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

Los Angeles, CA – Trademark attorneys for Pinkberry filed several trademark infringement and Lanham Act 43(a) unfair competition lawsuits, at the Los Angeles Federal District Court, against several frozen yogurt competitors. Pinkberry’s “frozen yogurt” treats are all the rage, which I don’t quite understand. I would much rather have my frozen yogurt at The Bigg Chill, which has been serving frozen yogurt with your choice of toppings for at least fifteen years and whose parking lot entrance literally causes a parking lot on Olympic Boulevard with the ant-like row of cars waiting to park. But I digress. Pinkberry asserts that it began serving its “frozen yogurt” treats in 2005 and has recently registered its trademarks with the U.S. Patent & Trademark Office. One registered trademark is for the “Pinberry & Stylized Leaf and Berry Swirl Design,” which is illustrated herein.

The complaint alleges that Defendants took a Pinkberry banner and used it to promote, advertise and sell Defendants’ products. “Specifically, Defendants covered and replaced ‘PINK’ with ‘COOL’ in the same stylized font and color to create a COOLBERRY banner that was posted and displayed on Defendants’ restaurant door.”

Although it appears that the Defendants may have used a modified Pinkberry banner, all may not be lost for the Defendants. As the Los Angeles Times reports, “Pinkberry was on the receiving end of a lawsuit this year filed by customers who contended that the popular treat might not be frozen yogurt. That case was settled in April, with Pinkberry giving $750,000 to two Southern California charities as part of the deal. It also began mixing its yogurt at a dairy, not in-store, and disclosed its ingredients online.” (Read L.A. Times Article) If in fact Pinkberry was not selling “frozen yogurt” and was violating food labeling laws, the validity of its trademark registrations may be comprised based on its representations to the USPTO. There are also allegations that Pinkberry indeed copied its store designs and frozen yogurt concept from Korea based Red Mango, noting that the owners of Pinkberry are Korean immigrants. (See HERE).

Los Angeles, CA – Trademark attorneys for La Casita Mexicana, translates to “the little Mexican House,” filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint, at the Federal District Court in Los Angeles, over another restaurant’s use of the same trademark. La Casita Mexicana is located in Bell, California and has registered its restaurant name as its trademark at the U.S. Patent & Trademark Office. Plaintiff, who claims Mayor Antonio Villaraigosa as a patron, asserts that its “customers and the public have come to identify La Casita Mexicana with Plaintiff’s excellent food and service.”

Plaintiff asserts that Defendant began using the same mark for its restaurant services ten years after Plaintiff’s first date of use. Plaintiff became aware of Defendant’s use through phone calls from customers inquiring about Plaintiff’s Whittier, California location – which it did not have. Plaintiff’s attorney sent a cease and desist letter to Defendant, who allegedly has refused to cease using the restaurant name. The complaint alleges that “Defendant’s use in commerce of the La Casita Mexicana Trademark for restaurant services has caused, and is likely to continue to cause confusion, deception, and mistake in the minds of the public with respect to the source and origin of Defendant’s goods and services, in that the public and those in the food and restaurant industry will believe that Plaintiff is the source of origin of such goods and services.” The case is titled La Casita Mexicana, Inc. v. Nereida Mendoza, CV 08-05286 ODW (C.D. Cal. 2008).

Los Angeles, CA – Trademark attorneys for American Automobile Association (“AAA”) filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles over an automobile garage’s use of the name “AAA Smogz.” The complaint provides a summary of AAA’s use of the AAA trademark with respect to numerous services, including but not limited to conducting motor vehicle tests. Plaintiff has numerous AAA trademark registrations with the U.S. Patent & Trademark Office, which have become incontestable as a result of being registered for over five years.

The complaint alleges that defendants are in the business of automobile smog testing services using a confusingly similar AAA mark. Plaintiff alleges that in September of 2007 it asked defendant to discontinue using the AAA mark and defendants agreed to do so within six months. On March 6, 2008, after defendants allegedly failed to discontinue their use of the AAA mark, Plaintiff sent another cease and desist letter, to which defendant did not respond. On March 21, 2008, Plaintiff sent another cease and desist letter which was returned as undeliverable. Plaintiff alleges that its investigators have indicated that defendants continue to use the AAA trademark in the same business location to which the letter was sent, thus necessitating the lawsuit. The case is titled American Automobile Association, Inc. v. Jorge A. Mendoza, et al., CV 08-05441 GHK (C.D. Cal. 2008).

