Seattle Trademark Lawyer

There’s only one “Seattle Home Show.” And it’s run by Seattle Home Show Inc.

That’s what plaintiff Seattle Home Show Inc. and defendant HSD, LLC, agreed in a Stipulation and Agreed Order of Dismissal filed in the Western District on Nov. 18.

Plaintiff is in the business of operating a home building and remodeling trade show under the SEATTLE HOME SHOW registered trademark.

Plaintiff claimed that defendant began promoting a competing trade show under the SEATTLE HOMESHOW DAILY and HOMESHOW SEATTLE DAILY trademarks. Plaintiff also claimed defendant ran a radio ad stating, “If you are planning to remodel, don’t wait for the Home Show, come to the Seattle Home Show Daily.”

The parties’ agreement, which Judge Ricardo Martinez signed, terminates the trademark infringement suit plaintiff brought in September.

The parties’ agreement states that plaintiff “owns and possesses the exclusive right to use and register the SEATTLE HOME SHOW” trademark. It provides that defendant will not:

• “[U]se, display or seek registration of any trademark, service mark, trade name, sponsored link, key word or ad word consisting of or incorporating the prohibited terms ‘SEATTLE HOME SHOW’ or ‘HOME SHOW SEATTLE,’” or variations, including those that incorporate the term DAILY (such as HOMESHOW DAILY SEATTLE); or
• “[U]se, display or seek registration of any trademark, service mark, or trade name comprising the terms ‘SEATTLE’ and ‘HOME’ or ‘SEATTLE’ and ‘HOME SHOW,’” though defendant will not be prohibited from “providing a geographic description of its stores in its advertising materials, such as, ‘Homeshow Daily, with two convenient locations in Seattle and Federal Way….’”

The case cite is Seattle Home Show Inc. v. HSD, LLC, No. 09-1359 (W.D. Wash.).

In 2007, the Western District of Washington found that counterclaim plaintiff Vericheck, Inc., had proven its cybersquatting case against counterclaim defendant David Lahoti. (STL post on the summary judgment order here; post on the bench trial decision here.)

Mr. Lahoti appealed. On Nov. 16, the Ninth Circuit vacated and remanded the district court’s finding that counterclaim plaintiff’s VERICHECK mark is distinctive. The Ninth Circuit separately affirmed the district court’s finding that counterclaim defendant had registered vericheck.com in bad faith.

On the distinctiveness issue, the court found:

“The district court erred to the extent it required that the Disputed Mark describe all of Vericheck’s services to qualify as ‘descriptive.’ The district court reasoned that the Disputed Mark does not ‘immediately call to mind the broad array of electronic transaction processing services that Vericheck provides.’ However, a mark does not have to meet this requirement to be found descriptive. The inquiry is ‘whether, when the mark is seen on the goods or services, it immediately conveys information about their nature.’

“The district court further erred when it reasoned that the Disputed Mark could have described services that are unrelated to those offered by Vericheck, such as baggage checking and pre-employment background verification. The mark must be evaluated as if it were ‘seen on the goods or services,’ which means the mark must be examined in the industry context rather than in the abstract.

“The district court also misapplied the law by asserting that ‘Lahoti improperly breaks down the mark into two component parts, ‘veri’ and ‘check,’ in order to argue that consumers will immediately presume that Vericheck provides ‘check verification’ services.’ Rather, courts may analyze all components of the mark in determining whether those parts, taken together, merely describe the goods or services offered.

In analyzing the compound ‘VeriCheck’ mark, the district court may therefore have broken the mark into ‘veri-’ and ‘check,’ to ‘separately view the component parts as a preliminary step on the way to an ultimate determination of probable customer reaction to the composite as a whole.’ Even though the district court ultimately analyzed the Disputed Mark’s component parts individually, we cannot be sure that the district court, having earlier misstated the law, properly accounted for those individual components.

“We conclude that the district court’s decision that the ‘VeriCheck’ mark was a distinctive, legally protectable mark under the ACPA and federal trademark law was based in part on reasoning contrary to federal trademark law and based in part on reasoning that could support the district court’s conclusion. Accordingly, because the district court did not rely exclusively on the proper legal standard, we vacate the judgment to the extent it determined the Disputed Mark was distinctive. We remand to permit the district court to determine whether the Mark is distinctive or descriptive taking into account the principles that we have outlined here.”

