Seattle Trademark Lawyer

A while back, the Western District in Lahoti v. Vericheck, Inc., found the VERICHECK trademark is suggestive when used in connection with check verification services. In doing so, it concluded that David Lahoti acted in bad faith when he registered the vericheck.com domain name.

In 2009, Mr. Lahoti appealed. The Ninth Circuit affirmed the bad faith finding. With regard to the classification of VERICHECK, it found: “[w]hile the district court perhaps could have relied exclusively on the registration of the Arizona Mark [also for VERICHECK for check verification services], it did not do so,” but instead “improperly required that the Mark describe all of [respondent] Vericheck’s services, examined the Mark in the abstract, and concluded that it could not analyze the Mark’s component parts.” Therefore, it vacated the district court’s judgment and remanded.

On remand, the Western District applied the Ninth Circuit’s direction in amended findings of fact and conclusions of law. It again concluded that VERICHECK is suggestive and, therefore, is entitled to protection as a trademark without a showing of secondary meaning.

Mr. Lahoti again appealed, arguing the district court again failed to analyze the VERICHECK mark in its industry context.

On Feb. 16, the Ninth Circuit affirmed. It found: “the district court indisputably recited the relevant legal principles that we set out. The district court then went on to find that, ‘[w]hen viewed in the context of Vericheck’s services, whether in whole or in part, including Vericheck’s check verification services, the VERICHECK mark does not immediately convey information about the nature of Vericheck’s services.’ The district court explained that, ‘in reaching [its] conclusion,’ it ‘considered the component parts of the VERICHECK mark ‘as a preliminary step on the way to an ultimate determination of the probable consumer reaction to the composite as a whole.” Thus, the district court conducted its analysis as instructed.”

STL background on the long-running case here, here, here and here.

The case cite is Lahoti v. Vericheck, Inc., __ F.3d. __, 2011 WL 540541, No. 10-35388 (9th Cir.) (Jan. 13, 2011).

Novel causes of action for contributory cybersquatting and contributory dilution appear to viable here in the Western District.

On Jan. 12, Western District Judge Ricardo Martinez refused to dismiss such claims plaintiff brought in Microsoft Corp. v. Shah.

In that case, Microsoft alleges defendants, among other things, induced others to engage in cybersquatting and dilution by instructing them on how to use Microsoft trademarks to increase traffic on their Web sites. Microsoft also alleges defendants sold a product that contained software that enabled buyers to create Web sites incorporating Microsoft marks to help sell emoticon-related software, including a video narrated by defendant Amish Shah.

Defendants moved to dismiss, arguing claims for contributory cybersquatting and contributory dilution are not recognized.

The court denied the motion.

“In the current case, Defendants’ alleged conduct falls squarely within the statute’s goal of imposing liability on those who seek to profit in bad faith by means of registering, trafficking, or using domain names that contain identical or confusingly similar marks. Defendants allegedly sought to profit in bad faith by teaching others how to trade off the widespread recognition of Plaintiff’s mark in order to drive traffic to a given website. A defendant who seeks to profit by selling a method that teaches others how to benefit from violating the [Anticybersquatting Consumer Protection Act] should not be able to escape liability by interpreting the statute so narrowly. The practice of instructing others on how to engage in cybersquatting runs counter to the purpose of the ACPA. … [T]he ACPA should not be read so narrowly as to unduly constrain the protections the statute is meant to afford against cybersquatters.”

The court made a similar finding with regard to Microsoft’s claim for contributory dilution.

“As with contributory cybersquatting, contributory dilution is a tort-like cause of action which naturally lends itself to the theory of contributory liability. In the case at hand, Defendants are alleged to have encouraged others to utilize the famous Microsoft mark in such a way that could cause dilution of the Microsoft mark. The Trademark Dilution Act seeks to provide a mechanism through which owners of famous marks may seek protection against exactly the kind of harm — in the form of blurring or tarnishing — that is alleged in the present case. It would be inconsistent with the Trademark Dilution Act to prohibit a cause of action for contributory dilution.”

The case cite is Microsoft Corp. v. Shah, No. 10-653 (W.D. Wash. Jan. 12, 2011) (Martinez, J.).

Screen shot from defendants’ Web site at www.aberceombie.com

Subtlety isn’t their thing.

Abercrombie & Fitch Co. alleges that unknown defendants not only registered a truckload of domain names that are confusingly similar to its ABERCROMBIE and HOLLISTER registered trademarks, but those domain names resolve to Web sites that sell products that compete with Abercrombie & Fitch’s products, including products that allegedly are pirated from Abercrombie.

On December 10, Abercrombie filed suit in the Western District against John Does 1-10. Its complaint alleges cybersquatting, trademark infringement, and unfair competition.

Many of the domain names allegedly at issue include misspellings of ABERCROMBIE and HOLLISTER, such as aberceombie.com, abercromble.com, hollioster.com, and hiollister.com. 

