Seattle Trademark Lawyer

The Basel Action Network works to prevent the export of toxic electronic waste from the U.S. and other developed countries to developing countries that are not able to recycle electronic components safely.

On June 7, it sued the International Association of Electronics Recyclers and its successor, the Institute of Scrap Recycling Industries, Inc., to cancel the registration for CERTIFIED ELECTRONICS RECYCLER as a certification mark on the ground that it is generic.

Basel owns a registration for the E-STEWARDS certification mark.

Basel alleges it is injured by not being able to use the terms “electronics recycler,” “certified recycler,” and “certified electronics recycler” in connection with its certification program. It also alleges that ISRI’s continued use and registration of CERTIFIED ELECTRONICS RECYCLER suggests that ISRI has a monopoly on certifying those who recycle electronic equipment.

The defendants have not yet answered the complaint.

The case cite is Basel Action Network v. International Association of Electronics Recyclers, No. 10-931 (W.D. Wash.).

Plaintiff’s (left) and defendant’s use of “Texas Toast” with croutons

Not a Western District case, but an interesting one nonetheless.

T. Marzetti Co. sued Roskam Baking Company in the Southern District of Ohio, alleging that Roskam’s use of “Texas Toast” in connection with its croutons infringed Marzetti’s TEXAS TOAST trademark for croutons. Roskam defended in large part on the ground that “Texas Toast” is generic for large-size croutons. (Everything’s big in Texas.)

On May 27, after a bench trial, the court sided with Roskam. Here’s what it had to say on the issue of genericness:

“In this case ‘Texas Toast’ is generic. Texas Toast is commonly used as the name of a kind of good. Texas Toast has come to mean a bread product that is larger than normal, including sliced bread, frozen garlic bread, or croutons. Companies have been making and selling Texas Toast for many years, since 1995 when Marzetti started offering frozen, thickly sliced garlic bread in the freezer of grocery stores.

“Indeed, Marzetti acknowledges that other companies selling Texas Toast frozen garlic bread have not been using Texas Toast as a brand. Further, Marzetti relies upon the common understanding that Texas Toast means bigger than normal on the back of its crouton packages, referring to ‘bigger bites’ and ‘Texas-sized bites’ and representing that Texas Toast croutons are a large cut. In the manufacturing and marketing Texas Toast styled croutons, both Marzetti and Roskam rely upon the primary association of the public that Texas Toast conveys something about size.

“Marzetti has not met the burden to prove that the mark is not generic. Although Marzetti submitted trademark applications to the PTO to register Texas Toast and The Original Texas Toast, Marzetti’s own use of these terms convey an expectation of a larger than normal crouton. That use is consistent with the generic meaning of the words. Further, while Marzetti argues that Texas Toast and The Original Texas Toast are brands, the company’s own internal documents make reference to New York croutons. Marzetti’s annual report references Texas Toast croutons as one of the company’s products. Marzetti’s own consumer awareness study shows that none of the respondents identified, independent of any assistance, New York Brand The Original Texas Toast croutons as a product.”

The case cite is T. Marzetti Co. v. Roskam Baking Co., No. 09-584 (S.D. Ohio. May 27, 2010) (Marbley, M.J.).

We don’t get many state-court trade name decisions in Washington, and when we do, they don’t get as much attention as they should. Here’s one of them — from last year, unfortunately — that remained under the radar until last week when Westlaw picked it up. (Cheers for Westlaw’s doing so. Jeers for not doing so until now.)

In December 2006, plaintiff Custom Auto Interiors, Inc., d/b/a Custom RV Interiors, Inc., sued defendant Custom RV Interiors, Inc. and its owners in Clark County Superior Court for trade name infringement. Plaintiff alleged that defendants attempted to buy plaintiff’s business and, when they did not succeed, infringed plaintiff’s trade name by registering “Custom R.V. Interiors, Inc.,” “Custom R.V.” and “R.V. Interiors” with the Washington Department of Licensing, and by starting a competing business with the name “Dave and LJ’s Custom RV Interiors, Inc.” (As a side note, the plaintiff corporation was owned by father David Ast, and the defendant corporation is owned by sons David and Larry J. Ast.)

