Seattle Trademark Lawyer

The Vegas Trademark Attorney has a nice write-up on the Ninth Circuit’s Nov. 5 decision in Perfumebay.com Inc. v. eBay Inc. Here’s the rub:

“The district court did not clearly err in finding that conjoined forms of ‘perfumebay’ created a likelihood of consumer confusion. The district court, therefore, properly enjoined Perfumebay from utilizing such infringing marks. The district court also did not clearly err in finding that the non-conjoined forms of Perfumebay’s mark, such as Perfume Bay, did not create a likelihood of confusion.

“However, the district court erred in holding that Perfumebay’s marks did not produce a likelihood of dilution, as the marks are nearly identical to eBay’s mark. The district court also erred in finding that eBay acted with unclean hands in its advertising, as the record did not affirmatively demonstrate the requisite intent to deceive.”

The case cite is Perfumebay.com Inc. v. eBay Inc., Nos. 05-56794 and 05-56902.

Easing my way back into blogging mode, I can happily report that Yucatan’s colonial capitol, Merida, provided some STL fodder. One afternoon on infringement safari, I bagged some worthy game: a suspiciously greyhound-like logo on a city bus, and a more-than-suspicious imitation of VANS shoes called VEEENS.

Pretty soon, the hunter realized, he’d need to retreat back to the cool climes of Seattle and get back to work.

On Oct. 16, Western District Judge Ricardo Martinez awarded franchisor HomeTask Handyman Services, Inc., a preliminary injunction against its former franchisee, Paul Szewczyk, based on Mr. Szewczyk’s covenant not to compete. The court, however, denied HomeTask’s motion to the extent it was based on claims of trademark infringement, dilution, and false designation of origin. Since my firm is involved in the case, that’s all I’ll say.

The case cite is HomeTask Handyman Services, Inc. v. Szewczyk, No. 07-1283 (W.D. Wash.).

After seven days of trial, a Central District of California jury found on Oct. 11 that plaintiff/counterclaim defendant SLB Toys USA, Inc., had diluted defendant/ counterclaim plaintiff Wham-O, Inc.’s YELLOW color mark for “sliding surface of water slide toys.” The jury also found that SLB Toys had willfully infringed Wham-O’s YELLOW color mark, whether it was registered or unregistered, and engaged in false advertising. The jury awarded Wham-O $3.6 million and recommended that Judge Ronald Lew enhance their award by an additional $2.4 million. The jury found for SLB Toys on Wham-O’s claim that SLB Toys had infringed a separate “yellow/blue water slide” trademark. (See Vegas Trademark Attorney’s discussion of the decision here.)

With regard to dilution, a subject in which I am particularly interested, the jury found as follows:

CLAIM 4 — DILUTION

On the claim of Wham-O against SLB for dilution of the trademark (registered or unregistered) for the color YELLOW on the sliding surface of water slide toys, we, the jury, find in favor of (check one):

Wham-O    X    

SLB            

If you found in favor of Wham-O on claim 4, do you find that SLB diluted the YELLOW trademark willfully?

Yes:     X    

No:            

Thanks to TTABlogger John Welch for bringing this case to my attention.

The case cite is SLB Toys USA, Inc. v. Wham-O, Inc., No. 06-1382 (C.D. Calif.).

I spent my undergraduate days at a Catholic college in aptly named Collegeville, Minnesota, where Minnesota Public Radio was founded. Therefore, I was more interested than perhaps most Seattle-based trademark lawyers to learn that MPR had brought suit against another radio station for alleged infringement of MPR’s trademark, THE CURRENT. MPR, home of Garrison Keilor’s “A Prairie Home Companion” radio show, filed suit at the end of last year in the District of Minnesota against Virginia Beach Educational Broadcast Foundation, Inc., d/b/a Positive Hit Radio The Current, based on Positive Hit Radio’s alleged use of THE CURRENT and CURRENT FM trademarks in connection with radio services. MPR’s false designation of origin, cybersquatting, unfair competition, and common law trademark infringement claims are based on MPR’s alleged ownership of THE CURRENT, LIVE CURRENT, CROSS CURRENTS, THE CURRENT HOOTENANNY, and THE CURRENT FAKEBOOK trademarks, and the parties’ alleged competition for radio consumers in Minnesota and elsewhere through the Internet. This came to my attention because the case was transferred to the Eastern District of Virginia on convenience grounds on October 4.

This isn’t earthshaking news, but it nonetheless strikes me as an interesting example of how the Internet has changed what used to be an inherently local service into one that is provided nationally and internationally. Ten or twelve years ago, I can’t imagine that MPR would care if a radio station in Virginia ripped off its trademark, if that’s indeed what happened here. Now, I can see MPR’s point. It will be interesting to see how the court analyzes likelihood of confusion in this situation. One development of interest is that at the time MPR filed its complaint, none of its trademarks was federally registered. Since that time, however, THE CURRENT has matured into Reg. No. 3301681. Since it was filed on an intent-to-use basis, MPR will have a priority date of December 6, 2004, the date on which it filed the application. If Positive Hit Radio did not make use of THE CURRENT until after March 19, 2005, when it registered currentfm.com, then MPR would have a new, stronger claim and priority to boot.

The case cite is Minnesota Public Radio v. Virginia Beach Educational Broadcast Foundation Inc., No. 06-4667 (D. Minn.) and No. 07-431 (E.D. Va.).