Articles Posted in Trademark Litigation

trademark-infringement-lawsuit-counterfeit-moshi-ebay-ipad-iphone-iglaze-accessory.jpgAevoe has filed a trademark infringement and false designation of origin lawsuit against numerous entities accused of selling iPad and iPhone accessories bearing its Moshi®, stylized M and iGlaze trademarks. Aevoe manufactures peripherals and accessories for portable electronic devices and computers that are sold through Apple, AT&T, and its own online retail store. It alleges that its Moshi® branded products have garnered extensive media coverage and Aevoe has built up and developed significant goodwill and trademark recognition in its entire product line. And in light of this success, it’s alleged that the Moshi® trademark and products have become targets for unscrupulous individuals and entities who wish to take a ‘free ride’ on Aevoe’s goodwill.

Aevoe is accusing numerous eBay sellers of selling counterfeit or imitation goods bearing its trademarks: “Defendants maintain and operate a storefront or webpage on eBay.com [through which] Defendants regularly and systematically advertised, marketed, distributed and sold products bearing unauthorized MOSHI® registered trademarks.” Regarding one defendant, E & D International Trade, Inc., Aevoe’s investigator purchased a “red Moshi iGlaze 4 back case cover for iPhone 4 4G” from E&D. Upon inspection, “security measures confirmed that the item defendants sold was in fact a counterfeit.” Thus, Aevoe contends, “Defendants’ actions have confused and deceived, or threatened to confuse and deceive, the consuming public concerning the source and sponsorship of the counterfeit ‘red Moshi iGlaze 4 back case cover for iPhone 4 4g’ sold and distributed by Defendants. By their wrongful conduct, Defendants have traded upon and diminished Plaintiff’s goodwill. Furthermore, the sale and distribution of counterfeit goods by Defendants have infringed upon Plaintiff’s federally registered trademarks.”

In addition to its trademark infringement and unfair competition claims, Aevoe asserts a claim for trademark dilution, which appears to be susceptible to a motion to dismiss. To establish a trademark dilution claim, Aevoe must allege that “(1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the defendant’s use of the mark is likely to cause dilution by blurring or dilution by tarnishment.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008). Under the Trademark Dilution Revision Act of 2006, however, a dilution cause of action is reserved for only the most truly prominent brands, such as Coca Cola, Apple, AT&T, or Sony, and it does not appear that Moshi is such a prominent, household name to survive a motion to dismiss.

trademark-copyright-infringement-tro-mgame-k2-license-breach.jpgK2 network sued Mgame in state court for breach of contract and fraud because K2 claimed overpayment of royalties in its distribution of the Knight Online 3D video game. Mgame then sued K2 in Federal Court seeking a temporary restraining order and a preliminary injunction for copyright infringement and violation of the Computer Fraud and Abuse Act. The Court denied the TRO and preliminary injunction because Mgame’s complaint did not have a claim that conferred the Federal Court jurisdiction. Click here for details.

Mgame has now filed a new complaint alleging copyright infringement, trademark infringement, and violation of the Computer Fraud & Abuse Act. Once again, Mgame requested that the Court issue a Temporary Restraining Order and Preliminary Injunction against K2 pending submission of the dispute to arbitration, as provided in the parties’ contracts.

The Court has once again denied Mgame’s application for a temporary restraining order because Mgame’s own conduct does not establish its entitlement to emergency relief:

los-angeles-clippers-trademark-clipper-darrel-laches.jpgClipper Darrell has been a fixture at Clippers’ basketball games for the last decade, even when the team was horrible and I would go watch them solely because my friend would give me his season tickets. In fact, Staples Center was so empty during Clippers games that Clipper Darrell was the only person cheering. But now that the Clippers are winning, my friend has stopped giving away his tickets and the Clippers have apparently told Clipper Darrell he can no longer use “Clipper” in his name or sell merchandise that allegedly infringes the “Clippers” trademark.

