Seattle Trademark Lawyer

The Wall Street Journal’s Law Blog reports on New Yorker Jennifer Cassetta’s fight with Home Box Office, Inc., over her 2006 application to register HEALTH AND THE CITY in connection with “physical fitness instruction.” (Law Blog’s first post on the story here.) HBO, owner of its “Sex and the City” television program and SEX AND THE CITY family of marks, had extended the time to oppose Ms. Cassetta’s application since June. However, its last extension lapsed on Nov. 18, clearing the way for Ms. Cassetta to get her registration.

Most of the reader comments applauded Ms. Cassetta’s triumph over the “suits” at HBO and its parent, Time Warner Inc. However, two thought Ms. Cassetta had brought the trouble on herself by selecting a trademark that trades off HBO’s. I’ve got to side with the latter view. Out of the infinite universe of possible trademarks, she had to pick one that brought to mind HBO’s famous mark? Sure sounds like dilution by blurring to me.

Last July, Bellingham, Wash.-based Homax Products, Inc. filed a declaratory judgment action against Dynacraft Industries, Inc. Both parties manufacture paint removal products that change color to signify when the paint they are applied to is ready to be stripped.

One of Dynacraft’s READY STRIP products

Homax’s complaint stemmed from a cease-and-desist letter it received from Dynacraft in May 2006, which allegedly claimed that:

• Homax’s use of NATURE’S OWN for its paint strippers infringes Dynacraft’s federally-registered mark, BACK TO NATURE;
• Homax’s use of the the phrase “Color Changing Paint Stripper” infringes Dynacraft’s common law trademark rights in COLOR CHANGING PAINT STRIPPER; and
• Homax’s “selection of verbiage” in two of its labels are “close in comparison with the copyrighted verbiage in Dynacraft’s ‘Ready Strip’ label.”

The complaint asked the Western District to determine that Homax “has not infringed Dynacraft’s alleged federal trademark registration for ‘Back to Nature’”; that “Dynacraft has no rights in the term ‘nature’ apart from any rights it has in the mark ‘Back to Nature’”; that “Dynacraft has no trademark rights in the generic and/or merely descriptive phrases ‘color changing’ and ‘paint stripper’”; that Homax has not infringed Dynacraft’s trade dress; and that Dynacraft has no protectable trade dress in the packaging of its products.

In Oct. 2006, Dynacraft answered Homax’s complaint and asserted counterclaims that Homax was indeed infringing its trade dress and trademark rights. (The answer is worth checking out for the color exhibits on pages 20 and 21 illustrating the products’ similar trade dress.)

The parties recently made nice. Today, they filed a Stipulation and Order of Dismissal stating they had settled their differences and agreed that all claims and counterclaims between them should be dismissed with prejudice.

The case cite is Homax Products, Inc. v. Dynacraft Industries, Inc., No. 06-990 (W.D. Wash.).

On Nov. 21, the Trademark Trial and Appeal Board dismissed Hormel Foods Corp.’s petition to cancel the trademark registration owned by Seattle-based Spam Arrest, LLC, for SPAM ARREST, with the word “spam” disclaimed, for “computer software, namely software designed to eliminate unsolicited commercial electronic mail.”

Hormel had argued Spam Arrest’s mark was not entitled to registration based on a likelihood of confusion with and dilution of Hormel’s family of famous SPAM trademarks. Spam Arrest responded that “spam” is a generic term, which in connection with the word “arrest” is not likely to cause confusion or dilute Hormel’s marks.

(For more background, see STL’s report on the Feb. 23 hearing, which I was fortunate enough to attend.)

TTAB Judges David Sams, Ellen Seeherman, and Gerard Rogers unanimously sided with Spam Arrest:

“The word ‘spam’ is a recognized generic term for unsolicited commercial email. There are various stories about how this term came to be adopted, including that it was a term used on computer game-playing sites to describe different types of abusive behavior, and that it is an acronym for ‘sending public announcement messages.’ However, the widely-reported origin, which appears in Merriam-Webster’s Collegiate Dictionary, 11th ed. © 2003, is that it is derived from ‘a skit on the British television series Monty Python’s Flying Circus in which chanting of the word Spam overrides the other dialogue.’ Whatever its origin, ‘spam’ is well recognized today as the generic term for such email.”

This finding permeated the Board’s opinion. With respect to Hormel’s likelihood of confusion claim, for example, the Board found even though the parties’ marks contained the identical term, “spam,” Spam Arrest’s mark left a different overall commercial impression:

“Although petitioner’s mark SPAM was derived from ‘spiced ham,’ it must be considered an invented word rather than a suggestive term, and therefore it has no meaning other than that of a trademark for petitioner’s goods. On the other hand, because ‘spam’ is a generic term for unsolicited commercial email, and applicant’s goods are identified as ‘computer software, namely, software designed to eliminate unsolicited commercial electronic mail,’ as it is used in respondent’s mark SPAM has the connotation of the generic term, referring to unsolicited email, and the entire mark has the connotation of software that stops or filters spam/unsolicited commercial email. Because of this difference in connotation of ‘spam’ in the respective marks, the marks as a whole are different in connotation and commercial impression.”

