Trademark Litigation

Lichtenberg Brothers Suing Each Other Over Fashion Trademarks And Trade Secrets

September 25, 2013 | Milord A. Keshishian

Fashion 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.”

Paris Hilton Sues Perfection Perfume For Trademark, Trade Dress, & Design Patent Infringement Over Perfume Bottle Packaging

August 16, 2013 | Milord A. Keshishian

Paris 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.

Copyright & Trademark Infringement Lawsuit: Vigilante Project Comic Book v. Vigilante Diaries Show

July 26, 2013 | Milord A. Keshishian

Writers and artists Christopher Dickens and Philip Morgenthaler are suing Chill, Inc. for copyright and trademark infringement over release of Chill’s “Vigilante Diaries” web based live action show. Plaintiffs claim they created a dark, graphic comic book story and distinct character titled “Vigilante Project,” wherein the protagonist is a young African American male named Alvin Gentry. No, not the basketball coach Alvin Gentry. This Gentry wears a hoodie and a skull mask covering the lower half of his face and camouflage attire with a sleeveless black undershirt along with fingerless gloves and military gear. Plaintiffs claim to have created a unique alternative to the classic superhero characters of conventional comic books because Gentry lacks any superhuman or preternatural powers.

Plaintiffs also contend that they have used a distinctive trademark as the title of the published comic books and t-shirts where the trademark is “denoted in bold, red letters that have a particular stylized look and feel, specifically all caps, red letters that have a distressed, worn and shredded appearance.” Plaintiffs have also described the character and the Vigilante Project, both through crowd-funding efforts and at comic book conventions, with the tagline “no cape, now cowl, now web, no problem.”

Chill is alleged to be funded by the venture capitalist firm of Kleiner Perkins and William Morris Endeavor talent agency, among others, and claims to be “the web’s premier video distribution platform for entertainment content direct from filmmakers, artists, and comedians.” Variety covered Chill’s crowd-funding approach to producing new episodes, where fans would pay to have the series continue production.

Otterbox Trademark Infringement Lawsuits Filed In Los Angeles Against eBay Sellers

June 29, 2013 | Milord A. Keshishian

Los Angeles, CA – The Otterbox trademark owner filed four trademark infringement lawsuits against several defendants for allegedly selling Smartphone and tablet cases bearing counterfeit Otterbox trademarks. Plaintiff manufactures protective cases, peripherals and accessories for the iPhone, iPad, iPod, Samsung, HTC and other electronic device and computer manufacturers. Plaintiff is the owner of U.S. Patent and Trademark Office registered Otterbox trademarks, “We’ve Got Technology Covered” trademark, and the “Defender Series” trademark. Plaintiff contends that it has spent millions of dollars in advertising to obtain consumer recognition of its trademarks as a symbol of quality.

Particularly in light of the success of Plaintiffs products, as well as the outstanding reputation they have gained, Plaintiff and its products have become targets for unscrupulous individuals and entities who wish to take a “free ride” on the goodwill, reputation and fame Plaintiff has spent considerable effort and resources to build up in their products and trademarks.

Plaintiff alleges that Defendants own and operate eBay storefronts advertising and selling unauthorized products that infringe its trademarks or bear counterfeit trademarks. One defendant is accused of selling at least $88,000 worth of infringing products.

Keyboard Cat and Nyan Cat’s Attorneys Sue Scribblenauts Videogame For Copyright and Trademark Infringement

April 30, 2013 | Milord A. Keshishian

Los Angeles, CA – A copyright and trademark infringement lawsuit was filed against Warner Bros. and 5th Cell Media, the creators of the Scribblenauts videogame, by attorneys for Charles Schmidt – creator of the Keyboard Cat meme – and Christopher Orlando Torres – creator of Nyan Cat meme.

Keyboard Cat is a video of Schmidt’s cat, Fatso, wearing a shirt and playing an electronic keyboard with its paws. The meme, which is a communication of ideas or information, has gone viral, receiving over thirty million YouTube hits. Schmidt has registered the video’s copyright with the US Copyright and has two pending trademark applications for the term “Keyboard Cat”, click to see the first trademark application and the second trademark application. Keyboard Cat’s stardom has led to numerous appearances in commercials, including a feature role in a national Starburst candy television commercial.

