Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – OPI Products sued Beauty Treats International Co. for trademark and trade dress infringement and unfair competition over its sale of nail care products. Plaintiff has registered its OPI word mark and its bottle design mark with the USPTO. Plaintiff alleges that it began using the word mark in 1981 and the subject bottle design mark in 1992. Plaintiff claims that Defendants adopted their “OBT” trademark and an identical bottle shape in an “attempt to confuse and decive consumers and nail technicians into believing that the Accused Products are OPI Products or are affiliated with or authorized by OPI. The case is OPI Products, Inc. v. Beauty Treats International Co., Inc., CV 09-05383 PSG (C.D. Cal. 2009).

Los Angeles, CA – Product Partners, LLC sued Costco Wholesale Corporation for copyright and trademark infringement and Lanham Act § 43(a) unfair competition over sales of fitness and weight loss products. Plaintiff sells a P90X® home exercise kit that includes workout routine DVDs featuring a technique called muscle confusion, “which prevents exercise plateauing by varying exercises over days and weeks such that the body has difficulty adapting.” Plaintiff uses its federally registered and incontestable P90X® and Beachbody® trademarks on its DVDs, which are sold on its beachbody.com website. Further, Plaintiff owns several copyright registrations for its variety of DVDs.

Plaintiff purchased allegedly infringing P90X® DVDs from several Costco stores across the country. Plaintiff complains that “despite receiving notice of its infringing activities, Costco has continued to market, sell and distribute counterfeit P90X® DVDs in violation of Plaintiff’s federal copyright” registrations and registered trademarks. The case is Product Partners, LLC v. Costco Wholesale Corporation, CV 09-04990 GW (C.D. Cal. 2009).

Los Angeles, CA – Akar Studios is an architecture and interior design firm contracted by Defendant Foreign Exchange to develop a general design scheme, architectural designs and construction drawings for three of its clothing stores. Pursuant to a written agreement, Akar allegedly retained ownership of all copyrights in the works. Indeed, Akar states that “Foreign Exchange made no attempt, in the course of the negotiation of the contract, to secure rights to use Akar’s copyrighted works in connection with any other store.”

After the initial three stores were built, Akar alleges that Defendant requested and was provided with proposals by Akar for the design of two additional stores. But the proposals were not accepted. After receiving the proposals, however, Akar asserts that Defendant provided Akar’s copyrighted architectural drawings to other architectural firms, Shubin+Donaldson Architects and Lee+Kim Design, to modify the designs and prepare derivative works for the two additional stores. In addition, Akar alleges that Defendants “affixed their logos and/or stamps to Akar’s Architectural Works and Technical Drawings, passing such documents as their own work, despite knowledge that such documents were prepared by Akar.”

Akar further alleges that after the work had been copied, Foreign Exchange’s representative had Akar execute a “Lien Release” in exchange for final payment. But buried in the release – unbeknownst to Akar – was a transfer of intellectual property rights. In addition to the copyright infringement and Lanham Act claims, Akar asserts breach of contract, fraud, rescission, and §17200 unfair competition claims. The case is Akar, Inc. v. Foreign Exchange, Inc., et al., CV 09-4940 GAF (C.D. Cal. 2009).

PRACTICE NOTE: When Lanham Act claims are asserted in a copyright case, the issue of preemption under Dastar must be evaluated. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). In Dastar, the Supreme Court explained that claims about the misdesignation of the authorship of such copyrighted works did not fall within the purview of the Lanham Act – precisely because this sort of claim falls within the purview of copyright law. In architectural copyright cases, Courts addressing the issue have held that Dastar applies with equal force to architectural works. See Moser Pilon Nelson Architects, LLC v. HTNB Corporation, 2006 U.S. Dist. LEXIS 58334 (D. Conn. Aug. 8, 2006) (holding that Lanham Act claim in copied architectural works was preempted by copyright law). The Moser Court, however, distinguished its facts from Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998), wherein the defendant physically "took the [original] drawings and site plan that he had obtained from the city inspector, removed [plaintiff architect's] name and seal, and replaced them with his own name and seal." In Johnson, the Lanham Act claims were not preempted. However, in Francois v. Jack Ruch Quality Homes, Inc., 2006 U.S. Dist. LEXIS 57062 (C.D. Ill. Aug. 14, 2006), a case with facts similar to Johnson's, the Court held that the Lanham Act claims were preempted and questioned the applicability and viability of Johnson, a case which preceded the Supreme Court’s Dastar ruling.

Los Angeles, CA – Rolex Watch USA, Inc. sued Aaron Gallagher, doing business as rplwatches.com, replwatches.com, and watchreps.com, for trademark counterfeiting, trademark infringement and unfair competition under the Lanham Act § 43(a). Rolex manufactures high-end watches, watch bracelets and related products for men and women, which are sold under the Rolex family of trademarks and several other registered marks.

