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

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trademark-attorney-budget-blinds-trademark-lawsuit.jpgSanta Ana, CA – Budget Blinds, Inc. (“BBI”) sued Kenneth James, owner of Budget Blinds and Shutters, for trademark infringement and unfair competition under the Lanham Act § 43(a). BBI franchises mobile window covering business in the U.S. and Canada and currently has almost 900 franchised businesses operating under the “Budget Blinds” trade name and service mark. BBI has registered its “Budget Blinds” word mark and stylized mark with the USPTO.

Defendant operates a home décor and windo covering business that competes with BBI and its franchisees. Defendant uses the “Budget Blind” trade name on its website www.budgetblindsandshutters.com. BBI alleges that it sent a letter to Defendant demanding that it cease and desist any further use of the name “Budget Blinds and Shutters,” but Defendant failed to respond. BBI followed up with a second cease and desist letter, but Defendant allegedly also failed to respond to the second letter. The case is Budget Blinds, Inc. v. Budget Blinds and Shutters et al., SACV 09-0933 AG (C.D. Cal. 2009).

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trademark-attorney-restaurant-el-pollo-loco.jpgSanta Ana, CA – El Pollo Loco, Inc. (“EPL”) sued Jacinto & Corona Enterprises, Inc. for trademark infringement, dilution and unfair competition under the Lanham Act § 43(a). EPL operates and franchises restaurants, specializing in pretty tasty grilled chicken, in California, Nevada, Arizona, Texas, Colorado and Illinois. With locations in only six states, EPL may have difficulty showing that its marks are nationally famous, as required by the Trademark Dilution Revision Act of 2006.

EPL owns, amongst others, the following trademarks: (1) a word mark registration for “El Pollo Loco,” which translates to “The Crazy Chicken,” with “Pollo” disclaimed; (2) a word mark registration for “El Pollo Loco Flame-Grilled Mexican Chicken,” with “Flame-Grilled Mexican Chicken” disclaimed; and (3) a composite mark consisting of a chicken head and flames with the words “El Pollo Loco Flame-Grilled Mexican Chicken,” with the words “Pollo” and “Flame-Grilled Mexican Chicken” disclaimed, as shown to the right.

trademark-attorney-el-pollo-loco-mexican-grill.jpgDefendant Jacinto operates a restaurant under the name “El Pollo Mexican Grill” in Santa Ana, California. Jacinto also uses the logo pictured to the left in operating and promoting its restaurant, including on its signs, menus, website and other advertisements. EPL alleges that it has nine of its own restaurants within a five mile radius of Jacinto’s restaurant. EPL has allegedly asked Jacinto to cease its use of the “El Pollo Mexican Grill” mark, but Jacinto has refused. With the words “Pollo” and “Flame-Grilled Mexican Chicken” disclaimed, it will be interesting to see the scope of protection afforded EPL’s trademarks. The case is El Pollo Loco, Inc. v. Jacinto & Corona Enterprises, Inc., SACV 09-959 CJC (C.D. Cal. 2009).

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copyright-attorney-trademark-lawyer-p90x.jpgLos Angeles, CA – Product Partners, LLC sued Costco Wholesale Corporation for copyright and trademark infringement and Lanham Act § 43(a) unfair competition over sales of fitness and weight loss products. Plaintiff sells a P90X® home exercise kit that includes workout routine DVDs featuring a technique called muscle confusion, “which prevents exercise plateauing by varying exercises over days and weeks such that the body has difficulty adapting.” Plaintiff uses its federally registered and incontestable P90X® and Beachbody® trademarks on its DVDs, which are sold on its beachbody.com website. Further, Plaintiff owns several copyright registrations for its variety of DVDs.

Plaintiff purchased allegedly infringing P90X® DVDs from several Costco stores across the country. Plaintiff complains that “despite receiving notice of its infringing activities, Costco has continued to market, sell and distribute counterfeit P90X® DVDs in violation of Plaintiff’s federal copyright” registrations and registered trademarks. The case is Product Partners, LLC v. Costco Wholesale Corporation, CV 09-04990 GW (C.D. Cal. 2009).

