Articles Posted in Lanham Act 43(a) – 15 USC 1125

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Los Angeles, CA – Trademark attorneys for Creative Artists Agency (“CAA”) filed a trademark infringement lawsuit in Federal District Court in Los Angeles against a media/marketing company. CAA is a well known talent agency and has used the registered CAA trademarks for over thirty years. CAA also uses the www.caa.com and www.sports.caa.com as domain names. The trademark, “the logo and the domain names are all used in connection with talent agency services, literary agency services, sponsorship services, marketing and communication services and sports agency services.”

CAA.jpgCAA alleges that the defendants commenced business as CAA-Media in 2003 and “began using the website www.caa-media.com in connection with media buying and media consulting, which is closely related to the services offered by CAA. CAA also continues that defendants “use the designation ‘CAA’ in stylized red lettering, which is nearly identical to CAA’s distinctive mark.” CAA discovered defendant’s use of the allegedly infringing trademark when a CAA employee was informed by a friend that they were hired by defendants CAA-Media. CAA sent a cease and desist letter to defendants which also requested the transfer of the defendants’ CAA domain names. The complaint alleges that instead of ceasing the infringing use, the defendants filed a trademark application with the USPTO for the CAA trademark. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) Federal trade name infringement and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution, 15 U.S.C. § 1125(c); (4) Cyberpiracy under 15 U.S.C. § 1125(d); (5) California common law unfair competition; (6) Unfair competition under Cal. Bus. & Prof. Code § 17200; (7) Injunctive relief; and, (8) Declaratory relief. The case is titled Creative Artists Agency, LLC v. Chessen & Associates, Inc. et al., CV08-02309 SVW (C.D. Cal. 2008).

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Los Angeles, CA – Godzilla knocked over buildings and stomped its way to the Federal District Court in Los Angeles to file suit against Subway because it’s furious over the use of its image in Subway restaurant commercials, which sandwiches it apparently doesn’t enjoy or endorse. Maybe Megalon, Godzilla’s nemesis, is interested in the gig? Toho Co., the owner of the Godzilla franchise, sued Doctor’s Associates, Inc., the owner of the Subway sandwich empire, for trademark infringement and copyright infringement for use of the Godzilla character in its “Five Dollar Footlong” sandwich commercials. “The commercial at issue, which was created for Subway by advertising agency McCarthy Mambro Bertino, LLC in support of Subway’s ‘Five Dollar Footlong’ sandwich promotion, features Godzilla attacking a Japanese city and then endorsing the sandwich by spreading his hands a foot apart.” The advertising agency is also sued as a defendant.

“At no time did Defendants seek or obtain Toho’s permission or consent to use or feature the Godzilla Character or any substantially or confusingly similar character in the Commercial.” Apparently, when Toho learned of the commercial, it demanded the defendants cease airing the commercial. “Rather, defendants have continued airing the Commercial on popular television programs, including the NCAA Basketball Tournament semi-final and Championship games” and American Idol. The Complaint estimates that the defendants have spent at least $20 million in TV-air-time alone. Toho alleges that Subway has made millions of dollars as a result of the unauthorized commercial use of the Godzilla character and seeks the disgorgement of Subway’s profits and its costs and attorneys’ fees.

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San Francisco, CA – Trademark attorneys file trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit, on behalf of Levi Strauss & Co., in the Northern District of California, alleging infringement of Levis’ USPTO registered trademarks. Among Levis’ numerous registered trademarks is the famous Arcuate Stitching Design Trademark, which is a distinctive pocket stitching design and “is the oldest known apparel trademark in the United States.” The Arcuate Stitching Design Trademark was first used in interstate commerce in 1873 on clothing products. Levis also owns the Tab Device Trademark “which consists of a small marker of textile or other material sewn into one of the regular structural seams of the garment.” Levis first used the Tab Device Trademark in 1936 on the rear pocket of its pants when a sales manager suggested it to distinguish Levis’ clothing and jeans from those of competitors.

levis-trademark-jeans-attorney.jpgLevis alleges that defendant Jeans City manufactures, sources, markets and/or sells “jeans that diplay designs on the rear pockets that are confusingly similar to [Levis’] Arcuate and Tab trademarks.” The complaint alleges that “Jeans City’s actions have caused and will cause [Levis] irreparable harm for which money damages and other remedies are inadequate. Unless Jeans City is restrained by this Court, Jeans City will continue and/or expand the illegal activities alleged in this Complaint and otherwise continue to cause great and irreparable damage and injury to Levis.” Levis claims that it will be harmed by not being able to use and control use of its trademarks, a likelihood of confusion, mistake and deception created in the minds of consumers, false association between Levis and Jeans City, and loss of goodwill. The complaint alleges the following causes of action: (1) Trademark infringement under 15 U.S.C. § 1114; (2) Federal unfair competition, false designation of origin, and false description under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution under the Lanham Act section 43(c), 15 U.S.C. § 1125(c); (4) California dilution and trademark infringement under Cal. Bus. & Prof. Code §§ 14320, 14330, 14335, 14340; and, (5) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Levis Strauss & Co. v. Jeans City USA, Inc., CV08-01639 WHA (N.D. California).

