Seattle Trademark Lawyer

The Chicago Tribune yesterday ran a piece on the USOC’s enforcement efforts over there. In summary, it’s pretty much the same heavy-handed story we’ve experienced over here.

Case in point: Olympic Meat Packers Inc., which after 40 years changed its name to “Olympia Meat Packers” to avoid a USOC suit. Owner George Tsoukas says he forgets his new name when he answers the phone.

“My customers, they hang up on me and they think it’s a different business,” he says. “I’m so used to ‘Olympic Meat’ … and it’s so hard for me to remember ‘Olympia.’”

I’m surprised the USOC ok’d “Olympia” as an alternative name. Good for them, though one wonders why they demanded a name change at all.

The article includes a short quote from me, saying: “It’s just not fair that the USOC can be casual about its demands when it has such a large impact on the business that has to change its name.”

The article also cites Chicago IP Litigation Blogger David Donoghue for his suggestion that businesses do a trademark search before becoming too wedded to a name.

That’s great advice. It’s a lot easier to pick a new trademark before signs are made, domain names are registered, and customers get used to your name.

STL’s been covering the “Worm Factory” case a while. Among other things, I dig that plaintiff and defendant worm growers both come from Washington. As readers may recall, this dispute’s about defendant Providnet Co. Trust’s use of WORM FACTORY and similar words in connection with its decomposting bins, which plaintiff Cascade Mfg. Sales, Inc., claims infringes its WORM FACTORY registered trademark.

The Western District has entered a preliminary injunction in Cascade’s favor (STL post here). The court also has found Providnet to be in contempt of that order for continuing to use the words “factory” and “worm factory” in marketing its products (STL post here).

In connection with its contempt order, the court ordered Providnet to inform the court about its efforts to comply with the injunction. Providnet filed a response, which prompted Cascade to file a motion for summary judgment on its trademark infringement claim.

On Sept. 29, Judge Ronald Leighton denied the motion. The court concluded: “After reviewing the materials filed by both parties in the tortured history of this case, the Court is convinced that there are material issues of fact related to the fact and extent of ‘confusion’ between the various product names used by the parties. This is true even though the Court remains convinced that the preliminary injunction was properly granted. Moreover, legitimate issues regarding the Defendants’ efforts to avoid infringement suggest to the court that the relief sought by the Plaintiff in the current Motion would do little to narrow the issues remaining for trial. The Court also wants to point out that the Defendants are not represented by counsel, and have not been able to provide the Court with adequate references to the law. The material submitted has instead consisted of a ‘document dump’ unaccompanied by an explanation of what the documents mean in the context of the larger dispute. Defendants are strongly encouraged to retain counsel, and if they are not able to do so, to prepare to provide the Court legal argument and authority.”

The case cite is Cascade Mfg. Sales, Inc. v. Providnet Co Trust, 2009 WL 3169449, No. 08-5433 (W.D. Wash. Sept. 29, 2009) (Leighton, J.).

The PC World blog has a rundown on Apple’s dispute over Woolworths Ltd.’s apple-ized logo. It concludes that Apple doesn’t have a monopoly on fruit trademarks. It’s case in point — Washington State Apple Commission’s logo. Worth a read, along with its follow-up history of Apple’s trademark disputes over its evolving logos. 

Trade dress infringement?
Topics Entertainment’s (left) and Rosetta Stone’s packaging 

On Oct. 5, Renton, Wash.-based Topics Entertainment, Inc., filed suit in the Western District against Rosetta Stone, Ltd., seeking a declaratory judgment that the packaging of its INSTANT IMMERSION-branded language learning software does not infringe Rosetta Stone’s trademark or trade dress rights.

The complaint requests a judgment “declaring that Topics’ 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.”

The complaint also prays for a judgment “declaring that Topics’ use of the phrase ‘As effective as Rosetta Stone for a fraction of the cost!’ does not constitute actionable false advertising.”

The complaint alleges an actual controversy exists because Rosetta Stone sent cease-and-desist letters threatening “alternative measures” to settlement if Topics did not comply with its demands.

Rosetta Stone has not yet answered Topics’ complaint.

The case cite is Topics Entertainment, Inc. v. Rosetta Stone, Ltd., No. 09-1408 (W.D. Wash.).

This headline is what bugs me about the USOC: “USOC fights Olympian newspaper’s trademark.”

Now, what the Seattle Times means is the USOC is opposing McClatchy U.S.A. Inc.’s application to register its trademark, THE OLYMPIAN. The trademark it has used since Feb. 1, 1982.

The PTO ok’d it. But not the good ol’ USOC, which thinks that after 27 years, folks around here are prone to suddenly associating the paper’s name not with Olympia, Wash., where it is based, but with the Olympics. Gimme a break. 

Indeed, this mark would seem to fall squarely within the Ted Stevens Act’s exception for use of the word “Olympic” in commerce when “it is evident from the circumstances that such use … refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998, and not to the corporation or any Olympic activity,” and such use outside of the “State of Washington west of the Cascade Mountain range” is “not substantial.”

This is the name of Olympia’s newspaper, folks. This sort of thing could dampen my Olympic spirit.

The USOC apparently has more important things to worry about. Like protecting consumers against confusion. That’s what it argues in its Sept. 18 notice of opposition:

“Registration and use of Applicant’s Mark is likely to cause injury to Opposer’s business reputation and to injure and impair Opposer’s rights in its trademarks and service marks by causing confusion, mistake and/or deception as to the respective rights of the parties and as to the source of the goods and services offered by Applicant. In addition, any defect, failure or fault with respect to Applicant’s Goods provided under Applicant’s Mark would erode the valuable goodwill associated with Opposer and its Olympic Marks. Opposer will be harmed to a greater degree if Applicant’s Goods do not meet the strict quality standards consumers normally associate with the Olympic Games, namely, elite competition at the highest level.”

Like I said before, Give me a break.

The Olympian’s article on the dispute from today’s paper is here.