Seattle Trademark Lawyer

As I was attending the International Trademark Association’s roundtable today on the Trademark Dilution Revision Act, I had a thought: the Trademark Dilution Revision Act is misnamed. It really should be called the “Trademark Dilution Replacement Act.” To my mind, that title would be more accurate because the Trademark Dilution Revision Act does not revise the Federal Trademark Dilution Act as much as replace it.

Sure, much of the FTDA survives in the TDRA. But as I understand it, the TDRA replaces all of 15 U.S.C. § 1125(c) — where the FTDA used to reside — with brand new text. H.R. 683, which upon enactment became the TDRA, states: “Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended — (1) by striking subsection (c) and inserting the following…” which goes on to recite the text of the TDRA. In other words, the old was thrown out and replaced with the new. Right?

The Second Circuit apparently doesn’t think so. In the first appellate decision to touch on the TDRA, Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., No. 06-0435, 477 F.3d 765 (2d Cir. 2007), the Second Circuit persists in analyzing dilution in terms of the FTDA. It states:

“The FTDA, as amended effective October 6, 2006, entitles the owner of a famous, distinctive mark to an injunction against the user of a mark that is ‘likely to cause dilution’ of the famous mark. 15 U.S.C. § 1125(c)(1) (hereinafter, the ‘amended statute’). The amended statute applies to this case to the extent that Starbucks has sought injunctive relief on the issue of dilution.”

Even if technically correct — H.R. 683 does refer to the act of deleting the old statutory text and inserting the new statutory text as being an “amendment” (albeit to the Trademark Act of 1946 and not the FTDA) — I think focusing on this technicality is a mistake. The FTDA is gone. It no longer applies. The TDRA is what controls now. Maybe this is a nerdy distinction, but I think it unnecessarily confuses this historically confusing area of the law to act like the dead-and-gone FTDA continues to exist, just in an amended form.

Is there any part of the FTDA that continues to exist outside of the TDRA? If not, future courts would do well to analyze dilution claims in terms of the TDRA rather than the now-superseded FTDA.

I can’t for the life of me remember where I first saw this. Some resourceful blogger must have pointed me to it in the last week or so. In any case, it’s been on my mind ever since. It’s an interview with Scot Duvall (pictured left), attorney for Victor and Cathy Moseley of “Victor’s Secret” and Moseley v. V Secret fame. In it, Mr. Duvall discusses Moseley, the need for a dilution cause of action, and his work last year with the International Trademark Association to revise the statute.

His view on the new “likelihood of dilution” standard:

“The ‘likelihood of dilution’ standard is offset by a narrowing of what constitutes a ‘famous’ mark, which is a mark of widespread renown recognized by the general consuming public of the United States. This is a watershed moment in the federal law of dilution. Brands that are ‘famous’ only in a niche product market, or only in a region of the United States, no longer qualify for protection under federal dilution law. This makes sense to me and to many in the trademark community. Dilution was always intended to be an extraordinary remedy for a limited number of extraordinary marks, and the TDRA takes the law back to these essential basics.” 

The impact Mr. Duvall believes the Trademark Dilution Revision Act will have:

“Undoubtedly, issues will arise for resolution under the TDRA over the next several years. Litigants and judges will try their hand at applying the new standards to interesting cases. We will probably read about a headline-making case from time to time and debate whether the court reached the correct result. For now, famous brand owners and small businesses alike would be well-advised to tread the dilution waters carefully – and to consult their trademark counsel before launching new products or services that call to mind a well-known brand (or bringing suit against a newcomer under either of the dilution causes of action).”

The full interview, conducted by law student Jessica Tipton, is published in The Brand: The Internet Magazine of Intellectual Property, an interesting trademark law resource in its own right. I’m glad I discovered it. Or that someone pointed me to it. Whatever.

On April 12, the Ninth Circuit affirmed the Central District of California’s finding that DISINFECTABLE is generic for disinfectable nail files and agreed that summary judgment dismissal of plaintiff’s trademark infringement claim was proper.

In Rudolph International, Inc. v. Realys, Inc., __ F.3d __, 2007 WL 1077176 (9th Cir.), plaintiff Rudolph and defendant Realys manufacture and sell abrasive nail files. California regulations require nail technicians to disinfect instruments used on multiple customers. In response to these regulations, Rudolph developed a line of files that could withstand the disinfection process. At that time, it stopped using the term “sanitizable” to describe its files and adopted the term “disinfectable,” which it used in connection with its established brand names “Soft Touch,” “Les Mirages,” and “Quadmetrics.”

Thereafter, Rudolph’s president, James Rudolph, was quoted in a trade journal saying that “[t]he word ‘sanitizable’ as it relates to nail and foot files needs to be abandoned forever. … The word to adopt is ‘disinfectable.’”

