Articles Posted in Trademark Litigation

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Los Angeles, CA –False advertising attorneys for DS Waters of America, Inc. (“DSW”) filed an unfair competition and false advertising complaint at the Federal District Court in Los Angeles, over Nestle Waters’ comparative advertisement of pricing for home/office delivery of water. DSW markets and sells bottled water under its U.S. Patent & Trademark Office registered trademarks of Sparkletts®, Hincley Springs®, and Crystal Springs®. Nestle is a competitor and sells its bottled water under its U.S. Patent & Trademark Office registered trademarks of Arrowhead®, Ice Mountain®, and Zephyr Hills®.

false-advertising-attorney-15-usc-1125-lanham-dsw.jpgThe complaint alleges that Nestle’s recent advertising campaign makes inaccurate and misleading price comparisons. The advertisements, published through newspapers and customer proposals, “falsely state that DS Waters’ current price for its 4-bottle monthly delivery service is $32.99/month in Los Angeles and Chicago, and $31.99 in Tampa.” The advertisement is allegedly false because “DS Waters’ 4-bottle monthly delivery service are literally false in that DS Waters’ current price for a 4-bottle monthly water delivery service is $27.99 in the Los Angeles area, $25.99 in the Chicago area, and $28.99 in the Tampa area.” Further, Plaintiff alleges that Nestle’s comparative pricing slogan of “Get More. Pay Less for Home Delivery (Sorry, Spakletts®)” is expressly false, impliedly false and/or deceptively misleading. In addition to monetary damages, DSW seeks both preliminary and permanent injunctions and seeks corrective advertising. The case is titled DS Waters Of America, Inc. v. Nestle Waters North America, Inc., CV08-04970 PA (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for Life Alert Emergency Response, Inc. commenced trademark infringement litigation, at the Federal District Court in Los Angeles, against Netstake, LLC. Plaintiff has used Life Alert® as its trademark for services and related products targeted to seniors for more than twenty years. You might remember Plaintiff’s endearing “I’ve fallen and I can’t get up” television commercials. Plaintiff has registered the Life Alert® trademark with the U.S. Patent & Trademark Office, which registration has become in contestable.

los-angeles-trademark-attorney-emergency-life-alert.jpgThe complaint alleges that “Defendant has willfully violated Life Alert’s rights in the Life Alert Mark, by using the Life Alert Mark in connection with metatags, source code and web pages for its websites. Defendant’s improper and unlawful uses of the Life Alert Mark are for the purpose of selling products and services competitive to those of Life Alert.” In addition to preliminary and permanent injunctions, Plaintiff seeks monetary damages for the alleged trademark infringement and unfair competition. The case is titled Life Alert Emergency Response, Inc. v. Netstake, LLC, CV08-05088 GHK (C.D. Cal. 2008).

PRACTICE NOTE: Professor Eric Goldman believes that “lawsuits over metatag usage are so 1999.“

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Los Angeles, CA – Trademark attorneys for Red Bull filed a lawsuit at the Federal District Court in Los Angeles alleging trademark and trade dress infringement, unfair competition under the Lanham Act (15 U.S.C. § 1125), and trademark dilution. The complaint asserts that since Red Bull’s introduction in 1996, over four billion units have been sold in the United States and over one billion dollars have been spent on advertising, marketing and promoting the Red Bull energy drink. Red Bull has obtained trademark registrations at the U.S. Patent & Trademark Office for the its word marks in addition to the trade dress in its can designs.

trademark-attorney-in-los-angeles-fair-use-foosh.jpgThe Defendants manufacture and sell chocolate mint chews bearing the “Buzz Bites” trademark and mints bearing the “Foosh Energy Mints” trademark. Red Bull is not concerned about the word marks used by Defendants, but alleges that the Defendants’ use of Red Bull’s trademarks and trade dress in Defendants’ advertising and on Defendants’ website and vending machines “is likely to cause confusion before and during the time of purchase of defendants’ products because purchasers, prospective purchasers . . . are likely to be drawn to defendants’ products because they mistakenly attribute [defendants’] products to Red Bull.” Red Bull sent a cease and desist letter to Defendants, but Defendants have allegedly refused to cease the use of the Red Bull trademarks and trade dress. The case is titled Red Bull GMBH v. Vroom Foods, Inc. and Mad Dog Energy Products, CV08-04960 GAF (C.D. Cal. 2008).

PRACTICE NOTE: A competitor can assert the nominative fair use defense to protect its ability to use a trademark to refer to a trademark owner or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising. To qualify for the nominative fair use defense, the following three requirements must be met: (1) the trademark owner, product, or service must not be readily identifiable without use of the trademark; (2) the defendant must use only as much of the mark as is necessary to identify the trademark owner, product, or service; and (3) the defendant must do nothing that would suggest sponsorship or endorsement by the trademark owner. From the facts asserted in the complaint, the Defendants will probably interject a comparative advertising fair use defense, because they are comparing the caffeine content of their product and that of Red Bull. It appears that the first and third elements of the test are met, but the defense will probably turn on whether the second element of the test is satisfied – i.e. did Defendants use more of Red Bull’s trademarks/trade dress than was necessary to make the comparison?

