Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – Trademark attorneys for Chanel, Inc. filed a trademark infringement lawsuit in Federal District Court in Los Angeles alleging sales of counterfeit handbags and purses and asks the Court to stop the infringement. Chanel has used its Chanel and CC Monogram trademarks for many years on accessories, including handbags, purses, and wallets. Chanel owns numerous Chanel related trademarks and has federally registered them with the USPTO. Chanel’s brand/trademarks “are symbols of Chanel’s quality, reputation, and goodwill and have never been abandoned.”

The complaint alleges that defendants are selling lower quality imitations of Chanel’s handbags and wallets, which bear counterfeit Chanel trademarks. The complaint asserts that the Defendants are offering the counterfeit goods on their websites: www.gqbags.com and www.ultimatehandbags.com. The websites offer handbags for sale that are substantially less expensive than authentic Chanel products. “The net effect of the Defendants’ actions will be to result in the confusion of consumers who will believe the Defendants’ Counterfeit Goods are genuine goods originating from and approved by Chanel.” Chanel believes that the defendants are engaging in the sale of counterfeit goods intentionally and willfully. The complaint alleges causes of action for trademark infringement and counterfeiting under section 32 of the Lanham Act, 15 U.S.C. § 114, and false designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled: Chanel, Inc. v. Kimberli Hunter, et al., CV08-02226 GHK (C.D. Cal. 2008).

Glendale patent attorneys for Datasec filed a patent infringement lawsuit in Federal District Court in Los Angeles, against DirecTV and Dish Network for allegedly infringing on one or more claims of U.S. Patent No. 6,075,969 (“the ‘969 Patent”). The USPTO issued the ‘969 Patent on June 13, 2000, and is titled “Method for Receiving Signals from a Constellation of Satellites in Close Geosynchronous Orbit.” The patent generally relates to a design for a receiving antenna with nulls in orbital locations where potentially interfering satellites would be located, whereby the small antenna avoids any interference. The complaint alleges that defendants DirecTV and Dish have “infringed the ‘969 patent by practicing the methods claimed in the ‘969 patent in this judicial district and elsewhere in the United States. On information and belief, this infringement will continue unless enjoined by this court.” In addition to the preliminary and permanent injunctions under 35 U.S.C. § 283, the complaint seeks monetary damages and attorneys’ fees.

The case is titled Datasec Corporation v. DirecTV Corporation, et al., CV 08-02345 CAS (C.D. Cal. 2008).

Los Angeles, CA – Copyright attorneys for Illume Candles, Inc. filed a copyright declaratory relief of no infringement lawsuit, under 28 U.S.C. § 2201, in Federal District Court in Los Angeles, seeking declaratory judgment of non-infringement on Angela Adams Licensing, LLC’s copyrighted work. On March 31, 2008, Angela Adams' attorneys sent a letter to Illume accusing copyright infringement of two copyrighted works registered with the U.S. Copyright Office. The accused infringing products are three of Illume’s candle packaging that have a link and chain graphic design. Illume denied that its packaging infringes on Angela Adams’ copyrighted works because it was independently developed and “the accused works lacked the requisite degree of similarity to the registered works to establish a claim of copyright infringement." Angela Adams was dissatisfied with Illume’s response and enclosed a recent court decision that was favorable to Adams, which led Illume to believe that Adams would enforce its copyrights against Illume. As such, an actual controversy existed between the parties and Illume seeks a declaratory judgment of non-infringement of the copyrights.

The case is titled Starlume, Inc. v. Angela Adams Licensing, LLC, et al., CV 08-02489 PA (C.D. Cal. 2008)

Los Angeles, CA – Trademark attorneys for Creative Artists Agency (“CAA”) filed a trademark infringement lawsuit in Federal District Court in Los Angeles against a media/marketing company. CAA is a well known talent agency and has used the registered CAA trademarks for over thirty years. CAA also uses the www.caa.com and www.sports.caa.com as domain names. The trademark, “the logo and the domain names are all used in connection with talent agency services, literary agency services, sponsorship services, marketing and communication services and sports agency services.”

