Seattle Trademark Lawyer

Mary Whisner points out in her Trial Ad (and other) Notes blog that the Federal Bar Association of the Western District of Washington has published a profile of Benjamin Settle, one of the Western District’s newest judges (article starts on page 7). This is a great introduction to Judge Settle, and one those who practice in the Western District should read. (STL’s July 10 post on Judge Settle here).

Of particular interest to local practitioners:

“Judge Settle has a couple of tips for lawyers who will appear before him. First, get to the heart of the matter as soon as possible. Most cases can be evaluated within a month of arriving in the office, and the client is best served when lawyers zero in on the optimal resolution without going down ‘bunny trails.’ And second, make a bona fide effort to settle early. In cases where attorney fees may be awarded to the prevailing party, Judge Settle will always look to see if the attorneys were more interested in large fees than in protecting the interests of their clients through early alternative dispute resolution.”

As STL readers know, Champagne only comes from the Champagne region of France (STL post here). And Wild American Shrimp only come from “their native habitat in the coastal waters of the Gulf and East Coasts of the United States” (STL post here). 

As I suspect Italians have long known, true Parmesan cheese only comes from Italy. The five regions around Parma, in northern Italy, to be exact, and is made only from raw milk, with no additives, and is aged at least one year. At least that’s what the European Court of Justice ruled today.

Billboard at the border of Parma and Piacenza announcing
the home of Parmigiano-Reggiano cheee. Photo credit: J.P. Lon

The ruling was a setback for German producers whose “Parmesan” cheese was deemed to be imitation. In so ruling, the court rejected Germany’s argument that the name was generic for a type of hard, crumbly cheese that is often grated over food. On that issue, the court found:

“When assessing the generic character of a name, the Court has held that it is necessary, under Article 3(1) of Regulation 2081/92, to take into account the places of production of the product concerned both inside and outside the Member State which obtained the registration of the name at issue, the consumption of that product and how it is perceived by consumers inside and outside that Member State, the existence of national legislation specifically relating to that product, and the way in which the name has been used in Community law.

“As indicated by the Advocate General in points 63 and 64 of his Opinion, the Federal Republic of Germany restricted itself to providing quotations from dictionaries and specialist literature which do not provide any comprehensive view of how the word ‘Parmesan’ is perceived by consumers in Germany and other Member States, and failed even to give any figures as to the production or consumption of the cheese marketed under the name ‘Parmesan’ in Germany or in other Member States.

“According to the documents in the case, in Germany, certain producers of cheese called ‘Parmesan’ market that product with labels referring to Italian cultural traditions and landscapes. It is legitimate to infer from this that consumers in that Member State perceive ‘Parmesan’ cheese as a cheese associated with Italy, even if in reality it was produced in another Member State.

“Finally, at the hearing, the Federal Republic of Germany was also unable to provide information on the quantity of cheese produced in Italy under the PDO ‘Parmigiano Reggiano’ and imported into Germany, making it impossible for the Court to use the factors relating to the consumption of that cheese as indicators of the generic character of the name ‘Parmesan’.

“Since the Federal Republic of Germany has therefore failed to show that the name ‘Parmesan’ has become generic, use of the word ‘Parmesan’ for cheese which does not comply with the specification for the PDO ‘Parmigiano Reggiano’ must be regarded for the purposes of the present proceedings as infringing the protection provided for that PDO under Article 13(1)(b) of Regulation No 2081/92.”

“U.S. foodmaker Kraft Foods Inc. has used the name Parmesan for grated hard cheese since the mid-1940s, according to its Web site. ‘Kraft Grated Parmesan’ was introduced in green and red canisters in 1945. Donna Hrinak, a company spokeswoman in Zurich, Switzerland, said Kraft doesn’t sell Parmesan cheese in Europe.”

The case cite is Commission v. Germany, C-132/05 (European Court of Justice, Feb. 26, 2007).

