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Adidas v. Payless Jury Instructions
2008-05-15 06:20:00
By popular demand, here are the jury instructions in the Adidas America, Inc. v. Payless Shoesource, Inc. case. All 60 pages of them. The ten pages of instruction on dilution start on page 38. Besides a reader’s request for the instructions on dilution, everyone is commended to check out the entire instructions. This case was the full meal deal — it had instructions on trademarks, trade dress, trademark infringement, likelihood of confusion, unfair and deceptive practices, dilution, and damages. This is good stuff. The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).

Notes in Adidas v. Payless Trademark Dispute Reveal Juror Mindset
2008-05-13 05:39:00
Interesting to see juror notes become a part of the docket in the recently-decided case of Adidas America, Inc. v. Payless Shoesource, Inc. As many will recall, an Oregon jury last week found Payless’ use of two- and four-stripe designs for athletic shoes infringed Adidas’ three-stripe design for its competing athletic shoes.In an undated note to District of Oregon Judge Garr M. King, a juror asked: “If this case was found for adidas, would adidas own 2 and 4 stripes?”The court’s response: “The legal ownership of two and four stripes, generally, is not an issue in this case. The issues for consideration involve only the shoes accused in this case.”This guidance undoubtedly is correct. But for a litigator it’s always fascinating (and, I’ll admit it, sometimes scary) to see what goes through jurors’ minds. This was important enough a question for a juror to ask — and the response essentially was an i...
More About: Notes , Mindset , Trademark , Dispute

Blue Nile Settles Trademark Dispute over BUILD YOUR OWN RING
2008-05-12 01:46:00
After the Settlement: Portions of Blue Nile ’s and James Allen’s “BUILD YOUR OWN RING” and “Design Your Own” Web pagesOn May 8, Western District Judge Thomas Zilly dismissed Blue Nile, Inc.’s lawsuit against competing online jeweler James Allen Diamonds, Inc. and JamesAllen.com LLC based on the parties’ stipulation. The complaint had alleged that defendants’ use of BUILD YOUR OWN RING as a trademark infringed Blue Nile’s prior co mmon law rights in the same mark. Defendants had denied Blue Nile’s allegations and asserted in counterclaims for declaratory judgment that their use of the words did not infringe Blue Nile’s trademark rights and that BUILD YOUR OWN RING was invalid because it did not function as a protectable trademark.The terms of the settlement are not known to STL, but it appears that defendants have changed their alleged use of “Build Your ...
More About: Ring , Trademark

Fantastic Sams Sues Rival Regis for Not Removing Trademarks from Premises
2008-05-08 03:27:00
        ; On May 5, hair salon franchisor Fantastic Sams Franchise Corp. filed suit in the Western District against rival hair salon franchisor Regis Corp. and other defendants. Fantastic Sams alleges that Regis convinced the corporation that owned the right to develop and grant third parties FANTASTIC SAMS franchises in the Seattle-Tacoma market to sell its salons to Regis. Fantastic Sams alleges that immediately after closing on its purchase, Regis began operating the salons under its HAIR MASTER brand but failed to remove all of the FANTASTIC SAMS marks from the premises. This, Fantastic Sams alleges, is likely to confuse consumers and amounts to service mark infringement and unfair competition.Regis has not yet filed an answer.The case cite is Fantastic Sams Franchise Corp. v. Regis Corp., No. 08-706 (W.D. Wash.).
More About: Trademarks

Oregon Jury Awards $305 Million to Adidas for Payless Shoe Infringement
2008-05-07 06:59:00
On May 5, a nine-person jury in the District of Oregon found Payless Shoesource, Inc., liable for infringing Adidas America, Inc.’s three-stripe trademark and awarded Adidas $305 million. The jury found Payless infringed or diluted Adidas’ mark or trade dress by using a two- and four-stripe logo on its competing athletic shoes. Trial lasted 14 days. The jury deliberated for two days. An attorney representing Adidas said he thought it was the biggest verdict in a trademark infringement case ever. Collective Brands Inc., which operates Payless and Stride Right stores, said the award was “excessive and unjustified” and vowed to have it set aside or overturn.An excerpt from the jury verdict form showing Payless’ shoes. “Yes” indicates infringement.From the jury verdict form:“Section III.  Monetary Recovery8) State the amount of actual damages that should be awarded to ad...
More About: Awards , Infringement , Million