CAA alleges that the defendants commenced business as CAA-Media in 2003 and “began using the website www.caa-media.com in connection with media buying and media consulting, which is closely related to the services offered by CAA. CAA also continues that defendants “use the designation ‘CAA’ in stylized red lettering, which is nearly identical to CAA’s distinctive mark.” CAA discovered defendant’s use of the allegedly infringing trademark when a CAA employee was informed by a friend that they were hired by defendants CAA-Media. CAA sent a cease and desist letter to defendants which also requested the transfer of the defendants’ CAA domain names. The complaint alleges that instead of ceasing the infringing use, the defendants filed a trademark application with the USPTO for the CAA trademark. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) Federal trade name infringement and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution, 15 U.S.C. § 1125(c); (4) Cyberpiracy under 15 U.S.C. § 1125(d); (5) California common law unfair competition; (6) Unfair competition under Cal. Bus. & Prof. Code § 17200; (7) Injunctive relief; and, (8) Declaratory relief. The case is titled Creative Artists Agency, LLC v. Chessen & Associates, Inc. et al., CV08-02309 SVW (C.D. Cal. 2008).

The Trademark Trial And Appeal Board (“TTAB”) issued a ruling in In re Right-On Co., Ltd., affirming the examining attorney’s refusal to register Right-On’s three trademark applications, covering stitching on the back pockets of jeans, because they were a form of ornamentation and were not inherently distinctive to function as trademarks. Click HERE To Read The Opinion.

Right-On filed applications to register as trademarks on the Principal Register the pocket-stitching designs shown to the right for various apparel and garment goods. The focus of the appeal to the TTAB was restricted to jeans only. All three applications were based on a request for extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a) or, in other words, extension to the United States was sought from an international registration. The Examining Attorney refused registration of the pocket-stitching designs because they are “decorative or [] ornamental feature[s] of the goods that are not inherently distinctive and thus would not be perceived as [] mark[s] by the purchasing public without further evidence of acquired distinctiveness.” The applicant, surprisingly, “elected not to attempt a claim of acquired distinctiveness under section 2(f)” but instead appealed the final refusal to the TTAB.

The TTAB judges were not persuaded by the applicant’s argument that other stitching-designs on jeans have been held inherently distinctive and registerable, noting that each case must be decided on its own set of facts. Applicant’s arguments and citations to other allowed trademarks “provides little insight other than to indicate that pocket stitching designs have sometimes been found to be inherently distinctive and sometimes found not to be inherently distinctive.”

In considering the facts of the instant applications and the designs, the TTAB judges ruled that “Applicant’s argument that its designs are not common is not supported by the record. There are a multitude of variations of arches, checks, swoops, waves and other linear designs registered or in use on jeans pockets. They are in no way ‘elaborate and unique.’” The TTAB, however, did indicate that the applicant may have been able to register it’s stitching trademark based upon acquired distinctiveness, which it chose not to do.

PRACTICE NOTE: If you intend to use pocket-stitching on jeans as a trademark, it is highly unlikely that adopting geometric shapes and lines will qualify as an inherently distinctive trademark. Thus, it is better to use elaborate and unique designs that are inherently distinctive and entitled to immediate registration, which designs may also be protectable through copyright registration. I previously posted here about a jean pocket-stitching design which was both copyrighted and a registered trademark.

Los Angeles, CA – Godzilla knocked over buildings and stomped its way to the Federal District Court in Los Angeles to file suit against Subway because it’s furious over the use of its image in Subway restaurant commercials, which sandwiches it apparently doesn’t enjoy or endorse. Maybe Megalon, Godzilla’s nemesis, is interested in the gig? Toho Co., the owner of the Godzilla franchise, sued Doctor’s Associates, Inc., the owner of the Subway sandwich empire, for trademark infringement and copyright infringement for use of the Godzilla character in its “Five Dollar Footlong” sandwich commercials. “The commercial at issue, which was created for Subway by advertising agency McCarthy Mambro Bertino, LLC in support of Subway’s ‘Five Dollar Footlong’ sandwich promotion, features Godzilla attacking a Japanese city and then endorsing the sandwich by spreading his hands a foot apart.” The advertising agency is also sued as a defendant.

