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Intellectual Property Law

Seattle Trademark Lawyer

Reports on trademark law developments from Seattle and beyond. Covers trademark infringement, dilution, cybersquatting, right to publicity, domain name disputes, and the like, with an emphasis on happenings in the Seattle area and Ninth Circuit.
By Michael Atkins

Post Frequency: 5.4/day

Last Entry: March 30, 2011 at 00:20:04

Obama Taps IBM Attorney to Lead Patent and Trademark Office

Posted on June 20, 2009
The White House June 18 announced its nominee for Under Secretary of Commerce for Intellectual Property and Director of the PTO: David J. Kappos. Mr. Kappos is Vice President and Assistant General Counsel, Intellectual Property Law for IBM Corp...

Bicycle Maker Sues Nutritional Supplement Maker Over "Kona" Brand

Posted on June 18, 2009
Plaintiff Kona USA, Inc., makes KONA-branded mountain bikes. Defendant DBM Nutrition makes KONA ENDURANCE-branded nutritional supplements. Apples and oranges, right? Not according to Kona USA — at least when DBM began sponsoring a bicycle racing team...

Seattle Seller of Leather Products Sues Scientist for False Advertising

Posted on June 17, 2009
“To call it ‘leather’ is outright deception, outright fraud.” Those are the words Seattle-based Design Resources, Inc., alleges Dr. Nicholas Cory said in Furniture Today about Design Resources’ NEXTLEATHER bonded leather products, which Design Resources claims amounts to false advertising, defamation, and product disparagement...

TTAB's Accelerated Case Resolution Procedures Probably Should Be Required

Posted on June 16, 2009
Trademark Trial and Appeal Board Chief Judge David Sams writes in today’s INTA Bulletin (password required) about the availability of TTAB’s new Accelerated Case Resolution (ACR) procedures. What is ACR? It’s the “TTAB initiative that provides parties to Board inter partes proceedings the opportunity to stipulate to final determination on the merits of cases at the pre-trial phase without the time or expense of a full trial...

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Ninth Circuit Amends Opinion on Tribal Court Jurisdiction in Trademark Case

Posted on June 14, 2009
On June 11, the Ninth Circuit amended its January 20 opinion (STL discussion here) in the case of Philip Morris USA, Inc. v. King Mountain Tobacco Co., Inc. The question was whether colorable tribal court jurisdiction existed over a non-tribe member’s trademark claims against tribal defendants for alleged passing off of cigarettes on the Internet, on another tribe’s reservation, and elsewhere...

Licensee Lacks Standing to Claim Common Law Trademark Infringement

Posted on June 11, 2009
Plaintiff trademark licensee Beijing Tong Ren Tang USA Corp. doesn’t have standing to assert a claim for common law infringement, the Northern District of California found on June 2. Therefore, the court granted defendant TRT USA Corp.’s motion to dismiss...

As a Litigator, Judge Sotomayor Handled Many Trademark Matters

Posted on June 10, 2009
Judging by her answers on the U.S. Senate Committee on the Judiciary’s Questionnaire for Judicial Nominees, Judge Sonia Sotomayor litigated an impressive amount of trademark issues. Here are some excerpts (with slight edits by STL): “I left the District Attorney’s office in 1984, and joined the firm of Pavia & Harcourt...

Failure to Defend Can Lead to Default and Finding Infringement was Willful

Posted on June 09, 2009
As STL discussed here, 15 U.S.C. § 1117(c) was amended last fall to double to $2 million the range of statutory damages if a defendant’s counterfeiting is found to be “willful.” So what’s willful? A magistrate judge in the Eastern District of California recently addressed this question in recommending the court award Microsoft Corp...

Does Artist Have Trademark Claim Against Bar Influenced by His Work?

Posted on June 08, 2009
The Slog raises an interesting issue. A local bar is about to open that reportedly was influenced by a work called “Ransom Note” by Seattle neon artist Jeremy Bert. The work spells out the words “Leave Nineteen Million Dollars in Unmarked Bills” (pictured above)...

