Seattle Trademark Lawyer

Screen shot showing Loops’ “non-shank” prison toothbrushes

STL readers may recall the Western District case of Loops, LLC v. Phoenix Trading, Inc., in which the plaintiff accused the defendant of violating the Lanham Act (among other claims) when the defendant bid to sell flexible “non-shank” toothbrushes to the New York City Department of Corrections.

Phoenix Trading, d/b/a Amercare, moved for summary judgment on Loops’ Lanham Act claim.

Here’s Western District Judge Ricardo Martinez’s summary of the claim.

“Loops describes the factual basis of its claim as follows: ‘In June 2006, unbeknownst to Plaintiffs, Defendants bid on a contract to supply the [NYC-DOC] with Loops Flexbrush toothbrushes. Plaintiffs did not have notice, did not provide their approval or consent to Amercare to bid on the contract, and did not have any agreement to supply Amercare with Loops Flexbrush toothbrushes to NYC-DOC. As a result, Amercare bid Loops Flexbrush toothbrushes with the intent to supply the toothbrushes directly.’”

The court found these facts could not sustain a Lanham Act claim.

“Crediting Loops’s version of the facts, the evidence merely shows that Amercare offered to provide the Loops Flexbrush to NYC-DOC in 2006 when, in fact, it had no ability to do so because Loops had not agreed to allow Amercare to distribute its products. There is no evidence that Amercare ever provided toothbrushes to NYC-DOC in 2006 falsely designated as Loops Flexbrushes. Nor is there evidence that NYC-DOC was confused or deceived. In any case, Amercare did not win the 2006 bid and Loops did not suffer injury caused by Amercare’s 2006 bid.

“Alternatively, Loops argues that Defendants’ ‘unfair competitive practices’ of soliciting samples of Loops Flexbrushes, copying them, and using the copies to bid against Loops, violate the Lanham Act. This is unpersuasive. When Amercare bid on the NYC-DOC contract in 2007, it offered to provide the Amerfresh toothbrush. The bid documents indicated that Amercare was offering to provide the Amerfresh toothbrush, the toothbrushes were labeled ‘AmerCare’ and the packaging was labeled with ‘AmerCare.’ There is no possibility that NYC-DOC wasa confused regarding the origin of Amercare’s toothbrushes. While Loops objects to what it characterizes as the ‘slavish copying’ of its Flexbrush, the Lanham Act offers no protection. As the Supreme Court has stated, ‘unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.’”

The case cite is Loops, LLC v. Phoenix Trading, Inc., 2010 WL 3041866, No. 08-1064 (W.D. Wash. July 20, 2010) (Martinez, J.).

This is a laches case.

Derek and Constance Lee Corp. sued Kim Seng Co. for trademark infringement.

The Central District of California entered an injunction against Kim Seng.

Kim Seng appealed to the Ninth Circuit based on laches.

Turns out, Kim Seng waited five years to file suit, which the Ninth Circuit found fell outside the analogous statute of limitations period.

That led the court to decide whether Kim Seng was prejudiced by the delay. However, the court concluded it wasn’t, so it found the district court did not err in deciding that laches did not bar plaintiff’s claim.

“There are two commonly recognized forms of prejudice in the laches context — evidentiary prejudice and expectations-based prejudice. Kim Seng has not cited any losses of witnesses or evidence that would constitute evidentiary prejudice. Kim Seng has also failed to show that it suffered expectations-based prejudice. Kim Seng offered no evidence that it invested money in advertising its Que Huong mark and it offered very little evidence that there was any public association between its company and the Que Huong brand. The mere fact that Kim Seng’s business grew based on the success of the Que Huong brand is insufficient to establish prejudice in the laches context. The district court’s conclusion that laches did not apply was not an abuse of discretion.”

The case cite is Derek and Constance Lee Corp. v. Kim Seng Co., 2010 WL 3069878, No. 08-56440, 08-56513, and 08-56687 (9th Cir. Aug. 5, 2010).

EchoStar Satellite Corp. sued NDS Group PLC in the Central District of California, alleging that NDS had engaged in unfair business practices that compromised EchoStar’s security system, resulting in millions of dollars in damages.

After half a decade of litigation and a four week trial, the jury found for EchoStar in the amount of $45.69.

This, the district court determined, meant that NDS was the prevailing party, including on EchoStar’s Lanham Act claims. However, the court did not award any fees on those claims.

On appeal, the Ninth Circuit considered the fees award in light of the fact the district court did not carve out any time that NDS spent defending against EchoStar’s Lanham Act claims. However, that didn’t seem to bother the Ninth Circuit since the Lanham Act claims were intertwined with the core claims in the case and the district court reduced NDS’ claimed fees by 25%.

