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).

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).