“At no time did Defendants seek or obtain Toho’s permission or consent to use or feature the Godzilla Character or any substantially or confusingly similar character in the Commercial.” Apparently, when Toho learned of the commercial, it demanded the defendants cease airing the commercial. “Rather, defendants have continued airing the Commercial on popular television programs, including the NCAA Basketball Tournament semi-final and Championship games” and American Idol. The Complaint estimates that the defendants have spent at least $20 million in TV-air-time alone. Toho alleges that Subway has made millions of dollars as a result of the unauthorized commercial use of the Godzilla character and seeks the disgorgement of Subway’s profits and its costs and attorneys’ fees.

WATCH THE COMMERCIAL:

The complaint asserts the following causes of action: (1) Unfair competition and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) Federal anti-dilution law violation, 15 U.S.C. § 1125(c); (3) State anti-dilution law, California Business & Professions Code § 14330; (4) Common law unfair competition; (5) Unjust enrichment; and, (6) copyright infringement. The case is titled Toho Co., Ltd., v. Doctor’s Associates, Inc., d/b/a Subway, et al., CV08-02511 GPS (C.D. Cal. 2008).

San Francisco, CA – Trademark attorneys file trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit, on behalf of Levi Strauss & Co., in the Northern District of California, alleging infringement of Levis’ USPTO registered trademarks. Among Levis’ numerous registered trademarks is the famous Arcuate Stitching Design Trademark, which is a distinctive pocket stitching design and “is the oldest known apparel trademark in the United States.” The Arcuate Stitching Design Trademark was first used in interstate commerce in 1873 on clothing products. Levis also owns the Tab Device Trademark “which consists of a small marker of textile or other material sewn into one of the regular structural seams of the garment.” Levis first used the Tab Device Trademark in 1936 on the rear pocket of its pants when a sales manager suggested it to distinguish Levis’ clothing and jeans from those of competitors.

Levis alleges that defendant Jeans City manufactures, sources, markets and/or sells “jeans that diplay designs on the rear pockets that are confusingly similar to [Levis’] Arcuate and Tab trademarks.” The complaint alleges that “Jeans City’s actions have caused and will cause [Levis] irreparable harm for which money damages and other remedies are inadequate. Unless Jeans City is restrained by this Court, Jeans City will continue and/or expand the illegal activities alleged in this Complaint and otherwise continue to cause great and irreparable damage and injury to Levis.” Levis claims that it will be harmed by not being able to use and control use of its trademarks, a likelihood of confusion, mistake and deception created in the minds of consumers, false association between Levis and Jeans City, and loss of goodwill. The complaint alleges the following causes of action: (1) Trademark infringement under 15 U.S.C. § 1114; (2) Federal unfair competition, false designation of origin, and false description under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution under the Lanham Act section 43(c), 15 U.S.C. § 1125(c); (4) California dilution and trademark infringement under Cal. Bus. & Prof. Code §§ 14320, 14330, 14335, 14340; and, (5) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Levis Strauss & Co. v. Jeans City USA, Inc., CV08-01639 WHA (N.D. California).

Irvine, CA – Patent attorneys file patent infringement lawsuit in Los Angeles Federal District Court (Santa Ana Division) to protect Uniloc USA and Singapore’s patent titled “System For Software Registration.” “Uniloc researches, develops, manufactures and sells technology security solutions, including solutions for securing software and other forms of media such as DVD and audio files.” The U.S. Patent & Trademark Office issued U.S. Patent No. 5,490,216 to Uniloc Singapore. “The ‘216 Patent is generally directed to novel systems and methods for securely registering software and other digital media to prevent software piracy.”

The complaint alleges that defendant “Macrovision, without license or permission from Uniloc, makes, uses, offers to sell and/or sells software security products and services that infringe one or more claims of the ‘216 Patent. These products and services include, but are not limited to, certain versions of InstallShield and InstallShield Activation Service.” Uniloc alleges that it placed Macrovision on Notice of the ‘216 Patent by correspondence commencing in June of 2004. The case is titled Uniloc USA, Inc., v. Macrovision Corporation, SACV08-00203 DOC (Central District of California).

Los Angeles, CA – Franchising law attorneys sue an Orange County Sizzler franchisee, in Los Angeles Federal District Court, for allegedly breaching the franchising agreement and for trademark infringement. Franchisor, Sizzler USA Franchise, Inc. has registered numerous trademarks with the USPTO which it licenses to franchisees under a franchising agreement. Under the franchising agreement, the franchisee is to pay the franchisor a royalty and advertising fees. The franchisee is also required to comply with quality standards in food and cleanliness. The complaint alleges that the Defendants have failed to pay any royalties or advertising fees since they acquired the franchised location in May of 2006. Also, the complaint continues, the Defendants were sent a notice of default stating that the location’s “level of cleanliness and quality in service and products failed to meet minimums set by Sizzler.”

