Articles Posted in Counterfeit

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Los Angeles, CA – Trademark attorneys for Louis Vuitton filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), counterfeiting, and copyright infringement complaint at the Federal District Court for the Central District of California (Los Angeles Division) to protect its purse designs from being copied. The luxury goods manufacturer began selling its luggage in France in 1854 and in the United States in 1893. In 1896, Louis Vuitton created the LV monogram with three motifs (shown below) and registered it with the U.S. Patent and Trademark Office in 1932. Louis Vuitton has additional design/logo trademarks that are also registered with the USPTO. Further, Louis Vuitton owns certain copyright registrations in the U.S. Copyright Office covering its Multicolor Monogram design.

purse-design-copyright-trademark-protection-louis.jpgDefendants are alleged to have counterfeited and infringed on Louis Vuitton’s trademarks and copyrighted works by selling unauthorized goods, such as purses and handbags. Louis Vuitton alleges that “the activities of Defendants complained of herein constitute willful and intentional counterfeiting and infringement of the Louis Vuitton Trademarks and Copyrighted Work; are in total disregard of the Plaintiff’s rights and were commenced and have continued in spite of Defendants’ knowledge that the use of the Louis Vuitton Trademarks and Copyrighted Work, or copies or imitations thereof, was and is in direct contravention of Plaintiff’s rights.” The case is titled Louis Vuitton Malletier, S.A. v. Mido Trading, Inc., et al., CV 08-04405 DDP (C.D. Cal. 2008).

PRACTICE NOTE: The defendants’ website, midotrading.com, has been taken offline at the time of this post. That does not appear to be a good omen for defendants. I previously posted (Click Here) about the Louis Vuitton and “Chewie Vuiton” parody case, where the defendant’s parodical use of the LV Monogram was found to not infringe on Louis Vuitton’s trademarks or copyrights.

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Santa Ana, CA – Trademark lawyers for E.I. Du Pont De Nemours filed a trademark infringement and Lanham Act unfair competition (15 U.S.C. 1125) lawsuit at the Federal District Court in Santa Ana to protect its TEFLON® trademark. The complaint recites the history of DuPont’s discovery of polytetrafluoroethylene (“PTFE”), which is the slippery, chemically inert compound that is used in a wide variety of different products. Since approximately 1944, DuPont adopted the fanciful trademark “Teflon” for its PTFE products and began to sell products under the trademark and also licensed the trademark for others to use. DuPont owns several USPTO trademark registrations for the TEFLON® trademark in several International Classes of goods. All of the registrations are incontenstable under 15 U.S.C. § 1065.

santa-ana-trademark-lawyer-dupont.jpgDefendant allegedly sells vehicle polishing and cleaning services that are described as “TEFLON® Polishing” and “TEFLON® Shine.” The complaint alleges that Defendant’s products do not contain genuine DuPont TEFLON® fluoropolymer. DuPont allegedly contacted the defendant and asked it to stop use of the mark, but defendant refused, thereby necessitating the lawsuit. The case is titled E.I. Du Pont De Nemours & Co. v. Tropic Shield, Inc., SACV08-00252 CJC (C.D. Cal. 2008).

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Los Angeles, CA – Trademark lawyers for rapper, actor, poet and musician Tupac Shakur’s estate filed a trademark infringement, Lanham Act unfair competition and a false advertising, and commercial appropriation of name and likeness lawsuit at the Federal District Court in Los Angeles. Although Tupac Shakur passed away over eleven years ago, he remains a popular hip-hop musician, artist, actor and poet. His intellectual property and publicity rights, according to Forbes magazine, ranked his estate’s earnings in the top nine for deceased celebrities. His estate licenses all of the intellectual property rights, “including rights to merchandise the trademarks and posthumous publicity rights” to the Plaintiff, Amaru-Awa Merchandising, Inc. Amaru owns a USPTO registered trademark for “Makaveli,” for use on recorded media and clothing.

merchandising-trademark-infringement-tupac.jpgDefendants own and operate a retail store named Rock Town, and a private investigator – acting on behalf of Plaintiffs – allegedly “purchased an unauthorized t-shirt bearing an image of Tupac Shakur and the trademark ‘Makaveli.'” Plaintiffs sent a cease and desist letter to the Defendants, to which there has been no response. Plaintiffs filed the instant lawsuit seeking monetary damages and injunctive relief. The case is titled Amaru Entertainment, Inc. v. Reza Falatoon, CV08-03317 DSF (C.D. Cal. 2008).

