April 10, 2015

Vampire Wines Bites Into Yard House’s Vampire Taco Trademark With Infringement Lawsuit

trademark-attorney-infringement-vampire-wine-food-taco-yard-house.jpgTI Beverage Group and its attorney, trademark licensor, and co-plaintiff Michael Machat are not drinking at the Yard House and nothing seems to be merry despite the consumption of tacos and alcohol. Plaintiffs appear to have more of an affinity for Vampires than Bram Stoker himself, having registered numerous Vampire related trademarks for beverages, bars, and restaurant services, including Vampire® and Dracula® for wines and Vampire Lounge & Tasting Room® for restaurant and Bar Services. Even Bella Swan doesn’t think this amount of vampire love is healthy, said the star of the Twilight saga. Moreover, Sookie Stackhouse is upstaged by Plaintiffs’ undying love of vampires because Plaintiffs previously sued HBO for trademark infringement for selling TruBlood beverages.

Plaintiffs claim to have recently sniffed out Yard House’s sale of “VAMPIRE TACO” and use of "VAMPIRE STYLE" to excite potential customers about its food and/or beverage offerings. Yard House has also file trademark applications for Vampire Taco and Vampire Style, which are both pending. Plaintiff alleges that if Yard House “is not stopped from marketing food products and restaurants using Plaintiffs’ Vampire Mark or a mark confusingly similar to Vampire, then consumers will likely be confused about the source and origin of defendant’s products and services and mistakenly conclude that defendant’s products or services are produced by, or associated with Plaintiffs…As a result, Plaintiffs’ reputation and goodwill will be impaired.” The complaint seeks unspecified damages, but Plaintiffs intend to disgorge Yard House’s profits, request an award of attorneys’ fees in addition to an injunction prohibiting Yard House’s use of the Vampire trademark.

Click here for a copy of the complaint.

The case is TI Beverage Group, Ltd. et al. v. Yard House USA, Inc., CV15-02583-E (C.D. Cal. 2015).

January 30, 2015

Say “Super Bowl” and Suffer the NFL’s Trademark Infringement Traumatic Brain Injury

super-bowl-trademark-attorney-cease-desist-infringement-fair-use.jpgEvery year the NFL’s trademark attorneys aggressively send cease and desist letters to business using the term “Super Bowl,” threatening them with the trademark law equivalent of traumatic brain injury. Even churches are not granted sanctuary from NFL’s trademark and copyright infringement tentacles. Instead of battling for immunity under trademark fair-use laws, many businesses and advertisers engage in vocabulary gymnastics, e.g. Big Game, Super Sunday, to avoid the NFL’s trademark onslaught. The NFL even tried to prevent use of “The Big Game” by filing a USPTO trademark application, but the NFL was forced to abandon its trick-play when numerous colleges and businesses opposed the application. Thus, to avoid legal expenses, many businesses choose to forego the battle. But not Stephen Colbert, whose Superb Owl moniker flies below the NFL’s trademark radar:

January 28, 2015

Grammy Tickets, Duped Trademark Attorney, Cash, And Trademark Infringement

grammy-tickets-unauthorized-trademark-attorney-infringement-copyright.jpgThis is not your ordinary trademark infringement case. It involves Grammy Awards ceremony tickets, allegedly sold by now ex-Recording Academy member and trademark attorney – Matthew Blakely – to alleged swindler and trademark infringer Craig Banaszewski.

The dispute stretches back to 2012 when the Academy informed defendants that tickets to the Grammy awards were private, invitation only events and any unauthorized transfer or sale of the tickets was unlawful, would automatically void the tickets, and the ticket-holders would be deemed trespassers. Defendants complied with the Academy’s take-down requests and the issue appeared resolved.

In 2013, however, attorney Blakely reportedly sold his non-transferable tickets for between $65,000 and $89,500. But when the purchasers were denied entry, they sued Blakely after he refused to refund their money. Blakely informed the Hollywood Reporter that Banaszewski claimed he was obtaining tickets to revive 80’s and 90’s rock bands’ careers and Grammy appearances would be helpful. According to the Hollywood Reporter, “Blakely says he initially declined but then reconsidered after the guy ‘reiterated interest in potentially funding the film projects for Blakely Legal clients.’”

