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).

October 25, 2013

Roger Cleveland Golf Suing Callaway For Trademark Infringement For Using “Roger Cleveland” Name

Trademark-litigation-attorney-surname-golf-cleveland-callaway.jpgIn another example of the problems caused by using your own name as a trademark (e.g., Van Halen trademark lawsuit and Joseph Aboud trademark injunction), Roger Cleveland Golf Company, Inc. and Dunlop Sports Co. Ltd. filed a trademark infringement, unfair competition, and trademark dilution case against Callaway Golf Company. In 1990, Mr. Roger Cleveland, the individual, sold all shares and ownership interest in his eponymous company but remained an employee until 1996, when he joined Callaway. Everything proceeded like a long, straight drive on the fairway until July 2013 when Callaway started using Mr. Cleveland’s name to promote its golf clubs. The picture to the right, taken from Callaway’s website, shows the placement of Mr. Cleveland’s name on the club-head. Even though the clubs may indeed be designed by Mr. Cleveland, the use of the “Roger Cleveland” name may create a false association with or an endorsement by Roger Cleveland Golf Company.

Click here for a copy of the complaint.

Plaintiffs allege that they are the owners of several federally registered trademarks for Cleveland, Trademark Registration Nos. 2,070,054 and 2,070,051, and Cleveland Golf, Trademark Registration No. 3,286,218. Plaintiffs allege:

Defendant Callaway's use of plaintiffs' mark CLEVELAND® on its recently marketed clubs has already resulted in actual confusion in the marketplace, and is likely to mislead and confuse consumers into believing that the infringer's products originate from Cleveland Golf or are connected to or affiliated with Cleveland Golf. Plaintiffs have demanded that defendant Callaway cease making unauthorized use of plaintiffs' CLEVELAND® brand on defendant Callaway's golf clubs, but to date defendant Callaway has refused to cease and desist its infringing acts.

When your name or surname becomes synonymous with the trademarks of your previously created company, it’s treacherous to start a competing business and use your name on competing products. Sardi's Restaurant Corp. v. Sardie, 755 F.2d 719, 725 (9th Cir. Cal. 1985) (“the use of one's surname is not a ‘defense’ to a trademark infringement action”). Plaintiffs seek a preliminary and permanent injunction preventing Callaway’s use of Roger Cleveland’s name on the clubs, in addition to unspecified monetary damages, attorneys’ fees, and costs.

The case is Roger Cleveland Golf Company, Inc. et al. v. Callaway Golf Company, SACV 13-1642 AG (C.D. Cal. 2013).

October 16, 2013

Eddie Van Halen Suing Brother’s Ex-Wife For Trademark Infringement Over Use Of Surname On Fashion Line

surname-trademark-last-name-infringement-attorney-eponymous-van-halen.jpgEddie Van Halen’s company, ELVH, Inc., has filed suit in Los Angeles federal court seeking damages and a court order preventing Kelly Van Halen, Eddie’s ex sister-in-law, from using the Van Halen surname on her clothing line and merchandise. ELVH alleges that the brothers began using the Van Halen trademark as early as 1978 when they formed the band and have several United States Patent & Trademark Office registered trademarks for Van Halen as used on clothing, printed materials, musical sound recordings, and entertainment services.

The lawsuit appears to be an extension of ELVH’s 2010 opposition proceeding filed with the Trademark Trial & Appeal Board to prevent Kelly Van Halen’s registration of her name as a trademark used on furniture and building construction and management. In the opposition ELVH argues that although it does not provide those exact goods or services, Kelly’s use of the famous last name is likely to confuse consumers into believing there is a license or sponsorship from the famous surname. The lawsuit, however, appears to have been filed when Kelly expanded the use of the last name on clothing, which fashion goods ELVH contends are directly within its prior use domain.

The lawsuit seeks unspecified damages, attorneys’ fees, and costs.

