Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – Trademark attorneys for La Casita Mexicana, translates to “the little Mexican House,” filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint, at the Federal District Court in Los Angeles, over another restaurant’s use of the same trademark. La Casita Mexicana is located in Bell, California and has registered its restaurant name as its trademark at the U.S. Patent & Trademark Office. Plaintiff, who claims Mayor Antonio Villaraigosa as a patron, asserts that its “customers and the public have come to identify La Casita Mexicana with Plaintiff’s excellent food and service.”

Plaintiff asserts that Defendant began using the same mark for its restaurant services ten years after Plaintiff’s first date of use. Plaintiff became aware of Defendant’s use through phone calls from customers inquiring about Plaintiff’s Whittier, California location – which it did not have. Plaintiff’s attorney sent a cease and desist letter to Defendant, who allegedly has refused to cease using the restaurant name. The complaint alleges that “Defendant’s use in commerce of the La Casita Mexicana Trademark for restaurant services has caused, and is likely to continue to cause confusion, deception, and mistake in the minds of the public with respect to the source and origin of Defendant’s goods and services, in that the public and those in the food and restaurant industry will believe that Plaintiff is the source of origin of such goods and services.” The case is titled La Casita Mexicana, Inc. v. Nereida Mendoza, CV 08-05286 ODW (C.D. Cal. 2008).

Los Angeles, CA – Attorneys for Solid Host filed a cyberpiracy, 15 U.S.C. § 1125(d), and computer fraud and abuse act, 18 U.S.C. § 1030, complaint at the Federal District Court in Los Angeles over alleged hijacking of its solidhost.com domain name. Ironically, Solid Host is a webhosting service that provides server space to its clients and hosts their websites in addition to the clients’ email servers. Plaintiff registered the solidhost.com domain name in 2004 and has continuously used it, without any interest in abandoning it.

The complaint alleges that on August 4, 2008, due to a security breach at Solid Host’s registrar, eNom, its account was compromised and an unidentified hacker, sued as John Doe, gained access to Solid Host’s account and stole the domain. The hacker allegedly then created his own webpage and offered to sell the domain back to Plaintiff and other parties. Whois Guard is also named as a defendant because it provides private registration of domain names and safeguards the registrant’s identity.

When Plaintiff discovered the transfer of the domain name, it demanded that the registrar Demand Media, owner of eNom, return the registration to Plaintiff. When the registrar allegedly refused to do so without a court order, Plaintiff named it as a co-defendant in the instant lawsuit because it was negligent in allowing the security breach and not providing notice to the Plaintiff of the pending transfer. Unfortunately for Plaintiff, the alleged hacker now also has full control of Plaintiff’s email accounts. The case is titled Solid Host, NL v. NameCheap, et al., CV08-05414 MMM (C.D. Cal. 2008).

PRACTICE NOTE: An advantage of having a registered trademark - which Solid Host does not have - is the ability to battle cyberpiracy/cybersquatting more effectively. Click Here For Additional Advantages Of Registered Trademarks.

Los Angeles, CA – Trademark attorneys for American Automobile Association (“AAA”) filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles over an automobile garage’s use of the name “AAA Smogz.” The complaint provides a summary of AAA’s use of the AAA trademark with respect to numerous services, including but not limited to conducting motor vehicle tests. Plaintiff has numerous AAA trademark registrations with the U.S. Patent & Trademark Office, which have become incontestable as a result of being registered for over five years.

The complaint alleges that defendants are in the business of automobile smog testing services using a confusingly similar AAA mark. Plaintiff alleges that in September of 2007 it asked defendant to discontinue using the AAA mark and defendants agreed to do so within six months. On March 6, 2008, after defendants allegedly failed to discontinue their use of the AAA mark, Plaintiff sent another cease and desist letter, to which defendant did not respond. On March 21, 2008, Plaintiff sent another cease and desist letter which was returned as undeliverable. Plaintiff alleges that its investigators have indicated that defendants continue to use the AAA trademark in the same business location to which the letter was sent, thus necessitating the lawsuit. The case is titled American Automobile Association, Inc. v. Jorge A. Mendoza, et al., CV 08-05441 GHK (C.D. Cal. 2008).

