Seattle Trademark Lawyer

This weekend I bought “The Associated Press Stylebook,” the writing bible used by countless media outlets. I thought it would make a good long-term challenge to try to bring STL more in line with these accepted standards. What I didn’t expect was that the book would have direct implications on the world of trademarks. I now see it is an important force in shaping how news readers use trademarks in everyday life — especially with regard to genericism.

The Stylebook instructs reporters that a trademark is a “brand, symbol, word, etc., used by a manufacturer or dealer and protected by law to prevent a competitor from using it: AstroTurf, for a type of artificial grass, for example. In general, use a generic equivalent unless the trademark name is essential to the story. When a trademark is used, capitalize it.” It has similar instructions with regard to “brand names” and “service marks.”

The book addresses many trademarks by name, as well as the victims of genericide.

With respect to “Realtor,” for example, it states: “The term real estate agent is preferred. Use Realtor only if there is a reason to indicate that the individual is a member of the National Association of Realtors.” In other words, “Realtor” is a trademark; “real estate agent” is its generic equivalent.

Similarly, “Q-tips” is a “trademark for a brand of cotton swabs”; “Rollerblade” is a “trademark for inline skates”; and “Rolodex” is a “trademark for a brand of rotary card file.”

By contrast, escalator, nylon, and thermos are generic words.

The Stylebook also directs news writers to INTA’s “Trademark Checklist“ for questions about marks not listed.

Given its influence on how reporters write about trademarks — and, consequently, on how the public uses trademarks — it’s gratifying to see the Stylebook training news writers to use trademarks with such precision.

The next step, I suppose, is for news writers to learn how trademarks differ from patents and copyrights.

On April 17, plaintiff Levi Strauss & Co. obtained a default judgment against defendant Kolonaki, Inc., on its dilution and trademark infringement claims brought in Levi Strauss & Co. v. Fox Hollow Apparel Group, LLC, et al., No. 06-3765, 2007 WL 1140648 (N.D. Cal.).

Levi originally brought suit against seven companies, all of which were dismissed except for Kolonaki, owner of the ”Georgiou” chain of retail clothing shops. Levi alleged Kolonaki began selling jeans and capri pants with stitching designs that were confusingly similar to Levi’s “Arcuate” design mark (pictured at right). Levi served Kolonaki but Kolonaki did not respond. As a result, the clerk of the court entered default against Kolonaki.

Levi then moved for default judgment. The court granted the motion and awarded Levi $75,600 in damages and $10,075.54 in attorneys’ fees and costs. The court also enjoined Kolonaki from manufacturing, distributing, or selling goods that infringe Levi’s “Arcuate” mark.

The court analyzed Levi’s dilution claim under the Trademark Dilution Revision Act under the “likelihood of dilution” standard that existed in the Ninth Circuit before Moseley v. V Secret was decided. In the court’s words:

“Section 1125(c) no longer requires the owner to demonstrate actual harm, a standard established by the Supreme Court in Moseley v. V Secret Catalog, Inc., 537 U.S. 418, 433-34 (2003). The revision changes the law to the pre-Moseley standard. Under that test, injunctive relief is available if a plaintiff can establish that (1) its mark is famous; (2) the defendant is making commercial use of the mark in commerce; (3) the defendant’s use began after the plaintiff’s mark became famous; and (4) the defendant’s use presents a likelihood of dilution of the distinctive value of the mark. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1324 (9th Cir. 1998).”

Applying this standard to the facts alleged in the Levi’s complaint, the court found “Plaintiff has shown that its trademarks are famous [though the court did not examine the factors set forth in 15 U.S.C. § 1125(c)(2)(A) to support such a finding]; Defendant is using the mark in commerce; Defendant’s use began after the mark became famous; and the use is likely to cause dilution.”

The court concluded its analysis in a strange fashion — by discussing infringement: “Furthermore, Defendant’s trademark infringement was willful. Defendant had prior knowledge of Plaintiff’s trademarks and the similarity between both companies’ products, but nonetheless continued to use the offending designs.” The court apparently believed these facts supported its finding of dilution by blurring. In my view, however, these facts are superfluous to Levi’s dilution claim. Moreover, the court unnecessarily confused its dilution analysis by introducing infringement principles to this distinct cause of action. The court instead should have examined the six factors indicating dilution by blurring set forth in 15 U.S.C. § 1125(c)(2)(B).

