Articles Posted in Trademark Litigation

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Los Angeles, CA – Trademark attorneys for Mexico’s Club De Futbol America filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit at the Los Angeles Federal District Court against operators of a soccer club using the Club America trademark in the United States. Club America is a professional soccer club formed in 1916 and is one of the most popular soccer teams playing in Mexico’s Primera Division. It has registered with the U.S. Patent & Trademark Office the words “Club America” and its design trademark of a ball with the letters “C” and “A” on either side of the continents of North and South America. Club America also runs a soccer school under its word and design trademarks.

trademark-attorney-mexico-futbol-soccer-club-america.jpgClub Amercia accuses the Defendants of using the Club America trademarks in operating competing soccer training schools, whereby to “the average consumer, there is no way to distinguish promotion or advertising of the Counterfeit Schools from the Authentic Schools.” Defendants are accused of using the website www.clubamericaschool.com to promote the competing soccer training schools under the additional names of “Casa De Deportes,” “Centro De Formacion Club America,” “Club America,” “Club America School,” and/or “America School Professional Soccer Academy.” Defendants are accused of the deliberately infringing and causing confusion by using Plaintiff’s logo on their website, by displaying the team’s official eagle mascot, and having a prominent hyperlink to Plaintiff’s official website. Plaintiff alleges that defendants have failed to comply with three cease and desist letters, thereby forcing the filing of the instant lawsuit. The case is titled Club De Futbol America v. Mike Ochoa, et al., CV08-06563 MRP (C.D. Cal. 2008).

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Los Angeles, CA – Copyright attorneys for Tokyo Broadcasting System (“TBS”) filed a copyright infringement lawsuit at the Los Angeles Federal District Court, accusing American Broadcasting Companies, Inc. (“ABC”) of copyright infringement over its “Wipeout” television show. TBS created and aired its Japanese reality television shows “Takeshi’s Castle,” “Most Extreme Elimination Challenge” (“MXC”), “Sasuke,” “Kunoichi,” “Ninja Warrior” and “Women of Ninja Warrior.” TBS began airing “Takeshi’s Castle” in Japan from 1986 to 1989, which “involves laymen contestants who compete in a variety of silly physical challenges consisting of huge obstacle courses that most of the contestants are expected to fail. The contestants’ failed attempts to complete the challenges often look painful or ridiculous, but mostly they are comical in nature.” In 2003, “Takeshi’s Castle” was aired in the United States under the “MXC” name on the Spike television network.

los-angeles-copyright-attorneys-Takeshis-Castle-mxc.jpgTBS alleges that “Defendants had knowledge of and were familiar with the Shows before Defendants created – using that term loosely – ‘Wipeout.’ Indeed, it is a common custom and practice in the United States television industry to obtain copies of and view television programs (especially popular programs) airing in other countries, including Japan, and several of the Shows were and are broadcast in the United States.” The complaint continues by asserting that “before airing ‘Wipeout’ for the first time, Defendants took steps to ensure that a Google search of the terms ‘Takeshi’s Castle,’ ‘Ninja Warrior’ or ‘MXC’ would result in the Google Searcher being directed to ‘Wipeout on ABC’ as a Sponsored Link.” In addition to the copyright infringement claim, TBS asserts causes of action for California Statutory Unfair Competition under Cal. Bus. & Prof. Code § 17200 and common law unfair competition. The case is titled: Tokyo Broadcasting System, Inc. v. American Broadcasting Companies, Inc., CV08-06550 SJO (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for Asics filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit against Dolce & Gabbana at the Los Angeles Federal District Court. Asics has registered numerous trademarks with the U.S. Patent & Trademark Office for its stripe design having two relatively parallel vertical stripes intersected by two curving stripes connected at one end. Asics has used the stripe design trademark on shoes and apparel – for over forty years – since 1966.

los-angeles-trademark-attorney-shoes-asics-dolce-gabbana.jpgAsics also asserts that it has widely advertised and promoted its products with the stripe design trademark through numerous and diverse advertising media, including print, television and the Internet. Asics’ print advertising is alleged to have the following “look for” advertising: “The stripe design featured on the sides of ASICS shoes is a trademark of ASICS Corporation and is a registered trademark in most countries of the world.”

Asics alleges that Dolce & Gabbana is “selling shoes under its D&G line bearing a mark that infringes ASICS’ famous Stripe Design mark at retail shoe stores and via the Internet.” The complaint continues, on information and belief, that Dolce & Gabbana has “engaged in intentional infringement by designing shoes that include a stripe design that is confusingly similar to ASICS’ famous Stripe Design.” The complaint identifies five different Dolce & Gabbana shoes which bear the allegedly confusingly similar stripe design. 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 titled Asics Corporation v. Dolce & Gabbana, CV08-06407 AHM (C.D. Cal. 2008).

