Seattle Trademark Lawyer

With this injunction, consumers shouldn’t see the branded helmet at right.
Rawlings’ helmet at left (and right with Under Armour’s logo)

Last June, Rawlings Sporting Goods Company, Inc., sued Under Armour, Inc., alleging that Under Armour had put its trademark on Rawlings’ batting helmet in promotional materials without Rawlings’ permission (STL post here).

The parties have settled. Rawlings got a permanent injunction, which Western District Judge Marsha Pechman entered Aug. 8. The permanent injunction follows the preliminary injunction Rawlings obtained last year (STL post here). 

The injunction is simple given the claims in the case. It enjoins Under Armour from putting its logo on Rawlings’ COOLFLO-branded helmet in any advertising and promotional materials.

The parties agreed to bear their own costs and attorney’s fees.

The case cite is Rawlings Sporting Goods Company, Inc. v. Under Armour, Inc., No. 10-933 (W.D. Wash. Aug. 8, 2011).

Starbucks Corp. has filed suit for a declaration of non-trademark infringement against South Dakota Network, LLC.

At issue is the parties’ competing use of SDN.

Starbucks uses the mark in connection with STARBUCKS DIGITAL NETWORK, its free in-store wi-fi connection.

Defendant South Dakota Network owns a number of federal registrations for SDN, including “Broadband communication services, namely, private line services, frame relay services, and asynchronous transfer mode services; Wireless broadband communication services; Providing high speed access to area networks and a global computer information network; Providing dedicated high speed access to a global computer information network; Dedicated long distance telephone services; Dedicated long distance and providing dedicated access to the Internet.”

The complaint alleges that “Starbucks’ use of the acronym SDN is only used as a shorthand reference to its Starbucks Digital Network website and is not used to promote wi-fi services or any services other than the Starbucks Digital Network website that is available exclusively to Starbucks in-store customers.”

The complaint adds that South Dakota Network sent Starbucks a number of cease-and-desist letters. The letters led to settlement discussions, which broke down, allegedly giving Starbucks a reasonable fear that it would be sued for trademark infringement. 

Starbucks filed suit in the District of Nebraska, where it alleges South Dakota Network does business.

South Dakota Network has not yet responded to the complaint.

Associated Press story here.

The case cite is Starbucks Corp. v. South Dakota Network, LLC, No. 11-237 (D. Neb.).

Defendants waited too long to remove plaintiff’s Lanham Act claim to federal court. Therefore, their removal was improper.

That’s what Western District Judge Ricardo Martinez found on July 1 in the trademark infringement lawsuit Homax Products, Inc., brought against USA Homemax, Inc., and two other defendants.

The court also found it didn’t matter that the plaintiff’s settlement agreement with one of the defendants mandated Whatcom County Superior Court (state court), even though the other defendants believed that fact prevented them from removing the case to federal court until that defendant had been severed from the case. 

“Here, the face of Plaintiff’s complaint clearly alleges claims arising under the Lanham Act, a federal cause of action. As such, this Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331. Defendants were required to file a notice of removal within thirty days of receipt of this initial pleading. [28 U.S.C.] § 1446(b). Here, Defendants were served on April 17, 2010. They were served with the amended complaint in September, 2010. Defendants did not meet the 30-day deadline. Their failure to do so was a complete bar to removal.

“Defendants contend that ‘because of [their] settlement agreement, federal jurisdiction did not exist over the claims against Defendant Homax, Inc. and, accordingly Defendants were unable to remove’ until the claims against HI had been severed. However, a ‘forum selection clause does not deprive a federal court of subject matter jurisdiction.’ Although there was perhaps a likelihood of remand depending on the court’s interpretation of the forum selection clause at issue, a federal district court had subject matter jurisdiction over the action as of the date it was filed by virtue of the Lanham Act claim presented on the face of the complaint. Had Defendants timely removed, the court could have exercised its jurisdiction to interpret the contract and determine whether the forum selection clause was enforceable. Accordingly, the action was removable as of April 17, 2010. Defendants did not meet the 30-day deadline.”

Based on that finding, the Western District granted defendants’ motion to remand the case to Whatcom County Superior Court.

The case cite is Homax Products, Inc. v. USA Homemax, Inc., No. 11-0534 (W.D. Wash. July 1, 2011).

Likelihood of hilarity: McDonald’s vs. McDowell’s

I had the good fortune of catching “Coming to America” last night on cable.

It’d been at least 20 years since I’d last seen it.

I now realize it’s the perfect trademark infringement comedy for Independence Day.

Check out “McDowell’s” owner Cleo McDowell’s (John Amos) explanation to Prince Akeem (Eddie Murphy) — working on the restaurant’s cleanup crew to get close to Cleo’s daughter and fulfill his dream of marrying an average American woman — why McDowell’s has had problems with McDonald’s:

“Look, me and the McDonald’s people, we have sort of a misunderstanding. See, they’re McDonald’s. I’m McDowell’s. They got the Golden Arches. Mine is the Golden Arcs. See, they got the Big Mac. I got the Big Mick. They both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions. But they use a sesame seed bun. My buns have no seeds.” (YouTube clip here.)

Classic stuff. Funny watching as a college freshman; hilarious watching as a trademark lawyer.

Happy Fourth!

Ads for declaratory judgment plaintiff Brooks’ PUREPROJECT (top)
and defendant Adidas’ ADIPURE athletic shoes

It’s PUREPROJECT vs. ADIPURE.

Brooks Sports, Inc. vs. Adidas AG.

On June 3, Brooks filed suit seeking a declaratory judgment that its new PUREPROJECT shoe brand does not infringe Adidas’ ADIPURE shoe brand.

The Western District complaint alleges that athletic shoe designers have used “Pure” as part of a trademark for years and such use remains common today.

Brooks also claims that consumers associate the “Adi” formative and three-stripe design with Adidas, not the formative “Pure.”

“Defendants simply do not have any valid trademark rights in the term “pure” alone,” the complaint states.

Brooks alleges it filed suit in response to Adidas’ letters threatening to file suit itself.

Adidas has not yet answered Brooks’ complaint.

The case cite is Brooks Sports, Inc. v. Adidas AG, No. 11-0937 (W.D Wash.)