Seattle Trademark Lawyer

Vietnamese Grocery Offers Interesting Asian Trademarks

2012-02-03T05:22:27Z

I’m off to China!

I’ll be out through Feb. 15 helping teach new developments in trademark law to judges at China’s National Judges College in Guangzhou.

But armed with my laptop and BlackBerry, 6,500 miles away has never felt so close!

In the meantime, I thought it would be fun to look at some interesting brands I recently came across at a Vietnamese grocery store in Seattle.

This one’s pretty descriptive: TAIWAN BEER. Doesn’t leave much to the imagination. I wonder if the owner can prove secondary meaning

Korum Family's Trademark Dispute is Reminiscent of Famous Gallo Struggle

2012-01-30T05:38:57Z

Like the Gallo name in the wine business, the Korum name is well known in the car dealership business — in the south Puget Sound area, at least.

And like the Gallos, the Korums may differ as to who has rights to the family name in connection with the family business.

The Ninth Circuit famously laid the Gallos’ dispute to rest twenty years ago in E. & J. Gallo Winery v. Gallo Cattle Company, 967 F.2d 1280 (9th Cir. 1992).

The Western District of Washington may be just getting started with respect to the Korums.

OPEN Season on Counterfeiters? Congress Quickly Bends to Online Pressure

2012-01-24T04:39:07Z

Last week, Congress went from PIPA and SOPA to OPEN.

These are the acronyms for the federal bills aimed at curbing the sale of counterfeit goods through foreign Web sites.

It was a remarkable change. Congress had broadly supported the Senate’s Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act (PIPA or PROTECT-IP) and the House’s similar Stop Online Piracy Act (SOPA). Indeed, the Senate was scheduled to vote on PIPA on Jan. 20.

But Google, Wikipedia, and other online providers fought back. They argued the bills’ authorizing the Justice Department to order search engine providers to remove foreign Web sites that sold counterfeit goods from search engine results — rendering them invisible for practical purposes — constituted censorship, turned search engine providers into the Internet police, and unfairly threatened them with liability if they did not comply.

In Memoriam: George Bassett

2012-01-23T06:29:23Z

I lost a good friend and mentor last week. The whole Seattle legal community did.

George Bassett — the first person I was fortunate enough to work with when I joined Graham & Dunn — passed away after a courageous, years-long battle with cancer. I can’t think of a better example of how to practice law, treat others, and live life. George had a zest for it all. He was honest and respectful to a fault. He had so many interests and was so well-read, I doubt he ever got bored. He was a real role model — an embodiment of what to strive for in life.

Here’s what Graham & Dunn had to say when it broke the sad news on Friday:

“Our beloved friend and partner George Bassett passed away on January 19, 2012, peacefully, at home with his family. George grew up in Michigan and moved to Seattle in 1969, after having graduated earlier that year from Michigan Law School. George was an upstanding member of the Washington bar for more than 42 years, practicing first in the state attorney general’s office, then as a founding member of the Bassett & Morrison law firm, and finally as a shareholder at Graham & Dunn since 1991.

“After his family, and maybe fishing, George most enjoyed practicing law, and he was extremely good at it. Known as an astute and skilled litigator who achieved great results for his clients, George also was universally recognized for maintaining the highest standards of civility and professionalism throughout his career. He was always ready with a kind word or sage advice whether he was a colleague or an adversary. A rare man, George will be greatly missed.”

Well said.

George will be greatly missed, indeed. I know I will never forget him.

What Are the Most Important Developments in U.S. Trademark Law?

2012-01-18T04:55:42Z

I’ve got a fantastic opportunity coming up.

In February, I’m going to Guangzhou, China, with Chief Judge Randall Rader of the Federal Circuit and Washington, D.C., attorney Michael Remington to help train 200 Chinese judges at the National Judges College in new developments in U.S. intellectual property law. Chief Judge Rader’s got patent law, Mr. Remington has copyright law, and I’m covering trademark law.

So, trademark developments have been more on my mind than usual.

And this begs the question: what are the hot trends in trademark law?

Seller Admits to Counterfeiting Cards in Wizards of the Coast Game

2012-01-16T03:52:36Z

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 videos to YouTube 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.

Fishing Equipment Maker Says Advertised Breaking Weights False, Unfair

2012-01-09T06:03:50Z

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”).

Court Voids Registrations Based on Lack of Intent to Use Trademarks

2012-01-03T05:02:49Z

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.

Feds Make Just-in-Time-for-Christmas Counterfeit Seizures

2011-12-28T04:41:30Z

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.”

NYT Discusses the Proposed PROTECT IP Act, Pits IP Owners Against Google

2011-12-19T04:17:34Z

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.