The first cause of action is for trademark infringement of Sizzler’s USPTO registered trademarks because under the franchise/license agreement, the franchisee was granted a limited license to use the trademarks so long as the franchisee complied with the agreement: “The Defendant’s use of the [trademarks] post-termination constitutes service mark and trademark infringement within the meaning of 15 U.S.C. § 1114." The second cause of action is for breach of the license/franchise agreement for Defendants’ alleged refusal to pay royalties and advertising fees and for refusing to cease use of the trademarks post termination. The third cause of action is for breach of written guaranty against the individual that is the shareholder of the corporation. The case is titled Sizzler USA Franchise, Inc., v. Advanced Home Care Medical Supply, Inc., CV08-01856 PSG (Central District of California).

Los Angeles, CA – Garment industry copyright attorneys sought protection for United Fabrics’ copyrighted fabric/textile designs by filing a copyright infringement lawsuit in Los Angeles Federal District Court to prevent the copying of its copyrighted fabric/textile designs by others. Plaintiff alleges that two of its copyrighted designs are being copied. The first design was purchased from an Italian art studio and the multi-element floral design was converted for printing on textiles. After plaintiff applied for and received copyright registration for this first design with the U.S. Copyright Office, it provided samples of fabric to defendant Wraps. The complaint alleges that Wraps even ordered and received one shipment of fabric bearing the first design. But instead of purchasing additional fabric from United Fabrics, Wraps is alleged to have copied the fabric design through third parties and sold garments bearing the copyrighted design to numerous retailers.

Plaintiff also purchased source artwork from an Italian art studio and created a second design for printing on textiles. Once again plaintiff received a copyright registration from the U.S. Copyright Office and provided samples of the fabric to defendant Swat. Defendant Swat allegedly did not order any fabric from Plaintiff, but instead copied the design through third parties and manufactured and sold garments to various retailers. The complaint alleges a cause of action for copyright infringement for each of the copyrighted fabric designs. It also alleges a cause of action for vicarious and/or contributory copyright infringement. Finally, a breach of contract claim is alleged against Wraps and Swat because they agreed that they were receiving Plaintiffs copyrighted designs “with the express understanding and agreement that they were proprietary to Plaintiff, and if [either] wished to create product bearing said designs, it would have to do so through Plaintiff.” The case is titled United Fabrics International, Inc. v. J.C. Penney Corp., Inc. et al., CV08-01936 MMM (Central District Of California).

Glendale, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit to protect Nike, Inc.’s footwear and shoe related trademarks in Los Angeles Federal District Court. Nike has registered numerous trademarks with the USPTO for footwear and clothing. The complaint states that “Nike uses these trademarks on shoes and apparel as trademarks of Nike’s high quality products. Nike sells in excess of $4,500,000,000 a year in merchandise bearing distinctive trademarks.”

Nike alleges that the two defendants own and transact business on the www.airjordanstore.com and www.air-jordan-store.com websites. Upon determination that the products sold by the defendants were allegedly unlicensed and counterfeit products, Nike filed the lawsuit to “combat the willful sale of unlicensed and counterfeit products (“Infringing Product”), specifically including its core product of sports shoes, bearing Nike’s exclusive trademarks.” The complaint asserts the following causes of action: (1) Trademark infringement 15 U.S.C. § 1114 and 15 U.S.C. § 1125; (2) Unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Lanham Act dilution of famous trademark under 15 U.S.C. § 1125(c); (4) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (5) Dilution California law Cal. Bus. & Prof. Code § 14330. The case is titled Nike, Inc. v. Michael Masjuan, et al., CV08-01889 JFW (C.D. California).

Beverly Hills, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit against J&B Importers, Inc. to protect Mad Dogg Athletics’ exercise equipment trademark, in Los Angeles Federal District Court, alleging infringement of its USPTO registered trademarks. Mad Dogg Athletics registered its Spinning® trademark for use with “fitness education and traning program for use in connection with indoor cycling via stationary exercise bicycles. Mad Dogg Athletics also registered its Spintech® trademark for use on “stationary exercise bicycles and accessories related thereto, specifically, bicycle cleaning preparations and lubricants.”

