Articles Posted in 17200 Unfair Competition

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Los Angeles, CA – EABO, Inc. sued Huntington Beach, CA based Mimic Skateboards, Inc. for copyright infringement, trademark infringement, trademark dilution, trade dress infringement and unfair competition. Plaintiff manufactures various sized disc shaped wooden boards that rest upon a cylinder shaped roller, which were originally designed by surfers for training purposes. The IndoBoard has now evolved into its own sport where individuals stand on the board and rock it back and forth to balance on the roller and perform various tricks. If a picture is worth 1,000 words, then moving pictures are priceless:

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

Plaintiff is the exclusive licensee of a registered Indo Board design trademark and the common law rights to the word mark. Plaintiff is also the copyright owner in an instructional DVD created in 2004. The complaint alleges that beginning in 2001, Plaintiff entered into a manufacturing agreement with Mimic to manufacture its boards, which relationship terminated in 2008 when Mimic informed Plaintiff that it was going to only manufacture skateboards.

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Los Angeles, CA – Energy drink manufacturer Rockstar, Inc. licenses its trademarks from its founder and CEO, Russell G. Weiner. The Rockstar family of trademarks includes Rockstar Energy Drink®, Rockstar®, Party Like a Rockstar®, and the pending Rockstar Energy Shot™. In addition, Rockstar’s promotional materials for its drinks use the tagline “So grab it, shoot it, and Rock ON!” Rockstar alleges that it has sold over one billion cans of its energy drinks and has annual sales of several hundred million dollars. The energy drinks have been sold in containers having the alleged distinctive trade dress depicted below.

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Defendant Rock On Energy, LLC is accused of using the confusingly similar trademark ROCK ON for a competing energy drink, which is sold by at least one mutual retailer. Also, Defendant is accused of using the confusingly similar “Live Loud. Play Hard. Rock On” tag line for its energy drinks. Further, Defendant allegedly uses a beverage container and product packaging that is confusingly similar to Rockstar’s trade dress. Defendant’s container is mostly black with lettering that is similar in fonts and colors to that of Rockstar’s. The case is Rockstar, Inc. v. Rock On Energy, LLC, CV 09-04017 GAF (C.D. Cal. 2009).

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trademark-attorney-tommys-original-hamburgers.jpgLos Angeles, CA – Tomdan Enterprises, Inc., which does business under the more recognizable “Tommy’s Original World Famous Hamburgers” name and trademark, filed a trademark and trade dress infringement, Lanham Act unfair competition, and trade secret misappropriation lawsuit against Tommy’s Original Chili Factory, Inc., and several individual defendants. Plaintiff has been in the restaurant business for the last fifty years, serving up hamburgers, cheeseburgers, hot dogs, and – my favorite – chili cheese fries, among other food items. Plaintiff alleges that it adopted the Tommy’s trademark in 1960 and registered the trademark with the California Secretary of State in 1978.

Plaintiff’s burgers and dogs are always served with chili, except when a patron specifically requests it be excluded. I have heard that consumption of a Tommy’s burger with a side of chili-cheese fries in the wee hours of the morning, after a night of libations with college friends, are warranted to reduce any morning-after negative side-effects. A side of extra pickles is believed to further suppress any hang-over symptoms. For those not familiar with the structure of a Tommy’s cheese burger, an element by element depiction is provided herein.

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Plaintiff alleges that Defendants were aware of Plaintiff’s Tommy’s mark and trade dress, but adopted a mark, logo, and trade dress that are confusingly similar to Plaintiff’s. Plaintiff alleges that Defendants have misappropriated Plaintiffs proprietary and trade secret information in the form of its recipes, including, but not limited to, its chili. Plaintiff allegedly sent a cease and desist letter – through counsel – to Defendants in December of 2008. But Defendants have allegedly refused to stop their activities. The case is Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).

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trademark-attorney-exercise-fitness-trx.jpgLos Angeles, CA – Fitness Anywhere, Inc. filed a trademark infringement and Lanham Act § 43(a) unfair competition lawsuit against Gofit, LLC. Plaintiff’s founder is a former U.S. Navy SEAL and created the exercise equipment to allow his team to exercise while in the field and without access to traditional exercise equipment. The equipment, which later became known as the TRX device, is manually operated and a variety of exercise routines can be performed with the user’s own body weight providing resistance. Plaintiff also provides a website to support the TRX device by designing and offering various exercise routines.

