Seattle Trademark Lawyer

Every party filing a new trademark lawsuit must complete “Form AO 120,” titled, “Report on the Filing or Determination of an Action Regarding a Patent or Trademark.”

The form asks the plaintiff to provide information about the trademark at issue in the suit, including its “date.”

I’ve gotten a couple questions about what date this refers to. The form doesn’t say.

However, the form’s existence springs out of 15 U.S.C. § 1116(c), which states:

“It shall be the duty of the clerks of such courts within one month after the filing of any action, suit, or proceeding involving a mark registered under the provisions of this chapter to give notice thereof in writing to the Director setting forth in order so far as known the names and addresses of the litigants and the designating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought…”

This suggests the date the form asks for is the date the mark was registered.

So what if the mark isn’t registered? The clerk of court will probably require the plaintiff to fill out Form AO 120 anyway. In that case, I think the best practice would be to provide the date any application to register the mark was filed.  Or, if the plaintiff has not filed such an application, to provide the mark’s first-use date. Neither are strictly required by the statute, but providing such dates should satisfy the clerk and appraise the PTO of the pending action.

Fat Cat Mustard, LLC, sued Fat Cat Gourmet Foods, LLC, for trademark infringement in the Western District at Tacoma.

The case isn’t staying here.

On November 2, Judge Benjamin Settle dismissed the suit because the defendant did not have the required “minimum contacts” with this district to make personal jurisdiction constitutionally fair.

In support of its motion to dismiss, Gourmet’s managing member filed a declaration stating its records only revealed one shipment to Washington, which she said was made because a Florida customer did not want to travel with the bottle on her way to Washington.

The court found that was not enough to support personal jurisdiction.

“In this case, Mustard asserts that the Court has specific jurisdiction based on Gourmet’s and Gourmet’s distributors’ websites, the shipment of one jar of sauce to Washington, and Gourmet’s cease and desist letters. With regard to the websites, it appears to be uncontested that individuals in Washington could access a website and order Gourmet’s products. Mustard, however, has failed to even allege that any individual in Washington has completed such a transaction. Therefore, Mustard is required to show ‘something more.’ See Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155–1159 (9th Cir.2006). Mustard offers the letters and the shipment as the ‘something more.’

“First, the cease and desist letters are not ‘something more.’ Mustard has failed to show that the letters caused any harm whatsoever. Moreover, Mustard fails to cite any authority for its proposition that a federally granted property right, such as a trademark, subjects the owner to personal jurisdiction in every forum in which the right may be enforced.

“Second, Mustard misconstrues Gourmet’s transaction. [Gourmet’s managing member] declares that the purchaser was a ‘Florida customer’ who requested that the bottle be shipped to Washington ‘so she didn’t have to travel with it.’ This does not show that Gourmet ‘engaged in commercial activity in Washington’ as Mustard contends. Therefore, based on the record before the Court, Mustard has failed to show that Gourmet ‘purposely availed itself of the privilege of conducting activities in’ Washington.”

The court found the other elements needed to establish personal jurisdiction were similarly lacking.

“In this case, Gourmet has made a compelling case that the exercise of jurisdiction would be unreasonable. Gourmet’s interjection into Washington is de minimus, if any purposeful interjection exists at all. Being a Florida based corporation, Gourmet would suffer a significant burden defending itself in Washington. The parties concede that there is no conflict between Washington and Florida. Washington has no interest in adjudicating the propriety of a non-resident company’s trademark when there is no evidence that a sale was actually consummated in Washington or that there is a likelihood of confusion by Washington consumer. Neither forum appears to be the most efficient for judicial resolution because it does not appear that the parties compete in either Florida or Washington. While Washington may be a more convenient forum for Mustard, it has failed to show that Gourmet purposely interjects itself into Washington and causes harm. Finally, alternative forums exist if either party chooses to bring the action where the defending party is subject to personal jurisdiction. Therefore, the Court finds that Gourmet has shown that it would be unreasonable for the Court to assert personal jurisdiction in this matter.”

The case cite is Fat Cat Mustard, LLC v. Fat Cat Gourmet Foods, LLC, No. 12-5663, 2012 WL 5389149 (W.D. Wash. Nov. 2, 2012) (Settle, J.).

Last week, I spoke on a panel addressing “Hot Topics in International IP Law” as part of a program sponsored by the outstanding Seattle IP Inn of Court. My piece was about obtaining service of process under the Hague Convention.

The long and the short of it is, the Hague Convention is a treaty through which U.S. plaintiffs can arrange for the service of process on foreign defendants (that reside in one of the many countries that have signed the treaty) by sending a request for service to that country’s “Central Authority,” a clearinghouse for arranging for service of process on its citizens in foreign lawsuits. The Central Authority then sends the papers to the defendant’s local court, which arranges to serve them on the defendant, often by the local police.

Service of the summons and complaint is a crucial piece of U.S. civil procedure because without it, a plaintiff can’t join the defendant in the lawsuit or seek a default judgment if the defendant does not participate in the case.

My slides are available here. The main take-away is that Hague Convention service through foreign country’s Central Authority is slow — it takes six months or more, so it pays to plan ahead. This time lag can be particularly painful in counterfeiting or trademark infringement cases because U.S. courts are loathe to order injunctive relief against a party that has not been served. That can mean enduring months of continuing infringement before Central Authority service is effected. Central Authority service also isn’t currently available on Russian defendants because of a dispute between the U.S. and Russia. Otherwise, it often is the best means to effect service on a foreign defendant that resides in one of the many countries that have signed the treaty.

If the court’s jury instructions aren’t correct, the verdict that follows can’t stand.

