Seattle Trademark Lawyer

In Quiksilver, Inc. v. Kymsta Corp., a Central District of California jury initially found the defendant clothing maker was liable for infringing plaintiff’s ROXY trademark but did not find it liable for false designation of origin.

Since the tests are essentially the same, the court resubmitted the special verdict form with supplemental instructions. The jury then found defendant Kymsta liable on both counts, and the court imposed a permanent injunction.

Kymsta appealed. On Dec. 30, the Ninth Circuit affirmed, finding the district court acted within the scope of its discretion. At issue were the district court’s instructions as to the meaning of “ordinary purchasers” and the relevance of past harm to Quicksliver’s trademark infringement and false designation of origin claims.

The Ninth Circuit found: “In this case, the district court properly resubmitted the verdict due to a potential inconsistency in the jury’s responses — the jury found a likelihood of confusion for trademark infringement, but not for false designation of origin, despite a marked similarity between the questions. As Quiksilver argues, the inconsistency may have been due to jury confusion as to the meaning of ‘ordinary purchasers.’ Accordingly, the district court acted within its discretion in clarifying ‘ordinary purchasers’ on resubmission.

“In addition, the district court properly determined that past harm was irrelevant to the claims. See, e.g., Ninth Circuit Model Civil Jury Instructions 15.5 (2008) (excluding harm as an element of 15 U.S.C. § 1114(1) trademark infringement and § 1125(a)(1) false designation of origin claims). The district court, thus, acted within its discretion in instructing the jury to ignore the harm questions on redeliberation.”

The case cite is Quiksilver, Inc. v. Kymsta Corp., 2009 WL 5184066, No. 02-05497 (9th Cir. Dec. 30, 2009).

To paraphrase plaintiff: “It looks like a Texaco station.”

Defendants Misko Maynard and Grapeview Country Store, LLC, allegedly sell groceries and gas in what used to be a Texaco station.

Chevron U.S.A., Inc., owner of the TEXACO brand, filed suit in the Western District on Dec. 18 arguing that defendants’ association with its trademark is likely to confuse consumers and, therefore, constitutes trademark infringement and unfair competition.

I don’t think there’s anything wrong with plaintiff’s claims. It’s just too bad the parties have had to go to federal court over a problem a can of paint would seem to solve.

The case cite is Chevron U.S.A., Inc. v. Maynard, No. 09-05779 (W.D. Wash.).

(Photo from plaintiff’s complaint.)

Think this comes from Microsoft?
Screen shot from ad agency Bing! Information Design’s Web site 

Bing! Information Design, LLC, is suing Microsoft Corp. for trademark infringement over Microsoft’s use of BING as the name of its search engine.

The complaint, filed Dec. 15 in Missouri Circuit Court, alleges that Microsoft has created “confusion and/or reverse confusion and damage to Plaintiff who had previously been utilizing its trademark ‘Bing!’.”

I don’t see it.

Bing! Information is an ad agency in St. Louis (and, interestingly, is a Washington LLC). It says it focuses on information graphics, multimedia and interactive projects, illustrations, charts, maps, animation, and technical diagrams.

Microsoft offers search engine software that was formerly known as MICROSOFT LIVE SEARCH.

I just don’t see much of a likelihood of confusion.

Bing! Information also has extended the time to oppose Microsoft’s intent-to-use application to register BING in International Class 9 for “computer search engine software; graphical user interface software, namely toolbar software for use with search engine software and websites”; in Class 35 for “advertising services; dissemination of advertising for others via the Internet; providing consumer product information via the Internet; advertising and directory services, namely, promoting the goods and services of others by providing a website featuring links to the websites of others; providing online directory services featuring business and personal directory information; providing an Internet website featuring news and information in the fields of national and international politics and business”; and in Class 38 for “telecommunication services, namely, receipt and delivery of information, messages, documents, images and other data by electronic transmission; streaming of audio and video on the Internet.”

Bing! Information has applied to register its BING! trademark in Class 16 for “Illustrations; Printed visuals in the nature of information graphics, charts, maps; Stories in illustrated form”; and in Class 35 for “Advertising agencies, namely, promoting the goods and services of others; Advertising and promoting the goods and services of a visual artist; Advertising particularly services for the promotion of goods; Advertising services, namely creating corporate and brand identity for others; Advertising services, namely, creating corporate logos for others; Advertising services, namely, production of special effects including model-making services, computer-generated imagery and computer-generated graphics for the production of commercials; Advertising via electronic media and specifically the internet; Design of advertising flyers for others; Design of advertising materials for others; Design of internet advertising; Providing advertising services using 3D and animation designs.” Bing! Information claims a first-use date of January 19, 2000.

I see a little overlap in the parties’ services descriptions, but I still don’t see much of a chance that consumers are going to think that Microsoft’s search engine services come from a St. Louis ad agency, or that a St. Louis ad agency is responsible for Microsoft’s search engine.

Long and detailed post here.

From Abercrombie & Fitch to “Abreadcrumb & Fish”?

One Christian marketing consultant calls it “Jesus junk.”

It’s Christianizing a famous logo — Taking IPOD and turning it into IPRAY.

It’s really called trademark infringement and trademark dilution. It’s not parody, which protects a speaker’s right to use a trademark when criticizing the trademark owner.

Last week, the Associated Press highlighted this issue, which sometimes has corporations stuck between enforcing their trademark rights and not wanting to alienate their Christian customers.

I offered a couple quotes from the perspective of a disinterested trademark attorney. 

“I think you have a real tension between the legal department and the PR department. (Large companies) are very sensitive to looking like they are anti-Christian, so they are very restrained in going after the wrongdoers.”

So what’s legal as parody?

“You could take Microsoft and change their logo around to make fun of Microsoft, and that would be legal. But I can’t use the Microsoft logo to promote my Christian theme because there’s no real connection there. That’s illegal.”

Interesting issue, which STL discussed a while back. It’s nice to see the mainstream press elevating it in the public’s consciousness.

In a reversal of fortune, the Eastern District of Tennessee denied motions for preliminary injunction that King Pharmaceuticals, Inc., and other drug manufacturers brought against Seattle-based ZymoGenetics, Inc.

The order was a departure from the way the case began. On Nov. 2, plaintiffs obtained ex-parte temporary restraining orders prohibiting ZymoGenetics from using King’s THROMBIN-JMI trademark as a Google Adword; stating that ZymoGenetics’ RECOTHROM® product is superior to and/or safer than King’s THROMBIN-JMI® product; and stating that one or more lawsuits have been filed against King and/or THROMBIN-JMI® product customers for harm caused to patients who were exposed to King’s THROMBIN-JMI® topical thrombin line of products. (See STL’s Nov. 4 post on the TROs here.)

Four days later, the court granted ZymoGenetics’ motion to dissolve the TROs.

On December 10, it denied plaintiffs’ motions for preliminary injunction. The court found that monetary damages could compensate plaintiffs, and plaintiffs’ one-year delay in filing suit militated against the need for injunctive relief on a preliminary basis.

With regard to plaintiffs’ specific requests for relief, the court concluded:

• “Regarding the Adword, ZymoGenetics stated that it has ceased using King’s trademark and that it would not do so in the future. Thus, King cannot establish irreparable injury without the injunction, the second factor in the analysis. This weighs heavily in ZymoGenetics’ favor.”
• “Regarding the lawsuit prevarications, ZymoGenetics claims that non were made or will be made. It states that it has taken affirmative steps with its sales representatives to make sure none will be made. This Court cannot find that King is likely to succeed on the merits, for this issue is hotly contested.”
• As for the comparative promotional superiority and safety claims, “This is sue is hotly contested. Both parties filed many declarations and documents and presented testimony at the November 16, 2009 hearing. From this vast volume of evidence on both sides, which this Court has read and considered, this Court cannot find that King is likely to succeed on the merits. The issue is very scientific and technical, and there is a wealth of evidence on both sides. This factor weighs against King.” 

The case cite is King Pharmaceuticals, Inc. v. ZymoGenetics, Inc., No. 09-244 (E.D. Tenn.).