Seattle Trademark Lawyer

The Seattle Times reported yesterday that the United States Olympic Committee and the Olympic Peninsula’s Olympic Cellars Winery have entered into a settlement in which the winery will keep its “Olympic” name and domain name on the condition that its “wine sales east of the Cascade Mountains are not ‘substantial.’” (Previous STL coverage here.)

The Times was not privy to other terms of the agreement.

The settlement appears to mirror the language contained in the Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. § 220501, et seq., which vests the USOC with a near monopoly on the word “Olympic.” Section 220506(d) of the statute excepts trade names and trademarks when “it is evident from the circumstances that such use of the word ‘Olympic’ refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998, and not to the corporation or any Olympic activity” and “such business, goods, or services are operated, sold, and marketed in the State of Washington west of the Cascade Mountain range and operations, sales, and marketing outside of this area are not substantial.”

Despite the settlement, Olympic Cellars remains unhappy. Its Web site states:

“By forcing Olympic Peninsula businesses to be local in nature and restricting sales to the Olympic Peninsula, it unjustly limits our ability to grow, be competitive and survive. Sure, we could change our business names. It certainly would be easier, cheaper and less hassle. But that means shedding our heritage as well; basically giving in and giving up. And we just can’t do that.

“It makes far more sense for the USOC to simply limit its investigation to activities and companies outside the Olympic Peninsula using the mark OLYMPIC, and sue those who would try to create an association with, or trade upon the goodwill of the USOC, the U.S. Olympic Team or the Olympic Games for commercial use.

“Unfortunately, the bigger picture has been lost.

“Contrary to what the USOC claims, there is no confusion as to whether the name ‘Olympic’ refers to one of our businesses, the Peninsula where we’re located or the Olympic Games themselves. When you hear the name ‘Olympic Cellars Winery’ is your first thought of a swimmer racing across the pool at the Olympic Games? I don’t think so.

About the only way one of our local businesses could ever escape the harassment of the USOC is to become a giant like AT&T, VISA, McDonalds, Nike, Bank of America or Anheuser-Busch and actually help sponsor the Olympics! And they’ll need to do that without the help of national recognition or basic use of the Internet. When someone pulls that off, I’ll be the first to raise a glass of Vino.”

I completely agree.

Yesterday’s post looked at the advantages of state trademark registration. Indeed, registration at the state level offers many advantages over common law protection and sometimes even over federal protection. Yet, dollar-for-dollar, most trademark owners get the most benefit out of federal registration.

Here’s why:

• Broader geographic scope. Once a trademark is used in interstate commerce, even if it’s with sales between customers in the bordering state, a trademark owner can apply for federal protection that will expand its common law rights to the entire United States. That means an owner will be presumed to be the exclusive user of the trademark in connection with the goods and services listed in its registration and will have priority over every other user that has not yet adopted the mark. That’s a big advantage in protecting one’s rights — particularly for owners who sell over the Internet or to customers in many states. Like state registration, federal registration also gives owners the presumption their trademark is valid and that they own it. 
• Incontestability. After five years, upon filing the necessary paperwork, a registration for a mark that has been used substantially exclusively and that has not been the subject of challenge can become “incontestable,” which cuts off the challenges a third party can make to its validity. After that time, the registration can’t be cancelled for being merely descriptive, among other things (though it can still be cancelled if it becomes generic, is abandoned, or was acquired through fraud).
• Examining Attorneys. Let the government help you police your trademark. Having a federal registration will lead the PTO’s Examining Attorneys to refuse applications for registration that are confusingly similar with your registered marks. You don’t have to do anything further to reap the benefits of this protection.
• The Circle-R. Once you’ve got a federal registration, you can (and should) put the world on notice of your rights by displaying the ® symbol, which warns potential competitors not to get too close to your mark when selecting their own marks.
• Longer intent-to-use period. Some states offer short “reservation” windows in which an owner can tie up a potential trademark before commencing use. The U.S. Patent and Trademark Office allows intent-to-use filers to do so for up to three years (though it’ll cost you $150 for each six-month extension).
• Get help from Customs. A federal registration also enables owners to get help from the U.S. Customs and Border Protection. This can be a great help in stopping counterfeiters.
• Sue in federal court. We’ve got wonderful judges on our federal bench who know what they’re doing when it comes to trademark law. Having a federal registration is your ticket to federal court when you need judicial help enforcing your rights.

