Seattle Trademark Lawyer

This week’s Puget Sound Business Journal cover story (subscription req’d) isn’t about a trademark case.

But it easily could have been.

The article talked about a business owner who tried to cut costs by going it alone in court.

The result?

The court threw out his case simply because he didn’t have a lawyer.

STL’s discussed this before, but it’s worth repeating.

If the party in a lawsuit is a business entity — anything other than a human being or a sole proprietor — then it can’t prosecute or defend a claim in court unless it is represented by an attorney. Its case will be bounced regardless of the merits.

It may not be fair and, yes, the statute probably was written by lawyers. But since it’s the law, courts will enforce it.

STL posted on Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC in January, after the Northern District of California granted summary judgment in favor of the defendant on plaintiff’s trademark infringement claims.

The case was interesting — two northern California companies both claiming rights in the same name, which the court ultimately found was geographically descriptive.

The prevailing defendant then sought attorney’s fees as an “exceptional” case because, in its view, plaintiff’s claims were groundless. For one thing, the defendant argued, how could plaintiff claim SAND HILL ADVISORS was suggestive when it admitted it adopted the name because of its proximity to Sand Hill Road?

The court found it wasn’t that simple.

“Defendant argues that Plaintiff lacked a reasonable basis for claiming that SAND HILL ADVISORS was suggestive or had acquired secondary meaning. As an initial matter, Defendant argues that since Plaintiff’s founders acknowledged choosing SAND HILL ADVISORS because of its geographical significance, i.e., the company’s then new location on Sand Hill Road in the heart of the Silicon Valley, Plaintiff was foreclosed from arguing that the SAND HILL ADVISORS mark was anything other than descriptive. However, the issue was not as simple as Defendant now purports it to be. As set forth in the Court’s summary judgment order, Defendant raised a number of potentially viable arguments to show that its mark is suggestive, notwithstanding Plaintiff’s acknowledgement. Though the Court ultimately rejected each of Plaintiff’s contentions, that alone does not support the conclusion that its position that the mark at issue was suggestive was frivolous.”

The court also found that plaintiff offered at least some evidence to support its alternative claim that its mark had acquired secondary meaning. 

“Defendant also asserts that Plaintiff lacked evidence to support its alternative claim that even if SAND HILL ADVISORS were descriptive, such mark had gained secondary meaning. ‘Secondary meaning can be established in many ways, including (but not limited to) direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant.’ Defendant argues that Plaintiff presented no evidence to support its claim of secondary meaning. Not true. The record confirms that Plaintiff proffered evidence regarding it various marketing and promotional efforts using the SAND HILL ADVISORS name. Though ultimately concluding that such evidence was insufficient to establish a issue of fact regarding secondary meaning, the Court did not find that Plaintiff’s position was groundless or baseless.”

For these reasons, the court found the case was not “exceptional.”

The case cite is Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, __ F.Supp.2d __, 2010 WL 3703029, No. 08-5016 (N.D. Calif. Sept. 16, 2010).

As recently discussed, you can’t transfer what you don’t own. 

The Ninth Circuit latched onto that theme again in Airs Fragrance Products, Inc. v. Clover Gifts, Inc.

Stephen Marcus, as president of Airs International, Inc. (AII), transferred the Airs Fragrance family of trademarks to Mine Hakim when AII was insolvent. The Ninth Circuit found that Mr. Marcus and Ms. Hakim worked together to use the marks by using various “straw” persons and corporations.

AII’s creditor First Bank and Trust then obtained a default judgment against Mr. Marcus and Ms. Hakim for more than $1 million.

Thereafter, Ms. Hakim transferred her rights in the marks to Clover Gifts without any consideration.

The District of Nevada found on summary judgment that Mr. Marcus and Clover Gifts did not own the Airs Fragrance trademarks. Because they did not own the marks, the court likewise found they could not maintain claims for unfair competition. 

“The district court did not err in granting summary judgment against Appellants [Marcus and Clover Gifts] on their claim for a declaration of exclusive ownership of the marks. Before their transfer to Hakim, it is undisputed that the marks belonged to AII, not Marcus. Any claim to current ownership of the marks on the basis of AII’s previous ownership and use of them therefore could only be brought by AII, not Marcus. Clover Gifts likewise has no claim to the marks. The assignment of the marks from Hakim to Clover Gifts was invalid because it is undisputed that there was no concurrent transfer of business good will, and Clover Gifts did not provide any consideration for the marks.

