Seattle Trademark Lawyer

In Sonoma Foods, Inc. v. Sonoma Cheese Factory, LLC, plaintiff cheese maker sued defendant cheese maker in the Northern District of California. At issue was Sonoma Cheese Factory’s use of Sonoma Foods’ registered trademarks, SONOMA CHEESE FACTORY and DESIGN and SONOMA JACK (the “Bull Trademarks”), allegedly constituting infringement and a false description or passing off.

According to Sonoma Cheese Factory, before December 31, 2001, Sonoma Foods owned and operated the Sonoma Cheese Factory retail store. On that date, the corporation was restructured; Sonoma Cheese Factory, LLC, was formed; and Sonoma Foods transferred the retail store to the new entity. When Sonoma Cheese Factory acquired the store, it continued to use the same signs and packaging that Sonoma Foods had used. It is that use about which Sonoma Foods complains.

    
Two Photos Sonoma Cheese Factory submitted in support of its
motion for partial summary judgment based on laches.

Sonoma Cheese Factory responded by moving for partial summary judgment on the ground of laches. It argued:

“Sonoma Cheese Factory used the Bull Trademarks on two signs in its retail store. These signs hung above the store’s front door and above its main cheese counter, just inside the front door. Both signs were displayed continuously from December 31, 2001 until after this suit was filed. During the same period, Sonoma Cheese Factory sold cheeses and other products packaged in paper bags imprinted with U.S. Trademark No. 1,099,709. Sonoma Cheese Factory also used U.S. Trademark No. 1,111,024 on mailing envelopes at least as early as February 2002.

“These signs, bags, and envelopes were used in commerce, in connection with the sales of cheese products — including products that compete with Plaintiff’s cheeses. Sonoma Foods’ officers knew the defendants were using the Bull Trademarks but took no action for over five years. The statute of limitations therefore provides a complete defense to Sonoma Foods’ second and sixth claims.”

Judge Jeffrey White denied the motion. (Order not available online.) The court found:

“Regardless of whether a statute of limitations defense is applicable to Plaintiff’s trademark infringement claim, the alleged violations are ongoing, and thus, ‘the statute of limitations is conceivably only a bar to monetary relief for the period outside of the statute of limitations.’ Defendants’ alleged infringement activity is ongoing. Therefore, even assuming a statute of limitations defense may bar some portion of Plaintiff’s trademark infringement claim, Plaintiff would still be entitled to pursue damages based on the infringement activity that occurred within the statute of limitations period.”

This strikes me as wrong. Laches exists to cut off a plaintiff’s claim when the plaintiff has unreasonably delayed in bringing suit and caused the defendant prejudice as a result. Here, Sonoma Cheese Factory alleged that Sonoma Foods knew of its alleged infringement since December 31, 2001, and delayed bringing suit more than five years — long after the analogous statute of limitations had run. For the court to find this delay merely cuts off damages Sonoma Foods can recover undermines the equitable principles on which laches is based. By this reasoning, Sonoma Foods could wait 30 years to sue and still be entitled to recover damages from Sonoma Cheese Factory’s “continuing violation.” To my mind, laches stands for the proposition that when it comes to sitting on one’s rights, at some point enough is enough. Laches bars a claim; it does not merely limit the damages a plaintiff can recover.

The case cite is Sonoma Foods, Inc. v. Sonoma Cheese Factory, LLC, No. 07-554, 2008 WL 913279 (N.D. Calif. April 3, 2008) (White, J.).

In the Western District case of Teragren, LLC v. Smith & Fong Co., the parties are competing bamboo floor paneling processors. Smith & Fong responded to Teragren’s complaint for patent infringement by asserting six counterclaims, including that Teragren was liable for making false statements that amounted to unfair competition prohibited by the Lanham Act.

Teragren moved to dismiss Smith & Fong’s counterclaims, including its unfair competition claim. In particular, Teragren argued:

“Defendant never asserts that Teragren’s descriptions or representations were made in promotions or advertising or that Teragren’s alleged ‘statements’ cause confusion, mistake, or deceive as to the affiliation, connection, association, origin, sponsorship, or approval of goods, services, or commercial activities. As such, defendant’s allegations never even suggest likelihood of confusion by the public, which is required to assert a claim under the Lanham Act.”

