Seattle Trademark Lawyer

Western District Holds Maker of Worm Composting Products in Contempt

2009-07-09T04:44:09Z

As STL reported in November, the Western District found that defendants Providnet Co. Trust and Barry Russell likely infringed plaintiff Cascade Manufacturing Sales, Inc.’s trademark rights in WORM FACTORY in connection with the sale of worm composting bins, and imposed a preliminary injunction against them.

On Jan. 7, the court clarified that its injunction extended to the phrase “Factory of Worms” as well as “Worm Factory,” but not “Worm Wrangler,” which both parties use to describe their products. The court also cautioned defendants to comply with its earlier order.

Apparently, defendants failed to do so. On July 2, Judge Ronald Leighton found them to be in contempt. The court imposed a $5,000 fine, which it said it would exonerate if defendants demonstrate they have met the following terms by July 13. In summary, defendants must:

Send a letter to each of their distributors mandating that they stop using the phrase “Worm Factory,” “Factory of Worms” or other such terms in connection with defendants’ products;
Remove all references to “factory” in tags, product descriptors, meta tags, or any other materials on defendants’ Amazon and eBay stores;
Remove all references to “factory” on their Web sites; and
Remove “factory” from their accounts on each keyword advertising medium that they use.

I’m happy to report that western Washington appears to be Worm Central, with all parties in the case hailing from this neck of the woods.

The case cite is Cascade Manufacturing Sales, Inc. v. Providnet Co. Trust, No. 08-5433 (W.D. Wash. July 2, 2009).

Western District Finds Use of Hendrix Name Fair But Use of Signature Infringing

2009-07-08T04:58:59Z

Screen shot from defendants’ former Web site depicting Hendrix mark

Defendants’ use of HENDRIX and JIMI HENDRIX was fair use of plaintiffs’ trademarks to describe the images depicted on their products, the Western District preliminarily found on July 2. However, the court also found defendants’ domain names containing those marks, a guitar and “headshot/bust” logo, and Jimi Hendrix’s signature infringe plaintiffs’ trademarks and enjoined further use pending trial.

Defendant Andrew Pitsicalis was formerly associated with Craig Dieffenbach and Electric Hendrix, LLC — defendants the court enjoined from using various JIMI HENDRIX trademarks in connection with the sale of vodka (STL discussion of that case here). In 2008, Mr. Pitsicalis formed HendrixLicensing.com LTD, which markets posters, art prints, apparel, and novelty items bearing the name, signature, likeness, and/or art created by Jimi Hendrix.

Plaintiffs Experience Hendrix, LLC, and Authentic Hendrix, LLC, sought a preliminary injunction against the defendants’ use of their trademarks by maintaining the hendrixlicensing.com and hendrixartwork.com domain names; using a guitar and “headshot/bust” logo; incorporating the HENDRIX and JIMI HENDRIX trademarks in various products; and placing Mr. Hendrix’s signature on various products. (Past STL discussion of the case here.)

After receiving the motion, defendants stopped using the domain names, as well as the guitar and “headshot/bust” logo, and did not dispute the infringing nature of those things. Defendants solely argued they are making fair use of Jimi Hendrix’s name and signature.

The court agreed in part and disagreed in part. With respect to use of the HENDRIX and JIMI HENDRIX names, the court leaned heavily on the the case of Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002), in finding the use was fair. “To the extent the names ‘HENDRIX’ or ‘JIMI HENDRIX’ serve merely to describe the associated image, i.e., to identify plaintiffs’ ‘product’ Jimi Hendrix, who is depicted within, or whose artwork is shown in, defendants’ posters or other products, the use is analogous to that in Cairns. As in Cairns, plaintiffs have no post-mortem rights of publicity, and they cannot preclude anyone from creating and then selling sketches, portraits, caricatures, dolls, bobbleheads, or other likenesses of Jimi Hendrix. In addition, plaintiffs offer no evidence that they have trademarks or service marks incorporating fonts similar to the stylized lettering used by defendants, except for Jimi Hendrix’s signature, which will be discussed in the next section. Other than the signature, plaintiffs’ registrations for ‘HENDRIX’ and ‘JIMI HENDRIX’ are in plain typeface. Thus, defendants’ use of distinctive lettering does not itself inappropriately imply a relationship with plaintiffs.”