Plaintiff has registered its “Suspension Training” and “Make Your Body Your Machine” trademarks with the USPTO, for both fitness equipment and physical fitness educational services. Plaintiff alleges that Gofit has used the “Suspension Training” and “Suspension Training At Home” trademarks to advertise and sell its rival product. Gofit received a cease and desist letter from Fitness Anywhere’s counsel and allegedly agreed to stop using the objectionable marks by May 1, 2009. Gofit, however, is accused of continuing to use the “Suspension Training” marks and exacerbating the situation by adopting a “Make Your Body Your Gym” mark. The case is Fitness Anywhere, Inc. v. Gofit, LLC, CV 09-03828 SJO (C.D. Cal. 2009).

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trademark-attorney-jeans-pocket-trade-dress-hudson.jpgLos Angeles, CA – Hudson Clothing,LLC filed a trade dress, Lanham Act § 43(a) trademark infringement, and false advertising complaint against BVDK Design, Inc. Plaintiff designs high end denim jeans and alleges that, since 2002, it has used a distinctive back pocket flap design trademark, which it also claims functions as its trade dress. Plaintiff contends it occupies the “premium” denim market, which means – prepare yourself – jeans in excess of $150 a pair. “This market attracts consumers focused on value, style, fit and comfort.”

Plaintiff alleges that BVDK’s jeans, in contrast, lack the reputation and quality that Hudson’s jeans enjoy. But in order to penetrate the premium denim market, defendant is accused of intentionally adopting and using a confusingly similar pocket flap. David Kahn, the owner of BVDK, is also named in the suit and is accused of selling the purportedly infringing jeans on the www.davidkahnjeanswear.com website. Plaintiff also learned that Defendants’ products, which are sold as the “Nikki” style, was available at the same retailer, Nordstrom. Although there is a false advertising cause of action, Plaintiff does not detail the allegedly false statements that were made with respect to the quality of the products. The case is Hudson Cothing, LLC v. BVDJ Design, Inc., CV 09-3275 R (C.D. Cal. 2009).

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Santa Ana, CA – Plaintiff Planet Coffee Roasters, Inc. filed a trademark infringement, Lanham Act § 43(a), and dilution claim against Garden Grove, California based Defendant Planet Coffee. Plaintiff alleges that it has been using the Planet Coffee trademark since 1993 on coffee beans and services related to coffee, with “a majority of its sales of its products and services in and around the California geographic region, including Orange County, California.” This statement defeats Plaintiff’s cause of action for trademark dilution because the Trademark Dilution Revision Act of 2006 limited dilution causes of action to nationally famous marks.

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Unfortunately for Plaintiff, cups of bitter refills are sure to follow. Plaintiff never registered its trademark with the USPTO and only recently filed a word mark and a design mark application. Both applications, however, have been refused registration based on two 1995 registrations owned by Souper Salad, Inc. for Planet Coffee® and Planet Coffee® plus design. Plaintiff is now going to have an uphill battle establishing ownership of its alleged trademarks. The case is Planet Coffee Roasters, Inc. v. Planet Coffee, SACV 09-571 MLG (C.D. Cal. 2009).

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trademark-attorney-swimsuit-ipanema.jpgSanta Ana, CA – James Brady and Patricia Brady filed suit at the Federal District Court in Santa Ana against Quicksilver Americas, Inc., Radio Fiji, Dillard’s Inc., B. Suits, Inc., and Pampo’s Dance Emporium, Inc. In 1985, Plaintiffs, through their prior corporation, developed a line of swimwear manufactured in Brazil and used the Ipanema trademark on the goods. The Ipanema trademark was registered with the USPTO in 1993 and subsequently transferred to the Plaintiffs in 1998. The registration has become incontestable under 15 U.S.C. § 1065. Plaintiff’s “The Girl From Ipanema” trademark, however, is not incontestable because it was registered less than five years ago.

Plaintiffs allege that Defendants have recently manufactured swimwear, which they sell under the Ipanema trademark. Plaintiffs contend that they sent Quiksilver a cease and desist letter in August of 2004, but it has refused to stop use of the Ipanema trademark. In addition to the trademark cause of action, Jennifer assert a Lanham Act § 43(a) false designation of origin claim and a California Business and Professions Code §17200 unfair competition claim. The case is James W. Brady, et al. v. Quiksilver Americas, Inc. et al., SACV 09-553 MLG (C.D. Cal. 2009).

