Seattle Trademark Lawyer

Former Led Zeppelin bassist John Paul Jones recently complained to The Wall Street Journal that it’s getting harder for new bands to find cool names that haven’t already been taken.

“Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page,” he said.

Kudos to the WSJ for exploring this rich area, which unfortunately is the first experience some have with trademark law.

Its story, “From ABBA to ZZ Top, All the Good Band Names Are Taken,” is laden with tales of trademark woe.

For example: “In 1992, a newly formed band from Scotland called Captain America was endorsed and invited on tour by Nirvana front man Kurt Cobain, who was at the peak of his fame. After a bidding war, Captain America was signed by Atlantic Records, just as Marvel, publisher of the Captain America comic book, sent the band a cease-and-desist [letter]. With its first U.S. record already in the pipeline, the group rechristened itself Eugenius, a reference to leader Eugene Kelly.”

“‘Overnight their career deflated,’” a talent scout recalled.

This underscores the need to clear a name before investing in it — though that’s easier said than done.

The article says Rovi Corp.’s giant database of musician names is adding 6,521 new names per month.

In December 2000, Office Depot, Inc., obtained a judgment against John Zuccarini under the Anticybersquatting Consumer Protection Act (ACPA) arising out of Mr. Zuccarini’s registration of offic-depot.com as a domain name. Office Depot was unable to collect on its judgment and eventually assigned it to DS Holdings, LLC.

DS Holdings sought to levy upon 190 “.com” domain names that Mr. Zuccarini had registered. To this end, it registered Office Depot’s judgment in the Northern District of California, where Verisign, Inc., the registry for “.com” and “.net” top-level domain names, is located. After some procedural jockeying, it moved for the appointment of a receiver under California law to obtain and sell the domain names and use the proceeds to satisfy the judgment.

The Northern District granted the motion. Mr. Zuccarini appealed, arguing the district court lacked personal jurisdiction to enter the order.

On Feb. 26, the Ninth Circuit affirmed, finding that for purposes of establishing quasi in rem jurisdiction, domain names are located both where the registry and the relevant registrar are located. It took its cue from the ACPA, which it deemed to be persuasive authority.

The court found: “Under the ACPA, a trademark owner in a civil cybersquatting action can proceed in personam against the cybersquatter. If there is no in personam jurisdiction in any judicial district of the United States, the owner may proceed in rem against the allegedly infringing domain name. The ACPA provides that in rem jurisdiction over these domain names shall be ‘in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located….’ The ACPA also provides for the legal situs of the domain name once a lawsuit has been filed….”

Given the ACPA’s persuasive authority and the practicalities involved in bringing suit to execute judgments against owners of domain names, the court found “under California law that domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction. Although the question is not directly before us, we add that we see no reason why for that purpose domain names are not also located where the relevant registrar is located.”

This led the court to affirm the district court’s order appointing the receiver.

The case cite is Office Depot, Inc. v. Zuccarini, __ F.3d __, 2010 WL 669263, No. 07-16788 (9th Cir. Feb. 26, 2010).

Plaintiff K.S. and her guardian ad litem sued Ambassador Programs, Inc., and other defendants in the Eastern District of Washington.

Plaintiffs alleged that defendants made false representations about the People to People Student Ambassador Program, including that defendants misrepresented to plaintiffs that they had selected K.S. to be a student ambassador in Australia during the summer of 2006.

In the litigation, defendants produced a contract that defined the rights between the defendants pursuant to a temporary agreement between counsel pending a final agreement or order from the court.

Thereafter, plaintiffs sought leave to publicly file the contract in connection with a dispositive motion. Defendants sought to require plaintiffs to file the contract under seal.

This may be of interest to trademark practitioners because the contract in part governed one defendant’s use of trademarks owned by another defendant. This, the defendants argued, constituted a trade secret and, therefore, should not be publicly disclosed.

The court disagreed. Adopting the magistrate judge’s recommendation, the Eastern District of Washington found that the defendant already had disclosed the contracts’ subject matter in an annual report. Since the report was public, the contracts’ treatment of the trademarks was not a trade secret.

“Again, at p. 5 of the 2008 Ambassadors Annual Report,” the court found, “the Defendants clearly disclose to the public that Ambassador has registered or applied for a variety of service and trademarks. The Annual Report states, in pertinent part, under the heading of Service and Trademarks as follows: ‘In addition, we have the right, subject to certain exceptions, to use People to People’s name, service mark and logo for use in our marketing. We believe that the strength of our service and trademarks is valuable to our business and intend to continue to protect and promote our marks as appropriate. We believe that our business is not overly dependent upon any one trademark or service mark.’

“Thus, the Defendants clearly have made public the information that they have a relationship for Ambassador to use the trademark and logo of PTPI and that Ambassador is not overly dependent on any one of the trademarks. The consideration paid to use same, if any, is not disclosed in either the Annual Report or the Agreements themselves.”

Makes sense that publicly-disclosed facts cannot be protected as a trade secret.

For that reason, I question how one’s trademark registrations or applications could ever be protectable as a trade secret. One’s licensing agreements and marketing strategies are one thing, but the ownership of trademark applications and registrations are of public record. 

The case cite is K.S. ex rel. Isserlis v. Ambassador Programs, Inc.  2010 WL 605274, No. 08-243 (E.D. Wash. Feb. 18, 2010).

Intelius’ (top) and DCAEV’s DATECHECK trademarks  

Nevada’s DCAEV, Inc., has sued Bellevue’s Intelius, Inc., in the District of Nevada for trademark infringement.

DCAEV owns www.Date-Check.com, a Web site that serves as a “venue and directory for its users to locate and screen various adult-oriented companion and escort services.”

Intelius sells online background checks.

According to DCAEV’s Feb. 19 complaint, both parties use DATE CHECK in connection with their respective services.

DCAEV has a registered trademark for DATE CHECK for “Promoting the goods and services of others by providing hypertext links to the web sites of others; Providing a web site featuring product ratings of the consumer services of others in the field of escorts.”

DCAEV claims it began using its trademark in 2002. It says Intelius began using its mark in 2009, when the company released a DATE CHECK application for the iPhone.

Intelius has not yet answered DCAEV’s complaint.

TechFlash story here.

The header says it all.

The Cascade Manufacturing Sales, Inc. v. Providnet Co. Trust trademark dispute between competing sellers of worm composting products has been tried to conclusion.

As folks may recall, this case involved Cascade’s complaint that Providnet’s use of GUSANITO WORM FACTORY infringed Cascade’s WORM FACTORY trademark.

Western District Judge Ronald Leighton previously found that WORM FACTORY was not generic; that Cascade was likely to prevail on the merits and ordered a preliminary injunction; and that defendants were in contempt of that order (STL posts here and here.)

On Feb. 18, following a bench trial, Judge Leighton made the preliminary injunction permanent. He did not award damages. He has asked Cascade to submit a motion for attorney’s fees.

The preliminary — now permanent — injunction enjoins Providnet from using phrases that are confusingly similar to WORM FACTORY, including FACTORY OF WORMS but not WORM WRANGLER.

The case cite is Cascade Manufacturing Sales, Inc. v. Providnet Co. Trust, No. 08-5433 (W.D. Wash. Feb. 18, 2010).