Nyan Cat is a cartoon character with a cat’s face with a Pop Tarts body, basically a pink frosting sprinkled horizontal breakfast bar with glitter and a rainbow flowing therefrom. The GIF animation has also gone viral and it was the fifth most-watched video on YouTube in 2011, winning the 2012 Webbys’ “Meme of the Year” award. Torres also registered the copyright in the animated GIF with the US Copyright Office, but the complaint incorrectly repeats Keybaord Cat’s copyright registration number. Torres has also filed a trademark application to register the “Nyan Cat” word mark with the US Patent & Trademark Office.

Academy of Country Music Sues ACM Records In Los Angeles After ACM’s Attorney Files TTAB Trademark Opposition

April 11, 2013 | Milord A. Keshishian

Although the “ACM Awards” trademark is prominently featured on the Academy of Country Music’s website, I was shocked to learn that the Academy only last month filed a trademark application with the US Patent & Trademark Office to register the ACM and the ACM Awards trademarks. Obviously someone has not been reading my article on advantages afforded to USPTO registered trademarks.

Without the benefits of a trademark registration certificate establishing its priority rights, the Academy alleges and must now spend resources proving that it has been using the ACM trademark and ACM derivative marks since at least 1974 in association with services and goods in the country music industry. The Academy also alleges incurring, along with its media partners, expenditures of over $30,000,000.00 over the last 22 years in advertising and marketing the ACM marks, making the trademarks famous.

ACM Records, like a good trademark owner should, filed and obtained a USPTO trademark registration for the “ACM Records” trademark in 2008. If the Academy had previously filed and registered its ACM trademarks, Defendant’s trademark application would probably have been refused registration by the USPTO examining attorney. Instead, the Academy claims that ACM Records filed an opposition with the Trademark Trial & Appeal Board (“TTAB”) in February of 2013, asserting a likelihood of confusion and dilution would arise from the Academy’s application to register “The ACM Experience.” Thus the Academy seeks declaratory judgment to its rights to register and expand the use its ACM family of trademarks.

Storage Wars’ Star Brandi Passante Sues Hunter Moore Over Fake Nude Pictures

October 30, 2012 | Milord A. Keshishian

Brandi Passante appears on A&E Network’s Storage Wars reality show, as a result of which she has achieved notoriety and claims to be a worldwide celebrity and developed trademark rights in her name. Defendant Hunter Moore has been anointed the Internet’s most hated man for publishing unauthorized pornographic pictures of men and women, often submitted by jilted lovers, and linking the pictures to the individual’s Facebook page. Although he reportedly sold the website to an anti-bullying entity, he appears to be posting similar material to his tumblr account and new website.

After numerous unsolicited posts on her Twitter account stating that users wanted to see more of her pictures and video, Passante discovered that Moore had posted images of someone portraying her in a pornographic video to his tumblr account. Passante alleges that she never made any such video and Moore has fabricated the video for the purpose of trading on her fame and celebrity to draw traffic to his site. Moore is also accused of posting defamatory comments related to the video by falsely representing that Passante made the video for him. The complaint states that “Moore posted the video knowing that the images were not of Passante and did so maliciously, and with reckless disregard to Passante’s reputation, privacy, and well-being. He did so with the false and fraudulent intent to mislead the public into believing he was somehow affiliated with Passante.”

The Judge immediately issued a temporary restraining order preventing Moore’s posting, publishing, or linking to the Video, and ordering its immediate removal from Moore’s sites. The Judge also ordered Moore to appear on November 9th to argue why a preliminary injunction should not be entered preventing the dissemination of the video or why “all of Moore’s computers, servers and other electronic storage devices that contain copies of the Video should not be impounded by the United States Marshall’s offices.” The Judge relied on Passante’s likelihood of success on her trademark infringement and Lanham Act claims in issuing the TRO because Moore’s “use of Passante’s name and likeness in commerce in connection with a video and associated images thereof or therefrom (collectively “Video”), and his false and misleading claims that the Video originated with Passante were intended to deceive the public into believing that Passante was in some way affiliated with Moore, thereby driving web traffic to his illicit website.” Because there is no adequate remedy at law, injunctive relief is the “remedy of choice” in trademark cases. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. Cal. 1988).