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Los Angeles, CA – Copyright attorneys for dietary supplement company Iwin Labs filed a copyright infringement lawsuit, in the Central District Of California (Los Angeles Division), accusing rival nutritional company of copying its website design. The complaint asserts that in June of 2008, Iwin Labs developed and created an acai berry dietary supplement and created a website that promotes and sells the supplement. Based upon Iwin’s success, the Defendants allegedly “proceeded to copy Iwin Labs’ website and product labels, word for word, color for color, image for image (though at times making uninspired attempts to be ‘just a little’ different, but still most definitely similar enough to steal customers from Iwin Labs and wreak havoc on Iwin Labs’ customer relations).” The following are screen shots of the parties’ websites as represented in the complaint:

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The complaint continues, “what is worse, Defendants not only copied and otherwise misappropriated Iwin Labs’ intellectual property, they made an active and concerted effort to fool the public by using the exact same online marketers and advertising agents that Iwin Labs had previously used, thereby greatly increasing the probability that repeat visitors looking for the Iwin Labs website would end up on Defendants’ nearly identical web pages.” Plaintiff requests statutory damages under 17 U.S.C. § 504(c)(1). Plaintiff also requests that the court order the defendants to pay the costs of the lawsuit and reasonable attorneys’ fees pursuant to 17 U.S.C. § 505. The case is titled: Iwin Labs, LLC v. Crush, LLC, CV08-04695 MMM (Central District of California 2008).

PRACTICE NOTE: 17 U.S.C. 504(c)(2) provides an increase in the statutory damages to $150,000.00 per infringement if it is deemed to be intentional. However, the Plaintiff’s state causes of action for statutory and common law unfair competition appear to be preempted by the Copyright Act and should be dismissed.

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Los Angeles, CA – Trademark attorneys for Louis Vuitton filed a trademark infringement, Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125), counterfeiting, and copyright infringement complaint at the Federal District Court for the Central District of California (Los Angeles Division) to protect its purse designs from being copied. 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. Further, Louis Vuitton owns certain copyright registrations in the U.S. Copyright Office covering its Multicolor Monogram design.

purse-design-copyright-trademark-protection-louis.jpgDefendants are alleged to have counterfeited and infringed on Louis Vuitton’s trademarks and copyrighted works by selling unauthorized goods, such as purses and handbags. Louis Vuitton alleges that “the activities of Defendants complained of herein constitute willful and intentional counterfeiting and infringement of the Louis Vuitton Trademarks and Copyrighted Work; are in total disregard of the Plaintiff’s rights and were commenced and have continued in spite of Defendants’ knowledge that the use of the Louis Vuitton Trademarks and Copyrighted Work, or copies or imitations thereof, was and is in direct contravention of Plaintiff’s rights.” The case is titled Louis Vuitton Malletier, S.A. v. Mido Trading, Inc., et al., CV 08-04405 DDP (C.D. Cal. 2008).

PRACTICE NOTE: The defendants’ website, midotrading.com, has been taken offline at the time of this post. That does not appear to be a good omen for defendants. 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 E! Entertainment Television filed a trademark infringement, cybersquatting, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles, over entertainment/celebrity news blogger’s use of the enewsbuzz.com domain name. The complaint provides a summary of E! Entertainment’s beginnings in 1990 as the only 24-hour network with programming dedicated to the world of entertainment and celebrity news. It currently “is the world’s largest producer and distributor of entertainment news and lifestyle-related programming.” E! alleges that “E! News” and “E! News Weekend” are its most popular television programs and both trademarks have been registered with the U.S. Patent & Trademark Office.

los-angeles-trademark-attorney-e-entertainment.jpgE! alleges that long after it commenced use of its famous E! Marks and E! NEWS Marks, Defendants began business under the ENewsBuzz trademark using the enewsbuzz.com domain name to provide similar services, “Defendants use the ENEWSBUZZ mark, trade name, and domain names in connection with providing gossip, news and images of Hollywood celebrities.” Defendants are alleged to have adopted the confusingly similar mark in order to benefit from the goodwill established by E!: “significantly, Defendants’ ENEWSBUZZ mark is depicted on its website with the letter “E” offset in bold red – the same color that E! Entertainment has been using in connection with the “E!” portion of its E! Marks and E! NEWS Marks for many years.” The lawsuit was filed after the Defendants refused to cease using the subject trademark and domain name in response to E!’s correspondence. In addition to preliminary and permanent injunctions, E! also seeks monetary damages. The case is titled E! Entertainment Television, Inc. v. Louie De Filippis et al., CV 08-04355 ODW (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for Project E 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 Genetic Denim’s use of a double helix design stitching on jeans’ pockets. Plaintiff asserts that it is the owner of the “XX” trademark, which comprises two adjacent Xs stitched into garments, and first used the trademark in 2004. Although, the Plaintiff does not sell jeans/denim, it claims that the mark has been used on polo shirts and sweaters and that the goods are substantially related.