Although the Clippers will surely resort to the canned response of “we have a duty to enforce and protect our trademark or risk losing our trademark“, some trademark professors believe the risk to be overstated. But to Clipper Darrell’s advantage, when he and I were at past Clippers games, the only other “fan” in attendance was team owner Donald Sterling, who was actually and inexplicably heckling his own players. There is no doubt that Mr. Sterling saw and/or heard his counterpart, Clipper Darrell in his trademark half-blue/half-red suit, actually cheering for the Clippers. Thus, it appears that Clipper Darrell may have a laches defense against the Clippers’ trademark infringement claim if he can show that the Clippers knew or should have known of his infringing activity and they unreasonably delayed in filing a lawsuit. Miller v. Glenn Miller Prods., 454 F.3d 975, 980 (9th Cir. Cal. 2006).

The practical approach from both a legal and PR perspective would be to license Clipper Darrell to use the trademark and not alienate Clippers’ fans that have been loyal during the lean years. The trademark license would allow Mr. Sterling to increase revenue and thereby extend Blake Griffin the maximum contract allowed under the new collective bargaining agreement. But that assumes the Clippers are now practical.

trademark-infringement-retailer-technomarine-costco-overstock-authorized.jpgTechnoMarine is suing both Costco and Overstock.com for trademark infringement because neither is an authorized retailer of its watches, which it alleges are “either counterfeit or were obtained in bad faith from TechnoMarine’s authorized retailers/distributors, who are expressly prohibited from distributing” the watches to other retailers. TechnoMarine has been selling its watches since 1997 and owns several USPTO registered trademarks for the word TechnoMarine and its T and M logo. TechnoMarine alleges hundreds of millions in watch sales by high end retailers and tens of millions of dollars in advertising through numerous renowned magazines.

TechnoMarine alleges that the sale of its watches are strictly controlled and “contractually permitted only through authorized dealers, most of which are not authorized to sell the products on the internet. All of TechnoMarine’s authorized retailers/distributors have entered into agreements in which they are expressly prohibited from transshipping and selling TechnoMarine branded products to unauthorized third party retailers and online retailers.” TechnoMarine’s warranties are inapplicable to watches obtained through unauthorized retailers thereby reducing the quality of unauthorized products. Because Costco and Overstock are not authorized TechnoMarine watch distributors, the warranties are void and render the goods not genuine in violation of TechnoMarine’s trademark rights.

This isn’t Costco’s first rodeo in the unauthorized watch sales arena. Costco was previously sued by Omega for copyright infringement for selling gray market watches in the U.S., meaning that Costco bought legitimate Omega watches abroad and imported them into the U.S. for resale. The Omega watch had a copyrighted glove image and Costco’s sales in the U.S. constituted copyright infringement because it violated Omega’s rights to distribute the work. The District Court agreed with Costco that Section 109’s first sale doctrine trumped Omega’s exclusive rights. The Ninth Circuit Court of Appeals disagreed, holding that the first sale doctrine does not apply to copies not authorized for resale in the United States. The U.S. Supreme Court tied 4-4, thus allowing the Ninth Circuit’s decision to stand, but not resolving the split between the circuits.

trademark-dismiss-confusion-spearmint-rhino-chiappa-firearms-gun.jpgIn an opinion that shocked no one except Spearmint Rhino, the Court dismissed WITH PREJUDICE – a rarity at such an early stage in litigation – the strip club operator’s trademark infringement case against Chiappa Firearms. Spearmint sued Chiappa for using a rhino outline as a trademark on its guns alleging that its use is “likely to cause confusion, or to cause mistake, or to deceive because, among other reasons, consumers are likely to believe that there is an affiliation, connection, or association between” Spearmint and Chiappa. As predicted, the Court disagreed with Spearmint because consumers are unlikely to confuse its G-strings with guns.

Chiappa filed a motion to dismiss the complaint, wherein the court is requested to decide whether, assuming all the allegations in the complaint are true, the plaintiff has still failed to present a case entitling it to damages. The Court, however, must consider whether the claim is plausible on its face based on alleged facts. Thus, a complaint which alleges only labels and conclusions to meet the elements of the cause of action will not survive dismissal. Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007).

To prevail on its trademark infringement claim, Spearmint had to show that it had a protectable trademark and that a “reasonably prudent consumer” is likely to be confused as to the origin of a good or service. DreamWerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1992). To evaluate likelihood of confusion, Courts analyze the following non-exhaustive factors including: (1) strength of the mark; (2) relatedness to the goods; (3) similarity of sight, sound, and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion. AMF, Inc. v. Sleekcraft Boats, 559 F.2d 341 (9th Cir. 1979).