With regard to Mr. Hendrix’s signature, the court found defendants’ use was not fair. “Defendants have represented to the Court that the signature is authentic, was purchased on ‘eBay’ by Craig Dieffenbach, and was conveyed in electronic form to Mr. Pitsicalis. Defendants use the signature on products, for example, dart game accouterments such as targets, score boards, and dart flights, containing no likeness of Jimi Hendrix. During oral argument, counsel for defendants indicated that defendants are now confining their use of the signature to posters, fine art prints, and apparel. The Court interprets counsel’s remark as a concession that defendants’ use of Jimi Hendrix’s signature constitutes branding, and it is not exempted from infringement liability by either the nominative or the classic fair use doctrine.”

Since neither doctrine applied, the court found defendants’ use of Mr. Hendrix’s signature was likely to cause confusion — an issue defendants did not address. Therefore, the court concluded the requested injunction was appropriate.

The case cite is Experience Hendrix, LLC v. HendrixLicensing.com, LTD, No. 09-285 (W.D. Wash. July 2, 2009) (Zilly, J.).

Ninth Circuit Adopts Standard for Recalls in Trademark Infringement Cases

2009-07-07T02:28:06Z

On July 2, the Ninth Circuit decided that a district court must find a “substantial risk of danger to the public” or other special circumstances before entering a preliminary injunction requiring a product recall in a trademark case.

In Marlyn Nutraceuticals Inc. v. Mucos Pharma GMBH & Co., plaintiff Mucos argued that its former distributor’s use of Mucos’ WOBENZYM registered trademark in connection with enzyme products that differed from Mucos’ formula confused consumers and infringed its trademark rights. Marlyn argued it had a right to manufacture and sell enzyme products under the WOBENZYM mark pursuant to an informal agreement between the parties. The District of Arizona disagreed. It granted Mucos’ motion for a preliminary injunction and ordered Marlyn to stop manufacturing and distributing its WOBENZYM-branded products, recall its already-distributed products, and provide restitution to the affected customers.

Marlyn appealed, challenging, among other things, the scope of the injunction. The Ninth Circuit adopted the Third Circuit’s standard for imposing recalls, which requires the plaintiff to meet the higher standard for a disfavored “prohibitory injunction,” and for the district court to consider: “(1) the willful or intentional infringement by the defendant; (2) whether the risk of confusion to the public and injury to the trademark owner is greater than the burden of the recall to the defendant; and (3) substantial risk of danger to the public due to the defendant’s infringing activity.”

The court then sent the case back to the district court to consider these factors. “As the district court did not have the benefit of this decision when deciding this case, it did not analyze these additional factors. It did, however, rest its recall decision in part on the third factor — substantial risk of danger to the public due to the defendant’s infringing activity — in concluding that there was a public health hazard in allowing the product to remain on the market. However, the record does not support the existence of a public health risk necessary to invoke the interlocutory remedy of product recall. The only record support for the proposition that Marlyn’s Wobenzym is unsafe for public consumption is the testimony of Dr. Scavetta that the proteolytic activity in some batches of Marlyn’s Wobenzym was 250% greater than what it should have been. However, Scavetta did not testify that this formulation was unsafe for human consumption. Moreover, the district court stated that it did not find Dr. Scavetta’s testimony to be credible. There was no other testimony or evidence upon which the district court could make its conclusion that the product was hazardous for public consumption.”

The case cite is Marlyn Nutraceuticals, Inc. v. Mucos Pharma GMBH & Co., No. 08-15101, __ F.3d. __, 2009 WL 1886172 (9th Cir. July 2, 2009).

Gosling's Protects Its Rights in the "Dark 'n Stormy" Cocktail Name, NYT Reports

2009-07-06T02:20:34Z

The creator of the Dark ‘n’ Stormy cocktail is taking care to ensure that every drink bearing its name is made with Gosling’s Black Seal rum and a splash of ginger beer, the NYT reports today. This is a rarity in the world of cocktails, where bartenders usually have free rein to imprint their own personality on a classic drink.

Sure enough, Gosling’s Export (Bermuda) Limited owns two U.S. trademark registrations on the mark in connection with booze: DARK ‘N STORMY for “Pre-mixed alcoholic cocktail, namely rum and ginger beer” and DARK ‘N STORMY for “A kit containing Gosling’s BLACK SEAL rum and ginger beer for preparing an alcoholic cocktail.”

“We defend that trademark vigorously, which is a very time-consuming and expensive thing,” E. Malcolm Gosling Jr. says in the article. “That’s a valuable asset we need to protect.”

Gosling’s says it draws the line at the presence of other rums in its drink. When competing rum makers use its mark to promote their product, “They’re really just trying to cheat and to capitalize on our investment.”

