Los Angeles Intellectual Property Trademark Attorney Blog

Los Angeles, CA – Rorion Gracie, the patriarch of the famed Gracie family from Brazil, filed a trademark infringement, Lanham Act § 43(a) unfair competition, and dilution lawsuit against Black Silver Enterprises and Un Mi Lee. Gracie is a 9th degree Red Belt in Brazilian Jiu-Jitsu and has been an owner of the “Gracie Jiu Jitsu” commercial endeavors since opening the first location in Southern California in 1978. In 1997, Plaintiff’s Gracie Gear trademark was registered with the USPTO for use on clothing and related merchandise. On September 20, 2005, Plaintiff received another registration for the mark Gracie for use on clothing.

Ten days after the Gracie trademark registered, Defendant Black Silver filed an application with the USPTO to register its GRACIE mark for use on clothing. The USPTO issued an Office Action refusing to register Black Silver’s proposed mark due to a likelihood of confusion with Plaintiff’s registered trademarks. In October of 2006, Defendant filed petitions to cancel Plaintiff’s trademarks at the Trademark Trial and Appeal Board (“TTAB”), which proceedings are still continuing. Plaintiff alleges that in mid-2009 Defendants demanded payment of $250,000 as a license fee to use the Gracie trademark. As a result, Plaintiff filed the instant action. The case is Rorion Gracie v. Black Silver Enterprises, Inc. et al., CV 09-8273 GW (C.D. Cal. 2009).

Los Angeles, CA – Nightclub promoter and performer Filthy McNasty – he legally changed his name – filed a trademark infringement lawsuit against Salon Corona, Inc. at the Los Angeles Federal District Court. Since 1980, Plaintiff McNasty has used the marks “FM Station Live” and “FM Station” for offering nightclub, live music and cabaret services. In 1989, the FM Station Live trademark was registered with the U.S. Patent & Trademark Office and has withstood a cancellation proceeding at the Trademark Trial and Appeal Board. Click to read TTAB decision.

The complaint alleges that Defendant Salon Corona and Shawn Crosby have infringed the FM Station trademark by operating a nightclub and live music venue in North Hollywood, California under an unauthorized “FM Station” live trademark. Plaintiff accuses the Defendants of intentionally infringing on his trademarks. Although not mentioned in the complaint, the TTAB sheds some light on the Defendants’ prior knowledge of the FM Station Live trademark. Plaintiff McNasty was promoting monthly shows at the Defendants’ location under the FM Station mark. The case is titled Filthy McNasty v. Shawn Crosby, et al., CV08-0695 RGK (C.D. Cal. 2008).

Los Angeles, CA – Trademark attorneys for Metrokane sought review and reversal, at the Federal District Court in Los Angeles, of the final decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) cancelling the registration of its Houdini trademark. Metrokane’s Houdini trademark was registered with the USPTO on February 11, 2003, for use on lever-pull corkscrews and other bar accessories.

In 2005, Defendant Houdini, Inc. filed applications with the USPTO to register its “Houdini” mark for use in connection with, among other things, corkscrews, coasters, wine glasses, and gift baskets. The Trademark Examining Attorney rejected Defendant’s applications because its Houdini marks were likely to cause confusion with Metrokane’s prior registration. In response, Defendant filed with the TTAB a Petition to Cancel Metrokane’s trademark registration, wherein Defendant claimed prior use of the Houdini mark in connection with its gift basket design. The TTAB, in turn, granted the Defendant’s petition for cancellation and cancelled Metrokane’s trademark registration.

Metrokane, through its complaint filed with the federal district court, now seeks de novo review of the TTAB’s decision, pursuant to 15 U.S.C. § 1071(b). Metrokane contends that the TTAB decision was incorrect because: (1) the TTAB incorrectly rejected Metrokane’s laches defense, (2) the TTAB incorrectly accepted Defendant’s unsubstantiated allegations of prior use, and (3) the TTAB incorrectly found a likelihood of confusion. The case is titled Metrokane, Inc. v. Houdini, Inc., CV 08-05428 DSF (C.D. Cal. 2008).