Yesterday, the Recording Academy sued Banaszewski and Hollywood Entertainment Group, the operators of www.thevipconceirge.com, for trademark infringement, copyright infringement, false association and unfair competition, interference with contractual relationships, unfair or deceptive acts, and inducement of trespass. The Academy alleges Defendants are once again selling unauthorized tickets on their website for the February 8, 2015 Grammy Awards ceremony by using the Academy’s MUSIC’S BIGGEST NIGHT® and GRAMMY® trademarks. Further, Defendants are accused of copyright infringement for their unauthorized use of the Gramophone Logo, which is registered with the U.S. Copyright Office, and photographs from prior Grammy Awards ceremonies.

The suit seeks unspecified damages, but demands punitive damages for defendants' alleged misconduct.

The case is National Academy of Recording Arts & Sciences, Inc. v. Hollywood Entertainment Group LLC, et al. CV15-0594 (C.D. Cal. 2015).

July 1, 2014

Levi’s Trademark Infringement Lawsuit Against Stussy’s Jeans Is Not Horseplay

Trademark-lawyer-jeans-lawsuit-design-levis-stussy.jpgLevi Strauss & Co. has been making jeans forever and owns some of the earliest trademarks registered at the U.S. Patent & Trademark Office. The trademarks at issue involve Levi’s two-horses pulling on a pair of jeans design, one of which (pictured to the right) Levi’s began using in 1886 and registered in 1980. Levi’s contends that its two-horse design trademarks are famous and recognized around the world based on Levi’s extensive marketing and volume of sales for over one-hundred years.

Stussy is accused of using a two-horse design trademark on a leather patch affixed to jeans and shirts that is confusingly similar to Levi’s registered trademarks. Based on the similarity of the two design trademarks, it’s not surprising that Levi’s is steaming up Stussy’s tail. Levi’s alleges the striking similarity of the trademarks can only lead to one conclusion: that Stussy’s infringement is will and intentional, thereby warranting trebling the amount of Levi’s damages and Stussy’s profits. Levi’s seeks unspecified damages, but requests an award of its attorneys’ fees in addition to an injunction prohibiting Stussy’s use of the two-horse design trademark.

Although there appear to be no opposed decisions involving Levi’s two-horse design trademark, Levi’s has successfully litigated and prevailed on its back-pocket stitching design trademarks. See e.g. Lois Sportswear, USA, Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir.1986). This should be an extremely quick horse race to the finish, i.e. settlement.

The case is Levis Strauss & Co. v. Stussy, Inc., CV14-02995 HRL (N.D. Cal. 2014).

June 9, 2014

Manolo Blahnik Seeks Transfer Of Websites Selling Counterfeits In Trademark Lawsuit

trademark-infringement-counterfeit-manolo-blahnik-restraining-order.jpgIn a trademark infringement and counterfeiting lawsuit, Manolo Blahnik is asking the court to transfer control of websites selling counterfeit Manolo Blahnik shoes and accessories and to freeze Defendants' assets and bank accounts. The identities of the defendants and the websites are currently sealed to prevent advanced notice to the accused defendants, who may use the information to transfer or conceal assets. The complaint alleges that Defendants create internet stores by the hundreds and design them to appear to be selling genuine products, while actually selling low-quality counterfeit Manolo Blahnik products to unknowing consumers. “Internet websites like the Defendant Internet Stores are estimated to receive tens of millions of visits per year and to generate over $135 billion in annual online sales.” Manolo Blahnik claims it is forced to file these actions to combat Defendants’ counterfeiting of its numerous USPTO registered trademarks, as well as to protect unknowing consumers from purchasing counterfeit products over the Internet.

Manolo Blahnik asserts that its trademarks are so famous that it has become a fabric of pop culture, whereby its shoes have been featured on many television shows including Sex and the City where Carrie Bradshaw begged a mugger to “take my Fendi handbag, my ring and my watch, but please don’t take my Manolo Blahniks!” Accordingly, Plaintiff does not wish defendants’ websites to steal Manolo Blahnik’s goodwill created over the years with its consumers and requests the Court – without prior notice to defendants – to issue:

(1) a temporary restraining order against Defendants temporarily enjoining the manufacture, importation, distribution, offer for sale and sale of Counterfeit Manolo Blahnik Products; (2) an order temporarily transferring Defendants’ Domain Names to Manolo Blahnik so they can be disabled; (3) an order temporarily restricting transfer of Defendants’ assets to preserve Manolo Blahnik’s rights to an equitable accounting; (4) an order for expedited discovery allowing Manolo Blahnik to inspect and copy Defendants’ records relating to the manufacture, distribution, offer for sale and sale of Counterfeit Manolo Blahnik Products and Defendants’ financial accounts; and (5) an order allowing service by electronic mail and electronic publication at the Defendant Domain Names.

