Intellectual Property Law

STL Back in Seattle

Posted on February 16, 2010
STL took a brief holiday from blogging and work to head to this place, one of the greatest spots around. Not sad to be back — for one thing, Seattle’s a balmy 25 degrees warmer. (Photo by STL)

Washington High School Student Sells Inunnguaq to Olympic Travelers

Posted on February 10, 2010
Ferndale, Wash., student Jessica Hiestand isn’t using the “O” wordin promoting her winter sports figures to Olympics-bound travelers  Ferndale, Wash., is the last I-5 exit heading north to Canada. With all the Olympic traffic she expects to pass through her home town, high school junior Jessica Hiestand thought she could raise a little money for her school trip to Costa Rica...

How Does New York's Right of Publicity Bill Compare with Washington's Statute?

Posted on February 10, 2010
So how does New York’s new right of publicity bill (S-6790) compare with the 2008 amendment to Washington’s right of publicity statute (RCW 63.60)? They’re cut from the same — expansive — cloth, but there are some notable differences...

Court Finds No Trademark Rights and No Infringement in Sand Hill Advisors Dispute

Posted on February 09, 2010
In Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC — a trademark case involving companies with the same name — the Northern District of California found that northern California is big enough for both parties. In reaching this conclusion, the court found: “Sand Hill” in the Silicon Valley is primarily geographically descriptive; As a descriptive trademark, secondary meaning is required to give plaintiff trademark rights; Even if Section 2(f) applied to an unregistered trademark, it didn’t entitle plaintiff to a presumption of secondary meaning because defendant’s existence meant that plaintiff’s use was not “substantially exclusive” for more than five years; and Plaintiff’s advertising and marketing efforts alone did not establish secondary meaning...

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Ninth Circuit Affirms Injunction Against Use of Designer's Name as Trademark

Posted on February 08, 2010
Ninth Circuit affirms injunction against Kira Plastininain light of plaintiff’s KIRRA registered trademarks Clothier Pacific Sunwear of California, Inc., owns the registered KIRRA family of trademarks. Competing clothier Kira Plastinina Style, Ltd...

Western District Denies Contempt Motion in "Hendrix Electric" Vodka Case

Posted on February 04, 2010
The Experience Hendrix, LLC v. Electric Hendrix, LLC “Hendrix Electric” vodka case is over. Mostly. Plaintiffs now seek to collect their judgment against defendants, including Craig Dieffenbach. Plaintiffs recently complained that Mr. Dieffenbach was not forthcoming during supplemental proceedings...

Local Family Charged with Selling Counterfeit CDs and DVDs

Posted on February 03, 2010
A Kent, Wash. family was charged Jan. 27 in King County Superior Court after being arrested on suspicion of selling counterfeit CDs and DVDs, the Seattle PI reported today. Renton police alleged that married couple Jesus Perez-Vargas and Leticia Vargas-Garcia and their 18-year-old son were selling hundreds of CDs and DVDs that appeared to be pirated...

Ninth Circuit Affirms Denial of E! Entertainment's Injunction Motion

Posted on February 02, 2010
Not “identical, or nearly identical”:Plaintiff’s logo (left) and defendants’ logo Last year, E! Entertainment Television, Inc., sued Entertainment One GP Limited, d/b/a E1 Entertainment, and four related entities in the Central District of California for trademark infringement...

Court Finds Logo Either Protected as Parody or Not Likely to Cause Confusion

Posted on January 31, 2010
No TRO: Plaintiff Protectmarriage.com’s logo (left)and defendant Courage Campaign’s derivative logo “[P]laintiff is unlikely to overcome the conclusion that defendant’s use of the mark is protected under the First Amendment…...

Paccar Seeks Default Judgment Against Replica Model Truck Maker

Posted on January 27, 2010
Plaintiff Paccar’s PETERBILT truck trade dress (left) and defendant Malibu International’s replica scaled model truck Last April, Bellevue-based Paccar Inc. sued former licensee Malibu International Limited for infringing its trade dress by selling replica scaled models of Paccar’s KENWORTH and PETERBILT trucks without permission...

