Seattle Trademark Lawyer

We don’t get many state-court trade name decisions in Washington, and when we do, they don’t get as much attention as they should. Here’s one of them — from last year, unfortunately — that remained under the radar until last week when Westlaw picked it up. (Cheers for Westlaw’s doing so. Jeers for not doing so until now.)

In December 2006, plaintiff Custom Auto Interiors, Inc., d/b/a Custom RV Interiors, Inc., sued defendant Custom RV Interiors, Inc. and its owners in Clark County Superior Court for trade name infringement. Plaintiff alleged that defendants attempted to buy plaintiff’s business and, when they did not succeed, infringed plaintiff’s trade name by registering “Custom R.V. Interiors, Inc.,” “Custom R.V.” and “R.V. Interiors” with the Washington Department of Licensing, and by starting a competing business with the name “Dave and LJ’s Custom RV Interiors, Inc.” (As a side note, the plaintiff corporation was owned by father David Ast, and the defendant corporation is owned by sons David and Larry J. Ast.)

In January 2007, Clark County Superior Court granted plaintiff’s motion for preliminary injunction enjoining the defendants from using “Custom RV Interiors, Inc.” as their trade name. Defendants appealed, arguing that “custom RV interiors” is generic for a business that sells custom RV interiors and, therefore, is not protectable as a trade name.

In May 2008, the Court of Appeals (Division II) agreed. “Here, ‘custom RV interiors’ is a generic trade name and, even though Custom Auto has been using the trade name ‘custom RV interiors’ for over 15 years, and has likely established some consumer recognition, it is not entitled to legal protection. But even if we found that ‘custom RV interiors’ is slightly descriptive, no evidence supports Custom Auto’s argument that it has a secondary meaning entitling it to trade name protection.”

On that issue, the court found “although Custom Auto has used the name ‘custom RV interiors’ for over 15 years, has heavily advertised using that name and David and LJ may have intended to copy the name, Custom Auto has failed to provide sufficient evidence that a ‘substantial segment’ of relevant purchasers, suppliers, or agencies associate the term ‘custom RV interiors’ with Custom Auto’s business. While Custom Auto alleges confusion by ‘a number’ of suppliers and ‘several’ customers, it has provided only two specific examples: a supplier sent it an email intended for Custom RV, and a security company contacted it about what the security company believed to be a relocation. This is insufficient to establish confusion or secondary meaning.”

The case cite is Custom Auto Interiors, Inc. v. Custom RV Interiors, Inc., No. 35869-7-II, 2008 WL 6693460 (May 20, 2008) (unpublished), pet. denied, No. 81976-9 (Jan. 6, 2009).

Mexican soda maker Jarritos, Inc., sued the owners of San Francisco’s Los Jarritos restaurant for trademark infringement. 

As STL readers may recall, the Northern District of California dismissed the plaintiff’s claims on summary judgment in 2007. The court found “the absence of any evidence demonstrating that any of the remaining eight [Sleekcraft] factors tip in Plaintiff’s favor warrant[s] granting summary judgment. Plaintiff bears the burden of demonstrating that ‘confusion is probable, not simply a possibility.’” 

Jarritos appealed, and on Aug. 14, the Ninth Circuit reversed. In summary, it found the district court failed to analyze all of the Sleekcraft factors and give the benefit of the doubt to Los Jarritos as the nonmoving party. 

“Among the factors identified in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979) to guide the likelihood-of-confusion analysis, similarity of the marks is a ‘critical question.’ The district court erred in concluding that, considering the other words on the Restaurant’s sign and possibly different colors used for the logo, the court ‘cannot say the two marks are similar’. The Restaurant had conceded the similarity of the marks (and acknowledged that concession in the argument before us), so the court erred by treating similarity as a disputed issue. In any event, as the Restaurant’s concession indicated, a reasonable jury could certainly find the marks similar, given the similarity in name and logo; similarity, not identity, is required for this Sleekcraft factor.

