Seattle Trademark Lawyer

For all of the reasons discussed here, here, and here, STL has not been a fan of the United States Olympic Committee’s efforts to enforce its near monopoly rights in the U.S. over commercial use of the word “Olympic.” Is anyone really going to think the “Olympic Pizzeria” that exists in almost every town has anything to do with the Olympic Games? Nonetheless, the USOC hasn’t appeared to hesitate to dash off cease-and-desist letters to the owners of such establishments, sometimes causing small businesses to go through the expensive and disruptive process of changing their name. That’s particularly painful around here, where hundreds of companies (500 by this business owner’s count) have taken the name of the Olympic Peninsula, the Olympic Mountains, and Olympic National Park as their own.

That said, the USOC has been much more circumspect about filing suit. I found it surprising to learn it has only brought three trademark suits since 2008 (and never in Washington), even though the Winter Olympics will begin in about four months in Vancouver, BC, just 200 miles north of Olympia. Here’s a rundown of the USOC’s most recent suits:

• USOC v. Official Ticket Ltd., Dist. of Arizona - USOC sued ticket seller that allegedly used USOC’s OLYMPIC and BEIJING 2008 marks to resell tickets to the 2008 Summer Games without the USOC’s authorization. Complaint filed July 22, 2008; Order of default entered on August 24, 2009.
• USOC v. Asics America Corp., Central Dist. of Calif. - USOC sued shoe seller for allegedly using “OLYMPICS” prominently in advertising its athletic shoes, including in the statement, “You Wear the Medals. We Wear the Pride.” Complaint filed May 9, 2008; Stipulation of dismissal without prejudice filed on February 27, 2009.
• USOC v. Olympic Supply, Inc., Dist. of Maryland - USOC sued over defendant’s alleged use of OLYMPIC NEWS in connection with its newsstand and concession business. Complaint filed Feb. 25, 2008; motion for summary judgment granted in favor of USOC; permanent injunction entered on Aug. 6, 2009, enjoining defendant’s use of OLYMPIC NEWS beginning Jan. 11, 2010. 

Of these, the most hotly contested was USOC v. Olympic Supply. Interestingly, the court denied Olympic Supply’s motion for summary judgment based on laches, finding that registration of a corporate name did not serve as constructive notice to the USOC that the USOC’s mark was being used:

“In order for Plaintiff to be chargeable with constructive knowledge merely from the corporate registration, Defendant has to prove that a reasonable organization would routinely check every state’s corporate registrations on a regular basis to search for improper use of its marks. There are no facts stated that would give rise to such an onerous burden. Although the USOC has ‘a duty to protect and preserve [its] trademark assets through vigilant policing and appropriate acts of enforcement,’ mere corporate registration, without open and obvious use of the name, would hardly justify the level of vigilance suggested by Defendant’s assertion of this defense.”

I’m pleased the court included the caveat about “open and obvious use of the name.” Assuming a business has used OLYMPIC as its name openly and obviously for a period of years, I would think laches would provide a good defense. I’m even more pleased that the USOC is more judicious about bringing suit than it appears to be about sending cease-and-desist letters.

McCurry’s owners get a happy result in victory against McDonald’s.
Photo credit: AP/Mark Baker

On Sept. 8, a 3-judge panel of Malaysia’s federal court found a restaurant’s use of MCCURRY does not infringe McDonald’s Corp.’s rights in its well-known trademark. It’s apparently the end of the line for McDonald’s in its 8-year fight.

The AP cites McCurry’s attorney as saying the ruling means McDonald’s does not have a monopoly over “MC” trademarks in connection with restaurants. “This is a precedent to follow,” he said.

McCurry’s sells its curry fare in connection with white-and-grey lettering, a red background, and logo featuring a smiling chicken giving two thumbs up. McDonald’s, of course, sells its western-style fare in connection with its familiar golden arches. The court found these differences supported McCurry’s claim it isn’t passing itself off as being related to the worldwide chain, which has 137 locations in Malaysia.

All of this brings to mind the dispute between McDonald’s and the Seattle-area maker of pickled onions branded as MCSWEET’S. That got some attention last year in the local press, but the case is still very much alive. Now in its third year in McDonald’s opposition proceeding before the U.S. Trademark Trial and Appeal Board, the case already has 58 docket entries. On Sept. 4, the TTAB put the case in suspension pending decision on McSweet’s motion for summary judgment and McDonald’s motion to strike.

I don’t imagine the Malaysian decision will come into play (obviously), though the issues appear similar — is McDonald’s the only player in the food business that can have “MC” in its trademark?

Thanks, Jefferson Coulter of Copyright or Wrong, for bringing the McCurry case to STL’s attention!

Happy Labor Day! STL spent the holiday weekend not working in rainy Portland, Ore. Yesterday, I had breakfast with my better half at the deservedly popular Cadillac Cafe. Since I was on holiday, I focused on my delicious breakfast burrito — not less savory issues of infringement or dilution. 

This morning we paid a visit to one of Portland’s great brands, Voodoo Doughnut, but the line was way too long for this hungry customer so we went down the block to Stumptown Coffee, another Portland icon. As luck would have it, I snagged their last VOODOO-brand donut and washed it down with a damn fine cup of coffee before heading north.

