Seattle Trademark Lawyer

David Donoghue’s got some great litigation tips.

And they come from a great source: judges sitting in the U.S. District Court for the Northern District of Illinois.

David’s Chicago IP Litigation Blog — long an STL favorite — just finished a five-part series with insights into the judicial practices and preferences from the five newest judges in his district. In short, it’s what the bench likes and doesn’t like from the lawyers who appear in their courtrooms.

Some highlights:

• Assume the judge has read your papers when arguing;
• If the judge asks a yes or no question during a hearing, “the answer should start with ‘yes,’ ‘no’ or ‘I cannot answer that because….’”
• “Do not casually suggest misconduct; avoid work like ‘fabricated,’ ‘concocted’ or ‘misleading’”; and 
• In summary judgment motions, “omit unnecessary details” and be brief.

The court’s suggestions come from a Federal Bar Association panel David attended. The recurring theme, he said, was civility: “Civility in court. Civility in briefs. Civility in emails.”

This is good stuff. If you want the unabridged version, see his posts from April 1, April 8, April 15, April 22, and April 29.

Nice series. Thanks for sharing!

The U.S. Patent and Trademark Office has completed its study on trademark bullies (previous STL posts here and here).

The study was ordered by Congress at the behest of Sen. Patrick Leahy (D-VT), who folks may remember was unhappy when his constituent, the Rock Art Brewery, was pressured by Hansen Beverage Co. over the brewery’s use of VERMONSTER in connection with beer and Hansen’s use of MONSTER in connection with energy drinks.

Last year’s Trademark Technical and Confirming Amendment Act of 2010 gave the PTO a year to study the phenomenon of “trademark bullying” and to propose a solution.

The PTO responded in part by concluding there might not be a problem with trademark bullies after all.

The report states: “After careful review of the available information regarding trademark litigation tactics and comments received from concerned intellectual property stakeholders, it is unclear whether small businesses are disproportionately harmed by enforcement tactics that are based on an unreasonable interpretation of the scope of an owner’s rights.”

I’ve been on the receiving end of over-reaching enforcement. In some cases, my client had no rational choice but to back down. It just wasn’t worth it to prove they were right and the bully was wrong. The problem is real.

To the extent the PTO recognized the existence of a problem, it curiously found the current system provides the remedy: ”[B]ecause trademark enforcement is a private property rights litigation issue, if abusive tactics are a problem, such tactics may be addressed by the existing safeguards in the litigation system in the U.S. and by private sector outreach, support, and education relating to these issues.”

I’m not sure that conclusion logically follows from the premise.

Nonetheless, the PTO goes on to say: “However, to the extent small businesses are disproportionately adversely affected by such tactics because they lack the funds to hire counsel to defend against them, we believe the Federal Government can undertake the following actions:

1. Engage the private sector about providing fee or low-cost legal advice to small businesses via pro bono programs and intellectual property rights clinics;
2. Engage the private sector about offering continuing legal education programs focused on trademark policing measures and tactics;
3. Enhance Federal agency educational outreach programs by identifying resources that enable small businesses to further their understanding of trademark rights, enforcement measures, and available resources for protecting and enforcing trademarks.”

These suggestions are fine, but what about addressing the problem through the market? I can’t say with certainty it would solve the problem, but what I think is needed is serious study about whether the Lanham Act should make an award of attorney’s fees to the prevailing party routine, rather than limiting an award to “exceptional” cases.

The PTO’s report discusses attorney’s fees in passing, but says the current possibility of a fees award already deters abuse: “[A]ttorneys’ fees appear to be a deterrent to trademark litigation abuse because trademark owners know that a successful defendant may recover legal fees where the plaintiff’s allegations of trademark infringement are so baseless as to be frivolous.”

What I think is baseless is this assertion. Again, the Lanham Act only authorizes courts to award fees in “exceptional,” i.e., rare, circumstances. If the fear of a fees award serves as an effective deterrent, why is it in some trademark owners’ interest to bully other trademark owners, and why is it in some trademark owners’ interest to back down when faced with bullying?  

