Articles Posted in Trademark Litigation

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trademark-attorney-logo-nba-sports.jpgSan Diego, CA – The Coalition to Advance the Protection of Sports logos (“CAPS”) protects and enforces the trademarks and logos owned by the NBA, MLB, NFL, NHL, and Collegiate Licensing Company. CAPS sent a cease and desist letter to Plaintiff James Simpson informing him that the CAPS members “maintain the exclusive right, title and interest in the names, trademarks, copyrights, symbols, emblems, designs, logos, photographs, uniforms, team colors and identification of their corresponding organizations and collegiate institutions.” CAPS further accused Simpson of selling unauthorized jerseys bearing the CAPS members’ trademarks and logos on his website.

Simpson, in response to the letter, filed a declaratory judgment action seeking the Court’s ruling that Simpson’s jerseys do not infringe on CAPS members’ trademarks and logos and that CAPS is not the exclusive licensee of any of the trademarks. The case is Simpson v. Coalition to Advance the Protection of Sports Logos, CV10-1637 JLS (S.D. Cal. 2010).

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patent-attorney-design-trademark-bottle-gt-beverages-coca-cola.jpgSanta Ana, CA – GT Beverage Company sued The Coca Cola Company seeking Court judgment that its sports-themed shaped bottles did not infringe Coke’s trademark and design patent. Details blogged here. Coke filed counterclaims for trademark infringement and GT moved to dismiss them based on the doctrine of judicial estoppel, which prevents a party from assuming a contrary position after that party “assumes a certain position in a legal proceeding, and succeeds in maintaining that position.” New Hampshire v. Maine, 532 U.S. 742, 756 (2001).

Coke obtained its USPTO trademark registration for a sphere bottle design via a global settlement of several legal proceedings (two in Belgium, one in The Netherlands, one in Spain, and two in the U.S.) with a third-party, O-Company N.V. In those cases, Coke asserted arguments of invalidity, non-infringement, and fair use in response to O-Company’s allegations. Based on Coke’s prior litigation stance, GT filed the motion to dismiss on the grounds that judicial estoppel precludes Coke from asserting its trademark infringement claims against GT.

The Supreme Court outlined three factors to consider when applying judicial estoppel: (1) whether a party’s current position is clearly inconsistent with its previous position; (2) whether the court accepted the party’s previous position, such that there is the perception that either the first or second court was misled; and (3) whether the party would gain an unfair advantage or impose an unfair detriment on the opposing party by asserting its inconsistent position. New Hampshire, 532 U.S. at 750-51.

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trademark-attorney-hair-care-beauty-salon-oil-conditioner.jpgLos Angeles, CA – Moroccanoil manufactures “salon only” hair care products under its Moroccanioil®, “M Moroccanoil Design” and “Vertical Moroccanoil M Design” trademarks, which are all registered with the USPTO. Through its distribution arrangements Moroccanoil restricts the sale of its products to professional salons and licensed cosmetologists.

Defendant Beauty Encounter is accused of selling counterfeit Moroccanoil products through the www.beautyencounter.com and www.perfumeshop.com websites. Plaintiffs allege that they conducted chemical testing of Defendant’s products and determined that they had “distinctly different chemical and physical properties that do not match genuine Moroccanoil Oil Treatment.” Further, the complaint states that because Defendants cannot legitimately obtain genuine products from authorized distributors, “Defendants encourage Moroccanoil distributors and salons to cheat Plaintiffs by encouraging the distributors to order more Moroccanoil Products than the distributor or any salon needs. The excess Moroccanoil Products are then sold, directly or indirectly, to Defendants.” Thus, in addition to the trademark related claims, Plaintiffs assert interference with contractual relations and prospective advantage claims. The case is Moroccanoil, Inc. v. Beauty Encounter, Inc., CV10-5696 SVW (C.D. Cal. 2010).

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trademark-attorney-nutritional-supplement-arthri-7.jpgSanta Ana, CA – Nutrivita is a dietary supplement distributor, including the Arthro-7 nutraceutical supplement which is advertised as alleviating joint pain. The Arthro-7 trademark registered with the USPTO on October 24, 2000.

