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

|

Los Angeles, CA – Trademark attorneys for E! Entertainment Television filed a trademark infringement, cybersquatting, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles, over entertainment/celebrity news blogger’s use of the enewsbuzz.com domain name. The complaint provides a summary of E! Entertainment’s beginnings in 1990 as the only 24-hour network with programming dedicated to the world of entertainment and celebrity news. It currently “is the world’s largest producer and distributor of entertainment news and lifestyle-related programming.” E! alleges that “E! News” and “E! News Weekend” are its most popular television programs and both trademarks have been registered with the U.S. Patent & Trademark Office.

los-angeles-trademark-attorney-e-entertainment.jpgE! alleges that long after it commenced use of its famous E! Marks and E! NEWS Marks, Defendants began business under the ENewsBuzz trademark using the enewsbuzz.com domain name to provide similar services, “Defendants use the ENEWSBUZZ mark, trade name, and domain names in connection with providing gossip, news and images of Hollywood celebrities.” Defendants are alleged to have adopted the confusingly similar mark in order to benefit from the goodwill established by E!: “significantly, Defendants’ ENEWSBUZZ mark is depicted on its website with the letter “E” offset in bold red – the same color that E! Entertainment has been using in connection with the “E!” portion of its E! Marks and E! NEWS Marks for many years.” The lawsuit was filed after the Defendants refused to cease using the subject trademark and domain name in response to E!’s correspondence. In addition to preliminary and permanent injunctions, E! also seeks monetary damages. The case is titled E! Entertainment Television, Inc. v. Louie De Filippis et al., CV 08-04355 ODW (C.D. Cal. 2008).

|

Los Angeles, CA – Trademark attorneys for Project E 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 Genetic Denim’s use of a double helix design stitching on jeans’ pockets. Plaintiff asserts that it is the owner of the “XX” trademark, which comprises two adjacent Xs stitched into garments, and first used the trademark in 2004. Although, the Plaintiff does not sell jeans/denim, it claims that the mark has been used on polo shirts and sweaters and that the goods are substantially related.

los-angeles-trademark-attorney-genetic-projec-e.jpgGenetic Denim uses a DNA double helix stitched into the jeans’ back-pockets and – playing on the genetic theme –an “XY” stitching is used on the front of jeans for men and an “XX” stitching is used on the front of jeans for women. The complaint alleges that Genetic Denim’s “use of the trademark or a substantially similar trademark is likely to cause confusion, mistake or deception as to the source or origin of defendant’s goods in that the public and others are likely to believe that defendant’s goods are manufactured, distributed or sold by, or sponsored by, or approved by, or licensed by, or affiliated with, or in some other way legitimately connected to plaintiff. Such public confusion has and will continue to cause irreparable harm to plaintiff.” In addition to preliminary and permanent injunctions, Plaintiff also seeks monetary damages. The case is titled Project E, Inc. v. Genetic Denim, LLC, CV 08-04016 R (C.D. Cal. 2008).

|

Los Angeles, CA –Patent attorneys for Manhattan Beach based Skechers U.S.A. filed a patent infringement, trade dress infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles.

los-angeles-patent-attorney-shoe-design-skechers.jpgSkechers asserts that it is the owner of a distinctive trade dress in the appearance and features of its Biker-Sightsee™ Series of footwear/shoes. “Skechers has expended substantial effort and funds in promoting the goodwill of the Skechers Biker-Sightsee™ Series in developing a consumer association of the Biker-Sightsee™ Series as emanating from Skechers. It has expended many millions of dollars promoting and advertising its Bikers-Sightsee™ Searies footwear. It has entered into agreements with celebrities such as American Idol Winner Carrie Underwood and platinum recording star Ashlee Simpson to appear in ads featureing the Biker-Sightsee™ Series footwear.”

As additional intellectual property protection for its shoe design, the U.S. Patent & Trademark Office issued U.S. Patent No. Des. 532,962 to Skechers. Skechers alleges that the Defendant was sent notice that its shoe design was infringing on Skechers’ patent and trade dress rights and that Defendant replied that it would modify its shoe design and stop selling the shoes at issue. The Defendant, however, has allegedly not ceased selling the infringing shoes, thereby forcing litigation. The case is titled Skechers U.S.A., Inc. v. Aetrex Worldwide, Inc., CV 08-03831 GAF (C.D. Cal. 2008).

