Seattle Trademark Lawyer

Think this is from Delta Airlines’ Web site? Me either.

We’ve got DELTA for an airline, and DELTA for faucets.

One of these guys has got to be infringing the other, right?

Nope. Even with exact trademarks, there’s no likelihood of consumer confusion if the products are sufficiently different. If the average consumer wouldn’t think an airline also makes bathroom fixtures, both companies can peacefully coexist even though they share identical trademarks.

Last week, the District of Oregon illustrated this principle when it found that parties with similar marks and similar goods can coexist in their respective markets without one infringing the other.

In Icebreaker Limited v. Gilmar S.P.A., plaintiff Icebreaker moved for summary judgment on its claim for a declaration that its ICEBREAKER trademark did not infringe Gilmar’s ICEBERG trademark, even though both parties use their marks with clothing. The court granted its motion.

“Here the record reflects even though Plaintiff makes some things like dresses and camisoles and workout and exercise apparel that people theoretically could wear anywhere as opposed to only for athletic activities, Plaintiff’s products are demonstrably different from Defendant’s products: Plaintiff designs, markets, and sells its clothing as performance active wear; Plaintiff’s website organizes apparel by activities such as biking, hiking, fishing, mountaineering, running, and skiing; Plaintiff’s stores are organized by activity, and both the website and the stores contain photos and advertisements of people engaged in athletic activities; and Plaintiff advertises its clothing in various sporting and outdoors magazines….

“In contrast,” the court found, “the record reflects Defendant is an Italian fashion company. Defendant’s advertising in various foreign fashion magazines features runway models wearing designer apparel. Defendant’s clothing appears on models in the Milan fashion show.”

In short, active wear just isn’t close enough to high fashion wear, to create a likelihood of confusion — even when both marks begin with the formative “ICE.”

The case cite is Icebreaker Limited v. Gilmar S.P.A., No. 11-309 (D. Or. Nov. 26, 2012) (Brown, J.).

A couple weeks ago I had the good fortune to drop in on the IP-core class at the University of Washington School of Law. It’s a good mix of J.D. (regular) and L.LM. (graduate) law students focused on learning the fundamentals of intellectual property law.

The mission? Talk about the importance of the likelihood of confusion in trademark law. I also introduced parody in the context of likelihood of confusion.

Likelihood of confusion is a hugely important concept in trademark law. It’s the basis for a trademark infringement suit. It’s also a bar to getting a trademark registered or a reason to have an existing registration cancelled.

The slides from my presentation are below. It highlights the “likelihood of confusion” factors that courts use to determine whether ordinary consumers would probably think that goods or services come from Source A when they actually come from Source B. If a likelihood of confusion exists, courts can enjoin (prohibit) the junior user from using the trademark that is causing confusion with the senior mark, among other things.

Want a crash course? My slides are accessible below.

Fat Cat Mustard, LLC, sued Fat Cat Gourmet Foods, LLC, for trademark infringement in the Western District at Tacoma.

The case isn’t staying here.

On November 2, Judge Benjamin Settle dismissed the suit because the defendant did not have the required “minimum contacts” with this district to make personal jurisdiction constitutionally fair.

In support of its motion to dismiss, Gourmet’s managing member filed a declaration stating its records only revealed one shipment to Washington, which she said was made because a Florida customer did not want to travel with the bottle on her way to Washington.

The court found that was not enough to support personal jurisdiction.

“In this case, Mustard asserts that the Court has specific jurisdiction based on Gourmet’s and Gourmet’s distributors’ websites, the shipment of one jar of sauce to Washington, and Gourmet’s cease and desist letters. With regard to the websites, it appears to be uncontested that individuals in Washington could access a website and order Gourmet’s products. Mustard, however, has failed to even allege that any individual in Washington has completed such a transaction. Therefore, Mustard is required to show ‘something more.’ See Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155–1159 (9th Cir.2006). Mustard offers the letters and the shipment as the ‘something more.’

“First, the cease and desist letters are not ‘something more.’ Mustard has failed to show that the letters caused any harm whatsoever. Moreover, Mustard fails to cite any authority for its proposition that a federally granted property right, such as a trademark, subjects the owner to personal jurisdiction in every forum in which the right may be enforced.

“Second, Mustard misconstrues Gourmet’s transaction. [Gourmet’s managing member] declares that the purchaser was a ‘Florida customer’ who requested that the bottle be shipped to Washington ‘so she didn’t have to travel with it.’ This does not show that Gourmet ‘engaged in commercial activity in Washington’ as Mustard contends. Therefore, based on the record before the Court, Mustard has failed to show that Gourmet ‘purposely availed itself of the privilege of conducting activities in’ Washington.”

The court found the other elements needed to establish personal jurisdiction were similarly lacking.

