Seattle Trademark Lawyer

The Seattle- and Shanghai- based China Law Blog explains the “agent” exception to China’s first-to-file rule. Citing a post by the China Business Law Blog, it summarizes Chinese authority holding that a trademark owner’s business agent cannot act as the owner’s agent in registering a trademark.

“What this means in real life is that if you are a foreign company manufacturing your product in China, the company you use to find your manufacturer and the company you use for your actual manufacturing cannot file your foreign trademark in China. So if you have a United States trademark and you make the huge mistake of not registering your trademark in China when you first go over there, there are about 1.3 billion people in China who can register ‘your’ U.S. trademark in China and ‘take’ it from you, but your agents are not one of them.

“What this really means though is that everyone in China can usurp your trademark by registering it, even your agents. This agent exception to China’s first to file rule has become so well known that any agent with any intelligence will not go off and register your foreign trademark in China. Instead, they will have their cousin or brother in law or someone else go ahead and do it so as to avoid the agent rule.”

China Law Blog’s advice? Get your mark registered — properly — as soon as possible. Then you can forget about the agent exception.

Photo credit: musikizme.com

As STL readers know, I love a good band name dispute. The latest involves Little Willie Lyons, a/k/a “Souljah Boy,” who filed suit yesterday in the District of Nevada against fellow rapper Deandre Way, a/k/a “Soulja Boy,” Mr. Way’s manager, and Mr. Way’s publishers. Mr. Lyons claims that SOULJA BOY infringes and dilutes his common law rights in SOULJAH BOY (with an “H”).

Mr. Lyons states he has sold millions of records as “Souljah Boy,” and has been featured in “volumes of advertising, magazine articles and other media since 1995 in the continental United States and abroad.”

Mr. Way is one of the most popular musicians today. In September, his single “Crank That (Soulja Boy)” reached number one on Billboard’s Hot 100 chart based on national sales and radio play.

In an application to register SOULJA BOY with the Patent and Trademark Office, Mr. Way claimed he first used his mark in commerce in 1997 (though he also claimed a first use date of 2007 and his debut album, “Souljaboytellem.com,” was released this year).

If Mr. Lyons indeed can show priority, and continuous use, he’s probably got a winner.

The case cite is Lyons v. Way, No. 07-1635 (D. Nev.).

On April 5, STL reported on a Western District order dismissing on copyright preemption grounds unfair competition and unjust enrichment claims MEECO Manufacturing Co., Inc., had brought against True Value Co. MEECO claimed in the suit True Value uses and displays images of MEECO’S RED DEVIL fireplace products in its electronic catalog without authorization and ships competing products when it receives orders for those products. The court found the product labels and logo at issue came within the subject matter of MEECO’s copyright registrations and the unfair competition and unjust enrichment claims really amounted to a copyright claim. 

Yesterday, Judge Robert Lasnik granted the parties’ agreed motion to dismiss MEECO’s claims against True Value. The order does not affect True Value’s claims against Imperial Sheet Metal, Ltd., and Imperial Manufacturing Group, which True Value joined in May as third-party defendants. The third-party complaint alleges that Imperial is responsible for any trademark infringement the court finds in the case.

The case cite is MEECO Manufacturing Co., Inc. v. True Value Co., No. 06-1582 (W.D. Wash.).

The Western District today entered its Findings of Fact and Conclusions of Law in the Lahoti v. Vericheck, Inc., cybersquatting case. As STL discussed here, plaintiff David Lahoti filed a declaratory judgment action challenging the National Arbitration Forum’s UDRP order that his domain name, vericheck.com, be transferred to Vericheck, and finding that his registration does not violate the Anti-Cybersquatting Consumer Protection Act. Vericheck counterclaimed for cybersquatting, trademark infringement, and violation of Washington’s Consumer Protection Act.

In August, Judge James Robart found on summary judgment that Mr. Lahoti had registered and used vericheck.com in bad faith; that he was not entitled to the ACPA’s “safe harbor” provision; that vericheck.com and VERICHECK are identical or confusingly similar; and that Vericheck’s use of the mark predated Mr. Lahoti’s registration of the domain name.

In November, the parties had a two-day bench trial on the distinctiveness of VERICHECK and the likelihood of consumer confusion caused by Mr. Lahoti’s use of the mark. Given the court’s findings on summary judgment, the parties agreed that the court could determine statutory damages and attorney’s fees without need for trial testimony.

On Vericheck’s cybersquatting counterclaim, the court concluded:

“[T] court finds the VERICHECK mark to be suggestive and, therefore, inherently distinctive. The mark’s strength in the marketplace is amply supported by Vericheck’s long use of the mark; the mark’s promotion through advertising, trade shows, and promotional incentives; and the expansion of Vericheck’s territory and client list along with an increase in sales. Because Vericheck has already satisfied the other elements under the ACPA, the court grants judgment in favor of Vericheck on its ACPA counterclaim.”

The court similarly granted judgment in favor of Vericheck’s infringement and Consumer Protection Act counterclaims for many of the same reasons, namely, “the VERICHECK mark is strong and inherently distinctive and Mr. Lahoti intentionally infringed the VERICHECK mark by his registration and use of the <vericheck.com> domain name, which confused and diverted Vericheck’s customers.”

To remedy these harms, the court found Vericheck was entitled to an injunction against Mr. Lahoti “prohibiting him and his affiliates from using the term VERICHECK in any manner, including as a domain name, and requiring him to transfer the <vericheck.com> domain name to Vericheck.”

It also awarded Vericheck $100,000, the maximum amount of statutory damages for cybersquatting, based on “Mr. Lahoti’s bad faith and his deliberate and knowing acts, his pattern and practice of registering domain names that incorporate the trademarks of others, his efforts to extort thousands of dollars in exchange for transfer of the Domain Name, his disregard for the submission of inaccurate answers to interrogatories, and the actual confusion which is occurring in the marketplace….”

For these same reasons, the court found the case qualified as “exceptional” and awarded Vericheck its reasonable attorney’s fees under the Lanham Act.

The case cite is Lahoti v. Vericheck, Inc., No. 06-1132 (W.D. Wash.).

Africa News reports today that Starbucks Chairman Howard Schultz is in Africa recognizing the company’s settlement with Ethiopian coffee farmers over the rights to three coffee names: SIDAMO, HARAR, and YIRGACHEFFE. In the last few months, STL has discussed the settlement here and here.

Mr. Schultz summarized the dispute by saying: “The Ethiopian government wanted to potentially trade mark pieces of geography that stand for where the coffee is from, whether it is Harar or Sidamo or any other place and that is their privilege and their right. Starbucks as a company, we can’t tell any government what to do or what not to do, we are just customers.”

Downplaying the controversy, he added: “The issue of the trademark was never as contentious as it was reported.”

In the end, he said it made sense for Starbucks to align itself with Ethiopian farmers to promote sustainability and high quality coffee. For that, he said, Starbucks was willing to pay a premium.

Ethiopian Prime Minister Meles Zenawi agreed that ”[a]ll of the disagreements are behind us now….”

He said Mr. Schultz made an “unprecedented decision in favoring our coffee farmers by recognizing their property rights. It has never [been] done before for any other product from a country such as Ethiopia.”

The Seattle Times has more on Mr. Schultz’s visit here.