Seattle Trademark Lawyer

The World Intellectual Property Organization says cybersquatting is on the rise.

Last year, trademark owners filed 2,696 arbitrations under the Uniform Domain Name Dispute Resolution Policy, up 26% percent over 2009 filings. That’s saying something, since 2009 represented a 16% increase in WIPO filings over 2008.

In 2000, WIPO had 1857 domain name cases involving 3,760 domain names. Ten years later, the number of filings increased by almost 1,000, involving 4,370 domain names.

Retail trademark owners represented the largest category of filers at 9.67%, followed by banking and finance at 9.31%, and biotechnology and pharmaceuticals at 9.26%. Surprisingly, the smallest category of filers were trademark owners in the luxury items category.

It’s not terribly surprising to me that cybersquatting has spiked, though it’s been a while since I’ve dealt with it in my practice. At least at the UDRP level. It’s just gotten too expensive to prosecute those cases unless there are big dollars tied to the outcome. And, frankly, UDRP proceedings can be a crapshoot.

Screen shot from plaintiff’s “The Parrot Lady” Web site

On April 22, Debbie Goodrich filed suit against Karen Allen in the Western District of Washington.

Plaintiff provides entertainment and other services under the name “The Parrot Lady.” Her complaint states she obtained a Washington business license under the name “The Parrot Lady Educational Entertainment” in 2001 and registered the parrotlady.com domain name in 2005.

Defendant owns a federal registration for THE PARROT LADY for “Exotic bird breeding and grooming.” The registration claims a first-use date in 1995. The complaint states that defendant owns a Torrance, Calif. sole proprietorship under the name “Birds & More” and maintains a website accessible at www.birdsandmore.com. The complaint alleges that defendant uses her mark in connection with bird-related goods and services.

Plaintiff alleges defendant or her representative has contacted a number of third parties complaining about plaintiff’s use of “The Parrot Lady” in advertising. The complaint states such third parties include Facebook, Critter Fest, and a Seattle-area YMCA, and those parties have removed advertisements publicizing plaintiff. 

Plaintiff seeks an order declaring that her use of THE PARROT LADY does not infringe defendant’s rights in THE PARROT LADY and claims superior rights in the mark in Washington. She also seeks to cancel defendant’s registration, alleging it is generic “for a woman having expertise in breeding and grooming exotic birds, such as parrots.”

The case cite is Goodrich v. Allen, No. 11-687 (W.D. Wash.).

I can’t remember seeing this before.

A motion to the Panel on Multidistrict Litigation to centralize a trademark dispute that’s spread over a number of districts.

That’s what plaintiffs Moroccanoil, Inc., and Moroccanoil Israel, Ltd., requested of their six cases — with five situated in the Central District of California and one in the District of New Jersey.

The Panel suggested that the parties cooperate, but declined plaintiffs’ motion to centralize the cases. There just wasn’t enough in common between the cases to justify plaintiffs’ request.

“On the basis of the papers filed and hearing session held, we are not persuaded that centralization would serve the convenience of the parties and witnesses or further the just and efficient conduct of this litigation. These actions do involve similar allegations of infringement of one or more of Moroccanoil’s trademarks, resulting from the sale or supply of purportedly counterfeit Moroccanoil Oil Treatment in 3.4 ounce bottles, which were sold at various retail outlets across the country. Despite the existence of some factual overlap among the present actions, highlighted by the alleged similarity of the counterfeit products and plaintiffs’ theory of a common source of counterfeit products, the proponents of centralization have failed to convince us that any shared factual questions in these actions are sufficiently complex or numerous to justify Section 1407 transfer.”

The case cite is In re Moroccanoil Trademark Litig., __ F.Supp.2d __, 2011 WL 1399464, No. MDL 2224 (U.S. Jud. Pa. Mult. Lit) (April 8, 2011).

Plaintiff Christian Louboutin’s (left) and
defendant Yves Saint Laurent’s red soled shoes

The Washington Post Thursday reported on an interesting trademark lawsuit.

Women’s shoe designer Christian Louboutin has sued designer Yves Saint Laurent in the Southern District of New York over the latter’s use of red soles on its women’s shoes.

Christian Louboutin has a registered trademark for the color red in connection with the shape of the soles of women’s shoes. It’s Reg. No. 3376197; it’s been on the books in the United States since January 2008, with a claimed priority date of March 8, 2006. The complaint alleges Christian Louboutin has been the substantially exclusive user of red soles on women’s shoes in the United States since 1992.

Christian Louboutin alleges that Yves Saint Laurent’s soles are confusingly similar with plaintiff’s “Red Sole Mark.” The complaint goes so far as to allege that YSL is selling counterfeit Louboutin shoes.

But back to the article. It provides a good summary of the trademark principles at issue, something I love seeing in the mainstream press.

In short, Louboutin’s Red Sole Mark needs to have secondary meaning if it’s to be protected under U.S. trademark law as a color mark. That’s from the Supreme Court’s decision in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). But if the color mark has acquired secondary meaning — meaning that consumers associate the color with a single source — and the color serves no functional purpose, including an aesthetic purpose, then the color is perfectly protectable as a trademark. Think Tiffany’s robin’s egg blue color, also a registered (and extremely valuable) trademark.

Whether Louboutin’s red soles function as a trademark and don’t serve an aesthetic purpose remains to be seen. If its Red Sole Mark isn’t protectable as a trademark, it can be freely copied — at least as far as trademark law is concerned.

The fact its color mark is registered means the court will presume it’s protectable.

That said, for my money, the color’s part of the shoe’s aesthetics. But I claim no expertise in women’s footwear. None whatsoever.

The case cite is Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., No. 11-2381 (S.D.N.Y.).

House of Descriptive Trademarks: San Francisco’s House of Prime Rib

One month from now, 10,000 trademark lawyers will begin to converge on San Francisco for the International Trademark Association’s annual meeting.

Let me know if you want to meet up; my schedule’s packed but it wouldn’t be right if we didn’t connect!

One place I’m sure to check out: the famed House of Prime Rib. Sure, I just saw it featured on Anthony Bourdain’s show. And I’m not really a fan of prime rib. But I’m a major fan of descriptive trademarks. Where better else to go while in town for INTA? House of Prime Rib? I’m there!

What’s your favorite descriptive trademark (besides STL, of course)? My local fav is Seattle’s Best Coffee. Not protectable on adoption; mighty protectable now. How cool is that?