Seattle Trademark Lawyer

Counterclaim plaintiff Joe Kennedy, owner of counterclaim plaintiff Kennedy Center for Real Estate Education, Inc., created an educational curriculum called the “Accredited Seller Representative” (ASR) program. Counterclaim plaintiffs developed and registered several trademarks in connection with their ASR program.

Counterclaim plaintiffs alleged that counterclaim defendants Seller Agency Council, Inc., and RealtyU, Inc., used counterclaim plaintiffs’ marks under the ASR program but diverted to RealtyU certain revenue the parties had agreed would go to counterclaim plaintiffs.

Counterclaim defendants defended on the ground of acquiescence, among other defenses.

The Central District of California concluded that counterclaim plaintiffs’ conduct after sending a cease-and-desist letter led the counterclaim defendants to believe they had permission to continue using the ASR marks. 

The counterclaim plaintiffs appealed, which on Sept. 3 led the Ninth Circuit to modify the circuit’s tests for laches and acquiescence. 

It found: “Because laches and acquiescence are closely related concepts, we agree with the approach taken by the Eleventh Circuit that modifying our current test for laches is an appropriate way to provide a practical test for acquiescence. In the Eleventh Circuit, the prima facie case for laches required ‘(1) a delay in asserting a right or claim; (2) that the delay was not excusable; and (3) that the delay caused the defendant undue prejudice.’ The prima facie case for laches in our own circuit is essentially identical. ‘The test for laches is two-fold: first, was the plaintiff’s delay in bringing suit unreasonable? Second, was the defendant prejudiced by the delay?’ The first aspect of our test in turn consists of two sub-parts: an assessment of the length of the delay followed by an assessment of the reasonableness of the delay.

“Because we agree with the Eleventh Circuit that acquiescence differs from laches principally in that it requires some form of active consent, we conclude that the Coach House [Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551 (11th Cir.1991)] test largely comports with our own understanding of the prima facie case for acquiescence. Accordingly, we adopt that test. The elements of a prima facie case for acquiescence are as follows: (1) the senior user actively represented that it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice.

Applying this test, the court found the district court did not make factual findings as to the scope of the counterclaim plaintiffs’ active representations or the reasonableness of the counterclaim defendants’  reliance on those representations. Therefore, it vacated the district court’s judgment that the counterclaim plaintiffs had had acquiesced in counterclaim defendants’ use of its marks and remanded for the court’s determination.

The case cite is Seller Agency Council, Inc. v. Kennedy Center for Real Estate Education, Inc., __ F.3d. __, 2010 WL 3448107, No. 08-56791 (9th Cir. Sept. 3, 2010).

Likelihood of Confusion’s got a nice summary of the Aug. 3 Rosetta Stone v. Google keyword advertising decision, cribbed from Jane Coleman’s forthcoming update to her book on secondary trademark infringement.

It nicely synthesizes recent case law on contributory liability, including Second Circuit’s April 1 decision in Tiffany v. eBay.

One takeaway is the case law remains unsettled.

“In finding that Rosetta Stone had not met its burden of showing that summary judgment was proper as to the contributory trademark infringement claim, the court’s language left unclear what its conclusions were regarding Google’s liability for the sale of trademark-protected keywords to competitors who were not necessarily counterfeiters.”

Here’s Eric Goldman’s rundown on the case.

I understand Rosetta Stone appealed the decision today, so in time the Fourth Circuit will get a shot at clarity.

Screen shot from defendant’s Web site

James Garcia’s having a tough time of it.

In August, Western District Judge Richard Jones gave the owner of defendant Seattle Roof Brokers a choice: either publish a statement on his Web site linking to the court’s order finding him liable for making false statements about plaintiff Certainteed Corp., or take all content offline until the court approves it. (Previous STL post here.)

Yesterday, the court found Mr. Garcia went in a different direction.

“Rather than publish the specific website content that the court authorized, Mr. Garcia published a website that not only substantially altered the content he had submitted to the court, but included a substantial amount of new content as well,” which Certainteed alleges is filled with false statements.

Without considering the truth or falsity of the statements, the court found that Mr. Garcia violated the court’s order.

Here’s its remedy.

“Accordingly, the court orders [Mr.] Garcia to take ‘offline’ all websites under this control (including seattleroofbroker.com and any similar sites). He shall do so no later than 12:00 p.m. on September 2, 2010, and the websites shall remain ‘offline’ until further order of the court. If he does not comply with this order, he will be deemed in contempt of court, and will, at a minimum, be subject to a sanction of $100 for each day that his website or websites remain online.”

The case cite is Certainteed Corp. v. Seattle Roof Brokers, No. 09-563 (W.D. Wash. Aug. 30, 2010) (Jones, J.).

Plaintiff Pom Wonderful LLC sells the POM WONDERFUL bottled pomegranate juice.

Defendant Welch Foods, Inc., sells various bottled juices under its WELCH brand.

In 2006, Welch developed a juice blend it named “Welch’s 100% White Grape Pomegranate.” The ingredient declaration identifies the juices used in the product, namely white grape, apple, and pomegranate juices (from concentrate), but does not does not disclose the percentage of any of the juices.