The complaint alleges that J&B Importers has used Madd Dog Athletics’ Spintech® trademark on counterfeit bicycle lubricants. Plaintiff alleges that the activities of Defendant “constitute willful and intentional counterfeiting.” The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. §§ 1114; (2) Federal unfair competition and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (4) Constructive Trust Under Cal. Civ. Code § 2224. The case is titled Mad Dogg Athletics, Inc. v. J & B Importers, Inc., CV08-01717 SVW (Central District Of California).

Los Angeles, CA – Copyright attorney filed a copyright infringement lawsuit in Los Angeles Federal District Court to protect a song from allegedly being copied by musician, singer, actor and comedian Jamie Foxx. In 1999, Plaintiffs, Trace Augcomfar and Marvin Paige, obtained a copyright registration for a musical composition titled “Losing Me In You.” In December, 2005, Jamie Foxx provided the vocals on an album entitled “Unpreditable,” featuring the musical composition entitled “Do What It Do.” The complaint alleges that the “Do What It Do” composition is strikingly similar to the musical composition written by the Plaintiffs in 1999, and the chorus, or musical “hook”, is identical. Plaintiffs allege that Foxx gained access to Plaintiffs’ song through a mutual acquaintance, Conrad Hilton. Plaintiffs contend that Foxx’s infringement was knowing, willful and intentional. Plaintiffs are seeking compensatory damages of no less than $1 million, for an accounting of all gains, profits and advantages of Defendants, and attorneys fees and costs.

Irvine, CA – Trademark attorneys file trademark infringement, Lanham Act 43(a) unfair competition, and declaratory judgment lawsuit, on behalf of home/garden products manufacturer, in Los Angeles Federal District Court (Santa Ana Division), regarding the Feng Shui USPTO registered trademark. Plaintiff Innovage received a cease and desist letter from the Defendant Style Asia regarding its use of the Feng Shui trademark on its line of home/garden fountains. Style Asia has registered its Feng Shui trademark with the USPTO and threatened Innovage with a lawsuit if it did not cease using the same trademark.

Innovage did not wait for Style Asia to disturb its harmonious, Zen like use of its Feng Shui trademark and instituted a lawsuit against Style Asia. Innovate alleges that it, and not Style Asia, was first to use the Feng Shui trademark and despite Style Asia’s trademark registration, Innovage sued for trademark infringement and unfair competition under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)). The complaint alleges that Style Asia’s use of the Feng Shui trademark “is likely to cause confusion, mistake and deception of the public as to the identity and origin of its own and of Innovage’s goods, causing irreparable harm to Innovage.” The complaint also asserts a California common law unfair competition claim and alleges that Style Asia took advantage of Innovage’s goodwill in the trademark. Innovage also asks the Court to declare that it does not infringe on Style Asia’s trademark and requests the Court order cancellation of the registration at the USPTO. The case is titled Innovage LLC v. Style Asia, Inc., CV08-00310 JVS (Central District California).

UPDATE 6/17/08: The District Court ordered dismissal of Defendants' complaint for lack of subject matter jurisdiction, under Fed. R. Civ. Pro. 12(b)(1), because the U.S. Copyright Office had not issued a registration certification at the time the complaint was filed.

Los Angeles, CA – Copyright attorneys filed a jewelry copyright infringement lawsuit, in Los Angeles Federal District Court, on behalf of Sweet Romance Jewelry Mfg. for copying of protected jewelry designs. In 1997, Sweet Romance authored, as an employer for hire, a jewelry design entitled “Lady Caroline Lorgnette” (the “Work”). The Work was first sold in 1999 through the defendants’ competitors. On March 12, 2008 – only recently – Plaintiff submitted the Work to the U.S. Copyright Office for registration.

