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Clinic Agrees to Injunction Prohibiting Its Keyword Purchase of Competitor'
2007-09-05 05:40:00
On August 31, Western District Judge Thomas Zilly entered a stipulated injunction in favor of plastic surgery clinic Hypatia Aesthetic & Laser Treatment Clinic, PLLC, against competing plastic surgery clinic Sam Naficy, MD, PS. The injunction concludes Hypatia’s dispute with Sam Naficy over the latter’s purchase of HYPATIA as a keyword in users’ Google searches.Hypatia’s complaint reads like a Google testimonial. It alleged that Hypatia markets its “minimally invasive and non-invasive cosmetic medical therapies primarily on the Internet.” In the 1.5 months preceding Hypatia’s filing of its complaint in September 2006, Hypatia alleged the Sam Naficy clinic “purchased from www.google.com, the right to have a sponsored link to its website at the top or the top right side of the search results page when anyone performs a Google search for the term ‘hypatia.’” Sam Naficy’s ad al...
More About: Insurance , Keyword , Keywords , Purchase , Petit

STL Back to Work Tuesday Evening
2007-09-04 06:44:00
Not that blogging is work, but I’ve taken the long weekend off in honor of Labor Day.Victoria’s beautiful Empress Hotel and Inner HarbourNow that I’m back from beautiful Victoria, BC, I plan to return to my usual blogging self (such as that is) Tuesday evening. Thanks for visiting and please come back soon!
More About: Work , Back , Evening

Washington Lawyers for the Arts to Host Discussion on Counterfeit Fashion
2007-08-31 04:39:00
Seattle-based Washington Lawyers for the Arts offers a trademark-centric program next month entitled, “Counterfeit Chic: Legal Protection in the Fashion & Design Industry.” Its Web site describes the program as follows: “A growing demand for fashion design knock-offs is fueling the counterfeit market and costing the fashion industry millions of dollars a year. While imitation may be the ultimate form of compliment, it is also financially devastating to a small or independent designer. Yet, legal protection in the fashion and design industry is fraught with difficulties. Washington Lawyers for the Arts presents a panel discussion on the ins and outs of legal protection in the fashion industry and how best to arm yourself against counterfeits.”The brown-bag seminar will be held from 11:45 a.m. to 2 p.m. on Sept. 27 at K2 Sports, 4201 Sixth Avenue South in Seattle. Cost is $35 ($40 at the door) for attorneys and paralegals and $10 ($...
More About: Counterfeiting

Ninth Circuit Finds Sale of Paintings Protected by First Amendment
2007-08-30 06:12:00
In a published decision, the Ninth Circuit  today found that the sale of a painter’s original works are protected by the First Amendment . In White v. City of Sparks, painter Steven White challenged the constitutionality of a Nevada city ordinance that ostensibly required him to obtain a permit before selling his paintings in public parks. The Ninth Circuit sided with the artist, finding: “So long as it is an artist’s self-expression, a painting will be protected under the First Amendment , because it expresses the artist’s perspective.” The court rejected the city’s argument that the sale of the paintings removes them from the ambit of protected expression. In so finding, the Ninth Circuit joined the Second and Sixth Circuits, which have reached similar conclusions.This has significant trademark ramifications. In ETW Corp. v. Jireh Publishing, Inc., for example, the...
More About: Sale , Paintings

InsideCounsel Reports on Ninth Circuit's Perfect 10 Decision on Secondary L
2007-08-29 06:09:00
The September issue of InsideCounsel magazine reports on the Ninth Circuit’s July 3 decision in Perfect 10, Inc. v. Visa Int’l Svc. Ass’n, which found that credit card companies were not contributorily or vicariously liable for trademark or copyright infringement. The plaintiff, a porn site operator, had argued that the defendant banks and credit card companies should be liable for making infringement profitable by processing credit card payments to infringers’ sites. STL’s original post on the case here.Julius Melnitzer’s article, “Porn Site Loses High Stakes,” quotes yours truly as characterizing the ruling as a “pro-commerce, pro-Internet decision that could have slowed down commerce significantly if it had gone the other way.”Writing in dissent, Judge Alex Kozinski argued that credit card companies that allow infringers to become profitable should be just as liable ...
More About: Infringement , Decision , Perfect 10 , Deco

