Seattle Trademark Lawyer

This headline is what bugs me about the USOC: “USOC fights Olympian newspaper’s trademark.”

Now, what the Seattle Times means is the USOC is opposing McClatchy U.S.A. Inc.’s application to register its trademark, THE OLYMPIAN. The trademark it has used since Feb. 1, 1982.

The PTO ok’d it. But not the good ol’ USOC, which thinks that after 27 years, folks around here are prone to suddenly associating the paper’s name not with Olympia, Wash., where it is based, but with the Olympics. Gimme a break. 

Indeed, this mark would seem to fall squarely within the Ted Stevens Act’s exception for use of the word “Olympic” in commerce when “it is evident from the circumstances that such use … refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998, and not to the corporation or any Olympic activity,” and such use outside of the “State of Washington west of the Cascade Mountain range” is “not substantial.”

This is the name of Olympia’s newspaper, folks. This sort of thing could dampen my Olympic spirit.

The USOC apparently has more important things to worry about. Like protecting consumers against confusion. That’s what it argues in its Sept. 18 notice of opposition:

“Registration and use of Applicant’s Mark is likely to cause injury to Opposer’s business reputation and to injure and impair Opposer’s rights in its trademarks and service marks by causing confusion, mistake and/or deception as to the respective rights of the parties and as to the source of the goods and services offered by Applicant. In addition, any defect, failure or fault with respect to Applicant’s Goods provided under Applicant’s Mark would erode the valuable goodwill associated with Opposer and its Olympic Marks. Opposer will be harmed to a greater degree if Applicant’s Goods do not meet the strict quality standards consumers normally associate with the Olympic Games, namely, elite competition at the highest level.”

Like I said before, Give me a break.

The Olympian’s article on the dispute from today’s paper is here.

Trademark Trial and Appeal Board Chief Judge David Sams writes in today’s INTA Bulletin (password required) about the availability of TTAB’s new Accelerated Case Resolution (ACR) procedures.

What is ACR? It’s the “TTAB initiative that provides parties to Board inter partes proceedings the opportunity to stipulate to final determination on the merits of cases at the pre-trial phase without the time or expense of a full trial.”

I’ve never taken advantage of ACR — at least I’ve never thought of it as ACR — but it sounds like a good deal. In my view, the regular TTAB procedure can be way too time-consuming and hence expensive.

Judge Sams suggests that “ACR is most suitable for cases in which the issues are relatively straightforward and the evidentiary record is not extensive. For example, an opposition or cancellation action brought on the grounds of priority and likelihood of confusion where priority is not at issue and the parties do not rely upon extensive testimony and documentary evidence would be an excellent candidate for accelerated case resolution.”

ACR can include: “Abbreviating the length of the discovery, testimony and briefing periods”; “Limiting the number and types of discovery and/or agreeing to limit the number of witnesses and/or streamline the method of introduction of evidence — for example, stipulating to facts and introduction of evidence by affidavit”; and “Permitting the TTAB to resolve issues of fact at summary judgment and treat the parties’ summary judgment motion papers and evidence as the final record and briefs on the merits of the case.”

That last idea — treating summary judgment evidence as the final record — is particularly attractive. I’ve gone through the wasteful trial period after the denial of cross-motions for summary judgment. No surprise: it felt wasteful.

Judge Sams says that parties can stipulate to ACR at any time before the trial phase, and may do so by telephone conference with the interlocutory attorney or by filing a stipulation.

The only problem in all of this is you need to get the opposing party’s agreement. It’d be a lot easier if TTAB rules required the parties to be efficient in their prosecution and defense. Leaving it up to agreement leaves room for mischief. That said, the availability of ACR is a nice step in the right direction.

Remember Starbucks’ TTAB tangle with the Rat City Rollergirls? (See STL posts here and here.) Looks like another roller-rink trademark dispute may get going.

Roller derbier Colleen Bell, a/k/a “Crackerjack,” applied to register her nickname as a trademark with the U.S. Patent and Trademark Office in connection with “Entertainment services, namely, participation in roller derby competitions; Entertainment services, namely, personal appearances by a roller derby competitor.”

On April 8, Frito-Lay North America, Inc., filed a notice of opposition with the Trademark Trial and Appeal Board opposing her application. Frito-Lay cited its prior registrations for CRACKER JACK and opposes on grounds of likelihood of confusion and dilution.

Frito-Lay also argues that the applied-for mark is merely descriptive, alleging: “The word CRACKERJACK is defined as ‘a person or thing that shows market ability or excellence.’”

The Starbucks-Rat City case never went anywhere. It’ll be interesting to see if this one goes a few laps around the track.

The case cite is Frito-Lay North America, Inc. v. Bell, No. 91189641 (TTAB).

Interesting story today in InformationWeek’s Global CIO Blog. Citing a Cato Institute newsletter, it accuses Seattle-based Nordstrom, Inc., of bad conduct before the Trademark Trial and Appeal Board.

The blog tells quite a story, one that starts with the PTO erroneously accepting Nordstrom’s intent-to-use application for a trademark that is confusingly similar to a registered trademark owned by two Colorado women, and ends with Nordstrom using its financial might to beat back the registrants who believe they have been wronged. I don’t want to re-tell a re-telling, so check out the post yourself. However, here’s the punch line — from the unhappy trademark owners to the Commissioner of Trademarks:

“We filed for a trademark so that we could reasonably secure ourselves from someone else using that name. If your office cannot protect us from this, why would we, or anyone, file an application? The law is supposed to be accessible to all people. Just because Nordstrom has money and we do not does not give them the right to use the name for which we have the trademark…. [T]he cost to work through the TTAB will easily exceed $70,000 just to fix the problem The Trademark Office made in the first place. We understand that we must stand behind and police our trademark. How is this possible for a small company to stand up to a behemoth like Nordstrom for $70,000? Your office has ensured our demise.”

Decide the facts for yourself. Here are links to the subject registration; the prosecution history of one of Nordstrom’s intent-to-use applications; the TTAB docket to Nordstrom’s now-dismissed cancellation proceeding; and the TTAB docket to the registrant’s ongoing opposition proceeding.

I hope I’m not jumping the gun here, but it looks like Starbucks Corp. isn’t opposing the Rat City Rollergirls’ application to register its logo as a trademark after all.

In May, STL reported (among others) that Starbucks had filed for an extension of time to oppose the Seattle roller derby league’s application through July 16. That date has come and gone, and the Patent and Trademark Office’s database doesn’t indicate that Starbucks has opposed or sought another extension of time to do so.

Online media seemed pretty critical of Starbucks’ initial extension. Perhaps the company has backed off. Or settled with the ‘girls.

STL can only speculate.