Seattle Trademark Lawyer

Ferndale, Wash., student Jessica Hiestand isn’t using the “O” word
in promoting her winter sports figures to Olympics-bound travelers 

Ferndale, Wash., is the last I-5 exit heading north to Canada. With all the Olympic traffic she expects to pass through her home town, high school junior Jessica Hiestand thought she could raise a little money for her school trip to Costa Rica.

So she set out to make her winter sports version of Inunnguaq, human-shaped versions of rock landmarks traditionally made by native peoples north of the border. Her creations bring to mind “Ilanaaq the Inunnguaq,” the Vancouver Olympics’ logo (depicted left).

Ms. Hiestand calls her collection “CanMans,” which includes a “CanaSkier” and a “CanaShredder” snowboarder (depicted top).

With a little help from her father — who happens to be a lawyer who practices First Amendment and intellectual property law — she has started marketing her creations without (so far) running afoul of VANOC, the Vancouver Olympic Organizing Committee.

“It’s crazy,” she says. “They say they own not just things like the Olympic ring logo and the Olympic name — fine — but also words like ‘winter,’ ‘gold,’ ‘silver,’ ‘bronze,’ ‘sponsor,’ ‘Vancouver,’ ‘Whistler,’ ’21st,’ ‘tenth,’ ‘medals,’ ‘games’ and ‘2010.’ I mean, how can anybody say they own the word ‘2010’?

Crazy or not, Ms. Hiestand’s Web site tip-toes around the massive territory the Canadian Olympic organizer purports to have appropriated for itself.

“I hope your CanaMan will serve as a lasting reminder of your trip to Canada at the beginning of year Twenty-Ten, where you may have witnessed men and women from around the world competing in and around lower British Columbia in a quadrennial series of seasonally-inspired sporting events and heart-stirring pageantry,” her site says.

If she doesn’t grow up to be an artist or entrepreneur,  I could see her as a trademark lawyer.

See Ms. Hiestand’s enterprising press release here.

In Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC — a trademark case involving companies with the same name — the Northern District of California found that northern California is big enough for both parties.

In reaching this conclusion, the court found:

• “Sand Hill” in the Silicon Valley is primarily geographically descriptive;
• As a descriptive trademark, secondary meaning is required to give plaintiff trademark rights;
• Even if Section 2(f) applied to an unregistered trademark, it didn’t entitle plaintiff to a presumption of secondary meaning because defendant’s existence meant that plaintiff’s use was not “substantially exclusive” for more than five years; and
• Plaintiff’s advertising and marketing efforts alone did not establish secondary meaning.

Therefore, the court found plaintiff did not have any trademark rights to enforce against defendant.

For good measure, the court also found no likelihood of confusion — independent grounds to grant defendant’s motion for summary judgment.

“All but one of the Sleekcraft factors strongly favor Defendant, and none favor Plaintiff,” the court said. “Although Plaintiff and Defendant share the same mark, they offer completely distinct services to distinct consumers in separate markets. Plaintiff’s assertion that the parties overlap in the area of real estate services paints with too broad a brush. The record unequivocally establishes that Plaintiff and Defendant’s respective businesses share little, if anything, in common. The lack of overlap is underscored by the paucity of evidence of actual confusion, which consists of nothing more than a few misplaced calls and a misdelivered package over the course of the last ten years. Viewing the record in a light most favorable to Plaintiff, the Court finds that no reasonable jury could find that the parties’ common use of the ‘Sand Hill Mark’ is sufficient to create a likelihood of confusion.”

The case cite is Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, __ F.Supp.2d __, 2010 WL 308728, No. 08-5016 (N.D. Calif. Jan. 26, 2010).

Ninth Circuit affirms injunction against Kira Plastinina
in light of plaintiff’s KIRRA registered trademarks

Clothier Pacific Sunwear of California, Inc., owns the registered KIRRA family of trademarks.

Competing clothier Kira Plastinina Style, Ltd., owns the KIRA PLASTININA trademark.

In 2008, Pacific Sunwear sued Kira Plastinina for trademark infringement.

Last year, the Central District of California found that Pacific Sunwear was likely to succeed on the merits of its claim and granted a preliminary injunction enjoining Kira Plastinina from using KIRA or KIRA PLASTININA as a trademark or trade name. However, the court clarified that “Defendants may use the phrase ‘Kira Plastinina’ (but not the single word ‘Kira’) in written displays, advertisements, or Internet pages to identify the actual designer of Defendants’ goods, as opposed to identification of the company, business, stores, goods, and services offered by Defendants.”

Kira Plastinina appealed, arguing that “Kira Plastinina” is the name of one of its designers and that the scope of the injunction was overly broad.

