Seattle Trademark Lawyer

Seattle mortgage lender Evergreen Moneysource Mortgage Co., Inc., voluntarily dismissed without prejudice its trademark infringement and unfair competition claims today against Puyallup resident Joel Lundberg and others who offer competing mortgage lending services under the “Evergreen Mortgage” trade name and EvergreenHomeLoans.com domain name.

Evergreen’s complaint had alleged that defendants’ use of “Evergreen” infringed Evergreen’s federally-registered trademark, EVERGREEN MORTGAGE.

Interestingly, Evergreen’s complaint states: “Defendant admitted through their attorney, by letter dated October 24, 2005, addressed to a representative of Plaintiff that ‘[t]here is, of course, at least a possibility, if not a likelihood, of confusion among consumers about [plaintiff] Evergreen Moneysource and [defendant] Evergreen Mortgage being one and the same, but we believe that this is more hypothetical than real.’”

Evergreen was able to dismiss its case under Rule 41(a)(1)(i) because it filed its notice of dismissal before defendants served their answer.

The case is Evergreen Moneysource Mortgage Company, Inc., v. Lundberg, et al., No. 07-05127 (W.D. Wash).

On April 17, plaintiff Levi Strauss & Co. obtained a default judgment against defendant Kolonaki, Inc., on its dilution and trademark infringement claims brought in Levi Strauss & Co. v. Fox Hollow Apparel Group, LLC, et al., No. 06-3765, 2007 WL 1140648 (N.D. Cal.).

Levi originally brought suit against seven companies, all of which were dismissed except for Kolonaki, owner of the ”Georgiou” chain of retail clothing shops. Levi alleged Kolonaki began selling jeans and capri pants with stitching designs that were confusingly similar to Levi’s “Arcuate” design mark (pictured at right). Levi served Kolonaki but Kolonaki did not respond. As a result, the clerk of the court entered default against Kolonaki.

Levi then moved for default judgment. The court granted the motion and awarded Levi $75,600 in damages and $10,075.54 in attorneys’ fees and costs. The court also enjoined Kolonaki from manufacturing, distributing, or selling goods that infringe Levi’s “Arcuate” mark.

The court analyzed Levi’s dilution claim under the Trademark Dilution Revision Act under the “likelihood of dilution” standard that existed in the Ninth Circuit before Moseley v. V Secret was decided. In the court’s words:

“Section 1125(c) no longer requires the owner to demonstrate actual harm, a standard established by the Supreme Court in Moseley v. V Secret Catalog, Inc., 537 U.S. 418, 433-34 (2003). The revision changes the law to the pre-Moseley standard. Under that test, injunctive relief is available if a plaintiff can establish that (1) its mark is famous; (2) the defendant is making commercial use of the mark in commerce; (3) the defendant’s use began after the plaintiff’s mark became famous; and (4) the defendant’s use presents a likelihood of dilution of the distinctive value of the mark. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998).”

Applying this standard to the facts alleged in the Levi’s complaint, the court found “Plaintiff has shown that its trademarks are famous [though the court did not examine the factors set forth in 15 U.S.C. § 1125(c)(2)(A) to support such a finding]; Defendant is using the mark in commerce; Defendant’s use began after the mark became famous; and the use is likely to cause dilution.”

The court concluded its analysis in a strange fashion — by discussing infringement: “Furthermore, Defendant’s trademark infringement was willful. Defendant had prior knowledge of Plaintiff’s trademarks and the similarity between both companies’ products, but nonetheless continued to use the offending designs.” The court apparently believed these facts supported its finding of dilution by blurring. In my view, however, these facts are superfluous to Levi’s dilution claim. Moreover, the court unnecessarily confused its dilution analysis by introducing infringement principles to this distinct cause of action. The court instead should have examined the six factors indicating dilution by blurring set forth in 15 U.S.C. § 1125(c)(2)(B).

One final thought: it’s a mystery to me why an established company like Georgiou would allow a default judgment to be entered against it. Even if it had engaged in the wrongdoing the complaint alleged, a simple notice of appearance and minimal participation in the case likely would have lessened its worst-case scenario to a stipulated permanent injunction. Its doing so probably would have saved it $85,000.

On April 12, the Ninth Circuit affirmed the Central District of California’s finding that DISINFECTABLE is generic for disinfectable nail files and agreed that summary judgment dismissal of plaintiff’s trademark infringement claim was proper.

