Seattle Trademark Lawyer

Ce De Candies’ (left) and Nestle’s “Smarties” candies

Ce De Candies, Inc., sells its popular SMARTIES tart sugar candy throughout the United States. It began such use in 1950 and obtained a federal registration for SMARTIES for candy in 1965.

Presumably because Ce De has priority, Nestle, S.A., sells its popular SMARTIES coated chocolate candy outside the United States. 

However, some companies import the Swiss company’s SMARTIES candy into the United States, something that bothers Ce De, which is headquartered in New Jersey.

Amazon.com is one such importer, which sells both products.

On June 17, Seattle’s National Public Radio affiliate, KUOW, reported that Ce De has demanded that Amazon stop importing Nestle’s product. The story says that Amazon initially complied with the demand but has resumed sales.

UW School of Law’s Signe Naeve likens the dispute to Tiffany’s recent suit against eBay over the sale of counterfeit product on its site.

“Tiffany was very upset and wanted eBay to be responsible for taking those [counterfeit products] down and for monitoring those,” she said, “and the court ultimately said it wasn’t eBay’s responsibility to sort out the legitimate versus the illegitimate uses, but it really put the burden back on Tiffany and less on eBay as the host of the site.”

This, she thought, may bode well for Amazon.

It remains to be seen what Ce De will do if Amazon continues its sales.

Seattle’s Georgetown Brewery will change the name of one of its beers to resolve a trademark dispute.

That’s what the Seattle Beer News blog reported yesterday.

Georgetown will rename its “9LB Porter” as “Georgetown Porter.”

Georgetown makes the beer for the 9 LB Hammer bar in Seattle’s Georgetown neighborhood.

The impetus behind the change reportedly was Magic Hat Brewing Co., which sells a beer it calls “#9.”

Georgetown’s letter to its customers explaining its perspective of the dispute is reprinted in SBN’s post.

Magic Hat apparently offered to license the mark to Georgetown, which Georgetown could not accept.

“[W]e decided that we could not in good conscience grant someone else ownership of the name 9LB Porter,” Georgetown’s spokesperson said. “[We] felt that the brand does not rightfully belong to us to sign over to some other brewery. We really feel like it belongs to the 9LB Hammer and don’t want some other brewery owning it. In all fairness to Magic Hat …, they did make an effort to compromise. Unfortunately, we just couldn’t agree on the name-ownership issue.”

Oldcastle Precast, Inc., brought suit in the Western District against Granite Precasting & Concrete, Inc.

Oldcastle designs and manufactures precast concrete products, including vaults that typically house electrical or metering equipment. It registered a number of copyrights for drawings of its products. Oldcastle alleged that in 2006 it discovered that Granite was copying its drawings and using part numbers that corresponded to those used in Oldcastle’s catalog that serve no functional purpose.

Oldcastle alleged that in 2009 it bid on a project and discovered that Granite was still copying its drawings and using its part numbers. Oldcastle alleged that Granite has been awarded contracts by using some of Oldcastle’s designs and drawings, and that at least one of Oldcastle’s customers believed that Granite’s products were the same as Oldcastle’s and that Granite was an authorized reseller of Oldcastle’s goods.

Oldcastle asserted claims for copyright infringement as well as violation of the Lanham Act and Consumer Protection Act. Granite moved to dismiss the Lanham Act and CPA claims based on copyright preemption.

On June 1, Judge Marsha Pechman granted the motion as to Oldcastle’s CPA claim but denied it as to its Lanham Act claim.

“The CPA claim boils down to an allegation that Defendant marketed Plaintiff’s designs and drawing as its own, which is purportedly a violation of the CPA,” the court found. “The claim implicates all of Plaintiff’s alleged rights under the Copyright Act and lacks an extra element.”

By contrast, the court found Oldcastle’s Lanham Act claim “contains sufficiently distinct elements and allegations to avoid preemption by the Copyright Act. First, Plaintiff seeks the cost of corrective advertisement, which is a form of relief that is unavailable under the Copyright Act. Second, the nature of the claims is distinct. Plaintiff alleges Defendant intentionally used the same part numbering system with regard to precast items to confuse potential customers into thinking they were Plaintiff’s products. This is distinct from a claim of reproducing copyrighted material. Plaintiff states further that one of its customers was indeed confused as to whether Defendant was an authorized reseller of Plaintiff’s products. The facts supporting the two claims are thus distinguishable.”

The case cite is Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc., 2010 WL 2217910, No. 10-322 (W.D. Wash. June 1, 2010) (Pechman, J.).

Having obtained a preliminary injunction against HendrixLicensing.com, Ltd., and its affiliates last July, Jimi Hendrix’s licensing company, Experience Hendrix, L.L.C., and its affiliates moved for summary judgment. (Previous STL post here.)

