Seattle Trademark Lawyer

The Patent and Trademark Office has launched an initiative to overhaul its information technology processes. It’s looking for your input.

From the PTO’s Web site: 

“We Want Your Suggestions! The United States Patent and Trademark Office is embarking on an exciting new Information Technology initiative for the Trademark Organization. We’re calling it Trademarks Next Generation. The overall objective of the Trademarks Next Generation effort is often described in terms of the target technology (such a virtualization and cloud computing) but, since the new technology necessitates that the systems be redesigned, it is also a prime opportunity for us to install new functionality and capabilities for you, our users.

“Therefore, we are reaching out to you and asking for your suggestions and ideas. We look forward to suggestions relating to the specific functions that currently exist, the need for a capability that does not yet exist, and/or necessary changes to an overall process. Those suggestions submitted before April 15, 2010 will be most helpful since we can consider them as we design the new system, however, as always, whenever you have a suggestion you should feel free to submit it. We have set up an email box to receive your input: TMideas@uspto.gov.”

Glad the PTO is looking to improve the flow of information.

But speaking of initiatives, what ever became of the PTO’s “Consistency Initiative”?

There’s no middle ground here.

Either the defendants were completely clueless or they just didn’t care. My money’s on the latter.

On Sept. 19, 2009, Montana Thomas and Credit.com, Inc., allegedly registered mastercard.cm. 

On March 10, 2010, Mastercard International, Inc., filed suit against Mr. Thomas and Credit.com in the Western District.

The case is situated here because defendants allegedly registered the domain name through eNom Inc., which is headquartered in Bellevue.

Mastercard alleges half a dozen causes of action, from cybersquatting to dilution.

Defendants have not yet answered Mastercard’s complaint.

Anyone taking bets on whether defendants will default?

The case cite is Mastercard International, Inc. v. Thomas, No. 10-361 (W.D. Wash. 2010).

The contentious false advertising case between bicycle component manufacturers Campagnolo, S.R.L., and Full Speed Ahead, Inc. (previous STL posts here and here), hasn’t gotten any friendlier.

During Full Speed Ahead’s depositions of Campagnolo’s officers, the parties agreed that the transcripts would be designated “Attorney’s Eyes Only” under the protective order the court had entered. At Full Speed Ahead’s deposition two weeks later, Full Speed Ahead asked that the parties re-designate the transcripts as non-confidential.

When agreement wasn’t forthcoming, Full Speed Ahead filed a motion asking the court to remove the “Attorney’s Eyes Only” designations. Campagnolo responded by asking Full Speed Ahead to withdraw its motion because the parties had not conferred. Full Speed Ahead countered by arguing the parties had conferred at Full Speed Ahead’s deposition and that with the parties’ upcoming deadline for filing dispositive motions, it “cannot await [Campagnolo’s] pleasure for a response.”

On March 5, the Western District found the parties’ discussion did not satisfy the “meet and confer” prerequisite, so it denied the motion.

“The Court will not address the underlying dispute before the parties have met in good faith to resolve it,” the court found. “The requirement that the parties negotiate in good faith, like Rule 37’s meet and confer requirement, is not a mere formality. It promotes the speedy and inexpensive resolution of disputes and avoids wasting judicial resources. Here, for example, the parties appear to disagree about the designation of less than a dozen pages of deposition testimony. If the parties sat down to discuss these dozen pages, it is likely the situation could be resolved fairly quickly. Instead, after thirty pages of motion practice, not counting the numerous pages of declarations and exhibits, the underlying dispute is no closer to being resolved than it was nearly six weeks ago.”

The case cite is Campagnolo, S.R.L. v. Full Speed Ahead, Inc., No. 08-1372 (W.D. Wash. Mar. 5, 2010).

Loops LLC’s flexible prison toothbrush featuring “non-shank” design

In 2008, Ferndale’s Loops LLC filed suit in the Western District against Seattle’s Phoenix Trading, Inc., d/b/a Amercare Products, Inc., for trademark and trade dress infringement, among other things.

Both parties sell toothbrushes to prisons. Loops alleges that Amercare has sold toothbrushes under the LOOPS FLEXBRUSH trademark, which is identical to Loops’ registered trademark. It also alleges that Amercare’s toothbrushes are identical to Loops’ registered product design. (Loops’ “non-shank” toothbrush design can bend in half or twist into a spiral without breaking, so it can’t be used as a weapon. Seems a bit functional to me, but I digress.)