PRACTICE NOTE: It is not a very good idea, even if you’re related, to use your surname as a trademark when another family member used the surname before you, especially if the senior user has made the surname famous, as Larry Flynt’s nephews learned at trial. In fact, even if you’re not related but share a famous last name, e.g. McDonald, you should avoid using your last name as a trademark for a restaurant. Sardi's Restaurant Corp. v. Sardie, 755 F.2d 719, 725 (9th Cir. Cal. 1985) (“the use of one's surname is not a ‘defense’ to a trademark infringement action”). Also, if you create an eponymous fashion line that you sell, you will be prevented from later using your name to set up a new fashion company as Joseph Abboud learned.

The case is ELVH, Inc. v. Kelly Van Halen, CV13-7524 MRW (C.D. Cal. 2013).

October 9, 2013

Adidas’s Trademark Attorneys Seek Preliminary Injunction Against Clothing Counterfeiters

Trademark-attorney-preliminary-injunction-adidas-soccer-dilution.jpgAdidas is suing numerous apparel, clothing, and shoe sellers for trademark infringement, unfair competition, trademark dilution, and counterfeiting, including two defendants that previously settled similar allegations and are now accused of breaching the settlement agreement by continuing to sell allegedly infringing sportswear. Adidas is the owner of numerous U.S. Patent & Trademark Office registrations for its famous Three-Stripe trademark including Trademark Reg. No. 2,058,619 for shirts, Trademark Reg. No. 3,029,127 for sweatshirts, jackets and coats, Trademark Reg. No. 2,278,591 for shorts, and Trademark Reg. No. 1,815,956 for shoes, which consumers readily associate with Adidas. The complaint alleges:

adidas recently learned that Defendants are offering for sale and selling apparel bearing counterfeit and confusingly similar imitations of adidas's Three- Stripe Mark. Specifically, Defendants blatantly have copied adidas's Three-Stripe Mark to trade off of the goodwill and commercial magnetism adidas has built up in its mark. Defendants' actions are misleading and confusing the public, diluting adidas's famous mark, and irreparably harming adidas's goodwill and reputation. Accordingly, this Court should issue a preliminary injunction.

To obtain preliminary injunction in a trademark infringement case, the plaintiff must show that (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of preliminary relief, (3) the balance of equities tip in its favor, and (4) the injunction is in the public interest. Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009).

Adidas contends that it is likely to succeed on its trademark infringement, unfair competition, and trademark dilution claims because the trademark registrations establish ownership of the trademarks and the knock-off goods present a likelihood of confusion. Because it can show a likelihood of success on its trademark claims, Adidas relies on Ninth Circuit authority establishing a presumption of irreparable harm. GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1209 (9th Cir. 2000). Adidas argues that Defendants’ intentional infringement causes irreparable harm and outweighs defendants’ harm of being prohibited from selling counterfeit goods. Finally, Adidas states that consumers would be protected from confusion caused by the infringing goods.

The case is Adidas America, Inc. et al. v. Soccer and Soccer, Inc. et al., CV13-7148 GW (C.D. Cal. 2013).

September 25, 2013

Lichtenberg Brothers Suing Each Other Over Fashion Trademarks And Trade Secrets

fashion-apparel-trademark-attorney-infringement-design-hermes-homies.jpgFashion designer brotherly love – or hate – is demonstrated through a trademark infringement, trade secret misappropriation, unfair competition, intentional interference with contractual relations, defamation, libel, and slander lawsuit between brothers Brian Lictenberg and Christopher Lichtenberg and their respective companies. Brian alleges to be a successful designer and his designer parodies, substituting “Homiés” for “Hermés” and “Bucci” for “Gucci,” have become his claim to fame. Besides being possibly offensive to residents of South Central, depicting a man standing next to a broken down pick-up truck, it’s surprising that he hasn’t been sued for at least trademark dilution by these famous brands. Back to the regularly scheduled programming, this is not the first intra-family trademark infringement and trade secret misappropriation lawsuit.

