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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

Oregon Jury Awards $305 Million to Adidas for Payless Shoe Infringement

Posted on May 07, 2008
On May 5, a nine-person jury in the District of Oregon found Payless Shoesource, Inc., liable for infringing Adidas America, Inc.’s three-stripe trademark and awarded Adidas $305 million. The jury found Payless infringed or diluted Adidas’ mark or trade dress by using a two- and four-stripe logo on its competing athletic shoes...

Fantastic Sams Sues Rival Regis for Not Removing Trademarks from Premises

Posted on May 07, 2008
On May 5, hair salon franchisor Fantastic Sams Franchise Corp. filed suit in the Western District against rival hair salon franchisor Regis Corp. and other defendants. Fantastic Sams alleges that Regis convinced the corporation that owned the right to develop and grant third parties FANTASTIC SAMS franchises in the Seattle-Tacoma market to sell its salons to Regis...

Domain Name Misappropriation Case Set for Trial in the Western District

Posted on May 06, 2008
The case between a Seattle law firm and its Web development vendor goes to jury trial on May 21. STL readers may recall that the Seattle-based law firm The Christensen Firm sued Chameleon Data Corp. and its president, Derek Dohn, on the ground that defendants allegedly transferred ownership of plaintiff’s four domain names (thechristensenfirm...

Summit Capital Dismisses Declaratory Judgment Action Against Summit Partners

Posted on May 04, 2008
As STL readers may recall, on Dec. 28 Seattle-based Summit Capital Group, LLC, and affiliated financial services companies filed suit in the Western District against the Boston-based Summit Partners, LP, venture capital firm, seeking a declaration of non-infringement and non-dilution of the defendant’s SUMMIT PARTNERS trademark...

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Mark Your Calendar for "Meet the Bloggers IV" at INTA in Berlin

Posted on May 02, 2008
“Meet the Bloggers IV” at Potsdamer Platz 1, Berlin, GermanyOrganizer Jeremy Phillips of IPKat fame has given his fellow trademark bloggers the green light to spread the word. So, mark your calendars: the fourth annual “Meet the Bloggers” reception at the International Trademark Association’s annual meeting will be held from 8:30 to 10:30 p...

More Background on Washington's Amended Right of Publicity Statute

Posted on April 30, 2008
For those attending tomorrow’s discussion on Washington’s amended right of publicity statute, I thought I’d add some more background (STL post about the gathering here). In particular, here’s a cheat sheet on the amendment I cribbed from the the House Bill Report’s summary of the amendment:”When ApplicableThe provisions of the bill apply to all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose...

How to Find the Right Expert Witness for Your Trademark Case (Part 2)

Posted on April 27, 2008
STL’s previous post offered some strategies for finding the right expert witness in trademark cases. On Friday, the Las Vegas Trademark Attorney blog added a few suggestions, including the following: “One popular online source is the online expert witness directory JurisPro...

How to Find the Right Expert Witness for Your Trademark Case

Posted on April 24, 2008
Expert witnesses can be hugely important in trademark cases. Particularly through survey evidence, they can help establish if a mark is generic (and hence unprotectable); that a descriptive mark has acquired secondary meaning (and therefore is protectable); that a mark has actually confused or is likely to confuse consumers with another mark; that a mark is famous; and that one user’s mark is likely to cause dilution by blurring or dilution by tarnishment...

KCBA Members to Discuss Amendments to Right of Publicity Statute

Posted on April 23, 2008
Still wondering about the new amendments to Washington’s right of publicity statute? You don’t have to be alone. On May 1, the King County Bar Association’s Intellectual Property Section will host a brown-bag lunch program on “Emerging Issues in Right of Publicity Law...

Seattle-Based McSweet Faces McDonald's in TTAB Opposition Proceeding

Posted on April 21, 2008
On Friday, the Puget Sound Business Journal ran a story about a Trademark Trial and Appeal Board case involving Maple Valley, Wash.-based McSweet LLC. McSweet, which has sold MCSWEET-branded pickled cocktail onions for almost 20 years, decided to apply to register its mark with the Patent and Trademark Office...

Two More Regional Trademark Law Blogs Worth Checking Out

Posted on April 20, 2008
I think it’s a great model. Pick a geographic region, and try to cover it well. In recent weeks I’ve come across two regional trademark law blogs that embrace this approach. Both are well worth checking out. First is the Maryland Intellectual Property Law Blog...

Unscrupulous Companies Target Unsuspecting Trademark Owners

Posted on April 16, 2008
This morning, a client forwarded me an email it received from a company ostensibly doing business in China. The email read as follows:RE: Intellectual property rightsDear CEO,We are the domain name registration organization in Asia, which mainly deal with international company’s in Asia...

Ninth Circuit Finds Counterfeiting Constitutes Crime of Moral Turpitude

Posted on April 15, 2008
Senegal citizen Elimane Tall got involved in counterfeiting. In 2003, he pled guilty to one count of “counterfeit of a registered mark” in violation of California Penal Code § 350(a)(2), which imposes criminal penalties on any person who “willfully manufactures, intentionally sells, or knowingly possesses for sale any counterfeit of a mark registered with the Secretary of State or registered on the Principal Register of the United States Patent and Trademark Office…” In 2004, Mr...

Five-Year Delay May Cut Off Trademark Infringement Damages, But Not Claim

Posted on April 14, 2008
In Sonoma Foods, Inc. v. Sonoma Cheese Factory, LLC, plaintiff cheese maker sued defendant cheese maker in the Northern District of California. At issue was Sonoma Cheese Factory’s use of Sonoma Foods’ registered trademarks, SONOMA CHEESE FACTORY and DESIGN and SONOMA JACK (the “Bull Trademarks”), allegedly constituting infringement and a false description or passing off...

