Seattle Trademark Lawyer

Seattle-based Qpass, Inc., filed suit in the Western District on Feb. 6 against Kupass Corp. Both parties allegedly provide application provider services. According to the complaint, Qpass started using its registered trademark QPASS in 1998 in connection with making software available to end-users to facilitate on-line membership services, payment services, and the sale of goods and services over computer networks. The complaint states Kupass began using KUPASS in 2006 in connection with hosting computer software applications for use by others.

Qpass alleges: “The KUPASS Mark is confusingly similar to the QPASS Mark in sight, sound, and commercial impression. Defendant’s use of the KUPASS Mark in business activities that are closely related to Plaintiff’s business activities, namely, in connection with the provision of ASP services, is likely to cause confusion in the trade to Plaintiff’s detriment.”

Kupass has not yet filed an answer.

The case has been assigned to Judge Robert Lasnik.

The case cite is Qpass, Inc. v. Kupass Corp., No. 08-198 (W.D. Wash.).

The Seattle Times’ Feb. 15 Retail Report offers a cautionary tale for business owners who adopt a trademark before talking to a trademark attorney:

”Zenith Vineyard in Oregon’s Willamette Valley might win the viticultural prize for having the most names in the shortest period. D.A. Davidson food-industry analyst Tim Ramey settled on Zenith after trademark disputes over his vineyard’s two other names.

“Two years ago, London-based Diageo opposed the first name, Belle Provenance Vineyard, saying it was too close to that of Provenance Vineyards in Napa Valley. Ramey then tested the name Belle Orgine Vineyard but ran into trouble with Albertsons over its private-label wine called Origin. Finally, last year he changed the name to Zenith Vineyard.

“‘We were never willing to hire a trademark attorney for $10,000, so that’s why we got all this wonderful on-the-job education,’ Ramey said.”

This is frustrating for a trademark lawyer to read — though obviously not as frustrating as it was for Mr. Ramey to live through. For one thing, it doesn’t cost $10,000 to talk to a trademark lawyer. But even if it did, think of all the goodwill that Mr. Ramey built up and then lost in his first brand, then built up and lost in his second brand, then had to build up again in his third (and hopefully final) brand. Not to mention all the money he invested in advertising, marketing, signage, and labeling for all three brands. I’m sure to Mr. Ramey, $10,000 now sounds like a bargain.

Learn from this gentleman’s mistakes. Invest in strategic trademark advice up front so you don’t waste precious resources later on.

Seattle-based solo law firm The Christensen Firm claims it’s having trouble with its Web development vendor. Last March, it filed suit in King County Superior Court against Chameleon Data Corp. and its president, Derek Dohn, on the alleged ground that defendants 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. Plaintiff claims defendants did so to obtain leverage in the parties’ dispute over the defendants’ bill. Defendants subsequently removed the case to the Western District.

On Jan. 31, Judge Thomas Zilly granted defendants’ motion to dismiss plaintiff’s cybersquatting and Consumer Protection Act claims on summary judgment. The minute order does not explain the basis for the decision, but the motion for reconsideration plaintiff filed today seems to shed some light on the subject.

Plaintiff stated in its motion: “On January 31, 2008, this Court granted Defendants’ motion for summary judgment on Plaintiff’s Anti-Cybersquatting and Consumer Protection Act claims on the basis that the Plaintiff’s marks were either generic (cc-lawfirm) or descriptive (The Christensen Firm).”

Plaintiff stated both rulings constituted “manifest error.” It argued the court improperly dissected plaintiff’s trademark, cc-lawfirm, and found the “lawfirm” portion is generic for legal services, and “The Christensen Firm” is descriptive without a showing of secondary meaning. Plaintiff argued its mark is instead suggestive and, therefore, inherently distinctive, and that it had acquired secondary meaning in any event.

Under Local Rule 7(h), defendants need not (and may not) respond unless the court requests that it do so.

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash. Jan. 31, 2008) (Zilly, J.).

Let me finish a post I’ve been wanting to write for a few days now. With the Northern District of California’s understandable decision this week in Phase Forward Inc. v. Adams (STL post here) to follow its appellate court’s lead in Jada Toys, Inc. v. Mattel, Inc. (STL post here), I can’t help but face the fact that we have another split in the circuits over trademark dilution — the very thing the Trademark Dilution Revision Act was supposed to avoid.

On the one hand, we have courts in the Second and Fourth Circuits applying a schizophrenic test to determine whether the old standards under the Federal Trademark Dilution Act, or the new standards under the Trademark Dilution Revision Act, apply to cases that were pending on October 6, 2006, the date the TDRA was enacted. (See posts here and here.) This matters a lot because the old standards allowed for niche-market fame (in some jurisdictions) but required actual dilution, whereas the new standards require nationwide fame but lower the level of proof to a likelihood of dilution. Courts in the Second and Fourth Circuits appear to apply the TDRA retroactively (meaning the new standard applies) for injunctive relief, but prospectively (meaning the old standard applies) to claims for monetary relief. This poses a practical problem, since almost all dilution plaintiffs seek both types of relief.

That said, courts in the Ninth Circuit apply a completely different test. As Phase Forward recently demonstrated, Ninth Circuit courts appear to ignore the retroactive-prospective approach and instead focus on when the case was filed. Ninth Circuit courts appear to decide cases filed before October 6, 2006, under the old standards and cases filed after that date under the new standards. The cutoff date may be arbitrary, but at least it provides litigants with a bright-line rule.

Fortunately, the circuits’ split should be short lived. Within the next year or so, the remaining cases filed before the TDRA was enacted will settle, be dismissed, or be decided on their merits. Thereafter, there should be little question that the TDRA’s “new” standards will apply.

Until then, dilution jurisprudence remains a confusing mess.

On Feb. 8, the owners of Washington’s E.B. Foote Winery filed suit in the Western District against the owners of southern California’s Foote Printe Winery. Plaintiffs allege that defendants’ use of FOOTE PRINT WINERY and Design infringe plaintiffs’ registered trademarks, E.B. FOOTE and E.B. FOOTE WINERY and Design, which plaintiffs and their predecessors claim to have used since 1978.

Defendants have not yet answered plaintiffs’ complaint. The fact that their surname is Foote would seem to help their cause.

The case cite is Miller v. Foote, No. 08-00215 (W.D. Wash.).