Applying TDRA Standard, Court Upholds Jury's Finding of Dilution
2007-08-28 06:19:00
On August 20, the Central District of California upheld a jury’s finding that a plaintiff had proven its dilution claim by showing a mere likelihood of dilution. It may have been the first jury trial to consider a dilution claim under the lower standard of proof established by the Trademark Dilution Revision Act, which replaced the “actual dilution” standard required by the predecessor statute, the Federal Trademark Dilution Act.In the case, plaintiff Eldorado Stone, LLC, and defendants Renaissance Stone, Inc., Alfonso Alvarez, and Rob Hager sold competing architectural veneer stone products. Plaintiff sold its products under the trademarks RUSTIC LEDGE and CLIFFSTONE, which it alleged were famous and diluted by defendants’ products sold under the trademarks CLIFFLEDGE and RUSTIC STONE.In March, the jury found for the plaintiff. Defendants moved for judgment as a matter of law on the ground that plaintiff had not presented any evidence of ...
More About: Standard , Court , Stand , Holds

Court Refuses Summary Judgment Dismissal of Mother's Trade Dress Claims
2007-08-26 01:56:00
After sanctioning Mother, LLC, twice for discovery violations, the Western District found in its favor on August 24, denying L.L. Bean, Inc.’s motion for summary judgment dismissal of Mother’s Lanham Act and state law claims, namely, that L.L. Bean’s manufacture, marketing and sale of a hunting vest infringes the trade dress of Mother’s competing hunting vest. (STL’s posts on the sanction orders here and here.)       ;  Trade dress infringement?Mother Daypack (with belt extended) and Bean Upland Vestpack The court characterized the undisputed facts as follows: “The parties met in December 2004 to discuss the possibility of Bean selling the Mother Daypack, an upland hunting pack designed and sold by Mother. Bean began selling the Mother Daypack through its website and catalogue in July 2005. The Bean catalogue containing a one-page display of the Mother Daypack, was distributed to an es...
More About: Dress , Judgment , Claims , Court

The Red Cross Dispute; Nautica vs. Nautica Thorn; "New" Seattle Law Blogs
2007-08-23 06:38:00
Time once again for the STL grab bag!On Aug. 20, the Seattle Post-Intelligencer ran Ann Woolner’s syndicated column on Johnson & Johnson’s infringement dispute with the American Red Cross over ARC’s rights to the red cross. Ms. Woolner sided with Johnson & Johnson, concluding if the company “wants to keep what it claims as its 100-year old right to use the mark commercially, it had to either negotiate a compromise or sue. The Red Cross left it with only that one option.”On Aug. 19, law blogger Marc Randazza wrote a long post about Nautica Apparel Inc.’s TTAB proceeding opposing adult entertainer Shauna Tokumi’s application to register her screen name NAUTICA THORN as a trademark. He was ok with the notice of opposition until Nautica alleged that registration should be refused on the ground that the mark is scandalous or immoral: “Oh, see, now they went and made me mad,” he wrot...
More About: Blogs , Dispute

It's Final: Leo Stoller's Trademark Assets Sold in Bankruptcy Court
2007-08-21 07:17:00
The Society for the Prevention of Trademark Abuse, LLC, completed its purchase of the trademark assets of Leo Stoller’s bankruptcy estate, the Society announced today. (Press release here; background on bankruptcy sale here.) Marks involved in the purchase include STEALTH, SENTRA, TRILLIUM, DARK STAR, TERMINATOR and others, including all registrations and applications owned by Central Mfg. Co. The Society stated its plan is “to convey the marks others may want/need to clear the way for their applications to proceed, [and] wind up all pending proceedings in a manner consistent with the known and trustworthy evidence.” In other words, to restore business as usual — at least to the state that existed before Mr. Stoller opened for business. Well done!
More About: Infringement , Bankruptcy , Final , Court

