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

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trademark-attorney-jeans-pocket-trade-dress-hudson.jpgLos Angeles, CA – Hudson Clothing,LLC filed a trade dress, Lanham Act § 43(a) trademark infringement, and false advertising complaint against BVDK Design, Inc. Plaintiff designs high end denim jeans and alleges that, since 2002, it has used a distinctive back pocket flap design trademark, which it also claims functions as its trade dress. Plaintiff contends it occupies the “premium” denim market, which means – prepare yourself – jeans in excess of $150 a pair. “This market attracts consumers focused on value, style, fit and comfort.”

Plaintiff alleges that BVDK’s jeans, in contrast, lack the reputation and quality that Hudson’s jeans enjoy. But in order to penetrate the premium denim market, defendant is accused of intentionally adopting and using a confusingly similar pocket flap. David Kahn, the owner of BVDK, is also named in the suit and is accused of selling the purportedly infringing jeans on the www.davidkahnjeanswear.com website. Plaintiff also learned that Defendants’ products, which are sold as the “Nikki” style, was available at the same retailer, Nordstrom. Although there is a false advertising cause of action, Plaintiff does not detail the allegedly false statements that were made with respect to the quality of the products. The case is Hudson Cothing, LLC v. BVDJ Design, Inc., CV 09-3275 R (C.D. Cal. 2009).

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Santa Ana, CA – Plaintiff Planet Coffee Roasters, Inc. filed a trademark infringement, Lanham Act § 43(a), and dilution claim against Garden Grove, California based Defendant Planet Coffee. Plaintiff alleges that it has been using the Planet Coffee trademark since 1993 on coffee beans and services related to coffee, with “a majority of its sales of its products and services in and around the California geographic region, including Orange County, California.” This statement defeats Plaintiff’s cause of action for trademark dilution because the Trademark Dilution Revision Act of 2006 limited dilution causes of action to nationally famous marks.

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Unfortunately for Plaintiff, cups of bitter refills are sure to follow. Plaintiff never registered its trademark with the USPTO and only recently filed a word mark and a design mark application. Both applications, however, have been refused registration based on two 1995 registrations owned by Souper Salad, Inc. for Planet Coffee® and Planet Coffee® plus design. Plaintiff is now going to have an uphill battle establishing ownership of its alleged trademarks. The case is Planet Coffee Roasters, Inc. v. Planet Coffee, SACV 09-571 MLG (C.D. Cal. 2009).

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trademark-attorney-swimsuit-ipanema.jpgSanta Ana, CA – James Brady and Patricia Brady filed suit at the Federal District Court in Santa Ana against Quicksilver Americas, Inc., Radio Fiji, Dillard’s Inc., B. Suits, Inc., and Pampo’s Dance Emporium, Inc. In 1985, Plaintiffs, through their prior corporation, developed a line of swimwear manufactured in Brazil and used the Ipanema trademark on the goods. The Ipanema trademark was registered with the USPTO in 1993 and subsequently transferred to the Plaintiffs in 1998. The registration has become incontestable under 15 U.S.C. § 1065. Plaintiff’s “The Girl From Ipanema” trademark, however, is not incontestable because it was registered less than five years ago.

Plaintiffs allege that Defendants have recently manufactured swimwear, which they sell under the Ipanema trademark. Plaintiffs contend that they sent Quiksilver a cease and desist letter in August of 2004, but it has refused to stop use of the Ipanema trademark. In addition to the trademark cause of action, Jennifer assert a Lanham Act § 43(a) false designation of origin claim and a California Business and Professions Code §17200 unfair competition claim. The case is James W. Brady, et al. v. Quiksilver Americas, Inc. et al., SACV 09-553 MLG (C.D. Cal. 2009).

