Seattle Trademark Lawyer

The Ninth Circuit decided a trademark infringement lawsuit while I was in China. It came down on June 27, but here’s a quick summary. Sorry for the delay!

Rearden LLC sued Rearden Commerce, Inc., for trademark infringement in the U.S. District Court for the Northern District of California. Rearden LLC owns technology start-up incubators and artistic production companies. Rearden Commerce is a “concierge” company that links buyers and sellers of business and travel-related services. The beef, obviously, was over the parties’ competing uses of REARDEN.

The district court granted summary judgment for Rearden Commerce.

Citing the factual nature of trademark infringement claims, the Ninth Circuit vacated the order. It’s a pretty fact-specific decision, but the court concluded that genuine issues of material fact existed with respect to both “use in commerce” and likelihood of confusion. Therefore, it found the district court’s dismissal on summary judgment was a mistake.

The court held: “There, nevertheless, are genuine issues of material fact present in this case with respect to at least some of the factors as well as the overall Sleekcraft [v. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979)] inquiry itself. The District Court acknowledged that two factors — namely the ‘strength of the mark’ and ‘similarity of the marks’ factors — weigh ‘somewhat’ in favor of Appellants. Indeed, a reasonable jury could give great weight to these two factors, especially when viewed together. We also determine that there are genuine issues of material fact with respect to the ‘proximity of the goods,’ ‘evidence of actual confusion,’ ‘marketing channels used,’ and ‘likelihood of expansion of the product lines’ factors.”

The court remanded the case to the district court for further proceedings consistent with these findings.

The case cite is Rearden LLC v. Rearden Commerce, Inc., __ F.3d __, No. 10-16665, 2012 WL 2402012 (9th Cir. June 27, 2012).

Forget about the iPad settlement.

The real news in China is KHZ’s infringement of KFC:

KHZ (top) and the original: Tongli’s new spin on fast chicken

KFC is all over China, so it’s not like another chicken joint’s calling itself “KHZ” was a coincidence. Nor was its choice of a red-and-white color scheme or use of a Colonel Sanders stand-in.

But even then, it probably wasn’t the most brazen example of infringement I saw. Anyone up for Thomas the Train Pizza?

Thomas the Train Pizza, Beijing-style

And who needs Tommy Hilfiger when you’ve got Tommy Welai? I’m sure the clothes are the same either way.

Beijing’s Tommy: Tommy Welai

Last but not least, a fake “Cheers” bar. Where everybody knows your name — assuming it’s Wong, Lee, or Cheung. Ni hao!

Cheers - Suzhou: Miles from Boston, but everyone still knows your name

It was an awesome trip. By highlighting some of the crazier instances of trademark infringement I found, I’m in no way trying to take anything away from this wonderful country. China rocks. The people are friendly, the food is good, and the subway (in Beijing, at least) costs 30 cents to ride. Who can beat that?! I plan to return as soon as possible.

Photos by STL.

 $14 for 11 Coen Brothers movies? It’s a steal!

With WIPO’s Diplomatic Conference on the Protection of Audiovisual Performances meeting in Beijing this week, counterfeit DVDs are not as ubiquitous here as usual. But there’s no shortage of them outside the city, as I recently found in and around Shanghai.

It’s how many, if not most, residents see movies. Cheap DVD knockoffs that can begin in English and end in Russian. But many reportedly are perfect, and there’s no question they are cheap. Here are some shots from a mom-and-pop video store in Sozhou.

The complete collection of “The Sopranos” would only set you back $25.

The packaging is surprisingly professional. And the price can’t be beat — 90 RMB for 11 Coen Brothers movies is about $14. Not bad for a collection advertised as “Black Comedy Great Director.”

Must see TV? $4.70 buys you a season of “Apprentice” or “Prison Break”

The offerings include some pretty recent titles, though I didn’t see any you couldn’t find yet in the States. Lots of TV titles, too, in case you find yourself in China desperate for some “Apprentice” (touted as “Irresistible” and “Compelling”) or “Prison Break” (“Prisons were made to be broden” [sic]).

Interestingly, a guide to living in Shanghai I found warns that U.S. Customs identifies DVDs when x-raying bags at the airport and confiscates obvious fakes. Ex pats here say not to bring them back into the States (though many have no problem buying them for use here). I don’t intend to test security measures on my flight back home — even in the name of investigative journalism.

Photos by STL.

Beijing’s Yashow Clothing Market.
Fakes here today, gone tomorrow, back next week. (Photo by STL)

STL is back in Beijing!

I’ll be moderating a panel on online liability next week as part of the ”IP Protection in the Information Age” conference at Renmin University. It’s sponsored by the University and the Center for the Advanced Study and Research on Intellectual Property. 

That’s my excuse for being here. But while traveling, I do like to point out trademark items of note.

Here’s a quick one. A lawyer here took me to the Yashow Clothing Market, a building (pictured above) reputed to be full of counterfeit designer clothes. It’s in Sanlitun, a neighborhood filled with restaurants, bars, and Caucasians.

The problem was, there were’t many fakes to be seen. Sure, there were Starbucks, Manchester United, and Miami Heat t-shirts that probably (certainly) weren’t authentic, but the fake Izods, Gucci, and Burberry shirts I’d been promised were nowhere to be found.

My friend asked one of the salespersons. There was a raid last night, she said. All the fakes are gone.

But don’t worry, the salesperson said. Try back in two weeks and you’ll find what you’re looking for.

When you file an application to register a trademark with the U.S. Patent and Trademark Office, you take an oath.

You swear under penalty of perjury that the facts you have stated in your application are true.

For an intent-to-use application, that means you have a bona fide intent to use your mark in connection with all of your listed goods and services; and for a use-based application, you have actually used your mark — again, in connection with all listed goods and services.

You also swear that you own the mark; that no one else has a claim to your or a confusingly similar mark; and that the listed first-use date (for a use-based application) is accurate. Among other things.

Here’s the text of what you sign:

“The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.”

There’s a lot there. So beware.

The penalty for a false (or inaccurate) statement? Well, for practical purposes, you won’t go to jail or be fined for committing perjury, though you technically could. But you risk losing the very thing you’re trying to obtain: your trademark registration.

I’m saying all this to encourage you to make sure everything in your application is correct. If your lawyer completed your application, it’s still up to you to make sure it’s right. It’s your registration — not your lawyer’s — that may suffer the consequences.