“In this case, Gourmet has made a compelling case that the exercise of jurisdiction would be unreasonable. Gourmet’s interjection into Washington is de minimus, if any purposeful interjection exists at all. Being a Florida based corporation, Gourmet would suffer a significant burden defending itself in Washington. The parties concede that there is no conflict between Washington and Florida. Washington has no interest in adjudicating the propriety of a non-resident company’s trademark when there is no evidence that a sale was actually consummated in Washington or that there is a likelihood of confusion by Washington consumer. Neither forum appears to be the most efficient for judicial resolution because it does not appear that the parties compete in either Florida or Washington. While Washington may be a more convenient forum for Mustard, it has failed to show that Gourmet purposely interjects itself into Washington and causes harm. Finally, alternative forums exist if either party chooses to bring the action where the defending party is subject to personal jurisdiction. Therefore, the Court finds that Gourmet has shown that it would be unreasonable for the Court to assert personal jurisdiction in this matter.”

The case cite is Fat Cat Mustard, LLC v. Fat Cat Gourmet Foods, LLC, No. 12-5663, 2012 WL 5389149 (W.D. Wash. Nov. 2, 2012) (Settle, J.).

If the court’s jury instructions aren’t correct, the verdict that follows can’t stand.

That’s the principle the Ninth Circuit applied last week in Neurovision Med. Products Inc. v. NuVasive, Inc., a trademark infringement case in which the jury awarded Neurovision $60M.

The basis for the jury’s finding was that NuVasive committed fraud in procuring its trademark registrations, that Neurovision had prior rights in its trademark, and that NuVasive willfully infringed Neurovision’s trademark rights. At issue were the parties’ competing rights to NEUROVISION as a trademark.

The Ninth Circuit found the jury’s verdict that NuVasive fraudulently obtained its trademark registrations must be vacated because the Central District of California erroneously instructed the jury as to the elements needed to prove fraud on the U.S. Patent and Trademark Office. Such proof requires a “material misrepresentation in the affidavit on the basis of which the mark was registered.” Pony Express Courier Corp. of Am. v. Pony Exp. Delivery Serv., 872 F.2d 317, 319 (9th Cir. 1989).

The court noted: “There is no requirement that an applicant for a trademark registration disclose all prior use of a mark, contrary to the district court’s instruction. Instead, an applicant must disclose only those prior users that the applicant believes have acquired superior rights to the mark in the classification for which registration is sought. The district court erred by instructing the jury to determine only whether NuVasive omitted knowledge of [Neurovision’s] prior use of the NEUROVISION mark; the proper inquiry is whether NuVasive wilfully omitted knowledge of a superior right held by [Neurovision]. Moreover, the district court erroneously omitted from the jury instructions a key element of proving fraud on the USPTO: that a trademark applicant intend to induce reliance on a misrepresentation.”

The Ninth Circuit also found the district court erred in instructing the jury about what was required to challenge an incontestable trademark.

“The judgment below must be vacated because the district court instructed the jury to answer only whether [Neurovision] ‘establish[ed] trademark rights in the mark ‘NEUROVISION’ through prior use of the mark in commerce,’ and failed to require that the jury determine both the geographic scope of [Neurovision’s] rights and whether [Neurovision] maintained continuous use of the mark following the acquisition of any state law rights in the mark.”

Because it found the district court had “ignored our precedent, persistently cut off or excluded relevant testimony, and repeatedly instructed the jury incorrectly,” the Ninth Circuit took the unusual position of requiring that the case be reassigned to a different judge on remand.

The case cite is Neurovision Med. Products Inc. v. NuVasive, Inc., No. 11-55120, 2012 WL 3900682 (9th Cir. Sept. 10, 2012).

The Seattle Times yesterday wrote about Microsoft’s abrupt decision to stop referring to its forthcoming Windows 8 user interface as “Metro.”

Whether it was an internal project name or external trademark, the change reportedly led to some confusion.

Word is a German company using the same mark had threatened to sue.

I got a few quotes in the article about how even big companies sometimes don’t do their homework in selecting a name. I’m not saying that’s what happened here, since Microsoft changed course before most consumers were exposed to the mark. From a trademark perspective, that’s what’s important, since a trademark tells consumers where a product comes from.

Other companies have been less fortunate. You’d be shocked if you knew about the worldwide advertising campaigns that name-brand companies have launched promoting products held back by problematic new trademarks. (I’ve been involved in two such situations, which I can’t discuss because of confidentiality issues.) Not a good way to spend precious marketing dollars.

The point is, even companies with massive resources sometimes don’t do their homework. Other trademark owners can learn from their lessons. Research your proposed trademark before investing in it. Make sure it doesn’t implicate anyone else’s rights. And if you plan to register it, make sure you’ll be able to do so.