Starbucks Trademark Win in 2005 Cleared Way for Its First Store to Open in
2007-08-20 00:56:00
The Seattle Times reports today: “Starbucks plans to open its first store in Russia next month in the Mega Mall north of Moscow, a spokeswoman said. The company’s business partner in Russia, Kuwait-based M.H. Alshaya, said earlier this year that it planned to open Starbucks shops in Moscow and St. Petersburg in August and have 10 stores in Russia by the end of the year. “The company’s entry into Russia was delayed for years by a trademark dispute that was resolved last year.”Here’s some background on the dispute. According to Russian news sources (stories here and here), Starbucks initially registered STARBUCKS as a trademark in 1997 when it began making plans to enter the Russian market. In 2002, however, a company called Press appealed to Rospatent, the Russian trademark office, for rights to the mark on the ground that Starbucks had not used it in the country for more than three years. Rospatent granted its request. Press then&nb...
More About: Open , Store , Infringement , Trademark

Canadian Court Denies Costco's Motion to Enjoin Use of PRICECO WAREHOUSE
2007-08-18 19:16:00
On August 14, the Supreme Court of British Columbia denied Issaquah, Wash.-based Price Costco International’s motion to enjoin Surrey, B.C.-based Welcome Warehouse Ltd.’s planned use of PRICECO WAREHOUSE as a trademark in connection with warehouse-style retail stores. Though the court found Costco had made a strong showing of likelihood of confusion, it found the request was premature in light of the parties’ ongoing proceedings before Canada’s Registrar of Trade Marks.In January 2005, Welcome Warehouse applied to register PRICECO WAREHOUSE. Price Costco, which owns Canadian registrations for PRICE CLUB, PRICE COSTCO, and PRICE COSTCO and Design, opposed the application. In August 2005, the Registrar issued an Approval Notice for the application, signifying it had initially decided that PRICECO WAREHOUSE was registrable.In December 2005, Welcome Warehouse instituted separate proceedings before the Registrar to expu...
More About: Infringement , Motion

Coffee Politics Blog Analyzes What Common Law Rights Mean to Ethiopia
2007-08-17 05:02:00
The Seattle-based Coffee Politics blog continues to analyze the deal Ethiopia and Starbucks struck in June over the marketing and licensing of Ethiopia’s specialty coffee designations. In particular, it explores the meaning of common law trademark rights and the effect of the parties’ decision to define their rights in terms of “designations” rather than “trademarks.” The o fficials who negotiated the deal for Ethiopia told the blog last month that the term “designation” offered the country broader rights than “trademark” because it encompassed common law marks. (STL’s recent discussion of the issue here.)Based on that statement, Coffee Politics polled some intellectual property attorneys for an explanation. Here’s the consensus as to what it found those rights mean in practice:“In the United States, trademark rights arise through use. Meaning...
More About: Rights , Blog

Utah's Key Word Statute Remains Controversial
2007-08-16 04:26:00
The August issue of InsideCounsel discusses Utah 217;s Trademark Protection Act, which prohibits the use of trademarks in key word advertising that another party has registered in the state as an Electronic Registration Mark. The Act, which was controversial from its inception in March (see STL posts here and here), remains controversial today.The main problem appears to be that a state is trying to regulate what inherently is interstate commerce. Since search engines do not stop at state lines, Utah’s statute could suddenly make Google and other search engine providers liable for a new form of trademark infringement. Law blogger and professor Eric Goldman explains in the article that “The Utah law requires perfect geo-location technology, and no one has such technology.” For this reason, the statute could slow interstate commerce, which leads Prof. Goldman to conclude that it violate...
More About: Word , Infringement , Controversial , Rover , Mains