Los Angeles, CA – Patent attorneys for Big J & J filed a patent infringement lawsuit at the Central District of California (Los Angeles Division), accusing Novelty Distributors of patent infringement and California statutory and common law unfair competition. U.S. Design Patent No. D533,683, entitled “Piezoelectric Lighter” was duly issued by the U.S. Patent & Trademark Office on December 12, 2006. The ‘683 patent generally relates to the aesthetic design of a pocket lighter.

The complaint alleges that Defendant Novelty previously purchased the subject pocket lighters from Plaintiff, but stopped such purchases in 2007. Defendant is then accused of intentionally copying the design of the patented lighter – thereby explaining the cessation of purchases. As a result, Plaintiff alleges that Novelty’s infringement is willful and deliberate. The complaint also incorporates by reference the patent infringement allegations as a basis for its California statutory (Cal. Bus. Prof. Code § 17200) and common law unfair competition causes of action. The case is titled Big J & J Int’l Corp. v. Novelty, Inc. dba Novelty Distributors, Inc., CV 08-5280 AHM (Central District of California 2008).

PRACTICE NOTE: It appears that the unfair competition claims are merely based on the patent infringement claim and should be dismissed as they are preempted. "Federal patent and copyright laws limit the states' ability to regulate unfair competition." Summit Mach. Tool Mfg. Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434, 1439 (9th Cir. 1993). A plaintiff's state law claim must be "qualitatively different from a copyright or patent infringement claim" or else it is preempted. Id. at 1440.

Los Angeles, CA – Service mark litigation was instituted by trademark attorneys for Couples For Christ, Inc. (“CFC”) at the Federal District Court in Los Angeles. The complaint asserts that CFC has used its Couples For Christ, CFC, and Stylized Cross Design service mark “in connection with education services and providing religious and relationship counseling to couples and individuals” since at least 1991. CFC has registered the subject trademarks with the U.S. Patent & Trademark Office. As a result of the registrations on the USPTO register for over five years, the service marks have become incontestable, thereby foreclosing certain challenges to their validity.

The complaint alleges that “sometime after September 20, 2007, Defendant National Organization authorized the founders and incorporators of Defendant Northern California Organization and the founders and incorporators of Defendant Southern California Organization to incorporate under the Couples for Christ name and to use the CFC Marks in association with educational services and religious counseling in Northern and Southern California, respectively.” Plaintiff has requested that Defendants cease use of the marks, but Defendants have allegedly “repeatedly refused to cease their use of the CFC Marks and continue to provide educational services and religious counseling under the CFC Marks.” The case is titled Couples For Christ, Inc. v. Couples For Christ USA, et al., CV08-05061 DSF (C.D. Cal. 2008).

PRACTICE NOTE: My law school professor, Douglas W. Kmiec, taught that there is always a higher power that will adjudicate the parties’ earthly conduct. But for now, the parties will have to abide by the rulings of U.S. District Court for the Central District of California.

Los Angeles, CA – Trademark litigation attorneys for Adidas filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit – against other shoe manufacturers – at the Los Angeles Federal District Court. Adidas has registered numerous trademarks with the USPTO for its Three-Stripe design, which it began using on shoes in 1952. The complaint asserts that Adidas’ sales of products bearing the Three-Stripe trademark have totaled in the billions of dollars globally in recent years. Adidas also has exclusive agreements with athletes, including David Beckham, Tim Duncan, Kevin Garnett, and Tracy McGrady to promote its footwear and sports apparel.

Adidas alleges that “Defendants’ use of confusingly similar imitations of Adidas’s Three-Stripe Trademark is likely to deceive, confuse, and mislead prospective purchasers and purchasers into believing that shoes sold by Defendants is manufactured by, authorized by, or in some manner associated with Adidas, which it is not. The likelihood of confusion, mistake, and deception engendered by Defendants’ misappropriation of Adidas’s mark is causing irreparable harm to the goodwill symbolized by the Three-Stripe Trademark and the reputation of quality that it embodies.” The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. § 1114; (2) Federal 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) State unfair and deceptive trade practices under Cal. Bus. & Prof. Code § 17200; and, (5) Common law trademark infringement and unfair competition. The case is titled Adidas America, Inc. v. Wah Lei Footwear (U.S.A.) Corporation, et al., CV08-04969 JFW (C.D. Cal. 2008). The other named defendants are Fu Ju (U.S.A.) Group, Inc., LA Discount Shoes, Sunny Shoes Corp., and Top Shoes, Inc.

