Articles Posted in Trademark Litigation

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Los Angeles, CA – Trademark attorneys for Pinkberry filed several trademark infringement and Lanham Act 43(a) unfair competition lawsuits, at the Los Angeles Federal District Court, against several frozen yogurt competitors. Pinkberry’s “frozen yogurt” treats are all the rage, which I don’t quite understand. I would much rather have my frozen yogurt at The Bigg Chill, which has been serving frozen yogurt with your choice of toppings for at least fifteen years and whose parking lot entrance literally causes a parking lot on Olympic Boulevard with the ant-like row of cars waiting to park. But I digress. Pinkberry asserts that it began serving its “frozen yogurt” treats in 2005 and has recently registered its trademarks with the U.S. Patent & Trademark Office. One registered trademark is for the “Pinberry & Stylized Leaf and Berry Swirl Design,” which is illustrated herein.

los-angeles-trademark-attorney-pinkberry-infringement.jpgThe complaint alleges that Defendants took a Pinkberry banner and used it to promote, advertise and sell Defendants’ products. “Specifically, Defendants covered and replaced ‘PINK’ with ‘COOL’ in the same stylized font and color to create a COOLBERRY banner that was posted and displayed on Defendants’ restaurant door.”

Although it appears that the Defendants may have used a modified Pinkberry banner, all may not be lost for the Defendants. As the Los Angeles Times reports, “Pinkberry was on the receiving end of a lawsuit this year filed by customers who contended that the popular treat might not be frozen yogurt. That case was settled in April, with Pinkberry giving $750,000 to two Southern California charities as part of the deal. It also began mixing its yogurt at a dairy, not in-store, and disclosed its ingredients online.” (Read L.A. Times Article) If in fact Pinkberry was not selling “frozen yogurt” and was violating food labeling laws, the validity of its trademark registrations may be comprised based on its representations to the USPTO. There are also allegations that Pinkberry indeed copied its store designs and frozen yogurt concept from Korea based Red Mango, noting that the owners of Pinkberry are Korean immigrants. (See HERE).

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Los Angeles, CA – Trademark attorneys for SATA GmbH, a German corporation, filed a trademark infringement, Lanham Act 43(a) unfair competition, and false advertising lawsuit, at the Los Angeles Federal District Court, to prevent internet based sales of its paint spray tools/guns. Sata owns numerous USPTO registered trademarks in addition to unregistered common law trademarks. SATA’s paint spray tools have been used in auto repair body shops, the automotive industry, and the wood-working industry for more than 23 years.

trademark-attorney-tools-los-angeles-sata.jpgDan-Am is an independent company that is the exclusive authorized importer and sole initial distributor of SATA products in the United States. “Through Dan-Am, SATA-designed and manufactured products are ultimately made available to warehouse distributors and jobbers and through such distributors and jobbers to end customers.” SATA asserts that it can maintain better supervision and quality control over its products because authorized distributors “are required by their contracts with Dan-Am to participate in a specified minimum of instructions and training activities involving the safe use and maintenance of SATA products. . . The internet cannot displace the individual services offered through the Authorized Distributor program.”

SATA alleges that Defendants use the SATA trademarks on their numerous websites to sell, without authorization, SATA’s paint spray tools on the Internet “by approaching Authorized Distributors for the purpose of obtaining SATA products for Internet resale.” The Defendants are also accused of engaging “in the wholesale copying of copyrighted photographs and text found at sata.com for the purpose of having material to support their unauthorized sales free of charge.” The complaint accuses the following websites of infringement: spraygunworld.com, toolparadise.com, spraygunindustry.com, mytoolchest.com, discounttoolsnthings.com, tptoolworld.com, airbrush4less.com, tptoolbox.com, and uniqueuniverse.com. The case is titled SATA GmbH & Co. KG, et al. v. David Nakatsu, et al., CV08-0560 ODW (C.D. Cal. 2008).