That’s the principle the Ninth Circuit applied last week in Neurovision Med. Products Inc. v. NuVasive, Inc., a trademark infringement case in which the jury awarded Neurovision $60M.

The basis for the jury’s finding was that NuVasive committed fraud in procuring its trademark registrations, that Neurovision had prior rights in its trademark, and that NuVasive willfully infringed Neurovision’s trademark rights. At issue were the parties’ competing rights to NEUROVISION as a trademark.

The Ninth Circuit found the jury’s verdict that NuVasive fraudulently obtained its trademark registrations must be vacated because the Central District of California erroneously instructed the jury as to the elements needed to prove fraud on the U.S. Patent and Trademark Office. Such proof requires a “material misrepresentation in the affidavit on the basis of which the mark was registered.” Pony Express Courier Corp. of Am. v. Pony Exp. Delivery Serv., 872 F.2d 317, 319 (9th Cir. 1989).

The court noted: “There is no requirement that an applicant for a trademark registration disclose all prior use of a mark, contrary to the district court’s instruction. Instead, an applicant must disclose only those prior users that the applicant believes have acquired superior rights to the mark in the classification for which registration is sought. The district court erred by instructing the jury to determine only whether NuVasive omitted knowledge of [Neurovision’s] prior use of the NEUROVISION mark; the proper inquiry is whether NuVasive wilfully omitted knowledge of a superior right held by [Neurovision]. Moreover, the district court erroneously omitted from the jury instructions a key element of proving fraud on the USPTO: that a trademark applicant intend to induce reliance on a misrepresentation.”

The Ninth Circuit also found the district court erred in instructing the jury about what was required to challenge an incontestable trademark.

“The judgment below must be vacated because the district court instructed the jury to answer only whether [Neurovision] ‘establish[ed] trademark rights in the mark ‘NEUROVISION’ through prior use of the mark in commerce,’ and failed to require that the jury determine both the geographic scope of [Neurovision’s] rights and whether [Neurovision] maintained continuous use of the mark following the acquisition of any state law rights in the mark.”

Because it found the district court had “ignored our precedent, persistently cut off or excluded relevant testimony, and repeatedly instructed the jury incorrectly,” the Ninth Circuit took the unusual position of requiring that the case be reassigned to a different judge on remand.

The case cite is Neurovision Med. Products Inc. v. NuVasive, Inc., No. 11-55120, 2012 WL 3900682 (9th Cir. Sept. 10, 2012).

Another special motion to strike granted against a plaintiff claiming false advertising, deceptive practices, or commercial defamation. This is threatening to become a trend. (See STL’s posts here and here about similar outcomes in two other cases.)

No question about it — those who practice in the trademark or false advertising space need to pay attention to the recent expansion of Washington’s anti-SLAPP statute aimed at protecting against Strategic Lawsuits Against Public Participation, codified at RCW 4.25.525.

Last week, Western District Judge Ricardo Martinez granted the attorney rating company Avvo, Inc.’s special motion to strike false advertising and deceptive practice claims that Florida health lawyer Larry Joe Davis, Jr., brought after receiving a call from a prospective client who told him he was the “lowest rated employment lawyer” on Avvo, so she assumed he would be “desperate for employment.” Mr. Davis told the caller he was a health lawyer — not an employment lawyer — and declined to undertake the representation. After the call, Mr. Davis saw that Avvo’s Web site depicted his practice area as “100% employment/labor law.”

Mr. Davis sued Avvo in Florida state court; Avvo removed the case to the Middle District of Florida; and Avvo succeeded in getting it transferred to the Western District of Washington. After amending his complaint three times, Mr. Davis stated three causes of action under Florida law relating to the alleged misrepresentations, which the Western District construed as asserting similar claims under Washington law.

In response to Avvo’s special motion to strike that the anti-SLAPP statute authorizes, Mr. Davis specified that Avvo intentionally misrepresented his practice area to induce him to register on the Web site to correct the misrepresentation, and that Avvo induces lawyers to purchase a “Pro” membership in order to prevent competitor’s ads from appearing on their profile pages.

The court rejected his claims, finding they lacked “clear and convincing” evidence the statute required after Avvo established the claims were based on an action involving public participation or petition in an issue of public concern.

“Plaintiff has presented no evidence, let alone clear and convincing evidence, to demonstrate that there is any probability of prevailing on his [Washington Consumer Protection Act] claim,” the court found. “He points to no evidence in the record to support the conclusory allegations regarding Avvo’s advertisements. Indeed, he has provided no evidence at all; he has merely ‘verified’ the allegations set forth in his Third Amended Complaint. A complaint is not evidence. … Instead of presenting an affidavit, plaintiff asserts in his response that ‘[i]f one were to search on Avvo for a particular well-known lawyer, such as a well-known Board Certified Health Lawyer, when one is directed to that lawyer’s page, one would likely see an advertisement for a competing lawyer, as Plaintiff did in August 2010, which competing lawyer has paid Avvo to have that ad placed on the listed lawyer’s page.’ These speculations as to what ‘one would likely see,’ are not evidence. Nor has plaintiff alleged how this allegedly deceptive act of Avvo induced him to act or refrain from acting in some special manner, so as to establish causation for his loss.”

Based on that finding, the court granted Avvo’s motion, dismissed Mr. Davis’ claims, imposed the statutory $10,000 penalty, and stated it would award Avvo’s reasonable attorney’s fees.

GeekWire discussion of the decision here.

The case cite is Davis v. Avvo, Inc., No. 11-1571 (W.D. Wash. March 28, 2012) (Martinez, J.).