In reaching this conclusion, the court found:

• “Sand Hill” in the Silicon Valley is primarily geographically descriptive;
• As a descriptive trademark, secondary meaning is required to give plaintiff trademark rights;
• Even if Section 2(f) applied to an unregistered trademark, it didn’t entitle plaintiff to a presumption of secondary meaning because defendant’s existence meant that plaintiff’s use was not “substantially exclusive” for more than five years; and
• Plaintiff’s advertising and marketing efforts alone did not establish secondary meaning.

Therefore, the court found plaintiff did not have any trademark rights to enforce against defendant.

For good measure, the court also found no likelihood of confusion — independent grounds to grant defendant’s motion for summary judgment.

“All but one of the Sleekcraft factors strongly favor Defendant, and none favor Plaintiff,” the court said. “Although Plaintiff and Defendant share the same mark, they offer completely distinct services to distinct consumers in separate markets. Plaintiff’s assertion that the parties overlap in the area of real estate services paints with too broad a brush. The record unequivocally establishes that Plaintiff and Defendant’s respective businesses share little, if anything, in common. The lack of overlap is underscored by the paucity of evidence of actual confusion, which consists of nothing more than a few misplaced calls and a misdelivered package over the course of the last ten years. Viewing the record in a light most favorable to Plaintiff, the Court finds that no reasonable jury could find that the parties’ common use of the ‘Sand Hill Mark’ is sufficient to create a likelihood of confusion.”

The case cite is Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, __ F.Supp.2d __, 2010 WL 308728, No. 08-5016 (N.D. Calif. Jan. 26, 2010).

Clothier Pacific Sunwear of California, Inc., owns the registered KIRRA family of trademarks.

Competing clothier Kira Plastinina Style, Ltd., owns the KIRA PLASTININA trademark.

In 2008, Pacific Sunwear sued Kira Plastinina for trademark infringement.

Last year, the Central District of California found that Pacific Sunwear was likely to succeed on the merits of its claim and granted a preliminary injunction enjoining Kira Plastinina from using KIRA or KIRA PLASTININA as a trademark or trade name. However, the court clarified that “Defendants may use the phrase ‘Kira Plastinina’ (but not the single word ‘Kira’) in written displays, advertisements, or Internet pages to identify the actual designer of Defendants’ goods, as opposed to identification of the company, business, stores, goods, and services offered by Defendants.”

Kira Plastinina appealed, arguing that “Kira Plastinina” is the name of one of its designers and that the scope of the injunction was overly broad.

On Feb. 1, the Ninth Circuit affirmed.

It found “the district court correctly identified the legal standard for likelihood of confusion of a trademark, its findings of fact were not clearly erroneous, and the district court did not clearly err in finding a likelihood of confusion between the two trademarks. We therefore conclude that the district court did not abuse its discretion in holding that Pac Sun was likely to succeed on the merits of its trademark infringement claim.

“With respect to the scope of the district court’s preliminary injunction, the court did not abuse its discretion in restricting certain uses of ‘Kira Plastinina.’ Despite these restrictions, the injunction properly reflects a consideration of the ‘reluctance to preclude an individual’s business use of his name.’ Furthermore, enjoining use of ‘Kira Plastinina’ in media advertisements, including audio and video, was not an injunction against nontrademark use, and the district court did not abuse its discretion in enjoining such advertising. Finally, the preliminary injunction is sufficiently clear to protect Pac Sun’s interests and to provide KP Style with adequate notice of its provisions.”

The case cite is Pacific Sunwear of California, Inc. v. Kira Plastinina Style, Ltd., 2010 WL 358764, No. 09-55699 (9th Cir. Feb. 1, 2010).

Mostly.

Plaintiffs now seek to collect their judgment against defendants, including Craig Dieffenbach.

Plaintiffs recently complained that Mr. Dieffenbach was not forthcoming during supplemental proceedings. Indeed, they moved for an order of contempt, arguing that defendants’ “evasive and incomplete responses” to plaintiffs’ discovery efforts have “frustrated” their ability to determine if defendants have concealed or fraudulently conveyed assets that could be used to satisfy the judgment.

Today, Western District Judge Thomas Zilly denied the motion without prejudice.

The court found: “Plaintiffs make no showing that Mr. Dieffenbach failed to comply with the Court’s Order dated October 28, 2009, which simply required responses within twenty days, or with any other order. Moreover, plaintiffs offer no evidence to support their assertion that Mr. Dieffenbach’s answers were untruthful. Although the tenor of the deposition was acrimonious, Mr. Dieffenbach’s animosity alone does not establish that he was being less than candid when he indicated that he ‘own[s] nothing,’ has ‘no assets,’ and ‘owe[s] money to absolutely everybody.’ In their motion for contempt, plaintiffs do not request monetary sanctions, but rather seek an order from the Court requiring Mr. Dieffenbach inter alia to sign stipulations to release bank records and to locate and produce documents under the control of other people, namely current and/or former attorneys, bookkeepers, accountants, and employees. Plaintiffs fail to explain, however, why they cannot obtain the documents they seek by serving these entities or individuals with appropriate subpoenas or discovery requests.”

