Posted On: September 29, 2008

Los Angeles Trademark Attorneys For Stonefire Grill Restaurant Delivered A Trademark Infringement Lawsuit To Stone Fire Pizza

Los Angeles, CA – Plaintiff Stonefire Grill’s trademark attorneys filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), and trademark dilution complaint at the Federal District Court for the Central District of California (Los Angeles Division). Stonefire Grill alleges that it began using its “Stonefire Grill” trademarks in 2002 and has obtained a USPTO registration for one of its trademarks and has other applications pending, all of which are for use with bar and restaurant services.

los-angeles-trademark-attorney-restaurant-pizza-08.jpgPlaintiff alleges that Defendants began using the dominant words “Stone Fire” for its business name long after Plaintiff had adopted its Stonefire trademark. Although the trademarks are not exactly the same, Plaintiff alleges that “Defendants’ name and mark are substantially identical in appearance, sound, and connotation to Plaintiff’s STONEFIRE Mark; and, in particular, the dominant words ‘STONEFIRE’ are identical to Plaintiff’s STONEFIRE Mark.” As a result, the complaint continues, “Defendants’ Mark so resembles Plaintiff’s STONEFIRE Mark as to be likely to cause confusion, to cause mistake, or to deceive the consuming public.” The case is titled Stonefire Grill, Inc. v. Stone Fire Pizza, et al., CV 08-06223 AHM (C.D. Cal. 2008).

PRACTICE NOTE: Plaintiff’s website lacks the registered trademark notice (i.e. the “R” in the circle symbol ®) or any notice that it has a USPTO registered trademark for “Stonefire Grill.” It is highly advisable to display the ® symbol with registered trademarks because under 15 U.S.C. § 1111, no damages and no profits shall be recovered unless and until the defendant had actual notice of the registration.

Posted On: September 25, 2008

Trademark Declaratory Judgment Lawsuit Filed By Pacific Sunwear Over Jeans Pocket Design Trademark

los-angeles-trademark-attorney-pocket-design.jpgLos Angeles, CA – Trademark attorneys for jeans manufacturer Pacific Sunwear of California, Inc. (“Pac Sun”) filed a declaratory judgment lawsuit after receiving a cease and desist letter from Abercrombie & Fitch, Inc. and Hollister Co. for trademark infringement over Pac Sun’s use of its “Bullhead Pocket Design” on jeans. The lawsuit, filed at the Los Angeles Federal District Court , alleges that on August 28, 2008, Abercrombie sent a cease-and-desist letter alleging infringement of its USPTO registered “A&F Pocket Design” trademark in addition to numerous unregistered word marks.

The complaint alleges that a “controversy has arisen and currently exists among Pac Sun and defendants regarding whether Pac Sun has infringed the alleged A&F Pocket Design, the Hollister Jean Names, and the font and stylization allegedly used by Hollister, and whether Pac Sun has engaged in unfair competition, under either federal or applicable state law.” Pac Sun seeks a declaration from the court that it does not infringe the Defendants’ trademarks because of the absence of likelihood of confusion and that the word marks are generic and/or descriptive and not enforceable. The case is titled Pacific Sunwear of California, Inc. v. Abercrombie & Fitch Trading Co. et al., CV08-06135 DDP (C.D. Cal. 2008).

Posted On: September 23, 2008

Clothing Designs Are Subject Of Trademark Infringement Lawsuit In The Central District Of California

Santa Ana, CA – Trademark attorneys for clothing/apparel manufacturer Louis Vuitton filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), and trademark counterfeiting complaint at the Federal District Court for the Central District of California (Santa Ana Division). The complaint recites that the luxury goods manufacturer began selling its luggage in France in 1854 and in the United States in 1893. In 1896, Louis Vuitton created the LV monogram with three motifs (shown below) and registered it with the U.S. Patent and Trademark Office in 1932. Louis Vuitton has additional design/logo trademarks that are also registered with the USPTO.

santa-ana-trademark-attorney-louis-vuitton-mob.jpgDefendants Mob, Inc. and Tilly’s, Inc. are alleged to have counterfeited and infringed on Louis Vuitton’s trademarks by selling unauthorized clothing, including t-shirts and sweatshirts. Louis Vuitton alleges that “Defendants’ advertising, offering for sale and sale of Defendants’ [clothing] subjected consumers to confusion in that consumers were likely to purchase Defendants’ [clothing] falsely believing that Defendants and/or Defendants’ [clothing] are affiliated, connected, or associated with Plaintiff, or falsely believing that Defendants and/or Defendants’ [clothing] originate from, or are sponsored or approved by Plaintiff when they are not.” The case is titled Louis Vuitton Malletier, S.A. v. MOB, Inc., et al., SACV08-736 AG (C.D. Cal. 2008).

