Seattle Trademark Lawyer

Rainier Beer’s logo and Dakine’s design

I went downhill skiing for the first time today.

Woo hoo! I’m hooked. I fell a ton, and my excursion was to what amounted to a bunny hill, but it was a lot of fun!

Ok, enough about me.

Yesterday, I was at an outdoor equipment store getting gear for my trip. I came across something worth mentioning here — a tool for snowboarders that depicted what looked an awful lot like the beloved Rainier Beer logo.

The first thing that struck me was I wasn’t on infringement safari. I wasn’t in a foreign land when I stumbled on this appropriation of a well-known trademark. This was a reputable store selling high-end merchandise from reputable sellers like Dakine, the one selling the “board plate” that called to mind the Rainier Beer design. You don’t spot potential trademark issues in that context every day.

Snowboarders are an irreverent bunch, or so I’ve heard. So they might think calling to mind a beer maker’s logo is desirable. But I’d think others would wonder why a maker of quality equipment would want to trigger thought about an unrelated company’s logo. Isn’t that a little distracting? And amateurish? I suppose that could be part of the allure.

My other impulse was to question whether this use was problematic at all. It probably wouldn’t constitute trademark infringement, since I doubt purchasers would think the maker of Rainier Beer (now Pabst Brewing Co.) had gotten into the business of selling snowboard accessories. (A closer case would be for consumers to wonder whether Pabst licensed the logo or consented to its distorted use.) Dilution probably would be Pabst’s best tool, but I wonder if the Rainier Beer logo — quite well known in Seattle, where the beer used to be brewed — is famous on a nationwide basis, the statutory threshold for dilution protection under the Trademark Dilution Revision Act. I doubt it.

So where would that leave Pabst? Assuming it objected to Dakine’s use, its best bet would seem to be a claim for state law dilution, such as under Washington’s Trademark Act. Its logo almost certainly is famous here, so it probably would garner such protection.

I doubt a court would view Dakine’s use as protectable parody, since it doesn’t simultaneously call to mind the thing being parodied and comment on that thing.

I suppose Pabst may have ok’d Dakine’s use on the theory that it’s free advertising and is beneficial for its beer to be associated with a quality seller to the snowboarding set.

I don’t know, but these things are interesting to think about when not fearing for one’s life on the slopes.

The declaratory judgment plaintiff’s wine label (left) and the defendant’s

I guess I wasn’t in the mood to blog about wine.

It was right after New Year’s, after all.

On Jan. 4, West Richland, Wash., winery Pacific Rim Winemakers, Inc., filed suit in the Western District against the Hopeland, Calif., winery Brutocao Vineyards, Inc., for a declaration of noninfringement.

At issue is Pacific Rim’s SWEET BLISS and Brutocao’s BLISS trademarks.

Brutocao owns Reg. No. 3,187,029 for the BLISS word mark for “wines.” 

Pacific Rim owns the application Serial No. 85,146,280 for the SWEET BLISS word mark for “wine.”

Pacific Rim alleges Brutocao sent it a letter alleging that SWEET BLISS would confuse the public into thinking that Pacific Rim’s wine comes from Brutocao. Pacific Rim, obviously, believes otherwise.

Brutocao has not yet answered the complaint.

The case cite is Pacific Rim Winemakers, Inc. v. Brutocao Vineyards, Inc., No. 11-0011 (W.D. Wash.).

On Jan. 11, the Western District took its final step in deciding whether the state’s new primary election system established by voter initiative I-872 is unconstitutional. Under the system, elections for partisan office start with a primary in which every candidate declares his or her party preference or independent status. Voters may select any candidate on the ballot, regardless of party preference, and the two candidates who receive the most votes, also regardless of party preference, advance to the general election. Thus, the general election becomes a runoff between the top two vote-getters in the primary. 

In 2005, the Washington State Republican Party filed suit to enjoin I-872’s implementation. The Washington State Democratic Central Committee and Libertarian Party of Washington State intervened. After trips to the Ninth Circuit and Washington Supreme Court, the political parties amended their complaints to allege that I-872 is unconstitutional because it creates “voter confusion” that unconstitutionally infringes on their First Amendment associational freedoms.

Now, this is a trademark law blog, not an election law blog, so here’s why it’s of interest to trademark-oriented folks. The political parties argued the court should apply Lanham Act likelihood of confusion principles in determining the existence of voter confusion.

