Seattle Trademark Lawyer

Google Inc. states its policy for dealing with trademarks in its AdWords search engine ads here and here. Among other things, Google explains how trademark owners can stop unauthorized advertisers from using their trademarks in Google ads and keywords, how trademark owners can complain about the unauthorized use of their marks, and how they can approve of advertisers’ trademark use.

On December 20, Eastern District Court Judge Fred Van Sickle issued a minute order imposing a preliminary injunction in Wendle Motors, Inc.’s case against Randolph and Renee Honkala. As Seattle Trademark Lawyer previously reported, the case arises out of Mr. Honkala’s alleged posting of “false and slanderous” information on the Internet about the Ford Mustang Shelby GT 500 convertible he had purchased from and returned to Wendle. Earlier this month, Judge Van Sickle granted Wendle a temporary restraining order prohibiting both parties from electronically disseminating information about each other.

CROSSBOW does not dilute BOWFLEX, Western District Judge Ricardo Martinez has found. In so finding, Judge Martinez granted defendant Icon Health & Fitness, Inc.’s motion for summary judgment dismissing plaintiff Nautilus Group, Inc.’s state and federal dilution claims.

Both parties make exercise equipment that use a “cable and flexible rod system of resistance.” Vancouver, Washington-based Nautilus makes the BOWFLEX machine. Icon makes a machine called CROSSBOW. In 2003, the Western District found that Icon did not infringe Nautilus’ patents.

Applying the “actual dilution” standard set forth in the Federal Trademark Dilution Act and Moseley v. V. Secret Catalog, 537 U.S. 418 (2003) (now superseded in most instances by the Trademark Dilution Revision Act of 2006), Judge Martinez found in his December 21 order that the marks were not “identical”; that Icon’s use of BOWFLEX through the purchase of search engine keywords constituted permissible comparative advertising; and that Nautilus had failed to show that Icon had ever told customers that its machines were BOWFLEX machines. Therefore, Judge Martinez found, Nautilus had failed to demonstrate that CROSSBOW had actually diluted BOWFLEX.

Judge Martinez also dismissed Nautilus’ state dilution claim on the ground that Icon had obtained a federal registration of CROSSBOW, even though Icon did so after the lawsuit had begun. He also found that the state dilution claim failed because the state statute, RCW 19.77.160(1), is identical to the federal statute that failed to support Nautilus’ federal claim.

The order states that Nautilus’ remaining claims will be addressed in a future order deciding Icon’s separate motion for summary judgment on the doctrine of unclean hands.

Icon’s motion is here. Nautilus’ opposition brief is unavailable because it was filed under seal.

Seattle Trademark Lawyer’s December 21 post mentioned that Microsoft has been a prolific plaintiff in the last two years, suing dozens of “John Doe” defendants for alleged trademark infringement. After reading this post, Microsoft Internet Safety Enforcement Attorney Aaron Kornblum put me on to an article he wrote detailing how Microsoft goes after anonymous spammers and phishers.

In a nutshell, Microsoft sues John Doe defendants in the Western District of Washington, learns their true identities through subpoenas on companies with whom the John Does do business (PayPal, Yahoo, and Network Solutions being the most frequent), and then amends its complaints to name the defendants based on the identity information the subpoenas provide.

This is an interesting read. Thanks, Aaron!

In the previous post, I wondered how Western District trademark cases were decided. Barring new developments this week, I’ve got the answer for 2006. Thirty pending trademark cases were closed in the last year. Not surprisingly, the overwhelming majority were dismissed voluntarily: twelve by a stipulation and order of dismissal, and eleven by a notice of voluntary dismissal. Most of these likely settled.

The Western District decided three orders on preliminary injunction. Judge Robart granted one (RxSales Prescriptions Sales Company, LLC v. Blue Frog Mobile, Inc.) and denied one (CMSI Inc v. Pacific Cycle, Inc.), and Judge Martinez denied one (Rubber Stamp Management, Inc. v. Kalmbach Publishing Co.).

One plaintiff (in Stenzel v. Pifer) obtained a declaratory judgment that it had not violated the Anticybersquatting Consumer Protection Act — remarkably after changing Judge Zilly’s mind on reconsideration.

Judge Martinez dismissed one defendant on summary judgment (Childers v. Sagem Morpho, Inc.). Judge Zilly denied another defendant’s motion for partial summary judgment (The Christensen Firm v. Chameleon Data Corp.).

Three cases were closed because of stipulated permanent injunctions: Shakespeare Co., LLC v. Silstar Corp. of America, Inc.; Port of Subs, Inc. v. Fleischer; and UBuildIt Corporation v. U Build-U Save, LLC (click for orders).

One case involved a temporary restraining order (Autodesk, Inc. v. Open Design Alliance), which Judge Pechman granted.

Two cases were closed because of default judgments (Qwest Comms. Int’l, Inc. v. Sonny Corp. and World Wide Learn, Inc. v. www.worldswidelearn.com).

There were no trials.

All in all, this strikes me as a slow year for trademark cases. I would have guessed that the Western District had issued five preliminary injunctions, at least a couple temporary restraining orders, and a handful of summary judgment orders. Trials in any civil case are rare these days, so I’m not surprised that we didn’t have any trademark case this year go the distance. When I have time, I will look at how trademark cases were closed in past years to see if this year’s activity was consistent with activity in years past.