ product and treatments.”

Lifestyle alleges that Realself’s Web site contains a link that takes viewers to a page that “purports to be an information page about ‘Lifestyle Lift,’” and another labeled “Michigan Lifestyle Lift” that takes viewers to a page listing physicians who are not affiliated with Lifestyle Lift. Lifestyle also alleges that Realself’s Web site contains pages with Lifestyle’s LIFESTYLE LIFT trademark in the “title, metaname/description, and metaname/ keywords” sections of those pages’ HTML code. This, Lifestyle alleges, constitutes trademark infringement, unfair competition, and violations of Michigan’s unfair competition statutes.

Today, Realself filed its answer, denying Lifestyle’s allegations, and counterclaiming for breach of contract, unfair competition, and violation of Michigan’s Consumer Protection Act. In particular, Realself alleges that Lifestyle and its employees or agents have “posed as patients of Lifestyle Lift on www.realself.com, and have posted numerous comments on www.realself.com purporting to be consumers of the procedure and other procedures performed by Lifestyle Lift facilities.” These comments, Realself alleges, falsely “praise, recommend, and describe positive experiences with the Lifestyle Lift procedure and often contradict the testimonials posted by other, real users of the www.realself.com site” in violation of the site’s terms of use.

The case cite is Lifestyle Lift Holdings, Inc. v. Realself, Inc., (E.D. Mich.).

In ProteoTech, Inc. v. Unicity International, Inc., plaintiff ProteoTech alleges the University of Washington granted it an exclusive license to use certain technology. Thereafter, ProteoTech granted an exclusive, limited field of use license with respect to the technology to third-party defendant Rexall Sundown, Inc. Through various corporate transactions, a Rexall subsidiary was combined with another company and then purchased by a third entity that became known as defendant Unicity. ProteoTech alleges that Rexall granted a non-exclusive, transferable sublicense to Unicity’s predecessor. ProteoTech also alleges that PTI-00703 is a registered trademark (for dietary supplements) in which it retains all rights despite its lack of use.

ProteoTech claims that Rexall was not authorized to sublicense the technology at issue to Unicity. Last year, it filed suit in the Western District, claiming in pertinent part that Rexall is liable for contributory trademark infringement, as well as patent infringement. Rexall moved to dismiss under Rule 12(b)(6), the motion currently before the court.

In its motion, Rexall argued that because the sublicense did not grant Unicity any rights to use PTI-00703, it cannot be held liable for contributory trademark infringement. ProteoTech responded that it is not relying on the sublicense as evidence of Rexall’s wrongdoing, but rather on the chain of events pursuant to which Unicity continued marketing its product with the brand PTI-00703. In particular, ProteoTech’s complaint alleges that “Rexall knew or should have known that Unicity was using the PTI-00703 mark” and “granted Unicity an implied license to continue advertising and promoting sales of the Infringing Products through use of the PTI-00703 mark.” 

The court found this was enough for ProteoTech to survive Rexall’s motion: 

“Although the details are sparse, ProteoTech appears to have alleged sufficient facts to present a plausible claim of contributory trademark infringement, which requires proof that the defendant ”intentionally induced’ the primary infringer to infringe,’ Perfect 10, Inc. v. Visa Internat’l Serv. Ass’n, 494 F.3d 788, 807 (9th Cir. 2007)…” (STL post here).

The case cite is ProteoTech, Inc. v. Unicity International, Inc., No. 06-1297, 2008 WL 539945 (W.D. Wash. Feb. 27, 2008) (Zilly, J.).

The China Business Law Blog recently published two posts (here and here) about a 20 million yuan ($2.8 million) trademark infringement award by the Hangzhou Intermediate People’s Court. That’s a far cry richer than the 500,000 yuan ($64,000) Starbucks won last year in its trademark infringement suit (STL post on the decision here; discussion of the damages calculation in that case here). So why the (relatively) big award this time?

Here’s how the China Business Law Blog explains it:

“The court’s award of damages in [G2000 v. 2000] is intriguing. Plaintiff pleaded for damages totaling 20,000,000 Yuan (that is right, 20 million). And the Court ordered the Defendants to turn over the figures for total sales, profits, etc. for the goods complained of in the relevant period of time, but the Defendant failed to do so. Generally, Chinese courts award damages to a plaintiff in an IP infringement case to the extent of a defendant’s illegal profits as proven, rather than losses sustained by the plaintiff. … In addition, if the illegal profits or plaintiff’s losses cannot be accurately ascertained, the statutory maximum of damages is 500,000 Yuan. … Therefore, in an act rarely seen in Chinese courts, the Court awarded a whopping 20 million Yuan to the plaintiff.”