“The district court also erred in its analysis of the relatedness of Jarritos’ and the Restaurant’s goods and services. The proximity or relatedness of the parties’ goods matters ‘because the more closely related the goods are, the more likely consumers will be confused by similar marks.’ In considering whether goods are related, we look to whether the goods are complementary, whether they are offered to similar customers, and whether they are similar in use and function. The record indicates that Jarritos sodas were sold at the Restaurant, so it is clear that the parties’ ‘products are sold to the same class of purchasers.’ As the court was obligated to draw inferences in favor of Jarritos, the nonmoving party, it was error to conclude that the relatedness factor did not weigh against summary judgment.

“The district court also erred in concluding that Jarritos ‘does not point to any evidence to demonstrate the strength of its mark.’ Jarritos produced the cover of a magazine entitled ‘Mexico’s Greatest Brands’ that prominently portrayed Jarritos’s logo on the cover. The Jane Magazine excerpt also suggests public recognition of the brand.”

The case cite is Jarritos, Inc. v. Reyes, 2009 WL 2487066, No. 07-16083 (9th Cir. Aug. 14, 2009).

Do last year’s amendments to Washington’s right of publicity statute affect the ongoing case between the Jimi Hendrix Estate’s licensing company and the seller of Jimi Hendrix artwork? Western District Judge Thomas Zilly concluded it’s “plausible.”

In Experience Hendrix, LLC v. HendrixLicensing.com, Ltd., the defendant art sellers asserted counterclaims against plaintiffs for an order declaring that “the current revised RCW 63.60 et seq. does not apply to publicity rights in Jimi Hendrix” and “it is possible to trade in original images and likenesses of Jimi Hendrix without creating a per se infringement of Plaintiffs’ trademark rights.” (STL posts on the amendments here and here.)

Plaintiffs moved to dismiss, arguing the counterclaims did not allege an “actual case or controversy.”

In a minute order, the court concluded otherwise:

“Plaintiffs own several trademarks incorporating the names HENDRIX or JIMI HENDRIX. In an Order issued in April 2005 in Experience Hendrix, L.L.C. v. The James Marshall Hendrix Found., the Court held that the Washington Personality Rights Act, RCW 63.60.010- .080, did not apply, and that under New York law, Jimi Hendrix’s right of publicity did not, upon his death, pass to his heir or, as a consequence, to plaintiffs. Order (C03-3462Z, docket no. 47), aff’d 240 Fed. Appx. 739 (9th Cir. 2007) [STL post on Ninth Circuit Decision here]. The Washington Personality Rights Act was amended in 2008, and now contains inter alia the following provision: ‘This chapter is intended to apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death.’ RCW 63.60.010. Defendants seek declaratory judgments concerning (i) whether the amendments to the Washington Personality Rights Act affect plaintiffs’ rights in Jimi Hendrix’s ‘name, voice, signature, photograph, or likeness,’ see RCW 63.60.010 (defining a property right in such items), and (ii) whether defendants’ trade in likenesses of Jimi Hendrix infringe plaintiffs’ trademarks. Given the nature of defendants’ business and the historically adverse positions of the parties, the Court cannot conclude that defendants’ counterclaims are not ‘plausibly’ justiciable.”

The case cite is Experience Hendrix, LLC v. HendrixLicensing.com, No. 09-285 (W.D. Wash. July 30, 2009) (Zilly, J.).

The Pike Place Market: STL’s Blawg tour starts here. (All photos by STL)

Today is the 102nd anniversary of Seattle’s Pike Place Market. Opened on August 17, 1907, in response to public outcry over the price of onions, the Market has evolved into what some call the “soul” of Seattle and one of the world’s best public markets. It’s my favorite Seattle institution.

