Posted On: June 30, 2008

Patent Infringement Lawsuit Filed Over Gemstone Identification System In Los Angeles: Attorneys

Santa Ana, CA – A patent infringement lawsuit was filed by patent attorneys for Gem Certification & Assurance Lab (“GCAL”) at the Federal District Court in Santa Ana, accusing GemEx of infringing U.S. Patent No. 5,983,238 (“the ‘238 patent”). The ‘238 patent, entitled “Gemstone Identification Tracking and Recovery System,” was issued by the U.S. Patent & Trademark Office on November 9, 1999. The complaint alleges that GemEx uses a system for tracking gemstones that infringes one or more claims of the ‘238 patent.

patent-attorney-gemstone-litigation.jpgThe ‘238 patent generally relates to a central computer database that stores relevant information about a purchased gemstone, including the purchaser’s information, the quality of the gemstone – especially diamonds, and a unique identification number laser etched into the stone that can be used to identify a stolen or lost gemstone to aid with the recovery of the same. The database can then be accessed by third parties, such as the police or jewelry dealers, to determine if a particular diamond or gemstone has been reported as lost or stolen. The case is titled Gem Certification & Assurance Lab, Inc. v. GemEx Systems, Inc., SACV 08-700 JVS (C.D. Cal. 2008).

Posted On: June 27, 2008

Furniture Copyright Infringement Lawsuit Filed By Copyright Attorneys In Los Angeles Federal Court

Los Angeles, CA – Copyright attorneys for furniture company, C & C Imports, Inc., filed a copyright infringement lawsuit at the Federal District Court in Los Angeles, in an attempt to protect its bed, chest and wall hanging designs from being copied. Plaintiff manufactures and sells high-end furniture and in 1994 it manufactured a chest, headboard, and bed bearing the rainwater design. Plaintiff alleges that the rainwater design “is capable of being identified separately from and existing independently of, any useful article (such as a bed or chest) to which it may be applied. As the complaint states, however, the U.S. Copyright Office has disagreed with Plaintiff, and refused to register the copyright applications. The wall hanging application is still pending and being processed by the Copyright Office.

furniture-copyright-attorney-bed-cc.jpgThe complaint continues that “since approximately 2000, Defendants have been marketing and selling a bed under their ‘OMNI collection’ called the ‘Wave Bed’ [pictured herein], which bears an unauthorized reproduction of Plaintiff’s Rainwater Design, in violation of Plaintiff’s exclusive right to reproduce, display, create derivative works from and distribute its Rainwater Design.”

Before reaching the infringement issue, the Court must decided whether the U.S. Copyright Office's refusal to register was improper and the work is subject to copyright protection, “Plaintiff seeks a determination that the Rainwater Design is protectable under the Copyright Laws of the United States and that Defendants have infringed that copyright…” The case is titled C & C Imports, Inc., dba Nancy Corzine v. Century Furniture Industries, Inc., CV08-03818 GAF (C.D. Cal. 2008).

PRACTICE NOTE: In order to recover statutory damages, attorneys’ fees, and costs, the copyright in the work must have been registered before the commencement of the infringement or within three months from the date of publication. 17 U.S.C. § 412. In this matter, however, it appears that the works were published many years before the copyright applications were filed, thereby preventing recovery of statutory damages and attorneys’ fees.

Posted On: June 25, 2008

Asics Sues Designer Steve Madden For Breach Of Settlement Agreement, Trademark Infringement, and Lanham Act Unfair Competition: Trademark Attorney

Santa Ana, CA – Asics’ trademark attorneys filed a lawsuit against Steve Madden, Ltd. at the Federal District Court (Santa Ana Division) alleging breach of their previous settlement agreement, trademark infringement, unfair competition under the Lanham Act (15 U.S.C. § 1125), and trademark dilution. For over forty years, Asics has used its stripe design trademarks on virtually all of its shoes. Asics owns numerous trademark registrations at the U.S. Patent & Trademark Office for the stripe designs, the first of which was registered in 1972 and is incontestable.

trademark-shoe-stripe-trade-dress-asics.jpgThe parties are apparently not strangers and Steve Madden was previously sued for infringement by Asics – once directly and, on another occasion, through its design of shoes for Mossimo and Target. Both lawsuits were settled, which settlement agreements are confidential, but Asics is now alleging breach of those agreements. Asics further alleges that since the settlement agreements were executed, Steve Madden has sold new shoes that include a stripe design that is confusingly similar to and infringes Asics’ design trademarks. The case is titled Asics Corporation v. Steven Madden, Ltd., SACV08-0638 AHS (C.D. Cal. 2008).