On Feb. 21, the Ninth Circuit took the unusual step of amending its six-month old decision in Jada Toys, Inc. v. Mattel, Inc., deciding the “new” standards established in the October 2006 Trademark Dilution Revision Act apply to Mattel’s dilution counterclaim, not the old standards set forth in the Federal Trademark Dilution Act. In doing so, the court applied the TDRA’s “likelihood of dilution” standard, four-factor test for assessing fame, and six-factor test for determining the existence of “dilution by blurring.” After applying these standards, the court found the result was the same as under the old standards: a reasonable trier of fact could conclude that Jada Toys’ HOT RIGZ mark, used in connection with toy trucks, was likely to dilute Mattel’s famous HOT WHEELS mark used in connection with toy vehicles.

The court’s Aug. 2, 2007, decision applied the old “actual dilution” standard because the case was filed before the TDRA became effective. The court explained in a footnote: “Because this action was filed in 2004, prior to the 2006 amendment of § 1125, … the previous version of § 1125 applies, codified at 15 U.S.C. § 1125(c)(1) (2000).” (STL post here.)

The amended decision replaces that footnote with an explanation as to why the “likelihood of dilution” and other standards established in the TDRA apply instead:

“We note that in this case the district court applied the prior version of the Federal Trademark Dilution Act (‘FTDA’), … which required a showing of actual dilution. The actual dilution requirement was a product of the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003), where the Court held that the federal dilution statute required a showing of actual dilution. However, since that time the FTDA has been amended so as to require only a likelihood of dilution to succeed. In this case, we chose to apply the standard currently in operation so as to adhere to our prior precedent established in Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1009-10 (9th Cir. 2004), in which we held that application of the FTDA to an alleged diluting mark that was in use before the statute’s passage was not retroactive because the FTDA authorizes only prospective relief.”

The court recognized that applying TDRA standards to a case that had been filed before the TDRA was enacted was inconsistent with its decision last year in Horphag Research Ltd. v. Garcia:

“We are aware that in Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1035 (9th Cir. 2007) (STL post here), we applied the FTDA retroactively, thereby creating an unintentional intra-circuit conflict with Nissan. In Horphag, however, neither party mentioned the TDRA in its briefs, nor moved for a petition for panel rehearing or to vacate the mandate in light of the TDRA’s passage. Moreover, the plaintiff in Horphag prevailed under the more stringent version of the federal dilution statute. Accordingly, recalling the Horphag mandate at this point would serve no purpose.”

It will be interesting to see whether the court’s amended decision will affect Phase Forward Inc. v. Adams, 2008 WL 340951 (N.D. Cal.) (STL post here), which granted plaintiff’s motion for reconsideration earlier this month based on the now-superseded Jada Toys decision that applied the FTDA’s standard for fame (which recognized niche market fame) rather than the TDRA’s standard (which requires nationwide fame). My guess is the Northern District of California will recognize this decision as yet another intervening change in controlling law and will restore its previous dismissal of plaintiff’s dilution claim.

The case cite is Jada Toys, Inc. v. Mattel, Inc., __ F.3d __, 2008 WL 450891, No. 05-55627 (9th Cir. Aug. 2, 2007, amended Feb. 21, 2008).

There’s a whole lotta dilution goin’ on. That’s why this weekend is Trademark Dilution Weekend. Today: XEROX and GOOGLE. Tomorrow: the Ninth Circuit’s amended decision applying the “new” Trademark Dilution Revision Act standards in Jada Toys v. Mattel, Inc.

The Afro-IP blog, all the way from South Africa and the United Kingdom, apparently follows U.S. politics pretty closely, because yesterday it latched onto a phrase Hilary Clinton used in her Feb. 21 debate with Barack Obama. She reportedly called him the candidate of “change you can Xerox.” Ms. Clinton’s line reportedly drew boos from the audience, but probably not because of its implications on Xerox’s well-known brand.

Afro-IP points out that Ms. Clinton’s statement — now re-published in headlines around the world — is something of a setback for Xerox Corp., which has campaigned against the public’s using its trademark as a noun or verb for fear its mark will become generic. (In October, STL discussed a Xerox anti-genericide advertisement here.)

