Seattle Trademark Lawyer

I recently received a notice from the Eastern District of Washington’s electronic filing system saying I can now file documents with hyperlinks to other documents within the system. This means I can file a brief that cites to my witness’ declaration and make that testimony accessible with a click.

The Eastern District promotes this feature by saying: “Hyperlinks are very helpful to the judges because it make it much easier to review documents in support of a filing.”

This would seem to be a no-brainer — whatever makes things easier for the court is well worth doing.

The training manual says filers can link to:

• Previously-filed documents in the same case;
• Previously-filed documents that reside in the court’s CM/ECF database;
• Previously-filed documents that reside in other courts’ CM/ECF databases; and
• Documents being filed as attachments to a current filing.

The only catch is filers must verify their hyperlinks work, as broken links don’t do anyone much good.

Litigators constantly strive to get their point across. A big part of that is making things simple. In the Eastern District at least, there’s now no need for clerks and judges to hunt down your client’s testimony. They can get there simply by clicking on a hyperlink in your brief. 

The next step hopefully will enable filers to link case citations with case text.

While this would seem to create more production work on the front-end, it should give judges more time to focus on what counts: your evidence; your arguments. It seems like a great leap forward.

In Internet Specialties West, Inc. v. Milon-Digiorgio Enterprises, Inc., the plaintiff owner of ISWest.com alleged that defendant’s use of ISPWest.com infringed its trademark rights. Both parties use their domain names in connection with their competing Internet service provider services. Relevant here is the Central District of California’s finding that laches did not bar plaintiff’s claim because the four-year analogous limitations period started in 2004 when the defendant began offering DSL, rather than in 1998 when the plaintiff gained actual knowledge of the defendant’s existence. This finding, coupled with the jury’s finding that defendant’s use of the domain name infringed plaintiff’s rights, led the district court to enter a permanent injunction against the defendant.

Defendant appealed.

On March 17, the Ninth Circuit affirmed the court’s laches ruling, finding that plaintiff’s delay in bringing suit did not prejudice the defendant within the context of a trademark infringement claim.

Of particular interest is Circuit Judge Andrew Kleinfeld’s dissent, wherein he found the majority “defies circuit precedent” on laches’ prejudice element:

“The key, and new, holding is ’[i]f this prejudice could consist merely of expenditures in promoting the infringed name, then relief would have to be denied in practically every case of delay’ applied in this case to a time period well in excess of the analogous statute of limitations period (6 years compared with 4) and exponential increases in business and business-building expenses around a trademark (438% increase in general business expense and a 14,931% increase in advertising expenditures). Notably, the language the majority uses in its holding comes from a case where the delay was less than a year, the infringement was deliberate, and in which longer periods of delay were distinguished. The practical effect of this new rule is to eviscerate the defense of laches in trademark law.”

Judge Kleinfeld explained his reasoning in terms of the Ninth Circuit case of Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (9th Cir. 2002):

“Where the presumption of prejudice applies, as it does in this case and did in Jarrow [because the plaintiff did not file suit within the analogous statute of limitations period], prejudice exists where an infringer is ‘forced to abandon its long-term investment in its presentation of [its product] to the public.’ In Jarrow Formulas, we said that had the plaintiff ‘filed suit sooner, [the infringer] could have invested its resources in an alternative identity … in the minds of the public.’ Likewise, had Internet Specialties sent a letter to ISPWest when it knew of the infringement, ISPWest would have had to deal with a name change for only 2,000 customers, not 13,000, and could have invested its resources in familiarizing the market and its customers with a new name. Jarrow quotes with approval Seventh Circuit language, that ‘investments to exploit [a market position with respect to the product at issue] are sufficient prejudice to warrant the application of laches.’”

In Judge Kleinfeld’s view, “[o]ur authorities compel the conclusion that laches applies” to these facts.

Further reading: Las Vegas Trademark Attorney’s discussion of the case; Coderights’ discussion.

The case cite is Internet Specialities West, Inc. v. Milon-Digiorgio Enterprises, Inc., Nos. 07-55087 and 07-55199, __ F.3d __, 2009 WL 690302 (9th Cir.).

Note: Most brackets in original; one parenthetical added by STL.

It’s that time of year. Spring’s around the corner, basketball’s on the tube, and many hours of work are about to be wasted. With me off to Vegas in two days, I’m in the throes of March Madness. Big time.

So how did “March Madness” come about — as a trademark? The Fifth Circuit provided a pretty comprehensive answer a few years ago in March Madness Athletic Association, LLC v. Netfire Inc., 120 Fed. Appx. 540, 2005 WL 147264 (5th Cir.). Here’s the skinny:

The Illinois High School Association “has organized an annual boys’ high school basketball tournament in Illinois since 1908. Since the 1940s, IHSA has used the term ‘March Madness’ to refer to the IHSA Tournament.

