Seattle Trademark Lawyer

On April 12, the Ninth Circuit affirmed the Central District of California’s finding that DISINFECTABLE is generic for disinfectable nail files and agreed that summary judgment dismissal of plaintiff’s trademark infringement claim was proper.

In Rudolph International, Inc. v. Realys, Inc., __ F.3d __, 2007 WL 1077176 (9th Cir.), plaintiff Rudolph and defendant Realys manufacture and sell abrasive nail files. California regulations require nail technicians to disinfect instruments used on multiple customers. In response to these regulations, Rudolph developed a line of files that could withstand the disinfection process. At that time, it stopped using the term “sanitizable” to describe its files and adopted the term “disinfectable,” which it used in connection with its established brand names “Soft Touch,” “Les Mirages,” and “Quadmetrics.”

Thereafter, Rudolph’s president, James Rudolph, was quoted in a trade journal saying that “[t]he word ‘sanitizable’ as it relates to nail and foot files needs to be abandoned forever. … The word to adopt is ‘disinfectable.’”

At the behest of its largest customer, Realys followed suit and started calling its files “disinfectable” instead of “sanitizable.” Rudolph sent Realys a cease-and-desist letter demanding that Realys stop using the term. When Realys refused, Rudolph sued.

Rudolph argued the district court erred in dismissing its trademark infringement claim because the mark should have been classified as “suggestive” and protectable, rather than “generic” and unprotectable.

However, the Ninth Circuit agreed with the district court’s finding that “No imagination or mental leap is required to understand that ‘disinfectable’ in the nail file industry means ‘capable of being disinfected.’”

The Ninth Circuit concluded: “The term ‘disinfectable’ relates to the type of product rather than its source and consequently falls on the ‘what-are-you’ side of the genericness test. In contrast, the source of the product is identified by Rudolph’s established brand names of ‘Soft Touch,’ ‘Les Mirages’ and ‘Quadmetrics.’ The district court correctly held that Rudolph failed to introduce sufficient evidence to meet its burden of persuasion that ‘disinfectable’ is not a generic mark. This question does not present a genuine issue of material fact and is appropriate for summary judgment notwithstanding our reluctance to take such action in trademark cases.”

In August 2006, Microsoft Corp. brought suit in the Western District against “John Does 1-217” for alleged cybersquatting, trademark infringement, and other trademark related causes of action. Microsoft described the unknown defendants as the “registrants, assignees, traffickers, and users of numerous Internet domain names that contain or consist of Microsoft’s marks and/or intentional misspellings of Microsoft’s marks.” Microsoft further alleged that “Defendants’ Websites contain numerous advertisements and/or hyperlinks to a variety of products and services” that enable the John Doe defendants to profit from their infringement. The marks defendants allegedly infringe include the registered marks HALO, MICROSOFT, MS, MSN, WINDOWS, WINDOWS XP, XBOX, and XBOX LIVE.

After conducting third-party discovery, Microsoft amended its complaint to name defendants Sule Garba of Shaker Heights, Ohio; Darin Grabowski of Oak Creek, Wisconsin; and Yi Ning of Boston.

On April 11, Western District Judge Ricardo Martinez entered a Stipulated Order Entering Permanent Injunction enjoining Mr. Ning from using or infringing Microsoft’s marks or registering domain names that are identical or confusingly similar to Microsoft’s marks. The order does not dismiss Microsoft’s claims against Mr. Ning but such claims presumably will be dismissed in due course. The stipulated order does not affect Microsoft’s claims against the remaining defendants.

The case is Microsoft v. Garba, No. 06-1192.

In February, STL wrote about “Other Seattle Law Blogs” in an effort to survey who else is writing about the law in Seattle. And, I started collecting links to those blogs in STL’s navigation bar (scroll down to the bottom on the right). Here are three more blogs written by Seattle lawyers. If the subject matter is of interest, they’re all worth a read.

First is Trial Ad Notes by Mary Whisner, a reference librarian (and lawyer) at the University of Washington School of Law’s Gallagher Law Library. Trial Ad Notes “presents news items and resources relating to trial advocacy, with a focus on Washington State.” Ms. Whisner began Trial Ad Notes in January 2005 as a resource for students taking UWSL’s trial advocacy course. However, it has become valuable to anyone interested in trial practice. Representative posts include “Forensic Sciences - Cautions and Recommendations,” “Summary Judgment and Gender,” and “Science Daily: Culture Is Key to Interpreting Facial Emotions.” As a reference librarian, Ms. Whisner is extremely well read and does a great job of bringing the best of what she finds to her readers’ attention. I personally owe her a debt of gratitude for her article, “A Blog’s LIfe,” which chronicles her experience launching her blog. It helped get STL started.

