Seattle Trademark Lawyer

Today, Western District Judge James Robart entered a Consent Judgment and Permanent Injunction in Pinkberry, Inc. v. Yoberry, Inc.

As STL readers may recall, the burgeoning Los Angeles-based frozen yogurt seller Pinkberry sued the Seattle-based frozen yogurt seller Yoberry for trademark infringement, alleging a likelihood of consumer confusion between the parties’ word marks and swirl designs.

The agreed order enjoins Yoberry from using its YOBERRY word mark, any other mark that uses the word “BERRY” in a non-descriptive manner, and any logo that consists of a swirl design.

Yoberry also agreed to destroy within 30 days all goods, apparel, merchandise, labels, signs, and packaging that display the subject marks.

I gotta wonder if the apparently-unrelated Yoberry of San Jose or Yo! Berry of Boston will suffer the same fate. Or Seattle’s Mooberry, as I’ve previously speculated.

N.B. I stopped by the shop (which was closed) on my way home from work. Yoberry appears to have taken down all signs of YOBERRY and now operates under the shortened name YO. Query whether this will satisfy Pinkberry, as the store appears to continue to display the swirl design mark to which Pinkberry objected.

The case cite is Pinkberry, Inc. v. Yoberry, Inc., No. 08-1360 (W.D. Wash. Dec. 1, 2008) (Robart, J.).

On Nov. 14, Western District Judge Robert Bryan granted and denied in part plaintiff’s motion for summary judgment on the trademark claims in Suarez Corporation Industries v. Earthwise Technologies, Inc.

Suarez Corporation Industries sells consumer products, including portable electric space heaters, under its EDENPURE and SUN-TWIN trademarks.

Defendants Earthwise Technologies, Earthwise Innovations, Inc., and Bruce Searle were involved to varying degrees in creating Web sites that sell Suarez Corporation Industries’ heaters, heater parts, and refurbished heaters. The Web sites are associated with the domain names edenpure-heater.com and edenpureoutlet.com, among others.

The court found Earthwise Innovations’ use of the the domain names and Suarez Corporation Industries’ trademarks on its Web sites was likely to cause confusion. “In this case, consideration of the Internet trinity and the remaining Sleekcraft factors favors SCI. Consideration of the Internet trinity strongly favors SCI because the trademarks at issue are identical, and Earthwise and SCI simultaneously sold related products through the Internet. The remaining Sleekcraft factors slightly favor SCI because SCI’s marks are unique and because there is no question as to Earthwise’s knowledge of SCI’s marks.”

The court went on to grant summary judgment on a claim of continuing infringement against defendant Earthwise Innovations despite the court’s preliminary injunction order.

“Moreover, Earthwise fails to create a genuine issue of material fact as to whether Earthwise’s use of SCI’s marks ceased on January 30, 2008. For example, as of February 15, 2008, edenpureoutlet.com claimed to be ‘America’s source for EdenPURETM and SUN-TWINTMParts and Refurbished Heaters,’ even though Earthwise was preliminarily enjoined ‘from buying and/or selling refurbished Edenpure or Sun-Twin heaters on the edenpure-heater.com and/or edenpureoutlet.comwebsites.’ Similarly, as of February 15, 2008, Earthwise continued to advertise its program to buy EDENPURE and SUN-TWIN heaters via edenpure-heater.comand to use SCI’s marks on infraredappliances.com, infrared-heating.com, and comfortzoneinfraredheaters.com. In this respect the motion should be granted.”

The court denied summary judgment as to whether Earthwise Technologies or Mr. Searle were liable for the infringement. The court also denied summary judgment on Suarez’s cybersquatting claim.

The case cite is Suarez Corporation Industries v. Earthwise Technologies, Inc., No. 07-5577 (W.D. Wash. Nov. 14, 2008) (Bryan, J.).

On Nov. 12, the Ninth Circuit handed down a reminder that a trademark registrant has standing to sue for infringement even when the parties’ goods do not compete.

In doing so, it vacated the Central District of California’s summary judgment dismissal of plaintiff’s trademark claims in Halicki Films, LLC v. Sanderson Sales and Marketing concerning trademark rights stemming from the motion picture Gone in 60 Seconds.

Long story short, the district court threw out the trademark claim to GONE IN 60 SECONDS on standing grounds because the plaintiff’s trademark registrations were for toy cars, toy model car kits, and baseball caps, whereas the defendant’s use of the mark was in connection with actual cars. (“Because Plaintiffs are not the registered owner of ‘Gone in 60 Seconds’ for vehicles or automobiles, Plaintiffs may not claim standing in this instance as a registrant.”)