Domain Name Misappropriation Case Set for Trial in the Western District
2008-05-06 06:24:00
The case between a Seattle law firm and its Web development vendor goes to jury trial on May 21. STL readers may recall that the Seattle-based law firm The Christensen Firm sued Chameleon Data Corp. and its president, Derek Dohn, on the ground that defendants allegedly transferred ownership of plaintiff’s four domain names (thechristensenfirm.com, thechristensenfirm.net, christensenfirm.com, and cc-lawfirm.com) to themselves without plaintiff’s authorization, and shut down email service to addresses associated with plaintiff’s primary domain name, cc-lawfirm.com, in order to get leverage over plaintiff in a dispute over the defendants’ bill.This interesting dispute became less of a trademark case on Jan. 18, when Judge Zilly dismissed plaintiff’s Lanham Act and Washington State cybersquatting claims on the basis that the plaintiff’s marks were either generic (cc-lawfirm) or descriptive (The Ch...
More About: Domain , Domain Name , Fees , Attorney , Trial

Summit Capital Dismisses Declaratory Judgment Action Against Summit Partner
2008-05-05 04:08:00
As STL readers may recall, on Dec. 28 Seattle-based Summit Capital Group, LLC, and affiliated financial services companies filed suit in the Western District against the Boston-based Summit Partner s, LP, venture capital firm, seeking a declaration of non-infringement and non-dilution of the defendant’s SUMMIT PARTNERS trademark. Plaintiffs claimed they had used SUMMIT CAPITAL PARTNERS since at least 1986. Defendants’ demand letter to plaintiffs giving rise to the lawsuit claimed it had used SUMMIT PARTNERS, SUMMIT CAPITAL PARTNERS, and SUMMIT PARTNERS VENTURE FUND names and marks since 1984.The parties apparently have settled their differences. On May 2, Summit Capital filed a Voluntary Notice of Dismissal with Prejudice seeking dismissal of its claims without fees or costs to any party. The parties appear to have begun discussions soon after the suit was filed since the docket shows no substantive filings other than the complaint. Defendants never filed an ans...
More About: Action , Judgment

Mark Your Calendar for "Meet the Bloggers IV" at INTA in Berlin
2008-05-02 06:01:00
“Meet the Bloggers IV” at Potsdamer Platz 1, Berlin , GermanyOrganizer Jeremy Phillips of IPKat fame has given his fellow trademark bloggers the green light to spread the word. So, mark your calendars: the fourth annual “Meet the Bloggers” reception at the International Trademark Association’s annual meeting will be held from 8:30 to 10:30 p.m. on Monday, May 19, at the top of Potsdamer Platz 1, 10785 Berlin, Germany. Jeremy suggests RSVP’ing to gracious host Olswang. To me, this event is the highlight of every INTA meeting. Come schmooze with bloggers, blog readers, and hangers on from around the globe. Here’s a partial list of expected attendees:Afro-IPCatch Us If You Can !!! Class 46IMPACT IP FinanceIPEG IPJUR IPKatLucentin us Naked LawPetit Musee des MarquesPeter GrovesRychlicki.netSeattle Trademark LawyerSOLO IPSpicy IPTrademark BlogTransblawgTTABlogWhat a lineup! I can’t wait to take in the n...
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More Background on Washington's Amended Right of Publicity Statute
2008-05-01 05:30:00
For those attending tomorrow’s discussion on Washington’s amended right of publicity statute, I thought I’d add some more background (STL post about the gathering here). In particular, here’s a cheat sheet on the amendment I cribbed from the the House Bill Report’s summary of the amendment:”When ApplicableThe provisions of the bill apply to all causes of action commenced on or after June 11, 1998, regardless of when the cause of action arose.“The provisions of this bill apply to all individuals and personalities, living and deceased, regardless of place of domicile or place of domicile at time of death.”Determination of RightsPersonality rights shall be deemed to have existed before June 11, 1998, for purposes of determining who is entitled to the rights recognized under this chapter.”Transferability of RightsAn individual or personality, or any subsequent owner of that individual or personality’s person...
More About: Publicity , Right of Publicity , Background