Continue reading ›

|

Los Angeles, CA –Trademark attorneys for Rock & Republic jeans/clothing company filed a trademark infringement lawsuit against Rich & Skinny jeans at the Los Angeles Federal District Court. Rock & Republic began using stylized “R” trademarks on its clothing line as early as 2002. Several different versions of the “R” logos are registered with the U.S. Patent & Trademark Office. “Rock & Republic applies its stylized “R” trademarks to the back pocket of its jeans and pants. Since their creation and first sale, products bearing Rock & Republic’s stylized “R” trademarks have been enormously successful.”

los-angeles-trademark-attorney-jeans-stitching-logo-rock-republic.jpgThe complaint continues: “The various stylized “R” trademarks, including the Rock & Republic Stylized “R” Mark have acquired a strong secondary meaning and are strong trademarks. Rock & Republic’s stylized “R” trademarks, including the Rock & Republic Stylized “R” Mark, and associated products, have become famous.” Rock & Republic alleges that defendant began operations in 2006 and is “in the business of manufacturing, advertising, selling, and distributing apparel, including denim jeans.” Rich & Skinny is accused of copying the stylized “R” trademark and selling apparel/jeans in similar channels as Rock & Republic, which is alleged to likely confuse consumers. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) False designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution, 15 U.S.C. § 1125(c); (4) Injury to business reputation and dilution under Cal. Bus. & Prof. Code § 14330; and, (5) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled: Rock & Republic Enterprises, Inc. v. Rich & Skinny, Inc., CV08-04199 PSG (C.D. Cal. 2008).

|

Santa Ana, CA – Asics’ trademark attorneys filed a lawsuit against Steve Madden, Ltd. at the Federal District Court (Santa Ana Division) alleging breach of their previous settlement agreement, trademark infringement, unfair competition under the Lanham Act (15 U.S.C. § 1125), and trademark dilution. For over forty years, Asics has used its stripe design trademarks on virtually all of its shoes. Asics owns numerous trademark registrations at the U.S. Patent & Trademark Office for the stripe designs, the first of which was registered in 1972 and is incontestable.

trademark-shoe-stripe-trade-dress-asics.jpgThe parties are apparently not strangers and Steve Madden was previously sued for infringement by Asics – once directly and, on another occasion, through its design of shoes for Mossimo and Target. Both lawsuits were settled, which settlement agreements are confidential, but Asics is now alleging breach of those agreements. Asics further alleges that since the settlement agreements were executed, Steve Madden has sold new shoes that include a stripe design that is confusingly similar to and infringes Asics’ design trademarks. The case is titled Asics Corporation v. Steven Madden, Ltd., SACV08-0638 AHS (C.D. Cal. 2008).

|

In a case that illustrates the dangers of using your own name as a trademark, a court has issued a permanent injunction preventing fashion designer Joseph Abboud from using his own name to promote a new line of clothing – and all future goods and services. The unfortunate aspect of this ruling that hinders Abboud’s planned return to the fashion industry, is that a more careful drafting of the agreements that were part of the sale of his company in 2000 could have prevented his unintended loss of rights.

fashion-designer-trademark-joseph-abboud.jpgTrademark attorneys for the popular designer apparently believed that when he agreed to sell his company and trademarks – which included the USPTO registered Joseph Abboud trademark – it would not prevent him from later using his own name to promote his affiliation with a new clothing line. The Court disagreed and issued a permanent injunction preventing the designer from using his own name to promote his new “jaz” fashion line. CLICK HERE for the Court’s decision.

Use Caution When Assigning Trademark Rights

Continue reading ›

|

Los Angeles, CA – Trademark lawyers for entertainer and musician Ray Charles’ estate filed a trademark infringement, Lanham Act unfair competition (15 U.S.C. §1125), and commercial appropriation of name and likeness lawsuit at the Federal District Court in Los Angeles. The complaint is filed against Ryan Corey Robinson, who is purportedly Ray Charles’ son, and Mary Ann Den Bok – an attorney – who is Mr. Robinson’s mother. The complaint alleges that Ray Charles created an estate plan that would provide his children a certain amount of cash and The Ray Charles Foundation would receive Ray Charles’ intellectual property rights, including his name, voice, likeness, image and biographical material.

LA-CA-Trademark-lawyers-ray-charles.jpgPlaintiff alleges that since Ray Charles’ death, “Defendants have used the threat of negative publicity and false public statements to attempt to extort funds from The Foundation and its licensees … Specifically, in or about September of 2006, Defendants began threatening The Foundation and licensees, purporting to be representatives of Ray Charles Legacy Corporation, LLC, an entity that did not exist. Defendants also contacted third parties and falsely claimed that the Ray Charles Legacy Corporation, LLC held all rights to the name, likeness, and the right of publicity of the late Ray Charles in an effort to obtain a commercial advantage based on those representations.” The case is titled The Ray Charles Foundation, Inc. v. Ray Charles Legacy Corporation, CV08-02810 JFW (C.D. Cal. 2008).

|

Los Angeles, CA – Trademark lawyers for Gevity HR, Inc. filed a trademark infringement and Lanham Act unfair competition (15 U.S.C. § 1125) lawsuit at the Federal District Court in Los Angeles. Plaintiff Gevity owns numerous USPTO registered trademarks for a family of Gevity trademarks in different International Classes and also has several pending trademark applications. Under its family of Gevity trademarks, Plaintiff “provides a wide range of services to thousands of small and mid-sized businesses nationwide, including human resources management consulting and related financial services, payroll processing, benefits and benefits administration, risk management and loss prevention, and workers’ compensation and other insurance coverage.” Plaintiff also uses its trademarks on its website and owns the domain name www.gevity.com.

