Articles Posted in Trade Dress

Los Angeles, CA – Trademark lawyers for Carroll Shelby and his trust and licensing company filed a trademark and trade dress infringement, unfair competition, and violation of the right of publicity complaint at the Federal District Court in Los Angeles. Click to read complaint. Shelby is the legendary race car driver who broke the land speed record at the Bonneville Salt Flat and won the 24-hour Le Mans road race. After retiring from auto-racing, Shelby began designing some of the most highly prized race and production cars, including Shelby Cobras. The complaint alleges that the design of the Shelby cars, the Daytona specifically, has acquired distinctiveness and serves to identify Plaintiff as its source (the “Daytona Coupe Trade Dress”). The Daytona Coupe Trade Dress was registered with the USPTO as Registration No. 2,958,927. Plaintiff Shelby also owns the following USPTO issued trademark registrations: 289, 427 S/C, Shelby 427 S/C, and Shelby. Plaintiff Shelby is also the exclusive worldwide licensee of the COBRA trademark and logo, which are owned by Ford Motor Company.

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Defendant Factory Five Racing, Inc. (“FFR”) allegedly manufactures replicas of “Shelby Cobra vehicles, including kit cars bearing designs confusingly similar to the Daytona Coupe Trade Dress.” On FFR’s website, www.factoryfive.com, FFR allegedly uses trademarks owned by or licensed to Shelby in the metatags thereof to draw Internet traffic to the site, “these marks appear in the metatags but not in the posted content of the web pages, reflecting a design to conceal their use.” Further, the complaint alleges that links from FFR’s website directs traffic to LK Motorsports and Internet Community Partners, LLC’s websites, where further infringing use of the trade dress and trademarks occur. The case is titled Carroll Shelby v. Factory Five Racing, Inc. et al., CV 08-07881 CAS (C.D. Cal. 2008).

Los Angeles, CA – Trademark attorneys for Throttle Rocker, Inc. filed a trademark and trade dress infringement, counterfeiting, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles. Plaintiff manufactures motorcycle accessories, including a contoured throttle device which attaches to the throttle of a motorcycle and provides relief when the rider squeezes the throttle. Plaintiff has sold the devices under its Throttle Rocker trademark since 1995 and has registered a word mark and a logo with the U.S. Patent & Trademark Office. The complaint also asserts that the trade dress of the black device features “the following distinctive features: a velcro strap, an arcuate top portion and a concave-shaped base portion, which is approximately twice as wide as the top portion.”

los-angeles-trademark-attorney-trade-dress-throttle-rocker.jpgDefendant Eurodezigns, Inc. and several individual defendants are accused of selling a counterfeit product which allegedly uses the Throttle Rocker trademarks and infringes on Plaintiff’s trade dress. The complaint asserts that “Defendants’ use in commerce of THROTTLE ROCKER and its [sic.] sale of the counterfeit product, is likely to cause confusion, decpeiton and mistake in the minds of the public with respect to the source and origin of Plaintiff’s products.” The case is titled Throttle Rocker, Inc. v. Eurodezigns, Inc. et al., CV 08-07361 ODW (C.D. Cal. 2008).

PRACTICE NOTE: From the description of the alleged trade dress in the complaint and Plaintiff’s advertisement touting the comfort on the heal and palm of the hand imparted by the contoured shape of the device, it is going to be difficult to prove that the design is non-functional and entitled to trade dress protection.

jewelry-copyright-attorney-trade-dress-steven-shein.jpgLos Angeles, CA – Attorneys for jewelry designer Steven Shein filed a copyright and trade dress infringement lawsuit against Delia’s, Inc. at the Federal District Court in Los Angeles. In 2003, after paying his own way through design school, Steven Shein began designing and selling jewelry. Plaintiff’s jewelry designs have been sold at the Museum of Contemporary Art and through high-end boutiques such as Kitson and Fred Segal. In 2006, Plaintiff authored a jewelry design entitled “The Red Flat Laminate Ice Cream” which was registered with the U.S. Copyright Office.

The complaint alleges that “subsequent to Plaintiff’s registration of the Subject Design, Plaintiff’s investigation into the unlawful use of his proprietary designs revealed that Delia’s was purchasing, distributing and selling for profit, jewelry which infringed the Subject Design.” Plaintiff sent a cease and desist letter to the defendant requesting its sales figures of the allegedly infringing jewelry, but the defendant allegedly refused to stop the sales or provide the information. The case is titled Steven Shein v. Delia’s, Inc., CV 08-07291 SJO (C.D. Cal. 2008).

copyright-attorney-cards-figurines-los-angeles.jpgLos Angeles, CA – Plaintiffs San Francis Imports and Basevi, through their attorney, filed a copyright infringement, Section 17200 unfair competition, and trade dress infringement lawsuit at the Federal District Court in Los Angeles against NG Figurine Wholesale, WG Trading Corp., and Gary Ngo. The complaint alleges that from 1935 to 1950, Cromo, N.B., an Italian corporation, created artwork with the assistance of numerous artists, which copyrights in the artwork were transferred to and registered by Cromo. In turn, Cromo assigned licensing rights in the United States to Basevi, which license was executed with San Francis.

