Seattle Trademark Lawyer

Plaintiff One True Vine, LLC, sells wine under the LAYER CAKE trademark. Defendant The Wine Group LLC under the CUPCAKE trademark. OTV sued Wine Group in the Northern District of California for trademark infringement.

Some background: OTV filed an intent-to-use application for the LAYER CAKE mark with the PTO in March 2006. Its application stated OTV intended to use the mark in connection with “white wine, red wine.” The PTO published the mark for opposition in August 2006. The opposition period closed, the application was allowed, OTV submitted its statement of use and supporting declaration, and the PTO issued a registration.

The wrinkle is OTV admitted that it does not sell, and has never sold, white wines under its LAYER CAKE mark. OTV has only sold red wines under that mark. Plaintiff contends it did not realize that the statement of use included “white wine, red wine” and not merely “wine.”

In October 2007, Wine Group filed an application to register its CUPCAKE mark for use in connection with “wine.” The USPTO published the mark for opposition in February 2008. In May 2008, during the opposition period, OTV sent Wine Group a letter demanding that Wine Group abandon its application to register the CUPCAKE mark and cease using the CUPCAKE mark on its wines. When Wine Group made no move to do so, OTV opposed Wine Group’s application. After determining that OTV never sold white wine under the LAYER CAKE mark, Wine Group moved to amend its answer to OTV’s notice of opposition before the Trademark Trial and Appeal Board to include a counterclaim for cancellation of OTV’s registration based on fraud.

OTV filed its lawsuit in March 2009. In April 2009, the TTAB suspended proceedings pending final disposition of this action. Wine Group answered the complaint and counterclaimed for cancellation based on fraud. In May 2009, Wine Group filed a motion for summary judgment on its counterclaim, which the court denied.

OTV then moved to amend its registration to delete “white wine” from the listed goods. This amendment would modify the listing of goods on which the LAYER CAKE mark is used in commerce to read “red wine” instead of “white wine, red wine.” OTV argued it has good cause to amend the register because the register is a public document that provides notice to the public and should therefore be made accurate. Plaintiff further argued that such an amendment would alter only the list of products used in connection with the mark, not the mark itself.

On Nov. 4, the court granted OTV’s motion.

“Defendant [Wine Group] does not argue that such an amendment would materially alter the character of the mark. Rather, defendant argues that the motion is ‘both too late and too early.’ According to defendant, the proposed amendment is too late because plaintiff [OTV] has failed to amend the registration in the past — and because plaintiff has already asserted the existing registration in the TTAB and in this court, as the basis for its infringement claim. Defendant points to no authority, however, suggesting the existence of a time limit on the court’s authority to correct the register pursuant to the Lanham Act.

“Defendant also argues that the proposed amendment is too early. This is so, according to defendant, because defendant’s counterclaim to cancel plaintiff’s registration has not yet been adjudicated. Defendant is apparently concerned that such an amendment will in some way moot or invalidate its counterclaim. Yet plaintiff cannot nullify a claim that it procured its trademark through fraud on the USPTO by now amending its trademark registration. If, as defendant alleges, plaintiff committed fraud on the USPTO, a post hoc amendment of the trademark register does not serve to moot or rectify such fraud. Granting the instant motion does not render the counterclaim moot. Accordingly, there is no reason not to amend the register to correct what all agree is erroneous information.”

The case cite is One True Vine, LLC v. Wine Group LLC, 2009 WL 3707512, No. 09-1328 (N.D. Calif. Nov. 4, 2009).

Rocky Brands’ Web site advertising its FLIRT boots

On Nov. 6, Bellevue, Wash.-shoe designer Topline Corp. filed suit in the Western District against Rocky Brands Wholesale LLC and other shoe sellers that market women’s boots under the trademark FLIRT. The complaint also alleges that Rocky Brands applied to register FLIRT WITH DURANGO for “western boots.” Topline alleges that Rocky Brands’ marks infringe Topline’s own FLIRT registered trademark in connection with “shoes.”

Topline has sued over its FLIRT mark before. In 2007, it sued designer Houser Shoes for marketing footwear under the marks FLURT and GOTTA FLURT. Houser ultimately admitted its marks infringed Topline’s rights as part of a consent decree.

Defendants have not yet filed an answer.

The case cite is Topline Corp. v. Rocky Brands Wholesale LLC, No. 09-1592 (W.D. Wash.).

Seattle IP lawyer Samuel Watkins sued the U.S. Bureau of Customs and Border Protection (CBP) under the Freedom of Information Act (FOIA) for the release of Notices of Seizure of Infringing Merchandise from various ports, including the Port of Seattle. He asked for all notices to trademark owners in recent years regarding merchandise seized as being counterfeit. The records Mr. Watkins requested included the date the merchandise was imported, the port of entry, the description of the merchandise, the quantity of the merchandise, the country of origin, and the names and addresses of the exporter, importer, and manufacturer.

