Seattle Trademark Lawyer

On Feb. 21, the Ninth Circuit took the unusual step of amending its six-month old decision in Jada Toys, Inc. v. Mattel, Inc., deciding the “new” standards established in the October 2006 Trademark Dilution Revision Act apply to Mattel’s dilution counterclaim, not the old standards set forth in the Federal Trademark Dilution Act. In doing so, the court applied the TDRA’s “likelihood of dilution” standard, four-factor test for assessing fame, and six-factor test for determining the existence of “dilution by blurring.” After applying these standards, the court found the result was the same as under the old standards: a reasonable trier of fact could conclude that Jada Toys’ HOT RIGZ mark, used in connection with toy trucks, was likely to dilute Mattel’s famous HOT WHEELS mark used in connection with toy vehicles.

The court’s Aug. 2, 2007, decision applied the old “actual dilution” standard because the case was filed before the TDRA became effective. The court explained in a footnote: “Because this action was filed in 2004, prior to the 2006 amendment of § 1125, … the previous version of § 1125 applies, codified at 15 U.S.C. § 1125(c)(1) (2000).” (STL post here.)

The amended decision replaces that footnote with an explanation as to why the “likelihood of dilution” and other standards established in the TDRA apply instead:

“We note that in this case the district court applied the prior version of the Federal Trademark Dilution Act (‘FTDA’), … which required a showing of actual dilution. The actual dilution requirement was a product of the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003), where the Court held that the federal dilution statute required a showing of actual dilution. However, since that time the FTDA has been amended so as to require only a likelihood of dilution to succeed. In this case, we chose to apply the standard currently in operation so as to adhere to our prior precedent established in Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1009-10 (9th Cir. 2004), in which we held that application of the FTDA to an alleged diluting mark that was in use before the statute’s passage was not retroactive because the FTDA authorizes only prospective relief.”

The court recognized that applying TDRA standards to a case that had been filed before the TDRA was enacted was inconsistent with its decision last year in Horphag Research Ltd. v. Garcia:

“We are aware that in Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1035 (9th Cir. 2007) (STL post here), we applied the FTDA retroactively, thereby creating an unintentional intra-circuit conflict with Nissan. In Horphag, however, neither party mentioned the TDRA in its briefs, nor moved for a petition for panel rehearing or to vacate the mandate in light of the TDRA’s passage. Moreover, the plaintiff in Horphag prevailed under the more stringent version of the federal dilution statute. Accordingly, recalling the Horphag mandate at this point would serve no purpose.”

It will be interesting to see whether the court’s amended decision will affect Phase Forward Inc. v. Adams, 2008 WL 340951 (N.D. Cal.) (STL post here), which granted plaintiff’s motion for reconsideration earlier this month based on the now-superseded Jada Toys decision that applied the FTDA’s standard for fame (which recognized niche market fame) rather than the TDRA’s standard (which requires nationwide fame). My guess is the Northern District of California will recognize this decision as yet another intervening change in controlling law and will restore its previous dismissal of plaintiff’s dilution claim.

The case cite is Jada Toys, Inc. v. Mattel, Inc., __ F.3d __, 2008 WL 450891, No. 05-55627 (9th Cir. Aug. 2, 2007, amended Feb. 21, 2008).

There’s a whole lotta dilution goin’ on. That’s why this weekend is Trademark Dilution Weekend. Today: XEROX and GOOGLE. Tomorrow: the Ninth Circuit’s amended decision applying the “new” Trademark Dilution Revision Act standards in Jada Toys v. Mattel, Inc.

The Afro-IP blog, all the way from South Africa and the United Kingdom, apparently follows U.S. politics pretty closely, because yesterday it latched onto a phrase Hilary Clinton used in her Feb. 21 debate with Barack Obama. She reportedly called him the candidate of “change you can Xerox.” Ms. Clinton’s line reportedly drew boos from the audience, but probably not because of its implications on Xerox’s well-known brand.

Afro-IP points out that Ms. Clinton’s statement — now re-published in headlines around the world — is something of a setback for Xerox Corp., which has campaigned against the public’s using its trademark as a noun or verb for fear its mark will become generic. (In October, STL discussed a Xerox anti-genericide advertisement here.)

Afro-IP states: “To date, the Xerox company has provided a successful example of a company which was able to prevent the genericide of its core trademark through an extensive public relations campaign advising consumers to ‘photocopy’ instead of ‘Xeroxing’ documents (the brand did become generic in Russian, Bulgarian, Portuguese and Romanian though). The Xerox company also has extensive operations in Africa, where its customers will be tuning into the US election extravaganza.”

While Ms. Clinton’s comment isn’t going to turn a protectable trademark into a generic one, it must be giving Xerox’s branding people fits.

