Seattle Trademark Lawyer

One example of many: The applied-for CarbonZero and Design
mark is unregistered but nonetheless displays the Circlce-R symbol.

The Circle-R symbol indicates that a mark is federally registered. It’s irksome when parties use it without having met the rigors needed for its lawful use. It’s even more irksome that the Lanham Act doesn’t penalize owners for displaying the symbol when they haven’t earned it. Imagine the PTO’s reaction when it got the drawing of this applied-for trademark design — sporting the Circle-R — falsely signaling it already has a federal registration. The PTO’s response? A mild office action directing that “Applicant must submit a new drawing with the ‘®’ deleted because it is not part of the mark.” What else could the PTO do? Ignorance is probably responsible for most misuse, but fraud is at the heart of some of it. I only wish the Lanham Act punished knowing misuse.

When adopting a new trademark, owners usually run from generic terms. Since generic terms aren’t protectable, the owner of BOWL-brand bowling alleys, for example, won’t make much headway attempting to protect its “brand” against use by competing bowling alleys. The same reasoning compels the owners of truly famous brands to do what they can to prevent their marks from falling victim to “genericide” — the point when their proprietary marks become common words and open for all to use. The owners of XEROX, TIVO, and GOOGLE are fighting this fight; the owners of escalator, nylon, and yo-yo gave up the ghost years ago.

Given all this, I found it amusing to come across a new company called “Generic Medical Services.” I suppose if you’re a contrarian, you embrace what others avoid.

Interestingly, this company isn’t alone. A little looking revealed the “Generic Theatre Company” at George Washington University in Washington, D.C. (slogan: “We may be Generic, but we’re never bland!”); the Generic Theater in Norfolk, Virginia; the Generic Manufacturing Corp., and the Generic Carpet Warehouse to name a few.

The PTO found VERY GENERIC PRODUCTIONS as a whole to be inherently distinctive, though it found “PRODUCTIONS” to be descriptive and, therefore, required a disclaimer. In this context, “GENERIC” isn’t generic in the trademark sense at all; it’s probably suggestive or arbitrary. Presumably for the same reason, the PTO granted Bothell, Wash.-based Generic Software, Inc., federal registrations for GENERIC SOFTWARE and GENERIC SOFTWARE and Design, though the registrations were later cancelled — presumably because of abandonment.

Sort of strange that the functional equivalent of ACME or BRAND-X can be protectable as a brand. Though I’m not a branding expert, I’d still caution against being too cute in selecting a new trademark. The fanciful EXXON and arbitrary APPLE seem infinitely stronger than anti-trademark brands that proclaim NO BRAND or I DON’T COME FROM ANY PARTICULAR SOURCE.

STL’s reported (here) on Cricket Communications’ trademark infringement lawsuit against Hipcricket, as well as the Western District’s denial of Hipcricket’s request to assert a supplemental counterclaim against Cricket (here). Now it’s time to report on the parties’ apparent settlement. On March 27, Western District Judge Marsha Pechman dismissed the parties’ claims and counterclaims against each other with prejudice, which can be un-done within 60 days if “the settlement is not perfected.” The settlement came before the court decided Hipcricket’s pending motion for summary judgment. The case had been set for trial on May 4.

The case cite is Cricket Communications, Inc. v. Hipcricket, Inc., No. 08-908 (W.D. Wash.) (March 27, 2009).

Yesterday, Prof. Kenneth Port of William Mitchell College of Law unveiled the online, searchable Mitchell Study on Trademark Litigation. Here’s how he describes it:

“In this study I compile and report on all 2,762 reported cases under the Lanham Act since its inception in 1947 that terminated a trademark law suit. The Study itself is searchable by case name, court, and ultimate result. You can also get a list, for example, of all suits in the last 60 years where the Federal Trademark Dilution Act was a significant claim. To view this Study, you must download Google Chrome browser as the Study is over 40,000 lines of code. Explorer and Firefox do not work well.

“At this web site, you will see graphs of the results of all cases. For example, you can see the comparison of trademark cases by circuit, the results, and damage amounts. It was very surprising to see that although the 2nd Circuit is a popular forum for trademark cases, the average results were not favorable to the plaintiff. The 11th Circuit is the big winner on damage amounts by Circuit.

“Going forward, this study will be updated on an annual basis. William Mitchell College of Law has invested more than 4,000 work hours to get this done. It is provided for no fee. It is intended to be used as a basis for other research and analysis. If you use it, please just credit our IP Institute.”

The database is powerful. Prof. Port put it to use in this law review article positing that trademark owners have used litigation to their competitive advantage, a phenomenon he calls “trademark extortion.” The article draws heavily from the Mitchell Study.

The Mitchell Study also has its limitations. For example, it is limited to “reported” (which I take to mean “published”) decisions through December 31, 2007, that “dispositively and terminally adjudicated a trademark claim.” Interestingly, the Study’s methodology states 2,762 Lanham Act cases meet these criteria. However, these criteria would not seem to capture “unpublished” cases, trademark cases that settled or otherwise were not “dispositively and terminally adjudicated,” or cases that were decided after December 31, 2007. The Study shows that only six cases in the Western District meet these criteria, the most recent of which were decided in 2003.

Like the Stanford IP Litigation Clearinghouse (which STL discussed here and here), the Study is an ambitious project. It gives practitioners, academics, and the public access to organized information about trademark cases — all free of charge courtesy from a professor and law school that spent more than 4,000 hours developing it.

It’s nothing short of exciting that these resources are becoming available.