Plaintiff also alleges that several Defendants’ websites utilize Manolo Blahnik trademarks in their domain names, which constitutes cybersquatting because each defendant (1) has a bad faith intent to profit from the mark; and (2) registers, traffics in, or uses a domain name that … is identical or confusingly similar to or dilutive of a mark that is distinctive or famous. 15 U.S.C. § 1125(d).

The suit seeks unspecified monetary damages, but requests an award of Defendants’ profits, which should be trebled pursuant to 15 U.S.C. § 1117 because defendants intentionally and willfully infringing on Manolo Blahnik’s famous trademarks.

The case is Manolo Blahnik Int’l, Ltd v. The Partnerships and Unincorporated Associations, 14-CV-4174 (N.D. Ill 2014).

June 4, 2014

Starbuzz Tobacco Sues Hershey Chocolate Over Citrus Mist E-Cigarette Flavor Trademark

trademark-registration-attorney-ttab-opposition-e-cigarette-flavor-hershey-starbuzz-tobacco.jpgThere’s no smoke, but a federal trademark lawsuit fire is burning between Starbuzz Tobacco and The Hershey Chocolate Company. The trademark lawsuit is in response to Hershey’s Trademark Trial & Appeal Board (“TTAB”) opposition to Starbuzz’s trademark application for Citrus Mist for use on e-cigarette flavored liquids. In the TTAB opposition, Hershey contends that Starbuzz’s Citrus Mist trademark is likely to cause consumer confusion with Hershey’s Citrus Mist® trademark registration covering breath mints and candy. Hershey alleges that “consumers are highly likely to associate [Starbuzz’s] chemical flavorings with the flavors of Hershey’s CITRUS MIST brand candy and mints, and make purchasing decisions based on that association.”

Starbuzz’s lawsuit seeks the court’s determination that its Citrus Mist trademark for e-cig flavoring does not infringe or dilute Hershey’s similar trademark. Starbuzz is already the owner of a federally registered Citrus Mist® trademark for pipe tobacco and flavored tobacco, which it has been using since 2008. Starbuzz reasons that the absence of any instances of actual confusion over the last six years between the parties’ respective Citrus Mist trademarks supports its conclusion that expansion into the related e-liquid market for e-cigarettes would not result in confusion and, thereby, infringement. Additionally, Starbuzz argues that labels of the respective products are “completely different” and easily allow consumers to differentiate between the two products and would not lead to confusion.

Regarding the dilution claim, Hershey would have to show that its Citrus Mist trademark was famous before Starbuzz’s adoption of its Citrus Mist trademark. Thane Int‘l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002) (holding that dilution protection extends only to those whose mark is a – nationally recognize household name); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1014 (9th Cir. 2004) (ruling that survey evidence of sixty-five percent of the attitude of people who intended to purchase a new car recognized the NISSAN trademark coupled with promotional expenditures of $898 million during the period 1985–91 were not conclusive to support – as a matter of law – at summary judgment that the NISSAN trademark was famous as of 1991). Starbuzz contends Hershey’s Citrus Mist trademark is not widely recognized by the general consuming public, which in comparison to Hershey’s Kisses® trademark, I would have to agree.

The case is Starbuzz Tobacco, Inc. v. Hershey Chocolate & Confectionery Corp., CV14-00831-CJC-AN (C.D. Cal. 2014).

May 8, 2014

Hermès Sues Birkin Bag Imitators For Trademark and Trade Dress Infringement

trade-dress-handbag-attorney-trademark-purse-hermes-sued-lawsuit.jpgHermès is a French luxury goods manufacturer whose handbags and purses are highly coveted. Its “Birkin” handbag has become immediately recognizable to millions of consumers (I know because seven out of seven ladies in our office immediately identified the pictured bag as a Birkin) and therefore distinctive, thereby its shape is a registered trademark with the U.S. Patent & Trademark Office. While Birkin Bags have been manufactured using various leather types and textures, its trade dress is defined by “(a) a distinctive three lobed flap design with keyhole shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.” Because each handbag is handcrafted by artisans using the finest leather, prices start at about $6,000 and reach the price of a finely engineered sports car.

