National Products, Inc. v. Arkon Resources, Inc.
Filing
88
ORDER Denying 76 Motion for Reconsideration, by Judge Robert S. Lasnik. (KERR)
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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE
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_________________________________
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Plaintiff,
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v.
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ARKON RESOURCES, INC.,
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Defendant.
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_________________________________ )
NATIONAL PRODUCTS, INC.,
No. C15-1553RSL
ORDER DENYING MOTION FOR
RECONSIDERATION
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This matter comes before the Court on “National Products Inc.’s Motion for
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Reconsideration.” Dkt. # 76. The Court dismissed National Products’ claim for damages prior to
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the initiation of this lawsuit on the grounds that (a) it had failed to display with the mark an ® or
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a variant of the words “Registered in U.S. Patent and Trademark Office” and (b) there is no
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admissible evidence that defendant Arkon Resources, Inc., was aware that plaintiff had a
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registered mark before it was served with the complaint in this matter. National Products points
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to marketing materials in the record from the spring of 2015 showing stylized drawings of its
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product with an ® next to the drawings (Dkt. # 58-5 at 4; Dkt. # 63-1 at 5) or next to the
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accompanying words “Hourglass Shape” (Dkt. # 63-1 at 2 and 5)1 and concludes that the Court
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must have overlooked this evidence. To the contrary, the Court specifically noted that there was
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The phrase variously appears in the March 2015 website screen shots as “Hourglass Shape,”
“Hourglass Shape,” and “hourglass shape.”
ORDER DENYING MOTION FOR
RECONSIDERATION
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evidence in the record suggesting that plaintiff had identified the hourglass shape as a registered
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trademark in marketing materials as early as November 2014. Dkt. # 74 at 6. Nevertheless, the
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Court found that the evidence is legally insufficient to forestall judgment in defendant’s favor.
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Section 29 of the Lanham Act, 15 U.S.C. § 1111, provides:
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[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.
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Although there is surprisingly little case law regarding permissible forms of notice under the
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Lanham Act, the trademark notice provision is similar to that found in patent law. 3 McCarthy
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on Trademarks and Unfair Competition § 19:144 (4th ed.). “The marking statute serves three
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related purposes: 1) helping to avoid innocent infringement; 2) encouraging patentees to give
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notice to the public that the article is patented; and 3) aiding the public to identify whether an
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article is patented.” Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443 (Fed. Cir. 1998).
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Given these purposes, National Products’ argument that it gave adequate notice by belatedly
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including an ® in a subset of its marketing materials and on a subset of the product
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representations within those materials is unpersuasive. Arkon began selling its version of the
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mounting device as soon as National Products’ patent expired in December 2013. Despite having
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registered its trademark in December 2012, National Products provided no notice of the
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registration until long after Arkon entered the market. Even then, National Products opted not to
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mark its products, its packaging materials, or many of the representations of its product in its
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marketing materials. The May 2015 catalogue on which National Products relies for its notice
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argument, for example, contains three pictures or drawings of the double socket arm with the
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hourglass design, only one of which is marked with an ®. Dkt. # 58-5.
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ORDER DENYING MOTION FOR
RECONSIDERATION
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The purposes of the notice requirement were thwarted in this case. Arkon made an effort
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to investigate potential patent issues before copying National Products’ design. Had plaintiff
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properly marked its mark following registration, Arkon would have been on notice that a
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trademark issue also had to be resolved. Where a registrant fails to mark its products
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immediately following registration, damages are recoverable only from the time of full
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compliance with the marking statute so as to ensure that the public has notice before being
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subjected to a damage award. Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1535-37
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(Fed. Cir. 1993). See Nike, 138 F.3d at 1445 (noting “historical expressions of congressional
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concern” that innocent infringers not be held liable). “Full compliance” with the marking
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provision is not achieved until the registrant “consistently marked substantially all of its
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[trademarked] products, and [is] no longer distributing unmarked products.” Am. Med. Sys., 6
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F.3d at 1538. Falling short of that mark continues “to mislead the public into thinking that the
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product was freely available” and precludes recovery of damages from innocent infringers.
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The record in this case, considered as a whole and in the light most favorable to National
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Products, cannot support a finding in plaintiff’s favor regarding full compliance with the
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marking statute. When National Products finally got around to publicly announcing that it had
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registered its mark – in November 2014 at the earliest -- it did so in an inconsistent and wholly
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insufficient manner. Certain images of the product in certain marketing materials were marked
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with an ®, but the products themselves, their packaging, and a significant percentage of the
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marketing images bore no indication that the mark was registered. National Products has the
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burden of proving compliance by a preponderance of the evidence. Nike, 138 F.3d at 1446. It
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has not raised a genuine issue of material fact regarding either the consistency or substantiality
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of its markings or Arkon’s actual knowledge of the registration prior to the initiation of this
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lawsuit.
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ORDER DENYING MOTION FOR
RECONSIDERATION
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For all of the foregoing reasons, National Products’ motion for reconsideration (Dkt.
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# 76) is DENIED. Plaintiff’s claim for profits and damages prior to service of the complaint was
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properly DISMISSED.
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Dated this 7th day of February, 2017.
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A
Robert S. Lasnik
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United States District Judge
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ORDER DENYING MOTION FOR
RECONSIDERATION
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