Seattle Trademark Lawyer

How many trademark cases are currently pending with the Western District of Washington? As of December 17, thirty-eight. That’s 38 cases that the Western District’s PACER database identifies as being “open” and having “trademark” designated as the “nature of suit.” These cases are distributed relatively evenly throughout the bench: Seattle-based Judges Martinez, Pechman, Robart, and Zilly each has six; Judge Coughenour has five; Judge Lasnik has two; and Judge Donohue has one. In Tacoma, Judge Burgess has three and Judges Arnold, Bryan, and Leighton each has one. Nintendo of America, Inc. v. What’s On, Inc. (alleging trademark and copyright infringement) is the longest-pending trademark case at 783 days (filed October 25, 2004), followed by Microsoft Corp. v. John Does 1-50 d/b/a myauctionbiz.biz (alleging false designation of origin and violation of the CAN-SPAM Act) at 781 days. The shortest pending trademark case is Cascade Yarns, Inc. v. Crafts Americana Group, Inc. (alleging false designation of origin and dilution), filed on December 13.

By my count, from October 25, 2004 (the date Nintendo v. What’s On was filed), to December 17, the Western District closed an additional 206 trademark cases. The most litigious plaintiff? Microsoft, by far, with 124 cases filed — the overwhelming majority of which against John Doe defendants.

It would take some time, but I’d find it interesting to learn how the closed cases were disposed of. Were most of them settled? Dismissed on Rule 12 grounds? Dismissed on summary judgment? How many went to trial? How many of those were jury trials? How many did the plaintiff win?

And even more interesting (but requiring correspondingly more research): which judges granted the most preliminary injunctions? Which judges denied the most? Which were the most likely to dismiss on summary judgment? Which were the most likely to exclude experts? Hopefully I can undertake some of this research in the weeks ahead. My hunch is that the results would be worth the effort.

Bloomberg News reports today that Starbucks Corp. has appealed the Patent Court of Korea’s refusals to cancel the STARPREYA word and design marks on confusion grounds. Korean coffee seller Elpreya Co., owner of the STARPREYA marks, responded that “Starpreya’s victory is a done deal….”

Seattle Trademark Lawyer’s recent discussion of this dispute is available here.  

On December 8, the Ninth Circuit affirmed the Central District of California’s denial of Illektron, LLC’s motion for preliminary injunction to enjoin Playmates Toys, Inc. from using the trademark BATTLE DICE in connection with its children’s game. In July, the Central District found that Illektron was not likely to prove at trial that Playmates’ use of BATTLE DICE in its “Marvel Heroes Battle Dice Fast Action Collectible Figure Game” infringed Illektron’s BATTLEZ trademark used in its BATTLEZ collectable card and dice games. In an unpublished decision, the Ninth Circuit concluded that the Central District had correctly identified the legal standards for likelihood of confusion, balance of hardships, and the possibility of irreparable injury and, therefore, did not rely on an erroneous legal premise or abuse its discretion in denying the motion.

On December 18, The Seattle Times reported that Starbucks Corp. plans to appeal a South Korean court’s refusal to cancel the registration of Seoul coffee company Elpreya’s STARPREYA trademark registration based on the alleged infringement of STARBUCKS.

Says Starbucks Chairman Howard Schultz: “We’re going to refute that; there will be no letup.”

“We have no patents or technology. What we have is the reputation of the company and obviously the trademark.”

Press reports describing the Patent Court of Korea’s September 20 decision are available from the Seattle Post-Intelligencer and The Korea Times.

The New York Times reported December 18 that opposition from five students at Cleveland State University’s College of Law to James Kirby’s application to register COCAINE as a trademark in connection with an energy drink has led the Patent and Trademark Office to rethink its tentative approval for the mark. Mr. Kirby reportedly owns Redux Beverages, the maker of the drink. The students and their professor, Michael Davis, represent Americans for Drug Free Youth, Inc. They argued that the mark should be barred from registration under 15 U.S.C. Sec. 1052(a) because it is “immoral or scandalous.” The proceeding is Opposition No. 91173295.

Mr. Kirby is not alone in seeking to register COCAINE. Applications to register COCAINE for beauty creams (Serial No. 78820405) and clothing (Serial No. 77031642) are currently pending with the Patent and Trademark Office, and DEER CO-CAIN BLACK MAGIC is already registered for “nutritional supplements, with attractions for deer” (Registration No. 2662785).