Seattle Trademark Lawyer

The Wall Street Journal’s Law Blog reports on New Yorker Jennifer Cassetta’s fight with Home Box Office, Inc., over her 2006 application to register HEALTH AND THE CITY in connection with “physical fitness instruction.” (Law Blog’s first post on the story here.) HBO, owner of its “Sex and the City” television program and SEX AND THE CITY family of marks, had extended the time to oppose Ms. Cassetta’s application since June. However, its last extension lapsed on Nov. 18, clearing the way for Ms. Cassetta to get her registration.

Most of the reader comments applauded Ms. Cassetta’s triumph over the “suits” at HBO and its parent, Time Warner Inc. However, two thought Ms. Cassetta had brought the trouble on herself by selecting a trademark that trades off HBO’s. I’ve got to side with the latter view. Out of the infinite universe of possible trademarks, she had to pick one that brought to mind HBO’s famous mark? Sure sounds like dilution by blurring to me.

Last July, Bellingham, Wash.-based Homax Products, Inc. filed a declaratory judgment action against Dynacraft Industries, Inc. Both parties manufacture paint removal products that change color to signify when the paint they are applied to is ready to be stripped.

One of Dynacraft’s READY STRIP products

Homax’s complaint stemmed from a cease-and-desist letter it received from Dynacraft in May 2006, which allegedly claimed that:

• Homax’s use of NATURE’S OWN for its paint strippers infringes Dynacraft’s federally-registered mark, BACK TO NATURE;
• Homax’s use of the the phrase “Color Changing Paint Stripper” infringes Dynacraft’s common law trademark rights in COLOR CHANGING PAINT STRIPPER; and
• Homax’s “selection of verbiage” in two of its labels are “close in comparison with the copyrighted verbiage in Dynacraft’s ‘Ready Strip’ label.”

The complaint asked the Western District to determine that Homax “has not infringed Dynacraft’s alleged federal trademark registration for ‘Back to Nature’”; that “Dynacraft has no rights in the term ‘nature’ apart from any rights it has in the mark ‘Back to Nature’”; that “Dynacraft has no trademark rights in the generic and/or merely descriptive phrases ‘color changing’ and ‘paint stripper’”; that Homax has not infringed Dynacraft’s trade dress; and that Dynacraft has no protectable trade dress in the packaging of its products.

In Oct. 2006, Dynacraft answered Homax’s complaint and asserted counterclaims that Homax was indeed infringing its trade dress and trademark rights. (The answer is worth checking out for the color exhibits on pages 20 and 21 illustrating the products’ similar trade dress.)

The parties recently made nice. Today, they filed a Stipulation and Order of Dismissal stating they had settled their differences and agreed that all claims and counterclaims between them should be dismissed with prejudice.

The case cite is Homax Products, Inc. v. Dynacraft Industries, Inc., No. 06-990 (W.D. Wash.).

Plaintiff shoe maker California Board Sports, Inc., sued competing shoe maker Vans, Inc., for a declaration of non-infringement and non-dilution relating to Vans’ federal registration for the checkerboard pattern on its “Classic-Slip-On” shoe, or as I called them back in the day, “Spicoli Vans.”

Vans counterclaimed against CBSI for trademark infringement, unfair competition, and misappropriation under California law based on CBSI’s use of a checkerboard pattern on its “Serve Black” shoe.

Likelihood of confusion? Court says maybe
California Board Sports shoe (top) and Vans

CBSI moved for summary judgment on the grounds that Vans’ checkerboard pattern is generic or merely decorative; that the pattern is functional; that there is no likelihood of confusion; and that CBSI’s use of its checkerboard pattern is fair use.

On Nov. 6, the Southern District of California denied UBSI’s motion in its entirety. As to UBSI’s argument that the checkerboard pattern is generic or merely decorative, Judge Irma Gonzalez found that it did not serve the “What are you?” function that a generic mark serves. Instead, the court found that “a black and white checkerboard, while lacking in independent distinctiveness, falls into the class of designs eligible to acquire secondary meaning as a source-identifier.”