The complaint alleges that defendants, which are various entities related to the Home Shopping Network, began manufacturing and selling copies of the Work, which are virtually identical to Plaintiff’s work, except for the name given to the jewelry piece. The complaint alleges that the Defendants’ copies are cheap imitations manufactured in China and instead of the stones being made of Czech crystal, as represented on the Home Shopping Channel, the “stones” appear to be plastic or other inferior materials. (SIDE NOTE: If that is the case, it’s puzzling why the Plaintiff does not include a false advertising/unfair competition claim under the Lanham Act). The complaint continues that the defendants’ copy of the work is allegedly not sold in California because the high concentration of lead violates California’s strict environmental and safety regulations. Also, plaintiff alleges that Defendants had access to copies of the Work because they were involved in negotiations to market plaintiff’s work. The complaint seeks damages under 17 U.S.C. § 504. The case is titled: Cosmetic Ideas, Inc. v. IAC/Interactivecorp, CV08-02074 R (C.D. California).

PRACTICE NOTE: This case illustrates the need for early registration of copyrights in order to be entitled to statutory damages and attorneys’ fees. Because the plaintiff did not register its copyright within three months from publication or before the infringement commenced, 17 U.S.C. 412 prevents the plaintiff from recovering attorneys' fees or statutory damages under 17 U.S.C. 504 and 505.

A Redondo Beach, CA restaurant was sued for copyright infringement by copyright attorneys for several recording companies for publicly playing copyrighted music at the restaurant without a license from ASCAP, BMI, or SESAC. The complaint lists five songs which are copyrighted by their individual authors with the U.S. Copyright Office, and the rights are owned by the record companies. The complaint alleges that on one night, presumably when their investigator was at Paulie’s Upper Deck Sports Grill, the five copyrighted musical compositions were publicly performed “for the entertainment and amusement of the patrons attending said premises, and defendants threaten to continue such infringing performances.”

The complaint alleges that plaintiff warned the defendant that a copyright license was needed in order to publicly perform the copyrighted music at the restaurant. Because the defendant allegedly refused to pay for the license, the defendant’s copyright infringement was intentional and willful. Plaintiffs request statutory damages under 17 U.S.C. § 504(c)(1), of not more than $ 30,000.00 and not less than $ 750.00 for each copyrighted song. Plaintiffs also request that the court order the defendants to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: Far Out Music v. Fratelli Brothers, Inc., CV08-01975 GPS (C.D. California).

PRACTICE NOTE: 17 U.S.C. 504(c)(2) allows the statutory damages to be raised to $150,000.00 per infringement if it is deemed to be knowingly conducted. Also, if a restaurant or public establishment unreasonably believed that it was exempt from licensing requirements under 17 U.S.C. § 110(5), the copyright plaintiff, in addition to other damages under section 504, will be entitled to two times the license fee which it should have paid for the preceding period of up to 3 years. Because of the varying affiliations between record companies and the licensing society, a license from each of the following licensing societies must be obtained to cover the music owned by the various recording companies:
ASCAP: 1-800-505-4052
BMI: 1-800-925-8451
SESAC: 1-800-826-9996

Hollywood, CA – Trademark attorneys file trademark infringement, trademark dilution, and Lanham Act 43(a) unfair competition lawsuit, on behalf of Quiksilver, in Los Angeles Federal District Court, against Walmart, alleging infringement of Quiksilver’s USPTO registered trademarks. Quicksilver has filed a family of “Roxy” trademark applications and received registration certificates from the USPTO. Plaintiff also claims that it has spent substantial sums in advertising its products bearing the Roxy trademarks such that the trademarks have become famous in the minds of consumers. The complaint alleges that Quiksilver’s investigator surveyed Wal-Mart stores and discovered sweatshirts bearing counterfeit trademarks. Also, Plaintiff alleges that Wal-Mart is not authorized to sell products bearing the Roxy trademark. The case is titled Quiksilver, Inc. v. Wal-Mart Stores, Inc., CV08-01791 DSF (C.D. California).

Los Angeles, CA – Patent attorneys file patent infringement, trademark infringement and Lanham Act 43(a) unfair competition lawsuit in Los Angeles Federal District Court on behalf of Nobel Biocare USA, LLC, to protect dentistry patents and trademarks covering dental implant products. Nobel provides dentistry products, services, and training in the field of implant dentistry, including dental implants, abutments, individualized dental prosthetics, and surgical kits. Nobel is the assignee of U.S. Patent No. 5,795,160 and U.S. Patent No. D443,361. Nobel is also the owner of several USPTO registered trademarks which are used on its dental implant products and services.