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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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Irvine, CA – Trademark attorneys file trademark infringement, Lanham Act 43(a) unfair competition, and declaratory judgment lawsuit, on behalf of home/garden products manufacturer, in Los Angeles Federal District Court (Santa Ana Division), regarding the Feng Shui USPTO registered trademark. Plaintiff Innovage received a cease and desist letter from the Defendant Style Asia regarding its use of the Feng Shui trademark on its line of home/garden fountains. Style Asia has registered its Feng Shui trademark with the USPTO and threatened Innovage with a lawsuit if it did not cease using the same trademark.

innovage-trademark-product-fountain-garden-home.jpgInnovage did not wait for Style Asia to disturb its harmonious, Zen like use of its Feng Shui trademark and instituted a lawsuit against Style Asia. Innovate alleges that it, and not Style Asia, was first to use the Feng Shui trademark and despite Style Asia’s trademark registration, Innovage sued for trademark infringement and unfair competition under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)). The complaint alleges that Style Asia’s use of the Feng Shui trademark “is likely to cause confusion, mistake and deception of the public as to the identity and origin of its own and of Innovage’s goods, causing irreparable harm to Innovage.” The complaint also asserts a California common law unfair competition claim and alleges that Style Asia took advantage of Innovage’s goodwill in the trademark. Innovage also asks the Court to declare that it does not infringe on Style Asia’s trademark and requests the Court order cancellation of the registration at the USPTO. The case is titled Innovage LLC v. Style Asia, Inc., CV08-00310 JVS (Central District 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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Glendale, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit to protect Tycoon Jewelry, Inc.’s jewelry related trademarks in Los Angeles Federal District Court, alleging infringement of its USPTO registered trademarks for jewelry products. Tycoon Jewelry alleges that it has used the Tycoon and Tycoon ct trademarks, either alone or in combination with other words or symbols, with a wide range of products, including jewelry, for approximately twenty years.

The complaint alleges that Defendant Tycoon International, Inc. has used the infringing Tycoon mark both in its company name and for the sale of jewelry. The complaint asserts the following causes of action: (1) Trademark infringement 15 U.S.C. §§ 1114; (2) False designation of origin and trade dress infringement 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) California common law unfair competition. The case is titled Tycoon Jewelry, Inc. v. Tycoon International, Inc., CV08-01982 CAS (C.D. California).

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Riverside, CA – Trademark attorneys file trademark infringement and Lanham Act 43(a) unfair competition lawsuit, on behalf of Hansen Beverage Company, in Los Angeles Federal District Court, alleging infringement of its USPTO registered Monster energy drinks trademarks. Hansen launched Monster energy drinks in 2002 and, since then, has expanded to a variety of products which are marketed under the Monster family of trademarks. The Monster energy drink containers prominently display the Monster trademarks and trade dress. Hansen has spent millions of dollars in promoting the drinks under the Monster trademarks and has retail sales of over one billion dollars.

Monster-trademark.jpgDefendants also sell an energy product under the trademark of Monster Energy Shot. Hansen alleges that “without permission or authority from Hansen, Defendants have infringed Hansen’s MONSTER Marks in interstate commerce in connection with Defendants’ making, using, promoting, advertising, selling, and/or offering to sell the MONSTER ENERGY SHOT drink.” The complaint also states that, by choosing a similar color scheme on their containers, “Defendants have infringed Hansen’s MONSTER trade dress in interstate commerce in connection with Defendants’ making, using, promoting, advertising, selling, and/or offering to sell its MONSTER ENERGY SHOT energy drink.” The complaint asserts the following causes of action: (1) Trademark infringement 15 U.S.C. §§ 1114; (2) Trademark dilution under the Lanham Act section 43(c), 15 U.S.C. § 1125(c); (3) False designation of origin and trade dress infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (4) California trademark dilution under Cal. Bus. & Prof. Code § 14330; (5) Unfair competition under Cal. Bus. & Prof. Code §§ 17200 and 17500; (6) Common law trademark infringement; (7) Common law trade dress infringement; and, (8) California common law unfair competiton. The case is titled Hansen Beverage Company v. N2G Distributing, Inc., et al., EDCV08-0357 VAP (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)