Seattle Trademark Lawyer

Fat Cat Mustard, LLC, sued Fat Cat Gourmet Foods, LLC, for trademark infringement in the Western District at Tacoma.

The case isn’t staying here.

On November 2, Judge Benjamin Settle dismissed the suit because the defendant did not have the required “minimum contacts” with this district to make personal jurisdiction constitutionally fair.

In support of its motion to dismiss, Gourmet’s managing member filed a declaration stating its records only revealed one shipment to Washington, which she said was made because a Florida customer did not want to travel with the bottle on her way to Washington.

The court found that was not enough to support personal jurisdiction.

“In this case, Mustard asserts that the Court has specific jurisdiction based on Gourmet’s and Gourmet’s distributors’ websites, the shipment of one jar of sauce to Washington, and Gourmet’s cease and desist letters. With regard to the websites, it appears to be uncontested that individuals in Washington could access a website and order Gourmet’s products. Mustard, however, has failed to even allege that any individual in Washington has completed such a transaction. Therefore, Mustard is required to show ‘something more.’ See Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155–1159 (9th Cir.2006). Mustard offers the letters and the shipment as the ‘something more.’

“First, the cease and desist letters are not ‘something more.’ Mustard has failed to show that the letters caused any harm whatsoever. Moreover, Mustard fails to cite any authority for its proposition that a federally granted property right, such as a trademark, subjects the owner to personal jurisdiction in every forum in which the right may be enforced.

“Second, Mustard misconstrues Gourmet’s transaction. [Gourmet’s managing member] declares that the purchaser was a ‘Florida customer’ who requested that the bottle be shipped to Washington ‘so she didn’t have to travel with it.’ This does not show that Gourmet ‘engaged in commercial activity in Washington’ as Mustard contends. Therefore, based on the record before the Court, Mustard has failed to show that Gourmet ‘purposely availed itself of the privilege of conducting activities in’ Washington.”

The court found the other elements needed to establish personal jurisdiction were similarly lacking.

“In this case, Gourmet has made a compelling case that the exercise of jurisdiction would be unreasonable. Gourmet’s interjection into Washington is de minimus, if any purposeful interjection exists at all. Being a Florida based corporation, Gourmet would suffer a significant burden defending itself in Washington. The parties concede that there is no conflict between Washington and Florida. Washington has no interest in adjudicating the propriety of a non-resident company’s trademark when there is no evidence that a sale was actually consummated in Washington or that there is a likelihood of confusion by Washington consumer. Neither forum appears to be the most efficient for judicial resolution because it does not appear that the parties compete in either Florida or Washington. While Washington may be a more convenient forum for Mustard, it has failed to show that Gourmet purposely interjects itself into Washington and causes harm. Finally, alternative forums exist if either party chooses to bring the action where the defending party is subject to personal jurisdiction. Therefore, the Court finds that Gourmet has shown that it would be unreasonable for the Court to assert personal jurisdiction in this matter.”

The case cite is Fat Cat Mustard, LLC v. Fat Cat Gourmet Foods, LLC, No. 12-5663, 2012 WL 5389149 (W.D. Wash. Nov. 2, 2012) (Settle, J.).

I’m not surprised, but I’m a little disappointed.

After the district court issued its flawed decision roundly supporting Google, and the Fourth Circuit sent the case back to the district court, Rosetta Stone last week settled its keyword advertising lawsuit against Google.

The first time around, the Eastern District of Virginia found Google was protected from liability by a strange application of the functionality doctrine, and seemed to ignore that the case was decided on summary judgment. In other words, the court improperly found no trademark infringement and no dilution even though Rosetta Stone had offered evidence to the contrary. Such disputed issues of fact should be decided at trial, not on summary judgment.

The Fourth Circuit’s decision helped iron out the evolving law on keyword advertising law. It told the district court where it had erred and directed it to reassess the evidence in light of the standards the appellate court clarified.

That’s all good. Still, I had been looking forward to seeing what the district court was going to do with the case in light of that direction. My predication was the result would be the same — Google would win — but this time, for the right reasons. Now we’ll never know!

Previous post on the case here.

Last week, I spoke on a panel addressing “Hot Topics in International IP Law” as part of a program sponsored by the outstanding Seattle IP Inn of Court. My piece was about obtaining service of process under the Hague Convention.

The long and the short of it is, the Hague Convention is a treaty through which U.S. plaintiffs can arrange for the service of process on foreign defendants (that reside in one of the many countries that have signed the treaty) by sending a request for service to that country’s “Central Authority,” a clearinghouse for arranging for service of process on its citizens in foreign lawsuits. The Central Authority then sends the papers to the defendant’s local court, which arranges to serve them on the defendant, often by the local police.

Service of the summons and complaint is a crucial piece of U.S. civil procedure because without it, a plaintiff can’t join the defendant in the lawsuit or seek a default judgment if the defendant does not participate in the case.

My slides are available here. The main take-away is that Hague Convention service through foreign country’s Central Authority is slow — it takes six months or more, so it pays to plan ahead. This time lag can be particularly painful in counterfeiting or trademark infringement cases because U.S. courts are loathe to order injunctive relief against a party that has not been served. That can mean enduring months of continuing infringement before Central Authority service is effected. Central Authority service also isn’t currently available on Russian defendants because of a dispute between the U.S. and Russia. Otherwise, it often is the best means to effect service on a foreign defendant that resides in one of the many countries that have signed the treaty.

Here’s a local Lanham Act case with interesting facts. It’s about the sale of waterproof notebooks used by the U.S. military.

Defendant J.L. Darling, Corp. manufactures waterproof paper, which it used in notebooks it sold to the military through its distributor, plaintiff Ira Green, Inc. After Darling terminated the Green’s distributorship, Green found a new source of waterproof paper located in China and proceeded to compete with Darling by selling notebooks using the new paper. However, Green did not place any “made in China” labels on its notebooks until after a Customs and Border Patrol Agent ordered it to do so.

Among various patent, trademark, and false advertising claims the parties allege against each other, Darling claimed that Green’s omission of the “made in China” labels amounted to falsely marking the country of origin of its notebooks, thereby deceiving consumers. Green responded that the issue was moot because it corrected its omission and that Darling provided no evidence that customers were deceived or that Darling suffered any resulting injury.

The parties brought cross-motions for summary judgment on their claims and counterclaims, including on Darling’s two Lanham Act claims for false designation of origin.

On Oct. 9, Western District Judge Robert Bryan granted Darling’s motion and denied Green’s.

It found: “While there is an issue of fact over when and how many of Green’s notebook products eventually received the correct ‘made in China’ stickers, there is no issue of fact that Green did not place the proper country of origin on its notebook products when it first distributed those products. Because the lack of sticker placement was a literally false omission, causation and damages are presumed unless Green can rebut this presumption. Green has shown no facts to rebut. Because Darling and Green both request summary judgment on these two claims, summary judgment should be granted and judgment of liability only entered for Darling, and summary judgment should be denied for Green, on Darling’s second and third Lanham Act claims (Counts II and III).

The case cite is Ira Green, Inc. v. J.L. Darling, Corp., No. 11-05796, 2012 WL 4793005 (W.D. Wash. Oct. 9, 2012) (Bryan, J.).

A beautiful day at the University of Iowa

It’s a beautiful fall day here at the University of Iowa. What could be better?

A beautiful fall day at the University of Minnesota, of course.

But I’m not complaining.

Nothing trademark-related in this post, or in my visit. I’m here for a deposition in a copyright infringement lawsuit. The clear sky, crisp air, and changing leaves just compelled me to share.

(Photo by STL)