Seattle Trademark Lawyer

 A reporter put me onto an excellent Sports Illustrated article written during the 1988 Summer Games in Seoul. Author Leigh Montville writes about being “On the Trail of the O-Word,” in which he concludes that ”[d]espite official efforts to curb unsanctioned use of the word ‘Olympic,’” it is “here, there and everywhere.”

To illustrate his point, he riffs on “Olympic” names he comes across in everyday life: Olympic Burger and Burrito. Olympic Fish and Meat Market. Olympic Fruit and Vegetable. Olympic Bar B Que. Olympic Pawn Shop. Olympic Van Lines. His list goes on and on.

“Is there any fair-sized town that does not have an Olympic Diner somewhere on its outskirts?” he asks. “One Olympic Diner leads into two Olympic Realty offices, which lead into three Olympic Laundromats. There seem to be no boundaries. These Olympics are everywhere. Around the country. Around the world. The Olympic Diner of Abu Dhabi? The Olympic Diner of Beijing? The Olympic Diner of Moscow? Everywhere.”

Mr. Montville cites to an estimate that 40,000 Olympic-named businesses exist out there — almost all of which in my view are th result of an innocent failure to heed the Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. § 220506, which prohibits most commercial use of the word “Olympic” outside of Washington’s Olympic Peninsula after Sept. 21, 1950. 

The article goes on to say: “If the USOC owns the word, the USOC can do anything it wants with that word. ‘We got a letter saying that we couldn’t use the name,’” one business owner said. “‘Our attorney told us it would cost $50,000, minimum, to fight the case. I have been around enough lawyers to know how much ‘$50,000 minimum’ can become. We changed the name.’”

The USOC’s perspective? “‘We don’t go looking through telephone listings, no,’ says Richard Kline, chief legal adviser for the USOC. ‘But if someone brings something up to us, we’ll follow it up.’

“Off the record, USOC officials claim they have no interest in the Olympic taxidermies of the land. They mostly are interested in competitions or fund-raising ventures that try to use the name or the Olympic logo. This does not mean they don’t have the legal option to become interested. A threatening letter can arrive at any time. The comic opera always can be brought to the stage.”

Just so it’s clear, I’m all for the USOC enforcing its mark against competitions and businesses that try to trade on the Olympics’ goodwill. Unfortunately, it doesn’t stop there. If the USOC avoided the comic opera, I’d be its biggest fan.

The article cite is Leigh Montville, “On the Trail of the O-Word,” Sports Illustrated (Olympic Preview, Sept. 1988). I’m sorry to say I couldn’t find a publicly available copy to link to.

For all of the reasons discussed here, here, and here, STL has not been a fan of the United States Olympic Committee’s efforts to enforce its near monopoly rights in the U.S. over commercial use of the word “Olympic.” Is anyone really going to think the “Olympic Pizzeria” that exists in almost every town has anything to do with the Olympic Games? Nonetheless, the USOC hasn’t appeared to hesitate to dash off cease-and-desist letters to the owners of such establishments, sometimes causing small businesses to go through the expensive and disruptive process of changing their name. That’s particularly painful around here, where hundreds of companies (500 by this business owner’s count) have taken the name of the Olympic Peninsula, the Olympic Mountains, and Olympic National Park as their own.

That said, the USOC has been much more circumspect about filing suit. I found it surprising to learn it has only brought three trademark suits since 2008 (and never in Washington), even though the Winter Olympics will begin in about four months in Vancouver, BC, just 200 miles north of Olympia. Here’s a rundown of the USOC’s most recent suits:

• USOC v. Official Ticket Ltd., Dist. of Arizona - USOC sued ticket seller that allegedly used USOC’s OLYMPIC and BEIJING 2008 marks to resell tickets to the 2008 Summer Games without the USOC’s authorization. Complaint filed July 22, 2008; Order of default entered on August 24, 2009.
• USOC v. Asics America Corp., Central Dist. of Calif. - USOC sued shoe seller for allegedly using “OLYMPICS” prominently in advertising its athletic shoes, including in the statement, “You Wear the Medals. We Wear the Pride.” Complaint filed May 9, 2008; Stipulation of dismissal without prejudice filed on February 27, 2009.
• USOC v. Olympic Supply, Inc., Dist. of Maryland - USOC sued over defendant’s alleged use of OLYMPIC NEWS in connection with its newsstand and concession business. Complaint filed Feb. 25, 2008; motion for summary judgment granted in favor of USOC; permanent injunction entered on Aug. 6, 2009, enjoining defendant’s use of OLYMPIC NEWS beginning Jan. 11, 2010. 

Of these, the most hotly contested was USOC v. Olympic Supply. Interestingly, the court denied Olympic Supply’s motion for summary judgment based on laches, finding that registration of a corporate name did not serve as constructive notice to the USOC that the USOC’s mark was being used:

“In order for Plaintiff to be chargeable with constructive knowledge merely from the corporate registration, Defendant has to prove that a reasonable organization would routinely check every state’s corporate registrations on a regular basis to search for improper use of its marks. There are no facts stated that would give rise to such an onerous burden. Although the USOC has ‘a duty to protect and preserve [its] trademark assets through vigilant policing and appropriate acts of enforcement,’ mere corporate registration, without open and obvious use of the name, would hardly justify the level of vigilance suggested by Defendant’s assertion of this defense.”

I’m pleased the court included the caveat about “open and obvious use of the name.” Assuming a business has used OLYMPIC as its name openly and obviously for a period of years, I would think laches would provide a good defense. I’m even more pleased that the USOC is more judicious about bringing suit than it appears to be about sending cease-and-desist letters.

