Seattle Trademark Lawyer

On Sept. 4, plaintiff India-based travel service provider MakeMyTrip (India) Pvt. Ltd. brought suit in the Western District against India industrial conglomerate Tata Sons Ltd. seeking a determination that its registration of oktatabyebye.com does not violate the Anticybersquatting Consumer Protection Act. The complaint asks the court to set aside the World Intellectual Property Organization’s arbitration panel decision finding the registration violated the Uniform Domain Name Dispute Resolution Policy and ordering that the domain name be transferred to Tata Sons.

MakeMyTrip brought suit in Western District because its registrar, defendant eNom, Inc., is located in Bellevue. On Sept. 11, however, MakeMyTrip voluntarily dismissed its claim against eNom. 

MakeMyTrip asserts it has legitimate rights in its domain name because the phrase, “Ok, tata, bye bye,” is an informal way in India to say goodbye. It alleges it did not register the domain name in bad faith for the same reason and that the domain name is not confusingly similar to Tata Sons’ TATA trademark.

Tata Sons convinced WIPO’s one-member panel that the the opposite is true. It has not yet answered MakeMyTrip’s complaint.

The case cite is MakeMyTrip (India) Pvt. Ltd. v. Tata Sons Ltd., No. 09-1261 (W.D. Wash.).

McCurry’s owners get a happy result in victory against McDonald’s.
Photo credit: AP/Mark Baker

On Sept. 8, a 3-judge panel of Malaysia’s federal court found a restaurant’s use of MCCURRY does not infringe McDonald’s Corp.’s rights in its well-known trademark. It’s apparently the end of the line for McDonald’s in its 8-year fight.

The AP cites McCurry’s attorney as saying the ruling means McDonald’s does not have a monopoly over “MC” trademarks in connection with restaurants. “This is a precedent to follow,” he said.

McCurry’s sells its curry fare in connection with white-and-grey lettering, a red background, and logo featuring a smiling chicken giving two thumbs up. McDonald’s, of course, sells its western-style fare in connection with its familiar golden arches. The court found these differences supported McCurry’s claim it isn’t passing itself off as being related to the worldwide chain, which has 137 locations in Malaysia.

All of this brings to mind the dispute between McDonald’s and the Seattle-area maker of pickled onions branded as MCSWEET’S. That got some attention last year in the local press, but the case is still very much alive. Now in its third year in McDonald’s opposition proceeding before the U.S. Trademark Trial and Appeal Board, the case already has 58 docket entries. On Sept. 4, the TTAB put the case in suspension pending decision on McSweet’s motion for summary judgment and McDonald’s motion to strike.

I don’t imagine the Malaysian decision will come into play (obviously), though the issues appear similar — is McDonald’s the only player in the food business that can have “MC” in its trademark?

Thanks, Jefferson Coulter of Copyright or Wrong, for bringing the McCurry case to STL’s attention!

Happy Labor Day! STL spent the holiday weekend not working in rainy Portland, Ore. Yesterday, I had breakfast with my better half at the deservedly popular Cadillac Cafe. Since I was on holiday, I focused on my delicious breakfast burrito — not less savory issues of infringement or dilution. 

This morning we paid a visit to one of Portland’s great brands, Voodoo Doughnut, but the line was way too long for this hungry customer so we went down the block to Stumptown Coffee, another Portland icon. As luck would have it, I snagged their last VOODOO-brand donut and washed it down with a damn fine cup of coffee before heading north.

In Wyatt Technology Corporation v. Smithson, the plaintiff filed suit in the Central District of California alleging trademark claims and other business torts against the defendants arising out of the bankruptcy of the Proterion Corporation. The Central District of California dismissed three of Wyatt’s trademark claims on summary judgment. On Aug. 27, the Ninth Circuit reversed and remanded dismissal of two of the three trademark claims and affirmed dismissal of one.