Posted On: June 23, 2008

Fashion Designer Cannot Use His Own Name On His New Fashion Line – Court Issues Trademark Injunction Against Joseph Abboud

In a case that illustrates the dangers of using your own name as a trademark, a court has issued a permanent injunction preventing fashion designer Joseph Abboud from using his own name to promote a new line of clothing – and all future goods and services. The unfortunate aspect of this ruling that hinders Abboud’s planned return to the fashion industry, is that a more careful drafting of the agreements that were part of the sale of his company in 2000 could have prevented his unintended loss of rights.

fashion-designer-trademark-joseph-abboud.jpgTrademark attorneys for the popular designer apparently believed that when he agreed to sell his company and trademarks – which included the USPTO registered Joseph Abboud trademark – it would not prevent him from later using his own name to promote his affiliation with a new clothing line. The Court disagreed and issued a permanent injunction preventing the designer from using his own name to promote his new “jaz” fashion line. CLICK HERE for the Court's decision.

Use Caution When Assigning Trademark Rights

In 2000, Abboud sold his company, JA Apparel Corp., for $65.5 million. As a condition of the sale, he then worked at the company under a personal services agreement until it expired in 2005, at which point he left the company for good over “creative differences.”

The personal services agreement also contained a non-competition provision, whereby Abboud agreed not to compete with the company for a period of two years after the termination of the agreement. It was after this period had lapsed that Abboud announced the launch of his new “jaz” clothing line, which does not include the Joseph Abboud name.

Abboud testified at the trial that he had only assigned the rights to use “Joseph Abboud” as a trademark and had reserved the right to use his own name to inform the public that he is the designer of the new “jaz” clothing line. The Court did not agree:

[I]f Abboud only intended to convey trademarks, then the Agreement could have and should have said: “Abboud agrees to sell…all of [his] right, title and interest in and to the trademarks identified on Schedule 1.1(a)(A).” But it said more than that, and in order to give the word “names” due meaning and effect, the Court must interpret the Agreement in a manner that provides JA Apparel with that which it expressly purchased – all of Abboud’s rights to use his name for commercial purposes . . . [T]he Court concludes that Abboud’s proposed use, in connection with his new “jaz” clothing line, of the phrases “a new composition by designer Joseph Abboud” and “by the award-winning designer Joseph Abboud,” would constitute a breach of [ ] the Agreement – irrespective of whether these phrases constitute trademark use.

A Permanent Setback

Aside from the breach of contract issue, the court also concluded that “Abboud’s proposed use of his name in connection with the “jaz” line would also constitute trademark infringement” because there would be a likelihood of confusion among consumers, dismissing Abboud’s fair use defense in the process.

Accordingly, the Court concludes that Plaintiff JA Apparel is entitled to a permanent injunction prohibiting Abboud from using his name – personally, through Houndstooth, or through any other entity with which he is affiliated –to market, advertise, promote, sell, offer to sell, or otherwise distribute any goods or services, including, but not limited to, his new “jaz” clothing line, to the consuming public.

The Full Effect of Non-Compete Agreements

It was also revealed that during the non-competition period Abboud and his attorney conducted numerous meetings with third parties in the garment industry and negotiated verbal agreements for Abboud’s return to the fashion industry.

Although the negotiated agreements were not formally executed until shortly after the expiration of the non-compete period, the Court found that Abboud violated the non-compete provision by engaging in “impermissible association with individuals or entities that were proposing to engage in competition with JA Apparel during the Restricted Period.”

The Court, however, refused to grant plaintiff monetary relief, because the new venture lost money, or order return of shipped garments that were already displayed in third-party stores. But the order makes clear that no further sales or promotions may be made using “Joseph Abboud” in any way on the new “jaz” clothing line. The case is titled: JA Apparel Corp. v. Joseph Abboud, et al., No. 07-Civ. 7787 (THK), U.S. District Court for the Southern District of New York.