The court found that Vans had met its burden. Vans’ “evidence came in the form of a survey in which 45% of respondents — male purchasers of casual and athletic shoes who had purchased such shoes in the past three months or were likely to purchase such shoes in the next three months — misidentified a competitor’s slip-on shoe that copied the checkerboard pattern as a model coming from Defendant.” Even though UBSI objected as to the relevance of a study involving a shoe manufactured by a third party, the court found the study was relevant to the issue of whether consumers generally identify the checkerboard pattern with Vans.

As to functionality, the court found that while it was a close call, a genuine issue of material fact existed as to whether protection of the checkerboard pattern as a trademark would impose a “significant non-reputation related competitive disadvantage.” The court found that while the checkerboard is widely used in fashion generally, “Plaintiff has not connected the protection of the checkerboard pattern with competitive consequences by, for example, introducing evidence that consumers have an affinity for the checkerboard pattern unrelated to Defendant’s use of the pattern on its shoes.” Thus, the court concluded, the checkerboard pattern “acts as a source identifier” for Vans.

UBSI only made half-hearted arguments on likelihood of confusion. The court found: “Extended analysis on this issue is unnecessary. Even discounting the survey data as irrelevant for purposes of determining likelihood of confusion between Plaintiff’s and Defendant’s products, Plaintiff’s concession that many of the above factors favor Defendant suggests that a genuine issue of fact exists on the issue.”

Finally, as to fair use, UBSI essentially argued that because it did not choose its checkerboard pattern to deceive the public, its use is fair use. The court rejected the argument, finding “the principle of fair use and its protection of images in their primary descriptive sense has no relevance to the present controversy.”

The case cite is California Board Sports, Inc. v. Vans, Inc., No. 06-2365, 2007 WL 3276289 (S.D. Calif.).

Haute Diggity! On Nov. 13, the Fourth Circuit found doggie-toy maker Haute Diggity Dog, LLC did not dilute Louis Vuitton Malletier, S.A.’s famous LOUIS VUITTON trademark by selling chew toys called “Chewey Vuiton.” Rebecca Tushnet’s discussion here. This is an important decision under the now year-old Trademark Dilution Revision Act. It’s also a loss for the owners of famous trademarks. The International Trademark Association had filed an amicus brief in support of Louis Vuitton. The Fourth Circuit apparently was not persuaded.

Starbucks threatens Michigan’s Conga Coffee & Tea over the latter’s green concentric circle logo. Vegas Trademark Attorney reports on the dispute and chides STL for not beating him to the story.

Likelihood of confusion?

Imposters no more. In June, STL wrote about California’s proposed Truth in Music Advertising Act aimed at “imposter” bands. It’s now law. Starting Jan. 1, 2008, the Act generally will make it unlawful for “any person to advertise or conduct a live musical performance or production through the use of a false, deceptive, or misleading affiliation, connection, or association between a performing group and a recording group….” If your band’s called Sha Na Na, in California your name had better be Bowzer Bouman.

In a relatively rare trademark filing for the Eastern District of Washington, Acapulco Restaurants, Inc., brought suit against the owners of the Sunnyside, Washington, Mexican restaurant known as “Acapulco Restaurant.” Plaintiff alleged Antonia and Maria Chavez and the other unknown owners of the restaurant infringed plaintiff’s registered trademarks ACAPULCO, ACAPULCO MEXICAN RESTAURANT, and ACAPULCO RESTAURANT Y MEXICAN CANTINA in connection with restaurant and cantina services. After defendants proved they had changed the name of their restaurant to “El Faro,” plaintiff filed a notice of dismissal, which Judge Robert Whaley effected today.

The case cite is Acapulco Restaurants, Inc. v. Chavez, No. 07-3091 (E.D. Wash.).

Full disclosure: STL’s publisher represented the plaintiff in the case.