Seattle Trademark Lawyer

Back in 2008, Seattle IP attorney Samuel Watkins wanted information about the seizure of counterfeit goods at various ports around the country. He asked the U.S. Bureau of Customs and Border Protection (CBP) for the date seized merchandise was imported, the port of entry, the description of the merchandise, the quantity of the merchandise, the country of origin, and the names and addresses of the exporter, importer, and manufacturer.

CBP denied his request, so Mr. Watkins sued under the Freedom of Information Act (FOIA). In October 2009, Western District Judge James Robart granted CBP’s motion for summary judgment and denied Mr. Watkins’ cross-motion. (STL post here.)

Mr. Watkins appealed. On May 4, the Ninth Circuit affirmed the decision in part and reversed it in part.

The reversal is the more interesting part of the decision, at least for trademark practitioners. The court found the information Mr. Watkins requested was subject to Exemption 4, which protects against the release of information containing confidential commercial information.

“Watkins argues that the information contained in Notices of Seizure cannot be commercial because it pertains to “the unlawful importation of counterfeit goods, and not any sort of legitimate commercial activity.” The district correctly rejected this argument because Notices of Seizure are not final determinations that goods seized are counterfeit. Instead, the issuance of a Notice is akin to a finding of probable cause. As the Agency’s declarations demonstrate, an importer whose merchandise is seized can challenge the seizure both administratively and in court. Further, importers sometimes acquiesce in the Agency’s seizure and forfeiture of legitimate goods. As a result, we cannot conclude that information contained in a Notice of Seizure is non-commercial just because it’s likely—perhaps even very likely—that the merchandise seized is counterfeit.”

However, the court also found that CBP had waived its right to withhold the documents because it previously had disclosed them to trademark owners without assuring that the documents remain confidential.

“Here, disclosure of the Notices of Seizure to an aggrieved trademark owner is mandated by statute. When disclosure is made to a trademark owner, the government imposes no restrictions on the owner’s use of the information in the Notice. He can freely disseminate the Notice to his attorneys, business affiliates, trade organizations, the importer’s competitors, or the media in a way that would compromise the purportedly sensitive information about an offending importer’s trade operations. This no-strings-attached disclosure thus voids any claim to confidentiality and constitutes a waiver of Exemption 4. FOIA accordingly creates an obligation for the government to disclose the requested documents.”

The case cite is Watkins v. U.S. Bureau of Customs and Border Protection, __ F.3d __, 2011 WL 1709852, No. 09–35996 (9th Cir. May 6, 2011).

Plaintiff Ezell’s Fried Chicken, Inc.’s logo

Fellow Seattle IP lawyer Gary Marshall put me onto this.

It’s a struggle over use of the restaurant name “Ezell’s Fried Chicken” between its founder, Ezell Stephens — now separated from the company — and the company’s board. Both parties now sell fried chicken in the Seattle area under the Ezell name.

Gary asks some good questions about who owns a company’s technology. The same questions can be asked about who owns the company’s trademark.

“Founders often neglect to put licenses between themselves and their company in writing. They just assume that the company can use the technology they create. But what happens when they are no longer associated with the company? Can the company continue to use the technology? Can the founder?”

Those are questions the court will have to decide. But as Gary points out, it needn’t be that way.

Decide from the outset who owns the trademark. The founder or the company? Then decide what happens if the company breaks up. Who will own it then?

Just last week I traded emails with a small business owner faced with this very problem. His partnership operated under a single brand. The partnership split up, and the partners are on their own. They now compete against each other offering the same services on the same turf. And both partners continue to operate under the partnership’s brand. Confusing to consumers? You bet.

It raises the same questions the Ezell’s litigants face. Which partner can use the brand? Can either? If one applies to register the mark, can the other object?

Don’t roll the dice with the court. That’s expensive and disruptive. Control your own fate and get these issues hammered out between partners, shareholders, and joint venturers when times are good. It might cost a bit in legal fees up front, but it’ll save you lots more down the road.

So what’s up with the Ezell’s case? The Western District sent it back to King County Superior Court — from which the case had been removed — finding plaintiff’s causes of action sound in state court, the court plaintiff had selected. It also awarded fees, finding the removal had been improper (though it later reduced the amount of the award).

Story on the Ezell’s dispute here.

The case cite is Ezell’s Fried Chicken, Inc. v. Stephens, No. 10-1424 (W.D. Wash.).

Over-eager solicitors. Scamsters. Whatever.

If you have a trademark registration, you’ve gotten it.

Unsolicited advice from a stranger telling you something about your trademark application or registration. Sometimes even a request for payment.

Here’s my unsolicited advice: Ignore it.

The EU’s trademark office, the Office for Harmonization in the Internal Market, recently wrote to trademark practitioners outlining steps it’s taking against this annoyance. It’s publishing a list of entities sending such letters; it’s demanding that the entities cease and desist from further confusing conduct; and it’s sending warnings to applicants that this unsavory practice exists.

Good for them.

OHIM, that is. As for the scammers, they should put their energy to productive use.

As TTABlogger John Welch pointed out on Friday, the Trademark Trial and Appeal Board has published the third edition of the Trademark Board Manual of Procedure (TMBP).

Nonlawyers, newbies, and non-trademark specialists, take note. This is a valuable resource.

Experienced TTAB practitioners routinely consult the TBMP for quick guidance on procedure. It’s easy.

The third edition incorporates changes in the law through November 15, 2010. It’s downloadable as a complete book; it’s searchable; it’s indexed; and it’s easily browsable. There’s even a table describing updates from the second edition, which the TTAB published in 2004.

This version covers the discovery conference, initial disclosure, expert disclosure, and pretrial disclosure obligations the Board began to require in November 2007. It also details the Board’s Accelerated Case Resolution program, its effort to streamline cases and save parties money.

Clearly, the TTAB put a lot of work into this. Take advantage of it. I know I will.

The gang from Meet the Bloggers V — in Seattle in 2009.
 Looking forward to an even better MTB next week!

Can you believe it’s the seventh time?

Meet the Bloggers VII is on!

If you’re going to be at the International Trademark Association’s annual meeting next week, you can’t miss the highlight — Meet the Bloggers!

Here are the essentials, straight from founder and TTABlogger John Welch:

When: Tuesday (May 17) at 8 p.m.

Where: Swig, 561 Geary Street (near Union Square, behind the Westin St. Francis).

Given everybody’s tight schedules, this can be the only time to meet — and often is the best!

Looking forward to a repeat of MTB V, the last one I attended (and was fortunate enough to host). Pesky trial schedule last year interfered with my attending INTA, something that’s not going to happen this time around.

Hope to see you soon!

Photo credit: Zack Wright