Articles Posted in Counterfeit

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UPDATE 1/27/2010: Upper Deck settles Yu Gi Oh! counterfeiting case. Details here.

trademark-attorney-yu-gi-oh-counterfeit-upper-deck.pngLos Angeles, CA – Yu Gi Oh! owner Konami sued Upper Deck, its former distributor, for selling counterfeit trading cards. (Details here) After hearing both parties’ motions for summary judgment, the Court found that Konami had “presented evidence to establish every element of liability [for] counterfeit activity and violation of federal unfair competition law, pursuant to the Lanham Act, on the part of the [Upper Deck] Defendants.” (Order available here) The Court also found that Upper Deck was liable for common law trademark infringement and California unfair competition under Business & Professions Code § 17200. On the copyright infringement claim, the Court partially found that Upper Deck infringed the “Reverse Art” copyright, which refers to the text that appears on the back of the trading cards. The statement of undisputed facts is available here.

In another order, available here, the Court ruled in Konami’s favor because the “reproduction and/or manufacture of unauthentic cards does not fall within the ‘Approval’ clause of the 2006 Letter of Intent.” Conversely, the Court denied Upper Deck’s motion to limit its liability. In yet more bad news for Upper Deck, in another order that’s available here, the Court found for Konami on Upper Deck’s counterclaims for breach of contract and slander per se.

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trademark-attorney-rolex-trademark-counterfeiting-trademark-infringement.jpgLos Angeles, CA – Rolex Watch USA, Inc. sued Aaron Gallagher, doing business as rplwatches.com, replwatches.com, and watchreps.com, for trademark counterfeiting, trademark infringement and unfair competition under the Lanham Act § 43(a). Rolex manufactures high-end watches, watch bracelets and related products for men and women, which are sold under the Rolex family of trademarks and several other registered marks.

Rolex alleges that in May of 2006 it discovered Defendant’s watchreps.com website and it was able to shut it down through the website’s Internet Service Provider. Defendant then contacted Rolex’s counsel and attempted to reactivate the website, but Rolex did not receive a response to its settlement demands in return for reactivation. In April of 2009, while Rolex was investigating sales of infringing watches on craigslist.org, it discovered that pictures in the classified ads linked to Defendant’s reactivated watchreps.com website. In response to Rolex’s cease and desist letter, Defendant allegedly stated that Rolex “will have no further problems regarding this issue.” Rolex’s investigator, however, responded to an ad on craigslist.org and received an email from replwatches.com allegedly signed by Aaron. Upon Rolex’s request, the ISP identified the registrant of the website as Aaron Gallagher. When the investigator called to purchase the watch, Defendant allegedly stated that Rolex “was after me…they’re watching me like a hawk.” The investigator received a watch that is allegedly counterfeit and infringes on Rolex’s trademarks. Thus, Rolex determined it was time to file suit. The case is Rolex Watch USA, Inc. v. Aaron Gallagher, et al., CV 09-4646 R (C.D. Cal. 2009).

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UPDATE 1/10/2010: Court rules that Upper Deck counterfeited Yu Gi Oh! cards. Details here.

Los Angeles, CA – In October of 2008, Konami sued Vintage Sports Cards, Inc. in the Central District of California for sales of allegedly counterfeit Yu-Gi-Oh! trading cards (details blogged here). The Court entered a permanent injunction against Vintage and, after taking expedited discovery, Konami discovered that Upper Deck – Konami’s exclusive distributor – was the alleged source of the infringing cards distributed by Vintage.

Upper Deck allegedly was the source of “at least 531,240 counterfeit Rare Cards” provided to Vintage. And in October of 2008, Konami’s attorneys discussed Upper Deck’s role in the distribution of allegedly infringing cards with Upper Deck’s lawyers. During counsels’ communications, Upper Deck’s lawyers allegedly threatened Konami with “mutual assured destruction” through litigation.

