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).

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).

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).

February 11, 2012

Court Shoots Down Strip Club’s Rhino Trademark Lawsuit Against Gun Company

trademark-dismiss-confusion-spearmint-rhino-chiappa-firearms-gun.jpgIn an opinion that shocked no one except Spearmint Rhino, the Court dismissed WITH PREJUDICE – a rarity at such an early stage in litigation – the strip club operator’s trademark infringement case against Chiappa Firearms. Spearmint sued Chiappa for using a rhino outline as a trademark on its guns alleging that its use is “likely to cause confusion, or to cause mistake, or to deceive because, among other reasons, consumers are likely to believe that there is an affiliation, connection, or association between” Spearmint and Chiappa. As predicted, the Court disagreed with Spearmint because consumers are unlikely to confuse its G-strings with guns.

Chiappa filed a motion to dismiss the complaint, wherein the court is requested to decide whether, assuming all the allegations in the complaint are true, the plaintiff has still failed to present a case entitling it to damages. The Court, however, must consider whether the claim is plausible on its face based on alleged facts. Thus, a complaint which alleges only labels and conclusions to meet the elements of the cause of action will not survive dismissal. Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007).

To prevail on its trademark infringement claim, Spearmint had to show that it had a protectable trademark and that a “reasonably prudent consumer” is likely to be confused as to the origin of a good or service. DreamWerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1992). To evaluate likelihood of confusion, Courts analyze the following non-exhaustive factors including: (1) strength of the mark; (2) relatedness to the goods; (3) similarity of sight, sound, and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion. AMF, Inc. v. Sleekcraft Boats, 559 F.2d 341 (9th Cir. 1979).

Courts, as here, do not have to blindly believe the infringement allegations because a plaintiff has to show that likelihood of confusion must “be probable, not simply a possibility.” Murray v. Cable NBC, 82 F.3d 861 (9th Cir. 1996). If not shown, the Court may determine that likelihood of confusion does not exist as a matter of law. Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981).

The Court determined that Spearmint could not establish likelihood of confusion because “Plaintiff has not been able to demonstrate a single instance of actual consumer confusion, and indeed cannot show that any reasonable consumer is likely to be confused as to the relationship between these two companies. Plaintiff mainly provides services in the form of adult entertainment, while Defendants mainly provide goods in the form of handguns. It is highly unlikely that a consumer would accidentally purchase one when he intended to purchase the other.” In other words, because consumers are unlikely to be confused and shoot each other with G-strings, Spearmint’s trademark infringement claim failed as a matter of law. So, like clay pigeons, fell Spearmint’s false designation of origin and §17200 unfair competition claims.

Spearmint’s trademark dilution claim also fell in the Court’s crosshairs because although Rhino introduced evidence that its mark was “at least somewhat well known, it fails to assert sufficient facts to support a finding that the Rhino mark is famous under the Trademark Dilution Revision Act of 2006. Courts have consistently held that only the most truly prominent brands, such as Kodak, Coca Cola, Budweiser, or Barbie count as famous under the statute.”

The case is Spearmint Rhino Companies Worldwide, Inc. v. Chiappa Firearms, Ltd., et al., CV11-05682 R (C.D. Cal. 2011).

November 28, 2011

Twilight’s Bella Swan Wins Trademark and Copyright Infringement Lawsuit Over Jacket

Before last week’s release of Twilight Saga: Breaking Dawn Part 1, a trademark and copyright infringement lawsuit saga dawned on clothing manufacturer B.B. Dakota over the pictured Bella Jacket. Summit Entertainment, the producer of the Twilight franchise that has raked in more than $1 billion in gross revenues, owns several USPTO trademark registrations for the “TWILIGHT” and “BELLA” trademarks, including for use on clothing and jewelry. Summit of course also owns all copyrights in the movies in addition to marketing and publicity materials and the “Bella Trading Card Image.” Summit’s licensing of the intellectual property rights has grossed an additional $63 million.

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Defendant BB is a clothing manufacturer that sold the pictured women’s cargo jacket in 2006 under the “Leigh” mark, which was discontinued in 2008. When the Leigh jacket was worn by Bella in the 2009 Twilight movie, BB was credited as the manufacturer in an Entertainment Weekly article accompanying a photograph. BB’s outside public relations contractor then contacted Summit’s manager of national publicity requesting permission to re-publish the EW image on its website, which she included in an email link to EW’s website. Summit’s representative responded with a simple “OK.” A few days later, BB requested permission to allow for a retail store to use the image, to which Summit responded with one word: “sure”.

