Santa Ana, CA – Trademark attorneys for Econo Lube N’ Tune franchisor sued a Ventura, CA based franchisee for trademark infringement and breach of franchise agreement at the Federal District Court (Santa Ana Division). The USPTO registered trademark, Econo Lube ‘N Tune, is used by franchisees to provide automotive tune-up and brake services, lubrication, oil changes, and certain related minor automotive services. Because the trademark has been registered for over five years, since 1981 to be exact, the trademark is incontestable under the Lanham Act, 15 U.S.C. § 1115(b).
Plaintiff alleges that on August 1, 2006, Robert Gerz entered into a sublease and franchise agreement for the Econo Lube location in Ventura. The franchise agreement provided a limited license to use the trademark while the franchisee was in good standing, but on the termination of the franchise, the right to use the trademark ceases immediately. Six months after entering into the agreement, Defendant allegedly defaulted on his obligations to make rental payments under the sublease and royalty payments under the franchise agreement. Plaintiff provided notice of the breach to defendant, and defendant allegedly failed to cure the breach by making the required payments, “instead, Gerz engaged in a pattern of delay for the purposes of allowing him to continue his unauthorized operation of the franchise and use of the trademark for as long as possible.” Plaintiff filed an action in the Superior Court of the State of California, Count of Ventura, seeking, among other things, a judgment of possession against Gerz. One week before trial, however, Gerz vacated the premises mooting the trial for possession. As a result, the instant lawsuit was filed asserting the following causes of action: (1) Trademark infringement, 15 U.S.C. § 1114; (2) Breach of sublease agreement; (3) Breach of franchise agreement; and, (4) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Econo Lube N’ Tune, Inc. v. Robert Gerz, SACV08-00598 CJC (C.D. Cal. 2008).