Intellectual Property Law

Western District Dismisses Defendant in Rockin' Perfume Trademark Dispute

By Michael Atkins

As discussed here, Sportsfragrance, Inc., sued The Perfumer’s Workshop International, Ltd., in the Western District for trademark infringement. The crux of the dispute was Sportsfragrance’s allegation that Perfumer’s use of ROCK & ROLL in connection with its perfumes infringes Sportsfragrance’s ROCK ‘N ROLL mark in connection with perfumes.

Perfumer’s (PWI) filed a motion to dismiss for lack of personal jurisdiction. In response, Sportsfragrance argued that Perfumer’s purposefully availed itself to Washington by selling its SAMBA ROCK & ROLL perfumes through Target’s and Perfumania’s online stores that are accessible in Washington and by selling other perfumes through those stores’ physical locations in Washington.

Judge Thomas Zilly found these activities weren’t enough for purposeful availment.

“For purposes of determining personal jurisdiction, the Court finds that PWI placed the allegedly infringing Samba ROCK & ROLL perfume products in the stream of commerce by selling it to Minnesota-based Target and New York-based Quality King Fragrance, Inc. However, even though it may have been foreseeable that these third [party] retailers would, in turn, market and sell the product elsewhere in the country, and perhaps in Washington, foreseeability alone is an insufficient basis for the Court to exercise personal jurisdiction over PWI. It is a defendant’s conduct and the connection with the forum state that are crucial to the personal jurisdiction analysis. Thus, even if the Court accepts as true Sportsfragrance’s uncontroverted allegation that retailers sold the allegedly infringing Samba ROCK & ROLL perfume products in Washington, despite the lack of evidence in support of such an allegation, that fact does not go to PWI’s activities in Washington. Sportsfragrance has failed to make a prima facie showing of purposeful availment as to PWI.”

On May 15 the court dismissed all claims against Perfumer’s and ordered it to file any motion for fees and costs pursuant to Washington’s long-arm statute within ten days.

The case cite is Sportsfragrance, Inc. v. The Perfumer’s Workshop International, Ltd., 2009 WL 1393864, No. 09-177 (W.D. Wash. May 15, 2009) (Zilly, J).

Disclaimer: My firm happily represented Perfumer’s in this case.

Full post as published by Seattle Trademark Lawyer on May 28, 2009 (boomark / email).