How to Find the Right Expert Witness for Your Trademark Case (Part 2)
2008-04-28 03:01:00
STL’s previous post offered some strategies for finding the right expert witness in trademark cases. On Friday, the Las Vegas Trademark Attorney blog added a few suggestions, including the following: “One popular online source is the online expert witness directory JurisPro. Other expert witness websites listing the credentials of various trademark experts include ALMExpert s.com, expertwitnesses.com, and Intota.com.” These are good tips. Thanks, Ryan. For Westlaw users out there, here is another that I think is particularly worthwhile. The Intellectual Property Expert Witness Filings (IP-EW-DOCS) database contains expert reports, affidavits, deposition transcripts, and trial transcripts of expert witnesses who have testified in IP cases. This is a good way not only to identify who the quality trademark experts are, but also to learn how they have testified in previous cases. These same materials are great for those preparing ...
More About: Find , Case , Part

How to Find the Right Expert Witness for Your Trademark Case
2008-04-25 05:18:00
Expert witnesses can be hugely important in trademark cases. Particularly through survey evidence, they can help establish if a mark is generic (and hence unprotectable); that a descriptive mark has acquired secondary meaning (and therefore is protectable); that a mark has actually confused or is likely to confuse consumers with another mark; that a mark is famous; and that one user’s mark is likely to cause dilution by blurring or dilution by tarnishment. Experts also can help establish the opposite of these propositions.So how do you find a capable trademark law expert? Here’s what I’ve come up with. First, check out trademark cases in which expert testimony has been offered. Find cases like yours. If neither the opposing side nor the court has blasted holes in the expert’s methodology, there’s a good chance they know what they’re doing. Second, ask around. The INTA list serve and other trademark law practitioners would be a ...
More About: Witness , Case , Expert , Trademark

KCBA Members to Discuss Amendments to Right of Publicity Statute
2008-04-24 05:54:00
Still wondering about the new amendments to Washington’s right of publicity statute? You don’t have to be alone. On May 1, the King County Bar Association’s Intellectual Property Section will host a brown-bag lunch program on “Emerging Issues in Right of Publicity Law.” Panelists Bob Cumbow, Mel Simburg, David Green, and I will throw in our two cents and hopefully get a good discussion going. (For background, see STL posts on the amended statute here and here.) Here’s the teaser the IP Section sent out: “Washington and California have recently amended their right of publicity laws in reaction to important rulings last year involving the publicity rights of Jimi Hendrix and Marilyn Monroe. New York has considered and expressly rejected similar legislation, leaving that state (the domicile of both Hendrix and Monroe at the times of their deaths) as one that does not recognize descendible rights of publicity. Where does this leav...
More About: Right of Publicity , Members

Seattle-Based McSweet Faces McDonald's in TTAB Opposition Proceeding
2008-04-22 05:45:00
On Friday, the Puget Sound Business Journal ran a story about a Trademark Trial and Appeal Board case involving Maple Valley, Wash.-based McSweet LLC. McSweet, which has sold MCSWEET-branded pickled cocktail onions for almost 20 years, decided to apply to register its mark with the Patent and Trademark Office. That’s when McDonald’s Corp. stepped in to oppose. McDonald’s alleges that MCSWEET infringes and dilutes its family of famous MCDONALD’S trademarks, including MC, MCCAFE, MCPIZZA, MCRIB, MCMUFFIN, MCFLURRY, and others. McSweet denies the allegations.The article says McDonald’s offered to consent to allow McSweet to continue to use MCSWEET if McSweet dropped its application to register the mark. McSweet reportedly refused.The article quotes me as saying: “If you have a famous trademark like McDonald’s, it casts a long shadow that others have to avoid with their trademarks....
More About: Seattle , Faces