Topline Obtains Injunction Enjoining Use of REPORT COLLECTION for Clothing
2007-08-15 05:45:00
On August 3, the Western District granted Wash.-based shoe makers Topline Corp.’s and Report Footwear, Inc.’s motion for preliminary injunction against women’s 4273371 Canada, Inc., and Modextil, Inc., enjoining defendants’ use of REPORT COLLECTION as a trademark in connection with the advertising and sale of women’s clothing. In doing so, the court found plaintiffs were likely to succeed on the merits of their infringement claim against defendants based on Topline’s registered REPORT trademarks for footwear.The case is not terribly remarkable for any particular trademark issue but the 21-page decision, filed August 13, is noteworthy for its detailed analysis of the Ninth Circuit’s test for likelihood of confusion under AMF, Inc. v. Sleekcraft Boats, 599, F.2d 341 (9th Cir. 1979), and for its discussion of the standard for granting preliminary injunctions. Judge Thomas Zilly, who decided the motion, also re...
More About: Clothing , Infringement , Coll , Junction

"Best of the Olympic Peninsula" Guide Runs Afoul of U.S. Olympic Committee
2007-08-13 02:36:00
The Seattle Times today reports on a local author’s struggle with the U.S. Olympic Committee — all because he wrote a guidebook on Washington’s Olympic Peninsula . As the Times points out, “‘Olympic’ is attached to a seemingly endless stream of goods and services around here — not to mention Mount Olympus, the Olympic National Park, Olympic National Forest, and the state capitol, Olympia.” For that reason, part-time park ranger Jason Bausher didn’t think there would be a problem when he published a guidebook to his favorite places on the Olympic Peninsula. His booklet is titled “Best of the Olympic Peninsula.”Jason Baushern, near the Old Olympic Highway, holds his guide to which the USOC objects. Photo credit: Andrei Pungovschi/APThe USOC nonetheless took issue with his book. It learned about Mr. Bausher and his guide when he applied to register BEST OF THE OLYMPIC PENINSULA with the Patent and Trademark Office. I...
More About: Infringement , Guide

PTO to Trademark Owners: Register Your Marks Overseas for Protection Overse
2007-08-12 20:23:00
On Friday, I attended some of the “Anti-Counterfeiting & Piracy 2007” program co-sponsored by the U.S. Patent and Trademark Office and U.S. Chamber of Commerce. (STL preview of the event here.) The program took place in Bellevue as part of the groups’ national road show on the issue.Washington’s attorney general Rob McKenna added some local flavor. He characterized Washington as the nation’s most trade-dependent state and said a number of local companies have been damaged by counterfeiting. He went on to describe a recent meeting he had with other state attorneys general that emphasized that counterfeiting goes beyond pirated music CDs and software. The Seattle Post-Intelligencer quoted him as saying: “When the chamber representative passed around the table counterfeit automobile brake pads and counterfeit medical supplies and talked about the Federal Aviation Administration’s estimate that so...
More About: Register , Marks , Adema

Western District Strikes Claim for Lost Profits as Discovery Sanction
2007-08-09 05:18:00
On Aug. 7, the Western District sanctioned the plaintiff in Mother, LLC v. L.L. Bean, Inc., for failing to comply with an order compelling discovery. In this trade dress infringement and false designation of origin case arising out of the parties’ competing hunting vests, the court had ordered Mother to produce “all electronically stored information regarding its finances (including sales, financial statement data, and data relating to its claimed damages)” by April 16. The court also had authorized L.L. Bean to continue the deposition of Mother’s president, Martin Grabijas, until after Mother produced such information. (STL previously discussed this order here.)Mother responded by producing four pages of documents on May 17. In June, two weeks before the continued deposition, L.L. Bean’s attorney informed Mother’s attorney that the four pages Mother had produced did not appear to constitute full compliance with ...
More About: Lost , Discovery , Profits , Civil Procedure

Microsoft, Amazon.com and Starbucks Rank as Top 100 Global Brands
2007-08-08 05:11:00
It’s that time of year again…. Time for the Interbrand rankings of the Best Global Brands, which BusinessWeek published yesterday. (BusinessWeek article here; Interbrand analysis here.) Three Seattle companies cracked the top 100: Microsoft , Amazon .com, and Starbucks . Each maintained its position from last year or climbed a bit higher on the list. Microsoft ranked second, same as last year; Amazon.com rose three spots to 65, and Starbucks likewise advanced three spots to 88.Here’s what the the BusinessWeek story says about Seattle’s big brands: Microsoft (2007 brand value listed at $58,709,000,000): “The launch of its Windows Vista operating system, coupled with its Xbox game console, keeps the software giant’s latest technology in front of consumers.”)Amazon.com (2007 brand value listed at $5,411,000,000): “Finally viewed by consumers as the superstore it always tried to be, Amazon is adding cool, participatory Web serv...
More About: Rank

