Seattle Trademark Lawyer

Water bottler CG Roxane LLC, seller of “Crystal Geyser“-branded water, obtained a registered trademark for BOTTLED AT THE SOURCE. It subsequently sued competing water bottler Fiji Water Co. LLC for labeling its water as being the “bottled at the source.”

The Northern District of California rejected CG Roxane’s claims. It found on summary judgment that CG Roxane’s registration was invalid because BOTTLED AT THE SOURCE is generic or at most descriptive, and CG Roxane had failed to prove secondary meaning. The court also found no likelihood of confusion between the parties’ use of the alleged marks. (For further detail on the summary judgment decision, see the Aug. 21 post from Rebecca Tushnet’s 43(B)log.)

After winning its motion for summary judgment, Fiji filed a motion for an award of attorney’s fees.

On Oct. 10, the court denied the motion.

“The defendant alleges the plaintiff filed this case ‘as leverage for a quick settlement that could be used to hammer other competitors into pseudo-legal submission’ and requests the court grant attorneys’ fees in the amount of $325,951.98. Defendant further alleges that the suit was groundless, the trademark registration was based on false information, and that the plaintiff’s conduct in this litigation was in bad faith.

“The defendant presents no compelling proof that this suit was groundless. Prior to … initiating the suit, the plaintiff registered and was granted a registered trademark by the USPTO. Registration of a mark with the USPTO is prima facie evidence of the mark’s validity and of the plaintiff’s exclusive right to use the mark as defined by its registration.”

Given that registration, the court found plaintiff’s claim for trademark infringement was colorable, not exceptional.

The case cite is CG Roxane LLC v. Fiji Water Co. LLC, 2008 WL 4542803, No. 07-2258 (N.D. Calif. Oct. 10, 2008) (Whyte, J.).

Plaintiff Boyds Coffee Co. is a Portland, Ore.-based company that sells coffee, sauces, and seasonings under its BOYDS registered trademarks.

Defendant Cowboy Boyd’s, LLC, is a St. Louis-based company that sells barbecue sauces, salsas, chili mixes, and coffee under its COWBOY BOYD’S trademark.

In 2007, the president of Boyds met the principal and sole employee of Cowboy Boyd’s at a trade show and informed him that Boyds had various trademarks incorporating the name “Boyd.” Cowboy Boyd’s later filed an application to register COWBOY BOYD’S for sauces, marinades and seasonings, but it was refused on the ground that it was confusingly similar to Boyds’ registered marks.

Two demand letters later, Boyds filed suit against Cowboy Boyd’s for trademark infringement in the District of Oregon.

Cowboy Boyd’s moved to dismiss based on lack of personal jurisdiction.

District of Oregon Magistrate Judge Dennis James Hubel found that “Boyds has made a prima facie showing that, before this action was filed, 1) Cowboy Boyd’s knew Boyds was engaged in a business similar to that of Cowboy Boyd’s and produced many of the same kinds of products as Cowboy Boyd’s, claimed trademarks using the name Boyds, and considered Cowboy Boyd’s marks to be infringing; 2) Cowboy Boyd’s knew its application for the trademark Cowboy Boyd’s had been refused by the USPTO on the ground that it was similar to the federally registered trademarks of Boyds; and 3) Cowboy Boyd’s knew that Boyds did business in Oregon.”

Cowboy Boyd’s argued that its contacts with Oregon were not sufficient to make the exercise of jurisdiction reasonable, and that Missouri would be an alternative — and far more convenient — forum for a defendant with only one employee who lives and works in Missouri.

The magistrate sympathized with Cowboy Boyd’s but denied its motion to dismiss.

It concluded: “Although Cowboy Boyd’s has articulated some considerations that weigh against the exercise of personal jurisdiction, particularly the argument that its purposeful direction of activities toward Oregon has not been extensive, Cowboy Boyd’s has not presented a compelling case that the exercise of jurisdiction would be unreasonable.”

On Sept. 30, District of Oregon Judge Robert Jones adopted the magistrate’s findings and recommendations.

The case cite is Boyds Coffee Co. v. Cowboy Boyd’s, LLC, 2008 WL 4461846, No. 07-1516 (D. Or.) (Hubel, M.J.).

Berry similar? Pinkberry accuses Yoberry of ripping off its marks

In September, the Pinkberry, Inc., chain of frozen yogurt shops filed a trademark infringement suit in the Western District against the Seattle-based Yoberry, Inc., frozen yogurt shop.

The complaint alleges the parties’ word marks are confusingly similar, as are the parties’ design marks.

Yoberry has not yet filed an answer.

The case cite is Pinkberry, Inc. v. Yoberry, Inc., No. 08-1360 (W.D. Wash.). 

The parties in HomeTask Handyman Services, Inc. v. Paul Szewczyk agreed to a consent injunction, which Western District Judge Ricardo Martinez entered yesterday.

HomeTask, a franchisor of home handyman services, had alleged a number of trademark-related claims stemming from the parties’ former relationship under a franchise agreement.

The injunction enjoins Mr. Szewczyk from being associated with any handyman service business or performing any handyman services within a designated geographic area for two years. It also enjoins him from soliciting any of his former customers and from using a designated phone number to conduct business. The order requires Mr. Szewczyk to direct calls to that number to HomeTask’s toll free number.

The court previously entered a preliminary injunction in the case last October. (STL post here.)

My firm represented the plaintiff in the case. ‘Nuff said.

The case cite is HomeTask Handyman Services, Inc. v. Szewczyk, No. 07-1283 (W.D. Wash.) (Martinez, J.).

Amici Public Citizen, the Electronic Frontier Foundation, and the Citizen Media Law Project have come the rescue of Blockshopper.com, Brian Timpone, and Edward Weinhaus in their defense against law firm Jones Day’s trademark infringement suit.

In case you haven’t heard, Jones Day filed suit over the real estate Web site’s posting photos of two Jones Day associates who were involved in real estate transactions. The Web site also mentioned the firm by name and linked to the associates’ biographies on the firm’s website.

The suit alleges trademark infringement and dilution, and seeks an injunction, damages, and attorney’s fees. (Brief additional background here; commentary here and throughout the blogosphere).

Amici make a strong case in support of the defendants’ motion to dismiss:

“In this case, plaintiff is abusing a trademark to suppress legitimate, non-infringing speech, with potentially significant implications for other online speakers. The Internet offers unprecedented opportunities for speakers and audiences to find each other and exchange valuable information about products, research, viewpoints, and other important topics. That exchange cannot happen if trademark holders can prevent others from using their marks, accurately, in the ordinary course of communication, to refer to the holders themselves. But that is precisely what Jones Day seeks to do here. Its efforts must fail.”

The brief goes on to argue:

“A large law firm with overwhelming resources seeks to use trademark law to prevent a small real estate news site from conveying accurate information about the firm and its associates. If Jones Day’s trademark theory were correct, no news site or blog could use marks to identify markholders, or links to point to further information about the markholders, without risking a lawsuit. But Jones Day is wrong. The use in question is clearly a fair use protected by the First Amendment and by the Lanham Act. Moreover, this law firm, as powerful as it may be, is hardly famous enough to deserve the extraordinary protection of the federal antidilution law. Jones Day’s federal claims are baseless and amici urge the Court to dismiss them.”

Well said. I’d be out of business (or at least out of the blogging business) if I couldn’t write a story about Microsoft, Starbucks, or Amazon.com without using those companies’ trademarks in my posts.

Let’s hope plaintiff’s over-reaching yields case law that further protects the fair use of trademarks.

Thanks to the Legal Satyricon for posting on this story.