Seattle Trademark Lawyer

The Pacific Northwest press has latched onto the MOONSTRUCK versus MOONRAY trademark infringement suit discussed here and here.

Oregon’s daily newspaper, The Oregonian, ran a story today.

Not to be outdone, The Seattle Times ran an editorial today saying no infringement exists and calling for the dispute to be settled.

Quick update on The Seattle Times poll, which asked: “In your opinion, is there a trademark issue here?” As of Wednesday morning, two days after the question was first posed, 2,064 readers have responded. The response remains roughly the same as STL reported on Monday: 93% answer “No,” 5% answer “Yes,” and 2% answer “I don’t know.”

Full disclosure: STL’s publisher represents Moonray Espresso in the litigation.

The Seattle Times ran a front page story today on the Western District infringement suit, Moonstruck Chocolate Co. v. Moonray Espresso Corp., No. 07-0091. At issue is whether the Duvall-based Moonray Espresso cafe is likely to cause confusion with the Portand-based Moonstruck Chocolate, a chocolatier and owner of “chocolate cafes” located in Oregon, California, and Illinois.

STL’s publisher is defending Moonray Espresso in the case.

Of particular interest was an online poll that asked readers: “In your opinion, is there a trademark issue here?” As of 6 p.m., 1,555 readers had responded. Here’s what they said:

Yes - 5%

No - 93%

I don’t Know - 1%

A colleague commented that perhaps a better question might have been: “In your opinion, is ‘Moonray Espresso’ likely to cause confusion with ‘Moonstruck Chocolate?’” His point was that newspaper readers — even newspaper reporters — can mix up the law of trademarks, copyrights, and patents, but everyone knows what confusion is. I think he’s right. However, I do think the poll correctly indicates most consumers (if not the vast majority) would not confuse the source of coffee purchased at a small town cafe with a chocolatier located 200 miles away — whether the chocolatier also sells coffee or not.

I have strong opinions about this case, but I’ll save them for our briefs.

A copy of Moonstruck Chocolate’s complaint is accessible here.

The Western District has preliminarily enjoined JNA Seattle, Inc., and its principals from using “Jonathan Neil & Associates” and “JNA” as part of their trade names and trademarks. The order, which Judge James Robart entered March 14, follows plaintiff Jonathan Neil & Associates’ motion arguing that defendants’ continued use of the terms through trial would create consumer confusion and cause it irreparable harm.

Both firms are collection agencies. Jonathan Neil & Associates is a California corporation. Defendant Jerry Priest worked in Jonathan Neil & Associates’ Seattle office for two years. In 2002, the parties decided to part company. As part of the separation, Mr. Priest took over some of Jonathan Neil & Associates’ business lines. To this end, he formed a Washington corporation, which he called “JNA Seattle.”

Mr. Priest testified he did so with Jonathan Neil & Associates’ permission. He said when the parties separated, they agreed he would use the name “JNA Seattle, Inc.” for new clients and “Jonathan Neil & Associates” for clients he took over from plaintiff. As he understood it, “JNA Seattle would essentially be Jonathan Neil [& Associates] Inc.’s ‘Seattle Office.’”

Jonathan Neil & Associates argued no such agreement existed. It filed suit in October 2006 for trade name infringement and false designation of origin, among other claims.

The court found: “Defendants currently operate under the names ‘JNA Seattle,’ ‘Jonathan Neil & Associates,’ and ‘JNA.’ Defendants have solicited collection accounts using both ‘JNA Seattle’ and ‘Jonathan Neil & Associates’ letterhead. Defendants’ business is listed in the 2007 Seattle yellow pages as ‘Jonathan Neil & Associates’ under ‘Collection Agencies.’ In February 2007, the sign on Defendants’ office door read ‘Jonathan Neil & Associates.’”

