Seattle Trademark Lawyer

The forthcoming issue of the IndUS Business Journal looks into Starbucks’ complaint that an Indian entrepreneur’s plan to open 25 cafes under the STARSTRUCK name and mark infringes the STARBUCKS name and mark. The article, “Starbucks in trademark battle with Indian company,” quotes the entrepreneur, Shahnaz Husain, as saying she decided to open her own coffee shop while visiting a Starbucks store in London. The article says “Starstruck” cafes will feature a “glamour theme, complete with posters of Hollywood movie stars.” Ms. Husain states she chose the name “because she wanted to distinguish it” from Starbucks.

Despite that sentiment, Starbucks objects. Its spokesperson, T. May Kulthol, states that Starbucks has long owned the rights to its name and logo in India. She said Starbucks will press the issue in court if Ms. Husain’s company refuses to adopt another name.

The article quotes STL’s publisher on the process a court would likely go through to decide the issue. Since it seems odd to quote an article quoting me, I’ll just say I stated my belief that a court would consider the likelihood of confusion between the two marks, focusing on similarities in the apperance, sound, and meaning of the marks, as well as the competing goods or services. If the court determined the later mark created a likelihood of confusion with the earlier mark, it would find in favor of the earlier user.

So do I think STARSTRUCK infringes STARBUCKS, when both marks are used for cafes? You bet. Out of the infinite number of possible combinations of letters, numbers, and symbols Ms. Husain could have selected for her new chain of cafes, she just happened to pick one so close to the most famous brand in the coffee business? Doesn’t seem likely.

On March 19, Utah Governor Jon Huntsman, Jr. (pictured below), signed a bill into law that bans some forms of key word advertising. The Trademark Protection Act, SB 236, establishes a new type of mark called an Electronic Registration Mark. Once a mark is electronically registered, the statute prohibits use of the Electronic Registration Mark to trigger advertising for a business, goods, or services of the same class as those represented by the Electronic Registration Mark.

In particular, the bill makes a person liable to the registrant of an Electronic Registration Mark if that person, without the registrant’s consent, “uses an electronic registration mark to cause the delivery or display of an advertisement for a business, goods, or a service: (i) of the same class … other than the business, goods, or service of the registrant of the electronic registration mark, or (ii) if that advertisement is likely to cause confusion between the business, goods, or service of the registrant of the electronic registration mark and the business, goods, or service advertised.”

Is this regulation constitutional? Is it prudent? Will it spawn a new class of cybersquatters? Stay tuned. This statute is sure to be dissected and debated in the weeks to come.

STL recently highlighted a German-language trademark law blog and a French-language trademark law blog that English readers can now access through the wonders of Google and Yahoo! translation sites. These blogs are a great find because they provide a wealth of information that previously were closed to English readers.  

However, not all foreign law blogs need translation. Here are three notable trademark law blogs from the United Kingdom, South Korea, and China — all written in English.

UK-based IPKat is almost legendary in Europe. Its four-member team has published almost 3,000 posts on “IP News and Fun for Everyone” since June 2003. On the trademark front, it recently discussed the Singapore Treaty on the Law of Trademarks, a franchisor’s attempts to register 800 FLOWERS and 800 FLORISTS in Ireland, and a recent holding that “the word ‘Lithuania’ may not be used in the names of legal entities in languages other than Lithuanian….” Good stuff.

The Korea IP Law Blog recently celebrated its first anniversary. In the last two months, it has reported on the registrability of LUXURY under the Trademark Act of Korea and the protection of single-color marks. But perhaps my favorite post analyzes the “Misconception About Starbucks v Starpreya Case,” a dispute with which STL readers are familiar. Ok, some of the posts are in Korean, but this blog provides valuable insight into the Korean perspective.

Last but not least, the IP Dragon provides a similar look into Chinese law. It has recently discussed counterfeit soap, counterfeit wine bottles, and a collection of photos depicting outlandish trademark ripoffs, from SQNY batteries to MONDONALDS hamburgers. It’s well worth checking out — particularly for staying on top of the counterfeiting scene.

The March 19 issue of The New Yorker has an in-depth story about lawyer Harley Lewin’s colorful career pursuing counterfeiters. (See “Bag Man: Cracking Down on Fashion Fakes,” abstract here). It’s a good read. I was particularly interested to learn there’s a local angle to the story. Apparently, former Seattle Mariner pitcher Byron McLaughlin became something of a counterfeiting kingpin after his lackluster career dried up in the early-1980s. I had no idea.

Here’s what the article says:

“After some nosing around, [Mr. Lewin] figured out that something like half the counterfeit shoes in Mexico could be traced to a guy named Byron McLaughlin, who lived just over the border in a suburb of San Diego. Byron McLaughlin had been a major-league baseball player in the seventies and early eighties — he had pitched for the Seattle Mariners — but in the mid-eighties his career foundered and he started playing in the Mexican leagues. He made a deal with a couple of Korean companies to manufacture cheap counterfeit sneakers — Reebok, Converse, Vans, Adidas — for the Mexican market. By the time [Mr. Lewin] caught up with him, his business was booming: in a good month he would sell around eighty thousand pairs of sneakers for about three-quarters of a million dollars. (As Footwear News reported, McLaughlin pleaded guilty to money-laundering charges but fled the country before sentencing and is believed to be living near Cannes.)”

I wonder if my Byron McLaughlin baseball cards are worth more given this history. For the record, Mr. McLaughlin finished his major league career in 1981 with 16 wins, 25 losses, 16 saves, and an ERA of 5.11.

After a slow start in 2007, plaintiffs are making up for lost time. Two trademark suits were filed in the Western District in January. Only one was filed in February. And in March, there already have been six. Here’s a summary of the latest:

*Evergreen Moneysource Mortgage Co., Inc., v. Lundberg, No. 07-5127 (filed March 19). The Seattle-based mortgage lender alleges that defendants’ use of EVERGREEN MORTGAGE in connection with their competing Seattle-based mortgage lending business infringes plaintiff’s trade name and service marks, including EVERGREEN MONEYSOURCE MORTGAGE COMPANY, EVERGREEN MONEYSOURCE, and EVERGREEN HOME LOANS.

*Cascade Fresh, Inc. v. Lifeway Foods, Inc., No. 07-0374 (filed March 13). Plaintiff sells health foods, including a specialty brand of smoothies under the trademark GO WITH THE FLOW. Defendant competes with plaintiff and allegedly uses the slogan “Go with the Flow” in its ads, which plaintiff alleges is likely to cause confusion with plaintiff’s mark.

*Hi-Rise Technology, Inc. v. Amatuerindex.com, No. 07-0349 (filed March 8). Plaintiff owns the registered service mark THE AMATEUR INDEX. Plaintiff alleges defendant is using plaintiff’s mark in its domain name, amateurindex.com, in violation of the Anticybersquatting Consumer Protection Act.

*Northstar Neuroscience, Inc. v. Neuronetics, Inc., No. 07-0351 (filed March 7). Both parties are medical device companies. Plaintiff alleges that defendant’s use of the marks NEUROSTAR, NEUROSTAR TMS THERAPY, NEUROSTAR and Design, and NEUROSTAR TMS THERAPY and Design infringe Plaintiff’s trade name and trademark NORTHSTAR NEUROSCIENCE.