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).

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).

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).

March 27, 2011

Zumba Fitness Sues Trademark and Copyright Infringement and Counterfeiting

fitness-dvd-copyright-trademark-attorney-ebay-zumba.jpgLos Angeles, CA – Zumba Fitness has filed several lawsuits accusing eBay sellers of counterfeiting its fitness DVDs and infringing its trademarks and copyrights. Zumba® Fitness is a Latin-inspired dance-fitness program that combines international music with dance steps to create an aerobic exercise regimen. Plaintiff alleges that over 10 million people take weekly Zumba classes worldwide. Plaintiff owns numerous copyright registrations and USPTO trademark registrations for Zumba related products and services.

Plaintiff alleges that in its ongoing investigation of counterfeit sales of Zumba products, its private investigator purchased an allegedly counterfeit “Zumba 4 DVD Box Set” from the Defendants. “The inspection of the purchased item confirmed that the item Defendants sold to the investigator was in fact a counterfeit and an unauthorized Zumba 4 DVD Box Set.” Plaintiff also asserts claims for unfair competition, trademark dilution, and unjust enrichment.

The case is Zumba Fitness, LLC v. Brenda Buxton, CV11-02135 CAS (C.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).

January 7, 2011

Monster Cable Files Numerous Trademark Lawsuits Against eBay Sellers Of Monster Electronic Products

monster-cable-trademark-infringement-lawsuit-los-angeles-california-court.jpgLos Angeles, CA – Trademark bully Monster Cable, as it has been anointed by others here and here, seems to be on a trademark infringement lawsuit rampage against eBay sellers of monster products. Maybe the slew of trademark lawsuits is in response to the court’s denial of the temporary restraining order in its and Beats Electronics’ design patent lawsuit against Fanny Wang Headphone company.

Whatever the reason, it’s interesting that among the six causes of action for trademark infringement, dilution, etc., there is no cause of action for trademark counterfeiting. Even more so when the complaint alleges that Monster Cable’s private investigator purchased the items on eBay, they were tested, and deemed to be counterfeit: “Defendant has, without the consent of Plaintiff, offered to sell and sold within the United States (including within this judicial district) goods that were neither made by Plaintiff nor by a manufacturer authorized by Plaintiff (such goods are hereafter referred to as “Counterfeit Goods”).” Maybe Monster Cable’s perplexing strategy will crystallize as the cases proceed to trial, assuming the eBay sellers can afford to mount a defense against this alleged trademark bully.

The case is Monster Cable Products, Inc. v. Wireovia, LLC et al., CV10-10010 DSF (C.D. Cal. 2010).

September 20, 2010

Pepsi Sues SPE Trading For Importing Into U.S. Gray Market Manzanita Sol® From Mexico

US-trademark-attorney-gray-market-manzanita-sol-pepsi-USA-mexico.jpgLos Angeles, CA – Pepsi’s subsidiary owns the Manzanita Sol® trademark that is used on apple flavored soft drinks. Manzanita Sol® is Pepsi’s second most popular brand in Mexico. Pepsi has sold in the U.S. millions of dollars worth of Manzanita Sol® sodas through its authorized bottlers.

Pepsi accuses SPE Trading of importing soft drinks manufactured in Mexico bearing the Pepsi® and Manzanita Sol® trademarks that Pepsi does not authorize for sale in the U.S. Pepsi alleges that the Mexican product sold by SPE is materially different in many respect from authorized products sold in the U.S., e.g. the Mexican product does not comply with the labeling regulations of the Food and Drug Administration. Pepsi alleges that in response to a cease and desist letter, SPE had previously agreed to stop importing and selling the gray market product. But based upon alleged recent purchases of the gray market Manzanita Sol® product, Pepsi filed the instant trademark infringement and dilution action. The case is Pepsico, Inc. et al. v. SPE Trading, Inc., CV10-6833 DDP (C.D. Cal. 2010).