Despite the vast difference in amounts, this seems consistent with the Starbucks decision. The Starbucks court found the coffee company did not reliably establish the amount of the infringer’s profits or its own losses owing to the infringement, so it fixed damages at the statutory maximum of 500,000 yuan. Here, the court found the plaintiff had established the amount of its damages to the tune of 20 million yuan. Whether that proof was based on the infringers’ profits or plaintiff’s losses is unclear. (The China Law Blog could not find a copy of the decision and relied on Chinese-language press accounts for its post.) I can’t see how plaintiff could prove defendants’ profits without having their financial information. But I can imagine the court was in no mood to give defendants a break after they violated its order compelling production of such information.

The China Business Law Blog reports the defendants have appealed the case to the Zhejiang Higher People’s Court, so this decision may change.

Mary Whisner points out in her Trial Ad (and other) Notes blog that the Federal Bar Association of the Western District of Washington has published a profile of Benjamin Settle, one of the Western District’s newest judges (article starts on page 7). This is a great introduction to Judge Settle, and one those who practice in the Western District should read. (STL’s July 10 post on Judge Settle here).

Of particular interest to local practitioners:

“Judge Settle has a couple of tips for lawyers who will appear before him. First, get to the heart of the matter as soon as possible. Most cases can be evaluated within a month of arriving in the office, and the client is best served when lawyers zero in on the optimal resolution without going down ‘bunny trails.’ And second, make a bona fide effort to settle early. In cases where attorney fees may be awarded to the prevailing party, Judge Settle will always look to see if the attorneys were more interested in large fees than in protecting the interests of their clients through early alternative dispute resolution.”

As STL readers know, Champagne only comes from the Champagne region of France (STL post here). And Wild American Shrimp only come from “their native habitat in the coastal waters of the Gulf and East Coasts of the United States” (STL post here). 

As I suspect Italians have long known, true Parmesan cheese only comes from Italy. The five regions around Parma, in northern Italy, to be exact, and is made only from raw milk, with no additives, and is aged at least one year. At least that’s what the European Court of Justice ruled today.

Billboard at the border of Parma and Piacenza announcing
the home of Parmigiano-Reggiano cheee. Photo credit: J.P. Lon

The ruling was a setback for German producers whose “Parmesan” cheese was deemed to be imitation. In so ruling, the court rejected Germany’s argument that the name was generic for a type of hard, crumbly cheese that is often grated over food. On that issue, the court found:

“When assessing the generic character of a name, the Court has held that it is necessary, under Article 3(1) of Regulation 2081/92, to take into account the places of production of the product concerned both inside and outside the Member State which obtained the registration of the name at issue, the consumption of that product and how it is perceived by consumers inside and outside that Member State, the existence of national legislation specifically relating to that product, and the way in which the name has been used in Community law.

“As indicated by the Advocate General in points 63 and 64 of his Opinion, the Federal Republic of Germany restricted itself to providing quotations from dictionaries and specialist literature which do not provide any comprehensive view of how the word ‘Parmesan’ is perceived by consumers in Germany and other Member States, and failed even to give any figures as to the production or consumption of the cheese marketed under the name ‘Parmesan’ in Germany or in other Member States.

“According to the documents in the case, in Germany, certain producers of cheese called ‘Parmesan’ market that product with labels referring to Italian cultural traditions and landscapes. It is legitimate to infer from this that consumers in that Member State perceive ‘Parmesan’ cheese as a cheese associated with Italy, even if in reality it was produced in another Member State.

“Finally, at the hearing, the Federal Republic of Germany was also unable to provide information on the quantity of cheese produced in Italy under the PDO ‘Parmigiano Reggiano’ and imported into Germany, making it impossible for the Court to use the factors relating to the consumption of that cheese as indicators of the generic character of the name ‘Parmesan’.

“Since the Federal Republic of Germany has therefore failed to show that the name ‘Parmesan’ has become generic, use of the word ‘Parmesan’ for cheese which does not comply with the specification for the PDO ‘Parmigiano Reggiano’ must be regarded for the purposes of the present proceedings as infringing the protection provided for that PDO under Article 13(1)(b) of Regulation No 2081/92.”

“U.S. foodmaker Kraft Foods Inc. has used the name Parmesan for grated hard cheese since the mid-1940s, according to its Web site. ‘Kraft Grated Parmesan’ was introduced in green and red canisters in 1945. Donna Hrinak, a company spokeswoman in Zurich, Switzerland, said Kraft doesn’t sell Parmesan cheese in Europe.”

The case cite is Commission v. Germany, C-132/05 (European Court of Justice, Feb. 26, 2007).