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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

Los Angeles Times Features Investigator of Counterfeit Jeans

Posted on September 06, 2008
The Los Angeles Times today features an LA-based lawyer on the hunt for fake designer jeans. The lawyer likens his job to playing “Whac-a-Mole.” The statistics bear that out: the International Anticounterfeiting Coalition estimates the global trade in counterfeit goods has grown from $5...

New York Times Discusses Trends in Trademark Filings

Posted on September 03, 2008
Back from a few days in the cool city pictured above, I came across a Sept. 1 New York Times story on trademark filings with the U.S. Patent and Trademark Office. The gist is the Web is driving marketing, so it’s also driving brands...

Current "Olympic" Naming Problem Was Foreseeable in 1998

Posted on August 27, 2008
Why didn’t Washington State’s Congressional delegation prevent the Ted Stevens Olympic and Amateur Sports Act from granting a monopoly over the word “Olympic” without carving out a broader exception for Washington-based Internet sales? That’s the question Seattle-area blogger Trish Wareing recently asked...

AAA Sues AAA over AAA

Posted on August 26, 2008
On Aug. 22, the American Automobile Association filed a trademark infringement suit in the Western District against Tacoma-based AAA Insurance Inc. The mark at issue? Take a wild guess. Plaintiff registered AAA as a trademark in 1967 for “automobile association services”; AAA LIFE INSURANCE COMPANY in 1978 for “underwriting of life and accident services”; AAA GUARANTEED LIFE in 1989 for “life insurance underwriting services”; and AAA and Design in 1998 for “adjusting and collecting insurance damage claims” and “insurance brokerage services...

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The Doors of the 21st Century Must Pay Damages for Using The Doors Name

Posted on August 26, 2008
On Aug. 13, the California Supreme Court declined to consider an appeal involving ex-members of The Doors and the damages they were found to have caused by touring in 2003 as The Doors of the 21st Century, Law.com reports. The article states the decision (or lack thereof) cemented the $3...

Chrysler's Ad Tells Consumers Its JEEP SUVs Are Special, Not Generic

Posted on August 24, 2008
My reading isn’t exactly up to date. Yesterday I came across this ad in the Sept. 17, 2007, issue of The New Yorker. The text reads: “They invented ‘SUV’ because they can’t call them Jeep�. “Jeep is a registered trademark...

Ninth Circuit Finds Contempt Order Not Immediately Appealable

Posted on August 22, 2008
On Aug. 20, the Ninth Circuit decided Koninklijke Philips Electronics, N.V. v. KXD Technology, Inc., involving the appealability of a contempt order stemming from the violation of a temporary restraining order and preliminary injunction. The District of Nevada granted the plaintiff injunctive relief enjoining the defendants from selling any product that infringed the plaintiff’s registered trademarks...

Microsoft Settles with Alleged Australian Cybersquatters

Posted on August 19, 2008
In April, Microsoft Corp. sued Trellian Pty. Ltd. of Australia and other defendants in King County Superior Court for cybersquatting, trademark infringement, false designation of origin, and other trademark claims related to the defendants’ alleged registration of domain names that are identical or confusingly similar to Microsoft’s trademarks...

Trafficking in Counterfeit Labels Renders Alien Inadmissible to Stay in United States

Posted on August 18, 2008
On Aug. 6, the Ninth Circuit concluded that willingly trafficking in counterfeit goods constitutes “inherently fraudulent” conduct that renders an alien ineligible for a visa to remain in the United States. Mr. Hung Lin Wu, a 45-year-old permanent resident of the United States and citizen of Taiwan, pleaded guilty to trafficking in counterfeit labels...

Beware of Official Looking Trademark Monitoring Services

Posted on August 18, 2008
I’ve written about deceptive pitches to trademark applicants and registrants in the past. I came across another one today. Or, rather, my client did. My client, a small business owner, has a few pending applications that have just cleared examination and are about to be published...

Mind the Requirements Contained in Routine Orders

Posted on August 15, 2008
On August 14, Western District Judge Robert Lasnik on his own initiative ordered the defendant in a trademark and cybersquatting case to show cause why it should not be sanctioned for failing to comply with two court orders. The orders? The court’s scheduling order and its order regarding initial disclosures, joint status report, and early settlement...

Lawsuit Alleges Joint Trademark Ownership Indicates Band's Partnership

Posted on August 13, 2008
Ex-Sugarland founder Kristen Hall has sued her former band mates Jennifer Nettles and Kristian Bush. Her complaint, filed July 29 in the Northern District of Georgia, alleges claims for breach of an unwritten partnership agreement in which each member agreed to share equally in the country group’s profits and losses...

"Marketplace" Radio Show Features Summertime Trademark Dispute

Posted on August 12, 2008
Tonight’s “Marketplace” show on NPR (one of my favorites) featured a summertime trademark dispute I couldn’t pass up: Mister Softee cracking down on ice cream truck copycats. (Audio and transcript here.) Turns out there are lots of ice cream trucks out there with the same blue-and-white colors, stylized graphics, and jingle that bring Mister Softee to mind...

Western District Finds HENDRIX ELECTRIC Infringes Hendrix Company's Trademarks

Posted on August 09, 2008
The maker of HENDRIX ELECTRIC vodka infringes three JIMI HENDRIX trademarks owned by the licensing company that controls the late musician’s marks. That’s what Western District Judge Thomas Zilly found in his August 7 order on the parties’ cross-motions for summary judgment in Experience Hendrix, LLC v...

Court Finds Lessened Standard No Excuse for Delaying Dilution Suit

Posted on August 06, 2008
The July 29 Hobbit Travel decision, which the Las Vegas Trademark Attorney discusses comprehensively here, is of particular interest to STL for its treatment of laches in the context of dilution. (STL digs dilution cases.) In Saul Zaentz Co...