The Illinois Business Law Journal reports this sort of thing is what Google Inc. has been trying to avoid. It recently published a nice article chronicling that company’s efforts to hold on its trademark rights. Here’s its take on two events from 2006:

“In early 2006, a television commercial for Pontiac automobiles urged viewers to ‘Google ‘Pontiac’ to find out’ more. Curiously, Google did not object to the commercial’s usage of ‘Google’ as a verb, even though the infraction seems similar to various other instances that prompted a letter from Google’s attorneys. Indeed, Google essentially consented to the commercial’s usage of ‘Google,’ since Pontiac contacted Google to obtain permission for use in the ad. This particular instance of generic use may be especially damaging to Google, since their consent to the use is similar to that of the Otis Elevator Company, which weighed heavily in the finding of genericness. However, Google might successfully argue that the video of the commercial included images of the Google search page being used, reinforcing the public’s understanding that the phrase ‘Google ‘Pontiac’ to find out more’ means use of the Google search engine.

“In mid-2006, Merriam-Webster’s Collegiate Dictionary added the term ‘Google’ as a verb. However, the dictionary’s lexicographers were sensitive to Google’s attempts to protect its trademark, and crafted the entry accordingly: ‘to use the Google search engine to obtain information about (as a person) on the World Wide Web’. The induction into Webster’s dictionary was marked by an article in the Washington Post, which drew a cookie-cutter letter from Google’s trademark lawyers. Like its previous letter to Word Spy, this response This in turn sparked cries of outrage and disappointment for Google’s apparent lack of humor.”

So, what’s the future hold for Google’s mark? The Illinois Business Law Journal thinks it will remain protectable as long as Google remains vigilant in protecting it against everyday use — like Ms. Clinton’s use of XEROX.

Photo credit: Reuters/Jessica Rinaldi (Democratic debate)

On Feb. 5, Western District Judge James Robert granted in part and denied in part Bellevue-based apparel designer Derek Andrew, Inc.’s motion for preliminary injunction against fitness drink manufacturer Vital Pharmaceuticals, Inc. Derek Andrew sells a line of clothing and related products under its RED LINE trademark. Vital sells a line of fitness drinks under its REDLINE trademark.

The problem, the court found, was with Vital’s use of athletic clothing and related goods to promote its REDLINE drink. To the extent Vital used REDLINE alone on such goods (which the court found Vital voluntarily had stopped doing), the court found that Derek Andrew had demonstrated a likelihood of confusion. However, the court found no such likelihood of confusion existed when Vital uses REDLINE accompanied by the slogan, “The Ultimate Energy Rush.” These additional words, the court found, “sufficiently identifies [Vital’s] attempts to advertise its energy drink on clothing and other apparel so as to avoid confusion with [Derek] Andrew’s RED LINE clothing.”

Based on this finding, the court enjoined Vital from using REDLINE “by itself, on any form of clothing and related products,” but found that Vital “may continue to advertise on clothing and related products using the slogan ‘REDLINE - The Ultimate Energy Rush,’ and other similar iterations of this slogan.”

Yesterday, Derek Andrew filed a motion asking the court to reconsider the latter part of this decision.

The case cite is Derek Andrew, Inc. v. Vital Pharmaceuticals, Inc., No. 07-1364 (W.D. Wash. Feb. 5, 2008) (Robart, J.).

As discussed on Feb. 14, The Christensen Firm moved the Western District to reconsider its summary judgment dismissal of the firm’s cybersquatting and Consumer Protection Act claims against its Web site development vendor, Chameleon Data Corp., and its president, Derek Dohn. In doing so, plaintiff argued it was “manifest error” for the court to find the marks contained in the domain names defendants allegedly transferred to themselves without plaintiff’s authorization “were either generic (cc-lawfirm) or descriptive (The Christensen Firm).”

Today, the court denied plaintiff’s motion. In a minute order issued by the clerk, the court found:

“Plaintiff’s motion simply rehashes arguments already made and rejected by the Court. The Court, however, will take this opportunity to clarify that, although it continues to hold the mark ‘cc-lawfirm’ is generic, it would reach the same conclusion concerning plaintiff’s cybersquatting claim even if it were to rule that the mark was descriptive. Plaintiff has not demonstrated that the mark ‘cc-lawfirm’ has acquired secondary meaning, and therefore, the mark is not famous or distinctive, as required by 15 U.S.C. § 1125(d).”

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash. Feb. 20, 2008) (Zilly, J.).

Jeremy Phillips of IPKat fame (among other blogs) is graciously organizing this year’s “Meet the Bloggers” gathering at the International Trademark Association’s annual meeting, which will be held in May in Berlin. His list of expected attendees provides a treasure-trove of trademark- and IP-dedicated blogs — most of which are published outside the States, and many of which I have never stumbled upon. They’re all worth a look, if not a link, subscription, or regular visit:

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

Remember, you can use Babel Fish and Google to translate non-English language blogs in a snap. (STL post about those services here).

Check these resources out!