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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).

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Los Angeles, CA – Trademark and copyright attorneys for Guru Denim, a subsidiary of True Religion Apparel, filed a trademark infringement, copyright infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles to stop copying of its jeans and sales of fakes and counterfeits. Guru Denim has sought copyright, patent, and trademark protection on its garments and jeans. Guru Denim owns U.S. Patent No. D547530 for the stitch pattern applied to True Religion Brand Jeans pants. Guru Denim owns two U.S. Copyright Registrations for the True Religion Brand Jeans Designs, Copyright Certificate of Registration numbers VA1-192-834 and VA1-301-845.

attorneys-jeans-denim-apparel-copying-trademark-design-copyright-patent-true-religion.jpgGuru Denim owns a USPTO registered trademark for the “True Religion Brand Jeans World Tour Fashion for the Senses Section Row Seat.” Also, Guru Denim “owns registered United States trademarks in the pocket stitching pattern that appears on True Religion Brand Jeans pants and the overall stitching pattern on the front of True Religion Brand Jeans pants.” Guru Denim also has 4 USPTO registered trademarks for “True Religion Brand Jeans” with assorted designs. Finally, Guru Denim has registered its “True Religion” word marks with the USPTO. Guru Denim’s “line of ‘super-premium’ denim wear, which ranges in retail price from $170.00 to in excess of $300.00, is acclaimed in the fashion industry due to its famous name recognition which represents quality and distinguished craftsmanship. Each piece of clothing or pair of denim distributed under the Mark bears an emblem of a smiling Buddha strumming a guitar and, in some occasions, is elaborately embroidered.”

Guru Denim discovered that numerous defendants were selling allegedly fake and counterfeit jeans on their Websites. The complaint asserts that Guru Denim’s investigator purchased a True Religion pair of jeans from the denimbutt.com website for $129.00 plus a shipping cost of $1.95, where the defendant causes confusion by claiming that it is “committed to selling only first-quality, genuine designer fashions (sic) items, clothes and accessories.” The complaint continues that Guru Denim’s “inspection of the purchased item using security measures confirmed that the item Defendants sold to the investigator was in fact a counterfeit pair of True Religion Brand Jeans denim pants.”

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Los Angeles, CA – Trademark attorneys for Chanel, Inc. filed a trademark infringement lawsuit in Federal District Court in Los Angeles alleging sales of counterfeit handbags and purses and asks the Court to stop the infringement. Chanel has used its Chanel and CC Monogram trademarks for many years on accessories, including handbags, purses, and wallets. Chanel owns numerous Chanel related trademarks and has federally registered them with the USPTO. Chanel’s brand/trademarks “are symbols of Chanel’s quality, reputation, and goodwill and have never been abandoned.”

chanel5.jpgThe complaint alleges that defendants are selling lower quality imitations of Chanel’s handbags and wallets, which bear counterfeit Chanel trademarks. The complaint asserts that the Defendants are offering the counterfeit goods on their websites: www.gqbags.com and www.ultimatehandbags.com. The websites offer handbags for sale that are substantially less expensive than authentic Chanel products. “The net effect of the Defendants’ actions will be to result in the confusion of consumers who will believe the Defendants’ Counterfeit Goods are genuine goods originating from and approved by Chanel.” Chanel believes that the defendants are engaging in the sale of counterfeit goods intentionally and willfully. The complaint alleges causes of action for trademark infringement and counterfeiting under section 32 of the Lanham Act, 15 U.S.C. § 114, and false designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The case is titled: Chanel, Inc. v. Kimberli Hunter, et al., CV08-02226 GHK (C.D. Cal. 2008).

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Glendale, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit to protect Nike, Inc.’s footwear and shoe related trademarks in Los Angeles Federal District Court. Nike has registered numerous trademarks with the USPTO for footwear and clothing. The complaint states that “Nike uses these trademarks on shoes and apparel as trademarks of Nike’s high quality products. Nike sells in excess of $4,500,000,000 a year in merchandise bearing distinctive trademarks.”

air-jordan-trademark-attorney-glendale.jpgNike alleges that the two defendants own and transact business on the www.airjordanstore.com and www.air-jordan-store.com websites. Upon determination that the products sold by the defendants were allegedly unlicensed and counterfeit products, Nike filed the lawsuit to “combat the willful sale of unlicensed and counterfeit products (“Infringing Product”), specifically including its core product of sports shoes, bearing Nike’s exclusive trademarks.” The complaint asserts the following causes of action: (1) Trademark infringement 15 U.S.C. § 1114 and 15 U.S.C. § 1125; (2) Unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Lanham Act dilution of famous trademark under 15 U.S.C. § 1125(c); (4) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (5) Dilution California law Cal. Bus. & Prof. Code § 14330. The case is titled Nike, Inc. v. Michael Masjuan, et al., CV08-01889 JFW (C.D. California).

