That’s what the Ninth Circuit found the Central District of California did in the ConsumerInfo.com, Inc. v. Money Management International, Inc., trademark infringement case.

Money Management argued that it had prior common law use of its MY SCOREK trademark so it did not infringe ConsumerInfo.com’s rights.

The district court, however, found there were essentially no sales under the mark to support that claim. Therefore, it granted summary judgment to ConsumerInfo.com.

The Ninth Circuit disagreed. On March 11, it found there was at least minimal evidence in the record of Money Management’s use of the mark in commerce. It concluded that the district court’s not crediting such evidence on summary judgment was error.

“The district court did not credit evidence of actual sales by MMI under its mark. MMI argues that, it presented a spreadsheet which — according to the testimony of Charles Stanley — contained a record of numerous sales under MMI’s mark. The district court found this record to be ‘unreliable’ because the spreadsheet itself did not reference MMI’s mark; thus the district court did not take the spreadsheet into account. In making this determination the district court improperly weighed evidence, discounting Stanley’s testimony. Viewing the evidence in the light most favorable to MMI, this spreadsheet coupled with Stanley’s testimony, tends to show sales under the mark.”

The case cite is ConsumerInfo.com, Inc. v. Money Management Int’l, Inc., 2010 WL 882868, Nos. 08-56705 and 09-55228 (9th Cir. March 11, 2010).

On March 10, the Western District entered a show cause order requiring plaintiff to explain why its case should not be dismissed.

The problem?

“The complaint is signed ‘May Greenberg, Manager,’” the court found. “The complaint is not signed on behalf of Plaintiff, a business entity. It appears Plaintiff is attempting to proceed in this matter pro se.”

That’s not allowed by court rules.

“Although an individual may represent himself or herself pro se, see 28 U.S.C. § 1654, the rules are clear that a business entity is not permitted to proceed pro se unless an exception applies.”

The case cite is Network and IT Management Ltd. v. Bachoco, S.A. de C.V., No. 10-5158 (W.D. Wash.).

He offers a fine treatment of the pressing right of publicity cases of the day: Lindsay Lohan’s claim against E-Trade for using the name “Lindsay” in a TV ad featuring a baby “milkaholic,” and Army Sgt. Jeffrey Sarver’s claim against the makers of “The Hurt Locker” ostensibly for making an unauthorized depiction of his life.

Neither probably has merit, Mr. Cumbow says.

“The consensus seems to be that the case will be won or lost at the threshold, where Ms. Lohan has to demonstrate that the ad’s use of the name ‘Lindsay’ is likely to invoke her identity. Her claim that Lindsay is a commonly-recognized single-name celebrity-identifier along the lines of Cher, Madonna, and Oprah appears unsupported by evidence that she has billed herself by first name only; nor is Lindsay as unusual or distinctive a name as those others.”

Sgt. Sarver’s claim is even more of a stretch.

“In the Sarver case,” Mr. Cumbow says, “even construing the facts to the greatest possible benefit of the plaintiff, there still seems to be no theory of law under which the plaintiff is entitled to recovery. If publicly known facts about a real person are used in creating a fictional one, the real person has no proprietary interest in those facts, let alone in the fiction that results. Contrary to popular belief, the law does not preclude people from making a film, or writing a book, about (or based on) a real person without obtaining permission.”

I just don’t see either Ms. Lohan or Sgt. Sarver finding the legal hooks they need. The baby in the ad isn’t Ms. Lohan. Nor does it use Ms. Lohan’s “name, characterization, and personality,” as she claims — she hasn’t reached one-name status quite yet. “The Hurt Locker” doesn’t use Sgt. Sarver’s likeness; that isn’t him on the screen. Even if the film is based on his life, where’s the authority that prohibits a filmmaker from doing so?

On March 11, plaintiff Masters Software, Inc., filed suit in the Western District against Discovery Communications, Inc., The Learning Channel, Inc., and reality TV star Bartolo “Buddy” Valastro for trademark infringement.

Plaintiff owns a trademark registration for CAKEBOSS in Class 9 in connection with “computer software for bakery business management, namely financial recipe, order, time, and contract management tools,” in Class 41 in connection with “providing online instruction in the field of baking cakes via a global computer network,” and in Class 43 in connection with “providing information in the field of culinary arts about baking for baking enthusiasts via a global computer network.” Plaintiff also claims it licenses its mark to a third party in connection with bakeware and cake decorating supplies.

Defendants own or participate in TLC’s popular ”Cake Boss” television show featuring the travails of a creative New Jersey cake bakery.

Plaintiff claims jurisdiction in the Western District is proper because TLC is based in Washington.