Art Attacks’ “Spoiled Brats” designs (top) and MGA’s “Bratz” dolls:
No secondary meaning, no foul

Plaintiff Art Attacks Ink, LLC, sells a “Spoiled Brats” collection of t-shirts featuring cartoonish, predominantly female characters, with oversized eyes, disproportionately large heads and feet, makeup, and bare midriffs. Defendant MGA Entertainment Inc. sells “Bratz” dolls, which, like Art Attacks’ designs, feature large eyes, heavy makeup, oversized heads and feet, and bare midriffs. Art Attacks cried foul and sued for trademark and trade dress infringement, among other claims.

A jury found for MGA on Art Attacks’ trademark infringement claim, but could not reach a verdict on its trade dress and other claims. MGA then moved for judgment as a matter of law, which the Southern District of California granted.

Art Attacks appealed. On Sept. 16 the Ninth Circuit affirmed, rejecting Art Attacks’ attempts to establish secondary meaning. With regard to Art Attacks’ arguments about purchasers’ perception, the court found:

“In its attempt to show purchaser perception of an association between the Spoiled Brats’ characteristics and a single source, Art Attacks largely reiterates its widespread dissemination arguments. Art Attacks again focuses on the number of attendees at county fairs, and additionally cites expert testimony identifying the Spoiled Brats defining features. Art Attacks correctly points out that direct survey evidence of purchaser perception is not required. Nevertheless, Art Attacks fails to demonstrate that purchasers of a product that displayed large eyes, oversized feet, and other characteristics typical of the Spoiled Brats would link that product with a single source. The only source of such evidence is the testimony of Tammie Gallagher, who said that she would associate the Spoiled Brats image with Art Attacks no matter where she saw it. Testimony from a single source is insufficient to demonstrate secondary meaning. A reasonable jury could not have found sufficient purchaser association between Spoiled Brats trade dress and Art Attacks to establish secondary meaning.”

The court also rejected Art Attacks’ proof of secondary meaning through advertising, extent and exclusivity of use, and actual confusion.

The case cite is Art Attacks Ink, LLC v. MGA Entertainment Inc., __ F.3d __, 2009 WL 2950659, No 07-56110 (9th Cir. Sept. 16, 2009).

Spalding Laboratories, Inc., sued its competitor, Arizona Biological Control, Inc. (“Arbico”), for false advertising under the Lanham Act related to claims Arbico made about the developmental state of its wasps used for killing flies. The Central District of California granted Arbico’s motion for judgment against Spalding as a matter of law.

On Sept. 9, the Ninth Circuit reversed and remanded, finding that a jury could have found for Spalding. In doing so, the court got right to the point:

“The jury could have reasonably concluded that Arbico’s advertisements were literally false or that the advertisements confused or misled a significant portion of their target audience. For instance, Dr. Peterson testified that the number of emerged parasites would ‘definitely’ be lower than the number of larvae contained in a pupa, a fact that would support a finding of literal falsity if Arbico’s claims were found to refer to emerged insects. The jury also could have reasonably concluded that Spalding’s shipments of Fly Predators contained as many as 10,000 to 15,000 larvae. Had the jury drawn that conclusion, it could have found Arbico’s advertisements to be literally false even if larvae, not emerged insects, were the relevant unit of analysis. Finally, the jury was told that Spalding experienced a spike in consumer inquiries in response to Arbico’s advertisements and that many Spalding customers defected to Arbico. If the jury found this testimony to be credible, it could have concluded that a significant segment of Arbico’s audience was misled by the advertisements at issue. On this record, issuance of judgment as a matter of law was legally erroneous.”

Interestingly, the court also granted Spalding’s motion to reassign the case to a different judge upon remand. “Without determining whether the district court judge currently assigned would be able to proceed impartially, we conclude that reassignment is appropriate to preserve the appearance of justice.”

The case cite is Spalding Laboratories, Inc. v. Arizona Biological Control, Inc., 2009 WL 2873762, No. 07-56876 (9th Cir. Sept. 9, 2009).

It happens every so often in these parts — the court denies a stipulated protective order. Suffice it to say, courts around here don’t rubber stamp litigants’ attempts to privatize court proceedings. A case in point from a Western District trademark infringement suit last week:

“The parties request an expansive protective order for all confidential information that may be disclosed during the discovery phase of this proceeding. The parties have agreed to designate as ‘CONFIDENTIAL MATERIAL …. any trade secret or other confidential research, design, development, financial, or commercial information.’ The parties have also agreed to designate as ‘ATTORNEYS ONLY MATERIAL’ any material that ‘is entitled to a higher level of protection due to its commercial sensitivity.’

“The Court need not enter the stipulation as an order of the Court because (1) the proposed order contains provisions that are more appropriate for an agreement between the parties instead of an expansive protective order and (2) the attorneys for both parties have executed the agreement. Moreover, the parties have already been ordered to redact dates of birth, social security numbers, and financial accounting information pursuant to the General Order of the court regarding Public Access to Electronic Case Files. As outlined in the Stipulated Protective Order, if a party chooses to submit confidential documents to the Court, the party may file a motion to seal the material pursuant to Local Rule CR 5(g) and note the motion according to Local Rule CR 7(d)(2). ‘The law requires, and the motion and the proposed order shall include, a clear statement of the facts justifying a seal and overcoming the strong presumption in favor of public access.’ If the party that chooses to submit the material is not the party that designated the material ‘confidential,’ it may state so in the motion to seal and, in the response, the designating party may articulate facts in support of sealing the submitted material.”

The case cite is G. Loomis, Inc. v. Gary A. Loomis, et al., No. 09-5236 (W.D. Wash. Sept. 9, 2009) (Settle, J.).