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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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Los Angeles, CA – Trademark attorneys for Throttle Rocker, Inc. filed a trademark and trade dress infringement, counterfeiting, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles. Plaintiff manufactures motorcycle accessories, including a contoured throttle device which attaches to the throttle of a motorcycle and provides relief when the rider squeezes the throttle. Plaintiff has sold the devices under its Throttle Rocker trademark since 1995 and has registered a word mark and a logo with the U.S. Patent & Trademark Office. The complaint also asserts that the trade dress of the black device features “the following distinctive features: a velcro strap, an arcuate top portion and a concave-shaped base portion, which is approximately twice as wide as the top portion.”

los-angeles-trademark-attorney-trade-dress-throttle-rocker.jpgDefendant Eurodezigns, Inc. and several individual defendants are accused of selling a counterfeit product which allegedly uses the Throttle Rocker trademarks and infringes on Plaintiff’s trade dress. The complaint asserts that “Defendants’ use in commerce of THROTTLE ROCKER and its [sic.] sale of the counterfeit product, is likely to cause confusion, decpeiton and mistake in the minds of the public with respect to the source and origin of Plaintiff’s products.” The case is titled Throttle Rocker, Inc. v. Eurodezigns, Inc. et al., CV 08-07361 ODW (C.D. Cal. 2008).

PRACTICE NOTE: From the description of the alleged trade dress in the complaint and Plaintiff’s advertisement touting the comfort on the heal and palm of the hand imparted by the contoured shape of the device, it is going to be difficult to prove that the design is non-functional and entitled to trade dress protection.

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Los Angeles, CA – Trademark and copyright attorneys for Guru Denim filed a trademark infringement, copyright infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles to stop sales of allegedly counterfeit knock-offs of its True Religion® brand of jeans. Guru Denim has sought copyright, patent, and trademark protection on its garments and jeans. Guru Denim owns U.S. Patent No. D547530 for the stitch pattern applied to True Religion Brand Jeans pants. Guru Denim owns two U.S. Copyright Registrations for the True Religion Brand Jeans Designs, Copyright Certificate of Registration numbers VA1-192-834 and VA1-301-845.

attorneys-jeans-denim-apparel-copying-trademark-design-copyright-patent-true-religion.jpgGuru Denim owns a USPTO registered trademark in the pocket stitching pattern that appears on True Religion Brand Jeans pants and the overall stitching pattern on the front of True Religion Brand Jeans pants. Guru Denim also has 4 USPTO registered trademarks for “True Religion Brand Jeans” with assorted designs. Finally, Guru Denim has registered its “True Religion” word marks with the USPTO.

Guru Denim’s investigators discovered that numerous defendants were selling allegedly fake and counterfeit True Religion® jeans in their retail stores. The complaint states that the Los Angeles Police Department executed search warrants on some of the defendants’ premises and seized numerous allegedly counterfeit True Religion® apparel. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. §1114; (2) Federal copyright infringement under 17 U.S.C. §501; (3) False designation of origin under 15 U.S.C. §1125(a); (4) Trademark dilution under 15 U.S.C. §1125(c) and California Business & Professions Code §14330; and (5) Common law copyright infringement under California Civil Code §980. The case is titled Guru Denim, Inc. v. Hercel Zarrabian, et al., CV 08-07395 R (C.D. Cal. 2008).

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UPDATE 1/10/2010: Court rules that Upper Deck counterfeited Yu Gi Oh! cards. Details here.

Los Angeles, CA – Konami Digital Entertainment, through its trademark attorneys, commenced litigation for trademark infringement, Lanham Act 43(a) unfair competition, and copyright infringement lawsuit against Vintage Sports Cards, Inc. at the Los Angeles Federal District Court. Since 1973, Konami has developed and published popular trading cards, card games, interactive entertainment software products, collectibles and toys. Konami has registered numerous trademarks with the U.S. Patent & Trademark Office, including its word mark and numerous logos.

trademark-litigation-attorney-los-angeles-konami-yu-gi-oh.jpgKonami has created Yu-Gi-Oh!, a Japanese Manga (a form of comics), animation television series and card games. Konami has filed for and received numerous copyright registrations from the U.S. Copyright Office. The game’s rules ascribe a range of powers and relative values to specific cards, wherein “Rare Cards” are highly sought after by players and collectors and have the greatest commercial value. In the United States, Konami sells the game cards through its exclusive distributor, The Upper Deck Company.

