Seattle Trademark Lawyer

The New York Times reported the “Brand Name Auction” raised a bunch of money — over $100k in all. (STL background post here.)

SHEARSON garnered the highest bid at $45,000, followed by MEISTER BRAU at $32,500 and HANDI-WRAP at $30,000.

I’m still not entirely sure what this money bought.

“You’re paying for a license for an interim period till the trademark issues,” NYT quoted one observer.

The Trademark Blog wonders if that means anything for marks that have never been used (after being abandoned) and the intent-to-use applications were signed when the applicants never had a bona fide intent to put the marks to actual use.

Right, the whole swearing-under-oath part of the application.

Notwithstanding that potential hitch, the auction apparently garnered public interest. The auction organizer told the World Trademark Review Blog his firm had 20,000 inquires from interested parties.

Apparently 45% of the inquiries came from private-label manufacturers; 45% came from entities that represent other brand manufacturers; and 10% from investors hoping to license the mark and from domain name owners seeking to marry their domain names with federal trademark registrations.

The organizer, a private investment firm, said the so-called first-ever trademark auction won’t be its last.

“We’ve made a decision to be in this space,” its CEO told the World Trademark Review a week before the auction was held. “Whatever happens at the auction will not deter us from owning this space.”

The Central District of California granted summary judgment against Hana Financial, Inc., in its trademark infringement suit against Hana Bank.

It did so based on an advertisement that Hana Bank produced that predated Hana Financial’s first use by a year.

The Ninth Circuit, however, decided that ad was not sufficient to establish first use in commerce.

“While relevant,” the court found, the advertisement does not, standing alone, establish ‘first use’ for purposes of our priority analysis.”

The court went on to find: “Recognizing that the advertisement itself was insufficient, Hana Bank attempted to meet its burden to show that the ‘Hana’ mark was sufficiently used in United States commerce by presenting customer applications, newsletters bearing the ‘Hana’ mark, and documents that purport to show that services were available to its Hana Overseas Club members in July 1994 and the amount of business these customers transacted over the years. Although this evidence is relevant to the determination of whether Hana Bank’s use of the ‘Hana’ mark in 1994 was sufficient to establish commercial use in the United States, it is either subject to competing inferences or inadmissible. For example, Hana Bank only provided one customer application from a customer in the United States that is dated before Hana Financial’s registration date. That application, however, is subject to the inference that the customer actually resided in Korea. Further, Hana Bank failed to provide the proper foundation for admission of many of its supporting documents as business records. Accordingly, these documents constitute inadmissible hearsay and may not b relied on at summary judgment.

“After disregarding the inadmissible documents and the portions of the declarations referring to those documents and viewing the remaining evidence in the light most favorable to Hana Financial, we hold that genuine issues of material fact remain. These issues include the number of customers Hana Bank had in the United States, when Hana Bank began providing services to those customers, and how much business these customers transacted over the years. Nor can Hana Bank meet  its burden to show the absence of any triable issue on these points by reference to the general, uncorroborated statements contained in many of its declarations. Accordingly, we conclude that, on this record, Hana Bank has failed to establish its priority over use of the ‘Hana’ mark as a matter of law and we remand for trial.”

The case cite is Hana Financial, Inc. v. Hana Bank, 2010 WL 3937582, No. 08-55243, 08-55244, (9th Cir. Oct. 4, 2010).

In his second go-round on appeal, pro se plaintiff Robert Guichard didn’t fare any better against defendant Universal City Studios LLLP than he did in his first.

Mr. Guichard is an independent movie producer. Universal is a big Hollywood studio.

Mr. Guichard claimed he gained exclusive rights to the word “whisper” in connection with movies through the launch of his WHISPER OF THE BLUE Web site that publicizes his unproduced screenplay of the same name and information about his proposed film. He sought to enjoin Universal from using “Whisper” as the title of its film, which had been in production since Nov. 2004. (It’s now on DVD.)

In Feb. 2008, the Northern District of California dismissed Mr. Guichard’s trademark claims on summary judgment, finding his use of the alleged trademark did not satisfy the “use in commerce” requirement needed to establish priority of use.

The court found: “Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

On Dec. 14, without much comment, the Ninth Circuit affirmed. (“The district court properly granted summary judgment in favor of Universal on Guichard’s Lanham Act claim.”)

In Dec. 2007, the Ninth Circuit similarly affirmed the district court’s denial of Mr. Guichard’s motion for preliminary injunction. (STL post here.)

The case cite is Guichard v. Universal City Studios LLLP, 2009 WL 4884582, No. 08-15581 (9th Cir. Dec. 14, 2009).

The Slog raises an interesting issue. A local bar is about to open that reportedly was influenced by a work called “Ransom Note” by Seattle neon artist Jeremy Bert. The work spells out the words “Leave Nineteen Million Dollars in Unmarked Bills” (pictured above). The bar commissioned a ransom-note painting and has dubbed itself “Nine Million in Unmarked Bills.” The Slog says this has left Mr. Bert less than happy.

The Slog asks, “What does the bar owner owe the artist?” I’ll re-frame the question to focus on trademark law. Any trademark law problem here?

Not from where I sit. If the artist raised a trademark claim, I don’t think it would get off the ground because I don’t think Mr. Bert has any trademark rights. In the United States, one generally gets trademark rights by using a mark, which means affixing the mark to a good (or using it in connection with a service) and selling the good or service to a third party. Since all Mr. Bert has done is create an installation (no matter how creative the installation is), he wouldn’t seem to have acquired any trademark rights in the words incorporated in his work.

I’ll leave the closer copyright issue to a copyright blogger, like Seattle’s Copyright or Wrong.

Photo credit: Lele Barnett