Articles Posted in 17200 Unfair Competition

idea-submission-attorney-private-chefs-trademark-infringement.jpgLos Angeles, CA – Private Chefs, Inc. is suing Food Network for stealing the recipe for the successful show “Private Chefs of Beverly Hills” in an idea submission, trademark infringement, and unfair competition case. Plaintiff is the owner of a USPTO registration for its design mark “PCI Private Chefs, Inc.”, which registered in 2006. Plaintiff alleges that in April of 2002 its president pitched a show idea to Food Network titled “Celebrity Dish”, which premise involved private chefs that worked for celebrities and wealthy individuals explaining recipes on air along with the celebrities and individuals.

Although Food Network declined Plaintiff’s concept, it’s alleged that in April 2010 Defendants began broadcasting “Private Chefs of Beverly Hills.” Plaintiff alleges that the “concept of the Show is close to if not exactly the same as ‘Celebrity Dish.'” The complaint continues, “[t]he Show also blatantly infringes on Plaintiff’s federally registered trademark ‘Private Chefs’ and this infringement has caused substantial consumer confusion, particularly in light of the fact that Plaintiff’s principal office is in Beverly Hills.” The case is Private Chefs, Inc. v. Food Network, Inc. et al., CV10-6159 CBM (C.D. Cal. 2010).

patent-attorney-design-trademark-bottle-gt-beverages-coca-cola.jpgSanta Ana, CA – GT Beverage Company sued The Coca Cola Company seeking Court judgment that its sports-themed shaped bottles did not infringe Coke’s trademark and design patent. Details blogged here. Coke filed counterclaims for trademark infringement and GT moved to dismiss them based on the doctrine of judicial estoppel, which prevents a party from assuming a contrary position after that party “assumes a certain position in a legal proceeding, and succeeds in maintaining that position.” New Hampshire v. Maine, 532 U.S. 742, 756 (2001).

Coke obtained its USPTO trademark registration for a sphere bottle design via a global settlement of several legal proceedings (two in Belgium, one in The Netherlands, one in Spain, and two in the U.S.) with a third-party, O-Company N.V. In those cases, Coke asserted arguments of invalidity, non-infringement, and fair use in response to O-Company’s allegations. Based on Coke’s prior litigation stance, GT filed the motion to dismiss on the grounds that judicial estoppel precludes Coke from asserting its trademark infringement claims against GT.

The Supreme Court outlined three factors to consider when applying judicial estoppel: (1) whether a party’s current position is clearly inconsistent with its previous position; (2) whether the court accepted the party’s previous position, such that there is the perception that either the first or second court was misled; and (3) whether the party would gain an unfair advantage or impose an unfair detriment on the opposing party by asserting its inconsistent position. New Hampshire, 532 U.S. at 750-51.

trademark-attorney-hair-care-beauty-salon-oil-conditioner.jpgLos Angeles, CA – Moroccanoil manufactures “salon only” hair care products under its Moroccanioil®, “M Moroccanoil Design” and “Vertical Moroccanoil M Design” trademarks, which are all registered with the USPTO. Through its distribution arrangements Moroccanoil restricts the sale of its products to professional salons and licensed cosmetologists.

Defendant Beauty Encounter is accused of selling counterfeit Moroccanoil products through the and websites. Plaintiffs allege that they conducted chemical testing of Defendant’s products and determined that they had “distinctly different chemical and physical properties that do not match genuine Moroccanoil Oil Treatment.” Further, the complaint states that because Defendants cannot legitimately obtain genuine products from authorized distributors, “Defendants encourage Moroccanoil distributors and salons to cheat Plaintiffs by encouraging the distributors to order more Moroccanoil Products than the distributor or any salon needs. The excess Moroccanoil Products are then sold, directly or indirectly, to Defendants.” Thus, in addition to the trademark related claims, Plaintiffs assert interference with contractual relations and prospective advantage claims. The case is Moroccanoil, Inc. v. Beauty Encounter, Inc., CV10-5696 SVW (C.D. Cal. 2010).

trademark-attorney-nutritional-supplement-arthri-7.jpgSanta Ana, CA – Nutrivita is a dietary supplement distributor, including the Arthro-7 nutraceutical supplement which is advertised as alleviating joint pain. The Arthro-7 trademark registered with the USPTO on October 24, 2000.