In December 2007, Seattle’s RealNetworks, Inc., filed suit in the Western District against QSA Toolworks, LLC, seeking a declaration that its HELIX and HELIX and Design trademarks used in connection with digital media software do not infringe QSA Toolworks’ HELIX marks used in connection with relational database technology.

The parties cross-moved for summary judgment. A central issue was whether the parties’ products sold under their marks was similar. On Aug. 14, Judge Marsha Pechman clarified that the appropriate Sleekcraft factor is whether the products are “related” or “complementary,” which she found the parties’ offerings are not.

“The parties spend a good deal of time arguing whether their products perform ‘similar’ or ‘identical’ functions. RN argues that the ‘streaming media’ functions of its Helix software are entirely distinct from the ‘relational database management’ functions of QSA’s Helix applications; QSA argues that its product is used in streaming media configurations, that its Helix products have expanded beyond relational database management, and that RN’s Helix products have expanded beyond simple streaming media uses.

“But the Sleekcraft opinion does not refer to ‘identical’ or even ‘similar’ uses. The Sleekcraft court addressed this concern to whether the products are ‘related’ or ‘complementary,’ observing that ‘[f]or related goods, the danger presented is that the public will mistakenly assume there is an association between the producers of the related goods, though no such association exists … Although these product lines are non-competing, they are extremely close in use and function.’ The Court finds the Ninth Circuit’s ruling in M2 Software, Inc.v. Madacy Entertainment, 421 F.3d 1073 (C.A.9 (Cal.), 2005) instructive. In a trademark case where the litigants both distributed identical products (music and CDs) under the same name, the court found that ‘[t]herefore this [proximity] factor weighs in M2 Software’s favor, but only slightly because the genres of the music CDs are very significantly different.’ If the Ninth Circuit was willing to find only a ‘slight’ proximity factor between two manufacturers of a generically-identical product (CDs, downloadable music), this Court has little difficulty finding in RN’s favor on this factor.

“When fundamental functionality is distinct, the case supports a finding of ‘no confusion.’ QSA’s Helix software is used for creating applications which manage and modify information in relational databases, such as custom databases for tracking appointments and billing. In contrast, RN Helix products are utilized for the delivery of streaming media (audio and video), for media encoding and decoding in a variety of formats and ‘for the related efficient management of content delivery and network bandwidth for streaming over the Internet.’”

This led the court to grant RealNetworks’ motion for summary judgment in favor of a finding of no likelihood of confusion.

“With the exception of the “similarity of marks” factor (which is a ‘no decision,’ as opposed to a finding in QSA’s favor), the Court finds as a matter of law that the Sleekcraft factors overwhelming favor Plaintiff’s position of ‘no likelihood of confusion.’ On this basis, Plaintiff is entitled to a finding on summary judgment that there is no likelihood of confusion between its use of the Helix mark and that of QSA.”

The case cite is RealNetworks, Inc. v. QSA Toolworks, LLC, 2009 WL 2512407, No. 07-1959 (Aug. 14, 2009) (Pechman, J.).

No likelihood of confusion:
O’Neal’s (left) and One Industries’ motocross logos

The Ninth Circuit decided a new likelihood of confusion case yesterday, One Industries, LLC v. Jim O’Neal Distributing, Inc. The case involves competing “O” logos used in connection with motocross equipment and apparel. The Southern District of California dismissed Jim O’Neal’s infringement claim on summary judgment, finding the differences in the parties’ logos precluded the likelihood of confusion.

The Ninth Circuit affirmed. After some interesting priority analysis on tacking, the court found that under the Sleekcraft factors, consumer confusion between the two marks was not likely. 

“[Jim O’Neal’s] Rounded O’ mark is ‘fanciful,’ entitling it to strong protection. By itself, the mark neither describes nor ‘conveys an impression of a good.’ The Rounded O’ mark has ‘no intrinsic connection to the product with which the mark is used [i.e. a motocross helmet]’ and is a ‘wholly made up term[ ].’ The record, however, contains several examples of similar O marks used by different companies, including Oakley, OGIO, and Alloy MX. Such use of other ‘O’ symbols weakens the Rounded O’ mark. Based upon these offsetting considerations, we agree with the district court’s apparent view that the first Sleekcraft factor, at best, weighs slightly in favor of finding confusion.

“Although O’Neal and One Industries are direct competitors, we are persuaded that the marks do not look alike, that O’Neal has not produced evidence of actual confusion, and that no reasonable jury could infer that One Industries deliberately appropriated the goodwill associated with the O’ mark. The O’ mark, though conceptually strong, is weakened by the presence of other, similar marks. In the absence of evidence of actual confusion or intent to deceive, we decline to grant O’Neal a virtual monopoly on the use of the letter ‘O’ on motorcycle helmets. The mere fact that the two companies are direct competitors and happen to use the same letter on their products is not sufficient to show infringement. Accordingly, we conclude that there is no likelihood of confusion in this case, and that the district court properly granted summary judgment to One Industries.”

Additional blog coverage on the decision here and here.

The case cite is One Industries, LLC v. Jim O’Neal Distributing, Inc., __ F.3d __, 2009 WL 2581864, No. 08-55316 (9th Cir. Aug. 24, 2009).