Western District Transfers Leather Product False Advertising Case to Ohio

Posted on January 26, 2010
STL regulars may remember the false advertising and product disparagement case that Design Resources, Inc., brought last year against defendants Leather Industries of America, Inc., and Nicholas Cory. The complaint alleged Dr. Cory, who tested Design Resources’ NEXTLEATHER product at the Leather Research Laboratory, a Leather Industries affiliate, advised Design Resources that the product could be called “bonded leather,” and then proceeded to disparage the labeling, marketing and selling of the product as “bonded leather...

Ninth Circuit Affirms Attorney's Fees Award Against Injunction Violator

Posted on January 25, 2010
On Jan. 11, the Ninth Circuit affirmed the Central District of California’s award of $29,730 in attorney’s fees to plaintiff RRLH, Inc., stemming from defendant Hendrick Barto’s violation of the court’s order prohibiting him from using plaintiff’s LIESURE WORLD trademark...

"Protecting Your Brand on Twitter" Offers Straight-Forward Enforcement Strategy

Posted on January 21, 2010
Today’s post from Dave Donoghue is a reprint of his article, “Protecting Your Brand on Twitter & Stopping Twitter Squatters.” It’s worth checking out. I love his hook: “[I]f you are an executive or business owner that is reading this and thinking that you do not need to worry about Twitter, at least skim the article and then do a search for your company name on Twitter...

Ninth Circuit Affirms Injunction Enjoining Sara Lee's Use of SANDWICH THINS

Posted on January 20, 2010
Post injunction: Plaintiffs’ SANDWICH THINS buns (left) anddefendants’ 100% NATURAL THIN BUNS buns  On Jan. 6, the Ninth Circuit affirmed the Southern District of California’s preliminary injunction enjoining Sara Lee Corporation and other defendants from using the trademarks THINS and SANDWICH THINS in connection with bread...

Owner of Bellevue Beauty Salon Found Guilty of Injecting Fake Botox

Posted on January 19, 2010
On Jan. 15, Western District Judge Marsha Pechman sentenced a Bellevue, Wash., salon owner to 13 months in prison for injecting customers with fake BOTOX and RESTYLANE wrinkle remover. The Seattle Times reported that Xin “Faith” He scarred some of her customers for life...

Western District Dismisses Trade Dress Case in Favor of Virginia Suit

Posted on January 14, 2010
Trade dress questions between Topics (left) and Rosetta Stone (right) will be decided in the Eastern District of Virginia Folks may recall the suit Topics Entertainment Inc. filed last year in the Western District seeking a declaration that its packaging does not infringe any rights owned by competing language software maker Rosetta Stone Ltd...

National Association Alleges Local Real Estate Agents Wrongly Use the "R" Word

Posted on January 13, 2010
Not all real estate agents are REALTORS. That’s the gist of the lawsuit the National Association of Realtors filed in the Western District on Jan. 8 against Champions Real Estate Services Inc. and a number of individuals. The Association alleges the defendants “continue to represent themselves as REALTORS without authorization” and use the Association’s registered trademarks to describe themselves to the public...

Reminder to File Form AO120 with New Trademark Lawsuits

Posted on January 11, 2010
The Western District clerk’s office is starting to notify filers of trademark-related complaints that their filings are deficient without the additional filing of Form AO120 — the notice to the Patent and Trademark Office of a new trademark lawsuit...

Ninth Circuit Affirms Infringement Finding Against Clothing Maker

Posted on January 10, 2010
In Quiksilver, Inc. v. Kymsta Corp., a Central District of California jury initially found the defendant clothing maker was liable for infringing plaintiff’s ROXY trademark but did not find it liable for false designation of origin. Since the tests are essentially the same, the court resubmitted the special verdict form with supplemental instructions...

Gas Station at Former Texaco Site Spurs Trademark Infringement Suit

Posted on January 06, 2010
To paraphrase plaintiff: “It looks like a Texaco station.” Defendants Misko Maynard and Grapeview Country Store, LLC, allegedly sell groceries and gas in what used to be a Texaco station. Chevron U.S.A., Inc., owner of the TEXACO brand, filed suit in the Western District on Dec...