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clothing-design-copyright-attorney-trademark-lawyer-evr.jpgLos Angeles, CA – Copyright and trademark attorneys for EV.R, Inc., dba Skinny Minnie, filed a copyright and trademark infringement lawsuit, in the Central District Of California (Los Angeles Division), against Anama, LLC. EVR is a clothing designer and manufacturer whose garments and clothing designs feature copyrightable works which have been registered with the US Copyright Office. EVR states that it created several unique designs which it exhibited to retailers at numerous tradeshows and in its own showrooms throughout the United States. EVR has also filed trademark application to register its two designs, both featuring skulls, with the U.S. Patent & Trademark Office.

EVR alleges that it recently discovered Defendant’s sales of women’s tops and shirts featuring designs identical to and infringing on EVR’s designs and trademarks. The complaint states that “Defendants have willfully and intentionally infringed EVR’s copyrights and trademarks by slavishly copying, selling, publicly displaying copies of EVR’s works or works substantially or strikingly similar thereto, namely, the Infringing Products, without EVR’s consent or pemission.” EVR requests either actual or statutory damages under 17 U.S.C. § 504, in addition to their costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. Also, EVR requests damages under the Lanham Act. The case is titled: EV.R, Inc. v. Anama, LLC, CV08-06348 SJO (C.D. Cal. 2008).

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los-angeles-trademark-attorney-playboy.jpgLos Angeles, CA – Trademark attorneys for Playboy commenced trademark infringement litigation, at the Central District Court of California, over the sale of costume jewelry and accessories bearing its trademarks. Playboy magazine has been continuously published since 1953 and is now available in approximately 47 countries. Playboy has registered its trademarks with the U.S. Patent & Trademark Office, and the trademark is used on over 1,500 products that are sold in more than 125 countries, ranging from apparel and jewelry to slot machines and video games.

Playboy has also used its Rabbit Head Design since 1954 and owns at least 1862 trademark registrations in approximately 170 countries. The complaint alleges that “long after Playboy’s adoption and use of Playboy’s Trademarks in connection with products and long after federal registration of Playboy’s Trademarks, Defendants commenced the importation, distribution, advertising, offering for sale and sale of merchandise bearing counterfeits of Playboy’s Trademarks.” In addition to preliminary and permanent injunctions, the complaint seeks unspecified monetary damages. The case is titled Playboy Enterprises International, Inc. v. Axcess, Inc., SACV08-994 JVS (C.D. Cal. 2008).

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copyright-attorney-cards-figurines-los-angeles.jpgLos Angeles, CA – Plaintiffs San Francis Imports and Basevi, through their attorney, filed a copyright infringement, Section 17200 unfair competition, and trade dress infringement lawsuit at the Federal District Court in Los Angeles against NG Figurine Wholesale, WG Trading Corp., and Gary Ngo. The complaint alleges that from 1935 to 1950, Cromo, N.B., an Italian corporation, created artwork with the assistance of numerous artists, which copyrights in the artwork were transferred to and registered by Cromo. In turn, Cromo assigned licensing rights in the United States to Basevi, which license was executed with San Francis.

The complaint alleges that “Defendants, and each of them through its (sic.) employees copied Plaintiff’s (sic.) Holy Cards and caused to be manufactured and offered for sale to the public Holy Cards which is (sic.) not only substantially similar, but is strikingly similar to Plaintiffs’ Holy Cards.” The case is titled San Francis Imports v. NG Figurine Wholesale, CV08-06252 RGK (C.D. Cal. 2008).

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Los Angeles, CA – Plaintiff Stonefire Grill’s trademark attorneys filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), and trademark dilution complaint at the Federal District Court for the Central District of California (Los Angeles Division). Stonefire Grill alleges that it began using its “Stonefire Grill” trademarks in 2002 and has obtained a USPTO registration for one of its trademarks and has other applications pending, all of which are for use with bar and restaurant services.

los-angeles-trademark-attorney-restaurant-pizza-08.jpgPlaintiff alleges that Defendants began using the dominant words “Stone Fire” for its business name long after Plaintiff had adopted its Stonefire trademark. Although the trademarks are not exactly the same, Plaintiff alleges that “Defendants’ name and mark are substantially identical in appearance, sound, and connotation to Plaintiff’s STONEFIRE Mark; and, in particular, the dominant words ‘STONEFIRE’ are identical to Plaintiff’s STONEFIRE Mark.” As a result, the complaint continues, “Defendants’ Mark so resembles Plaintiff’s STONEFIRE Mark as to be likely to cause confusion, to cause mistake, or to deceive the consuming public.” The case is titled Stonefire Grill, Inc. v. Stone Fire Pizza, et al., CV 08-06223 AHM (C.D. Cal. 2008).

