Seattle Trademark Lawyer

Defendant George Collett wrongly used T-Mobile’s trademarks in selling T-Mobile SIM cards and airtime without its permission.

Western District Judge Ronald Leighton came to that conclusion April 23 when he granted summary judgment to T-Mobile on its Lanham Act claims and permanently enjoined Mr. Collett from using its trademarks or selling any of its branded products.

The injunction isn’t surprising, given the court’s description of Mr. Collett’s activity:

“Defendant falsely advertised and promoted through interstate commerce that he was an authorized T–Mobile dealer selling genuine T–Mobile products and services. Mr. Collett testified that he sold T–Mobile Phones and SIM cards on eBay and Craigslist, purchased T–Mobile SIM cards, pin numbers and activation codes, posted a sign in his store saying ‘unlimited T–Mobile service $50 a month’ and advertised that he was a T–Mobile dealer. Defendant also improperly advertised his store as a T–Mobile store with an unlimited T–Mobile service plan for $45 per month without a credit check. These representations were false, as the Court finds that George Collett’s store and the T–Mobile products and service plans he offered were not sanctioned by T–Mobile in any way.”

The court also awarded T-Mobile $349,481.64 in damages and found the case was sufficiently “exceptional” that it justified an award of attorney’s fees — in part because Mr. Collett “refused to cooperate in discovery, repeatedly violated Court Orders and continued to violate” the court’s preliminary injunction.

Easy come, easy go.

On April 4, LifeWise Assurance Co. filed a trademark infringement lawsuit in Seattle claiming that rival Regence Life and Health Insurance Co.’s adoption of LIFEMAP infringes LifeWise’s LIFEWISE trademarks. (STL post here.)

The suit came three days after Regence Life allegedly changed its name and house mark.

Nineteen days after filing, LifeWise voluntarily dismissed its complaint without prejudice. LifeWise could do so as a matter of right because Regence Life had not yet answered.

Boringly good? I don’t know, but its lawsuit was boringly short.

Fox Business had a good idea. Last week it published an article focusing on trademark and copyright issues that small business owners should consider.

I contributed a few quotes discussing the advantages — but no strict need for — obtaining a federal registration for a small business’ brand. The fact is, trademark rights are automatic in the States. But for companies that often sell across state lines — particularly on the Internet — registering a trademark with the U.S. Patent and Trademark Office expands those rights throughout the United States.

Having said that, I’d again like to plug the benefits of state trademark registration for small businesses that are fairly local in nature. If you’re a restaurant in Seattle and don’t care if a restaurant in Miami has the same name, a Washington State registration may be all you want. And getting one is a lot quicker and cheaper than applying for a federal registration.

As for copyright protection, it’s a no-brainer for a small business to protect its core product offerings if they’re “fixed in a tangible medium” (e.g., software if the company develops smart-phone apps). But it also makes sense for a small business to consider registering its Web site content if it does a lot of business on the Web. Registering such content (including original text, photos, and other content, as well as the underlying HTML code) before an infringer copies your work gives you the ability to elect statutory damages (rather than the sometimes onerous chore of proving actual monetary loss suffered) and seek attorney’s fees. That’s a good advantage, which helps with enforcement efforts against copycats.

Screen shot from the U.S. Patent and Trademark Office’s Web site

The PTO has some excellent resources for learning about trademark law. Videos, even. They’re all free and are collected here.

My favorite tool is the Trademark Electronic Search System (TESS) database. I use it constantly. It’s accessible here.

Click the “Basic Word Mark Search (New User)” hyperlink, click the “Live” radio button, type the desired trademark into the search box, and click the “Submit Query” button. The results will give you hyperlinks to all pending trademark applications and registrations in the PTO’s system. The hyperlinked pages provide basic information about each trademark — the owner, the associated goods and services, the application date, etc. And best of all, you can drill down further from that page by clicking the blue “TDR” button, which provides links to the various documents in the application file — from application to registration certificate. It’s an invaluable tool that I use every day.

The database has its limitations. For example, it doesn’t provide information about a party’s use of the trademark, and you must include confusingly similar trademarks in your search for the results to be meaningful. But it’s a heck of a resource that shouldn’t be limited to trademark attorneys. Anyone can use it, and they should.

Time will tell whether LifeWise’s trademark infringement lawsuit will be
“boringly good.” (Screen shot from LifeWise’s Web site)

Health insurer LifeWise has sued competing health insurer Regence Life for trademark infringement.

LifeWise Assurance Co. and affiliates claim Regence Life and Health Insurance Co.’s adoption of LIFEMAP infringes their LIFEWISE registered trademarks.

Both health insurers do business in Washington and Oregon.

LifeWise filed suit after Regence Life allegedly changed its name to “LifeMap Assurance Company” and its house brand name to LIFEMAP. The change allegedly occurred on April 1.

“The new corporate and brand names represent an obvious and intentional copy of the ‘LifeWise Assurance Company®’ and ‘LifeWise®’ servicemarks, and are confusingly similar to the LifeWise® branded products and services offered by Plaintiffs,” the complaint alleges.

LifeWise filed suit on April 4. Regence Life has not yet filed its answer.

The case cite is LifeWise Assurance Co. v. Regence Life and Health Insurance Co., No. 12-00568 (W.D. Wash.).