Two More Regional Trademark Law Blogs Worth Checking Out
2008-04-21 01:32:00
I think it’s a great model. Pick a geographic region, and try to cover it well. In recent weeks I’ve come across two regional trademark law blogs that embrace this approach. Both are well worth checking out.First is the Maryland Intellectual Property Law Blog. Sure, it’s not only about trademarks, but publisher Brian Higgins offers plenty of interest for those who practice in our area. I particularly like his statistical analysis of new trademark filings — both in federal court and with the Patent and Trademark Office (with sweet bar graphs — I’ve got to figure out how to do that). Good Maryland case summaries too. No wonder this blog has become so popular.The other is the Los Angeles Intellectual Property Trademark Attorney Blog, published by Milord Keshishian. This blog helps practitioners stay on top of active trademark happenings in southern California. (Indeed, according to the Maryland Intellectual Property Law ...
More About: Regional , Blogs , Worth

Unscrupulous Companies Target Unsuspecting Trademark Owners
2008-04-17 05:19:00
This morning, a client forwarded me an email it received from a company ostensibly doing business in China. The email read as follows:RE: Intellectual property rightsDear CEO,We are the domain name registration organization in Asia, which mainly deal with international company’s in Asia. We have something important we need to confirm with your company. On the April 14, 2008, we received an application formally. One company named [Fake Company] wanted to register following Domain names:clientstrademark.asiaclientstradema rk.cnclientstrademark.com.cnclientstradem ark.com.hkclientstrademark.com.twclientst rademark.hkclientstrademark.twInternet Trademark : clientstrademarkthrough our body.After our initial examination, we found that the keywords and domain names applied for registration are the same as your company’s name and trademark. These days we are dealing with it. If you do not know this company, we doubt that they have aims other than to buy thes...
More About: Companies , Spam , Target , Owners

Ninth Circuit Finds Counterfeiting Constitutes Crime of Moral Turpitude
2008-04-16 04:48:00
Senegal citizen Elimane Tall got involved in counterfeiting. In 2003, he pled guilty to one count of “counterfeit of a registered mark” in violation of California Penal Code § 350(a)(2), which imposes criminal penalties on any person who “willfully manufactures, intentionally sells, or knowingly possesses for sale any counterfeit of a mark registered with the Secretary of State or registered on the Principal Register of the United States Patent and Trademark Office…” In 2004, Mr. Tall pleaded guilty to nine new counts of “counterfeit of a registered mark” and one count of “counterfeit of a registered mark with a prior,” which landed him in prison. After serving his time, the U.S. Department of Homeland Security sought to have him deported under the Immigration and Nationality Act as an alien convicted of a crime of “moral turpitude.” The immigration judge adopted the government’s position that “fraud ...
More About: Crime , Counterfeiting , Circuit , Moral

Five-Year Delay May Cut Off Trademark Infringement Damages, But Not Claim
2008-04-14 06:18:00
In Sonoma Foods, Inc. v. Sonoma Cheese Factory, LLC, plaintiff cheese maker sued defendant cheese maker in the Northern District of California. At issue was Sonoma Cheese Factory’s use of Sonoma Foods’ registered trademarks, SONOMA CHEESE FACTORY and DESIGN and SONOMA JACK (the “Bull Trademark s”), allegedly constituting infringement and a false description or passing off. According to Sonoma Cheese Factory, before December 31, 2001, Sonoma Foods owned and operated the Sonoma Cheese Factory retail store. On that date, the corporation was restructured; Sonoma Cheese Factory, LLC, was formed; and Sonoma Foods transferred the retail store to the new entity. When Sonoma Cheese Factory acquired the store, it continued to use the same signs and packaging that Sonoma Foods had used. It is that use about which Sonoma Foods complains.      Two Photos Sonoma Cheese Factory submitted in support of its motion for part...
More About: Infringement , Civil Procedure , Damages , Year

