National Products, Inc. v. Arkon Resources, Inc.

Filing 88

ORDER Denying 76 Motion for Reconsideration, by Judge Robert S. Lasnik. (KERR)

1
2
3
4
5

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

6
7
8
9
10
11
12
13

_________________________________
)
)
)
Plaintiff,
)
v.
)
)
ARKON RESOURCES, INC.,
)
)
Defendant.
)
_________________________________ )
NATIONAL PRODUCTS, INC.,

No. C15-1553RSL
ORDER DENYING MOTION FOR
RECONSIDERATION

14

This matter comes before the Court on “National Products Inc.’s Motion for
15

Reconsideration.” Dkt. # 76. The Court dismissed National Products’ claim for damages prior to
16

the initiation of this lawsuit on the grounds that (a) it had failed to display with the mark an ® or
17

a variant of the words “Registered in U.S. Patent and Trademark Office” and (b) there is no
18

admissible evidence that defendant Arkon Resources, Inc., was aware that plaintiff had a
19

registered mark before it was served with the complaint in this matter. National Products points
20

to marketing materials in the record from the spring of 2015 showing stylized drawings of its
21

product with an ® next to the drawings (Dkt. # 58-5 at 4; Dkt. # 63-1 at 5) or next to the
22

accompanying words “Hourglass Shape” (Dkt. # 63-1 at 2 and 5)1 and concludes that the Court

23

must have overlooked this evidence. To the contrary, the Court specifically noted that there was
24
25
26

1

The phrase variously appears in the March 2015 website screen shots as “Hourglass Shape,”
“Hourglass Shape,” and “hourglass shape.”
ORDER DENYING MOTION FOR
RECONSIDERATION

1

evidence in the record suggesting that plaintiff had identified the hourglass shape as a registered

2

trademark in marketing materials as early as November 2014. Dkt. # 74 at 6. Nevertheless, the

3

Court found that the evidence is legally insufficient to forestall judgment in defendant’s favor.

4

Section 29 of the Lanham Act, 15 U.S.C. § 1111, provides:

5

[A] registrant of a mark registered in the Patent and Trademark Office[] may give
notice that his mark is registered by displaying with the mark the words
“Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”
or the letter R enclosed with a circle, thus ®; and in any suit for infringement
under this chapter by such a registrant failing to give notice of registration, no
profits and no damages shall be recovered under the provisions of this chapter
unless the defendant had actual notice of the registration.

6
7
8
9
10

Although there is surprisingly little case law regarding permissible forms of notice under the

11

Lanham Act, the trademark notice provision is similar to that found in patent law. 3 McCarthy

12

on Trademarks and Unfair Competition § 19:144 (4th ed.). “The marking statute serves three

13

related purposes: 1) helping to avoid innocent infringement; 2) encouraging patentees to give

14

notice to the public that the article is patented; and 3) aiding the public to identify whether an

15

article is patented.” Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (Fed. Cir. 1998).

16

Given these purposes, National Products’ argument that it gave adequate notice by belatedly

17

including an ® in a subset of its marketing materials and on a subset of the product

18

representations within those materials is unpersuasive. Arkon began selling its version of the

19

mounting device as soon as National Products’ patent expired in December 2013. Despite having

20

registered its trademark in December 2012, National Products provided no notice of the

21

registration until long after Arkon entered the market. Even then, National Products opted not to

22

mark its products, its packaging materials, or many of the representations of its product in its

23

marketing materials. The May 2015 catalogue on which National Products relies for its notice

24

argument, for example, contains three pictures or drawings of the double socket arm with the

25

hourglass design, only one of which is marked with an ®. Dkt. # 58-5.

26
ORDER DENYING MOTION FOR
RECONSIDERATION

-2-

1

The purposes of the notice requirement were thwarted in this case. Arkon made an effort

2

to investigate potential patent issues before copying National Products’ design. Had plaintiff

3

properly marked its mark following registration, Arkon would have been on notice that a

4

trademark issue also had to be resolved. Where a registrant fails to mark its products

5

immediately following registration, damages are recoverable only from the time of full

6

compliance with the marking statute so as to ensure that the public has notice before being

7

subjected to a damage award. Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1535-37

8

(Fed. Cir. 1993). See Nike, 138 F.3d at 1445 (noting “historical expressions of congressional

9

concern” that innocent infringers not be held liable). “Full compliance” with the marking

10

provision is not achieved until the registrant “consistently marked substantially all of its

11

[trademarked] products, and [is] no longer distributing unmarked products.” Am. Med. Sys., 6

12

F.3d at 1538. Falling short of that mark continues “to mislead the public into thinking that the

13

product was freely available” and precludes recovery of damages from innocent infringers.

14

The record in this case, considered as a whole and in the light most favorable to National

15

Products, cannot support a finding in plaintiff’s favor regarding full compliance with the

16

marking statute. When National Products finally got around to publicly announcing that it had

17

registered its mark – in November 2014 at the earliest -- it did so in an inconsistent and wholly

18

insufficient manner. Certain images of the product in certain marketing materials were marked

19

with an ®, but the products themselves, their packaging, and a significant percentage of the

20

marketing images bore no indication that the mark was registered. National Products has the

21

burden of proving compliance by a preponderance of the evidence. Nike, 138 F.3d at 1446. It

22

has not raised a genuine issue of material fact regarding either the consistency or substantiality

23

of its markings or Arkon’s actual knowledge of the registration prior to the initiation of this

24

lawsuit.

25
26
ORDER DENYING MOTION FOR
RECONSIDERATION

-3-

1

For all of the foregoing reasons, National Products’ motion for reconsideration (Dkt.

2

# 76) is DENIED. Plaintiff’s claim for profits and damages prior to service of the complaint was

3

properly DISMISSED.

4
5

Dated this 7th day of February, 2017.
6
7

A
Robert S. Lasnik

8

United States District Judge

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
ORDER DENYING MOTION FOR
RECONSIDERATION

-4-