Seattle Trademark Lawyer

The case between a Seattle law firm and its Web development vendor goes to jury trial on May 21. STL readers may recall that the Seattle-based law firm The Christensen Firm sued Chameleon Data Corp. and its president, Derek Dohn, on the ground that defendants allegedly transferred ownership of plaintiff’s four domain names (thechristensenfirm.com, thechristensenfirm.net, christensenfirm.com, and cc-lawfirm.com) to themselves without plaintiff’s authorization, and shut down email service to addresses associated with plaintiff’s primary domain name, cc-lawfirm.com, in order to get leverage over plaintiff in a dispute over the defendants’ bill.

This interesting dispute became less of a trademark case on Jan. 18, when Judge Zilly dismissed plaintiff’s Lanham Act and Washington State cybersquatting claims on the basis that the plaintiff’s marks were either generic (cc-lawfirm) or descriptive (The Christensen Firm).

One trademark issue still alive at trial is defendants’ claim for attorney’s fees as an “exceptional case” under the Lanham Act. Defendants’ trial brief argues:

“In this case, it was obvious that the Alleged Marks were generic, yet Christensen pursued her bogus trademark claims with full force. This alone warrants a determination that this case is exceptional and an award of Defendants’ reasonable attorneys’ fees and costs.

“Further Christensen never even produced any credible evidence that she had used the Alleged Marks as trademarks. Christensen is her surname, as well as the surname of numerous other people, all of whom have the right to use that name in connection with their own businesses. “CC law firm” has a number of generic meanings as indicated above. During the course of this trial, Christensen never produced any evidence indicating the Alleged Marks were anything other than generic. She produced no evidence indicating consumers view either of the Alleged Marks as denoting her as the single source of services offered in connection with that mark. …”

Given the arguments made in its motion for reconsideration (which the court denied), plaintiff undoubtedly disputes these allegations, though it does not address the fees issue in its trial brief.

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash.) (Zilly, J.).

As discussed on Feb. 14, The Christensen Firm moved the Western District to reconsider its summary judgment dismissal of the firm’s cybersquatting and Consumer Protection Act claims against its Web site development vendor, Chameleon Data Corp., and its president, Derek Dohn. In doing so, plaintiff argued it was “manifest error” for the court to find the marks contained in the domain names defendants allegedly transferred to themselves without plaintiff’s authorization “were either generic (cc-lawfirm) or descriptive (The Christensen Firm).”

Today, the court denied plaintiff’s motion. In a minute order issued by the clerk, the court found:

“Plaintiff’s motion simply rehashes arguments already made and rejected by the Court. The Court, however, will take this opportunity to clarify that, although it continues to hold the mark ‘cc-lawfirm’ is generic, it would reach the same conclusion concerning plaintiff’s cybersquatting claim even if it were to rule that the mark was descriptive. Plaintiff has not demonstrated that the mark ‘cc-lawfirm’ has acquired secondary meaning, and therefore, the mark is not famous or distinctive, as required by 15 U.S.C. § 1125(d).”

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash. Feb. 20, 2008) (Zilly, J.).

Seattle-based solo law firm The Christensen Firm claims it’s having trouble with its Web development vendor. Last March, it filed suit in King County Superior Court against Chameleon Data Corp. and its president, Derek Dohn, on the alleged ground that defendants transferred ownership of plaintiff’s four domain names (thechristensenfirm.com, thechristensenfirm.net, christensenfirm.com, and cc-lawfirm.com) to themselves without plaintiff’s authorization, and shut down email service to addresses associated with plaintiff’s primary domain name, cc-lawfirm.com. Plaintiff claims defendants did so to obtain leverage in the parties’ dispute over the defendants’ bill. Defendants subsequently removed the case to the Western District.

On Jan. 31, Judge Thomas Zilly granted defendants’ motion to dismiss plaintiff’s cybersquatting and Consumer Protection Act claims on summary judgment. The minute order does not explain the basis for the decision, but the motion for reconsideration plaintiff filed today seems to shed some light on the subject.

Plaintiff stated in its motion: “On January 31, 2008, this Court granted Defendants’ motion for summary judgment on Plaintiff’s Anti-Cybersquatting and Consumer Protection Act claims on the basis that the Plaintiff’s marks were either generic (cc-lawfirm) or descriptive (The Christensen Firm).”

