Seattle Trademark Lawyer

Last week, STL blogged about upstart bands who were forced to change their name after they started getting popular. Unfortunately, that’s the point when some other band comes out of the woodwork and claims to have adopted the same name years earlier. Even Nirvana wasn’t immune to this problem.

It’s understandable that a brand new band playing at the corner bar doesn’t think about trademark law when choosing its name. But has any band learned from the painful lessons in trademark law that Nirvana, Dinosaur Jr, Blink 182, and countless others suffered through after they began to achieve commercial success?

The answer is not many. This weekend I searched the PTO database for band names appearing in the College Music Journal’s (CMJ) Top 20 chart for radio play. This list contains the most popular indie bands, some of which are about to make it big-time. Of these 20, only one band has applied for (and in fact obtained) federal trademark registration — the band with the No. 1 record on CMJ’s Top 20: The Shins. Frontman James Mercer owns the registration. (Where that leaves other Shins members Martin Crandall, Dave Hernandez, Jesse Sandoval, and Eric Johnson is probably better left for another post.) No one else has even applied for federal registration, even though the other 19 charted groups undoubtedly perform and sell CDs and t-shirts in many parts of the country. Not even No. 17 The Broken West, which recently changed their name from The Brokedown after receiving a cease-and-desist letter from another band called The Brokedowns.

The Shins: Learning From Others’ Mistakes

Interestingly, this research uncovered a possible future band name dispute — or at least a close call. This week’s No. 8 artist is The Clinic, a Liverpool, UK-based band that released its fifth album last October (and that notably performs wearing surgical masks). Effingham, Illinois, physician Peter Bonutti owns a federal registration for THE CLINIC in connection with his band of the same name. Apparently, The Clinic (US) is Dr. Bonutti’s hobby band, since he likely spends most of his time working as an orthopedic surgeon, heading up his 170-employee clinic, and creating his 159 patented inventions (with 60 more patents pending). Dr. Bonutti’s federal registration (Reg. No. 2489257) claims he first used THE CLINIC in connection with “phonograph records and pre-recorded magnetic tapes, cartridges, compact discs, and cassettes” in July 1999. Luckily for the UK-based band, they formed in 1997 and released their first album in 1998. Assuming they made sales in United States commerce before July 1999, The Clinic (UK) at least would have common law rights to their name here. They may have dodged a bullet.

However, luck really shouldn’t have to matter. As the Canadian Trademark Blog recently wrote:

“Before committing to any new brand, appropriate clearance searches should be conducted. The best new brand in the world may not be of much use if it’s infringing on the rights of a competitor — at the very least, the cost of launching the brand could go up significantly — Apple’s launch of its iPhone brand is a classic example. Apple is fortunate enough to have the legal budget to fight those battles.  Many businesses don’t.”

Nor do many musicians. To continue the theme from last week, a little trademark due diligence goes a long way — whether you’re an upstart band or an upstart brand.

On Thursday and Friday, I will be attending the Practicing Law Institute’s CLE program on “Navigating Trademark Practice Before the PTO 2007: From Filing Through the TTAB Hearing” in New York. Among other things, this will enable me to report on the oral argument in the Hormel v. Spam Arrest cancellation proceedings, over which a three-judge panel from the U.S. Trademark Trial and Appeal Board will be presiding in a special sitting. (Discussion on this case here.) It also will enable me to meet fellow bloggers and STL readers from the Big Apple. If you’d like to have a cup of coffee (I’m from Seattle, after all), drop me a line.

(Photo credit: www.salwen.com)

On February 13, the Ninth Circuit reversed the Central District of California in the trademark infringement case of The Grateful Palate Inc. v. Joshua Tree Imports, LLC, No. 06-55855, 2007 WL 470596 (9th Cir.) (unpublished) (no case link available). In this case, the defendant importer purchased the plaintiff’s Australian wine from a distributor. The plaintiff allegedly had authorized some of its wine for import to the U.S. but did not authorize the rest. The defendant allegedly pre-sold the unauthorized wine to U.S. purchasers at a discount anyway, which the plaintiff claimed violated its trademark rights.

Under the “first sale” doctrine, a product sold without the mark holder’s authorization is deemed non-genuine for Lanham Act purposes. After that first sale, however, the trademark holder may establish infringement only if it demonstrates that the goods are materially different.

The district court believed that Ninth Circuit precedent required it to find the unauthorized first sale of the trademarked wine, without more, did not constitute per se trademark infringement. Since the plaintiff could not show the unauthorized wine was materially different from the authorized wine, the district court denied plaintiff’s motion for preliminary injunction. The Ninth Circuit vacated that decision and remanded it to the district court, finding whether an unauthorized first sale constituted per se infringement in the Ninth Circuit remains an open question.

A new bill would increase the amount of exemplary damages available to remedy violations of Washington’s Consumer Protection/Unfair Business Competition Act, the state’s analog to the Lanham Act. 

Currently, plaintiffs proving a claim under RCW 19.86 can obtain an injunction, actual damages, costs of suit, reasonable attorney’s fees, and triple the amount of actual damages up to $10,000 per violation. The amendment would retain each of these remedies except it would replace the trebling up to $10,000 with a discretionary award of “up to fifty thousand dollars….”

The bill, S-5815, was introduced by Democrats Brian Weinstein, Adam Kline, Erik Poulsen, Tracey Eide, Ed Murray, Craig Pridemore, Craig Oemig, and Ken Jacobsen. It has been referred to the Committee on Consumer Protection & Housing.

If enacted, the amendment would be a boon to plaintiffs and would make life for defendants in Washington correspondingly more difficult.

The 43(B)log today posted a nice analysis of the Western District’s denial of defendants’ motion for partial summary judgment on plaintiffs’ trademark claims in Bach v. Forever Living Products U.S., Inc., No. 05-970, 2007 WL 445447 (W.D. Wash). 

Plaintiffs in the case allege that “Defendants have used a copyrighted photograph from Jonathan Livingston Seagull as their corporate logo, and have used copyrighted excerpts from Jonathan Livingston Seagull, and the copyrighted story and character of Jonathan Livingston Seagull in their advertising, communications with their independent distributors, in their sale and distribution of FLP products, and in the advertising, marketing and promotion of Forever Resorts recreational properties.”

Judge Marsha Pechman’s February 6 order is available here.