Seattle Trademark Lawyer

On February 13, the Ninth Circuit reversed the Central District of California in the trademark infringement case of The Grateful Palate Inc. v. Joshua Tree Imports, LLC, No. 06-55855, 2007 WL 470596 (9th Cir.) (unpublished) (no case link available). In this case, the defendant importer purchased the plaintiff’s Australian wine from a distributor. The plaintiff allegedly had authorized some of its wine for import to the U.S. but did not authorize the rest. The defendant allegedly pre-sold the unauthorized wine to U.S. purchasers at a discount anyway, which the plaintiff claimed violated its trademark rights.

Under the “first sale” doctrine, a product sold without the mark holder’s authorization is deemed non-genuine for Lanham Act purposes. After that first sale, however, the trademark holder may establish infringement only if it demonstrates that the goods are materially different.

The district court believed that Ninth Circuit precedent required it to find the unauthorized first sale of the trademarked wine, without more, did not constitute per se trademark infringement. Since the plaintiff could not show the unauthorized wine was materially different from the authorized wine, the district court denied plaintiff’s motion for preliminary injunction. The Ninth Circuit vacated that decision and remanded it to the district court, finding whether an unauthorized first sale constituted per se infringement in the Ninth Circuit remains an open question.

The 43(B)log today posted a nice analysis of the Western District’s denial of defendants’ motion for partial summary judgment on plaintiffs’ trademark claims in Bach v. Forever Living Products U.S., Inc., No. 05-970, 2007 WL 445447 (W.D. Wash). 

Plaintiffs in the case allege that “Defendants have used a copyrighted photograph from Jonathan Livingston Seagull as their corporate logo, and have used copyrighted excerpts from Jonathan Livingston Seagull, and the copyrighted story and character of Jonathan Livingston Seagull in their advertising, communications with their independent distributors, in their sale and distribution of FLP products, and in the advertising, marketing and promotion of Forever Resorts recreational properties.”

Judge Marsha Pechman’s February 6 order is available here.

On Friday, The Broken West played live on the air on KEXP, a great indie-rock station, which also happens to be located right here in Seattle. I hadn’t heard them before, but their story was familiar. Until last year, they were known as The Brokedown. Then they received a cease-and-desist letter from a band called The Brokedowns. With 1,000 copies of their debut album already pressed, they went into “panic mode” and changed their name to The Broken West.

The Broken West: They Learned Trademark Law the Hard Way

“I think we probably could have fought it, but it would have been really expensive and time consuming,” frontman Ross Flournoy said.

Up-and-coming bands seem to re-live this story again and again. Blink 182 was Blink before another group named Blink threatened to sue. Dinosaur Jr added the suffix after the San Francisco band The Dinosaurs protested. Looking no further than Seattle, rockers Kill Sybil say they changed their name from Sybil because of an R&B singer with the same name; ECU reportedly changed its name from ICU because New York-based Intensive Care Unit threatened to sue; and Nirvana (Seattle) settled a case brought by Nirvana (UK) so it could keep its legendary name. 

There is a definite pattern here. Unfortunately for the upstart bands, the cease-and-desist letter comes after an album is released, a tour has begun, or some amount of name-recognition has taken hold. That makes the name change that much more painful. It’s admittedly not realistic to expect a new group to hire a trademark lawyer before starting to play local venues. But it should not be unrealistic for a band to seek trademark advice before putting out its first disc or going on its first tour. At the very least, a careful Internet search for similar names could save band members anguish down the road.

Take a tip from Fall Out Boy, who was nominated for “Best New Artist” at last year’s Grammy Awards. It re-named its song “My Name is David Ruffin and These Are the Temptations” to “Our Lawyer Made Us Change The Name Of This Song So We Wouldn’t Get Sued.” Why? Because it wanted to avoid a lawsuit from the estate of ex-Temptations singer David Ruffin. And, as The Wall Street Journal Law Blog reported, because the lead singer’s dad is a lawyer.

Lucky for them. As I’m sure The Broken West would tell you, a little trademark due diligence on the front end can avoid a painful name change later on.

The same holds true for any new business or product.

Lacey, Washington-based Univera Lifesciences, Inc., has brought a declaratory judgment action in the Western District against Texas-based Bluebonnet Nutrition Corp. The question is whether Univera’s use of AGELESS in connection with dietary supplements is confusingly similar with Bluebonnet’s use of AGE-LESS SKIN FORMULA for nutritional supplements. Univera states it sells its supplements through a multi-level distribution network and Bluebonnet sells its supplements through retail stores.

Univera brought suit after receiving a cease-and-desist letter from Bluebonnet alleging confusing similarity. Bluebonnet has not yet answered the complaint.

The case is captioned as Univera Lifesciences, Inc. v. Bluebonnet Nutrition Corp., No. C06-5721. It is situated in Tacoma and assigned to Judge Ronald Leighton.

When things are slow in Seattle, STL looks elsewhere for trademark law cases worth reporting. Now is one of those times. Fortunately, Seattle University law student Michael Rice — who publishes the software-oriented Coderights law blog in his spare time — put me onto a new dispute out of the Eastern District of North Carolina. Skin care product maker Burt’s Bees, Inc., has sued rival Beenaturals, Inc., for trademark and trade dress infringement, dilution, and unfair competition. Burt’s alleges that Beenaturals is “copying or imitating marks identical or confusingly similar to Plaintiff’s BABY BEE^® word mark, bee and hive design marks, and trade dress, and displaying the same alone or in combination on packaging and other promotional materials for Defendant’s line of natural skin care and related products.” The focus of Burt’s complaint is Beenaturals’ “Bebe bee” products.

On January 19, Beenaturals removed the case from Wake County superior court. It denies consumer confusion is likely and alleges it created and adopted its trademarks in good faith and without any intent to trade on Burt’s reputation. 

The case is captioned as Burt’s Bees, Inc. v. Beenaturals, Inc., No. 07-cv-00018-D (E.D.N.C.).