Seattle Trademark Lawyer

We don’t get many state-court trade name decisions in Washington, and when we do, they don’t get as much attention as they should. Here’s one of them — from last year, unfortunately — that remained under the radar until last week when Westlaw picked it up. (Cheers for Westlaw’s doing so. Jeers for not doing so until now.)

In December 2006, plaintiff Custom Auto Interiors, Inc., d/b/a Custom RV Interiors, Inc., sued defendant Custom RV Interiors, Inc. and its owners in Clark County Superior Court for trade name infringement. Plaintiff alleged that defendants attempted to buy plaintiff’s business and, when they did not succeed, infringed plaintiff’s trade name by registering “Custom R.V. Interiors, Inc.,” “Custom R.V.” and “R.V. Interiors” with the Washington Department of Licensing, and by starting a competing business with the name “Dave and LJ’s Custom RV Interiors, Inc.” (As a side note, the plaintiff corporation was owned by father David Ast, and the defendant corporation is owned by sons David and Larry J. Ast.)

In January 2007, Clark County Superior Court granted plaintiff’s motion for preliminary injunction enjoining the defendants from using “Custom RV Interiors, Inc.” as their trade name. Defendants appealed, arguing that “custom RV interiors” is generic for a business that sells custom RV interiors and, therefore, is not protectable as a trade name.

In May 2008, the Court of Appeals (Division II) agreed. “Here, ‘custom RV interiors’ is a generic trade name and, even though Custom Auto has been using the trade name ‘custom RV interiors’ for over 15 years, and has likely established some consumer recognition, it is not entitled to legal protection. But even if we found that ‘custom RV interiors’ is slightly descriptive, no evidence supports Custom Auto’s argument that it has a secondary meaning entitling it to trade name protection.”

On that issue, the court found “although Custom Auto has used the name ‘custom RV interiors’ for over 15 years, has heavily advertised using that name and David and LJ may have intended to copy the name, Custom Auto has failed to provide sufficient evidence that a ‘substantial segment’ of relevant purchasers, suppliers, or agencies associate the term ‘custom RV interiors’ with Custom Auto’s business. While Custom Auto alleges confusion by ‘a number’ of suppliers and ‘several’ customers, it has provided only two specific examples: a supplier sent it an email intended for Custom RV, and a security company contacted it about what the security company believed to be a relocation. This is insufficient to establish confusion or secondary meaning.”

The case cite is Custom Auto Interiors, Inc. v. Custom RV Interiors, Inc., No. 35869-7-II, 2008 WL 6693460 (May 20, 2008) (unpublished), pet. denied, No. 81976-9 (Jan. 6, 2009).

Mexican soda maker Jarritos, Inc., sued the owners of San Francisco’s Los Jarritos restaurant for trademark infringement. 

As STL readers may recall, the Northern District of California dismissed the plaintiff’s claims on summary judgment in 2007. The court found “the absence of any evidence demonstrating that any of the remaining eight [Sleekcraft] factors tip in Plaintiff’s favor warrant[s] granting summary judgment. Plaintiff bears the burden of demonstrating that ‘confusion is probable, not simply a possibility.’” 

Jarritos appealed, and on Aug. 14, the Ninth Circuit reversed. In summary, it found the district court failed to analyze all of the Sleekcraft factors and give the benefit of the doubt to Los Jarritos as the nonmoving party. 

“Among the factors identified in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) to guide the likelihood-of-confusion analysis, similarity of the marks is a ‘critical question.’ The district court erred in concluding that, considering the other words on the Restaurant’s sign and possibly different colors used for the logo, the court ‘cannot say the two marks are similar’. The Restaurant had conceded the similarity of the marks (and acknowledged that concession in the argument before us), so the court erred by treating similarity as a disputed issue. In any event, as the Restaurant’s concession indicated, a reasonable jury could certainly find the marks similar, given the similarity in name and logo; similarity, not identity, is required for this Sleekcraft factor.

“The district court also erred in its analysis of the relatedness of Jarritos’ and the Restaurant’s goods and services. The proximity or relatedness of the parties’ goods matters ‘because the more closely related the goods are, the more likely consumers will be confused by similar marks.’ In considering whether goods are related, we look to whether the goods are complementary, whether they are offered to similar customers, and whether they are similar in use and function. The record indicates that Jarritos sodas were sold at the Restaurant, so it is clear that the parties’ ‘products are sold to the same class of purchasers.’ As the court was obligated to draw inferences in favor of Jarritos, the nonmoving party, it was error to conclude that the relatedness factor did not weigh against summary judgment.

“The district court also erred in concluding that Jarritos ‘does not point to any evidence to demonstrate the strength of its mark.’ Jarritos produced the cover of a magazine entitled ‘Mexico’s Greatest Brands’ that prominently portrayed Jarritos’s logo on the cover. The Jane Magazine excerpt also suggests public recognition of the brand.”

