Seattle Trademark Lawyer

Bellevue shoemaker Topline Corp. has a case going in the Western District against ten shoe sellers for federal trademark infringement, false designation of origin, common law trademark infringement, and violation of Washington’s Consumer Protection/Unfair Business Practices Act. Topline claims it sells its women’s shoes to Nordstrom, Macy’s, Victoria’s Secret, Kohl’s, and small fashion boutiques under the registered trademark FLIRT (Reg. No. 2283566). Topline alleges that defendants infringe its FLIRT mark by selling women’s shoes bearing the confusingly similar mark FLURT. 

Defendant Houser Shoes recently admitted as much. On April 4, the Western District entered a Consent Decree and Dismissal in which Houser admitted that its FLURT shoes infringed Topline’s FLIRT mark and agreed to an injunction enjoining it from “purchasing, selling or marketing footwear bearing the marks FLURT, GOTTA FLURT, or other colorable imitations of Plaintiff’s FLIRT trademark.”  

In exchange, Topline agreed to dismiss its claims against Houser without prejudice. Both parties agreed to bear their own costs in the litigation. The Consent Decree refers to a settlement agreement but does not disclose the terms. Judge Robert Lasnik entered the order.

Today, Topline and another defendant, Spoiled Rotten Boutique, submitted an identical Consent Decree with respect to Spoiled Rotten. Judge Lasnik presumably will enter it in short order.

The case is Topline Corp. v. Flurt Footwear, No. 07-00318.

Part 2 of the article, “How the Band Protects Its Brand: The Use of Trademarks to Protect and Promote the Musical Artist,” was published today in IPToday. For those who missed it, Part 1 is available here. Here’s an excerpt from the second installment:

“Like any other trademark, when selecting an artist’s professional name it is important to adopt a name that is both distinctive and unique. The more distinctive the name, the more effective the protection the name has as a trademark. Moreover, an artist should not only chose a distinctive name to protect its own identity, but the artist needs to avoid infringing upon other parties’ names. Because the likelihood of confusion between the two marks is the hallmark for trademark violations, a new artist should not choose a professional name that is identical or confusingly similar to an existing name in the music industry….”

“There have been numerous instances where an up and coming artist had to change its name due to trademark problems. For example, DINOSAUR JR. (formerly DINOSAUR), THE HOPEFULS (formerly THE OLYMPIC HOPEFULS), GREEN JELLY (formerly GREEN JELLÖ), AL FATZ (formerly FAT AL), DEATH FROM ABOVE 1979 (formerly DEATH FROM ABOVE), and THE VERVE (formerly VERVE) all had to change their professional names due to various trademark issues, the latter two involving similar record label names rather than other artist names. Moreover, commercial success does not guarantee litigation success: relative unknowns have forced successful artists to change their professional names. A recent example involved CBS’ rock band reality show Rock Star: Supernova, wherein the band, comprising famous musicians and the show’s winner, would be called SUPERNOVA. A lawsuit filed by a lesser known band called SUPERNOVA forced the reality band to change its name (not too creatively to ROCK STAR SUPERNOVA). Even the U.S. Postal Service was not pleased to see that there was an artist called “The Postal Service,” but an amicable resolution allowed the artist to retain its name.”

STL readers know of my interest in this issue. As I’ve said before, this is a series I wish I had written. Kudos to author Christopher R. Chase. I’m tempted to yell “Rock on!” but will just leave it with a dignified “Kudos.”

Eric Goldman of the Technology & Marketing Law Blog had a great post April 9 about Utah’s key word advertising statute, which STL discussed here. In it, he links to bill sponsor Sen. Dan Eastman’s blog defending the statute, and offers an insightful critique. He concludes:

“Sen. Eastman’s intransigence (“I make no apologies”) is understandable but unfortunate. This law will fail in the courts, and it would be a true public service to declare a “mea culpa” than to waste a lot of Utah taxpayers’ money in a futile defense of the law.”

Prof. Goldman also links to other resources on this issue. It’s a good read.

On April 6, the Western District imposed discovery sanctions against the plaintiff in Mother, LLC v. L.L. Bean, Inc., No. 06-5540, an infringement case arising out of two competing hunting vests. Gig Harbor-based Mother alleges that the Maine outfitter’s vest infringes Mother’s trade dress and constitutes a false designation of origin. L.L. Bean denies the allegations.

L.L. Bean moved to compel based on documents Mother allegedly failed to provide in discovery, as well as Mother’s conduct during the deposition of Martin Grabijas, Mother’s president. In particular, L.L. Bean alleged it learned at Mr. Grabijas’ deposition that Mother had not provided financial records in an electronic form in response to L.L. Bean’s discovery requests—even though Mother’s lawyer previously had represented that “We have provided you with Mother’s entire set of business files. You now have everything Mother has.”