What makes the “Market” great? It’s a place where anyone can “Meet the Producer” — the farmers, fishermen, artists, and craftspeople who offer their bounty of fresh fruit, vegetables, flowers, fish, seafood, arts, and crafts in countless stalls, stands, and shops. It’s a hive of activity, where you’ll find locals jockeying with tourists for the fish monger’s attention, overhear spirited conversations, and see buskers playing their hearts out. It’s Seattle’s public square, and the perfect setting for a Blawg Review.

As this week’s host, Seattle Trademark Lawyer highlights recent posts of interest — particularly in my bailiwick, trademark law — in the spirit of the mix that has made the Market such a lasting success. Here, you’ll “Meet the Producers,” bloggers covering Seattle’s big producers of the day: Microsoft, Starbucks, and the aerospace industry; and run into “Locals,” legal bloggers grown right here in Seattle; “Out of Towners,” friends (I won’t call them “tourists”) from outside the Emerald City; “International Visitors,” folks who have traveled a long way to get here; and “Buskers,” bloggers who write about music. Let’s start the tour.

“Meet the Producers” 

On Thursday, The Seattle Times featured a company that has excelled at promoting its brand through a visible location in the Market: Beecher’s Handmade Cheese LLC (company blog here). Indeed, Beecher’s owner says he doesn’t need to spend money on advertising. “Our marketing spend is the ability for our customers to watch us make it and have an experiential kind of touch,” he says. Fish bowl windows that put his cheese-making process on display are all the advertising he needs. 

Going in a different direction, Starbucks Corp. — which opened its first-ever store in the Market in 1971 — is experimenting with a stealth strategy in branding. The Starbucks Gossip blog recently reviewed the company’s new non-branded coffee shop, Seattle’s 15th Ave. Coffee and Tea, the design of which initially upset its neighbor, who called the look-and-feel of Starbucks’ new store a copycat of her distinctive bar (STL posts on the short-lived dust-up here and here, with comparison photos here). Starbucks says it’s looking to blend into the neighborhood.

Speaking of dust-ups, the Seattle Post-Intelligencer’s Aerospace News blog recently reported on Northwest Airlines, Inc.’s demand that the Washington online travel guide, Go Northwest!, stop using “Northwest” in its name. In response, Go Northwest pointed to the 10,556 other Washington companies incorporating that geographic moniker. Having done so myself in naming this blog, I can say that Washingtonians like to advertise that we come from this part of the world. Local scrapes with the U.S. Olympic Committee (examples here and here) over businesses named after Washington’s Olympic Mountains and Olympic Peninsula are further testament to this propensity. (More on the Olympics and trademarks below.)

Our last “Meet the Producers” dispatch is about Seattle’s highest-profile producer, Microsoft Corp. TechFlash’s Microsoft Blog says a Texas judge last week ruled against the company, finding its WORD-branded software infringes a Canadian company’s patent. The decision prohibits Microsoft from selling its popular word processing software and orders the company to pay $290 million in damages. Not surprisingly, Microsoft plans to appeal before the injunction takes effect.

“Locals” 

Without a hint of hometown bias, the Washington State Patent Law Blog applauds the Texas court’s decision: “This certainly sounds like the sort of case where an injunction is appropriate. Let’s hear it for Judge [Leonard] Davis for putting some teeth back in our patent system!” 

Locally-grown Spam Notes similarly trumpets the Ninth Circuit’s latest decision interpreting the CAN-SPAM Act, Gordonv. Virtumundo, Inc. Its reaction? “’[W]ow,’ is all I can say! It’s a resounding win for [commercial emailer] Virtumundo,” and “the anti-spam community suffers a crushing defeat.” No wonder my in-box continues to overflow with emails from overseas businessmen wanting to make me rich — if only I first send them a check.

A lawyer visiting the States recently asked one of my partners whether Pres. Obama is fulfilling his campaign promise to address global warming. In the GreenTech blog, she responds. Her takeaway from the conversation is the world is watching how the United Sates addresses the crisis.

