Seattle Trademark Lawyer

Likelihood of hilarity: McDonald’s vs. McDowell’s

I had the good fortune of catching “Coming to America” last night on cable.

It’d been at least 20 years since I’d last seen it.

I now realize it’s the perfect trademark infringement comedy for Independence Day.

Check out “McDowell’s” owner Cleo McDowell’s (John Amos) explanation to Prince Akeem (Eddie Murphy) — working on the restaurant’s cleanup crew to get close to Cleo’s daughter and fulfill his dream of marrying an average American woman — why McDowell’s has had problems with McDonald’s:

“Look, me and the McDonald’s people, we have sort of a misunderstanding. See, they’re McDonald’s. I’m McDowell’s. They got the Golden Arches. Mine is the Golden Arcs. See, they got the Big Mac. I got the Big Mick. They both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions. But they use a sesame seed bun. My buns have no seeds.” (YouTube clip here.)

Classic stuff. Funny watching as a college freshman; hilarious watching as a trademark lawyer.

Happy Fourth!

Last year, Plaintiff Cascade Yarns, Inc., brought suit against competing yarn manufacturer Filatura Pettinata V.V.G. Di Stefano Vaccari & C. (S.A.S.) and a number of other competitors.

It alleged that defendants conspired to produce, market, and sell mislabeled yarn to consumers in violation of the Lanham Act and the Racketeer Influenced and Corrupt Organization Act. In particular, it claimed that defendants misrepresented the amount of cashmere, mohair, silk, alpaca, camel, or milk protein fiber in their yarns.

Filatura, an Italian company, moved to dismiss for lack of personal jurisdiction.

On June 17, the Western District granted Filatura’s motion.

“Because Cascade has alleged violations of RICO, jurisdiction over Filatura might be exercised under 18 U.S.C. § 1965(b), which allows for nationwide service of process on a defendant as per Fed. R. Civ. P. 4(k)(1)(C), and hence jurisdiction in this Court. However, this Court has already found that RICO jurisdiction does not apply in this case. Moreover, Filatura was not served in the United States, which casts the RICO jurisdiction further into doubt. Thus Filatura must meet the constitutional criteria ordinarily required for personal jurisdiction in Washington.”

The court went on to find that Cascade did not make that showing because it did not show that Filatura shipped the yarns at issue directly to Washington; Filatura’s business dealings with Cascade did not establish purposeful availment of this forum; and that Filatura’s alleged conspiracy with other defendants subject to jurisdiction here was not sufficient.

The court summarized: “None of Cascade’s theories demonstrate that Filatura expressly aimed any intentional acts causing harm in Washington. Cascade therefore does not satisfy the effects test, and consequently has not made a showing of purposeful direction. A showing of purposeful direction is required to establish specific personal jurisdiction. Cascade has thus failed to establish that this Court has jurisdiction over Filatura.”

The order does not affect Cascade’s claims against the other defendants.

The case cite is Cascade Yarns, Inc. v. Knitting Fever, Inc., 2011 WL 2470671, No. 10-861 (W.D. Wash. June 17, 2011) (Marintez, J.).

This Eastern District case started with a claim for violation of the Lanham Act. (STL coverage here and here.)

It ended in one of the attorneys being disbarred.

Here’s the Washington Supreme Court’s rundown:

“This attorney discipline case focuses on an ambiguous written fee agreement, the representation provided in the litigation, and the attorney’s conduct during the grievance investigation. Attorney W. Russell Van Camp required a $25,000 initial ‘retainer’ fee to represent a client in an injunction suit, but he did not explain to the client whether it was a nonrefundable flat fee, an hourly fee, or something else. Nor did the fee agreement Van Camp prepared. When the client expressed confusion about the fee, Van Camp asserted it was a flat fee and made no effort to renegotiate in accordance with the client’s understanding that he would be charged an hourly rate. In the suit, despite numerous settlement offers from opposing counsel and his client’s desire to settle, Van Camp resisted settlement, prolonging the case, and neither communicated nor explained the settlement offers to the client. The client was not consulted or advised concerning the claims against him and the options available to him in resolving the case. After the client filed a grievance with the Washington State Bar Association (WSBA), Van Camp submitted differing and exaggerated time reconstructions based on hours he claimed to have worked on the case to justify the amount of the fee, despite having little to no work to show for it.”