In Rudolph International, Inc. v. Realys, Inc., __ F.3d __, 2007 WL 1077176 (9th Cir.), plaintiff Rudolph and defendant Realys manufacture and sell abrasive nail files. California regulations require nail technicians to disinfect instruments used on multiple customers. In response to these regulations, Rudolph developed a line of files that could withstand the disinfection process. At that time, it stopped using the term “sanitizable” to describe its files and adopted the term “disinfectable,” which it used in connection with its established brand names “Soft Touch,” “Les Mirages,” and “Quadmetrics.”

Thereafter, Rudolph’s president, James Rudolph, was quoted in a trade journal saying that “[t]he word ‘sanitizable’ as it relates to nail and foot files needs to be abandoned forever. … The word to adopt is ‘disinfectable.’”

At the behest of its largest customer, Realys followed suit and started calling its files “disinfectable” instead of “sanitizable.” Rudolph sent Realys a cease-and-desist letter demanding that Realys stop using the term. When Realys refused, Rudolph sued.

Rudolph argued the district court erred in dismissing its trademark infringement claim because the mark should have been classified as “suggestive” and protectable, rather than “generic” and unprotectable.

However, the Ninth Circuit agreed with the district court’s finding that “No imagination or mental leap is required to understand that ‘disinfectable’ in the nail file industry means ‘capable of being disinfected.’”

The Ninth Circuit concluded: “The term ‘disinfectable’ relates to the type of product rather than its source and consequently falls on the ‘what-are-you’ side of the genericness test. In contrast, the source of the product is identified by Rudolph’s established brand names of ‘Soft Touch,’ ‘Les Mirages’ and ‘Quadmetrics.’ The district court correctly held that Rudolph failed to introduce sufficient evidence to meet its burden of persuasion that ‘disinfectable’ is not a generic mark. This question does not present a genuine issue of material fact and is appropriate for summary judgment notwithstanding our reluctance to take such action in trademark cases.”

In August 2006, Microsoft Corp. brought suit in the Western District against “John Does 1-217” for alleged cybersquatting, trademark infringement, and other trademark related causes of action. Microsoft described the unknown defendants as the “registrants, assignees, traffickers, and users of numerous Internet domain names that contain or consist of Microsoft’s marks and/or intentional misspellings of Microsoft’s marks.” Microsoft further alleged that “Defendants’ Websites contain numerous advertisements and/or hyperlinks to a variety of products and services” that enable the John Doe defendants to profit from their infringement. The marks defendants allegedly infringe include the registered marks HALO, MICROSOFT, MS, MSN, WINDOWS, WINDOWS XP, XBOX, and XBOX LIVE.

After conducting third-party discovery, Microsoft amended its complaint to name defendants Sule Garba of Shaker Heights, Ohio; Darin Grabowski of Oak Creek, Wisconsin; and Yi Ning of Boston.

On April 11, Western District Judge Ricardo Martinez entered a Stipulated Order Entering Permanent Injunction enjoining Mr. Ning from using or infringing Microsoft’s marks or registering domain names that are identical or confusingly similar to Microsoft’s marks. The order does not dismiss Microsoft’s claims against Mr. Ning but such claims presumably will be dismissed in due course. The stipulated order does not affect Microsoft’s claims against the remaining defendants.

The case is Microsoft v. Garba, No. 06-1192.

Bellevue shoemaker Topline Corp. has a case going in the Western District against ten shoe sellers for federal trademark infringement, false designation of origin, common law trademark infringement, and violation of Washington’s Consumer Protection/Unfair Business Practices Act. Topline claims it sells its women’s shoes to Nordstrom, Macy’s, Victoria’s Secret, Kohl’s, and small fashion boutiques under the registered trademark FLIRT (Reg. No. 2283566). Topline alleges that defendants infringe its FLIRT mark by selling women’s shoes bearing the confusingly similar mark FLURT. 

Defendant Houser Shoes recently admitted as much. On April 4, the Western District entered a Consent Decree and Dismissal in which Houser admitted that its FLURT shoes infringed Topline’s FLIRT mark and agreed to an injunction enjoining it from “purchasing, selling or marketing footwear bearing the marks FLURT, GOTTA FLURT, or other colorable imitations of Plaintiff’s FLIRT trademark.”  

In exchange, Topline agreed to dismiss its claims against Houser without prejudice. Both parties agreed to bear their own costs in the litigation. The Consent Decree refers to a settlement agreement but does not disclose the terms. Judge Robert Lasnik entered the order.

Today, Topline and another defendant, Spoiled Rotten Boutique, submitted an identical Consent Decree with respect to Spoiled Rotten. Judge Lasnik presumably will enter it in short order.

The case is Topline Corp. v. Flurt Footwear, No. 07-00318.