Articles Posted in Trademark Litigation

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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 – Manley Toys Ltd filed a trademark and trade dress infringement lawsuit against Radco Ltd in the U.S. District Court for the Central District of California (Los Angeles Division). Manley designs and manufactures a variety of toys including the inflatable waterslide toys that are the subject of the lawsuit. Manley is no stranger to trade dress lawsuits involving waterslides, being previously sued by Wham-O (details here).

trademark-attorney-toys-trade-dress-manley-waterslide-radco.jpgFour years ago, Manley created and sold a waterslide toy under the trademark “The Plunge,” which it alleges has been highly successful. The complaint also contends that Manley has “adopted a distinctive color scheme and appearance for its product which, taken together, form a protectable trade dress for The Plunge product.” The product is also marketed and sold under Manley’s Banzai trademark.

Manley alleges that Radco’s use of the mark “Pipeline Plunge” infringes its trademarks and that it was adopted in bad faith, “Defendants’ use of the term Pipeline in the name Pipeline Plunge is a transparent attempt to associate Defendants’ water slide with Plaintiff’s well-known Banzai brand by reference to the notorious and famous ‘Banzai Pipeline’ surf area off the north shore of Hawaii’s Oahu Island.” Defendants will probably argue that you’d have to, at the very least, be a Kamaaina to make that connection. Manley also claims that Defendants have used a color scheme “that is to all intents and purposes identical to Plaintiff’s The Plunge toy.” The case is Manley Toys Ltd v. Radco Ltd HK, et al., CV09-3129 VBF (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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Los Angeles, CA – Medieval Times USA, Inc. unsheathed its sword and commenced a trademark infringement, Lanham Act false advertising, and unfair competition battle against Alcatraz Media, Inc. Since 1983, Medieval Times has operated Medieval-style castles where it hosts dinner tournaments, complete with a king, a princess, and jousting knights. Although the knights nobly protect the castle, Plaintiff has turned to the USPTO to protect its Medieval Times® trademark through registration.

trademark-attorney-medieval-times-dinner-tournament.jpgDefendant Alcatraz Media is accused of operating numerous websites, including www.medievaltickets.com and www.viptickets.com, which are used to sell tickets to Plaintiffs’ dinner and tournament events. The websites are allegedly designed to confuse consumers into believing they are purchasing tickets directly from Plaintiffs. For example, the websites allegedly have links to separate webpages for each of Plaintiffs’ castles, including images and textual descriptions thereof.

Also, the complaint accuses Defendants of advertising tickets for Plaintiff’s events at artificially inflated prices, and then providing artificial “discounts” from the inflated prices. Including the discount, Plaintiffs allege that consumers are charged more than they would have been charged by Plaintiffs for the same tickets. As a result, Plaintiffs allege that irate customers have demanded – and received from Plaintiffs – refunds after attending the show and realizing they were overcharged. Further, Plaintiffs contend that consumers were sold “upgrades” by Defendants without Plaintiffs’ knowledge or receipt of payment, which Plaintiffs were forced to honor. Additionally, when Defendants no longer have tickets to Plaintiffs’ shows, they have allegedly falsely advertised that the shows were “sold out,” even though tickets were directly available from Plaintiffs. Plaintiffs allege that Defendants know that their conduct is unlawful because they were found liable in a civil action entitled Maid of the Mist Corporation v. Alcatraz Media, LLC, 06-CV-714 ODE (N.D. Ga. 2006), involving Defendants’ similar misconduct. Order available here.

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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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Santa Ana, CA – Gun suppressor manufacturer SureFire, LLC filed a false advertising lawsuit, in the Central District of California (Santa Ana Division), against Advanced Armament Corp. (“AAC”), details blogged here. Returning fire, AAC then filed its own false advertising counterclaim (copy available here) alleging that SureFire’s representation that its suppressors could withstand the continuous firing of 1,5000 rounds without failure is false and no tests were conducted to support the statements.

false-advertising-lawyer-silencer-advertisement-surefire-gun.jpgAllegedly on December 23, 2008, AAC agreed not to run its advertisement in exchange for SureFire’s agreement not to seek preliminary injunctive relief. AAC also allegedly agreed to provide SureFire’s counsel with copies of modifications to the advertisement for approval prior to publication. But AAC began running a modified version of the allegedly offensive advertisement without seeking SureFire’s prior approval. As a result, SureFire filed an application for preliminary injunction to prevent publication of the modified version of the advertisement. (Preliminary injunction application is available here).

The modified advertisement contains the same pictures, but includes a statement in “fine print…that the SureFire suppressor was ‘FIRED 580 ROUNDS’ and that the AAC suppressor is ‘UNFINISHED/UNFIRED.'” SureFire contends that its suppressor must have been fired more than 580 times and appears to have been both abused and physically manipulated to create the false impression that it suffered a massive structural failure during normal use.” SureFire also asserts “the claim that SureFire’s suppressors use spot-welds is literally false,” as are claims regarding the strength of AAC’s welds compared to those used by SureFire. SureFire uses a series of redundant “tack” welds – which uses molten filler to strongly join seams between metal pieces – and not the weaker “spot” welds – where pressure and a strong electric current effectively melts two overlapping pieces of metal together at the “spot” of application. The AAC suppressor is produced by “fusion” welds, which do not use metal filler but draw metal from the two parts being joined together. According to SureFIre, “fusion” welds are generally weaker than “tack” welds, thereby rendering false AAC’s claims of greater durability.

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