Before last week’s release of Twilight Saga: Breaking Dawn Part 1, a trademark and copyright infringement lawsuit saga dawned on clothing manufacturer B.B. Dakota over the pictured Bella Jacket. Summit Entertainment, the producer of the Twilight franchise that has raked in more than $1 billion in gross revenues, owns several USPTO trademark registrations for the “TWILIGHT” and “BELLA” trademarks, including for use on clothing and jewelry. Summit of course also owns all copyrights in the movies in addition to marketing and publicity materials and the “Bella Trading Card Image.” Summit’s licensing of the intellectual property rights has grossed an additional $63 million.

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Defendant BB is a clothing manufacturer that sold the pictured women’s cargo jacket in 2006 under the “Leigh” mark, which was discontinued in 2008. When the Leigh jacket was worn by Bella in the 2009 Twilight movie, BB was credited as the manufacturer in an Entertainment Weekly article accompanying a photograph. BB’s outside public relations contractor then contacted Summit’s manager of national publicity requesting permission to re-publish the EW image on its website, which she included in an email link to EW’s website. Summit’s representative responded with a simple “OK.” A few days later, BB requested permission to allow for a retail store to use the image, to which Summit responded with one word: “sure”.

Without seeking further permission, however, BB created “hangtags” for the jackets that included not the Entertainment Weekly picture, but an image of Bella wearing the jacket that Summit had used to promote posters, clothing, and other merchandise. Apparently, BB’s own PR rep warned BB to obtain permission to use the new image, but BB failed to heed the warning and argued that by including “As seen in the Twilight movie” language on the tag would constitute fair use. Thus, BB’s sales representative emailed the image to two hundred of her sales accounts representing that BB had permission to use the image on the hangtag and to publicize the product. The retailers in turn sent out email blasts using the Bella image with the belief that BB had properly licensed it. Summit sent cease and desist letters to BB’s retailers, after which BB instructed them to cut the hang tags from existing inventory and provided a substitute picture of a girl resembling the Bella character. To make matters worse, BB continued to refer to the jacket as the “Twilight jacket.”

Metropark, one of BB’s retailers, filed bankruptcy and ModCloth settled the matter. BB countersued Summit for trade dress infringement and unfair competition. Summit filed for summary judgment of liability on its trademark and copyright infringement, and trademark dilution claims and on BB’s counterclaims.
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halloween-costumes-copyrightable-copyright-trademark-lawsuit-power-rangers-pink.jpgSaban Entertainment originally created the “Power Rangers” live action children’s television series in 1993, where several teenagers would morph from ordinary people into powerful superhero characters wearing color-coded battle suits. The colors also served as each character’s name, e.g. the Pink or Blue Rangers. Plaintiff alleges that the “television series has been immensely popular with young audiences all around the world. To date, it has been broadcast over 19 seasons, spawned two theatrical films, and become a highly valuable merchandising franchise.”

To protect its intellectual property, Plaintiff has copyrighted the artwork and design of the Power Rangers uniforms (“Uniform Copyrights”) and also owns the copyrights in the television series where they are depicted. In addition, Plaintiff has copyrighted the characters in a style guide that is provides to authorized licensees. Further, Plaintiff is the owner of numerous USPTO trademark registrations incorporating the “Power Rangers” word mark and several USPTO registered trademarks for the Power Rangers character images.

Plaintiff accuses Underdog Endeavors, Inc. of advertising and selling Halloween costumes (one image shown here) on its www.mypartyshirt.com site that infringe Plaintiff’s “intellectual property rights relating to the popular ‘Power Rangers’ television series, brand, and related products.” In addition to the copyright and trademark infringement claims, Plaintiff brings causes of action for trademark dilution and unfair competition under Section 43(a) of the Lanham Act.

