Seattle Trademark Lawyer

Glassybaby’s (left) and a defendant’s votive candle holders

Folks may remember that local candle holder designer Glassybaby, LLC, filed trade dress claims against competing designers in April (STL post here).

On June 6, Western District Judge Marsha Pechman dismissed those claims. In short, she found they weren’t adequately pleaded in plaintiff’s complaint.

The court wrote that “Defendants argue that the complaint fails to identify the mark or illustrate the so-called distinctive design. Plaintiff’s complaint states that the hand-blown glass containers are distinctive, but it does not describe the design in any detail. It is not possible to determine what the features of the votive candle holders are and whether they are functional or non-functional. This is not adequate to satisfy Rule 12(b)(6). Plaintiff must plead with at least some detail what the purported design is and how it is non-functional.”

The court similarly dismissed plaintiff’s dilution and Consumer Protection Act claims. However, it granted plaintiff leave to attempt to correct its pleading deficiencies in an amended complaint.

The case cite is Glassybaby, LLC v. Provide Gifts, Inc., No. 11-00380 (W.D. Wash. June 6, 2011) (Pechman, J.).

Tiffany’s iconic robin’s egg blue (top) — and Burberry’s new purse

Robin’s egg blue. It’s all over Tiffany. Tiffany even has a registration for its blue box.

Yet, robin’s egg blue isn’t exclusively Tiffany’s. In fact, it appears to be one of this year’s hot colors. I’ve seen it on furniture at Roche Bobois and Macy’s. Last week I came across it again on a Burberry handbag at Nordstrom. (On my way to the men’s department, I swear.)

If robin’s egg blue were used by sellers of low-cost items, this might amount to trademark infringement or dilution. But when used by sellers of luxury items, it paradoxically appears to be ok.

Now, Roche Bobois, Macy’s, and Burberry aren’t using robin’s egg blue on boxes that contain jewelry. But they do sell items that involve jewelry, and Tiffany sells items that involve furniture and handbags. Nor are the colors exactly the same, but they’re close — to my eye, closer than the photos here indicate.

It’s interesting that a color that has become so iconic, so intertwined with the goodwill of one luxury retailer is being used with increasing frequency by other luxury retailers. I’m not saying that Tiffany isn’t enforcing its rights, or the other sellers are trying to pass off their goods as coming from Tiffany. Indeed, Roche Bobois, Macy’s, and Burberry have terrific reputations of their own. I suppose what I’m noticing is simply the intersection between trademarks (where one company uses the color to identify the source of its goods) and aesthetic functionality (where other companies use the color because it’s in fashion).

Any likelihood of confusion with a prior trademark used in Canada can make a trademark registration vulnerable to expungement (cancellation) in that country.

That’s what the Supreme Court of Canada found last week in a relatively rare decision that clarified Canadian trademark law.

Many Canadian practitioners had believed that geography played a role in deciding whether a senior user’s user’s unregistered mark would affect a junior user’s ability to maintain its registration.

Not so.

As the Canadian Trademark Blog put it: “This result was contrary to what most practitioners in Canada assumed the test to be for likelihood of confusion in the context of non-entitlement, based on the wording of the Trade-marks Act, which makes no express reference to the geographic location of prior use in the relevant provisions of the Act.”

Speaking for the court, Justice Marshall Rothstein wrote that “[i]n order for the owner of a registered trade-mark to have exclusive use of the trade-mark throughout Canada, there cannot be a likelihood of confusion with another trade-mark anywhere in the country.”

In other words, if Owner A obtains common law trademark rights by using its mark before Owner B obtains its trademark rights, Owner A can get Owner B’s registration expunged in Canada — even if Owner A uses its mark in the Yukon Territory and Owner B uses its mark in Nova Scotia.

That result seems to be in line with trademark registration law in the States. Anyone here with prior rights who believes they would be “damaged” by the junior user’s continued registration may seek to have the junior user’s registration cancelled, notwithstanding the geographic location of the senior user’s use. The only practical limitation is the senior user must bring the cancellation proceeding within five years of the registration, which I understand is about the same in Canada.

The case cite is Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 (May 26, 2011).

In November 2009, the Central District of California denied the prevailing defendant’s motion for attorney’s fees.

The court found plaintiff’s claims couldn’t have been groundless when it survived defendant’s motion for summary judgment. It reasoned: “Given the standard for summary judgment, the Court is not willing to find that a party has litigated a groundless or unreasonable case when the Court itself found that there were genuine issues of fact on all disputed claims. Indeed, what wold have been ‘exceptional’ is if Plaintiff had unilaterally stopped litigating the case after the Court made such a finding.”

On appeal, the Ninth Circuit held that wasn’t a good basis to deny defendant’s request.

“In denying Fortune’s motion for attorney’s fees under the Copyright and Lanham Acts, the district court gave undue weight to the fact that Tokidoki survived Fortune’s motion for summary judgment. The summary judgment ruling should have been afforded little or no weight in deciding whether to award fees, given that many of the factual contentions upon which Tokidoki relied at the summary judgment stage were not borne out at trial.”

The Ninth Circuit vacated the denial of fees and remanded to the district court “to reconsider Fortune’s motion, without regard to the court’s summary judgment ruling,” though it expressed no opinion about whether a fees award was appropriate.

The case cite is Tokidoki, LLC v. Fortune Dynamic, Inc., 2011 WL 2036466, Nos. 09–56388, 10–55661 (9th Cir. May 25, 2011).

In the interests of completeness, I’d wanted to write about the Ninth Circuit’s recent trademark decision in Egg Works, Inc. v. Egg World, LLC.

But what was there to say?

In affirming the district court’s denial of the plaintiff’s motion for a preliminary injunction, the Ninth Circuit seemed to say it all:

“The district court correctly identified the legal standard for likelihood of confusion of a trademark, its findings were not clearly erroneous, and the district court did not clearly err in finding no likelihood of confusion concerning appellants’ trademark. We conclude that the district court did not abuse its discretion in concluding that appellants failed to meet the requirements to merit preliminary injunctive relief. Accordingly, we affirm the district court’s denial of appellants’ motion for a preliminary injunction.”

But there’s more. Las Vegas Trademark Law Blogger Ryan Gile fills in the interesting back story, which involves a dispute between two Las Vegas breakfast restaurants.

It’s also noteworthy that, as Ryan points out, the appellee won its appeal and didn’t even file a brief. Now that’s confidence! Or indifference. Or something.

The case cite is Egg Works, Inc. v. Egg World LLC, 2011 WL 1585846, No. 10–17534 (9th Cir. April 20, 2011).