Articles Posted in Trademark Litigation

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In a case that illustrates the dangers of using your own name as a trademark, a court has issued a permanent injunction preventing fashion designer Joseph Abboud from using his own name to promote a new line of clothing – and all future goods and services. The unfortunate aspect of this ruling that hinders Abboud’s planned return to the fashion industry, is that a more careful drafting of the agreements that were part of the sale of his company in 2000 could have prevented his unintended loss of rights.

fashion-designer-trademark-joseph-abboud.jpgTrademark attorneys for the popular designer apparently believed that when he agreed to sell his company and trademarks – which included the USPTO registered Joseph Abboud trademark – it would not prevent him from later using his own name to promote his affiliation with a new clothing line. The Court disagreed and issued a permanent injunction preventing the designer from using his own name to promote his new “jaz” fashion line. CLICK HERE for the Court’s decision.

Use Caution When Assigning Trademark Rights

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Santa Ana, CA – Trademark attorneys for Entrepreneur Media, Inc. (“EMI”), the publisher of Entrepreneur® magazine, filed a declaratory judgment lawsuit after receiving a cease and desist letter from Ernst & Young for trademark infringement over EMI’s use of “Entrepreneur Magazine’s 2008 Entrepreneur® Of The Year” award. The lawsuit, filed at the California Central District Court (Santa Ana Division), seeks a declaration from the court that Ernst & Young’s USPTO registrations for “Entrepreneur Of The Year” and “World Entrepreneur Of The Year” are invalid, unenforceable, and should be canceled, and/or EMI’s use of “Entrepreneur® Magazine’s Entrepreneur Of They Year” does not infringe.

declaratory-judgment-trademark-entrepreneur.jpgThe parties are very familiar with each other’s trademark rights and have previously granted a consent to registration and amended applications in response to oppositions in order to obtain registration. However, EMI now asserts that its use of “entrepreneur of the year” is generic, it has been used by numerous other organizations in a generic manner across the country, the trademark is not infringed, it is unenforceable, and asks the court to cancel the registrations. The case is titled Entrepreneur Meia, Inc. v. Eygn Limited, Ernst & Young LLP, SACV08-02810 DOC (C.D. Cal. 2008).

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Santa Ana, CA – Trademark attorneys for Econo Lube N’ Tune franchisor sued a Ventura, CA based franchisee for trademark infringement and breach of franchise agreement at the Federal District Court (Santa Ana Division). The USPTO registered trademark, Econo Lube ‘N Tune, is used by franchisees to provide automotive tune-up and brake services, lubrication, oil changes, and certain related minor automotive services. Because the trademark has been registered for over five years, since 1981 to be exact, the trademark is incontestable under the Lanham Act, 15 U.S.C. § 1115(b).

ventura-trademark-attorneys-econo-lube.jpgPlaintiff alleges that on August 1, 2006, Robert Gerz entered into a sublease and franchise agreement for the Econo Lube location in Ventura. The franchise agreement provided a limited license to use the trademark while the franchisee was in good standing, but on the termination of the franchise, the right to use the trademark ceases immediately. Six months after entering into the agreement, Defendant allegedly defaulted on his obligations to make rental payments under the sublease and royalty payments under the franchise agreement. Plaintiff provided notice of the breach to defendant, and defendant allegedly failed to cure the breach by making the required payments, “instead, Gerz engaged in a pattern of delay for the purposes of allowing him to continue his unauthorized operation of the franchise and use of the trademark for as long as possible.” Plaintiff filed an action in the Superior Court of the State of California, Count of Ventura, seeking, among other things, a judgment of possession against Gerz. One week before trial, however, Gerz vacated the premises mooting the trial for possession. As a result, the instant lawsuit was filed asserting the following causes of action: (1) Trademark infringement, 15 U.S.C. § 1114; (2) Breach of sublease agreement; (3) Breach of franchise agreement; and, (4) Unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Econo Lube N’ Tune, Inc. v. Robert Gerz, SACV08-00598 CJC (C.D. Cal. 2008).

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Los Angeles, CA – Trademark lawyers for entertainer and musician Ray Charles’ estate filed a trademark infringement, Lanham Act unfair competition (15 U.S.C. §1125), and commercial appropriation of name and likeness lawsuit at the Federal District Court in Los Angeles. The complaint is filed against Ryan Corey Robinson, who is purportedly Ray Charles’ son, and Mary Ann Den Bok – an attorney – who is Mr. Robinson’s mother. The complaint alleges that Ray Charles created an estate plan that would provide his children a certain amount of cash and The Ray Charles Foundation would receive Ray Charles’ intellectual property rights, including his name, voice, likeness, image and biographical material.