Los Angeles, CA –False advertising attorneys for DS Waters of America, Inc. (“DSW”) filed an unfair competition and false advertising complaint at the Federal District Court in Los Angeles, over Nestle Waters’ comparative advertisement of pricing for home/office delivery of water. DSW markets and sells bottled water under its U.S. Patent & Trademark Office registered trademarks of Sparkletts®, Hincley Springs®, and Crystal Springs®. Nestle is a competitor and sells its bottled water under its U.S. Patent & Trademark Office registered trademarks of Arrowhead®, Ice Mountain®, and Zephyr Hills®.

The complaint alleges that Nestle’s recent advertising campaign makes inaccurate and misleading price comparisons. The advertisements, published through newspapers and customer proposals, “falsely state that DS Waters’ current price for its 4-bottle monthly delivery service is $32.99/month in Los Angeles and Chicago, and $31.99 in Tampa.” The advertisement is allegedly false because “DS Waters’ 4-bottle monthly delivery service are literally false in that DS Waters’ current price for a 4-bottle monthly water delivery service is $27.99 in the Los Angeles area, $25.99 in the Chicago area, and $28.99 in the Tampa area.” Further, Plaintiff alleges that Nestle’s comparative pricing slogan of “Get More. Pay Less for Home Delivery (Sorry, Spakletts®)” is expressly false, impliedly false and/or deceptively misleading. In addition to monetary damages, DSW seeks both preliminary and permanent injunctions and seeks corrective advertising. The case is titled DS Waters Of America, Inc. v. Nestle Waters North America, Inc., CV08-04970 PA (C.D. Cal. 2008).

Los Angeles, CA – Copyright attorneys for Seoul Broadcasting Systems (“SBS”) filed a copyright infringement lawsuit in the Central District Of California (Los Angeles Division), accusing Korea International Satellite Broadcasting (“KISB”) of distributing infringing copyrighted works and sought a Temporary Restraining Order from the court. SBS’s parent company creates and produces Korean-language television programming which is initially exhibited in Korea and then provided to SBS for television and satellite distribution in the United States. In turn, SBS grants licenses to third-parties in the U.S. to distribute certain of the programs via satellite television.

In 2004, SBS and KISB entered into a series of written agreements whereby SBS agreed to supply KISB with copyrighted programs for distribution on KISB’s satellite channels. When the agreements terminated on May 31, 2008, SBS expressed to KISB its intent not to renew the distribution agreement and gave KISB until June 15, 2008 to cease distribution of the programs. KISB allegedly did not cease distribution of the programs and SBS filed suit seeking a TRO over six weeks later.

Federal Rule of Civil Procedure 65(b) provides that a TRO may be granted "without written or oral notice to the adverse party or its attorney only if: (A) specific facts in an affidavit or a verified complaint clearly show that immediate and irreparable injury, loss, or damage will result to the movant before the adverse party can be heard in opposition; and (B) the movant's attorney certifies in writing any efforts made to give notice and the reasons why it should not be required." The circumstances justifying the issuance of an ex parte TRO are extremely limited. See Reno Air Racing Ass'n v. McCord, 452 F.3d 1126, 1131 (9th Cir. 2006) (citing Granny Goose Foods, Inc. v. Bhd. of Teamsters, 415 U.S. 423, 438-39 (1974).