Despite the high price of the Birkin Bag, it is generally recognized by consumers due to considerable coverage by the press and its inclusion in story lines of several television shows, including HBO’s Sex and the City. Because of the enormous sales, extensive advertising and promotion, and media coverage, the Birkin Bag’s shape has acquired secondary meaning and developed into a famous trademark. Even the strap/turn and lock/padlock closure is independently famous and the subject of another U.S. trademark registration.

Defendants Emperia, Inc., Anne-Sophie, Inc. and Top’s Handbag, Inc. are accused of being related sister companies in the business of importing and distributing women’s handbags. Defendants are accused of selling infringing knockoff bags to Charming Charlie and JustFab. Despite allegedly receiving cease and desist letters, Defendants continued to expand and sell additional knockoff designs. The suit seeks unspecified damages, but requests that actual damages be trebled, pursuant to 15 U.S.C. § 1117, because defendants intentionally and willfully continued their infringement despite receiving notice of their infringing activity.

To see pictures of all the accused products, click here.

It appears that third-party knockoffs of the Birkin Bag are so prevalent that numerous Youtube videos have been posted to spot the alleged fakes:

The case is Hermès International v. Emperia, Inc. et al., 14-CV-03522 (C.D. Cal. 2014).

December 16, 2013

Poquito Mas Sues Taco Bell Over Live Mas Trademark To Promote Mexican Food

trademark-attorney-lawsuit-mexican-food-poquito-mas-taco-bell.jpgPoquito Mas Mexican restaurant is going mano-a-mano against Taco Bell over the latter’s use of the “Live Mas” trademark and service marks on its restaurants, food, and beverages. Founded in 1984, Poquito Mas has more than ten restaurants in California and differentiates itself by selling high quality food, always using the freshest ingredients and freshly made salsas. It also has several USPTO registered for its family of MAS trademarks including Poquito Mas, The Mas, and Mucho Mas, among others. Because most of its trademarks have been registered for over five years, the trademarks have become incontestable per 15 U.S.C. § 1065.

Plaintiff alleges that in January of 2012, Taco Bell contacted Poquito Mas in an attempt to license the “Mas” trademark to use in its “Live A Little Mas” advertising campaign. After some discussion, however, Poquito Mas declined to license the trademark because it believed Taco Bell’s slogan would diminish the Poquito Mas brand and confuse customers. Shortly thereafter, Taco Bell is accused of launching the “Live Mas” campaign despite its knowledge of the extraordinary fame and strength of the Mas trademarks: “Taco Bell is still actively using, promoting, and otherwise marketing the ‘Live Mas” trademarks with the knowledge and intent that this may cause consumer confusion between Taco Bell and Poquito Mas.” In addition to the trademark infringement claim, Poquito Mas asserts causes of action for false designation of origin and unfair competition under both federal and California law.

Poquito Mas seeks unspecified damages, attorneys’ fees, and costs in addition to preliminary and permanent injunctions prohibiting Taco Bell’s use of the Live Mas marks in its advertising. Further, because Taco Bell’s knowingly infringed the trademarks, Poquito Mas asks the court to triple the damages under the Lanham Act and award punitive damages under state law.

The case is Poquito Mas Licensing Corp. v. Taco Bell Corp., CV13-1933 (C.D. Cal. 2013).

December 11, 2013

Hello Kitty Jewelry Copyright And Trademark Infringement Lawsuit Filed By Sanrio

copyright-attorney-trademark-infringement-lawsuit-hello-kitty-sanrio.jpgThe Hello Kitty character has been around for more than fifty years and numerous other related characters and designs have been copyrighted by Sanrio. In fact, Sanrio’s website has a page listing all of its copyrights. Sanrio aggressively protects both its copyrights and trademarks related to the Hello Kitty characters, even suing a children's beauty pageant organizer for copyright infringement for using the Hello Kitty doll on its tiaras and trophies. Maybe that’s a good thing if you’ve seen how much these beauty pageants charge parents for the illusion of their kid’s success and to prevent exploitation. But more importantly, to prevent the next Honey Booboo from being thrust upon society. To protect myself from such a lawsuit, the image to the right displays some of the characters at issue in this lawsuit and was taken from Sanrio’s website.

