Seattle Trademark Lawyer

Seattle Trademark Lawyer reported on the Eastern District’s minute order granting Wendle Motors’ motion for preliminary injunction against Randolph and Renee Honkala in the Ford Mustang Shelby GT case here. In the interests of completeness, Judge Fred Van Sickle’s December 29 written decision is available here.

Bellevue clothing designer Derek Andrew, Inc., won a copyright and trademark infringement bench trial in the Western District of Washington against defendant New York clothing designer Poof Apparel Corp. Western District Magistrate Judge James Donohue entered his findings of fact and conclusions of law on December 22.

The Western District entered a default judgment against Poof in June, which the court refused to set aside. The trial, therefore, was limited to damages and equitable relief.

The claims turned on Poof’s use of a heart design on “hangtags” it attached to its garments, which the court found constituted a false designation of origin under 15 U.S.C. Sec. 1125(a) in light of the “twisted heart” design hangtags that Derek Andrew had previously used.

The court found that Poof’s violation was willful. Therefore, in addition to $15,000 in statutory damages it awarded under the Copyright Act, the court ordered Poof to disgorge the $685,307.70 in profits it had received from infringing sales.

The court also found that Poof’s infringement met the Ninth Circuit’s “malicious, fraudulent, deliberate or willful” standard for “exceptional” cases under the Lanham Act and awarded Derek Andrew its reasonable attorney’s fees. The amount will be determined following Derek Andrew’s fee application, which the court requested within 14 days.

Finally, the court imposed a permanent injunction enjoining Poof from directly or indirectly infringing the “twisted heart” hangtag that was both the subject of the suit and Derek Andrew’s copyright registration.

The Western District’s PACER database flagged this case as one primarily involving copyright rather than trademark issues, so it did not come to my attention until Westlaw published the court’s findings of fact and conclusions of law. PACER is an excellent resource, but it does have its shortcomings.

Starbucks Corp. won a trademark infringement lawsuit against China-based coffee company Shanghai Xingbake Cafe Corp. Ltd., news services reported yesterday. The decision affirms a lower court’s December 2005 decision in Starbucks’ favor, the first under a new statute protecting famous trademarks in China.

Forbes.com states the Chinese company “used a green logo similar to that of Starbucks, while the Chinese character ‘xing’ means ‘star’ and the characters ‘ba’ and ‘ke’ sound like ‘bucks’ when used together.”

The Shanghai Municipal Higher People’s Court fined Shanghai Xingbake Cafe 500,000 yuan ($64,000), ordered the company to change its name, and required it to apologize to Starbucks in the Xinmin Evening News, a Shanghai newspaper.

In 2005, The Seattle Times quoted Starbucks Chairman Howard Schultz as saying he was “cautiously optimistic” that Starbucks would win its suit, which he characterized as “an important test case for China.”

A detailed description of the underlying case (with photos of the competing logos) is available here.

In December, Seattle Trademark Lawyer reported on Neiman Marcus and Bergdorf Goodman’s cybersquatting suit against Dotster. What I hadn’t heard before was the phrase “domain tasting,” which BusinessWeek discusses in connection with the suit. 

Domain tasting occurs when domain name registrars mass-register available names on a five-day trial basis, associate the names with ad-filled Web sites, and then mass-cancel the registrations for a full refund. The practice exploits ICANN’s grace period that allows a company to register a domain name and then return it — because of a typo in the name, for example. The repeated five-day free registration-and-return of names is known as “domain kiting,” another phrase we’re sure to hear more of.

BusinessWeek reports that some owners of famous marks are lobbying for ICANN — the Internet Corporation for Assigned Names and Numbers — to close the loophole allowing these practices. It states that others, like Neiman Marcus, are bringing suit.

Though it doesn’t speak in terms of “domain tasting,” Neiman Marcus’ amended and supplemental complaint alleges that Dotster, acting as both the registrant and registrar, “was able to delete some of the [domain names it registered] from the registry within 5 days and receive a refund of all registration fees.” Doster’s December 22 answer admits this fact, though it denies some of plaintiffs’ other allegations.

Plaintiffs’ motion for preliminary injunction is scheduled to be heard by Western District Judge Ronald Leighton on January 12. Dotster has not yet filed its opposition brief.

Circle ID recently published a nice history of domain tasting here.

Seattle Trademark Lawyer is taking a short holiday break. I’ll be back on Thursday. See you then and happy New Year!