Peso's Sues Matador in Rare Seattle Restaurant Trade Dress Case
2008-04-11 06:54:00
The owner of Peso’s Kitchen and Lounge (top) has sued the owner of The Matador restaurant for trade dress infringement, including themetal work shown above, allegedly made by the same designer.Last year, El Diablo, Inc. filed suit for trade dress infringement in King County Superior Court against Mel-Opp & Griff LLC and other defendants alleging confusing similarity between the look-and-feel of the parties’ competing Mexican/Tex-Mex restaurants and bars. El Diablo owns Peso’s Kitchen and Lounge in lower Queen Anne. Mel-Opp & Griff owns The Matador, located in Ballard, West Seattle , Redmond, Tacoma, and Portland, Oregon.El Diablo claims that its former employees and independent contractors jumped ship and opened The Matador, copying what it considers to be its distinctive trade dress, which it describes in part as follows: “ornamentation, designs, and decorative elements in sconces, lighting, chandeliers, wa...
More About: Restaurant , Dress , Trade , Case

Washington Mimics California's Response to Marilyn Monroe Publicity Decisio
2008-04-09 06:17:00
Speaking of rights of publicity (see April 6 post here), the New York Times yesterday ran a piece on Marilyn Monroe ’s right of publicity, or lack thereof. Similar to the Western District’s and Ninth Circuit’s decisions involving the Estate of Jimi Hendrix, the Central District of California found Ms. Monroe either was a resident of New York or California at the time she died. (In Mr. Hendrix’s case, the Western District and Ninth Circuit found he was a resident of New York.) Either way, the court found, Ms. Monroe’s right of publicity did not descend to her heirs because the statutes in those states did not recognize that rights of publicity survived a person’s death.In response, the California legislature amended its statute to recognize the descendability of such a right. Sound familiar? This is similar to what the Washington  legislature did last month in response to ...
More About: Publicity , Right of Publicity

Yacht Maker Sues Competitor Over ALEUTIAN Trademark
2008-04-08 06:30:00
On April 2, Seattle-based Grand Banks Yachts Pte. Ltd. filed a trademark infringement suit in the Western District against Tacoma-based Aleutian Yachts, LLC. At issue is the parties’ use of ALEUTIAN in connection with their competing yacht building businesses. The complaint alleges that Aleutian’s use of its ALEUTIAN mark is “likely to lead consumers to mistakenly conclude that the yachts marketed and sold by defendants were exclusively or jointly built by, licensed or certified by, or otherwise sponsored or approved by Grand Banks, or that [Aleutian’s] products or websites are somehow affiliated, connected, or associated with Grand Banks.” Grand Banks also alleges that Aleutian wrongly registered the aleutianyachts.com domain name. Aleutian has not yet filed its answer. The case cite is Grand Banks Yachts Pte. Ltd. v. Aleutian Yachts, LLC, No. 08-513 (W.D. Wash.).
More About: Maker , Trademark

Amended Right of Publicity Statute Could Have Remarkable Impact on Litigati
2008-04-07 06:59:00
As stated in my previous post, last month our legislature amended Washington’s right of publicity statute, RCW 63.60.010, et seq. Effective June 12, 2008, the amendment clarifies that the right of publicity in Washington continues after a person’s death, regardless of where the person died, and regardless of whether the jurisdiction where the person died recognized such a right at the time of their death. Assuming personal jurisdiction is satisfied, it also seems to give any person anywhere (whether the person is living or dead, or ever set foot in Washington) a cause of action in Washington for violating his or her right of publicity. The amendment, Substitute House Bill 2727, passed the House 94-0 and the Senate 46-0. It was signed by Governor Christine Gregoire on March 19. The amended RCW 63.60.010 provides: Every individual or personality ((, as the case may be)) has a property right in the use of his or her name, voice, signature, photograp...
More About: Publicity , Right of Publicity

