Seattle Trademark Lawyer

On May 1, Spokane sports equipment maker Brett Bros. Sports International, Inc., filed suit in the Eastern District of Washington against Jas D. Easton, Inc., and related companies, alleging that Easton’s STEALTH baseball and softball bats infringe Brett’s STEALTH trademark used in connection with its own baseball and softball bats.

The complaint alleges Brett has sold nearly 40,000 STEALTH-branded bats since 1999. Brett claims Easton began marketing and selling its own STEALTH bats and related equipment in November 2004.

In case you’re wondering about a Leo Stoller connection, one allegedly exists. Brett alleges:

“On April 29, 2004, a company by the name of Stealth Industries, Inc. sued George Brett and Brett Bros. for alleged trademark infringement and unfair competition in the U.S. District Court for the Northern District of Illinois for Brett Bros.’ allegedly-infringing use of ‘Stealth’ on its baseball bats. Two additional parties were ultimately added as plaintiffs in that action: Central Manufacturing Company and Leo Stoller. …

“Stoller alleged that he and his various companies owned the rights to the name ‘Stealth’ for use on a wide variety of consumer products, including baseball bats. After the Stoller suit was filed in 2004, Brett Bros. decided to temporarily shelve its plans for marketing and selling its ‘Stealth’ softball bat until Brett Bros. prevailed in the Stoller Suit. Instead, Brett Bros. developed, marketed, and sold its ‘Thunder’ softball bat. …

“During the Stoller Suit, Stoller disclosed that Jas D. Easton, Inc. and Easton Sports, Inc. entered into a ‘Stealth Trademark License Agreement’ with one of Stoller’s businesses, rentamark.com, for use of ‘Stealth’ on various sporting goods including ‘baseball bats and softball bats.’ …

“Pursuant to the Easton-Stoller Agreement, Jas D. Easton, Inc. and Easton Sports, Inc. acknowledged rentamark’s ‘exclusive ownership’ and title to the ‘Stealth’ mark, and Jas D. Easton also assigned its ‘entire right, title, and interest’ in the ‘Stealth’ mark to Central Mfg. Co., one of the companies owned and operated by Stoller. This assignment by Jas D. Easton was effective and binding upon its then-subsidiary, Easton Sports, Inc. and its successor corporation, Easton-Bell Sports, Inc.”

Brett’s complaint further states: “On September 30, 2005, the Honorable David H. Coar of the U.S. District for the Northern District of Illinois entered summary judgment in favor of George Brett and Brett Bros. in the Stoller Suit. In so doing, the Court found that neither Stoller nor any of his wholly-owned companies that were named as plaintiffs actually owned the rights to the name ‘Stealth’ for baseball bats. The Court dismissed the Stoller Suit; cancelled Stoller’s U.S. Trademark Registration No. 2,371,075 for ‘Stealth’ on baseball, softball, and t-ball bats; and ordered Stoller to pay George Brett’s and Brett Bros.’ attorneys’ fees and costs.

“After Judge Coar entered his order dismissing the Stoller Suit, Brett Bros. followed through on its original plans to manufacture and sell the Brett Bros.’ ‘Stealth’ softball bat. Accordingly, Brett Bros. manufactured in October of 2006 its ‘Stealth’ softball bat and is currently selling same.”

Easton has not yet answered Brett’s complaint. The case is captioned as Brett Bros. Sports Int’l, Inc. v. Jas D. Easton, Inc., No 07-138 (E.D. Wash.).

Two final things to report from INTA. First, even though I spent a small fortune in cab fare endlessly shuttling between downtown and the convention center, I can say that my experience in Chicago was well worthwhile. For me, the highlight was attending the “Meet the Bloggers” reception at the Billy Goat Tavern hosted by trademark blog titans Marty Schwimmer (The Trademark Blog), John Welch (The TTABlog) and Ron Coleman (Likelihood of Confusion). I also got to hang out with David Donoghue (Chicago IP Litigation Blog) and spotted longtime UK blogger Jeremy Phillips (IPKat), though I regret I didn’t get a chance to say hello. And, best of all for the blogger ego, STL readers!! I’m glad you’re out there and am grateful to Marty, John, and Ron for organizing this fine event.

^{Marty, John, and Mike}

Second, I was surprised to hear one INTA session boasted a standing-room only crowd: the presentation on keywords. I’m not surprised that it was popular. It’s a hot topic and was led by lawyers from Google, Yahoo!, AOL, and Microsoft. But the rooms were so large that the presentation must have been attended by hundreds. Here is the Chicago IP Litigation blog’s rundown with link to a Chicago Tribune story describing the event. Since when does the press report on CLEs? This one was hot. I’m sorry I missed it (though I plan on reviewing the PowerPoint slides in the very near future).