The case cite is Jarritos, Inc. v. Reyes, 2009 WL 2487066, No. 07-16083 (9th Cir. Aug. 14, 2009).

A colleague asked me for my top-five list of trademark cases decided since last September. Here’s my response:

1. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (finding keyword sale of trademark constitutes “use” in commerce, vacating dismissal in favor of Google)
2. Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (affirming jury’s judgment for universities in trademark infringement case against sellers of t-shirts using schools’ color schemes)
3. Adidas America, Inc. v. Payless Shoesource, Inc., 2008 WL 4279812 (D.Or.) (scaling back largest-ever $305 million jury verdict to a still-hefty $65 million in three-stripe vs. two- and four-stripe athletic shoe infringement case)
4. AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir. 2008) (good likelihood of confusion analysis in reversal of hard-fought trademark infringement case, which also was one of the first dilution cases under the TDRA)
5. O’Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F.Supp.2d 500 (S.D.N.Y. 2008) (dismissing on summary judgment Web designer’s infringement suit claiming American Express’ use of the slogan, MY LIFE. MY CARD., was likely to cause confusion with his mark, MY CARD. MY WORK). 

I’ll stand by my top three, but admit the other two were kind of a tossup. What cases would make your top-five list?

Northwest Airlines, Inc. (now a subsidiary of Delta Airlines, Inc.), has challenged a Spokane, Wash.-based online travel guide’s use of GO NORTHWEST! as a trademark.

The travel guide publisher, Go Northwest, LLC, obtained a federal registration for its mark last year, claiming it has used the mark in commerce since 1999.

Northwest Airlines claims Go Northwest’s use infringes its trademark rights by creating a likelihood of confusion with its NORTHWEST and NORTHWEST AIRLINES registered marks, which Northwest Airlines claims it has used since 1926.

The Seattle Post-Intelligencer’s Aerospace News blog first reported on the dispute on Aug. 6 and ran a follow-up post on Aug. 7. (Kudos to the short-staffed, scrappy, now exclusively online paper for running the story. Two weeks ago, it did trademark law followers a similar favor by reporting on the Smith-Starbucks trade dress dispute.) 

Northwest Airlines apparently acted in response to Go Northwest’s application to register its mark in the United Kingdom and Australia, saying it also recently discovered Go Northwest’s U.S. registration. The airline initially demanded that Go Northwest abandon its application to register its mark in those countries, voluntarily cancel its United States registration, and stop any and all use of its mark, but later scaled back its demands somewhat.

Go Northwest so far has rejected the airline’s demands, pointing to the ten-years the parties arguably have coexisted without consumer confusion. For those wanting to read the blow-by-blow, The P-I’s posts link to the letters the parties’ lawyers have exchanged.

Considering all this, it seems to me: (1) Northwest Airlines doesn’t have a monopoly on the descriptive use of “Northwest,” particularly by a company located in the Northwest; (2) it seems that if confusion were indeed likely, Go Northwest would have been on NWA’s radar screen a long time ago; (3) if it turns out that NWA has known about Go Northwest’s use of its mark for the last ten years, it’s going to have a hard time overcoming the doctrine of laches; and (4) it seems silly that NWA is causing a ruckus about its NORTHWEST trademarks now when it appears to be phasing out use of those marks following its merger with Delta. Indeed, I was hard-pressed to find prominent use of the marks on NWA’s own Web site.

As a final observation, now that lawyer letters routinely make it into the media, lawyers consciously need to write for at least two audiences — the recipient, and the public. Neither lawyer was jerky in this case, but you can imagine the damage that a lawyer’s rudeness easily could cause his or her client. That’s not a bad thing. I’m all for giving lawyers extra incentive to act professionally — if not like decent human beings. 

Full disclosure: I am still bitter about NWA’s abruptly cancelling my flight home to Seattle on my way back from last year’s INTA meeting in Berlin, stranding me in Amsterdam and putting me up in a borderline-dangerous truck stop motel 30 miles from the airport, and then cancelling my second flight home the next day. For purposes of completeness, NWA also lost my luggage — again in Amsterdam — during another return flight. Dispute these disturbing incidents, I’ve done my best to remain neutral in writing this post. Seriously.

Law.com yesterday highlighted the keyword lawsuits against Google — and Google’s recent success in defending them.

Blogger Eric Goldman thinks the suits may be ill-fated. “We’re starting to see some of these lawsuits crack,” he said. “My current hypothesis is that they never made sense in the first place — the plaintiffs got all excited to go take down Google, but suing Google is a loser’s bet because Google’s going to fight to the death.”

I agree that Google’s going to fight to the death, though I’m not sure anyone’s excited at the prospect of starting that fight. Proving trademark infringement can be hard enough. When doing so challenges the very model on which Google depends? That’s a suit a rational plaintiff would take on only if it thought it had no other choice.

So do Google plaintiffs have no other choice? I don’t think so. Seems to me they could get all the relief they need by suing the competitor that’s buying their trademarks.