Seattle Trademark Lawyer

In the trademark case of Baxter v. John Doe I-X, Western District Judge Thomas Zilly ordered the parties to show cause why their case should not be dismissed for failing to comply with the court’s deadline for filing a joint status report.

The parties didn’t respond.

So, the court dismissed the case.

I’m not saying the parties didn’t expect or want this result. But it goes to show if you don’t meet the court’s deadlines, you risk drastic sanctions — including having your case dismissed.

The case cite is Baxter v. John Doe I-X, No. 09-1535 (W.D. Wash. Nov. 12, 2010) (Zilly, J.).

A battle of batting helmets: Rawlings’ helmet (left), which Rawlings
alleges Under Armour used (right) with Under Armour’s logo

On Oct. 27, Western District Judge Marsha Pechman granted Rawlings Sporting Goods Co.’s motion for a preliminary injunction against Under Armour, Inc., based on Rawlings’ trademark infringement claim. (STL post on the complaint here).

The court found that “in 2008 and 2009, Under Armour placed its own logo on the center-front of Rawlings’s helmet during high school exhibition games and advertising materials used in an Eastbay catalogue, a magazine article, point-of-purchase signage and several websites.”

The court added “there is a likelihood of consumer confusion given that Under Armour has now introduced its own baseball helmet for the marketplace.”

Therefore, the court enjoined Under Armour from placing its logo on Rawlings’ helmet in advertising and promotional materials or on the center-front of its own helmets it offers for sale. The court also ordered Under Armour to “send corrective notices to retailers who have submitted orders for the Under Armour helmet as of entry of this Order.” The court ordered that the corrective notices “inform receiptients of this Court’s preliminary injunction.”

Following the order, Under Armour asked the court to clarify or modify its order with respect to the corrective notices.

On Nov. 10, the court granted the request. It specified that Under Armour’s notice must read:

“Under Armour Inc. has likely infringed on the trademark of Rawlings Sporting Goods Company, Inc. In 2008 and 2009, Under Armour placed its logo on Rawlings’s COOLFLO helmet at several promotional events and advertising materials. This likely confused consumers as to the true producer of the COOLFLO helmet. Therefore, the United States District Court for the Western District of Washington has barred Under Armour from placing its logo on Rawlings’s COOLFLO helmet in future promotional materials and from selling its own Under Armour helmet with its logo on the helmet’s center-front area. The Court has directed Under Armour to issue this notice to all retailers and consumers who have already cemented orders for Under Armour helmets as they may have been confused by Under Armour’s promotional and advertising materials.”

The case cite is Rawlings Sporting Goods Co., Inc. v. Under Armour, Inc., No. 10-933 (W.D. Wash. Nov. 10, 2010) (Pechman, J.).

In April, National Products won its false advertising trial against Gamber-Johnson LLC. (Last STL post on the case here.)

The court awarded it attorney’s fees.

National Products then moved to submit the billing records supporting its request for fees in camera, while submitting a redacted version to Gamber-Johnson.

The court didn’t go for it.

“NPI represents to the court that the in camera records consist entirely of detailed billing statements for NPI’s legal fees related to this litigation,” the court wrote. “NPI concedes, however, that the billing statements are not necessary to support its requested amount of attorneys’ fees. NPI then takes the position that by providing its unredacted billing statements to the court, but not to opposing counsel, it has ‘exceeded’ its obligations. The court disagrees.

“By providing heavily redacted copies of its billing statements to Gamber-Johnson’s counsel and unredacted statements to the court, in camera, NPI garners an unfair advantage that hinders Gamber-Johnson’s ability to object to certain fees and costs set forth in the billing statements. Accordingly, the court DENIES the motion for in camera review and returns the billing statements, unopened, to NPI.

The case cite is National Products, Inc. v. Gamber-Johnson LLC, No. 08-0049 (W.D. Wash. Nov. 3, 2010) (Robart, J.).

Wow, that’s some harsh judging.

From the Ninth Circuit’s Nov. 3 decision in Ahanchian v. Xenon Pictures, Inc., which involved claims of unfair competition under the Lanham Act:

“[Plaintiff/appellant] Amir Cyrus Ahanchian’s counsel moved for a one-week extension of time to file his opposition to defendants’ summary judgment motion, citing as good cause: (1) the extremely short eight day response deadline (with three of those days falling over a federal holiday weekend) created by the combination of an unusual local rule and defendants’ litigation tactics; (2) his preplanned absence, beginning the day defendants filed the motions, in fulfillment of an out-of-state commitment; and (3) the large number of supporting exhibits attached to defendants’ motion. Defense counsel, without regard to the previous professional courtesies extended to him by Ahanchian’s counsel, vigorously opposed the extension. Despite the presence of what most reasonable jurists would regard as good cause and the absence of prejudice to anyone, [the Central District of California] denied the motion. Even so, Ahanchian’s counsel managed to file the opposition, albeit three days late, due to a calendaring mistake and computer problems, along with a motion asking that the district court accept the late-filed opposition. Five days later, the district court construed that motion as one for reconsideration under Rule 60(b), and, applying an incorrect legal standard, denied it. That same day, having plaintiff’s opposition in hand, but refusing to consider it, the district court granted defendants’ motion for summary judgment, failing to provide any legal reasoning or citation to law or facts. To add injury to insult, the district court awarded defense counsel $247,171.32 in attorneys’ fees.”

