Seattle Trademark Lawyer

Here’s a collection of trademark basics, five years in the making. I’d been meaning to corral these suggestions for new clients and new trademark owners. Hopefully these posts shed some light on this murky business (which really isn’t that murky after all).

• What is a trademark? A copyright? A patent?
• How to select a protectable trademark
• The difference between descriptive and suggestive trademarks, and why it matters
• The right way to use a trademark
• What you need to know about trade dress
• Maximizing trademark rights without obtaining a registration
• Is state trademark registration appropriate for your mark?
• The benefits of obtaining a federal registration
• Can one reserve a trademark?
• A strategy to consider when registering a trademark on a budget
• Strategies to consider when your application for trademark registration is pending
• The enlightened way to enforce trademark rights
• If I win my trademark infringement claim, can I recover my attorney’s fees?
• Tips on drafting enforceable injunctions
• A checklist in drafting trademark license agreements

Other posts focusing on trademark basics can be found by clicking the “Trademark Law 101” category hyperlinked below.

Have I missed any topics? Anything still seem mysterious? Let me know!

The Associated Press reports that colleges are registering their brands as .xxx domain names to prevent porn sites from doing so.

Their strategy takes advantage of the sunrise provisions for .xxx domain names that STL discussed here.

That’s a fine strategy for brand owners who have concluded that blocking porn providers is worth the financial commitment required to register domain names the brand owners will never use.

After all, a porn site associated with universityofwashington.xxx probably wouldn’t reflect well on the University of Washington (who is mentioned in the article), even though no one would think the site is owned or approved by the UW in any way.

Still, it requires the UW and similar brand owners to pay a bunch of money to domain name registrars forever to continue to tie up those names. And there’s no way a brand owner can think of all possible combinations involving their brand that a porn seller might use.

Indeed, knowing a .xxx site isn’t likely to create a likelihood of confusion with the brand owner’s legitimate site, brand owners may choose to ignore the .xxx issue.

It’s just too bad the .xxx scheme is potentially as much of a headache for brand owners as it is a boon for domain name registrars.

We used to have a sliding scale in the Ninth Circuit for analyzing the elements needed to obtain a preliminary injunction, a remedy that’s potentially available in trademark infringement cases.

Just a few years ago, a Ninth Circuit plaintiff needed to show either: “(1) a likelihood of success on the merits and the possibility of irreparable injury; or (2) that serious questions going to the merits were raised and the balance of hardships tips sharply in its favor.” As the court explained, “These two alternatives represent ‘extremes of a single continuum,’ rather than two separate tests…. Thus, the greater the relative hardship to [the party seeking the preliminary injunction,] the less probability of success must be shown.” See, e.g., Clear Channel Outdoor Inc. v. City of L.A., 340 F.3d 810, 813 (9th Cir.2003).

Then came Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008), which reversed a Ninth Circuit preliminary injunction decision and seemingly banished the sliding scale — at least to the extent it enabled a plaintiff to obtain a preliminary injunction with only the “possibility” of irreparable harm. As the court put it, “[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.”

But the sliding scale has slid back into favor.

In January, the Ninth Circuit held that the “‘serious questions’ approach survives Winter when applied as part of the four-element Winter test. That is, ‘serious questions going to the merits’ and a balance of hardships that tips sharply towards the plaintiff can support issuance of a preliminary injunction, so long as the plaintiff also shows that there is a likelihood of irreparable injury and that the injunction is in the public interest.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011).

And last week, the court followed the same path in deciding Developmental Services Network v. Douglas, 2011 WL 5966363 (9th Cir.). It found: “‘Plaintiffs seeking a preliminary injunction in a case in which the public interest is involved must establish that they are likely to succeed on the merits, that they are likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in their favor, and that an injunction is in the public interest.’ We have glossed that standard by adding that there is a ‘sliding scale’ approach which allows a plaintiff to obtain an injunction where he has only shown ‘serious questions going to the merits’ and a balance of hardships that tips sharply towards the plaintiff … so long as the plaintiff also shows that there is a likelihood of irreparable injury and that the injunction is in the public interest.”

So, the sliding scale is alive and well after all — as long as it lives within the four-part Winter test and isn’t applied to lessen the plaintiff’s showing of irreparable harm beneath the threshold of a likelihood of irreparable harm. Until, perhaps, the Supreme Court revisits the issue.

This town’s only big enough for one Blue Box, Blue Box Group says

I came across this story on a Seattle startup.

Bluebox Now is a Web-based marketing company. It had begun to build some momentum. It had a big customer and good prospects for outside funding.

Then it was hit with what one of its founders described as a “doozy” of a legal problem — it got a cease-and-desist letter from an app host called the “Blue Box Group,” also based in Seattle.

Bluebox Now says it’s changing its name.

The founder said they thought they could win the trademark dispute, but they couldn’t afford to find out.

“Instead of us paying $40,000 to fight this, we’re going to end up changing our name,” he said. “The blue box itself — the gift that we give — is still a key component to what we do. It’s just changing up the name, and we’re going to be OK with it.”

It’s good Bluebox Now was able to solve its problem and move on. It’s just too bad it had to suffer through what I imagine were at least a few stressful days and sleepless nights. All over an issue that could have been avoided through a careful trademark search.

It’s hard enough getting a new business off the ground. Don’t make it even more difficult by triggering a trademark dispute or having to abandon a name that’s starting to earn a good reputation.

Washington’s anti-SLAPP statutes are having an effect on trademark lawsuits.

The statutes, RCW 4.24.510 and .525, are intended to protect against lawsuits brought with the aim of discouraging persons from exercising their constitutional rights, otherwise known as Strategic Lawsuits Against Public Participation (SLAPP).

In Phoenix Trading, Inc. v. Steven Kayser and Loops LLC, the plaintiff alleged that defendants made a number of statements to persons within the City and State of New York about plaintiff, including that plaintiff “had obtained products manufactured by defendants, altered those products by shaving or cutting defendants’ trademarks off of the products, and then labeled the packages of those products as having been manufactured by plaintiffs, thereby falsely representing to third parties that the altered product was manufactured by plaintiffs.”

On Nov. 21, the Western District granted defendants’ special motion to strike under the anti-SLAPP statute and threw the case out. In doing so, it awarded defendants their fees and costs, and $30,000 in statutory penalties ($10,000 per defendant).

Now, this principally was a defamation case, but it sure had Lanham Act overtones.

The case cite is Phoenix Trading, Inc. v. Steven Kayser, No. 10-920 (W.D. Wash. Nov. 21, 2011) (Robart, J.).