In January 2009, Pom filed suit in the Central District of California for false advertising based on Welch’s use of the word “pomegranate” because the product allegedly contains very little pomegranate juice.

After a number of other motions, Welch filed a motion for summary judgment on its unclean hands defense. Welch argued that Pom had engaged in the same kind of conduct that Pom alleges is deceptive and misleading, including Pom’s failure to disclose that its 100% pomegranate juice product at one point contained elderberry and Pom’s sale of juice blends that, at one point, contained juices other than those identified in the product name.

The Central District of California concluded these facts were not sufficiently “egregious” or causally related to consumer deception to sustain Welch’s unclean hands claim on summary judgment.

“The Court finds that while Welch has offered undisputed evidence of Pom’s misleading label, Welch has not demonstrated by clear and convincing evidence that Pom’s conduct was ‘egregious.’ Welch has not offered evidence that Pom’s deception was material, i.e. that it induced customers to purchase a product that they otherwise might not have purchased. Welch has not attempted to link Pom’s inclusion of trace amounts of elderberry juice in its 100% Pomegranate Juice to consumer deception or harm. Its only evidence is that one customer called Pom asking whether ‘the plain pomegranate juice [has] any other ingredients in it’ and another customer stated to a Pom customer service representative: ‘I noticed on the bottle it says pomegranate juice from concentrate with added natural flavors. This implies that it is not 100 percent pomegranate juice …’ This anecdotal evidence, while unrefuted, does not establish that any appreciable number of consumers were confused such that Pom’s conduct could be deemed ‘egregious.’ Welch’s failure to demonstrate the existence or extent of harm caused by Pom’s deception precludes a finding that it would be inequitable for Pom to proceed on its claims.”

Unclean hands doesn’t simply mean the plaintiff was a bad actor. It means that the plaintiff has “dirtied his hands in acquiring the right presently asserted.”

The case cite is Pom Wonderful v. Welch Foods, Inc., 2010 WL 3368430, No. 09-567 (C.D. Calif. Aug. 25, 2010).

Plaintiff and counterclaim defendant The Jumpitz Corp. is a San Diego-based performance group that performs live song and dance for preschool-aged children. It also markets itself through its Web site, www.jumpitz.com. It first used the JUMPITZ mark in December 2007.

Defendant and counterclaim plaintiff Viacom International, Inc., owns the MTV and Nickelodeon television networks. On or about May 1, 2009, MTV began marketing a live-action children’s television program called “The JumpArounds” (a name it later changed to “The Fresh Beat Band”).

On May 15, 2009, Jumpitz filed suit in the Southern District of California for trademark and trade dress infringement. Viacom counterclaimed for trade dress infringement.

In particular, Viacom alleged that Jumpitz infringed Viacom’s trade dress by infringing Nickelodeon’s “visual system,” which Viacom asserted is made up a particular color palette (“distinctive shades of orange, green, and cyan blue”) and design (“‘soft’ and ‘whimsical’ geometric shapes as mortise or framing devices”). Viacom defined a “visual system” as “the visual expression of a brand, including through color, imagery, and typography, so as to promote a consistent, coherent, and distinctive brand image.”

Jumpitz moved for summary judgment.

On Aug. 13, the court found Viacom’s “visual system” was functional and, therefore, was not protectable as trade dress. 

Its discussion is interesting.

The court noted Nickelodeon’s creative director, Richard Hicks, admitted that “‘A significant portion of Nickelodeon’s audiences is comprised of young children, many of whom are not yet of reading age and therefore identify brands not by words but instead by visual elements, including colors and shapes.’ Mr. Hicks also states, ‘Colors are among the first things children are able to distinguish ….’ This evidence demonstrates that the use of colors is important to Viacom because of the limited cognitive abilities of children, the intended audience, not to distinguish its brand from other competitors in the market. Furthermore, there is no evidence in the record to demonstrate that Viacom’s use of ‘simple yet whimsical shapes’ is Viacom’s attempt at distinguishing the Nickelodeon brand from other competitors. Rather, it appears to be Viacom’s attempt to appeal to children, who are inherently less adept at cognitive functioning. Thus, the Court is not convinced that Viacom has adequately carried its burden of demonstrating that its ‘visual system’ is non-functional.”

The court added: “[T]he Court would be remiss if it did not express its concerns over affording trade dress protection to Nickelodeon’s broadly defined ‘visual system.’ Children present a unique audience and companies attempting to reach children must figure out how to reach children in light of their limited cognitive abilities. The use of bright, fun colors and whimsical, playful shapes are not quintessential Nickelodeon; they are tools that companies have used for years to reach children. Allowing Viacom to assert a protectable interest in its broadly defined ‘visual system’ would stifle competitors in the filed of children’s entertainment in a way not contemplated by the Lanham Act.”

The case cite is The Jumpitz Corp. v. Viacom Int’l, Inc., 2010 WL 3238953, No. 09-1063 (S.D. Calif. Aug. 13, 2010).