This lawsuit, however, appears to be less about trademark infringement – which claim appears to weak – and more about vitriol. Brian claims that Christopher “continues to struggle with alcoholism, depression and various other psychological disorders, that have contributed to Christopher’s actions which have given rise to the causes of action set forth in this Complaint.” What Brian doesn’t realize is that slapping a word and design on the front of a t-shirt does not establish trademark rights. Indeed, this is such a major misconception among clothing designers that the U.S. Patent & Trademark Office has published an advice page on how to avoid merely ornamental refusals: “For example, a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan identified the source of the goods but would view the slogan only as a decoration on the goods.” In other words, if you want the slogan to function as a trademark, put it on the neck label or a hang tag. Thus, judging from the pictures herein, Brian’s trademark – as applied to the neck label – is BLTEE and not “BALLIN PARIS” which appears to be merely decorative. The Homies artwork, on the other hand, may be copyrightable but that’s an issue for another lawsuit, amended complaint, or counterclaim. But if Brian insists that his “Homies” parody is indeed his trademark, he may be opening himself up to a third-party trademark infringement lawsuit by the owner of the USPTO registered Homies apparel trademark.

Brian claims that after an email exchange with Kanye West where the word “Ballin” was used, Brian came up with the idea to create the “Ballin Paris” artwork as a purported parody of the “Balmain” trademark, using a similar font. Brian allegedly disclosed this information to Christopher and because he had “felt sorry for his younger brother’s failing [Alex & Chloe] business,” Christopher had been allowed to sell Brian’s merchandise on consignment as a favor. Christopher is accused of breaching the agreement to pay Brian for the merchandise sold on the Alex & Chloe website. And it’s alleged that Christopher “was a failed fashion and jewelry designer overshadowed by the financial and creative success of Brian” and, as a result, Chris’ “desperation for money caused him to set out to steal the “Ballin” parody design from Brian” and to create various “knock-off merchandise and apparel that look and feel identical to that of Brian’s products and designs.”

But what may be another problem for Brian is the allegation that Christopher worked as a part-time contractor on the Ballin project, which included “his usual graphic design duties as well as creating a mailing list.” Missing from the complaint and the exhibits is any notion that Christopher executed an independent contractor agreement -- which must be in writing -- affirming a work for hire relationship whereby all rights were transferred to Brian. Further, Brian’s admission that unrelated third-parties are also selling designer parodies, e.g. “Ballincieago,” may affect his “Ballin” ownership claim.

Brian also alleges that Christopher contacted Brian’s manufacturer and had knock-offs made and sold to Brian’s retailers, even going so far as sending a cease and desist letter to one of Brian’s retailers and asserting that Brian stole the design from Chris. Upon Brian’s discovery of Christopher’s communications with Brian’s customers and vendors, Christopher was sent a cease and desist letter on February 25, 2013. Because Christopher failed to cease his conduct, Brian filed the complaint. It appears, however, that Christopher first filed a complaint in Los Angeles Superior Court in March of this year, Case No. BC503835. A sentence from Brian’s complaint confirms that there will be no winners from either lawsuit: “While Defendants may profit from this malicious crusade, it will likely backfire such that all parties lose in a manner that is irreparable due to the small fashion world in which the parties operate.”

The case is Brian Lichtenberg, LLC v. Alex & Chloe, Inc. et al., CV13-06837 DDP (C.D. Cal. 2013).

August 16, 2013

Paris Hilton Sues Perfection Perfume For Trademark, Trade Dress, & Design Patent Infringement Over Perfume Bottle Packaging

attorney-trademark-trade-dress-design-patent-paris-hilton.jpgParis Hilton has teamed up with Parlux Fragrances to release her own perfume line and to also sue Perfection Perfume for trademark, trade dress, and patent infringement, in addition to unfair competition. Paris claims to be a worldwide owner of several trademarks used in connection with clothing, footwear, cosmetics, fragrances and watches. Speaking about watches, Paris was recently sued for patent infringement for allegedly copying watch designer de Grisogono’s patented Novantatre watch design. Back to Paris’ current case, she also claims to be an international celebrity, actress, fashion designer, musician and socialite, which has resulted in sales of millions of bottles of her fragrances. She also owns an incontestable US Patent & Trademark Office trademark registration for her Paris Hilton trademark for fragrances.