The case cite is Experience Hendrix, LLC v. Electric Hendrix, LLC, No. 07-338 (W.D. Wash. Feb. 3, 2010).

Renton police alleged that married couple Jesus Perez-Vargas and Leticia Vargas-Garcia and their 18-year-old son were selling hundreds of CDs and DVDs that appeared to be pirated.

The PI said the defendants, who sold the goods out of a convenience store, weren’t trying too hard to pass off their product as genuine.

“One, a copy of the Liam Neeson thriller ‘Taken,’ carried an MA 15+ rating not used in the United States,” the article said. “A copy of a film identified only as ‘Rambo’ in court documents was housed in a hard plastic CD case.”

The defendants reportedly told the police they bought the CDs and DVDs from a traveling salesman who sold the goods out of his van. They reportedly paid $2 or $3 per disk and sold them for $4 to $7 each.

The defendants were charged with violating the Washington State prohibition against the “failure to disclose origin,” a Class B felony.

I wasn’t familiar with that statute, so I looked it up. It appears to be RCW 19.25.040(1).

Under that statute, “A person is guilty of failure to disclose the origin of a recording when, for commercial advantage or private financial gain, the person knowingly advertises, or offers for sale, resale, or rent, or sells or resells, or rents, leases, or lends, or possesses for any of these purposes, any recording which does not contain the true name and address of the manufacturer in a prominent place on the cover, jacket, or label of the recording.”

The statute defines “recording” as a “tangible medium on which sounds, images, or both are recorded or otherwise stored, including an original phonograph record, disc, tape, audio or video cassette, wire, film, or other medium now existing or developed later on which sounds, images, or both are or can be recorded or otherwise stored or a copy or reproduction that duplicates in whole or in part the original.”

Last year, E! Entertainment Television, Inc., sued Entertainment One GP Limited, d/b/a E1 Entertainment, and four related entities in the Central District of California for trademark infringement.

E! Entertainment operates television networks and owns a number of “E!” design marks.

The Entertainment One defendants distribute third-party CDs and DVDs; operate a record label; and own and distribute niche and direct-to-video movies. They conduct business in connection with an “E1” design mark, though only two of the five defendants have ever used the mark in the United States.

E! Entertainment moved for a preliminary injunction.

The court denied the motion, finding:

• E! Entertainment did not show that the parties’ marks are similar;
• The parties do not compete with respect to the same goods or services;
• E! Entertainment did not present any evidence showing that its customers — primarily casual television viewers — exercise a low degree of care, whereas defendants demonstrated their customers exercise a high degree of care;
• There is widespread third-party use of “E” marks in the entertainment field;
• Consumers are not likely to be confused by defendants’ “E1” marks; and
• E! Entertainment did not present any evidence of actual confusion.

E! Entertainment appealed these findings.

On Jan 26, the Ninth Circuit affirmed, concluding the district court did not err in finding there was no likelihood of confusion.

The court added: “We have held that a party seeking relief under 15 U.S.C. § 1125(c) must demonstrate that the marks are ‘identical, or nearly identical,’ so that a ‘significant segment of the target group of customers sees the two marks as essentially the same.’ We conclude that the district court did not err in finding that the parties’ respective marks are not nearly identical under this standard.” 

The case cite is E! Entertainment Television, Inc. v. Entertainment One GP Limited, 2010 WL 331505, No. 09-55937 (9th Cir. Jan. 26, 2010).

“[P]laintiff is unlikely to overcome the conclusion that defendant’s use of the mark is protected under the First Amendment….”

That’s the conclusion the Eastern District of California reached Jan. 20 in denying plaintiff Protectmarriage.com - Yes on 8’s motion for a temporary restraining order against defendant Courage Campaign’s use of an allegedly infringing logo.

Protectmarriage.com supports traditional marriage and helped place California’s Proposition 8 on the ballot. Its logo depicts a man and a woman with two kids.

Courage Campaign supports same-sex couples’ right to marry. Its logo is derived from Protectmarriage.com’s logo. It depicts two women with two kids.

Protectmarriage filed suit against Courage Campaign and sought a temporary restraining order prohibiting Courage Campaign from using its logo. Courage Campaign opposed the motion on the ground its logo is protected parody.

The court found found Courage Campaign’s logo is either protected by the First Amendment or is not likely to cause confusion. Either way, the court found Protectmarriage.com is unlikely to succeed on the merits of its infringement claim.

“In this case, the logo itself is artistic,” the court said. “Moreover, the broader website, while perhaps not artistic, is undeniably expressive of a political idea, and both political and artistic expression are protected by the First Amendment. Defendant’s use of the mark has relevance to the expressive message, namely, support for homosexual marriages, and specifically, opposition to recent California efforts to limit the right to such marriages. This support is expressed by the modification of the ‘father’ figure in the original mark to depict a second ‘mother.’ Further, the mark does not explicitly mislead as to the source of the work. Any potential for confusion or misdirection is obviated by the images and text that uniformly accompany defendant’s use of the mark, namely, photos of homosexual couples together with text explicitly endorsing homosexual marriage. Plaintiff is unlikely to succeed in showing that a visitor to the [defendant’s] prop8trialtracker website is likely to be confused as to whether plaintiff is affiliated with the site.”