Defendants have not yet answered plaintiff’s complaint.

The case cite is Masters Software, Inc. v. Discovery Communications, Inc., No. 10-405 (W.D. Wash.).

From the PTO’s Web site: 

“We Want Your Suggestions! The United States Patent and Trademark Office is embarking on an exciting new Information Technology initiative for the Trademark Organization. We’re calling it Trademarks Next Generation. The overall objective of the Trademarks Next Generation effort is often described in terms of the target technology (such a virtualization and cloud computing) but, since the new technology necessitates that the systems be redesigned, it is also a prime opportunity for us to install new functionality and capabilities for you, our users.

“Therefore, we are reaching out to you and asking for your suggestions and ideas. We look forward to suggestions relating to the specific functions that currently exist, the need for a capability that does not yet exist, and/or necessary changes to an overall process. Those suggestions submitted before April 15, 2010 will be most helpful since we can consider them as we design the new system, however, as always, whenever you have a suggestion you should feel free to submit it. We have set up an email box to receive your input: TMideas@uspto.gov.”

Glad the PTO is looking to improve the flow of information.

But speaking of initiatives, what ever became of the PTO’s “Consistency Initiative”?

Either the defendants were completely clueless or they just didn’t care. My money’s on the latter.

On Sept. 19, 2009, Montana Thomas and Credit.com, Inc., allegedly registered mastercard.cm. 

On March 10, 2010, Mastercard International, Inc., filed suit against Mr. Thomas and Credit.com in the Western District.

The case is situated here because defendants allegedly registered the domain name through eNom Inc., which is headquartered in Bellevue.

Mastercard alleges half a dozen causes of action, from cybersquatting to dilution.

Defendants have not yet answered Mastercard’s complaint.

Anyone taking bets on whether defendants will default?

The case cite is Mastercard International, Inc. v. Thomas, No. 10-361 (W.D. Wash. 2010).

During Full Speed Ahead’s depositions of Campagnolo’s officers, the parties agreed that the transcripts would be designated “Attorney’s Eyes Only” under the protective order the court had entered. At Full Speed Ahead’s deposition two weeks later, Full Speed Ahead asked that the parties re-designate the transcripts as non-confidential.

When agreement wasn’t forthcoming, Full Speed Ahead filed a motion asking the court to remove the “Attorney’s Eyes Only” designations. Campagnolo responded by asking Full Speed Ahead to withdraw its motion because the parties had not conferred. Full Speed Ahead countered by arguing the parties had conferred at Full Speed Ahead’s deposition and that with the parties’ upcoming deadline for filing dispositive motions, it “cannot await [Campagnolo’s] pleasure for a response.”

On March 5, the Western District found the parties’ discussion did not satisfy the “meet and confer” prerequisite, so it denied the motion.

“The Court will not address the underlying dispute before the parties have met in good faith to resolve it,” the court found. “The requirement that the parties negotiate in good faith, like Rule 37’s meet and confer requirement, is not a mere formality. It promotes the speedy and inexpensive resolution of disputes and avoids wasting judicial resources. Here, for example, the parties appear to disagree about the designation of less than a dozen pages of deposition testimony. If the parties sat down to discuss these dozen pages, it is likely the situation could be resolved fairly quickly. Instead, after thirty pages of motion practice, not counting the numerous pages of declarations and exhibits, the underlying dispute is no closer to being resolved than it was nearly six weeks ago.”

The case cite is Campagnolo, S.R.L. v. Full Speed Ahead, Inc., No. 08-1372 (W.D. Wash. Mar. 5, 2010).

In 2008, Ferndale’s Loops LLC filed suit in the Western District against Seattle’s Phoenix Trading, Inc., d/b/a Amercare Products, Inc., for trademark and trade dress infringement, among other things.

Both parties sell toothbrushes to prisons. Loops alleges that Amercare has sold toothbrushes under the LOOPS FLEXBRUSH trademark, which is identical to Loops’ registered trademark. It also alleges that Amercare’s toothbrushes are identical to Loops’ registered product design. (Loops’ “non-shank” toothbrush design can bend in half or twist into a spiral without breaking, so it can’t be used as a weapon. Seems a bit functional to me, but I digress.)

Loops moved for an order of contempt, alleging that Amercare has withheld or deleted relevant documents that Loops had requested in discovery. In particular, Loops requested documents related to the manufacture of Amercare’s toothbrushes in China and their importation into the States. Early in the litigation, Judge Ricardo Martinez granted a motion to compel, but Amercare’s documents were not forthcoming. In depositions, it became clear that Amercare had not produced all of the requested documents.