Understanding Intellectual Property Law Seminar for In-House Counsel and Non-IP Lawyers

September 17, 2012 | Milord A. Keshishian

I have the pleasure of speaking – along with an esteemed panel – at Bridgeport Continuing Education’s intellectual property law seminar on September 27, 2012 in Los Angeles. The seminar is titled “Understanding Intellectual Property Law for In-House Counsel and Other Non-IP Lawyers”. Topics will include:

* An Overview of IP Law with a focus on California

* Trademark, Copyright, Trade Secret and Patent law explained

Christian Louboutin’s Red-Sole Shoe Trademark Is Valid, To A Limited Extent: Second Circuit

September 14, 2012 | Milord A. Keshishian

The popular Christian Louboutin (CL) shoes’ red sole trademark is readily recognized by the consuming public. But when CL sued Yves Saint Laurent (YSL) for making red soled shoes, the district court disagreed. Finding CL’s red sole trademark unenforceable, the court denied CL’s motion for a preliminary injunction to prevent YSL’s sales of shoes with lacquered red soles.

The Court of Appeals for the Second Circuit concluded that the district court incorrectly held that a single color can never serve as a trademark in the fashion industry. The Court, however, proceeded to then modify CL’s trademark registration for any shoe with a red sole to only apply with red, lacquered outsole with a contrasting upper of the shoe. In other words, the trademark excludes any red shoe with a red sole.

YSL claimed this was not the first time it had designed monochrome footwear with red soles, which it created in the 1970’s prior to CL’s 1992 adoption of the red sole trademark. Thus, YSL filed counterclaims seeking cancellation of CL’s trademark registration because it was ornamental and functional and sought monetary damages for CL’s interference with YSL’s business relations and for unfair competition because many retailers returned YSL’s shoes after receiving CL’s cease and desist letters.

Budweiser’s Not So Wise Trademark Cease & Desist Letter To Wine Maker Results In Declaratory Relief Lawsuit

August 23, 2012 | Milord A. Keshishian

In what appears to be another instance of trademark overreaching, Anheuser-Busch (“AB”) is being sued for sending a tenuous trademark cease and desist letter to San Antonio Winery (“SAW”) accusing SAW’s Bow Tie word mark and Bow Tie slogan of infringing AB’s U.S.P.T.O. design mark registrations for a solid polygon, a striped polygon, and the term “Budweiser” in a polygon. SAW, a trademark infringement lawsuit veteran that previously sued Banfi for trademark and trade dress infringement, wants the court to rule that its use of the Bow Tie word mark and the Bow Tie Slogan (“Bow Tie – the best dressed wine in the class”) does not infringe the Budweiser Design Marks or constitute unfair competition.

At the heart of every trademark dispute is prevention of consumer confusion and “the synonymous right of a trademark owner to control his product’s reputation.” James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976). SAW “contends that its use of the BOW TIE word Mark will not cause consumers to be confused or deceived into believing that San Antonio’s BOW TIE wine comes from Anheuser-Busch or that San Antonio’s BOW TIE wine is affiliated with, connected with or sponsored or licensed by Anheuser-Busch.”

For potential consumers and readers that may be confused by the parties’ respective marks, I have taken the liberty to label SAW’s product as “WINE” and AB’s product as “BEER” to quell any befuddlement. Because the last time I ordered a beer at a game I was asked whether I wanted the beer with a bow tie and predicted the need for the labeling clarification. Seriously though, I was unaware that Budweiser’s label was even meant to represent a bowtie and I think the same can be said for a great number of consumers. And yes, I know that wine and beer are related in a likelihood of confusion analysis and finding, but the marks here – when compared in context – are so completely dissimilar when viewed under marketplace conditions that AB will not be able to establish that consumers are likely to be confused. Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1245-46 (9th Cir. 1984) (even where marks were identical when viewed in isolation, determination of likely confusion required consideration “in light of the way the marks are encountered in the marketplace and the circumstances surrounding the purchase of the pens,” which sufficed to distinguish the two marks except in context of telephone solicitation, where such distinctions were not evident).