Seattle Trademark Lawyer

King County Superior Court has granted Texas-based Detex Corp. summary judgment imposing a permanent injunction over Israel-based Detex Security Systems, Inc. The injunction continued the temporary restraining order and Agreed Order Granting Preliminary Injunction the court had previously entered enjoining defendant from using DETEX as a trade name in connection with the marketing of its stock and from using detexsec.com as its domain name.

Plaintiff stated in its complaint that it manufactures and sells security systems, while defendant “owns certain technology for a handheld explosive detection device called the Milliscope.” Plaintiff alleged that defendant’s use of DETEX and detexsec.com was likely to cause consumer confusion. In particular, plaintiff alleged that defendant hired a third party to engage in “mass dissemination and distribution of a solicitation” seeking investors. Plaintiff stated that persons who received the solicitation mistakenly contacted plaintiff, believing it to be defendant. Several such persons allegedly “attacked” plaintiff for defendant’s solicitation tactics and “declared their intention not to do business” with plaintiff as a result.

The parties agreed in the order that plaintiff had sustained $20,000 in damages and defendant would pay off the judgment in installments.

Last week was an interesting week in the blawgosphere.

The Trademark Blog wrote about Horphag Research Ltd. v. Garcia, the Ninth Circuit dilution case Seattle Trademark Lawyer recently discussed.

The TTABlog reported that the Trademark Trial and Appeal Board has lifted its prohibition on citing unpublished TTAB decisions. Now, “a decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.” The TTAB’s notice, which appeared in the January 23 Official Gazette, is available here. This is good news for TTAB practitioners.

The 43(B)log and the TTABlog both discussed Google’s RICO lawsuit against Leo Stoller’s companies. In it, Google alleges that Mr. Stoller’s companies “are engaged in a scheme of falsely claiming trademark rights for the purpose of harassing and attempting to extort money out of legitimate commercial actors, both large and small,” including attempts to settle an alleged dispute over the GOOGLE trademark for $150,000. The New York Times and many others have written about Mr. Stoller’s alleged practice of purporting to own trademarks in gross, opposing third-party efforts to use or register such marks, and offering to “settle” with those parties. Mr. Stoller’s alleged practices have local implications. He has offered to “settle” with at least one Seattle company and probably others. It will be interesting to see what happens with Google’s suit.

Finally, TMBrandingCap discussed O’Charley’s Management Co., Inc. v. Darden Concepts, Inc., in which plaintiff alleged that defendant’s ROCKY RIVER trademark for restaurants is confusingly similar with plaintiff’s STONEY RIVER mark for restaurants. The lawsuit was filed last week in the Middle District of Tennessee.

Three things come to mind. First, the restaurant vs. restaurant trademark suit happens everywhere, including Seattle. Just last week, STL reported on the lawsuit over MOONSTRUCK and MOONRAY for cafes. In recent memory, the Western District has also seen disputes over IN-N-OUT BURGERS and IN-N-OUT PIZZA, and THE ROCK WOOD FIRED PIZZA & SPIRITS and ROCKO’S BRICK OVEN PIZZA. Second, these disputes are not limited to restaurants. The lessons they provide apply equally well to other trademark uses. And third, these disputes are easy to avoid. As Neil Melliship of the Canadian Law Blog recently wrote in the context of real estate development, these disputes “can normally be avoided by conducting due diligence through comprehensive trademark searches before committing to a particular mark for a new project.” This means trademark lawyers need to educate clients (and other lawyers in their firm) about trademark issues early on — and not only the clients with big trademark portfolios. It means talking with all clients, from the owner of a one-location restaurant to the hotel chain that’s planning its next development.

Let’s hope this coming week’s events are just as interesting.

On January 23, Alberta-based Internet employment advisor FabJob Inc. filed a Notice of Dismissal with Prejudice terminating its cybersquatting and trademark infringement claims against Wyoming-based domain name registrar Compana, LLC. FabJob’s complaint, filed in the Western District in October, alleged that Compana had registered fabjobs.com, which was likely to cause confusion with FabJob’s registered trademark FABJOB. The dismissal appears to be part of a larger settlement between the parties.

FabJob’s complaint alleged that Compana “is engaged in a domain name warehousing business whereby it registers domain names which are identical or similar to established trademarks but that are misspelled” or contain additional words, letters or the plural form of the same word. The complaint states “Compana or its registrant then establishes a web site with that domain name and sells the opportunity for ‘sponsors,’ including the trademark owner’s competitors, to advertise and post links to their sites.” According to the complaint, a reverse IP lookup for Compana’s IP address shows a total of 656,010 registered domain names, including starbudks.com, washingtionstate.com, seattelmariners.com, seattelseahawks.com, and seattletitmes.com.

FabJob’s complaint states FabJob filed a Uniform Domain Name Dispute Resolution Policy action with the World Intellectual Property Organization last year asking that fabjobs.com be transferred to FabJob, but its request was denied. In response, Compana filed a lawsuit in Texas state court requesting a declaratory judgment, injunctive relief and damages it allegedly suffered as a result of FabJob’s WIPO filing. FabJob removed the case to the Northern District of Texas, where it is pending today.

But not for long. On January 23, the parties asked the Northern District of Texas to dismiss the action, which coincides with the dismissal notice FabJob filed in the Western District. In their proposed Agreed Judgment, FabJob and Compana jointly represented that Compana had not violated the Lanham Act or the UDRP, or infringed FabJob’s common law trademarks or other intellectual property rights. Not surprisingly, the terms of the parties’ apparent settlement giving rise to these dismissal requests are not publicly available.

Portland-based Moonstruck Chocolate Co. filed a trademark infringement suit January 19 against Duvall, Washington-based Moonray Espresso Corp. and Michael Snow, its alleged owner. Plaintiff’s complaint, filed in the Western District, alleges that defendants’ MOONRAY name, mark, and “moon” design used in connection with their coffee house infringe plaintiff’s MOONSTRUCK name, federally-registered marks, and “moon” design used in connection with plaintiff’s chocolates and “chocolate cafes.” The case was assigned to Judge James Robart.

In a rare trademark opinion, the Washington State Court of Appeals yesterday found that Defendant/Respondent 3M Co.’s SCOTCHGARD trademark did not infringe Plaintiff/Appellant Stongard, Inc.’s STONGARD or STÔNGÄRD trademarks.

After terminating Stongard in 2003 as a preferred distributor of its SCOTCHCAL automotive paint protection film product, 3M rebranded its product as SCOTCHGARD, a well-known mark 3M had used with other products but had not previously used with film. Stongard interpreted the change as a deliberate attempt to infringe its STONGARD and STÔNGÄRD word and design marks and filed suit.

After a six-day bench trial, King County Superior Court Judge James Cayce determined that plaintiff’s STONGARD and STÔNGÄRD word marks were generic or descriptive without secondary meaning. He found the protection Stongard had obtained through federal registration only extended to its a pink-and-blue logo in a stylized font. Therefore, he limited his likelihood of confusion analysis to the parties’ design marks. Comparing the parties’ logos, Judge Cayce found that confusion was not likely. 

The Court of Appeals affirmed that finding. Its unpublished decision, titled 3M Co. v. Stongard, Inc., No. 56911-2-I, 2007 WL 93227 (Wash.App. Div. 1), is available here.