Next is the Maritime Injury Law Blog by Beard Stacey Trueb & Jacobsen, LLP. As its title suggests, this blog is published by plaintiffs’ Jones Act attorneys focused on the many risks Northwest fishermen face on the high seas. It is filled with summaries of news articles with harrowing titles like “Excursion Vessel and River Barge Collide,” “Broken Mast Kills Man,” and “Fisherman Rescued from Sinking Vessel.” And those are just the last three posts! My guess is these attorneys have no shortage of work.

The last blog is Employment Advisory, published by Rod Stephens of the Stephens Law Firm in the Seattle suburb of Kent. Mr. Stephens represents both employers and employees, and his blog reflects this even-handed focus. Recent posts discuss new Ninth Circuit case law interpreting the Uniformed Services Employment and Reemployment Rights Act and how employers should investigate employment claims. Mr. Stephens began publishing in November 2006.

I’ve added these blogs to STL’s navigation bar. If you’re aware of any other Seattle-based law blogs, please let me know!

Bellevue shoemaker Topline Corp. has a case going in the Western District against ten shoe sellers for federal trademark infringement, false designation of origin, common law trademark infringement, and violation of Washington’s Consumer Protection/Unfair Business Practices Act. Topline claims it sells its women’s shoes to Nordstrom, Macy’s, Victoria’s Secret, Kohl’s, and small fashion boutiques under the registered trademark FLIRT (Reg. No. 2283566). Topline alleges that defendants infringe its FLIRT mark by selling women’s shoes bearing the confusingly similar mark FLURT. 

Defendant Houser Shoes recently admitted as much. On April 4, the Western District entered a Consent Decree and Dismissal in which Houser admitted that its FLURT shoes infringed Topline’s FLIRT mark and agreed to an injunction enjoining it from “purchasing, selling or marketing footwear bearing the marks FLURT, GOTTA FLURT, or other colorable imitations of Plaintiff’s FLIRT trademark.”  

In exchange, Topline agreed to dismiss its claims against Houser without prejudice. Both parties agreed to bear their own costs in the litigation. The Consent Decree refers to a settlement agreement but does not disclose the terms. Judge Robert Lasnik entered the order.

Today, Topline and another defendant, Spoiled Rotten Boutique, submitted an identical Consent Decree with respect to Spoiled Rotten. Judge Lasnik presumably will enter it in short order.

The case is Topline Corp. v. Flurt Footwear, No. 07-00318.

Part 2 of the article, “How the Band Protects Its Brand: The Use of Trademarks to Protect and Promote the Musical Artist,” was published today in IPToday. For those who missed it, Part 1 is available here. Here’s an excerpt from the second installment:

“Like any other trademark, when selecting an artist’s professional name it is important to adopt a name that is both distinctive and unique. The more distinctive the name, the more effective the protection the name has as a trademark. Moreover, an artist should not only chose a distinctive name to protect its own identity, but the artist needs to avoid infringing upon other parties’ names. Because the likelihood of confusion between the two marks is the hallmark for trademark violations, a new artist should not choose a professional name that is identical or confusingly similar to an existing name in the music industry….”

“There have been numerous instances where an up and coming artist had to change its name due to trademark problems. For example, DINOSAUR JR. (formerly DINOSAUR), THE HOPEFULS (formerly THE OLYMPIC HOPEFULS), GREEN JELLY (formerly GREEN JELLÖ), AL FATZ (formerly FAT AL), DEATH FROM ABOVE 1979 (formerly DEATH FROM ABOVE), and THE VERVE (formerly VERVE) all had to change their professional names due to various trademark issues, the latter two involving similar record label names rather than other artist names. Moreover, commercial success does not guarantee litigation success: relative unknowns have forced successful artists to change their professional names. A recent example involved CBS’ rock band reality show Rock Star: Supernova, wherein the band, comprising famous musicians and the show’s winner, would be called SUPERNOVA. A lawsuit filed by a lesser known band called SUPERNOVA forced the reality band to change its name (not too creatively to ROCK STAR SUPERNOVA). Even the U.S. Postal Service was not pleased to see that there was an artist called “The Postal Service,” but an amicable resolution allowed the artist to retain its name.”

STL readers know of my interest in this issue. As I’ve said before, this is a series I wish I had written. Kudos to author Christopher R. Chase. I’m tempted to yell “Rock on!” but will just leave it with a dignified “Kudos.”