Seattle Trademark Lawyer

Plaintiff Just Enterprises, Inc., owns a federal registration for 1-800-JUSTICE for “legal referral services.” Defendant Phillips & Webster, PLLC, is a Woodinville, Wash.-based personal injury law firm. Just Enterprises alleges in its complaint filed in the Western District of Washington that P&W has licensed and currently uses 888-JUSTICE in connection with its law firm in a manner that is likely to cause confusion with Just Enterprises’ mark. P&W brought a motion to dismiss on grounds of fair use, among other defenses.

On Feb. 7, Judge Robert Lasnik denied P&W’s motion, but stayed the action based on a prior similar pending action in the Western District of Missouri.

The court’s opinion provides a nice discussion of the fair use defense with regard to telephone number trademarks:

“Defendant maintains that its use of 1-888-JUSTICE in its television advertisements is a fair use of plaintiff’s substantially similar 1-800-JUSTICE mark. The fair use doctrine is a defense to a trademark infringement claim. It is designed to protect the right of commercial competitors to use common, ordinary terms to describe their own goods and services, regardless of whether a trademark owner has chosen the term as a mark. It is clear that plaintiff cannot preclude competitors from using the word ‘justice,’ and plaintiff concedes as much in its response memorandum. But plaintiff argues that because its mark is 1-800-JUSTICE, a combination of numbers, symbols, and letters, and not just the word ‘justice,’ it has enforceable rights in the mark such that defendant’s use of a substantially similar phone number violates the Lanham Act. At least one court has found that the addition of a telephone prefix to a generic term does not give rise to an enforceable mark. 800 Spirits Inc. v. Liquor by Wire, Inc., 14 F.Supp.2d 675, 680-81 (D.N.J. 1998). Because defendant has not directly challenged the validity/enforceability of plaintiff’s mark, the Court will assume for purposes of this motion that plaintiff’s mark is valid and that the phone number defendant uses is the legal equivalent of plaintiff’s mark.

“The Court will also assume that 1-888-JUSTICE describes the services offered by defendant and therefore satisfies the descriptive element of the fair use doctrine. Nevertheless, dismissal pursuant to Rule 12(b)(6) is not appropriate. The fair use defense does not apply if defendant’s use of plaintiff’s mark is likely to cause consumer confusion as to the origin of the goods or services offered. In its complaint, plaintiff alleges that ‘defendant’s use of (888) JUSTICE and similar infringing phrases has caused actual confusion, mistake and deception.’ Defendant disputes this allegation and argues that no reasonable consumer viewing defendant’s television advertisements could be confused as to the origin of the services offered.

“In the context of this motion to dismiss, the Court must take the allegations of the complaint as true unless contradicted by the integral documents. This is not a case where a document considered by the Court flatly contradicts an allegation in the complaint. … Because plaintiff’s complaint adequately alleges consumer confusion, the motion to dismiss the Lanham Act claims is denied.”

The case cite is Just Enterprises, Inc. v. Phillips & Webster, PLLC, No. 07-1622 (W.D. Wash. Feb. 7, 2008) (Lasnik, J.).

The December 2007 issue of China Intellectual Property magazine had a nice write-up about the Starbucks Corp. v. Shanghai Xingbake Cafe Corp. Ltd. trademark infringement case that Shanghai’s No. 2 Intermediate People’s Court decided last year. The case (which STL discussed here) was important because it was the first time China’s new Trademark Law had been applied to a famous trademark.

Starbucks and Xingake logos
Photo credit: East Midlands China Business Bureau

Besides the detailed summary of the case, what I found most interesting was its explanation as to how the court calculated its RMB 500,000 ($64,000) damages award. Here’s an excerpt:

“The compensation claimed by the plaintiffs totalled RMB 1,060,000 including RMB 500,000 for economic losses and RMB 560,000 for reasonable expenses and legal fees. The defendants argued that the calculation of the plaintiffs’ profits was groundless, and thus should not be admitted. The defendants had no objection to the manner of collecting the notarization fee and legal fees, but held that the defendants’ lawyers spent too much time in collecting evidence proving the trademarks were well-known.

