Seattle Trademark Lawyer

Last summer, The Comphy Co. sued Amazon.com, Inc., for using its trademarks on Amazon’s store platform even though company doesn’t do business with Amazon.

Comphy alleged that Amazon’s search engine makes it look like the luxury bedding maker offers products through Amazon and then diverts potential customers to bedding providers that do.

Comphy filed a motion for preliminary injunction in the U.S. District Court for the Western District of Washington seeking to put a stop to that practice. Among other things, it sought to enjoin Amazon from “[p]romoting, supporting or allowing third parties’ unauthorized use of the COMPHY trademark (or highly similar marks such as COMFY) to promote bedding, sheets, pillows and related products not made by or under the authority of The Comphy Co.”; and “[a]utomatically suggesting searches for “Comphy”, “Comphy Sheets”, “Comphy Company” and “Comfy Sheets” when users begin to type a first few letters of those marks.”

On March 12, the court denied Comphy’s motion. In doing so, it wrote: “This is not an easy decision. Many of Defendant’s actions toe exceedingly narrow legal and equitable lines. But, on the record presented by Plaintiff, there are simply too many pitfalls for the Court to map an equitable course.”

At the outset, the court noted that Amazon had stopped doing the things that Comphy had complained about. But since Amazon did not stipulate to a preliminary injunction, the court considered the motion on the merits.

Comphy persuaded the court with its evidence of actual consumer confusion:

“There is no question that Plaintiff presents evidence of actual confusion that is often compelling, including written reviews by verified purchasers,” the court wrote. “Defendant has little retort for the fact other than to point out that the evidence is only that a small percentage of purchasers indicate they were confused.”

However, based on the limited record presented, the court found it was not clear that Comphy had a protectable trademark in its name; that Amazon had been using a confusingly similar mark; and that irreparable harm was likely. Therefore, it concluded that preliminary relief was not appropriate.

The case cite is The Comphy Company v. Amazon.com, Inc., No. 18-1460 (W.D. Wash. March 12, 2019) (Martinez, J.).

I’m pleased to report that excerpts from a 2011 STL post appear in the 2016 NYT best-seller, “Real Food/Fake Food.”

Author Larry Olmsted riffs on my discussion about “American” Kobe beef. I like what he’s done.

The point of the post, and one of the points of the book, is that marketing labels stop meaning anything when they are stretched beyond their original designations. Kobe beef is a case in point. It used to designate special (and especially tasty) beef raised in Kobe, Japan. But when it shows up on menus as “American” Kobe beef, and the U.S. Patent and Trademark Office allows different producers to register trademarks like “AMERICAN STYLE KOBE BEEF,” “AMERICAN CERTIFIED KOBE BEEF,” and “PREMIER AMERICAN KOBE BEEF,” the Kobe beef designation no longer means what it used to. Indeed, it arguably no longer means anything at all.

This is a good example of how a strong trademark can lose its power. When other producers co-opt a brand, and give it their own twist, consumers eventually no longer think of the original trademark owner. Eventually, they may not think of anything.

If Kobe beef can come from producers in the States, what does it mean to say it’s Kobe beef?

Trademark owners should learn from this lesson. If you don’t stop others from using your trademark, you eventually can lose the equity you worked so hard to build up in your brand.

These last few years, the Seattle Seahawks have been good. Really good. And the Sounders, too. Here’s to a lot more of that!

With the rise of our teams’ success, I get more of the same type of question. It focuses on whether local craftspersons can incorporate team names, logos, slogans, and/or colors in their handmade clothing, cakes, beer labels, and art. It’s to celebrate team pride; it’s to give the people what they want; and it’s to make a buck.

So what’s ok, and what’s not ok?

The answer turns on trademark law. Names, logos, slogans, and even colors tell consumers where goods and services come from. By incorporating these indicators into a product, an artisan risks misleading purchasers into thinking the goods are made by the team, are licensed by the team, or are approved by the team. Mistaken consumer assumptions hurt the team because it doesn’t profit from the sale, it doesn’t have a say in how its brand is used, and because bad-quality or inappropriate goods could hurt its reputation.

For practical purposes, small-time producers probably can fly under the teams’ radar. But that doesn’t mean it’s legal for them to wrap up their products in a team’s brand without permission.

