Slight blogging slowdown ahead as I travel to Berlin to join thousands of other trademark lawyers from around the world at the 130th annual meeting of the International Trademark Association. What a conference! Please say hello if you see me there.

I will definitely be at the “Meet the Bloggers IV” gathering discussed here. All trademark law bloggers, readers, and friends are welcome. If you want to meet up some other time, you also can reach me on my BlackBerry via the STL “Email me” link at right (or at matkins at grahamdunn.com). I hope to see you there!

Besides a reader’s request for the instructions on dilution, everyone is commended to check out the entire instructions. This case was the full meal deal — it had instructions on trademarks, trade dress, trademark infringement, likelihood of confusion, unfair and deceptive practices, dilution, and damages. This is good stuff.

The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).

In an undated note to District of Oregon Judge Garr M. King, a juror asked: “If this case was found for adidas, would adidas own 2 and 4 stripes?”

The court’s response: “The legal ownership of two and four stripes, generally, is not an issue in this case. The issues for consideration involve only the shoes accused in this case.”

This guidance undoubtedly is correct. But for a litigator it’s always fascinating (and, I’ll admit it, sometimes scary) to see what goes through jurors’ minds. This was important enough a question for a juror to ask — and the response essentially was an instruction that the juror was barking up the wrong tree. I’ve participated in mock trials and seen mock jurors in deliberation latch onto something that neither side argued and that had no basis in the law. Imperfect though our system is, you just hope and ultimately trust that the jury’s collective wisdom will figure out on whose side justice lies.

The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).

After the Settlement: Portions of Blue Nile’s and James Allen’s 
“BUILD YOUR OWN RING” and “Design Your Own” Web pages

On May 8, Western District Judge Thomas Zilly dismissed Blue Nile, Inc.’s lawsuit against competing online jeweler James Allen Diamonds, Inc. and JamesAllen.com LLC based on the parties’ stipulation. The complaint had alleged that defendants’ use of BUILD YOUR OWN RING as a trademark infringed Blue Nile’s prior common law rights in the same mark. Defendants had denied Blue Nile’s allegations and asserted in counterclaims for declaratory judgment that their use of the words did not infringe Blue Nile’s trademark rights and that BUILD YOUR OWN RING was invalid because it did not function as a protectable trademark.

The terms of the settlement are not known to STL, but it appears that defendants have changed their alleged use of “Build Your Own Ring” to “Design Your Own” and “Design Your Own Ring” on their Web site. Plaintiff continues to use BUILD YOUR OWN RING on its Web site.

The case cite is Blue Nile, Inc. v. James Allen Diamonds, Inc., No. 07-1443 (W.D. Wash.) (Zilly, J.).

        

On May 5, hair salon franchisor Fantastic Sams Franchise Corp. filed suit in the Western District against rival hair salon franchisor Regis Corp. and other defendants. Fantastic Sams alleges that Regis convinced the corporation that owned the right to develop and grant third parties FANTASTIC SAMS franchises in the Seattle-Tacoma market to sell its salons to Regis. Fantastic Sams alleges that immediately after closing on its purchase, Regis began operating the salons under its HAIR MASTER brand but failed to remove all of the FANTASTIC SAMS marks from the premises. This, Fantastic Sams alleges, is likely to confuse consumers and amounts to service mark infringement and unfair competition.

Regis has not yet filed an answer.

The case cite is Fantastic Sams Franchise Corp. v. Regis Corp., No. 08-706 (W.D. Wash.).

An attorney representing Adidas said he thought it was the biggest verdict in a trademark infringement case ever. Collective Brands Inc., which operates Payless and Stride Right stores, said the award was “excessive and unjustified” and vowed to have it set aside or overturn.

An excerpt from the jury verdict form showing Payless’ shoes.
“Yes” indicates infringement.

From the jury verdict form:

“Section III.  Monetary Recovery

8) State the amount of actual damages that should be awarded to adidas, if any.

$30,610,179

9) Do you find that Payless acted willfully or in bad faith with regard to any of the claims in Question Nos. 1-7 above for which you answered ‘Yes’?

   X    Yes                No

10) If you answered ‘Yes’ to Question No. 9, state the amount of Payless’s profits that should be awarded to adidas, if any.

$137,003,578

11) Concerning a possible award of punitive damages, do you find that Payless has acted with malice, or in wanton and reckless disregard of the rights of adidas, or if deterrence is called for and Payless’s conduct is particularly aggravated?

   X    Yes                No

12) If you answered ‘Yes’ to Question No. 11, state the amount of punitive damages that should be awarded to adidas, if any.

$137,003,578”

The docket entry describes the result as follows: MINUTES OF SIXTEENTH DAY OF JURY TRIAL - Completed. Jury deliberations conclude. 9 juror lunches ordered from the Lotus Cafe. Jury verdict returned in favor of the Plaintiff. Jury polled and discharged. (See Verdict and Clerk’s List of Witnesses).

Gotta love the court’s “just the facts, ma’am” style.

Wow, what a result!

The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).

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.).

The parties apparently have settled their differences. On May 2, Summit Capital filed a Voluntary Notice of Dismissal with Prejudice seeking dismissal of its claims without fees or costs to any party. The parties appear to have begun discussions soon after the suit was filed since the docket shows no substantive filings other than the complaint. Defendants never filed an answer.

The case cite is Summit Capital Group, LLC v. Summit Partners, LP, No. 07-2082 (W.D. Wash.).

Organizer Jeremy Phillips of IPKat fame has given his fellow trademark bloggers the green light to spread the word. So, mark your calendars: the fourth annual “Meet the Bloggers” reception at the International Trademark Association’s annual meeting will be held from 8:30 to 10:30 p.m. on Monday, May 19, at the top of Potsdamer Platz 1, 10785 Berlin, Germany. Jeremy suggests RSVP’ing to gracious host Olswang. 

To me, this event is the highlight of every INTA meeting. Come schmooze with bloggers, blog readers, and hangers on from around the globe. Here’s a partial list of expected attendees:

• Afro-IP
• Catch Us If You Can !!!
• Class 46
• IMPACT 
• IP Finance
• IPEG 
• IPJUR 
• IPKat
• Lucentinus 
• Naked Law
• Petit Musee des Marques
• Peter Groves
• Rychlicki.net
• Seattle Trademark Lawyer
• SOLO IP
• Spicy IP
• Trademark Blog
• Transblawg
• TTABlog

What a lineup! I can’t wait to take in the night views of Berlin with a cold Helles Lagerbier in hand and some great conversation. This is going to be a blast. I hope to see you there!

”When Applicable
The provisions of the bill apply to all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose.

“The provisions of this bill apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death.

”Determination of Rights
Personality rights shall be deemed to have existed before June 11, 1998, for purposes of determining who is entitled to the rights recognized under this chapter.

”Transferability of Rights
An individual or personality, or any subsequent owner of that individual or personality’s personality rights, may freely transfer their interest through any permissible inter vivos or testamentary instrument, regardless of when the transferring instrument was entered or executed.

“Personality rights do not expire and are owned and enforceable by those designated in a testamentary instrument or by intestate succession upon the death of the person, regardless of whether the law of the deceased person’s domicile, residence, or citizenship, recognizes a similar or identical property right.

”Definitions
A definition for ‘deceased individual’ is added. A deceased individual is any individual, regardless of the individual’s place of domicile, residence, or citizenship at the time of death, who has died since 1988.

“The language used to define ‘deceased personality’ is modified to include the phrase, ‘regardless of the personality’s place of domicile, residence, or citizenship at the time of death or otherwise.’”