Seattle Trademark Lawyer

A couple weeks ago I had the good fortune to drop in on the IP-core class at the University of Washington School of Law. It’s a good mix of J.D. (regular) and L.LM. (graduate) law students focused on learning the fundamentals of intellectual property law.

The mission? Talk about the importance of the likelihood of confusion in trademark law. I also introduced parody in the context of likelihood of confusion.

Likelihood of confusion is a hugely important concept in trademark law. It’s the basis for a trademark infringement suit. It’s also a bar to getting a trademark registered or a reason to have an existing registration cancelled.

The slides from my presentation are below. It highlights the “likelihood of confusion” factors that courts use to determine whether ordinary consumers would probably think that goods or services come from Source A when they actually come from Source B. If a likelihood of confusion exists, courts can enjoin (prohibit) the junior user from using the trademark that is causing confusion with the senior mark, among other things.

Want a crash course? My slides are accessible below.

A dripping wax seal: Not just for bourbon anymore.

After Maker’s Mark’s solid trade dress victory this summer against Jose Cuervo — in which the Sixth Circuit upheld the district court’s finding the dripping red wax seal was an “extremely strong” trademark that had been infringed — it’s notable to see some dripping wax seals in the beer aisle. (I was there completely by accident, I assure you.)

Now, beer isn’t bourbon, and these seals aren’t red, but it will be interesting to see if Maker’s cries foul. I’m not saying it should, but on the heels of such a nice win, I wouldn’t be surprised if it tried to flex its muscle beyond hard liquor.

Fat Cat Mustard, LLC, sued Fat Cat Gourmet Foods, LLC, for trademark infringement in the Western District at Tacoma.

The case isn’t staying here.

On November 2, Judge Benjamin Settle dismissed the suit because the defendant did not have the required “minimum contacts” with this district to make personal jurisdiction constitutionally fair.

In support of its motion to dismiss, Gourmet’s managing member filed a declaration stating its records only revealed one shipment to Washington, which she said was made because a Florida customer did not want to travel with the bottle on her way to Washington.

The court found that was not enough to support personal jurisdiction.

“In this case, Mustard asserts that the Court has specific jurisdiction based on Gourmet’s and Gourmet’s distributors’ websites, the shipment of one jar of sauce to Washington, and Gourmet’s cease and desist letters. With regard to the websites, it appears to be uncontested that individuals in Washington could access a website and order Gourmet’s products. Mustard, however, has failed to even allege that any individual in Washington has completed such a transaction. Therefore, Mustard is required to show ‘something more.’ See Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155–1159 (9th Cir.2006). Mustard offers the letters and the shipment as the ‘something more.’

“First, the cease and desist letters are not ‘something more.’ Mustard has failed to show that the letters caused any harm whatsoever. Moreover, Mustard fails to cite any authority for its proposition that a federally granted property right, such as a trademark, subjects the owner to personal jurisdiction in every forum in which the right may be enforced.

“Second, Mustard misconstrues Gourmet’s transaction. [Gourmet’s managing member] declares that the purchaser was a ‘Florida customer’ who requested that the bottle be shipped to Washington ‘so she didn’t have to travel with it.’ This does not show that Gourmet ‘engaged in commercial activity in Washington’ as Mustard contends. Therefore, based on the record before the Court, Mustard has failed to show that Gourmet ‘purposely availed itself of the privilege of conducting activities in’ Washington.”

The court found the other elements needed to establish personal jurisdiction were similarly lacking.

“In this case, Gourmet has made a compelling case that the exercise of jurisdiction would be unreasonable. Gourmet’s interjection into Washington is de minimus, if any purposeful interjection exists at all. Being a Florida based corporation, Gourmet would suffer a significant burden defending itself in Washington. The parties concede that there is no conflict between Washington and Florida. Washington has no interest in adjudicating the propriety of a non-resident company’s trademark when there is no evidence that a sale was actually consummated in Washington or that there is a likelihood of confusion by Washington consumer. Neither forum appears to be the most efficient for judicial resolution because it does not appear that the parties compete in either Florida or Washington. While Washington may be a more convenient forum for Mustard, it has failed to show that Gourmet purposely interjects itself into Washington and causes harm. Finally, alternative forums exist if either party chooses to bring the action where the defending party is subject to personal jurisdiction. Therefore, the Court finds that Gourmet has shown that it would be unreasonable for the Court to assert personal jurisdiction in this matter.”

The case cite is Fat Cat Mustard, LLC v. Fat Cat Gourmet Foods, LLC, No. 12-5663, 2012 WL 5389149 (W.D. Wash. Nov. 2, 2012) (Settle, J.).

I’m not surprised, but I’m a little disappointed.

After the district court issued its flawed decision roundly supporting Google, and the Fourth Circuit sent the case back to the district court, Rosetta Stone last week settled its keyword advertising lawsuit against Google.

The first time around, the Eastern District of Virginia found Google was protected from liability by a strange application of the functionality doctrine, and seemed to ignore that the case was decided on summary judgment. In other words, the court improperly found no trademark infringement and no dilution even though Rosetta Stone had offered evidence to the contrary. Such disputed issues of fact should be decided at trial, not on summary judgment.

The Fourth Circuit’s decision helped iron out the evolving law on keyword advertising law. It told the district court where it had erred and directed it to reassess the evidence in light of the standards the appellate court clarified.

That’s all good. Still, I had been looking forward to seeing what the district court was going to do with the case in light of that direction. My predication was the result would be the same — Google would win — but this time, for the right reasons. Now we’ll never know!

Previous post on the case here.