PRACTICE NOTE: Plaintiff’s website lacks the registered trademark notice (i.e. the “R” in the circle symbol ®) or any notice that it has a USPTO registered trademark for “Stonefire Grill.” It is highly advisable to display the ® symbol with registered trademarks because under 15 U.S.C. § 1111, no damages and no profits shall be recovered unless and until the defendant had actual notice of the registration.

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los-angeles-trademark-attorney-pocket-design.jpgLos Angeles, CA – Trademark attorneys for jeans manufacturer Pacific Sunwear of California, Inc. (“Pac Sun”) filed a declaratory judgment lawsuit after receiving a cease and desist letter from Abercrombie & Fitch, Inc. and Hollister Co. for trademark infringement over Pac Sun’s use of its “Bullhead Pocket Design” on jeans. The lawsuit, filed at the Los Angeles Federal District Court , alleges that on August 28, 2008, Abercrombie sent a cease-and-desist letter alleging infringement of its USPTO registered “A&F Pocket Design” trademark in addition to numerous unregistered word marks.

The complaint alleges that a “controversy has arisen and currently exists among Pac Sun and defendants regarding whether Pac Sun has infringed the alleged A&F Pocket Design, the Hollister Jean Names, and the font and stylization allegedly used by Hollister, and whether Pac Sun has engaged in unfair competition, under either federal or applicable state law.” Pac Sun seeks a declaration from the court that it does not infringe the Defendants’ trademarks because of the absence of likelihood of confusion and that the word marks are generic and/or descriptive and not enforceable. The case is titled Pacific Sunwear of California, Inc. v. Abercrombie & Fitch Trading Co. et al., CV08-06135 DDP (C.D. Cal. 2008).

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Santa Ana, CA – Trademark attorneys for clothing/apparel manufacturer Louis Vuitton filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), and trademark counterfeiting complaint at the Federal District Court for the Central District of California (Santa Ana Division). The complaint recites that the luxury goods manufacturer began selling its luggage in France in 1854 and in the United States in 1893. In 1896, Louis Vuitton created the LV monogram with three motifs (shown below) and registered it with the U.S. Patent and Trademark Office in 1932. Louis Vuitton has additional design/logo trademarks that are also registered with the USPTO.

santa-ana-trademark-attorney-louis-vuitton-mob.jpgDefendants Mob, Inc. and Tilly’s, Inc. are alleged to have counterfeited and infringed on Louis Vuitton’s trademarks by selling unauthorized clothing, including t-shirts and sweatshirts. Louis Vuitton alleges that “Defendants’ advertising, offering for sale and sale of Defendants’ [clothing] subjected consumers to confusion in that consumers were likely to purchase Defendants’ [clothing] falsely believing that Defendants and/or Defendants’ [clothing] are affiliated, connected, or associated with Plaintiff, or falsely believing that Defendants and/or Defendants’ [clothing] originate from, or are sponsored or approved by Plaintiff when they are not.” The case is titled Louis Vuitton Malletier, S.A. v. MOB, Inc., et al., SACV08-736 AG (C.D. Cal. 2008).

PRACTICE NOTE: I previously posted (Click Here) about the Louis Vuitton and “Chewie Vuiton” parody case, where the defendant’s parodical use of the LV Monogram was found to not infringe on Louis Vuitton’s trademarks or copyrights.

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Los Angeles, CA – Trademark attorneys for Modavox, Inc. filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint against AOL at the Federal District Court in Los Angeles. Modavox licenses and sells internet video and radio software and services under its Boombox Radio mark. Modavox, through its predecessor-in-interest, registered the Boombox Radio trademark with the U.S. Patent & Trademark Office in 1999.

los-angeles-trademark-attorney-radio-internet-aol-boombox.jpgModavox alleges that AOL “willfully and deliberately used and is using the Mark with notice of Palintiff’s ownership of the Mark and began to use the name ‘Boombox’ well after Plaintiff’s Mark had been registered to offer virtually identical services as Plaintiff has offered and registered under the Mark.” Modavox alleges that it sent a cease and desist letter to AOL, but AOL has refused to stop using the trademark. The case is titled Modavox, Inc. v. AOL, LLC, CV 08-05914 SJO (C.D. Cal. 2008).