Seattle Trademark Lawyer

Ever file three trademark applications with only slight variations, only to get three different examining attorneys arrive at three different decisions?

That kind of result is what the U.S. Patent and Trademark Office hopes to avoid.

On Sept. 29, it announced a “Consistency Initiative,” which will enable applicants to request a “consistency review” when the PTO handles an application differently than a similar pending application or registration.

Here’s the official word:

“In an effort to further improve quality, the Office has created a centralized process by which an applicant may bring to the attention of the Office situations where, in applicant’s opinion, the Office has acted inconsistently in its treatment of applicant’s pending applications/recent registration(s). Specifically, applicants may submit a Request for Consistency Review when a substantive or procedural issue (excluding any issues involving identifications of goods and services) has been addressed in a significantly different manner in different cases, subject to the following provisions: (1) the request is based on co-pending applications or an application and a registration owned by the same legal entity or a successor in interest (e.g., assignee); (2) the registration(s) involved was issued less than one year prior to the date of the request; (3) at least one of the applications in the request is in a pre-publication status at the time of the request; and (4) the allegedly inconsistent treatment has already occurred.”

Applicants should send requests to tmconsistency@uspto.gov. The PTO promises action within four-to-six weeks.

The institution of the initiative does not prevent applicants from raising the issue of inconsistent treatment with the assigned examining attorney. In fact, the PTO encourages such contact.

The PTO is conducting the initiative as a one-year pilot.

Here’s to consistent treatment!

In 2005, D.A.D.S. Denim, Inc., filed suit in the Central District of California against Lillian Ramirez on the ground that she had sold and offered for sale hundreds of counterfeit jeans bearing its trademark.

In 2006, D.A.D.S. presented evidence at trial that Ms. Ramirez conducted at least three such clothing sales. Ms. Ramirez argued that she did not know the jeans were counterfeit because she had purchased them for personal use from an outlet store. She produced one receipt documenting her purchase of four pairs of jeans but did not produce any others.

The jury found for D.A.D.S., concluding that Ms. Ramirez had willfully infringed on D.A.D.S.’ CITIZENS OF HUMANITY trademark. The jury awarded D.A.D.S. $30,000 in statutory damages, which presumably also included compensation for Ms. Ramirez’s willful infringement of D.A.D.S.’ copyright.

After trial, the court found the case was “exceptional” for Lanham Act purposes and awarded D.A.D.S. $87,177 in attorney’s fees under both the Lanham Act and the Copyright Act. It concluded: “[T]he jury found that Ramirez intentionally and willfully infringed on DADS’ trademark. Accordingly, DADS is entitled to attorneys’ fees on its trademark claim.”

On Sept. 29, the Ninth Circuit affirmed the decision in a de novo review, agreeing that the circumstances were indeed “exceptional.”

Neither court seemed particularly enthused with this case. Both opinions are devoid of further analysis.

The case cite is D.A.D.S. Denim, Inc. v. Ramirez, 2008 WL 4442612, No. 06-56844 (C.D. Calif. Sept. 8, 2008).

Berry similar? Pinkberry accuses Yoberry of ripping off its marks

In September, the Pinkberry, Inc., chain of frozen yogurt shops filed a trademark infringement suit in the Western District against the Seattle-based Yoberry, Inc., frozen yogurt shop.

The complaint alleges the parties’ word marks are confusingly similar, as are the parties’ design marks.

Yoberry has not yet filed an answer.

The case cite is Pinkberry, Inc. v. Yoberry, Inc., No. 08-1360 (W.D. Wash.). 

On Friday, I talked with one of the lawyers representing the owners of Peso’s in their claims against the owners of the Matador in Seattle’s restaurant wars trade dress trial. (Most recent STL post on the case here.)

Here’s an update:

• The case is about halfway through the expected six-week trial. Peso’s should be done with its case-in-chief soon — on approximately Oct. 16. 
• Trial is not scheduled this week because King County Superior Court Judge Catherine Shaffer will be attending a judicial conference.
• The parties have agreed to a mutual dismissal with prejudice of the parties’ dilution claims and counterclaims. This resulted in part from the trial proceeding without a jury, so that any remedies allowed under Washington’s dilution statute will be based on the court’s view of fairness and equity. The remedies also appeared no different to the parties than those available under their other claims and counterclaims.
• The parties have agreed to a mutual dismissal with prejudice of all claims and counterclaims involving four non-owners of Matador’s Washington restaurants, including an artist who designed the ironwork in both Peso’s and the Matador. In addition, Peso’s and one of the metal works artists have agreed to resolve a breach of contract claim in which the artist will deliver to Peso’s some unfinished metal work.
• The case now consists of five claims: (1) common law trade dress; (2) common law unfair competition; (3) unjust enrichment; (4) violation of Washington’s Consumer Protection/Unfair Business Practices Act; and (5) violation of Washington’s Uniform Trade Secrets Act. The Matador also has a number of affirmative defenses and counterclaims still pending.
• Peso’s trade dress claim is that the trade dress of the first Matador restaurant in Ballard so resembled the trade dress of Peso’s that actual consumer confusion, mistake, or deception occurred with respect to the source or origin of such trade dress, and that the later three Washington Matador restaurants also resembled the first Matador so as to cause likelihood of confusion, mistake or deception as to their source or ownership with respect to Peso’s. The trade dress claim concerns the overall impression of the ordinary consumer resulting from alleged similarities in the restaurants’ ornamental ironwork, wooden tables, in-laid tables, curved booths, curves in bars, slats in bars, wall treatments, trim and ceiling colors, suspended acoustic panels, lighting, use of votive candles, table-top happy-hour menus, entree and dinner menus, and other decorative elements. 
• The parties have briefed and the court will decide what standards apply to trade dress claims under the common law of Washington.
• The court has stated that the U.S. Supreme Court case of Two Pesos v. Taco Cabana does not control because it was based on the Lanham Act and not Washington State common law, though the court found that policies underlying the case are helpful — particularly with respect to the Washington trademark and trade dress common law policy of protecting consumers.
• The Matador has announced its intent to bring motions to dismiss Peso’s remaining claims. The parties are expected to argue such motions on or about Oct. 16, at the close of Peso’s case, and before the Matador presents its case.

Note: because I just wanted to provide a factual summary of what’s been happening in trial — and not to give the parties the opportunity to fight their case out in this blog — I did not seek comment from the Matador’s side. Hopefully, this summary accurately characterizes the first three weeks of trial and what lies ahead in the next three weeks. Though I’ve visited both restaurants, I’m not choosing sides on this one. 

In related news, the Ballard News Tribune recently wrote about the case and quoted me discussing basic principles of trade dress law. 

Excerpt from plaintiff’s Web site at kooks.com

No case or controversy exists between Global DNS, LLC, and Kook’s Custom Headers, Inc.

That’s what Western District Judge Robert Lasnik found on Sept. 22 when he dismissed plaintiff’s declaratory judgment claim that its registration and use of kooks.com is lawful under the Lanham Act and the Anticybersquatting Consumer Protection Act.

Plaintiff Global DNS offers Internet-based services, including selling and monetizing domain names.

Defendant Kook’s manufactures and sells custom headers (high performance exhaust system parts) for cars and motorcycles. It registered KOOKS as a trademark in 2001.

In February 2008, Kook’s filed a WIPO complaint seeking to have kooks.com transferred to it on the ground that Global had registered and used the domain name in bad faith. The same day, Global filed this action.

After it received the WIPO complaint, Global dissociated the domain name from its domain name parking services, removed all content directed to Kook’s and its competitors, and posted its own content on the Web site relating to the WIPO dispute and this action. The new content states that Global wants to “make[e] it expensive” for Kook’s and “absolutely refuse[s] to make it cheap and easy.” The content also reminds defense counsel, “Don’t Forget to Bill Your Client.”

The WIPO panel dismissed the complaint, finding that Kook’s had not shown that Global had registered the domain name in bad faith.

In August, Kook’s signed a covenant not to sue Global for the past and present content on Web sites associated with its domain name.

Based on that covenant not to sue, Kook’s moved to dismiss for lack of subject matter jurisdiction because of a lack of a real dispute between the parties.

The court agreed. It found: “Defendant argues that there is no actual controversy because it executed the covenant not to sue. The covenant means that there is no case or controversy regarding the past or current content posted to the domain name. It is undisputed that there is no controversy regarding Global’s current conduct, including any content on the <kooks.com> web site.

“The controversy, if one exists, relates to how Global may use the domain name in the future. In the covenant not to sue, defendant reserved the right to pursue remedies in the event that Global reintroduced the objectionable content on the web site. However, there is no evidence that Global plans to do so. In fact, during [prior] WIPO proceedings, Global’s managing member stated that had defendant contacted Global prior to filing the WIPO complaint, Global ‘would have blocked the terms ‘headers’ and ‘custom headers’ from appearing on the Website associated with the domain name name.’ In fact, Global’s filings are devoid of any information about what, specifically, it intends to post on the site. Without some evidence that Global intends to reintroduce content on the domain name that could violate defendant’s rights, there is no actual controversy. Instead, the Court would be forced to speculate and offer an impermissible advisory opinion about potential hypothetical future conduct.”

The case cite is Global DNS, LLC v. Kook’s Custom Headers, Inc., 2008 WL 4380439, No. 08-268 (W.D. Wash. Sept. 22, 2008) (Lasnik, J.).