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Los Angeles, CA – Akar Studios is an architecture and interior design firm contracted by Defendant Foreign Exchange to develop a general design scheme, architectural designs and construction drawings for three of its clothing stores. Pursuant to a written agreement, Akar allegedly retained ownership of all copyrights in the works. Indeed, Akar states that “Foreign Exchange made no attempt, in the course of the negotiation of the contract, to secure rights to use Akar’s copyrighted works in connection with any other store.”

architectural-copyright-architecture-attorney-lanham-act-akar.jpgAfter the initial three stores were built, Akar alleges that Defendant requested and was provided with proposals by Akar for the design of two additional stores. But the proposals were not accepted. After receiving the proposals, however, Akar asserts that Defendant provided Akar’s copyrighted architectural drawings to other architectural firms, Shubin+Donaldson Architects and Lee+Kim Design, to modify the designs and prepare derivative works for the two additional stores. In addition, Akar alleges that Defendants “affixed their logos and/or stamps to Akar’s Architectural Works and Technical Drawings, passing such documents as their own work, despite knowledge that such documents were prepared by Akar.”

Akar further alleges that after the work had been copied, Foreign Exchange’s representative had Akar execute a “Lien Release” in exchange for final payment. But buried in the release – unbeknownst to Akar – was a transfer of intellectual property rights. In addition to the copyright infringement and Lanham Act claims, Akar asserts breach of contract, fraud, rescission, and §17200 unfair competition claims. The case is Akar, Inc. v. Foreign Exchange, Inc., et al., CV 09-4940 GAF (C.D. Cal. 2009).

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trademark-attorney-rolex-trademark-counterfeiting-trademark-infringement.jpgLos Angeles, CA – Rolex Watch USA, Inc. sued Aaron Gallagher, doing business as rplwatches.com, replwatches.com, and watchreps.com, for trademark counterfeiting, trademark infringement and unfair competition under the Lanham Act § 43(a). Rolex manufactures high-end watches, watch bracelets and related products for men and women, which are sold under the Rolex family of trademarks and several other registered marks.

Rolex alleges that in May of 2006 it discovered Defendant’s watchreps.com website and it was able to shut it down through the website’s Internet Service Provider. Defendant then contacted Rolex’s counsel and attempted to reactivate the website, but Rolex did not receive a response to its settlement demands in return for reactivation. In April of 2009, while Rolex was investigating sales of infringing watches on craigslist.org, it discovered that pictures in the classified ads linked to Defendant’s reactivated watchreps.com website. In response to Rolex’s cease and desist letter, Defendant allegedly stated that Rolex “will have no further problems regarding this issue.” Rolex’s investigator, however, responded to an ad on craigslist.org and received an email from replwatches.com allegedly signed by Aaron. Upon Rolex’s request, the ISP identified the registrant of the website as Aaron Gallagher. When the investigator called to purchase the watch, Defendant allegedly stated that Rolex “was after me…they’re watching me like a hawk.” The investigator received a watch that is allegedly counterfeit and infringes on Rolex’s trademarks. Thus, Rolex determined it was time to file suit. The case is Rolex Watch USA, Inc. v. Aaron Gallagher, et al., CV 09-4646 R (C.D. Cal. 2009).

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trademark-attorney-joes-jeans-brixton.jpgLos Angeles, CA – In a case that may go down in the “OOPS” department, Joe’s Jeans sued Brixton Ltd. for trademark infringement and unfair competition under the Lanham Act § 43(a). Apparently, Defendant was not even on Joe’s Jeans’ radar until Defendant’s counsel sent a cease and desist letter accusing Joe’s of infringing on the Brixton trademark.

Upon receipt of the letter, Joe’s investigated the claims and determined that it allegedly began using the Brixton trademark approximately one year before Defendant’s date of first use. And because neither party registered the trademark with the USPTO, the case is going to boil down to which party used the mark first. Joe’s alleges that it responded to Defendant’s counsel and put Defendant on notice that Joe’s was the senior user of the mark and, in an instant, the hunter became the hunted. As a result, Joe’s now alleges that Defendant’s use of the Brixton trademark constitutes willful and intentional infringement. Pamela Chestek blogs here about other parties battling over senior use and ownership of the Protech mark. The case is Joe’s Jeans, Inc. v. Brixton Ltd, LLC, CV 09-04753 DSF (C.D. Cal. 2009).

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Los Angeles, CA – EABO, Inc. sued Huntington Beach, CA based Mimic Skateboards, Inc. for copyright infringement, trademark infringement, trademark dilution, trade dress infringement and unfair competition. Plaintiff manufactures various sized disc shaped wooden boards that rest upon a cylinder shaped roller, which were originally designed by surfers for training purposes. The IndoBoard has now evolved into its own sport where individuals stand on the board and rock it back and forth to balance on the roller and perform various tricks. If a picture is worth 1,000 words, then moving pictures are priceless:

https://www.youtube.com/watch?v=DIhYjiytQPk

Plaintiff is the exclusive licensee of a registered Indo Board design trademark and the common law rights to the word mark. Plaintiff is also the copyright owner in an instructional DVD created in 2004. The complaint alleges that beginning in 2001, Plaintiff entered into a manufacturing agreement with Mimic to manufacture its boards, which relationship terminated in 2008 when Mimic informed Plaintiff that it was going to only manufacture skateboards.