No, Right of Publicity Statutes Prevent You from Using Britney's Face
2008-04-04 05:13:00
In the wake of American Apparel’s billboards featuring Woody Allen, and Mr. Allen’s lawsuit in response thereto, Mainstreet.com asks, “Can You Use Britney’s Face To Promote Your Bake Sale?” The short answer is no, not without her permission. The piece cites me as saying statutory and common law rights of publicity tend to protect celebrities and ordinary folks alike from the “un-consented use of someone?s name, voice, signature, and likeness and, it doesn?t only protect celebrities.” ?Celebrities usually deal with these issues the most because their images are everywhere but the law protects all people.? The reporter asked an interesting question that didn’t make it into print: how can celebrities protect themselves from having their right of publicity violated? I thought that was a darn good question. Here’s my response: the celebrity should (1) establish a strong licensing program that he or she ...
More About: Publicity , Right of Publicity

30 Years of Seattle Mariners Trademarks
2008-04-02 06:05:00
As I write this, the Seattle Mariners are 1-0 in the 2008 season. At this rate, they’ll not only make the playoffs for the first time in seven years — they’ll win the World Series with an undefeated record. Ah, the optimism a new season brings. In recognition of this special time, I thought it would be fun to look at my ball team’s registered trademarks over the years. Turns out they have had 18 total applications and registrations, with eight currently listed as “live.” Only three real logos of note, which roughly divide my years as a kid, teenager, and lawyer. Let’s hope the current one brings them luck this year.
More About: Seattle Mariners , Years , Trademarks

Ninth Circuit Finds Endorsement No Reason to Dismiss Advertising Injury Cas
2008-04-01 06:11:00
Ex-members of The Doors and surviving relatives of Jim Morrision sued Ray Manzarek, a founding member of The Doors, and Doors Touring, Inc., in two lawsuits, alleging that Mr. Manzarek and his new band were liable for infringing THE DOORS name, trademark, and logo in conjunction with their planned national and international tours. Mr. Manzarek’s defense fees and costs in those suits exceeded $3 million.St. Paul Fire & Marine Insurance Co. insured Mr. Manzarek under a commercial general liability policy and Mr. Manzarek, DTI, and another band member under a second CGL policy. Mr. Manzarek and the other insureds claimed they were entitled to coverage under the policies’ “advertising injury” provisions.Mr. Manzarek and DTI sued St. Paul in California state court after St. Paul refused to defend or indemnify them based on a “Field of Entertainment Endorsement” (FELE) that excepted from coverage advertising injury...
More About: Advertising , Injury , Reason , Circuit

Hazelden Band Name Dispute Pits Drug Treatment Center Against Indie Rockers
2008-03-31 07:21:00
This month, Los Angeles-based indie rock band Hazelden received a cease-and-desist letter from the Minnesota-based drug and alcohol treatment center of the same name. The Hazelden Foundation claims the band has infringed and diluted its HAZELDEN family of registered trademarks.The Hazelden Foundation particularly objects to the “derogatory drug-related, stage named singer, Mary Jane Snow.” Its cease-and-desist letter states:“We demand that you immediately cease and desist all use and reference to the registered mark HAZELDEN together with any other derivative names (i.e., Hazeldon, etc.) and acknowledge your willingness to do so within seven days of receipt of this letter.“Alternatively, should you not cease your infringement of Hazelden Foundation’s mark and acknowledge your willingness to do so, we will bring a Federal District Court action against you under the Federal Lanham Act for trademark and service mark infringement, diluti...
More About: Band , Treatment , Indie , Center , Drug

