Seattle Trademark Lawyer

Now that the feds say they’re not going to challenge Washington’s statute legalizing recreational use of marijuana, does that mean you can get a federal registration for your marijuana-related trademark?

Nope.  I would expect the U.S. Patent and Trademark Office to continue to deny applications for federal registration of any drug-related trademark that the feds deem to be illegal.

So where does that leave legitimate business owners here who want to maximize protection of their marijuana-related trademarks? There are two broad strategies to consider. First, you should consider getting a state trademark registration. The State of Washington accepts applications for state registration even if they explicitly refer to goods or services involving marijuana, cannabis, and the like. A state registration expands the owner’s trademark rights from the geographic area in which it uses the mark (say, Seattle) to having rights statewide. A registration, therefore, would entitle a trademark owner that sells only in Seattle to complain about a confusingly similar trademark even if the competing trademark is only used in Spokane. Because Washington is one of the few places where providing both medical and recreational marijuana goods and services is legal, it makes sense to focus your trademark protection efforts here.

However, if you really want to expand your rights nationwide, there’s another option. You could consider whether you could register your mark at the federal level in connection with goods or services the PTO would consider legal. If you sell both marijuana-enhanced and ordinary, non-enhanced baked goods, for example, you could legitimately apply to register your trademark in connection with (ordinary, non-enhanced) baked goods. A federal registration would help protect you against other sellers of baked goods who adopt trademarks that are too close to yours anywhere in the United States.

It takes a little strategizing, but there is no reason why those in the legal marijuana industry cannot maximize their trademark rights like other legitimate sellers.

Plaintiff Dereck Seltzer is an artist. In 2003, he created “Scream Icon,” a drawing of a screaming, contorted face. Since then, he moved on to other projects, but at times used his drawing to identify himself and his work’s presence by placing it on advertisements for his gallery appearances, and once licensed it for use in a music video.

Mr. Seltzer sued the rock band Green Day, which had used a modified version of the “Scream Icon” in a video it showed at concerts as a backdrop when it played the song, “East Jesus Nowhere.”

Mr. Seltzer mostly asserted copyright claims, but he also alleged that “Scream Icon” functioned as his trademark — the claim of interest here.

The Central District of California rejected his claim, and threw it out on summary judgment.

On Aug. 7, the Ninth Circuit affirmed, finding Mr. Seltzer had not used his work as a trademark, i.e., as a means to identify him as the source of artwork.

It’s a reminder that a cool logo or even a work of art can’t be protected as a trademark if it isn’t adequately used as a brand.

The Ninth Circuit found: “The district court concluded that Seltzer failed to present evidence showing that he used the image as a mark in the sale of goods or services—that is, that he failed to establish trademark rights at all. In order to acquire trademark rights, the mark must be used in the ‘ordinary course of trade’ on goods or containers, or, if the nature of the goods makes that impractical, on documents associated with the goods or their sale.

“Seltzer argues that Scream Icon’s placement on certain advertisements for his appearance at an art gallery show was sufficient to establish trademark rights. But Seltzer has not presented any evidence that the use of the mark was ‘sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind.’ Seltzer has failed to explain how these advertisements were distributed, who might have seen them, when they were distributed, to what shows they were connected and what was sold at those shows, or any other facts which might be necessary to evaluate whether Scream Icon is deserving of trademark protection.

“Therefore the district court correctly granted summary judgment to Green Day on Seltzer’s Lanham Act claims.”

Celebrities’ right of publicity claims are stronger than their Lanham Act claims, the Ninth Circuit recently found. At least in some situations.

On July 31, the court decided two cases former football players brought against Electronic Arts, Inc. The players argued the video game publisher featured avatars that many users would recognize as depicting them, without their permission.

In one case, former college quarterback Samuel Keller, representing similarly-situated former college football and basketball players, argued the use violated his right of publicity under California state law — the statutory right to stop the unauthorized use of his likeness for commercial purposes.  In the other, former pro football great Jim Brown focused on the federal Lanham Act, arguing that use of avatars with his likeness was likely to confuse consumers into believing the players had endorsed EA’s games.

In the Keller case, EA filed a motion to strike under California’s statute against Strategic Lawsuits Against Public Participation, arguing its use of Keller’s likeness was protected by the First Amendment. The Ninth Circuit affirmed the district court’s finding that EA’s use was not constitutionally protected as a matter of law. It instead applied the “transformative use” test the court had applied in earlier right of publicity cases, finding that EA’s use of Keller’s likeness was the reason why consumers would purchase its games — not because its artistic expression had transformed his likeness into something akin to an expressive work of art.

