Posted On: December 31, 2008

F.C. Kingston Sues Kingtech – A Company Started By Former Employees – For Trademark Infringement, Unfair Competition, and Trade Secret Misappropriation

Los Angeles, CA – Trademark attorneys for F.C. Kingston LLC and Storm Manufacturing Group, Inc. (“Kingston”) filed a trademark infringement, unfair competition, and trade secret misappropriation complaint, at the Central District of California (Los Angeles Division), against Kingtech LLC – a company operated by Daniel Marshall and Reed Ferguson, two former Kingston employees. Kingston designs and manufactures “metal valves and custom fittings serving many industries including compressed air, floor cleaning, automotive, medical/dental, industrial flow control, and food service.” Since 1908, Kingston has used the “Kingston” trademark and has obtained a USPTO trademark registration. And starting in 1970 it began stamping its products with a “K” in a circle mark, a trademark application for which is currently pending at the USPTO.

Kingston alleges that Marshall was hired in 2000 as a Quality Engineer and became a Senior Brand Manager in 2005, where, through his job duties, “Marshall had a close relationship with all of Kingston’s suppliers and customers, and was intimately familiar with all of Kingston’s suppliers and customers, and was intimately familiar with the branding of Kingston’s goods and its extensive use of the Kingston Marks.” Plaintiff alleges that Ferguson was hired in 2005 as the national sales manager and worked closely with Marshall “regarding customer acquisition, pricing, promotion, new product development and target market selection.” Both Marshall and Ferguson signed employment agreements in which they agreed that they would not disclose Kingston’s “confidential or proprietary information, including information concerning customer lists, pricing, drawings, and marketing data.” Marshall was allegedly terminated in January of 2008 and Ferguson resigned last June.

Kingston alleges that a few months before resigning, Ferguson asked for and received an Excel spreadsheet providing detailed information about every sale that Kingston had made in the past five years. “Such a compilation of information is obviously not available to the public, and permits its user to know not only who every one of Kingston’s almost 2,000 customers are, but exactly what they have ordered, when they ordered it, and the precise price paid…Ferguson then proceeded to email the entire spreadsheet from his work email account to his personal email account.” The complaint alleges that Ferguson shared the stolen spread sheet with Marshall, who had set up the competing Kingtech business.

A Kingston employee discovered some of the Kingtech products at its customer’s location and later discovered Marshall and Ferguson promoting Kingtech products at an industry tradeshow. “In addition to using a confusingly similar company name, Kingtech stamps its products with a logo that is virtually identical to the Kingston Logo, namely, a circle containing the capital letter ‘K’ with a significantly smaller subscript letter ‘T’.” The complaint provides the following side by side comparison of the parties’ respective products:

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The complaint’s allegations of misconduct do not end there: “To further confuse the market, Kingtech assigned product numbers to its valve products that were nearly identical to the corresponding Kingston valves. For example, Kingtech’s ‘K251-30’ valve was nearly identical to Kingston’s ‘251-30’ valve in form and appearance.” Further, the complaint continues, “Kingtech has also attempted to misappropriate Kingston’s goodwill by slavishly copying non-functional design elements that are unique to Kingston’s products.” Like an infomercial, the complaint has MORE: “further indicative of Kingtech’s bad faith, and in direct violation of the Lanham Act, Kingtech, on multiple occasions, even displayed Kingston’s actual valves on Kingtech’s website.” But wait, there’s even more: “Kingtech has actively sought out and employed Kingston’s production factories in China to produce its essentially identical products bearing the Infringing Marks,” despite Defendants’ knowledge of the Plaintiff’s exclusive distribution agreement with the Chinese factories, which agreement was allegedly negotiated and consummated by Defendant Marshall.” ORDER NOW! Shipping and handling extra. The case is titled F.C. Kingston LLC v. Kingtech LLC et al., CV 08-07904 VBF (C.D. Cal. 2008).

Posted On: December 18, 2008

SureFire’s False Advertising Lawsuit Attempts To Silence Advanced Armament’s Comparative Silencer Advertisement

Santa Ana, CA – SureFire, LLC manufactures gun silencers (suppressors) and other related products for use with firearms. SureFire filed a Lanham Act, 15 U.S.C. 1125(a), false advertising claim at the Central District of California (Santa Ana Division) against Advanced Armament Corp. (“AAC”). The lawsuit arises out of a comparative advertisement by AAC which features cutaway views of two side-by-side silencers. The advertisements have allegedly been published in magazines such as Combat Hanguns, Guns & Weapons for Law Enforcement, and Tactical Weapons.