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Los Angeles, CA – Energy drink manufacturer Rockstar, Inc. licenses its trademarks from its founder and CEO, Russell G. Weiner. The Rockstar family of trademarks includes Rockstar Energy Drink®, Rockstar®, Party Like a Rockstar®, and the pending Rockstar Energy Shot™. In addition, Rockstar’s promotional materials for its drinks use the tagline “So grab it, shoot it, and Rock ON!” Rockstar alleges that it has sold over one billion cans of its energy drinks and has annual sales of several hundred million dollars. The energy drinks have been sold in containers having the alleged distinctive trade dress depicted below.

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Defendant Rock On Energy, LLC is accused of using the confusingly similar trademark ROCK ON for a competing energy drink, which is sold by at least one mutual retailer. Also, Defendant is accused of using the confusingly similar “Live Loud. Play Hard. Rock On” tag line for its energy drinks. Further, Defendant allegedly uses a beverage container and product packaging that is confusingly similar to Rockstar’s trade dress. Defendant’s container is mostly black with lettering that is similar in fonts and colors to that of Rockstar’s. The case is Rockstar, Inc. v. Rock On Energy, LLC, CV 09-04017 GAF (C.D. Cal. 2009).

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trademark-attorney-tommys-original-hamburgers.jpgLos Angeles, CA – Tomdan Enterprises, Inc., which does business under the more recognizable “Tommy’s Original World Famous Hamburgers” name and trademark, filed a trademark and trade dress infringement, Lanham Act unfair competition, and trade secret misappropriation lawsuit against Tommy’s Original Chili Factory, Inc., and several individual defendants. Plaintiff has been in the restaurant business for the last fifty years, serving up hamburgers, cheeseburgers, hot dogs, and – my favorite – chili cheese fries, among other food items. Plaintiff alleges that it adopted the Tommy’s trademark in 1960 and registered the trademark with the California Secretary of State in 1978.

Plaintiff’s burgers and dogs are always served with chili, except when a patron specifically requests it be excluded. I have heard that consumption of a Tommy’s burger with a side of chili-cheese fries in the wee hours of the morning, after a night of libations with college friends, are warranted to reduce any morning-after negative side-effects. A side of extra pickles is believed to further suppress any hang-over symptoms. For those not familiar with the structure of a Tommy’s cheese burger, an element by element depiction is provided herein.

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Plaintiff alleges that Defendants were aware of Plaintiff’s Tommy’s mark and trade dress, but adopted a mark, logo, and trade dress that are confusingly similar to Plaintiff’s. Plaintiff alleges that Defendants have misappropriated Plaintiffs proprietary and trade secret information in the form of its recipes, including, but not limited to, its chili. Plaintiff allegedly sent a cease and desist letter – through counsel – to Defendants in December of 2008. But Defendants have allegedly refused to stop their activities. The case is Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).

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trademark-attorney-exercise-fitness-trx.jpgLos Angeles, CA – Fitness Anywhere, Inc. filed a trademark infringement and Lanham Act § 43(a) unfair competition lawsuit against Gofit, LLC. Plaintiff’s founder is a former U.S. Navy SEAL and created the exercise equipment to allow his team to exercise while in the field and without access to traditional exercise equipment. The equipment, which later became known as the TRX device, is manually operated and a variety of exercise routines can be performed with the user’s own body weight providing resistance. Plaintiff also provides a website to support the TRX device by designing and offering various exercise routines.

Plaintiff has registered its “Suspension Training” and “Make Your Body Your Machine” trademarks with the USPTO, for both fitness equipment and physical fitness educational services. Plaintiff alleges that Gofit has used the “Suspension Training” and “Suspension Training At Home” trademarks to advertise and sell its rival product. Gofit received a cease and desist letter from Fitness Anywhere’s counsel and allegedly agreed to stop using the objectionable marks by May 1, 2009. Gofit, however, is accused of continuing to use the “Suspension Training” marks and exacerbating the situation by adopting a “Make Your Body Your Gym” mark. The case is Fitness Anywhere, Inc. v. Gofit, LLC, CV 09-03828 SJO (C.D. Cal. 2009).