Intellectual Property Law

STL Weekend Update - Developments in Peso's, Hendrix Electric Trademark Cases

By Michael Atkins

Apologies for the blogging slowdown. I’ve been in depositions in the cool (and I do mean cold) city pictured above, and will return on Tuesday for more. (Hint, it’s where Seattle’s last professional sports team was moved before the Sonics went to Oklahoma City.)

That said, there are two recent developments worth noting. First, one of the attorneys in the Peso’s v. Matador restaurant trade dress case filled in some of the settlement terms foreshadowed here. The highlights reportedly are as follows:

1. The Matador’s Ballard location will make certain interior changes (including to its walls, ceiling, and suspended acoustic panels). The location will remove all votive candle sconces from its walls, table tops and bar tops. It also will remove all Day of the Dead figurines (including those made from wood, paper mache, and pottery).
2. All Matador locations within the State of Washington will change the colors of their table top menu holders, change certain menu descriptions, and stop using two particular menu titles.
3. Owners of the Matador will not open any locations for three years in the Seattle area bounded by 80th Street to the north, Spokane Street to the south, Lake Washington to the east, and Puget Sound to the west. For the same time period, the Matador also will not open within a four-mile radius of Bellevue’s Lincoln Square (excluding Issaquah to the extent that city falls within those parameters).
4. Owners of the Matador will pay the owners of Peso’s $250k-$285k. If the parties cannot agree on the amount, King County Superior Court Judge Catherine Schaffer (the trial judge) will set the amount.
5. Should any dispute arise in drafting or implementing the final settlement agreement, King County Superior Court Judge John Erlick (who helped broker the settlement) will decide the issue.

The other item of interest is that on Oct. 16, the Western District entered a Judgement and Permanent Injunction against the makers of Hendrix Electric vodka. The order was no surprise given Judge Thomas Zilly’s August 7 finding on summary judgment that the company had infringed Experience Hendrix, LLC’s AUTHENTIC HENDRIX, EXPERIENCE HENDRIX, and JIMI HENDRIX trademarks.

The injunction is sure to put a crimp in the defendants’ marketing efforts. Among other things, it permanently enjoins them from “using the words JIMI HENDRIX ELECTRIC, JIMI HENDRIX ELECTRIC VODKA, HENDRIX ELECTRIC, HENDRIX ELECTRIC VODKA; and the design headshot containing JIMI HENDRIX ELECTRIC or HENDRIX ELECTRIC, both with and without Jimi’s signature, in the sale, offering for sale, distribution or advertising of posters, clothing, and alcoholic beverages including vodka.”

The chance of appeal? Given the Hendrix family’s penchant toward litigation, I’d say about 100%.

Photo credit: here.

Full post as published by Seattle Trademark Lawyer on October 26, 2008 (boomark / email).