Seattle Trademark Lawyer

Plaintiff Pacific Coast Trailers, LLC, and defendant Cozad Trailer Sales, LLC, both lay claim to the trademark RELIANCE, whose title appears cloudy due to a number of transfers and a bankruptcy.

Pacific Coast Trailers (PCT), a Spokane company, filed suit for trademark infringement in the Eastern District of Washington against Cozad, a California company. Cozad then filed suit against PCT in the Eastern District of California.

Cozad moved to dismiss PCT’s claims for improper venue.

It was a close call. In the end, the court found that tie goes to the plaintiff, which is entitled to some deference in the choice of its forum. So, it denied Cozad’s request.

“In order to decide who had the right to use the RELIANCE trademark, it is essential to determine which contract validly transferred the rights to the trademark. They cannot both be valid, and it is necessary to determine which one is. The parties to both contracts are in Washington and California, so the sources of proof and witnesses are likely to be in both jurisdictions. The cause of action arises exclusively out of Defendants’ contacts in Washington, specifically the contract they negotiated with [lender] Sterling in this state. …

“Because the parties and witnesses are in both proposed venues, most of the relevant factors are neutral. Evidence, discovery, and witnesses are split roughly between the two states. Courts in both forums are equally familiar with the trademark law that governs this case, although this Court is in a better position to decide the claims under Washington tort law. The events leading to the suit occurred in both states. And although Defendants’ contacts with Washington are not extensive, the suit arises out of their contract negotiations here.

“The only factor that weighs significantly in either direction is PCT’s choice of this district. While the plaintiff’s choice of forum is not entitled to absolute deference, particularly when parties and witnesses are located elsewhere, in this case it is the only factor that informs the Court’s decision. And while it will inconvenience Defendants to have to defend themselves in Washington, a court should not grant a transfer if doing so would merely shift the inconvenience of litigation from one party to the other.”

The case cite is Pacific Coast Trailers, LLC v. Cozad Trailer Sales, LLC, 2010 WL 2985701, No. 10-111 (E.D. Wash. July 21, 2010) (Shea, J).

Plaintiff Great Neck Saw Manufacturers, Inc., sued competitor Star Asia U.S.A., LLC, in the Western District for patent and trade dress infringement over the parties’ folding knives.

Here’s the claimed trade dress: “the shape, appearance, and location of (a) the blade holder, (b) the upper curve of the handle, (c) the bottom curve of the handle, (d) the upper notch in the handle, (e) the top rivets and pivot pins on the side wall of the handle, (f) the large pivot on the side wall of the handle, (g) the curved front and rear ends of the handle, (h) the handle as viewed from the rear, (i) the handle as viewed from the top, and (j) the handle as viewed from the bottom, as well as (k) the shape, appearance and relative thickness of the layers in the handle as viewed from the top and bottom.”

Defendant Star Asia moved for summary judgment based on the trade dress’ functionality, lack of distinctiveness, and insufficient evidence of likely consumer confusion.

On July 23, Judge Thomas Zilly granted the motion on each of these grounds.

Here’s a summary of the discussion on functionality: 

“Because Great Neck has an existing utility patent for the device at issue, Great Neck bears a ‘heavy burden of establishing that the elements of its alleged trade dress are merely ‘ornamental, incidental, or arbitrary.’ The Court HOLDS that, as a mater of law, Great Neck has not met and cannot carry this burden. The features of Great Neck’s utility knife that it asserts constitute trade dress, when viewed as a whole, simply offer ‘the actual benefit that the consumers wishes to purchase,’ namely a folding knife with an easily replaceable blade. Competitors have broad rights to copy successful product designs when those  designs are not protected by (utility or design) patents. It is not unfair competition for someone to trade off the good will of a product; it is only unfair to deceive consumers as to the origin of one’s goods and thereby trade off the good will of a prior producer.’ Under the four-factor test outlined in Clamp Mfg. [Co. v. Enco Mfg. Co., 870 F.2d 512, 516 (9th Cir. 1989)], Great Neck’s trade dress is de jure functional and therefore not entitled to trade dress protection.” 

The case cite is Great Neck Saw Manufacturers, Inc. v. Star Asia U.S.A., LLC, 2010 WL 2949296, No. 06-647 (W.D. Wash. July 23, 2010) (Zilly, J.).

From today’s Seattle Times:

“Investigators in Mississippi say two men wrapped blocks of wood in duct tape and Bubble Wrap, attached Toshiba labels and tried to pass them off as laptops. Hinds County authorities charged the men with trademark infringement and selling goods with counterfeit labels. WLBT-TV reported the men tried to sell the fake laptops to an off-duty state trooper.”

Probably not Intel inside, either.

Fraud or theft would seem to fit these facts, but once someone affixes something that looks like a genuine trademark on a product that does not come from the source the trademark identifies, that’s counterfeiting as well.

This month’s ABA Journal has an article on the Second Circuit’s Tiffany v. eBay decision limiting the auction site’s liability for its users’ trademark infringement.

The decision has different implications depending on who you ask.

Says Tiffany’s lawyer: “The ruling makes it almost impossible to protect marks online — makes it an undertaking which is almost always after the fact.”

Says eBay’s lawyer: “The decision didn’t upset the traditional view as to the relative allocations of burdens of ferreting out trademark infringements. It didn’t create a new a priori rule for online marketplaces.”

Says Eric Goldman: “Courts may expect service providers to provide the industrial-strength level of protection that eBay provides, but small startups can’t do that. I am concerned this case would send the wrong signal to small startups: Set up industrial-strength protections or you’ll be sued out of existence.”

Still anonymous: Screen shot from defendant’s Internet gripe site

The anonymous John Doe runs the Internet gripe site, www.SaleHooSucks.com, which criticizes plaintiff SaleHoo Groups, Ltd.

SaleHoo is a New Zealand limited liability company that offers a database of wholesalers and brokers of goods that can be sold on eBay, and sells memberships that authorize access to the database.

Mr. Doe’s site claims that SaleHoo threatens individuals who post unfavorable information about SaleHoo with defamation lawsuits and thus “there is no way to get true unbiased reviews of SaleHoo.” 

SaleHoo, which owns the trademark SALEHOO, filed suit in the Western District against Mr. Doe for for trademark infringement, among other claims. 

SaleHoo moved for leave to take immediate discovery, which the court granted. SaleHoo then served a subpoena on GoDaddy.com, the SaleHooSucks.com registrar, seeking to learn the registrant’s identity. GoDaddy gave notice of the subpoena to Mr. Doe, who moved to quash it.

Since Mr. Doe had notice of the subpoena and had an opportunity to be heard, the court found the controlling question was whether “SaleHoo alleged facially valid claims and produced prima facie evidence to support of the elements of these claims within its control?” The court answered the question in the negative.

“Here, the court finds that SaleHoo has not met its burden to make a prima facie showing with respect to likelihood of confusion. Doe plainly uses ‘SaleHoo’ in its domain name and throughout its website, but it is not evident how Doe’s use is confusing or whether it has caused actual confusion. The court is particularly mindful that the average Internet user is unlikely to believe that <www.salehoosucks.com> is either an official SaleHoo website or in any way sponsored or approved by SaleHoo.”

Therefore, the court granted Mr. Doe’s motion to quash the subpoena.

The case cite is SaleHoo Group, Ltd. v. ABC Company, __ F. Supp.2d __, 2010 WL 2773801, No. 10-0671 (W.D. Wash. July 12, 2010) (Robart, J.).