Seattle Trademark Lawyer

Courts don’t award attorney’s fees that often in trademark cases.

That’s because the statute only authorizes fees awards in “exceptional” cases.

So what’s that mean?

The Ninth Circuit recently reviewed the standard. “Under the Lanham Act, ‘[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.’”

For the plaintiff, “[a]n exceptional case is one ‘where the acts of infringement can be characterized as ‘malicious’, ‘fraudulent’, ‘deliberate’, or ‘willful.’” For the defendant, “’[e]xceptional circumstances can be found when the non-prevailing party’s case is groundless, unreasonable, vexatious, or pursued in bad faith.’”

The court added that ”’[w]hile a finding that the losing party has acted in bad faith may provide evidence that the case is exceptional, other exceptional circumstances may warrant a fee award.’”

The court didn’t offer much analysis in upholding the district court’s award to the prevailing plaintiff. It just said that “[c]onsidering all of the circumstances of this case, including the jury’s verdict, we agree with the district court that the threshold standard for awarding fees has been met, and further that the district court did not abuse its discretion in awarding attorneys’ fees.”

A little more explanation would have been nice. However, trademark owners still have an important take-away from the decision: it’s important to know the court’s standards when seeking or defending against a claim for attorney’s fees. Most claims won’t cut it, but the cases with egregious facts can.

The case cite is Haas Automation, Inc. v. Denny, No. 11-56991, 2013 WL 2303528 (9th Cir. May 28, 2013).

The Associated Press reports that colleges are registering their brands as .xxx domain names to prevent porn sites from doing so.

Their strategy takes advantage of the sunrise provisions for .xxx domain names that STL discussed here.

That’s a fine strategy for brand owners who have concluded that blocking porn providers is worth the financial commitment required to register domain names the brand owners will never use.

After all, a porn site associated with universityofwashington.xxx probably wouldn’t reflect well on the University of Washington (who is mentioned in the article), even though no one would think the site is owned or approved by the UW in any way.

Still, it requires the UW and similar brand owners to pay a bunch of money to domain name registrars forever to continue to tie up those names. And there’s no way a brand owner can think of all possible combinations involving their brand that a porn seller might use.

Indeed, knowing a .xxx site isn’t likely to create a likelihood of confusion with the brand owner’s legitimate site, brand owners may choose to ignore the .xxx issue.

It’s just too bad the .xxx scheme is potentially as much of a headache for brand owners as it is a boon for domain name registrars.

Excerpt of plaintiff’s Web site
accessible through the disputed screams.com domain name

Just in time for Oct. 31, there’s a spooky domain name dispute brewing right here in Seattle.

Last month, Happy Halloween, Inc., sued Screams, LLC, asking the Western District for a declaration that its registration of the screams.com domain name does not constitute cybersquatting or infringe Screams’ registration of SCREAMS as a trademark in connection with “amusement park services, namely, a Halloween theme park including haunted houses, haunted hayrides, drama exhibitions and amusements.”

Both parties offer “haunted house” services. Happy Halloween runs the “Cutting Edge Haunted House” in Ft. Worth, Texas. Screams operates the “Screams Halloween Theme Park” in Waxahachie, Texas, also near Dallas-Ft. Worth.

In July, a National Arbitration Forum panelist found in favor of Screams in a Uniform Domain Name Dispute Resolution Policy arbitration and ordered screams.com to be transferred to Screams.

Happy Halloween points the domain name to its Web site located at www.cuttingedgehauntedhouse.com. It argues that “screams” is generic and that it did not register screams.com in bad faith.

It also argues it registered the domain name on Jan. 22, 1997, so any conflicting rights Screams might have in the mark are barred by laches.

Happy Halloween filed in the Western District because it registered screams.com through Vancouver-based Dotster, Inc., which is located in this district.

Screams has not yet answered Happy Halloween’s complaint.

The case cite is Happy Halloween, Inc. v. Screams, LLC, No. 11-1513 (W.D. Wash.).

Web site screen shot (www.icmregistry.com) explaining how brand
owners can avoid having their trademarks become a .xxx domain name

Now’s the time to block porn sites from using your trademark in connection with the forthcoming ”.xxx” domain names.

This may not be a big deal to some, but if it is to you, all it takes is a simple filing to ensure that YOURBRAND doesn’t link to adult material via a Web site accessible at www.YOURBRAND.xxx.

My former partners recently wrote about this issue in a client newsletter. It’s a fine starting point for trademark owners to learn about the process.

Trademark owners have until Oct. 28 to act. A link to accredited registries that enable one to opt out of .xxx use is here. 

More info on the process is here.

The World Intellectual Property Organization says cybersquatting is on the rise.

Last year, trademark owners filed 2,696 arbitrations under the Uniform Domain Name Dispute Resolution Policy, up 26% percent over 2009 filings. That’s saying something, since 2009 represented a 16% increase in WIPO filings over 2008.

In 2000, WIPO had 1857 domain name cases involving 3,760 domain names. Ten years later, the number of filings increased by almost 1,000, involving 4,370 domain names.

Retail trademark owners represented the largest category of filers at 9.67%, followed by banking and finance at 9.31%, and biotechnology and pharmaceuticals at 9.26%. Surprisingly, the smallest category of filers were trademark owners in the luxury items category.

It’s not terribly surprising to me that cybersquatting has spiked, though it’s been a while since I’ve dealt with it in my practice. At least at the UDRP level. It’s just gotten too expensive to prosecute those cases unless there are big dollars tied to the outcome. And, frankly, UDRP proceedings can be a crapshoot.