LA-CA-Trademark-lawyers-ray-charles.jpgPlaintiff alleges that since Ray Charles’ death, “Defendants have used the threat of negative publicity and false public statements to attempt to extort funds from The Foundation and its licensees … Specifically, in or about September of 2006, Defendants began threatening The Foundation and licensees, purporting to be representatives of Ray Charles Legacy Corporation, LLC, an entity that did not exist. Defendants also contacted third parties and falsely claimed that the Ray Charles Legacy Corporation, LLC held all rights to the name, likeness, and the right of publicity of the late Ray Charles in an effort to obtain a commercial advantage based on those representations.” The case is titled The Ray Charles Foundation, Inc. v. Ray Charles Legacy Corporation, CV08-02810 JFW (C.D. Cal. 2008).

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Los Angeles, CA – Trademark lawyers for Gevity HR, Inc. filed a trademark infringement and Lanham Act unfair competition (15 U.S.C. § 1125) lawsuit at the Federal District Court in Los Angeles. Plaintiff Gevity owns numerous USPTO registered trademarks for a family of Gevity trademarks in different International Classes and also has several pending trademark applications. Under its family of Gevity trademarks, Plaintiff “provides a wide range of services to thousands of small and mid-sized businesses nationwide, including human resources management consulting and related financial services, payroll processing, benefits and benefits administration, risk management and loss prevention, and workers’ compensation and other insurance coverage.” Plaintiff also uses its trademarks on its website and owns the domain name www.gevity.com.

los-angeles-trademark-lawyer-gevity.jpgDefendant Gevity Ventures was organized in February of 2007 and operates as a boutique hedge fund. Defendant offers investment services through the www.gevityventures.com website and offers management consulting services through the ww.gevityassociates.com website. In August of 2007, Plaintiff’s trademark lawyers sent a cease and desist letter to Defendants, which was allegedly ignored. In February of 2008, the trademark lawyers once again sent a cease and desist letter to Defendants, to which Defendants responded and refused to stop using the trademarks at issue. Because Plaintiff believes that the Defendants’ trademarks are likely to cause confusion, it filed the instant lawsuit. The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) Federal trade name infringement and false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) California trademark infringement; (4) Unfair competition under Cal. Bus. & Prof. Code § 17200; and, (5) Unjust enrichment. The case is titled Gevity HR, Inc. v. Gevity Ventures, LLC, CV08-03146 DSF (C.D. Cal. 2008).

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Los Angeles, CA – Trademark attorneys for “cookie diet” franchisees filed a trademark infringement, unfair competition (15 U.S.C. § 1125), breach of franchise agreement, and fraud lawsuit at the Federal District Court in Los Angeles. Plaintiffs are area franchisees and franchise representatives of the “Cookie Diet,” a medically supervised weight loss program. Defendants are the franchisors and licensors of the weight loss program, which in its California Uniform Franchise Offering Circular (“UFOC”) was described as a “medical-based physician monitored and supervised weight reduction and weight management program.” Plaintiffs are the franchise representatives throughout the State of California.

los-angeles-trademark-attorney-cookie-diet.jpgPlaintiffs allege that the Franchisor Defendants represented that the heart of the weight loss system was a diet based upon proprietary cookies, shakes and soups developed by Dr. Sanford Siegal. “The key to the weight loss concept was that a patient/customer had to maintain a diet of approximately 800 calories per day, half in a single 400-calorie mean, and the other half by eating six dietary ‘cookies’ throughout the day.” Because of the drastically low daily caloric intake, “physician supervision was a core component of Dr. Siegal’s diet system.” In 2002, the Franchisor Defendants entered into an agreement to license Dr. Siegal’s name, trademarks, and trade names. In return, Dr. Siegal was to be the exclusive supplier of cookies to the Franchisor Defendants. Dr. Siegal maintained rights to use the trademarks and system in Florida, but agreed to not compete with the Franchisor Defendants in the United States.

The complaint alleges that the Defendant Franchisors made fraudulent representations to induce Plaintiffs to enter into the franchise agreement, one such representation was that Dr. Siegal was part of the franchise and was contractually obligated to support franchisees and not compete with them. The Plaintiffs allege that the Defendants unilaterally terminated their licensing agreement with Dr. Siegal when the cookies were not consistent, instead of working with him to correct production, which Defendants knew would result in Dr. Siegal’s ability to compete with Plaintiffs and terminate the license to “Dr. Siegals” trademarks. Also, the complaint continues, Defendants tried to replicate the cookies themselves “through a trial-and-error process that used the franchisees and their patients as guinea pigs. Instead of exercising quality control, [Defendants] shipped each batch of cookies regardless of whether it suppressed appetite or how it tasted” and which did not bear required nutritional labels that complied with Federal laws. Further, as a result of the termination of Dr. Siegal’s agreement, Dr. Siegal sued the Defendants in Florida to stop them from using the “Cookie Diet” name and the Court granted a preliminary injunction enjoining Defendants and their franchisees from using the “Cookie Diet.”

