Seattle Trademark Lawyer

The “PRO-IP” bill, otherwise known as the “Prioritizing Resources and Organization for Intellectual Property Act of 2008,” passed the House on Sept. 28 and is headed for the White House.

If signed, the bill would revise a number of existing statutes relating to counterfeiting, including the Lanham Act.

Among the highlights:

• 15 U.S.C. § 1117(b) would be amended to require courts to enter judgment for triple the counterfeiter’s profits or damages, whichever is greater, plus attorney’s fees, unless the court finds extenuating circumstances.
• 15 U.S.C. § 1117(c)(1) would be amended to double the amount of statutory damages in cases involving counterfeit marks (including a doubling to $2 million per counterfeit mark when use of the counterfeit mark is found to be willful).
• The position of Intellectual Property Enforcement Coordinator would be created to coordinate the development of a Joint Strategic Plan against counterfeiting and infringement.
• The Act would create grants to local law enforcement to help combat counterfeiting and infringement.
• The Act would direct the Attorney General, in consultation with the Director of the Federal Bureau of Investigation, to ensure that there are “at least 10 additional operational agents” of the FBI designated to support the Computer Crime and Intellectual Property Section of the Criminal Division of the Department of Justice to investigate intellectual property crimes.
• The Act would provide the FBI and Attorney General with $10 million each to hire and train law enforcement officers to investigate intellectual property crimes and crimes committed through computers.

The bill (S. 3325) passed the Senate by unanimous consent. It passed the House by a vote of 381 to 41.

The White House certainly has bigger problems to worry about these days, but I’d be surprised if it was not quickly signed into law.

On Sept. 26, the Ninth Circuit found that a mark can be counterfeit even when the genuine mark is not used on the same goods.

Defendant Able Time, Inc., imported a shipment of watches bearing the mark TOMMY, which is a registered trademark owned by Tommy Hilfiger Licensing, Inc. The Bureau of Customs and Border Protection seized the watches pursuant to the Tariff Act, which authorizes seizure of any “merchandise bearing a counterfeit mark.”

The punch line is Tommy Hilfiger did not make or sell watches at the time of the seizure. It also did not own any trademark registration for TOMMY in International Class 14, the class that includes watches.

Given these facts, the Able Time argued it was not possible for it to counterfeit Tommy Hilfiger’s mark.

The Central District of California agreed, and granted Able Time’s motion for summary judgment finding the civil penalty that Customs imposed was unlawful.

The Ninth Circuit, however, reversed, finding it did not matter under the Tariff Act that Tommy Hilfiger did not make watches bearing the subject mark. What mattered, the court found, was that Tommy Hilfiger owned a registration for the mark and Able Time’s use of the mark on watches created a likelihood of confusion.

In the court’s words:

“The district court granted summary judgment to Able Time in large part because it believed that the government’s interpretation ran afoul of the principle that a trademark is not a ‘right in gross.’ This principle holds that a registered trademark can be used by someone other than its owner so long as the use does not confuse the public, because trademarks are tied to their use on products and do not exist in the abstract. The statutory scheme at issue here sufficiently connects the marks and the goods on which they are used. The offending merchandise must ‘copy or simulate’ a registered mark, which means that the watches must be likely to cause confusion in order for a civil penalty to apply. This requirement prevents a step backwards towards a ‘right in gross’ theory of trademark because it requires the owner to use the registered mark. If the owner did not use the mark, then the public would be unlikely to confuse it with the offending mark.”

Based on this reasoning, the court reversed and remanded for the district court to determine whether: (1) the mark on the watches is identical to or substantially indistinguishable from the registered mark, and (2) whether the offending mark copies or simulates the registered mark pursuant, which amounts to the traditional likelihood of confusion test for infringement.

The case cite is U.S. v. Able Time, Inc., __ F.3d. __, 2008 WL 4350027, No. 06-56033 (9th Cir.) (Sept. 25, 2008).

Tough times ahead: Message from WaMu’s Web site

Washington Mutual’s failure and subsequent fire sale to New York-based JPMorgan Chase will undoubtedly hurt the Seattle legal community, not to mention Seattle as a whole. WaMu was downtown Seattle’s biggest tenant. It was a leading supporter of local philanthropic and cultural causes. It employed 3,500 in its headquarters alone, including what must have been dozens of fine attorneys. I can think of at least three who used to work at my firm.

All of this will probably soon change.

On the trademark front, the collapse of the bank is also big news. WaMu owns hundreds of federal trademark applications and registrations — most of which would seem to be headed for abandonment, as JPMorgan apparently intends to fold WaMu’s operations into its CHASE brand.

Given WaMu’s 100-year history here, it’s a shame all that goodwill is seen more as a liability than an asset.  It’s disappointing — though I suppose not surprising — that five years of what people now view as reckless expansion, combined with countless ill-advised mortgages, can erase decades of good feelings about the brand.

It goes to show: goodwill is a fragile thing.

When the dust settles, it will be interesting to see how JPMorgan portrays its brand as it enters the Seattle market. The local papers on Friday ran an AP story about how JPMorgan’s staid image will contrast with WaMu’s efforts to present a more hip persona.

In these economic times, I suppose it’s hip to be staid.

Seattle’s three biggest brands all gained value this year, according to Interbrand Corp.’s “Best Global Brands 2008” survey.

Like last year, Microsoft Corp., Amazon.com, Inc., and Starbucks Corp. were the only three Seattle-based brands to make the list. (See last year’s STL post here).

Microsoft dropped one place to No. 3 from No. 2, switching places with IBM Corp. Interbrand estimated Microsoft’s brand value at an incredible $59,007,000,000, a 1% increase over last year.

Amazon.com had the best year of the three. It moved up to No. 58 from No. 62. Its brand is valued at $6,434,000,000, a whopping 19% increase.

Starbucks moved up the rankings to No. 85 from No. 88. Its brand is valued at $3,879,000,000, a 7% gain.

Google Inc. (+43%) and Apple Inc. (+24%) posted the best percentage increases on the list.

Not surprisingly, financial brands Merrill Lynch & Co., Inc. (-21%), Morgan Stanley (-16%), and Citigroup (-14%) were among the worst performers.

Coca-Cola Co., No. 1 last year, remained top of the heap this year. Interbrand estimates the value of its brand at $66,667,000,000.

For more information, see BusinessWeek’s article here and read about Interbrand’s methodology here.

For a north-of-the-border perspective, check out the Canadian Trademark Blog’s post, which tipped me off that the survey was out. (It’s their third time covering this story. Congratulations, guys!)

The parties in HomeTask Handyman Services, Inc. v. Paul Szewczyk agreed to a consent injunction, which Western District Judge Ricardo Martinez entered yesterday.

HomeTask, a franchisor of home handyman services, had alleged a number of trademark-related claims stemming from the parties’ former relationship under a franchise agreement.

The injunction enjoins Mr. Szewczyk from being associated with any handyman service business or performing any handyman services within a designated geographic area for two years. It also enjoins him from soliciting any of his former customers and from using a designated phone number to conduct business. The order requires Mr. Szewczyk to direct calls to that number to HomeTask’s toll free number.

The court previously entered a preliminary injunction in the case last October. (STL post here.)

My firm represented the plaintiff in the case. ‘Nuff said.

The case cite is HomeTask Handyman Services, Inc. v. Szewczyk, No. 07-1283 (W.D. Wash.) (Martinez, J.).