Articles Posted in Trademark Litigation

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Los Angeles, CA – Trademark lawyers for Carroll Shelby and his trust and licensing company filed a trademark and trade dress infringement, unfair competition, and violation of the right of publicity complaint at the Federal District Court in Los Angeles. Click to read complaint. Shelby is the legendary race car driver who broke the land speed record at the Bonneville Salt Flat and won the 24-hour Le Mans road race. After retiring from auto-racing, Shelby began designing some of the most highly prized race and production cars, including Shelby Cobras. The complaint alleges that the design of the Shelby cars, the Daytona specifically, has acquired distinctiveness and serves to identify Plaintiff as its source (the “Daytona Coupe Trade Dress”). The Daytona Coupe Trade Dress was registered with the USPTO as Registration No. 2,958,927. Plaintiff Shelby also owns the following USPTO issued trademark registrations: 289, 427 S/C, Shelby 427 S/C, and Shelby. Plaintiff Shelby is also the exclusive worldwide licensee of the COBRA trademark and logo, which are owned by Ford Motor Company.

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Defendant Factory Five Racing, Inc. (“FFR”) allegedly manufactures replicas of “Shelby Cobra vehicles, including kit cars bearing designs confusingly similar to the Daytona Coupe Trade Dress.” On FFR’s website, www.factoryfive.com, FFR allegedly uses trademarks owned by or licensed to Shelby in the metatags thereof to draw Internet traffic to the site, “these marks appear in the metatags but not in the posted content of the web pages, reflecting a design to conceal their use.” Further, the complaint alleges that links from FFR’s website directs traffic to LK Motorsports and Internet Community Partners, LLC’s websites, where further infringing use of the trade dress and trademarks occur. The case is titled Carroll Shelby v. Factory Five Racing, Inc. et al., CV 08-07881 CAS (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for In-N-Out Burger (“INO”) filed a trademark infringement, trademark dilution and unfair competition complaint at the Federal District Court in Los Angeles. INO has been making hamburgers since 1948 and was the innovator of the drive-thru hamburger stand to accommodate Californians’ love of their cars and hamburgers. INO registered the “IN-N-OUT BURGER” trademark with the USPTO in 1978, which trademark is used on its 140 locations.

los-angeles-trademark-attorney-in-n-out.jpgDefendant Michael Anthony Companies Incorporated offers construction services and operates a website at the following address: www.mac-companies.com. The complaint alleges that Defendant has misappropriated the In-N-Out Burger® trademark and used it in its website, “erroneously suggesting that INO is one of Defendants’ ‘current’ clients when it is not, and depicting INO stores.” INO’s attorneys allege that four letters were sent to Defendant requesting removal of the In-N-Out Burger® trademark and reference from the Defendant’s website, but the mark was not removed. The case is titled In-N-Out Burger v. Michael Anthony Companies Incorporated, CV 08-07601 PA (C.D. Cal. 2008).

PRACTICE NOTE: If you haven’t had the “animal” at INO, it’s an “off-the-menu” burger that you must try on your next visit.

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Los Angeles, CA – Trademark attorneys for Throttle Rocker, Inc. filed a trademark and trade dress infringement, counterfeiting, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles. Plaintiff manufactures motorcycle accessories, including a contoured throttle device which attaches to the throttle of a motorcycle and provides relief when the rider squeezes the throttle. Plaintiff has sold the devices under its Throttle Rocker trademark since 1995 and has registered a word mark and a logo with the U.S. Patent & Trademark Office. The complaint also asserts that the trade dress of the black device features “the following distinctive features: a velcro strap, an arcuate top portion and a concave-shaped base portion, which is approximately twice as wide as the top portion.”

los-angeles-trademark-attorney-trade-dress-throttle-rocker.jpgDefendant Eurodezigns, Inc. and several individual defendants are accused of selling a counterfeit product which allegedly uses the Throttle Rocker trademarks and infringes on Plaintiff’s trade dress. The complaint asserts that “Defendants’ use in commerce of THROTTLE ROCKER and its [sic.] sale of the counterfeit product, is likely to cause confusion, decpeiton and mistake in the minds of the public with respect to the source and origin of Plaintiff’s products.” The case is titled Throttle Rocker, Inc. v. Eurodezigns, Inc. et al., CV 08-07361 ODW (C.D. Cal. 2008).

PRACTICE NOTE: From the description of the alleged trade dress in the complaint and Plaintiff’s advertisement touting the comfort on the heal and palm of the hand imparted by the contoured shape of the device, it is going to be difficult to prove that the design is non-functional and entitled to trade dress protection.

