Seattle Trademark Lawyer

Seattle mortgage lender Evergreen Moneysource Mortgage Co., Inc., voluntarily dismissed without prejudice its trademark infringement and unfair competition claims today against Puyallup resident Joel Lundberg and others who offer competing mortgage lending services under the “Evergreen Mortgage” trade name and EvergreenHomeLoans.com domain name.

Evergreen’s complaint had alleged that defendants’ use of “Evergreen” infringed Evergreen’s federally-registered trademark, EVERGREEN MORTGAGE.

Interestingly, Evergreen’s complaint states: “Defendant admitted through their attorney, by letter dated October 24, 2005, addressed to a representative of Plaintiff that ‘[t]here is, of course, at least a possibility, if not a likelihood, of confusion among consumers about [plaintiff] Evergreen Moneysource and [defendant] Evergreen Mortgage being one and the same, but we believe that this is more hypothetical than real.’”

Evergreen was able to dismiss its case under Rule 41(a)(1)(i) because it filed its notice of dismissal before defendants served their answer.

The case is Evergreen Moneysource Mortgage Company, Inc., v. Lundberg, et al., No. 07-05127 (W.D. Wash).

This weekend I bought “The Associated Press Stylebook,” the writing bible used by countless media outlets. I thought it would make a good long-term challenge to try to bring STL more in line with these accepted standards. What I didn’t expect was that the book would have direct implications on the world of trademarks. I now see it is an important force in shaping how news readers use trademarks in everyday life — especially with regard to genericism.

The Stylebook instructs reporters that a trademark is a “brand, symbol, word, etc., used by a manufacturer or dealer and protected by law to prevent a competitor from using it: AstroTurf, for a type of artificial grass, for example. In general, use a generic equivalent unless the trademark name is essential to the story. When a trademark is used, capitalize it.” It has similar instructions with regard to “brand names” and “service marks.”

The book addresses many trademarks by name, as well as the victims of genericide.

With respect to “Realtor,” for example, it states: “The term real estate agent is preferred. Use Realtor only if there is a reason to indicate that the individual is a member of the National Association of Realtors.” In other words, “Realtor” is a trademark; “real estate agent” is its generic equivalent.

Similarly, “Q-tips” is a “trademark for a brand of cotton swabs”; “Rollerblade” is a “trademark for inline skates”; and “Rolodex” is a “trademark for a brand of rotary card file.”

By contrast, escalator, nylon, and thermos are generic words.

The Stylebook also directs news writers to INTA’s “Trademark Checklist“ for questions about marks not listed.

Given its influence on how reporters write about trademarks — and, consequently, on how the public uses trademarks — it’s gratifying to see the Stylebook training news writers to use trademarks with such precision.

The next step, I suppose, is for news writers to learn how trademarks differ from patents and copyrights.

On April 17, plaintiff Levi Strauss & Co. obtained a default judgment against defendant Kolonaki, Inc., on its dilution and trademark infringement claims brought in Levi Strauss & Co. v. Fox Hollow Apparel Group, LLC, et al., No. 06-3765, 2007 WL 1140648 (N.D. Cal.).

Levi originally brought suit against seven companies, all of which were dismissed except for Kolonaki, owner of the ”Georgiou” chain of retail clothing shops. Levi alleged Kolonaki began selling jeans and capri pants with stitching designs that were confusingly similar to Levi’s “Arcuate” design mark (pictured at right). Levi served Kolonaki but Kolonaki did not respond. As a result, the clerk of the court entered default against Kolonaki.

Levi then moved for default judgment. The court granted the motion and awarded Levi $75,600 in damages and $10,075.54 in attorneys’ fees and costs. The court also enjoined Kolonaki from manufacturing, distributing, or selling goods that infringe Levi’s “Arcuate” mark.

The court analyzed Levi’s dilution claim under the Trademark Dilution Revision Act under the “likelihood of dilution” standard that existed in the Ninth Circuit before Moseley v. V Secret was decided. In the court’s words:

“Section 1125(c) no longer requires the owner to demonstrate actual harm, a standard established by the Supreme Court in Moseley v. V Secret Catalog, Inc., 537 U.S. 418, 433-34 (2003). The revision changes the law to the pre-Moseley standard. Under that test, injunctive relief is available if a plaintiff can establish that (1) its mark is famous; (2) the defendant is making commercial use of the mark in commerce; (3) the defendant’s use began after the plaintiff’s mark became famous; and (4) the defendant’s use presents a likelihood of dilution of the distinctive value of the mark. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998).”

Applying this standard to the facts alleged in the Levi’s complaint, the court found “Plaintiff has shown that its trademarks are famous [though the court did not examine the factors set forth in 15 U.S.C. § 1125(c)(2)(A) to support such a finding]; Defendant is using the mark in commerce; Defendant’s use began after the mark became famous; and the use is likely to cause dilution.”

The court concluded its analysis in a strange fashion — by discussing infringement: “Furthermore, Defendant’s trademark infringement was willful. Defendant had prior knowledge of Plaintiff’s trademarks and the similarity between both companies’ products, but nonetheless continued to use the offending designs.” The court apparently believed these facts supported its finding of dilution by blurring. In my view, however, these facts are superfluous to Levi’s dilution claim. Moreover, the court unnecessarily confused its dilution analysis by introducing infringement principles to this distinct cause of action. The court instead should have examined the six factors indicating dilution by blurring set forth in 15 U.S.C. § 1125(c)(2)(B).

One final thought: it’s a mystery to me why an established company like Georgiou would allow a default judgment to be entered against it. Even if it had engaged in the wrongdoing the complaint alleged, a simple notice of appearance and minimal participation in the case likely would have lessened its worst-case scenario to a stipulated permanent injunction. Its doing so probably would have saved it $85,000.