Wikipedia (for what it’s worth) appears to take a less proprietary approach to describing the drink. It says a Dark ‘n’ Stormy cocktail is made with “dark rum and ginger beer over ice.” It adds that “local rum is usually used, for example, Bundaberg in Australia or Goslings in Bermuda.”

Photo credit: Michael Appleton/NYT.

Important Article Updates Seminal Analysis of Washington Franchise Law

2009-07-02T03:23:11Z

Hot off the presses is an important new law review treatment of franchise law. Off topic here at STL? Not when one of the three elements of a franchise is that the franchisee’s business is “substantially associated with” a trademark that is licensed or owned by the franchisor. This article, written by three of my colleagues, updates a seminal article published by longtime University of Washington School of Law Professor Donald Chisum in 1973. A lot’s happened in Washington franchise regulation in the 36 years since that work was published. This article fills in the gaps. It’s a must-read for anyone practicing franchise law in Washington, and anyone practicing trademark law that occasionally strays into franchise law territory.

The cite is: Douglas C. Berry, David M. Byers & Daniel J. Oates, State Regulation of Franchising: The Washington Experience Revisited, 32 Seattle University Law Review 811 (2009).

Do Counterfeiters Drive Auction Sales of Empty Wine Bottles?

2009-07-01T03:27:32Z

The NYT’s Freakonomics blog today discusses the sale of empty wine bottles on eBay. It suggests that because the highest-priced empty bottles are the ones that fetch the highest prices when full, bidders may be motivated by the prospect of re-using them to sell counterfeit wine. Scary thought. But I guess I’m not surprised that bottles that used to hold the most sought-after wines fetch the most at auction. Other than a uniquely-shaped bottle or perhaps a uniquely-designed label, how else would one value an empty container? I’m sure counterfeit wine exists, but I kind of doubt this motive drives auction sales. Creative idea, though.

Court Enjoins Beauty School from Using Competitor's Marks in Signs and Ads

2009-06-30T03:57:35Z

The Western District today found it was likely the plaintiff beauty school could establish at trial that the defendant beauty school took out ads in the Yellow Pages, posted signs on an office suite, and obtained business licenses using plaintiffs’ trademarks, constituting trademark infringement and a violation of the Washington Consumer Protection Act.

“Plaintiffs are international companies which operate over 200 hairdressing salons and academies under their ‘Toni&Guy’ brand including an academy in Bellingham, Washington. Defendants own and operate Bellingham Beauty School in Bellingham, Washington. Upon learning of the possibility of the opening of an authorized Tony&Guy franchise in Bellingham, Defendants registered ‘Toni & Guy Hairdressing Academy, Inc.’ as a for-profit corporation with the State of Washington in November, 2007. Defendants’ Tony & Guy Hairdressing Academy, Inc. then obtained a business license with the City of Bellingham and the State of Washington and a listing in the Yellow Pages for a telephone number which is never answered. These advertisements and business registrations list 203 W. Holly Street, Suite 206, Bellingham Washington as the location of the academy. This location is an office suite which bears ‘Tony & Guy Hairdressing Academy’ signs but remains empty with locked doors.

“An authorized Tony&Guy Hairdressing Academy opened in Bellingham in November 2008. Sometime before March 2009, Plaintiffs learned of Defendants’ use of the ‘Toni & Guy’ name. On April 14, 2009, Plaintiffs filed a complaint alleging violations of sections 32 of the Lanham Act (15 U.S.C. § 1114), 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), and Washington’s Consumer Protection Act.”

These findings, Judge Marsha Pechman concluded, were sufficient to support a preliminary injunction.

“The court finds that Plaintiffs have demonstrated a likelihood of success on the merits of some of its claims and that Plaintiffs stand to be irreparably injured if Defendants are not enjoined from using the Toni & Guy mark. The Court also finds that Plaintiffs have raised a serious question concerning public policy and that the balance of hardships scale tips in Plaintiffs’ favor. Plaintiffs’ prayer for relief includes enjoining Defendants from using the marks, removing local signage, and transferring the telephone number listed in the Yellow Pages to Plaintiffs. These actions would reasonably prevent further harm by removing the infringing marks from the public sphere. These actions should be accomplished within three days of the receipt of this order.”

It’s worth noting that defendants responded to plaintiffs’ motion by filing affidavits but did not file an opposition brief.

The case cite is MBL/Toni&Guy Products, L.P. v. Kennard, No. 09-501 (W.D. Wash. June 29, 2009) (Pechman, J.).

Full disclosure: STL’s firm represents the plaintiffs in this case.