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Trademark infringement lawsuit – which was originally filed in Washington – was transferred to the Central District of California – Santa Ana Division, pursuant to stipulation by the parties’ attorneys. Plaintiff sells lingerie under its Zovo trademark, which it has registered with the USPTO. The Zovo trademark is also used on other clothing items, namely, “tank tops, shorts, camisoles, robes, chemises, dresses, hoodies, shirts, lounge pants, pajamas, and shells.”

los-angeles-trademark-attorney-lingerie-zovo.jpgPlaintiff alleges that Defendants, nearly 20 months after Plaintiff’s federal trademark application was filed, registered the zovala.net domain name. The domain name incorporates defendants’ Zova trademark, which it uses to offer women’s clothing and skin care items. On October 12, 2007, Plaintiff became aware of Defendants’ Zova trademark when it saw Defendants’ advertisement in California Apparel News. Shortly thereafter, Plaintiff sent Defendants a cease and desist letter regarding the Zova trademark. Defendants responded by claiming a date of first use which allegedly predated Plaintiff’s date of first use. Plaintiff alleges that it demanded evidence corroborating Defendants’ date of first use and, not having received a satisfactory response, this lawsuit followed. The case is titled Zovo Lingerie Company, LLC v. DMH Enterprises, Inc., SACV08-0987 DOC (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for Metrokane sought review and reversal, at the Federal District Court in Los Angeles, of the final decision of the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) cancelling the registration of its Houdini trademark. Metrokane’s Houdini trademark was registered with the USPTO on February 11, 2003, for use on lever-pull corkscrews and other bar accessories.

los-angeles-trademark-attorney-ttab-uspto-houdini.jpgIn 2005, Defendant Houdini, Inc. filed applications with the USPTO to register its “Houdini” mark for use in connection with, among other things, corkscrews, coasters, wine glasses, and gift baskets. The Trademark Examining Attorney rejected Defendant’s applications because its Houdini marks were likely to cause confusion with Metrokane’s prior registration. In response, Defendant filed with the TTAB a Petition to Cancel Metrokane’s trademark registration, wherein Defendant claimed prior use of the Houdini mark in connection with its gift basket design. The TTAB, in turn, granted the Defendant’s petition for cancellation and cancelled Metrokane’s trademark registration.

Metrokane, through its complaint filed with the federal district court, now seeks de novo review of the TTAB’s decision, pursuant to 15 U.S.C. § 1071(b). Metrokane contends that the TTAB decision was incorrect because: (1) the TTAB incorrectly rejected Metrokane’s laches defense, (2) the TTAB incorrectly accepted Defendant’s unsubstantiated allegations of prior use, and (3) the TTAB incorrectly found a likelihood of confusion. The case is titled Metrokane, Inc. v. Houdini, Inc., CV 08-05428 DSF (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for La Casita Mexicana, translates to “the little Mexican House,” filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint, at the Federal District Court in Los Angeles, over another restaurant’s use of the same trademark. La Casita Mexicana is located in Bell, California and has registered its restaurant name as its trademark at the U.S. Patent & Trademark Office. Plaintiff, who claims Mayor Antonio Villaraigosa as a patron, asserts that its “customers and the public have come to identify La Casita Mexicana with Plaintiff’s excellent food and service.”

mexican-trademark-attorney-los-angeles.jpgPlaintiff asserts that Defendant began using the same mark for its restaurant services ten years after Plaintiff’s first date of use. Plaintiff became aware of Defendant’s use through phone calls from customers inquiring about Plaintiff’s Whittier, California location – which it did not have. Plaintiff’s attorney sent a cease and desist letter to Defendant, who allegedly has refused to cease using the restaurant name. The complaint alleges that “Defendant’s use in commerce of the La Casita Mexicana Trademark for restaurant services has caused, and is likely to continue to cause confusion, deception, and mistake in the minds of the public with respect to the source and origin of Defendant’s goods and services, in that the public and those in the food and restaurant industry will believe that Plaintiff is the source of origin of such goods and services.” The case is titled La Casita Mexicana, Inc. v. Nereida Mendoza, CV 08-05286 ODW (C.D. Cal. 2008).

