Seattle Trademark Lawyer

On March 21, Evan Conklin Plumbing and Heating Inc. filed a trademark infringement suit in the Western District against Chaz Timblin.

Both parties are plumbing companies. From Seattle.

Plaintiff calls itself “Seattle Plumbing Company.” Defendant’s company calls itself “Seattle Plumbing and Sewer.”

You guessed it: plaintiff’s complaint alleges that “Defendants’ SEATTLE PLUMBING & SEWER is confusingly similar to Plaintiff’s SEATTLE PLUMBING COMPANY mark.”

Plaintiff also alleges its mark is registered on the Supplemental Register and is inherently distinctive. ‘Nuff said.

The case cite is Evan Conklin Plumbing and Heating Inc. v. Timblin, No. 11-483 (W.D. Wash.).

Confusion no longer: Mars Hill Church and Mars Hill Graduate School,
which plans to change its name. Photo credit: The Seattle Times

The Christian Mars Hill Graduate School is tired of being confused with the Mars Hill Church.

They’re both named after the hill in Athens where Paul, one of the Apostles, is believed to have spoken about being saved through Jesus.

So, the Graduate School is changing its name.

Fitting they’re the ones to change, as they apparently came to town a year after the church opened its doors.

The Seattle Times wrote about this today.

A couple of thoughts. First, names — also known as trademarks — are important. When perspective students think the more liberal Graduate School is run by the more conservative Church, that’s not good for anyone (including the Church). In this case, the school believes it’s worth it to abandon the goodwill it has built up in its brand in favor of a yet-to-be-determined name that doesn’t have any confusion baggage.

Second, common trademarks are weak. The Church in this case might have had a hard time forcing the Graduate School to change in light of the many Mars Hills out there in the religious world. If it had picked a more unique name, injunctive relief would have been a slam dunk.

Finally, all this could have been avoided. The Graduate School probably knew about the Church and decided to use the Mars Hill name anyway. But it’s surprising how often even sophisticated parties adopt a name before undertaking the due diligence that such an investment justifies. Sometimes, it works out. Other times, they get sued. 

Lots of those suits result in a name change, which as the Graduate School will soon be able to tell you, can be expensive, disruptive, and painful.

Mystery location. Hint: it’s sunny!

Tomorrow, I’m going here to speak about software trade dress protection as part of this.

See you in two weeks!

Photo credit: Zarkos

King County prosecutors filed charges against a Seattle man accused of selling fake handbags.

The Seattle police collected 33,700 items from proprietor Touray Burama’s home. He allegedly ran EB’s Fine Handbags in south Seattle.

According to the Seattle-PI: “(An undercover officer) asked the worker [at EB’s] if the handbag on the wall was a ‘Kate Spade,’ investigators said in search warrants filed in U.S. District Court. The worker stated that the handbag was in fact a ‘Kate Spade’ and that he could sell it to her. However, he needed to sew on a ‘Kate Spade’ logo for her.”

Seems like that might be a tip-off the bags weren’t real. You mean you don’t put the Rolls Royce hood ornament on until after I buy the car?

Apparently Mr. Burama sold a few bags in his time. The P-I says the cops picked up $180,000 in its sweep, which Mr. Burama forfeited to the federal government. He’s now facing charges for counterfeiting.

Plaintiff Mirina Corp. is a Seattle-area biotech company. In August 2010, it sued defendant Marina Biotech, a Seattle- and Boston-based biotech company, five days after defendant changed its name from MDRNA, Inc. (Previous post here.) Mirina alleged trademark infringement and moved for a preliminary injunction.

In doing so, it didn’t cite Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), which revised the standards for obtaining injunctive relief. The Western District of Washington found that was a problem.

“The court notes that the Plaintiff’s briefing was unhelpful regarding the appropriate standards to be applied on a motion for injunctive relief. The Plaintiff did not cite Winter authority until after the Defendant pointed out Plaintiff’s failure to do so in its Opposition. The Defendant had previously pointed out Plaintiff’s failure to address current case authority, and the court is mystified why the Plaintiff did not address the recent changes to standards for injunction relief in its opening brief. Though the Plaintiff attempts to argue that Winter and its progeny do not apply in trademark cases, Plaintiff cited no authority for that proposition and other district courts have applied Winter in trademark cases.”

The court set forth the test for a preliminary injunction, consistent with Winter and its progeny. “The court may issue a preliminary injunction where a party establishes (1) a likelihood of success n the merits, that (2) it is likely to suffer irreparable harm in the absence of preliminary relief, that (3) the balance of hardships tips in its favor, and (4) that the public interest favors an injunction. A party can satisfy the first and third elements of the test by raising serious questions going to the merits of its case and a balance of hardships that tips sharply in its favor.”

Analyzing the merits, the court found plaintiff’s motion didn’t cut it. “The court finds that, on balance, a consideration of the Sleekcraft factors weigh somewhat in Plaintiff’s favor, though not overwhelmingly so. The record before the court emphasizes phonetic similarity between the two business names and how that similarity leads to confusion in interpersonal conversations, but the court is left with some doubt as to whether this confusion is as widespread, invasive, or detrimental as Plaintiff’s selective evidence may make it appear, particularly where the evidence currently before the court shows that Plaintiff’s mark is relatively weak. Nonetheless, on that record, the court finds that the Plaintiff has raised serious questions about the likelihood of confusion.”

The case cite is Mirina Corp. v. Marina Biotech, No. 10-1322 (W.D. Wash. March 7, 2011) (Jones, J.).