The Court denied SBS’s TRO because its delay of approximately six weeks in seeking the TRO demonstrates that "immediate and irreparable injury" will not result to SBS before KISB can be heard in opposition. “Unexplained delay in seeking ‘emergency’ injunctive relief undercuts a claim that an injunction is necessary to prevent immediate and irreparable injury. Miller v. Cal. Pac. Med. Ctr., 991 F.2d 536, 544 (9th Cir. 1993).” The Court found that after KISB allegedly refused to cease exhibition of the programming, SBS continued to communicate with KISB asking cessation of the distribution instead of immediately seeking the TRO.

The case is titled: Seoul Broadcasting Systems International, Inc. v. Korea International Satellite Broadcasting, Inc., CV08-05119 SJO (Central District of California 2008).

Los Angeles, CA – Trademark attorneys for Life Alert Emergency Response, Inc. commenced trademark infringement litigation, at the Federal District Court in Los Angeles, against Netstake, LLC. Plaintiff has used Life Alert® as its trademark for services and related products targeted to seniors for more than twenty years. You might remember Plaintiff’s endearing “I’ve fallen and I can’t get up” television commercials. Plaintiff has registered the Life Alert® trademark with the U.S. Patent & Trademark Office, which registration has become in contestable.

The complaint alleges that “Defendant has willfully violated Life Alert’s rights in the Life Alert Mark, by using the Life Alert Mark in connection with metatags, source code and web pages for its websites. Defendant’s improper and unlawful uses of the Life Alert Mark are for the purpose of selling products and services competitive to those of Life Alert.” In addition to preliminary and permanent injunctions, Plaintiff seeks monetary damages for the alleged trademark infringement and unfair competition. The case is titled Life Alert Emergency Response, Inc. v. Netstake, LLC, CV08-05088 GHK (C.D. Cal. 2008).

PRACTICE NOTE: Professor Eric Goldman believes that “lawsuits over metatag usage are so 1999.”

Los Angeles, CA – A patent infringement lawsuit was filed by patent attorneys on behalf of Roland, a Japanese corporation, at the Federal District Court in Los Angeles, accusing Wirges Percussion of infringing U.S. Patent No. 6,121,538 (“the ‘538 patent”). The ‘538 patent, entitled “Electronic Percussion Instrumental System and Percussion Detecting Apparatus Therein,” was issued by the U.S. Patent & Trademark Office on September 19, 2000. The complaint accuses Wirges of making and selling custom electronic drums that infringe on one or more claims of the ‘538 patent.

The ‘538 patent generally relates to a drum having a net-like surface, which allows better elasticity and percussion. It also allows for better detection of percussion as electrical signals and generates musical tone based on the detected electrical signals. Plaintiff alleges that the Defendant’s “infringing activities has caused and will cause Roland irreparable harm from which it has no adequate remedy at law." Thus, in addition to monetary damages, Roland seeks preliminary and permanent injunctions. The case is titled Roland Corporation v. Wirges Percussion Systems, LLC, CV 08-04785 GAF (C.D. Cal. 2008).

Los Angeles, CA – Copyright attorneys for several motion production companies filed a copyright infringement lawsuit in the Central District Of California (Los Angeles Division) against movierumor.com. Universal Studios, Warner Bros., and New Line allege that several of their copyrighted movies – some of which are currently in theaters – are being infringed through the distribution and performance of the same on movierumor.com’s website or third-party websites which are linked to movierumor’s website: “Movierumor is a for-profit ‘one-stop-shop’ for infringing copies of Plaintiffs’ copyrighted works. Specifically, Defendants post, organize, search for, identify, collect and index links to infringing material that is available on third-party websites . . . Defendants profit from their misconduct by displaying advertisements adjacent to the infringing content (including Plaintiffs’ copyrighted works) that plays on their site.”

For research purposes only, I visited movierumor.com, clicked on the Batman: The Dark Night link, and was freely able to watch the movie on a pop-up website, although the video quality was lacking. If the MPAA is reading this, I still have my $12 theater ticket for Batman. Here’s a screenshot of the video and advertising:

The complaint states that “in furtherance of creating and posting the index of links to infringing content, which Movierumor makes available to its users at the click of a mouse, the website allows users to submit new links to infringing copyrighted works and to report broken links . . . Defendants exercise control over the selection and organization of the links to infringing content available on their website . . . By virtue of the conduct alleged herein, Defendants knowingly promote, participate in, facilitate, assist, enable, materially contribute to, encourage, and induce copyright infringement, thereby secondarily infringing the copyrights in Plaintiffs’ copyrighted works.” The Plaintiffs allege that they gave notice to Defendants regarding the allegedly infringing videos and asked them to cease displaying the same, but Defendants have failed to do so. Plaintiffs request either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: Universal City Studios Productions, LLLP v. Movierumor.com, CV08-04931 RSWL (Central District of California 2008).

