Seattle Trademark Lawyer

As discussed yesterday, the Western District of Washington disposed of fifty-one trademark cases in 2007. These consist of cases that PACER identified as being “trademark” matters that parties filed in 2005, 2006, and 2007, and that were listed as being closed in 2007. Here’s how they went down:

• 34 were voluntarily dismissed (presumably most often because the parties settled).
• 11 ended with a stipulated permanent injunction.
• 6 ended with a default judgment against at least one of the parties.
• 2 ended when the plaintiff accepted the defendant’s offer of judgment.
• 2 ended after trial.
• 1 was dismissed for lack of personal jurisdiction.

That puts us at fifty-five dispositions, four more than were filed. This is because cases with multiple defendants sometimes ended with more than one event (e.g., one defendant settled and was voluntarily dismissed, and the other defendant did not appear and lost by default judgment). I’d prefer a nice, neat number, but I guess it doesn’t work that way.

Judge Marsha Pechman was the busiest with motions for temporary restraining orders, granting one (Autodesk Inc. v. Open Design Alliance (post here)) and denying one (High-Rise Technology v. Amatuerindex.com). Judge Ricardo Martinez also denied one (Commscope Inc. of North America v. Electro Products Inc.).

Western District judges in 2007 were more likely to deny motions for preliminary injunction in trademark cases than grant them. Judges Thomas Zilly (Cascade Financial Corp. v. Issaquah Community Bank) (post here), Martinez (Rubber Stamp Management Inc. v. Kalmbach Publishing Co.), James Robart (CMSI Inc. v. Pacific Cycle Inc.), and Robert Lasnik (United Treasures Inc. v. Sarah’s Attic Inc.) each denied such motions. Judges Pechman (Varsity Gold Inc. v. Elite Fundraising LLC) and Franklin Burgess (Thermion Inc. v. Thermion Metalizing Systems Ltd.) granted one each in part and denied one in part. Judge Robart granted the only preliminary injunction outright (Jonathan Neil & Associates Inc. v. JNA Seattle Inc.) (post here). One plaintiff stipulated to a preliminary injunction (American Board of Anesthesiology Inc. v. Liao) (post here). 

The Western District didn’t dispose of a single case on summary judgment. (I didn’t count Judge Ronald Leighton’s recent grant of summary judgment for the defendants in Ormsby v. Barrett (post here) because the case remains active while defendants pursue their counterclaims.) However, Judge Martinez granted defendant’s motion for partial summary judgment in Rubber Stamp Management Inc. v. Kalmbach Publishing Co. (post here). Judges Zilly (Crane v. CTX Mortgage Co. LLC) and Robart (Lahoti v. Vericheck Inc.) (post here) each granted in part and denied in part summary judgment for the defendant. Judge Kelley Arnold denied the defendant’s motion for summary judgment in Mother LLC v. LL Bean Inc. (post here).

Plaintiffs did not fare well on summary judgment: Judge Zilly denied plaintiff’s motion in Crane v. CTX Mortgage Co. LLC and Judge Robart denied plaintiff’s motion in Lahoti v. Vericheck Inc.

Of the two cases that went to trial, the plaintiff won one (Lahoti v. Vericheck Inc.) and lost one by directed verdict (Mother LLC v. LL Bean Inc.). No case went to the jury.

The biggest judgment appears to be the $900,000 the plaintiff obtained by consent judgment in Commscope Inc. of North Carolina v. Electro Products Inc. The other notable judgment was the plaintiff’s default victory to the tune of $610,579 in Dali-USA Inc. v. Domains by Proxy Inc. Most of the other judgments were in the neighborhood of $100,000 or less.

That’s enough statistics for me…. Here’s to an interesting and productive trademark docket in 2008!

Continuing my similar analysis from last year (see posts here and here), I’ve looked at cases that were opened and cases that were closed in the Western District of Washington in 2007. To get a more accurate picture of 2007 activity, I analyzed cases filed from 2005 to 2007 that the federal courts’ PACER database flagged as involving primarily “trademark” issues. The statistics are interesting.