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Santa Ana, CA – Trademark lawyers for E.I. Du Pont De Nemours filed a trademark infringement and Lanham Act unfair competition (15 U.S.C. 1125) lawsuit at the Federal District Court in Santa Ana to protect its TEFLON® trademark. The complaint recites the history of DuPont’s discovery of polytetrafluoroethylene (“PTFE”), which is the slippery, chemically inert compound that is used in a wide variety of different products. Since approximately 1944, DuPont adopted the fanciful trademark “Teflon” for its PTFE products and began to sell products under the trademark and also licensed the trademark for others to use. DuPont owns several USPTO trademark registrations for the TEFLON® trademark in several International Classes of goods. All of the registrations are incontenstable under 15 U.S.C. § 1065.

santa-ana-trademark-lawyer-dupont.jpgDefendant allegedly sells vehicle polishing and cleaning services that are described as “TEFLON® Polishing” and “TEFLON® Shine.” The complaint alleges that Defendant’s products do not contain genuine DuPont TEFLON® fluoropolymer. DuPont allegedly contacted the defendant and asked it to stop use of the mark, but defendant refused, thereby necessitating the lawsuit. The case is titled E.I. Du Pont De Nemours & Co. v. Tropic Shield, Inc., SACV08-00252 CJC (C.D. Cal. 2008).

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Los Angeles, CA – Trademark lawyers for rapper, actor, poet and musician Tupac Shakur’s estate filed a trademark infringement, Lanham Act unfair competition and a false advertising, and commercial appropriation of name and likeness lawsuit at the Federal District Court in Los Angeles. Although Tupac Shakur passed away over eleven years ago, he remains a popular hip-hop musician, artist, actor and poet. His intellectual property and publicity rights, according to Forbes magazine, ranked his estate’s earnings in the top nine for deceased celebrities. His estate licenses all of the intellectual property rights, “including rights to merchandise the trademarks and posthumous publicity rights” to the Plaintiff, Amaru-Awa Merchandising, Inc. Amaru owns a USPTO registered trademark for “Makaveli,” for use on recorded media and clothing.

merchandising-trademark-infringement-tupac.jpgDefendants own and operate a retail store named Rock Town, and a private investigator – acting on behalf of Plaintiffs – allegedly “purchased an unauthorized t-shirt bearing an image of Tupac Shakur and the trademark ‘Makaveli.'” Plaintiffs sent a cease and desist letter to the Defendants, to which there has been no response. Plaintiffs filed the instant lawsuit seeking monetary damages and injunctive relief. The case is titled Amaru Entertainment, Inc. v. Reza Falatoon, CV08-03317 DSF (C.D. Cal. 2008).

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Los Angeles, CA – A lawsuit was filed in the Los Angeles Superior Court alleging misappropriation of likeness/image for commercial purpose under Cal. Civ. Code § 3344 and unfair competition under the Lanham Act §43(a) (15 U.S.C. § 1125). Pamela Paulshock, an actress and model, alleged that defendant Heavenly Cosmetic used her photograph – without her authorization or compensation – in advertisements for its services in the field of cosmetic medical care and services published in L.A. Weekly Magazine. Based upon the federal cause of action under 15 U.S.C. § 1125, defendants filed a notice of removal under 28 U.S.C. § 1441(b) to move the case to the Federal District Court in Los Angeles, where the case is pending. The complaint alleges that “Plaintiff is the attractive female in the Defendant’s advertisement, is the focal point of the label, and is clearly visible and recognizable to the naked eye. At no time prior to or after the image was published, did Plaintiff consent to her image being published by the Defendant in this manner, nor to any agent or employee of the Defendant.” The complaint also asserts causes of action for invasion of common law right of privacy (unauthorized misappropriation of image/photograph) and unfair competition under Cal. Bus. & Prof. Code § 17200. The case is titled Shamshock v. Heavenly Cosmetic Medical SPA, CV08-03347 R (C.D. Cal. 2008).

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Oxnard, CA – A trademark infringement and Lanham Act §43(a) unfair competition (15 U.S.C. 1125) lawsuit was filed by attorneys for Athena Cosmetics, Inc., at the Federal District Court in Santa Ana. Athena is the owner of USPTO trademark registrations for the Revitalash, Athena, and Athena Cosmetics trademarks.

cosmetics-trademark-lanham-act-athena.jpgThe complaint alleges that Defendants incorporated under the confusingly similar name of Athena Bioscience, also using it as a trademark, in addition to using the confusingly similar trademark of Athena Lash Serum. The complaint further asserts causes of action for unfair completion under Cal. Bus. & Prof. Code §17200, intentional interference with prospective economic advantage, intentional interference with contract, and declaratory relief under 28 U.S.C. §2201 as to the ownership of the trademarks. The case is titled Athena Cosmetics, Inc. v. Athena Bioscience, SACV08-0532 AG (C.D. 2008).