The court went on to conclude: “The six ethical violations found by the hearing officer and affirmed by the Disciplinary Board are supported by substantial evidence. Van Camp violated his duty to advise and inform his client, to abide by the client’s objectives, to act with reasonable diligence, and to be honest with his client. He used a fee agreement he knew to be ambiguous, failed to explain the basis for his fees, and charged an unreasonable fee. He did this knowingly and intentionally for his own benefit. Numerous aggravating factors, including similar prior discipline and bad faith obstruction of the disciplinary process, support the sanction of disbarment.”

Wowza.

The case cite is In re Disciplinary Proceeding Against Van Camp, __ Wn.2d. __, 2011 WL 2409654, No. 200,811-9 (June 16, 2011) (en banc).

Plaintiff’s logo and screen shot from defendant’s Web site

Just in time for summer! (Summer in Seattle doesn’t start until July 4.)

On June 20, Virginia-based The Skinny Dip, Inc., filed suit against Mill Creek, Wash.-based Skinny Dip Yogurt, LLC.

Plaintiff claims both parties own self-service frozen yogurt bars and defendant’s trademark infringes plaintiff’s federal registration for THE SKINNY DIP FROZEN YOGURT BAR and design.

Plaintiff claims a first-use date of May 2008. It does not allege when defendant started using its mark.

Defendant has not yet answered plaintiff’s complaint.

The case cite is The Skinny Dip, Inc. v. Skinny Dip Yogurt, LLC, No. 11-1032 (W.D. Wash.).

Once in a while, a misplaced charge of false advertising or commercial defamation triggers an anti-SLAPP statute.

Anti-SLAPP statutes prohibit strategic lawsuits against public participation. RCW’s newly-amended anti-SLAPP statute is codified at RCW 4.24.525. It protects constitutional speech that otherwise would be deterred by the prospect of having to defend an expensive lawsuit by allowing the defendant to bring a special motion to strike the claims at the outset of the suit.

Here’s how it works in Washington. Under RCW 4.24.525(4), a party may bring a special motion to strike “any claim that is based on an action involving public participation and petition.” A party bringing a such a motion “has the initial burden of showing by a preponderance of the evidence that the claim is based on an action involving public participation and petition. If the moving party meets this burden, the burden shifts to the responding party to establish by clear and convincing evidence a probability of prevailing on the claim. If the responding party meets this burden, the court shall deny the motion.”

If the defendant wins, the court will dismiss the claims subject to the motion, award the defendant its reasonable attorney’s fees, and impose a $10k penalty on the plaintiff as punishment for its wrongful attempt to chill speech. That’s a pretty big stick.

In New York Studio, Inc. v. Better Business Bureau of Alaska, Oregon, and Western Washington, the plaintiff sponsor of children’s talent shows sued the BBB for defamation, tortious interference, and violation of Alaska’s Consumer Protection Act over a press release the BBB issued urging consumers to be cautious of talent auditions that were being advertised. The press release did not identify the plaintiff as the sponsor of the event, though some of the media outlets that picked up the story did.

BBB brought a special motion to dismiss.

On June 13, the Western District of Washington concluded that BBB met its burden: “Alaska BBB has shown that the press release was distributed to a number of media outlets and was also available to the public on its website. The press release was a matter of public concern because it was a general caution to consumers, and multiple media outlets investigated the matter on their own. Alaska BBB has met its burden of showing by a preponderance of the evidence that its press release was a matter of public participation and petition. Therefore under the Anti–SLAPP Act, the burden shifts to New York Studio to show by clear and convincing evidence a probability of prevailing on its claims of defamation, tortious interference, and violation of the Alaska CPA.”

The court concluded that New York Studios failed to meet its heavy burden. So, it dismissed New York Studios’ claims, awarded attorney’s fees to the BBB, and awarded the BBB $10k in statutory penalties.

Now, the anti-SLAPP statute only applies to claims that would discourage public discussion or involvement in public affairs. But it sometimes may be something to consider before filing or defending a claim of false advertising or commercial defamation.

The case cite is New York Studio, Inc. v. Better Business Bureau of Alaska, Oregon, and Western Washington, 2011 WL 2414452, No. 11-5012 (W.D. Wash.) (Leighton, J).