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Los Angeles, CA – Trademark and copyright attorneys for Bagdasarian Productions, LLC filed a trademark infringement, copyright infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles to stop sales of allegedly infringing music CDs. “Alvin and the Chipmunks” was originally a music group created by Plaintiff’s predecessor, Ross Bagdasarian, Sr., consisting of three singing animated chipmunks: Alvin, Simon and Theodore. In 1958, Ross authored and copyrighted the words and music to the original musical composition, “The Chipmunk Song,” aka “Christmas, Don’t Be Late.” Also, since 1961, the members of the music group were portrayed as animated characters, first in cartoons and later in CGI form. Plaintiff also owns several USPTO registered “ALVIN AND THE CHIPMUNKS” marks for use on entertainment services, products and a variety of merchandise.

copyright-attorney-in-los-angeles-alvin-chipmunks.jpgIn 2007, a live-action/CGI comedy film entitled “Alvin and the Chipmunks” was released and generated over $350 million in theatrical motion picture box office revenues worldwide, and sold more than 12 million DVDs worldwide. The soundtrack form the film was released as a CD on November 20, 2007, and sold over 880,000 copies. Plaintiff alleges that after the success of the film and music CD, Defendant “St. Clair embarked upon a plan to fabricate a cheap knockoff of the Authorized CD containing 10 recordings, each of which is the exact composition found on the Authorized CD.” The complaint continues, “in order to further [Defendant’s] scheme to deceive the public into believing that its unlicensed album was authorized, endorsed by, associated or affiliated with plaintiff or its licensees, St. Clair entitled the album ‘A Tribute to Alvin and the Chipmunks,’ and . . . used artwork and CD packaging prominently featuring images closely approximating Alvin, Simon, and Theodore and using the Alvin and the Chipmunks trademark (and de-emphasizing the ‘Tribute’) in the same size, color, and typeface of the Authorized CD. The St. Clair CD cover is pictured herein. The case is titled Bagdasarian Productions, LLC v. St. Clair Entertainment Group, Inc., CV 08-07525 FMC (C.D. Cal. 2008).

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Los Angeles, CA – Trademark and copyright attorneys for Guru Denim filed a trademark infringement, copyright infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles to stop sales of allegedly counterfeit knock-offs of its True Religion® brand of jeans. Guru Denim has sought copyright, patent, and trademark protection on its garments and jeans. Guru Denim owns U.S. Patent No. D547530 for the stitch pattern applied to True Religion Brand Jeans pants. Guru Denim owns two U.S. Copyright Registrations for the True Religion Brand Jeans Designs, Copyright Certificate of Registration numbers VA1-192-834 and VA1-301-845.

attorneys-jeans-denim-apparel-copying-trademark-design-copyright-patent-true-religion.jpgGuru Denim owns a USPTO registered trademark in the pocket stitching pattern that appears on True Religion Brand Jeans pants and the overall stitching pattern on the front of True Religion Brand Jeans pants. Guru Denim also has 4 USPTO registered trademarks for “True Religion Brand Jeans” with assorted designs. Finally, Guru Denim has registered its “True Religion” word marks with the USPTO.

Guru Denim’s investigators discovered that numerous defendants were selling allegedly fake and counterfeit True Religion® jeans in their retail stores. The complaint states that the Los Angeles Police Department executed search warrants on some of the defendants’ premises and seized numerous allegedly counterfeit True Religion® apparel. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. §1114; (2) Federal copyright infringement under 17 U.S.C. §501; (3) False designation of origin under 15 U.S.C. §1125(a); (4) Trademark dilution under 15 U.S.C. §1125(c) and California Business & Professions Code §14330; and (5) Common law copyright infringement under California Civil Code §980. The case is titled Guru Denim, Inc. v. Hercel Zarrabian, et al., CV 08-07395 R (C.D. Cal. 2008).

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Los Angeles, CA – Nightclub promoter and performer Filthy McNasty – he legally changed his name – filed a trademark infringement lawsuit against Salon Corona, Inc. at the Los Angeles Federal District Court. Since 1980, Plaintiff McNasty has used the marks “FM Station Live” and “FM Station” for offering nightclub, live music and cabaret services. In 1989, the FM Station Live trademark was registered with the U.S. Patent & Trademark Office and has withstood a cancellation proceeding at the Trademark Trial and Appeal Board. Click to read TTAB decision.

trademark-club-promoter-fm-station-attorney.jpgThe complaint alleges that Defendant Salon Corona and Shawn Crosby have infringed the FM Station trademark by operating a nightclub and live music venue in North Hollywood, California under an unauthorized “FM Station” live trademark. Plaintiff accuses the Defendants of intentionally infringing on his trademarks. Although not mentioned in the complaint, the TTAB sheds some light on the Defendants’ prior knowledge of the FM Station Live trademark. Plaintiff McNasty was promoting monthly shows at the Defendants’ location under the FM Station mark. The case is titled Filthy McNasty v. Shawn Crosby, et al., CV08-0695 RGK (C.D. Cal. 2008).

