Seattle Trademark Lawyer

Plaintiff AR Pillow, Inc., makes pillows designed to reduce acid reflux in infants.

Defendant Annette Cottrell owns pollywogbaby.com, is a former distributor of plaintiff’s pillows, and sells pillows that compete with plaintiff’s pillows.

Plaintiff sued Ms. Cottrell for trademark infringement, unfair competition, and defamation arising out of her use of plaintiff’s AR PILLOW trademark on her Web site along with the statements that she had “chosen to discontinue the product” and that the plaintiff’s pillow requires babies to bend their legs, which AR Pillow claims is false.

Plaintiff moved for a temporary restraining order or preliminary injunction seeking to stop such use.

On March 13, Western District Judge Richard Jones denied the motion, finding AR Pillow was not likely to succeed on the merits of its trademark infringement claim. In short, the court found there wasn’t much in Ms. Cottrell’s Web site that was likely to cause confusion with plaintiff’s trademark.

For example, on the “actual confusion” likelihood of confusion factor, the court noted: “Here, plaintiffs argue that there is evidence that at least one customer was actually confused by defendant’s use of the mark on her website. Plaintiffs allege that they ‘received a call from a customer seeking to cancel an order from an AR Pillow from pollywogbaby.com.’ Nothing in this allegation suggests that the customer was confused. Rather, it suggests that she was not confused because she knew that AR Pillow was different than pollywogbaby.com. Receiving unfavorable information about a product is not the same as consumer confusion.”

The case cite is AR Pillow Inc. v. Cottrell, No. 11-1962 (W.D. Wash. March 13, 2012) (Jones, J.).

Like the Gallo name in the wine business, the Korum name is well known in the car dealership business — in the south Puget Sound area, at least.

And like the Gallos, the Korums may differ as to who has rights to the family name in connection with the family business.

The Ninth Circuit famously laid the Gallos’ dispute to rest twenty years ago in E. & J. Gallo Winery v. Gallo Cattle Company, 967 F.2d 1280 (9th Cir. 1992).

The Western District of Washington may be just getting started with respect to the Korums.

Korum Automotive Group, Inc., owns a number of car dealerships in Puyallup under the KORUM trademark and trade name. The company was founded by Jerry Korum, who has used the mark for 41 years.

Salstrom Motors Inc. sells used cars under the name “Korum’s Auto Outlet” in Tacoma. Salstrom is owned in part by Andrew Jacobs.

In September, Korum Automotive sued Salstrom and Mr. Jacobs for trademark infringement, and moved for a preliminary injunction. On Jan. 17, Western District Judge Benjamin Settle granted the motion, finding that defendants’ use of KORUM has caused actual confusion and that Korum Automotive is likely to succeed on the merits of of its trademark infringement claim.

What’s interesting is that defendants argued that Bill Korum — who appears to be connected with defendants — shares ownership rights in KORUM with Jerry Korum, which undercuts Korum Automotive’s rights and/or gives rise to defenses of laches or acquiescence. Apparently, Bill Korum has used KORUM in connection with his own Nissan dealership located in Puyallup.

Still, those arguments didn’t sway the court. 

“Even if the Court were to agree with Defendants’ argument that Bill Korum shares some kind of right in the KORUM mark,” the court found, “Korum Auto Group has shown that Bill Korum’s interest in the mark likely extends only to the Puyallup Nissan dealership at which he has been using the Korum mark.”

The court added: “[E]ven assuming the Defendants have shown that Bill Korum has a laches and/or an acquiescence defense to trademark infringement, he is not a defendant in this case and Defendants have failed to show that his defense would extend to the use of the mark in connection with Salstrom or Defendants’ use of the KORUM mark.”

The case cite is Korum Automotive Group, Inc. v. Salstrom Motors Inc., No. 11-5690 (W.D. Wash. Jan. 17, 2012) (Settle, J.).

The District of Oregon took time out during the busy holidays to clarify what it means to have a bona fide intent to use.

That’s the statutory language an applicant swears to when filing a Section 1(b) application for federal registration — better known as an intent-to-use-based (ITU) application. It’s the alternative to a Section 1(a) use-based application and is a way to “reserve” a trademark registration for a mark that hasn’t yet been put to use.

But the applicant does need to have that bona fide intent to put the mark to future use.

In Bobosky v. Adidas AG, the District of Oregon found the applicant — an attorney — lacked that intent when he filed ITU applications to register WE NOT ME in connection with a wide variety of clothing products. Applicant W. Brand Bobosky’s applications matured to registrations when his attorney filed statements of use swearing that the marks had been put to actual use in commerce in connection with each item of apparel listed in the application.

When Mr. Bobosky contacted Adidas in connection with its use of the phrase in a basketball marketing campaign, Adidas pushed back, finding in its investigation that Mr. Bobosky had made no such use except on baseball caps. In response, Mr. Bobosky deleted all apparel items from his registration except for baseball caps. However, he filed a second ITU application that included shirts and footwear, which likewise was registered when he filed a statement of use.

Mr. Bobosky then sued Adidas for trademark infringement arising out of its use of the WE NOT ME phrase in a basketball marketing campaign.

Adidas moved for summary judgment on the ground Mr. Bobosky’s registrations were void ab initio (from inception) because he lacked a bona fide intent to use WE NOT ME on all the goods listed in his initial ITU applications.