Ninth Circuit Finds HOT RIGZ May Dilute HOT WHEELS Under Actual Dilution Te
2007-08-07 05:56:00
On Aug. 2, the Ninth Circuit handed down a new dilution decision, albeit under the old standard. In Jada Toys, Inc. v. Mattel, Inc., Jada sued Mattel for trademark infringement, false designation of origin, and unfair competition on the theory that Mattel’s OLD SCHOOL and NEW SCHOOL lines of miniature vehicles infringed Jada’s registered trademark OLD SKOOL for toy trucks. Mattel counterclaimed on several grounds, including that Jada’s HOT RIGZ mark infringed and diluted Mattel’s HOT WHEELS mark. The Central District of California granted summary judgment for Mattel on Jada’s OLD SCHOOL and NEW SCHOOL claims, and granted summary judgment for Jada on Mattel’s counterclaims. Mattel appealed the dismissal of its counterclaims. The court’s treatment of Mattel’s dilution claim is discussed below.As a threshold matter, the Ninth Circuit applied the “actual dilution” standard set forth in the Federal Trademark Dilution Act rather ...
More About: Wheels , Under , Heels

Western District Limits Expert Damages Testimony in Unfair Competition Case
2007-08-05 19:56:00
On Aug. 1, the Western District granted in part and denied in part defendants’ motion to limit plaintiff’s damages expert testimony in Baden Sports, Inc. v. Molten. The case turns on Molten’s sale of “dual-cushion technology” basketballs, which Baden claims infringes its patent and constitutes unfair competition. STL previously wrote about the case here. The 43(B)log wrote about the case here. Molten moved in limine to limit Baden’s expert testimony under Rule 37(c), which prevents a party from offering at trial evidence it failed to disclose in an expert report as required by Rule 26(a)(2)(B) or in a supplemental disclosure under Rule 26(e)(1). Trial is scheduled to begin tomorrow.With regard to expert Scott Hamilton, Judge Marsha Pechman found that preclusion of certain testimony was proper. Mr. Hamilton’s report stated that Baden had asked him to assess damages from Molten’s alleged ...
More About: Competition , Limits , Case , Testimony

Georgia Court Finds Disguised Bottle Safes Violate PepsiCo's Trademarks
2007-08-02 06:58:00
Burglars take note: in the future, those bottles marked “PEPSI” in the fridge of the house you’re robbing probably contain nothing more than a carbonated drink. No secret stash there.That’s because on July 20, the Northern District of Georgia found that defendant Sahni Enterprises, Inc., and its affiliates, makers of bottle and can safes, infringed and diluted plaintiff PepsiCo, Inc.’s PEPSI, DIET PEPSI, MOUNTAIN DEW, SIERRA MIST and AQUAFINA trademarks. The court made the same finding with respect to defendants’ food canister safes bearing plaintiff’s CHEETOS, DORITOS and FRITOS marks. After the parties stipulated to a preliminary injunction, the court permanently enjoined defendants from manufacturing and selling safes bearing PepsiCo’s marks.The court explained: “The Infringing Safes marketed by Sahni are manufactured by converting genuine PepsiCo bottles, cans and ca...
More About: Dilution , Infringement , Bottle , Marks

Ethiopian Officials Talk About Coffee Designation Pact with Starbucks
2007-08-01 06:57:00
The Seattle-based Coffee Politics blog has an interesting interview with Ethiopian officials about the June settlement of Ethiopia’s dispute with Starbucks Corp. over the marketing and licensing of three of Ethiopia’s specialty coffee designations. The blog interviewed Samuel Assefa, Ethiopia’s ambassador to the United States, and Getachew Mengistie, director of Ethiopia’s Intellectual Property Office, who negotiated the deal with Howard Schultz and Dub Hay from Starbucks. Background on the pact from The Seattle Times is available here.   Of particular interest to trademark practitioners is why Ethiopia pushed for terms in the parties’ agreement that defined Ethiopia’s rights in terms of its coffee “designations” rather than its “trademarks.” Here’s an excerpt from the interview: “Coffee Politics: The joint press release between you and Starbucks states that...
More About: Talk , Official , Buck

