Seattle Trademark Lawyer

For those attending tomorrow’s discussion on Washington’s amended right of publicity statute, I thought I’d add some more background (STL post about the gathering here). In particular, here’s a cheat sheet on the amendment I cribbed from the the House Bill Report’s summary of the amendment:

”When Applicable
The provisions of the bill apply to all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose.

“The provisions of this bill apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death.

”Determination of Rights
Personality rights shall be deemed to have existed before June 11, 1998, for purposes of determining who is entitled to the rights recognized under this chapter.

”Transferability of Rights
An individual or personality, or any subsequent owner of that individual or personality’s personality rights, may freely transfer their interest through any permissible inter vivos or testamentary instrument, regardless of when the transferring instrument was entered or executed.

“Personality rights do not expire and are owned and enforceable by those designated in a testamentary instrument or by intestate succession upon the death of the person, regardless of whether the law of the deceased person’s domicile, residence, or citizenship, recognizes a similar or identical property right.

”Definitions
A definition for ‘deceased individual’ is added. A deceased individual is any individual, regardless of the individual’s place of domicile, residence, or citizenship at the time of death, who has died since 1988.

“The language used to define ‘deceased personality’ is modified to include the phrase, ‘regardless of the personality’s place of domicile, residence, or citizenship at the time of death or otherwise.’”

STL’s previous post offered some strategies for finding the right expert witness in trademark cases. On Friday, the Las Vegas Trademark Attorney blog added a few suggestions, including the following:

“One popular online source is the online expert witness directory JurisPro. Other expert witness websites listing the credentials of various trademark experts include ALMExperts.com, expertwitnesses.com, and Intota.com.”

These are good tips. Thanks, Ryan.

For Westlaw users out there, here is another that I think is particularly worthwhile. The Intellectual Property Expert Witness Filings (IP-EW-DOCS) database contains expert reports, affidavits, deposition transcripts, and trial transcripts of expert witnesses who have testified in IP cases. This is a good way not only to identify who the quality trademark experts are, but also to learn how they have testified in previous cases. These same materials are great for those preparing to depose or cross-examine trademark experts. Westlaw can be pricey (and this is a “specialty” database that isn’t included in many plans — including my firm’s), but selective use of this resource can be well worth it. Lexis and other providers may have similar databases worth checking out. The federal court system’s PACER database, for one, offers incredible resources to anyone willing to wade through court filings and pay $0.08 per page.

Disclaimer: STL’s publisher is writing a book chapter on using experts in trademark litigation for Thomson-Reuters, the company that owns Westlaw (which may explain why I have expert witnesses on the brain). I’ve nonetheless tried not to let that influence what I’ve said here.

Expert witnesses can be hugely important in trademark cases. Particularly through survey evidence, they can help establish if a mark is generic (and hence unprotectable); that a descriptive mark has acquired secondary meaning (and therefore is protectable); that a mark has actually confused or is likely to confuse consumers with another mark; that a mark is famous; and that one user’s mark is likely to cause dilution by blurring or dilution by tarnishment. Experts also can help establish the opposite of these propositions.

So how do you find a capable trademark law expert? Here’s what I’ve come up with. First, check out trademark cases in which expert testimony has been offered. Find cases like yours. If neither the opposing side nor the court has blasted holes in the expert’s methodology, there’s a good chance they know what they’re doing. Second, ask around. The INTA list serve and other trademark law practitioners would be a good place to get some names. Third, check out the Internet. If an expert is writing and speaking on survey design, or is really shining in the area in which they would testify, that’s a good sign. Fourth, hit your local university. I’m a fan of teaching academics. If they can distill complex subjects for their students, they probably can do the same for a jury.

Once you’ve got a few names, vet the heck out of them. Check out the cases they’ve testified in. Talk to the lawyers who’ve hired them. Read what they’ve written. See what trademark lawyers think of them. Ask for references. Ask for sample expert reports. Due diligence can be time consuming. But it’s worth it. I am convinced that taking the time to hire the right expert witness up front can help you win or favorably settle your trademark case later on.

Still wondering about the new amendments to Washington’s right of publicity statute? You don’t have to be alone. On May 1, the King County Bar Association’s Intellectual Property Section will host a brown-bag lunch program on “Emerging Issues in Right of Publicity Law.” Panelists Bob Cumbow, Mel Simburg, David Green, and I will throw in our two cents and hopefully get a good discussion going. (For background, see STL posts on the amended statute here and here.)

Here’s the teaser the IP Section sent out:

“Washington and California have recently amended their right of publicity laws in reaction to important rulings last year involving the publicity rights of Jimi Hendrix and Marilyn Monroe. New York has considered and expressly rejected similar legislation, leaving that state (the domicile of both Hendrix and Monroe at the times of their deaths) as one that does not recognize descendible rights of publicity. Where does this leave the estates and agencies charged with protecting and exploiting these rights, and where will the litigation trail lead from here?”

The Section meeting starts at noon, with the program to follow from 12:15 to 1:15 p.m. It’s in the KCBA offices located at 1200 Fifth Ave, Suite 600. 

Hope to see you there!

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).