Intellectual Property Law

Western District Holds Maker of Worm Composting Products in Contempt

By Michael Atkins

As STL reported in November, the Western District found that defendants Providnet Co. Trust and Barry Russell likely infringed plaintiff Cascade Manufacturing Sales, Inc.’s trademark rights in WORM FACTORY in connection with the sale of worm composting bins, and imposed a preliminary injunction against them.

On Jan. 7, the court clarified that its injunction extended to the phrase “Factory of Worms” as well as “Worm Factory,” but not “Worm Wrangler,” which both parties use to describe their products. The court also cautioned defendants to comply with its earlier order.

Apparently, defendants failed to do so. On July 2, Judge Ronald Leighton found them to be in contempt. The court imposed a $5,000 fine, which it said it would exonerate if defendants demonstrate they have met the following terms by July 13. In summary, defendants must:

1. Send a letter to each of their distributors mandating that they stop using the phrase “Worm Factory,” “Factory of Worms” or other such terms in connection with defendants’ products;
2. Remove all references to “factory” in tags, product descriptors, meta tags, or any other materials on defendants’ Amazon and eBay stores;
3. Remove all references to “factory” on their Web sites; and
4. Remove “factory” from their accounts on each keyword advertising medium that they use.

I’m happy to report that western Washington appears to be Worm Central, with all parties in the case hailing from this neck of the woods.

The case cite is Cascade Manufacturing Sales, Inc. v. Providnet Co. Trust, No. 08-5433 (W.D. Wash. July 2, 2009).

Full post as published by Seattle Trademark Lawyer on July 09, 2009 (boomark / email).