PRACTICE NOTE: This case illustrates the dangers of using your own name as a trademark or service mark in your business. It also emphasizes the need for careful drafting of assignments and licensing agreements to prevent the unintended loss of rights – e.g. use of your own name in a subsequent business. Also, trademark rights could unintendedly be lost through bankruptcy proceedings because trademarks are an asset of the bankruptcy estate.

Another reason to avoid using names as trademarks or business names is that they are descriptive and not protectable without establishing secondary meaning. Michael Atkins' post discusses how The Christensen Law Firm lost its domain names because they were not protectable trademarks.

Posted On: June 20, 2008

Trademark Declaratory Judgment Lawsuit Filed By Entrepreneur Magazine Against Ernst Young Over The Right To Use “Entrepreneur Of The Year Award” Trademark

Santa Ana, CA – Trademark attorneys for Entrepreneur Media, Inc. (“EMI”), the publisher of Entrepreneur® magazine, filed a declaratory judgment lawsuit after receiving a cease and desist letter from Ernst & Young for trademark infringement over EMI’s use of “Entrepreneur Magazine’s 2008 Entrepreneur® Of The Year” award. The lawsuit, filed at the California Central District Court (Santa Ana Division), seeks a declaration from the court that Ernst & Young’s USPTO registrations for “Entrepreneur Of The Year” and “World Entrepreneur Of The Year” are invalid, unenforceable, and should be canceled, and/or EMI’s use of “Entrepreneur® Magazine’s Entrepreneur Of They Year” does not infringe.

declaratory-judgment-trademark-entrepreneur.bmpThe parties are very familiar with each other’s trademark rights and have previously granted a consent to registration and amended applications in response to oppositions in order to obtain registration. However, EMI now asserts that its use of “entrepreneur of the year” is generic, it has been used by numerous other organizations in a generic manner across the country, the trademark is not infringed, it is unenforceable, and asks the court to cancel the registrations. The case is titled Entrepreneur Meia, Inc. v. Eygn Limited, Ernst & Young LLP, SACV08-02810 DOC (C.D. Cal. 2008).

Posted On: June 18, 2008

Trademark Attorneys: Ventura Based Econo Lube Franchisee Sued For Trademark Infringement And Breach Of Franchise Agreement For Automotive Services

Santa Ana, CA – Trademark attorneys for Econo Lube N’ Tune franchisor sued a Ventura, CA based franchisee for trademark infringement and breach of franchise agreement at the Federal District Court (Santa Ana Division). The USPTO registered trademark, Econo Lube ‘N Tune, is used by franchisees to provide automotive tune-up and brake services, lubrication, oil changes, and certain related minor automotive services. Because the trademark has been registered for over five years, since 1981 to be exact, the trademark is incontestable under the Lanham Act, 15 U.S.C. § 1115(b).

ventura-trademark-attorneys-econo-lube.bmpPlaintiff alleges that on August 1, 2006, Robert Gerz entered into a sublease and franchise agreement for the Econo Lube location in Ventura. The franchise agreement provided a limited license to use the trademark while the franchisee was in good standing, but on the termination of the franchise, the right to use the trademark ceases immediately. Six months after entering into the agreement, Defendant allegedly defaulted on his obligations to make rental payments under the sublease and royalty payments under the franchise agreement. Plaintiff provided notice of the breach to defendant, and defendant allegedly failed to cure the breach by making the required payments, “instead, Gerz engaged in a pattern of delay for the purposes of allowing him to continue his unauthorized operation of the franchise and use of the trademark for as long as possible.” Plaintiff filed an action in the Superior Court of the State of California, Count of Ventura, seeking, among other things, a judgment of possession against Gerz. One week before trial, however, Gerz vacated the premises mooting the trial for possession. As a result, the instant lawsuit was filed asserting the following causes of action: (1) Trademark infringement, 15 U.S.C. § 1114; (2) Breach of sublease agreement; (3) Breach of franchise agreement; and, (4) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Econo Lube N’ Tune, Inc. v. Robert Gerz, SACV08-00598 CJC (C.D. Cal. 2008).

