Seattle Trademark Lawyer

For those who might be interested, I’ll be speaking on trademark issues a few times this summer:

• “Introduction to U.S. Trademark Law,” 2011 Patent & IP Law Summer Institute, Center for Advanced Study & Research on Intellectual Property (Seattle, July 15) (info here)
• “Copyright, Trademark & Other IP Law,” LawReview CLE (Seattle, July 19) (info here)
• “Keyword Advertising and Trademark Rights,” Association of Intellectual Property Firm’s annual meeting (Chicago, Sept. 12) (panel with Jonathan Bloom of Weil, Gotshal & Manges LLP (NYC) and Tim Bourne of Ridout & Maybee LLP (Ottawa) (info here).

All look like fantastic programs. If you attend one, please say hi!

In March, Western District Judge Richard Jones entered a permanent injunction against defendant “roof broker” James Garcia in the false advertising case of CertainTeed Corp. v. Seattle Roof Brokers. (Past STL posts here and here).

The order permanently enjoins Mr. Garcia and his unincorporated entities from stating in any advertising promoting his roofing business that “CertainTeed products ‘have a history of premature failure’” and “that CertainTeed products will fail or will not pass a resale inspection after 15-20 years, or any other statements in which Mr. Garcia represents that the majority of CertainTeed roofs will fail or will not pass an inspection after a particular term of years.”

On July 8, the court awarded CertainTeed its attorney’s fees in the amount of $114,681.50. Since it found Mr. Garcia had violated the Consumer Protection Act, the court did not need to determine that the case was “exceptional” for purposes of awarding fees under the Lanham Act.

The court found: “…. CertainTeed has not attempted to claim fees for much of the time its attorneys expended in this litigation. This is in part because CertainTeed acknowledges that it did not prevail on every claim or every request for relief from the court. In part, however, CertainTeed declined to claim certain fees simply to ensure that its overall fee request was reasonable. The court finds that CertainTeed could have reasonably claimed an award higher than the one it requested.”

The case cite is CertainTeed Corp. v. Seattle Roof Brokers, No. 09-0563 (W.D. Wash. July 8, 2011) (Jones, J).

Defendants waited too long to remove plaintiff’s Lanham Act claim to federal court. Therefore, their removal was improper.

That’s what Western District Judge Ricardo Martinez found on July 1 in the trademark infringement lawsuit Homax Products, Inc., brought against USA Homemax, Inc., and two other defendants.

The court also found it didn’t matter that the plaintiff’s settlement agreement with one of the defendants mandated Whatcom County Superior Court (state court), even though the other defendants believed that fact prevented them from removing the case to federal court until that defendant had been severed from the case. 

“Here, the face of Plaintiff’s complaint clearly alleges claims arising under the Lanham Act, a federal cause of action. As such, this Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331. Defendants were required to file a notice of removal within thirty days of receipt of this initial pleading. [28 U.S.C.] § 1446(b). Here, Defendants were served on April 17, 2010. They were served with the amended complaint in September, 2010. Defendants did not meet the 30-day deadline. Their failure to do so was a complete bar to removal.

“Defendants contend that ‘because of [their] settlement agreement, federal jurisdiction did not exist over the claims against Defendant Homax, Inc. and, accordingly Defendants were unable to remove’ until the claims against HI had been severed. However, a ‘forum selection clause does not deprive a federal court of subject matter jurisdiction.’ Although there was perhaps a likelihood of remand depending on the court’s interpretation of the forum selection clause at issue, a federal district court had subject matter jurisdiction over the action as of the date it was filed by virtue of the Lanham Act claim presented on the face of the complaint. Had Defendants timely removed, the court could have exercised its jurisdiction to interpret the contract and determine whether the forum selection clause was enforceable. Accordingly, the action was removable as of April 17, 2010. Defendants did not meet the 30-day deadline.”

Based on that finding, the Western District granted defendants’ motion to remand the case to Whatcom County Superior Court.