PRACTICE NOTE: U.S. trademark owners can prevent the importation and/or sale of gray goods that are “materially different” from those sold in the U.S. In determining what is considered “materially different,” 19 C.F.R. § 133.2(e) provides the following non-exclusive considerations: "(1) The specific composition of both the authorized and gray market product(s) (including chemical composition); (2) Formulation, product construction, structure, or composite product components, of both the authorized and gray market product; (3) Performance and/or operational characteristics of both the authorized and gray market product; (4) Differences resulting from legal or regulatory requirements, certification, etc.; [and] (5) Other distinguishing and explicitly defined factors that would likely result in consumer deception or confusion as proscribed under applicable law." Also, PepsiCo, Inc. v. Pacific Produce, Ltd., 2000 U.S. Dist. LEXIS 12085 (D. Nev. 2000) cites cases where failure to comply with FDA labeling regulations constituted a material difference.

August 5, 2010

Moroccanoil Sues For Trademark Infringement Over Hair Care Products

trademark-attorney-hair-care-beauty-salon-oil-conditioner.jpgLos Angeles, CA – Moroccanoil manufactures “salon only” hair care products under its Moroccanioil®, “M Moroccanoil Design” and “Vertical Moroccanoil M Design” trademarks, which are all registered with the USPTO. Through its distribution arrangements Moroccanoil restricts the sale of its products to professional salons and licensed cosmetologists.

Defendant Beauty Encounter is accused of selling counterfeit Moroccanoil products through the www.beautyencounter.com and www.perfumeshop.com websites. Plaintiffs allege that they conducted chemical testing of Defendant’s products and determined that they had “distinctly different chemical and physical properties that do not match genuine Moroccanoil Oil Treatment.” Further, the complaint states that because Defendants cannot legitimately obtain genuine products from authorized distributors, “Defendants encourage Moroccanoil distributors and salons to cheat Plaintiffs by encouraging the distributors to order more Moroccanoil Products than the distributor or any salon needs. The excess Moroccanoil Products are then sold, directly or indirectly, to Defendants.” Thus, in addition to the trademark related claims, Plaintiffs assert interference with contractual relations and prospective advantage claims. The case is Moroccanoil, Inc. v. Beauty Encounter, Inc., CV10-5696 SVW (C.D. Cal. 2010).

April 28, 2010

InStyler® Hair Brush Products Subject of Copyright and Trademark Infringement Lawsuits

copyright-attorney-trademark-instyler-hair-beauty-product.jpgLos Angeles, CA – Tre Milano is the owner of the InStyler® trademark and several copyrights used in the sale and advertising of its hair styling product, including a copyright registration for its www.getinstyler.com website. You may have seen one of its infomercials for its “rotating iron” hair brush, a hair product that combines a hair brush and rotating hot iron to curl, straighten, and style hair. Since its first sale in June of 2008, Plaintiff contends that it has spent $30,000,000.00 to air its television infomercials and $5,000,000.00 on print and internet advertising. As a result, Plaintiff asserts that its trademark has become famous.

Plaintiff asserts that its investigator purchased an “InStyler” rotating hot iron from Defendants’ eBay listing for $65.99, which was charged to the investigator's PayPal account. In advertising and selling the "InStyler" products, Plaintiff further contends that Defendants use images that infringe on Plaintiff’s copyrights and use trademarks that are confusingly similar to Plaintiff’s. In addition to the trademark and copyright infringement causes of action, Plaintiff also asserts Lanham Act and § 17200 unfair completion, trademark dilution, accounting, and unjust infringement causes of action. The case is Tre Milano, Inc. v. Daryl Ewald et al., CV10-2849 SVW (C.D. Cal. 2010).

January 27, 2010

Jury Trial Begins In Upper Deck Yu Gi Oh! Counterfeiting Case

UPDATE 1/27/2010: Upper Deck settles Yu Gi Oh! counterfeiting case. Details here.

trademark-attorney-yu-gi-oh-counterfeit-upper-deck.pngLos Angeles, CA – Despite the Court’s finding that Upper Deck counterfeited Yu Gi Oh! cards (details here) and advising the parties to settle the damages phase through mediation, the jury trial to determine damages has commenced (Court’s calendar is here). If there ever was a case to settle early to avoid damage to a company’s reputation – which reputation and lifeline is founded on authenticating autographs and memorabilia, this would have been it.

The Cult-Stuff provides a chronology of events in the Konami v. Upper Deck Yu Gi Oh! counterfeiting battle here.

The case is Konami Digital Entertainment, Inc. v. Vintage Sports Cards, Inc. et al., CV08-06630 VBF (C.D. Cal. 2008)