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Los Angeles, CA – K-Swiss kicked-off a trademark declaratory judgment lawsuit, at the Federal District Court in Los Angeles, against competing shoe manufacturer Puma. K-Swiss recently began selling its “Dolton” shoe (pictured herein), which features a strip running along the eyelets and extending to the sole of the shoe. In March of 2009, Puma sent a letter accusing K-Swiss’s Dolton shoe design of infringing Puma’s “Formstrip Trademarks,” specifically USPTO Registration Nos. 3369752, 1135790, and 1256945.

trademark-attorney-puma-kswiss-dolton.jpgK-Swiss believes that Puma got its shoe laces in a knot because K-Swiss hired away Puma’s shoe designer and marketing employee. Thus, K-Swiss alleges that the lawsuit is retaliatory in nature and in bad faith. “K-Swiss avers that K-Swiss’ use of the Eyelet Strip is non-infringing, that K-Swiss’ use of the Eyelet Strip is dissimilar in shape and placement to Puma AG’s claimed Formstrip trademarks, that the Eyelet Strip is functional, that KSwiss’ use of the Eyelet Strip as an integral part of the lacing system for its footwear is a fair use, and that K-Swiss’ use of the Eyelet Strip does not create a likelihood of consumer confusion within the relevant purchasing public as to the source of the parties’ footwear.” The case is K-Swiss, Inc. v. Puma AG Rudolf Dassler Sport, CV09-03022 GAF (C.D. Cal. 2009).

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Los Angeles, CA – Skycam manufactures the Emmy award winning aerial camera system that is used to obtain above the action camera shots at sporting events such as the Super Bowl®. Skycam filed suit against Patrick Bennett and Actioncam, LLC for trademark and copyright infringement and trade secret misappropriation.

trademark-attorney-copyright-trade-secret-skycam.jpgPlaintiff alleges it hired Bennett as its chief engineer and provided him with engineering and design documents to work on the next generation of aerial cameras. Although Bennett developed new stabilization algorithms and hardware he was testing, Skycam states that it has not yet publically disclosed or the displayed the innovations. Skycam also alleges that in his position as chief engineer, Bennett was provided access to Skycam’s customer and vendor lists.

In 2006, Bennett and Skycam entered into a Separation Agreement and Release when his employment with Skycam ended, which agreement included a provision for maintaining the confidentiality of all proprietary information. Skycam alleges that “under Bennett’s guidance and with full knowledge of Bennett’s obligation to keep information learned during his prior employment with Skycam confidential, Actioncam utilized the confidential information provided by Bennet to develop” a competing aerial camera system which is marketed to Skycam’s customers. Defendants allegedly posted Skycam’s copyrighted works on their website and used Skycam’s trademark without authorization. The case is Skycam, LLC v. Actioncam, LLC, CV09-02409 PA (C.D. Cal. 2009).

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Los Angeles, CA – Toughlove America, LLC sued Drew Barrymore’s production company (Flower Films, Inc.) and MTV Networks for trademark infringement and Lanham Act § 43(a) unfair competition for Defendants’ use of “Tough Love” as the reality show’s title. (Details here)

trademark-lawyer-tough-love-vh1-mtv-lawsuit.jpgThe Court determined that Plaintiff did not demonstrate that the balance of hardships tipped in its favor because by the time Plaintiff filed its preliminary injunction motion, the program was already in the middle of its first season. “Given that the evidence before the Court shows that if an injunction were to issue, Defendants would lose a ‘significan financial investment’ in the Program and advertising revenue…as well as suffer reputational damage with viewers and advertisers, the Court finds that the likely harm to Defendants if the preliminary injunction is granted exceeds the potential harm to Plaintiff if the preliminary injunction is denied.”

Next, the Court analyzed whether Plaintiff had shown a combination of probable success on the merits and the possibility of irreparable injury. With respect to its Intent To Use trademark application, the Court found that Plaintiff filed the ITU application after it read Defendants’ press release regarding the upcoming series. Thus, the Court determined that Defendants were the prior users of the mark, which use predated the ITU application filing date.

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los-angeles-patent-attorney-vizio-sony-thumbLos Angeles, CA – On the same day that Sony filed its patent infringement lawsuit in Los Angeles, Vizio’s patent attorneys won the race – by mere hours – to the courthouse in New Jersey and filed a declaratory judgment, Lanham Act unfair competition, and trade libel lawsuit. Vizio’s complaint seeks declaratory judgment of non-infringement and invalidity of twelve of Sony’s television related patents. In addition, Vizio alleges that Sony’s officer disparaged Vizio during a public conference call with financial analysts by referring to “low-end kind of VIZIO and Chinese manufacturer semi non-HD sets.” Complaint available here.