CLICK TO READ COMPLAINT

false-advertising-lawyer-silencer-advertisement-surefire-gun.jpgThe complaint alleges that although the pictured product is identified as a “Competitor Brand Silencer,” it is immediately and distinctively identifiable as a SureFire suppressor. Further, “the SureFire suppressor shown in the comparative advertisement has been subjected to extremely heavy use and has been modified to enhance the impression that its components have broken and/or separated.” Whereas “the [AAC] suppressor shown in the comparative advertisement has not been used.” The complaint asserts that the comparative advertisement creates the false impression that welds used on suppressors manufactured by ACC will not fatigue or crack, are stronger and more durable, and SureFire’s suppressors are unreliable and likely to fail during ordinary use. Moreover, the complaint takes exception to the test data which provide “independent verification” of the decibel reduction figures provided on the “independent website” silencertests.com. SureFire alleges that the website is owned by an individual that currently designs suppressors for defendant and is not truly independent. The case is titled SureFire, LLC v. Advanced Armament Corp., SACV 08-1405 DOC (C.D. Cal. 2008).

Posted On: December 16, 2008

Optimal Pets Bites Nutri-Vet And The Vitamin Shoppe With A Trademark Infringement and Unfair Competition Lawsuit

Riverside, CA – Trademark attorneys for Optimal Pets, Inc. filed a trademark infringement and unfair competition complaint in the Central District of California (Riverside Division). Optimal Pets sells pet products, such as vitamins and other dietary supplements, grooming products, and other items. Optimal Pets has marketed and sold the products on the Internet under its common law Optimal Pets trademark, but does not have a trademark registration. (Read Advantages of Registered Trademarks)

trademark-infringement-optimal-pets-unfair-competition.jpgThe complaint alleges that Plaintiff’s principal met with Defendant Vitamin Shoppe after learning of Defendant’s search for suppliers of its new line of vitamins and dietary supplements. Optimal Pets’ proposal to Vitamin Shoppe was not accepted. Instead, in August of 2008, Vitamin Shoppe began marketing and selling a new line of pet vitamins and dietary supplements which were allegedly supplied by Defendant Nutri-Vet. The complaint alleges “that Defendants were aware, at the time they made the decision to use the mark or designation ‘OPTIMAL PET’ in connection with their products, that [Plaintiff] had made prior use of the trade name and mark ‘OPTIMAL PETS’ in commerce in connection with the sale of similar products.” The case is titled Optimal Pets, Inc. v. Nutri-Vet, LLC et al., EDCV 08-1795 SGL (C.D. Cal. 2008).

Posted On: December 11, 2008

Legendary Race Car Driver Carroll Shelby Filed A Trademark and Trade Dress Infringement and Violation Of Right Of Publicity Lawsuit In Los Angeles Federal Court

Los Angeles, CA – Trademark lawyers for Carroll Shelby and his trust and licensing company filed a trademark and trade dress infringement, unfair competition, and violation of the right of publicity complaint at the Federal District Court in Los Angeles. Click to read complaint. Shelby is the legendary race car driver who broke the land speed record at the Bonneville Salt Flat and won the 24-hour Le Mans road race. After retiring from auto-racing, Shelby began designing some of the most highly prized race and production cars, including Shelby Cobras. The complaint alleges that the design of the Shelby cars, the Daytona specifically, has acquired distinctiveness and serves to identify Plaintiff as its source (the “Daytona Coupe Trade Dress”). The Daytona Coupe Trade Dress was registered with the USPTO as Registration No. 2,958,927. Plaintiff Shelby also owns the following USPTO issued trademark registrations: 289, 427 S/C, Shelby 427 S/C, and Shelby. Plaintiff Shelby is also the exclusive worldwide licensee of the COBRA trademark and logo, which are owned by Ford Motor Company.

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Defendant Factory Five Racing, Inc. (“FFR”) allegedly manufactures replicas of “Shelby Cobra vehicles, including kit cars bearing designs confusingly similar to the Daytona Coupe Trade Dress.” On FFR’s website, www.factoryfive.com, FFR allegedly uses trademarks owned by or licensed to Shelby in the metatags thereof to draw Internet traffic to the site, “these marks appear in the metatags but not in the posted content of the web pages, reflecting a design to conceal their use.” Further, the complaint alleges that links from FFR’s website directs traffic to LK Motorsports and Internet Community Partners, LLC's websites, where further infringing use of the trade dress and trademarks occur. The case is titled Carroll Shelby v. Factory Five Racing, Inc. et al., CV 08-07881 CAS (C.D. Cal. 2008).