PRACTICE NOTE: I previously posted (Click Here) about the Louis Vuitton and “Chewie Vuiton” parody case, where the defendant’s parodical use of the LV Monogram was found to not infringe on Louis Vuitton’s trademarks or copyrights.

Posted On: September 19, 2008

AOL Sued For Trademark Infringement For Use of THE BOOMBOX Trademark On Its Music Related Services In Los Angeles Federal District Court

Los Angeles, CA – Trademark attorneys for Modavox, Inc. filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint against AOL at the Federal District Court in Los Angeles. Modavox licenses and sells internet video and radio software and services under its Boombox Radio mark. Modavox, through its predecessor-in-interest, registered the Boombox Radio trademark with the U.S. Patent & Trademark Office in 1999.

los-angeles-trademark-attorney-radio-internet-aol-boombox.bmpModavox alleges that AOL “willfully and deliberately used and is using the Mark with notice of Palintiff’s ownership of the Mark and began to use the name ‘Boombox’ well after Plaintiff’s Mark had been registered to offer virtually identical services as Plaintiff has offered and registered under the Mark.” Modavox alleges that it sent a cease and desist letter to AOL, but AOL has refused to stop using the trademark. The case is titled Modavox, Inc. v. AOL, LLC, CV 08-05914 SJO (C.D. Cal. 2008).

Posted On: September 17, 2008

Copyright Infringement and Breach of Licensing Agreement Lawsuit Filed In Los Angeles Federal Court Over Video Used In Television Series

Los Angeles, CA – Copyright attorneys for HighDefinition.net, Inc. (“HDNI”), owned by award-winning broadcast reporter Robert Tur, filed a copyright infringement and breach of contract lawsuit, at the Los Angeles Federal District Court, which seeks to enjoin further usage of its footage. The complaint states that Mr. Tur pioneered the use of helicopters in covering live news events, which, at least in Los Angeles, provides for at least one car chase per day. HDNI has registered its copyrights for its aerial footage with the U.S. Copyright Office.

los-angeles-copyright-attorney-video-television.jpgIn 2007, the complaint alleges that HDNI and Rive Gauche Entertainment Television (“RGET”) entered into an agreement, whereby HDNI produced and RGET distributed a television program about police car chases, titled “Why They Run,” which aired on MSNBC. Shortly thereafter, the parties entered into an agreement for the production and distribution of “Nowhere to Run,” under which agreement RGET was to pay HDNI $450,000, in addition to licensing fees for the use of news clips from its library. The complaint alleges that “RGET has breached the March 7, 2008 Agreement by, among other things, failing to pay HDNI at least $400,000 owed under the agreement. In addition, RGTV has licensed and/or delivered to third parties [the] copyrighted material without [Plaintiff’s] consent, much less its written consent.” Plaintiff requests 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: HighDefinition.net, Inc. v. Rive Gauche Entertainment Television, Inc., CV08-05795 GHK (C.D. Cal. 2008).

Posted On: September 15, 2008

Pinkberry Files Trademark Infringement Lawsuit In Los Angeles Federal Court Over Sale Of Frozen Yogurt Under Coolberry Trademark

Los Angeles, CA – Trademark attorneys for Pinkberry filed several trademark infringement and Lanham Act 43(a) unfair competition lawsuits, at the Los Angeles Federal District Court, against several frozen yogurt competitors. Pinkberry’s “frozen yogurt” treats are all the rage, which I don’t quite understand. I would much rather have my frozen yogurt at The Bigg Chill, which has been serving frozen yogurt with your choice of toppings for at least fifteen years and whose parking lot entrance literally causes a parking lot on Olympic Boulevard with the ant-like row of cars waiting to park. But I digress. Pinkberry asserts that it began serving its “frozen yogurt” treats in 2005 and has recently registered its trademarks with the U.S. Patent & Trademark Office. One registered trademark is for the “Pinberry & Stylized Leaf and Berry Swirl Design,” which is illustrated herein.

los-angeles-trademark-attorney-pinkberry-infringement.jpgThe complaint alleges that Defendants took a Pinkberry banner and used it to promote, advertise and sell Defendants’ products. “Specifically, Defendants covered and replaced ‘PINK’ with ‘COOL’ in the same stylized font and color to create a COOLBERRY banner that was posted and displayed on Defendants’ restaurant door.”