However, Western District Judge John Coughenour found trademark analysis was not helpful.

He wrote: the court “declines the political parties’ invitation to review the possibility for voter confusion under traditional trademark analysis. Quite simply, trademark law does not lie in the First Amendment associational rights implicated in this matter. Trademark law is designed to protect the proprietary rights of private parties from improper commercial uses. This case does not involve the propriety rights of the political parties or Washington’s commercial use of any trademark. The comparison is inapposite.”

The court also noted it previously concluded “the State’s expression of candidates’ party preference on the ballot and in the voter pamphlets may not form the basis of a federal or state trademark violation.”

(Not that it’s significant to trademark practitioners, but the court concluded that “Washington’s implementation of I-872 with respect to partisan offices is constitutional because the ballot and accompanying information concisely and clearly explain that a candidate’s political-party preference does not imply that the candidate is nominated or endorsed by the party or that the party approves of or associates with that candidate. These instructions — along with voters’ ability to understand campaign issues and the fact that the voters themselves approved the new election system through the initiative process — eliminate the possibility of widespread voter confusion and with it the threat to the First Amendment.”)

The case cite is Washington Republican Party v. Washington State Grange, 2011 WL 92032, No. 05-927 (W.D. Wash. Jan. 11, 2011) (Coughenour, J.).

Novel causes of action for contributory cybersquatting and contributory dilution appear to viable here in the Western District.

On Jan. 12, Western District Judge Ricardo Martinez refused to dismiss such claims plaintiff brought in Microsoft Corp. v. Shah.

In that case, Microsoft alleges defendants, among other things, induced others to engage in cybersquatting and dilution by instructing them on how to use Microsoft trademarks to increase traffic on their Web sites. Microsoft also alleges defendants sold a product that contained software that enabled buyers to create Web sites incorporating Microsoft marks to help sell emoticon-related software, including a video narrated by defendant Amish Shah.

Defendants moved to dismiss, arguing claims for contributory cybersquatting and contributory dilution are not recognized.

The court denied the motion.

“In the current case, Defendants’ alleged conduct falls squarely within the statute’s goal of imposing liability on those who seek to profit in bad faith by means of registering, trafficking, or using domain names that contain identical or confusingly similar marks. Defendants allegedly sought to profit in bad faith by teaching others how to trade off the widespread recognition of Plaintiff’s mark in order to drive traffic to a given website. A defendant who seeks to profit by selling a method that teaches others how to benefit from violating the [Anticybersquatting Consumer Protection Act] should not be able to escape liability by interpreting the statute so narrowly. The practice of instructing others on how to engage in cybersquatting runs counter to the purpose of the ACPA. … [T]he ACPA should not be read so narrowly as to unduly constrain the protections the statute is meant to afford against cybersquatters.”

The court made a similar finding with regard to Microsoft’s claim for contributory dilution.

“As with contributory cybersquatting, contributory dilution is a tort-like cause of action which naturally lends itself to the theory of contributory liability. In the case at hand, Defendants are alleged to have encouraged others to utilize the famous Microsoft mark in such a way that could cause dilution of the Microsoft mark. The Trademark Dilution Act seeks to provide a mechanism through which owners of famous marks may seek protection against exactly the kind of harm — in the form of blurring or tarnishing — that is alleged in the present case. It would be inconsistent with the Trademark Dilution Act to prohibit a cause of action for contributory dilution.”

The case cite is Microsoft Corp. v. Shah, No. 10-653 (W.D. Wash. Jan. 12, 2011) (Martinez, J.).

Trouble searching applications and registrations today?

The PTO’s Trademark Electronic Search System (TESS) database was having trouble.

From Carl Oppedahl on INTA’s list serve:

“Well, this morning it was TESS that was acting up, and eventually after some hours of discussion on the listserves, USPTO quietly posted a notice that TESS had melted down and was being repaired.”

Later in the day, the PTO circulated this message:

“On Tuesday, January 18, the USPTO became aware that searches conducted prior to 3:30 p.m. through the Trademark Electronic Search System (TESS) were not producing accurate results. The TESS problem was resolved; however, it is suggested that any searches conducted prior to 3:30 p.m. be performed again to ensure accuracy.”

I’m happy to say I’m not just as good as my latest trademark search, but my latest trademark search with a database that isn’t working just isn’t very good.