Trial Ad (and other) Notes is one of the blogs that inspired me to jump into the fray. It’s written by a librarian at the University of Washington School of Law. Last week, she reported on a new initiative the Seattle Police Department has undertaken to fight drug dealers. The police amasses files of evidence on particularly bad dealers and sits them down. The police show them photos, video clips, and binders full of evidence, all packaged together and ready for court. The proposal is simple: quit dealing or go to jail. The jury’s still out on whether the program will succeed.

Seattle’s China Law Blog argues that we already have plenty of American law schools and there’s no need for another — even one that’s based in China. I’ve got to agree, as about 1,600 full- and part-time students currently attend law school in Seattle alone. Do we create that many new law jobs around here, even in years when thousands aren’t being laid off?

While we may have enough lawyers, we can never have enough lawyer-bloggers. That encouraging theme runs throughout Real Lawyers Have Blogs. Headquartered due south of the Market, it recently challenged law blogger conference panelists to “think bigger, to not be afraid to rock the boat at their law firms, and to share … what they really needed to know about blogging to achieve success. I’m a believer that a little inspiration and education can go a long way.” I’m a great fan of this blog; consider me inspired.

“Out of Towners” 

Free speech reigns in Chicago in a dispute between two tenants over the word “lettuce.” The Chicago IP Litigation Blog writes the Lettuce Entertain You Enterprises restaurant company sued its neighbor for displaying a sign reading “Let us be!” flanked by lettuce heads in a space the defendants plan to use for a new salad bar called “Lettuce mix.” The U.S. District Court for the Northern District of Illinois found the sign was fair use and not likely to infringe LEYE’s LETTUCE trademark, so it denied LEYE’s motion for a temporary restraining order.

Still going strong, Likelihood of Confusion is offering something of a retrospective, including favorite posts from August 2006, 2007, and 2008, including, “Is Google a Utility?,” a question it says remains unanswered; its popular photo of Subway’s Glatt Kosher Sandwich Store in “Going Underground”; and a post waxing philosophical about licenses and Amazon.com’s KINDLE book readers in ”The Ultimate License.” These are well worth another look even if you caught them in Augusts past.

From the Lone Star State, the Austin Criminal Defense Lawyer suggests using a free initial consultation to interview a prospective client while the prospective client interviews you. The key, of course, is finding a good match. As he points out, “Sometimes we are, sometimes we ain’t.”

The California mediation blog Idealawg encourages lawyers to have fun at work, as we’re rated by comedians as about as much fun as engineers, police officers, and funeral directors. It adds: “A good laugh helps people to solve problems.” Good to know, but you had me at engineer, police officer, and funeral director.

The HealthBlawg provides a rundown on how the various health reform bills measure up in dealing with chronic disease prevention and management. At least someone’s keeping these options straight.

Both sexes have plenty to learn from “Superwomen JDs and What You Can Learn From Them.” This Ms. JD post interviews accomplished trademark lawyer Dana Brody-Brown, who advises young attorneys to “Go after every opportunity you can to get a wide variety of experience, and work with as many different attorneys as possible.”

The editor of our very own Blawg Review says this September he’s “going on a cross-country tour, a quest to discover himself and see America through the eyes of lawyers who blog, as many as possible, starting this September” in his post, “Blawg Review Bucket List.” Seems kind of ominous, but stay tuned to see if you’re on the list.

“International Visitors” 

We now return to discussing the Olympics — a big issue in these parts — with none other than the Canadian Trademark Blog. From 2010 host-city Vancouver, BC, our friends from up North compare Canada’s prohibition on using “OLYMPIC” as a trademark with our statute in the States. They rightly warn: “the Olympic Committees of both countries are keeping a tight rein on their valuable Olympic trade-marks. Those who wish to use any of the prohibited marks in either country, particularly for commercial purposes, would be well advised to carefully assess their legal rights in order to avoid triggering a reaction of Olympic proportions.” I couldn’t agree more.

