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.

DS Holdings sought to levy upon 190 “.com” domain names that Mr. Zuccarini had registered. To this end, it registered Office Depot’s judgment in the Northern District of California, where Verisign, Inc., the registry for “.com” and “.net” top-level domain names, is located. After some procedural jockeying, it moved for the appointment of a receiver under California law to obtain and sell the domain names and use the proceeds to satisfy the judgment.

The Northern District granted the motion. Mr. Zuccarini appealed, arguing the district court lacked personal jurisdiction to enter the order.

On Feb. 26, the Ninth Circuit affirmed, finding that for purposes of establishing quasi in rem jurisdiction, domain names are located both where the registry and the relevant registrar are located. It took its cue from the ACPA, which it deemed to be persuasive authority.

The court found: “Under the ACPA, a trademark owner in a civil cybersquatting action can proceed in personam against the cybersquatter. If there is no in personam jurisdiction in any judicial district of the United States, the owner may proceed in rem against the allegedly infringing domain name. The ACPA provides that in rem jurisdiction over these domain names shall be ‘in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located….’ The ACPA also provides for the legal situs of the domain name once a lawsuit has been filed….”

Given the ACPA’s persuasive authority and the practicalities involved in bringing suit to execute judgments against owners of domain names, the court found “under California law that domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction. Although the question is not directly before us, we add that we see no reason why for that purpose domain names are not also located where the relevant registrar is located.”

This led the court to affirm the district court’s order appointing the receiver.

The case cite is Office Depot, Inc. v. Zuccarini, __ F.3d __, 2010 WL 669263, No. 07-16788 (9th Cir. Feb. 26, 2010).

Plaintiffs alleged that defendants made false representations about the People to People Student Ambassador Program, including that defendants misrepresented to plaintiffs that they had selected K.S. to be a student ambassador in Australia during the summer of 2006.

In the litigation, defendants produced a contract that defined the rights between the defendants pursuant to a temporary agreement between counsel pending a final agreement or order from the court.

Thereafter, plaintiffs sought leave to publicly file the contract in connection with a dispositive motion. Defendants sought to require plaintiffs to file the contract under seal.

This may be of interest to trademark practitioners because the contract in part governed one defendant’s use of trademarks owned by another defendant. This, the defendants argued, constituted a trade secret and, therefore, should not be publicly disclosed.

The court disagreed. Adopting the magistrate judge’s recommendation, the Eastern District of Washington found that the defendant already had disclosed the contracts’ subject matter in an annual report. Since the report was public, the contracts’ treatment of the trademarks was not a trade secret.

“Again, at p. 5 of the 2008 Ambassadors Annual Report,” the court found, “the Defendants clearly disclose to the public that Ambassador has registered or applied for a variety of service and trademarks. The Annual Report states, in pertinent part, under the heading of Service and Trademarks as follows: ‘In addition, we have the right, subject to certain exceptions, to use People to People’s name, service mark and logo for use in our marketing. We believe that the strength of our service and trademarks is valuable to our business and intend to continue to protect and promote our marks as appropriate. We believe that our business is not overly dependent upon any one trademark or service mark.’

“Thus, the Defendants clearly have made public the information that they have a relationship for Ambassador to use the trademark and logo of PTPI and that Ambassador is not overly dependent on any one of the trademarks. The consideration paid to use same, if any, is not disclosed in either the Annual Report or the Agreements themselves.”

Makes sense that publicly-disclosed facts cannot be protected as a trade secret.

For that reason, I question how one’s trademark registrations or applications could ever be protectable as a trade secret. One’s licensing agreements and marketing strategies are one thing, but the ownership of trademark applications and registrations are of public record. 

The case cite is K.S. ex rel. Isserlis v. Ambassador Programs, Inc.  2010 WL 605274, No. 08-243 (E.D. Wash. Feb. 18, 2010).

Nevada’s DCAEV, Inc., has sued Bellevue’s Intelius, Inc., in the District of Nevada for trademark infringement.

DCAEV owns www.Date-Check.com, a Web site that serves as a “venue and directory for its users to locate and screen various adult-oriented companion and escort services.”

Intelius sells online background checks.

According to DCAEV’s Feb. 19 complaint, both parties use DATE CHECK in connection with their respective services.

DCAEV has a registered trademark for DATE CHECK for “Promoting the goods and services of others by providing hypertext links to the web sites of others; Providing a web site featuring product ratings of the consumer services of others in the field of escorts.”

DCAEV claims it began using its trademark in 2002. It says Intelius began using its mark in 2009, when the company released a DATE CHECK application for the iPhone.

Intelius has not yet answered DCAEV’s complaint.

TechFlash story here.

The Cascade Manufacturing Sales, Inc. v. Providnet Co. Trust trademark dispute between competing sellers of worm composting products has been tried to conclusion.

As folks may recall, this case involved Cascade’s complaint that Providnet’s use of GUSANITO WORM FACTORY infringed Cascade’s WORM FACTORY trademark.

Western District Judge Ronald Leighton previously found that WORM FACTORY was not generic; that Cascade was likely to prevail on the merits and ordered a preliminary injunction; and that defendants were in contempt of that order (STL posts here and here.)

On Feb. 18, following a bench trial, Judge Leighton made the preliminary injunction permanent. He did not award damages. He has asked Cascade to submit a motion for attorney’s fees.

The preliminary — now permanent — injunction enjoins Providnet from using phrases that are confusingly similar to WORM FACTORY, including FACTORY OF WORMS but not WORM WRANGLER.

The case cite is Cascade Manufacturing Sales, Inc. v. Providnet Co. Trust, No. 08-5433 (W.D. Wash. Feb. 18, 2010).