Thirty-eight trademark cases were filed in the Western District in 2007, compared with 64 cases in 2006, and 166 in 2005. 2005 was an unusual year because Microsoft filed 117 infringement lawsuits against John Doe defendants who allegedly were engaged in “phishing,” i.e., using Microsoft trademarks to trick Hotmail customers into providing personal information. Without the Microsoft suits, plaintiffs filed 49 suits in 2005. Even without those cases, new trademark filings in 2007 were the lowest in the Western District in at least three years.

There was no clear “winner” last year for being most litigious. Four plaintiffs filed two trademark lawsuits each: HomeTask Handyman Services Inc. (v. Cooper, and v. and Szewczyk (post here)); Microsoft Corp. (v. Kovyrin (posts here and here), and v. Does 1-301); Topline Corp. (v. Flurt Footwear (post here), and v. 4273371 Canada Inc (post here)); and Derek Andrew Inc. (v. Vital Pharmaceuticals Inc., and v. Chrome Hearts Inc.).

Microsoft’s trademark lawsuits decreased to two cases, down from three in 2006 and 119 in 2005. Washington’s other two companies that made Interbrand’s 2007 list of Best Global Brands (see post here), Amazon.com and Starbucks, did not file any trademark lawsuits here last year.

For me, the biggest surprise was the number of Western District lawsuits involving footwear. These include Topline Corp. v. Flurt Footwear (post here), Brooks Sports Inc. v. Payless Shoesource Inc. (posts here and here) and Diadora SpA v. Payless Shoesource Inc. (post here). I did not realize that footwear was such a big industry in Seattle.

Besides looking at new filings, I analyzed how courts disposed of trademark cases in 2007. The Western District closed six cases that were filed in 2005; 27 cases that were filed in 2006; and 18 cases that were filed in 2007. I did not analyze cases that were filed before 2005.

Looking only at closed cases, trademark cases filed in 2007 remained active on average for 116 days. Trademark cases filed in 2006 remained active on average for 201 days. In 2005, the number was 214 days. The 2005 number was skewed downward by the large number of cases Microsoft brought and dismissed in groups after 134 and 187 days. The 2007 number was skewed downward even further since the only cases that were both filed and closed in 2007 were necessarily short-lived. Considering these factors, it looks like the lifespan of trademark cases here has remained about the same in the last three years.

I’m a little surprised that the average trademark case spans less than one year. I wonder how that compares with other kinds of lawsuits or trademark cases in other districts. My guess is that parties (and to a lesser extent, the courts) dispose of trademark cases quicker than other types of cases. This probably is due to defendants who either do not participate in the case and have a default judgment taken against them or concede their wrongdoing early on and agree to a permanent injunction. I really can’t say whether these figures are consistent with trademark cases in other judicial districts.

Tomorrow’s post will focus on how cases were disposed of in 2007. How many settled? How many went to trial? Which judges granted preliminary injunctions? Which judges granted summary judgment? Tune in tomorrow to find out.

STL readers will recall that the Wailers rock and roll band from Tacoma brought suit in June against the Wailers reggae band from Jamaica for trademark infringement, dilution, unfair competition, and cybersquatting, based on plaintiffs’ WAILERS registered trademark. Yesterday, Western District Judge Ronald Leighton found that plaintiffs filed their suit after the analogous statute of limitations had expired and, therefore, granted summary judgment in favor of defendants based on laches.

The court found: “Defendants stress that Plaintiffs were aware Defendants were calling themselves the ‘Wailers’ since the mid to late 1970s, when they were asked about their relationship to Bob Marley. Plaintiffs argue, without legal or logical support, that there is some meaningful difference between the names ‘Wailers’ (standing alone) and ‘Wailers’ in the context of ‘Bob Marley and the Wailers.’ They claim their 1970s-vintage knowledge of Defendants’ use of the term was only in conjunction with Mr. Marley, and that that use was not offending.

“In making this argument, however, Plaintiffs also concede that they ‘first encountered the Defendants’ band name as simply the ‘Wailers’ at some point in the late 1990s,’ and that they were unaware the Defendants were calling their group the ‘Wailers’ until the late 1990s.

“As the Defendants point out, however, the Plaintiffs’ registration efforts do not eliminate the rights of the Defendants: Neither application for nor registration of a mark at the federal level wipes out the prior, non-registered, common law rights of others. Accordingly, the act of registration does not toll the limitations period, and the Plaintiffs’ 2007 lawsuit to enforce the rights they claim to have obtained by registration is outside the three year limitations period. The presumption of laches applies.”

