May 12, 2008

Los Angeles, CA: Trademark And Copyright Attorneys For Guru Denim/True Religion Apparel Sue To Stop Copying Of Jeans And To Protect Against Fakes/Counterfeits

Los Angeles, CA – Trademark and copyright attorneys for Guru Denim, a subsidiary of True Religion Apparel, filed a trademark infringement, copyright infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles to stop copying of its jeans and sales of fakes and counterfeits. Guru Denim has sought copyright, patent, and trademark protection on its garments and jeans. Guru Denim owns U.S. Patent No. D547530 for the stitch pattern applied to True Religion Brand Jeans pants. Guru Denim owns two U.S. Copyright Registrations for the True Religion Brand Jeans Designs, Copyright Certificate of Registration numbers VA1-192-834 and VA1-301-845.

attorneys-jeans-denim-apparel-copying-trademark-design-copyright-patent-true-religion.jpgGuru Denim owns a USPTO registered trademark for the “True Religion Brand Jeans World Tour Fashion for the Senses Section Row Seat.” Also, Guru Denim “owns registered United States trademarks in the pocket stitching pattern that appears on True Religion Brand Jeans pants and the overall stitching pattern on the front of True Religion Brand Jeans pants.” Guru Denim has also registered 4 USPTO registered trademarks for “True Religion Brand Jeans” with assorted designs. Finally, Guru Denim has registered its “True Religion” word marks with the USPTO . Guru Denim’s “line of ‘super-premium’ denim wear, which ranges in retail price from $170.00 to in excess of $300.00, is acclaimed in the fashion industry due to its famous name recognition which represents quality and distinguished craftsmanship. Each piece of clothing or pair of denim distributed under the Mark bears an emblem of a smiling Buddha strumming a guitar and, in some occasions, is elaborately embroidered.”

Guru Denim discovered that numerous defendants were selling allegedly fake and counterfeit jeans on their Websites. The complaint asserts that Guru Denims investigator purchased a True Religion pair of jeans from the denimbutt.com website for $129.00 plus a shipping cost of $1.95, where the defendant causes confusion by claiming that it is “committed to selling only first-quality, genuine designer fashions (sic) items, clothes and accessories.” The complaint continues that Guru Denim’s “inspection of the purchased item using security measures confirmed that the item Defendants sold to the investigator was in fact a counterfeit pair of True Religion Brand Jeans denim pants.”

The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. §1114; (2) Federal copyright infringement under 17 U.S.C. §501; (3) False designation of origin under 15 U.S.C. §1125(a); (4) Trademark dilution under 15 U.S.C. §1125(c) and California Business & Professions Code §14330; (5) Common law copyright infringement under California Civil Code §980; (6) Unfair business practices under California Business & Professions Code §17200; and (7) Unjust enrichment. The case is titled Guru Denim, Inc. v. Simon Halwani, et al., CV 08-02803 FMC (C.D. Cal. 2008).

PRACTICE NOTE: Guru Denim has used different forms of intellectual property to provide broadest protection to its business and products. Patent, trademark and copyright protection can overlap and protect different aspects of the product and business and prevent unfair competition and infringing conduct.

The complaint lists the following additional defendants: thedenimbutt.com, Jeans & Company, Joymic Corp., Digitally Discovered, Joseph Barsano, thedenimspa.com, denimliquidators.com, denimbuys.com, Denim Buy Liquidators, Jizzle Tech, and lovebubbleclothing.com.

April 30, 2008

Los Angeles, CA: Trademark Infringement Lawsuit Filed By Chanel To Stop Sales Of Allegedly Counterfeit Purses And Handbags: Attorney

Los Angeles, CA – Trademark attorneys for Chanel, Inc. filed a trademark infringement lawsuit in Federal District Court in Los Angeles alleging sales of counterfeit handbags and purses and asks the Court to stop the infringement. Chanel has used its Chanel and CC Monogram trademarks for many years on accessories, including handbags, purses, and wallets. Chanel owns numerous Chanel related trademarks and has federally registered them with the USPTO. Chanel’s brand/trademarks “are symbols of Chanel’s quality, reputation, and goodwill and have never been abandoned.”

chanel5.jpgThe complaint alleges that defendants are selling lower quality imitations of Chanel’s handbags and wallets, which bear counterfeit Chanel trademarks. The complaint asserts that the Defendants are offering the counterfeit goods on their websites: www.gqbags.com and www.ultimatehandbags.com. The websites offer handbags for sale that are substantially less expensive than authentic Chanel products. “The net effect of the Defendants’ actions will be to result in the confusion of consumers who will believe the Defendants’ Counterfeit Goods are genuine goods originating from and approved by Chanel.” Chanel believes that the defendants are engaging in the sale of counterfeit goods intentionally and willfully. The complaint alleges causes of action for trademark infringement and counterfeiting under section 32 of the Lanham Act, 15 U.S.C. § 114, and false designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled: Chanel, Inc. v. Kimberli Hunter, et al., CV08-02226 GHK (C.D. Cal. 2008).