Ninth Circuit Upholds False Advertising Claim Against Pomegranate Juice Seller

Posted on January 06, 2010
Purity claim constituted false advertising, the Ninth Circuit affirms POM Wonderful LLC sued competing pomegranate fruit juice seller Purely Juice, Inc., and its president for false advertising under the Lanham Act and California law for marketing its juice as “100%” pomegranate juice with “no added sugar,” when defendants allegedly knew or should have known the juice was adulterated...

Ninth Circuit Affirms Dismissal of Lanham Act Claims for Lack of Use in Commerce

Posted on January 05, 2010
In his second go-round on appeal, pro se plaintiff Robert Guichard didn’t fare any better against defendant Universal City Studios LLLP than he did in his first. Mr. Guichard is an independent movie producer. Universal is a big Hollywood studio...

Guest Post: Larry Friedman on the Role of Customs in Brand Protection

Posted on December 31, 2009
Following is STL’s perhaps first-ever guest post, by Larry Friedman, who is a partner in Barnes, Richardson & Colburn and blogs on customs and trade related matters at the Customs Law Blog. In fiscal 2009 (October 1, 2008 to Oct 1, 2009), U...

Happy New Year!

Posted on December 27, 2009
Happy New Year! No, not HAPPY NEW YEAR, the trademark — Happy New Year, the sentiment. STL will be taking the rest of the year off for, uh, good behavior. Just a few days to kick back in the incredible city depicted above. Have a great rest of the decade! (Photo by STL)

Merry Christmas!

Posted on December 24, 2009
Merry Christmas! Of course, I’m referring to MERRY CHRISTMAS, Serial No. 78161138, the alleged trademark used in International Class 32 in connection with “non-alcoholic juice beverage, namely fruit juices.”  This application was abandoned in January 2005 after the PTO issued a final refusal because the alleged mark is merely ornamental and does not function as a trademark...

Bing! Information Design Ad Agency Sues Microsoft Over "Bing" Search Engine

Posted on December 22, 2009
Think this comes from Microsoft?Screen shot from ad agency Bing! Information Design’s Web site  Bing! Information Design, LLC, is suing Microsoft Corp. for trademark infringement over Microsoft’s use of BING as the name of its search engine...

AP Article Highlights Christian-Themed Trademark "Parodies"

Posted on December 20, 2009
From Abercrombie & Fitch to “Abreadcrumb & Fish”? One Christian marketing consultant calls it “Jesus junk.” It’s Christianizing a famous logo — Taking IPOD and turning it into IPRAY. It’s really called trademark infringement and trademark dilution...

Hearst Magazines Run Anti-Counterfeiting Ad Campaign

Posted on December 17, 2009
It’s uncool to buy knockoffs. That’s one of the messages in this month’s Esquire magazine. The ad text states: “Hearst Magazines salutes the Italian Intellectual Property Rights Office for its tireless campaign against counterfeiting...

The PRO-IP Act's First Year: Surprisingly, Investigations and Convictions Declined

Posted on December 16, 2009
All the way from Denmark, the Innovationpartners blog put me onto the Justice Department’s first annual report of the PRO-IP Act. Some may remember the Act’s 2008 enactment (STL posts here and here), which was aimed at slowing counterfeiters, copyright infringers, and other IP wrongdoers...

Revised Local Rules Now in Effect for Western District of Washington

Posted on December 14, 2009
As of Dec. 1, revisions to the Western District’s local rules are now in effect. (See handy redline version here.) Here are the highlights:  Motions to shorten time are abolished; Motions for relief from a deadline, for a protective order, and to seal are now heard on the second Friday after after filing and service of the motion; Except for good cause, motions in limine must be filed as one motion and be noted for consideration no earlier than the third Friday after filing the motion and no later than the Friday before any scheduled pretrial conference; Motions in limine must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties in an effort to resolve which matters really are in dispute; Motions for a protective order similarly must include a certification that the movant has in good faith conferred or attempted to confer with other affected parties; and A party moving for default must give the non-answering party 14 days’ notice if that party has filed a notice of appearance...

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