Seattle Trademark Lawyer

The owner of Peso’s Kitchen and Lounge (top) has sued the owner of
The Matador restaurant for trade dress infringement, including the
metal work shown above, allegedly made by the same designer.

Last year, El Diablo, Inc. filed suit for trade dress infringement in King County Superior Court against Mel-Opp & Griff LLC and other defendants alleging confusing similarity between the look-and-feel of the parties’ competing Mexican/Tex-Mex restaurants and bars. El Diablo owns Peso’s Kitchen and Lounge in lower Queen Anne. Mel-Opp & Griff owns The Matador, located in Ballard, West Seattle, Redmond, Tacoma, and Portland, Oregon.

El Diablo claims that its former employees and independent contractors jumped ship and opened The Matador, copying what it considers to be its distinctive trade dress, which it describes in part as follows: “ornamentation, designs, and decorative elements in sconces, lighting, chandeliers, wall surface treatment and colors, ceiling panels and colors, furnishings, Mexican ‘Day of the Dead’ themes and the adoption of a matador graphic design and icon on the menu cover….” 

El Diablo also claims the defendants copied its distinctive recipes and menu.

The defendants deny the allegations.

On March 14, Judge Catherine Shaffer denied defendants’ motion for partial summary judgment to dismiss a claim under Washington’s dilution statute.

Trial is scheduled for July.

The case cite is El Diablo, Inc. v. Mel-Opp & Griff LLC, No. 07-2-1203 SEA (King County Super.).

I was fortunate enough to fill in for my esteemed partner, Bob Cumbow, last night in his trademark law class at Seattle University. The subject was trade dress — one of my favorites. Here’s a copy of my PowerPoint talking points. Why was Bob absent? He’s in the “other” Washington speaking at Howard University School of Law’s Institute of Intellectual Property and Social Justice CLE on “Louis Vuitton, Starbucks, and the Red Hot Chili Peppers: The Trademark Year in Review.” Wish I could be there for that one, but am so glad I could get back to teaching — if only for one night.

Ultimate Creations, Inc., the licensing company owned by former professional wrestler Warrior (his legal name) brought suit in the District of Arizona against video game maker THQ Inc. over video games that use Ultimate’s WARRIOR registered trademark and and trade dress in the wrestler’s costume and image. THQ moved for summary judgment on grounds of fair use and the protectability of Ultimate’s unregistered trade dress. On Jan. 24, Judge Stephen McNamee found in Ultimate’s favor.

The court summarized the facts as follows:

“Warrior claims that his wrestling character was distinctive because he had long, flowing hair, wore arm pads and knee pads with a fringe, displayed on his costume and face a logo roughly in the shape of an upside-down ‘W’ — the logo, originated from ‘Parts Unknown,’ had an exceptionally muscular build, and used ‘signature’ moves in his wrestling performances.

“In 2003, the parties entered into negotiations to license intellectual property associated with Warrior. The draft license agreement included the use of Warrior’s ‘name, voice, facsimile signature, nickname, likeness, signature moves, entrance music, endorsement, right of publicity, and biographical sketch as it may appear in photographs, film, video clips, etc.’ However, the negotiations eventually terminated without entering into a contract.”

In the lawsuit, “Plaintiff alleges that Defendant began to use the likeness, moves, trade dress, marks, and other intellectual property associated with Warrior in its video game as early as October of 2003. Specifically, players may use the [Create-A-Wrestler] feature on the games to create a character that has a similar build, face paint, and logo symbol as Warrior, that uses the entrance and finishing moves found under the label ‘OUW’ that are similar to Warrior’s, that has the call name ‘The Warrior’ or ‘Warrior,’ and is from ‘Parts Unknown.’ Plaintiff contends that this feature causes confusion as to whether Plaintiff sponsored or is associated with the game.”

On THQ’s fair use defense, the court concluded: “Defendant argues that it used the name ‘Warrior’ descriptively and not as a mark, and thus its use was fair. Despite this assertion, the Court finds that a jury could find that neither the mark nor the similar symbol was used in good faith based on the prior, unsuccessful negotiations between the parties. What is clear is that the use of the name Warrior was not necessary to create or market the video games. Also, the combination of signature moves, the face paint, the similar symbol and ‘Warrior’ call name suggests that Defendant intentionally provided the tools for consumers to create a wrestler in the likeness of Warrior without regard to his intellectual property rights. Thus, a jury could conclude that Defendant’s use was an improper attempt to capitalize on the popularity of the Warrior wrestling character. As such, summary judgment on Plaintiff’s claim of infringement of registered trademarks and service marks is not proper.”