Plaintiff alleges that in July of 2010 it began receiving inquiries from customers and retailers regarding the relationship between an “Arthri 7.1” product and Plaintiff’s Arthro-7 product. Nutrivita discovered that “Arthri 7.1” was being marketed and distributed by M V Cosmetic. Nutrivita alleges that “Arthri 7.1 is clearly an attempt to imitate the Arthro-7 trademark by altering the ‘o’ to an ‘i’, and changing ‘7’ to ‘7.1’.” In addition to the trademark infringement claim, Nutrivita asserts causes of action for unfair competition under the Lanham Act and the California Business and Professions Code § 17200, false description under the Lanham Act, and common law injury to business reputation. The case is Nutrivita Laboratories, Inc. v. M V Cosmetic et al., SACV 10-1142 JVS (C.D. Cal. 2010).

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trademark-attorney-candy-cake-sees-infringement.jpgLos Angeles, CA – Columbia Insurance Company owns the See’s Candy trademarks and exclusively licenses the marks back to See’s Candy Shops, Inc. The See’s Candy trademarks were first used in 1921 and have been registered with the USPTO and in other countries.

Aunt Joy’s sells cakes, cookies and chocolate-based confections from its Burbank store and website. Defendant is accused of selling cakes using the See’s trademarks, which cakes purportedly incorporated See’s Candy products. Defendant allegedly advertised its cakes as being “filled with Sees candy chips” and “dripping in Sees dark chocolate.” Plaintiff asserts causes of action for trademark infringement, Lanham Act unfair competition and dilution. The case is Columbia Insurance Company v. Aunt Joy’s Cakes, Inc., CV10-5164 RGK (C.D. Cal. 2010).

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trademark-attorney-savannah-wine-smirnoff-spirit-infringement.jpgSan Francisco, CA – The Wine Group has filed a trademark infringement lawsuit in the Northern District Court of California against Diageo PLC. Plaintiff sells a wine-based beverage that contains tea flavors under its Olde Savannah Southern Style Sweet Tea trademark, which it started using in December of 2009. According to the complaint, Plaintiff has sold over 29,000 cases of the beverage since December and plans on expanding the use of the mark to vodka-based beverages. In November of 2009, Plaintiff wisely filed an intent-to-use application with the USPTO prior to launching its product.

Diageo is the world’s largest wine, beer, and spirits company and owns the Smirnoff, Johnnie Walker, Captain Morgan, Jose Cuervo, and Guinness brands. Plaintiff alleges that Diageo has recently introduced a vodka-based sweet tea beverage under the Savannah Tea trademark. Because Plaintiff allegedly has priority over Diageo in using the Savannah mark, it contends that “Diageo’s use of the Savannah Tea mark is likely to cause confusion among consumers in a variety of ways. For example, consumers are likely to believe, erroneously, (a) that Diageo’s alcohol-based sweet tea is somehow associated, affiliated, or connected with TWG’s alcohol-based sweet tea, or vice-versa or, (b) that Diageo’s alcohol-based sweet tea is sponsored, authorized, or approved by TWG, or vice-versa.” The case is The Wine Group LLC v. Diageo PLC, et al., CV10-2879 DMR (N.D. Cal. 2010).

On a related note, it appears that The Wine Group’s Savannah trademark application is the subject of an opposition proceeding filed by Spier Wines before the TTAB. The parties, however, have filed a joint motion to suspend proceedings in furtherance of settlement discussions.

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trademark-true-religion-horseshoe-duff-lawsuit-cancellation.jpgPlaintiff Philip Duff is suing True Religion jeans for copying his horseshoe pocket design that he registered with the U.S. Patent & Trademark Office in 1995, long before True Religion began using the horseshoe design on its jeans. According to the complaint filed in the U.S. District Court in Los Angeles, Duff began using the horseshoe design trademark on jeans in the mid 80’s.

Duff alleges that while True Religion was developing its jeans in September of 2002, its CEO received a copy of Duff’s trademark registration record from the USPTO and was fully aware of Duff’s senior rights. Also, on December 10, 2003, its COO allegedly received another copy of Duff’s trademark registration record. “Despite such knowledge, Defendants proceeded to use in commerce on their jeans a ‘horseshoe’ design that is confusingly similar to Plaintiffs’ mark.” Defendants are also accused of describing their trademark as a modified “U” in their USPTO trademark applications and failing to disclose to the trademark examining attorney that they were fully aware of Duff’s prior registration.

Duff is asking the Court to cancel True Religion’s “horseshoe” design trademark because it was obtained by fraud. In addition, Duff seeks undisclosed monetary damages for the infringement and a permanent injunction preventing True Religion’s continued use of the horseshoe design. The case is Philip Andrew Duff, et al. v. Guru Denim, Inc. et al., CV10-4611 ODW (C.D. Cal. 2010).

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trademark-copyright-lawyer-odd-rods-infringement-invalidity.jpgLos Angeles, CA – Cartoonist/illustrator B.K. Taylor created the Odd Rods group of trading cards and sticker series in 1969 for the Donruss company. The theme for the cartoons was monsters driving cars, hot rods, and motorcycles. Around 2006, Plaintiff DZ Hart allegedly acquired the copyright and trademark rights to the collection. Subsequently, DZ Hart and Taylor entered into a consulting agreement for Taylor to design artwork for DZ. Plaintiff alleges that no products were created as a result of the agreement and it was terminated in January of 2009.

DZ then contracted a third-party to work on the project, which third party was contacted by Taylor’s attorney in June of this year and notified of Taylor’s claim of ownership in the Odd Rods intellectual property. Taylor allegedly sent the third-party a discussion draft of a proposed cooperation agreement between Taylor and EZ, which EZ claims is unenforceable because it was not executed. DZ alleges that Taylor never had exclusive rights to the disputed intellectual property and, if Taylor ever had any, the rights have lapsed due to abandonment and/or termination of all such rights and are now in the public domain. DZ has filed the declaratory judgment action asking the Court to rule that Taylor has no intellectual property rights in the Odd Rods characters. A copy of the complaint is available here. The case is DZ Hart Ltd. Liability Co., v. B.K. Taylor, CV10-4489 PSG (C.D. Cal. 2010).

Here’s the promotional video that also provides a history of “Odd Rods” narrated by Scott Baio:

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lanham-act-15-usc-1125-unfair-competition-trademark-forever-21-26.jpgLos Angeles, CA – Forever 21 is the ubiquitous clothing and accessories retailer that began doing business in 1989. Forever 21 is the owner of numerous USPTO registrations for its “21” family of trademarks, including “Forever 21”, “XXI” and “XXI forever”.

In December of 2009, Plaintiff asserts that it demanded that Defendant immediately stop using Plaintiffs’ trademarks on clothing and to remove the Forever 26 sign from its retail outlet. Defendant allegedly agreed to do so, but Plaintiff claims that it recently obtained evidence of Defendant’s continued use of Plaintiff’s marks. Thus, the instant lawsuit was filed for trademark infringement, unfair competition under the Lanham Act § 43(a) (15 U.S.C. §1125(a)), and dilution.

This is not Forever 21’s first court rodeo, but it’s one of the few as a Plaintiff. As Stylist.com put it: “Forever 21 has been sued for copyright infringement so many times, we’ve lost count.” The case is Forever 21, Inc. v. Forever 26, CV10-4331 CBM (C.D. Cal. 2010).

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Los Angeles, CA – Summit Entertainment is the producer and distributor of the highly successful Twilight motion picture franchise, including The Twilight Saga: New Moon, and the soon to be released Eclipse. The movies are about a teenage girl, Isabella (Bella”) Swan, who falls in love with a vampire, Edward Cullen. Bella’s other suitor in the film is Jacob Black, a werewolf, which love triangle always makes for a good motion picture franchise. Summit is the owner of several federally registered trademarks for “TWILIGHT” and also owns the trademark for “BELLA”, which trademarks have been used for clothing. Summit is also the copyright owner in the promotional image (shown below) depicting the character Bella from the Twilight movies.

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Defendants B.B. Dakota, Modcloth, and Metropark are accused of selling jackets using the “Twilight” and “Bella” trademarks in conjunction with the Bella image without authorization. Summit not only seeks Defendants’ profits from the sales of the allegedly infringing products, but also asks the Court to treble the damages because Defendants are accused of intentional infringement. The case is Summit Entertainment, LLC, v. B.B. Dakota, Inc., CV10-4328 GAF (C.D. Cal. 2010).