Seattle Trademark Lawyer

When things are slow in Seattle, STL looks elsewhere for trademark law cases worth reporting. Now is one of those times. Fortunately, Seattle University law student Michael Rice — who publishes the software-oriented Coderights law blog in his spare time — put me onto a new dispute out of the Eastern District of North Carolina. Skin care product maker Burt’s Bees, Inc., has sued rival Beenaturals, Inc., for trademark and trade dress infringement, dilution, and unfair competition. Burt’s alleges that Beenaturals is “copying or imitating marks identical or confusingly similar to Plaintiff’s BABY BEE^® word mark, bee and hive design marks, and trade dress, and displaying the same alone or in combination on packaging and other promotional materials for Defendant’s line of natural skin care and related products.” The focus of Burt’s complaint is Beenaturals’ “Bebe bee” products.

On January 19, Beenaturals removed the case from Wake County superior court. It denies consumer confusion is likely and alleges it created and adopted its trademarks in good faith and without any intent to trade on Burt’s reputation. 

The case is captioned as Burt’s Bees, Inc. v. Beenaturals, Inc., No. 07-cv-00018-D (E.D.N.C.).

Last year, Washington sports ball maker Baden Sports Inc. sued Japanese ball maker Kabushiki Kaisha Molten and Nevada-based Molten U.S.A., Inc., for patent infringement and unfair competition under the Lanham Act and Consumer Protection Act. Baden’s unfair competition claims are based on defendants’ alleged misrepresentations about the qualities of their basketballs’ design. (Yesterday, Baden amended its complaint and dropped its CPA claim.)

Kabushiki Kaisha Molten (Molten Japan) moved to dismiss for lack of personal jurisdiction and inappropriate venue on the alleged basis that it had no contacts with Washington. Plaintiff responded that Molten Japan had sufficient contacts through its wholly-owned subsidiary, Molten USA.

On January 18, Judge Marsha Pechman agreed with plaintiff. She found the court had jurisdiction over Molten Japan by attributing the subsidiary’s contacts with Washington to the parent. The court was particularly persuaded by Molten USA’s statement on its website that it was created for the purpose of selling Molten brand products in the United States.

The court found that Molten USA had sufficient Washington contacts because Molten USA has ongoing relationships and accounts with “team dealers” in Washington; Molten USA sends catalogs to team dealers in Washington; a team dealer in Redmond, Washington, purchased 45 Molten basketballs from Molten USA; and Molten basketballs are available for purchase in Washington through the Internet.

The court also found that Baden’s claims arose out of and related to the activities of Molten Japan (through its agent, Molten USA) in Washington. In particular, the court found “[t]he advertising, offering for sale, and sale of the allegedly infringing basketballs in Washington give rise to Baden’s claims for patent infringement and unfair competition.”

Finally, the court was not persuaded that the inconvenience to Molten Japan was significant enough to render jurisdiction in the Western District unreasonable.

The lesson here is clear: a foreign corporation that does business in a state through a U.S. subsidiary risks subjecting itself to that state’s jurisdiction. Transacting business through a subsidiary may not be enough to protect the parent.

King County Superior Court has granted Texas-based Detex Corp. summary judgment imposing a permanent injunction over Israel-based Detex Security Systems, Inc. The injunction continued the temporary restraining order and Agreed Order Granting Preliminary Injunction the court had previously entered enjoining defendant from using DETEX as a trade name in connection with the marketing of its stock and from using detexsec.com as its domain name.

Plaintiff stated in its complaint that it manufactures and sells security systems, while defendant “owns certain technology for a handheld explosive detection device called the Milliscope.” Plaintiff alleged that defendant’s use of DETEX and detexsec.com was likely to cause consumer confusion. In particular, plaintiff alleged that defendant hired a third party to engage in “mass dissemination and distribution of a solicitation” seeking investors. Plaintiff stated that persons who received the solicitation mistakenly contacted plaintiff, believing it to be defendant. Several such persons allegedly “attacked” plaintiff for defendant’s solicitation tactics and “declared their intention not to do business” with plaintiff as a result.

The parties agreed in the order that plaintiff had sustained $20,000 in damages and defendant would pay off the judgment in installments.

Last week was an interesting week in the blawgosphere.

The Trademark Blog wrote about Horphag Research Ltd. v. Garcia, the Ninth Circuit dilution case Seattle Trademark Lawyer recently discussed.

The TTABlog reported that the Trademark Trial and Appeal Board has lifted its prohibition on citing unpublished TTAB decisions. Now, “a decision designated as not precedential is not binding upon the TTAB but may be cited for whatever persuasive value it might have.” The TTAB’s notice, which appeared in the January 23 Official Gazette, is available here. This is good news for TTAB practitioners.