Payless Shoesource Sued Again for Infringement Over Athletic Shoe Logo
2007-07-31 06:03:00
On July 27, athletic shoe maker Diadora S.p.A. and its Kent, Wash.-based subsidiary, Diadora America, Inc., filed suit in the Western District against Payless Shoe source, Inc., for trademark infringement, dilution, and unfair competition over Payless’ competing shoe logo. It is only five weeks since Payless settled a case with Brooks Sports, Inc., involving similar allegations. (STL’s coverage of that suit here and here.)Diadora’s complaint alleges that in the last sixty days, Payless began manufacturing, promoting, offering for sale, and selling a new line of shoe called the CHAMPION® Idol Athletic that is substantially identical to Diadora’s shoe logo.Diadora’s logo (top) and Payless’ allegedly infringing logoThe complaint states: “Diadora’s advertising and promotional activities involving its products bearing the Diadora Logo have been continuous and have been for the purpose of acquainting the public with th...
More About: Infringement , Payless Shoes , Sued

PTO Road Show Visits Seattle with Anticounterfeiting Seminar
2007-07-30 03:27:00
On Aug. 10, the U.S. Patent and Trademark Office will travel to Seattle to present a program titled “Anti-Counterfeiting & Piracy 2007.” Scheduled speakers include Washington State Attorney General Rob McKenna, Microsoft Corp., Lisa Chissus from Flex-a-lite Consolidated, John Koeppen from the PTO, and Brad Huther from the U.S. Chamber of Commerce.The program brochure states: “At this important event you’ll learn what federal and state government resources are available to protect your brand, how you can work with law enforcement to safeguard your intellectual property, how to protect your supply chain here and abroad, and what the U.S. Chamber is doing to defend American business as a whole.”The program runs from 10 a.m. to 3 p.m. at the Westin Bellevue and includes a free lunch. Interested persons can register here. I plan to be there, so please say hello if you decide to attend. The PTO and co-sponsor U.S. Chamber of Commerce will make simila...
More About: Show , Seminar , Road

STL Welcomes New Seattle Trademark and Branding Blog "Beauty Marks"
2007-07-27 03:00:00
The Trademark Blog  today put me on to a new Seattle -based trademark and branding blog called “Beauty Marks.” (Geez, scooped in my own back yard!)  It’s published by Jessica Levy of the Law Office of Jessica Stone Levy, PLLC, who until recently based her trademark prosecution practice at Preston Gates & Ellis/K&L Gates.Ms. Levy describes her blog as “miscellaneous thoughts about trademarks and branding.” Her inaugural posts discuss how she met her husband (a trademark litigator, no less), using the TM designation, and the basics of trademark law from the perspective of a cosmetics shopper. She expects to “Comment on what I like, what I don’t, what’s trendy and what’s stodgy, what makes sense from a trademark perspective and what makes my hair stand on end.”Sounds like a lot of fun. Welcome to the club!
More About: Branding

First U.S. Registrant Offers to Sell MUGGLES Trademark for $1 Million
2007-07-26 03:25:00
I came across an interesting piece — the Ventura County Star reported on July 22 that California native Jim Salzer owns the first U.S. trademark registration for MUGGLES, which he had planned to use in connection with a nightclub to be called “Cafe Muggles.” The nightclub never got off the ground, but Mr. Salzer liked the sound of it so he held onto his registration, which he obtained in 1981. The word “muggles,” of course, entered the popular lexicon as a word for for people without magical powers beginning in June 1997 when J.K. Rowling published her first “Harry Potter” book.Now, Mr. Salzer wants to sell his MUGGLES mark to Warner Bros., which owns the “Harry Potter” movie and merchandising juggernaut. His asking price? $1 million. Warner Bros. has refused to bite and now, the article says, Mr. Salzer is keeping a “watchful eye” on its ...
More About: Infringement , Offers , Sell , Million , Trademark

