Seattle Trademark Lawyer

The Seattle-based Coffee Politics blog continues to analyze the deal Ethiopia and Starbucks struck in June over the marketing and licensing of Ethiopia’s specialty coffee designations. In particular, it explores the meaning of common law trademark rights and the effect of the parties’ decision to define their rights in terms of “designations” rather than “trademarks.” The officials who negotiated the deal for Ethiopia told the blog last month that the term “designation” offered the country broader rights than “trademark” because it encompassed common law marks. (STL’s recent discussion of the issue here.)

Based on that statement, Coffee Politics polled some intellectual property attorneys for an explanation. Here’s the consensus as to what it found those rights mean in practice:

“In the United States, trademark rights arise through use. Meaning, if a mark is used in connection with goods or services as an indicator of source (i.e., if it’s used as a trademark), then the holder has trademark rights. Those trademark rights can stop a late-comer from using a confusingly similar mark in connection with goods or services. To that extent, the owner of a common law mark has the exact same rights as the owner of a federally-registered mark.

“The main differences between rights stemming from registration and those stemming from common law are that federal registration: (1) gives the beholder presumption of being the exclusive owner of the mark in the United States, (2) the mark will be cited by the United States Patent and Trademark Office (USPTO) against future applicants wishing to register a confusingly similar mark, thereby preventing some confusingly similar marks from becoming registered, and (3) the presumed owner can use the ‘circle-R’ (®) designation to indicate to third parties that they should not adopt a mark that’s too close.

“Depending on the terms of agreement, therefore, common law rights might give Ethiopia, at least in the U.S., not only the temporary protection during the contract period, but also may lead to developing a viable brand in the long run. That is, assuming that all (or most) US distributors recognize Ethiopia as the sole owner of the marks and continue to work with Ethiopia in promoting the names for a longer period of time — long enough to distinctly identify the product ‘coffee’ and acknowledge that ‘Sidamo’ [one of the subject indications] is the only source of that distinct brand, the prospects for Ethiopia to tap into the benefits of branding are real.”

This is a nice discussion of basic trademark principles. Glad to see them being put to good and practical use!

The August issue of InsideCounsel discusses Utah’s Trademark Protection Act, which prohibits the use of trademarks in key word advertising that another party has registered in the state as an Electronic Registration Mark. The Act, which was controversial from its inception in March (see STL posts here and here), remains controversial today.

The main problem appears to be that a state is trying to regulate what inherently is interstate commerce. Since search engines do not stop at state lines, Utah’s statute could suddenly make Google and other search engine providers liable for a new form of trademark infringement. Law blogger and professor Eric Goldman explains in the article that “The Utah law requires perfect geo-location technology, and no one has such technology.”

For this reason, the statute could slow interstate commerce, which leads Prof. Goldman to conclude that it violates the dormant Commerce Clause on its face. As a practical matter, he also thinks impeding search engines ultimately could hurt consumers.

“It might cause consumers to view a reduced set of materials in search results, which would channel their behavior to trademark owner-controlled options, reducing competitive options and causing consumers to pay higher prices.”

The article reports that Utah legislators met with critics in April to discuss a compromise but the two sides remain “far apart.” Utah House majority leader David Clark, who sponsored the bill, says that without such a compromise, “the referee in our system is the courts.”

On August 3, the Western District granted Wash.-based shoe makers Topline Corp.’s and Report Footwear, Inc.’s motion for preliminary injunction against women’s 4273371 Canada, Inc., and Modextil, Inc., enjoining defendants’ use of REPORT COLLECTION as a trademark in connection with the advertising and sale of women’s clothing. In doing so, the court found plaintiffs were likely to succeed on the merits of their infringement claim against defendants based on Topline’s registered REPORT trademarks for footwear.

The case is not terribly remarkable for any particular trademark issue but the 21-page decision, filed August 13, is noteworthy for its detailed analysis of the Ninth Circuit’s test for likelihood of confusion under AMF, Inc. v. Sleekcraft Boats, 599, F.2d 341 (9th Cir. 1979), and for its discussion of the standard for granting preliminary injunctions. Judge Thomas Zilly, who decided the motion, also required Topline to post a $1 million bond.