The complaint alleges that “Defendants, and each of them through its (sic.) employees copied Plaintiff’s (sic.) Holy Cards and caused to be manufactured and offered for sale to the public Holy Cards which is (sic.) not only substantially similar, but is strikingly similar to Plaintiffs’ Holy Cards.” The case is titled San Francis Imports v. NG Figurine Wholesale, CV08-06252 RGK (C.D. Cal. 2008).

Los Angeles, CA –Patent attorneys for Manhattan Beach based Skechers U.S.A. filed a patent infringement, trade dress infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles.

los-angeles-patent-attorney-shoe-design-skechers.jpgSkechers asserts that it is the owner of a distinctive trade dress in the appearance and features of its Biker-Sightsee™ Series of footwear/shoes. “Skechers has expended substantial effort and funds in promoting the goodwill of the Skechers Biker-Sightsee™ Series in developing a consumer association of the Biker-Sightsee™ Series as emanating from Skechers. It has expended many millions of dollars promoting and advertising its Bikers-Sightsee™ Searies footwear. It has entered into agreements with celebrities such as American Idol Winner Carrie Underwood and platinum recording star Ashlee Simpson to appear in ads featureing the Biker-Sightsee™ Series footwear.”

As additional intellectual property protection for its shoe design, the U.S. Patent & Trademark Office issued U.S. Patent No. Des. 532,962 to Skechers. Skechers alleges that the Defendant was sent notice that its shoe design was infringing on Skechers’ patent and trade dress rights and that Defendant replied that it would modify its shoe design and stop selling the shoes at issue. The Defendant, however, has allegedly not ceased selling the infringing shoes, thereby forcing litigation. The case is titled Skechers U.S.A., Inc. v. Aetrex Worldwide, Inc., CV 08-03831 GAF (C.D. Cal. 2008).

Santa Ana, CA – Asics’ trademark attorneys filed a lawsuit against Steve Madden, Ltd. at the Federal District Court (Santa Ana Division) alleging breach of their previous settlement agreement, trademark infringement, unfair competition under the Lanham Act (15 U.S.C. § 1125), and trademark dilution. For over forty years, Asics has used its stripe design trademarks on virtually all of its shoes. Asics owns numerous trademark registrations at the U.S. Patent & Trademark Office for the stripe designs, the first of which was registered in 1972 and is incontestable.

trademark-shoe-stripe-trade-dress-asics.jpgThe parties are apparently not strangers and Steve Madden was previously sued for infringement by Asics – once directly and, on another occasion, through its design of shoes for Mossimo and Target. Both lawsuits were settled, which settlement agreements are confidential, but Asics is now alleging breach of those agreements. Asics further alleges that since the settlement agreements were executed, Steve Madden has sold new shoes that include a stripe design that is confusingly similar to and infringes Asics’ design trademarks. The case is titled Asics Corporation v. Steven Madden, Ltd., SACV08-0638 AHS (C.D. Cal. 2008).

Santa Ana, CA – Oakley’s trademark and patent attorneys filed a patent infringement, trade dress infringement, and trademark infringement complaint at the Federal District Court in Santa Ana to stop copying of protected sunglasses/eyewear. Oakley registered its stylized ellipsoid “O” logo trademark with the U.S. Patent and Trademark Office (“USPTO”) for use on goods in International Class 9 (e.g. eyewear, sunglasses,and goggles). Oakley also registered its stylized ellipsoid “O” logo as used on the side of a sunglass ear-stem with the USPTO. As further protection, the USPTO issued U.S. Patent No. D556,818, titled “Eyewear Components,” which protects the design and ornamentation embodied by Oakley’s Gascan sunglass.

design-patent-protect-sunglasses-oakley.jpgThe complaint alleges that Outlook Eyewear has “advertised and sold counterfeit products bearing a reproduction or copy of the trademarks, which mark is an unauthorized reproduction of Oakley’s famous ellipsoid “O” mark intended to cause a likelihood of confusion or to deceive or otherwise capitalize upon Oakley’s goodwill.” The complaint also alleges that Oakely has obtained trade dress protection in the design of its Gascan line of sunglasses because of the expenditure of large sums of money in its promotion and, as a result of which, it “has become, through widespread public acceptance, a distinctive designation of the source of origin of goods offered by Oakely and an asset of incalculable value as a symbol of Oakley and its quality goods and good will.” In addition to preliminary and permanent injunctions, Oakley seeks monetary damages and its attorneys’ fees. The case is titled Oakley, Inc. v. Outlook Eyewear Company, SACV 08-00439 JVS (C.D. Cal. 2008).

