Seattle Trademark Lawyer

On May 4, Western District Judge Ricardo Martinez granted defendant Kalmbach Publishing Co.’s motion for partial summary judgment dismissing plaintiff Rubber Stamp Management Inc.’s federal trademark claims. The Browns Point, Wash.-based craft supplier and seller of decorative rubber stamps had alleged that the defendant publisher gives consumers a false impression about the origin of its craft-making booklets by using a purple arch design that is similar to the “purple arch mark” plaintiff uses on its Web site.

Plaintiff’s mark (depicted below) appears on its Web site along with the registered logo, “Addicted to Rubber Stamps,” and a cartoon image of a woman jumping enthusiastically with a rubber stamp held in each hand, placed in the center of the arch. Only the purple in these marks was at issue in the case. Plaintiff has used its marks since 2001.

Defendant’s design appears on the cover of its Easy-Does-It Series booklets (the top portion of which is depicted below) as an arch that may be one of many different colors, including purple. Defendant chooses the color for its arch and background to complement the subject of its booklet. It has used its arch design since August 2002.

In January 2006, Plaintiff filed a trademark application “consist[ing] of the color ‘purple’ used on mailing labels, websites, logos, letterhead, and printed promotional or advertising materials and digital facsimiles thereof.” In July 2006, the U.S. Patent and Trademark Office refused to register the mark. In the instant motion, defendant moved for summary judgment on the ground that plaintiff does not have a protected or protectable trademark in the color purple used in the arch and, therefore, no claim for false designation of origin, false representation, false advertising, or trademark dilution.

The court recognized that a color mark is not inherently distinctive, but can become distinctive over time if consumers treat the particular color as signifying a particular brand. Therefore, the court focused on plaintiff’s proof of secondary meaning. Plaintiff argued that secondary meaning presents a question of fact and urged the court to deny summary judgment to allow the plaintiff to present the issue to the jury.

The court disagreed. It found “plaintiff must first put forth evidence which would create a triable issue of fact as to the question of secondary meaning. While plaintiff has presented evidence of its advertising campaign and expenditures, nowhere is there any evidence of the consumers’ actual association of the purple arch with [plaintiff’s] product, or even of an effort to direct the consumer to make that association by saying, ‘look for the purple arch.’ Thus, no matter how favorable the light in which the Court views plaintiff’s advertising evidence, no triable issue of fact on the question of secondary meaning can be found because plaintiff’s evidence on a crucial element is lacking.”

Based on this finding, the court concluded “[w]ithout secondary meaning, the mark lacks distinctiveness required for protection under § 43 of the Lanham Act, 15 U.S.C. § 1125(a). In the absence of distinctiveness of the mark, it cannot ‘cause confusion’ as to the origin of the goods as required by statute.”

The court dismissed plaintiff’s dilution claim without further comment.

The case cite is Rubber Stamp Management, Inc., v. Kalmbach Publishing Co., No 06-0277, 2007 WL 1367718 (W.D. Wash.).

Bothell, Wash.-based Brooks Sports, Inc., filed suit May 4 in the Western District against Payless Shoesource, Inc., Exeter Brands Group, LLC, and Nike, Inc., over the alleged infringement of its running shoe logo.

Brooks’ complaint alleges that defendants recently began manufacturing, promoting, and selling a new line of performance athletic shoes called “Tailwind.” Brooks alleges that shoes in this footwear line bear a design mark that is substantially identical and confusingly similar to Brooks’ design mark.

Confusingly similar? Tailwind (top) and Brooks running shoes
(photo credit: OregonLive.com)

Defendants have not yet answered the complaint.

The case is captioned as Brooks Sports, Inc. v. Payless Shoesource, Inc., No. 07-0695.

On May 2, the Northern District of California dismissed plaintiff Jarritos, Inc.’s infringement and dilution claims against the defendant owners of a San Francisco restaurant called “Los Jarritos.” Plaintiff alleged it manufactures and distributes soft drinks under various JARRITOS trademarks and that defendants’ use of the “Los Jarritos” name and logo in connection with their restaurant infringed and diluted plaintiff’s marks.

Defendants moved for summary judgment. On plaintiff’s infringement claim, the court found that even if the parties’ goods were considered related, “the absence of any evidence demonstrating that any of the remaining eight [Sleekcraft] factors tip in Plaintiff’s favor warrant[s] granting summary judgment. Plaintiff bears the burden of demonstrating that ‘confusion is probable, not simply a possibility.’ Cohn v. Petsmart, Inc., 281 F.3d 837, 842-43 (9th Cir. 2002).”  

On plaintiff’s dilution claim, the court noted the Trademark Dilution Revision Act revised the Federal Trademark Dilution Act “to deny protection to marks that are famous only in ‘niche’ markets. Century 21 Real Estate LLC v. Century Ins. Group, 2007 WL 484555, *14 (D. Ariz. Feb. 9, 2007).” (STL discussion of Century 21 here.)

