Seattle Trademark Lawyer

The June issue of InsideCounsel has a nice piece on fraud on the Trademark Office. It accurately frames the problem as follows:

“In the past few years, the [Trademark Trial and Appeal Board] has adopted an extremely tough attitude toward trademark filings that contain overly broad statements of use. The agency has canceled many registrations, belonging to companies large and small, because the companies wrongly averred that they were using their marks on some goods or services.”

This is a tough one. If a trademark owner files a statement saying it uses a given mark in connection with 20 categories of goods and services, and in actuality it only uses the mark in connection with 19 categories, its entire registration is at risk. Forget about honest mistakes.

As the article puts it, “Not only has the TTAB adopted a tough objective standard, but it also has applied this standard mercilessly.”

So what’s a trademark owner to do?

It should audit its portfolio to ensure its most valuable marks are in good stead. If they’re not, it should file narrower follow-on applications that will stand up to scrutiny in the event the original registration falls. It should correct any errors promptly, voluntarily, and in good faith — before an adversary brings them to the PTO’s attention. And it should make sure, going forward, that its statements to the PTO are 100% accurate. After all, they’re made under oath.

Fellow Seattle law blogger Sarah Bird, general counsel of Seattle search engine optimizer SEOmoz, Inc., tipped me off in her post this week about her company’s efforts to oppose a California resident’s application to register “SEO” as a trademark with the Patent and Trademark Office.

According to PTO records, in May 2007, Jason Gambert filed a use-based application for the mark in International Class 35 for “marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers.”

SEOmoz and two other companies then filed notices opposing the application. SEOmoz’s notice of opposition summarizes the examining history as follows:

“In August 2007, the reviewing attorney correctly refused the application on the grounds that ‘SEO’ is (1) generic and (2) merely descriptive of the Applicant’s services. The reviewing attorney cited multiple examples of ‘SEO’ being used in relation to computers and Search Engine Optimization.

“Between September 2007 and January 2008, Gambert used select, unreliable internet sources to persuade the reviewing attorney that ‘SEO’ is commonly used to describe the ‘process’ of search engine optimization and not marketing services. He also amended his application to remove all traces of search engine optimization services. Gambert also greatly generalized the description of his goods and services….

“The reviewing attorney approved the application for publication in January 2008. Publication began on March 25, 2008.” 

Mr. Gambert did not file an answer, leading SEOmoz to move for a default judgment. Mr. Gambert did, however, file what he characterized as a “motion to strike” (not available online), which led the TTAB this week to grant him until July 15 “to file an answer herein which complies with Fed. R. Civ. P. 8.” 

Mr. Gambert states his position in an open post to the “Search Engine Marketing Community” here. In short, he hopes to “establish an approved SEO process, which can be sold as an ‘SEO service,’” which he likens to the Generally Accepted Accounting Principles to which accountants subscribe.

He says: “My goal in owning the trademark for the word SEO is not to try to force people to change their SEO process, but rather, prevent companies from selling ‘SEO’ as a service under false pretenses.”

Additional coverage of the dispute from the SEO community here, here and here.

The case cite is SEOmoz, Inc. v. Gambert, Opposition No. 91183449 (TTAB). The related oppositions are styled as JE Hochman & Associates, Inc. v. Gambert, No. 91184116 (TTAB), and Drysdale v. Gambert, Opposition No. 91183740 (TTAB). 

John Welch today reports on Seattle-based Fine Spirits Distribution, LLC’s loss on summary judgment in the Trademark Trial and Appeal Board opposition proceeding that E. & J. Gallo Winery brought objecting to Fine Spirits’ application to register FALCON for distilled spirits. Gallo successfully argued that mark was likely to cause confusion with Gallo’s FALCON RIDGE trademark for wine. Central to the decision was Fine Spirits’ failure to respond to Gallo’s requests for admission (or to withdraw or amend those admissions).

As the TTABlog explains:

“These admissions established that the involved goods are ‘related and competitive,’ that the goods are ‘impulse items, sold to customers at retail,’ that such consumers ‘will assume they are related,’ and that Gallo has priority of use. The Board therefore granted the motion for summary judgment.”

In my experience, requests for admission usually are most effective when they go unanswered. Which sometimes happens.

The case cite is E. & J. Gallo Winery v. Fine Spirits Distribution, LLC, Opposition No. 91175854 (May 22, 2008) (not precedential).

 
Confusingly similar? Likely to cause dilution?

Sorry for the delay, but this hit the media while I was at INTA…. Starbucks Corp. has been granted an  extension of time to oppose the Rat City Rollergirls, LLC’s application to register its design mark used in connection with “Coordination of recreational sporting opportunities for individuals who wish to participate in team league sports; Promoting sports competitions and/or events of others.”

The Rat City Rollergirls are Seattle’s roller derby league.

The Seattle Post-Intelligencer quotes a Starbucks spokesperson as saying: “We haven’t opposed it — we have asked for more time to look at it.” She added: “There’s a lot of room for us to work together to find a mutually beneficial conclusion here.”

The paper also quotes Rat City’s lawyer as saying: “The Starbucks lawyer said that the girls on the roller derby team look scary, and she didn’t think, in her own personal opinion, (that) Starbucks would want to associate themselves with the scary characters of Rat City Rollergirls.”

Starbucks now has until July 16 to oppose the application.

Other media reports here, here, and here.

On Friday, the Puget Sound Business Journal ran a story about a Trademark Trial and Appeal Board case involving Maple Valley, Wash.-based McSweet LLC. McSweet, which has sold MCSWEET-branded pickled cocktail onions for almost 20 years, decided to apply to register its mark with the Patent and Trademark Office. That’s when McDonald’s Corp. stepped in to oppose. McDonald’s alleges that MCSWEET infringes and dilutes its family of famous MCDONALD’S trademarks, including MC, MCCAFE, MCPIZZA, MCRIB, MCMUFFIN, MCFLURRY, and others. McSweet denies the allegations.

The article says McDonald’s offered to consent to allow McSweet to continue to use MCSWEET if McSweet dropped its application to register the mark. McSweet reportedly refused.

The article quotes me as saying: “If you have a famous trademark like McDonald’s, it casts a long shadow that others have to avoid with their trademarks.”

The parties’ testimony periods close in September.

The case cite is McDonald’s Corp. v. McSweet LLC, Opposition No. 91178758 (TTAB).