Articles Posted in Lanham Act 43(a) – 15 USC 1125

|

los-angeles-trademark-attorney-genetic-projec-e.jpgLos Angeles, CA – Project E previously filed (posted here) a trademark infringement lawsuit, at the Federal District Court in Los Angeles, against Genetic Denim over the use of the “XX” design stitched into jeans. Defendant Genetic Denim has countered with the filing of a third-party complaint (read here) against Michael D. Hecht, the owner of record of the USPTO registration of the “XX” trademark. Hecht allegedly licensed the “XX” trademark – on an exclusive basis – to Project E, the plaintiff in the action.

Genetic Denim quizzically asserts that Project E failed to allege the registered trademark in the initial complaint and contends the absence is based on the possible invalidity of the registration – i.e. “the mark was incapable of functioning as a trademark within the clothing industry as the XX cross-stitching was and is a common decorative element found on clothing.” Genetic Denim seeks cancellation of the trademark registration and monetary damages for unfair competition under the Lanham Act 43(a). The case is titled Project E, Inc. v. Genetic Denim, LLC, CV 08-04016 R (C.D. Cal. 2008).

|

Los Angeles, CA – In a complaint that is filled with as many twists and turns of a spy novel, CJ Environmental filed a trademark infringement lawsuit, at the Federal District Court in Los Angeles, over the use of the term “Cash 4 Gold” by a competing business. CJ alleges that it has operated as a precious metal recycling company since 2005 and has used the mark “Cash for Gold” on its website, which site was created by web designer Michael Scherenberg. Also, CJ alleges use of the “Cash for Gold” and “Cash 4 Gold” marks in various newspaper and media advertisements across the country.

los-angeles-trademark-lawyers-cash-4-gold.jpgThe complaint asserts that Defendant, long after CJ’s first use, created the www.cash4gold.com website using the same designer that CJ had used for its website, Mr. Scherenberg. “At the time Mr. Scherenberg created Defendant’s website, he still had access and control over Plaintiff’s website. On or about August 10, 2007, it is believed that Mr. Scherenberg was instructed by Defendant to remove the ‘Cash for Gold’ link and related image files from the Plaintiff’s website.” After months of back and forth letters among the parties’ lawyers, including take down notices to domain name registrants, this lawsuit was filed. The case is titled CJ Environmental, Inc. v. Cash4Gold, LLC, CV08-06689 R (C.D. Cal. 2008).

|

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.

Continue reading ›

|

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).

|

Los Angeles, CA – Trademark attorneys for Asics filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit against Dolce & Gabbana at the Los Angeles Federal District Court. Asics has registered numerous trademarks with the U.S. Patent & Trademark Office for its stripe design having two relatively parallel vertical stripes intersected by two curving stripes connected at one end. Asics has used the stripe design trademark on shoes and apparel – for over forty years – since 1966.

los-angeles-trademark-attorney-shoes-asics-dolce-gabbana.jpgAsics also asserts that it has widely advertised and promoted its products with the stripe design trademark through numerous and diverse advertising media, including print, television and the Internet. Asics’ print advertising is alleged to have the following “look for” advertising: “The stripe design featured on the sides of ASICS shoes is a trademark of ASICS Corporation and is a registered trademark in most countries of the world.”

Asics alleges that Dolce & Gabbana is “selling shoes under its D&G line bearing a mark that infringes ASICS’ famous Stripe Design mark at retail shoe stores and via the Internet.” The complaint continues, on information and belief, that Dolce & Gabbana has “engaged in intentional infringement by designing shoes that include a stripe design that is confusingly similar to ASICS’ famous Stripe Design.” The complaint identifies five different Dolce & Gabbana shoes which bear the allegedly confusingly similar stripe design. The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. § 1114 [Lanham Act §32(1)]; (2) Federal unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Lanham Act dilution of famous trademark under 15 U.S.C. § 1125(c); (4) Trademark infringement under California law [Cal. Bus. & Prof. Code § 14320]; (5) Trademark infringement under California common law; (6) Trademark dilution under California law [Cal. Bus. & Prof. Code § 14330]; (7) False advertising under California law [Cal. Bus. & Prof. Code §§ 17500, 17535]; and, (8) Unfair competition under state law [Cal. Bus. & Prof. Code §17200 and §17203]. The case is titled Asics Corporation v. Dolce & Gabbana, CV08-06407 AHM (C.D. Cal. 2008).