One final thought: it’s a mystery to me why an established company like Georgiou would allow a default judgment to be entered against it. Even if it had engaged in the wrongdoing the complaint alleged, a simple notice of appearance and minimal participation in the case likely would have lessened its worst-case scenario to a stipulated permanent injunction. Its doing so probably would have saved it $85,000.

As I was attending the International Trademark Association’s roundtable today on the Trademark Dilution Revision Act, I had a thought: the Trademark Dilution Revision Act is misnamed. It really should be called the “Trademark Dilution Replacement Act.” To my mind, that title would be more accurate because the Trademark Dilution Revision Act does not revise the Federal Trademark Dilution Act as much as replace it.

Sure, much of the FTDA survives in the TDRA. But as I understand it, the TDRA replaces all of 15 U.S.C. § 1125(c) — where the FTDA used to reside — with brand new text. H.R. 683, which upon enactment became the TDRA, states: “Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended — (1) by striking subsection (c) and inserting the following…” which goes on to recite the text of the TDRA. In other words, the old was thrown out and replaced with the new. Right?

The Second Circuit apparently doesn’t think so. In the first appellate decision to touch on the TDRA, Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., No. 06-0435, 477 F.3d 765 (2d Cir. 2007), the Second Circuit persists in analyzing dilution in terms of the FTDA. It states:

“The FTDA, as amended effective October 6, 2006, entitles the owner of a famous, distinctive mark to an injunction against the user of a mark that is ‘likely to cause dilution’ of the famous mark. 15 U.S.C. § 1125(c)(1) (hereinafter, the ‘amended statute’). The amended statute applies to this case to the extent that Starbucks has sought injunctive relief on the issue of dilution.”

Even if technically correct — H.R. 683 does refer to the act of deleting the old statutory text and inserting the new statutory text as being an “amendment” (albeit to the Trademark Act of 1946 and not the FTDA) — I think focusing on this technicality is a mistake. The FTDA is gone. It no longer applies. The TDRA is what controls now. Maybe this is a nerdy distinction, but I think it unnecessarily confuses this historically confusing area of the law to act like the dead-and-gone FTDA continues to exist, just in an amended form.

Is there any part of the FTDA that continues to exist outside of the TDRA? If not, future courts would do well to analyze dilution claims in terms of the TDRA rather than the now-superseded FTDA.

I can’t for the life of me remember where I first saw this. Some resourceful blogger must have pointed me to it in the last week or so. In any case, it’s been on my mind ever since. It’s an interview with Scot Duvall (pictured left), attorney for Victor and Cathy Moseley of “Victor’s Secret” and Moseley v. V Secret fame. In it, Mr. Duvall discusses Moseley, the need for a dilution cause of action, and his work last year with the International Trademark Association to revise the statute.

His view on the new “likelihood of dilution” standard:

“The ‘likelihood of dilution’ standard is offset by a narrowing of what constitutes a ‘famous’ mark, which is a mark of widespread renown recognized by the general consuming public of the United States. This is a watershed moment in the federal law of dilution. Brands that are ‘famous’ only in a niche product market, or only in a region of the United States, no longer qualify for protection under federal dilution law. This makes sense to me and to many in the trademark community. Dilution was always intended to be an extraordinary remedy for a limited number of extraordinary marks, and the TDRA takes the law back to these essential basics.” 

The impact Mr. Duvall believes the Trademark Dilution Revision Act will have:

“Undoubtedly, issues will arise for resolution under the TDRA over the next several years. Litigants and judges will try their hand at applying the new standards to interesting cases. We will probably read about a headline-making case from time to time and debate whether the court reached the correct result. For now, famous brand owners and small businesses alike would be well-advised to tread the dilution waters carefully – and to consult their trademark counsel before launching new products or services that call to mind a well-known brand (or bringing suit against a newcomer under either of the dilution causes of action).”

The full interview, conducted by law student Jessica Tipton, is published in The Brand: The Internet Magazine of Intellectual Property, an interesting trademark law resource in its own right. I’m glad I discovered it. Or that someone pointed me to it. Whatever.