Seattle Trademark Lawyer

Screen shot from defendants’ Web site at www.aberceombie.com

Subtlety isn’t their thing.

Abercrombie & Fitch Co. alleges that unknown defendants not only registered a truckload of domain names that are confusingly similar to its ABERCROMBIE and HOLLISTER registered trademarks, but those domain names resolve to Web sites that sell products that compete with Abercrombie & Fitch’s products, including products that allegedly are pirated from Abercrombie.

On December 10, Abercrombie filed suit in the Western District against John Does 1-10. Its complaint alleges cybersquatting, trademark infringement, and unfair competition.

Many of the domain names allegedly at issue include misspellings of ABERCROMBIE and HOLLISTER, such as aberceombie.com, abercromble.com, hollioster.com, and hiollister.com. 

Abercrombie alleges the Western District has personal jurisdiction over the defendants because they have conducted business engaged in torts here. 

Defendants have not yet appeared or answered the complaint.

The case cite is Abercrombie & Fitch Co. v. John Does 1-13, No. 10-1998 (W.D. Wash.).

Sounds like a great program.

The Copyright Society of the U.S.A. (in San Francisco, unfortunately) has lined up a discussion titled, “Recent Cases on the Right of Publicity and the First Amendment.”

It’s going to be moderated by Prof. J. Thomas McCarthy.

The discussion will include recent litigation involving baseball and football athletes, and celebrities.

There’s still time to attend, even if you call Seattle home — it’s at noon on Jan. 11. It’ll be held at Covington & Burling LLP at One Front Street in San Francisco.

Cost is $20 for members and $25 for non-members, with lunch included.

Reservation form here.

Outrage is right.

Property, intangible’s Pamela Chestek expresses it over the Ninth Circuit’s treatment of naked licensing in the FreecycleSunnyvale v. The Freecycle Network case that STL discussed last week.

Shows you who I hang out with, but two different friends mentioned Ms. Chestek’s post.

Here’s why. Quoting Ms. Chestek:

“The Ninth Circuit applies a ruthless standard that strips trademark owners of significant value and furthers consumer confusion by punishing companies that, out of naivete, don’t adhere to an exacting legal standard that has little or no relationship to the policy basis for the [naked licensing] doctrine or the goals of the Lanham Act.”

The Fifth Circuit’s a lot more practical — and closer to the doctrine’s statutory origin, Ms. Chestek argues.

In Exxon Corp. v. Oxxford Clothes, 109 F.3d 1070, 1079 (5th Cir. 1997), the Fifth Circuit explained:

“The language of subsection 1127(2) reflects that to prove ‘abandonment’ the alleged infringer must show that, due to acts or omissions of the trademark owner, the incontestable mark has lost ‘its significance as a mark.’ This statutory directive reflects the policy considerations which underlie the naked licensing defense: ‘[i]f a trademark owner allows licensees to depart from his quality standards, the public will be misled, and the trademark will cease to have utility as an informational device … [a] trademark owner who allows this to occur loses his right to use the mark.’ Conversely, if a trademark has not ceased to function as an indicator of origin there is no reason to believe that the public will be misled; under these circumstances, neither the express declaration of Congress’s intent in subsection 1127(2) nor the corollary policy considerations which underlie the doctrine of naked licensing warrant a finding that the trademark owner has forfeited his rights in the mark.”

Ms. Chestek’s right — proof that The Freecycle Network’s mark had lost its significance was thin.

But so was the licensor’s control over its mark.

In the end, I’m not outraged by the result when the The Freecycle Network articulated only the barest of standards for its licensee’s use of its mark and then didn’t even enforce those standards.

Don’t be a jerk.

It’s that simple.

A big part of professionalism is common courtesy.

I’m no expert, but I know being a lawyer is so much more fun and rewarding when the jerk factor’s at a minimum.

Showing respect. Accommodating schedules. Cooperating in discovery. Having a sense of humor. 

A side benefit is all this conveys strength. If you’re in the power position, it’s easy to be magnanimous. If the facts or law aren’t on your side, it’s tempting to be shrill. So fake it with kindness and you look like you’re holding the winning hand.

Being professional also cuts costs, because if you don’t give opposing counsel a break when it’s possible to do so, you can be sure you won’t get one in return. Twisting the knife motivates the other side to win at all costs.

I’m not saying be a pushover. Far from it. In fact, we’re all ethically charged with being zealous advocates. That’s one of the things lawyers are paid to do.

But who really cares if the deposition happens on Tuesday when opposing counsel asks that it take place on Wednesday? If Wednesday would disadvantage your client in some way, that’s a different story. But if it doesn’t matter in the case, why fight over a nonissue?

It only hurts your client if you can accommodate a reasonable request, and don’t.

The U.S. Attorney’s Office in Seattle says it seized the domain names of four Web sites suspected of selling counterfeit Nike and Timberland footwear, NFL jerseys, and illegal downloads of copyrighted movies. (Press release here; Seattle P-I story here.)

The press release says this is the “second phase” of a “national crackdown” on the sale of counterfeit and pirated goods over the Internet undertaken by the Departments of Justice and Homeland Security. The move, which took place on Cyber Monday (Nov. 29), is code named “Operation In Our Sites v. 2.0.”

Apparently Version 1.0 occurred in June, in which authorities executed seizure warrants against nine domain names associated with Web sites that sold pirated copies of first-run movies.

The domain names (now disabled) reportedly include b2corder.com and merrytimberland.com, both of which were suspected of selling counterfeit Timberland footwear. Another website, www.mytend.com, allegedly sold counterfeit Nike shoes and NFL jerseys, as well as pirated exercise videos. The fourth website, www.boxsetseries.com sold DVD box sets of copyrighted television shows.

U.S. Attorney Jenny Durkan stated: “This is but one step we will take to disrupt the illegal sale of these counterfeit goods during the holiday shopping season and beyond.”

The nationwide operation was spearheaded by the National Intellectual Property Rights Coordination Center (IPR Center), which sprang from the recent PRO-IP Act (discussed here, here, and here).