The case cite is Lahoti v. Vericheck, __ F.3d. __, 2009 WL 3807105, No. 08-35001 (9th Cir. Nov. 16, 2009).

Fans can get their fix at a forthcoming Twilight-themed restaurant,
though it may not be named Volterra. 

The owners of a forthcoming Twilight-themed restaurant are thinking twice about their name.

Tim and Annette Root own Dazzled by Twilight, a Forks, Wash., gift store centered on the locally-set vampire book series that’s popular with today’s youth. They plan to expand on the theme with a new restaurant, which they initially named Volterra. (For those not in the know, including me, Volterra is where Twilight’s vampire aristocracy hangs out.)

The plans continue, but the name may not. Turns out, an Italian restaurant with the same name is located in Seattle. (Volterra also is a city in Italy.)

Volterra-Seattle has been around since May 2005. Its owner, Volterra, LLC, obtained a federal registration for VOLTERRA and Design for restaurant and bar services and spices in 2006.

The letter the Seattle restaurant’s lawyer sent the Roots have led them to consider a new name.

“We are very adamant about the restaurant and we will open it,” Mr. Root told the Peninsula Daily News.

“But we will see what we need to do about the naming situation.”

News story here.

As folks may remember, Adidas America, Inc., sued The Topline Corp. in the Western District for trademark infringement. (STL post here.)

Looks like the parties have settled.

On Nov. 13, they filed a proposed Permanent Injunction on Consent and Stipulated Dismissal, which will dismiss the parties’ claims and counterclaims against each other. It also defines the two-, three-, and four-stripe designs that Topline will be permanently enjoined from using (such as those depicted above), including:

• “[T]hree straight stripes of the same type (irrespective of color), all of which have fifteen degrees or less between any adjacent stripes on a men’s size 9 shoe (or of a corresponding degree accounting for the gradation of other sizes), the stripes being formed by contrasting colors, lines of stitching, fabric, perforations, raised or depressed portions, serrated or non-serrated, of substantially equal width (that is, within 20%) and substantially equal and uniform spacing …, extending across the shoe upper….;
• “[T]wo straight stripes of the same type (irrespective of color), with fifteen degrees or less between the stripes on a men’s size 9 shoe (or of a corresponding degree accounting for the gradation of other sizes)….; 
• “[F]our straight stripes of the same type (irrespective of color), all of which have fifteen degrees or less between any adjacent stripes on a men’s size 9 shoe (or of a corresponding degree accounting for the gradation of other sizes)….;
• “[T]wo, three or four stripes of the same type (irrespective of color) formed as described … above, serrated or non-serrated, of equal width and spacing, that are angled forward and extending across the mid-foot portion of the shoe upper toward the sole, which are slightly curved, and which do not include one or more stripes or other linear marking extending across the stripes that are more prominent than the two, three or four stripes….”

The injunction, of course, won’t take effect unless and until it’s signed by the court.

The case cite is Adidas America, Inc. v. Topline Corp., No. 09-646 (W.D. Wash.).

Plaintiffs claim defendant licenses this and other photos containing
tree designs that are confusingly similar to their own.

On Nov. 9, Car-Freshner Corp. and Julius Samann Ltd. (JSL) filed suit in the Northern District of New York against Seattle’s Getty Images, Inc., for trademark infringement. Car-Freshner claims it licenses various trademarks from JSL, including a number of registered tree designs in connection with “absorbent body impregnated with a perfumed air deodorant,” “cleaning products,” and “air fresheners.”

Plaintiffs claim they learned that “Defendant was promoting and licensing digital media for commercial use through the Getty Images Web Site that included one or more tree designs which are identical to, virtually indistinguishable from and/or confusingly similar to Plaintiffs’ distinctive Tree design Marks.” This, plaintiffs claim, constitutes trademark infringement, unfair competition, and dilution.

Getty Images has not yet answered plaintiffs’ complaint.

The case cite is Car-Freshner Corp. v. Getty Images, Inc., No. 09-1252 (N.D.N.Y.).