“The district court properly disallowed NDS’s request for attorneys’ fees under the Lanham Act but did not attempt to segregate the award of attorney time devoted to the defense of these claims. We note, however, that the Lanham Act claims were denied on a motion for summary judgment that devoted only two pages of briefing to them. Since the operative facts forming the basis of the Lanham Act claims were intertwined with the rest of EchoStar’s claims and required minimal legal argument to achieve their dismissal, we see no practical reason to ask the district court to attempt to separate out the attorneys’ fees attributable to them. We will instead consider them to fall within the 25% reduction of NDS’s fees ordered by the district court.”

The case cite is EchoStar Satellite Corp. v. NDS Group PLC, 2010 WL 3034603, Nos. 09-55005 and 09-55633 (Ninth Cir. Aug. 4, 2010).

One of AOL Advertising’s (top) and Advertise.com’s design marks

AOL Advertising, Inc., sued Advertise.com, Inc., for trademark infringement. At issue were AOL’s registered design marks for ADVERTISING.COM. Advertise.com defended on the ground that the marks are generic and, therefore, are not protectable as trademarks.

AOL filed in the Eastern District of Virginia, which transferred the case to the Central District of California.

The Central District of California granted AOL’s motion for a preliminary injunction. It enjoined Advertise.com from using “any design mark or logo that is confusingly similar to the stylized forms of AOL’S ADVERTISING.COM marks” or using “the designation and trade name ADVERTISE.COM or any other designation that is confusingly similar to AOL’s ADVERTISING.COM marks.” In doing so, it found that ADVERTISE.COM is descriptive rather than generic.

Advertise.com appealed the portion of the order that enjoined Advertise.com from using “the designation and trade name ADVERTISE.COM or any other designation that is confusingly similar to AOL’s ADVERTISING.COM marks.” For some reason, it did not appeal the remainder of the order.

On Aug. 3, the Ninth Circuit reversed and vacated the subject portion of the injunction.

“This does not appear to be the ‘rare case’ in which the addition of a [top-level domain] to a generic term results in a distinctive mark,” the court found. “Rather, the record before us demonstrates that Advertise.com is likely to rebut the presumption of validity and prevail on its claim that ADVERTISING.COM is generic. How, then, did the district court reach the opposite conclusion? Examining its decision, we conclude that it did so due to an error of law and therefore abused its discretion in granting the injunctive relief challenged here.

“The district court’s analysis of whether ADVERTISING.COM is generic is brief and never explicitly states the standard the court applied. The explanation of its conclusion that ADVERTISING.COM is descriptive, however, convinces us that it did not apply the correct legal standard to the facts before it. The court’s reasoning appears in a single sentence that reads ‘The term ‘advertising’ describes the services that AOL offers, and the ‘.com’ either indicates a commercial entity, use of the internet in association with the mark, or describes the internet-related nature of AOL’s services.

“We conclude that the district curt did not correctly apply the legal standard for determining whether a mark is generic. Even if we credit the district court’s rationales as factually accurate — i.e., if we assume that the addition of ‘.com’ serves the three identified functions — ADVERTISING.COM still conveys only the generic nature of the services offered. That ‘.com,’ when added to a generic term, ‘indicates a commercial entity’ does not suffice to establish that the composite is distinctive, much as AOL would not have created a protectable mark by adopting the designation ‘Advertising Company.’”

The case cite is Advertise.com, Inc. v. AOL Advertising, Inc., __ F.3d __, 2010 WL 3001980, Nos. 10-55069 and 10-55071 (9th Cir. Aug. 3, 2010).

Plaintiff Radiator Express Warehouse, Inc., sued defendant Performance Radiator Pacific, LLC, in the Western District for violating the Lanham Act, among other claims.

In discovery, Performance Radiator sought discovery from Radiator Express that supports Radiator Express’ claim that it suffered damages caused by Performance Radiator’s conduct, and documents that support Radiator Express’ allegation that it has been impaired in the management of franchisees and in its financial condition.

Radiator Express apparently objected, saying that its forthcoming expert report would provide the information that Performance Radiator sought.

Radiator Pacific moved to compel.

On July 20, Western District Judge Robart Bryan granted the motion, citing the broad scope of discovery.

“In this case, the information and documents requested by the Defendants appear related to their defense and Plaintiff’s claims. Plaintiff’s allegations include interference with a business relationship and economic and reputational damages. In order to defend against such allegations, it appears that it is necessary for the Defendants to establish whether there was actual harm done by their actions. Therefore, the information and documents that are requested by Defendants is relevant. Moreover, the discovery provisions are to be applied broadly and liberally so that both parties are on the same footing. Plaintiff’s arguments fail when viewed in this light. Plaintiff has information and knowledge that it seeks to hold until the latest possible time. This is inappropriate under the liberal discovery rules. Plaintiff should produce all information and knowledge so that the Defendants may properly develop a defense, if any.”

The case cite is Radiator Express Warehouse, Inc. v. Performance Radiator Pacific, LLC, 2010 WL 2836735, No. 09-5691 (W.D. Wash. July 20, 2010) (Bryan, J.).