Seattle Trademark Lawyer

STL is taking a quick New Year’s break while I enjoy a little R&R in San Francisco. I’ll be back at it on Jan. 3.

In the meantime, here’s a shot from my favorite New Year’s Eve ever — with my wife on the Spanish Steps in Rome.

Happy New Year!!

The Ninth Circuit yesterday clarified what it takes for the owner of a federally registered trademark to succeed in an infringement action against another user of the mark in connection with goods or services that are different than those specified in the owner’s trademark registration.

Applied Information Sciences Corp. owns the registered trademark SMARTSEARCH for certain computer-related functions, and claimed that eBay, Inc. uses the same SMARTSEARCH mark for its Internet auction Web site, which AIS contended will cause confusion with its own SMARTSEARCH product. The Central District of California disagreed, and granted summary judgment to eBay.

The Ninth Circuit questioned the Central District’s reasoning, but affirmed the decision since AIS failed to produce any admissible evidence tending to show a likelihood of confusion. The Ninth Circuit found:

“[A] plaintiff trademark owner must establish a valid, protectable interest in order to proceed to the second prong of the trademark infringement analysis — the likelihood of confusion resulting from the defendant’s alleged infringing use. Having established a protectable interest by proving it is the owner of a registered trademark, the owner does not additionally have to show that the defendant’s allegedly confusing use involves the same goods or services listed in the registration.

“The district court here found that AIS’s registration was limited to ‘computer software and instruction manuals sold together which allow the user to retrieve information from online services via a phone line’ in various ‘fields.’ The district court, however, then concluded that because AIS’s federal registration did not include eBay’s use of the mark as ‘a hyperlink for its web-based trading service,’ AIS’s infringement action failed for lack of a protectable interest.”

This, the Ninth Circuit found, was based on a misreading of Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985):

“Our refusal to allow Levi Strauss to rely on its federal registration stemmed from the way in which Strauss pled its case. Strauss was attempting to extend its own use of its registered mark to goods not specified in its federal registration. Its federally registered trademark was limited to pants pocket tabs, but its trademark infringement claim was based on an alleged trademark in clothing pocket tabs generally. … Where, however, a plaintiff bases its trademark infringement claim upon the confusion the defendant’s use will create for the plaintiff’s use of its mark in connection with its own registered goods or services, that claim comes within the scope of its protectable interest.

“Here, AIS alleged infringment of a mark it used in connection with the kind of products specified in its federal registration: ‘computer software and instruction manuals sold together’ that allow users to retrieve information online. Whether or not eBay ever used the SmartSearch mark in connection with goods specified in AIS’s registration is irrelevant to the question of whether AIS established a valid, protectable interest. By virtue of its federal registration, AIS discharged its burden of establishing the validity of the SmartSearch mark in connection with those goods listed in the registration. Whether eBay’s use of SmartSearch infringed AIS’s protected interest then becomes a question of likelihood of confusion.”

The case cite is Applied Information Sciences Corp. v. eBay, Inc., Nos. 05-56123 and 05-56549, __ F.3d __, 2007 WL 4553999 (9th Cir. Dec. 28, 2007).

In 2005, Lloyd Lifestyle Limited and Lloyd IP Limited filed an opposition proceeding with the U.S. Trademark Trial and Appeal Board opposing Tukwila, Wash.-based Soaring Helmet Corp.’s intent-to-use application to register NITRO as a word mark for “motorcycle helmets and protective clothing.” Lloyd IP Limited and VSJ Limited separately petitioned to cancel Soaring Helmet’s registration for NITRO RACING, also a word mark used in connection with “motorcycle helmets and protective clothing.”

On Dec. 11, the TTAB ruled in favor of Lloyd in both proceedings.

TTABlogger John Welch describes the decision as follows:

“In a battle over the marks NITRO and NITRO RACING for motorcycle helmets and protective clothing, the Board ruled in favor of Opposer/ Petitioner Lloyd Lifestyle in finding that Applicant/Registrant Soaring Helmet was not the owner of the marks at the time it applied for registration. Consequently, the Board sustained Lloyd’s opposition and granted its petition for cancellation.