Abercrombie alleges the Western District has personal jurisdiction over the defendants because they have conducted business engaged in torts here. 

Defendants have not yet appeared or answered the complaint.

The case cite is Abercrombie & Fitch Co. v. John Does 1-13, No. 10-1998 (W.D. Wash.).

Interesting contrast to yesterday’s post.

Both cases involved a Web developer who believed he was owed money, and when the money wasn’t forthcoming, took the Web site offline.

The plaintiff won the suit that followed in DSPT Int’l, Inc. v. Nahum.

Not so in today’s case, The Christensen Firm v. Chameleon Data Corp.

In 2008, the Western District dismissed the Seattle law firm’s cybersquatting claim against the contractor on summary judgment on the ground the four domain names at issue (thechristensenfirm.com, thechristensenfirm.net, christensenfirm.com, and cc-lawfirm.com) were either generic (cc-lawfirm) or descriptive (The Christensen Firm) without the requisite showing of secondary meaning. (STL posts here and here.)

On Oct. 8 — the date I left for my trip (sorry, I’m still catching up) — the Ninth Circuit affirmed the finding in summary fashion. The bulk of the opinion is below.

“The Christensen Firm did not present sufficient evidence of secondary meaning of its domain names,” the court concluded. “The Christensen Firm’s evidence of third-party registrations of similar marks did not identify the goods or services associated with the similar marks or the basis for their registration. The Law Firm also didn’t present evidence that anyone in the relevant class of consumers ascribed any meaning to ‘cc’ other than ‘Colleen Christensen.’ The district court otherwise properly ruled that the defendants were entitled to summary judgment.”

On plaintiff’s conversion claim, the court again found the law did not support a recovery.

“The damages presented were the fees The Christensen Firm could have generated had its energies not been devoted to this case. These damages were essentially the attorneys’ fees a non-lawyer would have expended to litigate the action. Under Washington law, such attorneys’ fees are not recoverable. Other evidence of damages and the possibility of injunctive relief were not fairly presented in opposition to the defendants’ motion for judgment as a matter of law.”

The case cite is The Christensen Firm v. Chameleon Data Corp., 2010 WL 3938270, No. 08-35624 (9th Cir.) (Oct. 8, 2010).

“Even if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. § 1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom.”

The Ninth Circuit decided this proposition last week in DSPT Int’l, Inc. v. Nahum.

The plaintiff is a men’s fashion designer. Its founder, Paolo Dorigo, worked with his then friend, defendant Lucky Nahum, to develop a Web site for DSPT. Eventually, their friendship soured, DSPT did not renew Mr. Nahum’s contract, and Mr. Nahum joined a competitor.

Soon thereafter, DSPT’s Web site disappeared. If a customer typed the URL into his or her browser, all he or she would find was a screen saying “All fashion related questions to be referred to Lucky Nahum at: lnahum@yahoo.com.” Mr. Nahum explained to his new boss that “he had inserted that sentence in order to get [one of DSPT’s brands] to pay him funds that were due to him.”

DSPT repeatedly but unsuccessfully asked Nahum to give its Web site back. It ultimately filed suit against Mr. Nahum in the Central District of California for cybersquatting, among other Lanham Act claims. Mr. Nahum counterclaimed for an amount he alleged was still owing him under the parties’ contract.

A jury found for DSPT on its cybersquatting claim, awarded it $152k, and denied Mr. Nahum’s counterclaim.

Mr. Nahum appealed, arguing that he only used DSPT’s mark to gain leverage over DSPT in bargaining for money he claimed he was owed. In other words, he said he did not register the domain name in bad faith; he only used DSPT’s domain name to get what he was entitled to.

The Ninth Circuit rejected his argument and affirmed the jury’s award.

“His arguments are not implausible,” the court found, “but we conclude that they are mistaken. True, the statute was intended to prevent cybersquatters from registering well-known brand names as internet domain names in order to make the trademark owners buy the ability to do business under their own names.”

It concluded that “[t]he statute, like so many, is written more broadly than what may have been the political catalyst that got it passed. As in Bosley Medical Institute v. Kremer, [3 F.3d 672, 680-81 (9th Cir. 2005)], we conclude that the words of the statute are broader than this political stimulus that led to its enactment. Though there was no evidence of anything wrong with Nahum’s registration of the domain name to himself, the evidence supported a verdict that Nahum subsequently, years later, used the domain name to get leverage for his claim for commissions. The statute says ‘registers, traffics in, or uses,’ with ‘or’ between the terms, so use alone is enough to support a verdict, even in the absence of violative registration or trafficking.” 

The case cite is DSPT Int’l, Inc. v. Nahum, __ F.3d. __, 2010 WL 4227883, No. 08-55062 (Oct. 27, 2010).