The complaint alleges that defendant “Blue Sky first began using the Nobel, Nobel Biocare, Replace, Nobelreplace, and Nobelguide marks in connection with the sale and promotion of its [dental] goods in February of 200, long after [Plaintiff] Nobel had commenced its substantial use and promotion of its” Nobel trademarks and long after it had registered the trademarks with the USPTO. The complaint alleges infringement of the ‘160 patent and the '361 patent. It also alleges infringement of registered trademarks under 15 U.S.C. § 1114. False designation of origin is asserted under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and dilution of trademarks under 15 U.S.C. § 1125(c)(1). California causes of action are asserted for unfair competition under Cal. Bus. & Prof. Code § 17200 and common law trademark infringement. The case is titled Nobel Biocare USA, LLC v. Blue Sky Bio, LLC, CV08-01407 ODW (C.D. California).

PRACTICE NOTE: Nobel’s case provides an example of the use of various forms of intellectual property to provide a wide range of protection for its dental implant products. The design patents protect the aesthetic design of the product, utility patents protect the functional aspect of the product, and trademarks inform consumers about the source of the products.

Glendale, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit to protect Tycoon Jewelry, Inc.’s jewelry related trademarks in Los Angeles Federal District Court, alleging infringement of its USPTO registered trademarks for jewelry products. Tycoon Jewelry alleges that it has used the Tycoon and Tycoon ct trademarks, either alone or in combination with other words or symbols, with a wide range of products, including jewelry, for approximately twenty years.

The complaint alleges that Defendant Tycoon International, Inc. has used the infringing Tycoon mark both in its company name and for the sale of jewelry. The complaint asserts the following causes of action: (1) Trademark infringement 15 U.S.C. §§ 1114; (2) False designation of origin and trade dress infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (4) California common law unfair competition. The case is titled Tycoon Jewelry, Inc. v. Tycoon International, Inc., CV08-01982 CAS (C.D. California).

Riverside, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit, on behalf of Hansen Beverage Company, in Los Angeles Federal District Court, alleging infringement of its USPTO registered Monster energy drinks trademarks. Hansen launched Monster energy drinks in 2002 and, since then, has expanded to a variety of products which are marketed under the Monster family of trademarks. The Monster energy drink containers prominently display the Monster trademarks and trade dress. Hansen has spent millions of dollars in promoting the drinks under the Monster trademarks and has retail sales of over one billion dollars.

Defendants also sell an energy product under the trademark of Monster Energy Shot. Hansen alleges that “without permission or authority from Hansen, Defendants have infringed Hansen’s MONSTER Marks in interstate commerce in connection with Defendants’ making, using, promoting, advertising, selling, and/or offering to sell the MONSTER ENERGY SHOT drink.” The complaint also states that, by choosing a similar color scheme on their containers, “Defendants have infringed Hansen’s MONSTER trade dress in interstate commerce in connection with Defendants’ making, using, promoting, advertising, selling, and/or offering to sell its MONSTER ENERGY SHOT energy drink.” The complaint asserts the following causes of action: (1) Trademark infringement 15 U.S.C. §§ 1114; (2) Trademark dilution under the Lanham Act section 43(c), 15 U.S.C. § 1125(c); (3) False designation of origin and trade dress infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (4) California trademark dilution under Cal. Bus. & Prof. Code § 14330; (5) Unfair competition under Cal. Bus. & Prof. Code §§ 17200 and 17500; (6) Common law trademark infringement; (7) Common law trade dress infringement; and, (8) California common law unfair competiton. The case is titled Hansen Beverage Company v. N2G Distributing, Inc., et al., EDCV08-0357 VAP (C.D. California).

Los Angeles, CA –Lawyers file patent infringement lawsuit, on behalf of food processor Tuna Processors, Inc., in Los Angeles Federal District Court, alleging infringement of USPTO issued Patent No. 5,484,619. The patent is titled Method For Curing Fish And Meat By Extra-Low Temperature Smoking. The patent claims a method of smoking raw fish and meat to sterilize and prvent decomposition and discoloration without losing their freshness. The complaint alleges that Hilo Fish Company, Inc., located in Hawaii, “imports and/or sells, or induces or contributes to others importing and/or selling, tuna which has been treated by extra-low temperature smoking which infringes, induces infringement of, and/or contributes to the infringement of the ‘619 patent.” Specifically, the complaint alleges that Hilo Fish has labeled its products as produced under the ‘619 patent. In addition to preliminary and permanent injunctions, the suit seeks monetary damages. Also, it alleges that the infringement has been willful and asserts that this is an exceptional case, entitling the plaintiff to treble damages and attorneys’ fees. The case is titled Tuna Processors, Inc. v. Hilo Fish Company, Inc., CV08-01236 R (C.D. California).