Although it appears that the Defendants may have used a modified Pinkberry banner, all may not be lost for the Defendants. As the Los Angeles Times reports, “Pinkberry was on the receiving end of a lawsuit this year filed by customers who contended that the popular treat might not be frozen yogurt. That case was settled in April, with Pinkberry giving $750,000 to two Southern California charities as part of the deal. It also began mixing its yogurt at a dairy, not in-store, and disclosed its ingredients online.” (Read L.A. Times Article) If in fact Pinkberry was not selling “frozen yogurt” and was violating food labeling laws, the validity of its trademark registrations may be comprised based on its representations to the USPTO. There are also allegations that Pinkberry indeed copied its store designs and frozen yogurt concept from Korea based Red Mango, noting that the owners of Pinkberry are Korean immigrants. (See HERE).

The case is titled Pinkberry, Inc. v. Monkee’s Teriyaki, Inc. and Yonghee Kim, CV08-05924 VBF (C.D. Cal. 2008).

The other Pinkberry cases, filed in Los Angeles Federal District Court, are titled:

Pinkberry, Inc. v. Pingo Foods Corporation, CV08-05926 R (C.D. Cal. 2008).

Pinkberry, Inc. v. Peachberry Yogurt, Inc., CV08-05927 GW (C.D. Cal. 2008).

Pinkberry, Inc. v. JTRA, LLC, CV08-05930 SVW (C.D. Cal. 2008).

Posted On: September 11, 2008

Unauthorized Internet Sales Of SATA Paint Spray Tools Triggers Trademark and Copyright Infringement and Unfair Competition Lawsuit In Los Angeles Federal Court

Los Angeles, CA – Trademark attorneys for SATA GmbH, a German corporation, filed a trademark infringement, Lanham Act 43(a) unfair competition, and false advertising lawsuit, at the Los Angeles Federal District Court, to prevent internet based sales of its paint spray tools/guns. Sata owns numerous USPTO registered trademarks in addition to unregistered common law trademarks. SATA’s paint spray tools have been used in auto repair body shops, the automotive industry, and the wood-working industry for more than 23 years.

trademark-attorney-tools-los-angeles-sata.jpgDan-Am is an independent company that is the exclusive authorized importer and sole initial distributor of SATA products in the United States. “Through Dan-Am, SATA-designed and manufactured products are ultimately made available to warehouse distributors and jobbers and through such distributors and jobbers to end customers.” SATA asserts that it can maintain better supervision and quality control over its products because authorized distributors “are required by their contracts with Dan-Am to participate in a specified minimum of instructions and training activities involving the safe use and maintenance of SATA products. . . The internet cannot displace the individual services offered through the Authorized Distributor program.”

SATA alleges that Defendants use the SATA trademarks on their numerous websites to sell, without authorization, SATA’s paint spray tools on the Internet “by approaching Authorized Distributors for the purpose of obtaining SATA products for Internet resale.” The Defendants are also accused of engaging “in the wholesale copying of copyrighted photographs and text found at sata.com for the purpose of having material to support their unauthorized sales free of charge.” The complaint accuses the following websites of infringement: spraygunworld.com, toolparadise.com, spraygunindustry.com, mytoolchest.com, discounttoolsnthings.com, tptoolworld.com, airbrush4less.com, tptoolbox.com, and uniqueuniverse.com. The case is titled SATA GmbH & Co. KG, et al. v. David Nakatsu, et al., CV08-0560 ODW (C.D. Cal. 2008).

