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trade-dress-infringement-lawsuit-type-65-coupe-factory-five-kit-carroll-shelby.jpgLos Angeles, CA – In response to Carroll Shelby’s trademark and trade dress infringement lawsuit (details blogged here), Defendant Factory Five’s attorneys filed a motion to either dismiss the case or transfer venue to the District of Massachusetts (details blogged here). Co-defendant Internet Community Partners, LLC, dba ffcobra.com, joined in Factory Five’s motion.

On February 23, 2009, after the parties’ oral arguments, the Honorable Christina A. Snyder granted Factory Five’s motion and transferred the case to the District of Massachusetts (read the order here), the location of the parties’ previous trademark and trade dress dispute in 2000.

In deciding a motion to transfer, the Court must consider the following three factors: (1) the convenience of the parties; (2) the convenience of the witnesses; and (3) the interests of justice. 28 U.S.C. § 1404(a); see Los Angeles Mem’l Coliseum Comm’n v. NFL, 89 F.R.D. 497, 499 (C.D. Cal. 1981).

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mexico-trademark-attorney-lawsuit-camaronazo.jpgRiverside, CA – Vista Del Mar Food & Beverages, LLC filed a Lanham Act § 43(a) trade dress infringement, false advertising, and unfair competition lawsuit at the Federal District Court in Riverside. Vista has sold a shrimp tomato cocktail juice under the Camaronzazo trademark since 2006 and uses a label with “images of a glass of the juice surrounded by shrimp against a backdrop of ocean, sky and clouds.”

In 2009, Vista became aware that Defendants were selling Clamato brand shrimp tomato cocktail juice with an allegedly similar design and label. Vista also complains that Defendants’ label has the words “The Original” prominently placed thereon. Vista alleges that Defendants’ representatives informed Vista that the Camaronazo was a great idea, and subsequently began selling Defendants’ product in 2008. As a result, Vista claims that “The Original” statement on Defendants’ label “is false and misleading because Defendants’ product is not the original or the first shrimp tomato cocktail juice.” The case is titled Vista Del Mar Food & Beverages, LLC v. Compania Exportadora De Aguas Minerales, S.A. De C.V. and Distribuidora Anahuac, S.A. De C.V., EDCV 09-217 SGL (C.D. Cal. 2009).

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copyright-lawyer-phonics-leapfrog.jpgLos Angeles, CA – Fun With Phonics, Inc. filed a copyright infringement lawsuit at the Federal District Court in Los Angeles over alleged infringing sales of phonetic language teaching tools by Leapfrog. Plaintiff’s predecessor, William O’Connor, created materials to aid in learning to read English by phonetic methods of instruction, including anthropomorphizing letters of the alphabet so that each letter would assume a character and engage in activities that children would associate with the letter. “For example, Mr. O’Connor drew the letter ‘I’ with sticky green liquid dripping from it and gave it the character of ‘Icky I.’ This characterization helped students remember that the letter ‘I’ makes the short vowel sound with which the word ‘icky’ begins.” These characters were used and sold in various media, including flash cards, audiotapes, and CD-Roms. Plaintiff then acquired the rights from Mr. O’Connor and filed copyright applications with the U.S. Copyright Office.

Leapfrog allegedly began marketing phonetic instructional materials infringing upon Plaintiff’s copyrighted materials in 2003. “Leapfrog’s materials presented anthropomorphized letters with visual representations giving each letter a character connected with the phonetic sounds associated with that letter.” Leapfrog is accused of copying the “Icky I” character from Plaintiff’s work, down to the sickly green liquid dripping from the letter. Plaintiff states that its damages cannot yet be determined and may elect between the profits generated by the Leapfrog or statutory damages under 17 U.S.C. § 504. Plaintiff also requests that the damages be enhanced because the Defendant’s alleged infringement is willful and intentional. Plaintiff also requests that their attorneys’ fees and other costs in connection with the prosecution of its claims be paid by defendant pursuant to 17 U.S.C. § 505. The case is titled Fun With Phonics, LLC v. Leapfrog, Inc., CV09-0916 CT (C.D. Cal. 2009).