On March 17, Western District Judge Ronald Leighton agreed with Teragren’s argument, but allowed Smith & Fong to amend its counterclaim to correct the deficiency:

“To prove a false statement is actionable under Section [43(a)] of the Lanham Act, a person must show that the statement is 1) likely to cause confusion as to the affiliation or connection of the parties, or 2) is made in commercial advertising and promotion and misrepresents the nature, characteristics and qualities of another person’s goods.

“The Ninth Circuit has required a party to plead a claim under the Lanham Act with some particularity. In order to state a claim for false advertising under 43(a) of the Lanham Act, a party must allege 1) the opposing party made a false statement of fact in a commercial advertisement or promotion about his own or another’s product; 2) that the statement actually deceived or has the tendency to deceive a substantial segment of its audience; 3) that the deception is material, in that it is likely to influence the purchasing decision; 4) that the party caused its false statement to enter interstate commerce; and, 5) that there has been or will be injury as a result.

“The Defendant’s counterclaim does not allege allegations that the false representations of the Plaintiff are likely to cause confusion. Rather than dismissing the counterclaim, the Court will permit the Defendant to amend its Lanham Act counterclaim.”

The case cite is Teragren, LLC v. Smith & Fong Co., No. 07-5612, 2008 WL 725186 (W.D. Wash. March 17, 2008) (Leighton, J.).

As STL readers know, Champagne only comes from the Champagne region of France (STL post here). And Wild American Shrimp only come from “their native habitat in the coastal waters of the Gulf and East Coasts of the United States” (STL post here). 

As I suspect Italians have long known, true Parmesan cheese only comes from Italy. The five regions around Parma, in northern Italy, to be exact, and is made only from raw milk, with no additives, and is aged at least one year. At least that’s what the European Court of Justice ruled today.

Billboard at the border of Parma and Piacenza announcing
the home of Parmigiano-Reggiano cheee. Photo credit: J.P. Lon

The ruling was a setback for German producers whose “Parmesan” cheese was deemed to be imitation. In so ruling, the court rejected Germany’s argument that the name was generic for a type of hard, crumbly cheese that is often grated over food. On that issue, the court found:

“When assessing the generic character of a name, the Court has held that it is necessary, under Article 3(1) of Regulation 2081/92, to take into account the places of production of the product concerned both inside and outside the Member State which obtained the registration of the name at issue, the consumption of that product and how it is perceived by consumers inside and outside that Member State, the existence of national legislation specifically relating to that product, and the way in which the name has been used in Community law.

“As indicated by the Advocate General in points 63 and 64 of his Opinion, the Federal Republic of Germany restricted itself to providing quotations from dictionaries and specialist literature which do not provide any comprehensive view of how the word ‘Parmesan’ is perceived by consumers in Germany and other Member States, and failed even to give any figures as to the production or consumption of the cheese marketed under the name ‘Parmesan’ in Germany or in other Member States.

“According to the documents in the case, in Germany, certain producers of cheese called ‘Parmesan’ market that product with labels referring to Italian cultural traditions and landscapes. It is legitimate to infer from this that consumers in that Member State perceive ‘Parmesan’ cheese as a cheese associated with Italy, even if in reality it was produced in another Member State.

“Finally, at the hearing, the Federal Republic of Germany was also unable to provide information on the quantity of cheese produced in Italy under the PDO ‘Parmigiano Reggiano’ and imported into Germany, making it impossible for the Court to use the factors relating to the consumption of that cheese as indicators of the generic character of the name ‘Parmesan’.

“Since the Federal Republic of Germany has therefore failed to show that the name ‘Parmesan’ has become generic, use of the word ‘Parmesan’ for cheese which does not comply with the specification for the PDO ‘Parmigiano Reggiano’ must be regarded for the purposes of the present proceedings as infringing the protection provided for that PDO under Article 13(1)(b) of Regulation No 2081/92.”

“U.S. foodmaker Kraft Foods Inc. has used the name Parmesan for grated hard cheese since the mid-1940s, according to its Web site. ‘Kraft Grated Parmesan’ was introduced in green and red canisters in 1945. Donna Hrinak, a company spokeswoman in Zurich, Switzerland, said Kraft doesn’t sell Parmesan cheese in Europe.”

