2:23-cv-01399
W.D. Wash.Apr 8, 2025Background
- Safety Star LLC sells safety awareness bingo cards under registered trademarks including “B-SAFE” and “BSAFE BINGO.”
- Albert “Beau” Culbertson is the sole owner of Safety Star and originally held the relevant trademark registrations.
- Aptibyte LLC operates Bingo Baker, a website facilitating the creation and sale of bingo cards, some of which Safety Star alleges bear its registered marks.
- After an initial 2023 lawsuit was dismissed for lack of standing relating to assignment timing, Safety Star recorded trademark assignments to itself from Culbertson and filed this new suit.
- The crux of the dispute is whether Safety Star had standing to assert infringement claims at the time the suit commenced.
- The present ruling follows Aptibyte’s motions for judgment on the pleadings and for judicial notice regarding prior filings and USPTO records.
Issues
| Issue | Plaintiff’s Argument | Defendant’s Argument | Held |
|---|---|---|---|
| Standing to Sue | Safety Star owned marks via assignment before suit | Assignment was ineffective; no standing | Standing found based on timely written assignment |
| Commercial Use/Infringement | Aptibyte used marks in commerce via memberships | Denies commercial use and direct infringement | Sufficient pleading of commercial use and infringement |
| Contributory Infringement | Knowledge inferred from cease & desist, site info | No allegations of inducement or specific knowledge of user infringement | Insufficiently pled; dismissed with leave to amend |
| Judicial Notice | (Did not contest) | Seek notice of prior pleadings, USPTO records | Judicial notice granted as to records’ existence only |
Key Cases Cited
- Gaia Techs., Inc. v. Reconversion Techs., Inc., 93 F.3d 774 (Fed. Cir. 1996) (written assignment required for trademark standing; nunc pro tunc assignments not retroactive for standing)
- Hal Roach Studios, Inc. v. Richard Feiner & Co., Inc., 896 F.2d 1542 (9th Cir. 1989) (standard for Rule 12(c) motion mirrors Rule 12(b)(6))
- Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625 (9th Cir. 2005) (standard for likelihood of confusion in trademark infringement)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982) (contributory trademark infringement test)