Seattle Trademark Lawyer

Heard about this one today, and I do dig dilution.

Seems the Fourth Circuit last month affirmed a jury’s curious finding that Mattel, Inc.’s SEE ‘N SAY and THE FARMER SAYS marks are famous and were likely to be diluted by Super Duper, Inc.’s use of SEE IT! SAY IT!, SAY AND SING, FISH AND SAY, FISH & SAY, SORT AND SAY, SORT & SAY, and SAY AND SORT marks for children’s language therapy materials.

Really? Do SEE ‘N SAY and THE FARMER SAYS really meet the statutory definition of being “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner”? Not in my book.

Not much analysis in the (unpublished) decision, just that the Fourth Circuit wasn’t going to substitute its judgment for that of the jury.

In the court’s words, “The evidence presented at trial was sufficient for the jury to conclude that the simultaneous use of Mattel’s and Super Duper’s marks would … ‘impair[] the distinctiveness of [Mattel’s] famous marks.’”

It concluded: “[T]he jury was well situated to make the factual determination that Mattel’s marks were ‘famous,’ that sufficient similarity existed between Super Duper’s and Mattel’s marks, and that this association was likely to impair the distinctiveness of Mattel’s ‘famous’ marks. The Trademark Dilution Revision Act (‘TDRA’) requires nothing more, and we are prohibited from reweighing the evidence or drawing inferences from the facts.”

I’d be interested in learning exactly what evidence the jury was presented. I just don’t view SEE ‘N SAY and THE FARMER SAYS as being household brand names. Not by a long shot.

The case cite is Super Duper, Inc. v. Mattel, Inc., No. 09-1397 (4th Cir. June 10, 2010).

In CertainTeed Corp. v. Seattle Roof Brokers, shingle manufacturer CertainTeed brought suit against James Garcia, a “roof broker,” claiming he had engaged in unfair competition and violated the Washington Consumer Protection/Unfair Business Practices Act. As discussed here, on June 28, Western District Judge Richard Jones found for CertainTeed on summary judgment and imposed a permanent injunction against Mr. Garcia.

Following the order, CertainTeed moved to dismiss its remaining claims without prejudice, including its claim for damages. At the pretrial conference, the court suggested that CertainTeed dismiss its claims with prejudice, but CertainTeed declined.

On July 23, the court granted CertainTeed’s request, finding that Mr. Garcia would not suffer any legal prejudice — the sole basis on which a court can deny a motion for voluntary dismissal.

The court’s reasoning:

“The court finds no legal prejudice that would arise from CertainTeed’s voluntary dismissal of its remaining claims. Mr. Garcia would lose no legal right as a result of the dismissal, and there is no indication that the discovery from CertainTeed necessary to mount his defense would be more difficult to obtain later. Indeed, as discovery has closed in this action, Mr. Garcia has already had a complete opportunity to seek discovery in support of his defense.

“In an equitable sense, Mr. Garcia’s claim to prejudice is stronger. As Mr. Garcia made clear at the pretrial conference, this litigation has been a considerable strain on him for two years, and he would strongly prefer to put an end to it. CertainTeed, meanwhile, has shown little interest in moving beyond this dispute. Although the court cannot accurately forecast whether CertainTeed will attempt to resurrect the claims it now wishes to relinquish, CertainTeed refused at the pretrial conference to agree to a dismissal with prejudice. This suggests that it wishes to retain at least the threat of relitigation of these claims, a threat on which it might well make good.

“On the other hand, even a dismissal with prejudice would not immunize Mr. Garcia from the threat of future litigation. As the court has already discussed, the permanent injunction will remain in place. CertainTeed can pursue relief in this court if it feels that Mr. Garcia’s future conduct violates the injunction. Moreover, nothing prevents CertainTeed from filing another lawsuit if Mr. Garcia’s future conduct violates the law without violating the permanent injunction.”

The case cite is CertainTeed Corp. v. Seattle Roof Brokers, No. 09-563 (W.D. Wash. July 23, 2010) (Jones, J.).

Western District enjoins use of “Cake Boss” for TV Show

In Masters Software, Inc. v. Discovery Communications, Inc., a software company with a trademark registration for CAKE BOSS filed suit in the Western District against the producers of the popular television show of the same name. (Previous STL post here.)

On July 16, Western District Judge Richard Jones imposed a preliminary injunction against the producers of the TV show. Among other things, the court found much actual confusion: “Confusion between these marks is not limited to casual fans. People in the baking business have assumed that [plaintiff] CakeBoss is related to [defendant] Cake Boss, as evidenced by Masters’ experiences at trade shows. Discovery and Mr. [Bartolo ‘Buddy’] Valastro [star of the show] point out that they receive many more communications than Masters from people who do not appear to be confused, but this is to be expected. Most people are unaware of CakeBoss, including most people who are fans of Cake Boss. Among those that are aware of have encountered both marks, however, there is substantial evidence of actual confusion.”