trademark-san-francisco-giants-major-league-mlb-gogo-lawsuit-clothing.jpgThe MLB champion San Francisco Giants not only failed to make the playoffs, but, to add insult to injury, their failure to register their stylized “San Francisco” logo is forcing them to defend a trademark lawsuit filed by a junior user, Gogo Sports. Gogo is an apparel manufacturer that sells customized and private labeled products according to its customer’s orders. Although Gogo is alleged to have adopted its San Francisco logo after the Giants, Gogo filed an application to register the trademark at the U.S. Patent & Trademark Office, whereas the Giants – surprisingly – did not, until only recently. On August 8, 2011, the Trademark Examining Attorney refused registration of the Giants’ later filed application for “clothing, namely, shirts and jackets; headwear” in light of Gogo’s previously registered – although on the Supplemental Register – trademark for “Caps; Hats; Headwear; Jackets; Shirts; Sweat shirts; Tops” because:

Here, the marks are virtually identical. Both share the same large wording SAN FRANCISCO in a stylized cursive font sloping upwards from left to right and with the same underline shape extending from the O under the wording. The only difference is the applicant did not include the geographically descriptive wording CALIFORNIA in small letters in the underline portion of the registrant’s mark.

Less than a month after the refusal, Major League Baseball Properties (“MLBP”) sent Gogo correspondence asserting superior rights in the design mark and demanding Gogo “immediately and expressly abandon the Supplemental Registration for the [mark], and immediately cease and desist from manufacturing, advertising, marketing, distribution, offering for sale and/or selling the Unlicensed Clothing and any other unlicensed product bearing any of the MLB Marks and/or any mark or graphic confusingly similar to and/or dilutive of any of the MLB Marks.”

Copyright-video-game-trademark-temporary-restraining-order-fallout-bethesda-masthead.jpgBethesda Softworks and Interplay Entertainment have waged a long-running, real world copyright and trademark battle over the virtual-world Fallout video game. The Bethesda v. Interplay Maryland lawsuit apparently arose over an ambiguity in the scope of a license back to Interplay in developing future Fallout video games. In 2007, Bethesda and Interplay entered into an asset purchase agreement that assigned all rights in the Fallout trademarks and copyrights to Bethesda. And, in a simultaneously executed trademark license agreement, Bethesda granted a license back to Interplay that provides:

Subject to the terms and conditions set forth in this Agreement, Bethesda grants to Interplay an exclusive, non-transferable license an right to use the Licensed Marks on and in connection with Interplay’s FALLOUT-branded [Massively Multiplayer Online Game] MMOG (the “FALLOUT MMOG” or “Licensed Product”) and for no other purpose. The conditional license herein does not grant Interplay any right to sublicense any of the licensed rights without Bethesda’s prior written approval.

In its initial filings, Bethesda claimed that Interplay failed to meet other contractual requirements, including securing required financing and complying with commercial launch deadlines. Later, Bethesda claimed that the trademark license applied only to the Fallout mark and not to any of the elements or characters in the game. Interplay countered that Bethesda’s interpretation cannot be harmonized with the rest of the agreement that provides for Interplay’s right to use “non-FALLOUT MMOG, inter alia, any or all locations, graphic representations, creatures, monsters, names, likenesses, [etc.]” should the agreement terminate prior to commercial launch. The Maryland court appears to have initially agreed with Interplay’s interpretation by denying, without much analysis, Bethesda’s motion for preliminary injunction.

Trademark-attorney-spearmint-rhino-chiappa-gun-firearms.jpgSpearmint Rhino provides adult entertainment services, namely, it owns a large number of strip joints. In its sanitized complaint, however, “Rhino’s principal business is the development and licensing of its trademarks and the maintenance of control of the quality of goods and services offered in connection with Rhino’s marks.” As a side note, Rhino probably receives numerous applications for the position of quality control supervisor, but I digress.

Rhino owns several federally registered trademarks for its Rhino Outline logo, here, here, and here, that were filed on February 3, 2006. Thus, Rhino contends that its “registrations give it and its authorized licensees priority throughout the United States over any use in commerce of the Rhino Outline marks that had not commenced by February 3, 2006.”

Although the registrations cover goods and services in the adult entertainment industry, e.g. cabarets and “panties, g-strings, brassieres and corsets for semi-nude and erotic dancers,” Rhino sued Chiappa Firearms for allegedly using a confusingly similar Rhino design on its handguns: “Chiappa’s use of the Rhino Outline marks is likely to cause confusion, or to cause mistake, or to deceive because, among other reasons, consumers are likely to believe that there is an affiliation, connection, or association between” Rhino and Chiappa. Seriously? Maybe I’m a bit daft, but will consumers really confuse panties and guns?