Court Strikes Unclean Hands Defense as Not Sufficiently Related to Claims

2009-06-29T04:01:02Z

STL has previously reported on Campagnolo S.R.L. v. Full Speed Ahead, Inc., the Western District case involving the defendant bicycle parts manufacturer’s alleged statements about the qualities of the parties’ respective bicycle cranksets.

The parties filed a number of motions relating to Full Speed Ahead’s affirmative defense of unclean hands, including a motion for protective order seeking to preclude discovery about the defense, a motion to compel discovery about the defense, and two motions for sanctions against Full Speed Ahead for refusing to withdraw the defense.

On June 26, Judge Ricardo Martinez granted the motion to strike and denied the remaining motions as moot. The court found: “FSA’s claims are far too attenuated from the claims raised by Campagnolo to justify their inclusion in this lawsuit. For instance, Campagnolo brings this lawsuit based solely on representations made by FSA regarding Campagnolo’s crankset, a bicycle component that Campagnolo manufactures and develops. Campagnolo specifically contends that in 2008, FSA published several misleading advertisements regarding the stiffness-to-weight ratio of Campagnolo’s crankset in bicycle publications and on the web. Meanwhile, FSA counters that in three of Campagnolo’s own catalogues from 2004 through 2006, Campagnolo falsely advertised the weight of its own crankset. FSA does not allege that Campagnolo made any false claims about FSA’s cranksets. Thus, FSA’s claims do not directly relate to Campagnolo’s allegations, but rather accuse Campagnolo of ‘misconduct in the abstract.’”

The court added that “FSA mistakenly assumes that because the subject matter of the instant dispute is the weight of the parties’ respective cranksets, any and all conduct of Campagnolo with respect to its crankset is fair game. As mentioned above, the unclean hands defense does not stretch that far. Instead, ‘[t]he misconduct which brings the clean hands doctrine into operation must relate directly to the transaction upon which the complaint is made, i.e., it must pertain to the very subject matter involved and affect the equitable relations between the litigants.’ Therefore, in the instant case, FSA’s claims would have to directly relate to Campagnolo’s allegations regarding FSA’s misrepresentations about Campagnolo’s cranksets. This is the subject matter of this lawsuit. General allegations regarding Campagnolo’s prior history regarding its own advertisements are not the subject matter of this lawsuit. These are extraneous claims as Campagnolo’s advertising history does not directly relate to the alleged misrepresentations by FSA about Campagnolo’s cranksets.”

The case cite is Campagnolo S.R.L. v. Full Speed Ahead, Inc., No. 08-1372 (W.D. Wash. June 26, 2009) (Martinez, J.).

Allegation of Willful Infringement Enough for Attorney's Fees Award

2009-06-24T04:53:18Z

Plaintiff Chevron U.S.A., Inc. alleged defendant In N Out Minimart on Broadway, Inc., willfully infringed its trademark. In N Out failed to answer, so the Western District ordered it to be in default.

The first time around, the court denied Chevron’s motion for entry of default judgement with an award of fees and costs because Chevron did not set forth the basis for the award. The second time around, Chevron sought fees as an “exceptional” case under the Lanham Act, which the court granted based on Chevron’s allegations and In N Out’s failure to participate in the case.

The court found: “While the term ‘exceptional’ is not defined in the statute, attorneys’ fees are available in infringement cases where the acts of infringement can be characterized as malicious, fraudulent, deliberate, or willful.’ In this case, the complaint explicitly alleged that defendant’s conduct was willful. As the Derek Andrew, Inc. [v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008)] court explained, once default has been entered, the allegations in the complaint, except with respect to the amount of damages, are taken as true. Accordingly, the relevant allegations in the complaint are taken as true, including the allegation that defendant willfully infringed plaintiff’s trademark. That allegation and the entry of default sufficiently establish plaintiff’s entitlement to attorney’s fees under the Lanham Act.”

The case cite is Chevron U.S.A., Inc. v. In N Out Minimart on Broadway, Inc., No. 09-18, 2009 WL 1608458 (W.D. Wash. June 5, 2009) (Lasnik, J.).

CUPCAKES Brand Cupcakes?

2009-06-23T03:22:34Z

I wouldn’t call it a safari, but I did have the good fortune to spend the weekend in the great city of Vancouver, BC. While there, I came across this tasty example of a generic trademark: CUPCAKES brand cupcakes. I later learned the shop’s name actually is CUPCAKES BY HEATHER & LORI. However, the notion of CUPCAKES-branded cupcakes was about as close as I came to trademark law this weekend so it’ll have to suffice for today’s post.