Seattle Trademark Lawyer

Surprise, surprise!

Ok, not really.

Plaintiffs Experience Hendrix, L.L.C., and Authentic Hendrix, LLC, are appealing to the Ninth Circuit their Pyrrhic victory over HendrixLicensing.com, Ltd., HendrixArtwork.com, and Andrew Pitsicalis.

Sure, the Western District granted judgment in their favor. But along the way, it also peeled off all but $60,000 in damages and $50,000 in attorney’s fees of the $1.7 million judgment the jury awarded them. The court also found unconstitutional the expansive amendment to Washington’s right of publicity statute that gave them — as Jimi Hendrix’s heirs — the right to sue in Washington, even though Mr. Hendrix was domiciled in New York at the time of his death. (STL posts on the decisions here and here.)

On Oct. 17, the plaintiffs filed a notice of appeal. They state they want the Ninth Circuit to review the Western District’s orders:

• Granting defendants’ motion for judgment as a matter of law, and in the alternative, for a new trial;
• Denying plaintiffs’ motion to dismiss defendants’ counterclaims for declaratory relief;
• Granting in part and denying in part the parties’ cross-motions for summary judgment; and
• Denying plaintiffs’ motion for treble damages and denying in part plaintiffs’ motion for attorney’s fees and costs.

Of course, plaintiffs also seek review of the final judgment the court entered in the case.

Among other things, it will be hugely interesting to see what the Ninth Circuit does with the Western District’s right of publicity ruling.

The case cite is Experience Hendrix, L.L.C. v. HendrixLicensing.com, Ltd., No. 09-285 (W.D. Wash.).

One of my favorite trademarks. Since it requires a little imagination
to understand the meaning, it’s a classic “suggestive” trademark.

Time for a little Trademark 101.

The difference can be slight, but the legal effect huge: what’s deemed to be a “descriptive” trademark, and what’s deemed to be “suggestive.”

First, the consequences. A descriptive trademark needs “secondary” meaning to be protected as a trademark. Secondary meaning signals to consumers that goods or services sold in connection with the mark come from a particular source. It’s only through long use — usually five years or more — or lots of sales that a descriptive trademark acquires this secondary meaning apart from its primary, descriptive, meaning, and thus begins to function as a trademark. 

Not so with a suggestive marks. They are deemed to be inherently distinctive. In other words, they’re legally capable of functioning as a trademark the moment they’re used. That means no need to establish secondary meaning.

Given the important legal payoff, what determines whether a mark is descriptive or suggestive? Here are two tests you can use to gauge on which side of the fence the mark you’re considering is likely to fall. The first is the “degree of imagination test.” A descriptive trademark immediately tells the consumer something about the branded good or service. SEATTLE’S BEST COFFEE is descriptive because it immediately tells the consumer that the coffee being sold comes from Seattle and the seller thinks it’s the best. It doesn’t require any imagination for the consumer to receive that message.

Not so with a suggestive mark. A classic suggestive mark is CHICKEN OF THE SEA. It requires a little thought for the consumer to follow the logic that because chicken don’t live in the sea, the trademark owner must be selling some kind of seafood that is akin to chicken. Hmmm…. tuna! If the consumer needs to exercise at least a little imagination to get the information the mark provides, the mark is likely to be suggestive.

Another useful test is the “competitors’ need” test. If allowing one party to monopolize a word as a proprietary brand would tend to deprive competitors of the legitimate need to use a similar word in advertising, the mark is more likely to be descriptive. If you’re a cracker company, it wouldn’t be fair for the Crispy Cracker Co. to be able to prevent you from using “CRISPY” as part of your mark. To do so would give that company a competitive advantage, which isn’t something that trademark law is supposed to do. (Trademarks are simply supposed to indicate source.)

Hopefully these tests will help you decide to adopt the stronger “suggestive” trademark over the weaker (and without secondary meaning, completely unprotectable) “descriptive” trademark. You would be aghast at how much money brand owners spend on attorneys litigating about which side of the line their trademark falls.

