Articles Posted in Trademark Litigation

trademark-registration-attorney-ttab-opposition-e-cigarette-flavor-hershey-starbuzz-tobacco.jpgThere’s no smoke, but a federal trademark lawsuit fire is burning between Starbuzz Tobacco and The Hershey Chocolate Company. The trademark lawsuit is in response to Hershey’s Trademark Trial & Appeal Board (“TTAB”) opposition to Starbuzz’s trademark application for Citrus Mist for use on e-cigarette flavored liquids. In the TTAB opposition, Hershey contends that Starbuzz’s Citrus Mist trademark is likely to cause consumer confusion with Hershey’s Citrus Mist® trademark registration covering breath mints and candy. Hershey alleges that “consumers are highly likely to associate [Starbuzz’s] chemical flavorings with the flavors of Hershey’s CITRUS MIST brand candy and mints, and make purchasing decisions based on that association.”

Starbuzz’s lawsuit seeks the court’s determination that its Citrus Mist trademark for e-cig flavoring does not infringe or dilute Hershey’s similar trademark. Starbuzz is already the owner of a federally registered Citrus Mist® trademark for pipe tobacco and flavored tobacco, which it has been using since 2008. Starbuzz reasons that the absence of any instances of actual confusion over the last six years between the parties’ respective Citrus Mist trademarks supports its conclusion that expansion into the related e-liquid market for e-cigarettes would not result in confusion and, thereby, infringement. Additionally, Starbuzz argues that labels of the respective products are “completely different” and easily allow consumers to differentiate between the two products and would not lead to confusion.

Regarding the dilution claim, Hershey would have to show that its Citrus Mist trademark was famous before Starbuzz’s adoption of its Citrus Mist trademark. Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002) (holding that dilution protection extends only to those whose mark is a – nationally recognize household name); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002, 1014 (9th Cir. 2004) (ruling that survey evidence of sixty-five percent of the attitude of people who intended to purchase a new car recognized the NISSAN trademark coupled with promotional expenditures of $898 million during the period 1985–91 were not conclusive to support – as a matter of law – at summary judgment that the NISSAN trademark was famous as of 1991). Starbuzz contends Hershey’s Citrus Mist trademark is not widely recognized by the general consuming public, which in comparison to Hershey’s Kisses® trademark, I would have to agree.

trade-dress-handbag-attorney-trademark-purse-hermes-sued-lawsuit.jpgHermès is a French luxury goods manufacturer whose handbags and purses are highly coveted. Its “Birkin” handbag has become immediately recognizable to millions of consumers (I know because seven out of seven ladies in our office immediately identified the pictured bag as a Birkin) and therefore distinctive, thereby its shape is a registered trademark with the U.S. Patent & Trademark Office. While Birkin Bags have been manufactured using various leather types and textures, its trade dress is defined by “(a) a distinctive three lobed flap design with keyhole shaped notches to fit around the base of the handle, (b) a dimpled triangular profile, (c) a closure which consists of two thin, horizontal straps designed to fit over the flap, with metal plates at their end that fit over a circular turn lock, (d) a padlock which fits through the center eye of the turn lock and (e), typically, a key fob affixed to a leather strap, one end of which is affixed to the bag by wrapping around the base of one end of the handle.” Because each handbag is handcrafted by artisans using the finest leather, prices start at about $6,000 and reach the price of a finely engineered sports car.

Despite the high price of the Birkin Bag, it is generally recognized by consumers due to considerable coverage by the press and its inclusion in story lines of several television shows, including HBO’s Sex and the City. Because of the enormous sales, extensive advertising and promotion, and media coverage, the Birkin Bag’s shape has acquired secondary meaning and developed into a famous trademark. Even the strap/turn and lock/padlock closure is independently famous and the subject of another U.S. trademark registration.

Defendants Emperia, Inc., Anne-Sophie, Inc. and Top’s Handbag, Inc. are accused of being related sister companies in the business of importing and distributing women’s handbags. Defendants are accused of selling infringing knockoff bags to Charming Charlie and JustFab. Despite allegedly receiving cease and desist letters, Defendants continued to expand and sell additional knockoff designs. The suit seeks unspecified damages, but requests that actual damages be trebled, pursuant to 15 U.S.C. § 1117, because defendants intentionally and willfully continued their infringement despite receiving notice of their infringing activity.

trademark-attorney-lawsuit-mexican-food-poquito-mas-taco-bell.jpgPoquito Mas Mexican restaurant is going mano-a-mano against Taco Bell over the latter’s use of the “Live Mas” trademark and service marks on its restaurants, food, and beverages. Founded in 1984, Poquito Mas has more than ten restaurants in California and differentiates itself by selling high quality food, always using the freshest ingredients and freshly made salsas. It also has several USPTO registered for its family of MAS trademarks including Poquito Mas, The Mas, and Mucho Mas, among others. Because most of its trademarks have been registered for over five years, the trademarks have become incontestable per 15 U.S.C. § 1065.

