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

Los Angeles, CA – adidas and Reebok have teamed up to sue three defendants for trademark infringement arising from the sale of shoes bearing adidas’ three stripe trademark and Reebok’s stripecheck trademark. Adidas alleges that it began using the three-stripe trademark on athletic shoes as early as 1952 and has registered several marks with the USPTO. Reebok alleges a 1975 date of first use for the stylized checkmark and intersecting stripes design mark used on athletic shoes. Reebok has also registered its trademarks with the USPTO.

Defendants Twin Best, JCK Group, and Skywide International are accused of selling shoes with four stripes and others with an exact reproduction of Reebok’s Stripecheck mark. Plaintiffs allege that “Defendants intentionally designed and manufactured their footwear to mislead and deceive consumers into believing it was manufactured, sold, authorized, or licensed by Plaintiffs.” The case is Adidas AG, et al. v. Twin Best, Inc., et al., CV10-3608 MMM (C.D. Cal. 2010).

Michael Atkins has meticulously covered adidas’ 2 vs. 3 vs. 4 stripe trademark victory against Payless Shoes here.

Santa Ana, CA – Asics’ trademark is comprised of two horizontal curved stripes intersected by two parallel vertical stripes, which trademark is registered with the U.S. Patent & Trademark Office. Asics has used the stripe design trademark on shoes and apparel – for over forty years – since 1966 and has previously sued Dolce & Gabbana and Steve Madden for using stripe designs that allegedly infringed the trademark.

Skechers is accused of selling over sixty different shoe styles having the same stripe design as the common denominator. 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 Asics Corporation, et al. v. Skechers U.S.A., Inc., SACV10-00636 AHM (C.D. Cal. 2010).

Los Angeles – Fashion Designer Micah A. Cohen has been sued by his former employer, Swarm, LLC. Cohen apparently started the clothing company as a young designer and launched the “Shades of Greige” apparel line. Swarm alleges that Cohen was employed as a fashion designer until November 13, 2009, when he “quit his job with Plaintiff.”

Plaintiff contends that three weeks before Cohen left its employ, Cohen’s mother, Nancy Sidonie Cohen, filed an intent-to-use application with the USPTO to register the mark “Shades of Grey” for use on clothing. In March of 2010, Plaintiff did what it should have done a long time before, i.e. filed its own trademark application to register “Shades of Greige” with the USPTO.

Plaintiff contends that Defendants’ use of the mark “Shades of Grey by Micah Cohen” is likely to confuse customers. Further, “Defendants are utilizing the same designs, patterns, look, pricing, factories and sales representatives used by Plaintiff when Mr. Cohen was employed by Plaintiff, and Defendants are selling the Accused Goods to the same wholesale customers to which Plaintiff sells its goods and has developed valuable business relationships.” Thus, Plaintiff asserts causes of action for trademark infringement, unfair competition, intentional interference with economic relations, breach of duty of loyalty, and declaratory judgment for withdrawal of Defendants’ trademark application. The case is Swarm, LLC v. Micah A. Cohen, et al., CV10-3188 DDP (C.D. Cal. 2010).

Los Angeles, CA – Automotive Racing Products manufactures a wide range of bolts, fasteners, and other parts and accessories for automobiles. In 1975, Plaintiff began using the ARP trademark, which was registered with the USPTO on January 19, 1988. Plaintiff is also the owner of the “2000” trademark, which was registered with the U.S. Patent and Trademark Office on February 10, 2004. Plaintiff alleges that its 2000 and ARP trademarks have become well-known in the automotive industry.

Beginning in 2008, Defendants are accused of selling bolts marked with a “2000” label and the bolts were made to look like Plaintiff’s products. Plaintiff also alleges that Defendants falsely represented that their infringing bolts were ARP bolts. Plaintiff contends that Defendants were fully aware of Plaintiff’s trademarks and have intentionally infringed the marks to unjustly benefit from Plaintiff’s reputation. Plaintiff asserts causes of action for trademark infringement, unfair competition under both the Lanham Act and Cal. Bus. & Prof. Code 17200, and unjust enrichment. The case is Automotive Racing Products, Inc. and Procomp Electronics, Inc., CV10-02884 MRP (C.D. Cal. 2010).

Los Angeles, CA – TI Beverage Group, owner of the www.truebloodwine.com website, sued retailer Hot Topic and HBO executives Sophia Chang and James Costas for trademark infringement and unfair competition. TI makes both alcoholic and non-alcoholic beverages and has used Vampire® as its trademark, in addition to other vampire related marks such as Vamp® and Dracola®. In 2009, TI purchased Trueblood Winery, LLC, which had been in business since 2002.

In 2008, HBO televised the True Blood television show in which the characters drink a fictional drink called Tru Blood. TI alleges that Omni Consumer Products entered into a licensing agreement with HBO to manufacture and sell a blood orange drink labeled Tru Blood in September of 2009. TI previously filed suit and notified the defendants of the alleged infringement and after not discovering the products on the shelves, believed that the product had been scrapped. TI alleges that it recently found the Tru Blood products at Hot Topic and filed the instant trademark infringement lawsuit. The case is TI Beverage Group, Ltd v. Hot Topin, Inc. et al., CV10-02089 RGK (C.D. Cal. 2010).

Santa Ana, CA – The Southern-style chef Paula Deen has made “Hey Ya’ll!” her trademark phrase on the Food Network, while refusing to make anything remotely healthy that excludes her beloved butter, cheese, and fried foods. Maybe because of her love of butter, however, she has been sued for trademark infringement for selling cooking accessories under the “Butter Bell” trademark.

Plaintiff registered its Butter Bell® trademark with the U.S. Patent and Trademark Office in 2002, and has since become incontestable. Plaintiff initially used its Butter Bell® mark on ceramic crocks, but has since expanded its line of goods to include gourmet food related products. Plaintiff contends that its Butter Bell® products are sold through numerous channels, including on the Food Network and Paula Deen’s own “Cooking with Paula Deen” magazine.

Plaintiff alleges that QVC is a significant customer of its Butter Bell® products, where Paula Deen appeared to promote and market the infringing crock product. Plaintiff further contends that Defendants previously asked the Plaintiff to develop a Butter Bell® product which included a Paula Deen logo. Thus, Plaintiff alleges that Defendants’ infringement is willful and intentional.

Los Angeles, CA – Santa Barbara Winery sued Foster’s Wine Estates for trademark infringement, unfair competition and cancellation of trademark registration. Plaintiff alleges that it has used the “Santa Barbara Winery” trademark since 1962, but has not – for almost 50 years – sought to register its trademark with the USPTO. Plaintiff should have read our article. The Defendant, on the other hand, has immediately sought to register its “Santa Barbara Wine Company” trademark with the USPTO, which mark shall shortly register on the Supplemental Register. Defendants would have also benefited from our article by selecting a strong trademark that would immediately register on the Principal Register.

Plaintiff alleges that “in using the mark and label ‘Santa Barbara Wine Company’ in connection with wine offered for sale in commerce, Defendant has intentionally sought to infringe upon Plaintiff’s Santa Barbara Winery trademark, to cause confusion and mistake amongst consumers, the trade, and those who come into post-purchase contact with its goods, as to whether its goods are connected, affiliated or associated with Plaintiff, and to re-direct confused consumers to products Defendants are selling that are not affiliated with Plaintiff.”

I only recently learned that the UB40 “Red Red Wine” song was actually written by Neil Diamond. Here’s Neil Diamond’s version: