Seattle Trademark Lawyer

Plaintiff One True Vine, LLC, sells wine under the LAYER CAKE trademark. Defendant The Wine Group LLC under the CUPCAKE trademark. OTV sued Wine Group in the Northern District of California for trademark infringement.

Some background: OTV filed an intent-to-use application for the LAYER CAKE mark with the PTO in March 2006. Its application stated OTV intended to use the mark in connection with “white wine, red wine.” The PTO published the mark for opposition in August 2006. The opposition period closed, the application was allowed, OTV submitted its statement of use and supporting declaration, and the PTO issued a registration.

The wrinkle is OTV admitted that it does not sell, and has never sold, white wines under its LAYER CAKE mark. OTV has only sold red wines under that mark. Plaintiff contends it did not realize that the statement of use included “white wine, red wine” and not merely “wine.”

In October 2007, Wine Group filed an application to register its CUPCAKE mark for use in connection with “wine.” The USPTO published the mark for opposition in February 2008. In May 2008, during the opposition period, OTV sent Wine Group a letter demanding that Wine Group abandon its application to register the CUPCAKE mark and cease using the CUPCAKE mark on its wines. When Wine Group made no move to do so, OTV opposed Wine Group’s application. After determining that OTV never sold white wine under the LAYER CAKE mark, Wine Group moved to amend its answer to OTV’s notice of opposition before the Trademark Trial and Appeal Board to include a counterclaim for cancellation of OTV’s registration based on fraud.

OTV filed its lawsuit in March 2009. In April 2009, the TTAB suspended proceedings pending final disposition of this action. Wine Group answered the complaint and counterclaimed for cancellation based on fraud. In May 2009, Wine Group filed a motion for summary judgment on its counterclaim, which the court denied.

OTV then moved to amend its registration to delete “white wine” from the listed goods. This amendment would modify the listing of goods on which the LAYER CAKE mark is used in commerce to read “red wine” instead of “white wine, red wine.” OTV argued it has good cause to amend the register because the register is a public document that provides notice to the public and should therefore be made accurate. Plaintiff further argued that such an amendment would alter only the list of products used in connection with the mark, not the mark itself.

On Nov. 4, the court granted OTV’s motion.

“Defendant [Wine Group] does not argue that such an amendment would materially alter the character of the mark. Rather, defendant argues that the motion is ‘both too late and too early.’ According to defendant, the proposed amendment is too late because plaintiff [OTV] has failed to amend the registration in the past — and because plaintiff has already asserted the existing registration in the TTAB and in this court, as the basis for its infringement claim. Defendant points to no authority, however, suggesting the existence of a time limit on the court’s authority to correct the register pursuant to the Lanham Act.

“Defendant also argues that the proposed amendment is too early. This is so, according to defendant, because defendant’s counterclaim to cancel plaintiff’s registration has not yet been adjudicated. Defendant is apparently concerned that such an amendment will in some way moot or invalidate its counterclaim. Yet plaintiff cannot nullify a claim that it procured its trademark through fraud on the USPTO by now amending its trademark registration. If, as defendant alleges, plaintiff committed fraud on the USPTO, a post hoc amendment of the trademark register does not serve to moot or rectify such fraud. Granting the instant motion does not render the counterclaim moot. Accordingly, there is no reason not to amend the register to correct what all agree is erroneous information.”

The case cite is One True Vine, LLC v. Wine Group LLC, 2009 WL 3707512, No. 09-1328 (N.D. Calif. Nov. 4, 2009).

Rocky Brands’ Web site advertising its FLIRT boots

On Nov. 6, Bellevue, Wash.-shoe designer Topline Corp. filed suit in the Western District against Rocky Brands Wholesale LLC and other shoe sellers that market women’s boots under the trademark FLIRT. The complaint also alleges that Rocky Brands applied to register FLIRT WITH DURANGO for “western boots.” Topline alleges that Rocky Brands’ marks infringe Topline’s own FLIRT registered trademark in connection with “shoes.”

Topline has sued over its FLIRT mark before. In 2007, it sued designer Houser Shoes for marketing footwear under the marks FLURT and GOTTA FLURT. Houser ultimately admitted its marks infringed Topline’s rights as part of a consent decree.

Defendants have not yet filed an answer.

The case cite is Topline Corp. v. Rocky Brands Wholesale LLC, No. 09-1592 (W.D. Wash.).

On Nov. 2, King Pharmaceuticals, Inc., Monarch Pharmaceuticals, Inc., King Pharmaceuticals Research and Development, Inc., and Gentrac, Inc., filed suit against Seattle-based ZymoGenetics, Inc., in the Eastern District of Tennessee. The complaint alleges a variety of false advertising and trademark infringement claims related to ZymoGenetics’ topical thrombin products.

The complaint alleges that ZymoGenetics made false and misleading statements, including: “(1) Defendant’s thrombin product is superior in safety in general as compared to King’s thrombin product; (2) King’s thrombin product causes death; (3) King’s thrombin product causes an increase in bleeding disorders and failure to clot (i.e. coagulopathies); (4) King’s thrombin product causes an increase in adverse events such as hemorrhagic and/or thromboembolic events and death; and (5) Defendant’s thrombin product is superior in safety and the incidence of adverse events because allegedly there is a greater incidence of the formation antibodies from exposure to King’s thrombin product as compared to Defendant’s thrombin product.”

Yesterday, the court granted three temporary restraining orders enjoining ZymoGenetics through a preliminary injunction hearing from:

• Using THROMBIN-JMI or any variant thereof as a Google Adword;
• Displaying any statement that affirmatively states or implies that ZymoGenetics’ RECOTHROM® product (or recombinant human thrombin generally) is superior to and/or safer than King’s THROMBIN-JMI® product (or bovine thrombin products generally); and
• Displaying any statement that affirmatively states or implies 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, or that states or implies that by purchasing and exposing patients to King’s THROMBIN-JMI® products, King’s customers risk being sued in future lawsuits.

Today, ZymoGenetics filed a motion to dissolve the TROs.

ZymoGenetics has not yet filed an answer. However, the company said: “We dispute the allegations of wrongdoing in King’s complaint and intend to vigorously defend ourselves in this matter.”

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

Purple lettering and familiar torch logo: It’s apparently not what you think.

One last report about Korea. I saw this building one day. I thought it was cool that New York University had an outpost in Seoul. Purple lettering, torch logo — what else could it be? No, the driver said. It’s a dentist’s office. The driver suggested that perhaps the dentist went to NYU. Perhaps. In the States, however, this would be trademark infringement. Even if a proud NYU grad ran the office, he can’t enshroud himself in the trappings of his alma mater to the point where he looks to be NYU, endorsed by NYU, or affiliated with NYU. I don’t read Hangul, but that’s what appears to be going on here.

Photo credit: STL. Inset: NYU logo.

In Adidas America, Inc. v. Calmese, District of Oregon Magistrate Judge Janice Stewart recommended that the court grant Adidas’ motion for summary judgment that its use of “prove it” does not infringe defendant Michael Calmese’s PROVE IT! registered trademark but that the court deny Adidas’ motion that its use of “prove it” is not a false declaration of origin.

On Oct. 8, the district court adopted the first recommendation but declined to adopt the second recommendation as being inconsistent with the first.

The court found: “The test for whether trademark infringement has occurred is identical to the test for whether false designation of origin has occurred.

“Although the Magistrate Judge did not separately address Plaintiff’s claim for a declaration of non-false designation of origin, she did address whether a likelihood of confusion existed between the use of the phrase “prove it” on Plaintiff’s t-shirts and Defendant’s “prove it!” trademark. As noted, after considering each of the Sleekcraft factors, the Magistrate Judge found two were neutral, four weighed in favor of Plaintiff, and two weighed in favor of Defendant. The Magistrate Judge found the factors that were most important were the ones favoring Plaintiff; namely, lack of strength of Defendant’s mark, the lack of relatedness of the goods, the lack of similarity of the marks, and the lack of evidence of actual confusion. Accordingly, the Magistrate Judge concluded there was not any triable issue of fact as to the likelihood of confusion between the two marks.

“After reviewing the pertinent portions of the record de novo and Plaintiff’s Objections, the Court notes the Sleekcraft factors found by the Magistrate Judge to favor Plaintiff also are at the heart of the test for non-false designation of origin, and, therefore, the Court finds the Magistrate Judge erred when she denied summary judgment to Plaintiff on its claim for a declaration of non-false designation of origin.”

The case cite is Adidas America, Inc. v. Calmese, __ F.Supp.2d __, 2009 WL 3254348, No. 08-91 (D. Or. Oct. 8, 2009).