Seattle Trademark Lawyer

I’ve had a soft spot for this confusing trademark ever since they did a bit about it on Seinfeld.

From Sunday’s NYT: “It did not call itself the flagship Ray’s Pizza because it never really had a fleet. It was not Original Rays or Famous Ray’s or Original Famous Ray’s or Real Ray’s or Ray’s on Ice or any of the other cloned shops sprinkled like shredded mozzarella all over town. It was simply Ray’s Pizza, and in the great pizza wars of New York City, it was respected as having been the first….”

Oft imitated trademark or no, Ray’s Pizza is closing its doors.

As NYT put it, “the original that was so original it did not have the word ‘original’ in its name — appears doomed to close at the end of the month.”

No idea whether its copied name played a role in its demise (the story says the closure follows a real estate dispute), but Ray’s could have put a stop to its imitating competitors a long time ago.

While being original might mean you don’t have to call yourself original, you certainly don’t have to tolerate competitors that do.

Champions Real Estate Services, Inc., will stop using “Realtor” in connection with its real estate sales offices.

Its stipulating to a permanent injunction cut short a trial in the Western District that would have decided the National Association of Realtors’ trademark infringement lawsuit against Champions and its owners, who ended their relationship with the Association but continued to use the group’s registered trademark, REALTOR.

Champions has offices throughout western Washington.

Defendant Patricia Lord, one of Champions’ owners and its designated broker, admitted in the stipulation that she told the agents she managed that “Any real estate agent may use and be called ‘Realtor’ whether or not you are a member of the Board of Realtors” and “All real estate agents are Realtors.” She also acknowledged that she referred to herself as a “Realtor” on her Twitter account and a Google profile page as recently as this month.

The stipulated injunction — entered on the second day of trial — may have avoided a showdown as to whether REALTOR is generic for real estate agents, a claim Ms. Lord previously made. However, the state of that defense was not clear (to STL, at least) given the court’s recent decision on summary judgment.

On Aug. 22, Western District Judge James Robart granted partial summary judgment in the Association’s favor, finding Champions and Ms. Lord secondarily liable for the trademark infringement and false designations of origin committed by their agents. In doing so, the court concluded that the Association’s REALTOR marks are “strong.”

The court entered judgment in favor of the Association on Sept. 13.

STL post on the Association’s complaint here.

The case cite is National Association of Realtors v. Champions Real Estate Services Inc., No. 10-0049 (W.D. Wash.) (Robart, J.).

McDonald’s vs. McFoxy: Seems worth a trip to the Ukraine just to see

This is the white whale for trademark infringement safarists.

Forget McDonald’s and McDowell’s of “Coming to America” fame. (STL post here.) That’s just a movie.

This is real, and I’m tempted to book my next vacation to the Ukraine just to see it for myself: side-by-side McDonald’s and McFoxy hamburger restaurants.

From Anthony Bourdain’s “No Reservations” travel/eating/drinking show on the Travel Chanel, we’re treated to this super-sized helping of trademark infringement. It’s so audacious, you have to respect it.

As Tony puts it: “So powerful is the magnificence, the unassailable excellence of the McFoxy brand, and so antiquated and promising the trademark laws of Ukraine, that not even the dark forces of the evil floppy-clown-shoed one dare challenge this bold, in-your-face expression of the competitive free market spirit.”

I’m loving it!

Yet another trademark infringement story involving a Seattle microbrewery. (Previous STL posts here, here and here.)

This time, it’s Odin Brewing Company on the hot seat. Portland’s McMenamins Inc. recently told it that “Odin’s Gift Ruby Ale” infringes McMenamins’ federal registration for “Ruby.”

From Odin’s Web site: “We have an important announcement regarding one of our products… Odin’s Gift Ruby Ale. We were contacted this week by the management of McMenamins Corp. (Portland, OR) that they have a U.S. trademark on the term, ‘Ruby Ale.’ Therefore, we are in the unfortunate position of taking the words ‘Ruby Ale,’ off all of our assets from this day forward. This does not affect the availability of the beer itself. We will continue to produce and distribute Odin’s Gift and we thank you in advance for all of your support.”

Odin states it will be holding a contest to re-name the beer.

Washington Beer Blog post on the dispute here.

Not to sound like a broken record, but this thorn in Odin’s side was entirely avoidable. A trademark search — before Odin named its beer — would have uncovered McMenamins’ registration.

Changing brands is tough. It’s way, way better to avoid a problem on the front-end than abruptly having to change one’s brand in mid-stream.

It may seem like it, but this problem is by no means limited to Seattle microbreweries.

One thing many trademark owners forget about, or don’t know about, is they don’t need a federal trademark registration to expand the automatic rights they acquire by using their mark.

They can get a state trademark registration.

State registration can be a good alternative to getting a federal registration. Here’s why:

• It’s cheaper. In Washington, it costs $55 to apply for state registration, compared with $275 or more to apply for federal registration. (These are the government filing fees only.)
• It’s quicker. You can expect your registration to issue in a few weeks instead of nine months or more.
• It’s easier. I think California is the only state that employs examiners to review applications for state trademark registration. By contrast, every application for federal registration is examined by an attorney. Hint: if you can’t get a federal registration, you probably still can get a state registration.
• You may have a better shot at attorney’s fees. In Washington, it’s within the court’s discretion to award attorney’s fees to a state registrant that succeeds in an action to enforce its trademark rights. In federal court, it’s a higher standard: courts only award attorney’s fees in “exceptional” cases. That means it’s rare. I tell clients not to expect such an award even if they’re proved right.
• You may qualify for protection against dilution. If your mark is famous within a state — or perhaps even in a niche market within a state — a state anti-dilution statute may protect against use that blurs or tarnishes a mark even if such use isn’t likely to confuse consumers. Not so on the federal level, where a mark needs to be “widely recognized by the general consuming public of the United States,” meaning a nationally-known household word. That’s a tough standard to meet.
• You can combine state registrations for regional protection. Only do business in Alaska, Washington, and Oregon? For the reasons stated above, you might do better forgoing a federal registration and simply get state registrations in Alaska, Washington, and Oregon.

The moral of the story is that trademark owners should think beyond the PTO when looking to expand their rights. It’s not always the best option. But sometimes state trademark registration provides a better fit.