Los Angeles, CA – Service mark litigation was instituted by trademark attorneys for Couples For Christ, Inc. (“CFC”) at the Federal District Court in Los Angeles. The complaint asserts that CFC has used its Couples For Christ, CFC, and Stylized Cross Design service mark “in connection with education services and providing religious and relationship counseling to couples and individuals” since at least 1991. CFC has registered the subject trademarks with the U.S. Patent & Trademark Office. As a result of the registrations on the USPTO register for over five years, the service marks have become incontestable, thereby foreclosing certain challenges to their validity.

The complaint alleges that “sometime after September 20, 2007, Defendant National Organization authorized the founders and incorporators of Defendant Northern California Organization and the founders and incorporators of Defendant Southern California Organization to incorporate under the Couples for Christ name and to use the CFC Marks in association with educational services and religious counseling in Northern and Southern California, respectively.” Plaintiff has requested that Defendants cease use of the marks, but Defendants have allegedly “repeatedly refused to cease their use of the CFC Marks and continue to provide educational services and religious counseling under the CFC Marks.” The case is titled Couples For Christ, Inc. v. Couples For Christ USA, et al., CV08-05061 DSF (C.D. Cal. 2008).

PRACTICE NOTE: My law school professor, Douglas W. Kmiec, taught that there is always a higher power that will adjudicate the parties’ earthly conduct. But for now, the parties will have to abide by the rulings of U.S. District Court for the Central District of California.

Los Angeles, CA – Trademark litigation attorneys for Adidas filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit – against other shoe manufacturers – at the Los Angeles Federal District Court. Adidas has registered numerous trademarks with the USPTO for its Three-Stripe design, which it began using on shoes in 1952. The complaint asserts that Adidas’ sales of products bearing the Three-Stripe trademark have totaled in the billions of dollars globally in recent years. Adidas also has exclusive agreements with athletes, including David Beckham, Tim Duncan, Kevin Garnett, and Tracy McGrady to promote its footwear and sports apparel.

Adidas alleges that “Defendants’ use of confusingly similar imitations of Adidas’s Three-Stripe Trademark is likely to deceive, confuse, and mislead prospective purchasers and purchasers into believing that shoes sold by Defendants is manufactured by, authorized by, or in some manner associated with Adidas, which it is not. The likelihood of confusion, mistake, and deception engendered by Defendants’ misappropriation of Adidas’s mark is causing irreparable harm to the goodwill symbolized by the Three-Stripe Trademark and the reputation of quality that it embodies.” The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. § 1114; (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) State unfair and deceptive trade practices under Cal. Bus. & Prof. Code § 17200; and, (5) Common law trademark infringement and unfair competition. The case is titled Adidas America, Inc. v. Wah Lei Footwear (U.S.A.) Corporation, et al., CV08-04969 JFW (C.D. Cal. 2008). The other named defendants are Fu Ju (U.S.A.) Group, Inc., LA Discount Shoes, Sunny Shoes Corp., and Top Shoes, Inc.

Los Angeles, CA – Trademark attorneys for Life Alert Emergency Response, Inc. commenced trademark infringement litigation, at the Federal District Court in Los Angeles, against Netstake, LLC. Plaintiff has used Life Alert® as its trademark for services and related products targeted to seniors for more than twenty years. You might remember Plaintiff’s endearing “I’ve fallen and I can’t get up” television commercials. Plaintiff has registered the Life Alert® trademark with the U.S. Patent & Trademark Office, which registration has become in contestable.

The complaint alleges that “Defendant has willfully violated Life Alert’s rights in the Life Alert Mark, by using the Life Alert Mark in connection with metatags, source code and web pages for its websites. Defendant’s improper and unlawful uses of the Life Alert Mark are for the purpose of selling products and services competitive to those of Life Alert.” In addition to preliminary and permanent injunctions, Plaintiff seeks monetary damages for the alleged trademark infringement and unfair competition. The case is titled Life Alert Emergency Response, Inc. v. Netstake, LLC, CV08-05088 GHK (C.D. Cal. 2008).

PRACTICE NOTE: Professor Eric Goldman believes that “lawsuits over metatag usage are so 1999.“