Seattle Trademark Lawyer

After the Settlement: Portions of Blue Nile’s and James Allen’s 
“BUILD YOUR OWN RING” and “Design Your Own” Web pages

On May 8, Western District Judge Thomas Zilly dismissed Blue Nile, Inc.’s lawsuit against competing online jeweler James Allen Diamonds, Inc. and JamesAllen.com LLC based on the parties’ stipulation. The complaint had alleged that defendants’ use of BUILD YOUR OWN RING as a trademark infringed Blue Nile’s prior common law rights in the same mark. Defendants had denied Blue Nile’s allegations and asserted in counterclaims for declaratory judgment that their use of the words did not infringe Blue Nile’s trademark rights and that BUILD YOUR OWN RING was invalid because it did not function as a protectable trademark.

The terms of the settlement are not known to STL, but it appears that defendants have changed their alleged use of “Build Your Own Ring” to “Design Your Own” and “Design Your Own Ring” on their Web site. Plaintiff continues to use BUILD YOUR OWN RING on its Web site.

The case cite is Blue Nile, Inc. v. James Allen Diamonds, Inc., No. 07-1443 (W.D. Wash.) (Zilly, J.).

On May 5, hair salon franchisor Fantastic Sams Franchise Corp. filed suit in the Western District against rival hair salon franchisor Regis Corp. and other defendants. Fantastic Sams alleges that Regis convinced the corporation that owned the right to develop and grant third parties FANTASTIC SAMS franchises in the Seattle-Tacoma market to sell its salons to Regis. Fantastic Sams alleges that immediately after closing on its purchase, Regis began operating the salons under its HAIR MASTER brand but failed to remove all of the FANTASTIC SAMS marks from the premises. This, Fantastic Sams alleges, is likely to confuse consumers and amounts to service mark infringement and unfair competition.

Regis has not yet filed an answer.

The case cite is Fantastic Sams Franchise Corp. v. Regis Corp., No. 08-706 (W.D. Wash.).

On May 5, a nine-person jury in the District of Oregon found Payless Shoesource, Inc., liable for infringing Adidas America, Inc.’s three-stripe trademark and awarded Adidas $305 million. The jury found Payless infringed or diluted Adidas’ mark or trade dress by using a two- and four-stripe logo on its competing athletic shoes. Trial lasted 14 days. The jury deliberated for two days. 

An attorney representing Adidas said he thought it was the biggest verdict in a trademark infringement case ever. Collective Brands Inc., which operates Payless and Stride Right stores, said the award was “excessive and unjustified” and vowed to have it set aside or overturn.

An excerpt from the jury verdict form showing Payless’ shoes.
“Yes” indicates infringement.

From the jury verdict form:

“Section III.  Monetary Recovery

8) State the amount of actual damages that should be awarded to adidas, if any.

$30,610,179

9) Do you find that Payless acted willfully or in bad faith with regard to any of the claims in Question Nos. 1-7 above for which you answered ‘Yes’?

   X    Yes                No

10) If you answered ‘Yes’ to Question No. 9, state the amount of Payless’s profits that should be awarded to adidas, if any.

$137,003,578

11) Concerning a possible award of punitive damages, do you find that Payless has acted with malice, or in wanton and reckless disregard of the rights of adidas, or if deterrence is called for and Payless’s conduct is particularly aggravated?

   X    Yes                No

12) If you answered ‘Yes’ to Question No. 11, state the amount of punitive damages that should be awarded to adidas, if any.

$137,003,578”

The docket entry describes the result as follows: MINUTES OF SIXTEENTH DAY OF JURY TRIAL - Completed. Jury deliberations conclude. 9 juror lunches ordered from the Lotus Cafe. Jury verdict returned in favor of the Plaintiff. Jury polled and discharged. (See Verdict and Clerk’s List of Witnesses).

Gotta love the court’s “just the facts, ma’am” style.

Wow, what a result!

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

As STL readers may recall, on Dec. 28 Seattle-based Summit Capital Group, LLC, and affiliated financial services companies filed suit in the Western District against the Boston-based Summit Partners, LP, venture capital firm, seeking a declaration of non-infringement and non-dilution of the defendant’s SUMMIT PARTNERS trademark. Plaintiffs claimed they had used SUMMIT CAPITAL PARTNERS since at least 1986. Defendants’ demand letter to plaintiffs giving rise to the lawsuit claimed it had used SUMMIT PARTNERS, SUMMIT CAPITAL PARTNERS, and SUMMIT PARTNERS VENTURE FUND names and marks since 1984.

The parties apparently have settled their differences. On May 2, Summit Capital filed a Voluntary Notice of Dismissal with Prejudice seeking dismissal of its claims without fees or costs to any party. The parties appear to have begun discussions soon after the suit was filed since the docket shows no substantive filings other than the complaint. Defendants never filed an answer.

The case cite is Summit Capital Group, LLC v. Summit Partners, LP, No. 07-2082 (W.D. Wash.).

On Friday, the Puget Sound Business Journal ran a story about a Trademark Trial and Appeal Board case involving Maple Valley, Wash.-based McSweet LLC. McSweet, which has sold MCSWEET-branded pickled cocktail onions for almost 20 years, decided to apply to register its mark with the Patent and Trademark Office. That’s when McDonald’s Corp. stepped in to oppose. McDonald’s alleges that MCSWEET infringes and dilutes its family of famous MCDONALD’S trademarks, including MC, MCCAFE, MCPIZZA, MCRIB, MCMUFFIN, MCFLURRY, and others. McSweet denies the allegations.

The article says McDonald’s offered to consent to allow McSweet to continue to use MCSWEET if McSweet dropped its application to register the mark. McSweet reportedly refused.

The article quotes me as saying: “If you have a famous trademark like McDonald’s, it casts a long shadow that others have to avoid with their trademarks.”

The parties’ testimony periods close in September.

The case cite is McDonald’s Corp. v. McSweet LLC, Opposition No. 91178758 (TTAB).