The case cite is Homax Products, Inc. v. USA Homemax, Inc., No. 11-0534 (W.D. Wash. July 1, 2011).

Menu featuring “American Kobe Beef” burgers and dogs

I’d always assumed “Kobe beef” came from a particular cattle breed raised in Japan.

Indeed, that’s what Wikipedia says (for what that’s worth): “Kobe beef refers to cuts of beef from the black Tajima-ushi breed of Wagyu cattle, raised according to strict tradition in Hyōgo Prefecture, Japan.” It goes on to say Kobe beef must have the following qualities:

• “Tajima cattle born in Hyōgo Prefecture
• Farm feeding in Hyōgo Prefecture
• Bullock or castrated bull, to purify the beef
• Processed at slaughterhouses in Kobe, Nishinomiya, Sanda, Kakogawa and Himeji in Hyōgo Prefecture.
• Marbling ratio, called BMS, of level 6 and above.
• Meat Quality Score of 4 or 5
• Gross weight of beef from one animal is 470 kg or less.”

That’s awfully specific. So what’s this “American” Kobe beef I’ve seen in the States?

I know that menu item got a hearty laugh from two intellectual property lawyers from Japan I lunched with a while back.

Judging by U.S. trademark registrations, use of the phrase seems like a free-for-all.

There are three registrations containing “American,” “Kobe,” and “beef,” each owned by a different registrant: MISHIMA RANCH EXCLUSIVE EXTRAORDINARY DISTINCT WAGYU BEEF AMERICAN STYLE KOBE BEEF and Design for “beef,” with “Mishima Ranch” and “Wagyu Beef American Style Kobe Beef” disclaimed; AMERICAN CERTIFIED KOBE BEEF for “marketing services, namely, promoting the sale of beef products…”; and PREMIER AMERICAN KOBE BEEF for “beef,” with “Kobe beef” disclaimed. Each is registered on the Supplemental Register, indicating the PTO’s belief that the marks are descriptive.

Some producers state their “American Kobe Beef” comes from an American-raised breed of Japanese Wagyu cattle crossed with Black Angus cattle. However, it doesn’t look like that’s consistent across the board.

A certification mark could sharpen the focus on what “American Kobe Beef” really is — and whether it even exists apart from (Japanese) Kobe beef.

Without one, it’s still not clear to this mostly-vegetarian trademark lawyer what that phrase really means.

Here’s a case complaining about illegally-copied music, but there’s nary a copyright claim in sight.

It’s all based on trademark and unfair competition law.

In Slep-Tone Entertainment Corp. v. Lady Luck Steakhouse & Saloon Inc., plaintiff manufactures and sells karaoke tracks. It claims the defendant venues and karaoke jockeys (KJs) “illegitimately obtain, copy, share, distribute, and/or sell media-shifted copies of the Plaintiff’s accompaniment tracks” without paying royalties to the copyright owners of the underlying musical works.

The lawsuit, filed in the Western District on July 1, claims this amounts to counterfeiting, since the copies include plaintiff’s SOUND CHOICE registered trademark and the subject discs are “virtually indistinguishable from genuine Sound Choice materials.”

The complaint also asserts defendants’ use of counterfeit karaoke tracks constitutes unfair competition. “Illegitimate competitors offer libraries of tens of thousands of songs, which would have cost $50,000 to $100,000 or more to acquire legitimately, but produce shows for one-third the rates a legitimate KJ can offer. The result is significant financial pressure on once-legitimate KJs to skirt or ignore the law and become pirates, simply to stay in business. Slep-Tone has been forced to undertake this litigation in order to ensure that it survives and continues to produce high-quality karaoke music its fans demand and to level the playing field for the legitimate KJs.”

Defendants have not yet answered plaintiff’s complaint.

Plaintiff recently filed similar lawsuits in the Northern District of Ohio, the Southern District of Ohio, and the Eastern District of Virginia.

The case cite is Slep-Tone Entertainment Corp. v. Lady Luck Steakhouse & Saloon Inc., No. 11-1098 (W.D. Wash.).