Seattle Trademark Lawyer

You heard it here first (possibly): Cisco Systems, Inc., sues Apple Inc. for infringing the trademark IPHONE. Cisco’s complaint, filed two hours ago in the Northern District of California, is available here.

Bellevue clothing designer Derek Andrew, Inc., won a copyright and trademark infringement bench trial in the Western District of Washington against defendant New York clothing designer Poof Apparel Corp. Western District Magistrate Judge James Donohue entered his findings of fact and conclusions of law on December 22.

The Western District entered a default judgment against Poof in June, which the court refused to set aside. The trial, therefore, was limited to damages and equitable relief.

The claims turned on Poof’s use of a heart design on “hangtags” it attached to its garments, which the court found constituted a false designation of origin under 15 U.S.C. Sec. 1125(a) in light of the “twisted heart” design hangtags that Derek Andrew had previously used.

The court found that Poof’s violation was willful. Therefore, in addition to $15,000 in statutory damages it awarded under the Copyright Act, the court ordered Poof to disgorge the $685,307.70 in profits it had received from infringing sales.

The court also found that Poof’s infringement met the Ninth Circuit’s “malicious, fraudulent, deliberate or willful” standard for “exceptional” cases under the Lanham Act and awarded Derek Andrew its reasonable attorney’s fees. The amount will be determined following Derek Andrew’s fee application, which the court requested within 14 days.

Finally, the court imposed a permanent injunction enjoining Poof from directly or indirectly infringing the “twisted heart” hangtag that was both the subject of the suit and Derek Andrew’s copyright registration.

The Western District’s PACER database flagged this case as one primarily involving copyright rather than trademark issues, so it did not come to my attention until Westlaw published the court’s findings of fact and conclusions of law. PACER is an excellent resource, but it does have its shortcomings.

Starbucks Corp. won a trademark infringement lawsuit against China-based coffee company Shanghai Xingbake Cafe Corp. Ltd., news services reported yesterday. The decision affirms a lower court’s December 2005 decision in Starbucks’ favor, the first under a new statute protecting famous trademarks in China.

Forbes.com states the Chinese company “used a green logo similar to that of Starbucks, while the Chinese character ‘xing’ means ‘star’ and the characters ‘ba’ and ‘ke’ sound like ‘bucks’ when used together.”

The Shanghai Municipal Higher People’s Court fined Shanghai Xingbake Cafe 500,000 yuan ($64,000), ordered the company to change its name, and required it to apologize to Starbucks in the Xinmin Evening News, a Shanghai newspaper.

In 2005, The Seattle Times quoted Starbucks Chairman Howard Schultz as saying he was “cautiously optimistic” that Starbucks would win its suit, which he characterized as “an important test case for China.”

A detailed description of the underlying case (with photos of the competing logos) is available here.

Google Inc. states its policy for dealing with trademarks in its AdWords search engine ads here and here. Among other things, Google explains how trademark owners can stop unauthorized advertisers from using their trademarks in Google ads and keywords, how trademark owners can complain about the unauthorized use of their marks, and how they can approve of advertisers’ trademark use.

Seattle Trademark Lawyer’s December 21 post mentioned that Microsoft has been a prolific plaintiff in the last two years, suing dozens of “John Doe” defendants for alleged trademark infringement. After reading this post, Microsoft Internet Safety Enforcement Attorney Aaron Kornblum put me on to an article he wrote detailing how Microsoft goes after anonymous spammers and phishers.

In a nutshell, Microsoft sues John Doe defendants in the Western District of Washington, learns their true identities through subpoenas on companies with whom the John Does do business (PayPal, Yahoo, and Network Solutions being the most frequent), and then amends its complaints to name the defendants based on the identity information the subpoenas provide.

This is an interesting read. Thanks, Aaron!