The more a craftsperson takes from the team’s image — particularly its name and logo — the more likely he or she is to infringe the team’s trademark rights. As long as you’re selling goods or services, you’re subject to trademark laws. So, you shouldn’t be surprised if you hear from your favorite team if you use their brand without permission.

The same is true if you take your favorite athlete’s name. Natural persons often have extra rights against use of their names, likenesses, and signatures for commercial purposes without their permission, thanks to “personality” rights laws.

Artists are often exempt from these concerns. As long as the artwork contains a minimum amount of artistic embellishment, the First Amendment usually trumps trademark and personality rights protections. But regular folks who want to sell crafts on Etsy or in front of the stadium: you probably can’t “borrow” from your favorite team without stepping on its toes.

Sometimes clients ask if they can get a trademark infringer thrown in jail.

Wouldn’t that be awesome?

However, jail is not usually one of the things a trademark lawyer can deliver. Trademark infringement is mainly a civil wrong, meaning that a trademark owner is limited to civil remedies like an injunction, damages, the profits the infringer wrongly obtained through its infringement, and, sometimes, attorney’s fees.

Trademark statutes also provide that some egregious forms of trademark infringement, like counterfeiting, also constitute criminal acts. However, whether to prosecute such offenses is up to the prosecutor. It’s not up to the aggrieved trademark owner, and it’s not included as part of a civil lawsuit.

Sadly, prosecutions are rare. Unsurprisingly, resources are thin, and prosecutors usually have bigger fish to fry (such as prosecuting murderers and bank robbers).

To increase the chances a prosecutor will exercise her discretion and file criminal charges, I’d suggest making her job as easy as possible. Do your own investigation, collect all of the evidence needed to prove the case, and deliver it to the prosecutor wrapped in a bow. Even then, the chances of getting the offending counterfeiter thrown in jail are pretty slim.

That’s not to say that trademark owners should despair. Though jail isn’t likely, they can still maximize civil remedies to stop the infringement and put themselves in the position they would have been in had the infringement never occurred. That’s usually where trademark owners should devote their resources.

One of the main benefits of federal trademark registration is national coverage.

Once your registration issues, you are presumed to be the exclusive, nationwide, user of your trademark in connection with the goods and services listed on your registration. By illustration, this gives a Seattle owner the right to sue someone in Miami who adopted a confusingly similar mark after the date the Seattle owner applied to register its mark.

That’s right — the rights that flow from a trademark registration relate back to the date a trademark owner files its application for federal registration. That’s the day the world is legally put on notice that the registrant sought to claim national rights in its mark.

Here’s how conflicting trademark rights commonly sort out.

If you sell branded product in Seattle, Tacoma, and Portland, you have automatic common law rights in Seattle, Tacoma, and Portland. That means you can go after copycats in those markets who adopt a name that would likely confuse consumers into believing they are you, are authorized by you, or have some association with you.

But what about the rest of the country? Let’s say the brand owner is called ABC123, and it operates restaurants under that name in Seattle, Tacoma, and Portland. Can it do anything about a new restaurant that opens in San Francisco that is also called ABC123 (or a confusingly similar variant, like ABC124)?

Not without a federal trademark registration. Without obtaining national rights that a registration provides, the restaurant owner probably wouldn’t have any trademark rights in San Francisco available to enforce. In other words, without regularly making sales there, the brand owner probably wouldn’t have any legal basis to complain. That’s why a federal registration is valuable — it gives the trademark owner the legal basis to complain about any conflicting trademark use, anywhere in the United States.

What if there’s another restaurant called ABC123 in Miami that was open at the time the owner of the Seattle, Tacoma, and Portland restaurants applied to register its mark? As long as a registration issues, the Miami owner would locked into the geographic area in which it had been making sales (in this case, Miami) that existed at the time the owner of the Seattle, Tacoma, and Portland restaurants filed its application. This means the Miami owner would have superior trademark rights in Miami, and the Seattle, Tacoma, and Portland owner would have superior rights everywhere else. In this way, a registration whitewashes the map of the United States, giving the registrant superior trademark rights everywhere except for the local areas in which competing users had rights at the time the registrant filed its application.

This usually is the most valuable right a federal trademark registration provides. It can give the brand owner a powerful advantage over its competitors.