As the PTO recognized, the difficulty for small businesses is they can’t afford to push back against abusive trademark enforcement. Given that, wouldn’t punishing a losing trademark infringement plaintiff by requiring it to pay the successful defendant’s attorney’s fees deter over-reaching? Isn’t that what needs to be considered?

Now, I recognize that the chance of a massive fees award — no matter how remote — could deter a small business from enforcing legitimate trademark rights against a well-funded infringer. But on balance, I think making fees awards routine rather than rare would go a long way toward solving the trademark bulling problem.

And it is a problem.

The World Intellectual Property Organization says cybersquatting is on the rise.

Last year, trademark owners filed 2,696 arbitrations under the Uniform Domain Name Dispute Resolution Policy, up 26% percent over 2009 filings. That’s saying something, since 2009 represented a 16% increase in WIPO filings over 2008.

In 2000, WIPO had 1857 domain name cases involving 3,760 domain names. Ten years later, the number of filings increased by almost 1,000, involving 4,370 domain names.

Retail trademark owners represented the largest category of filers at 9.67%, followed by banking and finance at 9.31%, and biotechnology and pharmaceuticals at 9.26%. Surprisingly, the smallest category of filers were trademark owners in the luxury items category.

It’s not terribly surprising to me that cybersquatting has spiked, though it’s been a while since I’ve dealt with it in my practice. At least at the UDRP level. It’s just gotten too expensive to prosecute those cases unless there are big dollars tied to the outcome. And, frankly, UDRP proceedings can be a crapshoot.

Screen shot from plaintiff’s “The Parrot Lady” Web site

On April 22, Debbie Goodrich filed suit against Karen Allen in the Western District of Washington.

Plaintiff provides entertainment and other services under the name “The Parrot Lady.” Her complaint states she obtained a Washington business license under the name “The Parrot Lady Educational Entertainment” in 2001 and registered the parrotlady.com domain name in 2005.

Defendant owns a federal registration for THE PARROT LADY for “Exotic bird breeding and grooming.” The registration claims a first-use date in 1995. The complaint states that defendant owns a Torrance, Calif. sole proprietorship under the name “Birds & More” and maintains a website accessible at www.birdsandmore.com. The complaint alleges that defendant uses her mark in connection with bird-related goods and services.

Plaintiff alleges defendant or her representative has contacted a number of third parties complaining about plaintiff’s use of “The Parrot Lady” in advertising. The complaint states such third parties include Facebook, Critter Fest, and a Seattle-area YMCA, and those parties have removed advertisements publicizing plaintiff. 

Plaintiff seeks an order declaring that her use of THE PARROT LADY does not infringe defendant’s rights in THE PARROT LADY and claims superior rights in the mark in Washington. She also seeks to cancel defendant’s registration, alleging it is generic “for a woman having expertise in breeding and grooming exotic birds, such as parrots.”

The case cite is Goodrich v. Allen, No. 11-687 (W.D. Wash.).

I can’t remember seeing this before.

A motion to the Panel on Multidistrict Litigation to centralize a trademark dispute that’s spread over a number of districts.

That’s what plaintiffs Moroccanoil, Inc., and Moroccanoil Israel, Ltd., requested of their six cases — with five situated in the Central District of California and one in the District of New Jersey.

The Panel suggested that the parties cooperate, but declined plaintiffs’ motion to centralize the cases. There just wasn’t enough in common between the cases to justify plaintiffs’ request.

“On the basis of the papers filed and hearing session held, we are not persuaded that centralization would serve the convenience of the parties and witnesses or further the just and efficient conduct of this litigation. These actions do involve similar allegations of infringement of one or more of Moroccanoil’s trademarks, resulting from the sale or supply of purportedly counterfeit Moroccanoil Oil Treatment in 3.4 ounce bottles, which were sold at various retail outlets across the country. Despite the existence of some factual overlap among the present actions, highlighted by the alleged similarity of the counterfeit products and plaintiffs’ theory of a common source of counterfeit products, the proponents of centralization have failed to convince us that any shared factual questions in these actions are sufficiently complex or numerous to justify Section 1407 transfer.”

The case cite is In re Moroccanoil Trademark Litig., __ F.Supp.2d __, 2011 WL 1399464, No. MDL 2224 (U.S. Jud. Pa. Mult. Lit) (April 8, 2011).