Seattle Trademark Lawyer

What remained of the trademark dispute between Autodesk, Inc., and Open Design Alliance has settled. (See previous STL posts on the Western District part of the dispute here, here, here, and here.)

Autodesk sells design, engineering, and entertainment software, including AUTOCAD computer-aided design (CAD) software. The Seattle-based Open Design Alliance is an association of CAD customers and vendors that promote open industry-standard formats for the exchange of CAD data.

The dispute centered on Open Design Alliance’s use and registration of an open drawing format for CAD data called OPENDWG, which Autodesk claimed infringed its trademark rights in DWG.

In 2007, the parties entered a stipulated Consent Judgment that disposed of the Western District portion of the suit (summarized here).

Autodesk summarized the settlement of the Trademark Trial and Appeal Board portion as follows: “Autodesk initiated proceedings with the United States Patent and Trademark Office, Trademark Trial and Appeal Board (TTAB) in 2007 to cancel the ODA’s DWG-based trademark registrations to avoid confusion with Autodesk’s established DWG brand and trademark. The ODA has agreed to cancel its DWG-based trademark registrations and cease use of DWG and DWG-based trademarks in its product marketing and branding, and Autodesk has agreed to withdraw the cancellation proceedings with the TTAB. The settlement does not preclude ODA from developing interoperable software or from using the .dwg extension in its file names. Terms and conditions of the settlement agreement are confidential.”

The case cite is Autodesk, Inc. v. Open Design Alliance, Cancellation No. 92047002 (TTAB). 

Neat follow-up from the Seattle PI’s Microsoft Blog.

It’s talked with Microsoft and exercise equipment maker Alf Temme about the Western District suit Microsoft filed accusing Mr. Temme of typosquatting. (Previous STL post here.)

The post reveals a few new facts:

• Microsoft has offered to settle with Mr. Temme for $500k.
• Mr. Temme calls Microsoft’s settlement offer “extortion.”
• He does not intend to hire a lawyer.
• Mr. Temme is no stranger to the Anticybersquatting Consumer Protection Act. He’s been sued by Dell, the American Automobile Association, Air France, Alaska Airlines, Register.com, IMDb, and America Online.
• In the Dell suit, the Middle District of Florida defaulted Mr. Temme for not answering the complaint and awarded Dell almost $130k for willful trademark infringement, including attorney’s fees.

“What Microsoft is in effect trying to do is put a small company of eight employees out of business,” Mr. Temme said. “It’s extortion! All they could have wanted to do was get the domain names.”

“OK, so I did a naughty, right? But a punishment that’s the same as the death penalty? That’s ridiculous.”

Microsoft, for its part, says it’s trying to teach typosquatters a lesson.

“From our perspective, if there are thousands of people doing this, we can’t sue all of them. We have to show that this is not a valid way to do business,” its associate general counsel said. “Our goal is to have an enforcement program to get people to stop tyring this, so they stop doing this in the first place.”

He added that Microsoft is “prepared to fully litigate” its case.

For Mr. Temme’s part, he does not intend to hire a lawyer. It sounds like he doesn’t intend to defend himself in the case, other than transfer the domain names to Microsoft — something he offered before Microsoft made its $500k demand.

Franchise relationships are governed by contract.

Depending on the franchisor’s agreement with the franchisee, there are certain things a franchisee must do with regard to the franchisor’s trademarks once the franchise relationship is terminated.

Franchisor Turf Holdings, Inc., recently filed suit in the Western District against Vanderburg Corp., one of its former franchisees.

The complaint alleges that Vanderburg failed to remove Turf Holding’s trademarks pursuant to the parties’ franchise agreement, which also amounted to trademark and trade dress infringement. Turf Holdings separately moved for a preliminary injunction.

The complaint states: “Defendants refused to de-identify their business within three days as required by Section 9.2 of the Franchise Agreement, and have failed to do so to date. Specifically, Defendants failed to completely remove the ‘Weed Man’ mark from the door of their business and failed to change th vehicles’ distinctive green and yellow color scheme and tank configuration. Upon information and belief, the ‘Weed Man’ mark has not been completely removed from the vehicles, as typically the outline of the mark can still be seen after removal of the decal containing the mark unless the vehicles are re-painted, which Defendants have not done.”

Vanderburg has not yet filed its answer.

The case cite is Turf Holdings, Inc. v. Vanderburg Corp., No. 10-0477 (W.D. Wash.).

Are we paying $10 for a movie or a two-hour commercial?

As many know, the answer these days is both.

The New York Times yesterday had a nice piece that includes a description of script notes by a trademark lawyer.

“Now, having Campbell’s Soup or Chrysler associated with your project can be nearly as important to your pitch as signing Tom Cruise,” the article says.

It goes on to describe how the writer and director of “Up in the Air” wanted to use a real hotel brand for George Clooney’s character to visit.

Hilton traded free hotel stays for the film crew, sets, and wide promotion of the film in exchange for the movie’s using its brand.

We all know this is happening. And it arguably allows great small-budget movies to be made. But when I go to a movie, I’m paying for a story. To escape. Not to wonder how much General Mills paid to put a box of Cheerios on the hero’s breakfast table.

That used to be an occupational hazard. Now everyone’s in the same boat.

According to plaintiff’s complaint, defendant Gary Loomis used to own plaintiff G. Loomis, Inc., which makes fishing equipment and sporting goods.

The complaint alleges Mr. Loomis sold his interest in the company to plaintiff in May 1997 and continued to work as plaintiff’s employee until May 2008. Plaintiff alleged it acquired the G. LOOMIS trademark in the purchase.

Plaintiff alleged it brought a prior suit against Mr. Loomis alleging that he began working with plaintiff’s competitors to design and sell a line of fishing-related equipment under various trademarks incorporating his name, including GARY LOOMIS SPINNERBAITS and GARY LOOMIS LURES.

Plaintiff alleged the parties settled their dispute in September 2009. Part of the settlement, plaintiff claimed, was that Mr. Loomis would not offer goods or services in connection with any name or mark that is confusingly similar to plaintiff’s G. LOOMIS mark.

Plaintiff filed suit against Mr. Loomis again in December 2009, alleging that Mr. Loomis breached the parties’ settlement agreement in November 2009 when he launched the “Gary Loomis Approved Rod Builder Program” with defendant North Folk Composites LLC, one of plaintiff’s competitors. Plaintiff alleged that Mr. Loomis and North Folk also began using a logo with the words GARY LOOMIS that appeared to be Mr. Loomis’ signature. Plaintiff claimed their doing so further amounted to trademark infringement.

In January, Mr. Loomis and North Folk answered plaintiff’s complaint and asserted a counterclaim for breach of contract.

Two weeks later, the parties settled.

On March 31, Western District Judge Benjamin Settle entered the parties’ Stipulated Dismissal dismissing their claims against each other without prejudice and without awarding attorney’s fees or costs to any party.

Sorry to say, but STL isn’t privy to the terms of the parties’ settlement.

The case cite is G. Loomis, Inc. v. Gary Loomis, No. 09-5787 (W.D. Wash.).