“The court held that it was on the basis of the profits made by the defendants from the infringement that the plaintiffs claimed compensation for economic losses. The amount of profits was calculated on the basis of the notarized statistics of the defendants’ customer volume. Although some factors on the formation of the defendants’ profits were taken into account at the time of calculation, the said amount is not completely objective and reasonable. Therefore, the court did not adopt this calculation for determining the amount of profits. The claim of the plaintiffs should be upheld for the retainer, notarization fee and translation fee as well as other fees. In the present case, the defendants committed trademark infringement and unfair competition. The overlapping parts should not be calculated repeatedly in the determination of compensation. Since it was hard to determine the profits made by the two defendants from the infringement and the losses suffered by the two plaintiffs from the infringement, the compensation should be lawfully determined as RMB 500,000 in view of the specific circumstances.”

The article’s author, Lv Guoqiang, should know what he is talking about. He is vice president of the Shanghai No. 2 Intermediate People’s Court.

When things are slow in Seattle…

…STL reports on trademark issues elsewhere. That’s what I’ve been doing for the last couple of days.

Here’s a new trademark decision from the Northern District of California. Plaintiff Common Sense Media, Inc., applied for a temporary restraining order against defendant Common Sense Issues, Inc., based on plaintiff’s allegations that defendant is infringing its registered trademarks, COMMON SENSE MEDIA and COMMON SENSE MEDIA and Design. In particular, plaintiff asked the court to temporarily restrain defendant from using its COMMON SENSE ISSUES mark or any similar designation.

On Jan. 25, Judge Claudia Wilken denied plaintiff’s application. She found that “CSM has not made a sufficient showing of likely success on the merits of its claims and of the immediate threat of irreparable harm to justify granting the relief it seeks. Although ‘Common Sense Issues’ is similar to CSM’s trademarks, the phrase, ‘common sense’ is not unique, and the field of registered trademarks including the phrase is crowded. Many of these marks consist of the phrase, ‘common sense’ followed by a generic descriptive word similar to the word, ‘issues.’”

The court also found “it does not appear that the services provided by CSM and CSI are so closely related that the public would reasonably believe they come from the same source. CSM is a nonpartisan organization that provides information services related to children and the media. CSI is a political action group that provides voters with information on the positions of presidential candidates with respect to particular issues. While CSM argues that nothing would prevent CSI in the future from providing information on issues related to children and the media, this possibility cannot serve as the basis for a present claim of trademark infringement.”

Finally, the court concluded plaintiff had not shown it would suffer irreparable harm if the requested temporary restraining order did not issue.

The case cite is Common Sense Media, Inc. v. Common Sense Issues, Inc., 2008 WL 220120, No. 08-0155 (N.D. Calif.).

Ultimate Creations, Inc., the licensing company owned by former professional wrestler Warrior (his legal name) brought suit in the District of Arizona against video game maker THQ Inc. over video games that use Ultimate’s WARRIOR registered trademark and and trade dress in the wrestler’s costume and image. THQ moved for summary judgment on grounds of fair use and the protectability of Ultimate’s unregistered trade dress. On Jan. 24, Judge Stephen McNamee found in Ultimate’s favor.

The court summarized the facts as follows:

“Warrior claims that his wrestling character was distinctive because he had long, flowing hair, wore arm pads and knee pads with a fringe, displayed on his costume and face a logo roughly in the shape of an upside-down ‘W’ — the logo, originated from ‘Parts Unknown,’ had an exceptionally muscular build, and used ‘signature’ moves in his wrestling performances.

“In 2003, the parties entered into negotiations to license intellectual property associated with Warrior. The draft license agreement included the use of Warrior’s ‘name, voice, facsimile signature, nickname, likeness, signature moves, entrance music, endorsement, right of publicity, and biographical sketch as it may appear in photographs, film, video clips, etc.’ However, the negotiations eventually terminated without entering into a contract.”

In the lawsuit, “Plaintiff alleges that Defendant began to use the likeness, moves, trade dress, marks, and other intellectual property associated with Warrior in its video game as early as October of 2003. Specifically, players may use the [Create-A-Wrestler] feature on the games to create a character that has a similar build, face paint, and logo symbol as Warrior, that uses the entrance and finishing moves found under the label ‘OUW’ that are similar to Warrior’s, that has the call name ‘The Warrior’ or ‘Warrior,’ and is from ‘Parts Unknown.’ Plaintiff contends that this feature causes confusion as to whether Plaintiff sponsored or is associated with the game.”