The court noted that “[a]n applicant’s subjective testimony about his state of mind cannot demonstrate that he possessed a bona fide intent to use the mark. Typically, an applicant demonstrates his bona fide intent to use by producing ‘a written plan of action’ for a new product or service. If there is an absence of documentary evidence showing the applicant’s intent to use the mark, the burden shifts to the applicant to adequately explain that lack of documentary evidence. By itself, the absence of contemporaneous documents indicating an intent to use is sufficient to prove an applicant’s lack of bona fide intent.”

The court found Mr. Bobosky failed to meet these standards. With respect to his first registration, Mr. Bobosky admitted in depositions that he did not create the list of goods that appeared in his application, which the court found amounted to an admission that he lacked the bona fide intent to use the mark on each of the items, including hats.

Similar evidence led to a similar conclusion with respect to Mr. Bobosky’s second registration. Mr. Bobosky testified that in the same month he filed the application, he had “[n]o plans” to create WE NOT ME clothing or footwear because he had “[n]o need to,” since he had not yet acquired a trademark. Yet, he also testified that before filing that application, he had called two companies about producing WE NOT ME clothing and footwear, but did not receive written price quotes or proposals from them. The court found this testimony was contradictory and concluded that Mr. Bobosky did not have a bona fide intent to use his mark on shirts and footwear.

As a result, the court found his registrations were void and, therefore, could not support Mr. Bobosky’s infringement claim.

The case cite is Bobosky v. Adidas AG, No. 10-630-PK, 2011 WL 6888688 (D. Or. Dec. 29, 2011).

This town’s only big enough for one Blue Box, Blue Box Group says

I came across this story on a Seattle startup.

Bluebox Now is a Web-based marketing company. It had begun to build some momentum. It had a big customer and good prospects for outside funding.

Then it was hit with what one of its founders described as a “doozy” of a legal problem — it got a cease-and-desist letter from an app host called the “Blue Box Group,” also based in Seattle.

Bluebox Now says it’s changing its name.

The founder said they thought they could win the trademark dispute, but they couldn’t afford to find out.

“Instead of us paying $40,000 to fight this, we’re going to end up changing our name,” he said. “The blue box itself — the gift that we give — is still a key component to what we do. It’s just changing up the name, and we’re going to be OK with it.”

It’s good Bluebox Now was able to solve its problem and move on. It’s just too bad it had to suffer through what I imagine were at least a few stressful days and sleepless nights. All over an issue that could have been avoided through a careful trademark search.

It’s hard enough getting a new business off the ground. Don’t make it even more difficult by triggering a trademark dispute or having to abandon a name that’s starting to earn a good reputation.

I’ll be speaking at the “Fed Court Boot Camp Conference: How to Practice in Federal Court” CLE on Dec. 2.

One of my topics is preliminary injunctive relief. One thing I’m sure to address is the content of the injunction.

Federal Rule of Civil Procedure 65 controls. Among other things, it states that “[e]very order granting an injunction and every restraining order must … describe in reasonable detail — and not by referring to the complaint or other document — the act or acts restrained or required.”

Makes sense. The persons subject to the order need to know what it is they can and can’t do.

In trademark infringement cases, one would think that would include a prohibition on infringing the plaintiff’s trademark. But that’s not specific enough. Nor is it enough direction to tell the defendant not to use trademarks that are “confusingly similar” to plaintiff’s trademarks.

That’s what the temporary restraining order said in Reno Air Racing Ass’n., Inc. v. McCord, 452 F.3d 1126 (9th Cir. 2006). It enjoined the defendant from “making, manufacturing, [or] distributing … any goods, packaging or any other items which bear the [plaintiff’s trademarks], or any confusingly similar variations thereof.” Indeed, that’s what a great many orders in trademark infringement cases say. But the Ninth Circuit rejected that language as too vague.

Reno Air serves as a good reminder for those drafting proposed injunctions, at least in the Ninth Circuit.

“Ultimately, there are no magic words that automatically run afoul of Rule 65(d), and the inquiry is context-specific. ‘[T]he fair notice requirement of Rule 65(d) must be applied ‘in the light of the circumstances surrounding [the order’s] entry.’ This case not only points out the pitfall of incorporating documents by reference in a TRO but also the hazard of failing to identify with particularity the enjoined conduct in conjunction with specific identification and description of the trademarks. The recipient of a TRO, which usually takes effect immediately, should not be left guessing as to what conduct is enjoined. The benchmark for clarity and fair notice is not lawyers and judges, who are schooled in the nuances of trademark law. The ‘specific terms’ and ‘reasonable detail’ mandated by Rule 65(d) should be understood by the lay person, who is the target of the injunction. This is a circumstance, among many in the legal field, that cries out for ‘plain English.’

“Here, the TRO was issued the same day the action commenced, and the parties had no prior litigation history. … [T]he TRO’s prohibition — i.e. enjoining infringement of ‘the trademarks set forth in Exhibit F … or any confusingly similar variations thereof’ — would certainly have left a lay person scratching his head in confusion. The TRO failed to meet even the most minimal fair notice requirement.”

These findings led the Ninth Circuit to find the order, as drafted (likely by the plaintiff’s attorney), was not enforceable. Not a good thing if you’re back in court trying to get an order of contempt against a noncomplying defendant.

The lesson when drafting a proposed injunction is to be specific and write in plain English — good drafting tips in almost any context.