Plaintiff alleges that in January of 2012, Taco Bell contacted Poquito Mas in an attempt to license the “Mas” trademark to use in its “Live A Little Mas” advertising campaign. After some discussion, however, Poquito Mas declined to license the trademark because it believed Taco Bell’s slogan would diminish the Poquito Mas brand and confuse customers. Shortly thereafter, Taco Bell is accused of launching the “Live Mas” campaign despite its knowledge of the extraordinary fame and strength of the Mas trademarks: “Taco Bell is still actively using, promoting, and otherwise marketing the ‘Live Mas” trademarks with the knowledge and intent that this may cause consumer confusion between Taco Bell and Poquito Mas.” In addition to the trademark infringement claim, Poquito Mas asserts causes of action for false designation of origin and unfair competition under both federal and California law.

Poquito Mas seeks unspecified damages, attorneys’ fees, and costs in addition to preliminary and permanent injunctions prohibiting Taco Bell’s use of the Live Mas marks in its advertising. Further, because Taco Bell’s knowingly infringed the trademarks, Poquito Mas asks the court to triple the damages under the Lanham Act and award punitive damages under state law.

copyright-attorney-trademark-infringement-lawsuit-hello-kitty-sanrio.jpgThe Hello Kitty character has been around for more than fifty years and numerous other related characters and designs have been copyrighted by Sanrio. In fact, Sanrio’s website has a page listing all of its copyrights. Sanrio aggressively protects both its copyrights and trademarks related to the Hello Kitty characters, even suing a children’s beauty pageant organizer for copyright infringement for using the Hello Kitty doll on its tiaras and trophies. Maybe that’s a good thing if you’ve seen how much these beauty pageants charge parents for the illusion of their kid’s success and to prevent exploitation. But more importantly, to prevent the next Honey Booboo from being thrust upon society. To protect myself from such a lawsuit, the image to the right displays some of the characters at issue in this lawsuit and was taken from Sanrio’s website.

Defendants Blink & Blink, Inc. and its officers are accused of selling jewelry and other products that incorporate a cast of Hello Kitty characters: “This case concerns the concerted, systematic and wholesale theft of various world-famous intellectual properties owned by Plaintiff. Defendants are engaged in the manufacture, importation, distribution, promotion, sale and/or offer for sale of bracelets, rings, earrings, necklaces, and other personal accessories, which incorporate unauthorized likenesses of animated or live action characters owned by Plaintiff, including, but not necessarily limited to, Hello Kitty (collectively “Infringing Product”).” The suit seeks unspecified damages, but requests that actual damages be trebled pursuant to 15 U.S.C. § 1117.

The case is Sanrio, Inc. v. Blink & Blink, Inc., et al., CV13-08948 PJW (C.D. Cal. 2013).

how-to-protect-jewelry-trdemark-patent-copyright-attorney-chan-luu.jpgChan Luu, Inc.’s jewelry trademark infringement, copyright infringement, and unfair competition lawsuit arises from Victoria Emerson’s sales of wrap bracelets. Just this week two different jewelry designers inquired, after receiving cease-and-desist letters, whether jewelry designs were entitled to trademark and copyright protection. After explaining not only are jewelry designs entitled to copyright, trademark and trade dress protection, but also entitled to design patent and possibly utility patent protection, the enlightened jewelry designers recognized the value of obtaining intellectual property protection for their own designs. And now we return to our regularly scheduled programming.

Plaintiff contends that because of its extensive use of the Chan Luu trademark on jewelry, clothing, and accessories, consumers recognize the mark as a source of high quality products. Plaintiff also has several USPTO registered Chan Luu trademarks. In addition, Plaintiff allegedly owns the exclusive trademark rights to its purportedly distinctive curved oval button that serves as the closure for many of the bracelets, which it has used since 2002. Defendants are accused of using the curved oval button trademark in addition to using the Chan Luu trademark, including buying the word mark as an Adword.