The Ninth Circuit reversed and remanded, finding the plaintiff had demonstrated “good cause” to enlarge the time for him to file his response and “excusable neglect” for failing to meet the original deadline.

The court also admonished the defendant’s counsel for not simply agreeing to extend the response deadline in the first place.

“Our adversarial system relies on attorneys to treat each other with a high degree of civility and respect,” the court said. “Where, as here, there is no indication of bad faith, prejudice, or undue delay, attorneys should not oppose reasonable requests for extensions of time brought by their adversaries.”

The case cite is Ahanchian v. Xenon Pictures, Inc., __ F.3d __, 2010 WL 4323429, Nos. 08-56667 and 08-56906 (9th Cir. Nov. 3, 2010).

The Pittsburgh Steelers’ “Steel Curtain”: “Mean” Joe Greene,
L.C. Greenwood, Ernie Holmes, and Dwight White

Last week, the Ninth Circuit decided a relatively rare insurance coverage case involving claims of trademark infringement.

Its decision, however, isn’t surprising given precedent that an insurer has a duty to defend any suit that potentially seeks damages covered by a policy, resolving any ambiguity in the policy in favor of finding coverage.

In NFL Properties LLC v. All Authentic Corp., NFL Properties sued All Authentic for allegedly selling counterfeit NFL jerseys that contained the words “Steel Curtain.” The Pittsburgh Steelers have used STEEL CURTAIN as a trademark and own a state registration for that mark. The complaint alleged causes of action for trademark infringement, counterfeiting, dilution, unfair competition, and deceptive acts and practices.

Hudson Insurance Company defended All Authentic in the case under its insurance policy with All Authentic. Colony Insurance Company, however, argued its policy did not cover the claims against All Authentic and refused to defend the suit because its policy excluded trademark infringement other than infringement as part of the insured’s “slogan” — something Colony argued NFL Properties did not allege.

In the follow-on lawsuit between the insurers, Hudson sought equitable contribution from Colony for Hudson’s costs of defending All Authentic. The Central District of California granted Hudson’s motion for summary judgment, finding that Hudson was entitled to equitable contribution because Colony had a duty to defend All Authentic but failed to do so.

Colony appealed.

On Nov. 5, the Ninth Circuit affirmed, taking the lead from a similar case out of the Sixth Circuit.

“In Cincinnati Insurance Co. v. Zen Design Group, Ltd.[, 329 F.3d 546, 550, 556 (6th Cir. 2003)], the Sixth Circuit concluded that the underlying complaint potentially stated an action for slogan infringement because the complaint stated that the third-party plaintiff ‘marketed and advertised its LED handheld flashlights using the widely-recognized trademarks ‘WEARABLE LIGHT’ and ‘SAPPHIRE.” Just as in this case, the insurance policy covered slogan infringement but not trademark infringement. The Sixth Circuit held that it did not matter that it was doubtful whether WEARABLE LIGHT could legally be a slogan or that the complaint ‘never refer[red] to WEARABLE LIGHT as a slogan.’ Because ‘[a]ny doubt as to the insurer’s liability must be resolved in favor of the insured,’ the court concluded that ‘the complaint’s failure to refer to ‘The Wearable Light’ as a slogan and its failure to include infringement of slogan as a specific claim does not alleviate [the] duty to defend.’ Similarly here, it does not matter that the NFL complaint never referred to ‘steel curtain’ as a slogan and never listed slogan infringement as a cause of action.

The court added that ”… NFL Properties did not unambiguously concede in its complaint that it had no standing to bring a slogan infringement claim for ‘Steel Curtain,’ and NFL Properties did not expressly disclaim a slogan infringement claim or standing to bring such a claim. The NFL Complaint states that ‘NFL Properties is jointly owned in equal shares by the Member Clubs of the NFL…. NFL Properties promotes the intellectual property of the NFL and the Member Clubs … and protects the marks owned by the Member Clubs against misuse in various forms.’ Then the complaint states that ‘[t]he Steelers [an NFL Member Club] have strong common law rights in the mark ‘Steel Curtain.”

“Rather than unambiguously conceding the element of ownership or disclaiming standing, these statements argue that NFL Properties does have standing to enforce the Steelers’ rights to the phrase ‘Steel Curtain.’ Because any ambiguity in the complaint or doubt regarding the duty to defend must be resolved in favor of coverage, NFL Properties’ ambiguous statements potentially support standing to sue for slogan infringement.”

For these reasons, the court found: “The district court correctly concluded there was a duty to defend based on a potential slogan infringement claim. Because the NFL complaint potentially stated a cause of action for slogan infringement, Colony had a duty to defend All Authentic in the NFL Action, and Hudson is entitled to equitable contribution.”

The case cite is Hudson Ins. Co. v. Colony Ins. Co., __ F.3d __, 2010 WL 4367014, No. 09-55275 (9th Cir. Nov. 5, 2010).