Posted On: December 9, 2008

In-N-Out Burger Sues Construction Company For Trademark Infringement In Los Angeles

Los Angeles, CA – Trademark attorneys for In-N-Out Burger (“INO”) filed a trademark infringement, trademark dilution and unfair competition complaint at the Federal District Court in Los Angeles. INO has been making hamburgers since 1948 and was the innovator of the drive-thru hamburger stand to accommodate Californians’ love of their cars and hamburgers. INO registered the “IN-N-OUT BURGER” trademark with the USPTO in 1978, which trademark is used on its 140 locations.

los-angeles-trademark-attorney-in-n-out.jpgDefendant Michael Anthony Companies Incorporated offers construction services and operates a website at the following address: www.mac-companies.com. The complaint alleges that Defendant has misappropriated the In-N-Out Burger® trademark and used it in its website, “erroneously suggesting that INO is one of Defendants’ ‘current’ clients when it is not, and depicting INO stores.” INO’s attorneys allege that four letters were sent to Defendant requesting removal of the In-N-Out Burger® trademark and reference from the Defendant’s website, but the mark was not removed. The case is titled In-N-Out Burger v. Michael Anthony Companies Incorporated, CV 08-07601 PA (C.D. Cal. 2008).

PRACTICE NOTE: If you haven’t had the “animal” at INO, it’s an “off-the-menu” burger that you must try on your next visit.

Posted On: December 5, 2008

Throttle Rocker Trademark And Trade Dress Infringement Lawsuit Moves Full Throttle Ahead

Los Angeles, CA – Trademark attorneys for Throttle Rocker, Inc. filed a trademark and trade dress infringement, counterfeiting, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles. Plaintiff manufactures motorcycle accessories, including a contoured throttle device which attaches to the throttle of a motorcycle and provides relief when the rider squeezes the throttle. Plaintiff has sold the devices under its Throttle Rocker trademark since 1995 and has registered a word mark and a logo with the U.S. Patent & Trademark Office. The complaint also asserts that the trade dress of the black device features “the following distinctive features: a velcro strap, an arcuate top portion and a concave-shaped base portion, which is approximately twice as wide as the top portion.”

los-angeles-trademark-attorney-trade-dress-throttle-rocker.jpgDefendant Eurodezigns, Inc. and several individual defendants are accused of selling a counterfeit product which allegedly uses the Throttle Rocker trademarks and infringes on Plaintiff’s trade dress. The complaint asserts that “Defendants’ use in commerce of THROTTLE ROCKER and its [sic.] sale of the counterfeit product, is likely to cause confusion, decpeiton and mistake in the minds of the public with respect to the source and origin of Plaintiff’s products.” The case is titled Throttle Rocker, Inc. v. Eurodezigns, Inc. et al., CV 08-07361 ODW (C.D. Cal. 2008).

PRACTICE NOTE: From the description of the alleged trade dress in the complaint and Plaintiff’s advertisement touting the comfort on the heal and palm of the hand imparted by the contoured shape of the device, it is going to be difficult to prove that the design is non-functional and entitled to trade dress protection.

Posted On: December 2, 2008

St. Clair’s Alvin & The Chipmunks CD Triggers Trademark and Copyright Infringement and Unfair Competition Lawsuit

Los Angeles, CA – Trademark and copyright attorneys for Bagdasarian Productions, LLC filed a trademark infringement, copyright infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles to stop sales of allegedly infringing music CDs. “Alvin and the Chipmunks” was originally a music group created by Plaintiff’s predecessor, Ross Bagdasarian, Sr., consisting of three singing animated chipmunks: Alvin, Simon and Theodore. In 1958, Ross authored and copyrighted the words and music to the original musical composition, “The Chipmunk Song,” aka “Christmas, Don’t Be Late.” Also, since 1961, the members of the music group were portrayed as animated characters, first in cartoons and later in CGI form. Plaintiff also owns several USPTO registered “ALVIN AND THE CHIPMUNKS” marks for use on entertainment services, products and a variety of merchandise.

copyright-attorney-in-los-angeles-alvin-chipmunks.jpgIn 2007, a live-action/CGI comedy film entitled “Alvin and the Chipmunks” was released and generated over $350 million in theatrical motion picture box office revenues worldwide, and sold more than 12 million DVDs worldwide. The soundtrack form the film was released as a CD on November 20, 2007, and sold over 880,000 copies. Plaintiff alleges that after the success of the film and music CD, Defendant “St. Clair embarked upon a plan to fabricate a cheap knockoff of the Authorized CD containing 10 recordings, each of which is the exact composition found on the Authorized CD.” The complaint continues, “in order to further [Defendant’s] scheme to deceive the public into believing that its unlicensed album was authorized, endorsed by, associated or affiliated with plaintiff or its licensees, St. Clair entitled the album ‘A Tribute to Alvin and the Chipmunks,’ and . . . used artwork and CD packaging prominently featuring images closely approximating Alvin, Simon, and Theodore and using the Alvin and the Chipmunks trademark (and de-emphasizing the ‘Tribute’) in the same size, color, and typeface of the Authorized CD. The St. Clair CD cover is pictured herein. The case is titled Bagdasarian Productions, LLC v. St. Clair Entertainment Group, Inc., CV 08-07525 FMC (C.D. Cal. 2008).