Afro-IP states: “To date, the Xerox company has provided a successful example of a company which was able to prevent the genericide of its core trademark through an extensive public relations campaign advising consumers to ‘photocopy’ instead of ‘Xeroxing’ documents (the brand did become generic in Russian, Bulgarian, Portuguese and Romanian though). The Xerox company also has extensive operations in Africa, where its customers will be tuning into the US election extravaganza.”

While Ms. Clinton’s comment isn’t going to turn a protectable trademark into a generic one, it must be giving Xerox’s branding people fits.

The Illinois Business Law Journal reports this sort of thing is what Google Inc. has been trying to avoid. It recently published a nice article chronicling that company’s efforts to hold on its trademark rights. Here’s its take on two events from 2006:

“In early 2006, a television commercial for Pontiac automobiles urged viewers to ‘Google ‘Pontiac’ to find out’ more. Curiously, Google did not object to the commercial’s usage of ‘Google’ as a verb, even though the infraction seems similar to various other instances that prompted a letter from Google’s attorneys. Indeed, Google essentially consented to the commercial’s usage of ‘Google,’ since Pontiac contacted Google to obtain permission for use in the ad. This particular instance of generic use may be especially damaging to Google, since their consent to the use is similar to that of the Otis Elevator Company, which weighed heavily in the finding of genericness. However, Google might successfully argue that the video of the commercial included images of the Google search page being used, reinforcing the public’s understanding that the phrase ‘Google ‘Pontiac’ to find out more’ means use of the Google search engine.

“In mid-2006, Merriam-Webster’s Collegiate Dictionary added the term ‘Google’ as a verb. However, the dictionary’s lexicographers were sensitive to Google’s attempts to protect its trademark, and crafted the entry accordingly: ‘to use the Google search engine to obtain information about (as a person) on the World Wide Web’. The induction into Webster’s dictionary was marked by an article in the Washington Post, which drew a cookie-cutter letter from Google’s trademark lawyers. Like its previous letter to Word Spy, this response This in turn sparked cries of outrage and disappointment for Google’s apparent lack of humor.”

So, what’s the future hold for Google’s mark? The Illinois Business Law Journal thinks it will remain protectable as long as Google remains vigilant in protecting it against everyday use — like Ms. Clinton’s use of XEROX.

Photo credit: Reuters/Jessica Rinaldi (Democratic debate)

On Feb. 5, Western District Judge James Robert granted in part and denied in part Bellevue-based apparel designer Derek Andrew, Inc.’s motion for preliminary injunction against fitness drink manufacturer Vital Pharmaceuticals, Inc. Derek Andrew sells a line of clothing and related products under its RED LINE trademark. Vital sells a line of fitness drinks under its REDLINE trademark.

The problem, the court found, was with Vital’s use of athletic clothing and related goods to promote its REDLINE drink. To the extent Vital used REDLINE alone on such goods (which the court found Vital voluntarily had stopped doing), the court found that Derek Andrew had demonstrated a likelihood of confusion. However, the court found no such likelihood of confusion existed when Vital uses REDLINE accompanied by the slogan, “The Ultimate Energy Rush.” These additional words, the court found, “sufficiently identifies [Vital’s] attempts to advertise its energy drink on clothing and other apparel so as to avoid confusion with [Derek] Andrew’s RED LINE clothing.”

Based on this finding, the court enjoined Vital from using REDLINE “by itself, on any form of clothing and related products,” but found that Vital “may continue to advertise on clothing and related products using the slogan ‘REDLINE - The Ultimate Energy Rush,’ and other similar iterations of this slogan.”

Yesterday, Derek Andrew filed a motion asking the court to reconsider the latter part of this decision.

The case cite is Derek Andrew, Inc. v. Vital Pharmaceuticals, Inc., No. 07-1364 (W.D. Wash. Feb. 5, 2008) (Robart, J.).