Seattle Trademark Lawyer

General Dentistry for Kids, LLC, sued Kool Smiles, P.C. in Arizona superior court for trademark infringement and unfair competition under state law. Kool Smiles removed to federal court. The District of Arizona denied General Dentistry’s motion to remand, and ultimately granted Kool Smiles’ motion for summary judgment.

General Dentistry appealed to the Ninth Circuit, arguing that the district court lacked jurisdiction because Kool Smiles’ notice of removal failed to establish the $75,000 amount-in-controversy requirement.

Kool Smiles argued that it later provided a third-party affidavit stating that the cost of complying with General Dentistry’s requested injunction relief would exceed $135,000. In doing so, it relied on Gaus v. Miles, 980 F.2d 564 (9th Cir. 1992), which provided that a defendant must set forth “in the removal petition itself, underlying facts supporting its assertion that the amount in controversy exceeds” the jurisdictional amount.

Trouble is, the Ninth Circuit found that Gaus had been distinguished by later authority holding that a district court may consider later-provided evidence as amending a defendant’s notice of removal. The Ninth Circuit found the District of Arizona properly applied that later authority and upheld the district court’s denial of General Dentistry’s motion to remand.

The case cite is General Dentistry for Kids, LLC v. Kool Smiles, P.C., 2010 WL 1986187, No. 09-16017 (9th Cir. May 18, 2010).

Despite this post, STL’s not heading to INTA after all.

I inherited a case that needs me here. I decided this weekend I can’t make it to Boston as planned.

I’ll see you in person at INTA next year — at the latest!

The Children’s Pink Plaid and Poodle Apron
sold at (at least until recently) at Sur La Table

On May 21, Seattle-based kitchen store Sur La Table, Inc., filed suit in the Western District against Burberry Limited (U.S.) and Burberry Limited (U.K.). The suit seeks a declaration that the “Children’s Pink Plaid and Poodle Apron” available at Sur La Table (depicted above) does not infringe Burberry’s registered design marks (including the one depicted left).

The suit strikes at Burberry’s familiar check design. The complaint alleges that Burberry’s design is not inherently distinctive; it has not acquired secondary meaning; and it is generic. It also alleges that the pattern as used on the subject apron is merely decorative.

“The generic lattice pattern is functional; it is a decorative geometric pattern present on may products, from plaid fabric to waffle-cut french fries,” the complaint says.

The complaint states the suit is in response to demands that Burberry made to Sur La Table in an April 15 letter.

Though the complaint states that Sur La Table sells the subject apron, it appears to have been removed from the company’s Web site.

Burberry has not yet responded to the complaint.

The case cite is Sur La Table, Inc. v. Burberry Limited (U.S.), No. 10-00850 (W.D. Wash.).

In the Western District’s WORM FACTORY case, plaintiff Cascade Manufacturing Sales, Inc., n/k/a Nature’s Footprint, Inc., succeeded in its trademark case against competitor Providnet Co Trust. (Previous post here.)

Having done so, it requested an award of fees.

Judge Ronald Leighton denied the award under the Lanham Act, but granted it under Washington’s Consumer Protection Act. In doing so, the court expressed its displeasure at the plaintiff’s motives in pressing its case.

“The Court is convinced that plaintiff sought to use its superior position vis-a-vis the trademark to, cause harm to a competitor. Given this Court’s strongly-held belief that a significant part of this litigation was motivated by plaintiff’s desire to quash competition, no fees will be awarded under the Lanham Act’s ‘exceptional case’ authority.”

The court nonetheless awarded fees under the Consumer Protection Act’s mandatory authority, since it found that defendants marketed their products as ‘patent pending’ and ‘made in the USA’ when they knew those statements were false.

“To deny attorneys’ fees in this context, notwithstanding the fact that defendants engaged in misleading advertising practices and trademark infringement, would allow defendants to engage in these types of tactics for a long period of time with impunity.”

Therefore, the court found that “Plaintiff should be awarded some fees under the Washington Consumer Protection Act. Those fees should, however, reflect the Court’s observation that a significant portion of this litigation was motivated not by a desire to protect a valid trademark, but to force a competitor out of business.”

In the end, the court awarded plaintiff less than it wanted — $20k and costs of almost $3,500.

The case cite is Nature’s Footprint, Inc. v. Providnet Co Trust, 2010 WL 1903183, No. 08-5433 (W.D. Wash. May 11, 2010) (Leighton, J.).

Not much of a trademark, it turns out: Mt. St. Helens 30 years ago today

Big day in Washington history: 30 years ago today, Mt. St. Helens blew up.

Quite a day. I remember it well. My Dad was hiking nearby at the time and came home covered in ash.

I was ten.

In honor of this great day, I thought I’d see how the mountain fares as a brand.

Not great, it turns out, if federal registrations are the yardstick. In fact, I only found one: MT. ST. HELENS for “living trees.”

By comparison, MT. RAINIER is part of two federal registrations — MT. RAINIER BANK for “banking services” and MT. RAINIER WILDERNESS for “metal bells” — still a lot less than I would have guessed.

Photo credit: U.S. Geological Survey