Seattle Trademark Lawyer

The Western District clerk’s office is starting to notify filers of trademark-related complaints that their filings are deficient without the additional filing of Form AO120 — the notice to the Patent and Trademark Office of a new trademark lawsuit.

The deficiency notice states:

“NOTICE to Filer of Deficiency: Pursuant to our local rules, Civil Rule 3(a), all civil action complaints in which jurisdiction is invoked in whole or in part under 28 U.S.C. § 1338 (regarding patents, trademarks and copyrights) shall be accompanied by the required notice to the Patent and Trademark Office (Form AO120) or the required notice of the Register of Copyrights (Form AO121). Please complete the appropriate form and email it back to the new cases box at newcases.seattle@wawd.uscourts.gov. Please include in the subject line the name and number of the case and the name of the document attached. This form will then be posted to the case docket and a copy sent to the appropriate entity.”

Fortunately, deficient filings aren’t (yet) being refused, but to avoid that risk, local practitioners should comply with the rule in the first instance. It’s now being strictly enforced.

In Quiksilver, Inc. v. Kymsta Corp., a Central District of California jury initially found the defendant clothing maker was liable for infringing plaintiff’s ROXY trademark but did not find it liable for false designation of origin.

Since the tests are essentially the same, the court resubmitted the special verdict form with supplemental instructions. The jury then found defendant Kymsta liable on both counts, and the court imposed a permanent injunction.

Kymsta appealed. On Dec. 30, the Ninth Circuit affirmed, finding the district court acted within the scope of its discretion. At issue were the district court’s instructions as to the meaning of “ordinary purchasers” and the relevance of past harm to Quicksliver’s trademark infringement and false designation of origin claims.

The Ninth Circuit found: “In this case, the district court properly resubmitted the verdict due to a potential inconsistency in the jury’s responses — the jury found a likelihood of confusion for trademark infringement, but not for false designation of origin, despite a marked similarity between the questions. As Quiksilver argues, the inconsistency may have been due to jury confusion as to the meaning of ‘ordinary purchasers.’ Accordingly, the district court acted within its discretion in clarifying ‘ordinary purchasers’ on resubmission.

“In addition, the district court properly determined that past harm was irrelevant to the claims. See, e.g., Ninth Circuit Model Civil Jury Instructions 15.5 (2008) (excluding harm as an element of 15 U.S.C. § 1114(1) trademark infringement and § 1125(a)(1) false designation of origin claims). The district court, thus, acted within its discretion in instructing the jury to ignore the harm questions on redeliberation.”

The case cite is Quiksilver, Inc. v. Kymsta Corp., 2009 WL 5184066, No. 02-05497 (9th Cir. Dec. 30, 2009).

Purity claim constituted false advertising, the Ninth Circuit affirms

POM Wonderful LLC sued competing pomegranate fruit juice seller Purely Juice, Inc., and its president for false advertising under the Lanham Act and California law for marketing its juice as “100%” pomegranate juice with “no added sugar,” when defendants allegedly knew or should have known the juice was adulterated.

Last year, Central District of California Judge Christina Snyder agreed with POM and awarded it $1.2 million in damages, disgorgement of $300k in profits, and $622k in attorney’s fees. Defendants appealed.

On Dec. 28, the Ninth Circuit affirmed, finding intent is not an element of a Lanham Act claim and that the district court properly found defendants had the knowledge of falsity required under California law. In short, it found defendants could not blindly rely on its juice suppliers’ representations that the product was pure when it had evidence to the contrary.

“Purely Juice knew a batch of its product was not 100% pure, without sugar added, from results of the Silliker testing received on February 26, 2007,” the Ninth Circuit found. “Further testing revealed that Purely Juice produced additional batches of product that was not 100% pure even after the February 26 report, and Purely Juice left that product on the shelves. This shows Purely Juice sold product it knew, or reasonably should have known, was falsely advertised.

“Despite knowing certain industry brokers had ‘credibility issues’ and there were ‘suitability questions’ about some concentrate, Purely Juice did little to vet its broker or suppliers. Purely Juice understood (1) a limited global supply of pomegranates led some concentrate juice manufacturers to blend pomegranate with other juices; and (2) difficult harvesting conditions and lack of refrigeration at processing plants led concentrate manufacturers to add sugar. Nevertheless, [Purely Juice President Paul] Hachigian testified he selected Perma Pom, Purely Juice’s broker, by simply ‘talk[ing] to them and ask[ing] them how long they had been doing pomegranate juice concentrate and so forth.’ The Perma Pom representative testified suppliers are not subject to any verification process; Perma Pom ‘take[s] the word of the supplier’ and relies on certificates of quality. That Purely Juice instructed its broker to immediately switch suppliers does not undermine the district court’s conclusion, because Purely Juice’s practice was to blindly rely on the underlying representations.”

See 43(B)log’s analysis of the district court’s findings here.

The case cite is POM Wonderful LLC v. Purely Juice, Inc., 2009 WL 5184233, No. 08-56375 (9th Cir. Dec. 28, 2009).

To paraphrase plaintiff: “It looks like a Texaco station.”

Defendants Misko Maynard and Grapeview Country Store, LLC, allegedly sell groceries and gas in what used to be a Texaco station.

Chevron U.S.A., Inc., owner of the TEXACO brand, filed suit in the Western District on Dec. 18 arguing that defendants’ association with its trademark is likely to confuse consumers and, therefore, constitutes trademark infringement and unfair competition.

I don’t think there’s anything wrong with plaintiff’s claims. It’s just too bad the parties have had to go to federal court over a problem a can of paint would seem to solve.

The case cite is Chevron U.S.A., Inc. v. Maynard, No. 09-05779 (W.D. Wash.).

(Photo from plaintiff’s complaint.)

In his second go-round on appeal, pro se plaintiff Robert Guichard didn’t fare any better against defendant Universal City Studios LLLP than he did in his first.

Mr. Guichard is an independent movie producer. Universal is a big Hollywood studio.

Mr. Guichard claimed he gained exclusive rights to the word “whisper” in connection with movies through the launch of his WHISPER OF THE BLUE Web site that publicizes his unproduced screenplay of the same name and information about his proposed film. He sought to enjoin Universal from using “Whisper” as the title of its film, which had been in production since Nov. 2004. (It’s now on DVD.)

In Feb. 2008, the Northern District of California dismissed Mr. Guichard’s trademark claims on summary judgment, finding his use of the alleged trademark did not satisfy the “use in commerce” requirement needed to establish priority of use.

The court found: “Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

On Dec. 14, without much comment, the Ninth Circuit affirmed. (“The district court properly granted summary judgment in favor of Universal on Guichard’s Lanham Act claim.”)

In Dec. 2007, the Ninth Circuit similarly affirmed the district court’s denial of Mr. Guichard’s motion for preliminary injunction. (STL post here.)

The case cite is Guichard v. Universal City Studios LLLP, 2009 WL 4884582, No. 08-15581 (9th Cir. Dec. 14, 2009).