Posted On: June 16, 2008

Activision Filed A Copyright Infringement Lawsuit In Los Angeles To Protect Video Game From Copying: Copyright Attorneys

Los Angeles, CA – Copyright attorneys for Activision filed a copyright infringement lawsuit at the Federal District Court in Los Angeles to protect its video game copyrights and to stop sales of unauthorized copies. Activision is the copyright owner or licensee of exclusive rights in Call Of Duty 3, which game is the subject of two copyright registrations – one for the Xbox 360 version and one for the Nintendo Wii Version – duly issued by the Register of Copyrights. The complaint alleges that, “among the exclusive rights granted to Plaintiff under the Copyright Act are the exclusive rights to reproduce the Copyrighted Video Games, to make or create derivative works from the Copyrighted Video Games, and to distribute the Copyrighted Video Games to the public.”

copyright-attorneys-in-los-angeles-cd3-video.jpgPlaintiff alleges that “Defendant, without the permission or consent of Plaintiff, has copied the Copyrighted Video Games and distributed the Copyrighted Video Games to the public. In doing so, Defendant has violated Plaintiff’s exclusive rights of reproduction and distribution. Defendants’ actions constitute infringement of Plaintiff’s copyrights and exclusive rights under copyright.” Plaintiff believes that Defendant may have sold other copyrighted video games and reserves the right to add additional copyright causes of action after discovery is conducted. Activision requests 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 work and requests the court order the defendant to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled Activision Publishing, Inc. v. Guse, CV08-03756 FMS (C.D. Cal. 2008).

Posted On: June 13, 2008

Trademark Lawyers For Ray Charles’ Estate File Trademark Infringement And Lanham Act Unfair Competition (15 U.S.C. § 1125) Lawsuit In Los Angeles Federal Court

Los Angeles, CA – Trademark lawyers for entertainer and musician Ray Charles’ estate filed a trademark infringement, Lanham Act unfair competition (15 U.S.C. §1125), and commercial appropriation of name and likeness lawsuit at the Federal District Court in Los Angeles. The complaint is filed against Ryan Corey Robinson, who is purportedly Ray Charles’ son, and Mary Ann Den Bok – an attorney – who is Mr. Robinson’s mother. The complaint alleges that Ray Charles created an estate plan that would provide his children a certain amount of cash and The Ray Charles Foundation would receive Ray Charles’ intellectual property rights, including his name, voice, likeness, image and biographical material.

LA-CA-Trademark-lawyers-ray-charles.jpgPlaintiff alleges that since Ray Charles’ death, “Defendants have used the threat of negative publicity and false public statements to attempt to extort funds from The Foundation and its licensees … Specifically, in or about September of 2006, Defendants began threatening The Foundation and licensees, purporting to be representatives of Ray Charles Legacy Corporation, LLC, an entity that did not exist. Defendants also contacted third parties and falsely claimed that the Ray Charles Legacy Corporation, LLC held all rights to the name, likeness, and the right of publicity of the late Ray Charles in an effort to obtain a commercial advantage based on those representations.” The case is titled The Ray Charles Foundation, Inc. v. Ray Charles Legacy Corporation, CV08-02810 JFW (C.D. Cal. 2008).

Posted On: June 11, 2008

Trademark Lawyers In Los Angeles Filed A Trademark Infringement Lawsuit On Behalf Of Gevity In Los Angeles District Court

Los Angeles, CA – Trademark lawyers for Gevity HR, Inc. filed a trademark infringement and Lanham Act unfair competition (15 U.S.C. § 1125) lawsuit at the Federal District Court in Los Angeles. Plaintiff Gevity owns numerous USPTO registered trademarks for a family of Gevity trademarks in different International Classes and also has several pending trademark applications. Under its family of Gevity trademarks, Plaintiff “provides a wide range of services to thousands of small and mid-sized businesses nationwide, including human resources management consulting and related financial services, payroll processing, benefits and benefits administration, risk management and loss prevention, and workers’ compensation and other insurance coverage.” Plaintiff also uses its trademarks on its website and owns the domain name