|

clothing-design-copyright-attorney-trademark-lawyer-evr.jpgLos Angeles, CA – Copyright and trademark attorneys for EV.R, Inc., dba Skinny Minnie, filed a copyright and trademark infringement lawsuit, in the Central District Of California (Los Angeles Division), against Anama, LLC. EVR is a clothing designer and manufacturer whose garments and clothing designs feature copyrightable works which have been registered with the US Copyright Office. EVR states that it created several unique designs which it exhibited to retailers at numerous tradeshows and in its own showrooms throughout the United States. EVR has also filed trademark application to register its two designs, both featuring skulls, with the U.S. Patent & Trademark Office.

EVR alleges that it recently discovered Defendant’s sales of women’s tops and shirts featuring designs identical to and infringing on EVR’s designs and trademarks. The complaint states that “Defendants have willfully and intentionally infringed EVR’s copyrights and trademarks by slavishly copying, selling, publicly displaying copies of EVR’s works or works substantially or strikingly similar thereto, namely, the Infringing Products, without EVR’s consent or pemission.” EVR requests either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. Also, EVR requests damages under the Lanham Act. The case is titled: EV.R, Inc. v. Anama, LLC, CV08-06348 SJO (C.D. Cal. 2008).

|

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).

|

Los Angeles, CA – Plaintiff Stonefire Grill’s trademark attorneys filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), and trademark dilution complaint at the Federal District Court for the Central District of California (Los Angeles Division). Stonefire Grill alleges that it began using its “Stonefire Grill” trademarks in 2002 and has obtained a USPTO registration for one of its trademarks and has other applications pending, all of which are for use with bar and restaurant services.

los-angeles-trademark-attorney-restaurant-pizza-08.jpgPlaintiff alleges that Defendants began using the dominant words “Stone Fire” for its business name long after Plaintiff had adopted its Stonefire trademark. Although the trademarks are not exactly the same, Plaintiff alleges that “Defendants’ name and mark are substantially identical in appearance, sound, and connotation to Plaintiff’s STONEFIRE Mark; and, in particular, the dominant words ‘STONEFIRE’ are identical to Plaintiff’s STONEFIRE Mark.” As a result, the complaint continues, “Defendants’ Mark so resembles Plaintiff’s STONEFIRE Mark as to be likely to cause confusion, to cause mistake, or to deceive the consuming public.” The case is titled Stonefire Grill, Inc. v. Stone Fire Pizza, et al., CV 08-06223 AHM (C.D. Cal. 2008).

PRACTICE NOTE: Plaintiff’s website lacks the registered trademark notice (i.e. the “R” in the circle symbol ®) or any notice that it has a USPTO registered trademark for “Stonefire Grill.” It is highly advisable to display the ® symbol with registered trademarks because under 15 U.S.C. § 1111, no damages and no profits shall be recovered unless and until the defendant had actual notice of the registration.

|

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.

|

Los Angeles, CA – Trademark attorneys for Modavox, Inc. filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint against AOL at the Federal District Court in Los Angeles. Modavox licenses and sells internet video and radio software and services under its Boombox Radio mark. Modavox, through its predecessor-in-interest, registered the Boombox Radio trademark with the U.S. Patent & Trademark Office in 1999.

los-angeles-trademark-attorney-radio-internet-aol-boombox.jpgModavox alleges that AOL “willfully and deliberately used and is using the Mark with notice of Palintiff’s ownership of the Mark and began to use the name ‘Boombox’ well after Plaintiff’s Mark had been registered to offer virtually identical services as Plaintiff has offered and registered under the Mark.” Modavox alleges that it sent a cease and desist letter to AOL, but AOL has refused to stop using the trademark. The case is titled Modavox, Inc. v. AOL, LLC, CV 08-05914 SJO (C.D. Cal. 2008).