Posted On: May 26, 2009

Jean Pocket Trade Dress Lawsuit Filed by Hudson Clothing

trademark-attorney-jeans-pocket-trade-dress-hudson.bmpLos Angeles, CA – Hudson Clothing,LLC filed a trade dress, Lanham Act § 43(a) trademark infringement, and false advertising complaint against BVDK Design, Inc. Plaintiff designs high end denim jeans and alleges that, since 2002, it has used a distinctive back pocket flap design trademark, which it also claims functions as its trade dress. Plaintiff contends it occupies the “premium” denim market, which means – prepare yourself – jeans in excess of $150 a pair. “This market attracts consumers focused on value, style, fit and comfort.”

Plaintiff alleges that BVDK’s jeans, in contrast, lack the reputation and quality that Hudson’s jeans enjoy. But in order to penetrate the premium denim market, defendant is accused of intentionally adopting and using a confusingly similar pocket flap. David Kahn, the owner of BVDK, is also named in the suit and is accused of selling the purportedly infringing jeans on the www.davidkahnjeanswear.com website. Plaintiff also learned that Defendants’ products, which are sold as the “Nikki” style, was available at the same retailer, Nordstrom. Although there is a false advertising cause of action, Plaintiff does not detail the allegedly false statements that were made with respect to the quality of the products. The case is Hudson Cothing, LLC v. BVDJ Design, Inc., CV 09-3275 R (C.D. Cal. 2009).

Posted On: May 21, 2009

“Coffee Planet” Trademark Infringement Lawsuit Filed

Santa Ana, CA – Plaintiff Planet Coffee Roasters, Inc. filed a trademark infringement, Lanham Act § 43(a), and dilution claim against Garden Grove, California based Defendant Planet Coffee. Plaintiff alleges that it has been using the Planet Coffee trademark since 1993 on coffee beans and services related to coffee, with “a majority of its sales of its products and services in and around the California geographic region, including Orange County, California.” This statement defeats Plaintiff’s cause of action for trademark dilution because the Trademark Dilution Revision Act of 2006 limited dilution causes of action to nationally famous marks.

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Unfortunately for Plaintiff, cups of bitter refills are sure to follow. Plaintiff never registered its trademark with the USPTO and only recently filed a word mark and a design mark application. Both applications, however, have been refused registration based on two 1995 registrations owned by Souper Salad, Inc. for Planet Coffee® and Planet Coffee® plus design. Plaintiff is now going to have an uphill battle establishing ownership of its alleged trademarks. The case is Planet Coffee Roasters, Inc. v. Planet Coffee, SACV 09-571 MLG (C.D. Cal. 2009).

Posted On: May 18, 2009

ABC’s Evel Knievel Stunt Show Sued For Copyright Infringement

Los Angeles, CA – The late Evel Knievel was a motorcycle daredevil whose crashes made him more famous than his successful jumps. And now, less than two years after his death, lawsuits continue regarding ownership of the copyrights in his pictures and film clips and infringement thereof. In 2005, Gary Schreiber sued Knievel in Nevada District Court for a declaration of validity of a 1982 written transfer of copyrights to pictures and films made by Knievel (story about the suit is here). While the Nevada lawsuit is still pending, Schreiber has now filed a copyright infringement suit, in the Central District Of California (Los Angeles Division), against American Broadcasting Company, ABC Television Network, Inc. and ESPN, Inc.

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Plaintiff alleges that when Evel was in need to capital to resurrect interest in his career, Plaintiff purchased the rights to the film and the films themselves in 1982 via written agreement executed by Knievel. Plaintiff then produced two compilation films entitled “Evel Knievel’s Specacular Jumps” and “The Last of the Gladiators.” Schreiber alleges that at some time, Knievel once again sold or licensed the same rights – previously granted to Schreiber – to Defendants. Schreiber alleges that Defendant ABC used the copyrighted work in “David Blaine’s Drowned Alive” television show and Defendant ESPN used the copyrighted work during the “Impossible Jump by Mike Metzger” television show. The Defendants are accused of intentional and willful infringement because Defendants’ parent, The Walt Disney Company, has previously paid Schreiber to use the copyrighted Evel Knievel works. The case is Raymond Gary Schreiber v. American Broadcasting Company et al., CV09-03205 AHM (C.D. Cal. 2009).

Posted On: May 15, 2009

Ipanema Trademark Is No Walk On The Beach; Quicksilver Sued For Trademark Infringement

trademark-attorney-swimsuit-ipanema.jpgSanta Ana, CA – James Brady and Patricia Brady filed suit at the Federal District Court in Santa Ana against Quicksilver Americas, Inc., Radio Fiji, Dillard’s Inc., B. Suits, Inc., and Pampo’s Dance Emporium, Inc. In 1985, Plaintiffs, through their prior corporation, developed a line of swimwear manufactured in Brazil and used the Ipanema trademark on the goods. The Ipanema trademark was registered with the USPTO in 1993 and subsequently transferred to the Plaintiffs in 1998. The registration has become incontestable under 15 U.S.C. § 1065. Plaintiff’s “The Girl From Ipanema” trademark, however, is not incontestable because it was registered less than five years ago.