The court found the defendants could not overcome that presumption.

The court also found that defendant band leader Aston Barrett’s registration of wailers.com was protected by the Anticybersquatting Consumer Protection Act’s “safe harbor” provision for persons who believe and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful:

“Defendants argue that Barrett’s longstanding use of the name Wailers establishes his ‘abundant good faith’ in registering the domain name. Plaintiffs argue that the issue is one of fact, and that they have not conducted discovery into the matter.

“No amount of discovery is going to change the fact that Defendants have been calling themselves the Wailers for decades, the Plaintiffs knew it, and the domain name registration predated the Plaintiffs’ application for trademark registration. There is no evidence of bad faith on the Defendant’s part, and the Plaintiffs’ Cybersquatting claim must fail as a matter of law.”

The case cite is Ormsby v. Barrett, No. 07-5305 (W.D. Wash. Jan. 2, 2008).

Note: my partner, Kathleen Petrich, and I represented the defendants. As a rule, I do not comment about cases in which I am involved until a judgment is rendered. My previous posts about this case pre-dated my involvement in the matter.

STL is taking a quick New Year’s break while I enjoy a little R&R in San Francisco. I’ll be back at it on Jan. 3.

In the meantime, here’s a shot from my favorite New Year’s Eve ever — with my wife on the Spanish Steps in Rome.

Happy New Year!!

The Ninth Circuit yesterday clarified what it takes for the owner of a federally registered trademark to succeed in an infringement action against another user of the mark in connection with goods or services that are different than those specified in the owner’s trademark registration.

Applied Information Sciences Corp. owns the registered trademark SMARTSEARCH for certain computer-related functions, and claimed that eBay, Inc. uses the same SMARTSEARCH mark for its Internet auction Web site, which AIS contended will cause confusion with its own SMARTSEARCH product. The Central District of California disagreed, and granted summary judgment to eBay.

The Ninth Circuit questioned the Central District’s reasoning, but affirmed the decision since AIS failed to produce any admissible evidence tending to show a likelihood of confusion. The Ninth Circuit found:

“[A] plaintiff trademark owner must establish a valid, protectable interest in order to proceed to the second prong of the trademark infringement analysis — the likelihood of confusion resulting from the defendant’s alleged infringing use. Having established a protectable interest by proving it is the owner of a registered trademark, the owner does not additionally have to show that the defendant’s allegedly confusing use involves the same goods or services listed in the registration.

“The district court here found that AIS’s registration was limited to ‘computer software and instruction manuals sold together which allow the user to retrieve information from online services via a phone line’ in various ‘fields.’ The district court, however, then concluded that because AIS’s federal registration did not include eBay’s use of the mark as ‘a hyperlink for its web-based trading service,’ AIS’s infringement action failed for lack of a protectable interest.”

This, the Ninth Circuit found, was based on a misreading of Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985):

“Our refusal to allow Levi Strauss to rely on its federal registration stemmed from the way in which Strauss pled its case. Strauss was attempting to extend its own use of its registered mark to goods not specified in its federal registration. Its federally registered trademark was limited to pants pocket tabs, but its trademark infringement claim was based on an alleged trademark in clothing pocket tabs generally. … Where, however, a plaintiff bases its trademark infringement claim upon the confusion the defendant’s use will create for the plaintiff’s use of its mark in connection with its own registered goods or services, that claim comes within the scope of its protectable interest.

“Here, AIS alleged infringment of a mark it used in connection with the kind of products specified in its federal registration: ‘computer software and instruction manuals sold together’ that allow users to retrieve information online. Whether or not eBay ever used the SmartSearch mark in connection with goods specified in AIS’s registration is irrelevant to the question of whether AIS established a valid, protectable interest. By virtue of its federal registration, AIS discharged its burden of establishing the validity of the SmartSearch mark in connection with those goods listed in the registration. Whether eBay’s use of SmartSearch infringed AIS’s protected interest then becomes a question of likelihood of confusion.”

The case cite is Applied Information Sciences Corp. v. eBay, Inc., Nos. 05-56123 and 05-56549, __ F.3d __, 2007 WL 4553999 (9th Cir. Dec. 28, 2007).