Seattle Trademark Lawyer

Does this mean the parties have made nice?

Probably not, but on Feb. 12, the Western District entered a stipulated Supplemental Judgment and Permanent Injunction ending the Hendrix family’s trademark dispute in Experience Hendrix, LLC, v. Electric Hendrix, LLC. Judge Thomas Zilly entered the order pursuant to the parties’ settlement and voluntary dismissal of Electric Hendrix’s Ninth Circuit appeal.

The settlement appears to give Janie Hendrix (the adopted daughter of Jimi’s Hendrix’s father) and the Hendrix family’s licensing company a total victory over the upstart vodka company owned in part by Leon Hendrix, Jimi’s brother.

STL’s discussed this case a lot, as it’s been one of the more exciting trademark fights around these parts in a while. (See posts on case highlights from March 7, 2007, Aug. 9, 2008, and September 9, 2008.)

In the end, the Electric Hendrix defendants agreed to judgment in favor of the Experience Hendrix plaintiffs, jointly and severally, in the amount of $3,200,000.

The Electric Hendrix defendants also agreed to be permanently enjoined from using, advertising, registering, applying to register, or challenging the validity of plaintiffs’ trademarks, including HENDRIX, AUTHENTIC HENDRIX, EXPERIENCE HENDRIX, and JIMI HENDRIX. The order also permanently enjoins the defendants from making any use of marks that are confusingly similar to the plaintiffs’ marks, and from selling any product that purports to have any connection with Jimi Hendrix, the plaintiffs, or the Hendrix family.

The parties apparently inked their settlement agreement in mediation on Dec. 29, 2008, before the Ninth Circuit decided Electric Hendrix’s appeal.

The case cite is Experience Hendrix, LLC v. Electric Hendrix, LLC, No. 07-338 (W.D. Wash.).

On Feb. 10, parfumerie Sportsfragrance, Inc., filed suit in the Western District against competitor The Perfumer’s Workshop International, Ltd. Plaintiff claims defendant’s sale of ROCK & ROLL branded or named perfrume infringes plaintiff’s registered ROCK ‘N ROLL trademark for fragrances and constitutes the sale of counterfeit goods. Defendant sells its SAMBA ROCK ‘N ROLL eau de toilette spray at Target and other retailers.

While plaintiff’s mark is indeed registered, I could not immediately find any examples of its actual use of the mark in connection with fragrances. For what it’s worth, I found Sports Fragrance-branded APRIL SHOWERS, HERO, BELOVED VANILLA, DAYDREAM, and GOLDEN AUTUMN perfumes, but no ROCK ‘N ROLL. We’ll see if defendant asserts an abandonment defense.

The case cite is Sportsfragrance, Inc. v. The Perfumer’s Workshop, International, Ltd., No. 09-177 (W.D. Wash.).

Plaintiff Woolrich, Inc., owner of a federal registration for THE ORIGINAL OUTDOOR CLOTHING COMPANY, has filed trademark infringement and dilution claims against Eddie Bauer, Inc., based on the Seattle company’s use of the mark THE ORIGINAL OUTDOOR OUTFITTERTM (as depicted in the sale flyer pictured above). Woolrich brought suit in the Middle District of Pennsylvania — Woolrich’s home district — on Jan. 6. The suit alleges that both companies compete in the outdoor clothing market and distribute their clothing through the same channels of trade. Eddie Bauer has not yet appeared or answered.

The case cite is Woolrich, Inc. v. Eddie Bauer, Inc., No. 09-0016 (M.D. Pa).

On Jan. 20 the Ninth Circuit considered whether colorable tribal court jurisdiction existed over a nonmember’s federal trademark claims against tribal defendants for alleged passing off of cigarettes on the Internet, on the reservation of another tribe, and elsewhere.

Philip Morris USA, Inc., brought suit against King Mountain Tobacco Co., Inc., in the Eastern District of Washington. Philip Morris’ packaging bears a distinctive “red roof” design, featuring two red triangles filling the top corners of its otherwise white package such that there is a white peak with red above it. King Mountain’s cigarette packages feature an image of a snowcovered mountain against a red backdrop.

Philip Morris alleged likelihood of confusion with aspects of its package design and likelihood of dilution. King Mountain argued that its packaging depicts Mt. Adams — known as “Pahto” in the Yakima Nation — a mountain of spiritual and cultural significance to the Yakima Tribe and that any resemblance to Philip Morris’ packaging is inadvertent and incidental.

In response to Philip Morris’ effort to enjoin King Mountain’s continued use of its packaging, King Mountain argued that Philip Morris had failed to exhaust tribal remedies, and that it had not shown a likelihood of success on the merits of its Lanham Act claims. Eastern District Judge Robert Whaley denied Philip Morris’ requested injunctions and granted King Mountain’s motion to stay the federal case to allow the Tribal Court to address its own jurisdiction.

Philip Morris appealed. Applying principles of tribal jurisdiction, the Ninth Circuit found that the Yakima Tribal Court did not have colorable jurisdiction over King Mountain’s tribal action for declaratory relief insofar as it implicates Philip Morris’ federal trademark infringement claim against King Mountain and its principals, members of the Yakima Tribe. Thus, exhaustion of tribal remedies would serve no purpose other than delay.

The Ninth Circuit reasoned: “[S]urely the district court is not suggesting that the tribe would have regulatory authority over federal trademark registration. Significantly, Philip Morris holds federal trademarks and trade dress registered under the Lanham Act, trademarks whose validity King Mountain apparently challenges.”

Framed this way, the Ninth Circuit reversed and remanded the Eastern District’s order, finding the issue was one properly decided in federal court applying federal law.

The case cite is Philip Morris USA, Inc. v. King Mountain Tobacco Co., Inc., No. 06-36066, __ F.3d. __, 2009 WL 115589 (9th Cir.).

Redmond, Wash.-based Nintendo of America, Inc., settled its trademark and design patent suit today against Los Angeles-based Nyko Technologies, Inc.

The Western District suit stemmed from Nyko’s “Wireless Nunchuck” game controller (later called “Kama Wireless Nunchuck”) used with Nintendo’s Wii video game console. Nintendo claimed Nyko’s use of NUNCHUCK infringed Nintendo’s use of its own NUNCHUCK registered trademark, which Nintendo also uses in connection with video game controllers.

Nintendo claimed a priority date of November 2006 and that Nyko first used its mark in May 2008.

Nyko counterclaimed for a declaration of noninfringement.

The parties had motions pending at the time they settled. Nintendo had moved for a preliminary injunction. Nyko had moved for summary judgment dismissing Nintendo’s claims for lack of standing.

Terms of the settlement are not public, except for their mutual dismissal of all claims and counterclaims. However, one report states Nyko can continue selling a redesigned version of its controller. A review of Nyko’s Web site also suggests that Nyko has dropped references to “Nunchuck” and that it now calls its controller the “Kama Wireless Controller.”

The case cite is Nintendo of America Inc. v. Nyko Technologies, Inc., No. 08-907 (W.D. Wash.).