Today, the court found: “Defendants had four or five invoices from Kai Yuen / Jiangsu Light within their possession or control during the pendency of this litigation. They only produced two of them. Defendants were also in control of purchase orders for flexible handle toothbrushes sent from Amercare to H&L Industrial, and invoices from H&L to Amercare, which were not produced. Additionally, Defendants were in control of invoices detailing freight charges for transportation of flexible toothbrushes from factories in China to Chinese ports as well as wire transfers from Amercare to H&L Industrial, and these have not been produced.”

The court added: “Defendants are culpable in either withholding these documents or negligently destroying or losing them after having a duty to preserve them. The Court further finds that these materials were relevant to prove the extent of Defendants’ damages. Finally, the Court finds that some number of e-mails between Amercare and H&L existed during the pendency of this lawsuit which were not produced and have since been negligently deleted. These e-mails were likely relevant to damages and liability. Defendants’ contention that no documents have been destroyed and no more responsible documents exist is directly contradicted by Ms. Hemming’s deposition testimony, which indicates that relevant documents do or did exist.”

To correct these discovery abuses, the court concluded it would give the jury an adverse inference instruction that the evidence Amercare made unavailable was unfavorable to Amercare.

That could really hurt Amercare at trial — as well it should. A party’s not playing fair in discovery threatens to undermine our system for deciding who’s right and who’s wrong based on the merits. No one should be disadvantaged by playing by the rules.

The case cite is Loops LLC v. Phoenix Trading, Inc., No. 08-1064 (W.D. Wash. March 3, 2010). 

Yes, it’s a trademark dispute involving coffee.

But no, it’s not being fought out in Seattle. This one’s in southern California.

Last year, Planet Coffee Roasters, Inc., sued Hung Dam, d/b/a Planet Coffee, for trademark infringement.

Planet Coffee Roasters sells coffee beans to wholesale customers under the mark PLANET COFFEE ROASTERS. Mr. Dam’s store sells beans and coffee by the cup to retail customers under the mark PLANET COFFEE. 

As the Los Angeles IP Trademark Law Blog predicted, Planet Coffee Roasters has had a hard time of it.

On Feb. 18, the Central District of California denied Planet Coffee Roasters’ motion for preliminary injunction against Mr. Dam, finding the plaintiff was not likely to succeed on the merits.

Favoring Planet Coffee Roasters, the court found the marks and goods/services are similar, and consumers are not likely to exercise much care in purchasing the parties’ relatively inexpensive products. 

Favoring Mr. Dam, however, the court found PLANET COFFEE ROASTERS is fairly weak and the parties use different marketing channels.

The court also wasn’t impressed with Planet Coffee Roasters’ evidence of irreparable harm.

“Plaintiff has failed to show that it has suffered any injury at all, let alone injury that is ‘great,’” the court wrote. “Plaintiff simply asserts that allowing Defendant to ‘use[ ] a confusingly identical name and sell[ ] inferior coffee products will damage, if not destroy entirely, Planet Coffee’s reputation and goodwill.’ However, it offers no evidentiary support at all for this claim. Even assuming that Plaintiff’s business has suffered some monetary loss, Plaintiff has made no showing that money damages will be inadequate to compensate for its losses.”

Nor was the court impressed with Planet Coffee Roasters’ proof that the balance of hardships tips sharply in its favor: “[A]side from unsubstantiated claims made in declarations submitted by two of its employees, Plaintiff has offered no factual evidence in support of its claim that it has been harmed by Defendant’s use of the mark ‘Planet Coffee.’”

The case cite is Planet Coffee Roasters, Inc. v. Hung Dam, 2010 WL 625343, No. 09-00571 (C.D.Cal. Feb. 18, 2010).

“Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page,” he said.

Kudos to the WSJ for exploring this rich area, which unfortunately is the first experience some have with trademark law.

Its story, “From ABBA to ZZ Top, All the Good Band Names Are Taken,” is laden with tales of trademark woe.

For example: “In 1992, a newly formed band from Scotland called Captain America was endorsed and invited on tour by Nirvana front man Kurt Cobain, who was at the peak of his fame. After a bidding war, Captain America was signed by Atlantic Records, just as Marvel, publisher of the Captain America comic book, sent the band a cease-and-desist [letter]. With its first U.S. record already in the pipeline, the group rechristened itself Eugenius, a reference to leader Eugene Kelly.”

“‘Overnight their career deflated,’” a talent scout recalled.

This underscores the need to clear a name before investing in it — though that’s easier said than done.

The article says Rovi Corp.’s giant database of musician names is adding 6,521 new names per month.