Seattle Trademark Lawyer

It’s hot here. Seattle hit a record 103 degrees today. My wife and I went from air conditioned offices to an air conditioned movie theater to an air conditioned restaurant. Now we’re sweltering in our un-air conditioned hot house that we call home. The floor is hot. My chair is hot. My keyboard is hot. So, I’m going to get a bag of frozen peas and call it a night. Stay cool!

Eric Goldman reported a while back that a Western District case is one of eight currently pending against Google, Inc., for trademark infringement. In Soaring Helmet Corp. v. Bill Me, Inc., Soaring Helmet alleges that competing motorcycle helmet seller Bill Me, Inc., d/b/a Leatherup.com, purchased plaintiff’s VEGA trademark as a keyword from Google. When a person searches Google for “VEGA helmets,” the complaint states, Google returns a sponsored link stating that Bill Me offers “50% off Vega Helmets,” even though Bill Me does not sell plaintiff’s VEGA helmets.

Plaintiff claims this amounts to contributory trademark infringement. “Defendant Google, through its keyword advertising program, contributes to the aforementioned trademark infringement by knowingly encouraging advertisers to use Soaring Helmet’s Mark in false and misleading advertisements that have caused, and is likely to cause confusion, mistake, or deception of consumers, to the detriment of Soaring Helmet.”

Says Prof. Goldman: “…Google treated Soaring Helmet’s initial cease-and-desist letter as a trademark opt-out and blocked subsequent references to Vega in Leatherup.com’s ad copy. Thus, unless Soaring Helmet seeks to reach back to the ads displayed before its C&D, it appears Soaring Helmet is trying to hold both Google and Leatherup.com [liable] simply for showing ads triggered by Soaring Helmet’s “Vega” trademark.”

Neither defendant has answered the complaint, which plaintiff amended yesterday to identify Bill Me with more particularity. 

The case cite is Soaring Helmet Corp. v. Bill Me, Inc., No. 09-789 (W.D. Wash.).

Idaho potato farmers recognize the value of their brand. This year, the Idaho Potato Commission found “broad support” for increasing its assessment of member farmers, Idaho’s Capital Press recently reported. Assessments are used to advertise and promote the Commission’s GROWN IN IDAHO and IDAHO POTATOES trademarks.

“People all over the U.S. and the world recognize Idaho potatoes,” one Idaho potato farmer stated. “All of the advertising that the commission has done over the years has put us on the map.”

The farmer also recognizes that there’s great value in working together for a common purpose. “An individual grower can’t make a national TV ad campaign,” he said.

The Commission, a state agency, spends approximately 85 percent of its $12-to-$13 million budget on advertising and promotions. The rest pays for overhead, as well as legal expenses incurred to defend its marks.

The article describes the importance the Commission rightly places on policing its certification marks, which much more often than not involves correcting its own members’ misuse rather than litigating with third parties. Indeed, its most common challenges are grocers’ use of Idaho signage with non-Idaho potatoes or packers’ shipping non-Idaho potatoes in Idaho-labeled bags.

“If we didn’t challenge that, it wouldn’t be long before a lot of folks were doing it,” the Commission president said.

He’s right. Idaho potato farmers have a good thing going. They’ve taken a commodity product and raised it to premium status through advertising and diligent efforts to protect their brand. If they weren’t so careful about how their mark is used, the goodwill they have built up over the years eventually would erode away.

These guys set an example all brand owners should follow.

It’s not going to turn into a lawsuit, but check out the photos below of Seattle’s Smith bar and Starbucks’ adjacent 15th Street Coffee & Tea, which opened on Friday. Smith owner Linda Derschang initially cried foul about Starbucks’ design, saying it copied the look-and-feel of her neighborhood pub. However, she changed her mind, saying the differences in the parties’ offerings would help avoid harm.

Outside, both establishments have the same brownish-grey exterior color and similar (but differently colored) awnings. Inside, both have a lot of exposed wood (including bars, tables, and chairs) and share a rustic feel. Both have hanging lamps, exposed wood beams, exposed electrical work, and exposed duct work. Perhaps most notably, both have display signs consisting of chalkboards framed in reclaimed wood and large wood-framed antique paintings. Both establishments sell beer and wine. Both offer food, though Smith offers pub fare and 15th Street most prominently offers baked goods.

For the sake of discussion, would all this add up to a successful claim of trade dress infringement? Remember, to be protectable, trade dress needs to be nonfunctional (e.g., every bar has tables, chairs, a bar, and a cash register, so those features don’t count) and distinctive (either because the trade dress is “suggestive,” “arbitrary,” or “fanciful,” or because the trade dress is “descriptive” and has acquired distinctiveness through secondary meaning). And to be actionable, the later adopter’s use of similar trade dress needs to be likely to confuse consumers into believing some association exists with the senior adopter (in this case, that 15th Street has something to do with Smith, like has a common owner or that Smith’s owner approved Starbucks’ use of a similar design).

Taking all this into account, would Smith’s owner have had a valid claim?

Exteriors of Smith (left) and Starbucks’ new 15th Street Coffee & Tea
(with open door between purple and red cars). (Photo by STL)

Interiors of Smith (top) and 15th Street Coffee & Tea. (Photos by STL)

Seattle bar queen Linda Derschang called off her meeting with Starbucks over the features she believed the coffee company copied from her neighboring bar, “Smith.” (Previous STL post here.)

“I feel already over it,” Ms. Derschang told the Seattle Post-Intelligencer. “It’s just not that big of a deal.”

Just a few days ago, Ms. Derschang ripped Starbucks in the press, accusing the company of turning its soon-to-open unbranded 15th Avenue Coffee and Tea store into a Smith lookalike.

She railed in The Slog: “Have you seen the color of the new Starbucks on 15th? Noticed the salvaged wood wall outside which is the same as my salvaged wood planter box in front of Smith? Poke your head in and check out the salvaged wood frames on the walls, the vintage industrial light fixtures, and the old wooden seats. … I can’t believe that anyone, whether a hair salon or a coffee chain, would just go ahead and knock off their next door neighbor’s exterior….”

Ms. Derschang reportedly had lined up a meeting with Starbucks to talk about her concerns before having her abrupt change of heart. 

She now says the differences in the parties’ services distinguish her case from the Peso’s-Matador lawsuit that settled last year. Even though Starbucks’ new store will sell beer and wine, they’re not a restaurant and bar, she said.

“They are selling coffee, and we’re a restaurant and bar. So many people sell beer and wine on our street I don’t think that’s really a huge deal. It’s more about them trying out this new concept.”