"Niche Market" Fame Lives on in Kansas Dilution Case
2007-07-25 08:00:00
More than nine months after the Trademark Dilution Revision Act (TDRA) became law, “niche market” fame under the Federal Trademark Dilution Act (FTDA) lives on — at least in one court. In Hodgdon Powder Co., Inc. v. Alliant TechSystems, Inc., the plaintiff sought damages and injunctive relief stemming from the defendant’s use of CLAY DOT for gunpowder, which plaintiff alleged diluted the fame of its CLAYS mark for gunpowder. Both sides moved for summary judgment. On July 20, the District of Kansas sided with the defendant on plaintiff’s dilution claim. All of this is unremarkable except for the court’s analysis of the dilution claim under the Federal Trademark Dilution Act — the statute the Trademark Dilution Revision Act replaced last October. In a footnote, the court stated: “The parties agree that the Trademark Dilution Revision Act does not apply to plaintiff’s ...
More About: Market , Case , Lives

Microsoft Gets Default Judgment in New Jersey Counterfeiting Case
2007-07-24 03:47:00
On July 13, Microsoft Corp. obtained a default judgment and permanent injunction in the District of New Jersey against Julio Gonzales for distributing infringing Microsoft software through his company, JFG TEK Computers. Microsoft obtained the monetary damages it asked for: $844,742.85 in “statutory” damages, attorney’s fees, and costs, though the order does not say whether the damages stem from violations of the Copyright Act, the Lanham Act, or both. Mr. Gonzales is now permanently enjoined from, among other things, “imitating, copying or making any other infringing use or infringing distribution of software programs, components, end user license agreements, certificates of authenticity, or items protected by Microsoft’s registered trademarks and service mark….”Microsoft’s complaint reveals its m.o. was the same as in its other default judgment cases (such as those discussed here and here): it suspe...
More About: Infringement , Counterfeiting , Case

Seattle Columnist Reports on ISSAQUAH COMMUNITY BANK Suit
2007-07-23 00:30:00
On July 19, Seattle Post-Intelligencer business columnist Bill Virgin wrote about the Western District lawsuit Cascade Financial brought against Issaquah Community Bank over the defendants’ use of the ISSAQUAH COMMUNITY BANK name and mark. STL discussed the filing here.He did a nice job framing the dispute: “If you start a bank in Issaquah, can you name it after the town you operate in?“Issaquah Community Bank, which opened for business this week, thinks it can.“Cascade Financial Corp., which bought a bank in Issaquah three years ago, says the new bank can’t, because it still holds the name.”Mr. Virgin quotes Issaquah Community Bank’s president, defendant Robert Ittes, as saying: Cascade’s attempt to hold the name hostage is entirely unwarranted. Whatever rights they may have had were abandoned three years ago. More importantly, our name is a clear and honest reflection of the community we serve. It’s hard to see this as any...
More About: Infringement , Aqua

Prof. McCarthy Calls 2nd Circuit's Bukhara Decision an "Embarrassment"
2007-07-21 19:42:00
The July issue of InsideCounsel magazine reviews the Second Circuit’s March 28 decision on famous foreign trademarks in ITC Limited vs. Punchgini, Inc., __ F. 3d. __, 2007 WL 914742, No. 05-0933 (2nd Cir.). In that case, New Delhi’s Bukhara Restaurant claimed it should be able to enforce its internationally-famous mark despite its abandonment of the mark here. The defendants were owners of a Manhattan Indian restaurant who called their establishment the “Bukhara Grill” because there was “no restaurant Bukhara in New York, and we just thought we will take the name.” The Bukhara Grill also copied the Bukhara Restaurant’s “logos, decor, staff uniforms, wood-slab menus, and red-checkered customer bibs.” Departing from the Ninth Circuit’s decision validating the famous marks doctrine in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, (9th Cir. 2004), the Second Circuit found that conti...
More About: Calls , Infringement , Prof , Decision , Khar