Allied Sues Allied Over ALLIED

Posted on June 03, 2009
On May 19, Spokane-based Allied Safe & Vault Co., Inc., filed suit in the Eastern District against Otis Orchards-based Allied Fire Sprinklers, Inc., alleging that defendant’s use of “Allied” infringes plaintiff’s registered trademarks for ALLIED FIRE & SECURITY...

Fantastic Sams and Regis Settle Western District Trademark Dispute

Posted on June 02, 2009
Last May, Fantastic Sams Franchise Corporation filed a trademark infringement case in the Western District against Regis Corporation. It alleged that Regis converted several Seattle-area FANTASTIC SAMS salons into its own HAIRMASTER salons and caused a likelihood of consumer confusion when it failed to remove all of the FANTASTIC SAMS trademarks from the premises...

Expedia and Hotels.com Sue Priceline.com for False Advertising

Posted on June 01, 2009
On May 20, Bellevue-based Expedia, Inc. and Hotels.com, L.P. filed suit in the Western District against rival travel seller Priceline.com Inc. for false advertising. Plaintiffs claim Priceline.com “makes the unqualified claim that consumers can save ‘half off’ or ‘up to half off’ hotel prices with Priceline compared to Expedia and Hotels...

Western District Dismisses Defendant in Rockin' Perfume Trademark Dispute

Posted on May 28, 2009
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...

STL Spends Memorial Day Weekend in the "Other" Washington

Posted on May 26, 2009
Hope everyone had a great Memorial Day weekend. My wife and I spent four days after INTA unwinding (and not blogging) in Washington, D.C. Speaking of INTA, here are a few final thoughts: There’s a lot of information and fun in the INTA Daily News dispatches...

"Meet the Bloggers V": Fun was Had by All

Posted on May 19, 2009
Thanks to everyone who came to “Meet the Bloggers V” tonight at Graham & Dunn on Seattle’s beautiful waterfront. I, for one, had a blast! I know I’m missing some folks, but at a minimum we had trademark law bloggers and readers from France, Spain, England, China, Australia, New Zealand, Brazil, Germany, Canada, Finland, Switzerland, South Africa, the Netherlands, and many cities throughout the United States...

Harley-Davidson Tops List of Most Tattooed Brands in Australia

Posted on May 17, 2009
What a great idea. I only wish I’d thought of it. Nicholas Weston (home of the Australian Trade Marks Law Blog) has announced the results of its first-annual “Tattooed Brands” survey of the trademarks most found inked onto Aussies’ flesh...

See You at Meet the Bloggers V!

Posted on May 15, 2009
Trademark law bloggers and trademark law blog readers: Can’t wait to see you at “Meet the Bloogers V!” As a reminder, it’s on Monday, May 18, from 6-9 p.m. at Graham & Dunn, Pier 70, 2801 Alaskan Way, Suite 300, Seattle — just over one walking mile from the Washington State Convention and Trade Center...

Adidas Sues Topline over Stripes and Shoe Designs

Posted on May 13, 2009
Adidas’ 3-stripe “Superstar” shoe (left) and Topline’s allegedly infringing four-stripe shoe On May 11, Adidas America, Inc., filed a trademark infringement lawsuit in the Western District against Bellevue-based shoe maker The Topline Corporation...

STL's Guide to INTA Seattle - Part 3: Bars and Hotel Lobbies

Posted on May 12, 2009
Hopefully you’ve enjoyed the first two parts of STL’s biased and incomplete mini-guide to INTA-going Seattle: Part 1 - Breakfasts and Coffees, and Part 2 - Lunches and Dinners. Here’s the final installment, Part 3 - Bars and Hotel Lobbies...

STL's Guide to INTA Seattle - Part 2: Lunches and Dinners

Posted on May 11, 2009
Seattle’s a pretty good eating town, so INTA-visitors, you’re in for a treat. Here’s Part 2 of my mini-guide to Seattle for INTA attendees: Lunches and Dinners. Seattle is known for its fish, seafood, and Pacific Northwest take on world cuisine...

