A discussion of the Zipsleeve, LLC v. West Marine, Inc. decision and important considerations when drafting trademark pleadings in federal court and before the Trademark Trial and Appeal Board (TTAB). This Legal Update includes links to customizable forms with helpful drafting notes and practice tips.
A federal district court recently granted a defendant's motion to dismiss a claim alleging infringement of a federally registered trademark under 15 U.S.C. § 1114. (Zipsleeve, Inc. v. W. Marine, Inc., No. 3:14-cv-01754, (D. Or. May 19, 2015)). The problem with the plaintiff, ZipSleeve, LLC's allegations? ZipSleeve had allowed its federal trademark registration to lapse and therefore could not base its claim on that registration, even though some of the defendant West Marine, Inc.'s infringing behavior allegedly took place while the registration was still valid.
However, all was not lost for ZipSleeve, as it had also alleged claims against West Marine based on common law rights in its complaint. As a result, the case is still pending.
ZipSleeve v. West Marine illustrates why counsel should plead common law trademark rights and include a claim under 15 U.S.C. § 1125(a) when drafting pleadings in a trademark matter. While the available remedies under Sections 1114 and 1125(a) are generally the same, a Section 1125(a) claim for unfair competition and false designation of origin requires no federal registration. If the trademark owner's registration has lapsed like ZipSleeve's, or is cancelled or invalid for any reason, the trademark owner may still retain enforceable common law rights in its mark sufficient to maintain a Section 1125(a) claim.
Distinguishing between those claims that can only be raised within five years of the challenged mark's registration date and those that can be brought at any time.
How to draft pleadings to avoid exposure to burdensome discovery.
In addition to integrated drafting notes that highlight important issues specific to each form, Practical Law's Standard Documents can be downloaded and saved for easy editing and customization.