The 43(B)log and the TTABlog both discussed Google’s RICO lawsuit against Leo Stoller’s companies. In it, Google alleges that Mr. Stoller’s companies “are engaged in a scheme of falsely claiming trademark rights for the purpose of harassing and attempting to extort money out of legitimate commercial actors, both large and small,” including attempts to settle an alleged dispute over the GOOGLE trademark for $150,000. The New York Times and many others have written about Mr. Stoller’s alleged practice of purporting to own trademarks in gross, opposing third-party efforts to use or register such marks, and offering to “settle” with those parties. Mr. Stoller’s alleged practices have local implications. He has offered to “settle” with at least one Seattle company and probably others. It will be interesting to see what happens with Google’s suit.

Finally, TMBrandingCap discussed O’Charley’s Management Co., Inc. v. Darden Concepts, Inc., in which plaintiff alleged that defendant’s ROCKY RIVER trademark for restaurants is confusingly similar with plaintiff’s STONEY RIVER mark for restaurants. The lawsuit was filed last week in the Middle District of Tennessee.

Three things come to mind. First, the restaurant vs. restaurant trademark suit happens everywhere, including Seattle. Just last week, STL reported on the lawsuit over MOONSTRUCK and MOONRAY for cafes. In recent memory, the Western District has also seen disputes over IN-N-OUT BURGERS and IN-N-OUT PIZZA, and THE ROCK WOOD FIRED PIZZA & SPIRITS and ROCKO’S BRICK OVEN PIZZA. Second, these disputes are not limited to restaurants. The lessons they provide apply equally well to other trademark uses. And third, these disputes are easy to avoid. As Neil Melliship of the Canadian Law Blog recently wrote in the context of real estate development, these disputes “can normally be avoided by conducting due diligence through comprehensive trademark searches before committing to a particular mark for a new project.” This means trademark lawyers need to educate clients (and other lawyers in their firm) about trademark issues early on — and not only the clients with big trademark portfolios. It means talking with all clients, from the owner of a one-location restaurant to the hotel chain that’s planning its next development.

Let’s hope this coming week’s events are just as interesting.

On January 21, Seattle Trademark Lawyer discussed an ad reminding consumers that true Champagne wine comes from the Champagne region of France. The post pointed out that the success of such campaigns is limited by the often fuzzy definition of unregulated growing regions. Washington State, for example, has no defined “appellations” for its prized oysters, even though consumers may make purchasing decisions based on where they think their oysters came from.

Wild American Shrimp, Inc., argues the same is true with shrimp. Its Web site paints a familiar picture:

“You have a table for two, overlooking the water. You order the shrimp skewers. After all, the shrimp boats are right at the dock, you’re probably eating their catch, right? Not necessarily. The fact is, 85% of the shrimp you eat is imported, and most likely pond-raised. Even in the Gulf and South Atlantic states, most restaurants, grocery stores and seafood markets carry imported shrimp. You’ve been tricked. Your shrimp was raised in a pond, then shipped overseas — and you had no idea.”

That may soon change. On January 25, the U.S. Patent and Trademark Office granted Wild American Shrimp a certification mark for WILD AMERICAN shrimp (announcement here). Certification marks are types of trademarks that indicate that goods produced by others meet certain standards, which can include that they came from a particular region. Wild American Shrimp, which now owns Reg. No. 3,199,175, uses WILD AMERICAN to certify shrimp as being caught “in their native habitat in the coastal waters of the Gulf and East Coasts of the United States.”

As Wild American Shrimp puts it:

“Certified Wild American shrimp are caught by shrimpers off the Gulf and South Atlantic Coasts. To be more exact: Texas, Louisiana, Mississippi, Alabama, Georgia, South Carolina and North Carolina. The shrimp naturally thrive in these waters, and their presence has influenced a way of life in these states. Instead of being scooped from a pond and shipped over on a container ship, Wild American shrimp are pulled directly from their natural environment, delivered to the dock, then to your table.”

Is this the next step for oysters? Washington vintners can enforce claims that their grapes are grown in the Yakima Valley, Columbia Valley, Walla Walla Valley, Puget Sound, Red Mountain, Columbia Gorge, Horse Heaven Hills, Wahluke Slope, and Rattlesnake Hills Viticultural Areas. It’s a lot more difficult for Washington shellfish growers. Will we someday see registered certification marks for oysters grown in defined parts of Hood Canal, Penn Cove, Baynes Sound, Willapa Bay, and the Straits of Juan de Fuca? It would make trademark infringement and false designation of origin claims a lot easier to prove, strengthening brands, and adding even more value to Washington’s home-grown delicacies.

(Photo credit: Auggieland food blog)