STL's Guide to INTA Seattle - Part 1: Breakfasts and Coffees

Posted on May 07, 2009
For those who are traveling to Seattle for INTA, there’s still a little time to plan. Have coffee booked with a foreign associate but don’t know where to meet? Leave it to STL. Here’s my biased and incomplete mini-guide to the best INTA breakfasts and coffee; lunches and dinners; and bars and hotel lobbies...

Landslide Article on the PRO-IP Act is the Best Summary Yet

Posted on May 06, 2009
I’ve talked before about the PRO-IP Act (signed Oct. 13, 2008), which amended the Lanham and Copyright Acts as part of Congress’ most recent attempt to crack down on counterfeiters and copyright infringers. On the trademark side of things, the Act doubled the range of statutory damages available in counterfeiting cases (to the range of $1,000 to $200,000 and up to $2 million if the counterfeiting is willful) and clarified that treble damages and an award of attorney’s fees are mandatory in willful counterfeiting cases regardless of whether the defendant is a direct, vicarious, or contributory infringer...

Guest Post: Bob Cumbow's Musings on Rescuecom Keyword Advertising Case

Posted on May 03, 2009
Following is a teaser guest post by my partner, Bob Cumbow (though this and the last paragraph are mine): For some time now, “keyword search advertising” has been a marketplace reality in the US. In the typical keyword search advertising situation, a search engine sells to an advertiser the right to have the advertiser’s ad or sponsored link appear whenever a user of the search engine inputs a particular search term...

InsideCounsel Reports on Contrasting BlockShopper and Dozier Linking Lawsuits

Posted on April 29, 2009
InsideCounsel always seems to have a good trademark story. The May issue is no exception. There’s a good recap of the Jones Day v. BlockShopper hyperlinking-is-trademark-infringement lawsuit, including a nice quote from University of Michigan Professor Jessica Litman: “If it had gone to trial, BlockShopper would have won...

Upcoming Talk: How Bands Should Protect Their Brand

Posted on April 28, 2009
I’m working on a talk I’m giving on Wednesday: “Bands & Brands: Essential Trademark Law for Musicians.” It’s long been an interest of mine but the first time I’ll be presenting on the subject. Here’s a rough outline of my plan: Trademark basics Searching and clearing trademarks Ownership issues Licensing essentials Right of publicity Trademark protection strategies The talk is sponsored by the Washington Lawyers for the Arts...

If You Ask Me, Wineries Still Have a Lot to Learn About Branding

Posted on April 21, 2009
Five wines among many at Seattle’s Roosevelt Safeway I’m no marketing expert. But when you think of trademarks, isn’t the whole point to enable a consumer to purchase from you again if she liked what she purchased last time? Wineries are starting to learn this lesson, but in my book they have a long way to go...

Gallo Sues Seattle Retailer for Selling Spanish-Made Gallo-Branded Pasta

Posted on April 21, 2009
On April 13, E. & J. Gallo Winery filed a trademark infringement suit in the Eastern District of California against Seattle-based speciality food store The Spanish Table, Inc. (which also has stores in Santa Fe, Berkeley, and Mill Valley, Calif...

Seattle Sounders FC Uses Space Needle Design in Its Logo

Posted on April 19, 2009
Seattle Sounders FC’s logo, with Space Needle Corporation’s registered design marks The new Seattle Sounders FC is the hottest ticket in town. Seattleites could watch Saturday’s 2-0 loss to L.A.’s Chivas USA on local television no less than three times (and I caught parts of all three)...

Annual Western District CLE Scheduled for May 1

Posted on April 16, 2009
This year’s Annual District CLE looks promising. It will include a report from Western District federal judges on the state of the court in the Western District as well as an update about the Ninth Circuit from the newest member of that bench, Circuit Judge N...

Western District Remains Strict in Considering Stipulated Protective Orders

Posted on April 14, 2009
When it comes to protective orders, Seattle courts are stricter than most. As previously noted, this includes the Western District. On April 7, Western District Judge Benjamin Settle illustrated this bent when he denied the parties’ stipulated protective order in the trademark infringement case of American Automobile Association v...

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