On Feb. 1, the Ninth Circuit affirmed.

It found “the district court correctly identified the legal standard for likelihood of confusion of a trademark, its findings of fact were not clearly erroneous, and the district court did not clearly err in finding a likelihood of confusion between the two trademarks. We therefore conclude that the district court did not abuse its discretion in holding that Pac Sun was likely to succeed on the merits of its trademark infringement claim.

“With respect to the scope of the district court’s preliminary injunction, the court did not abuse its discretion in restricting certain uses of ‘Kira Plastinina.’ Despite these restrictions, the injunction properly reflects a consideration of the ‘reluctance to preclude an individual’s business use of his name.’ Furthermore, enjoining use of ‘Kira Plastinina’ in media advertisements, including audio and video, was not an injunction against nontrademark use, and the district court did not abuse its discretion in enjoining such advertising. Finally, the preliminary injunction is sufficiently clear to protect Pac Sun’s interests and to provide KP Style with adequate notice of its provisions.”

The case cite is Pacific Sunwear of California, Inc. v. Kira Plastinina Style, Ltd., 2010 WL 358764, No. 09-55699 (9th Cir. Feb. 1, 2010).

The Experience Hendrix, LLC v. Electric Hendrix, LLC “Hendrix Electric” vodka case is over.

Mostly.

Plaintiffs now seek to collect their judgment against defendants, including Craig Dieffenbach.

Plaintiffs recently complained that Mr. Dieffenbach was not forthcoming during supplemental proceedings. Indeed, they moved for an order of contempt, arguing that defendants’ “evasive and incomplete responses” to plaintiffs’ discovery efforts have “frustrated” their ability to determine if defendants have concealed or fraudulently conveyed assets that could be used to satisfy the judgment.

Today, Western District Judge Thomas Zilly denied the motion without prejudice.

The court found: “Plaintiffs make no showing that Mr. Dieffenbach failed to comply with the Court’s Order dated October 28, 2009, which simply required responses within twenty days, or with any other order. Moreover, plaintiffs offer no evidence to support their assertion that Mr. Dieffenbach’s answers were untruthful. Although the tenor of the deposition was acrimonious, Mr. Dieffenbach’s animosity alone does not establish that he was being less than candid when he indicated that he ‘own[s] nothing,’ has ‘no assets,’ and ‘owe[s] money to absolutely everybody.’ In their motion for contempt, plaintiffs do not request monetary sanctions, but rather seek an order from the Court requiring Mr. Dieffenbach inter alia to sign stipulations to release bank records and to locate and produce documents under the control of other people, namely current and/or former attorneys, bookkeepers, accountants, and employees. Plaintiffs fail to explain, however, why they cannot obtain the documents they seek by serving these entities or individuals with appropriate subpoenas or discovery requests.”

The case cite is Experience Hendrix, LLC v. Electric Hendrix, LLC, No. 07-338 (W.D. Wash. Feb. 3, 2010).

A Kent, Wash. family was charged Jan. 27 in King County Superior Court after being arrested on suspicion of selling counterfeit CDs and DVDs, the Seattle PI reported today.

Renton police alleged that married couple Jesus Perez-Vargas and Leticia Vargas-Garcia and their 18-year-old son were selling hundreds of CDs and DVDs that appeared to be pirated.

The PI said the defendants, who sold the goods out of a convenience store, weren’t trying too hard to pass off their product as genuine.

“One, a copy of the Liam Neeson thriller ‘Taken,’ carried an MA 15+ rating not used in the United States,” the article said. “A copy of a film identified only as ‘Rambo’ in court documents was housed in a hard plastic CD case.”

The defendants reportedly told the police they bought the CDs and DVDs from a traveling salesman who sold the goods out of his van. They reportedly paid $2 or $3 per disk and sold them for $4 to $7 each.

The defendants were charged with violating the Washington State prohibition against the “failure to disclose origin,” a Class B felony.

I wasn’t familiar with that statute, so I looked it up. It appears to be RCW 19.25.040(1).

Under that statute, “A person is guilty of failure to disclose the origin of a recording when, for commercial advantage or private financial gain, the person knowingly advertises, or offers for sale, resale, or rent, or sells or resells, or rents, leases, or lends, or possesses for any of these purposes, any recording which does not contain the true name and address of the manufacturer in a prominent place on the cover, jacket, or label of the recording.”

The statute defines “recording” as a “tangible medium on which sounds, images, or both are recorded or otherwise stored, including an original phonograph record, disc, tape, audio or video cassette, wire, film, or other medium now existing or developed later on which sounds, images, or both are or can be recorded or otherwise stored or a copy or reproduction that duplicates in whole or in part the original.”