Seattle Trademark Lawyer

General Dentistry for Kids, LLC, sued Kool Smiles, P.C. in Arizona superior court for trademark infringement and unfair competition under state law. Kool Smiles removed to federal court. The District of Arizona denied General Dentistry’s motion to remand, and ultimately granted Kool Smiles’ motion for summary judgment.

General Dentistry appealed to the Ninth Circuit, arguing that the district court lacked jurisdiction because Kool Smiles’ notice of removal failed to establish the $75,000 amount-in-controversy requirement.

Kool Smiles argued that it later provided a third-party affidavit stating that the cost of complying with General Dentistry’s requested injunction relief would exceed $135,000. In doing so, it relied on Gaus v. Miles, 980 F.2d 564 (9th Cir. 1992), which provided that a defendant must set forth “in the removal petition itself, underlying facts supporting its assertion that the amount in controversy exceeds” the jurisdictional amount.

Trouble is, the Ninth Circuit found that Gaus had been distinguished by later authority holding that a district court may consider later-provided evidence as amending a defendant’s notice of removal. The Ninth Circuit found the District of Arizona properly applied that later authority and upheld the district court’s denial of General Dentistry’s motion to remand.

The case cite is General Dentistry for Kids, LLC v. Kool Smiles, P.C., 2010 WL 1986187, No. 09-16017 (9th Cir. May 18, 2010).

The Children’s Pink Plaid and Poodle Apron
sold at (at least until recently) at Sur La Table

On May 21, Seattle-based kitchen store Sur La Table, Inc., filed suit in the Western District against Burberry Limited (U.S.) and Burberry Limited (U.K.). The suit seeks a declaration that the “Children’s Pink Plaid and Poodle Apron” available at Sur La Table (depicted above) does not infringe Burberry’s registered design marks (including the one depicted left).

The suit strikes at Burberry’s familiar check design. The complaint alleges that Burberry’s design is not inherently distinctive; it has not acquired secondary meaning; and it is generic. It also alleges that the pattern as used on the subject apron is merely decorative.

“The generic lattice pattern is functional; it is a decorative geometric pattern present on may products, from plaid fabric to waffle-cut french fries,” the complaint says.

The complaint states the suit is in response to demands that Burberry made to Sur La Table in an April 15 letter.

Though the complaint states that Sur La Table sells the subject apron, it appears to have been removed from the company’s Web site.

Burberry has not yet responded to the complaint.

The case cite is Sur La Table, Inc. v. Burberry Limited (U.S.), No. 10-00850 (W.D. Wash.).

Salon Fifth Avenue’s (left) and Saks Fifth Avenue’s logos

I actually heard about this while I was getting my hair cut.

Saks Fifth Avenue reportedly is unhappy with an Olympia salon’s use of the name “Fifth Avenue Salon,” including the salon’s script design.

The salon started out on Fifth Avenue. It’s since moved, but reportedly has used the name for 35 years.

The salon says it’s not rolling over, even though it received a letter the salon interpreted as “change your name — or else.”

The salon points out that there are no Saks Fifth Avenue stores in Washington.

Story here via KOMO News.

Wonder if Saks is making similar demands of Florida’s Salon Fifth Avenue, Georgia’s Salon Fifth Avenue, Kentucky’s Fifth Avenue Salon, or Utah’s Salon and Spa Fifth Avenue.

Photo credit: KOMO News

In Adidas America, Inc. v. Calmese, the District of Oregon denied the pro se defendant’s motion for reconsideration. In fact, it’s getting a little tired of his motions.

The introduction to the court’s order says it all:

“For the reasons that follow, the Court DENIES Defendant’s Second Motion for Leave to File a Third Motion for Reconsideration and further ORDERS Defendant not to make, file, or seek leave to file any additional motions with respect to any of the rulings, opinions, or orders addressed in this Order or related to the Court’s adoption of Magistrate Judge Stewart’s Amended Findings and Recommendation in this matter and ORDERS Defendant not to file any motion to reconsider this Opinion and Order.”

I guess the third time’s not a charm.

The court denied Adidas’ motion for sanctions but cautioned defendant Michael Calmese that failure to abide by its order could result in the court’s striking his pleadings, finding him in default, and allowing Adidas to pursue the relief it seeks without his having any additional opportunity to defend himself in the case.

The case cite is Adidas America, Inc. v. Calmese, 2010 WL 1641161, No. 08-91 (D. Or. April 20, 2010).

 Plaintiff Zobmondo’s WOULD YOU RATHER …? trademark

By the time of suit, both plaintiff and defendant had sold millions of dollars worth of competing books and board games under similar WOULD YOU RATHER? trademarks.

In 2006, plaintiff Zobmondo Entertainment, LLC, sued Falls Media, LLC, in the Central District of California for trade dress infringement. Thereafter, Falls Media sued Zobmondo in the Southern District of New York for infringement of its registered trademark. Zobmondo counterclaimed for cancellation of Falls Media’s registration. The cases were then consolidated in the Central District of California.

On cross-motions for summary judgment, the court found Falls Media’s mark was merely descriptive and that no rational juror would conclude that it had established secondary meaning. Therefore, it granted Zobmondo’s motion on the ground that Falls Media’s mark was not protectable.

Falls Media appealed.

The Ninth Circuit found the district court’s decision was wrong under the circuit’s “imagination test.”

“We cannot look the entire mark up in a dictionary; there is no literal meaning of the ‘WOULD YOU RATHER … ?’ phrase, given that the words precede an ellipse; one may infer that there is a question, but only imagination can tell us that the question will serve up a bizarre or humorous choice. On the one hand, consumers who already understand the phrase ‘WOULD YOU RATHER … ?’ to refer specifically to a game of questions involving bizarre or humorous choices might not consider the mark very suggestive as the name of a board game, but to consumers who do not share such an understanding, ‘WOULD YOU RATHER … ?’ is simply the first three words of an open-ended question. For those consumers, the mark ‘WOULD YOU RATHER … ?’ may not ‘describe’ anything, except that a question is asked, and may indeed require imagination and multistage reasoning to understand the mark’s relationship to the game to which it is affixed. Given the record before us, which lacks comprehensive consumer surveys, we cannot say with confidence precisely what consumers will understand the phrase ‘WOULD YOU RATHER … ?’ to mean, nor are we confident that our own understanding of the phrase is an adequate substitute.”

The court also found that Falls Media’s federal registration accorded it a “strong presumption” that its mark is inherently distinctive.

Therefore, the court remanded the case for trial.

Zobmondo Entertainment, LLC v. Falls Media, LLC, __ F.3d. __, 2010 WL 1644256, No. 08-56831 (9th Cir. April 26, 2010).