The Ninth Circuit commented: “This conclusion confuses an analysis of the merits of Halicki’s infringement claim with an analysis of whether she has standing to bring these claims. To establish standing under the Lanham Act, a plaintiff need only demonstrate that she is the registered owner of a mark for any class of products, even one that does not compete directly with the defendant’s products. The question of whether the products on which the allegedly infringing mark appears are sufficiently related to goods sold by the plaintiff such that the defendant’s actions qualify as infringement is, by contrast, a merits question.”

The court concluded: “In this case, it is undisputed that Halicki is a registered owner of the ‘Gone in 60 Seconds’ mark for ‘toy model cars and toy model car kits’ and ‘baseball caps.’ She therefore has standing under the Lanham Act to bring an infringement claim against others allegedly using the mark in a proscribed manner.”

Whether plaintiff can prove infringement — that consumers are likely to be confused as to the source of defendant’s cars with the source plaintiff’s toy cars — remains to be seen. However, plaintiff will get a chance to put on its case.

The case cite is Halicki Films, LLC v. Sanderson Sales and Marketing, No. 06-55806 and No. 05-55807 (9th Cir. Nov. 12, 2008).

Plaintiff Cascade Manufacturing Sales, Inc., sells a composting bin it calls the WORM FACTORY. It owns a federal registration for that mark. 

Defendant Provident Co. Trust and its principal, Barry Russell, sell a competing product known as the GUSANITO WORM FACTORY.

Plaintiff alleges that defendant’s trademark infringes its WORM FACTORY trademark. It brought suit in the Western District and moved for a preliminary injunction.

On Nov. 12, Judge Ronald Leighton found WORM FACTORY is not likely generic because the mark in its truly generic sense would “suggest a factory where worms are built, not a composting bin in which worms are effectively the factory workers.”

The court found the mark is not merely descriptive under the Ninth Circuit’s “imagination” and “need” tests. “It cannot be said that Providnet ‘needs’ to use the term worm factory to describe its worm composting bins. The words ‘worm ’ and ‘compost’ and perhaps ‘bin’ are needed; the word ‘factory,’ while useful and distinct, is not needed to describe or market a vermiculture product using worms and worm castings to enhance the composting process. As Cascade cleverly points out, the mark is ‘crawling’ with products incorporating the term ‘worm’ without using the term ‘factory’ to denote worm-related composting products. Under these tests, Cascade’s mark is not merely descriptive; it is a stronger, suggestive mark.”

Having found that WORM FACTORY is protectable, the court then decided that GUSANITO WORM FACTORY is likely to confuse consumers. “It is clear to the court that, assuming the marks are valid, Cascade has demonstrated that customers are likely to be confused by Providnet’s use of “Gusanito worm factory” to identify its product, which directly competes with Cascade’s “worm factory.” Indeed, there is anecdotal evidence that such confusion is already occurring, among the very customers Providnet claims would exercise more than ordinary care to avoid.”

Given these findings, the court granted plaintiff’s motion for preliminary injunction. It denied defendants’ request for a $250,000 bond and instead imposed a bond in the amount of $10,000. 

The case cite is Cascade Manufacturing Sales, Inc. v. Providnet Co. Trust, 2008 WL 4889716, No. 08-5433 (W.D. Wash. Nov. 12, 2008) (Leighton, J.).

I could easily eat pizza every day. So, I was particularly interested when I came across two Seattle pizzerias that both call their pizza “Stellar.”

On the one hand, we have Stellar Pizza, Ale, & Cocktails in Seattle’s Georgetown neighborhood. It’s no stranger to trademark disputes, reportedly having been “bullied” into changing its name from Stella’s Pizza, Ale, & Cocktails a few years ago.

On the other hand, we have Zeke’s Pizza, which delivers pizzas throughout the Seattle area from six locations. Lately, I’ve noticed that Zeke’s has started using the slogan “Stellar Pie” on the sides of its delivery boxes.   

Does Stellar Pizza care? Probably not.

Could it do anything about it if it did? Maybe. It’s used STELLAR as the dominant part of its trade name and trademark for at least a few years. Sure, “stellar” means “outstanding” and, therefore, the mark is self-laudatory and considered descriptive, but if Stellar Pizza has built up secondary meaning, it might have cause to complain. STELLAR also is arguably suggestive — thus protectable from inception — if it takes a little imagination to link “stellar” with outstanding (as in a “stellar performance”) when the word is used in connection with pizza. But it’s probably descriptive, and Zekes has as much right as the next guy to use “stellar” in its descriptive, non-trademark sense.

So which place serves the better pie? Stellar Pizza, hands down, though my firm orders many pizzas from Zeke’s, and I ain’t complaining.