Seattle Trademark Lawyer

On July 2, the Ninth Circuit decided that a district court must find a “substantial risk of danger to the public” or other special circumstances before entering a preliminary injunction requiring a product recall in a trademark case.

In Marlyn Nutraceuticals Inc. v. Mucos Pharma GMBH & Co., plaintiff Mucos argued that its former distributor’s use of Mucos’ WOBENZYM registered trademark in connection with enzyme products that differed from Mucos’ formula confused consumers and infringed its trademark rights. Marlyn argued it had a right to manufacture and sell enzyme products under the WOBENZYM mark pursuant to an informal agreement between the parties. The District of Arizona disagreed. It granted Mucos’ motion for a preliminary injunction and ordered Marlyn to stop manufacturing and distributing its WOBENZYM-branded products, recall its already-distributed products, and provide restitution to the affected customers.

Marlyn appealed, challenging, among other things, the scope of the injunction. The Ninth Circuit adopted the Third Circuit’s standard for imposing recalls, which requires the plaintiff to meet the higher standard for a disfavored “prohibitory injunction,” and for the district court to consider: “(1) the willful or intentional infringement by the defendant; (2) whether the risk of confusion to the public and injury to the trademark owner is greater than the burden of the recall to the defendant; and (3) substantial risk of danger to the public due to the defendant’s infringing activity.”

The court then sent the case back to the district court to consider these factors. “As the district court did not have the benefit of this decision when deciding this case, it did not analyze these additional factors. It did, however, rest its recall decision in part on the third factor — substantial risk of danger to the public due to the defendant’s infringing activity — in concluding that there was a public health hazard in allowing the product to remain on the market. However, the record does not support the existence of a public health risk necessary to invoke the interlocutory remedy of product recall. The only record support for the proposition that Marlyn’s Wobenzym is unsafe for public consumption is the testimony of Dr. Scavetta that the proteolytic activity in some batches of Marlyn’s Wobenzym was 250% greater than what it should have been. However, Scavetta did not testify that this formulation was unsafe for human consumption. Moreover, the district court stated that it did not find Dr. Scavetta’s testimony to be credible. There was no other testimony or evidence upon which the district court could make its conclusion that the product was hazardous for public consumption.”

The case cite is Marlyn Nutraceuticals, Inc. v. Mucos Pharma GMBH & Co., No. 08-15101, __ F.3d. __, 2009 WL 1886172 (9th Cir. July 2, 2009).

The creator of the Dark ‘n’ Stormy cocktail is taking care to ensure that every drink bearing its name is made with Gosling’s Black Seal rum and a splash of ginger beer, the NYT reports today. This is a rarity in the world of cocktails, where bartenders usually have free rein to imprint their own personality on a classic drink.

Sure enough, Gosling’s Export (Bermuda) Limited owns two U.S. trademark registrations on the mark in connection with booze: DARK ‘N STORMY for “Pre-mixed alcoholic cocktail, namely rum and ginger beer” and DARK ‘N STORMY for “A kit containing Gosling’s BLACK SEAL rum and ginger beer for preparing an alcoholic cocktail.”

“We defend that trademark vigorously, which is a very time-consuming and expensive thing,” E. Malcolm Gosling Jr. says in the article. “That’s a valuable asset we need to protect.”

Gosling’s says it draws the line at the presence of other rums in its drink. When competing rum makers use its mark to promote their product, “They’re really just trying to cheat and to capitalize on our investment.”

Wikipedia (for what it’s worth) appears to take a less proprietary approach to describing the drink. It says a Dark ‘n’ Stormy cocktail is made with “dark rum and ginger beer over ice.” It adds that “local rum is usually used, for example, Bundaberg in Australia or Goslings in Bermuda.”

Photo credit: Michael Appleton/NYT.

The Western District today found it was likely the plaintiff beauty school could establish at trial that the defendant beauty school took out ads in the Yellow Pages, posted signs on an office suite, and obtained business licenses using plaintiffs’ trademarks, constituting trademark infringement and a violation of the Washington Consumer Protection Act.