Pasadena, CA – Trademark attorneys file trademark infringement, cybersquatting, and Lanham Act 43(a) unfair competition lawsuit, on behalf of Neiman Marcus, in Los Angeles Federal District Court, alleging infringement of Neiman Marcus’ USPTO registered trademarks. Since its initial retail business in 1907, “Neiman Marcus has grown into a nationwide chain of retail stores and a nationwide mail order catalog retail business. Neiman Marcus operates thirty-six stores located in premier retail locations in major markets nationwide.” Neiman Marcus' registered trademarks, through substantial use and marketing over the years, have become famous. Its trademark also serves as its website URL at www.neimanmarcus.com.

The defendant is alleged to have “registered and/or used over four million (4,000,000) domain names.” Plaintiffs allege that the defendant has used an automated process to register domain names that are confusingly similar to the Neiman Marcus registered trademarks. The domain names are numerous misspellings of the trademarks. The complaint alleges that the defendant’s “typo-squatting” tactics are also used to cybersquat on other famous trademarks. The defendant allegedly provides pop-up and pop-under advertisements to be displayed on the confusingly similar domain names and defendant makes income from the pay-per-click advertisements. The complaint alleges the following causes of action: (1) Cybersquatting under 15 U.S.C. § 1125(d); (2) Trademark infringement 15 U.S.C. §§ 1114; (3) Unfair competition and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (4) Trademark dilution under the Lanham Act section 43(c), 15 U.S.C. § 1125(c); (4) Trademark infringement under Cal. Bus. & Prof. Code § 14320; and, (5) Unfair competition under Cal. Bus. & Prof. Code §§ 17200 and 17500. The case is titled The Neiman Marcus Group, Inc. v. Ultra RPM, Inc., CV08-01723 MMM (C.D. California).

Los Angeles, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit, on behalf of Dell, in Los Angeles Federal District Court, alleging infringement of Dell’s USPTO registered trademarks against resellers. Dell has been selling personal computers since 1984 and has registered its Dell trademark and variations thereof in more than 180 countries worldwide, and has more than thirty United States federal trademark registrations containing the term Dell. Since its inception, Dell has primarily used a direct sales model to sell directly to consumers rather than through retail outlets, first through telephone and also the Internet. Dell, however, permits a limited number of authorized resellers, which have to abide by Dell’s reseller terms and conditions.

Dell alleges that the four individual defendants enrolled in Dell’s reseller program and became bound by the resale terms, where “defendants agreed (1) to refrain from unauthorized use of Dell’s trademarks; (2) not to resell Dell product without first adding value through the addition of hardware, software, or services; (3) not to resell Dell product on auction-type websites [such as eBay]; and (4) to resell their Dell product to small and medium businesses.” The complaint alleges that the defendants have used aliases to purchase Dell products and sold them through unauthorized trade channels and on eBay in violation of the reseller agreement and have made misrepresentations and misused Dell’s trademarks. For example, the defendants have allegedly sold products on eBay as “new” when they were, in fact, refurbished. The complaint asserts that “Defendants have, through their scheme of deliberate misrepresentation and concealment, purchased millions of dollars worth of Dell products from Dell and resold such product in breach of their contractual obligations to Dell and in violation of Dell’s trademark rights.” The complaint alleges the following causes of action: (1) Trademark counterfeiting and infringement 15 U.S.C. §§ 1114; (2) Unfair competition and false advertising under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Trademark dilution under the Lanham Act section 43, 15 U.S.C. § 1125(c); (4) Unfair competition and false advertising under Cal. Bus. & Prof. Code §§ 17200 and 17500; (5) Unjust enrichment; (6) Breach of contract; (7) Fraud; and, (8) Civil conspiracy. The case is titled Dell, Inc. v. Kizun, et al., CV08-01821 JSL (C.D. California)