The Trademark Trial And Appeal Board (“TTAB”) issued a ruling in In re Right-On Co., Ltd., affirming the examining attorney’s refusal to register Right-On’s three trademark applications, covering stitching on the back pockets of jeans, because they were a form of ornamentation and were not inherently distinctive to function as trademarks. Click HERE To Read The Opinion.

Right-On filed applications to register as trademarks on the Principal Register the pocket-stitching designs shown to the right for various apparel and garment goods. The focus of the appeal to the TTAB was restricted to jeans only. All three applications were based on a request for extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a) or, in other words, extension to the United States was sought from an international registration. The Examining Attorney refused registration of the pocket-stitching designs because they are “decorative or [] ornamental feature[s] of the goods that are not inherently distinctive and thus would not be perceived as [] mark[s] by the purchasing public without further evidence of acquired distinctiveness.” The applicant, surprisingly, “elected not to attempt a claim of acquired distinctiveness under section 2(f)” but instead appealed the final refusal to the TTAB.

The TTAB judges were not persuaded by the applicant’s argument that other stitching-designs on jeans have been held inherently distinctive and registerable, noting that each case must be decided on its own set of facts. Applicant’s arguments and citations to other allowed trademarks “provides little insight other than to indicate that pocket stitching designs have sometimes been found to be inherently distinctive and sometimes found not to be inherently distinctive.”

In considering the facts of the instant applications and the designs, the TTAB judges ruled that “Applicant’s argument that its designs are not common is not supported by the record. There are a multitude of variations of arches, checks, swoops, waves and other linear designs registered or in use on jeans pockets. They are in no way ‘elaborate and unique.’” The TTAB, however, did indicate that the applicant may have been able to register it’s stitching trademark based upon acquired distinctiveness, which it chose not to do.

PRACTICE NOTE: If you intend to use pocket-stitching on jeans as a trademark, it is highly unlikely that adopting geometric shapes and lines will qualify as an inherently distinctive trademark. Thus, it is better to use elaborate and unique designs that are inherently distinctive and entitled to immediate registration, which designs may also be protectable through copyright registration. I previously posted here about a jean pocket-stitching design which was both copyrighted and a registered trademark.

A trademark cancellation proceeding – which is similar to a lawsuit – was filed at the Trademark Trial and Appeal Board (TTAB) by John Lennon’s widow, Yoko Ono, against Lennon Murphy, the registrant of the “Lennon” trademark. Murphy, a musician, filed an “intent to use” trademark application with the United States Patent and Trademark Office (USPTO) for the trademark “LENNON” on April 11, 2001. The trademark application was published on October 29, 2002 and was registered on January 21, 2003.

Ono alleges that she is the owner of two registered trademarks for “John Lennon” (although she fails to disclose that they are for a design – John’s signature pictured to the left – and not a word mark) for use with “paper products, tote bags and address books” and “eyewear and eyewear accessories.” Murphy’s registration, on the other hand, is for the use of the “Lennon” trademark on musical sound recordings and entertainment services by a musical group.

Ono alleges that the use of the “Lennon” trademark will dilute, either by blurring or tarnishment, the power of her John Lennon trademarks. Ono further alleges that Murphy committed fraud on the USPTO in her application by not disclosing that “Lennon” was her first name and that Murphy lied to the USPTO when she stated that she began using the trademark in 1997, at the age of 15. Click To Read Ono's Filing.

PRACTICE NOTE: It seems that Ono may run into a laches issue because she waited over five years from the date of publication to file the cancellation proceeding. See Turner v. Hops Grill & Bar, Inc., 52 U.S.P.Q.2d 1310 (T.T.A.B. 1999) (finding laches in cancellation proceeding with five-year delay between publication for opposition and filing of petition to cancel); National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (holding that laches defense is applicable to TTAB proceedings and the time begins to run from the date of publication of the trademark for opposition). According to Murphy’s website, her manager – who ironically is the son of Ono’s attorney – approached Ono in 2000 to clear the use of the “Lennon” trademark and received her blessing. An undue delay in asserting your rights may prevent recovery under the equitable defense of laches.