los-angeles-trademark-lawyer-gevity.jpgDefendant Gevity Ventures was organized in February of 2007 and operates as a boutique hedge fund. Defendant offers investment services through the website and offers management consulting services through the website. In August of 2007, Plaintiff’s trademark lawyers sent a cease and desist letter to Defendants, which was allegedly ignored. In February of 2008, the trademark lawyers once again sent a cease and desist letter to Defendants, to which Defendants responded and refused to stop using the trademarks at issue. Because Plaintiff believes that the Defendants’ trademarks are likely to cause confusion, it filed the instant lawsuit. 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) California trademark infringement; (4) Unfair competition under Cal. Bus. & Prof. Code § 17200; and, (5) Unjust enrichment. The case is titled Gevity HR, Inc. v. Gevity Ventures, LLC, CV08-03146 DSF (C.D. Cal. 2008).

Posted On: June 9, 2008

Los Angeles, CA: Cookie Diet Franchisees File Trademark Infringement, Unfair Competition (15 U.S.C. 1125), Breach Of Contract, And Fraud Lawsuit Against Franchisor

Los Angeles, CA – Trademark attorneys for “cookie diet” franchisees filed a trademark infringement, unfair competition (15 U.S.C. § 1125), breach of franchise agreement, and fraud lawsuit at the Federal District Court in Los Angeles. Plaintiffs are area franchisees and franchise representatives of the “Cookie Diet,” a medically supervised weight loss program. Defendants are the franchisors and licensors of the weight loss program, which in its California Uniform Franchise Offering Circular (“UFOC”) was described as a “medical-based physician monitored and supervised weight reduction and weight management program.” Plaintiffs are the franchise representatives throughout the State of California.

los-angeles-trademark-attorney-cookie-diet.jpgPlaintiffs allege that the Franchisor Defendants represented that the heart of the weight loss system was a diet based upon proprietary cookies, shakes and soups developed by Dr. Sanford Siegal. “The key to the weight loss concept was that a patient/customer had to maintain a diet of approximately 800 calories per day, half in a single 400-calorie mean, and the other half by eating six dietary ‘cookies’ throughout the day.” Because of the drastically low daily caloric intake, “physician supervision was a core component of Dr. Siegal’s diet system.” In 2002, the Franchisor Defendants entered into an agreement to license Dr. Siegal’s name, trademarks, and trade names. In return, Dr. Siegal was to be the exclusive supplier of cookies to the Franchisor Defendants. Dr. Siegal maintained rights to use the trademarks and system in Florida, but agreed to not compete with the Franchisor Defendants in the United States.

The complaint alleges that the Defendant Franchisors made fraudulent representations to induce Plaintiffs to enter into the franchise agreement, one such representation was that Dr. Siegal was part of the franchise and was contractually obligated to support franchisees and not compete with them. The Plaintiffs allege that the Defendants unilaterally terminated their licensing agreement with Dr. Siegal when the cookies were not consistent, instead of working with him to correct production, which Defendants knew would result in Dr. Siegal’s ability to compete with Plaintiffs and terminate the license to “Dr. Siegals” trademarks. Also, the complaint continues, Defendants tried to replicate the cookies themselves “through a trial-and-error process that used the franchisees and their patients as guinea pigs. Instead of exercising quality control, [Defendants] shipped each batch of cookies regardless of whether it suppressed appetite or how it tasted” and which did not bear required nutritional labels that complied with Federal laws. Further, as a result of the termination of Dr. Siegal’s agreement, Dr. Siegal sued the Defendants in Florida to stop them from using the “Cookie Diet” name and the Court granted a preliminary injunction enjoining Defendants and their franchisees from using the “Cookie Diet.”

Defendants and Dr. Siegal entered into a settlement agreement in the Florida case that allowed Dr. Siegal to compete throughout the United States and contained terms that were unfavorable to Plaintiffs. Plaintiffs also allege that Defendants developed a higher caloric cookie diet that did not require physician supervision and began competing with Plaintiffs, allowing Defendants to sell cookies on-line and eliminating the need for brick and mortar stores with physicians. The case is titled Scientific Weight Loss, LLC v. U.S. Medical Care Holdings, LLC, et al., CV08-02852 PSG (C.D. Cal. 2008).

