Seattle Trademark Lawyer

I’m off to China!

I’ll be out through Feb. 15 helping teach new developments in trademark law to judges at China’s National Judges College in Guangzhou (briefly discussed here).

In the meantime, I thought it would be fun to look at some interesting brands I recently came across at a Vietnamese grocery store in Seattle.

This one’s pretty descriptive: TAIWAN BEER. Doesn’t leave much to the imagination. I wonder if the owner can prove secondary meaning.

 
Then there’s a pitch to moms: HEALTHY BOY BRAND soy sauce. Any truth to that claim?

And finally, my personal favorite, COCK BRAND and DUCKY BRAND noodles. 

Animals make great brands everywhere.

Have a good two weeks! 

Like the Gallo name in the wine business, the Korum name is well known in the car dealership business — in the south Puget Sound area, at least.

And like the Gallos, the Korums may differ as to who has rights to the family name in connection with the family business.

The Ninth Circuit famously laid the Gallos’ dispute to rest twenty years ago in E. & J. Gallo Winery v. Gallo Cattle Company, 967 F.2d 1280 (9th Cir. 1992).

The Western District of Washington may be just getting started with respect to the Korums.

Korum Automotive Group, Inc., owns a number of car dealerships in Puyallup under the KORUM trademark and trade name. The company was founded by Jerry Korum, who has used the mark for 41 years.

Salstrom Motors Inc. sells used cars under the name “Korum’s Auto Outlet” in Tacoma. Salstrom is owned in part by Andrew Jacobs.

In September, Korum Automotive sued Salstrom and Mr. Jacobs for trademark infringement, and moved for a preliminary injunction. On Jan. 17, Western District Judge Benjamin Settle granted the motion, finding that defendants’ use of KORUM has caused actual confusion and that Korum Automotive is likely to succeed on the merits of of its trademark infringement claim.

What’s interesting is that defendants argued that Bill Korum — who appears to be connected with defendants — shares ownership rights in KORUM with Jerry Korum, which undercuts Korum Automotive’s rights and/or gives rise to defenses of laches or acquiescence. Apparently, Bill Korum has used KORUM in connection with his own Nissan dealership located in Puyallup.

Still, those arguments didn’t sway the court. 

“Even if the Court were to agree with Defendants’ argument that Bill Korum shares some kind of right in the KORUM mark,” the court found, “Korum Auto Group has shown that Bill Korum’s interest in the mark likely extends only to the Puyallup Nissan dealership at which he has been using the Korum mark.”

The court added: “[E]ven assuming the Defendants have shown that Bill Korum has a laches and/or an acquiescence defense to trademark infringement, he is not a defendant in this case and Defendants have failed to show that his defense would extend to the use of the mark in connection with Salstrom or Defendants’ use of the KORUM mark.”

The case cite is Korum Automotive Group, Inc. v. Salstrom Motors Inc., No. 11-5690 (W.D. Wash. Jan. 17, 2012) (Settle, J.).

Wikipedia “went dark” Jan. 18 to protest PIPA and SOPA,
displaying this page instead

Last week, Congress went from PIPA and SOPA to OPEN.

These are the acronyms for the federal bills aimed at curbing the sale of counterfeit goods through foreign Web sites.

It was a remarkable change. Congress had broadly supported the Senate’s Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act (PIPA or PROTECT-IPI) and the House’s similar Stop Online Piracy Act (SOPA). Indeed, the Senate was scheduled to vote on PIPA on Jan. 20.

But Google, Wikipedia, and other online providers fought back. They argued the bills’ authorizing the Justice Department to order search engine providers to remove foreign Web sites that sold counterfeit goods from search engine results — rendering them invisible for practical purposes — constituted censorship, turned search engine providers into the Internet police, and unfairly threatened them with liability if they did not comply.

