Seattle Trademark Lawyer

The Vegas Trademark Attorney has a nice write-up on the Ninth Circuit’s Nov. 5 decision in Perfumebay.com Inc. v. eBay Inc. Here’s the rub:

“The district court did not clearly err in finding that conjoined forms of ‘perfumebay’ created a likelihood of consumer confusion. The district court, therefore, properly enjoined Perfumebay from utilizing such infringing marks. The district court also did not clearly err in finding that the non-conjoined forms of Perfumebay’s mark, such as Perfume Bay, did not create a likelihood of confusion.

“However, the district court erred in holding that Perfumebay’s marks did not produce a likelihood of dilution, as the marks are nearly identical to eBay’s mark. The district court also erred in finding that eBay acted with unclean hands in its advertising, as the record did not affirmatively demonstrate the requisite intent to deceive.”

The case cite is Perfumebay.com Inc. v. eBay Inc., Nos. 05-56794 and 05-56902.

I’ve probably over-done my coverage of this case, but it’s been a fun one. To close the loop, I’ll just say that on Oct. 26, the Western District declined to award L.L. Bean, Inc., attorney’s fees, which L.L. Bean sought after obtaining dismissal of Mother, LLC’s trade dress infringement claims as a matter of law at the close of trial.

After noting that fees awards are discretionary and the Ninth Circuit has “set the bar fairly high with regard to what constitutes ‘exceptional,’” the court explained its decision as follows:

“The court found this case distinguishable from many, in that the parties had entered into a contractual arrangement regarding the sale and marketing of the plaintiff’s upland hunting vest by defendant. Defendant’s conduct was more than suspect from an equitable perspective, but because Congress was careful not to stifle competition, the plaintiff had a significant burden in establishing a prima facie case of trade dress infringement. The court’s oral opinion sets forth the basis for granting the defendants’ motion at the end of the plaintiff’s case and need not be repeated here. It was not based on allegations which were vexatious and/or made in bad faith. This case was, in fact, one of the few where equity and empathy favored the plaintiff and in the final analysis the law favored the defendant.”

The case cite is Mother, LLC v. L.L. Bean, Inc., No. 06-5540, 2007 WL 3223223 (W.D. Wash.).

Plaintiffs PlastWood SRL and its subsidiary, PlastWood Corp., compete with defendant Rose Art Industries, Inc., in the sale of magnetic construction toy sets. Rose Art’s product, MAGNETIX, is comprised of small plastic building blocks that are held together by magnetic force. Rose Art’s advertising and product packaging state that “500 designs” can be built by assembling MAGNETIX building blocks in certain described manners. PlastWood alleged in this Western District false advertising case that many of those structures cannot be built and collapse under their own weight. PlastWood also alleged that the phrase, “Ages 3 to 100,” which appears on MAGNETIX packaging, misrepresents that the blocks are safe for children three and older because the blocks actually are dangerous to small children. 

Rose Art moved to dismiss PlastWood’s complaint on the ground that the Child Safety Protection Act preempts PlastWood’s age-labeling claim. It also argued that PlastWood failed to state a Lanham Act claim because the complaint did not identify the MAGNETIX structures that cannot be built.

On Oct. 23, Judge James Robart agreed that the CSPA preempted the age-labeling claim because “Plastwood improperly requests this court to enforce safety labeling that would be incongruent with the safety labeling requirements” established by the Consumer Product Safety Commission.

On PlastWood’s “500 designs” claim, the court applied Rule 8’s “short and plain statement” standard rather than Rule 9’s heightened pleading standard for fraud. The court found PlastWood’s complaint met the lower threshold:

“PlastWood has pleaded sufficient facts to make out a plausible cause of action under the Lanham Act. Rule 8(a) requires a ‘short and plain statement of the claim showing that the pleader is entitled to relief.’ PlastWood’s complaint places Rose Art on notice of the wrong that it is accused of committing. The complaint states that Rose Art has informed consumers through its published advertising and product packaging that a wide variety of Magnetix structures (‘500 designs’) can be built. PlastWood contends that such messages are false or misleading because many of these structures cannot be built and collapse. PlastWood essentially argues that Rose Art has overstated the qualities or capabilities of its product in violation of the Lanham Act. … PlastWood has pleaded sufficient facts to state a claim that is plausible on its face.”

The case cite is PlastWood SRL v. Rose Art Industries, Inc., No. 07-0458, 2007 WL 3129589 (W.D. Wash.).

Easing my way back into blogging mode, I can happily report that Yucatan’s colonial capitol, Merida, provided some STL fodder. One afternoon on infringement safari, I bagged some worthy game: a suspiciously greyhound-like logo on a city bus, and a more-than-suspicious imitation of VANS shoes called VEEENS.

Pretty soon, the hunter realized, he’d need to retreat back to the cool climes of Seattle and get back to work.

I’m taking a breather in the Yucatan, seeing as many Mayan ruins as I can. STL will resume posting on Nov. 7. Until then, tenga un feliz Dia de los Muertos!

Templo de los Guerreros
Photo Credit: Keith Pomakis