Seattle Post-Intelligencer Interviews "Spam King" Robert Soloway

Posted on August 05, 2008
The Seattle Post-Intelligencer today ran a great feature arising out of “Spam King” Robert Soloway’s first local interview. The paper portrayed Mr. Soloway’s story as one of rags-to-riches-to-rags. He suffers from Tourette’s syndrome and was the unpopular kid in high school...

What's the Plural Form of a Trademark?

Posted on August 04, 2008
What’s the plural form of a trademark? That’s what a reader recently asked a (non-lawyer) blogger with respect to her BLUETOOTH headsets: “What’s the plural form of ‘bluetooth’ now that I have two of them?” Trick question, of course...

Plaintiffs Didn't Show Bad Faith Needed for Malicious Prosecution Claim

Posted on August 02, 2008
I can’t summarize the facts any better than Chief Judge Alex Kozinski did the Ninth Circuit’s June 30 decision in Fisher Tool Co., Inc. v. Gillet Outillage: “Defendant Gillet Outillage is a French company that makes hose clamp pliers; it owns French and U...

Records Show Starbucks Hasn't Yet Opposed Rollergirls' Logo

Posted on July 31, 2008
I hope I’m not jumping the gun here, but it looks like Starbucks Corp. isn’t opposing the Rat City Rollergirls’ application to register its logo as a trademark after all. In May, STL reported (among others) that Starbucks had filed for an extension of time to oppose the Seattle roller derby league’s application through July 16...

King County Superior Court Sends Local Trade Dress Dispute to the Jury

Posted on July 30, 2008
Restaurant wars: The owner of Peso’s (left) has sued the owners of The Matador over trade dress, dilution and other issues. As STL readers may recall, El Diablo, Inc., and its owner sued Mel-Opp & Griff, LLC, and others in King County Superior Court for trade dress infringement, dilution, and other claims relating to the parties? competing Tex-Mex restaurants and bars...

Olympic Cellars and USOC Settle "Olympic" Trademark Dispute

Posted on July 30, 2008
The Seattle Times reported yesterday that the United States Olympic Committee and the Olympic Peninsula’s Olympic Cellars Winery have entered into a settlement in which the winery will keep its “Olympic” name and domain name on the condition that its “wine sales east of the Cascade Mountains are not ‘substantial...

Payless Shoesource's Insurer Balks at Paying $305M Verdict

Posted on July 28, 2008
As the Trademark Blog reports, American Guarantee & Liability Insurance Co. is balking at the prospect of paying any part of the $305M judgment Adidas America, Inc., obtained against Payless Shoesource, Inc., earlier this year. The insurer filed suit on July 24 in the District of Kansas for a declaration that it is not liable under any of its policies...

New Trademark Filings Suggest New Team Won't Be Called "Supersonics"

Posted on July 27, 2008
Forget the Oklahoma City Supersonics, thank goodness. The team’s new owners abandoned their intent-to-use applications for those trademarks less than one week after filing them. (Previous STL discussion here.) What now appears to be in play is the Oklahoma City Barons, Bison, Energy, Marshalls, Thunder and Wind...

Law Firm Appeals in Chameleon Data Cybersquatting Case

Posted on July 25, 2008
On July 22, the unsuccessful plaintiff law firm filed a notice of appeal to the Ninth Circuit in The Christensen Firm v. Chameleon Data Corp. The appeal identifies five alleged errors, including the Western District’s dismissal of its cybersquatting claim against the defendant Web development firm with whom plaintiff contracted, the court’s rulings relating to the parties’ jury trial, and the court’s denial of plaintiff’s motion for a new trial...

Please Bear with the Technical Difficulties

Posted on July 22, 2008
Pages aren’t looking right and are loading slowly. Sorry about that. My people are on it, or so they say. Thanks — I hope things will be back to normal soon.

Is State Trademark Registration Appropriate for Your Mark (Part 2)?

Posted on July 22, 2008
Yesterday’s post looked at the advantages of state trademark registration. Indeed, registration at the state level offers many advantages over common law protection and sometimes even over federal protection. Yet, dollar-for-dollar, most trademark owners get the most benefit out of federal registration...

Seattle's "Spam King" Sentenced to Four Years

Posted on July 22, 2008
Since Spam Notes’ Venkat Balasubramani is temporarily off the grid, I’ll pinch hit for him by mentioning that Robert Soloway — Seattle’s very own “Spam King” — was sentenced today. Western District Judge Marsha Pechman gave him 47 months...

Is State Trademark Registration Appropriate for Your Mark (Part 1)?

Posted on July 20, 2008
Don’t buy more than you need. For some trademark owners, getting a state registration is just as good as — and sometimes better than — getting a federal registration issued by the U.S. Patent and Trademark Office. This post summarizes the advantages of state rather than federal registration...

Interesting Remedy for Trademark Infringement in China: An Apology

Posted on July 16, 2008
I’ve read a little about the trademark infringement lawsuit that Japanese cosmetics giant Shiseido Co. Ltd. filed against alleged copycats in China. Apparently, a decision is due from the Pudong New Area People’s Court any day now. According to one article, Shiseido alleged that defendants Li Wei and Ma Yan, and their companies Shanghai Jingdian Cosmetic Co...

New Team Owner Files ITU Applications for OKLAHOMA CITY SUPERSONICS

Posted on July 15, 2008
As sports fans everywhere know, after 41 years, Seattle has lost its beloved basketball team. The one thing that seemed right about the City of Seattle’s settlement with Clay Bennett’s Professional Basketball Club, LLC — the group that bought the team and then moved it to Oklahoma City — was that the Sonics’ name and legacy was supposed to stay here in Seattle...

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