Defendants Blink & Blink, Inc. and its officers are accused of selling jewelry and other products that incorporate a cast of Hello Kitty characters: “This case concerns the concerted, systematic and wholesale theft of various world-famous intellectual properties owned by Plaintiff. Defendants are engaged in the manufacture, importation, distribution, promotion, sale and/or offer for sale of bracelets, rings, earrings, necklaces, and other personal accessories, which incorporate unauthorized likenesses of animated or live action characters owned by Plaintiff, including, but not necessarily limited to, Hello Kitty (collectively “Infringing Product”).” The suit seeks unspecified damages, but requests that actual damages be trebled pursuant to 15 U.S.C. § 1117.

The case is Sanrio, Inc. v. Blink & Blink, Inc., et al., CV13-08948 PJW (C.D. Cal. 2013).

November 11, 2013

Chan Luu Sues Victoria Emerson For Trademark And Copyright Infringement Over Wrap Bracelets

how-to-protect-jewelry-trdemark-patent-copyright-attorney-chan-luu.jpgChan Luu, Inc.’s jewelry trademark infringement, copyright infringement, and unfair competition lawsuit arises from Victoria Emerson’s sales of wrap bracelets. Just this week two different jewelry designers inquired, after receiving cease-and-desist letters, whether jewelry designs were entitled to trademark and copyright protection. After explaining not only are jewelry designs entitled to copyright, trademark and trade dress protection, but also entitled to design patent and possibly utility patent protection, the enlightened jewelry designers recognized the value of obtaining intellectual property protection for their own designs. And now we return to our regularly scheduled programming.

Plaintiff contends that because of its extensive use of the Chan Luu trademark on jewelry, clothing, and accessories, consumers recognize the mark as a source of high quality products. Plaintiff also has several USPTO registered Chan Luu trademarks. In addition, Plaintiff allegedly owns the exclusive trademark rights to its purportedly distinctive curved oval button that serves as the closure for many of the bracelets, which it has used since 2002. Defendants are accused of using the curved oval button trademark in addition to using the Chan Luu trademark, including buying the word mark as an Adword.

The copyright infringement claim, however, is based on Chan Luu’s registration of collections of photographs instead of copyright registrations for the jewelry pieces themselves. Defendants are accused of copying Chan Luu’s product photographs and using the photographs on defendant’s website www.victoriaemerson.com. Plaintiff seeks unspecified monetary damages in addition to preliminary and permanent injunction preventing Defendants’ use of the copyrighted images and the Chan Luu word mark and the oval button trademark.

The district court in R.F.M.A.S., Inc. v. Mimi So, 619 F. Supp. 2d 39, 58-59 (S.D.N.Y. 2009) reconfirmed that jewelry collections, whether thematically related or not, may be registered as a single work:

Jewelry collections are eligible to be registered in a single work registration. This issue was recently discussed in Castaneda, where the defendants sought to invalidate the plaintiff's registration for a jewelry collection on the same grounds as those offered by the So Defendants. There the court held:

[J]ewelry collections properly fall under the category of single work registrations rather than group registrations…. [A] single work registration for a published work covers "all copyrightable elements that are otherwise recognizable as self-contained works, that are included in a single unit of publication, and in which the copyright claimant is the same." In this case, a collection of jewelry -- usually a set of pieces thematically related and released for sale at the same time -- can be deemed a single unit of publication.
Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471, 492 (S.D.N.Y. 2008) (footnotes omitted).

While Castaneda states that a collection of jewelry is "usually a set of pieces thematically related and released for sale at the same time," id. (emphasis added), there is no requirement that the pieces must be thematically related. Rather, 37 CFR Section 202.3(b)(4) requires only that: (1) all copyrightable elements must be otherwise recognizable as self-contained works; (2) the items must be included in a single unit of publication; and (3) the copyright claimant must be the same. See Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 205 (3d Cir. Pa. 2005) ("The single work registration regulation is silent on whether the individual, self-contained elements of the 'single work' be 'related' in order to be registered. Instead, single work registration requires, in the case of published works, that all of the self-contained works be 'included in a single unit of publication' and share the same copyright claimant.").

The case is Chan Luu Inc., v. Brandshare, Inc. dba Victoria Emerson, et al., 13-CV-8210 (C.D. Cal. 2013).