Paris contends that she has established a distinctive trade dress in the fragrances’ bottle, namely: “(i) cylindrical-shaped bottles; (ii) clear pink bottles for the women's fragrance and clear blue for the men's fragrance; (iii) a vertical black wave design overlaid on the bottle; and (iv) the brand name Paris Hilton written in black, lower case, and cursive font against a silver background.” She also contends to own trade dress rights in beauty products, consisting of (i) black tubes and (ii) the brand name Paris Hilton written in cursive lettering and displayed vertically in metallic pink (for women) or metallic blue (for men).” But we’re not done yet. The complaint also alleges trade dress rights for individual fragrances which includes: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in metallic silver, lower case, and cursive font running vertically up the right side of the box.” Almost finished. And finally, she also claims trade dress rights in the packaging for boxed gift sets comprising: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in silver, lower case, and cursive font running vertically up the right side of the box.”

Paris’ manufacturer, Parlux, is the owner of U.S. Patent No. D518,382, covering the ornamental features of the fragrance bottle, i.e. the transparent cylindrical bottle and cap with a helical pattern continuing around the surface of the bottle. The complaint alleges that defendant’s Los Angeles retail location sold a perfume that infringed the trademarks, trade dress, and design patent. The suit seeks unspecified damages.

PRACTICE NOTE: Trade dress is becoming a more ubiquitous form of intellectual property claim. Product packaging, for example the color and layout of the box enclosing the product, may be inherently distinctive and subject to immediate protection. A product design trade dress, which covers a product’s shape or configuration, usually requires a showing of secondary meaning to become protectable, i.e. the product design has been used and promoted sufficiently to form an association in the mind of consumers to denote the source of the product. Indeed, the Supreme Court noted, in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), that “[t]o the extent there are close cases, we believe that the courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning.”

The case is Paris Hilton et al. v. Perfection Perfume, CV13-05852 MRW (C.D. Cal. 2013).

July 26, 2013

Copyright & Trademark Infringement Lawsuit: Vigilante Project Comic Book v. Vigilante Diaries Show

los-angeles-copyright-attorney-trademark-comic-book-crowd-funding-vigilante-chill.jpgWriters and artists Christopher Dickens and Philip Morgenthaler are suing Chill, Inc. for copyright and trademark infringement over release of Chill’s “Vigilante Diaries” web based live action show. Plaintiffs claim they created a dark, graphic comic book story and distinct character titled “Vigilante Project,” wherein the protagonist is a young African American male named Alvin Gentry. No, not the basketball coach Alvin Gentry. This Gentry wears a hoodie and a skull mask covering the lower half of his face and camouflage attire with a sleeveless black undershirt along with fingerless gloves and military gear. Plaintiffs claim to have created a unique alternative to the classic superhero characters of conventional comic books because Gentry lacks any superhuman or preternatural powers.

Plaintiffs also contend that they have used a distinctive trademark as the title of the published comic books and t-shirts where the trademark is “denoted in bold, red letters that have a particular stylized look and feel, specifically all caps, red letters that have a distressed, worn and shredded appearance.” Plaintiffs have also described the character and the Vigilante Project, both through crowd-funding efforts and at comic book conventions, with the tagline “no cape, now cowl, now web, no problem.”

Chill is alleged to be funded by the venture capitalist firm of Kleiner Perkins and William Morris Endeavor talent agency, among others, and claims to be “the web’s premier video distribution platform for entertainment content direct from filmmakers, artists, and comedians.” Variety covered Chill’s crowd-funding approach to producing new episodes, where fans would pay to have the series continue production.

Plaintiffs claim that Chill’s vigilante character is also “a young African American man in a hoodie who wears a skull mask over the lower half of his face and dons a black sleeveless t-shirt and fingerless gloves and military gear to carry his weapons, all in a manner that is substantially similar to Plaintiffs’ Vigilante Character herein.” Also, in contradistinction to traditional superheroes, Defendants use a similar tagline of “no capes, no masks, no superpowers.” Further, Defendant’s “Vigilante Diaries” allegedly uses the same red stylized look and feel lettering as Plaintiff’s trademark.

