Seattle Trademark Lawyer

The Children’s Pink Plaid and Poodle Apron
sold at (at least until recently) at Sur La Table

On May 21, Seattle-based kitchen store Sur La Table, Inc., filed suit in the Western District against Burberry Limited (U.S.) and Burberry Limited (U.K.). The suit seeks a declaration that the “Children’s Pink Plaid and Poodle Apron” available at Sur La Table (depicted above) does not infringe Burberry’s registered design marks (including the one depicted left).

The suit strikes at Burberry’s familiar check design. The complaint alleges that Burberry’s design is not inherently distinctive; it has not acquired secondary meaning; and it is generic. It also alleges that the pattern as used on the subject apron is merely decorative.

“The generic lattice pattern is functional; it is a decorative geometric pattern present on may products, from plaid fabric to waffle-cut french fries,” the complaint says.

The complaint states the suit is in response to demands that Burberry made to Sur La Table in an April 15 letter.

Though the complaint states that Sur La Table sells the subject apron, it appears to have been removed from the company’s Web site.

Burberry has not yet responded to the complaint.

The case cite is Sur La Table, Inc. v. Burberry Limited (U.S.), No. 10-00850 (W.D. Wash.).

In the Western District’s WORM FACTORY case, plaintiff Cascade Manufacturing Sales, Inc., n/k/a Nature’s Footprint, Inc., succeeded in its trademark case against competitor Providnet Co Trust. (Previous post here.)

Having done so, it requested an award of fees.

Judge Ronald Leighton denied the award under the Lanham Act, but granted it under Washington’s Consumer Protection Act. In doing so, the court expressed its displeasure at the plaintiff’s motives in pressing its case.

“The Court is convinced that plaintiff sought to use its superior position vis-a-vis the trademark to, cause harm to a competitor. Given this Court’s strongly-held belief that a significant part of this litigation was motivated by plaintiff’s desire to quash competition, no fees will be awarded under the Lanham Act’s ‘exceptional case’ authority.”

The court nonetheless awarded fees under the Consumer Protection Act’s mandatory authority, since it found that defendants marketed their products as ‘patent pending’ and ‘made in the USA’ when they knew those statements were false.

“To deny attorneys’ fees in this context, notwithstanding the fact that defendants engaged in misleading advertising practices and trademark infringement, would allow defendants to engage in these types of tactics for a long period of time with impunity.”

Therefore, the court found that “Plaintiff should be awarded some fees under the Washington Consumer Protection Act. Those fees should, however, reflect the Court’s observation that a significant portion of this litigation was motivated not by a desire to protect a valid trademark, but to force a competitor out of business.”

In the end, the court awarded plaintiff less than it wanted — $20k and costs of almost $3,500.

The case cite is Nature’s Footprint, Inc. v. Providnet Co Trust, 2010 WL 1903183, No. 08-5433 (W.D. Wash. May 11, 2010) (Leighton, J.).

Not much of a trademark, it turns out: Mt. St. Helens 30 years ago today

Big day in Washington history: 30 years ago today, Mt. St. Helens blew up.

Quite a day. I remember it well. My Dad was hiking nearby at the time and came home covered in ash.

I was ten.

In honor of this great day, I thought I’d see how the mountain fares as a brand.

Not great, it turns out, if federal registrations are the yardstick. In fact, I only found one: MT. ST. HELENS for “living trees.”

By comparison, MT. RAINIER is part of two federal registrations — MT. RAINIER BANK for “banking services” and MT. RAINIER WILDERNESS for “metal bells” — still a lot less than I would have guessed.

Photo credit: U.S. Geological Survey

Salon Fifth Avenue’s (left) and Saks Fifth Avenue’s logos

I actually heard about this while I was getting my hair cut.

Saks Fifth Avenue reportedly is unhappy with an Olympia salon’s use of the name “Fifth Avenue Salon,” including the salon’s script design.

The salon started out on Fifth Avenue. It’s since moved, but reportedly has used the name for 35 years.

The salon says it’s not rolling over, even though it received a letter the salon interpreted as “change your name — or else.”

The salon points out that there are no Saks Fifth Avenue stores in Washington.

Story here via KOMO News.

Wonder if Saks is making similar demands of Florida’s Salon Fifth Avenue, Georgia’s Salon Fifth Avenue, Kentucky’s Fifth Avenue Salon, or Utah’s Salon and Spa Fifth Avenue.

Photo credit: KOMO News

Since I’ve covered it here, here and here, I might as well report that the Western District denied the parties’ cross-motions for summary judgment in Campagnolo S.R.L. v. Full Speed Ahead, Inc., a false advertising case between competing bicycle component manufacturers.

The order is pretty fact-specific, but it involved dueling survey experts who together helped generate genuine issues of material fact when each party’s facts were examined in the light most favorable to the non-moving party.

Of interest is the court’s recognition that a party need not prove actual damages to recover under Washington’s Consumer Protection Act.

The court noted: “the Washington Supreme Court has held that ‘nonquantifiable injuries, such as loss of goodwill’ are sufficient to meet the injury element of a CPA claim. Contrary to FSA’s arguments, the more recent decision of Indoor Billboard/Washington, Inc. v. Integra Telecom of Washington, Inc., does not contradict this proposition. That case merely holds that there must be a demonstrable causal link between the misrepresentation and the plaintiff’s injury.”

Trial’s set for June 1.

The case cite is Campagnolo S.R.L. v. Full Speed Ahead, Inc., No. 08-1372 (W.D. Wash. May 11, 2010) (Martinez, J.).