Seattle Trademark Lawyer

On April 4, the Western District granted defendant True Value Co.’s motion to dismiss plaintiff MEECO Manufacturing Co., Inc.’s state unfair competition claim based on Copyright Act preemption.

MEECO manufactures and distributes fireplace and stove products bearing MEECO’S RED DEVIL word and design marks. MEECO alleges that True Value is not authorized or licensed to sell MEECO-branded products, but True Value uses and displays images of MEECO-branded products in its electronic catalog. MEECO asserts, however, that when a True Value store owner or other user of True Value’s catalog orders a MEECO-branded product, True Value substitutes a competing product from Imperial Manufacturing Group. MEECO contends that True Value’s substitution of MEECO products has continued even after receiving a cease-and-desist letter, and after MEECO had prevailed in a trademark infringement suit against Imperial.

The Copyright Act preempts a claim if: “(1) the work at issue comes within the subject matter of copyright as described in 17 U.S.C. §§ 102 and 103; and (2) the rights granted under the state law are equivalent to the rights contained in 17 U.S.C. § 106, ‘which articulates the exclusive rights of copyright holders.’” See Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1137-38 (9th Cir. 2006).

The court found MEECO’s unfair competition claim met the first element of this test because the work at issue, MEECO’s labels and logo, come within the subject matter of copyright because MEECO has copyright registrations for its product labels, which include MEECO’s logo.

True Value argued that MEECO’s unfair competition claim did not add “an extra element that ‘transforms the nature of the action’ to anything other than a Copyright Act claim.” The court agreed. It noted MEECO’s unfair competition claim seeks an injunction barring True Value from “displaying MEECO-branded products.” It also noted MEECO’s copyright claim “similarly seeks injunctive relief because defendant ‘displayed the MEECO-branded product images,’ which ‘constitute[s] copyright infringement under the Copyright Act.’”

Based on these findings, Western District Judge Robert Lasnik dismissed MEECO’s unfair competition claim without prejudice. The court concluded: “Where, as here, an unfair competition claim is based upon the premise that defendant misappropriated plaintiff’s copyrighted material it is considered to be ‘part and parcel of the copyright claim’ and preemption is appropriate.”

The court also dismissed MEECO’s unjust enrichment claim for similar reasons.

It’s final: the Western District yesterday entered a Stipulated Motion and Consent Judgment in Autodesk, Inc. v. Open Design Alliance, No. 06-1637, finding Open Design Alliance liable for infringing Autodesk’s trademark and permanently enjoining such infringement in the future. The stipulated order also dismisses the parties’ claims and counterclaims against each other without prejudice, enabling them to re-file such claims again in the future.

The parties’ stipulation summarizes the dispute as follows:

“In this action, plaintiff Autodesk, Inc. (“Autodesk”) sued defendant Open Design Alliance (‘ODA’ or ‘Defendant’) for trademark infringement and false designation of origin based on ODA’s improper simulation of Autodesk’s TrustedDWG^TM authentication mechanism and use of the AUTODESK® trademark (U.S. Reg. No. 1,316,772). On November 22, 2006, the Court held a hearing on Autodesk’s application for a temporary restraining order and order to show cause. The Court found that Autodesk had demonstrated both a strong likelihood of success on the merits and the possibility that it faced immediate, irreparable injury from ODA’s conduct, and granted a temporary restraining order.”

Based on the parties’ agreement, the Western District entered an order that includes the following finding:

“ODA’s simulation of Autodesk’s TrustedDWG technology was not necessary to achieve interoperability with Autodesk software, nor was ODA’s simulation of Autodesk’s TrustedDWG technology necessary to achieve interoperability with the software product of any third party. ODA’s simulation of Autodesk’s TrustedDWG technology infringed Autodesk’s rights in its federally registered AUTODESK® mark, in violation of Sections 32 and 43 of the Lanham Act. Judgment on its claim for injunctive relief under the Lanham Act is entered in favor of Autodesk.”

The parties also agreed to a permanent injunction with the following terms:

“The Court hereby permanently RESTRAINS AND ENJOINS ODA, its agents, servants, employees, attorneys, and all others in active concert or in participation with Defendant, from simulating Autodesk’s TrustedDWG technology, including but not limited to the Autodesk watermark and/or TrustedDWG code, without Autodesk’s authorization; and from distributing DWGdirect libraries or other ODA software that use or incorporate or simulate Autodesk’s TrustedDWG technology or that otherwise insert or mimic the unauthorized Autodesk watermark and/or TrustedDWG code. For the sake of clarity, the Consent Judgment neither binds nor benefits any ODA member(s) acting on its or their own accord, and not in active concert or participation with the ODA.”

The parties agreed to bear their own attorneys’ fees and litigation costs incurred in the dispute.

On March 27, Seattle-based gourmet baker Partners, A Tasteful Choice Company won a four-and-a-half year dispute with Keebler Co. before the Trademark Trial and Appeal Board for the right to register the mark ALL-AMERICAN in connection with its cookies and crackers. Keebler claimed the mark was merely laudatory and, therefore, not registrable on the Principal Register without a showing of secondary meaning. Partners responded that the mark was entitled to immediate protection because it was suggestive.

In particular, Keebler argued “All-American” is synonymous with “best.” Partners argued that that definition is limited to sports, e.g., an “All-American football player,” and that the phrase does not immediately convey anything in particular about cookies or crackers. The Board agreed with Partners and dismissed the opposition.