April 16, 2008

Glendale, CA: Trademark Attorneys File Trademark Infringement And Lanham Act Unfair Competition Lawsuit To Protect Nike’s Trademarks Used On Shoes

Glendale, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit to protect Nike, Inc.’s footwear and shoe related trademarks in Los Angeles Federal District Court. Nike has registered numerous trademarks with the USPTO for footwear and clothing. The complaint states that “Nike uses these trademarks on shoes and apparel as trademarks of Nike’s high quality products. Nike sells in excess of $4,500,000,000 a year in merchandise bearing distinctive trademarks.”

air-jordan-trademark-attorney-glendale.jpgNike alleges that the two defendants own and transact business on the www.airjordanstore.com and www.air-jordan-store.com websites. Upon determination that the products sold by the defendants were allegedly unlicensed and counterfeit products, Nike filed the lawsuit to “combat the willful sale of unlicensed and counterfeit products (“Infringing Product”), specifically including its core product of sports shoes, bearing Nike’s exclusive trademarks.” The complaint asserts the following causes of action: (1) Trademark infringement 15 U.S.C. § 1114 and 15 U.S.C. § 1125; (2) Unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Lanham Act dilution of famous trademark under 15 U.S.C. § 1125(c); (4) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (5) Dilution California law Cal. Bus. & Prof. Code § 14330. The case is titled Nike, Inc. v. Michael Masjuan, et al., CV08-01889 JFW (C.D. California).

April 15, 2008

Beverly Hills Trademark Attorneys File Trademark Infringement And Unfair Competition Lawsuit On Behalf of Venice, CA Based Mad Dogg Athletics Against Importer Regarding Use Of Its Exercise Equipment Trademark

Beverly Hills, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit against J&B Importers, Inc. to protect Mad Dogg Athletics’ exercise equipment trademark, in Los Angeles Federal District Court, alleging infringement of its USPTO registered trademarks. Mad Dogg Athletics registered its Spinning® trademark for use with “fitness education and traning program for use in connection with indoor cycling via stationary exercise bicycles. Mad Dogg Athletics also registered its Spintech® trademark for use on “stationary exercise bicycles and accessories related thereto, specifically, bicycle cleaning preparations and lubricants.”

The complaint alleges that J&B Importers has used Madd Dog Athletics’ Spintech® trademark on counterfeit bicycle lubricants. Plaintiff alleges that the activities of Defendant “constitute willful and intentional counterfeiting.” The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. §§ 1114; (2) Federal unfair competition and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (4) Constructive Trust Under Cal. Civ. Code § 2224. The case is titled Mad Dogg Athletics, Inc. v. J & B Importers, Inc., CV08-01717 SVW (Central District Of California).

April 8, 2008

Hollywood Trademark Attorneys File Trademark Infringement Lawsuit Over Quiksilver’s USPTO Registered Trademarks

Hollywood, CA – Trademark attorneys file trademark infringement, trademark dilution, and Lanham Act 43(a) unfair competition lawsuit, on behalf of Quiksilver, in Los Angeles Federal District Court, against Walmart, alleging infringement of Quiksilver’s USPTO registered trademarks. Quicksilver has filed a family of “Roxy” trademark applications and received registration certificates from the USPTO. Plaintiff also claims that it has spent substantial sums in advertising its products bearing the Roxy trademarks such that the trademarks have become famous in the minds of consumers. The complaint alleges that Quiksilver’s investigator surveyed Wal-Mart stores and discovered sweatshirts bearing counterfeit trademarks. Also, Plaintiff alleges that Wal-Mart is not authorized to sell its Roxy trademarked products. The case is titled Quiksilver, Inc. v. Wal-Mart Stores, Inc., CV08-01791 DSF (C.D. California).

April 1, 2008

Los Angeles Trademark Attorneys File Trademark Infringement And Lanham Act 43(a) Lawsuit Over Infringement Of Dell’s USPTO Registered Trademarks Against Unauthorized Resellers

Los Angeles, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit, on behalf of Dell, in Los Angeles Federal District Court, alleging infringement of Dell’s USPTO registered trademarks against resellers. Dell has been selling personal computers since 1984 and has registered its Dell trademark and variations thereof in more than 180 countries worldwide, and has more than thirty United States federal trademark registrations containing the term Dell. Since its inception, Dell has primarily used a direct sales model to sell directly to consumers rather than through retail outlets, first through telephone and also the Internet. Dell, however, permits a limited number of authorized resellers, which have to abide by Dell’s reseller terms and conditions.

