Seattle Trademark Lawyer

Who knew New England was so wild? On November 28, the District of Maine denied Wild Willy’s Holding Company’s motion for preliminary injunction based on the alleged likelihood of confusion between plaintiff’s WILD WILLY’S BURGERS registered trademark used in connection with plaintiff’s Maine, Massachusetts, and New Hampshire family restaurants, and defendants’ use of WILD WILLY’S in connection with its Wild Willy’s Ale Room lounge in Maine. 

Applying the First Circuit’s multifactor test set forth in Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 817 (1st Cir. 1987), the District of Maine found that despite the similarity in marks and closeness in the businesses’ proximity, the classes of prospective purchasers were different, there was no evidence of actual confusion, and there was no persuasive evidence that defendants intended to trade on the plaintiff’s goodwill. “On this record,” the court found, “there is little likelihood of confusion.”  In STL’s view, this one could have gone either way. Until trial, however, at least one New England bar can stay wild. See Wild Willy’s Holding Co., Inc. v. Palladino, No. 06-111-PC.

THE WINDSHIELD DOCTOR word mark infringes the GLASS DOCTOR word mark when used in connection with auto glass repair services, the Fourth Circuit found on November 30 in Synergistic Int’l v. Korman, No. 05-2295 (published). In so finding, the court affirmed the Eastern District of Virginia’s grant of summary judgment to Synergistic International, owner of the GLASS DOCTOR mark, but vacated the district court’s award of $142,000 in damages.

The district court’s award represented proprietor Jody Korman’s profits, less certain costs and deductions during the period of infringement. The district court stated that it had balanced the equities of the case in making the award, but did not specify the factors that it had considered, other than Korman’s net profit. The Fourth Circuit found that the district court’s failure to do so was error in light of the Lanham Act’s directive that a successful plaintiff be awarded lost profits, damages, and costs “subject to the principles of equity.” See 15 U.S.C. Sec. 1117(a). The Fourth Circuit adopted the equitable factors used in the Third and Fifth Circuits, namely:

“(1) whether the defendant had the intent to confuse or deceive, (2) whether sales have been diverted, (3) the adequacy of other remedies, (4) any unreasonable delay by the plaintiff in asserting his rights, (5) the public interest in making the misconduct unprofitable, and (6) whether it is a case of palming off.”

Korman argued that the district court specifically found that she neither acted in bad faith nor was her use of the infringing mark “malicious, fraudulent, willful or deceitful.” The Fourth Circuit concluded that a “lack of willfulness or bad faith should weigh against an award of damages being made, but does not necessarily preclude such an award.” Instead, the six-factor test should control, which the Fourth Circuit directed the district court to apply in its discretion on remand.

On November 22, Western District of Washington Judge Marsha Pechman granted a TRO against the Open Design Alliance, a Washington corporation, over ODA’s computer-aided design (“CAD”) software. In doing so, she found that plaintiff Autodesk, Inc., had demonstrated both a strong likelihood of success on the merits and the possibility of immediate, irreparable injury from ODA’s simulation of Autodesk’s “TrustedDWG” technology.

Autodesk alleged in its motion that its software uses a proprietary file format known as “DWG” for storing user design data files, similar to the “.doc” format used for Microsoft Word files. Its motion states that Autodesk introduced the TrustedDWG authentication mechanism into its AutoCAD program to help users identify the source of Autodesk’s DWG files by adding an identifying watermark and a code of string files. Autodesk alleged that this mechanism prompts its AutoCAD program to authenticate Autodesk data files and to display the message: “Audodesk DWG. This file is a Trusted DWG last saved by an Autodesk application or Autodesk licensed application.” Autodesk argued that ODA is marketing software libraries that simulate this authentication process and display the same message when users open files created by ODA’s libraries, amounting to infringement of Autodesk’s federally-registered trademark, AUTODESK, as well as false designation of origin.

ODA states that it is an independent, non-profit corporation with 3,000 members dedicated to making DWG an open standard format for storing drawing data. ODA responds in its opposition brief that its computer utility allows otherwise incompatible design programs to read from and write to computer drawings that are saved in the .dwg format. Its brief states that since 1998 independent companies have made programming tool kits for reading and writing DWG files. It argued that the “new twist” presented in the lawsuit is Autodesk’s introduction of its TrustedDWG Technology in its AutoCAD 2007 software, which generates a warning message whenever users open a DWG file that was created on any CAD program other than Autodesk. ODA argued that ”[t]his message falsely warns the user that the DWG file may be ‘unstable,’ which can be particularly worrisome to a designer who has spent dozens or hundreds of hours creating a design.” In September, ODA announced that its DWG libraries could support Autodesk’s TrustedDWG functionality. Since that time, ODA stated, “DWG files opened in Autodesk with ODA’s newest version of its conversion utility do not generate Autodesk’s false warning message regarding instability.”

The TRO temporarily enjoins ODA from “using or simulating Autodesk’s TrustedDWG technology, including but not limited to the Autodesk watermark and/or TrustedDWG code, without Autodesk’s authorization”; and “from distributing DWGdirect libraries that use, incorporate or simulate Autodesk’s TrustedDWG technology or that otherwise insert or mimic the unauthorized Autodesk watermark and/or TrustedDWG code.” The order also requires ODA to argue in January why the TRO should not be converted into a preliminary injunction.