Posted On: June 6, 2008

Trademark Infringement And Unfair Competition 15 U.S.C. § 1125 Lawsuit Filed By Lawyers To Protect DuPont’s USPTO Registered Trademark

Santa Ana, CA – Trademark lawyers for E.I. Du Pont De Nemours filed a trademark infringement and Lanham Act unfair competition (15 U.S.C. 1125) lawsuit at the Federal District Court in Santa Ana to protect its TEFLON® trademark. The complaint recites the history of DuPont’s discovery of polytetrafluoroethylene (“PTFE”), which is the slippery, chemically inert compound that is used in a wide variety of different products. Since approximately 1944, DuPont adopted the fanciful trademark “Teflon” for its PTFE products and began to sell products under the trademark and also licensed the trademark for others to use. DuPont owns several USPTO trademark registrations for the TEFLON® trademark in several International Classes of goods. All of the registrations are incontenstable under 15 U.S.C. § 1065.

santa-ana-trademark-lawyer-dupont.jpgDefendant allegedly sells vehicle polishing and cleaning services that are described as “TEFLON® Polishing” and “TEFLON® Shine.” The complaint alleges that Defendant’s products do not contain genuine DuPont TEFLON® fluoropolymer. DuPont allegedly contacted the defendant and asked it to stop use of the mark, but defendant refused, thereby necessitating the lawsuit. The case is titled E.I. Du Pont De Nemours & Co. v. Tropic Shield, Inc., SACV08-00252 CJC (C.D. Cal. 2008).

Posted On: June 4, 2008

Santa Ana Patent Attorneys File Patent Infringement Lawsuit To Protect Wheel Design Patent From Copying

Santa Ana, CA – Patent attorneys for Allstar Tire & Wheel commenced patent infringement litigation at the U.S. District Court for the Central District of California (Santa Ana Division) to protect a wheel design patent from copying. U.S. Patent No. D503,369, titled “Decorative Vehicular Wheel Lip,” issued on March 29, 2005 to an individual inventor, Joey K. Kato. The ‘369 Patent was assigned to Allstar Tire & Wheel, including the right to sue for infringement.

patent-attorney-wheel-af129.jpgAllstar sent a cease and desist letter to Defendant Wheel Pros in mid-2007; however, the complaint alleges that Wheel Pros has not responded and has not ceased the sale of infringing products. In fact, Allstar alleges that Wheel Pros has continued to add new models of wheels that infringe the ‘369 Patent. As a result, the complaint claims that Wheel Pros’ alleged infringement is willful and intentional and requests enhanced damages. The case is titled Allstar Tire & Wheel, Inc. v. Wheel Pros, Inc., SACV08-00563 AHS (C.D. Cal. 2008).

Posted On: June 2, 2008

Trademark Infringement, Unfair Competition and False Advertising, and Commercial Appropriation of Name and Likeness (Cal. Civ. Code 3344.1) Lawsuit Filed By Trademark Lawyers For Tupac Shakur’s Estate/Licensee

Los Angeles, CA – Trademark lawyers for rapper, actor, poet and musician Tupac Shakur’s estate filed a trademark infringement, Lanham Act unfair competition and a false advertising, and commercial appropriation of name and likeness lawsuit at the Federal District Court in Los Angeles. Although Tupac Shakur passed away over eleven years ago, he remains a popular hip-hop musician, artist, actor and poet. His intellectual property and publicity rights, according to Forbes magazine, ranked his estate’s earnings in the top nine for deceased celebrities. His estate licenses all of the intellectual property rights, “including rights to merchandise the trademarks and posthumous publicity rights” to the Plaintiff, Amaru-Awa Merchandising, Inc. Amaru owns a USPTO registered trademark for “Makaveli,” for use on recorded media and clothing.

merchandising-trademark-infringement-tupac.jpgDefendants own and operate a retail store named Rock Town, and a private investigator – acting on behalf of Plaintiffs – allegedly “purchased an unauthorized t-shirt bearing an image of Tupac Shakur and the trademark ‘Makaveli.’” Plaintiffs sent a cease and desist letter to the Defendants, to which there has been no response. Plaintiffs filed the instant lawsuit seeking monetary damages and injunctive relief. The case is titled Amaru Entertainment, Inc. v. Reza Falatoon, CV08-03317 DSF (C.D. Cal. 2008).