Seattle Trademark Lawyer

Today’s post from Dave Donoghue is a reprint of his article, “Protecting Your Brand on Twitter & Stopping Twitter Squatters.” It’s worth checking out.

I love his hook: “[I]f you are an executive or business owner that is reading this and thinking that you do not need to worry about Twitter, at least skim the article and then do a search for your company name on Twitter. You will likely change your mind.”

Dave offers brand owners a good plan of attack: (1) claim your trademark or trade name on Twitter yourself so others can’t misappropriate it; (2) investigate anyone misappropriating your mark or name; (3) get your mark or name back by complaining via Twitter to the misappropriator; and (4) if that doesn’t work, complain to Twitter and, if needed, file suit.

Dave concludes with good advice: “Businesses need to monitor Twitter just like they do other trademark use and media channels. And you must enforce your marks on Twitter just like you do in every other channel of commerce.”

Twitter’s (relatively) new and continues to grow. Brand owners should not be intimidated by it and definitely should not ignore it.

Post injunction: Plaintiffs’ SANDWICH THINS buns (left) and
defendants’ 100% NATURAL THIN BUNS buns 

On Jan. 6, the Ninth Circuit affirmed the Southern District of California’s preliminary injunction enjoining Sara Lee Corporation and other defendants from using the trademarks THINS and SANDWICH THINS in connection with bread. The district court found BBU, Inc., and the other plaintiffs were likely to prevail on the merits of their claim that defendants infringed plaintiffs’ SANDWICH THINS registered trademark for bread.

See plaintiffs’ complaint and Ninth Circuit’s summary opinion (“We conclude that the district court did not abuse its discretion in concluding that appellees met the requirements needed to merit preliminary injunction relief. Accordingly, we affirm the district court’s order granting the preliminary injunction.”).

The case cite is BBU, Inc. v. Sara Lee Corp., 2010 WL 55563, No. 09-56493 (9th Cir. Jan. 6, 2010).

On Jan. 15, Western District Judge Marsha Pechman sentenced a Bellevue, Wash., salon owner to 13 months in prison for injecting customers with fake BOTOX and RESTYLANE wrinkle remover.

The Seattle Times reported that Xin “Faith” He scarred some of her customers for life.

Instead of getting BOTOX and RESTYLANE drugs — which must be administered by a physician — some customers of Ms. He’s Natural Beauty salon received a counterfeit drug smuggled from China that was injected by a licensed manicurist and aesthetician.  

“I am sorry, really sorry, for what I have done,” Ms. He reportedly said in court. “I painfully accept this.”

The Seattle Times reported Ms. He said she was motivated by funding her lavish lifestyle. “I wasted 17 years of hard work for my family … and also damaged the society and people as well,” Ms. He reportedly said.

In October, Ms. He was found guilty of one count of misbranding a drug and two counts of receipt and delivery of an adulterated device.

Trade dress questions between Topics (left) and
Rosetta Stone (right) will be decided in the Eastern District of Virginia

Folks may recall the suit Topics Entertainment Inc. filed last year in the Western District seeking a declaration that its packaging does not infringe any rights owned by competing language software maker Rosetta Stone Ltd. (STL post here.)

In particular, Topics asked the court to find that its “use of the color yellow, black font lettering, small blue icons, and pictures of smiling individuals is proper and not in violation of any rights held by Rosetta,” and that “Rosetta has no trademark or trade dress rights to the color yellow, black lettering, small blue icons, or pictures of smiling individuals.”

Topics’ filing beat Rosetta Stone’s mirror image filing in the Eastern District of Virginia by two hours.

Rosetta Stone moved to dismiss the Western District action.

On Nov. 12, 2009, the Eastern District of Virginia stayed the Virginia action pending the Western District’s ruling on Rosetta Stone’s motion. It found: “[I]t is for the court in the Western District of Washington to decide whether the first-to-file rule applies.”

On Jan. 4, the Western District Judge Robert Lasnik concluded the first-to-file rule should not apply and the case should be litigated in Virginia.

The court found: “Although Topics states that it filed suit only after the parties’ negotiations reached an impasse, the record demonstrates that at the time, the parties were still engaged in active settlement negotiations. In fact, on Monday, October 5, Rosetta Stone’s counsel promised that the company would provide a new settlement proposal by Wednesday, October 7. Rather than waiting for the proposal, Topics filed suit. Its counsel’s e-mail notes the awaited settlement proposal and explains the rush to file suit: ‘We do want to see Rosetta’s proposal …. And, as I advised before, we do not want to give up the rights associated with having filed first.’ The record shows that while the parties were engaged in active settlement negotiations, Topics became concerned when Rosetta Stone would not agree to permit it to file its lawsuit first and rushed to file its lawsuit. In light of these facts, the Court finds that Topics’ lawsuit was anticipatory. Moreover, permitting Topics to gain from its tactic would encourage parties to precipitously abandon settlement negotiations to rush to the courthouse as Topics did.”

The court added: “[W]here, as here, ‘a declaratory judgment action has been triggered by a cease and desist letter, equity militates in favor of allowing the second-filed action to proceed to judgment rather than the first.’ Finally, the fact that the suits were filed only two hours apart supports the Court’s decision to depart from the first-to-file rule. Accordingly, because Topics’ suit was anticipatory, the Court find the first-to-file rule inapplicable and dismisses this action in favor of the Virginia action.”

The case cite is Topics Entertainment Inc. v. Rosetta Stone Ltd., 2010 WL 55900, No. 09-1408 (W.D. Wash. Jan. 4, 2010) (Lasnik, J.).

Not all real estate agents are REALTORS.

That’s the gist of the lawsuit the National Association of Realtors filed in the Western District on Jan. 8 against Champions Real Estate Services Inc. and a number of individuals.

The Association alleges the defendants “continue to represent themselves as REALTORS without authorization” and use the Association’s registered trademarks to describe themselves to the public.

The Association says it asked the defendants to cease and desist from using their marks but the defendants responded by denying the Association’s trademark rights.

The Association says a number of its marks date back to 1916 and are incontestable, including REALTOR and REALTORS.

Defendants have not yet answered the complaint.

The case cite is National Association of Realtors v. Champions Real Estate Services Inc., No. 10-049 (W.D. Wash.).