Sony filed a motion to transfer the case to Los Angeles, which motion was granted. Order available here. The Court found that the general rule that the first-to-file suit should take priority in venue is entitled to little priority in this case because Sony lost the race by mere hours. Further, the Court relied on the Federal Circuit’s recent ruling – which attempts to quell the race to the courthouse – by relying on “the more appropriate analysis [that] takes account of the convenience factors under 28 U.S.C. § 1404(a),” instead of who won the race. Micron Tech., Inc. v. Mosaid Techs., Inc., 518 F.3d 897, 904 (Fed. Cir. 2008). The Court also considered the private interests of the litigants and the public interests in the fair and efficient administration of justice and found that “overall, this controversy appears to have little meaningful connection to New Jersey…Vizio’s corporate headquarters and principal place of business are in the Central District of California…Thus, Vizio’s forum selection is entitled to less deference.” As a result, the case was transferred to Los Angeles. The case is Vizio, Inc. v. Sony Corporation et al., CV09-02129 SJO (C.D. Cal. 2009).

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hair-care-products-trademark-toppik-megathik-lawsuit.jpgLos Angeles, CA – Spencer Forrest sells hair products for balding men and women, which includes the Toppik® product lines and the Xfusion® Keratin Hair Fibers products. Plaintiff claims it has trade dress protection in its product packaging, which trade dress is defined as having “a distinctive white product name on a dark brown cylindrical container about 4 ¾” in height and about 1 11/16″ in diameter, with white lettering and narrow colored band at the bottom of the cap, which features separately and together serve to uniquely identify that Plaintiff’s said products sold in that Trade Dress are from a single source.” Assuming that the features can “separately” function as the product’s trade dress, the defendant’s product does not appear to incorporate the alleged color scheme, both in the script and product’s package color.

Plaintiff’s trademark infringement claim is based on Defendant’s imbedding into meta tags and other uses of the Toppik® mark on Defendant’s website. The use of Plaintiff’s trademark is alleged to surreptitiously drive traffic to Defendant’s website, which increases sales for Defendant’s products. The case is Spencer Forrest, Inc. v. Megathik, Inc., CV09-1876 PSG (C.D. Cal. 2009).

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Los Angeles, CA – Legaljiffy.com sued rival website based legal document preparation company Legalcpu.com, Inc. for copyright infringement, trade dress infringement, and state unfair competition. Legaljiffy’s website has provided self-help legal documents since 2008 and is attorney-owned and operated. Defendant allegedly began its website in December of 2005, but has recently changed the look and feel of its website by copying “Legaljiffy’s website, both in look, feel and by content.” Defendant is alleged to have modified its website after Plaintiff declined to enter into a partnership, which partnership offer was intended to add an attorney to Defendant’s ownership group.

PRACTICE NOTE: It would have been interesting to see how the Court would have ruled on a motion to dismiss Plaintiff’s trade dress claim. Unfortunately, it was not part of Defendant’s motion. (Read BNA article regarding the viability of website trade dress claims).

PLAINTIFF’S WEBSITE FRONT PAGE:

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UPDATE 1/10/2010: Court rules that Upper Deck counterfeited Yu Gi Oh! cards. Details here.

Los Angeles, CA – In October of 2008, Konami sued Vintage Sports Cards, Inc. in the Central District of California for sales of allegedly counterfeit Yu-Gi-Oh! trading cards (details blogged here). The Court entered a permanent injunction against Vintage and, after taking expedited discovery, Konami discovered that Upper Deck – Konami’s exclusive distributor – was the alleged source of the infringing cards distributed by Vintage.

Upper Deck allegedly was the source of “at least 531,240 counterfeit Rare Cards” provided to Vintage. And in October of 2008, Konami’s attorneys discussed Upper Deck’s role in the distribution of allegedly infringing cards with Upper Deck’s lawyers. During counsels’ communications, Upper Deck’s lawyers allegedly threatened Konami with “mutual assured destruction” through litigation.

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