Seattle Trademark Lawyer

On June 2, the Southern District of California transferred a trademark infringement case to the Western District of Washington. San Diego-based Cricket Communications, Inc., contends that Bellevue-based Hipcricket, Inc.’s HIPCRICKET name and registered mark infringes and dilutes Cricket’s CRICKET registered mark. Cricket also alleges a cybersquatting claim based on Hipcricket’s registration and use of Hipcricket.com.

Cricket states it is a “leading provider of unlimited wireless services” and has developed an “affordable wireless service offering consumers and local businesses a flat-rate unlimited service” over a digital wireless network. It alleges that Hipcricket is “in the business of using interactive text messaging programs to deliver advertising to the cellular telephones of consumers.”

Cricket claims that Hipcricket “intentionally sought to imply an association with Cricket in its marketing and advertising.”

Hipcricket largely denies Cricket’s allegations.

Cricket’s registration claims a first-use date of March 1999. Hipcricket’s registration claims a first-use date of July 2004.

The new case cite is Cricket Communications, Inc. v. Hipcricket, Inc., No. 08-908 (W.D. Wash.).

On May 28, a Western District jury found for the defendant Web development vendor in a case Seattle-based law firm The Christiansen Firm brought against Chameleon Data Corp. and its president, Derek Dohn. The plaintiff had accused defendants of transferring ownership of plaintiff’s four domain names to themselves without authorization in order to get leverage over plaintiff in a dispute over the defendants’ bill. (For more background, see STL posts on May 5, February 20, and February 14.)

In a five-day trial, the jury found for defendants on plaintiff’s breach of fiduciary duty claim and on defendants’ counterclaim for breach of contract. However, the jury did not award the defendants any damages on that claim.

The court awarded defendants costs but did not address their argument that they should receive attorney’s fees for prevailing in an “exceptional” case under the Lanham Act based on the court’s previous order granting them summary judgment because the four domain names at issue (thechristensenfirm.com, thechristensenfirm.net, christensenfirm.com, and cc-lawfirm.com) were either generic (cc-lawfirm) or descriptive (The Christensen Firm).

After plaintiff rested, the court granted defendants judgment as a matter of law on plaintiff’s claim for conversion but declined to do so on plaintiff’s claim for breach of fiduciary duty.

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash.) (Zilly, J.).

 
Confusingly similar? Likely to cause dilution?

Sorry for the delay, but this hit the media while I was at INTA…. Starbucks Corp. has been granted an  extension of time to oppose the Rat City Rollergirls, LLC’s application to register its design mark used in connection with “Coordination of recreational sporting opportunities for individuals who wish to participate in team league sports; Promoting sports competitions and/or events of others.”

The Rat City Rollergirls are Seattle’s roller derby league.

The Seattle Post-Intelligencer quotes a Starbucks spokesperson as saying: “We haven’t opposed it — we have asked for more time to look at it.” She added: “There’s a lot of room for us to work together to find a mutually beneficial conclusion here.”

The paper also quotes Rat City’s lawyer as saying: “The Starbucks lawyer said that the girls on the roller derby team look scary, and she didn’t think, in her own personal opinion, (that) Starbucks would want to associate themselves with the scary characters of Rat City Rollergirls.”

Starbucks now has until July 16 to oppose the application.

Other media reports here, here, and here.

By popular demand, here are the jury instructions in the Adidas America, Inc. v. Payless Shoesource, Inc. case. All 60 pages of them. The ten pages of instruction on dilution start on page 38.

Besides a reader’s request for the instructions on dilution, everyone is commended to check out the entire instructions. This case was the full meal deal — it had instructions on trademarks, trade dress, trademark infringement, likelihood of confusion, unfair and deceptive practices, dilution, and damages. This is good stuff.

The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).

Interesting to see juror notes become a part of the docket in the recently-decided case of Adidas America, Inc. v. Payless Shoesource, Inc. As many will recall, an Oregon jury last week found Payless’ use of two- and four-stripe designs for athletic shoes infringed Adidas’ three-stripe design for its competing athletic shoes.

In an undated note to District of Oregon Judge Garr M. King, a juror asked: “If this case was found for adidas, would adidas own 2 and 4 stripes?”

The court’s response: “The legal ownership of two and four stripes, generally, is not an issue in this case. The issues for consideration involve only the shoes accused in this case.”

This guidance undoubtedly is correct. But for a litigator it’s always fascinating (and, I’ll admit it, sometimes scary) to see what goes through jurors’ minds. This was important enough a question for a juror to ask — and the response essentially was an instruction that the juror was barking up the wrong tree. I’ve participated in mock trials and seen mock jurors in deliberation latch onto something that neither side argued and that had no basis in the law. Imperfect though our system is, you just hope and ultimately trust that the jury’s collective wisdom will figure out on whose side justice lies.

The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).