Seattle Trademark Lawyer

Counterclaim plaintiff Joe Kennedy, owner of counterclaim plaintiff Kennedy Center for Real Estate Education, Inc., created an educational curriculum called the “Accredited Seller Representative” (ASR) program. Counterclaim plaintiffs developed and registered several trademarks in connection with their ASR program.

Counterclaim plaintiffs alleged that counterclaim defendants Seller Agency Council, Inc., and RealtyU, Inc., used counterclaim plaintiffs’ marks under the ASR program but diverted to RealtyU certain revenue the parties had agreed would go to counterclaim plaintiffs.

Counterclaim defendants defended on the ground of acquiescence, among other defenses.

The Central District of California concluded that counterclaim plaintiffs’ conduct after sending a cease-and-desist letter led the counterclaim defendants to believe they had permission to continue using the ASR marks. 

The counterclaim plaintiffs appealed, which on Sept. 3 led the Ninth Circuit to modify the circuit’s tests for laches and acquiescence. 

It found: “Because laches and acquiescence are closely related concepts, we agree with the approach taken by the Eleventh Circuit that modifying our current test for laches is an appropriate way to provide a practical test for acquiescence. In the Eleventh Circuit, the prima facie case for laches required ‘(1) a delay in asserting a right or claim; (2) that the delay was not excusable; and (3) that the delay caused the defendant undue prejudice.’ The prima facie case for laches in our own circuit is essentially identical. ‘The test for laches is two-fold: first, was the plaintiff’s delay in bringing suit unreasonable? Second, was the defendant prejudiced by the delay?’ The first aspect of our test in turn consists of two sub-parts: an assessment of the length of the delay followed by an assessment of the reasonableness of the delay.

“Because we agree with the Eleventh Circuit that acquiescence differs from laches principally in that it requires some form of active consent, we conclude that the Coach House [Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551 (11th Cir.1991)] test largely comports with our own understanding of the prima facie case for acquiescence. Accordingly, we adopt that test. The elements of a prima facie case for acquiescence are as follows: (1) the senior user actively represented that it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice.

Applying this test, the court found the district court did not make factual findings as to the scope of the counterclaim plaintiffs’ active representations or the reasonableness of the counterclaim defendants’  reliance on those representations. Therefore, it vacated the district court’s judgment that the counterclaim plaintiffs had had acquiesced in counterclaim defendants’ use of its marks and remanded for the court’s determination.

The case cite is Seller Agency Council, Inc. v. Kennedy Center for Real Estate Education, Inc., __ F.3d. __, 2010 WL 3448107, No. 08-56791 (9th Cir. Sept. 3, 2010).

Trademark disputes aren’t usually appropriate for being decided on summary judgment.

That’s what the Ninth Circuit reiterated last week in Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc.

In that case, Victoria’s Secret sold or gave away hot pink tank tops with the word “Delicious” printed across the front. The purpose of its efforts was to promote its BEAUTY RUSH beauty products.

Fortune Dynamic sued, alleging that Victoria’s Secret’s use infringed its incontestable registration for DELICIOUS for footwear.

As the Ninth Circuit later summarized, “Victoria’s Secret executives offered two explanations for using the word ‘Delicious’ on the tank top. First, they suggested that it accurately described the taste of the BEAUTY RUSH lip glosses and the smell of the BEAUTY RUSH body care. Second, they thought that the word served as a ‘playful self-descriptor,’ as if the woman wearing the top is saying, ‘I’m delicious.’”

The Central District of California granted summary judgment in Victoria’s Secret’s favor.

Fortune Dynamic appealed to the Ninth Circuit.

The Ninth Circuit reversed and remanded, finding that it was not appropriate for the district court to decide that no likelihood of confusion existed and that the fair use doctrine applied as a matter of law.

“This case is yet another example of the wisdom of the well-established principle that ‘[b]ecause of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena,’” the court said. “We are far from certain that consumers were likely to be confused as to the source of Victoria’s Secret’s pink tank top, but we are confident that the question is close enough that it should be answered as a matter of fact by a jury, not as a matter of law by a court.

“The same is true of Victoria’s Secret’s reliance on the Lanham Act’s fair use defense. Although it is possible that Victoria’s Secret used the term ‘Delicious’ fairly — that is, in its ‘primary, descriptive sense’ — we think that a jury is better positioned to make that determination.”

The case cite is Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Management, Inc., __ F.3d __, 2010 WL 3258703, No. 08-56291 (9th Cir. Aug. 19, 2010).

Photo credit: Borrowed from The Briefcase: Commentary and Analysis of Ohio Law

Plaintiff’s and defendant’s logos

Plaintiff Mirina Corp. is a Seattle-based biotech firm.