The case cite is Protectmarriage.com - Yes on 8 v. Courage Campaign, __ F.Supp. __, 2010 WL 325571, No. 10-132 (E.D.Cal. Jan. 20, 2010).

Last April, Bellevue-based Paccar Inc. sued former licensee Malibu International Limited for infringing its trade dress by selling replica scaled models of Paccar’s KENWORTH and PETERBILT trucks without permission.

Its complaint alleged: “Defendant is currently selling or in the past has sold, without license, scaled model trucks that are knock offs of scaled model KENWORTH and PETERBILT trucks within the United States. The knock offs are substantially identical to previous model trucks sold by Defendant pursuant to license. Defendant or its manufacturer has altered these scaled model trucks so that they are substantially identical to the prior licensed scaled model trucks sold, except that the PETERBILT and KENWORTH trademarks no longer appear on them. Otherwise, the unique and distinctive design characteristics of each of the brand’s respective trucks has remained substantially the same, making them recognizable to the relevant public.”

Malibu didn’t appear or answer, so on Dec. 23, the Western District deemed it to be in default.

Today, Malibu moved for entry of a default judgment and permanent injunction. If granted, the injunction would enjoin Malibu from infringing Paccar’s trademark rights and compel it to deliver for impoundment and destruction all of its infringing goods.

The case cite is Paccar Inc. v. Malibu International Ltd., No. 09-477 (W.D. Wash.).

The complaint alleged Dr. Cory, who tested Design Resources’ NEXTLEATHER product at the Leather Research Laboratory, a Leather Industries affiliate, advised Design Resources that the product could be called “bonded leather,” and then proceeded to disparage the labeling, marketing and selling of the product as “bonded leather.”

Defendants moved to dismiss or transfer venue pursuant to Rule 12(b)(3).

On Jan. 21, Western District Judge Ricardo Martinez granted the motion in part and transferred the case to the Southern District of Ohio. 

The court found: “The entire focus of these allegations is Dr. Cory, his testing of DRI’s product, and his subsequent statements — all of which occurred in Ohio, where Dr. Cory resides and where the LRL testing laboratory is located. DRI asserts that it ‘came to Dr. Nicholas Cory and his and LIA’s laboratory, Leather Research Laboratory (‘LRL’), for th testing…’ Dr. Cory has established by his Declaration that he has never visited Washington State, nor does he own property or maintain a bank account in this State. The only evidence offered by DRI in opposition to the Rule 12(b)(3) motion are invoices sent by LRI to DRI for the work performed by Dr. Cory at LRL in Ohio. These invoices are wholly insufficient to establish that a ‘substantial part’ of the events giving rise to this action occurred in Washington.”

The court found that Design Resources could have brought the action in the Southern District of Ohio, where Dr. Cory resides and where the testing took place. The court, therefore, decided to transfer the action there rather than dismiss it.

The case cite is Design Resources, Inc. v. Leather Industries of America, Inc., No. 09-00611 (W.D. Wash. Jan. 21, 2010).

“Spending seventy-eight hours filing and prosecuting the contempt motion was reasonable in light of the distance between their attorney’s office and the courthouse, Barto’s unauthorized filings, and Barto’s opposition to the contempt motion,” the court found. “The hourly rate RRLH’s attorneys charged was also reasonable given their expertise, qualifications, and the rates charged by comparable attorneys.”

In March 2008, the district court found that Mr. Barto had acted in bad faith in violating a previous court order.

The order was a stipulated judgment enjoining Mr. Barto from using “Leisure World” as part of his company name and withdrawing his application to register LEISURE WORLD with the Patent and Trademark Office.

RRLH, Inc. v. Barto, 2010 WL 178724, No. 08-56071 (9th Cir. Jan. 11, 2010).

Today’s post from Dave Donoghue is a reprint of his article, “Protecting Your Brand on Twitter & Stopping Twitter Squatters.” It’s worth checking out.

I love his hook: “[I]f you are an executive or business owner that is reading this and thinking that you do not need to worry about Twitter, at least skim the article and then do a search for your company name on Twitter. You will likely change your mind.”

Dave offers brand owners a good plan of attack: (1) claim your trademark or trade name on Twitter yourself so others can’t misappropriate it; (2) investigate anyone misappropriating your mark or name; (3) get your mark or name back by complaining via Twitter to the misappropriator; and (4) if that doesn’t work, complain to Twitter and, if needed, file suit.

Dave concludes with good advice: “Businesses need to monitor Twitter just like they do other trademark use and media channels. And you must enforce your marks on Twitter just like you do in every other channel of commerce.”

Twitter’s (relatively) new and continues to grow. Brand owners should not be intimidated by it and definitely should not ignore it.