Seattle Trademark Lawyer

In Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC — a trademark case involving companies with the same name — the Northern District of California found that northern California is big enough for both parties.

In reaching this conclusion, the court found:

• “Sand Hill” in the Silicon Valley is primarily geographically descriptive;
• As a descriptive trademark, secondary meaning is required to give plaintiff trademark rights;
• Even if Section 2(f) applied to an unregistered trademark, it didn’t entitle plaintiff to a presumption of secondary meaning because defendant’s existence meant that plaintiff’s use was not “substantially exclusive” for more than five years; and
• Plaintiff’s advertising and marketing efforts alone did not establish secondary meaning.

Therefore, the court found plaintiff did not have any trademark rights to enforce against defendant.

For good measure, the court also found no likelihood of confusion — independent grounds to grant defendant’s motion for summary judgment.

“All but one of the Sleekcraft factors strongly favor Defendant, and none favor Plaintiff,” the court said. “Although Plaintiff and Defendant share the same mark, they offer completely distinct services to distinct consumers in separate markets. Plaintiff’s assertion that the parties overlap in the area of real estate services paints with too broad a brush. The record unequivocally establishes that Plaintiff and Defendant’s respective businesses share little, if anything, in common. The lack of overlap is underscored by the paucity of evidence of actual confusion, which consists of nothing more than a few misplaced calls and a misdelivered package over the course of the last ten years. Viewing the record in a light most favorable to Plaintiff, the Court finds that no reasonable jury could find that the parties’ common use of the ‘Sand Hill Mark’ is sufficient to create a likelihood of confusion.”

The case cite is Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, __ F.Supp.2d __, 2010 WL 308728, No. 08-5016 (N.D. Calif. Jan. 26, 2010).

Ninth Circuit affirms injunction against Kira Plastinina
in light of plaintiff’s KIRRA registered trademarks

Clothier Pacific Sunwear of California, Inc., owns the registered KIRRA family of trademarks.

Competing clothier Kira Plastinina Style, Ltd., owns the KIRA PLASTININA trademark.

In 2008, Pacific Sunwear sued Kira Plastinina for trademark infringement.

Last year, the Central District of California found that Pacific Sunwear was likely to succeed on the merits of its claim and granted a preliminary injunction enjoining Kira Plastinina from using KIRA or KIRA PLASTININA as a trademark or trade name. However, the court clarified that “Defendants may use the phrase ‘Kira Plastinina’ (but not the single word ‘Kira’) in written displays, advertisements, or Internet pages to identify the actual designer of Defendants’ goods, as opposed to identification of the company, business, stores, goods, and services offered by Defendants.”

Kira Plastinina appealed, arguing that “Kira Plastinina” is the name of one of its designers and that the scope of the injunction was overly broad.

On Feb. 1, the Ninth Circuit affirmed.

It found “the district court correctly identified the legal standard for likelihood of confusion of a trademark, its findings of fact were not clearly erroneous, and the district court did not clearly err in finding a likelihood of confusion between the two trademarks. We therefore conclude that the district court did not abuse its discretion in holding that Pac Sun was likely to succeed on the merits of its trademark infringement claim.

“With respect to the scope of the district court’s preliminary injunction, the court did not abuse its discretion in restricting certain uses of ‘Kira Plastinina.’ Despite these restrictions, the injunction properly reflects a consideration of the ‘reluctance to preclude an individual’s business use of his name.’ Furthermore, enjoining use of ‘Kira Plastinina’ in media advertisements, including audio and video, was not an injunction against nontrademark use, and the district court did not abuse its discretion in enjoining such advertising. Finally, the preliminary injunction is sufficiently clear to protect Pac Sun’s interests and to provide KP Style with adequate notice of its provisions.”

The case cite is Pacific Sunwear of California, Inc. v. Kira Plastinina Style, Ltd., 2010 WL 358764, No. 09-55699 (9th Cir. Feb. 1, 2010).

Not “identical, or nearly identical”:
Plaintiff’s logo (left) and defendants’ logo

Last year, E! Entertainment Television, Inc., sued Entertainment One GP Limited, d/b/a E1 Entertainment, and four related entities in the Central District of California for trademark infringement.

E! Entertainment operates television networks and owns a number of “E!” design marks.

The Entertainment One defendants distribute third-party CDs and DVDs; operate a record label; and own and distribute niche and direct-to-video movies. They conduct business in connection with an “E1” design mark, though only two of the five defendants have ever used the mark in the United States.