Plaintiff stated both rulings constituted “manifest error.” It argued the court improperly dissected plaintiff’s trademark, cc-lawfirm, and found the “lawfirm” portion is generic for legal services, and “The Christensen Firm” is descriptive without a showing of secondary meaning. Plaintiff argued its mark is instead suggestive and, therefore, inherently distinctive, and that it had acquired secondary meaning in any event.

Under Local Rule 7(h), defendants need not (and may not) respond unless the court requests that it do so.

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash. Jan. 31, 2008) (Zilly, J.).

I’m a faithful “lurker” in the International Trademark Association’s listserve. I’ve found my passive participation pays off, since there often is a quality tip or issue for discussion. Recent days have been no exception. On Jan. 9, the talk turned to Network Solutions (STL’s domain name registrar). The listservers say the registrar keeps track of name availability searches conducted on its site. The company then reserves the requested domain name for up to five days if the user does not register the domain name during that session. Future availability searches with other domain name registrars list the domain name is unavailable. If the searcher (or anyone else) returns to Network Solutions, however, the domain name is listed as being available for registration. Worse still, word is that “reserved” domain names may be identified as being sought after, increasing the chance that a cybersquatter could register the name. This practice is known as “domain front running,” and is a variant of domain tasting. Large, brand-name companies are saying they have been the victim of this practice. Beware. 

The solution? Avoid registrars who engage in domain front running. And hope ICANN changes its policies that allow this practice to happen in the first place.

See the Canadian Trademark Blog’s recent summary of the Wall Street Journal’s article (subscription required) on domain front running here.

STL readers will recall that the Wailers rock and roll band from Tacoma brought suit in June against the Wailers reggae band from Jamaica for trademark infringement, dilution, unfair competition, and cybersquatting, based on plaintiffs’ WAILERS registered trademark. Yesterday, Western District Judge Ronald Leighton found that plaintiffs filed their suit after the analogous statute of limitations had expired and, therefore, granted summary judgment in favor of defendants based on laches.

The court found: “Defendants stress that Plaintiffs were aware Defendants were calling themselves the ‘Wailers’ since the mid to late 1970s, when they were asked about their relationship to Bob Marley. Plaintiffs argue, without legal or logical support, that there is some meaningful difference between the names ‘Wailers’ (standing alone) and ‘Wailers’ in the context of ‘Bob Marley and the Wailers.’ They claim their 1970s-vintage knowledge of Defendants’ use of the term was only in conjunction with Mr. Marley, and that that use was not offending.

“In making this argument, however, Plaintiffs also concede that they ‘first encountered the Defendants’ band name as simply the ‘Wailers’ at some point in the late 1990s,’ and that they were unaware the Defendants were calling their group the ‘Wailers’ until the late 1990s.

“As the Defendants point out, however, the Plaintiffs’ registration efforts do not eliminate the rights of the Defendants: Neither application for nor registration of a mark at the federal level wipes out the prior, non-registered, common law rights of others. Accordingly, the act of registration does not toll the limitations period, and the Plaintiffs’ 2007 lawsuit to enforce the rights they claim to have obtained by registration is outside the three year limitations period. The presumption of laches applies.”

The court found the defendants could not overcome that presumption.

The court also found that defendant band leader Aston Barrett’s registration of wailers.com was protected by the Anticybersquatting Consumer Protection Act’s “safe harbor” provision for persons who believe and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful:

“Defendants argue that Barrett’s longstanding use of the name Wailers establishes his ‘abundant good faith’ in registering the domain name. Plaintiffs argue that the issue is one of fact, and that they have not conducted discovery into the matter.

“No amount of discovery is going to change the fact that Defendants have been calling themselves the Wailers for decades, the Plaintiffs knew it, and the domain name registration predated the Plaintiffs’ application for trademark registration. There is no evidence of bad faith on the Defendant’s part, and the Plaintiffs’ Cybersquatting claim must fail as a matter of law.”

The case cite is Ormsby v. Barrett, No. 07-5305 (W.D. Wash. Jan. 2, 2008).

Note: my partner, Kathleen Petrich, and I represented the defendants. As a rule, I do not comment about cases in which I am involved until a judgment is rendered. My previous posts about this case pre-dated my involvement in the matter.