At the behest of its largest customer, Realys followed suit and started calling its files “disinfectable” instead of “sanitizable.” Rudolph sent Realys a cease-and-desist letter demanding that Realys stop using the term. When Realys refused, Rudolph sued.

Rudolph argued the district court erred in dismissing its trademark infringement claim because the mark should have been classified as “suggestive” and protectable, rather than “generic” and unprotectable.

However, the Ninth Circuit agreed with the district court’s finding that “No imagination or mental leap is required to understand that ‘disinfectable’ in the nail file industry means ‘capable of being disinfected.’”

The Ninth Circuit concluded: “The term ‘disinfectable’ relates to the type of product rather than its source and consequently falls on the ‘what-are-you’ side of the genericness test. In contrast, the source of the product is identified by Rudolph’s established brand names of ‘Soft Touch,’ ‘Les Mirages’ and ‘Quadmetrics.’ The district court correctly held that Rudolph failed to introduce sufficient evidence to meet its burden of persuasion that ‘disinfectable’ is not a generic mark. This question does not present a genuine issue of material fact and is appropriate for summary judgment notwithstanding our reluctance to take such action in trademark cases.”

In August 2006, Microsoft Corp. brought suit in the Western District against “John Does 1-217” for alleged cybersquatting, trademark infringement, and other trademark related causes of action. Microsoft described the unknown defendants as the “registrants, assignees, traffickers, and users of numerous Internet domain names that contain or consist of Microsoft’s marks and/or intentional misspellings of Microsoft’s marks.” Microsoft further alleged that “Defendants’ Websites contain numerous advertisements and/or hyperlinks to a variety of products and services” that enable the John Doe defendants to profit from their infringement. The marks defendants allegedly infringe include the registered marks HALO, MICROSOFT, MS, MSN, WINDOWS, WINDOWS XP, XBOX, and XBOX LIVE.

After conducting third-party discovery, Microsoft amended its complaint to name defendants Sule Garba of Shaker Heights, Ohio; Darin Grabowski of Oak Creek, Wisconsin; and Yi Ning of Boston.

On April 11, Western District Judge Ricardo Martinez entered a Stipulated Order Entering Permanent Injunction enjoining Mr. Ning from using or infringing Microsoft’s marks or registering domain names that are identical or confusingly similar to Microsoft’s marks. The order does not dismiss Microsoft’s claims against Mr. Ning but such claims presumably will be dismissed in due course. The stipulated order does not affect Microsoft’s claims against the remaining defendants.

The case is Microsoft v. Garba, No. 06-1192.

In February, STL wrote about “Other Seattle Law Blogs” in an effort to survey who else is writing about the law in Seattle. And, I started collecting links to those blogs in STL’s navigation bar (scroll down to the bottom on the right). Here are three more blogs written by Seattle lawyers. If the subject matter is of interest, they’re all worth a read.

First is Trial Ad Notes by Mary Whisner, a reference librarian (and lawyer) at the University of Washington School of Law’s Gallagher Law Library. Trial Ad Notes “presents news items and resources relating to trial advocacy, with a focus on Washington State.” Ms. Whisner began Trial Ad Notes in January 2005 as a resource for students taking UWSL’s trial advocacy course. However, it has become valuable to anyone interested in trial practice. Representative posts include “Forensic Sciences - Cautions and Recommendations,” “Summary Judgment and Gender,” and “Science Daily: Culture Is Key to Interpreting Facial Emotions.” As a reference librarian, Ms. Whisner is extremely well read and does a great job of bringing the best of what she finds to her readers’ attention. I personally owe her a debt of gratitude for her article, “A Blog’s LIfe,” which chronicles her experience launching her blog. It helped get STL started.

Next is the Maritime Injury Law Blog by Beard Stacey Trueb & Jacobsen, LLP. As its title suggests, this blog is published by plaintiffs’ Jones Act attorneys focused on the many risks Northwest fishermen face on the high seas. It is filled with summaries of news articles with harrowing titles like “Excursion Vessel and River Barge Collide,” “Broken Mast Kills Man,” and “Fisherman Rescued from Sinking Vessel.” And those are just the last three posts! My guess is these attorneys have no shortage of work.

The last blog is Employment Advisory, published by Rod Stephens of the Stephens Law Firm in the Seattle suburb of Kent. Mr. Stephens represents both employers and employees, and his blog reflects this even-handed focus. Recent posts discuss new Ninth Circuit case law interpreting the Uniformed Services Employment and Reemployment Rights Act and how employers should investigate employment claims. Mr. Stephens began publishing in November 2006.

I’ve added these blogs to STL’s navigation bar. If you’re aware of any other Seattle-based law blogs, please let me know!