Dell-trademark-logo.bmpDell alleges that the four individual defendants enrolled in Dell’s reseller program and became bound by the resale terms, where “defendants agreed (1) to refrain from unauthorized use of Dell’s trademarks; (2) not to resell Dell product without first adding value through the addition of hardware, software, or services; (3) not to resell Dell product on auction-type websites [such as eBay]; and (4) to resell their Dell product to small and medium businesses.” The complaint alleges that the defendants have used aliases to purchase Dell products and sold them through unauthorized trade channels and on eBay in violation of the reseller agreement and have made misrepresentations and misused Dell’s trademarks. For example, the defendants have allegedly sold products on eBay as “new” when they were, in fact, refurbished. The complaint asserts that “Defendants have, through their scheme of deliberate misrepresentation and concealment, purchased millions of dollars worth of Dell products from Dell and resold such product in breach of their contractual obligations to Dell and in violation of Dell’s trademark rights.” The complaint alleges the following causes of action: (1) Trademark counterfeiting and infringement 15 U.S.C. §§ 1114; (2) Unfair competition and false advertising under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Trademark dilution under the Lanham Act section 43, 15 U.S.C. § 1125(c); (4) Unfair competition and false advertising under Cal. Bus. & Prof. Code §§ 17200 and 17500; (5) Unjust enrichment; (6) Breach of contract; (7) Fraud; and, (8) Civil conspiracy. The case is titled Dell, Inc. v. Kizun, et al., CV08-01821 JSL (C.D. California)

March 25, 2008

Los Angeles Franchise Law Attorneys File Lawsuit Against Culver City Dairy Queen Franchisee For Trademark Infringement And Breach Of Franchising Agreement

Los Angeles, CA - Trademark and franchise law attorneys filed a lawsuit on behalf of the Dairy Queen® franchisor against a Culver City franchisee for allegedly breaching the franchising agreement and for trademark infringement. Dairy Queen’s trademarks have been registered with the USPTO and since the 1940’s have been franchised or licensed for use on ice cream, dairy products, and other consumables. In this case, Defendant Lee had executed two franchising agreements and licensed the rights to use Dairy Queen’s numerous trademarks. The franchising agreements require the franchisee to maintain the store at a specific standard, follow operating procedures, pay a monthly license fee, pay a lease administration fee, and pay a sales promotion program fee.

dairyqueen.jpgThe complaint continues that the franchisee must also agree to allow Dairy Queen to audit the financial records to determine whether the proper amount of the licensing fee is being paid. If any of these franchising terms were not met and cured, it would constitute a default and the franchise rights would be terminated. After termination, the franchisee would agree to immediately cease the use and display of all of Dairy Queen’s trademarks. The terminated franchisee would also need to pay a termination fee to compensate Dairy Queen for the early termination of the franchising agreement. The complaint alleges that defendant Lee failed to comply with the upkeep standards set by Dairy Queen for its franchisee’s location and was given 60 days to correct the deficiencies, which went uncorrected. The complaint also alleges that, after an audit, it was determined that Lee underpaid Dairy Queen by $16,911.84, which Lee failed to pay after receiving notice. The complaint alleges the following causes of action: (1) Trademark infringement of USPTO registered trademarks; (2) False designation of origin under the Lanham Act 43(a) (15 U.S.C. 1125(a)); (3) Federal trademark dilution of famous trademarks under the Lanham Act 43(c) (15 U.S.C. 1125(c)); (4) Trademark counterfeiting; and (5) Breach of contract. The case is titled American Dairy Queen Corporation and DQF, Inc., v. Myung Taek Lee, CV08-01505 AHM (C.D. California).

March 18, 2008

Glendale California Trademark Lawyer Files Lawsuit On Behalf Of Nike Over Sales Of Counterfeit Shoes And Designs

Los Angeles, CA – Glendale, California trademark attorney files, on behalf of Nike, a trademark infringement, Lanham Act unfair competition, Lanham Act dilution of famous trademark, section 17200 unfair competition, and dilution under California law complaint in Los Angeles Federal District Court. Nike is combating the willful sale of unlicensed and counterfeit products that bear Nike’s numerous trademarks registered with the USPTO. Nike alleges that it sells over 4.5 billion dollars of merchandise a year all of which bear Nike’s famous trademarks.