As a result, Plaintiffs contend that “Defendants have therefore willfully infringed, and unless enjoined, will continue to infringe Plaintiffs’ copyrights by knowingly reproducing, displaying, distributing and utilizing for purposes of trade and promotion unauthorized derivative versions of the copyrighted works of Plaintiffs and the copyrighted elements therein.” Further, Plaintiffs allege that Defendants’ use of the confusingly similar Vigilante trademark, which includes the same stylized lettering look and feel, and even color, in addition to the use of a similar “no capes, no masks, no superpowers” slogan, has resulted in instances of actual confusion among consumers. Plaintiffs seek treble damages, attorneys’ fees, and costs for the alleged intentional trademark infringement claim.

The case is Dickens, et al. v. Chill, Inc., SACV13-01068 DOC (C.D. Cal. 2013).

June 29, 2013

Otterbox Trademark Infringement Lawsuits Filed In Los Angeles Against eBay Sellers

los-angeles-trademark-attorney-infringement-ebay-seller-otterbox.jpgLos Angeles, CA – The Otterbox trademark owner filed four trademark infringement lawsuits against several defendants for allegedly selling Smartphone and tablet cases bearing counterfeit Otterbox trademarks. Plaintiff manufactures protective cases, peripherals and accessories for the iPhone, iPad, iPod, Samsung, HTC and other electronic device and computer manufacturers. Plaintiff is the owner of U.S. Patent and Trademark Office registered Otterbox trademarks, “We’ve Got Technology Covered” trademark, and the “Defender Series” trademark. Plaintiff contends that it has spent millions of dollars in advertising to obtain consumer recognition of its trademarks as a symbol of quality.

Particularly in light of the success of Plaintiffs products, as well as the outstanding reputation they have gained, Plaintiff and its products have become targets for unscrupulous individuals and entities who wish to take a "free ride" on the goodwill, reputation and fame Plaintiff has spent considerable effort and resources to build up in their products and trademarks.

Plaintiff alleges that Defendants own and operate eBay storefronts advertising and selling unauthorized products that infringe its trademarks or bear counterfeit trademarks. One defendant is accused of selling at least $88,000 worth of infringing products.

To dissuade counterfeiters and intentional infringers, the Lanham Act allows a court to triple plaintiff’s damages or defendant’s profits and award attorneys’ fees and costs. 15 U.S.C. §1117(a). One of the advantages afforded an USPTO registered trademark owner is the ability to recover statutory damages where proving actual damages or defendant’s profits would be difficult or untenable. 17 U.S.C. §1117(d). The award of statutory damages can range, as the court considers just, from $1,000 to $200,000 per counterfeit trademark for innocent infringement and not more than $2,000,000 per counterfeit mark for willful infringement.

Attorneys’ fees and costs in trademark infringement cases are not automatically recoverable and are instead awarded in “exceptional” cases. There’s currently a split in the circuits as to what constitutes an “exceptional” case, including different standards for victorious plaintiffs and defendants. A relatively recent 7th Circuit case surveys and summarizes the varying rules of the federal circuits. Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626 F.3d 958, 960–961 (7th Cir. 2010). A word of caution to trademark plaintiffs in the 9th Circuit is warranted when considering election of actual damages or statutory damages. The 9th Circuit has held that attorney’s fees are not available to plaintiffs that elect statutory damages. K and N Engineering, Inc. v. Bulat, 510 F.3d 1079, 85 U.S.P.Q.2d 1372 (9th Cir. 2007) (“Section 1117(c) makes no provision for attorney's fees; nor does § 1117(b) authorize such fees for a plaintiff seeking statutory damages under § 1117(c). Section 1117(b)'s attorney's fees provision applies only in cases with actual damages under § 1117(a).”)

The cases are:
Otter Products, LLC v. TJEDIRECT, Inc. et al., CV13-04472 CAS (C.D. Cal. 2013);
Otter Products, LLC v. Pebble Holt et al., CV13-04470 CAS (C.D. Cal. 2013);
Otter Products, LLC v. Angel Luis Berrios, Jr. et al., CV13-04384 CAS (C.D. Cal. 2013); and
Otter Products, LLC v. Jared Hansen et al., CV13-03712 PA (C.D. Cal. 2013).