“IHSA first attempted to register March Madness in 1990. At that time it discovered an entity called Intersport had registered the phrase on December 12, 1989. Intersport’s registration was for ‘entertainment services, namely, presentation of athletic and entertainment personalities in a panel forum’ regarding the NCAA Tournament. IHSA and Intersport eventually came to an agreement, on July 24, 1995, whereby Intersport assigned its registered service mark to IHSA in return for a perpetual license to use March Madness for its sports programming and a share of royalty payments received by IHSA.

“IHSA claimed exclusive rights to March Madness, and it licensed the phrase for any use, even uses that did not relate to the IHSA Tournament. Its commercial licensees included Wilson Sporting Goods, Pepsi and the Chicago Tribune. IHSA also licensed March Madness to other state high school associations for the nominal fee of $10.

“The NCAA’s first use of the phrase ‘March Madness’ is generally traced to 1982, when CBS broadcaster Brent Musberger used the phrase to describe the NCAA Tournament. The NCAA began licensing March Madness in 1988 as one of a set of marks relating to NCAA championships.

“In the early 1990s, both IHSA and NCAA were claiming exclusive rights to all commercial uses of March Madness. In 1996, IHSA sued an NCAA licensee, GTE Vantage, that created a basketball video game that made use of the phrase March Madness. In December 1996, the Seventh Circuit, in Illinois High School Ass’n v. GTE Vantage, rejected IHSA’s claim to rights over March Madness in the context of the NCAA Tournament. 99 F.3d 244, 247-48 (7th Cir. 1996).

“Following the Seventh Circuit decision in GTE Vantage, IHSA and NCAA decided to work together to protect their rights in March Madness. After several years of negotiation, IHSA and NCAA formed [the March Madness Athletic Association LLC] on February 29, 2000…. IHSA and NCAA each transferred all rights it held in March Madness to MMAA, and in return each received a license to use the term in relation to its basketball tournament. As of August 2003, MMAA held seven registered service marks or trademarks for March Madness, an additional five for America’s Original March Madness and another for March Madness Experience.”

Now you know.

Go Gophers! Go Huskies (of Washington, not of Connecticut)!

Related, from today’s LA Times: “March Madness attracts the eagle eyes of trademark lawyers”

Yesterday, Wisconsin announced a new promotional slogan: “LIVE LIKE YOU MEAN IT.” According to an AP story, some trademark owners lost little time criticizing the selection, noting they already have adopted the phrase to promote real estate, clothing, a diet book, and dietary supplements.

Those folks seem to overlook the fact that a trademark does not give its owner a monopoly over words. It doesn’t even give the owner a monopoly over words used in commerce to indicate source. Wisconsin’s selection is perfectly ok from an infringement and registrability standpoint as long as there is no likelihood of confusion with prior users or registrants.

California author Ellyn Luros-Elson warns, “They are not going to get a federal trademark, I just wanted to let them know that,” apparently based on her 2006 diet book with the same name. Yet even if the title of a book gave rise to trademark rights (and unless it is part of a series, it does not), there would seem to be little chance consumers would likely be confused between the author of a diet book and a place to vacation or hold a convention.

Indeed, the existence of three federal registrations (here, here, and here) itself may indicate that the mark can identify any number of sources of goods and services without causing a likelihood of confusion.

Unless they can prove likelihood of confusion, prior adopters of the LIVE LIKE YOU MEAN IT trademark should “live and let live.”

A colleague passed on a link to a great post about how it pays to think like a PTO examining attorney. When you’re trying to get your client’s trademark registered, that is. Turns out the post was one of the first in a fine new blog called Registration Ruminations, published by former PTO examining attorney and Virginia solo practitioner Michael Hall. 

Michael saw a niche and grabbed it. In his words, “Having sat at both sides of the table, I am keenly aware that there is often a real chasm between the way an examining attorney might view an issue and the way counsel prosecuting an application views it. My goal with this blog is to objectively explore issues that arise in ex parte trademark examination.”

So far, so good. He’s already covered quite a bit of ground, with posts about arguing that part of a cited mark is generic or descriptive (it can be effective); the status of revisions to the Trademark Board Manual of Procedure (the TBMP will be revised this year); and going over an examining attorney’s head (they don’t like it but if you need to do it, at least be respectful). All of this is worthwhile reading for folks who prosecute trademark applications before the PTO.

I’m sure he’s got a bunch of ideas queued up, but I’d like his take on the PTO’s “Consistency Initiative,” aimed at treating similar marks similarly. (See STL post here.) Are people using it? Does it work? Is there a right way and wrong way to get the most out of it?

Welcome aboard, Michael. If you’re coming our way for INTA, I hope to see you at “Meet the Bloggers V.”