Seattle Trademark Lawyer

On Oct. 21, Western District Judge Thomas Zilly dismissed The Topline Corporation’s trademark lawsuit against 4273371 Canada, Inc., pursuant to the parties’ settlement.

STL readers may recall that Bellevue-based shoemaker Topline claimed that Canadian clothier 4273371 Canada’s use of REPORT and REPORT COLLECTION trademarks in connection with footwear infringed Topline’s REPORT, REPORT:, and REPORT SIGNATURE trademarks in connection with footwear. (Previous STL coverage from July 5 and Aug. 14, 2007.)

Last year, the Western District entered a preliminary injunction against 4273371 Canada in the case.

The case cite is The Topline Corp. v. 4273371 Canada, Inc., No. 07-938 (Oct. 21, 2008) (Zilly, J.).

Apologies for the blogging slowdown. I’ve been in depositions in the cool (and I do mean cold) city pictured above, and will return on Tuesday for more. (Hint, it’s where Seattle’s last professional sports team was moved before the Sonics went to Oklahoma City.)

That said, there are two recent developments worth noting. First, one of the attorneys in the Peso’s v. Matador restaurant trade dress case filled in some of the settlement terms foreshadowed here. The highlights reportedly are as follows:

1. The Matador’s Ballard location will make certain interior changes (including to its walls, ceiling, and suspended acoustic panels). The location will remove all votive candle sconces from its walls, table tops and bar tops. It also will remove all Day of the Dead figurines (including those made from wood, paper mache, and pottery).
2. All Matador locations within the State of Washington will change the colors of their table top menu holders, change certain menu descriptions, and stop using two particular menu titles.
3. Owners of the Matador will not open any locations for three years in the Seattle area bounded by 80th Street to the north, Spokane Street to the south, Lake Washington to the east, and Puget Sound to the west. For the same time period, the Matador also will not open within a four-mile radius of Bellevue’s Lincoln Square (excluding Issaquah to the extent that city falls within those parameters).
4. Owners of the Matador will pay the owners of Peso’s $250k-$285k. If the parties cannot agree on the amount, King County Superior Court Judge Catherine Schaffer (the trial judge) will set the amount.
5. Should any dispute arise in drafting or implementing the final settlement agreement, King County Superior Court Judge John Erlick (who helped broker the settlement) will decide the issue.

The other item of interest is that on Oct. 16, the Western District entered a Judgement and Permanent Injunction against the makers of Hendrix Electric vodka. The order was no surprise given Judge Thomas Zilly’s August 7 finding on summary judgment that the company had infringed Experience Hendrix, LLC’s AUTHENTIC HENDRIX, EXPERIENCE HENDRIX, and JIMI HENDRIX trademarks.

The injunction is sure to put a crimp in the defendants’ marketing efforts. Among other things, it permanently enjoins them from “using the words JIMI HENDRIX ELECTRIC, JIMI HENDRIX ELECTRIC VODKA, HENDRIX ELECTRIC, HENDRIX ELECTRIC VODKA; and the design headshot containing JIMI HENDRIX ELECTRIC or HENDRIX ELECTRIC, both with and without Jimi’s signature, in the sale, offering for sale, distribution or advertising of posters, clothing, and alcoholic beverages including vodka.”

The chance of appeal? Given the Hendrix family’s penchant toward litigation, I’d say about 100%.

Photo credit: here.

Owners of Peso’s and the Matador restaurants have settled their trade dress and unfair competition case, a lawyer involved in the trial told me today. (Last STL post on the case here.)

But darn it, the Seattle Weekly scooped me with this post.

I understand the terms were read into the court record but I don’t yet know what they are. The Matador’s lawyer apparently told the Weekly that at least some money will change hands and that the parties are still working out the details. 

I’m sure they are.

Water bottler CG Roxane LLC, seller of “Crystal Geyser“-branded water, obtained a registered trademark for BOTTLED AT THE SOURCE. It subsequently sued competing water bottler Fiji Water Co. LLC for labeling its water as being the “bottled at the source.”

The Northern District of California rejected CG Roxane’s claims. It found on summary judgment that CG Roxane’s registration was invalid because BOTTLED AT THE SOURCE is generic or at most descriptive, and CG Roxane had failed to prove secondary meaning. The court also found no likelihood of confusion between the parties’ use of the alleged marks. (For further detail on the summary judgment decision, see the Aug. 21 post from Rebecca Tushnet’s 43(B)log.)

After winning its motion for summary judgment, Fiji filed a motion for an award of attorney’s fees.

On Oct. 10, the court denied the motion.

“The defendant alleges the plaintiff filed this case ‘as leverage for a quick settlement that could be used to hammer other competitors into pseudo-legal submission’ and requests the court grant attorneys’ fees in the amount of $325,951.98. Defendant further alleges that the suit was groundless, the trademark registration was based on false information, and that the plaintiff’s conduct in this litigation was in bad faith.

“The defendant presents no compelling proof that this suit was groundless. Prior to … initiating the suit, the plaintiff registered and was granted a registered trademark by the USPTO. Registration of a mark with the USPTO is prima facie evidence of the mark’s validity and of the plaintiff’s exclusive right to use the mark as defined by its registration.”

Given that registration, the court found plaintiff’s claim for trademark infringement was colorable, not exceptional.

The case cite is CG Roxane LLC v. Fiji Water Co. LLC, 2008 WL 4542803, No. 07-2258 (N.D. Calif. Oct. 10, 2008) (Whyte, J.).

I’m happy to report that Thomson-West has published “Expert Witnesses: Intellectual Property Cases” (table of contents; index).

I wrote the first two chapters: “Disclosing Expert Witnesses Under the Federal Rules: an Overview” and “Trademark Experts.”

My law partner, Kathleen Petrich, wrote the chapter on patent experts. Mark Lee of Manatt, Phelps & Phillips, LLP, wrote the chapter on copyright experts. Melvin Jager of Ocean Tomo, LLC, wrote the chapter on trade secret experts.

I can safely say the book fulfills a clear need in the market for intellectual property reference books. There just isn’t much written about the nuts-and-bolts practicalities of using experts in intellectual property cases. The trademark chapter covers typical subject areas in which expert testimony is offered, survey evidence, and why experts are excluded. It also includes sample expert reports and testimony.

A lot of Saturdays and Sundays went into my part of the book. I’m glad it’s done and hope folks will find it useful.

Thomson-West has priced it at $200.