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Los Angeles, CA – Attorneys for Solid Host filed a cyberpiracy, 15 U.S.C. § 1125(d), and computer fraud and abuse act, 18 U.S.C. § 1030, complaint at the Federal District Court in Los Angeles over alleged hijacking of its solidhost.com domain name. Ironically, Solid Host is a webhosting service that provides server space to its clients and hosts their websites in addition to the clients’ email servers. Plaintiff registered the solidhost.com domain name in 2004 and has continuously used it, without any interest in abandoning it.

cyberpiracy-attorney-los-angeles-15-usc-1125d-solid-host.jpgThe complaint alleges that on August 4, 2008, due to a security breach at Solid Host’s registrar, eNom, its account was compromised and an unidentified hacker, sued as John Doe, gained access to Solid Host’s account and stole the domain. The hacker allegedly then created his own webpage and offered to sell the domain back to Plaintiff and other parties. Whois Guard is also named as a defendant because it provides private registration of domain names and safeguards the registrant’s identity.

When Plaintiff discovered the transfer of the domain name, it demanded that the registrar Demand Media, owner of eNom, return the registration to Plaintiff. When the registrar allegedly refused to do so without a court order, Plaintiff named it as a co-defendant in the instant lawsuit because it was negligent in allowing the security breach and not providing notice to the Plaintiff of the pending transfer. Unfortunately for Plaintiff, the alleged hacker now also has full control of Plaintiff’s email accounts. The case is titled Solid Host, NL v. NameCheap, et al., CV08-05414 MMM (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for American Automobile Association (“AAA”) filed a trademark infringement and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles over an automobile garage’s use of the name “AAA Smogz.” The complaint provides a summary of AAA’s use of the AAA trademark with respect to numerous services, including but not limited to conducting motor vehicle tests. Plaintiff has numerous AAA trademark registrations with the U.S. Patent & Trademark Office, which have become incontestable as a result of being registered for over five years.

los-angeles-trademark-attorney-automobile-garage-aaa.jpgThe complaint alleges that defendants are in the business of automobile smog testing services using a confusingly similar AAA mark. Plaintiff alleges that in September of 2007 it asked defendant to discontinue using the AAA mark and defendants agreed to do so within six months. On March 6, 2008, after defendants allegedly failed to discontinue their use of the AAA mark, Plaintiff sent another cease and desist letter, to which defendant did not respond. On March 21, 2008, Plaintiff sent another cease and desist letter which was returned as undeliverable. Plaintiff alleges that its investigators have indicated that defendants continue to use the AAA trademark in the same business location to which the letter was sent, thus necessitating the lawsuit. The case is titled American Automobile Association, Inc. v. Jorge A. Mendoza, et al., CV 08-05441 GHK (C.D. Cal. 2008).

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Los Angeles, CA – Patent attorneys for Big J & J filed a patent infringement lawsuit at the Central District of California (Los Angeles Division), accusing Novelty Distributors of patent infringement and California statutory and common law unfair competition. U.S. Design Patent No. D533,683, entitled “Piezoelectric Lighter” was duly issued by the U.S. Patent & Trademark Office on December 12, 2006. The ‘683 patent generally relates to the aesthetic design of a pocket lighter.

los-angeles-patent-attorney-novelty-8.jpgThe complaint alleges that Defendant Novelty previously purchased the subject pocket lighters from Plaintiff, but stopped such purchases in 2007. Defendant is then accused of intentionally copying the design of the patented lighter – thereby explaining the cessation of purchases. As a result, Plaintiff alleges that Novelty’s infringement is willful and deliberate. The complaint also incorporates by reference the patent infringement allegations as a basis for its California statutory (Cal. Bus. Prof. Code § 17200) and common law unfair competition causes of action. The case is titled Big J & J Int’l Corp. v. Novelty, Inc. dba Novelty Distributors, Inc., CV 08-5280 AHM (Central District of California 2008).