los-angeles-trademark-attorney-genetic-projec-e.jpgGenetic Denim uses a DNA double helix stitched into the jeans’ back-pockets and – playing on the genetic theme –an “XY” stitching is used on the front of jeans for men and an “XX” stitching is used on the front of jeans for women. The complaint alleges that Genetic Denim’s “use of the trademark or a substantially similar trademark is likely to cause confusion, mistake or deception as to the source or origin of defendant’s goods in that the public and others are likely to believe that defendant’s goods are manufactured, distributed or sold by, or sponsored by, or approved by, or licensed by, or affiliated with, or in some other way legitimately connected to plaintiff. Such public confusion has and will continue to cause irreparable harm to plaintiff.” In addition to preliminary and permanent injunctions, Plaintiff also seeks monetary damages. 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 –Patent attorneys for Manhattan Beach based Skechers U.S.A. filed a patent infringement, trade dress infringement, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles.

los-angeles-patent-attorney-shoe-design-skechers.jpgSkechers asserts that it is the owner of a distinctive trade dress in the appearance and features of its Biker-Sightsee™ Series of footwear/shoes. “Skechers has expended substantial effort and funds in promoting the goodwill of the Skechers Biker-Sightsee™ Series in developing a consumer association of the Biker-Sightsee™ Series as emanating from Skechers. It has expended many millions of dollars promoting and advertising its Bikers-Sightsee™ Searies footwear. It has entered into agreements with celebrities such as American Idol Winner Carrie Underwood and platinum recording star Ashlee Simpson to appear in ads featureing the Biker-Sightsee™ Series footwear.”

As additional intellectual property protection for its shoe design, the U.S. Patent & Trademark Office issued U.S. Patent No. Des. 532,962 to Skechers. Skechers alleges that the Defendant was sent notice that its shoe design was infringing on Skechers’ patent and trade dress rights and that Defendant replied that it would modify its shoe design and stop selling the shoes at issue. The Defendant, however, has allegedly not ceased selling the infringing shoes, thereby forcing litigation. The case is titled Skechers U.S.A., Inc. v. Aetrex Worldwide, Inc., CV 08-03831 GAF (C.D. Cal. 2008).

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Los Angeles, CA –Trademark attorneys for Rock & Republic jeans/clothing company filed a trademark infringement lawsuit against Rich & Skinny jeans at the Los Angeles Federal District Court. Rock & Republic began using stylized “R” trademarks on its clothing line as early as 2002. Several different versions of the “R” logos are registered with the U.S. Patent & Trademark Office. “Rock & Republic applies its stylized “R” trademarks to the back pocket of its jeans and pants. Since their creation and first sale, products bearing Rock & Republic’s stylized “R” trademarks have been enormously successful.”

los-angeles-trademark-attorney-jeans-stitching-logo-rock-republic.jpgThe complaint continues: “The various stylized “R” trademarks, including the Rock & Republic Stylized “R” Mark have acquired a strong secondary meaning and are strong trademarks. Rock & Republic’s stylized “R” trademarks, including the Rock & Republic Stylized “R” Mark, and associated products, have become famous.” Rock & Republic alleges that defendant began operations in 2006 and is “in the business of manufacturing, advertising, selling, and distributing apparel, including denim jeans.” Rich & Skinny is accused of copying the stylized “R” trademark and selling apparel/jeans in similar channels as Rock & Republic, which is alleged to likely confuse consumers. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) False designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Federal trademark dilution, 15 U.S.C. § 1125(c); (4) Injury to business reputation and dilution under Cal. Bus. & Prof. Code § 14330; and, (5) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled: Rock & Republic Enterprises, Inc. v. Rich & Skinny, Inc., CV08-04199 PSG (C.D. Cal. 2008).

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Santa Ana, CA – Asics’ trademark attorneys filed a lawsuit against Steve Madden, Ltd. at the Federal District Court (Santa Ana Division) alleging breach of their previous settlement agreement, trademark infringement, unfair competition under the Lanham Act (15 U.S.C. § 1125), and trademark dilution. For over forty years, Asics has used its stripe design trademarks on virtually all of its shoes. Asics owns numerous trademark registrations at the U.S. Patent & Trademark Office for the stripe designs, the first of which was registered in 1972 and is incontestable.

trademark-shoe-stripe-trade-dress-asics.jpgThe parties are apparently not strangers and Steve Madden was previously sued for infringement by Asics – once directly and, on another occasion, through its design of shoes for Mossimo and Target. Both lawsuits were settled, which settlement agreements are confidential, but Asics is now alleging breach of those agreements. Asics further alleges that since the settlement agreements were executed, Steve Madden has sold new shoes that include a stripe design that is confusingly similar to and infringes Asics’ design trademarks. The case is titled Asics Corporation v. Steven Madden, Ltd., SACV08-0638 AHS (C.D. Cal. 2008).