Derek Andrew Settles TWISTED HEART Suit with Chrome Hearts
2008-03-27 04:26:00
In November 2007, Bellevue-based clothier Derek Andrew , Inc., filed suit against California-based jeweler and clothier Chrome Heart s, Inc. Derek Andrew sought a declaratory judgment from the Western District that its TWISTED HEART line of clothing does not infringe Chrome Hearts ’ CHROME HEARTS registered fleur de lis design marks, among other claims.Today, the parties officially made nice. Derek Andrew filed a Notice of Dismissal stating that “this matter has settled and that this action and all claims herein may be dismissed without prejudice and without costs to either party.”The case cite is Derek Andrew, Inc. v. Chrome Hearts, Inc., No. 07-1830 (W.D. Wash. 2008). 
More About: Suit

Derek Andrew Settles TWISTED HEART Trademark Suit with Chrome Hearts
2008-03-27 04:26:00
In November 2007, Bellevue-based clothier Derek Andrew , Inc., filed suit against California-based jeweler and clothier Chrome Heart s, Inc. Derek Andrew sought a declaratory judgment from the Western District that its TWISTED HEART line of clothing does not infringe Chrome Hearts ’ CHROME HEARTS registered fleur de lis design marks, among other claims.Today, the parties officially made nice. Derek Andrew filed a Notice of Dismissal stating that “this matter has settled and that this action and all claims herein may be dismissed without prejudice and without costs to either party.”The case cite is Derek Andrew, Inc. v. Chrome Hearts, Inc., No. 07-1830 (W.D. Wash. 2008). 
More About: Trademark

New Interpretation Speeds Resolution of Trademark Disputes in China
2008-03-26 02:32:00
Effective March 1, the judicial committee of the Supreme People’s Court of the People’s Republic of China adopted a new judicial interpretation speeding the time for courts to resolve trademark disputes and giving the owners of famous trade names and trademarks the ability to sue those who register the same or similar names or marks.Beijing-based Wisdom IP Services recently translated the New Judicial Interpretation on Civil Disputes Over Registered Trademark s, Company Names and Conflicts of Prior Rights as follows: “Objective: To correctly try cases of civil disputes over Registered Trademarks, Company Names and Conflicts of Certain Prior Rights, by taking judicial practices into account, New Judicial Interpretation are formulated in accordance with the Civil Procedure Act of PRC, the General Principles of the Civil Law of PRC, the Trademark Law of PRC, the Anti-unfair Competition Law of PRC and other relevant laws.“Article 1. For a ...
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Western District Finds Lanham Act Claim Deficient But Allows it to be Amend
2008-03-24 02:28:00
In the Western District case of Teragren, LLC v. Smith & Fong Co., the parties are competing bamboo floor paneling processors. Smith & Fong responded to Teragren’s complaint for patent infringement by asserting six counterclaims, including that Teragren was liable for making false statements that amounted to unfair competition prohibited by the Lanham Act.Teragren moved to dismiss Smith & Fong’s counterclaims, including its unfair competition claim. In particular, Teragren argued: “Defendant never asserts that Teragren’s descriptions or representations were made in promotions or advertising or that Teragren’s alleged ‘statements’ cause confusion, mistake, or deceive as to the affiliation, connection, association, origin, sponsorship, or approval of goods, services, or commercial activities. As such, defendant’s allegations never even suggest likelihood of confusion by the public, which is required to assert a clai...

Western District: Read the Local Rules, then Seek a Settlement Judge
2008-03-20 04:24:00
The parties in Carey Licensing, Inc. v. Sandler have had a little trouble trying to book a Western District magistrate judge for a settlement conference in their trademark infringement and cybersquatting case. But as the Western District reminded them this week, magistrate judges don’t participate in settlement conferences — only parties do. The court’s minute order serves as a good reminder as to the difference between settlement conferences, mediations, and judicial settlement conferences. And, of course, to follow the local rules:“The court has been notified that counsel for both parties in this action have attempted to contact one or more magistrate judges to schedule a settlement conference. In doing so, the parties have ignored the court’s previously issued scheduling orders, and have ignored the court’s local rules.“The court’s most recent scheduling order requires the parties to complete a ‘Settle...
More About: Judge , Read , Local , Rules