Seattle Trademark Lawyer

The Seattle Times ran a story today on Washington Mutual’s efforts to protect its trademark rights.

The failed bank reportedly still uses a number of marks in Canada and Mexico.

The story says that WaMu continues to prosecute applications to register THE CARD THAT REWARDS YOU AND YOUR PET; YOUR PET. YOUR CARD. PERFECT TOGETHER.; and WHOO HOO.

WaMu also has opposed a Florida bank’s application to register SIMPLIFY BANKING. MAGNIFY LIFE. on claim that the mark is confusingly similar with WaMu’s prior mark, SIMPLER BANKING. MORE SMILES.

“I guess attorneys need to create work,” the Florida bank’s CEO reportedly said.

WaMu says it has the bankruptcy court’s permission “to protect and maximize the value” of its assets, “including its valuable intellectual property, to benefit the company’s bankruptcy estate and its creditors.”

The bank reportedly told the bankruptcy court it expects to obtain less than $1.5M in value for its “non-core” trademarks and domain names that do not mention Washington Mutual or its “WaMu” nickname.

The article invites criticism of what must look like throwing good money after bad. 

But if there’s value in WaMu’s trademarks, domain names, and other intellectual property, paying lawyers to preserve that value for the benefit of the bank’s creditors makes good sense — even if it costs $30k per month to do so (the amount the bank reportedly paid its intellectual property lawyers for such work in January).

Of course, if WaMu stopped using the marks when it stopped functioning as a bank — and did not intend to resume use —  then the marks would be deemed abandoned and wouldn’t have any value at all.

A court can’t weigh evidence on summary judgment, no matter how tempting it might be to do so.

That’s what the Ninth Circuit found the Central District of California did in the ConsumerInfo.com, Inc. v. Money Management International, Inc., trademark infringement case.

Money Management argued that it had prior common law use of its MY SCOREK trademark so it did not infringe ConsumerInfo.com’s rights.

The district court, however, found there were essentially no sales under the mark to support that claim. Therefore, it granted summary judgment to ConsumerInfo.com.

The Ninth Circuit disagreed. On March 11, it found there was at least minimal evidence in the record of Money Management’s use of the mark in commerce. It concluded that the district court’s not crediting such evidence on summary judgment was error.

“The district court did not credit evidence of actual sales by MMI under its mark. MMI argues that, it presented a spreadsheet which — according to the testimony of Charles Stanley — contained a record of numerous sales under MMI’s mark. The district court found this record to be ‘unreliable’ because the spreadsheet itself did not reference MMI’s mark; thus the district court did not take the spreadsheet into account. In making this determination the district court improperly weighed evidence, discounting Stanley’s testimony. Viewing the evidence in the light most favorable to MMI, this spreadsheet coupled with Stanley’s testimony, tends to show sales under the mark.”

The case cite is ConsumerInfo.com, Inc. v. Money Management Int’l, Inc., 2010 WL 882868, Nos. 08-56705 and 09-55228 (9th Cir. March 11, 2010).

On March 9, Network and IT Management Ltd. filed suit in the Western District for a declaration that its registration of the bachoco.com domain name does not violate the Anti-Cybersquatting Consumer Protection Act or infringe defendant Bachoco, S.A. de C.V.’s trademark rights.

On March 10, the Western District entered a show cause order requiring plaintiff to explain why its case should not be dismissed.

The problem?

“The complaint is signed ‘May Greenberg, Manager,’” the court found. “The complaint is not signed on behalf of Plaintiff, a business entity. It appears Plaintiff is attempting to proceed in this matter pro se.”

That’s not allowed by court rules.

“Although an individual may represent himself or herself pro se, see 28 U.S.C. § 1654, the rules are clear that a business entity is not permitted to proceed pro se unless an exception applies.”

The case cite is Network and IT Management Ltd. v. Bachoco, S.A. de C.V., No. 10-5158 (W.D. Wash.).

Did you catch my partner Bob Cumbow’s piece today on IPWatchdog?

He offers a fine treatment of the pressing right of publicity cases of the day: Lindsay Lohan’s claim against E-Trade for using the name “Lindsay” in a TV ad featuring a baby “milkaholic,” and Army Sgt. Jeffrey Sarver’s claim against the makers of “The Hurt Locker” ostensibly for making an unauthorized depiction of his life.

Neither probably has merit, Mr. Cumbow says.

“The consensus seems to be that the case will be won or lost at the threshold, where Ms. Lohan has to demonstrate that the ad’s use of the name ‘Lindsay’ is likely to invoke her identity. Her claim that Lindsay is a commonly-recognized single-name celebrity-identifier along the lines of Cher, Madonna, and Oprah appears unsupported by evidence that she has billed herself by first name only; nor is Lindsay as unusual or distinctive a name as those others.”

Sgt. Sarver’s claim is even more of a stretch.

“In the Sarver case,” Mr. Cumbow says, “even construing the facts to the greatest possible benefit of the plaintiff, there still seems to be no theory of law under which the plaintiff is entitled to recovery. If publicly known facts about a real person are used in creating a fictional one, the real person has no proprietary interest in those facts, let alone in the fiction that results. Contrary to popular belief, the law does not preclude people from making a film, or writing a book, about (or based on) a real person without obtaining permission.”

I just don’t see either Ms. Lohan or Sgt. Sarver finding the legal hooks they need. The baby in the ad isn’t Ms. Lohan. Nor does it use Ms. Lohan’s “name, characterization, and personality,” as she claims — she hasn’t reached one-name status quite yet. “The Hurt Locker” doesn’t use Sgt. Sarver’s likeness; that isn’t him on the screen. Even if the film is based on his life, where’s the authority that prohibits a filmmaker from doing so?

Infringing use of CAKE BOSS? Plaintiff says so in Western District suit 

On March 11, plaintiff Masters Software, Inc., filed suit in the Western District against Discovery Communications, Inc., The Learning Channel, Inc., and reality TV star Bartolo “Buddy” Valastro for trademark infringement.

Plaintiff owns a trademark registration for CAKEBOSS in Class 9 in connection with “computer software for bakery business management, namely financial recipe, order, time, and contract management tools,” in Class 41 in connection with “providing online instruction in the field of baking cakes via a global computer network,” and in Class 43 in connection with “providing information in the field of culinary arts about baking for baking enthusiasts via a global computer network.” Plaintiff also claims it licenses its mark to a third party in connection with bakeware and cake decorating supplies.

Defendants own or participate in TLC’s popular ”Cake Boss” television show featuring the travails of a creative New Jersey cake bakery.

Plaintiff claims jurisdiction in the Western District is proper because TLC is based in Washington.

Defendants have not yet answered plaintiff’s complaint.

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