Seattle Trademark Lawyer

The Scotts Company and its parent, OMS Investments, Inc., have settled their trade dress and false advertising dispute with TerraCycle, Inc., the parties announced today. (STL’s May 16 post about the case here.) Scotts sells the MIRACLE-GRO line of plant food; TerraCycle sells plant food under its own name. Both use green and yellow packaging.

TerraCycle will drop its green-and-yellow packaging (left);
Scotts will drop its lawsuit.

As part of the Sept. 15 settlement, Scotts dismissed the case it filed in the District of New Jersey. In exchange, TerraCycle, while not admitting liability, agreed to phase out all use of specified trade dress, any trade dress that is confusingly similar with Scotts’ MIRACLE-GRO trade dress, and any trade dress that is confusingly similar to Scotts’ “green and yellow” trade dress.

TerraCycle also agreed to take down its “Sued by Scotts” Web site within three months. The site received prominent media attention during the litigation, including from the New York Times and Wall Street Journal.

Interestingly, and perhaps disturbingly, the Stipulated Order of Dismissal not only dismisses the case, but it also finds: “The following marks are valid, enforceable, fully subsisting, inherently distinctive, strong, famous and have acquired secondary meaning in the marketplace within the meaning of the Lanham Act, as amended, 15 U.S.C. § 1051 et seq.: (i) the MIRACLE-GRO Trade Dress, as exemplified in Exhibit B hereto; and (ii) the Green and Yellow Trade Dress, subject of Trademark Registration No. 2,139,929, attached as Exhibit C hereto.”

I suppose this seemingly gratuitous language is ok if, in signing the parties’ stipulation, the court really meant to find that Scotts’ trade dress is “valid, enforceable, fully subsisting, inherently distinctive, strong, famous and have acquired secondary meaning.” But if all the court meant to do was dismiss the case, or to find that the parties had agreed between themselves that the subject trade dress was “valid, enforceable, fully subsisting, inherently distinctive, strong, famous and have acquired secondary meaning,” this language is misleading. 

The case cite is OMS Investments, Inc. v. TerraCycle, Inc., No. 07-1064 (D. N.J.).

Full disclosure: I am defending an opposition proceeding brought by OMS Investments, Inc. (though it’s not a trade dress case). Maybe that makes me overly-sensitive. You be the judge.

On Sept. 18, Western District Magistrate Judge Kelley Arnold granted L.L. Bean, Inc.’s motion for judgment as a matter of law, dismissing Mother, LLC’s trade dress claims stemming from the parties’ competing hunting vests. The court granted the motion after Mother rested its case on the second day of trial.

The docket’s minute entry is dramatic in its own way: “Plaintiff rests. Jury excused. [L.L. Bean] moves for judgment as a matter of law; [Mother] argues - Granted. Court is at recess.” Sometimes, justice is swift.

Western District finds no trade dress infringement:
Mother Daypack (with belt extended) and Bean Upland Vestpack

For additional background, check out STL’s posts on the case from April 9, August 8, August 25, and September 16.

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

On Sept. 10, the Eastern District of California found that Nikepal International, Inc.’s use of NIKEPAL in connection with laboratory goods and services dilutes by blurring Nike, Inc.’s NIKE trademarks under the Trademark Dilution Revision Act’s likelihood of dilution standard. For this reason, the court also reversed the Trademark Trial and Appeal Board’s dismissal of Nike’s opposition to Nikepal’s registration of NIKEPAL. On Sept. 18, the court amended its findings of fact and conclusions of law, which are available here. (STL previously discussed the court’s order on summary judgment here.)

Nike has used NIKE in connection with athletic shoes, apparel, and sports equipment since the 1970s. It owns ten federal registrations for the NIKE word mark alone, and 19 others involving the word NIKE. It is the largest athletic seller of athletic footwear and apparel in the world.

Nikepal has used NIKEPAL in connection with glass syringes and other laboratory goods and services since 1998. It has two part-time employees. It operates entirely through its Web site, www.nikepal.com, email, and the telephone. In 2000, it applied for a trademark registration for NIKEPAL for “import and export agencies and wholesale distributorships featuring scientific, chemical, pharmaceutical, biotechnology testing instruments and glassware for laboratory use, electrical instruments, paper products and household products and cooking appliances.”

After a bench trial, Judge Garland Burrell, Jr., found that NIKE was famous, since “[b]y the 1990s, Nike had spent in excess of a billion dollars for promotion of NIKE products in the United States”; sales of NIKE products reached the billion dollar per-year level before Nikepal adopted the mark; and NIKE is registered on the Patent and Trademark Office’s principal register.

The TDRA defines dilution by blurring as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(A). The court concluded Nike had established dilution by blurring under each part of the TDRA’s six-factor test because: “The parties’ marks are nearly identical”; NIKE is inherently distinctive; Nike’s use of NIKE is substantially exclusive; NIKE is readily recognized; Nikepal’s owner was aware of NIKE before he adopted his company’s name; and Nike’s survey evidence showed that 87% of the people in Nikepal’s own customer pool associated the stimulus “Nikepal” with NIKE.