The Board also found that while “SPAM” is famous for canned meats, Hormel failed to establish that its mark’s fame extended to anti-spam software:

“Thus, although the fame of petitioner’s mark certainly favors petitioner herein, petitioner has not shown how that fame has carried over to computer software designed to eliminate unsolicited commercial electronic mail, or that consumers would associate such software with the source of petitioner’s SPAM and SPAM-derivative products and services.”

The Board concluded: “After considering all of the du Pont factors on which we have evidence or argument, we find that petitioner has failed to prove that respondent’s mark SPAM ARREST for ‘computer software, namely software designed to eliminate unsolicited commercial electronic mail’ is likely to cause confusion with petitioner’s mark SPAM and its SPAM-derivative marks for its various goods.”

With regard to dilution, Hormel took the position that the use of “spam” is acceptable when it is used as an ordinary, generic term, but that it is not acceptable when SPAM is used as part of a trademark. The Board rejected that argument as being too fine a point:

“Although we understand the distinction that petitioner is making, we do not believe that this is a significant difference, or one that is drawn by the statute or the case law. If a term is generic, others should have the right to use it, even as a disclaimed term in a trademark, to describe the goods or services with which the mark is used. And as we stated in our discussion of likelihood of confusion, respondent is using the term ‘spam’ in the mark SPAM ARREST in its generic sense, and that is the meaning that would be perceived by consumers.

“This is not to suggest, however, that simply because a mark has a generic meaning in other contexts it can never be considered distinctive in terms of proving dilution. We are saying only that, when a trademark has an alternative generic meaning, and it is used in a second mark to project that generic meaning, there can be no dilution of the original mark under the statute because that mark is not distinctive with respect to the goods which the generic term describes.”

Consistent with this finding, the Board found that Hormel had failed to prove its mark is distinctive when consumers encounter the mark in the context of unsolicited commercial email or products or services that address that problem. The Board also found that Hormel had failed to prove dilution by blurring or dilution by tarnishment.

The Board designated its 63-page decision as not having precedential value.

The case cite is Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (TTAB 2007).

Darn it, the date I had picked for the Seattle Law Blogger meetup conflicts with the Federal Bar Association of the Western District of Washington’s annual dinner. I also had heard rumblings of other potential conflicts. So, I am moving the event, executive-decision-style, to 6 p.m. on Tuesday, January 15. I hope this date works better. Heck, by January, two or three more Seattle law bloggers probably will have joined our ranks.

The suggested discussion points and description of the event are here. If you are a Seattle law blogger, I hope to see you there. Please mark your calendars, spread the word, and let me know if you can attend!

Plaintiff shoe maker California Board Sports, Inc., sued competing shoe maker Vans, Inc., for a declaration of non-infringement and non-dilution relating to Vans’ federal registration for the checkerboard pattern on its “Classic-Slip-On” shoe, or as I called them back in the day, “Spicoli Vans.”

Vans counterclaimed against CBSI for trademark infringement, unfair competition, and misappropriation under California law based on CBSI’s use of a checkerboard pattern on its “Serve Black” shoe.

Likelihood of confusion? Court says maybe
California Board Sports shoe (top) and Vans

CBSI moved for summary judgment on the grounds that Vans’ checkerboard pattern is generic or merely decorative; that the pattern is functional; that there is no likelihood of confusion; and that CBSI’s use of its checkerboard pattern is fair use.

On Nov. 6, the Southern District of California denied UBSI’s motion in its entirety. As to UBSI’s argument that the checkerboard pattern is generic or merely decorative, Judge Irma Gonzalez found that it did not serve the “What are you?” function that a generic mark serves. Instead, the court found that “a black and white checkerboard, while lacking in independent distinctiveness, falls into the class of designs eligible to acquire secondary meaning as a source-identifier.”

The court found that Vans had met its burden. Vans’ “evidence came in the form of a survey in which 45% of respondents — male purchasers of casual and athletic shoes who had purchased such shoes in the past three months or were likely to purchase such shoes in the next three months — misidentified a competitor’s slip-on shoe that copied the checkerboard pattern as a model coming from Defendant.” Even though UBSI objected as to the relevance of a study involving a shoe manufactured by a third party, the court found the study was relevant to the issue of whether consumers generally identify the checkerboard pattern with Vans.

As to functionality, the court found that while it was a close call, a genuine issue of material fact existed as to whether protection of the checkerboard pattern as a trademark would impose a “significant non-reputation related competitive disadvantage.” The court found that while the checkerboard is widely used in fashion generally, “Plaintiff has not connected the protection of the checkerboard pattern with competitive consequences by, for example, introducing evidence that consumers have an affinity for the checkerboard pattern unrelated to Defendant’s use of the pattern on its shoes.” Thus, the court concluded, the checkerboard pattern “acts as a source identifier” for Vans.

UBSI only made half-hearted arguments on likelihood of confusion. The court found: “Extended analysis on this issue is unnecessary. Even discounting the survey data as irrelevant for purposes of determining likelihood of confusion between Plaintiff’s and Defendant’s products, Plaintiff’s concession that many of the above factors favor Defendant suggests that a genuine issue of fact exists on the issue.”

Finally, as to fair use, UBSI essentially argued that because it did not choose its checkerboard pattern to deceive the public, its use is fair use. The court rejected the argument, finding “the principle of fair use and its protection of images in their primary descriptive sense has no relevance to the present controversy.”

The case cite is California Board Sports, Inc. v. Vans, Inc., No. 06-2365, 2007 WL 3276289 (S.D. Calif.).