Rolex alleges that in May of 2006 it discovered Defendant’s watchreps.com website and it was able to shut it down through the website’s Internet Service Provider. Defendant then contacted Rolex’s counsel and attempted to reactivate the website, but Rolex did not receive a response to its settlement demands in return for reactivation. In April of 2009, while Rolex was investigating sales of infringing watches on craigslist.org, it discovered that pictures in the classified ads linked to Defendant’s reactivated watchreps.com website. In response to Rolex’s cease and desist letter, Defendant allegedly stated that Rolex “will have no further problems regarding this issue.” Rolex’s investigator, however, responded to an ad on craigslist.org and received an email from replwatches.com allegedly signed by Aaron. Upon Rolex’s request, the ISP identified the registrant of the website as Aaron Gallagher. When the investigator called to purchase the watch, Defendant allegedly stated that Rolex “was after me…they’re watching me like a hawk.” The investigator received a watch that is allegedly counterfeit and infringes on Rolex’s trademarks. Thus, Rolex determined it was time to file suit. The case is Rolex Watch USA, Inc. v. Aaron Gallagher, et al., CV 09-4646 R (C.D. Cal. 2009).

Los Angeles, CA – In a case that may go down in the “OOPS” department, Joe’s Jeans sued Brixton Ltd. for trademark infringement and unfair competition under the Lanham Act § 43(a). Apparently, Defendant was not even on Joe’s Jeans’ radar until Defendant’s counsel sent a cease and desist letter accusing Joe’s of infringing on the Brixton trademark.

Upon receipt of the letter, Joe’s investigated the claims and determined that it allegedly began using the Brixton trademark approximately one year before Defendant’s date of first use. And because neither party registered the trademark with the USPTO, the case is going to boil down to which party used the mark first. Joe’s alleges that it responded to Defendant’s counsel and put Defendant on notice that Joe’s was the senior user of the mark and, in an instant, the hunter became the hunted. As a result, Joe’s now alleges that Defendant’s use of the Brixton trademark constitutes willful and intentional infringement. Pamela Chestek blogs here about other parties battling over senior use and ownership of the Protech mark. The case is Joe’s Jeans, Inc. v. Brixton Ltd, LLC, CV 09-04753 DSF (C.D. Cal. 2009).

Los Angeles, CA – K-Swiss won the race to the courthouse – by two business days – and filed a trademark declaratory judgment lawsuit against Puma. (Details here.) K-Swiss wanted a ruling that its Dolton shoe design did not infringe Puma’s “Formstrip Trademarks,” which run along the side of the shoe. Two business days after K-Swiss’ filing, Puma filed its own trademark infringement lawsuit in the District of Massachusetts and filed a motion to dismiss, transfer, or stay the Los Angeles action.

The Los Angeles District Court declined to exercise jurisdiction over the matter (order available here) even though under the “first to file” rule, K-Swiss’ action preceded Puma’s MA lawsuit: “the rule is a flexible one and the Court may, in its discretion, rely on equitable grounds, such as ‘when the filing of the first suit evidences bad faith, anticipatory suit, or forum shopping,’ to determine whether to depart from the first to file rule.” Xoxide, Inc. v. Ford Motor Co., 448 F. Supp. 2d 1188, 1192 (C.D. Cal. 2006). The Court deemed K-Swiss’ action to be anticipatory in nature and “when, as here, a declaratory judgment action has been triggered by a cease and desist letter, equity militates in favor of allowing the second-filed action brought by the true plaintiff in the dispute to proceed to judgment rather than the first. See Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 219 (2d Cir. 1978). Thus, K-Swiss will now be forced to file its causes of action as counterclaims in the District of Massachusetts. The case is K-Swiss, Inc. v. Puma AG Rudolf Dassler Sport, CV09-03022 GAF (C.D. Cal. 2009).

Los Angeles, CA – EABO, Inc. sued Huntington Beach, CA based Mimic Skateboards, Inc. for copyright infringement, trademark infringement, trademark dilution, trade dress infringement and unfair competition. Plaintiff manufactures various sized disc shaped wooden boards that rest upon a cylinder shaped roller, which were originally designed by surfers for training purposes. The IndoBoard has now evolved into its own sport where individuals stand on the board and rock it back and forth to balance on the roller and perform various tricks. If a picture is worth 1,000 words, then moving pictures are priceless:

Plaintiff is the exclusive licensee of a registered Indo Board design trademark and the common law rights to the word mark. Plaintiff is also the copyright owner in an instructional DVD created in 2004. The complaint alleges that beginning in 2001, Plaintiff entered into a manufacturing agreement with Mimic to manufacture its boards, which relationship terminated in 2008 when Mimic informed Plaintiff that it was going to only manufacture skateboards.