The case cite is Commission v. Germany, C-132/05 (European Court of Justice, Feb. 26, 2007).

In November, Crystal Entertainment & Filmworks, Inc., brought suit in the Southern District of Florida against members of the 1980s band Exposé on the ground that it — not performers Jeanette Jurado, Ann Curless Weiss, Gioia Bruno, and Kelly Moneymaker — owns the EXPOSÉ name and common law trademark. The complaint alleged that the band members entered into agreements stating that Crystal’s predecessor owned the mark, which the predecessor assigned to Crystal, as well as a 2006 trademark license agreement with Crystal. The complaint stated claims for false designation of origin, cybersquatting, state unfair competition, breach of contract, and constructive trust.

Unfortunately for Crystal, the complaint failed to plead a basis for federal jurisdiction. On Jan. 23, Judge William Zloch dismissed the complaint without prejudice of his own accord:

“The Court notes that the Federal courts are of limited jurisdiction. The presumption, in fact, is that a Federal court lacks jurisdiction in a particular case until it has been demonstrated that jurisdiction over the subject matter exists. Rule 8(a)(1) requires that complaints contain ‘a short and plain statement of the grounds upon which the court’s jurisdiction depends.’ The basis of the district court’s jurisdiction must be alleged ‘affirmatively and distinctly and cannot ‘be established argumentatively or by mere inference.’ Plaintiffs’ Complaint fails to allege this Court’s subject matter jurisdiction over the above-styled cause. Therefore, the Court lacks federal subject matter jurisdiction over the Complaint. Although the instant Complaint cites various provisions of the Lanham Act, such citations alone are insufficient to establish subject matter jurisdiction over the case.”

The court also noted the complaint failed to establish that diversity of citizenship existed — the alternative basis for subject matter jurisdiction.

The case cite is Crystal Entertainment & Filmworks, Inc. v. Jurado, No. 07-61748 (S.D. Fla. Jan. 23, 2008).

Plaintiffs PlastWood SRL and its subsidiary, PlastWood Corp., compete with defendant Rose Art Industries, Inc., in the sale of magnetic construction toy sets. Rose Art’s product, MAGNETIX, is comprised of small plastic building blocks that are held together by magnetic force. Rose Art’s advertising and product packaging state that “500 designs” can be built by assembling MAGNETIX building blocks in certain described manners. PlastWood alleged in this Western District false advertising case that many of those structures cannot be built and collapse under their own weight. PlastWood also alleged that the phrase, “Ages 3 to 100,” which appears on MAGNETIX packaging, misrepresents that the blocks are safe for children three and older because the blocks actually are dangerous to small children. 

Rose Art moved to dismiss PlastWood’s complaint on the ground that the Child Safety Protection Act preempts PlastWood’s age-labeling claim. It also argued that PlastWood failed to state a Lanham Act claim because the complaint did not identify the MAGNETIX structures that cannot be built.

On Oct. 23, Judge James Robart agreed that the CSPA preempted the age-labeling claim because “Plastwood improperly requests this court to enforce safety labeling that would be incongruent with the safety labeling requirements” established by the Consumer Product Safety Commission.

On PlastWood’s “500 designs” claim, the court applied Rule 8’s “short and plain statement” standard rather than Rule 9’s heightened pleading standard for fraud. The court found PlastWood’s complaint met the lower threshold:

“PlastWood has pleaded sufficient facts to make out a plausible cause of action under the Lanham Act. Rule 8(a) requires a ‘short and plain statement of the claim showing that the pleader is entitled to relief.’ PlastWood’s complaint places Rose Art on notice of the wrong that it is accused of committing. The complaint states that Rose Art has informed consumers through its published advertising and product packaging that a wide variety of Magnetix structures (‘500 designs’) can be built. PlastWood contends that such messages are false or misleading because many of these structures cannot be built and collapse. PlastWood essentially argues that Rose Art has overstated the qualities or capabilities of its product in violation of the Lanham Act. … PlastWood has pleaded sufficient facts to state a claim that is plausible on its face.”

The case cite is PlastWood SRL v. Rose Art Industries, Inc., No. 07-0458, 2007 WL 3129589 (W.D. Wash.).