Don’t buy more than you need. For some trademark owners, getting a state registration is just as good as — and sometimes better than — getting a federal registration issued by the U.S. Patent and Trademark Office. This post summarizes the advantages of state rather than federal registration. Tomorrow’s post will look at the downsides.

So why would a trademark owner consider forgoing federal registration in favor of registration in one of more states?

Here are the most common reasons:

• It’s cheaper. Federal registration typically costs $325 in filing fees for each class of goods or services. State registration usually costs a lot less. In Washington, it’s only $50. Maintenance fees, such as filing affidavits of use, also typically cost more at the federal level in comparison to what states charge.
• It’s quicker. A federal registration can take a year or longer. A state registration often issues within a few months.
• It’s easier. The U.S. Patent and Trademark Office employs examining attorneys to vet trademark applications. Most states do not. Therefore, applications that might not pass federal muster often can be registered at the state level — as long as the exact mark has not already been registered. The federal system also gives third parties an opportunity to object to an application if they believe registration would harm them, whereas most state systems do not. Moreover, a mark that is not used in interstate commerce cannot be federally registered. The threshold is lower for state registration. As long as a mark is used in State X, it should be registrable in State X unless some other bar exists.
• It offers statewide protection. A state registration is usually considered prima facie evidence that the trademark is valid; of the registrant’s ownership of the trademark; and of the registrant’s exclusive right to use the trademark in in the state in connection with the goods or services specified in the certificate. See, e.g., RCW 19.77.040. If a mark is used solely or primarily within the bounds of a state, getting a registration in that state may offer all the protection an owner needs. Similarly, an owner that only uses its mark in one region may find adequate protection by registering its mark in each state in which the mark is used. 
• It offers regional dilution protection. The Lanham Act now requires that a mark be famous on a nationwide basis to qualify for federal protection against dilution. Gone are the days of niche market fame. However, owners of marks that are famous locally or in a particular niche market may be able to get protection through state anti-dilution laws.
• It can provide for attorney’s fees. The Lanham Act only provides for an award of attorney’s fees in “exceptional circumstances.” State trademark statutes tend to be more liberal in allowing for an award of fees to the prevailing party. In Washington, for example, fees are awarded at the court’s discretion. See RCW 19.77.150.

I’ve read a little about the trademark infringement lawsuit that Japanese cosmetics giant Shiseido Co. Ltd. filed against alleged copycats in China.

Apparently, a decision is due from the Pudong New Area People’s Court any day now. 

According to one article, Shiseido alleged that defendants Li Wei and Ma Yan, and their companies Shanghai Jingdian Cosmetic Co. Ltd., Shanghai Runmei Bio-tech Development Co. Ltd. and Shanghai Xiaoxian Meiye Bio-tech Co. Ltd., “used a similar logo, Shidoas, with the same font and the same Chinese characters as Shiseido’s Chinese trademark on cosmetic packages, adverts and Website without its permission.”

The thing that struck me was the remedy that Shiseido seeks: it not only wants money (about $700,000 US) and an injunction enjoining future infringement, but — according to another account — it also wants the defendants to “publish an apology in newspapers.”

Is that a remedy one can get in China? Of course, that’s not something you ever see happening here. At least I’ve never heard of it.

This seems to beg the question: What are the cultural differences that give rise to a legal system in China that provides for an apology remedy, and a legal system in the States that does not?

The Seattle Times yesterday reported on the July 11 oral argument in the parties’ cross motions for summary judgment in Experience Hendrix, LLC, v. Electric Hendrix, LLC. The case will decide whether the defendant can market its vodka products using the deceased musician’s name, likeness, and signature. (STL’s July 2 preview of the argument here, with past coverage here, here, and here. Seattle Post-Intelligencer’s coverage of the hearing here.)

The article provides a nice summary of the longstanding dispute, which has involved issues of trademark law, estate law, and right of publicity law. In short, it’s a pretty cool case.

The article states that Janie Hendrix (the adopted daughter of Jimi Hendrix’s father) asserted that plaintiff’s trademarks are valid and that the defendant went out of its way to adopt a mark similar to the one her companies most often use.

Leon Hendrix (one of the defendant’s owners) responded that he has as much right as Janie to make money off his late brother’s fame. The article quotes him as saying: “She cheated me out of my inheritance. She blackmailed my father. I had to go find another business, another way to make money to send my kids to college.”

The article states Judge Thomas Zilly said he would try to be “prompt” in rendering his decision but did not set a specific date.

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