So on Jan. 18, they launched a coordinated campaign against the bills. Wikipedia, most dramatically, “went dark” by making its content inaccessible to illustrate what would happen to a violating site if the bills passed. Google and others implored visitors to oppose the legislation.

That same day, both the House and Senate introduced a compromise bill, the Online Protection and Enforcement of Digital Trade Act (OPEN). The new bill moves enforcement authority to the International Trade Commission, directs compliance efforts at payment processors and advertisers doing business with foreign Web sites that are “primarily” and “willfully” infringing the trademarks and copyrights of U.S. owners, and gives the site owners an opportunity to be heard. It also excepts Web sites that follow reasonable notice-and-takedown policies when IP owners complain about infringing content.

And, voila, congressional support for PIPA and SOPA seemingly evaporated. Even some of the bills’ co-sponsors withdrew their names and said they would oppose the measures if put to a vote.

It’s remarkable how quickly it happened. Not to mention how PIPA and SOPA instantly became cocktail party fodder — and not just with intellectual property lawyers.

The text of OPEN is accessible here; Wikipedia treatment here. At first blush, I’m in favor of it. Some parts of our economy are getting hammered by counterfeiters. Our enforcement tools are expensive and cumbersome. If a counterfeiter, its Web site host, and its domain name registrars are all located in Foreign Country X, a rational counterfeiter may very well take his chances with a U.S. court whose power only extends to U.S. borders. OPEN seems to address that problem, and isn’t as heavy-handed as PIPA and SOPA.

Until someone convinces me otherwise, I think it’s a big improvement over the status quo.

I lost a good friend and mentor last week. The whole Seattle legal community did.

George Bassett — the first person I was fortunate enough to work with when I joined Graham & Dunn — passed away after a courageous, years-long battle with cancer. I can’t think of a better example of how to practice law, treat others, and live life. George had a zest for it all. He was honest and respectful to a fault. He had so many interests and was so well-read, I doubt he ever got bored. He was a real role model — an embodiment of what to strive for in life.

Here’s what Graham & Dunn had to say when it broke the sad news on Friday:

“Our beloved friend and partner George Bassett passed away on January 19, 2012, peacefully, at home with his family. George grew up in Michigan and moved to Seattle in 1969, after having graduated earlier that year from Michigan Law School. George was an upstanding member of the Washington bar for more than 42 years, practicing first in the state attorney general’s office, then as a founding member of the Bassett & Morrison law firm, and finally as a shareholder at Graham & Dunn since 1991.

“After his family, and maybe fishing, George most enjoyed practicing law, and he was extremely good at it. Known as an astute and skilled litigator who achieved great results for his clients, George also was universally recognized for maintaining the highest standards of civility and professionalism throughout his career. He was always ready with a kind word or sage advice whether he was a colleague or an adversary. A rare man, George will be greatly missed.”

Well said. 

George will be greatly missed, indeed. I know I will never forget him.

I’ve got a fantastic opportunity coming up.

In February, I’m going to Guangzhou, China, with Chief Judge Randall Rader of the Federal Circuit and Washington, D.C., attorney Michael Remington to help train 200 Chinese judges at the National Judges College in new developments in U.S. intellectual property law. Chief Judge Rader’s got patent law, Mr. Remington has copyright law, and I’m covering trademark law.

So, trademark developments have been more on my mind than usual.

And this begs the question: what are the hot trends in trademark law?

Here’s what I’m chewing on:

• The proposed PROTECT-IP Act (Senate) and SOPA (House) bills aimed at stopping the importation and sale of counterfeit goods through foreign Web sites, and the downsides of each.
• Trademark bullying — over-reaching brand owners and how angry consumers pay them back.
• Keyword advertising, including which way the wind seems to be blowing in the Rosetta Stone v. Google appeal.
• Liability for online auctioneers following Tiffany v. eBay.
• Rights of publicity, including the Greene v. CMG appeal and how some states confer broad rights that likely differ from those recognized in China.

What am I missing? What would you want Chinese judges to know about?