Seattle Trademark Lawyer

Last year, Plaintiff Cascade Yarns, Inc., brought suit against competing yarn manufacturer Filatura Pettinata V.V.G. Di Stefano Vaccari & C. (S.A.S.) and a number of other competitors.

It alleged that defendants conspired to produce, market, and sell mislabeled yarn to consumers in violation of the Lanham Act and the Racketeer Influenced and Corrupt Organization Act. In particular, it claimed that defendants misrepresented the amount of cashmere, mohair, silk, alpaca, camel, or milk protein fiber in their yarns.

Filatura, an Italian company, moved to dismiss for lack of personal jurisdiction.

On June 17, the Western District granted Filatura’s motion.

“Because Cascade has alleged violations of RICO, jurisdiction over Filatura might be exercised under 18 U.S.C. § 1965(b), which allows for nationwide service of process on a defendant as per Fed. R. Civ. P. 4(k)(1)(C), and hence jurisdiction in this Court. However, this Court has already found that RICO jurisdiction does not apply in this case. Moreover, Filatura was not served in the United States, which casts the RICO jurisdiction further into doubt. Thus Filatura must meet the constitutional criteria ordinarily required for personal jurisdiction in Washington.”

The court went on to find that Cascade did not make that showing because it did not show that Filatura shipped the yarns at issue directly to Washington; Filatura’s business dealings with Cascade did not establish purposeful availment of this forum; and that Filatura’s alleged conspiracy with other defendants subject to jurisdiction here was not sufficient.

The court summarized: “None of Cascade’s theories demonstrate that Filatura expressly aimed any intentional acts causing harm in Washington. Cascade therefore does not satisfy the effects test, and consequently has not made a showing of purposeful direction. A showing of purposeful direction is required to establish specific personal jurisdiction. Cascade has thus failed to establish that this Court has jurisdiction over Filatura.”

The order does not affect Cascade’s claims against the other defendants.

The case cite is Cascade Yarns, Inc. v. Knitting Fever, Inc., 2011 WL 2470671, No. 10-861 (W.D. Wash. June 17, 2011) (Marintez, J.).

Plaintiff Basel Action Network and defendant International Association of Electronics Recyclers (IAER) both provide certified electronics recycling programs.

But IAER has something Basel doesn’t have: a federal registration for CERTIFIED ELECTRONICS RECYCLER as a certification mark.

Basel thinks that mark is generic and should be available for anyone to use. Based on that belief, it sued to have IAER’s registration cancelled (complaint here; STL post here).

In December 2010, the Western District dismissed Basel’s claims (STL post here). Basel then filed an amended complaint, alleging that IAER engaged in unfair competition by confusing consumers as to origin and by falsely advertising its status, again seeking to have the registration cancelled.

IAER again moved to dismiss.

On June 7, the court granted IAER’s motion with respect to Basel’s confusion-of-origin theory but denied it with respect to its false advertising theory.

Basel alleged that consumers who attended a September 2010 conference at which both Basel and one of the defendants presented were confused between the two. The court rejected that contention.

“The court finds that Basel has not stated a confusion-of-origin claim based on anything more than Defendants’ use of the generic term ‘certified electronics recycler.’ In Basel’s example based on the September 2010 conference agenda, there is no suggestion that anything other than the term ‘certified electronics recycler’ caused attendees to confuse [defendant Institute of Scrap Recycling Industries’] presentation for Basel’s. Indeed, the agenda identified ISRI as the presenter for the morning session, and Basel as the presenter for the afternoon session. If attendees were confused, there is no plausible allegation that they were confused by something other than ISRI’s use of the generic term ‘certified electronics recycler.’”

The court allowed Basel to proceed on its false advertising claim that defendants have said they alone can provide “the trademarked designation of ‘CERTIFIED ELECTRONICS RECYCLER®.’”

The court wrote that “[i]f ‘certified electronics recycler’ is a generic term, then Defendants’ claim that only they provide the ‘trademarked designation of ‘CERTIFIED ELECTRONICS RECYCLER®’ is true, but incomplete.”

The court went on to find that defendants are obligated “not to abbreviate the truth in a way that misleads consumers. It is not plausible that Defendants chose to tout the registration of their certification to advertise that they hold a meaningless registration for a generic term. The question thus arises: why are Defendants advertising their registration? It is plausible that Defendants intend to convey that they hold a PTO registration is significant in a way that matters to consumers. It is plausible, for example, that Defendants hope that the public will perceive their PTO registration as a favorable substantive judgment on their certification program. It is plausible that Defendants hope that the public will perceive that their use of the term ‘certified electronics recycler’ is somehow ‘official’ or government-sanctioned. ….

“If Defendants convey any of the messages listed above, they misrepresent the import of their PTO registration, and thus engage in false advertising in violation of the Lanham Act. Cancelling Defendants’ registration would remedy the harm about which Basel complains. With their registration cancelled, Defendants would no longer be able to tout their registration in advertisements. Accordingly, the court concludes not only that Basel has stated a Lanham Act false advertising claim, but that this claim is a valid independent cause of action for which cancellation is a remedy, in accordance with the court’s prior order.”

The case cite is Basel Action Network v. International Association of Electronics Recyclers, No. 10-0931 (W.D Wash. June 6, 2011) (Jones, J.).

This weekend, The Seattle Times reported a big story at Qwest Field.