On May 19, the plaintiffs got their wish.

Western District Judge Thomas Zilly found the defendant sellers of art depicting Mr. Hendrix infringed Experience Hendrix’s registered trademarks.

Defendants argued that they stopped using the complained-of domain names and the Hendrix headshot logo but argued that their use of plaintiffs’ trademarks in their domain names and business names was protected fair use and was not likely to cause confusion.

After discussing the Ninth Circuit’s influential nominative fair use case of Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002), the Western District found defendants’ use did not make the grade. 

“The Court finds that Defendants’ use of Plaintiffs’ trademarked HENDRIX in Defendants’ URL addresses and business names does not describe Plaintiffs’ product by rather Defendants’ own product — the marketing and licensing of Jimi Hendrix related goods. Thus, the Court concludes that the nominative fair use test does not apply to Defendants’ use of Plaintiffs’ marks in Defendants’ URL addresses and business names.”

In a footnote, the court added: “Even if the Court were to conclude that the nominative fair use test should be applied to Defendants’ use of HENDRIX in Defendants’ URL addresses and business names, the Defendants have not satisfied the nominative fair use test. As to the first part of the test, Defendants’ use of Plaintiffs’ trademarked HENDRIX is not necessary to describe Defendants’ products. Like Welles’ use of ‘PMOY ‘81’ in the wallpaper of her website [in Welles], Defendants’ use of Plaintiffs’ HENDRIX mark in Defendants’ URL addresses and business names does not appear to describe Jimi Hendrix. Defendants’ use does not accompany any image of or created by Jimi Hendrix. Thus, the Defendants’ use of Plaintiffs’ HENDRIX mark in Defendants’ URL addresses and business names fails the first prong of the nominative fair use test.”

The court went on to find that defendants’ use of plaintiffs’ marks in defendants’ URL addresses and business names, their use of defendants’ headshot logo, and their use of their signature mark infringed plaintiffs’ registered trademarks.

The case cite is Experience Hendrix, L.L.C. v. HendrixLicensing.com, Ltd., 2010 WL 2104239, No. 09-285 (W.D. Wash. May 19, 2010) (Zilly, J.).

Plaintiff SafeWorks, LLC, sells and rents lifting and hoisting equipment for use in construction under its SPIDER registered trademarks. Defendant Teupen America, LLC, rents and sells track-mounted aerial lift machinery in connection with the term “spiderlift” and applied to register the mark THE SPIDERLIFT COMPANY.

In August 2008, Teupen and affiliated companies sued SafeWorks in the District of Massachusetts seeking a declaration of noninfringement on the ground that “spiderlift” was generic. SafeWorks then sued Teupen and its affiliated companies in the Western District for trademark infringement. The cases were consolidated in the Western District.

The case was tried to Western District Thomas Zilly in May. Following are highlights from the court’s Findings of Fact and Conclusions of Law, entered today: 

• “By obtaining an approved federal trademark application, defendants have made clearly inconsistent statements to the USPTO and to this Court: on the one hand, that the Mark SPIDERLIFT is distinctive and entitled to federal registration with the USPTO; and on the other hand, that the Mark SPIDERLIFT is generic and therefore not protectable or registrable under any circumstances.”
• SPIDERLIFT is not generic.
• SafeWorks has demonstrated that it has a valid and senior SPIDER® Mark. Application of the Sleekcraft factors demonstrates that there is a likelihood of confusion between SafeWorks’ SPIDER® Marks and defendants’ use of the term “spiderlift” based on the similarity of the terms, the strength of the SPIDER® Marks, the defendants’ intent to infringe, the overlap of customers and channels of trade, and incidents of actual confusion.”
• The defendants are ordered within 20 days to take “all necessary steps to cease using the domain name www.spiderlifts.com”; to destroy all marketing materials that use the infringing Mark “spiderlift”; and to abandon its federal trademark application for THE SPIDERLIFT COMPANY.
• SafeWorks is awarded defendants’ net profits during the period of infringement, from August 2004 through December 31, 2009, in the amount of $56,882.
• The case was an “exceptional case” justifying an award of attorney’s fees.
• “Defendants’ deliberate and willful acts include, without limitation, deliberate indifference to: (1) the constructive notice conferred by the long time registration of the SPIDER® Marks, (2) the repeated warnings sent by SafeWorks, and (3) defendants’ agreement to stop infringing, which agreement they then breached.”
• The Court ordered SafeWorks to move for an assessment of reasonable attorney’s fees within 20 days.

The case cite is SafeWorks, LLC v. Teupen America, LLC, No. 08-01219 (W.D. Wash.) (Zilly, J.).