Seattle Trademark Lawyer

Screen shot from defendant’s Web site

James Garcia’s having a tough time of it.

In August, Western District Judge Richard Jones gave the owner of defendant Seattle Roof Brokers a choice: either publish a statement on his Web site linking to the court’s order finding him liable for making false statements about plaintiff Certainteed Corp., or take all content offline until the court approves it. (Previous STL post here.)

Yesterday, the court found Mr. Garcia went in a different direction.

“Rather than publish the specific website content that the court authorized, Mr. Garcia published a website that not only substantially altered the content he had submitted to the court, but included a substantial amount of new content as well,” which Certainteed alleges is filled with false statements.

Without considering the truth or falsity of the statements, the court found that Mr. Garcia violated the court’s order.

Here’s its remedy.

“Accordingly, the court orders [Mr.] Garcia to take ‘offline’ all websites under this control (including seattleroofbroker.com and any similar sites). He shall do so no later than 12:00 p.m. on September 2, 2010, and the websites shall remain ‘offline’ until further order of the court. If he does not comply with this order, he will be deemed in contempt of court, and will, at a minimum, be subject to a sanction of $100 for each day that his website or websites remain online.”

The case cite is Certainteed Corp. v. Seattle Roof Brokers, No. 09-563 (W.D. Wash. Aug. 30, 2010) (Jones, J.).

Plaintiff Pom Wonderful LLC sells the POM WONDERFUL bottled pomegranate juice.

Defendant Welch Foods, Inc., sells various bottled juices under its WELCH brand.

In 2006, Welch developed a juice blend it named “Welch’s 100% White Grape Pomegranate.” The ingredient declaration identifies the juices used in the product, namely white grape, apple, and pomegranate juices (from concentrate), but does not does not disclose the percentage of any of the juices.

In January 2009, Pom filed suit in the Central District of California for false advertising based on Welch’s use of the word “pomegranate” because the product allegedly contains very little pomegranate juice.

After a number of other motions, Welch filed a motion for summary judgment on its unclean hands defense. Welch argued that Pom had engaged in the same kind of conduct that Pom alleges is deceptive and misleading, including Pom’s failure to disclose that its 100% pomegranate juice product at one point contained elderberry and Pom’s sale of juice blends that, at one point, contained juices other than those identified in the product name.

The Central District of California concluded these facts were not sufficiently “egregious” or causally related to consumer deception to sustain Welch’s unclean hands claim on summary judgment.

“The Court finds that while Welch has offered undisputed evidence of Pom’s misleading label, Welch has not demonstrated by clear and convincing evidence that Pom’s conduct was ‘egregious.’ Welch has not offered evidence that Pom’s deception was material, i.e. that it induced customers to purchase a product that they otherwise might not have purchased. Welch has not attempted to link Pom’s inclusion of trace amounts of elderberry juice in its 100% Pomegranate Juice to consumer deception or harm. Its only evidence is that one customer called Pom asking whether ‘the plain pomegranate juice [has] any other ingredients in it’ and another customer stated to a Pom customer service representative: ‘I noticed on the bottle it says pomegranate juice from concentrate with added natural flavors. This implies that it is not 100 percent pomegranate juice …’ This anecdotal evidence, while unrefuted, does not establish that any appreciable number of consumers were confused such that Pom’s conduct could be deemed ‘egregious.’ Welch’s failure to demonstrate the existence or extent of harm caused by Pom’s deception precludes a finding that it would be inequitable for Pom to proceed on its claims.”

Unclean hands doesn’t simply mean the plaintiff was a bad actor. It means that the plaintiff has “dirtied his hands in acquiring the right presently asserted.”

The case cite is Pom Wonderful v. Welch Foods, Inc., 2010 WL 3368430, No. 09-567 (C.D. Calif. Aug. 25, 2010).

Plaintiff’s and defendant’s logos

Plaintiff Mirina Corp. is a Seattle-based biotech firm.

Defendant Marina Biotech is a Bothell, Wash.-based biotech firm.

According to plaintiff’s complaint, both companies promote RNA-based therapeutic research and drug development services.

The complaint alleges that on July 22, defendant’s predecessor changed its company’s name to Marina Biotech. It states that plaintiff warned defendant that the name change would create a conflict with Mirina’s name, which plaintiff claims it started to use in August 2008.

The complaint says the dominant part of both names sounds the same and defendant’s use is likely to cause confusion with plaintiff’s use.

The case cite is Mirina Corp. v. Marina Biotech, No. 10-01322 (W.D. Wash.).

National Products, Inc., sued Gamber-Johnson LLC in the Western District for false advertising. At issue in the suit, discussed here and here, was Gamber-Johnson’s promotional video that favorably compared the safety benefits of Gamber-Johnson’s emergency vehicle laptop mounting system with one developed by National Products (NPI).

The case was tried to a jury in April 2010. Trial lasted four days. The jury deliberated less than three hours. It returned a verdict finding that Gamber-Johnson had deliberately engaged in false advertising and awarded National Products $10 million in damages.

