Seattle Trademark Lawyer

On April 13, E. & J. Gallo Winery filed a trademark infringement suit in the Eastern District of California against Seattle-based speciality food store The Spanish Table, Inc. (which also has stores in Santa Fe, Berkeley, and Mill Valley, Calif.).

Gallo alleges that The Spanish Table sells Spanish-made GALLO pasta, which is likely to cause confusion with Gallo’s GALLO trademark for wines, meats, and cheeses. The complaint states that “gallo” means “rooster” in Italian, and the winery used to feature roosters on its labels. (“Gallo” also appears to mean “rooster” in Spanish, pronounced “Guy-o”). The complaint alleges that Gallo obtained the Spanish company’s agreement not to sell its goods in the United States and Puerto Rico. The Spanish company is not named in the lawsuit.

Local coverage with copious comments here. From the story, it sounds like The Spanish Table will stop selling GALLO pasta and the lawsuit will go away. Hope that’s how it works out.

The case cite is E. & J. Gallo Winery v. The Spanish Table, Inc., No. 09-677 (E.D. Calif.).

Remember Starbucks’ TTAB tangle with the Rat City Rollergirls? (See STL posts here and here.) Looks like another roller-rink trademark dispute may get going.

Roller derbier Colleen Bell, a/k/a “Crackerjack,” applied to register her nickname as a trademark with the U.S. Patent and Trademark Office in connection with “Entertainment services, namely, participation in roller derby competitions; Entertainment services, namely, personal appearances by a roller derby competitor.”

On April 8, Frito-Lay North America, Inc., filed a notice of opposition with the Trademark Trial and Appeal Board opposing her application. Frito-Lay cited its prior registrations for CRACKER JACK and opposes on grounds of likelihood of confusion and dilution.

Frito-Lay also argues that the applied-for mark is merely descriptive, alleging: “The word CRACKERJACK is defined as ‘a person or thing that shows market ability or excellence.’”

The Starbucks-Rat City case never went anywhere. It’ll be interesting to see if this one goes a few laps around the track.

The case cite is Frito-Lay North America, Inc. v. Bell, No. 91189641 (TTAB).

STL’s reported (here) on Cricket Communications’ trademark infringement lawsuit against Hipcricket, as well as the Western District’s denial of Hipcricket’s request to assert a supplemental counterclaim against Cricket (here). Now it’s time to report on the parties’ apparent settlement. On March 27, Western District Judge Marsha Pechman dismissed the parties’ claims and counterclaims against each other with prejudice, which can be un-done within 60 days if “the settlement is not perfected.” The settlement came before the court decided Hipcricket’s pending motion for summary judgment. The case had been set for trial on May 4.

The case cite is Cricket Communications, Inc. v. Hipcricket, Inc., No. 08-908 (W.D. Wash.) (March 27, 2009).

Promotional graphic from defendants’ Web site

Who can forget the Moscow Cats Theatre case? Plaintiffs Yuri and Dimitri Kuklachev sued their former producer, several performance venues (including the Seattle Repertory Theatre), two ticket outlets, and a number of individuals for their alleged involvement in promoting a competing cat show under plaintiffs’ “Moscow Cats Theatre” name.

In December, the court granted plaintiffs’ motion for preliminary injunction against producer Mark Gelfman, Gelfman International Enterprises, Inc., and Yanis Gelfman.

In January, plaintiffs voluntarily dismissed the Seattle Repertory Theatre, which alleged staged some of the “copycat” performances.

Today, Judge Charles Sifton granted a motion for judgment on the pleadings brought by three individual defendants on the ground they were not responsible for the trademark, unfair competition, and tort injuries that plaintiffs claimed.

The court found: “The complaint states that Yanis Gelfman was manager of the allegedly infringing show, that [Yuri] Pototski was a director, and that [Dmitry] Krassotkine was the press secretary. Other than these allegations as to defendants’ role in the allegedly infringing show, there are no individual allegations against Pototski, Krassotkine and Yanis Gelfman in the complaint, nor can any further allegations against these defendants be inferred. Defendants argue that these allegations are insufficient to state a claim against them.

“Plaintiffs confine their arguments in opposition to the claims of false advertising, trademark infringement, and copyright infringement. Plaintiffs additionally assert that defendants are liable as employees of Mark Gelfman and Gelfman Inc., who they allege were primarily responsible for the infringement. Plaintiffs make no allegation that Pototski, Krassotkine, and Yanis Gelfman knew that Gelfman, Inc. and Mark Gelfman were not authorized to use the tricks, ‘Moscow Cats Theatre’ mark, and photographs belonging to plaintiffs. Nor have they alleged that these defendants were active, conscious participants in any allegedly infringing activities. As such, plaintiffs have failed to make out a claim against these defendants.”

The case cite is Kuklachev v. Gelfman, No. 08-2214 (E.D.N.Y. March 25, 2009).

Yesterday, Wisconsin announced a new promotional slogan: “LIVE LIKE YOU MEAN IT.” According to an AP story, some trademark owners lost little time criticizing the selection, noting they already have adopted the phrase to promote real estate, clothing, a diet book, and dietary supplements.

Those folks seem to overlook the fact that a trademark does not give its owner a monopoly over words. It doesn’t even give the owner a monopoly over words used in commerce to indicate source. Wisconsin’s selection is perfectly ok from an infringement and registrability standpoint as long as there is no likelihood of confusion with prior users or registrants.

California author Ellyn Luros-Elson warns, “They are not going to get a federal trademark, I just wanted to let them know that,” apparently based on her 2006 diet book with the same name. Yet even if the title of a book gave rise to trademark rights (and unless it is part of a series, it does not), there would seem to be little chance consumers would likely be confused between the author of a diet book and a place to vacation or hold a convention.

Indeed, the existence of three federal registrations (here, here, and here) itself may indicate that the mark can identify any number of sources of goods and services without causing a likelihood of confusion.

Unless they can prove likelihood of confusion, prior adopters of the LIVE LIKE YOU MEAN IT trademark should “live and let live.”