Seattle Trademark Lawyer

Not to lean too heavily on the New York Times, but I enjoyed a just-in-time-for-Christmas article it published last week on counterfeiting.

The paper reported the feds recently made 177 seizures in the U.S. and Mexico that netted 327,000 counterfeit items worth $77 million and led to 33 arrests (including three in South Korea). The haul was a bit unusual because it included a large number of low-end goods: Christmas lights, football jerseys, and Angry Birds toys. Many of the fakes pose a health risk.

“Counterfeit batteries are going to explode, a counterfeit electrical cord might catch fire and burn the house down,” the director of Immigration and Customs Enforcement said. “Toys are always a concern. You never know what’s going into the actual manufacturing in terms of the chemicals. Obviously you don’t know whether they have been tested in terms of, are they safe for toddlers.”

That’s equally true with counterfeit medicine and counterfeit air bags, which he also mentioned.

The moral of the story is it’s not all about fake Rolexes and knock-off Gucci hand bags for counterfeiters any more, though there are plenty of those out there as well.

Last week, the NYT published an article on the proposed “PROTECT IP Act,” the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011.

The article frames the issue as pitting those in favor of a means to better enforce IP rights on the Internet against those in favor of free Internet. Or to put faces on those interest groups, the Motion Picture Association of America and the U.S. Chamber of Commerce versus the Electronic Frontier Foundation and Google. That’s how many have couched the debate.

I’m all for a free Internet, believe me. But I’m also (obviously) all for IP rights. And I can say that IP owners are getting killed by overseas infringers — particularly counterfeiters. The article characterizes enforcement efforts through our current system as playing the arcade game of “Whac-a-Mole,” and that’s an apt comparison. It’s a real challenge to enforce a federal court’s injunction against someone who has never set foot in the States, has no bank accounts here, has no property here, and often doesn’t care what a U.S. judge says.

Others are in a better position to discuss the merits of the proposed statute, and the current state of the legislation. I know many are harshly critical of it. But from my daily practice, it is abundantly clear that U.S.-based IP owners need a helping hand. Whether the Protect IP Act is the best way to do that remains an open question.

Here’s a collection of trademark basics, five years in the making. I’d been meaning to corral these suggestions for new clients and new trademark owners. Hopefully these posts shed some light on this murky business (which really isn’t that murky after all).

• What is a trademark? A copyright? A patent?
• How to select a protectable trademark
• The difference between descriptive and suggestive trademarks, and why it matters
• The right way to use a trademark
• What you need to know about trade dress
• Maximizing trademark rights without obtaining a registration
• Is state trademark registration appropriate for your mark?
• The benefits of obtaining a federal registration
• Can one reserve a trademark?
• A strategy to consider when registering a trademark on a budget
• Strategies to consider when your application for trademark registration is pending
• The enlightened way to enforce trademark rights
• If I win my trademark infringement claim, can I recover my attorney’s fees?
• Tips on drafting enforceable injunctions
• A checklist in drafting trademark license agreements

Other posts focusing on trademark basics can be found by clicking the “Trademark Law 101” category hyperlinked below.

Have I missed any topics? Anything still seem mysterious? Let me know!

The Associated Press reports that colleges are registering their brands as .xxx domain names to prevent porn sites from doing so.

Their strategy takes advantage of the sunrise provisions for .xxx domain names that STL discussed here.

That’s a fine strategy for brand owners who have concluded that blocking porn providers is worth the financial commitment required to register domain names the brand owners will never use.

After all, a porn site associated with universityofwashington.xxx probably wouldn’t reflect well on the University of Washington (who is mentioned in the article), even though no one would think the site is owned or approved by the UW in any way.

Still, it requires the UW and similar brand owners to pay a bunch of money to domain name registrars forever to continue to tie up those names. And there’s no way a brand owner can think of all possible combinations involving their brand that a porn seller might use.

Indeed, knowing a .xxx site isn’t likely to create a likelihood of confusion with the brand owner’s legitimate site, brand owners may choose to ignore the .xxx issue.

It’s just too bad the .xxx scheme is potentially as much of a headache for brand owners as it is a boon for domain name registrars.

We used to have a sliding scale in the Ninth Circuit for analyzing the elements needed to obtain a preliminary injunction, a remedy that’s potentially available in trademark infringement cases.

Just a few years ago, a Ninth Circuit plaintiff needed to show either: “(1) a likelihood of success on the merits and the possibility of irreparable injury; or (2) that serious questions going to the merits were raised and the balance of hardships tips sharply in its favor.” As the court explained, “These two alternatives represent ‘extremes of a single continuum,’ rather than two separate tests…. Thus, the greater the relative hardship to [the party seeking the preliminary injunction,] the less probability of success must be shown.” See, e.g., Clear Channel Outdoor Inc. v. City of L.A., 340 F.3d 810, 813 (9th Cir.2003).

Then came Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008), which reversed a Ninth Circuit preliminary injunction decision and seemingly banished the sliding scale — at least to the extent it enabled a plaintiff to obtain a preliminary injunction with only the “possibility” of irreparable harm. As the court put it, “[a] plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.”

But the sliding scale has slid back into favor.

In January, the Ninth Circuit held that the “‘serious questions’ approach survives Winter when applied as part of the four-element Winter test. That is, ‘serious questions going to the merits’ and a balance of hardships that tips sharply towards the plaintiff can support issuance of a preliminary injunction, so long as the plaintiff also shows that there is a likelihood of irreparable injury and that the injunction is in the public interest.” Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1135 (9th Cir. 2011).

And last week, the court followed the same path in deciding Developmental Services Network v. Douglas, 2011 WL 5966363 (9th Cir.). It found: “‘Plaintiffs seeking a preliminary injunction in a case in which the public interest is involved must establish that they are likely to succeed on the merits, that they are likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in their favor, and that an injunction is in the public interest.’ We have glossed that standard by adding that there is a ‘sliding scale’ approach which allows a plaintiff to obtain an injunction where he has only shown ‘serious questions going to the merits’ and a balance of hardships that tips sharply towards the plaintiff … so long as the plaintiff also shows that there is a likelihood of irreparable injury and that the injunction is in the public interest.”

So, the sliding scale is alive and well after all — as long as it lives within the four-part Winter test and isn’t applied to lessen the plaintiff’s showing of irreparable harm beneath the threshold of a likelihood of irreparable harm. Until, perhaps, the Supreme Court revisits the issue.