Seattle Trademark Lawyer

I’m taking a breather in the Yucatan, seeing as many Mayan ruins as I can. STL will resume posting on Nov. 7. Until then, tenga un feliz Dia de los Muertos!

Templo de los Guerreros
Photo Credit: Keith Pomakis

An anti-genericism ad from this month’s ABA Journal:

“If you use ‘Xerox’ the way you use ‘zipper,’ our trademark could be left wide open. There’s a new way to look at it.

“No one likes to leave their name open to misuse. Which is what happens when you use our name in a generic manner. Basically you’re putting it in a compromising position which could cause it to lose its trademark status. That’s what happened to the name ‘zipper’ years ago. So when you use our name, please use it as an adjective to identify our products and services, such as ‘Xerox copiers.’ Never as a verb: ‘to Xerox’ in place of ‘to copy,’ or as a noun: ‘Xeroxes’ in place of ‘copies.’ Now that you’re aware of all this, that should just about zip things up. Thanks.”

These anti-genericism ads fascinate me. If they’re actually effective, why don’t we see more of them? And why are they run on page 27 of publications like the ABA Journal? On the other hand, if they’re not effective, why do owners of famous marks bother running them at all?

On Oct. 19, Microsoft Corp. filed three substantially similar lawsuits in the Western District against the John Does who allegedly own and operate Web sites that sell unauthorized reproductions of Microsoft software. The subject Web sites are www.Econo-Soft.com, www.DVDFilm.tv, and www.ChildAOGroup.com. In each complaint, Microsoft alleges it placed orders through the Web site; provided payment information; received a link to another Web site in which to download the software; downloaded the software; and determined that the software was an “unauthorized reproduction” of Microsoft’s software. The software included Microsoft’s FrontPage, Windows Vista, and Office 2007 software.

Microsoft seeks relief based on theories of trademark infringement, false designation of origin, copyright infringement, constructive trust, and accounting.

Defendants have not yet answered the complaints, which are viewable here, here, and here.

The case cites are Microsoft Corp. v. Does, No. 07-1700, 07-1701, and 07-1702 (W.D. Wash.)

STL to Host Seattle Law Blogger Meetup on Dec. 5 at Graham & Dunn

Seattle law bloggers unite! For one night, at least. On Dec. 5, STL will host a roundtable for Seattle-area law bloggers. Judging by the success of the Bay Area event (see organizer Eric Goldman’s description of last year’s get-together here), the first Seattle gathering should be productive and fun.

Here are the sorts of things I’m interested in discussing:

• Why do you blog?
• Has blogging affected your practice? Your life?
• What benefits have you gained by blogging?
• How do you generate new content?
• Have you ever received a cease-and-desist letter?
• Have you ever censored yourself?
• What resources exist for learning about blog law?
• How have other lawyers reacted to your blog? Your clients? Your law firm? Your judge?
• How will law blogging change in the next few years?
• Do you have any great tools or tips?

If you have ideas for other topics, let me know. For me, it’ll be great just putting faces together with some excellent local blogs.

The plan is to meet at Graham & Dunn (on Pier 70, near the Olympic Sculpture Park) at 6 pm, schmooze for a little while, get the discussion going, then wrap up around 8 pm. This is open to all law bloggers — including practitioners, academics, law students, and anyone else who’s got a law blog (including, if space permits, anyone who’s about to start one).

Please RSVP to mike@SeattleTrademarkLawyer.com so know I how many to expect. And, equally importantly, send me your ideas for making this event a success.

See you at the meetup!

On Oct. 16, the Eastern District of California awarded Microsoft Corp. $100,000 in statutory damages for defaulted defendant Matthew Evans’ trademark infringement. Magistrate Judge Sandra Snyder concluded Microsoft’s allegations that Mr. Evans had sold counterfeit software bearing Microsoft’s registered trademarks in February and October 2006 adequately stated a claim for trademark infringement.

Microsoft sought $100,000 in statutory damages for each of the three trademarks at issue. The court addressed the issue as follows:

“Here, profits, expenses, and lost revenues are matters only of speculation. Plaintiff has not given the Court even the most basic information regarding its loss, such as the price or value of the goods or services subject to the violations. The precise scope of Defendant’s business is not clear. All that the allegations of the complaint indicate is that the Defendant used multiple counterfeit marks in [one] instance in February 2006 and in another after 2006; further, he continued to infringe upon the marks at the time of the filing of the complaint (December 2006). It appears that the Defendant did so willfully, intentionally, and with a purpose unjustly to benefit from the efforts of Plaintiff in promoting and selling goods and/or services. Specific evidence of willfulness includes the failure to respond to requests to cease and desist contained in a letter dated July 31, 2006, which was alleged to be notification to Defendant of the wrongfulness of his conduct, and a failure to respond to the complaint and the motion for default judgment, of which it is established that Defendant had notice. The Court notes that § 1111 provides that no damages shall be recovered against an infringer of a registered mark unless the defendant had actual notice of the registration.

“Under the circumstances, the Court concludes that because there is some evidence that the use of the confusing mark was [willful] and repeated, even in the absence of the extent of Plaintiff’s loss or the Defendant’s profits, it is appropriate to award damages for the purpose of deterrence.”

In fixing the amount of the award, the court found: “This is not a case in which the defendant has been shown to have engaged in the promotion and sale of multiple counterfeit goods over the internet for an extended period of time, imported millions of infringing products, or unjustly gained huge amounts of profits. It may thus be distinguished from some of the reported cases in which extremely large awards have been made…. Given that the only probative evidence available to the Court in the present case demonstrates [willful] conduct of relatively short duration and of uncertain extent or effect, the Court exercises its discretion and concludes that pursuant to 15 U.S.C. § 1117(c)(1), an award of $100,000 in damages is appropriate.”

The case cite is Microsoft Corp. v. Evans, No. 06-1745, 2007 WL 3034661 (E.D. Calif).