PRACTICE NOTE: It appears that the unfair competition claims are merely based on the patent infringement claim and should be dismissed as they are preempted. “Federal patent and copyright laws limit the states’ ability to regulate unfair competition.” Summit Mach. Tool Mfg. Corp. v. Victor CNC Systems, Inc., 7 F.3d 1434, 1439 (9th Cir. 1993). A plaintiff’s state law claim must be “qualitatively different from a copyright or patent infringement claim” or else it is preempted. Id. at 1440.

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Los Angeles, CA – Service mark litigation was instituted by trademark attorneys for Couples For Christ, Inc. (“CFC”) at the Federal District Court in Los Angeles. The complaint asserts that CFC has used its Couples For Christ, CFC, and Stylized Cross Design service mark “in connection with education services and providing religious and relationship counseling to couples and individuals” since at least 1991. CFC has registered the subject trademarks with the U.S. Patent & Trademark Office. As a result of the registrations on the USPTO register for over five years, the service marks have become incontestable, thereby foreclosing certain challenges to their validity.

los-angeles-service-mark-attorney-christ-litigationThe complaint alleges that “sometime after September 20, 2007, Defendant National Organization authorized the founders and incorporators of Defendant Northern California Organization and the founders and incorporators of Defendant Southern California Organization to incorporate under the Couples for Christ name and to use the CFC Marks in association with educational services and religious counseling in Northern and Southern California, respectively.” Plaintiff has requested that Defendants cease use of the marks, but Defendants have allegedly “repeatedly refused to cease their use of the CFC Marks and continue to provide educational services and religious counseling under the CFC Marks.” The case is titled Couples For Christ, Inc. v. Couples For Christ USA, et al., CV08-05061 DSF (C.D. Cal. 2008).

PRACTICE NOTE: My law school professor, Douglas W. Kmiec, taught that there is always a higher power that will adjudicate the parties’ earthly conduct. But for now, the parties will have to abide by the rulings of U.S. District Court for the Central District of California.

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Los Angeles, CA – Trademark litigation attorneys for Adidas filed a trademark infringement, trademark dilution and Lanham Act 43(a) unfair competition lawsuit – against other shoe manufacturers – at the Los Angeles Federal District Court. Adidas has registered numerous trademarks with the USPTO for its Three-Stripe design, which it began using on shoes in 1952. The complaint asserts that Adidas’ sales of products bearing the Three-Stripe trademark have totaled in the billions of dollars globally in recent years. Adidas also has exclusive agreements with athletes, including David Beckham, Tim Duncan, Kevin Garnett, and Tracy McGrady to promote its footwear and sports apparel.

los-angeles-trademark-attorney-litigation-adidas.jpgAdidas alleges that “Defendants’ use of confusingly similar imitations of Adidas’s Three-Stripe Trademark is likely to deceive, confuse, and mislead prospective purchasers and purchasers into believing that shoes sold by Defendants is manufactured by, authorized by, or in some manner associated with Adidas, which it is not. The likelihood of confusion, mistake, and deception engendered by Defendants’ misappropriation of Adidas’s mark is causing irreparable harm to the goodwill symbolized by the Three-Stripe Trademark and the reputation of quality that it embodies.” The complaint asserts the following causes of action: (1) Federal trademark infringement 15 U.S.C. § 1114; (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) State unfair and deceptive trade practices under Cal. Bus. & Prof. Code § 17200; and, (5) Common law trademark infringement and unfair competition. The case is titled Adidas America, Inc. v. Wah Lei Footwear (U.S.A.) Corporation, et al., CV08-04969 JFW (C.D. Cal. 2008). The other named defendants are Fu Ju (U.S.A.) Group, Inc., LA Discount Shoes, Sunny Shoes Corp., and Top Shoes, Inc.