“Plaintiffs are international companies which operate over 200 hairdressing salons and academies under their ‘Toni&Guy’ brand including an academy in Bellingham, Washington. Defendants own and operate Bellingham Beauty School in Bellingham, Washington. Upon learning of the possibility of the opening of an authorized Tony&Guy franchise in Bellingham, Defendants registered ‘Toni & Guy Hairdressing Academy, Inc.’ as a for-profit corporation with the State of Washington in November, 2007. Defendants’ Tony & Guy Hairdressing Academy, Inc. then obtained a business license with the City of Bellingham and the State of Washington and a listing in the Yellow Pages for a telephone number which is never answered. These advertisements and business registrations list 203 W. Holly Street, Suite 206, Bellingham Washington as the location of the academy. This location is an office suite which bears ‘Tony & Guy Hairdressing Academy’ signs but remains empty with locked doors.

“An authorized Tony&Guy Hairdressing Academy opened in Bellingham in November 2008. Sometime before March 2009, Plaintiffs learned of Defendants’ use of the ‘Toni & Guy’ name. On April 14, 2009, Plaintiffs filed a complaint alleging violations of sections 32 of the Lanham Act (15 U.S.C. § 1114), 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), and Washington’s Consumer Protection Act.”

These findings, Judge Marsha Pechman concluded, were sufficient to support a preliminary injunction.

“The court finds that Plaintiffs have demonstrated a likelihood of success on the merits of some of its claims and that Plaintiffs stand to be irreparably injured if Defendants are not enjoined from using the Toni & Guy mark. The Court also finds that Plaintiffs have raised a serious question concerning public policy and that the balance of hardships scale tips in Plaintiffs’ favor. Plaintiffs’ prayer for relief includes enjoining Defendants from using the marks, removing local signage, and transferring the telephone number listed in the Yellow Pages to Plaintiffs. These actions would reasonably prevent further harm by removing the infringing marks from the public sphere. These actions should be accomplished within three days of the receipt of this order.”

It’s worth noting that defendants responded to plaintiffs’ motion by filing affidavits but did not file an opposition brief.

The case cite is MBL/Toni&Guy Products, L.P. v. Kennard, No. 09-501 (W.D. Wash. June 29, 2009) (Pechman, J.). 

Full disclosure: STL’s firm represents the plaintiffs in this case.

Plaintiff Kona USA, Inc., makes KONA-branded mountain bikes. Defendant DBM Nutrition makes KONA ENDURANCE-branded nutritional supplements.

Apples and oranges, right?

Not according to Kona USA — at least when DBM began sponsoring a bicycle racing team.

It filed a complaint in the Western District on June 15 alleging willful trademark infringement, false designation of origin, and unfair competition.

DBM has not yet filed an answer.

The case cite is Kona USA, Inc. v. DBM Nutrition, No. 09-822 (W.D. Wash.). 

Plaintiff trademark licensee Beijing Tong Ren Tang USA Corp. doesn’t have standing to assert a claim for common law infringement, the Northern District of California found on June 2. Therefore, the court granted defendant TRT USA Corp.’s motion to dismiss.

“[T]he central issue appears to be whether California’s common law of trademarks, as distinct from the Lanham Act or California statutory trademark protection, allows a non-owner to bring suit for trademark infringement. To state a claim for infringement under California common law, a plaintiff must allege 1) its prior use of the trademark and 2) the likelihood of the infringing mark being confused with its mark. To show ‘prior use’ a plaintiff must demonstrate that they ‘first adopt[ed] or use[d] a trade name, either within or without the state,’ which is the requirement for ownership under the common law. Because Beijing TRT does not allege that it was the first to adopt or use the mark at issue, it may not bring suit for common law infringement under California law.”

The court noted its decision would have little practical effect on the case, as TRT USA did not dispute that Beijing Tong Ren Tang USA has standing to assert a Section 43(a) claim that makes similar allegations to its dismissed claim.

The case cite is Beijing Tong Ren Tang (USA) Corp. v. TRT USA Corp., No. 09-882, 2009 WL 1542651 (N.D. Cal.) (June 2, 2009).