nike_swoosh.jpgNike alleges that two individual defendants manufacture, distribute, and or sell counterfeit footwear bearing the Nike trademarks through several websites. Nike alleges that the two individual defendants are residents of Long Beach, California and base their counterfeiting operations there. Nike’s federal trademark infringement arises under Sections 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 and 1125. Nike’s Lanham Act – unfair competition claim arises under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and (d) for false designation of origin and false descriptions and representations in interstate commerce. Nike’s dilution of famous marks arises under the Lanham Act section 43, 15 U.S.C. § 1125(c). The case is titled Nike, Inc. v. Nyla Kauv, CV08-01404 ODW (C.D. California)

March 3, 2008

Funrise Toys Sues Over Copyright and Trademark Infringement Of Its Bubble Toy Machine In Los Angeles

Los Angeles, CA – A copyright infringement, trademark infringement, Lanham Act unfair competition, and section 17200 complaint was filed in United States District Court, Los Angeles, by Hong Kong based Funrise Toys, Inc. over sales of allegedly infringing toys by defendants doing business as Aahs stores. Funrise Toys has federally registered trademarks for its “Gazillion Bubbles” word mark, bottle design trade dress, wand design trade dress, and machine design trade dress. Funrise Toys also claims to have trade dress and copyrights in the box packaging, in addition to the wand, machine, and bottle, for which it has received several copyright registration certificates. Funrise Toys also asserts that it has registered trademark rights in the green and purple colors used in the toys.

Funrise-toys-gazillion-bubbles.jpgThe complaint alleges that the Aahs defendants manufacture and sell bubble machines which are substantially copied from the plaintiff’s “Gazillion Bubble Machine and box packaging and Defendants Aahs’ bubble bottle and wand is substantially copied from and contains the same physical appearance and features as the trade dress of” Plaintiff’s products or is a reproduction, counterfeit, copy, or colorable imitation thereof. Plaintiff further alleges that that defendants’ infringing product “is likely to, was intended to, and did cause confusion or mistake or to deceive the relevant trade and the public into believing that the” infringing product is “sponsored by, authorized by, associated with, originates from, and/or is in some way connected with or licensed by Plaintiff.” Plaintiff continues that the infringement was willful and intentional to trade upon plaintiff’s goodwill and reputation and asks for enhanced damages and attorneys’ fees. Plaintiff also asserts causes of action for Lanham Act unfair competition Section 43(a), and unfair competition under California Business and Professions Code § 17200. The case is titled: Funrise, Inc. v. Bhasin Enterprises, Inc., CV08-01117 DSF (C.D. California February 20, 2008).

February 27, 2008

Chanel Sues Over Counterfeit Jewelry That Infringe On Its Trademarks and Trade Dress In Riverside, California

Los Angeles, CA – On February 20, 2008, Chanel, Inc., the luxury goods company, filed a complaint for counterfeiting, trademark infringement, and Lanham Act 43(a) unfair competition against numerous individuals in the California Central District Court – Eastern Division, in Riverside. Chanel asserts that it is the owner of the USPTO registered trademarks CHANEL and the CC MONOGRAM for use on necklaces and costume jewelry, including earrings, rings, bracelets, and pendants in International Classes 14 and 28. Chanel asserts that its trademarks are “symbols of Plaintiff’s quality, reputation, and goodwill” and customers “readily identify merchandise bearing the Chanel Marks as being high quality merchandise sponsored and approved by Chanel.”

chanel-monogram.gifChanel alleges that Defendants are “promoting, and or otherwise advertising, distributing, selling, and/or offering for sale counterfeit products, including at least necklaces and costume jewelry bearing trademarks which are exact copies of Chanel Marks” and are counterfeit, lower quality goods that also incorporate Chanel’s trade dress. The complaint further alleges that the “net effect of Defendants’ actions is to confuse consumers who will believe Defendants’ Counterfeit Goods are genuine goods originating from and approved by Chanel.” In addition to preliminary and permanent injunctive relief, Chanel seeks three times its actual damages under 15 U.S.C. § 1117, or, at its election, seeks statutory damages of $1,000,000.00 (one million dollars) from each defendant under 15 U.S.C. § 1117(c)(2) of the Lanham Act. The case is styled as Chanel, Inc. v. Kin Fung Poon et al., EDCV08-0224 VAP (CD CA 2008).

PRACTICE NOTE: The Ninth Circuit Court of Appeals recently held that if a trademark owner seeks counterfeiting statutory damages under 15 U.S.C. 1117(c) – instead of actual damages, then it is not entitled to attorneys’ fees under section 1117(b). K and N Engineering, Inc. v. Bulat, 510 F.3d 1079, 1081 (9th Cir. 2007). The Ninth Circuit vacated the trial court’s award of $100,000 to K and N, but let stand the $20,000 in statutory damages. In counterfeiting cases where the actual damages are low, Plaintiffs must weigh the option of receiving lower actual damages and their attorneys’ fees, against the award of higher statutory damages and no attorneys’ fees.