The court concluded: “Under the ‘transformative use’ test developed by the California Supreme Court, EA’s use does not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown.”

In the Brown case, similar facts yielded the opposite result. Due to a different claim for federal jurisdiction. Brown relied on the Lanham Act rather than a state claim for right of publicity.

That difference made all the difference. As a Lanham Act claim, the court applied prior precedent adopting what’s known as the “Rogers” test. Under that test, Lanham Act claims “will not be applied to expressive works ‘unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work.’”

Applying that test, the court affirmed the district court’s dismissal of Brown’s claim.

“As expressive works, [EA’s] Madden NFL video games are entitled to the same First Amendment protection as great literature, plays, or books. Brown’s Lanham Act claim is thus subject to the Rogers test, and we agree with the district court that Brown has failed to allege sufficient facts to make out a plausible claim that survives that test. Brown’s likeness is artistically relevant to the games and there are no alleged facts to support the claim that EA explicitly misled consumers as to Brown’s involvement with the games. The Rogers test tells us that, in this case, the public interest in free expression outweighs the public interest in avoiding consumer confusion.”

Big decisions, both. Among other things, they illustrate how legal strategy can determine how similar cases can yield opposite results. 

The case cites are In re NCAA Student-Athlete Name & Likeness Licensing Litig., __ F.3d __, No. 10-15387, 2013 WL 3928293 (9th Cir. July 31, 2013), and Brown v. Elec. Arts, Inc., __ F.3d __, No. 09-56675, 2013 WL 3927736 (9th Cir. July 31, 2013).

This really is a story about trademarks.

The State of New Jersey recently fined a bunch of bars for selling name-brand drinks but delivering generic booze instead.

Patrons ordered top-shelf drinks — specifying Maker’s Mark bourbon, for example. The bars charged top-shelf prices, but didn’t give their customers what they paid for, pocketing inflated profits in the process.

This really is a case of fraud. (It’s not relevant to the point, but I can’t help but reveal that many of the bars were T.G.I Friday’s. It sounds like it was an institutional practice — the chain agreed to pay a $500k fine and adopt a “Guest Satisfaction Assurance Plan” that apparently is intended to make sure patrons actually get what they pay for. Why a corporate “Plan” is needed to ensure that bartenders pour what customers order remains a mystery.)

This is an outrage. However, it also illustrates how trademarks work. If I want my martini made with BRAND X vodka, that’s what I tell my server. I expect to pay more than if I ordered a martini without specifying the liquor. But I most definitely also expect to have my order faithfully fulfilled.

Trademark infringement occurs when a later user selects a trademark that is likely to cause confusion with an earlier adopter in connection with similar goods or services. The consumer thinks he or she is buying from SOURCE A, but actually buys from SOURCE B. The consumer doesn’t get what he or she pays for, and SOURCE B gets a sale that was meant for SOURCE A. Nobody wins, except for SOURCE B.

What these bars are doing is even more insidious. They’re not tricking customers with an off-brand name that looks or sounds like a better-known, trusted brand. They’re pretending to deliver what was ordered and pass off one distiller’s liquor for another. The deceived consumer pays more and gets less.

It’s a breach of contract and breach of the public trust.

It also shows how vulnerable consumers can be when sellers fake trademarks.

Every party filing a new trademark lawsuit must complete “Form AO 120,” titled, “Report on the Filing or Determination of an Action Regarding a Patent or Trademark.”

The form asks the plaintiff to provide information about the trademark at issue in the suit, including its “date.”

I’ve gotten a couple questions about what date this refers to. The form doesn’t say.

However, the form’s existence springs out of 15 U.S.C. § 1116(c), which states:

“It shall be the duty of the clerks of such courts within one month after the filing of any action, suit, or proceeding involving a mark registered under the provisions of this chapter to give notice thereof in writing to the Director setting forth in order so far as known the names and addresses of the litigants and the designating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought…”

This suggests the date the form asks for is the date the mark was registered.

So what if the mark isn’t registered? The clerk of court will probably require the plaintiff to fill out Form AO 120 anyway. In that case, I think the best practice would be to provide the date any application to register the mark was filed.  Or, if the plaintiff has not filed such an application, to provide the mark’s first-use date. Neither are strictly required by the statute, but providing such dates should satisfy the clerk and appraise the PTO of the pending action.