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

Santa Ana, CA – Nutrivita is a dietary supplement distributor, including the Arthro-7 nutraceutical supplement which is advertised as alleviating joint pain. The Arthro-7 trademark registered with the USPTO on October 24, 2000.

Plaintiff alleges that in July of 2010 it began receiving inquiries from customers and retailers regarding the relationship between an “Arthri 7.1” product and Plaintiff’s Arthro-7 product. Nutrivita discovered that “Arthri 7.1” was being marketed and distributed by M V Cosmetic. Nutrivita alleges that “Arthri 7.1 is clearly an attempt to imitate the Arthro-7 trademark by altering the ‘o’ to an ‘i’, and changing ‘7’ to ‘7.1’.” In addition to the trademark infringement claim, Nutrivita asserts causes of action for unfair competition under the Lanham Act and the California Business and Professions Code § 17200, false description under the Lanham Act, and common law injury to business reputation. The case is Nutrivita Laboratories, Inc. v. M V Cosmetic et al., SACV 10-1142 JVS (C.D. Cal. 2010).

Los Angeles, CA – Columbia Insurance Company owns the See’s Candy trademarks and exclusively licenses the marks back to See’s Candy Shops, Inc. The See’s Candy trademarks were first used in 1921 and have been registered with the USPTO and in other countries.

Aunt Joy’s sells cakes, cookies and chocolate-based confections from its Burbank store and website. Defendant is accused of selling cakes using the See’s trademarks, which cakes purportedly incorporated See’s Candy products. Defendant allegedly advertised its cakes as being “filled with Sees candy chips” and “dripping in Sees dark chocolate.” Plaintiff asserts causes of action for trademark infringement, Lanham Act unfair competition and dilution. The case is Columbia Insurance Company v. Aunt Joy’s Cakes, Inc., CV10-5164 RGK (C.D. Cal. 2010).

San Francisco, CA – The Wine Group has filed a trademark infringement lawsuit in the Northern District Court of California against Diageo PLC. Plaintiff sells a wine-based beverage that contains tea flavors under its Olde Savannah Southern Style Sweet Tea trademark, which it started using in December of 2009. According to the complaint, Plaintiff has sold over 29,000 cases of the beverage since December and plans on expanding the use of the mark to vodka-based beverages. In November of 2009, Plaintiff wisely filed an intent-to-use application with the USPTO prior to launching its product.

Diageo is the world’s largest wine, beer, and spirits company and owns the Smirnoff, Johnnie Walker, Captain Morgan, Jose Cuervo, and Guinness brands. Plaintiff alleges that Diageo has recently introduced a vodka-based sweet tea beverage under the Savannah Tea trademark. Because Plaintiff allegedly has priority over Diageo in using the Savannah mark, it contends that “Diageo’s use of the Savannah Tea mark is likely to cause confusion among consumers in a variety of ways. For example, consumers are likely to believe, erroneously, (a) that Diageo’s alcohol-based sweet tea is somehow associated, affiliated, or connected with TWG’s alcohol-based sweet tea, or vice-versa or, (b) that Diageo’s alcohol-based sweet tea is sponsored, authorized, or approved by TWG, or vice-versa.” The case is The Wine Group LLC v. Diageo PLC, et al., CV10-2879 DMR (N.D. Cal. 2010).

On a related note, it appears that The Wine Group’s Savannah trademark application is the subject of an opposition proceeding filed by Spier Wines before the TTAB. The parties, however, have filed a joint motion to suspend proceedings in furtherance of settlement discussions.

Plaintiff Philip Duff is suing True Religion jeans for copying his horseshoe pocket design that he registered with the U.S. Patent & Trademark Office in 1995, long before True Religion began using the horseshoe design on its jeans. According to the complaint filed in the U.S. District Court in Los Angeles, Duff began using the horseshoe design trademark on jeans in the mid 80’s.

Duff alleges that while True Religion was developing its jeans in September of 2002, its CEO received a copy of Duff’s trademark registration record from the USPTO and was fully aware of Duff’s senior rights. Also, on December 10, 2003, its COO allegedly received another copy of Duff’s trademark registration record. “Despite such knowledge, Defendants proceeded to use in commerce on their jeans a ‘horseshoe’ design that is confusingly similar to Plaintiffs’ mark.” Defendants are also accused of describing their trademark as a modified “U” in their USPTO trademark applications and failing to disclose to the trademark examining attorney that they were fully aware of Duff’s prior registration.

Duff is asking the Court to cancel True Religion’s “horseshoe” design trademark because it was obtained by fraud. In addition, Duff seeks undisclosed monetary damages for the infringement and a permanent injunction preventing True Religion’s continued use of the horseshoe design. The case is Philip Andrew Duff, et al. v. Guru Denim, Inc. et al., CV10-4611 ODW (C.D. Cal. 2010).

Los Angeles, CA – Forever 21 is the ubiquitous clothing and accessories retailer that began doing business in 1989. Forever 21 is the owner of numerous USPTO registrations for its “21” family of trademarks, including “Forever 21”, “XXI” and “XXI forever”.

In December of 2009, Plaintiff asserts that it demanded that Defendant immediately stop using Plaintiffs’ trademarks on clothing and to remove the Forever 26 sign from its retail outlet. Defendant allegedly agreed to do so, but Plaintiff claims that it recently obtained evidence of Defendant’s continued use of Plaintiff’s marks. Thus, the instant lawsuit was filed for trademark infringement, unfair competition under the Lanham Act § 43(a) (15 U.S.C. §1125(a)), and dilution.

This is not Forever 21’s first court rodeo, but it’s one of the few as a Plaintiff. As Stylist.com put it: “Forever 21 has been sued for copyright infringement so many times, we’ve lost count.” The case is Forever 21, Inc. v. Forever 26, CV10-4331 CBM (C.D. Cal. 2010).

San Francisco, CA – Clothing and jeans giant Levi Strauss owns several USPTO registered trademarks for its arcuate stitching design initially used in 1873, which it alleges is the oldest known clothing trademark in the United States. Based on this long and continued use, Levi Strauss alleges that its trademarks are famous and recognized in the U.S. and around the world.

Levi Strauss alleges that Defendant Gardeur is manufacturing and selling “clothing that displays stitching designs that are confusingly similar to [Levi’s] Arcuate trademark.” The case is Levi Strauss & Co. v. Gardeur GmbH, CV10-2122 EMC (N.D. Cal. 2010).