Articles Posted in Trademark Litigation

Aevoe has filed a trademark infringement and false designation of origin lawsuit against numerous entities accused of selling iPad and iPhone accessories bearing its Moshi®, stylized M and iGlaze trademarks. Aevoe manufactures peripherals and accessories for portable electronic devices and computers that are sold through Apple, AT&T, and its own online retail store. It alleges that its Moshi® branded products have garnered extensive media coverage and Aevoe has built up and developed significant goodwill and trademark recognition in its entire product line. And in light of this success, it’s alleged that the Moshi® trademark and products have become targets for unscrupulous individuals and entities who wish to take a ‘free ride’ on Aevoe’s goodwill.

Aevoe is accusing numerous eBay sellers of selling counterfeit or imitation goods bearing its trademarks: “Defendants maintain and operate a storefront or webpage on eBay.com [through which] Defendants regularly and systematically advertised, marketed, distributed and sold products bearing unauthorized MOSHI® registered trademarks.” Regarding one defendant, E & D International Trade, Inc., Aevoe’s investigator purchased a “red Moshi iGlaze 4 back case cover for iPhone 4 4G” from E&D. Upon inspection, “security measures confirmed that the item defendants sold was in fact a counterfeit.” Thus, Aevoe contends, “Defendants’ actions have confused and deceived, or threatened to confuse and deceive, the consuming public concerning the source and sponsorship of the counterfeit ‘red Moshi iGlaze 4 back case cover for iPhone 4 4g’ sold and distributed by Defendants. By their wrongful conduct, Defendants have traded upon and diminished Plaintiff’s goodwill. Furthermore, the sale and distribution of counterfeit goods by Defendants have infringed upon Plaintiff’s federally registered trademarks.”

In addition to its trademark infringement and unfair competition claims, Aevoe asserts a claim for trademark dilution, which appears to be susceptible to a motion to dismiss. To establish a trademark dilution claim, Aevoe must allege that “(1) the mark is famous and distinctive; (2) the defendant is making use of the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the defendant’s use of the mark is likely to cause dilution by blurring or dilution by tarnishment.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008). Under the Trademark Dilution Revision Act of 2006, however, a dilution cause of action is reserved for only the most truly prominent brands, such as Coca Cola, Apple, AT&T, or Sony, and it does not appear that Moshi is such a prominent, household name to survive a motion to dismiss.

Clipper Darrell has been a fixture at Clippers’ basketball games for the last decade, even when the team was horrible and I would go watch them solely because my friend would give me his season tickets. In fact, Staples Center was so empty during Clippers games that Clipper Darrell was the only person cheering. But now that the Clippers are winning, my friend has stopped giving away his tickets and the Clippers have apparently told Clipper Darrell he can no longer use “Clipper” in his name or sell merchandise that allegedly infringes the “Clippers” trademark.

Although the Clippers will surely resort to the canned response of “we have a duty to enforce and protect our trademark or risk losing our trademark“, some trademark professors believe the risk to be overstated. But to Clipper Darrell’s advantage, when he and I were at past Clippers games, the only other “fan” in attendance was team owner Donald Sterling, who was actually and inexplicably heckling his own players. There is no doubt that Mr. Sterling saw and/or heard his counterpart, Clipper Darrell in his trademark half-blue/half-red suit, actually cheering for the Clippers. Thus, it appears that Clipper Darrell may have a laches defense against the Clippers’ trademark infringement claim if he can show that the Clippers knew or should have known of his infringing activity and they unreasonably delayed in filing a lawsuit. Miller v. Glenn Miller Prods., 454 F.3d 975, 980 (9th Cir. Cal. 2006).

The practical approach from both a legal and PR perspective would be to license Clipper Darrell to use the trademark and not alienate Clippers’ fans that have been loyal during the lean years. The trademark license would allow Mr. Sterling to increase revenue and thereby extend Blake Griffin the maximum contract allowed under the new collective bargaining agreement. But that assumes the Clippers are now practical.

TechnoMarine is suing both Costco and Overstock.com for trademark infringement because neither is an authorized retailer of its watches, which it alleges are “either counterfeit or were obtained in bad faith from TechnoMarine’s authorized retailers/distributors, who are expressly prohibited from distributing” the watches to other retailers. TechnoMarine has been selling its watches since 1997 and owns several USPTO registered trademarks for the word TechnoMarine and its T and M logo. TechnoMarine alleges hundreds of millions in watch sales by high end retailers and tens of millions of dollars in advertising through numerous renowned magazines.

TechnoMarine alleges that the sale of its watches are strictly controlled and “contractually permitted only through authorized dealers, most of which are not authorized to sell the products on the internet. All of TechnoMarine’s authorized retailers/distributors have entered into agreements in which they are expressly prohibited from transshipping and selling TechnoMarine branded products to unauthorized third party retailers and online retailers.” TechnoMarine’s warranties are inapplicable to watches obtained through unauthorized retailers thereby reducing the quality of unauthorized products. Because Costco and Overstock are not authorized TechnoMarine watch distributors, the warranties are void and render the goods not genuine in violation of TechnoMarine’s trademark rights.

This isn’t Costco’s first rodeo in the unauthorized watch sales arena. Costco was previously sued by Omega for copyright infringement for selling gray market watches in the U.S., meaning that Costco bought legitimate Omega watches abroad and imported them into the U.S. for resale. The Omega watch had a copyrighted glove image and Costco’s sales in the U.S. constituted copyright infringement because it violated Omega’s rights to distribute the work. The District Court agreed with Costco that Section 109’s first sale doctrine trumped Omega’s exclusive rights. The Ninth Circuit Court of Appeals disagreed, holding that the first sale doctrine does not apply to copies not authorized for resale in the United States. The U.S. Supreme Court tied 4-4, thus allowing the Ninth Circuit’s decision to stand, but not resolving the split between the circuits.

The MLB champion San Francisco Giants not only failed to make the playoffs, but, to add insult to injury, their failure to register their stylized “San Francisco” logo is forcing them to defend a trademark lawsuit filed by a junior user, Gogo Sports. Gogo is an apparel manufacturer that sells customized and private labeled products according to its customer’s orders. Although Gogo is alleged to have adopted its San Francisco logo after the Giants, Gogo filed an application to register the trademark at the U.S. Patent & Trademark Office, whereas the Giants – surprisingly – did not, until only recently. On August 8, 2011, the Trademark Examining Attorney refused registration of the Giants’ later filed application for “clothing, namely, shirts and jackets; headwear” in light of Gogo’s previously registered – although on the Supplemental Register – trademark for “Caps; Hats; Headwear; Jackets; Shirts; Sweat shirts; Tops” because:

Here, the marks are virtually identical. Both share the same large wording SAN FRANCISCO in a stylized cursive font sloping upwards from left to right and with the same underline shape extending from the O under the wording. The only difference is the applicant did not include the geographically descriptive wording CALIFORNIA in small letters in the underline portion of the registrant’s mark.

Less than a month after the refusal, Major League Baseball Properties (“MLBP”) sent Gogo correspondence asserting superior rights in the design mark and demanding Gogo “immediately and expressly abandon the Supplemental Registration for the [mark], and immediately cease and desist from manufacturing, advertising, marketing, distribution, offering for sale and/or selling the Unlicensed Clothing and any other unlicensed product bearing any of the MLB Marks and/or any mark or graphic confusingly similar to and/or dilutive of any of the MLB Marks.”