In November 2008, he brought suit in the Western District to enjoin the CBP from: “(a) improperly withholding agency records entirely; (b) failing to respond at all to lawful requests for agency records; (c) producing improperly redacted agency records; and (d) demanding excessive fees expressly not authorized by the CBP’s own regulations as a precondition to processing requests for agency records.”

CBP defended its response to Mr. Watkins’ FOIA requests in part based on two FOIA exemptions: Exemption 4, for “commercial information,” and Exemption 7, for law enforcement records that are “expected to constituted an unwarranted invasion of personal privacy.”

The parties cross-moved for summary judgment. Now, this is a trademark blog and not a FOIA blog, but suffice it to say Judge James Robart granted CBP’s motion and denied Mr. Watkins’ motion.

The court found: “As to Exemption 4, the court concludes that the Agency has met its burden of showing that there is actual competition in the commercial importation market which it defines as ‘fierce’ and that if the Notices of Seizures were released — evidencing an importer’s supply chain — the importer would likely suffer substantial competitive injury” justifying the exemption from disclosure.”

With regard to Exemption 7, the court also sided with CBP: “[T]he court agrees with the Agency that the identity [of the] individual acting as the responsible party and contact person for the trademark holder is private information. The court further notes that there is nothing before it that supports a finding that there is any public interest in knowing who these people are.”

On Nov. 4, Mr. Watkins filed a Notice of Civil Appeal, appealing the court’s decision to the Ninth Circuit.

The case cite is Watkins v. U.S. Bureau of Customs and Border Protection, 2009 WL 3633893, No. 08-1679 (W.D. Wash. Oct. 30, 2009) (Robart, J.).

The calendar plaintiffs say violates Marilyn Monroe’s publicity rights 

On Nov. 3, CMG Brands, LLC, and Marilyn Monroe, LLC, filed suit in King County Superior Court against publisher Moseley Road, Inc., and bookseller Borders Group, Inc. Plaintiffs claim to control Marilyn Monroe’s publicity rights. They allege defendants violated Marilyn Monroe’s right of publicity by publishing a calendar “bearing the name, trademark, and image of Marilyn Monroe” (depicted above) without their permission.

Defendants have not yet filed an answer.

Does this case signal that last year’s amendments to Washington’s right of publicity statute will turn our state into a hotbed for rights of publicity litigation? (See STL’s April 2008 post raising that possibility here.)  

The case cite is CMG Brands, LLC v. Moseley Road, Inc., No. 09-2-40301-SEA.

On Nov. 2, King Pharmaceuticals, Inc., Monarch Pharmaceuticals, Inc., King Pharmaceuticals Research and Development, Inc., and Gentrac, Inc., filed suit against Seattle-based ZymoGenetics, Inc., in the Eastern District of Tennessee. The complaint alleges a variety of false advertising and trademark infringement claims related to ZymoGenetics’ topical thrombin products.

The complaint alleges that ZymoGenetics made false and misleading statements, including: “(1) Defendant’s thrombin product is superior in safety in general as compared to King’s thrombin product; (2) King’s thrombin product causes death; (3) King’s thrombin product causes an increase in bleeding disorders and failure to clot (i.e. coagulopathies); (4) King’s thrombin product causes an increase in adverse events such as hemorrhagic and/or thromboembolic events and death; and (5) Defendant’s thrombin product is superior in safety and the incidence of adverse events because allegedly there is a greater incidence of the formation antibodies from exposure to King’s thrombin product as compared to Defendant’s thrombin product.”

Yesterday, the court granted three temporary restraining orders enjoining ZymoGenetics through a preliminary injunction hearing from:

• Using THROMBIN-JMI or any variant thereof as a Google Adword;
• Displaying any statement that affirmatively states or implies that ZymoGenetics’ RECOTHROM® product (or recombinant human thrombin generally) is superior to and/or safer than King’s THROMBIN-JMI® product (or bovine thrombin products generally); and
• Displaying any statement that affirmatively states or implies that one or more lawsuits have been filed against King and/or THROMBIN-JMI® product customers for harm caused to patients who were exposed to King’s THROMBIN-JMI® topical thrombin line of products, or that states or implies that by purchasing and exposing patients to King’s THROMBIN-JMI® products, King’s customers risk being sued in future lawsuits.

Today, ZymoGenetics filed a motion to dissolve the TROs.

ZymoGenetics has not yet filed an answer. However, the company said: “We dispute the allegations of wrongdoing in King’s complaint and intend to vigorously defend ourselves in this matter.”

The case cite is King Pharmaceuticals, Inc. v. ZymoGenetics, Inc., No. 09-244 (E.D. Tenn.).