Seattle Trademark Lawyer

King County Superior Court has granted Texas-based Detex Corp. summary judgment imposing a permanent injunction over Israel-based Detex Security Systems, Inc. The injunction continued the temporary restraining order and Agreed Order Granting Preliminary Injunction the court had previously entered enjoining defendant from using DETEX as a trade name in connection with the marketing of its stock and from using detexsec.com as its domain name.

Plaintiff stated in its complaint that it manufactures and sells security systems, while defendant “owns certain technology for a handheld explosive detection device called the Milliscope.” Plaintiff alleged that defendant’s use of DETEX and detexsec.com was likely to cause consumer confusion. In particular, plaintiff alleged that defendant hired a third party to engage in “mass dissemination and distribution of a solicitation” seeking investors. Plaintiff stated that persons who received the solicitation mistakenly contacted plaintiff, believing it to be defendant. Several such persons allegedly “attacked” plaintiff for defendant’s solicitation tactics and “declared their intention not to do business” with plaintiff as a result.

The parties agreed in the order that plaintiff had sustained $20,000 in damages and defendant would pay off the judgment in installments.

Last week was an interesting week in the blawgosphere.

The Trademark Blog wrote about Horphag Research Ltd. v. Garcia, the Ninth Circuit dilution case Seattle Trademark Lawyer recently discussed.

The TTABlog reported that the Trademark Trial and Appeal Board has lifted its prohibition on citing unpublished TTAB decisions. Now, “a decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.” The TTAB’s notice, which appeared in the January 23 Official Gazette, is available here. This is good news for TTAB practitioners.

The 43(B)log and the TTABlog both discussed Google’s RICO lawsuit against Leo Stoller’s companies. In it, Google alleges that Mr. Stoller’s companies “are engaged in a scheme of falsely claiming trademark rights for the purpose of harassing and attempting to extort money out of legitimate commercial actors, both large and small,” including attempts to settle an alleged dispute over the GOOGLE trademark for $150,000. The New York Times and many others have written about Mr. Stoller’s alleged practice of purporting to own trademarks in gross, opposing third-party efforts to use or register such marks, and offering to “settle” with those parties. Mr. Stoller’s alleged practices have local implications. He has offered to “settle” with at least one Seattle company and probably others. It will be interesting to see what happens with Google’s suit.

Finally, TMBrandingCap discussed O’Charley’s Management Co., Inc. v. Darden Concepts, Inc., in which plaintiff alleged that defendant’s ROCKY RIVER trademark for restaurants is confusingly similar with plaintiff’s STONEY RIVER mark for restaurants. The lawsuit was filed last week in the Middle District of Tennessee.

Three things come to mind. First, the restaurant vs. restaurant trademark suit happens everywhere, including Seattle. Just last week, STL reported on the lawsuit over MOONSTRUCK and MOONRAY for cafes. In recent memory, the Western District has also seen disputes over IN-N-OUT BURGERS and IN-N-OUT PIZZA, and THE ROCK WOOD FIRED PIZZA & SPIRITS and ROCKO’S BRICK OVEN PIZZA. Second, these disputes are not limited to restaurants. The lessons they provide apply equally well to other trademark uses. And third, these disputes are easy to avoid. As Neil Melliship of the Canadian Law Blog recently wrote in the context of real estate development, these disputes “can normally be avoided by conducting due diligence through comprehensive trademark searches before committing to a particular mark for a new project.” This means trademark lawyers need to educate clients (and other lawyers in their firm) about trademark issues early on — and not only the clients with big trademark portfolios. It means talking with all clients, from the owner of a one-location restaurant to the hotel chain that’s planning its next development.

Let’s hope this coming week’s events are just as interesting.

On January 21, Seattle Trademark Lawyer discussed an ad reminding consumers that true Champagne wine comes from the Champagne region of France. The post pointed out that the success of such campaigns is limited by the often fuzzy definition of unregulated growing regions. Washington State, for example, has no defined “appellations” for its prized oysters, even though consumers may make purchasing decisions based on where they think their oysters came from.

Wild American Shrimp, Inc., argues the same is true with shrimp. Its Web site paints a familiar picture:

“You have a table for two, overlooking the water. You order the shrimp skewers. After all, the shrimp boats are right at the dock, you’re probably eating their catch, right? Not necessarily. The fact is, 85% of the shrimp you eat is imported, and most likely pond-raised. Even in the Gulf and South Atlantic states, most restaurants, grocery stores and seafood markets carry imported shrimp. You’ve been tricked. Your shrimp was raised in a pond, then shipped overseas — and you had no idea.”

That may soon change. On January 25, the U.S. Patent and Trademark Office granted Wild American Shrimp a certification mark for WILD AMERICAN shrimp (announcement here). Certification marks are types of trademarks that indicate that goods produced by others meet certain standards, which can include that they came from a particular region. Wild American Shrimp, which now owns Reg. No. 3,199,175, uses WILD AMERICAN to certify shrimp as being caught “in their native habitat in the coastal waters of the Gulf and East Coasts of the United States.”