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Los Angeles, CA – Manley Toys Ltd filed a trademark and trade dress infringement lawsuit against Radco Ltd in the U.S. District Court for the Central District of California (Los Angeles Division). Manley designs and manufactures a variety of toys including the inflatable waterslide toys that are the subject of the lawsuit. Manley is no stranger to trade dress lawsuits involving waterslides, being previously sued by Wham-O (details here).

trademark-attorney-toys-trade-dress-manley-waterslide-radco.jpgFour years ago, Manley created and sold a waterslide toy under the trademark “The Plunge,” which it alleges has been highly successful. The complaint also contends that Manley has “adopted a distinctive color scheme and appearance for its product which, taken together, form a protectable trade dress for The Plunge product.” The product is also marketed and sold under Manley’s Banzai trademark.

Manley alleges that Radco’s use of the mark “Pipeline Plunge” infringes its trademarks and that it was adopted in bad faith, “Defendants’ use of the term Pipeline in the name Pipeline Plunge is a transparent attempt to associate Defendants’ water slide with Plaintiff’s well-known Banzai brand by reference to the notorious and famous ‘Banzai Pipeline’ surf area off the north shore of Hawaii’s Oahu Island.” Defendants will probably argue that you’d have to, at the very least, be a Kamaaina to make that connection. Manley also claims that Defendants have used a color scheme “that is to all intents and purposes identical to Plaintiff’s The Plunge toy.” The case is Manley Toys Ltd v. Radco Ltd HK, et al., CV09-3129 VBF (C.D. Cal. 2009).

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Los Angeles, CA – Skycam manufactures the Emmy award winning aerial camera system that is used to obtain above the action camera shots at sporting events such as the Super Bowl®. Skycam filed suit against Patrick Bennett and Actioncam, LLC for trademark and copyright infringement and trade secret misappropriation.

trademark-attorney-copyright-trade-secret-skycam.jpgPlaintiff alleges it hired Bennett as its chief engineer and provided him with engineering and design documents to work on the next generation of aerial cameras. Although Bennett developed new stabilization algorithms and hardware he was testing, Skycam states that it has not yet publically disclosed or the displayed the innovations. Skycam also alleges that in his position as chief engineer, Bennett was provided access to Skycam’s customer and vendor lists.

In 2006, Bennett and Skycam entered into a Separation Agreement and Release when his employment with Skycam ended, which agreement included a provision for maintaining the confidentiality of all proprietary information. Skycam alleges that “under Bennett’s guidance and with full knowledge of Bennett’s obligation to keep information learned during his prior employment with Skycam confidential, Actioncam utilized the confidential information provided by Bennet to develop” a competing aerial camera system which is marketed to Skycam’s customers. Defendants allegedly posted Skycam’s copyrighted works on their website and used Skycam’s trademark without authorization. The case is Skycam, LLC v. Actioncam, LLC, CV09-02409 PA (C.D. Cal. 2009).

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Los Angeles, CA – Toughlove America, LLC sued Drew Barrymore’s production company (Flower Films, Inc.) and MTV Networks for trademark infringement and Lanham Act § 43(a) unfair competition for Defendants’ use of “Tough Love” as the reality show’s title. (Details here)

trademark-lawyer-tough-love-vh1-mtv-lawsuit.jpgThe Court determined that Plaintiff did not demonstrate that the balance of hardships tipped in its favor because by the time Plaintiff filed its preliminary injunction motion, the program was already in the middle of its first season. “Given that the evidence before the Court shows that if an injunction were to issue, Defendants would lose a ‘significan financial investment’ in the Program and advertising revenue…as well as suffer reputational damage with viewers and advertisers, the Court finds that the likely harm to Defendants if the preliminary injunction is granted exceeds the potential harm to Plaintiff if the preliminary injunction is denied.”

Next, the Court analyzed whether Plaintiff had shown a combination of probable success on the merits and the possibility of irreparable injury. With respect to its Intent To Use trademark application, the Court found that Plaintiff filed the ITU application after it read Defendants’ press release regarding the upcoming series. Thus, the Court determined that Defendants were the prior users of the mark, which use predated the ITU application filing date.

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