Now there’s an attention-getter: “Nude Litigants Head for Chancery.” London’s IPKat reports that fashion designer Stella McCartney Ltd. had planned to to release a new fragrance called STELLA NUDE. However, it’s getting pushback from Nude Brands Ltd., which sells its own NUDE-branded beauty products. Look for a decision this fall from the Chancery Division of the High Court of Justice for England and Wales.

The German-language Markenblog links to an interesting article about branding (which I’m sheepishly thankful is in English), “The Luxury-Brand Effect: Should BMW Sell Ketchup?” Spoiler alert: the answer is no, though opportunities may exist for luxury brands to expand into other luxury markets. As the article concludes: “if a brand expands to another category, it had better retain its luxury claim. If Cartier is going to license its name on cheese, it had better be damn good cheese, and it had better sell this cheese at exclusive, upscale stores.” But ketchup? Nein.

The Afro-IP blog reports the Zimbabwe.com domain name is up for sale, which will likely fetch big bucks considering the Internet traffic it could capture in the run-up to South Africa’s hosting of soccer’s World Cup in 2010. 

“Buskers” 

Seattle’s had a lively music scene for as long as I can remember. It also has a lively music blogging scene. This week, Seattle’s KEXP Blog mourns the passing of guitar innovator Les Paul, who died last week at 94. “Les Paul changed the entire music business by using multitrack recordings and overdubbing to create his unique sound, making the practice now commonplace,” it writes. “His line of Gibson guitars, begun in 1952, have been used by musicians all over the word, like Pete Townsend and Jimmy Page.” What a legend.

Speaking of legends, it’s the 40th anniversary of the Woodstock Music & Art Fair. Our very own Experience Music Project celebrates with Woodstock artifacts related to Seattle native son Jimi Hendrix, along with viewings of historic Woodstock performances on the hour in the Sky Church. (At this point, I can’t help but mention that in recent years the late Mr. Hendrix also has become legendary in Seattle courts for his role in fashioning decisions on the right of publicity and the trademark use of his likeness, signature, and name in connection with commercial products like artwork and vodka.) My digression aside, I’m told if you wear tie dye to the EMP this week, you save $3 on admission.  

Finally, Bob Dylan, who almost played at Woodstock, must have felt “Like a complete unknown / Like a rolling stone” when he was stopped on Friday by a youthful police officer on the Jersey Shore. The TalkLeft blog reports Mr. Dylan wasn’t carrying ID but identified himself and said he simply was taking a walk before his show. Unimpressed, the officer escorted Mr. Dylan back to his hotel, where his tour staffers vouched for him. 

Thanks for Visiting!

This ends our time together at the Pike Place Market. Having come from the London Times’ BabyBarista blog, our carnival boomerangs back to the UK next week with Blawg Review #226, hosted by Bristol family law barrister Lucy Reed at Pink Tape. Thanks for visiting STL!

Blawg Review has information about next week’s host, and instructions how to get your blawg posts reviewed in upcoming issues.

A colleague asked me for my top-five list of trademark cases decided since last September. Here’s my response:

1. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (finding keyword sale of trademark constitutes “use” in commerce, vacating dismissal in favor of Google)
2. Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (affirming jury’s judgment for universities in trademark infringement case against sellers of t-shirts using schools’ color schemes)
3. Adidas America, Inc. v. Payless Shoesource, Inc., 2008 WL 4279812 (D.Or.) (scaling back largest-ever $305 million jury verdict to a still-hefty $65 million in three-stripe vs. two- and four-stripe athletic shoe infringement case)
4. AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir. 2008) (good likelihood of confusion analysis in reversal of hard-fought trademark infringement case, which also was one of the first dilution cases under the TDRA)
5. O’Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F.Supp.2d 500 (S.D.N.Y. 2008) (dismissing on summary judgment Web designer’s infringement suit claiming American Express’ use of the slogan, MY LIFE. MY CARD., was likely to cause confusion with his mark, MY CARD. MY WORK). 

I’ll stand by my top three, but admit the other two were kind of a tossup. What cases would make your top-five list?