Without seeking further permission, however, BB created “hangtags” for the jackets that included not the Entertainment Weekly picture, but an image of Bella wearing the jacket that Summit had used to promote posters, clothing, and other merchandise. Apparently, BB’s own PR rep warned BB to obtain permission to use the new image, but BB failed to heed the warning and argued that by including “As seen in the Twilight movie” language on the tag would constitute fair use. Thus, BB’s sales representative emailed the image to two hundred of her sales accounts representing that BB had permission to use the image on the hangtag and to publicize the product. The retailers in turn sent out email blasts using the Bella image with the belief that BB had properly licensed it. Summit sent cease and desist letters to BB’s retailers, after which BB instructed them to cut the hang tags from existing inventory and provided a substitute picture of a girl resembling the Bella character. To make matters worse, BB continued to refer to the jacket as the “Twilight jacket.”

Metropark, one of BB’s retailers, filed bankruptcy and ModCloth settled the matter. BB countersued Summit for trade dress infringement and unfair competition. Summit filed for summary judgment of liability on its trademark and copyright infringement, and trademark dilution claims and on BB’s counterclaims.

Continue reading "Twilight’s Bella Swan Wins Trademark and Copyright Infringement Lawsuit Over Jacket" »

June 7, 2011

Shoe Designer Jeffrey Campbell Sues Forever 21 For Copying Six Shoe Styles

Los Angeles, CA – Following the trend of fashion designers filing trade dress infringement lawsuits to protect designs not covered by copyright law, Jeffrey Campbell is suing Forever 21 for allegedly copying six shoe designs. Like Givenchy v. BCBG and Marc Jacobs v. Christian Audigier before it, Jeffrey Campbell is forced to use trade dress law to protect its designs because copyright law views fashion products, for example pursues and shoes, as useful articles that cannot be copyrighted. Unlike UGG, however, many fashion designers are unaware that fashion designs can be protected through design patents, which must be filed within one year of the design’s public disclosure. Without a design patent, Jeffrey Campbell must now attempt the tougher climb of proving trade dress infringement.


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Jeffrey Campbell claims that its shoe designs “have become the footwear brand to know in the United States” over the last ten years and that customers, based on extensive marketing and advertising, recognize the shoe designs as Jeffrey Campbell’s trade dress. Plaintiff contends that Forever 21, “having a business model that . . . focuses on selling knockoffs or cheaper copies of products designed by higher-end fashion companies,” has intentionally copied the Cast Sandal, 99 Boot, Splendid Sandal, City Wrap Boot, Alicia Fur Boot, and Swansong Sandal. Jeffrey Campbell also asserts that Forever 21’s intentional copying violates federal and state unfair competition laws. The amount of monetary damages are currently unknown to Plaintiff, but it is also seeking a permanent injunction to prevent Forever 21's future sales of the shoe designs.

The case is Jeffrey Campbell LLC v. Forever 21, Inc., CV11-04619 SJO (C.D. Cal. 2011).

May 17, 2011

DC Shoes Sues Over OG Kush Trademark, Parody Defense Likely

trademark-parody-defense-dc-shoes-dg-kush-marijuana-lawyer.jpgSanta Ana, CA – Apparel and footwear manufacturer DC Shoes, Inc. owns several USPTO registered trademarks for DC Shoes logos and DCSHOECOUSA. DC Shoes contends that through its widespread use and advertisements of its products, the marks have become famous. Owning trademarks, however, doesn’t mean you should always sue purported infringers that have a valid parody defense that can possibly invite public backlash.

DC Shoes accuses IQ 185 of operating an online store – www.notforpot.com – that sells marijuana-related apparel and accessories, including T-shirts and hats bearing allegedly infringing trademarks. The accused logos, pictured here, “include the interlocking letters ‘O’ and ‘G’ and a [marijuana] leaf, and ‘OGKUSHUSA’.” (Definition of kush, here.) Plaintiff claims that it sent a cease and desist letter to Defendant regarding the allegedly infringing products, but Defendant ignored DC Shoes’ demand. So DC thought it would be a good idea to file a lawsuit for trademark infringement, dilution, and unfair competition to attract more attention to Defendant’s sale of products that are protected by the First Amendment and the parody defense.

