Seattle Trademark Lawyer

In ProteoTech, Inc. v. Unicity International, Inc., plaintiff ProteoTech alleges the University of Washington granted it an exclusive license to use certain technology. Thereafter, ProteoTech granted an exclusive, limited field of use license with respect to the technology to third-party defendant Rexall Sundown, Inc. Through various corporate transactions, a Rexall subsidiary was combined with another company and then purchased by a third entity that became known as defendant Unicity. ProteoTech alleges that Rexall granted a non-exclusive, transferable sublicense to Unicity’s predecessor. ProteoTech also alleges that PTI-00703 is a registered trademark (for dietary supplements) in which it retains all rights despite its lack of use.

ProteoTech claims that Rexall was not authorized to sublicense the technology at issue to Unicity. Last year, it filed suit in the Western District, claiming in pertinent part that Rexall is liable for contributory trademark infringement, as well as patent infringement. Rexall moved to dismiss under Rule 12(b)(6), the motion currently before the court.

In its motion, Rexall argued that because the sublicense did not grant Unicity any rights to use PTI-00703, it cannot be held liable for contributory trademark infringement. ProteoTech responded that it is not relying on the sublicense as evidence of Rexall’s wrongdoing, but rather on the chain of events pursuant to which Unicity continued marketing its product with the brand PTI-00703. In particular, ProteoTech’s complaint alleges that “Rexall knew or should have known that Unicity was using the PTI-00703 mark” and “granted Unicity an implied license to continue advertising and promoting sales of the Infringing Products through use of the PTI-00703 mark.” 

The court found this was enough for ProteoTech to survive Rexall’s motion: 

“Although the details are sparse, ProteoTech appears to have alleged sufficient facts to present a plausible claim of contributory trademark infringement, which requires proof that the defendant ”intentionally induced’ the primary infringer to infringe,’ Perfect 10, Inc. v. Visa Internat’l Serv. Ass’n, 494 F.3d 788, 807 (9th Cir. 2007)…” (STL post here).

The case cite is ProteoTech, Inc. v. Unicity International, Inc., No. 06-1297, 2008 WL 539945 (W.D. Wash. Feb. 27, 2008) (Zilly, J.).

On Feb. 5, Western District Judge James Robert granted in part and denied in part Bellevue-based apparel designer Derek Andrew, Inc.’s motion for preliminary injunction against fitness drink manufacturer Vital Pharmaceuticals, Inc. Derek Andrew sells a line of clothing and related products under its RED LINE trademark. Vital sells a line of fitness drinks under its REDLINE trademark.

The problem, the court found, was with Vital’s use of athletic clothing and related goods to promote its REDLINE drink. To the extent Vital used REDLINE alone on such goods (which the court found Vital voluntarily had stopped doing), the court found that Derek Andrew had demonstrated a likelihood of confusion. However, the court found no such likelihood of confusion existed when Vital uses REDLINE accompanied by the slogan, “The Ultimate Energy Rush.” These additional words, the court found, “sufficiently identifies [Vital’s] attempts to advertise its energy drink on clothing and other apparel so as to avoid confusion with [Derek] Andrew’s RED LINE clothing.”

Based on this finding, the court enjoined Vital from using REDLINE “by itself, on any form of clothing and related products,” but found that Vital “may continue to advertise on clothing and related products using the slogan ‘REDLINE - The Ultimate Energy Rush,’ and other similar iterations of this slogan.”

Yesterday, Derek Andrew filed a motion asking the court to reconsider the latter part of this decision.

The case cite is Derek Andrew, Inc. v. Vital Pharmaceuticals, Inc., No. 07-1364 (W.D. Wash. Feb. 5, 2008) (Robart, J.).

Seattle-based Qpass, Inc., filed suit in the Western District on Feb. 6 against Kupass Corp. Both parties allegedly provide application provider services. According to the complaint, Qpass started using its registered trademark QPASS in 1998 in connection with making software available to end-users to facilitate on-line membership services, payment services, and the sale of goods and services over computer networks. The complaint states Kupass began using KUPASS in 2006 in connection with hosting computer software applications for use by others.

Qpass alleges: “The KUPASS Mark is confusingly similar to the QPASS Mark in sight, sound, and commercial impression. Defendant’s use of the KUPASS Mark in business activities that are closely related to Plaintiff’s business activities, namely, in connection with the provision of ASP services, is likely to cause confusion in the trade to Plaintiff’s detriment.”

Kupass has not yet filed an answer.

The case has been assigned to Judge Robert Lasnik.

The case cite is Qpass, Inc. v. Kupass Corp., No. 08-198 (W.D. Wash.).

The Seattle Times’ Feb. 15 Retail Report offers a cautionary tale for business owners who adopt a trademark before talking to a trademark attorney:

”Zenith Vineyard in Oregon’s Willamette Valley might win the viticultural prize for having the most names in the shortest period. D.A. Davidson food-industry analyst Tim Ramey settled on Zenith after trademark disputes over his vineyard’s two other names.

“Two years ago, London-based Diageo opposed the first name, Belle Provenance Vineyard, saying it was too close to that of Provenance Vineyards in Napa Valley. Ramey then tested the name Belle Orgine Vineyard but ran into trouble with Albertsons over its private-label wine called Origin. Finally, last year he changed the name to Zenith Vineyard.

“‘We were never willing to hire a trademark attorney for $10,000, so that’s why we got all this wonderful on-the-job education,’ Ramey said.”

This is frustrating for a trademark lawyer to read — though obviously not as frustrating as it was for Mr. Ramey to live through. For one thing, it doesn’t cost $10,000 to talk to a trademark lawyer. But even if it did, think of all the goodwill that Mr. Ramey built up and then lost in his first brand, then built up and lost in his second brand, then had to build up again in his third (and hopefully final) brand. Not to mention all the money he invested in advertising, marketing, signage, and labeling for all three brands. I’m sure to Mr. Ramey, $10,000 now sounds like a bargain.

Learn from this gentleman’s mistakes. Invest in strategic trademark advice up front so you don’t waste precious resources later on.

On Feb. 8, the owners of Washington’s E.B. Foote Winery filed suit in the Western District against the owners of southern California’s Foote Printe Winery. Plaintiffs allege that defendants’ use of FOOTE PRINT WINERY and Design infringe plaintiffs’ registered trademarks, E.B. FOOTE and E.B. FOOTE WINERY and Design, which plaintiffs and their predecessors claim to have used since 1978.

Defendants have not yet answered plaintiffs’ complaint. The fact that their surname is Foote would seem to help their cause.

The case cite is Miller v. Foote, No. 08-00215 (W.D. Wash.).