The opinion doesn’t provide much additional background; the court just gets to the point:

“Wyatt’s trademark claims concerning domain names could have been brought under either the Lanham Act or the Anticybersquatting Protection Act. Wyatt brought suit only under the former, so it must show a use of the mark in connection with the sale of goods. Linking to commercial business qualifies. The district court’s contrary ruling constitutes legal error. The district court also erred in finding there was no material factual dispute as to the ownership of the domain names in light of Proterion’s reimbursement to Smithson for their purchase. On remand, the district court should determine the ownership of the domain names and, applying the correct legal standard, should consider whether Viscotek’s former use of them created a likelihood of confusion. The likelihood of confusion test requires examination of eight factors.

“The district court also erred in finding that Smithson’s use of Wyatt’s purported trademarks in Viscotek’s sales literature and brochures constitute nominative fair use without determining whether Smithson engaged in any conduct which ‘would, in conjunction with’ its use of ‘the mark, suggest sponsorship or endorsement by the trademark holder.’ On remand, the district court should apply the full required analysis.

“Finally, the district court did not err in dismissing Wyatt’s Lanham Act § 43(a) claim. Wyatt failed to point to any evidence in its opposition to summary judgment indicating the website statement at issue’s falsity or tendency to deceive.”

The case cite is Wyatt Technology Corp. v. Smithson, 2009 WL 2700319, No. 06-56470 (9th Cir. Aug. 27, 2009).

 Hallmark’s “Paris Hilton” card. Photo credit: The Smoking Gun

The Ninth Circuit yesterday found in favor of Paris Hilton in her suit against Hallmark Cards for violating her Lanham Act rights and right of publicity by publishing a birthday card with an image of her face and using her THAT’S HOT registered trademark without her permission.

After dispensing with Hallmark’s motion to strike based on California’s anti-SLAPP (Strategic Lawsuit Against Public Participation) statute, the court affirmed the Central District of California’s denial of Hallmark’s motion to dismiss Ms. Hilton’s Lanham Act and right of publicity claims, and remanded the case back to district court. There is some good “transformative” analysis here, a la Winter v. DC Comics, 69 P.3d 473 (Cal. 2003).

“To be sure, there are some differences between the waitressing Hilton does in the ‘Simple Life’ episode and the portrayal in Hallmark’s card. Hilton’s uniform is different, the style of the restaurant is different (drive-through service rather than sit-down service), and the food is different (burgers-and-fries rather than diner-style bacon and eggs). In the card, the body underneath Hilton’s over-sized head is a cartoon drawing of a generic female body rather than a picture of Hilton’s real body. Finally Hilton’s catchphrase appears consistently in its familiar, idiomatic meaning. Despite these differences, however, the basic setting is the same: we see Paris Hilton, born to privilege, working as a waitress.

“We need not decide whether these differences render Hallmark’s card transformative. They are far afield from the total, phantasmagoric conversion of the musicians into the comic book characters at issue in Winter. Although the evocation of the real-life musicians in that case was ‘less than subtle,’ they were ‘merely part of the raw materials from which … a larger story, which is itself quite expressive,’ ‘w[as] synthesized.’ There is no larger story here, just a spoof on a scene from Hilton’s television program. That Hilton’s body is a cartoon representation of a human being in a waitress’s outfit, instead of a photograph of Hilton’s actual body, does not suffice to analogize this case to Winter. The cartoon representations in Winter were of ‘half-human, half-worm’ characters. Hilton’s cartoon body is that of a generic woman. Finally, the worm-like versions of the musicians in Winter did things that the actual musicians did not do, such as ‘engage in wanton acts of violence, murder, and bestiality for pleasure.’ The version of Hilton in Hallmark’s card, however, does almost exactly what Hilton did in ‘The Simple Life’: she serves food to restaurant customers. Even if one adds the literal use of Hilton’s catchphrase, this case strikes us close factually, unlike Winter.

“We do not hold that Hilton is entitled to judgment as a matter of law, something she has not asked for. We merely hold, construing the facts — here, the greeting card and the video — in her favor, that she has at least some probability of prevailing on the merits before a trier of fact.”

The case cite is Hilton v. Hallmark Cards, __ F.3d. __, 2009 WL 2710225, No. 08-55443 (9th Cir. Aug. 31, 2009).