Los Angeles, CA – Copyright and trademark attorneys filed a lawsuit, at the Federal District Court in Los Angeles, to protect plaintiff’s website, www.wowhead.com, which is designed to assist gamers of the on-line video game known as World of Warcraft. According to Plaintiff, the wowhead.com website “is one of the most recognized and utilized websites of its kind accessed by tens of thousands of individuals each day. Plaintiff has filed for and received copyright registrations from the U.S. Copyright Office for its website and certain computer code used therein. Plaintiff claims that the “design and appearance/visual presentation of the WOWHEAD website are unique in the industry and therefore constitute an inherently distinctive trade dress respecting the presentation of Plaintiff’s services all of which have resulted in a non-functional trade dress which consumers identify with Plaintiff’s wowhead website.”

design-copyright-trade-dress-world-of-warcraft.jpgPlaintiff alleges that Defendant’s website, www.wowdb.com, “essentially replicated the appearance, design, as well as certain other unique features of Plaintiff’s WOWHEAD website, in order to launch with the creation of an original website. Defendant’s website . . . like the WOWHEAD website, also caters to individuals who participate in the World of Warcraft on-line video game.” The complaint alleges that “defendant has therefore engaged in an intentional and systematic patter of trade dress infringement in violation of the Lanham Act, 15 U.S.C. Section 1125(a), trade dress dilution, and unfair competition in that” the defendant’s website caters to the same class of consumers, the confusingly similar website design, which has resulted in actual confusion among a substantial customer confusion. The complaint also asserts causes of action for common law unfair competition and statutory unfair competition under Bus. & Prof. Code Section 17200.

The case is titled Zam Network, LLC, v. Curse, Inc., CV08-02224 PSG (C.D. Cal. 2008).

UPDATE 6/18/2008: The Court entered a consent judgment permanently enjoining the defendant from selling any shoes that infringe on Nike’s design patents, trade dress, and trademarks.

Los Angeles, CA – Nike’s patent attorneys filed a patent infringement, trade dress infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles. Nike’s complaint recounts the beginning of Nike’s relationship with Michael Jordan and his endorsement deal, which resulted in the creation of the most famous signature shoe of all time – the Air Jordan®. When the shoes first debuted in 1985, they were initially banned by the NBA for the bold styling and color, but Michael Jordan incurred fines of $5,000 per game and wore his famous shoes. Every year thereafter, Nike unveiled a new Air Jordan model, which models have become collectors’ items and fans often line up to purchase new designs and limited re-releases of previous styles. Nike has protected the new designs of the shoes by obtaining design patents, trademarks, and trade dress rights.

The Air Jordan® VII shoe, which Jordan wore during the 1992 Olympics, was awarded U.S. Patent No. Design 325,291. The Air Jordan® XI shoe, considered one of the most popular shoes of all-time, was awarded U.S. Patent No. Design 371,898. The Air Jordan® XII shoe, which Jordan wore against the Jazz when he was ill with the flu, was awarded U.S. Patent No. Design 380,082. The Air Jordan® XIII shoe, which has sold more than 2 million pairs in the U.S., was awarded U.S. Patent No. Design 387,591 and U.S. Patent No. Design 387,850. Nike alleges that the Defendant “has sought to make a name for itself not through its own innovation, strategic investment, and design, but by explicitly appropriating the patented design and trade dress of not one, but four separate models of Air Jordan® shoes.” The complaint asserts that the Defendant “has copied the design and trade dress of the entire “upper” of each of these shoes, including the unique shape of the leather on the inside and outside of the shoe . . . the iconic lacing with exterior webbing on the shoe upper . . . the sunburst design . . . and the unique shape of the leather on the inside and outside of the shoe upper…”

Los Angeles, CA – A trademark, trade dress, and unfair competition complaint was filed in the Central District of California by Torrance based Virco, through its Pasadena trademark attorneys. Virco is a furniture manufacturer and has manufactured a chair with three parallel slots that extend from the seat to the backrest. Virco filed a trademark application for the “three slot” design feature with the USPTO and it became a registered trademark on June 10, 1997. Virco asserts that in the furniture industry, the three slot design trademark is well recognized as a product manufactured by Virco and since 1997, its sales of the three slot chairs have averaged in excess of $10,000,000 per year.

virco-trademark-chair-lawsuit.jpgVirco alleges that in late 2007, it discovered that defendant “was manufacturing, selling, advertising, and distributing two versions of a children’s plastic chair that used [Virco three slot design trademark]. The goods sold by defendants are confusingly similar copies of the [Virco’s trademark].” Virco continues that defendant’s use of the three slot trademark “creates a likelihood that Plaintiff’s customers, potential customers, members of the trade, and the public generally will be misled as to the source of goods or services in that they are likely to believe that Defendant’s business and products are affiliated with or sponsored by Plaintiffs. The complaint sets forth the following seven causes of action: (1) Registered trademark infringement, (2) False designation of origin 15 U.S.C. 1125, (3) Trade dress infringement, (4) Common law trademark infringement, (5) Common law unfair competition, (6) Statutory unfair competition, § 17200, (7) Trademark Dilution. The case is titled Virco MFG. Corp, v. Jonti-Craft, Inc., CV08-01332 PSG (C.D. California).

PRACTICE NOTE: Because Virco’s trademark has been registered for over five years, it has become incontestable under 15 U.S.C. § 1065. A defendant in a trademark lawsuit cannot challenge an incontestable trademark on the following grounds: descriptiveness, deceptive misdescriptiveness, geographic descriptiveness, and primarily merely a surname. Another important reason to register trademarks is that a prior user of an unregistered mark cannot contest a registered mark after five years based on prior use.