It found: “out of all the many attributes that may be associated with ‘all-American’ for food products, ‘the best’ is not one of them. There is no evidence to support opposer’s contention that ‘all-American’ cookies would be thought of as ‘the best’ cookies.”

The Board added: “The record does show that one of the meanings that may be associated with ‘all-American’ for food products is ‘typically American.’ However, we do not find that this meaning is merely descriptive of food products.”

The Board concluded: “At most, the term has some vaguely laudatory meanings suggesting an association with American ideals and all that is traditionally and typically American, and to be sure, the term has been frequently been used and registered for those meanings. But in order to have an idea of the nature of the product’s qualities, characteristics or attributes, a consumer needs additional information. This makes the term suggestive.”

Full disclosure: STL’s publisher represented Partners in the proceeding.

One of my favorite cases to teach is Bosley Medical Institute v. Kremer, an ongoing dispute in which Michael Kremer received hair replacement services from the plaintiff — in Seattle, I might add — and was dissatisfied with the result. After a failed medical malpractice claim, Mr. Kremer allegedly registered the domain name bosleymedical.com, and sent letters to the defendant threatening additional litigation and demanding money. Mr. Kremer’s domain name links to a website containing information critical of Bosley Medical. It also contains a disclaimer directing visitors to Bosley’s official site, www.bosley.com. Mr. Kremer allegedly has received numerous electronic communications from third parties intended for plaintiff, to which he does not respond.

From www.bosleymedical.com

In 2001, Bosley brought suit against Mr. Kremer asserting federal and state trademark claims, as well as a federal cybersquatting claim.

In 2004, Mr. Kremer filed motions to strike Bosley’s state trademark claims and to dismiss its federal cybersquatting claim. Mr. Kremer and Bosley also cross-moved for summary judgment on Bosley’s federal trademark claims. After consolidating the motions, the court found for Mr. Kremer on all of the issues.

In 2005, the Ninth Circuit affirmed the Southern District of California’s summary judgment dismissal of Bosley’s federal trademark claims, but reversed the grant of summary judgment as to Bosley’s federal cybersquatting claim. The Ninth Circuit also reversed the order striking the state trademark claims, stating that “domain names … per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name.” The Ninth Circuit decision is captioned as Bosley Medical Institute v. Kremer, 403 F.3d 672 (9th Cir. 2005).

Based on that decision, the Southern District re-opened the case, No. 01-1752. In December 2006, Mr. Kremer filed a motion to dismiss Bosley’s state law claims for common law trademark infringement, statutory trademark dilution, and statutory unlawful business practices. Mr. Kremer argued that the First Amendment protects his registration and use of bosleymedical.com, and bars application of state trademark law in the action. He also argued that Bosley’s allegations of commercial use and likelihood of confusion are insufficient to state claims on which relief can be granted.

On March 22, the court denied Mr. Kremer’s motion (2007 WL 935708). It found: “Plaintiff’s allegations of extortion sufficiently allege commercial use for the purposes of state trademark law, and that Plaintiff’s allegations of actual confusion and a likelihood of confusion are sufficient to state a claim for common law trademark infringement, particularly in light of the doctrine of initial interest confusion and the weight afforded evidence of actual confusion.”

The court also found: “the doctrine of fair use permits ‘the criticizing or commenting upon the famous mark owner’ in some situations”; however, “the allegations of the First Amended Complaint that the registration and publication of bosleymedical.com were in bad faith and with an intent to extort money do not permit dismissal of the state trademark claims pursuant to the fair use exception at this stage of the proceedings.”

The court separately denied Mr. Kremer’s motion for summary judgment on Bosley’s federal cybersquatting claim on Rule 56(f) grounds pending discovery on the issue.

The forthcoming issue of the IndUS Business Journal looks into Starbucks’ complaint that an Indian entrepreneur’s plan to open 25 cafes under the STARSTRUCK name and mark infringes the STARBUCKS name and mark. The article, “Starbucks in trademark battle with Indian company,” quotes the entrepreneur, Shahnaz Husain, as saying she decided to open her own coffee shop while visiting a Starbucks store in London. The article says “Starstruck” cafes will feature a “glamour theme, complete with posters of Hollywood movie stars.” Ms. Husain states she chose the name “because she wanted to distinguish it” from Starbucks.

Despite that sentiment, Starbucks objects. Its spokesperson, T. May Kulthol, states that Starbucks has long owned the rights to its name and logo in India. She said Starbucks will press the issue in court if Ms. Husain’s company refuses to adopt another name.

The article quotes STL’s publisher on the process a court would likely go through to decide the issue. Since it seems odd to quote an article quoting me, I’ll just say I stated my belief that a court would consider the likelihood of confusion between the two marks, focusing on similarities in the apperance, sound, and meaning of the marks, as well as the competing goods or services. If the court determined the later mark created a likelihood of confusion with the earlier mark, it would find in favor of the earlier user.

So do I think STARSTRUCK infringes STARBUCKS, when both marks are used for cafes? You bet. Out of the infinite number of possible combinations of letters, numbers, and symbols Ms. Husain could have selected for her new chain of cafes, she just happened to pick one so close to the most famous brand in the coffee business? Doesn’t seem likely.