Los Angeles, CA – Trademark attorneys for Red Bull filed a lawsuit at the Federal District Court in Los Angeles alleging trademark and trade dress infringement, unfair competition under the Lanham Act (15 U.S.C. § 1125), and trademark dilution. The complaint asserts that since Red Bull’s introduction in 1996, over four billion units have been sold in the United States and over one billion dollars have been spent on advertising, marketing and promoting the Red Bull energy drink. Red Bull has obtained trademark registrations at the U.S. Patent & Trademark Office for the its word marks in addition to the trade dress in its can designs.

The Defendants manufacture and sell chocolate mint chews bearing the “Buzz Bites” trademark and mints bearing the “Foosh Energy Mints” trademark. Red Bull is not concerned about the word marks used by Defendants, but alleges that the Defendants’ use of Red Bull’s trademarks and trade dress in Defendants’ advertising and on Defendants’ website and vending machines “is likely to cause confusion before and during the time of purchase of defendants’ products because purchasers, prospective purchasers . . . are likely to be drawn to defendants’ products because they mistakenly attribute [defendants’] products to Red Bull.” Red Bull sent a cease and desist letter to Defendants, but Defendants have allegedly refused to cease the use of the Red Bull trademarks and trade dress. The case is titled Red Bull GMBH v. Vroom Foods, Inc. and Mad Dog Energy Products, CV08-04960 GAF (C.D. Cal. 2008).

PRACTICE NOTE: A competitor can assert the nominative fair use defense to protect its ability to use a trademark to refer to a trademark owner or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising. To qualify for the nominative fair use defense, the following three requirements must be met: (1) the trademark owner, product, or service must not be readily identifiable without use of the trademark; (2) the defendant must use only as much of the mark as is necessary to identify the trademark owner, product, or service; and (3) the defendant must do nothing that would suggest sponsorship or endorsement by the trademark owner. From the facts asserted in the complaint, the Defendants will probably interject a comparative advertising fair use defense, because they are comparing the caffeine content of their product and that of Red Bull. It appears that the first and third elements of the test are met, but the defense will probably turn on whether the second element of the test is satisfied - i.e. did Defendants use more of Red Bull's trademarks/trade dress than was necessary to make the comparison?

Los Angeles, CA – Corporacion’s patent attorneys filed a patent infringement lawsuit in the Central District of California (Los Angeles Division), accusing Charming Shoppes and Lane Bryant of patent infringement. U.S. Patent No. 6,543,062 entitled “Pants Garment with Body Profile Enhancement Features” was duly issued by the U.S. Patent & Trademark Office on April 8, 2003. After the ‘062 patent’s issuance, it was assigned to plaintiff Corporacion.

The ‘062 patent covers a pants garment with elastic components built therein to allow for an improved anatomical fit: “the pants garment is provided with a unique cut and assembly that lifts and accentuates the wearer’s buttocks. In another preferred aspect of the invention, the pants garment additionally reduces the wearer’s stomach.” Defendants sell jeans and pants under the “Secret Slimmer” trademark, which are accused of infringing the ‘062 patent: “[t]he Secret Slimmer products are not staple articles of commerce, and Defendants know or should know that these products have no substantial non-infringing uses. Defendants engage in these acts despite their actual notice and knowledge of the ‘062 patent.” In addition to monetary damages, which Plaintiff asks the Court to treble based on the alleged intentional infringement by Defendants, the Plaintiff also seeks preliminary and permanent injunctions. The case is titled Corporacion 1466, C.A. v. Charming Shoppes, Inc. et al., CV 08-04693 MMM (Central District of California 2008).