The court also found: “Plaintiff presents evidence to show that businesses and attorneys engaged [in] commercial collection have confused Plaintiff’s and Defendants’ businesses. Plaintiff has received requests from companies asking for status reports relating [to] accounts that apparently belong to Defendants.”

Applying the Sleekcraft factors, the court concluded that Jonathan Neil & Associates probably would establish likelihood of confusion at trial because the names are substantially identical, the parties offer identical services, and they use the same marketing channels.

Defendants attempted to rebut the presumption of irreparable harm by arguing that Jonathan Neil & Associates unreasonably delayed in asserting its rights. The court rejected that argument as being “ambiguous at best.” It added that defendants were not prejudiced by any such delay.

The court required a $15,000 bond. It allowed defendants 45 days to stop operating under the subject names and marks.

The case is Jonathan Neil & Associates v. JNA Seattle, Inc., No. 06-1455.

The Fourth Circuit is set to consider Louis Vuitton’s appeal of its dismissed dilution claim in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, No. 06-2267. This case may become the first appellate decision to interpret the Trademark Dilution Revision Act.

Earlier this month, the Second Circuit revived Starbucks Corp.’s dilution claim against a New Hampshire coffee company based on the TDRA but did not shed light on how the new statute would be interpreted. (STL discussion of Starbucks Corp. v. Wolfe’s Borough Coffee Inc. here.)

The Louis Vuitton case (which STL discussed here), involves the seller of novelty dog toys who markets a chew toy under the name “Chewy Vuiton.” Louis Vuitton calls it dilution. Haute Diggity Dog calls it parody. Applying the TDRA, the Eastern District of New York sided with the seller and dismissed Louis Vuitton’s dilution claim, which Louis Vuitton has appealed.

Earlier this month, the International Trademark Association filed an amicus brief in the case siding with Louis Vuitton. In today’s INTA Bulletin (membership required), INTA argues the district court erred in two ways. First, “the district court erred by concluding that the CHEWY VUITON line of products was a protected parody without considering language in the statute that restricts use of the parody defense where defendant’s mark is used ‘as a designation of source for the person’s own goods or services,’” citing 15 U.S.C. § 1125(c)(3)(A).

Second, INTA argues the district court erred by “not considering any of the [Trademark Dilution Revision Act’s] six factors for determining whether a likelihood of dilution by blurring exists. … Courts nationwide should consider the list of factors provided by Congress to help promote consistency and uniformity among the courts — an important goal of the dilution amendments.” 

Oral argument has not yet been scheduled.

A friend of mine left my firm a few years ago to become Microsoft’s spam czar. Today, he’s on the forefront of fighting cybersquatters, and he’s using trademark law to do it.

“These sites confuse visitors who are trying to reach genuine company Web sites, which can negatively affect corporate brands and reputations as well as impair the end-users’ experience online,” Aaron Kornblum said in a press release Microsoft distributed today.

In doing so, Microsoft announced its filing of three new or amended suits to combat cybersquatters’ efforts here in Washington:

*Microsoft v. Garba, Case No. 06-1192 (W.D. Wash.). Microsoft amended a “John Doe” complaint it filed in August 2006 to name Sule Garba, Darin Grabowski and Yi Ning, who Microsoft alleges registered 217 infringing domain names using masked identities.

*Microsoft v. John Does 1-54, Case No. 07-2-08568-8 SEA (King County Sup. Ct.). Microsoft filed suit in King County Superior Court against 54 John Doe defendants in an effort to identify the alleged cybersquatters.

*Microsoft Corp. v. John Does 1-105, Case No. 06-1766 (W.D. Wash.). In December 2006, Microsoft filed suit to identify the defendants who allegedly registered infringing domain names and associated them with online ads.

Microsoft’s press release also touted five new actions against cybersquatters in the United Kingdom and three in California.

“We hope that our stance and activity on this issue will help motivate and empower other companies whose brands are abused to take action,” Mr. Kornblum said.

We miss him around the office, but we can’t blame him for wanting to help Microsoft fight the good fight.