Seattle Trademark Lawyer

Counterfeit! Wizard’s authentic (left) and Marticek’s counterfeit cards

In December, Seattle card-game maker Wizards of the Coast LLC sued New Jersey resident Victoria Marticek and a number of other defendants in the Western District for counterfeiting.

Among other things, Wizards alleged that Ms. Marticek uploaded YouTube videos depicting counterfeit cards for use in Wizards’ “Magic: The Gathering” game and encouraged consumers to purchase such cards through her online business, MTGReplica, and third party Web sites such as Etsy.com and iOffer.com.

Wizards alleged Ms. Marticek had offered at least 82 different counterfeit cards for sale.

Ms. Marticek agreed to a confession of judgment with a permanent injunction and monetary relief in the amount of $14,500. Judge Thomas Zilly entered the judgment Jan. 11.

Wizards’ similar claims remain pending against the other defendants, who have not answered Wizards’ complaint.

The case cite is Wizards of the Coast LLC v. Redmore, No. 11-02090 (W.D. Wash.).

In fishing, the more weight equipment can hold makes a big difference.

Therefore, misstating the breaking point isn’t playing fair.

That’s what fishing equipment maker SPRO Corp. alleged in the false advertising complaint it filed in the Western District against competitors Eagle Claw Fishing Tackle Co. and Wright & McGill Co.

The complaint alleges that defendants represent that each of their fishing swivel products has a breaking strength that exceeds a particular weight (e.g., “The packaging of Defendants’ Size 2 swivel states that its breaking strength is 230 pounds”).

The complaint also alleges that SPRO sent defendants’ swivels to an independent laboratory for strength and failure analysis, which determined that defendants’ swivels break at weights below their advertised breaking strength.

Defendants have not yet answered SPRO’s complaint. SPRO filed its complaint in September, but it did not ask the court to issue summonses for defendants until until last week.

The case cite is SPRO Corp. v. Eagle Claw Fishing Tackle Co., No. 11-1507 (W.D. Wash.).

The District of Oregon took time out during the busy holidays to clarify what it means to have a bona fide intent to use.

That’s the statutory language an applicant swears to when filing a Section 1(b) application for federal registration — better known as an intent-to-use-based (ITU) application. It’s the alternative to a Section 1(a) use-based application and is a way to “reserve” a trademark registration for a mark that hasn’t yet been put to use.

But the applicant does need to have that bona fide intent to put the mark to future use.

In Bobosky v. Adidas AG, the District of Oregon found the applicant — an attorney — lacked that intent when he filed ITU applications to register WE NOT ME in connection with a wide variety of clothing products. Applicant W. Brand Bobosky’s applications matured to registrations when his attorney filed statements of use swearing that the marks had been put to actual use in commerce in connection with each item of apparel listed in the application.

When Mr. Bobosky contacted Adidas in connection with its use of the phrase in a basketball marketing campaign, Adidas pushed back, finding in its investigation that Mr. Bobosky had made no such use except on baseball caps. In response, Mr. Bobosky deleted all apparel items from his registration except for baseball caps. However, he filed a second ITU application that included shirts and footwear, which likewise was registered when he filed a statement of use.

Mr. Bobosky then sued Adidas for trademark infringement arising out of its use of the WE NOT ME phrase in a basketball marketing campaign.

Adidas moved for summary judgment on the ground Mr. Bobosky’s registrations were void ab initio (from inception) because he lacked a bona fide intent to use WE NOT ME on all the goods listed in his initial ITU applications.

The court noted that “[a]n applicant’s subjective testimony about his state of mind cannot demonstrate that he possessed a bona fide intent to use the mark. Typically, an applicant demonstrates his bona fide intent to use by producing ‘a written plan of action’ for a new product or service. If there is an absence of documentary evidence showing the applicant’s intent to use the mark, the burden shifts to the applicant to adequately explain that lack of documentary evidence. By itself, the absence of contemporaneous documents indicating an intent to use is sufficient to prove an applicant’s lack of bona fide intent.”

The court found Mr. Bobosky failed to meet these standards. With respect to his first registration, Mr. Bobosky admitted in depositions that he did not create the list of goods that appeared in his application, which the court found amounted to an admission that he lacked the bona fide intent to use the mark on each of the items, including hats.

Similar evidence led to a similar conclusion with respect to Mr. Bobosky’s second registration. Mr. Bobosky testified that in the same month he filed the application, he had “[n]o plans” to create WE NOT ME clothing or footwear because he had “[n]o need to,” since he had not yet acquired a trademark. Yet, he also testified that before filing that application, he had called two companies about producing WE NOT ME clothing and footwear, but did not receive written price quotes or proposals from them. The court found this testimony was contradictory and concluded that Mr. Bobosky did not have a bona fide intent to use his mark on shirts and footwear.

As a result, the court found his registrations were void and, therefore, could not support Mr. Bobosky’s infringement claim.

The case cite is Bobosky v. Adidas AG, No. 10-630-PK, 2011 WL 6888688 (D. Or. Dec. 29, 2011).

Not to lean too heavily on the New York Times, but I enjoyed a just-in-time-for-Christmas article it published last week on counterfeiting.

The paper reported the feds recently made 177 seizures in the U.S. and Mexico that netted 327,000 counterfeit items worth $77 million and led to 33 arrests (including three in South Korea). The haul was a bit unusual because it included a large number of low-end goods: Christmas lights, football jerseys, and Angry Birds toys. Many of the fakes pose a health risk.

“Counterfeit batteries are going to explode, a counterfeit electrical cord might catch fire and burn the house down,” the director of Immigration and Customs Enforcement said. “Toys are always a concern. You never know what’s going into the actual manufacturing in terms of the chemicals. Obviously you don’t know whether they have been tested in terms of, are they safe for toddlers.”

That’s equally true with counterfeit medicine and counterfeit air bags, which he also mentioned.

The moral of the story is it’s not all about fake Rolexes and knock-off Gucci hand bags for counterfeiters any more, though there are plenty of those out there as well.

Last week, the NYT published an article on the proposed “PROTECT IP Act,” the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011.

The article frames the issue as pitting those in favor of a means to better enforce IP rights on the Internet against those in favor of free Internet. Or to put faces on those interest groups, the Motion Picture Association of America and the U.S. Chamber of Commerce versus the Electronic Frontier Foundation and Google. That’s how many have couched the debate.

I’m all for a free Internet, believe me. But I’m also (obviously) all for IP rights. And I can say that IP owners are getting killed by overseas infringers — particularly counterfeiters. The article characterizes enforcement efforts through our current system as playing the arcade game of “Whac-a-Mole,” and that’s an apt comparison. It’s a real challenge to enforce a federal court’s injunction against someone who has never set foot in the States, has no bank accounts here, has no property here, and often doesn’t care what a U.S. judge says.

Others are in a better position to discuss the merits of the proposed statute, and the current state of the legislation. I know many are harshly critical of it. But from my daily practice, it is abundantly clear that U.S.-based IP owners need a helping hand. Whether the Protect IP Act is the best way to do that remains an open question.