The copyright infringement claim, however, is based on Chan Luu’s registration of collections of photographs instead of copyright registrations for the jewelry pieces themselves. Defendants are accused of copying Chan Luu’s product photographs and using the photographs on defendant’s website www.victoriaemerson.com. Plaintiff seeks unspecified monetary damages in addition to preliminary and permanent injunction preventing Defendants’ use of the copyrighted images and the Chan Luu word mark and the oval button trademark.

Trademark-litigation-attorney-surname-golf-cleveland-callaway.jpgIn another example of the problems caused by using your own name as a trademark (e.g., Van Halen trademark lawsuit and Joseph Aboud trademark injunction), Roger Cleveland Golf Company, Inc. and Dunlop Sports Co. Ltd. filed a trademark infringement, unfair competition, and trademark dilution case against Callaway Golf Company. In 1990, Mr. Roger Cleveland, the individual, sold all shares and ownership interest in his eponymous company but remained an employee until 1996, when he joined Callaway. Everything proceeded like a long, straight drive on the fairway until July 2013 when Callaway started using Mr. Cleveland’s name to promote its golf clubs. The picture to the right, taken from Callaway’s website, shows the placement of Mr. Cleveland’s name on the club-head. Even though the clubs may indeed be designed by Mr. Cleveland, the use of the “Roger Cleveland” name may create a false association with or an endorsement by Roger Cleveland Golf Company.

Click here for a copy of the complaint.

Plaintiffs allege that they are the owners of several federally registered trademarks for Cleveland, Trademark Registration Nos. 2,070,054 and 2,070,051, and Cleveland Golf, Trademark Registration No. 3,286,218. Plaintiffs allege:

surname-trademark-last-name-infringement-attorney-eponymous-van-halen.jpgEddie Van Halen’s company, ELVH, Inc., has filed suit in Los Angeles federal court seeking damages and a court order preventing Kelly Van Halen, Eddie’s ex sister-in-law, from using the Van Halen surname on her clothing line and merchandise. ELVH alleges that the brothers began using the Van Halen trademark as early as 1978 when they formed the band and have several United States Patent & Trademark Office registered trademarks for Van Halen as used on clothing, printed materials, musical sound recordings, and entertainment services.

The lawsuit appears to be an extension of ELVH’s 2010 opposition proceeding filed with the Trademark Trial & Appeal Board to prevent Kelly Van Halen’s registration of her name as a trademark used on furniture and building construction and management. In the opposition ELVH argues that although it does not provide those exact goods or services, Kelly’s use of the famous last name is likely to confuse consumers into believing there is a license or sponsorship from the famous surname. The lawsuit, however, appears to have been filed when Kelly expanded the use of the last name on clothing, which fashion goods ELVH contends are directly within its prior use domain.

The lawsuit seeks unspecified damages, attorneys’ fees, and costs.

Trademark-attorney-preliminary-injunction-adidas-soccer-dilution.jpgAdidas is suing numerous apparel, clothing, and shoe sellers for trademark infringement, unfair competition, trademark dilution, and counterfeiting, including two defendants that previously settled similar allegations and are now accused of breaching the settlement agreement by continuing to sell allegedly infringing sportswear. Adidas is the owner of numerous U.S. Patent & Trademark Office registrations for its famous Three-Stripe trademark including Trademark Reg. No. 2,058,619 for shirts, Trademark Reg. No. 3,029,127 for sweatshirts, jackets and coats, Trademark Reg. No. 2,278,591 for shorts, and Trademark Reg. No. 1,815,956 for shoes, which consumers readily associate with Adidas. The complaint alleges:

adidas recently learned that Defendants are offering for sale and selling apparel bearing counterfeit and confusingly similar imitations of adidas’s Three- Stripe Mark. Specifically, Defendants blatantly have copied adidas’s Three-Stripe Mark to trade off of the goodwill and commercial magnetism adidas has built up in its mark. Defendants’ actions are misleading and confusing the public, diluting adidas’s famous mark, and irreparably harming adidas’s goodwill and reputation. Accordingly, this Court should issue a preliminary injunction.

To obtain preliminary injunction in a trademark infringement case, the plaintiff must show that (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of preliminary relief, (3) the balance of equities tip in its favor, and (4) the injunction is in the public interest. Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009).

fashion-apparel-trademark-attorney-infringement-design-hermes-homies.jpgFashion designer brotherly love – or hate – is demonstrated through a trademark infringement, trade secret misappropriation, unfair competition, intentional interference with contractual relations, defamation, libel, and slander lawsuit between brothers Brian Lictenberg and Christopher Lichtenberg and their respective companies. Brian alleges to be a successful designer and his designer parodies, substituting “Homiés” for “Hermés” and “Bucci” for “Gucci,” have become his claim to fame. Besides being possibly offensive to residents of South Central, depicting a man standing next to a broken down pick-up truck, it’s surprising that he hasn’t been sued for at least trademark dilution by these famous brands. Back to the regularly scheduled programming, this is not the first intra-family trademark infringement and trade secret misappropriation lawsuit.