los-angeles-trademark-lawyer-gevity.jpgDefendant Gevity Ventures was organized in February of 2007 and operates as a boutique hedge fund. Defendant offers investment services through the www.gevityventures.com website and offers management consulting services through the ww.gevityassociates.com website. In August of 2007, Plaintiff’s trademark lawyers sent a cease and desist letter to Defendants, which was allegedly ignored. In February of 2008, the trademark lawyers once again sent a cease and desist letter to Defendants, to which Defendants responded and refused to stop using the trademarks at issue. Because Plaintiff believes that the Defendants’ trademarks are likely to cause confusion, it filed the instant lawsuit. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) Federal trade name infringement and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) California trademark infringement; (4) Unfair competition under Cal. Bus. & Prof. Code § 17200; and, (5) Unjust enrichment. The case is titled Gevity HR, Inc. v. Gevity Ventures, LLC, CV08-03146 DSF (C.D. Cal. 2008).

|

Los Angeles, CA – Trademark attorneys for “cookie diet” franchisees filed a trademark infringement, unfair competition (15 U.S.C. § 1125), breach of franchise agreement, and fraud lawsuit at the Federal District Court in Los Angeles. Plaintiffs are area franchisees and franchise representatives of the “Cookie Diet,” a medically supervised weight loss program. Defendants are the franchisors and licensors of the weight loss program, which in its California Uniform Franchise Offering Circular (“UFOC”) was described as a “medical-based physician monitored and supervised weight reduction and weight management program.” Plaintiffs are the franchise representatives throughout the State of California.

los-angeles-trademark-attorney-cookie-diet.jpgPlaintiffs allege that the Franchisor Defendants represented that the heart of the weight loss system was a diet based upon proprietary cookies, shakes and soups developed by Dr. Sanford Siegal. “The key to the weight loss concept was that a patient/customer had to maintain a diet of approximately 800 calories per day, half in a single 400-calorie mean, and the other half by eating six dietary ‘cookies’ throughout the day.” Because of the drastically low daily caloric intake, “physician supervision was a core component of Dr. Siegal’s diet system.” In 2002, the Franchisor Defendants entered into an agreement to license Dr. Siegal’s name, trademarks, and trade names. In return, Dr. Siegal was to be the exclusive supplier of cookies to the Franchisor Defendants. Dr. Siegal maintained rights to use the trademarks and system in Florida, but agreed to not compete with the Franchisor Defendants in the United States.

The complaint alleges that the Defendant Franchisors made fraudulent representations to induce Plaintiffs to enter into the franchise agreement, one such representation was that Dr. Siegal was part of the franchise and was contractually obligated to support franchisees and not compete with them. The Plaintiffs allege that the Defendants unilaterally terminated their licensing agreement with Dr. Siegal when the cookies were not consistent, instead of working with him to correct production, which Defendants knew would result in Dr. Siegal’s ability to compete with Plaintiffs and terminate the license to “Dr. Siegals” trademarks. Also, the complaint continues, Defendants tried to replicate the cookies themselves “through a trial-and-error process that used the franchisees and their patients as guinea pigs. Instead of exercising quality control, [Defendants] shipped each batch of cookies regardless of whether it suppressed appetite or how it tasted” and which did not bear required nutritional labels that complied with Federal laws. Further, as a result of the termination of Dr. Siegal’s agreement, Dr. Siegal sued the Defendants in Florida to stop them from using the “Cookie Diet” name and the Court granted a preliminary injunction enjoining Defendants and their franchisees from using the “Cookie Diet.”

Continue reading ›

|

Santa Ana, CA – Trademark lawyers for E.I. Du Pont De Nemours filed a trademark infringement and Lanham Act unfair competition (15 U.S.C. 1125) lawsuit at the Federal District Court in Santa Ana to protect its TEFLON® trademark. The complaint recites the history of DuPont’s discovery of polytetrafluoroethylene (“PTFE”), which is the slippery, chemically inert compound that is used in a wide variety of different products. Since approximately 1944, DuPont adopted the fanciful trademark “Teflon” for its PTFE products and began to sell products under the trademark and also licensed the trademark for others to use. DuPont owns several USPTO trademark registrations for the TEFLON® trademark in several International Classes of goods. All of the registrations are incontenstable under 15 U.S.C. § 1065.

santa-ana-trademark-lawyer-dupont.jpgDefendant allegedly sells vehicle polishing and cleaning services that are described as “TEFLON® Polishing” and “TEFLON® Shine.” The complaint alleges that Defendant’s products do not contain genuine DuPont TEFLON® fluoropolymer. DuPont allegedly contacted the defendant and asked it to stop use of the mark, but defendant refused, thereby necessitating the lawsuit. The case is titled E.I. Du Pont De Nemours & Co. v. Tropic Shield, Inc., SACV08-00252 CJC (C.D. Cal. 2008).