Posted On: September 9, 2008

Trademark Infringement Lawsuit Over Lingerie And Clothing Trademark Transferred to Central District of California – After Attorney Stipulation

Trademark infringement lawsuit – which was originally filed in Washington – was transferred to the Central District of California – Santa Ana Division, pursuant to stipulation by the parties’ attorneys. Plaintiff sells lingerie under its Zovo trademark, which it has registered with the USPTO. The Zovo trademark is also used on other clothing items, namely, “tank tops, shorts, camisoles, robes, chemises, dresses, hoodies, shirts, lounge pants, pajamas, and shells.”

los-angeles-trademark-attorney-lingerie-zovo.jpgPlaintiff alleges that Defendants, nearly 20 months after Plaintiff’s federal trademark application was filed, registered the zovala.net domain name. The domain name incorporates defendants’ Zova trademark, which it uses to offer women’s clothing and skin care items. On October 12, 2007, Plaintiff became aware of Defendants’ Zova trademark when it saw Defendants’ advertisement in California Apparel News. Shortly thereafter, Plaintiff sent Defendants a cease and desist letter regarding the Zova trademark. Defendants responded by claiming a date of first use which allegedly predated Plaintiff’s date of first use. Plaintiff alleges that it demanded evidence corroborating Defendants’ date of first use and, not having received a satisfactory response, this lawsuit followed. The case is titled Zovo Lingerie Company, LLC v. DMH Enterprises, Inc., SACV08-0987 DOC (C.D. Cal. 2008).

Posted On: September 5, 2008

Copyright Attorneys File Infringement Lawsuit Over LED & Neon Signs Imported From China

Los Angeles, CA – Copyright attorneys for Arter Neon & LED Sign, Inc. filed a copyright infringement lawsuit in the Central District Of California (Los Angeles Division) to prevent sales of infringing products imported from China. Arter is a designer, manufacturer and importer of neon and LED signs and artwork, whose products are displayed on its website. Certain of its works have been registered with the U.S. Copyright Office, including its “Scissors” LED design, and others are pending.

china-copyright-attorney-led-sign-arter.jpgIn 2007, Arter entered into a non-exclusive license agreement with Defendant Touch of Asia, whereby Defendant was permitted to distribute certain of Arter’s copyrighted designs and was to forward all orders for products to Arter. Further, Defendant allegedly expressly agreed not to manufacture products containing the copyrighted designs itself or to obtain them from other sources. In June of 2008, when Arter’s representatives were delivering products to Defendant’s location, they allegedly noticed products on display that were not manufactured by Arter, but infringed on the copyrights. Defendant allegedly stated that it had the products manufactured in China because it was less expensive than buying them from Plaintiff. Arter terminated the licensing agreement immediately and asked Defendant to cease selling the allegedly infringing product. When Defendant refused, this lawsuit followed. Plaintiff requests 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: Arter Neon & LED Sign, Inc. v. Touch of Asia Spa Equipment, Inc., CV08-05446 DSF (Central District of California 2008).

Posted On: September 3, 2008

Trademark Attorneys Seek Review In Federal District Court (Los Angeles) Of TTAB’s Cancellation Decision Of Houdini Trademark

Los Angeles, CA – Trademark attorneys for Metrokane sought review and reversal, at the Federal District Court in Los Angeles, of the final decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) cancelling the registration of its Houdini trademark. Metrokane’s Houdini trademark was registered with the USPTO on February 11, 2003, for use on lever-pull corkscrews and other bar accessories.

los-angeles-trademark-attorney-ttab-uspto-houdini.jpgIn 2005, Defendant Houdini, Inc. filed applications with the USPTO to register its “Houdini” mark for use in connection with, among other things, corkscrews, coasters, wine glasses, and gift baskets. The Trademark Examining Attorney rejected Defendant’s applications because its Houdini marks were likely to cause confusion with Metrokane’s prior registration. In response, Defendant filed with the TTAB a Petition to Cancel Metrokane’s trademark registration, wherein Defendant claimed prior use of the Houdini mark in connection with its gift basket design. The TTAB, in turn, granted the Defendant’s petition for cancellation and cancelled Metrokane’s trademark registration.

Metrokane, through its complaint filed with the federal district court, now seeks de novo review of the TTAB’s decision, pursuant to 15 U.S.C. § 1071(b). Metrokane contends that the TTAB decision was incorrect because: (1) the TTAB incorrectly rejected Metrokane’s laches defense, (2) the TTAB incorrectly accepted Defendant’s unsubstantiated allegations of prior use, and (3) the TTAB incorrectly found a likelihood of confusion. The case is titled Metrokane, Inc. v. Houdini, Inc., CV 08-05428 DSF (C.D. Cal. 2008).