For that reason, the better practice would be avoid the question altogether and to choose a trademark that would be classified as “arbitrary” (an ordinary word placed in an unfamiliar context, like APPLE for computers) or “fanciful” (a made-up word that doesn’t have any meaning other than as a trademark, like EXXON for gas). That’s the way to maximize your legal protection!

I still don’t think it’s a good poster-boy (or girl) for trademark bullying, but the NYT published a follow-up article saying Procter & Gamble had settled its dispute with a mom-owned personal care products company. (See STL post about the NYT’s first article.)

The dispute arose over P&G’s prior use of WELLA for hair care products and the startup’s adoption of WILLA for skin care products.

Both NYT articles used the dispute to discuss trademark bullying — as if P&G had over-reached in asserting its rights.

I’m all for the mainstream media’s help in familiarizing the public with issues that trademark practitioners work with every day. In fact, I’m grateful for it. I just — again — question whether the WELLA vs. WILLA dispute is a good vehicle for introducing the issue. I don’t at all see P&G as being another Monster Cable — threatening everyone under the sun who uses MONSTER as a trademark in any context, regardless of whether confusion would be (even remotely) likely.

Again, P&G didn’t do itself any favors when it used overbearing language in contacting the startup. It wasn’t exactly graceful when it told the owner-mother that if she did not immediately drop her trademark, it would resort to “lengthy and expensive alternative measures.” Still, it doesn’t seem at all unreasonable that the owner of WELLA for personal care products would not want a new entrant to start using WILLA also for personal care products.

To me, the media’s depiction of the suit shouldn’t have been big vs. little. It would have been more accurate (though I guess less interesting) to portray the dispute simply as prior user vs. later user.

So how was the dispute resolved? The article says terms are confidential, but the startup will get to keep using WILLA.

Mel Simburg and I are presenting at the next King County Bar Association’s IP Law Section meeting Nov. 3.

The topic is plenty topical: “The Current State of Personality Rights (Rights of Publicity).”

We’re going to discuss the state of the statute. Since Washington is a key right of publicity jurisdiction — and we have the Hendrix decision finding parts of our statute unconstitutional — we should have plenty to discuss.

See you noon in the KCBA Large Conference Room, 1200 5th Avenue, Suite 600, in Seattle. I believe it’s free for members, who can even stream the hour-long program from the warmth and comfort of their own offices.

Whether you attend virtually or in the flesh, please bring your questions and discussion points.

You file a trademark application. How can you make the most out of your filing, before the U.S. Patent and Trademark Office issues your registration?

I get this question from time to time.

Unfortunately, it’s not like patent law, where an applicant can flex some legal muscle with competitors by saying “patent pending.”

There is no “trademark registration pending” status, at least not one that will get you any mileage with would-be copycats. Indeed, telling competitors you have applied for a trademark registration can work against you. Doing so could alert them that they have the opportunity to object to your registration. Once an application clears the examination hurdle (where a PTO examining attorney analyzes the application against a number of statutory bars to registration), the mark is published for opposition, which gives all-comers who believe they would be injured by your registration 30 days to start an opposition proceeding with the U.S. Trademark Trial and Appeal Board by filing a notice of opposition. Why bring this opportunity to their attention? Unless your competitors have paid a vendor to watch new trademark filings — or are checking the PTO’s database themselves — they probably won’t know that you have filed an application, cleared the examination hurdle, and only need to overcome the opposition hurdle before getting your registration.

The most you can (and should) do is use the “TM” symbol when you use your mark. Doing so tells competitors that you claim the words preceding the symbol as your own and that they should steer clear of your mark when adopting a competing mark. It doesn’t have the bite that a “Circle-R” symbol has, but it conveys the same deterring message that competitors will be asking for trouble if they don’t stay away from your mark when marketing competing goods and services.