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Los Angeles, CA – Copyright and trademark infringement lawsuit was filed at the Federal District Court in Los Angeles to prevent sales of allegedly unauthorized sales of Betty Boop merchandise by numerous defendants. Plaintiff Fleischer Studios, Inc. is owned by the heirs of Max Fleischer, the creator of famous cartoon characters – including the well-known fictional Betty Boop character. Plaintiff Hearst Holdings, Inc., through its King Features Syndicate Division, produces and distributes cartoon features and characters in the merchandising business. In 1986, Fleischer entered into an agreement with King Features granting it the exclusive rights to reproduce, distribute and/or license the Betty Boop character in the United States and throughout the world.

copyright-lawyer-trademark-cartoon-betty-boop.jpgBetty Boop first appeared in a “talkartoon” in 1930 titled “Dizzy Dishes” – she is very spry for being almost 80 years old – when the character was known as Betty. A year later, she became known as Betty Boop in the talkartoon titled “Minding the Baby,” which drawings of the character and cartoons – including several others – are all subjects of several U.S. Copyright Registrations. In addition, the character and name are subject to trademark protection and the U.S. Patent & Trademark Office has granted four federal trademark registrations for the Betty Boop word mark on a wide array of merchandise.

Plaintiffs allege that the numerous named defendants – that do not appear to be related in any way – have been selling and distributing merchandise bearing unauthorized depictions of the Betty Boop character and name. The complaint alleges that the infringement is “carried out with Defendants’ full knowledge that such elements are protected by copyright. In doing the acts complained of herein, the Defendants have willfully and intentionally infringed Plaintiffs’ copyrights” and trademark rights. The case is titled Hearst Holdings, Inc. v. Roger Lalwani, et al., CV08-06932 FMC (C.D. Cal. 2008).

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los-angeles-trademark-attorney-genetic-projec-e.jpgLos Angeles, CA – Project E previously filed (posted here) a trademark infringement lawsuit, at the Federal District Court in Los Angeles, against Genetic Denim over the use of the “XX” design stitched into jeans. Defendant Genetic Denim has countered with the filing of a third-party complaint (read here) against Michael D. Hecht, the owner of record of the USPTO registration of the “XX” trademark. Hecht allegedly licensed the “XX” trademark – on an exclusive basis – to Project E, the plaintiff in the action.

Genetic Denim quizzically asserts that Project E failed to allege the registered trademark in the initial complaint and contends the absence is based on the possible invalidity of the registration – i.e. “the mark was incapable of functioning as a trademark within the clothing industry as the XX cross-stitching was and is a common decorative element found on clothing.” Genetic Denim seeks cancellation of the trademark registration and monetary damages for unfair competition under the Lanham Act 43(a). The case is titled Project E, Inc. v. Genetic Denim, LLC, CV 08-04016 R (C.D. Cal. 2008).

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Los Angeles, CA – In a complaint that is filled with as many twists and turns of a spy novel, CJ Environmental filed a trademark infringement lawsuit, at the Federal District Court in Los Angeles, over the use of the term “Cash 4 Gold” by a competing business. CJ alleges that it has operated as a precious metal recycling company since 2005 and has used the mark “Cash for Gold” on its website, which site was created by web designer Michael Scherenberg. Also, CJ alleges use of the “Cash for Gold” and “Cash 4 Gold” marks in various newspaper and media advertisements across the country.

los-angeles-trademark-lawyers-cash-4-gold.jpgThe complaint asserts that Defendant, long after CJ’s first use, created the www.cash4gold.com website using the same designer that CJ had used for its website, Mr. Scherenberg. “At the time Mr. Scherenberg created Defendant’s website, he still had access and control over Plaintiff’s website. On or about August 10, 2007, it is believed that Mr. Scherenberg was instructed by Defendant to remove the ‘Cash for Gold’ link and related image files from the Plaintiff’s website.” After months of back and forth letters among the parties’ lawyers, including take down notices to domain name registrants, this lawsuit was filed. The case is titled CJ Environmental, Inc. v. Cash4Gold, LLC, CV08-06689 R (C.D. Cal. 2008).

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

Los Angeles, CA – Konami Digital Entertainment, through its trademark attorneys, commenced litigation for trademark infringement, Lanham Act 43(a) unfair competition, and copyright infringement lawsuit against Vintage Sports Cards, Inc. at the Los Angeles Federal District Court. Since 1973, Konami has developed and published popular trading cards, card games, interactive entertainment software products, collectibles and toys. Konami has registered numerous trademarks with the U.S. Patent & Trademark Office, including its word mark and numerous logos.

trademark-litigation-attorney-los-angeles-konami-yu-gi-oh.jpgKonami has created Yu-Gi-Oh!, a Japanese Manga (a form of comics), animation television series and card games. Konami has filed for and received numerous copyright registrations from the U.S. Copyright Office. The game’s rules ascribe a range of powers and relative values to specific cards, wherein “Rare Cards” are highly sought after by players and collectors and have the greatest commercial value. In the United States, Konami sells the game cards through its exclusive distributor, The Upper Deck Company.

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