Can you tell that I’m already looking forward to next year’s meeting in Berlin?

CHICAGO - In one of the few programs I’ll have time to attend — making and renewing relationships with other trademark practitioners is just too important to pass up — I spent some time today learning more about how different countries approach the right of publicity. The International Trademark Association’s session on the “Right of Publicity Around the World” emphasized that the rights of publicity, privacy, and free speech we recognize in the United States are not necessarily the same rights other countries recognize. Take these cases for example:

• In Argentina, soccer superstar Diego Maradona obtained an injunction enjoining publication of a book titled, “Diego Maradona: The 1000 Most Famous Phrases in His Career.”
• In Germany, Princess Caroline of Monaco won a right of privacy case against the publisher of photos depicting her skiing, horseback riding, and doing other activities in public. The European Court of Human Rights found that the public did not have a legitimate right to know what the princess did in her private life.
• In Spain, a court found that photos depicting celebrities on vacation could not be published without the celebrities’ consent.
• In the United Kingdom, supermodel Naomi Campell prevailed over a British tabloid who published a photograph of her leaving a Narcotics Anonymous meeting.

In each of these cases, the plaintiff prevailed over the publisher. Suffice it to say, the results may very well have been different if the claims had been brought in the United States.

Any chance international courts will evolve into a unified approach to the right of publicity? The presenters believe we’re a long way away from that.

CHICAGO - The International Trademark Association annual meeting continues to grow. This year, more than 8,524 practitioners, academics, and members of the press have gathered at the gigantic McCormick Place convention center in Chicago to schmooze and and stay on the cutting edge of trademark law. According to the INTA Daily News account, INTA’s 129th annual meeting is being attended by 3,584 from the United States, 488 from the United Kingdom, 370 from Canada, 294 from Germany, and 271 from France. Mexico, Japan, Australia, India, Spain, Italy, Switzerland, Brazil, Argentina, the Netherlands, Sweden, Taiwan, the Philippines, and Singapore round out the top 20 most represented countries. In all, attentdees from 140 countries are here. It seems shocking that there are this many of us all in one place.

On April 24, the Southern District of New York revisited Louis Vuitton Malletier v. Dooney & Bourke, Inc., in preparation for the parties’ upcoming infringement and dilution trial stemming from their arguably similar handbags. (Louis Vuitton’s complaint here.) In doing so, the court found the Trademark Dilution Revision Act’s “likelihood of dilution” standard did not apply retroactively to claims for monetary relief. Therefore, it found Louis Vuitton must prove “actual dilution” before it can recover damages. This finding differs from courts’ retroactive application of the TDRA to requests for injunctive relief.

The TDRA states: “In an action brought under this subsection, the owner of a famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) [providing for damages] … [if] the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first use in commerce by the person against whom the injunction is sought after October 6, 2006….”

Louis Vuitton argued this provision entitles it to recover damages on its dilution claim by proving Dooney & Bourke is using a mark that is “likely to cause dilution.”

The court disagreed. It found: “The second sentence of subsection 1125(c)(5), entitling owners of famous marks to dilution damages, contains an unambiguous date restriction that authorizes the application of the ‘likelihood of dilution’ standard as a basis for recovering damages to civil actions where the dilution mark or trade name was first introduced after October 6, 2006.”

The court added: “Louis Vuitton attempts to evade this express proscription by arguing that ‘the TDRA is ambiguous as to its temporal reach.’ This is nonsense. The language of subsection 1125(c)(5) providing for monetary remedies unambiguously and explicitly prescribes its temporal scope to the day. Congress did not intend that the relaxed evidentiary standard would apply retroactively, and it is difficult to imagine how Congress could have been any clearer on this point.

“Louis Vuitton’s federal dilution claim is not, as Louis Vuitton suggests, ‘extinguished’ if the Court declines to retroactively apply the ‘likelihood of dilution’ standard to its prayer for monetary relief. Rather, the controlling standard is that which governed prior to the TDRA. Accordingly, Louis Vuitton’s federal dilution claim survives, although under the applicable standard, it will not reap monetary remedies absent a showing of actual dilution.”

In the court’s view, the TDRA should be applied retroactively to requests for injunctive relief but prospectively to claims for monetary relief because the first sentence of subsection 15 U.S.C. § 1125(c)(5), which provides for injunctive relief, “lacks any reference to the explicit date restriction contained in the second sentence, which addresses monetary relief.”

The case cite is Malletier v. Dooney & Bourke, Inc., No. 04-2990, 2007 WL 1222589 (S.D.N.Y.).