The court first found that plaintiff failed to show fame: “Defendants argue that Plaintiff’s dilution claim fails because the marks are not identical, Plaintiff’s mark is not famous, and that Defendants are not using the mark in a way that capitalizes on that mark’s status in the soft drink market. Plaintiff admits that it needs to prove fame, but states that it ‘will do so at trial.’ Unfortunately for Plaintiff, to proceed to trial, Plaintiff had an obligation to submit evidence demonstrating the fame of its mark in opposition to the motion for summary judgment. The only evidence Plaintiff does submit is insufficient.”

Plaintiff’s evidence evidence mainly consisted of a one-page map of the United States with text stating: “100% Hispanic Coverage more than 50,000 points of sales, 220 Food Service Distributors, 209 Distributors.” The court found that even if it accepted these purported facts as true, the document was insufficient to prove fame because it did not address the volume of plaintiff’s sales, the breadth of its advertisements, or consumers’ recognition of the mark.

The court also found: “Even if Plaintiff did have some evidence demonstrating its mark is famous, which the Court finds it does not, Plaintiff has not submitted any admissible evidence demonstrating that its mark was famous as of 1988, when Defendants opened their restaurant. On this basis alone, the Court grants Defendants’ motion as to Plaintiff’s federal dilution claim.”

Finally, the court found: “Plaintiff is required to demonstrate that Defendants have been using its mark ‘as a trademark, capitalizing on its trademark status.’ Plaintiff has not submitted any evidence in support of this element. Accordingly, this provides another, independent basis for granting Defendants’ motion.”

The case is captioned as Jarritos, Inc. v. Los Jarritos, No. 05-02380, 2007 WL 1302506 (N.D. Calif).

The manufacturer of electrical distribution products has obtained a stipulated permanent injunction against two Tacoma sellers of 85,000 counterfeit circuit breakers. Plaintiff Square D. Company and defendants CES Liquidating LLC (formerly Connecticut Electric & Switch Mfg. Co.) and TES Liquidating LLC (formerly Tacoma Electric Supply Co.) entered into a Consent Order for Permanent Injunctive and Other Relief, which Western District Judge Franklin Burgess entered April 30.

The injunction prohibits the defendants from purchasing, packaging, selling, or distributing Square D products, including residential circuit breakers sold under Square D’s QO and HOMELINE trademarks. The order further requires defendants to dispose of their inventory of authentic Square D products by replacing counterfeit products returned to them in response to their product recall efforts or by selling such authentic products in their normal course of business. Defendants had until March 31 to dispose of their inventory. 

The order also requires defendants to relinquish control over all counterfeit Square D products for destruction and to provide Square D with information about where they had purchased Square D products for the last three years. Upon satisfaction of these conditions, the order requires Square D to dismiss its claims against defendants with prejudice and without fees or costs to either party.

Square D’s complaint alleged that defendants purchased, distributed, or sold counterfeit Square D circuit breakers and falsely suggested to consumers that defendants were the manufacturers or authorized distributors of authentic Square D circuit breakers. Defendants admitted they had sequestered more than 22,000 counterfeit circuit breakers as a result of a Square D inspection.

The case is captioned as Square D. Co. v. Conn. Electric & Switch Mfg. Co., Viewpack LLC, No. 06-5714 (W.D. Wash.).

Seattle has a new intellectual property law blogger, IP Law Chat, published by Stacia Lay of Hendricks & Lewis. Ms. Lay states she plans to “focus on legal news about trademarks, copyright, technology, media and whatever else strikes my legal fancy and that I can tie into one of these areas of the law. Look for discussion of recent cases and IP news as well as links to informational and news items.” Since starting on April 16, she has followed through with that plan, writing about the Utah Trademark Protection Act, settlement of the Seattle daily newspapers’ dispute over their joint operating agreement, and the break between the Second and Ninth Circuits over the “famous marks” doctrine. Welcome, and thanks to Ron Coleman for pointing out this new local resource.

I’ve also discovered that Seattle University Associate Dean and Professor Eric Chiappinelli blogs on Cases and Materials on Business Entities, structured around his textbook of the same name. Recent posts have addressed the recent Nebraska Supreme Court’s decision on partnership buyouts, a Delaware court decision on cancelling shareholder meetings, and a Maryland court’s decision on the duty of loyalty. Dean Chiappinelli’s blog is an interesting teaching tool and supplement to his text. He began posting in August 2006, a few months before STL began.

I’ve added these blogs to my “Seattle Law Blogs” blogroll (at bottom, right). Please let me know if there are any other Seattle-based law blogs out there.