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Los Angeles, CA – Patent attorneys for Minka Lighting shine a spotlight on Defendant’s alleged patent infringement with a lawsuit filed at the Central District of California. Minka is in the business of designing, manufacturing, and selling home products, including ceiling fans. Minka sells the subject ceiling fan under the Como trademark and the U.S. Patent & Trademark Office issued U.S. Patent No. D476,728, entitled “Combination Ceiling Fan And Light Fixture” for the subject design.

lighting-patent-attorney-ceiling-fan-patent-lawyer.jpgDefendant Regency Fans sells a lighted ceiling fan under the Spirit trademark, which is advertised on its website and elsewhere. The complaint alleges that “Defendant, without license from Minka, has sold and offered for sale and is selling ceiling fans to which the patented design of the ‘728 Patent or a colorable imitation thereof has been applied, including without limitation, Regency’s ceiling fan sold under the Spirit mark.” The complaint also incorporates by reference the patent infringement allegations as a basis for its California statutory (Cal. Bus. Prof. Code § 17200) and common law unfair competition causes of action. The case is titled Minka Lighting, Inc. v. Tacony Corporation d/b/a Regency Fan Corporation, EDCV 09-00234 SG: (C.D. Cal. 2009).

PRACTICE NOTE: It appears that the unfair competition claims are merely based on the patent infringement claim and should be dismissed as they are preempted. “Federal patent and copyright laws limit the states’ ability to regulate unfair competition.” Summit Mach. Tool Mfg. Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434, 1439 (9th Cir. 1993). A plaintiff’s state law claim must be “qualitatively different from a copyright or patent infringement claim” or else it is preempted. Id. at 1440.

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Los Angeles, CA – Godzilla’s trademark lawyers previously devoured Subway’s “Five Dollar Footlong” Commercial (blogged here) and are now endangering Pink Godzilla’s existence with a trademark infringement and Lanham Act § 43(a) unfair competition lawsuit filed at the Federal District Court in Los Angeles. Godzilla was reawakened by the detonation of an atomic bomb and since 1956, it has starred in twenty-seven sequel films. Godzilla’s USPTO registered trademark has been used and licensed for use on a wide range of merchandise, whereby the mark has become famous.

trademark-attorney-godzilla-pink.jpgDefendant allegedly operates a retail sales operation called “Pink Godzilla,” which sells Japanese-related games, toys and other merchandise online at www.pinkgodzillagames.com. Godzilla claims that Pink Godzilla is using the infringing mark on similar merchandise, including t-shirts, stuffed animals, card games, video games and posters. “Toho is informed and believes, and based thereon alleges, that Defendant chose Pink Godzilla for the name of its business and elected to affix the words ‘Pink Godzilla’ on much of its merchandise after the Godzilla Mark became famous and because it wanted to trade on the good will associated with Toho’s famous Godzilla Mark. The case is titled Toho Co., Ltd. v. Pink Gozilla LLC, CV 09-0830 FMC (C.D. Cal. 2009).

PRACTICE NOTE: I wonder if sushi is next on Godzilla’s menu: www.pinkgodzilla.com.

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trademark-attorney-coach-handbags-purse.jpgLos Angeles, CA – Trademark attorneys for Coach, Inc. filed a trademark infringement, dilution and unfair competition lawsuit at the Federal District Court in Los Angeles, which also seeks to cancel the trademark registration of the alleged infringer (15 U.S.C. § 1064). Coach, which started as a family-run workshop in Manhattan over sixty years ago, is the owner of the Coach® mark and the “CC Design” mark (pictured herein) and sells handbags, purses, apparel, and accessories under said marks. Coach has expended over a hundred million dollars in advertising of products bearing the marks and has sales of over two billion dollars annually.

The complaint states that on May 27, 2008, the U.S. Customs and Border Protection informed Coach that it had seized goods being imported from China by YH Forever, Inc. The seized goods allegedly used a mark confusingly similar to that of the “CC Design.” Coach then discovered that the Defendant had registered its “MW” mark with the USPTO. Coach contends that when the M and W are shown in solid colors, as with the seized goods, it essentially imitates the CC Design used by coach. The case is titled Coach, Inc. v. YH Forever, Inc., CV 09-00771 R (C.D. Cal. 2008).

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Although Cash4Gold.com is a defendant in a trademark infringement lawsuit (details here), its Super Bowl ad was the best this year:

 
https://www.youtube.com/watch?v=F66nURf8TBQ
 

Although Cash4Gold’s commercial was amusing, according to these sites (here and here) Cash4Gold’s business practices are not.