Peso's Sues Matador in Rare Seattle Restaurant Trade Dress Case

Posted on April 11, 2008
The owner of Peso’s Kitchen and Lounge (top) has sued the owner of The Matador restaurant for trade dress infringement, including themetal work shown above, allegedly made by the same designer.Last year, El Diablo, Inc. filed suit for trade dress infringement in King County Superior Court against Mel-Opp & Griff LLC and other defendants alleging confusing similarity between the look-and-feel of the parties’ competing Mexican/Tex-Mex restaurants and bars...

Yacht Maker Sues Competitor Over ALEUTIAN Trademark

Posted on April 08, 2008
On April 2, Seattle-based Grand Banks Yachts Pte. Ltd. filed a trademark infringement suit in the Western District against Tacoma-based Aleutian Yachts, LLC. At issue is the parties’ use of ALEUTIAN in connection with their competing yacht building businesses...

No, Right of Publicity Statutes Prevent You from Using Britney's Face

Posted on April 04, 2008
In the wake of American Apparel’s billboards featuring Woody Allen, and Mr. Allen’s lawsuit in response thereto, Mainstreet.com asks, “Can You Use Britney’s Face To Promote Your Bake Sale?” The short answer is no, not without her permission...

30 Years of Seattle Mariners Trademarks

Posted on April 02, 2008
As I write this, the Seattle Mariners are 1-0 in the 2008 season. At this rate, they’ll not only make the playoffs for the first time in seven years — they’ll win the World Series with an undefeated record. Ah, the optimism a new season brings...

Ninth Circuit Finds Endorsement No Reason to Dismiss Advertising Injury Case

Posted on April 01, 2008
Ex-members of The Doors and surviving relatives of Jim Morrision sued Ray Manzarek, a founding member of The Doors, and Doors Touring, Inc., in two lawsuits, alleging that Mr. Manzarek and his new band were liable for infringing THE DOORS name, trademark, and logo in conjunction with their planned national and international tours...

Hazelden Band Name Dispute Pits Drug Treatment Center Against Indie Rockers

Posted on March 31, 2008
This month, Los Angeles-based indie rock band Hazelden received a cease-and-desist letter from the Minnesota-based drug and alcohol treatment center of the same name. The Hazelden Foundation claims the band has infringed and diluted its HAZELDEN family of registered trademarks...

Derek Andrew Settles TWISTED HEART Suit with Chrome Hearts

Posted on March 26, 2008
In November 2007, Bellevue-based clothier Derek Andrew, Inc., filed suit against California-based jeweler and clothier Chrome Hearts, Inc. Derek Andrew sought a declaratory judgment from the Western District that its TWISTED HEART line of clothing does not infringe Chrome Hearts’ CHROME HEARTS registered fleur de lis design marks, among other claims...

Derek Andrew Settles TWISTED HEART Trademark Suit with Chrome Hearts

Western District Finds Lanham Act Claim Deficient But Allows it to be Amended

Posted on March 23, 2008
In the Western District case of Teragren, LLC v. Smith & Fong Co., the parties are competing bamboo floor paneling processors. Smith & Fong responded to Teragren’s complaint for patent infringement by asserting six counterclaims, including that Teragren was liable for making false statements that amounted to unfair competition prohibited by the Lanham Act...

Western District: Read the Local Rules, then Seek a Settlement Judge

Posted on March 19, 2008
The parties in Carey Licensing, Inc. v. Sandler have had a little trouble trying to book a Western District magistrate judge for a settlement conference in their trademark infringement and cybersquatting case. But as the Western District reminded them this week, magistrate judges don’t participate in settlement conferences — only parties do...

Champagne Region Expands in Order to Expand Vintners' Profits

Posted on March 18, 2008
Champagne sparkling wine only comes from the Champagne region of France, right? Until the Champagne region of France moves, that is. The Institut national de l’origine et de la qualite, which governs the Appellation d’Origine Controlee designation for Champagne, is set to expand the appellation’s boundaries, which currently spans 319 villages in north-eastern France...

Federal Courts Release Report on 2007 Case Statistics

Posted on March 17, 2008
Last week, the Administrative Office of the United States Courts released its annual report on the “Judicial Business of the United States Courts.” There’s a lot of statistical information in there. Most is organized by judicial district, but some is broken down into both case area and judicial district...

Infringement Safari: Seattle

Posted on March 16, 2008
Apple’s iPod ad campaign has been copied and spoofed dozens of times. Nonetheless, Apple can’t be too happy about San Francisco-based Specialty’s Cafe and Bakery’s latest ads. I saw this placard yesterday in downtown Seattle...

Does ZOVA for Women's Apparel Infringe ZOVO for Lingerie?

Posted on March 12, 2008
On March 7, Seattle-based Zovo Lingerie Co., LLC, filed a trademark infringement suit in the Western District against DHM Enterprises and Deanna Hodges, collectively doing business as Zova LA. At issue is whether defendants’ ZOVA and ZOVA LA trademarks are likely to confuse consumers with plaintiff’s registered ZOVO and ZOVO LINGERIE marks...

Trademark Claim Winner Not a Prevailing Party Against Association

Posted on March 11, 2008
Even though MONY Life Ins. Co. prevailed in its counterclaim to cancel Van Well Nursery, Inc.’s trademark registration, on March 10 the Eastern District of Washington found it was not a prevailing party in its third party action against the National Licensing Association, of which Van Well Nursery is a member...

Signs of Confusion

Posted on March 10, 2008
Paid for by Concerned Citizens for a Better America? Photo credit: Monica Guzman/Seattle P-IThe Seattle Post-Intelligencer’s Big Blog last week reported on some controversial political billboards popping up around Seattle. The ads say they’re paid for by “Concerned Citizens for a Better America...

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