In January 2007, Clark County Superior Court granted plaintiff’s motion for preliminary injunction enjoining the defendants from using “Custom RV Interiors, Inc.” as their trade name. Defendants appealed, arguing that “custom RV interiors” is generic for a business that sells custom RV interiors and, therefore, is not protectable as a trade name.

In May 2008, the Court of Appeals (Division II) agreed. “Here, ‘custom RV interiors’ is a generic trade name and, even though Custom Auto has been using the trade name ‘custom RV interiors’ for over 15 years, and has likely established some consumer recognition, it is not entitled to legal protection. But even if we found that ‘custom RV interiors’ is slightly descriptive, no evidence supports Custom Auto’s argument that it has a secondary meaning entitling it to trade name protection.”

On that issue, the court found “although Custom Auto has used the name ‘custom RV interiors’ for over 15 years, has heavily advertised using that name and David and LJ may have intended to copy the name, Custom Auto has failed to provide sufficient evidence that a ‘substantial segment’ of relevant purchasers, suppliers, or agencies associate the term ‘custom RV interiors’ with Custom Auto’s business. While Custom Auto alleges confusion by ‘a number’ of suppliers and ‘several’ customers, it has provided only two specific examples: a supplier sent it an email intended for Custom RV, and a security company contacted it about what the security company believed to be a relocation. This is insufficient to establish confusion or secondary meaning.”

The case cite is Custom Auto Interiors, Inc. v. Custom RV Interiors, Inc., No. 35869-7-II, 2008 WL 6693460 (May 20, 2008) (unpublished), pet. denied, No. 81976-9 (Jan. 6, 2009).

I wouldn’t call it a safari, but I did have the good fortune to spend the weekend in the great city of Vancouver, BC. While there, I came across this tasty example of a generic trademark: CUPCAKES brand cupcakes. I later learned the shop’s name actually is CUPCAKES BY HEATHER & LORI. However, the notion of CUPCAKES-branded cupcakes was about as close as I came to trademark law this weekend so it’ll have to suffice for today’s post.

When adopting a new trademark, owners usually run from generic terms. Since generic terms aren’t protectable, the owner of BOWL-brand bowling alleys, for example, won’t make much headway attempting to protect its “brand” against use by competing bowling alleys. The same reasoning compels the owners of truly famous brands to do what they can to prevent their marks from falling victim to “genericide” — the point when their proprietary marks become common words and open for all to use. The owners of XEROX, TIVO, and GOOGLE are fighting this fight; the owners of escalator, nylon, and yo-yo gave up the ghost years ago.

Given all this, I found it amusing to come across a new company called “Generic Medical Services.” I suppose if you’re a contrarian, you embrace what others avoid.

Interestingly, this company isn’t alone. A little looking revealed the “Generic Theatre Company” at George Washington University in Washington, D.C. (slogan: “We may be Generic, but we’re never bland!”); the Generic Theater in Norfolk, Virginia; the Generic Manufacturing Corp., and the Generic Carpet Warehouse to name a few.

The PTO found VERY GENERIC PRODUCTIONS as a whole to be inherently distinctive, though it found “PRODUCTIONS” to be descriptive and, therefore, required a disclaimer. In this context, “GENERIC” isn’t generic in the trademark sense at all; it’s probably suggestive or arbitrary. Presumably for the same reason, the PTO granted Bothell, Wash.-based Generic Software, Inc., federal registrations for GENERIC SOFTWARE and GENERIC SOFTWARE and Design, though the registrations were later cancelled — presumably because of abandonment.

Sort of strange that the functional equivalent of ACME or BRAND-X can be protectable as a brand. Though I’m not a branding expert, I’d still caution against being too cute in selecting a new trademark. The fanciful EXXON and arbitrary APPLE seem infinitely stronger than anti-trademark brands that proclaim NO BRAND or I DON’T COME FROM ANY PARTICULAR SOURCE.