The court entered a permanent injunction preventing Nikepal from using the term “Nike” or any term confusingly similar thereto alone or as part of any trademark, domain name or business name under which Nikepal offers goods or services in commerce.

The court also reversed the TTAB’s decision dismissing NIke’s opposition to the registration of the NIKEPAL mark on the ground that Nike had presented new evidence, namely, a survey showing “the vast majority of the survey respondents, representing a significant segment of Nikepal’s target customer group, associate Nike and/or its products and services when they encounter NIKEPAL, thus perceiving the two marks as essentially the same.” This, the court found, compelled reversal of the TTAB’s decision.

The case cite is Nike, Inc. v. Nikepal Int’l, Inc., 05-1468 (E.D. Calif.).

On Sept. 10, the District of Oregon entered findings of fact and conclusions of law in a trademark infringement case between two charter bus companies, plaintiff Meridian Transportation Resources, LLC, and defendant Magic Carrier Resources, LLC. After a one-day trial, Magistrate Judge Janice Stewart found that defendant’s MCR-WEST trademark infringed plaintiff’s MTR WESTERN mark.

Seattle-based MTR Western operates 30 buses in Portland and is Oregon’s second-largest charger motor coach carrier. The court found it uses the following trade dress: “a solid gold painted motor coach with a decal on its side, close to the windows that reads MTR WESTERN in its stylized trademark format. This stylization includes ‘MTR’ in bold and italic font, and ‘Western’ in cursive font, accompanied by a logo with two swirls in contrasting colors … close to the driver’s side window of the motor coach. The Swirl Design logo and the MTR Western (Stylized) trademark are colored in orange, black, and white. The trade dress also includes an operating authority decal which includes the phrase ‘PROUDLY OWNED AND OPERATED BY’ preceding the operating authority information required by the U.S. Department of Transportation.”

Defendant Magic Carrier is owned by two Ukrainian brothers, Nikolay and Vitaly Uzko. The brothers formed the company in 2006 after reading an article about one of MTR Western’s owners and wanting to emulate his success. The Yuzkos purchased one used white Prevost motorcoach, which is the same model used for most of MTR Western’s fleet. To learn more about the business, the brothers visited MTR Western’s facility in Portland and talked to its sales manager, who shared information about where they could obtain service and maintenance. Nikolay Uzko chose the name “Magic” because he had used the name for his first company, Magic Wheels. The court found the brothers chose the other words “Carrier” and “Resources” as descriptive of the business but also with the intent to adopt a name similar, but not identical to, MTR Western.

Magic Carrier added an operating decal on one side of its bus with the same tag line used by MTR Western (“PROUDLY OWNED AND OPERATED BY”) preceding the operating authority information required by the U.S. Department of Transportation. Similar to MTR Western, Magic Carrier’s operating decal was stamped in black capital letters, although in a different font. The court found that although other busses also use the same or similar tag lines, the Yuzkos intended to adopt an operating decal name similar, but not identical to, MTR Western’s operating decal.

Magic Carrier registered the domain name mcr-west.com and developed a Web site for use in connection with its services. It also developed a business card containing the name MCR-West in stylized script above Magic Carrier’s full name, as well as a photograph of the coach. Using Photoshop, a friend of the brothers inserted an image of the coach in front of the Vatican and the Eiffel Tower and dropped a logo and the name MCR-West onto the image of the coach. The logo is common clip art and consists of a swirl design in gold and black. The court found the swirl was similar to MTR Western’s swirl design logo, but was more linear and without complete circles. Although shown on the business card, the logo was never painted onto the coach.

Upon being served with the summons and complaint, Magic Carrier destroyed its business cards, took down its Web site, and stipulated to a preliminary injunction, which the Court entered in June. Before trial, Magic Carrier stipulated to entry of a permanent injunction.

The court found most of the Sleekcraft factors weighed in favor of finding likelihood of confusion. Therefore, the court found Magic Carrier’s use infringed MTR Western’s trademarks and the Oregon state analog. However, the court refused to award MTR Western its attorneys fees as either an “exceptional case” under the Lanham Act or as the prevailing party under Oregon’s unfair and deceptive practices statute because it found the lawsuit had been unnecessary to avoid the damage that Magic Carrier’s infringement had caused.

The court explained that if MTR Western had “approached Magic Carrier less aggressively or had MTR Western’s lawyers first sent a cease and desist letter to Magic Carrier explaining trademark infringement, then this lawsuit would likely have been avoided. MTR Western gave Magic Carrier too little time to comply before engaging in litigation.”

The case cite is Meridian Transp. Resources, LLC v. Magic Carrier Resources, LLC, No. 06-820, 2007 WL 2688129 (D. Or.).

STL has written about the Mother, LLC v. L.L. Bean, Inc., trade dress infringement suit, including Mother’s discovery violations, here, here, and here. On September 13, the Western District fixed the attorney’s fees it awarded L.L. Bean in its August 7 sanctions order at $5,172 — the full amount L.L. Bean requested. Mother did not oppose the amount and informed the court it will send L.L. Bean a check.

Trial is scheduled to begin tomorrow.

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