Seattle Trademark Lawyer

I spent my undergraduate days at a Catholic college in aptly named Collegeville, Minnesota, where Minnesota Public Radio was founded. Therefore, I was more interested than perhaps most Seattle-based trademark lawyers to learn that MPR had brought suit against another radio station for alleged infringement of MPR’s trademark, THE CURRENT. MPR, home of Garrison Keilor’s “A Prairie Home Companion” radio show, filed suit at the end of last year in the District of Minnesota against Virginia Beach Educational Broadcast Foundation, Inc., d/b/a Positive Hit Radio The Current, based on Positive Hit Radio’s alleged use of THE CURRENT and CURRENT FM trademarks in connection with radio services. MPR’s false designation of origin, cybersquatting, unfair competition, and common law trademark infringement claims are based on MPR’s alleged ownership of THE CURRENT, LIVE CURRENT, CROSS CURRENTS, THE CURRENT HOOTENANNY, and THE CURRENT FAKEBOOK trademarks, and the parties’ alleged competition for radio consumers in Minnesota and elsewhere through the Internet. This came to my attention because the case was transferred to the Eastern District of Virginia on convenience grounds on October 4.

This isn’t earthshaking news, but it nonetheless strikes me as an interesting example of how the Internet has changed what used to be an inherently local service into one that is provided nationally and internationally. Ten or twelve years ago, I can’t imagine that MPR would care if a radio station in Virginia ripped off its trademark, if that’s indeed what happened here. Now, I can see MPR’s point. It will be interesting to see how the court analyzes likelihood of confusion in this situation. One development of interest is that at the time MPR filed its complaint, none of its trademarks was federally registered. Since that time, however, THE CURRENT has matured into Reg. No. 3301681. Since it was filed on an intent-to-use basis, MPR will have a priority date of December 6, 2004, the date on which it filed the application. If Positive Hit Radio did not make use of THE CURRENT until after March 19, 2005, when it registered currentfm.com, then MPR would have a new, stronger claim and priority to boot.

The case cite is Minnesota Public Radio v. Virginia Beach Educational Broadcast Foundation Inc., No. 06-4667 (D. Minn.) and No. 07-431 (E.D. Va.).

In 2005, Keystone Laminates, Inc., obtained a default judgment against KlipTech Composites, Inc., owned by defendants Joel and Leeann Klippert, in the total amount of approximately $120,000. Keystone alleges that during supplemental proceedings, it learned that KlipTech had sufficient assets in 2004 to satisfy its debt to Keystone, but that KlipTech instead transferred those assets to Paneltech International, LLC, one of KlipTech’s former clients.

In 2007, Keystone filed suit in the Western District against Mr. and Mrs. Klippert and Paneltech for fraudulent transfer, corporate successor liability as to Paneltech, and to pierce KlipTech’s and Paneltech’s corporate veils as necessary to prevent abuse of the corporate form to frustrate Keystone’s ability to collect on its judgment. In September, it moved for an order transferring title of the trademarks from KlipTech to Keystone to satisfy its judgment.

In support of its motion, Keystone alleged that Joel Klippert wrote Paneltech’s owner a letter structuring the deal as follows: “Paneltech is buying the equipment assets from KlipTech. KlipTech will own the brand names, KlipTech, Ramp X, PaperStone & AquaComp and at the point that KlipTech Composites, Inc. is closed/folded those brand names will be the property of Joel Klippert.” Keystone alleged that KlipTech as a business never closed, so the transfer of the trademarks to Mr. Klippert never took place.

Mr. Klippert disputed those facts, however, and Judge Franklin Burgess found Keystone’s theory lacked clear evidentiary support. The court concluded “where ownership of the aforementioned brand names is not clearly shown, and where the status of the Judgment Debtor is also unclear, Keystone’s motion most be denied.”

The case cite is Keystone Laminates, Inc. v. Klippert, No. 07-5164, 2007 WL 2915153 (W.D. Wash.).

Seattle alternative newspaper The Stranger discussed a threatened trademark lawsuit today in its blog, Slog. It states the Women’s Expressive Theater, Inc., of New York has sent “four cease and desist letters” to the Washington Ensemble Theatre of Seattle over the latter’s acronym, WET. Last year, Women’s obtained a federal registration for WET in connection with “education and entertainment in the nature of theater productions, live readings of plays, screenplays and fiction, organizing panel discussions, conducting workshops, providing facilities for showing films, all related to women and the arts.” Women’s apparently thinks Seattle theatergoers are likely to be confused between the two companies since they are both WET for short.

The Stranger quotes a Washington Ensemble member as asking: “What is the state of nonprofit theater in America today when one theater across the country doesn’t believe we can co-exist in a national marketplace, and would rather tie up both their artists and ours in lawsuits and going to court instead of making art?”

That’s a great question. Let’s hope we never find out.

Thanks to Spam Notes blogger Venkat Balasubramani for bringing this story to my attention.

On Oct. 5, Seattle physician Ray Liao, M.D., agreed to a preliminary injunction enjoining him pending trial from “infringing upon the [American Board of Anesthesiology, Inc.’s] name and certification marks,” and from “[m]aking any representation, including any use of brochures, certificates, letterhead, business cards or other written information indicating or implying that the defendant is Board certified by the ABA.”

The ABA’s Sept. 18 complaint alleges that Dr. Liao intentionally used the ABA’s certification mark, THE AMERICAN BOARD OF ANESTHESIOLOGY and design, with the “clear intent to deceive others into believing that he is an ABA Diplomate and that he is an ABA-certified anesthesiologist.” In particular, the ABA alleges that Dr. Liao provided a representative of the Northwest Credentials Verification Service a “counterfeit reproduction of an actual ABA certificate” that contains Dr. Liao’s name and states that he is “qualified to serve as a consultant in anesthesiology” when he had not been Board certified in anesthesiology by the ABA.

Dr. Liao has not yet answered the ABA’s complaint.

The case cite is American Board of Anesthesiology, Inc. v. Liao, No. 07-1458 (W.D. Wash.).

Last week, the Senate confirmed Richard Jones as federal judge in the Western District of Washington. He replaces Judge John Coughenour, who went on senior status last year. Judge Jones, 56, is a 1975 graduate of the University of Washington School of Law. He served as a King County deputy prosecutor, staff attorney for the Port of Seattle, associate attorney at the former Seattle law firm of Bogle & Gates, and assistant U.S. attorney before being elected to the King County Superior Court bench in 1994. While on the bench, Judge Jones presided over the Green River Killer trial in which he sentenced Gary Ridgway to 48 consecutive life terms. The Seattle Times reported that he was among the most highly-ranked King County Superior Court judges in a lawyer survey in 2003 and was named “judge of the year” by the King County and Washington State Bar Associations in 2004. His half-brother is celebrated musician Quincy Jones.

Congratulations, Judge Jones! We look forward to working with you. 

Photo credit: The Seattle Times