The court also found that the defendants’ intent weighed in plaintiff’s favor. “Discovery attempts to paint its intent as innocent, denying that it was aware of CakeBoss when it named Cake Boss. The court accepts that Discovery was unaware of CakeBoss at that time, but this is a far cry from evidence of innocent intent. As noted, it would have only taken a few moments on the internet for Discovery to discover that the name it was considering for its new show (and a multi-million dollar investment) was in use by Masters. If it did not know about CakeBoss, it should have.”

Based on these findings, the court found that Masters was likely to prevail on its infringement claim and that irreparable harm was presumed. Therefore, it found that Masters was entitled to a preliminary injunction.

And it’s something of a doozie.

“The court orders that, pending trial in this matter, Defendants … shall cease using the name ‘Cake Boss’ to identify the television program currently entitled Cake Boss, and in connection with the sales of merchandise related to that television program.

“With respect to the sales of related merchandise (except for DVDs of the television program), this injunction shall take effect immediately upon Masters’ posting of bond. Defendants are permitted, however, to sell any pre-existing inventory of such products.

“With respect to the television program itself, the injunction shall take effect after Masters posts bond and after Defendants complete all scheduled first-run airings of the third season of Cake Boss. Within one month following the final first-run airing of the third season, Defendants may not use the name ‘Cake Boss’ in connection with either repeat showings of any episode of any season of the television program or with any episodes in future seasons.”

The court set the bond at $10,000.

The case cite is Masters Software, Inc. v. Discovery Communications, Inc., No. 10-405 (W.D. Wash. July 16, 2010) (Jones, J.).

Beach Boy/Appellant Mike Love

Beach Boy Mike Love appealed the dismissal of a derivative suit he brought on behalf of Brother Records, Inc. (“BRI”), the corporation that owns THE BEACH BOYS registered trademark, against the UK-based Sanctuary Records Group, Ltd. He also appealed the award of attorney’s fees against him.

The suit paralleled claims Mr. Love made in a direct lawsuit against Sanctuary. Sanctuary moved to dismiss Mr. Love’s claims on the ground that the related direct action had already been dismissed.

On July 8, the Ninth Circuit affirmed, in part because it found a corporation does not possess any right of publicity and in part because the cause of action did not implicate either a right of publicity or the Lanham Act since it arose in England.

“First, Love claims Sanctuary violated his own and BRI’s common law rights of publicity in the Good Vibrations promotion, by using his and The Beach Boys’s names, photographs, and likenesses to their commercial advantage without permission. In the Opinion, we held that Love’s claim was governed by English law, and English law does not recognize a right of publicity. In his district court papers, Love cited no California case that has recognized that a corporation has a right of publicity or otherwise has standing to protect the publicity rights of another. Nor did he cite any California case that has recognized that a band or group has a right to publicity. Even assuming BRI could bring a right of publicity suit on behalf of The Beach Boys, and that California somehow had an interest in the case because BRI is incorporated in California, England’s interest in this case is significantly greater.

The case cite is Love v. Brother Records, Inc., Nos. 08-55035 and 05-55973, 2010 WL 2781582 (9th Cir. July 8, 2010).

Photo Credit: Brian Peters

The Ninth Circuit tweaked its approach to the nominative fair use doctrine last week.

On July 8, it found that the burden of establishing nominative fair use does not rest with the defendant, as it previously had held. Instead, it is the plaintiff’s burden to prove the defendant’s use is not nominative fair use.

Toyota Motor Sales, U.S.A., Inc., sued independent auto brokers Farzad and Lisa Tabari for trademark infringement based on the defendants’ use of “lexus” as part of their domain names, including buy-a-lexus.com and buyorleaselexus.com.

Following a bench trial, the Central District of California found for Toyota and enjoined the defendants (who proceeded pro se) from using “Toyota” in any domain name. The defendants (still pro se) appealed to the Ninth Circuit.

After a lengthy discussion about nominative fair use, the court found the district court erred in analyzing the doctrine as an affirmative defense after Toyota had established its case of infringement. Instead, the court found that the test replaces the likelihood of confusion test.

It’s made that finding before. Here’s the wrinkle.

On remand, it found that Toyota should have the burden of establishing that defendants’ use of its mark was not nominative fair use.

“A finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement. And, as the Supreme Court has unambiguously instructed, the Lanham Act always places the ‘burden of proving likelihood of confusion … on the party charging infringement.’ In this case, that party is Toyota. ‘[A]ll the [Tabaris] need[ ] to do is to leave the factfinder unpersuaded.’

“We have previously said the opposite: ‘[T]he nominative fair use defense shifts to the defendant the burden of proving no likelihood of confusion.’ But that rule is plainly inconsistent with [KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118 (2004)] and has been ‘effectively overruled.’ A defendant seeking to assert nominative fair use as a defense need only show that it used the mark to refer to the trademarked good, as the Tabaris undoubtedly have here. The burden then reverts to the plaintiff to show a likelihood of confusion.”

The case cite is Toyota Motor Sales, U.S.A., Inc. v. Tabari, __ F.3d __, 2010 WL 2680891, No. 07-55344 (9th Cir. July 8, 2010).