Plaintiffs allege that Defendants have recently manufactured swimwear, which they sell under the Ipanema trademark. Plaintiffs contend that they sent Quiksilver a cease and desist letter in August of 2004, but it has refused to stop use of the Ipanema trademark. In addition to the trademark cause of action, Jennifer assert a Lanham Act § 43(a) false designation of origin claim and a California Business and Professions Code §17200 unfair competition claim. The case is James W. Brady, et al. v. Quiksilver Americas, Inc. et al., SACV 09-553 MLG (C.D. Cal. 2009).

Posted On: May 11, 2009

Trademark And Trade Dress Lawsuit Filed By Manley Toys Over Inflatable Water Slides

Los Angeles, CA – Manley Toys Ltd filed a trademark and trade dress infringement lawsuit against Radco Ltd in the U.S. District Court for the Central District of California (Los Angeles Division). Manley designs and manufactures a variety of toys including the inflatable waterslide toys that are the subject of the lawsuit. Manley is no stranger to trade dress lawsuits involving waterslides, being previously sued by Wham-O (details here).

trademark-attorney-toys-trade-dress-manley-waterslide-radco.jpgFour years ago, Manley created and sold a waterslide toy under the trademark “The Plunge,” which it alleges has been highly successful. The complaint also contends that Manley has “adopted a distinctive color scheme and appearance for its product which, taken together, form a protectable trade dress for The Plunge product.” The product is also marketed and sold under Manley’s Banzai trademark.

Manley alleges that Radco’s use of the mark “Pipeline Plunge” infringes its trademarks and that it was adopted in bad faith, “Defendants’ use of the term Pipeline in the name Pipeline Plunge is a transparent attempt to associate Defendants’ water slide with Plaintiff’s well-known Banzai brand by reference to the notorious and famous ‘Banzai Pipeline’ surf area off the north shore of Hawaii’s Oahu Island.” Defendants will probably argue that you’d have to, at the very least, be a Kamaaina to make that connection. Manley also claims that Defendants have used a color scheme “that is to all intents and purposes identical to Plaintiff’s The Plunge toy.” The case is Manley Toys Ltd v. Radco Ltd HK, et al., CV09-3129 VBF (C.D. Cal. 2009).

PRACTICE NOTE: Plaintiff has apparently named the companies’ officers as defendants in the lawsuit. A company's officers who authorize and direct infringing activities can be held personally liable. Committee for Idaho’s High Desert, Inc. v. Yost, 92 f.3d 814, 823 (9th Cir. 1996).

Posted On: May 6, 2009

K-Swiss Sues Puma For Trademark Non-Infringement Over Strip Design On Shoes

Los Angeles, CA – K-Swiss kicked-off a trademark declaratory judgment lawsuit, at the Federal District Court in Los Angeles, against competing shoe manufacturer Puma. K-Swiss recently began selling its “Dolton” shoe (pictured herein), which features a strip running along the eyelets and extending to the sole of the shoe. In March of 2009, Puma sent a letter accusing K-Swiss’s Dolton shoe design of infringing Puma’s “Formstrip Trademarks,” specifically USPTO Registration Nos. 3369752, 1135790, and 1256945.

trademark-attorney-puma-kswiss-dolton.jpgK-Swiss believes that Puma got its shoe laces in a knot because K-Swiss hired away Puma’s shoe designer and marketing employee. Thus, K-Swiss alleges that the lawsuit is retaliatory in nature and in bad faith. “K-Swiss avers that K-Swiss’ use of the Eyelet Strip is non-infringing, that K-Swiss’ use of the Eyelet Strip is dissimilar in shape and placement to Puma AG’s claimed Formstrip trademarks, that the Eyelet Strip is functional, that KSwiss’ use of the Eyelet Strip as an integral part of the lacing system for its footwear is a fair use, and that K-Swiss’ use of the Eyelet Strip does not create a likelihood of consumer confusion within the relevant purchasing public as to the source of the parties’ footwear.” The case is K-Swiss, Inc. v. Puma AG Rudolf Dassler Sport, CV09-03022 GAF (C.D. Cal. 2009).

Posted On: May 4, 2009

Copyright Infringement Lawsuit Filed Over Dress Design

copyright-lawyer-los-angeles-dress-modcloth-bizz-harkham.jpgLos Angeles, CA – Harkham Industries, Inc. filed a copyright infringement lawsuit, in the Central District Of California (Los Angeles Division), against Bizz, Inc. and Modcloth, Inc. Harkham designs and manufactures women’s apparel and its art department creates prints and designs which are applied to fabrics. In April of 2006, Plaintiff allegedly created an original work of art which it titled the “Shadow Fern” design. Plaintiff immediately registered its design with the US Copyright Office. Plaintiff applied the design to two dresses and tops, which are sold at high end retailers for approximately $200.00 a piece.

In March of 2009, Plaintiff discovered that Modcloth was selling an allegedly infringing garment under the name “After the Rain Dress” pictured herein. Plaintiff’s lawyer sent a cease and desist letter to Modcloth and was informed that the source of the garment was Bizz, dba Ark & Co. Plaintiff’s lawyer sent two letters to Bizz, but allegedly received no response. Thus, Plaintiff filed suit and now seeks either actual or statutory damages under 17 U.S.C. § 504, in addition to its costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is Harkham Industries, Inc. v. Bizz, Inc. et al., CV09-02970 VBF (C.D. Cal. 2009).