The next day, Western District Judge James Robart ordered the parties to submit supplemental briefing on Gamber-Johnson’s motion for judgment as a matter of law addressing the jury’s award of damages.

On August 13, the court reduced the jury’s award to $492,332.

Key to the court’s decision was its finding that National Products did not seek actual damages for lost sales. Given that finding, the court only considered damages based on an unjust enrichment theory or disgorgement of Gamber-Johnson’s profits and did not consider whether substantial evidence existed to support a finding of actual damages to the tune of $10 million.

The court particularly considered that: “(1) a remedy should not be granted as a matter of right; (2) the remedy must represent compensation for damages and not a punishment to the defendant; (3) NPI is not entitled to a windfall; (4) there must be some evidence of damage attributable to the false advertisement; (5) the court must look to the ‘totality’ of the circumstances; and (6) the court should consider the jury’s findings that Gamber-Johnson engaged in deliberate false advertisement.”

Applying these principles, the court accepted the testimony of Gamber-Johnson’s damages expert but applied the higher Gamber-Johnson profit margin that National Product’s damages expert calculated.

Gamber-Johnson’s expert “opined that NPI’s lost profit from sales during this time period of approximately $365,000 was the best indication of Gamber-Johnson’s gained profit from a diverted sales that would have gone to NPI. This calculation is also consistent with [NPI’s expert’s] trend analysis of NPI’s lost sales during the relevant time period. [Gamber-Johnson’s expert], alternatively, performed a trend analysis on Gamber-Johnson’s profits to determine if it made a profit during the relevant time period. [Gamber-Johnson’s expert] first assumed that there were no other factors that could have increased Gamber-Johnson’s profits other than diverted sales from NPI. He then calculated Gamber-Johnson’s revenue over the relevant period and identified an increase in sales of $1,183,492, in relation to Gamber-Johnson’s historical revenue trend. Using the lower profit margin he calculated of 29.8%, [Gamber-Johnson’s expert] determined that based on the historical trend analysis, Gamber-Johnson’s additional profits during this time were $352,796. NPI did not offer additional evidence to refute this calculation. However, the court notes that had [Gamber-Johnson’s expert] used the higher profit margin posited by [NPI’s expert] of 41.6%, Gamber-Johnson’s net profit during the relevant time-period, based on a trend analysis, would have been approximately $492,332.”

The case cite is National Products, Inc. v. Gamber-Johnson LLC, No. 08-0049 (W.D. Wash. Aug. 13, 2010) (Robart, J.).

Screen shot showing Loops’ “non-shank” prison toothbrushes

STL readers may recall the Western District case of Loops, LLC v. Phoenix Trading, Inc., in which the plaintiff accused the defendant of violating the Lanham Act (among other claims) when the defendant bid to sell flexible “non-shank” toothbrushes to the New York City Department of Corrections.

Phoenix Trading, d/b/a Amercare, moved for summary judgment on Loops’ Lanham Act claim.

Here’s Western District Judge Ricardo Martinez’s summary of the claim.

“Loops describes the factual basis of its claim as follows: ‘In June 2006, unbeknownst to Plaintiffs, Defendants bid on a contract to supply the [NYC-DOC] with Loops Flexbrush toothbrushes. Plaintiffs did not have notice, did not provide their approval or consent to Amercare to bid on the contract, and did not have any agreement to supply Amercare with Loops Flexbrush toothbrushes to NYC-DOC. As a result, Amercare bid Loops Flexbrush toothbrushes with the intent to supply the toothbrushes directly.’”

The court found these facts could not sustain a Lanham Act claim.

“Crediting Loops’s version of the facts, the evidence merely shows that Amercare offered to provide the Loops Flexbrush to NYC-DOC in 2006 when, in fact, it had no ability to do so because Loops had not agreed to allow Amercare to distribute its products. There is no evidence that Amercare ever provided toothbrushes to NYC-DOC in 2006 falsely designated as Loops Flexbrushes. Nor is there evidence that NYC-DOC was confused or deceived. In any case, Amercare did not win the 2006 bid and Loops did not suffer injury caused by Amercare’s 2006 bid.

“Alternatively, Loops argues that Defendants’ ‘unfair competitive practices’ of soliciting samples of Loops Flexbrushes, copying them, and using the copies to bid against Loops, violate the Lanham Act. This is unpersuasive. When Amercare bid on the NYC-DOC contract in 2007, it offered to provide the Amerfresh toothbrush. The bid documents indicated that Amercare was offering to provide the Amerfresh toothbrush, the toothbrushes were labeled ‘AmerCare’ and the packaging was labeled with ‘AmerCare.’ There is no possibility that NYC-DOC wasa confused regarding the origin of Amercare’s toothbrushes. While Loops objects to what it characterizes as the ‘slavish copying’ of its Flexbrush, the Lanham Act offers no protection. As the Supreme Court has stated, ‘unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying.’”

The case cite is Loops, LLC v. Phoenix Trading, Inc., 2010 WL 3041866, No. 08-1064 (W.D. Wash. July 20, 2010) (Martinez, J.).