The case cite is Topline Corp. v. 4273371 Canada, Inc., No. 07-938 (W.D. Wash.).

The Seattle Times today reports on a local author’s struggle with the U.S. Olympic Committee — all because he wrote a guidebook on Washington’s Olympic Peninsula. As the Times points out, “‘Olympic’ is attached to a seemingly endless stream of goods and services around here — not to mention Mount Olympus, the Olympic National Park, Olympic National Forest, and the state capitol, Olympia.”

For that reason, part-time park ranger Jason Bausher didn’t think there would be a problem when he published a guidebook to his favorite places on the Olympic Peninsula. His booklet is titled “Best of the Olympic Peninsula.”

Jason Bausher, near the Old Olympic Highway, holds his guide to which the USOC objects. Photo credit: Andrei Pungovschi/AP

The USOC nonetheless took issue with his book. It learned about Mr. Bausher and his guide when he applied to register BEST OF THE OLYMPIC PENINSULA with the Patent and Trademark Office. It then sent him letter demanding that he withdraw his application. According to Mr. Bausher, the parties’ last communication ended with the USOC suggesting it might sue him.

The Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. § 220501, et seq., vests with the USOC near monopoly rights over the words “Olympic,” “Olympiad,” “Paralympic,” “Paralympiad,” and other related words, regardless of whether the use causes a likelihood of confusion. Recognizing the geographic significance of “Olympic” in western Washington, however, Section 220506(d) of the statute also provides an exception for local businesses. The word lawfully can identify a business where “it is evident from the circumstances that such use of the word ‘Olympic’ refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998,” and the business’ goods or services are marketed “in the State of Washington west of the Cascade Mountain range and operations, sales, and marketing outside of this area are not substantial.”

Since Mr. Bausher’s booklet is new, and is marketed worldwide on the Internet, it does not appear to meet this exception. However, it seems nonsensical that a book about the best places on the Olympic Peninsula can’t call itself the “Best of the Olympic Peninsula.” Whether or not the statute excepts such fair use, the USOC should be used to Washington’s geographic designations by now. In 2010, the Winter Olympics will be held a stone’s throw from here in Vancouver, B.C.

On Friday, I attended some of the “Anti-Counterfeiting & Piracy 2007” program co-sponsored by the U.S. Patent and Trademark Office and U.S. Chamber of Commerce. (STL preview of the event here.) The program took place in Bellevue as part of the groups’ national road show on the issue.

Washington’s attorney general Rob McKenna added some local flavor. He characterized Washington as the nation’s most trade-dependent state and said a number of local companies have been damaged by counterfeiting. He went on to describe a recent meeting he had with other state attorneys general that emphasized that counterfeiting goes beyond pirated music CDs and software. The Seattle Post-Intelligencer quoted him as saying: “When the chamber representative passed around the table counterfeit automobile brake pads and counterfeit medical supplies and talked about the Federal Aviation Administration’s estimate that something like 2 percent of airplane parts are counterfeit, they really got our attention.”

This morning I checked out the CD with handouts from the event. One contains a talk entitled “Trademarks: Identifying & Protecting Your Rights” by Susan Anthony, an attorney-advisor in the PTO’s Office of International Relations. She suggests that trademark owners concerned about protection abroad start simple: recognize that trademark law around the world can be different than it is here. Most importantly, she said, trademark owners seeking protection abroad should get their marks registered in the country where they will be used.

“If you take nothing else away from this presentation, take this away: trademark rights are territorial. That is, trademarks must be protected on a country-by-country basis. We’re spoiled in the United States. We put on our American cap and we think that the world thinks like Americans. We’re spoiled by the fact that registration is not required in the United States. Many of us perhaps are not aware of registration, but we have rights – we are protected in our unregistered marks pursuant to the common law. But that is not so in most of the countries of the world, where a mark must be registered in order to have any rights in that country. Most countries follow a first-to-file rule, which means that protection is granted to the first party who files an application and receives a registration. Again, that is different from the United States, which is a first-to-use country, and there are several other countries – just a handful – that also are first-to-use. … [Y]ou must search and file in each country in which you want trademark protection, in which you wish to sell your goods and services.”