Seattle Trademark Lawyer

Today’s post is a mix of trademark developments. First, King County today unveiled its new logo, changing from its longstanding “castle” and “crown” designs to the silhouette of the late Martin Luther King, Jr. This is a great way to honor a great man. The only thing giving me pause is something I heard early this morning on the radio. Maybe it was daylight savings time messing with me, but I thought I heard the reporter say the County predicted Dr. King’s family would be happy with the tribute. Wait a second. Tell me someone got the family’s permission before it appropriated Dr. King’s likeness. Imagine if the family didn’t approve. It’s doubtful, but it would be a debacle.

Also today, the 43(B)log discussed the Western District’s refusal to dismiss the plaintiff’s geographic misdescriptiveness claim in Baden Sports, Inc. v. Kabushiki Kaisha Molten, et al., No. 06-0210, 2007 WL 703394 (W.D. Wash.). In this case, which STL discussed in a different context in January, the plaintiff asserted that defendant’s failure to affix a country of origin mark onto its basketballs constituted unfair competition. Judge Marsha Pechman agreed that failing to do so is actionable under the Lanham Act. But the court could not determine on the briefs whether the failure was chargeable to the defendant or a non-party distributor. The
43(B)log’s analysis is available here.

Next, I couldn’t pass up TMBrandingCap’s link to an article entitled, “How the Band Protects Its Brand: The Use of Trademarks to Protect and Promote the Musical Artist.” Having recently posted on the subject (here, here, and here), I can say this is an article I wish I had written. It’s the first of a two-part series. Suffice it to say, I’m looking forward to part two.

Finally, I learned today that Washington’s Consumer Protection Act won’t be amended in this legislative session. Apparently, SB-5815, which would have increased to $50,000 the amount of exemplary damages available to plaintiffs proving unfair competition, ran out of time this weekend and won’t be pursued. STL’s discussion of the bill is available here.

A new bill would increase the amount of exemplary damages available to remedy violations of Washington’s Consumer Protection/Unfair Business Competition Act, the state’s analog to the Lanham Act. 

Currently, plaintiffs proving a claim under RCW 19.86 can obtain an injunction, actual damages, costs of suit, reasonable attorney’s fees, and triple the amount of actual damages up to $10,000 per violation. The amendment would retain each of these remedies except it would replace the trebling up to $10,000 with a discretionary award of “up to fifty thousand dollars….”

The bill, S-5815, was introduced by Democrats Brian Weinstein, Adam Kline, Erik Poulsen, Tracey Eide, Ed Murray, Craig Pridemore, Craig Oemig, and Ken Jacobsen. It has been referred to the Committee on Consumer Protection & Housing.

If enacted, the amendment would be a boon to plaintiffs and would make life for defendants in Washington correspondingly more difficult.

Copyright Act preemption does not support a motion to dismiss a Lanham Act trade dress claim, though it does support dismissal of state Consumer Protection Act and unfair competition claims, the Western District decided January 18.

In Blue Nile, Inc. v. Ice.com, Inc., No. 06-1002RSL, 2007 WL 172613 (W.D. Wash.), Seattle-based Blue Nile, Inc., sued Ice.com for trade dress infringement on the alleged ground that Ice.com had copied the “overall look and feel” of Blue Nile’s diamond search Web pages. Both parties sell diamonds through the Internet.

Ice.com moved to dismiss Blue Nile’s trade dress claim on preemption grounds, arguing that it overlapped with Blue Nile’s copyright claims. Western District Judge Robert Lasnik denied the motion, finding it was too early to decide whether Blue Nile’s copyright claims would provide it with an adequate remedy. In the court’s words, “defendant’s 12(b)(6) motion to dismiss is not the appropriate procedural vehicle through which the Court should address the overlap between the Lanham Act and Copyright Act in the context of a claim attempting to protect a website’s ‘look and feel.’”

The court separately denied the request “in light of the presumption that Fed.R.Civ.P. 12(b)(6) motions should rarely be granted, especially when the claim involves a legal theory.” The court concluded:

“[P]laintiff seeks protection for the ‘look and feel’ of its website under the Lanham Act. This is a novel legal theory as evidenced by plaintiff’s resort to two unpublished district court cases to support its trade dress claim and the Court’s survey of recent scholarship regarding protection for the ‘look and feel’ of websites.”

However, the court granted Ice.com’s motion to dismiss as it applied to Blue Nile’s Consumer Protection Act and unfair competition claims because it found those claims were based on rights equivalent to those protected by copyright law.

Defendants Randolph and Renee Honkala apparently were unhappy customers of plaintiff car dealer Wendle Motors, Inc., of Spokane. Mr. Honkala allegedly purchased a Ford Mustang Shelby GT 500 convertible from Wendle and was dissatisfied with its condition. Wendle claims it took the car back and listed it for sale on eBay, which upset Mr. Honkala. Wendle’s complaint, filed in the Eastern District of Washington, alleges that Mr. Honkala, using a screen name, then “began posting false and slanderous information” about the condition of the car and his experience with Wendle on Web sites frequented by car enthusiasts. This, Wendle alleges, caused it to lose a sale on eBay, in violation of the Lanham Act and Washington’s Consumer Protection Act.

On December 11, Judge Fred Van Sickle entered a TRO restraining both plaintiff and defendants from “disseminating additional information” about each other “over the Internet, whether in the form of postings, emails, or private measures.” The Court also restrained the defendants from contacting “other potential buyers” about the vehicle.

On December 13, plaintiff moved for a preliminary injunction. Defendants’ brief opposing plaintiff’s motion is due on December 18. Judge Van Sickle is scheduled to hear the motion on December 20. Defendants have not yet answered plaintiff’s complaint.