As for Ultimate’s trade dress claim, the court found: “Warrior’s trade dress involves the costume, symbol, face paint, and color combinations that make up the overall image of his wrestling character. Through the video games, Defendant has made these elements available to its consumers. The websites where players exchange information regarding how to create the Warrior wrestling character suggest that Warrior has a distinctive trade dress, which supports a finding of secondary meaning in Warrior’s overall appearance, and denotes possible confusion as to whether the video games are affiliated with Warrior himself. The elements of trade dress also appear to be non-functional, and the combination of the elements may be sufficient to create a distinctive trade dress that is capable of protection. Thus, taken as a whole, a reasonable person could find that Defendant has committed a violation of Plaintiff’s unregistered trademarks or trade dress under Section 43(a) by confusing consumers as to Plaintiff’s affiliation, connection, or association with Defendant’s games.”

The case cite is Ultimate Creations, Inc. v. THQ Inc., 2008 WL 215827, No. 05-1134 (D. Ariz. Jan. 24, 2008).

Last July, Bellingham, Wash.-based Homax Products, Inc. filed a declaratory judgment action against Dynacraft Industries, Inc. Both parties manufacture paint removal products that change color to signify when the paint they are applied to is ready to be stripped.

One of Dynacraft’s READY STRIP products

Homax’s complaint stemmed from a cease-and-desist letter it received from Dynacraft in May 2006, which allegedly claimed that:

• Homax’s use of NATURE’S OWN for its paint strippers infringes Dynacraft’s federally-registered mark, BACK TO NATURE;
• Homax’s use of the the phrase “Color Changing Paint Stripper” infringes Dynacraft’s common law trademark rights in COLOR CHANGING PAINT STRIPPER; and
• Homax’s “selection of verbiage” in two of its labels are “close in comparison with the copyrighted verbiage in Dynacraft’s ‘Ready Strip’ label.”

The complaint asked the Western District to determine that Homax “has not infringed Dynacraft’s alleged federal trademark registration for ‘Back to Nature’”; that “Dynacraft has no rights in the term ‘nature’ apart from any rights it has in the mark ‘Back to Nature’”; that “Dynacraft has no trademark rights in the generic and/or merely descriptive phrases ‘color changing’ and ‘paint stripper’”; that Homax has not infringed Dynacraft’s trade dress; and that Dynacraft has no protectable trade dress in the packaging of its products.

In Oct. 2006, Dynacraft answered Homax’s complaint and asserted counterclaims that Homax was indeed infringing its trade dress and trademark rights. (The answer is worth checking out for the color exhibits on pages 20 and 21 illustrating the products’ similar trade dress.)

The parties recently made nice. Today, they filed a Stipulation and Order of Dismissal stating they had settled their differences and agreed that all claims and counterclaims between them should be dismissed with prejudice.

The case cite is Homax Products, Inc. v. Dynacraft Industries, Inc., No. 06-990 (W.D. Wash.).

I’ve probably over-done my coverage of this case, but it’s been a fun one. To close the loop, I’ll just say that on Oct. 26, the Western District declined to award L.L. Bean, Inc., attorney’s fees, which L.L. Bean sought after obtaining dismissal of Mother, LLC’s trade dress infringement claims as a matter of law at the close of trial.

After noting that fees awards are discretionary and the Ninth Circuit has “set the bar fairly high with regard to what constitutes ‘exceptional,’” the court explained its decision as follows:

“The court found this case distinguishable from many, in that the parties had entered into a contractual arrangement regarding the sale and marketing of the plaintiff’s upland hunting vest by defendant. Defendant’s conduct was more than suspect from an equitable perspective, but because Congress was careful not to stifle competition, the plaintiff had a significant burden in establishing a prima facie case of trade dress infringement. The court’s oral opinion sets forth the basis for granting the defendants’ motion at the end of the plaintiff’s case and need not be repeated here. It was not based on allegations which were vexatious and/or made in bad faith. This case was, in fact, one of the few where equity and empathy favored the plaintiff and in the final analysis the law favored the defendant.”

The case cite is Mother, LLC v. L.L. Bean, Inc., No. 06-5540, 2007 WL 3223223 (W.D. Wash.).