Plaintiff alleges that in July of 2010 it began receiving inquiries from customers and retailers regarding the relationship between an “Arthri 7.1” product and Plaintiff’s Arthro-7 product. Nutrivita discovered that “Arthri 7.1” was being marketed and distributed by M V Cosmetic. Nutrivita alleges that “Arthri 7.1 is clearly an attempt to imitate the Arthro-7 trademark by altering the ‘o’ to an ‘i’, and changing ‘7’ to ‘7.1’.” In addition to the trademark infringement claim, Nutrivita asserts causes of action for unfair competition under the Lanham Act and the California Business and Professions Code § 17200, false description under the Lanham Act, and common law injury to business reputation. The case is Nutrivita Laboratories, Inc. v. M V Cosmetic et al., SACV 10-1142 JVS (C.D. Cal. 2010).

trademark-attorney-candy-cake-sees-infringement.jpgLos Angeles, CA – Columbia Insurance Company owns the See’s Candy trademarks and exclusively licenses the marks back to See’s Candy Shops, Inc. The See’s Candy trademarks were first used in 1921 and have been registered with the USPTO and in other countries.

Aunt Joy’s sells cakes, cookies and chocolate-based confections from its Burbank store and website. Defendant is accused of selling cakes using the See’s trademarks, which cakes purportedly incorporated See’s Candy products. Defendant allegedly advertised its cakes as being “filled with Sees candy chips” and “dripping in Sees dark chocolate.” Plaintiff asserts causes of action for trademark infringement, Lanham Act unfair competition and dilution. The case is Columbia Insurance Company v. Aunt Joy’s Cakes, Inc., CV10-5164 RGK (C.D. Cal. 2010).

trademark-attorney-savannah-wine-smirnoff-spirit-infringement.jpgSan Francisco, CA – The Wine Group has filed a trademark infringement lawsuit in the Northern District Court of California against Diageo PLC. Plaintiff sells a wine-based beverage that contains tea flavors under its Olde Savannah Southern Style Sweet Tea trademark, which it started using in December of 2009. According to the complaint, Plaintiff has sold over 29,000 cases of the beverage since December and plans on expanding the use of the mark to vodka-based beverages. In November of 2009, Plaintiff wisely filed an intent-to-use application with the USPTO prior to launching its product.

Diageo is the world’s largest wine, beer, and spirits company and owns the Smirnoff, Johnnie Walker, Captain Morgan, Jose Cuervo, and Guinness brands. Plaintiff alleges that Diageo has recently introduced a vodka-based sweet tea beverage under the Savannah Tea trademark. Because Plaintiff allegedly has priority over Diageo in using the Savannah mark, it contends that “Diageo’s use of the Savannah Tea mark is likely to cause confusion among consumers in a variety of ways. For example, consumers are likely to believe, erroneously, (a) that Diageo’s alcohol-based sweet tea is somehow associated, affiliated, or connected with TWG’s alcohol-based sweet tea, or vice-versa or, (b) that Diageo’s alcohol-based sweet tea is sponsored, authorized, or approved by TWG, or vice-versa.” The case is The Wine Group LLC v. Diageo PLC, et al., CV10-2879 DMR (N.D. Cal. 2010).

On a related note, it appears that The Wine Group’s Savannah trademark application is the subject of an opposition proceeding filed by Spier Wines before the TTAB. The parties, however, have filed a joint motion to suspend proceedings in furtherance of settlement discussions.

trademark-true-religion-horseshoe-duff-lawsuit-cancellation.jpgPlaintiff Philip Duff is suing True Religion jeans for copying his horseshoe pocket design that he registered with the U.S. Patent & Trademark Office in 1995, long before True Religion began using the horseshoe design on its jeans. According to the complaint filed in the U.S. District Court in Los Angeles, Duff began using the horseshoe design trademark on jeans in the mid 80’s.

Duff alleges that while True Religion was developing its jeans in September of 2002, its CEO received a copy of Duff’s trademark registration record from the USPTO and was fully aware of Duff’s senior rights. Also, on December 10, 2003, its COO allegedly received another copy of Duff’s trademark registration record. “Despite such knowledge, Defendants proceeded to use in commerce on their jeans a ‘horseshoe’ design that is confusingly similar to Plaintiffs’ mark.” Defendants are also accused of describing their trademark as a modified “U” in their USPTO trademark applications and failing to disclose to the trademark examining attorney that they were fully aware of Duff’s prior registration.