Two recent cases illustrate that a parody defense can be successfully used and sometimes provide the defendants with more positive publicity than the plaintiff imagined. In Louis Vuitton v. Haute Diggity Dog the appellate court sided with a parody pet product maker that used clever names such as Chewy Vuiton, Bark Jacobs, Sniffany & Co., and Dog Perignon. In another David v. Goliath battle, The North Face unwisely sued a high school kid for selling garments under the witty South Butt trademark. Not content with harassing a kid with a trademark lawsuit, The North Face wanted further bad publicity by overzealously attacking him and his father during depositions. In the end, however, the South Butt case settled and the kid was allowed to continue selling his T-shirts, butt but not without providing an amusing response to the complaint.

At the heart of every trademark case is consumer confusion, i.e. no confusion = no infringement. Does DC Shoes seriously believe that consumers purchasing weed parody T-shirts from defendant's website are likely to be confused that they're purchasing DC Shoes products? The case is DC Shoes, Inc. v. IQ 185 Apparel, SACV11-00721 AG (C.D. Cal. 2011).

May 2, 2011

Copyright Infringement Claim Against Gillette and EA Sports Should Be an Idea Submission Claim

idea-submission-attorney-implied-in-fact-contract-copyright-ea-sports-gillette-voss-knotts.jpgSan Diego, CA – Ron Voss is suing Gillette and EA Sports for copyright infringement and unfair competition, but judging from the facts of the case, he should have asserted an idea submission or an implied in fact contract claim. People mistakenly believe that a copyright registration protects the “idea” contained therein, instead of the particular expression. In fact, §102 of the Copyright Act specifically states that copyright protection does not extend to any “idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”

Voss alleges that he wrote and copyrighted a treatment entitled “Cyber Sports Championship Challenge,” which concept involves televising video game tournaments that pit gamers against celebrities and famous sports stars as contestants. Voss contends that co-defendant Jerry Knotts “misappropriated [the copyrighted work] and delivered it to EA. Afterward, EA and other defendants infringed Mr. Voss’ copyright by creating and distributing on commercial television (via the Spike Channel) and the World Wide Web “Gillette®-EA Sports™ Present Champions of Gaming powered by Xbox 360 LIVE” (the “program”).” The complaint, however, fails to specify how the expression of the copyrighted work was copied, separate and apart from the alleged “misappropriation” of the general idea. Plaintiff’s §17200 unfair competition claim is based on the copyright infringement facts and is preempted. Fractional Villas, Inc. v. Tahoe Clubhouse, 2009 U.S. Dist. Lexis 39522 (S.D. Cal. 2009)(dismissing § 17200 claim because it was preempted by the Copyright Act).

The 9th Circuit has yet to rule after the en banc rehearing of the “Ghost Hunters” case, Montz v. Pilgrim Films & Television, Inc. The three-judge panel affirmed the district court’s order that Montz’s implied in fact contract claim was preempted by the Copyright Act. Montz v. Pilgrim Films & Television, Inc., 606 F.3d 1153 (9th Cir. 2010) (non-citable). The Court sua sponte ordered an en banc rehearing of the case and withdrew the three-judge panel’s published opinion. Based on the en banc panel’s questioning, I – as a non-clairvoyant – predict a reversal of the district court’s ruling and a finding that Montz’s idea submission claim is not preempted by the Copyright Act, in line with Grosso v. Miramax Film Corp., 383 F.3d 965 (9th Cir.2004) and Desny v. Wilder, 46 Cal.2d 715, 299 P.2d 257 (1956). Watch the video of the Ninth Circuit's en banc rehearing:

The case is Ron G. Voss v. Jerry E. Knotts, et al., CV11-0842 H WMc (S.D. Cal. 2011).

February 27, 2011

Trademark Infringement Lawsuit Against eBay Sellers’ Candyshell Cases For Electronics

trademark-sue-ebay-sellers-candyshell-speck-speculative-design-cases.pngLos Angeles, CA – Speck Products manufactures carrying cases for electronic devices, including the iPad, iPhone, iPod, and Blackberry. The products are sold bearing the Speck® or Candyshell® trademarks. Last week, Speck filed numerous trademark infringement and unfair competition lawsuits against numerous eBay sellers alleging sales of counterfeit electronic device cases. Plaintiff alleges that “Defendants use images and names confusingly similar or identical to Plaintiff’s Marks to confuse consumer and aid in the promotion and sales of its unauthorized and counterfeit product.”

One of the numerous cases is Speculative Product Design, Inc. v. PPG Enterprize, CV1100160 VBF (C.D. Cal. 2011).