Seattle Trademark Lawyer

It’s true. We Seattlites fancy ourselves as living in the center of the coffee universe. After all, this is home to Starbucks, Seattle’s Best Coffee, and Tully’s, among others. Not surprisingly, the association between Seattle and coffee hasn’t been lost on coffee sellers. 

A quick search of U.S. Patent and Trademark Office applications for trademark registration shows many remote coffee sellers want to cash in on Seattle’s coffee cache. For instance, just last week the Mississippi-based Seattle Drip Coffee Company obtained a registration for SEATTLE DRIP COFFEE COMPANY and Design for coffee and retail store services featuring gourmet coffee. In 2002, Michigan-based Kroger Co. registered SEATTLE CAFE ROAST and Design for coffee. Seattle Coffee Company, Inc., of Little Rock, Ark., similarly registered ESPRESSLY SEATTLE COFFEE CO. but lost it after Seattle’s Best Coffee Co. (of Seattle) petitioned to cancel the registration.

Another Arkansas company, William J. Giles Inc., applied in April to register BARISTA’S SEATTLE GRIND for restaurant services featuring coffee and desserts. Iowa’s Java Station, LLC, applied to register JAVA STATION ESPRESSO SIP OF SEATTLE and Design, which remains pending today. An individual residing in Dallas, Texas, also recently applied to register SEATTLE BROTHERS for coffee shops and coffee-house and snack-bar services.

So what about 15 U.S.C. § 1052(e)(2), which bars registration of marks that are “primarily geographically descriptive”? Or Section 2(e)(3), which bars registration of marks that are “primarily geographically deceptively misdescriptive”? The former would seem to apply if the coffee being sold under the mark came from Seattle and the latter would seem to apply if the coffee did not. The Patent and Trademark Office appears to have cited these bars fairly frequently, though not in every case. In one office action, the PTO succinctly stated:

“Registration [of SEATTLE COFFEE COMPANY] is refused because the proposed mark consists of or comprises geographically deceptive and primarily geographically deceptively misdescriptive matter in relation to the identified goods and/or services. …

“The primary significance of the term ‘SEATTLE’ is geographic. The goods do not originate in this geographic location. The public is likely to believe that the applicant’s goods come from this place because Seattle is well-known for coffee. Furthermore, this belief would materially influence consumers to purchase the goods because of the high quality associated with Seattle coffee.”

The PTO’s enforcement of the bar for “primarily geographically deceptively misdescriptive” marks likely played a role in the abandonment of the following applications in connection with coffee:

• SEATTLE SUNRISE (by a Delaware individual),
• SEATTLE COFFEE COMPANY (by a North Carolina individual),
• A CUP OF SEATTLE (by a Colorado company),
• SIP OF SEATTLE (by a Tennessee company),
• HIGHER GROUNDS SEATTLE’S FINE GRIND and Design (By a Virginia company), and
• SEATTLE’S STYLE ESPRESSO (by a Pennsylvania company).

My favorite abandoned SEATTLE coffee application is for DYDO SEATTLE CAFFE and Design by DyDo Drinco, Inc., of Japan. Its mark contains Japanese characters that translate to “Adult’s Milk Coffee Seattle.”

But coffee isn’t just for adults anymore, as Mattel, Inc., illustrates. In 2000, it applied to register SEATTLE LATTE for “doll clothing and doll accessories.” For Seattle coffee drinkers of the future.

Haute Diggity! On Nov. 13, the Fourth Circuit found doggie-toy maker Haute Diggity Dog, LLC did not dilute Louis Vuitton Malletier, S.A.’s famous LOUIS VUITTON trademark by selling chew toys called “Chewey Vuiton.” Rebecca Tushnet’s discussion here. This is an important decision under the now year-old Trademark Dilution Revision Act. It’s also a loss for the owners of famous trademarks. The International Trademark Association had filed an amicus brief in support of Louis Vuitton. The Fourth Circuit apparently was not persuaded.

Starbucks threatens Michigan’s Conga Coffee & Tea over the latter’s green concentric circle logo. Vegas Trademark Attorney reports on the dispute and chides STL for not beating him to the story.

Likelihood of confusion?

Imposters no more. In June, STL wrote about California’s proposed Truth in Music Advertising Act aimed at “imposter” bands. It’s now law. Starting Jan. 1, 2008, the Act generally will make it unlawful for “any person to advertise or conduct a live musical performance or production through the use of a false, deceptive, or misleading affiliation, connection, or association between a performing group and a recording group….” If your band’s called Sha Na Na, in California your name had better be Bowzer Bouman.

In a relatively rare trademark filing for the Eastern District of Washington, Acapulco Restaurants, Inc., brought suit against the owners of the Sunnyside, Washington, Mexican restaurant known as “Acapulco Restaurant.” Plaintiff alleged Antonia and Maria Chavez and the other unknown owners of the restaurant infringed plaintiff’s registered trademarks ACAPULCO, ACAPULCO MEXICAN RESTAURANT, and ACAPULCO RESTAURANT Y MEXICAN CANTINA in connection with restaurant and cantina services. After defendants proved they had changed the name of their restaurant to “El Faro,” plaintiff filed a notice of dismissal, which Judge Robert Whaley effected today.

The case cite is Acapulco Restaurants, Inc. v. Chavez, No. 07-3091 (E.D. Wash.).

Full disclosure: STL’s publisher represented the plaintiff in the case.

The Vegas Trademark Attorney has a nice write-up on the Ninth Circuit’s Nov. 5 decision in Perfumebay.com Inc. v. eBay Inc. Here’s the rub:

“The district court did not clearly err in finding that conjoined forms of ‘perfumebay’ created a likelihood of consumer confusion. The district court, therefore, properly enjoined Perfumebay from utilizing such infringing marks. The district court also did not clearly err in finding that the non-conjoined forms of Perfumebay’s mark, such as Perfume Bay, did not create a likelihood of confusion.

“However, the district court erred in holding that Perfumebay’s marks did not produce a likelihood of dilution, as the marks are nearly identical to eBay’s mark. The district court also erred in finding that eBay acted with unclean hands in its advertising, as the record did not affirmatively demonstrate the requisite intent to deceive.”

The case cite is Perfumebay.com Inc. v. eBay Inc., Nos. 05-56794 and 05-56902.

I’ve probably over-done my coverage of this case, but it’s been a fun one. To close the loop, I’ll just say that on Oct. 26, the Western District declined to award L.L. Bean, Inc., attorney’s fees, which L.L. Bean sought after obtaining dismissal of Mother, LLC’s trade dress infringement claims as a matter of law at the close of trial.

After noting that fees awards are discretionary and the Ninth Circuit has “set the bar fairly high with regard to what constitutes ‘exceptional,’” the court explained its decision as follows:

“The court found this case distinguishable from many, in that the parties had entered into a contractual arrangement regarding the sale and marketing of the plaintiff’s upland hunting vest by defendant. Defendant’s conduct was more than suspect from an equitable perspective, but because Congress was careful not to stifle competition, the plaintiff had a significant burden in establishing a prima facie case of trade dress infringement. The court’s oral opinion sets forth the basis for granting the defendants’ motion at the end of the plaintiff’s case and need not be repeated here. It was not based on allegations which were vexatious and/or made in bad faith. This case was, in fact, one of the few where equity and empathy favored the plaintiff and in the final analysis the law favored the defendant.”

The case cite is Mother, LLC v. L.L. Bean, Inc., No. 06-5540, 2007 WL 3223223 (W.D. Wash.).