A few months later, Plaintiff alleges that it discovered Mimic offering for sale a similar product under the “Orbit Board” mark, but purchase of the Orbit product included an unauthorized copy of the instructional DVD. In addition, Mimic allegedly used the Indo Board trademark to route customers to websites where the Indo Board was “sold out,” but offered its Orbit Board as an equivalent replacement. Plaintiff further alleges that the unique shape and color of the Indo Boards function as its trade dress, which is recreated in the Orbit Board. The case is Eabo, Inc. v. Mimic Skateboards, Inc., CV09-04208 RSWL (C.D. Cal. 2009).

Los Angeles, CA – Energy drink manufacturer Rockstar, Inc. licenses its trademarks from its founder and CEO, Russell G. Weiner. The Rockstar family of trademarks includes Rockstar Energy Drink®, Rockstar®, Party Like a Rockstar®, and the pending Rockstar Energy Shot™. In addition, Rockstar’s promotional materials for its drinks use the tagline “So grab it, shoot it, and Rock ON!” Rockstar alleges that it has sold over one billion cans of its energy drinks and has annual sales of several hundred million dollars. The energy drinks have been sold in containers having the alleged distinctive trade dress depicted below.

Defendant Rock On Energy, LLC is accused of using the confusingly similar trademark ROCK ON for a competing energy drink, which is sold by at least one mutual retailer. Also, Defendant is accused of using the confusingly similar “Live Loud. Play Hard. Rock On” tag line for its energy drinks. Further, Defendant allegedly uses a beverage container and product packaging that is confusingly similar to Rockstar’s trade dress. Defendant’s container is mostly black with lettering that is similar in fonts and colors to that of Rockstar’s. The case is Rockstar, Inc. v. Rock On Energy, LLC, CV 09-04017 GAF (C.D. Cal. 2009).

Los Angeles, CA – Tomdan Enterprises, Inc., which does business under the more recognizable “Tommy’s Original World Famous Hamburgers” name and trademark, filed a trademark and trade dress infringement, Lanham Act unfair competition, and trade secret misappropriation lawsuit against Tommy’s Original Chili Factory, Inc., and several individual defendants. Plaintiff has been in the restaurant business for the last fifty years, serving up hamburgers, cheeseburgers, hot dogs, and – my favorite – chili cheese fries, among other food items. Plaintiff alleges that it adopted the Tommy’s trademark in 1960 and registered the trademark with the California Secretary of State in 1978.

Plaintiff’s burgers and dogs are always served with chili, except when a patron specifically requests it be excluded. I have heard that consumption of a Tommy’s burger with a side of chili-cheese fries in the wee hours of the morning, after a night of libations with college friends, are warranted to reduce any morning-after negative side-effects. A side of extra pickles is believed to further suppress any hang-over symptoms. For those not familiar with the structure of a Tommy’s cheese burger, an element by element depiction is provided herein.

Plaintiff alleges that Defendants were aware of Plaintiff’s Tommy’s mark and trade dress, but adopted a mark, logo, and trade dress that are confusingly similar to Plaintiff’s. Plaintiff alleges that Defendants have misappropriated Plaintiffs proprietary and trade secret information in the form of its recipes, including, but not limited to, its chili. Plaintiff allegedly sent a cease and desist letter – through counsel – to Defendants in December of 2008. But Defendants have allegedly refused to stop their activities. The case is Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).

Los Angeles, CA – Fitness Anywhere, Inc. filed a trademark infringement and Lanham Act § 43(a) unfair competition lawsuit against Gofit, LLC. Plaintiff’s founder is a former U.S. Navy SEAL and created the exercise equipment to allow his team to exercise while in the field and without access to traditional exercise equipment. The equipment, which later became known as the TRX device, is manually operated and a variety of exercise routines can be performed with the user’s own body weight providing resistance. Plaintiff also provides a website to support the TRX device by designing and offering various exercise routines.

Plaintiff has registered its “Suspension Training” and “Make Your Body Your Machine” trademarks with the USPTO, for both fitness equipment and physical fitness educational services. Plaintiff alleges that Gofit has used the “Suspension Training” and “Suspension Training At Home” trademarks to advertise and sell its rival product. Gofit received a cease and desist letter from Fitness Anywhere’s counsel and allegedly agreed to stop using the objectionable marks by May 1, 2009. Gofit, however, is accused of continuing to use the “Suspension Training” marks and exacerbating the situation by adopting a “Make Your Body Your Gym” mark. The case is Fitness Anywhere, Inc. v. Gofit, LLC, CV 09-03828 SJO (C.D. Cal. 2009).