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Los Angeles, CA – Trademark attorneys for Mexico’s Club De Futbol America filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit at the Los Angeles Federal District Court against operators of a soccer club using the Club America trademark in the United States. Club America is a professional soccer club formed in 1916 and is one of the most popular soccer teams playing in Mexico’s Primera Division. It has registered with the U.S. Patent & Trademark Office the words “Club America” and its design trademark of a ball with the letters “C” and “A” on either side of the continents of North and South America. Club America also runs a soccer school under its word and design trademarks.

trademark-attorney-mexico-futbol-soccer-club-america.jpgClub Amercia accuses the Defendants of using the Club America trademarks in operating competing soccer training schools, whereby to “the average consumer, there is no way to distinguish promotion or advertising of the Counterfeit Schools from the Authentic Schools.” Defendants are accused of using the website www.clubamericaschool.com to promote the competing soccer training schools under the additional names of “Casa De Deportes,” “Centro De Formacion Club America,” “Club America,” “Club America School,” and/or “America School Professional Soccer Academy.” Defendants are accused of the deliberately infringing and causing confusion by using Plaintiff’s logo on their website, by displaying the team’s official eagle mascot, and having a prominent hyperlink to Plaintiff’s official website. Plaintiff alleges that defendants have failed to comply with three cease and desist letters, thereby forcing the filing of the instant lawsuit. The case is titled Club De Futbol America v. Mike Ochoa, et al., CV08-06563 MRP (C.D. Cal. 2008).

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los-angeles-trademark-attorney-playboy.jpgLos Angeles, CA – Trademark attorneys for Playboy commenced trademark infringement litigation, at the Central District Court of California, over the sale of costume jewelry and accessories bearing its trademarks. Playboy magazine has been continuously published since 1953 and is now available in approximately 47 countries. Playboy has registered its trademarks with the U.S. Patent & Trademark Office, and the trademark is used on over 1,500 products that are sold in more than 125 countries, ranging from apparel and jewelry to slot machines and video games.

Playboy has also used its Rabbit Head Design since 1954 and owns at least 1862 trademark registrations in approximately 170 countries. The complaint alleges that “long after Playboy’s adoption and use of Playboy’s Trademarks in connection with products and long after federal registration of Playboy’s Trademarks, Defendants commenced the importation, distribution, advertising, offering for sale and sale of merchandise bearing counterfeits of Playboy’s Trademarks.” In addition to preliminary and permanent injunctions, the complaint seeks unspecified monetary damages. The case is titled Playboy Enterprises International, Inc. v. Axcess, Inc., SACV08-994 JVS (C.D. Cal. 2008).

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Santa Ana, CA – Trademark attorneys for clothing/apparel manufacturer Louis Vuitton filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), and trademark counterfeiting complaint at the Federal District Court for the Central District of California (Santa Ana Division). The complaint recites that the luxury goods manufacturer began selling its luggage in France in 1854 and in the United States in 1893. In 1896, Louis Vuitton created the LV monogram with three motifs (shown below) and registered it with the U.S. Patent and Trademark Office in 1932. Louis Vuitton has additional design/logo trademarks that are also registered with the USPTO.

santa-ana-trademark-attorney-louis-vuitton-mob.jpgDefendants Mob, Inc. and Tilly’s, Inc. are alleged to have counterfeited and infringed on Louis Vuitton’s trademarks by selling unauthorized clothing, including t-shirts and sweatshirts. Louis Vuitton alleges that “Defendants’ advertising, offering for sale and sale of Defendants’ [clothing] subjected consumers to confusion in that consumers were likely to purchase Defendants’ [clothing] falsely believing that Defendants and/or Defendants’ [clothing] are affiliated, connected, or associated with Plaintiff, or falsely believing that Defendants and/or Defendants’ [clothing] originate from, or are sponsored or approved by Plaintiff when they are not.” The case is titled Louis Vuitton Malletier, S.A. v. MOB, Inc., et al., SACV08-736 AG (C.D. Cal. 2008).

PRACTICE NOTE: I previously posted (Click Here) about the Louis Vuitton and “Chewie Vuiton” parody case, where the defendant’s parodical use of the LV Monogram was found to not infringe on Louis Vuitton’s trademarks or copyrights.