Defendant Marina Biotech is a Bothell, Wash.-based biotech firm.

According to plaintiff’s complaint, both companies promote RNA-based therapeutic research and drug development services.

The complaint alleges that on July 22, defendant’s predecessor changed its company’s name to Marina Biotech. It states that plaintiff warned defendant that the name change would create a conflict with Mirina’s name, which plaintiff claims it started to use in August 2008.

The complaint says the dominant part of both names sounds the same and defendant’s use is likely to cause confusion with plaintiff’s use.

The case cite is Mirina Corp. v. Marina Biotech, No. 10-01322 (W.D. Wash.).

This is a laches case.

Derek and Constance Lee Corp. sued Kim Seng Co. for trademark infringement.

The Central District of California entered an injunction against Kim Seng.

Kim Seng appealed to the Ninth Circuit based on laches.

Turns out, Kim Seng waited five years to file suit, which the Ninth Circuit found fell outside the analogous statute of limitations period.

That led the court to decide whether Kim Seng was prejudiced by the delay. However, the court concluded it wasn’t, so it found the district court did not err in deciding that laches did not bar plaintiff’s claim.

“There are two commonly recognized forms of prejudice in the laches context — evidentiary prejudice and expectations-based prejudice. Kim Seng has not cited any losses of witnesses or evidence that would constitute evidentiary prejudice. Kim Seng has also failed to show that it suffered expectations-based prejudice. Kim Seng offered no evidence that it invested money in advertising its Que Huong mark and it offered very little evidence that there was any public association between its company and the Que Huong brand. The mere fact that Kim Seng’s business grew based on the success of the Que Huong brand is insufficient to establish prejudice in the laches context. The district court’s conclusion that laches did not apply was not an abuse of discretion.”

The case cite is Derek and Constance Lee Corp. v. Kim Seng Co., 2010 WL 3069878, No. 08-56440, 08-56513, and 08-56687 (9th Cir. Aug. 5, 2010).

One of AOL Advertising’s (top) and Advertise.com’s design marks

AOL Advertising, Inc., sued Advertise.com, Inc., for trademark infringement. At issue were AOL’s registered design marks for ADVERTISING.COM. Advertise.com defended on the ground that the marks are generic and, therefore, are not protectable as trademarks.

AOL filed in the Eastern District of Virginia, which transferred the case to the Central District of California.

The Central District of California granted AOL’s motion for a preliminary injunction. It enjoined Advertise.com from using “any design mark or logo that is confusingly similar to the stylized forms of AOL’S ADVERTISING.COM marks” or using “the designation and trade name ADVERTISE.COM or any other designation that is confusingly similar to AOL’s ADVERTISING.COM marks.” In doing so, it found that ADVERTISE.COM is descriptive rather than generic.

Advertise.com appealed the portion of the order that enjoined Advertise.com from using “the designation and trade name ADVERTISE.COM or any other designation that is confusingly similar to AOL’s ADVERTISING.COM marks.” For some reason, it did not appeal the remainder of the order.

On Aug. 3, the Ninth Circuit reversed and vacated the subject portion of the injunction.

“This does not appear to be the ‘rare case’ in which the addition of a [top-level domain] to a generic term results in a distinctive mark,” the court found. “Rather, the record before us demonstrates that Advertise.com is likely to rebut the presumption of validity and prevail on its claim that ADVERTISING.COM is generic. How, then, did the district court reach the opposite conclusion? Examining its decision, we conclude that it did so due to an error of law and therefore abused its discretion in granting the injunctive relief challenged here.

“The district court’s analysis of whether ADVERTISING.COM is generic is brief and never explicitly states the standard the court applied. The explanation of its conclusion that ADVERTISING.COM is descriptive, however, convinces us that it did not apply the correct legal standard to the facts before it. The court’s reasoning appears in a single sentence that reads ‘The term ‘advertising’ describes the services that AOL offers, and the ‘.com’ either indicates a commercial entity, use of the internet in association with the mark, or describes the internet-related nature of AOL’s services.

“We conclude that the district curt did not correctly apply the legal standard for determining whether a mark is generic. Even if we credit the district court’s rationales as factually accurate — i.e., if we assume that the addition of ‘.com’ serves the three identified functions — ADVERTISING.COM still conveys only the generic nature of the services offered. That ‘.com,’ when added to a generic term, ‘indicates a commercial entity’ does not suffice to establish that the composite is distinctive, much as AOL would not have created a protectable mark by adopting the designation ‘Advertising Company.’”

The case cite is Advertise.com, Inc. v. AOL Advertising, Inc., __ F.3d __, 2010 WL 3001980, Nos. 10-55069 and 10-55071 (9th Cir. Aug. 3, 2010).