On THQ’s fair use defense, the court concluded: “Defendant argues that it used the name ‘Warrior’ descriptively and not as a mark, and thus its use was fair. Despite this assertion, the Court finds that a jury could find that neither the mark nor the similar symbol was used in good faith based on the prior, unsuccessful negotiations between the parties. What is clear is that the use of the name Warrior was not necessary to create or market the video games. Also, the combination of signature moves, the face paint, the similar symbol and ‘Warrior’ call name suggests that Defendant intentionally provided the tools for consumers to create a wrestler in the likeness of Warrior without regard to his intellectual property rights. Thus, a jury could conclude that Defendant’s use was an improper attempt to capitalize on the popularity of the Warrior wrestling character. As such, summary judgment on Plaintiff’s claim of infringement of registered trademarks and service marks is not proper.”

As for Ultimate’s trade dress claim, the court found: “Warrior’s trade dress involves the costume, symbol, face paint, and color combinations that make up the overall image of his wrestling character. Through the video games, Defendant has made these elements available to its consumers. The websites where players exchange information regarding how to create the Warrior wrestling character suggest that Warrior has a distinctive trade dress, which supports a finding of secondary meaning in Warrior’s overall appearance, and denotes possible confusion as to whether the video games are affiliated with Warrior himself. The elements of trade dress also appear to be non-functional, and the combination of the elements may be sufficient to create a distinctive trade dress that is capable of protection. Thus, taken as a whole, a reasonable person could find that Defendant has committed a violation of Plaintiff’s unregistered trademarks or trade dress under Section 43(a) by confusing consumers as to Plaintiff’s affiliation, connection, or association with Defendant’s games.”

The case cite is Ultimate Creations, Inc. v. THQ Inc., 2008 WL 215827, No. 05-1134 (D. Ariz. Jan. 24, 2008).

Palantir Technologies Inc. v. Palantir.net, Inc. is a trademark case from the Northern District of California concerning the parties’ right to use the trademark PALANTIR. For added color, the case involves a bit of lore from the Lord of the Rings.

As Judge Charles Breyer explained, a palantir is a “magical artifact from the Lord of the Rings trilogy. It is a stone that functions somewhat like a crystal ball; when one looks in it, one can communicate with other Stones and anyone who might be looking into them. People of great power can manipulate the Stones to see virtually any part of the world.”

Palantir.net’s predecessor began providing Web design, development, and database services nationally under the Palantir name in 1996. It acquired the palantir.net domain name in 1997. Palantir.net incorporated in 2000 and obtained a federal registration for PALANTIR in 2006. It sells to educational and cultural institutions, as well as financial, corporate, and governmental clients.

Palantir Technologies designs database software for the Central Intelligence Agency and a financial services company. It started offering products under PALANTIR in 2005. It is a small company but it purchases the word “palantir” from Google’s AdWords service and outranks Palantir.net in Google search engine results.

Palantir.net moved for a preliminary injunction enjoining Palantir Technologies from using PALANTIR in advertising. The Northern District of California concluded: “Palantir.net has easily proven the existence of serious questions going to the merits; indeed, the Court finds that it has also demonstrated a probable success on the merits given (1) the virtual identity of the marks, (2) the strength of the mark, (3) the relatedness of the goods, and (4) both parties’ use of the Internet. The balance of hardships also tips sharply in Palantir.net’s favor given its long-time use of the mark, the importance of the mark to word-of-mount referrals, and [Palantir Technologies’] recklessness in adopting the mark for its young business without first searching for any similar trademarks. Palantir.net’s motion for a preliminary injunction is therefore GRANTED.”

In imposing a preliminary injunction, the court required Palantir Technologies to place on all of its Web sites, including its blog, a “prominent disclaimer that advises viewers that it is different from Palantir.net and that advises viewers how to access Palantir.net.” The court also enjoined Palantir Technologies from “engaging in any Internet advertising under the palantir mark, that is, no more Google advertisements.”

The case cite is Palantir Technologies, Inc. v. Palantir.net, Inc., 2008 WL 152339, No. 07-3863 (N.D. Calif. Jan. 15, 2008).