Seattle Trademark Lawyer

This morning I awoke to a good trademark law story on NPR.

It’s about New Mexico farmers’ efforts to protect the brand behind the New Mexico chile pepper.

They lobbied for legislation that essentially creates a certification mark out of those words.

Right now, there aren’t any direct restrictions on using “New Mexico” in connection with chiles anywhere else. As the story put it, “For now at least, anywhere else in the country, a leather shoe could be called a New Mexico chile.”

New Mexico farmers recognize their chile peppers are prized. Their chiles also cost more to produce than, say, chiles from “old” Mexico. New Mexico farmers pay workers $7.25 per hour, while that’s what workers in developing nations make in a day.

So, unscrupulous growers outside New Mexico can call their chiles “New Mexico chiles” and grab a free ride on the New Mexico chile pepper’s reputation — without charging the premium price. Indeed, that’s reportedly what they’ve done.

Now, doing so would constitute a false designation of origin, which violates Section 43(a) of the Lanham Act, but that’s slightly beside the point.

The point is, New Mexico chile farmers have the right idea. Make their brand mean something specific. Like Champagne wine (which only comes from the Champagne region of France; blog post here), Parmesan cheese (which only comes from the Parma region of Italy; blog post here), and Wild American shrimp (which only are caught in the wild in the East Coast and Gulf of Mexico regions of the United States; blog post here). That way they can command the premium price they reportedly deserve, while stopping undeserving third parties from getting a free ride on their reputation.

A good lesson other producers can learn from.

IPKat’s blog post on the story — all the way from London — here.

An injunction’s got to be specific enough so it can be understood and enforced.

That’s the problem the Ninth Circuit had with the District of Nevada’s injunction against a home inspection company that encouraged home owners to file construction defect claims against a developer in violation of the Lanham Act and Nevada Deceptive Trade Practices Act.

The district court’s injunction prohibited the defendants from “soliciting and/or performing residential inspections and/or providing inspection reports … by means of illegal, unlicensed and false practices.”

The order gave several examples of prohibited practices: “(1) falsely representing that the defendants are ‘properly licensed under Nevada law to perform structural inspections; (2) properly licensed under Nevada law to … perform, provide or communicate inspection reports; and/or (3) are acting as representatives or agents under the authority of Del Webb.’”

Yet, even with these examples, the Ninth Circuit found “the general prohibition against using ‘illegal, unlicensed and false practices’ is too vague to be enforceable. The examples of prohibited past conduct do not sufficiently define what additional future conduct will be covered.”

The court noted that “Rule 65(d) requires an injunction to ‘state its terms specifically’ and ‘describe in reasonable detail … the act or acts restrained.’ ‘The benchmark for clarity and fair notice is not lawyers and judges, who are schooled in the nuances of [the] law,’ but instead the ‘lay person, who is the target of the injunction.’”

Therefore, the court vacated the vague portion of the injunction.

The case cite is Del Webb Communities, Inc. v. Partington, __ F.3d __, 2011 WL 2854086, No. 10-15975 (9th Cir. July 20, 2011).

Counterfeiting again.

That’s three posts in a row, but who’s counting?

This time counterfeiting got the perpetrator booted out of the country.

In Rodriguez-Valencia v. Holder, the Ninth Circuit last week upheld a Board of Immigration Appeals’ decision finding petitioner Jose Rodriguez-Valencia removable from the country and denying his application for cancellation of removal.

Mr. Rodriguez-Valencia was convicted of “willfully manufacturing, intentionally selling, and knowingly possessing for sale more than 1,000 articles bearing a counterfeit trademark” in violation of section 350 of the California Penal Code. The BIA found the convictions constituted an aggravated felony as an “offense relating to … counterfeiting,” justifying the immigrant’s deportation to his home country.

Mr. Rodriguez-Valencia argued that the word “counterfeiting” in the statute was limited to counterfeiting money. He also argued the BIA needed to find that he had a specific intent to defraud. 

The BIA disagreed, and so did the Ninth Circuit, which found that an intent to defraud is inherent in the type of counterfeiting in which Mr. Rodriguez-Valencia engaged.

“While there may be some counterfeiting crimes that do not require an intent to defraud, assuming arguendo that the generic offense of counterfeiting requires such an intent, California Penal Code § 350 ‘is an inherently fraudulent crime.’ Indeed, ‘[a]ll of the conduct punished by [California Penal Code] § 350, ‘willfully manufactur[ing], intentionally sell[ing], or knowingly possess[ing] for sale any counterfeit … mark, ‘involve[s] knowingly false representations made in order to gain something of value.’ Because ‘[t]he commission of the crime necessarily defrauds the owner of the mark, or an innocent purchaser of the counterfeit items, or both, we ‘have difficulty distinguishing such intent from a general intent to defraud.’”

The case cite is Rodriguez-Valencia v. Holder, 2011 WL 2899605, No. 09-72060 (9th Cir. July 21, 2011).

Forget counterfeit purses.

What about counterfeit Apple stores?

I saw some brazen trademark infringement when I was in China (here, here, and here), but nothing this bold.

The Wire’s Omar: “All in the game yo, all in the game.”

Maybe it’s because The Wire’s off the air. 

And would it kill Richard Price to come out with a new novel?

What’s a trademark attorney to do these days but to live through gritty stories of hand-to-hand, buy-bust operations about … counterfeit purses!

I guess that’s why I found this NYT story interesting.