Seattle Trademark Lawyer

Seattle’s Best Coffee logos — Old and new

Seattle’s Best Coffee has been changing its market strategy. Now it’s changing its brand.

What started as a lighter version of Starbucks coffee has taken a different tack. Now the Starbucks-owned brand is sold mostly in Borders bookstores, Subways, Burger Kings, and AMC Theaters.

It only makes sense that the brand reflect those changes.

The Seattle Times has a nice discussion on the brand’s evolution and how the new look matches SBC’s new strategy. 

“We’re going back into the heritage of the company with its sense of fun and optimism, then bringing an element of simplicity,” SBC’s head said.

The Times describes the new design as “an open-mouthed smiley face with a drip of coffee.”

PTO nerds (not me, thanks) saw evidence of SBC’s evolution two months ago. The company filed to register its new logo on March 4.

Competing appliance recycling companies slugged it out in Appliance Recycling Centers of America, Inc. v. JACO Environmental, Inc., a false advertising case the Ninth Circuit decided on May 4.

The Central District of California granted the defendant summary judgment.

The Ninth Circuit affirmed, finding no reasonable jury could find the defendant’s statements were actionable.

The court found: “The statement that Defendants’ method for recycling appliances is a ‘unique’ system with ‘unprecedented’ results is non-actionable puffery because it is a ‘general, subjective claim,’ rather than a statement about ‘specific or absolute characteristics.’

“Plaintiffs argue that the district court erred by requiring proof of bad faith for the statements that ‘JACO’s system for handling contaminated polyurethane is an entirely different approach’ and that ‘no other company could handle polyurethane contaminated with CFC-11’ before Defendant JACO Environmental, Inc. entered the market. Even assuming that Plaintiffs are correct that proof of bad faith is not necessary, neither of those statements supports a Lanham Act claim.

“No reasonable jury could find that the ‘entirely different’ statement is false. In context, that statement asserts that Defendants’ method of incinerating the contaminated foam is entirely different than the Adelmann recycling process; it does not refer to the method of dismantling the appliances to obtain the contaminated foam in the first place. The record demonstrates that the statement is true — incineration is entirely different than the Adelmann process.

“No reasonable jury could find that the ‘no other company’ statement satisfies the deception element of a Lanham Act false advertising claim. The statement is ambiguous in its context because it could refer either to Plaintiffs or to JACO, and there is no evidence that it causes actual deception.”

Appliance Recycling Centers of America, Inc. v. JACO Environmental, Inc., 2010 WL 1767313, No. 09-55168 (9th Cir. May 4, 2010).

Au-Tomotive Gold, Inc., takes genuine Volkswagen badges and puts them on its upscale license plates.

The plates aren’t from Volkswagen, but the logos are. 

Au-Tomotive Gold packages its plates with a disclaimer saying the plates are not produced or sponsored by Volkswagen.

Volkswagen of America, Inc., nonetheless took issue with the practice.

Au-Tomotive Gold defended based on the first-sale doctrine. The first-sale doctrine holds that a producer’s right to control distribution of its trademarked product does not extend beyond the first sale of the product.

The District of Arizona rejected the defense, granted Volkswagen’s motion for summary judgment, and entered a permanent injunction.

Au-Tomotive Gold appealed.

On May 6, the Ninth Circuit affirmed, finding the first-sale doctrine did not apply.

The court found: “It is likely that a person on the street who sees an Auto Gold marquee license plate with a VW badge will associate the plate with Volkswagen. Indeed, customers buy marquee license plates principally to demonstrate to the general public an association with Volkswagen. ‘The demand for Auto Gold’s products is inextricably tied to the trademarks themselves.’”

It added that “Post-purchase confusion creates a free-rider problem. Auto Gold contends that in ‘first sale’ cases ‘the element of ‘free-riding’ present in other post-purchase confusion cases disappears because the producer has paid the price asked by the trademark owner for the ‘ride.” This contention misses the point. When a producer purchases a trademarked product, that producer is not purchasing the trademark. Rather, the producer is purchasing a product that has been trademarked. If a producer profits from a trademark because of post-purchase confusion about the product’s origin, the producer is, to that degree, a free rider.”

The case cite is Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., __ F.3d __, 2010 WL 1794018, No. 08-16005 (9th Cir. May 6, 2010).

If you want to go to trial, you’d better prosecute your case.

That’s what the magistrate judge told the plaintiff last week in Guru Denim, Inc. v. Hayes, a counterfeiting case in the Central District of California.

Plaintiff sued defendant, then pretty much stopped participating in the case. This irked the court, particularly when the plaintiff asked for a continuance during the pretrial conference based on the defendant’s failure to provide discovery — which plaintiff had never before complained about.

“Plaintiff has repeatedly displayed dilatory conduct throughout this litigation,” the court found. “Plaintiff made no effort to prosecute this case for nearly sixteen months after filing the Complaint. Plaintiff made no effort to seek a Court order to compel Defendant to comply with Plaintiff’s purported discovery requests. Plaintiff made no effort to seek a continuance from the Court prior to the Pretrial Conference.

“Plaintiff’s conduct, far from being benign, has violated a multitude of provisions of this District’s Local Rules and this Court’s Orders. The Federal Rules of Civil Procedure require an attorney to be prepared for pretrial conferences. Plaintiff’s counsel was substantially unprepared for the April 26, 2010 Pretrial Conference. When asked about the merits of Defendant’s defense — namely, that Defendant asserts he obtained the goods from Jet Apparel — Plaintiff’s counsel admitted that the was utterly clueless about his client’s interactions with Jet Apparel. It appears that Plaintiff’s counsel has not even conducted the most basic inquiry into the potential factual disputes that were to be tried eight days later.”

For these reasons, the court ordered the plaintiff to show cause why it should not be sanctioned, including monetary fines, exclusion of evidence, and dismissal of its complaint. The court said it would wait to read plaintiff’s submission before deciding if and when the case will proceed to trial.

The case cite is Guru Denim, Inc. v. Hayes, 2010 WL 1734925, No. 08-4493 (C.D. Calif. April 28, 2010).

Today, STL’s favorite law firm landed a big catch — Sean O’Connor of the University of Washington School of Law. He joins the firm of counsel.

Mr. O’Connor brings a lot of experience to the firm — he teaches intellectual property and securities law, and is the founding director of UWSL’s Entrepreneurial Law Clinic, which matches deserving startups with lawyers, law students, and business students. Before academia, he worked at Weil Gotshal in New York, and Hale and Dorr in Boston.

When not teaching, writing, and lecturing, he will advise clients in issues involving intellectual property, biotechnology, corporate issues, and securities law.

Mr. O’Connor got his law degree from Stanford, his M.A. in philosophy from Arizona State University, and his B.A. in history from the University of Massachusetts - Boston.

This is a neat hire, which will make our already energetic and bustling business department even more vigorous.

(Photo credit: UWSL)