This lawsuit, however, appears to be less about trademark infringement – which claim appears to weak – and more about vitriol. Brian claims that Christopher “continues to struggle with alcoholism, depression and various other psychological disorders, that have contributed to Christopher’s actions which have given rise to the causes of action set forth in this Complaint.” What Brian doesn’t realize is that slapping a word and design on the front of a t-shirt does not establish trademark rights. Indeed, this is such a major misconception among clothing designers that the U.S. Patent & Trademark Office has published an advice page on how to avoid merely ornamental refusals: “For example, a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use. That is, most purchasers of the t-shirts would not automatically think the slogan identified the source of the goods but would view the slogan only as a decoration on the goods.” In other words, if you want the slogan to function as a trademark, put it on the neck label or a hang tag. Thus, judging from the pictures herein, Brian’s trademark – as applied to the neck label – is BLTEE and not “BALLIN PARIS” which appears to be merely decorative. The Homies artwork, on the other hand, may be copyrightable but that’s an issue for another lawsuit, amended complaint, or counterclaim. But if Brian insists that his “Homies” parody is indeed his trademark, he may be opening himself up to a third-party trademark infringement lawsuit by the owner of the USPTO registered Homies apparel trademark.

Brian claims that after an email exchange with Kanye West where the word “Ballin” was used, Brian came up with the idea to create the “Ballin Paris” artwork as a purported parody of the “Balmain” trademark, using a similar font. Brian allegedly disclosed this information to Christopher and because he had “felt sorry for his younger brother’s failing [Alex & Chloe] business,” Christopher had been allowed to sell Brian’s merchandise on consignment as a favor. Christopher is accused of breaching the agreement to pay Brian for the merchandise sold on the Alex & Chloe website. And it’s alleged that Christopher “was a failed fashion and jewelry designer overshadowed by the financial and creative success of Brian” and, as a result, Chris’ “desperation for money caused him to set out to steal the “Ballin” parody design from Brian” and to create various “knock-off merchandise and apparel that look and feel identical to that of Brian’s products and designs.”

attorney-trademark-trade-dress-design-patent-paris-hilton.jpgParis Hilton has teamed up with Parlux Fragrances to release her own perfume line and to also sue Perfection Perfume for trademark, trade dress, and patent infringement, in addition to unfair competition. Paris claims to be a worldwide owner of several trademarks used in connection with clothing, footwear, cosmetics, fragrances and watches. Speaking about watches, Paris was recently sued for patent infringement for allegedly copying watch designer de Grisogono’s patented Novantatre watch design. Back to Paris’ current case, she also claims to be an international celebrity, actress, fashion designer, musician and socialite, which has resulted in sales of millions of bottles of her fragrances. She also owns an incontestable US Patent & Trademark Office trademark registration for her Paris Hilton trademark for fragrances.

Paris contends that she has established a distinctive trade dress in the fragrances’ bottle, namely: “(i) cylindrical-shaped bottles; (ii) clear pink bottles for the women’s fragrance and clear blue for the men’s fragrance; (iii) a vertical black wave design overlaid on the bottle; and (iv) the brand name Paris Hilton written in black, lower case, and cursive font against a silver background.” She also contends to own trade dress rights in beauty products, consisting of (i) black tubes and (ii) the brand name Paris Hilton written in cursive lettering and displayed vertically in metallic pink (for women) or metallic blue (for men).” But we’re not done yet. The complaint also alleges trade dress rights for individual fragrances which includes: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in metallic silver, lower case, and cursive font running vertically up the right side of the box.” Almost finished. And finally, she also claims trade dress rights in the packaging for boxed gift sets comprising: “(i) metallic pink (for women) or metallic blue (for men) boxes; (ii) a vertical black wave design overlaid on the box; (iii); and the brand name Paris Hilton written in silver, lower case, and cursive font running vertically up the right side of the box.”

Paris’ manufacturer, Parlux, is the owner of U.S. Patent No. D518,382, covering the ornamental features of the fragrance bottle, i.e. the transparent cylindrical bottle and cap with a helical pattern continuing around the surface of the bottle. The complaint alleges that defendant’s Los Angeles retail location sold a perfume that infringed the trademarks, trade dress, and design patent. The suit seeks unspecified damages.