“The district court properly granted summary judgment against Appellants on their tort claims for unfair competition and deceptive trade practices through trademark infringement, conversion, and misappropriation of trade secrets. An essential element of each of these claims is owners hp of the property at issue. The marks, domain names, and fragrance formulas were the property of AII, not Marcus, before their transfer to Hakim. Only the marks were included in the subsequent assignment from Hakim to Clover Gifts, and that assignment was invalid.”

The case cite is Airs Fragrance Prods., Inc. v. Clover Gifts, Inc., 2010 WL 3678949, Nos. 08-17385 and 08-17386 (9th Cir. Sept. 17, 2010).

Daniel Jurin owns the trademark STYROTRIM for building materials.

Mr. Jurin sued Google, Inc., for false designation of origin for displaying “Styrotrim” as a commonly-searched term and making the term available for purchase to plaintiff’s competitors.

In particular, Mr. Jurin alleged that Google’s practice falsely misled persons in the building industry to believe that “Styrotrim” is a generic word and not a proprietary trademark.

On Google’s motion to dismiss, the Eastern District of California invoked the holding from Dastar Corp. v. Twentieth Centry Fox Film Corp., 539 U.S. 23 (2003), which requires a plaintiff asserting a false designation of origin claim to show a false or misleading suggestion as to “the producer of the tangible goods that are offered for sale.” 

Under this standard, the court found found Mr. Jurin’s allegations did not make the grade.

“In the context of false designation of origin claims, the Supreme Court has held the use of the word ‘origin’ as referring to a false or misleading suggestion as to ‘the producer of the tangible goods that are offered for sale.’ Here, despite Plaintiff’s many allegations, Plaintiff has failed to allege how Defendant’s use of the term ‘Styrotrim’ in its AdWords program, or display of Sponsored Links in response to an internet search for the term ‘Styrotrim’, creates a misleading suggestion as to the producer of the good. Plaintiff’s allegations seem to suggest that consumers may become confused as to Plaintiff’s affiliation with a Sponsored Link, or that advertisers may become confused as to the trademarked status of the term Styrotrim. However, even when accepting these possibilities as true, neither scenario addresses confusion regarding the producer of the good such as to warrant a claim for false designation of origin under the Lanham Act.”

The court also rejected Mr. Jurin’s attempt to establish confusion as to source through last year’s Second Circuit holding against Google. 

Inapposite, the court found.

“Plaintiff argues that this Court should rely on the Second Circuit’s holding in Rescuecom, Inc. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009), which ruled in favor of a plaintiff challenging Google’s AdWords program as a violation [of] trademark protection under the Lanham Act. However, the decision in Rescuecom relied almost entirely on an analysis of the ‘use in commerce’ prong of the Lanham Act as defined by 15 U.S.C. § 1127. Such language is not in question here. Any reference by the court to the ‘confusion’ prong of a false designation of origin claim existed as mere dicta in which the Court ruling in Rescuecom is nonapplicable and nonpersuasive here.”

The case cite is Jurin v. Google, Inc., 2010 WL 3521955, No. 09-3065 (E.D. Calif. Sept. 8, 2010) (England, J.).

The Waji’s concession at Seatac. (Photo from defendant’s Web site) 

Who’s entitled to register WAJI’S?

Plaintiff Uwajimaya, Inc., says it’s the only one who is. On Sept. 14, it filed suit in the Western District against Concourse Concessions, LLC, to establish that point. 

The Seattle-based Asian grocer leased space at the Seatac International Airport for the purpose of selling food and beverage concessions. It alleges it subleased part of its space to Concourse with the understanding that Concourse would develop a concession concept using Uwajimaya’s brand.

The complaint states in 2007 Concourse opened a restaurant called “Waji’s by Uwajimaya,” which serves ready-to-eat Asian foods. Uwajimaya alleges it suggested the name because customers often shorten Uwajimaya to “Waji’s.” It alleges it granted Concourse an oral license to use its mark with the understanding that the agreement would be reduced to writing. Uwajimaya says it never was.

The complaint says in 2009, Concourse filed a number of federal applications to register trademarks including the terms WAJI’S and UWAJIMAYA, claiming to be the owner of those marks. One of the applications has matured to registration.

Uwajimaya says it attempted to negotiate an assignment of Concourse’s filings but its efforts failed. It claims it has terminated its oral license agreement.

Uwajimaya alleges claims for trademark infringement, false designation of origin, violation of Washington’s anti-dilution statue, and fraudulent registration.

Concourse has not yet filed an answer.

The case cite is Uwajimaya, Inc. v. Concourse Concessions, LLC, No. 10-1474 (W.D. Wash.).