As Wild American Shrimp puts it:

“Certified Wild American shrimp are caught by shrimpers off the Gulf and South Atlantic Coasts. To be more exact: Texas, Louisiana, Mississippi, Alabama, Georgia, South Carolina and North Carolina. The shrimp naturally thrive in these waters, and their presence has influenced a way of life in these states. Instead of being scooped from a pond and shipped over on a container ship, Wild American shrimp are pulled directly from their natural environment, delivered to the dock, then to your table.”

Is this the next step for oysters? Washington vintners can enforce claims that their grapes are grown in the Yakima Valley, Columbia Valley, Walla Walla Valley, Puget Sound, Red Mountain, Columbia Gorge, Horse Heaven Hills, Wahluke Slope, and Rattlesnake Hills Viticultural Areas. It’s a lot more difficult for Washington shellfish growers. Will we someday see registered certification marks for oysters grown in defined parts of Hood Canal, Penn Cove, Baynes Sound, Willapa Bay, and the Straits of Juan de Fuca? It would make trademark infringement and false designation of origin claims a lot easier to prove, strengthening brands, and adding even more value to Washington’s home-grown delicacies.

(Photo credit: Auggieland food blog)

Copyright Act preemption does not support a motion to dismiss a Lanham Act trade dress claim, though it does support dismissal of state Consumer Protection Act and unfair competition claims, the Western District decided January 18.

In Blue Nile, Inc. v. Ice.com, Inc., No. 06-1002RSL, 2007 WL 172613 (W.D. Wash.), Seattle-based Blue Nile, Inc., sued Ice.com for trade dress infringement on the alleged ground that Ice.com had copied the “overall look and feel” of Blue Nile’s diamond search Web pages. Both parties sell diamonds through the Internet.

Ice.com moved to dismiss Blue Nile’s trade dress claim on preemption grounds, arguing that it overlapped with Blue Nile’s copyright claims. Western District Judge Robert Lasnik denied the motion, finding it was too early to decide whether Blue Nile’s copyright claims would provide it with an adequate remedy. In the court’s words, “defendant’s 12(b)(6) motion to dismiss is not the appropriate procedural vehicle through which the Court should address the overlap between the Lanham Act and Copyright Act in the context of a claim attempting to protect a website’s ‘look and feel.’”

The court separately denied the request “in light of the presumption that Fed.R.Civ.P. 12(b)(6) motions should rarely be granted, especially when the claim involves a legal theory.” The court concluded:

“[P]laintiff seeks protection for the ‘look and feel’ of its website under the Lanham Act. This is a novel legal theory as evidenced by plaintiff’s resort to two unpublished district court cases to support its trade dress claim and the Court’s survey of recent scholarship regarding protection for the ‘look and feel’ of websites.”

However, the court granted Ice.com’s motion to dismiss as it applied to Blue Nile’s Consumer Protection Act and unfair competition claims because it found those claims were based on rights equivalent to those protected by copyright law.

On January 23, Alberta-based Internet employment advisor FabJob Inc. filed a Notice of Dismissal with Prejudice terminating its cybersquatting and trademark infringement claims against Wyoming-based domain name registrar Compana, LLC. FabJob’s complaint, filed in the Western District in October, alleged that Compana had registered fabjobs.com, which was likely to cause confusion with FabJob’s registered trademark FABJOB. The dismissal appears to be part of a larger settlement between the parties.

FabJob’s complaint alleged that Compana “is engaged in a domain name warehousing business whereby it registers domain names which are identical or similar to established trademarks but that are misspelled” or contain additional words, letters or the plural form of the same word. The complaint states “Compana or its registrant then establishes a web site with that domain name and sells the opportunity for ‘sponsors,’ including the trademark owner’s competitors, to advertise and post links to their sites.” According to the complaint, a reverse IP lookup for Compana’s IP address shows a total of 656,010 registered domain names, including starbudks.com, washingtionstate.com, seattelmariners.com, seattelseahawks.com, and seattletitmes.com.

FabJob’s complaint states FabJob filed a Uniform Domain Name Dispute Resolution Policy action with the World Intellectual Property Organization last year asking that fabjobs.com be transferred to FabJob, but its request was denied. In response, Compana filed a lawsuit in Texas state court requesting a declaratory judgment, injunctive relief and damages it allegedly suffered as a result of FabJob’s WIPO filing. FabJob removed the case to the Northern District of Texas, where it is pending today.

But not for long. On January 23, the parties asked the Northern District of Texas to dismiss the action, which coincides with the dismissal notice FabJob filed in the Western District. In their proposed Agreed Judgment, FabJob and Compana jointly represented that Compana had not violated the Lanham Act or the UDRP, or infringed FabJob’s common law trademarks or other intellectual property rights. Not surprisingly, the terms of the parties’ apparent settlement giving rise to these dismissal requests are not publicly available.