Seattle Trademark Lawyer

Everett’s daily newspaper, The Herald, recently reported on a trademark case going on in the District of New Jersey: OMS Investments, Inc., et al. v. TerraCycle, Inc. The plaintiff sellers of the MIRACLE-GRO line of plant food allege the defendant makes false and misleading claims about its TERRACYCLE plant food and infringes plaintiffs’ trade dress. Defendant denies plaintiffs’ claims.

The Herald’s gardening columnist, Debra Smith, sides with TerraCycle. Here’s her take on the dispute:

“The Scotts Miracle-Gro Co., the big boy of lawn-and-garden products, is suing a tiny New Jersey Company that produces organic fertilizer made of worm poop.

“Yes, this is the very same company that sent me worm poop samples, which I talked about in my blog at www.heraldnet.com. The company, TerraCycle, manufactures all-natural fertilizers made from a worm poop compost tea and packaged in recycled soda bottles. What a novel idea: a product made and packaged almost entirely from garbage.

“In the complaint, Scotts claims TerraCycle’s yellow and green packaging infringes on its brand. Scotts also doesn’t like TerraCycle claiming its worm poop works better and is safer than synthetic fertilizers. Scotts is also demanding access to research and proprietary knowledge about how TerraCycle’s products are made.”

Not a bad summary for a layperson.

Ms. Smith goes on to say: “I had a box of TerraCycle’s worm poop products sitting on my desk, and I had no trouble figuring out they weren’t a Scotts Miracle Gro product. In fact, the worm poop packaging looked nothing like anything I’ve seen on the garden center shelf. Another big clue: The contents weren’t Smurf blue.”

It’s always interesting to learn what a potential juror might think after all the legal doctrine is stripped away. If Ms. Smith represents a typical New Jersey juror — though there’s no indication she does — I’d say Scotts should settle.

The case cite is OMS Investments, Inc. v. TerraCycle, Inc., No. 07-1064 (D.N.J.)

On April 6, the Western District imposed discovery sanctions against the plaintiff in Mother, LLC v. L.L. Bean, Inc., No. 06-5540, an infringement case arising out of two competing hunting vests. Gig Harbor-based Mother alleges that the Maine outfitter’s vest infringes Mother’s trade dress and constitutes a false designation of origin. L.L. Bean denies the allegations.

L.L. Bean moved to compel based on documents Mother allegedly failed to provide in discovery, as well as Mother’s conduct during the deposition of Martin Grabijas, Mother’s president. In particular, L.L. Bean alleged it learned at Mr. Grabijas’ deposition that Mother had not provided financial records in an electronic form in response to L.L. Bean’s discovery requests—even though Mother’s lawyer previously had represented that “We have provided you with Mother’s entire set of business files. You now have everything Mother has.”

L.L. Bean also complained that Mother’s attorney made numerous improper objections, improper instructions not to answer questions about communications with a lawyer who did not represent Mother in the case and whose written communications were produced in discovery, and improperly terminated the deposition before the seven-hour limit had expired.

Chief Magistrate Judge J. Kelly Arnold largely sided with L.L. Bean. The court ordered Mother to produce all electronically-stored information regarding its finances; ordered Mother to make Mr. Grabijas available in Maine for three additional hours of deposition time; and ordered Mother’s counsel not to make any objections “without asserting a recognized privilege, or seeking a protective order from the court.”  The court also awarded L.L. Bean the reasonable expenses, including attorneys’ fees, that L.L. Bean incurred in bringing its motion.

Discovery orders like this are relatively rare in Western District trademark cases. We all can be thankful for that. There just is no excuse for playing games in discovery, or for being ignorant of the important role electronic evidence now plays. The court’s order illustrates that Western District judges have little patience for parties and lawyers who don’t follow the rules. Nor should they.

Copyright Act preemption does not support a motion to dismiss a Lanham Act trade dress claim, though it does support dismissal of state Consumer Protection Act and unfair competition claims, the Western District decided January 18.

In Blue Nile, Inc. v. Ice.com, Inc., No. 06-1002RSL, 2007 WL 172613 (W.D. Wash.), Seattle-based Blue Nile, Inc., sued Ice.com for trade dress infringement on the alleged ground that Ice.com had copied the “overall look and feel” of Blue Nile’s diamond search Web pages. Both parties sell diamonds through the Internet.

Ice.com moved to dismiss Blue Nile’s trade dress claim on preemption grounds, arguing that it overlapped with Blue Nile’s copyright claims. Western District Judge Robert Lasnik denied the motion, finding it was too early to decide whether Blue Nile’s copyright claims would provide it with an adequate remedy. In the court’s words, “defendant’s 12(b)(6) motion to dismiss is not the appropriate procedural vehicle through which the Court should address the overlap between the Lanham Act and Copyright Act in the context of a claim attempting to protect a website’s ‘look and feel.’”

The court separately denied the request “in light of the presumption that Fed.R.Civ.P. 12(b)(6) motions should rarely be granted, especially when the claim involves a legal theory.” The court concluded:

“[P]laintiff seeks protection for the ‘look and feel’ of its website under the Lanham Act. This is a novel legal theory as evidenced by plaintiff’s resort to two unpublished district court cases to support its trade dress claim and the Court’s survey of recent scholarship regarding protection for the ‘look and feel’ of websites.”

However, the court granted Ice.com’s motion to dismiss as it applied to Blue Nile’s Consumer Protection Act and unfair competition claims because it found those claims were based on rights equivalent to those protected by copyright law.