“Plaintiffs and Defendant were using the same Chinese factory to make their respective helmets, which led to the original contacts between the parties. Plaintiffs claimed that it developed the NITRO products for sale in Europe and, when Defendant expressed an interested in selling the products in the USA, Plaintiffs agreed that they could sell NITRO brand products made by approved manufacturers. Plaintiffs also claimed that it directed Defendants to register the mark in the USA on Plaintiffs’ behalf. Defendant asserted that Plaintiffs expressed no interest in the USA, and that Defendant, by using and registering the marks in the USA, became the owner.

“Because there was no written agreement between the parties, the Board had to decide which version of the story was supported by the evidence. It found Plaintiff’s account to be ‘more reliable and more credible’ and Defendant’s testimony to be ‘argumentative, internally contradictory and otherwise less than clear.’”

The case cite is Lloyd Lifestyle Ltd. v. Soaring Helmet Corp. (Opp’n No. 91164265 and Cancellation No. 92045075) (TTAB 2007).

Plaintiff Robert Guichard is an independent film producer who is working on a proposed, unproduced screenplay titled “Whisper of the Blue” about an ex-Navy SEAL who sets out to find a ship of sunken gold and comes across a modern-day pirate. In February 2006, Mr. Guichard launched a Web site at www.whisperoftheblue.com that contains information about his project.

Filiming on the set of “Whisper of the Blue”

In Oct. 2006, Mr. Guichard sued in the Northern District of California to enjoin defendant Universal City Studios LLLP from using “Whisper” as the title of its upcoming motion picture, which had been in production since November 2004. Universal’s movie is about the kidnapping of a seemingly meek 10-year-old boy whose kidnappers soon realize is far less innocent than he appears and, while he may be quiet, they had better be careful because his whisper “may be the last thing that they hear.”

Universal’s “Whisper” (now on DVD)

Plaintiff argued he had gained exclusive control over the use of the word “whisper” in the title of his project because he had acquired a service mark in his Web site domain name for “providing information, via the Internet, in the field of entertainment, namely, the development, production and distribution of motion picture films.”

The court disagreed. In June, Judge Jeffrey White denied Mr. Guichard’s motion for preliminary injunction because “his described use of the WHISPER OF THE BLUE mark does not satisfy the ‘use in commerce’ requirement necessary to establish priority of use. Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

The court also found that Universal had already invested more than $12 million in its “Whisper” movie by the time Mr. Guichard launched his Web site so Universal had priority, not Mr. Guichard.

The court similarly rejected Mr. Guichard’s evidence of confusion: “During oral argument on this motion, in an effort to establish possibility of confusion, Plaintiff introduced an exhibit consisting of a number of Google searches he had conducted using the terms ‘whisper underwater production,’ ‘whisper underwater actors,’ and ‘whisper underwater ‘feature film’. The searches pulled up listings that included both the website for Plaintiff’s proposed film project and other information and listing[s] with reference to Defendants’ motion picture. However, the search is not probative as the search function calls up any internet listing with the search terms, including any motion picture with the search words in the same listing. The searches are far too broad and not probative as to likelihood of confusion. There is no evidence of actual or likelihood of confusion in the record.”

On Dec. 20, the Ninth Circuit upheld the Central District’s denial of Mr. Guichard’s motion for prelminiary injunction. In an unpublished decision, it found: “The district court’s conclusion that Guichard’s web presence at whisperoftheblue.com was not a use in commerce sufficient to create a protectable trademark interest is consistent with our precedent. Because Guichard has no protectable trademark interest, no infringement occurred.”

The case cite is Guichard v. Universal City Studios LLLP, No. 07-16089, 2007 WL 4467589 (9th Cir.). 

Still not quite as romantic as Christmas in Madrid, but it’s actually snowing in Seattle!! Peace! (Old photo; STL will resume posting soon.)