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Beverly Hills, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit against J&B Importers, Inc. to protect Mad Dogg Athletics’ exercise equipment trademark, in Los Angeles Federal District Court, alleging infringement of its USPTO registered trademarks. Mad Dogg Athletics registered its Spinning® trademark for use with “fitness education and traning program for use in connection with indoor cycling via stationary exercise bicycles. Mad Dogg Athletics also registered its Spintech® trademark for use on “stationary exercise bicycles and accessories related thereto, specifically, bicycle cleaning preparations and lubricants.”

The complaint alleges that J&B Importers has used Madd Dog Athletics’ Spintech® trademark on counterfeit bicycle lubricants. Plaintiff alleges that the activities of Defendant “constitute willful and intentional counterfeiting.” The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. §§ 1114; (2) Federal unfair competition and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Unfair competition under Cal. Bus. & Prof. Code § 17200 ; and, (4) Constructive Trust Under Cal. Civ. Code § 2224. The case is titled Mad Dogg Athletics, Inc. v. J & B Importers, Inc., CV08-01717 SVW (Central District Of California).

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Hollywood, CA – Trademark attorneys file trademark infringement, trademark dilution, and Lanham Act 43(a) unfair competition lawsuit, on behalf of Quiksilver, in Los Angeles Federal District Court, against Walmart, alleging infringement of Quiksilver’s USPTO registered trademarks. Quicksilver has filed a family of “Roxy” trademark applications and received registration certificates from the USPTO. Plaintiff also claims that it has spent substantial sums in advertising its products bearing the Roxy trademarks such that the trademarks have become famous in the minds of consumers. The complaint alleges that Quiksilver’s investigator surveyed Wal-Mart stores and discovered sweatshirts bearing counterfeit trademarks. Also, Plaintiff alleges that Wal-Mart is not authorized to sell products bearing the Roxy trademark. The case is titled Quiksilver, Inc. v. Wal-Mart Stores, Inc., CV08-01791 DSF (C.D. California).

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Los Angeles, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit, on behalf of Dell, in Los Angeles Federal District Court, alleging infringement of Dell’s USPTO registered trademarks against resellers. Dell has been selling personal computers since 1984 and has registered its Dell trademark and variations thereof in more than 180 countries worldwide, and has more than thirty United States federal trademark registrations containing the term Dell. Since its inception, Dell has primarily used a direct sales model to sell directly to consumers rather than through retail outlets, first through telephone and also the Internet. Dell, however, permits a limited number of authorized resellers, which have to abide by Dell’s reseller terms and conditions.

Dell-trademark-logo.jpgDell alleges that the four individual defendants enrolled in Dell’s reseller program and became bound by the resale terms, where “defendants agreed (1) to refrain from unauthorized use of Dell’s trademarks; (2) not to resell Dell product without first adding value through the addition of hardware, software, or services; (3) not to resell Dell product on auction-type websites [such as eBay]; and (4) to resell their Dell product to small and medium businesses.” The complaint alleges that the defendants have used aliases to purchase Dell products and sold them through unauthorized trade channels and on eBay in violation of the reseller agreement and have made misrepresentations and misused Dell’s trademarks. For example, the defendants have allegedly sold products on eBay as “new” when they were, in fact, refurbished. The complaint asserts that “Defendants have, through their scheme of deliberate misrepresentation and concealment, purchased millions of dollars worth of Dell products from Dell and resold such product in breach of their contractual obligations to Dell and in violation of Dell’s trademark rights.” The complaint alleges the following causes of action: (1) Trademark counterfeiting and infringement 15 U.S.C. §§ 1114; (2) Unfair competition and false advertising under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Trademark dilution under the Lanham Act section 43, 15 U.S.C. § 1125(c); (4) Unfair competition and false advertising under Cal. Bus. & Prof. Code §§ 17200 and 17500; (5) Unjust enrichment; (6) Breach of contract; (7) Fraud; and, (8) Civil conspiracy. The case is titled Dell, Inc. v. Kizun, et al., CV08-01821 JSL (C.D. California)