L.L. Bean also complained that Mother’s attorney made numerous improper objections, improper instructions not to answer questions about communications with a lawyer who did not represent Mother in the case and whose written communications were produced in discovery, and improperly terminated the deposition before the seven-hour limit had expired.

Chief Magistrate Judge J. Kelly Arnold largely sided with L.L. Bean. The court ordered Mother to produce all electronically-stored information regarding its finances; ordered Mother to make Mr. Grabijas available in Maine for three additional hours of deposition time; and ordered Mother’s counsel not to make any objections “without asserting a recognized privilege, or seeking a protective order from the court.”  The court also awarded L.L. Bean the reasonable expenses, including attorneys’ fees, that L.L. Bean incurred in bringing its motion.

Discovery orders like this are relatively rare in Western District trademark cases. We all can be thankful for that. There just is no excuse for playing games in discovery, or for being ignorant of the important role electronic evidence now plays. The court’s order illustrates that Western District judges have little patience for parties and lawyers who don’t follow the rules. Nor should they.

On March 28, the Southern District of Texas granted a preliminary injunction in Pet Silk, Inc. v. Jackson, No. 06-2465, __ F.Supp.2d __, 2007 WL 951635 (S.D. Tex.), against two defendants based on the Trademark Dilution Revision Act. In doing so, it became the first district court to interpret the lessened burden of proof in a favor of the plaintiff.

Plaintiff Pet Silk (PSI) sells pet grooming products through distributors worldwide. It is the exclusive licensee of the registered trademark PET SILK. Defendants Robert and Maria Jacobson, doing business as MJM Company, were an approved distributor of PET SILK products for four years. MJM operated and continues to operate several websites, including www.petsilkonline.com and www.mjm-petsilk.com.

In July 2006, Pet Silk ended its relationship with MJM. With the exception of posting a disclaimer on one of its websites, however, MJM continued to hold itself out as a distributor or reseller of PET SILK products. Thereafter, Pet Silk brought suit and moved for a preliminary injunction seeking to enjoin MJM from using PET SILK in its domain name, from holding itself out as being authorized to sell PET SILK products, and from representing it has the capacity to enter into distributorship agreements where MJM would act as a wholesaler with the customer as a sub-distributor. The court granted the motion based on theories of infringement, dilution, and cybersquatting. 

Of particular interest is its analysis of the new dilution statute, discussed below.

To prove dilution, the court found Pet Silk needed to show: (1) its mark is famous and distinctive; (2) MJM adopted the mark after the mark had become famous; and (3) MJM caused a likelihood of dilution of the PET SILK mark.

First, even though MJM did not dispute that PET SILK was famous, the court considered whether the mark met the statutory definition. It found:

“The Pet Silk® mark has been registered on the Principal Register of the United States Patent and Trademark Office for the last 10 years and has been in use for the last 15 years at least. PSI has distributors all over the world. PSI testified, and MJM does not contest, that Pet Silk® has name recognition in the pet supply and dog grooming market. And, the Fifth Circuit has held that market fame is sufficient. [Note that this finding is likely error — though perhaps harmless — since the TDRA abolished niche market fame.] PSI has not licensed the use of its name in the domain of any of its distributors save a few in Europe that deal exclusively in Pet Silk® products. Therefore, the mark meets [15 U.S.C.] § 1125(c)(2)(A)’s definition of famous.”

The court also found “[t]he mark Pet Silk® is at least a suggestive mark, and therefore inherently distinctive.”

Second, the court found: “PSI has shown that its mark has been registered for 10 years. MJM and PSI did not enter into a distributorship relationship until 4 years ago. Absent evidence to the contrary, the court may presume that MJM adopted the mark after the Pet Silk® mark became famous.”

Third, the court addressed whether Pet Silk had established dilution by blurring. After reciting the six factors for dilution for blurring set forth in 15 U.S.C. § 1125(c)(2)(B)(1), the court found:

“The two marks are similar since MJM has incorporated Pet Silk® as part of its web domain name. And, in phone calls with potential Pet Silk® distributors, MJM has held itself out to be Pet Silk itself. So, the marks are similar because they are, in fact, the same mark. As discussed above, the Pet Silk® mark has achieved distinction in its market. Pet Silk® is internationally known for its pet-grooming products. Moreover, there can be no doubt that MJM intended to create an association with Pet Silk® when it put the name in its domain. MJM went so far as to set itself up as a type of “sub-wholesaler” by offering a reseller agreement to its customers.”

Finally, the court found: “[T]here was testimony at the hearing that actual association did occur. Some customers, upon calling the MJM number, were told by Maria Jackson that the only way to be become a Pet Silk® distributor was through her. MJM does not refute this testimony, but argues merely that [an]injunction is inappropriate because MJM has removed the reseller agreement from its web site and no longer offers reseller status to customers. Nevertheless, Pet Silk has demonstrated that MJM’s use of its mark meets all the factors under § 1125(c)(2)(B)(1).”