Loops moved for an order of contempt, alleging that Amercare has withheld or deleted relevant documents that Loops had requested in discovery. In particular, Loops requested documents related to the manufacture of Amercare’s toothbrushes in China and their importation into the States. Early in the litigation, Judge Ricardo Martinez granted a motion to compel, but Amercare’s documents were not forthcoming. In depositions, it became clear that Amercare had not produced all of the requested documents.

Today, the court found: “Defendants had four or five invoices from Kai Yuen / Jiangsu Light within their possession or control during the pendency of this litigation. They only produced two of them. Defendants were also in control of purchase orders for flexible handle toothbrushes sent from Amercare to H&L Industrial, and invoices from H&L to Amercare, which were not produced. Additionally, Defendants were in control of invoices detailing freight charges for transportation of flexible toothbrushes from factories in China to Chinese ports as well as wire transfers from Amercare to H&L Industrial, and these have not been produced.”

The court added: “Defendants are culpable in either withholding these documents or negligently destroying or losing them after having a duty to preserve them. The Court further finds that these materials were relevant to prove the extent of Defendants’ damages. Finally, the Court finds that some number of e-mails between Amercare and H&L existed during the pendency of this lawsuit which were not produced and have since been negligently deleted. These e-mails were likely relevant to damages and liability. Defendants’ contention that no documents have been destroyed and no more responsible documents exist is directly contradicted by Ms. Hemming’s deposition testimony, which indicates that relevant documents do or did exist.”

To correct these discovery abuses, the court concluded it would give the jury an adverse inference instruction that the evidence Amercare made unavailable was unfavorable to Amercare.

That could really hurt Amercare at trial — as well it should. A party’s not playing fair in discovery threatens to undermine our system for deciding who’s right and who’s wrong based on the merits. No one should be disadvantaged by playing by the rules.

The case cite is Loops LLC v. Phoenix Trading, Inc., No. 08-1064 (W.D. Wash. March 3, 2010). 

Plaintiff Planet Coffee Roasters’ (left) and defendant Planet Coffee’s marks

Yes, it’s a trademark dispute involving coffee.

But no, it’s not being fought out in Seattle. This one’s in southern California.

Last year, Planet Coffee Roasters, Inc., sued Hung Dam, d/b/a Planet Coffee, for trademark infringement.

Planet Coffee Roasters sells coffee beans to wholesale customers under the mark PLANET COFFEE ROASTERS. Mr. Dam’s store sells beans and coffee by the cup to retail customers under the mark PLANET COFFEE. 

As the Los Angeles IP Trademark Law Blog predicted, Planet Coffee Roasters has had a hard time of it.

On Feb. 18, the Central District of California denied Planet Coffee Roasters’ motion for preliminary injunction against Mr. Dam, finding the plaintiff was not likely to succeed on the merits.

Favoring Planet Coffee Roasters, the court found the marks and goods/services are similar, and consumers are not likely to exercise much care in purchasing the parties’ relatively inexpensive products. 

Favoring Mr. Dam, however, the court found PLANET COFFEE ROASTERS is fairly weak and the parties use different marketing channels.

The court also wasn’t impressed with Planet Coffee Roasters’ evidence of irreparable harm.

“Plaintiff has failed to show that it has suffered any injury at all, let alone injury that is ‘great,’” the court wrote. “Plaintiff simply asserts that allowing Defendant to ‘use[ ] a confusingly identical name and sell[ ] inferior coffee products will damage, if not destroy entirely, Planet Coffee’s reputation and goodwill.’ However, it offers no evidentiary support at all for this claim. Even assuming that Plaintiff’s business has suffered some monetary loss, Plaintiff has made no showing that money damages will be inadequate to compensate for its losses.”

Nor was the court impressed with Planet Coffee Roasters’ proof that the balance of hardships tips sharply in its favor: “[A]side from unsubstantiated claims made in declarations submitted by two of its employees, Plaintiff has offered no factual evidence in support of its claim that it has been harmed by Defendant’s use of the mark ‘Planet Coffee.’”

The case cite is Planet Coffee Roasters, Inc. v. Hung Dam, 2010 WL 625343, No. 09-00571 (C.D.Cal. Feb. 18, 2010).