E! Entertainment moved for a preliminary injunction.

The court denied the motion, finding:

• E! Entertainment did not show that the parties’ marks are similar;
• The parties do not compete with respect to the same goods or services;
• E! Entertainment did not present any evidence showing that its customers — primarily casual television viewers — exercise a low degree of care, whereas defendants demonstrated their customers exercise a high degree of care;
• There is widespread third-party use of “E” marks in the entertainment field;
• Consumers are not likely to be confused by defendants’ “E1” marks; and
• E! Entertainment did not present any evidence of actual confusion.

E! Entertainment appealed these findings.

On Jan 26, the Ninth Circuit affirmed, concluding the district court did not err in finding there was no likelihood of confusion.

The court added: “We have held that a party seeking relief under 15 U.S.C. § 1125(c) must demonstrate that the marks are ‘identical, or nearly identical,’ so that a ‘significant segment of the target group of customers sees the two marks as essentially the same.’ We conclude that the district court did not err in finding that the parties’ respective marks are not nearly identical under this standard.” 

The case cite is E! Entertainment Television, Inc. v. Entertainment One GP Limited, 2010 WL 331505, No. 09-55937 (9th Cir. Jan. 26, 2010).

No TRO: Plaintiff Protectmarriage.com’s logo (left)
and defendant Courage Campaign’s derivative logo

“[P]laintiff is unlikely to overcome the conclusion that defendant’s use of the mark is protected under the First Amendment….”

That’s the conclusion the Eastern District of California reached Jan. 20 in denying plaintiff Protectmarriage.com - Yes on 8’s motion for a temporary restraining order against defendant Courage Campaign’s use of an allegedly infringing logo.

Protectmarriage.com supports traditional marriage and helped place California’s Proposition 8 on the ballot. Its logo depicts a man and a woman with two kids.

Courage Campaign supports same-sex couples’ right to marry. Its logo is derived from Protectmarriage.com’s logo. It depicts two women with two kids.

Protectmarriage filed suit against Courage Campaign and sought a temporary restraining order prohibiting Courage Campaign from using its logo. Courage Campaign opposed the motion on the ground its logo is protected parody.

The court found found Courage Campaign’s logo is either protected by the First Amendment or is not likely to cause confusion. Either way, the court found Protectmarriage.com is unlikely to succeed on the merits of its infringement claim.

“In this case, the logo itself is artistic,” the court said. “Moreover, the broader website, while perhaps not artistic, is undeniably expressive of a political idea, and both political and artistic expression are protected by the First Amendment. Defendant’s use of the mark has relevance to the expressive message, namely, support for homosexual marriages, and specifically, opposition to recent California efforts to limit the right to such marriages. This support is expressed by the modification of the ‘father’ figure in the original mark to depict a second ‘mother.’ Further, the mark does not explicitly mislead as to the source of the work. Any potential for confusion or misdirection is obviated by the images and text that uniformly accompany defendant’s use of the mark, namely, photos of homosexual couples together with text explicitly endorsing homosexual marriage. Plaintiff is unlikely to succeed in showing that a visitor to the [defendant’s] prop8trialtracker website is likely to be confused as to whether plaintiff is affiliated with the site.”

The case cite is Protectmarriage.com - Yes on 8 v. Courage Campaign, __ F.Supp. __, 2010 WL 325571, No. 10-132 (E.D.Cal. Jan. 20, 2010).

Post injunction: Plaintiffs’ SANDWICH THINS buns (left) and
defendants’ 100% NATURAL THIN BUNS buns 

On Jan. 6, the Ninth Circuit affirmed the Southern District of California’s preliminary injunction enjoining Sara Lee Corporation and other defendants from using the trademarks THINS and SANDWICH THINS in connection with bread. The district court found BBU, Inc., and the other plaintiffs were likely to prevail on the merits of their claim that defendants infringed plaintiffs’ SANDWICH THINS registered trademark for bread.

See plaintiffs’ complaint and Ninth Circuit’s summary opinion (“We conclude that the district court did not abuse its discretion in concluding that appellees met the requirements needed to merit preliminary injunction relief. Accordingly, we affirm the district court’s order granting the preliminary injunction.”).

The case cite is BBU, Inc. v. Sara Lee Corp., 2010 WL 55563, No. 09-56493 (9th Cir. Jan. 6, 2010).