Seattle Trademark Lawyer

On May 19, Spokane-based Allied Safe & Vault Co., Inc., filed suit in the Eastern District against Otis Orchards-based Allied Fire Sprinklers, Inc., alleging that defendant’s use of “Allied” infringes plaintiff’s registered trademarks for ALLIED FIRE & SECURITY.    

Tomorrow’s post: Acme Sues Acme Over ACME.

Last May, Fantastic Sams Franchise Corporation filed a trademark infringement case in the Western District against Regis Corporation. It alleged that Regis converted several Seattle-area FANTASTIC SAMS salons into its own HAIRMASTER salons and caused a likelihood of consumer confusion when it failed to remove all of the FANTASTIC SAMS trademarks from the premises.

On May 29, the parties filed a Stipulation and Order of Dismissal dismissing with prejudice all claims and counterclaims against each other.

The case cite is Fantastic Sams Franchise Corp. v. Regis Corp., No 08-706 (W.D. Wash.).

As discussed here, Sportsfragrance, Inc., sued The Perfumer’s Workshop International, Ltd., in the Western District for trademark infringement. The crux of the dispute was Sportsfragrance’s allegation that Perfumer’s use of ROCK & ROLL in connection with its perfumes infringes Sportsfragrance’s ROCK ‘N ROLL mark in connection with perfumes.

Perfumer’s (PWI) filed a motion to dismiss for lack of personal jurisdiction. In response, Sportsfragrance argued that Perfumer’s purposefully availed itself to Washington by selling its SAMBA ROCK & ROLL perfumes through Target’s and Perfumania’s online stores that are accessible in Washington and by selling other perfumes through those stores’ physical locations in Washington.

Judge Thomas Zilly found these activities weren’t enough for purposeful availment.

“For purposes of determining personal jurisdiction, the Court finds that PWI placed the allegedly infringing Samba ROCK & ROLL perfume products in the stream of commerce by selling it to Minnesota-based Target and New York-based Quality King Fragrance, Inc. However, even though it may have been foreseeable that these third [party] retailers would, in turn, market and sell the product elsewhere in the country, and perhaps in Washington, foreseeability alone is an insufficient basis for the Court to exercise personal jurisdiction over PWI. It is a defendant’s conduct and the connection with the forum state that are crucial to the personal jurisdiction analysis. Thus, even if the Court accepts as true Sportsfragrance’s uncontroverted allegation that retailers sold the allegedly infringing Samba ROCK & ROLL perfume products in Washington, despite the lack of evidence in support of such an allegation, that fact does not go to PWI’s activities in Washington. Sportsfragrance has failed to make a prima facie showing of purposeful availment as to PWI.”

On May 15 the court dismissed all claims against Perfumer’s and ordered it to file any motion for fees and costs pursuant to Washington’s long-arm statute within ten days.

The case cite is Sportsfragrance, Inc. v. The Perfumer’s Workshop International, Ltd., 2009 WL 1393864, No. 09-177 (W.D. Wash. May 15, 2009) (Zilly, J).

Disclaimer: My firm happily represented Perfumer’s in this case.

Adidas’ 3-stripe “Superstar” shoe (left)
and Topline’s allegedly infringing four-stripe shoe

On May 11, Adidas America, Inc., filed a trademark infringement lawsuit in the Western District against Bellevue-based shoe maker The Topline Corporation. Adidas alleges that Topline’s two- and four-stripe shoe designs infringe Adidas’ three-stripe design as well as the trade dress of Adidas’ “Superstar,” “Mei” and “Pranja” shoes.

Interestingly (to me at least), Adidas describes its “Superstar” shoe trade dress as including “a unique and non-functional combination of three stripes on the side of the shoe parallel to the equidistant small holes, a rubber ‘shell toe,’ a particularly flat sole and a colored portion on the outer back heel section.”

Topline has not yet answered Adidas’ complaint.

Adidas brought a similar trademark lawsuit against Payless Shoesource, Inc., in the District of Oregon, which last year resulted in a $305 million jury verdict in Adidas’ favor (later reduced to $65 million).

Topline is no stranger to the Western District. In 2007, it brought two trademark suits against competing shoe makers 4273371 Canada, Inc., Flurt Footwear, and a dozen others. (See STL posts on Topline’s cases from April 12, 2007, July 5, 2007, August 14, 2007, and Oct. 28, 2007.)

Given the parties’ litigious natures, this case will be case one to watch.

The case cite is Adidas America, Inc. v. The Topline Corporation, No. 09-646 (W.D. Wash.).

InsideCounsel always seems to have a good trademark story. The May issue is no exception. There’s a good recap of the Jones Day v. BlockShopper hyperlinking-is-trademark-infringement lawsuit, including a nice quote from University of Michigan Professor Jessica Litman:

“If it had gone to trial, BlockShopper would have won. That’s why Jones Day stopped pursuing this. BlockShopper settled because its legal bills were getting out of hand, and trial is incredibly expensive.”

The article also contrasts the BlockShopper case with Dozier Internet Law v. Riley, in which attorney John Dozier sued Ronald Riley in Virginia state court for hyperlinking Mr. Dozier’s firm’s name on Mr. Riley’s Web site with another Riley Web site that criticizes Mr. Dozier’s firm.

The article quotes Mr. Riley’s lawyer, Public Citizen attorney Paul Levy, as arguing: “Jones Day says, ‘if you link to my site it is trademark infringement.’ Dozier says, ‘if you link to another site it is trademark infringement.’ Both Dozier and Jones Day can’t be right.”

Hopefully neither is right.