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murad-trademark-attorney-perfecting-serum.jpgLos Angeles, CA – Trademark attorneys for Murad, Inc. filed a trademark infringement and 15 U.S.C. § 1125(a) unfair competition complaint, at the Federal District Court in Los Angeles, against Boots Retail USA. Murad registered the Perfecting Serum® trademark with the USPTO in 1998, but it was registered on the Supplemental Register because the mark was descriptive. It is not clear why Murad has not since applied to register the trademark on the Principal Register under §2(f), which affords prima facie evidence of acquired distinctiveness. Instead, Murad must now prove acquired distinctiveness in Court. See Commerce Bancorp, Inc. v. BankAtlantic, 285 F. Supp. 2d 475, 484 (D.N.J. 2003)

The complaint alleges that long after Murad used and registered the Perfecting Serum® trademark, Defendant began using “the trademark Intense Perfecting Serum despite the fact the identified trademark wrongfully appropriates Murad’s registered Perfecting Serum trademark and is confusingly similar thereto. . . Defendant’s use of trademark Intense Perfecting Serum as alleged above to designate, advertise and/or promote the sale of skin moisturizer is likely to cause confusion or mistake or to deceive the purchasers of its products as to the source of origin of defendant’s products and to cause defendant’s products to be passed off or viewed as those which are provided or authorized by Murad.” The case is titled Murad, Inc. v. Boots Retail USA, Inc., CV09-0246 SVW (C.D. Cal. 2009).

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Los Angeles, CA – In response to Carroll Shelby’s trademark lawsuit (details blogged here), Factory Five Racing’s attorneys filed a motion to dismiss and set out Factory Five’s version of events, because this isn’t the first lap around the track between the parties. Eight years ago, Shelby sued Factory Five in the District of Massachusetts over the sale of replica kits of the 427 Roadster and Type 65 Coupe. The Massachusetts case settled with an entry of a consent judgment and injunction, wherein Shelby dismissed his claims of trade dress infringement with prejudice with respect to Factory Five’s kit cars, including the 427 Roadster and Type 65 Coupe and Factory Five agreed to refrain from using certain word trademarks. In addition, to avoid future litigation based on trivial alleged violations, the consent judgment contained a thirty-day cure provision after receiving written notice of any alleged violation.

factory-five-carroll-shelby-lawsuit-trade-dress-daytona-cobra.jpgAfter the Factory Five lawsuit, Shelby sued another party, Superformance International, in Massachusetts asserting the Cobra trade dress. Unfortunately for Shelby, he lost on summary judgment and the court found that Shelby did not have any trade dress rights in the Cobra vehicle design.

Similarly, Factory Five’s motion first requests dismissal under the doctrine of res judicata, i.e. the matter has already been judged and cannot be relitigated, because the trade dress claims were dismissed with prejudice. Langton v. Hogan, 71 F.3d 930, 935 (1st Cir. 1995) (“A judgment that is entered with prejudice under the terms of a settlement, whether by stipulated dismissal, a consent judgment, or a confession of judgment, is not subject to collateral attack by a party or a person in privity, and it bars a second suit on the same claim or cause of action.”)

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Los Angeles, CA – Trademark and copyright infringement and Lanham Act § 43(a) unfair competition lawsuit was filed at the Federal District Court in Los Angeles by Perfect Pushup, LLC’s attorneys. Plaintiff sells its “Perfect Pushup” product through infomercials and direct response, where the conception of a swiveling pushup exercise device is attributed to a former platoon commander of the United States Navy SEALs. Plaintiff has registered its “Perfect Pushup” trademark with the U.S. Patent & Trademark Office. In addition, Plaintiff has registered its works with the U.S. Copyright Office, which works include its advertising photos, box designs and workout poster. Plaintiff also owns the www.perfectpushup.com domain name and website.

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The Plaintiff alleges that it purchased defendants’ products and upon closer examination “found it to contain counterfeit merchandise. The product appeared to be almost identical to Plaintiff’s Perfect Pushup product, and included a direct counterfeit Perfect Pushup workout poster and workout DVD.” Defendants had allegedly brazenly established a website at www.perfectpushups.com (with an extra “s”) to sell the infringing product. The case is titled Perfect Pushup, LLC v. Suzette White, CV 09-0243 CW (C.D. Cal. 2008).