No, it wasn’t that the 7-9 Seattle Seahawks managed to upend the defending Super Bowl champs, the New Orleans Saints.

That was certainly a surprise, and around here is big news.

But it’s not the story some are talking about.

Some instead are talking about the story that revealed vendors at Seahawks stadium have been charging $1.25 more for a “large” beer than the “small” beer that actually is the same size.

“The Seattle Times did a test before the start of the game to check the size of the glasses and confirmed that they [both] were 20 ounces,” the paper reported.

For those who paid more than needed, it’s an outrage. But was it illegal?

Section 43(a)(1) of the Lanham Act prohibits a “false or misleading description of fact,” and a “false or misleading representation of fact” that is likely to cause confusion or mistake. It also prohibits sellers from misrepresenting “the nature, characteristics, [or] qualities” of their goods or services.

Washington’s Consumer Protection Act similarly outlaws false statements or misleading acts that deceive consumers.

Under either statute, a threshold question is whether anything in the sales was false or misleading.

Fans who paid for a small-sized beer and got the same quantity as a large got a bargain.

So is the beer cup half-empty or half full?

Half-empty, say those who paid more for the same size as the small.

Half-full, say the sellers, who argue those who purchased a small beer got a bonus — a large-sized drink for the price as a small. From the seller’s perspective, the fans who opted for the large size merely didn’t get the windfall the small purchasers received; they got exactly what they paid for.

But doesn’t “large” — with its higher price — imply a larger quantity than a “small”?

How many fans would have paid the higher price for a large if they had known they could get the same amount of product for less?

Unhappy purchasers of the “large” size also point out the cups look different. The “large” 20 ounce cup is tall but narrow; the “small” is short and wide. While this could be an honest mistake — and for all I know this situation is chargeable to an independent contractor rather than the stadium or team — it doesn’t smell right.

This supposedly has been going on all year. What’s truly amazing is no one noticed until the playoffs started. 

Even if Hostess’ statement was untrue, a consumer had no standing
to assert a false advertising claim because he wasn’t a competitor.

Plaintiff Victor Guttmann filed a putative class action in the Central District of California against defendant Hostess Brands, Inc., alleging false advertising.

His complaint stated that Hostess makes false and misleading statements to market six varieties of baked goods under the label “Hostess 100 Calorie Packs.” In particular, he claimed that Hostess markets Hostess 100 Calorie Packs as containing “0 Grams of Trans Fat,” even though such products contain partially hydrogenated oils.

He sought restitution and damages on behalf of all persons “who purchased, on or after January 1, 2007, one or more of the Hostess 100 Calorie Packs in the United States for their own use rather than resale or distribution,” and an injunction.

Hostess moved to dismiss plaintiff’s claims on standing grounds, among other things. It argued that because Mr. Guttmann is a consumer, and not a competitor, he can’t maintain a false advertising claim.

The court agreed.

“To establish standing under the ‘false advertising’ prong of the Lanham Act,” the court found, “‘a plaintiff must show: (1) a commercial injury based upon a misrepresentation about a product; and (2) that the injury is ‘competitive,’ or harmful to the plaintiff’s ability to compete with the defendant.’ Thus, ‘[f]or a plaintiff to have standing, the parties must be competitors in the sense that they ‘vie for the same dollars from the same consumer group,’ and the alleged misrepresentation must at least theoretically effect a diversion of business from the plaintiff to the defendant.’”

The court concluded: “Here, Plaintiff alleges that he ‘purchased the [Hostess 100 Calorie Packs] for personal, family or household purposes.’ He also seeks injunctive relief on behalf of class members who purchase Hostess 100 Calorie Packs ‘for their own use rather than resale or distribution.’ Plaintiff, by his own admission, is a consumer, not a competitor. Because Plaintiff alleges neither commercial nor competitive injury, he is precluded from asserting a false advertising claim under the Lanham Act. The Court therefore dismisses Plaintiff’s Lanham Act claim with prejudice due to lack of standing.”

Peviani v. Hostess Brands, Inc., __ F.Supp.2d __, 2010 WL 4553510, No. 10-2303 (C.D. Calif. Nov. 3, 2010).

In April, National Products won its false advertising trial against Gamber-Johnson LLC. (Last STL post on the case here.)

The court awarded it attorney’s fees.

National Products then moved to submit the billing records supporting its request for fees in camera, while submitting a redacted version to Gamber-Johnson.

The court didn’t go for it.

“NPI represents to the court that the in camera records consist entirely of detailed billing statements for NPI’s legal fees related to this litigation,” the court wrote. “NPI concedes, however, that the billing statements are not necessary to support its requested amount of attorneys’ fees. NPI then takes the position that by providing its unredacted billing statements to the court, but not to opposing counsel, it has ‘exceeded’ its obligations. The court disagrees.

“By providing heavily redacted copies of its billing statements to Gamber-Johnson’s counsel and unredacted statements to the court, in camera, NPI garners an unfair advantage that hinders Gamber-Johnson’s ability to object to certain fees and costs set forth in the billing statements. Accordingly, the court DENIES the motion for in camera review and returns the billing statements, unopened, to NPI.

The case cite is National Products, Inc. v. Gamber-Johnson LLC, No. 08-0049 (W.D. Wash. Nov. 3, 2010) (Robart, J.).