Duff is asking the Court to cancel True Religion’s “horseshoe” design trademark because it was obtained by fraud. In addition, Duff seeks undisclosed monetary damages for the infringement and a permanent injunction preventing True Religion’s continued use of the horseshoe design. The case is Philip Andrew Duff, et al. v. Guru Denim, Inc. et al., CV10-4611 ODW (C.D. Cal. 2010).

lanham-act-15-usc-1125-unfair-competition-trademark-forever-21-26.jpgLos Angeles, CA – Forever 21 is the ubiquitous clothing and accessories retailer that began doing business in 1989. Forever 21 is the owner of numerous USPTO registrations for its “21” family of trademarks, including “Forever 21”, “XXI” and “XXI forever”.

In December of 2009, Plaintiff asserts that it demanded that Defendant immediately stop using Plaintiffs’ trademarks on clothing and to remove the Forever 26 sign from its retail outlet. Defendant allegedly agreed to do so, but Plaintiff claims that it recently obtained evidence of Defendant’s continued use of Plaintiff’s marks. Thus, the instant lawsuit was filed for trademark infringement, unfair competition under the Lanham Act § 43(a) (15 U.S.C. §1125(a)), and dilution.

This is not Forever 21’s first court rodeo, but it’s one of the few as a Plaintiff. As put it: “Forever 21 has been sued for copyright infringement so many times, we’ve lost count.” The case is Forever 21, Inc. v. Forever 26, CV10-4331 CBM (C.D. Cal. 2010).

Los Angeles, CA – Summit Entertainment is the producer and distributor of the highly successful Twilight motion picture franchise, including The Twilight Saga: New Moon, and the soon to be released Eclipse. The movies are about a teenage girl, Isabella (Bella”) Swan, who falls in love with a vampire, Edward Cullen. Bella’s other suitor in the film is Jacob Black, a werewolf, which love triangle always makes for a good motion picture franchise. Summit is the owner of several federally registered trademarks for “TWILIGHT” and also owns the trademark for “BELLA”, which trademarks have been used for clothing. Summit is also the copyright owner in the promotional image (shown below) depicting the character Bella from the Twilight movies.


Defendants B.B. Dakota, Modcloth, and Metropark are accused of selling jackets using the “Twilight” and “Bella” trademarks in conjunction with the Bella image without authorization. Summit not only seeks Defendants’ profits from the sales of the allegedly infringing products, but also asks the Court to treble the damages because Defendants are accused of intentional infringement. The case is Summit Entertainment, LLC, v. B.B. Dakota, Inc., CV10-4328 GAF (C.D. Cal. 2010).

lanham-act-right-publicity-dr-dre-chronic-relit-court-dismiss.jpgLos Angeles, CA – Dr. Dre sued the new Death Row records for breach of contract, trademark infringement, false advertising, violation of the right of publicity, and unfair competition. Details blogged here, and read the complaint here. Dr. Dre alleged that he’s owed royalties on his music album “The Crhonic,” and others, and that defendants have released a “remastered” version of the album, “The Chronic Re-Lit & From the Vault”, as well as a “Greatest Hit” album without his permission.

The Court denied the motion as to the breach of contract and constructive trust causes of action. The Court, however, dismissed the Lanham Act causes of action because the Court noted that Dr. Dre did not plead that the alterations made to the work were substantial enough to trigger the “Monty Python” rule. Gilliam v. American Broadcasting Cos., Inc., 538 F.3d 14, 18 (2d Cir. 1976) (editing of “Monty Python” show for television broadcast constituted authorship or endorsement of a substantially modified version of the work to constitute trademark infringement). The Court continued:

As to plaintiff’s allegation that defendants have used his name and likeness, including the original photograph from the jacket cover of “The Chronic,” the Court finds that these allegations fail to state a claim that defendants have over-represented plaintiff’s contribution to “Re-Lit,” given that defendants accurately identify plaintiff as the author of the original masters and that defendant used a substantially same photograph from the original album jacket cover, and did not use a current picture so to imply that plaintiff recently contributed to the re-issued album.