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Los Angeles, CA – Energy drink manufacturer Rockstar, Inc. licenses its trademarks from its founder and CEO, Russell G. Weiner. The Rockstar family of trademarks includes Rockstar Energy Drink®, Rockstar®, Party Like a Rockstar®, and the pending Rockstar Energy Shot™. In addition, Rockstar’s promotional materials for its drinks use the tagline “So grab it, shoot it, and Rock ON!” Rockstar alleges that it has sold over one billion cans of its energy drinks and has annual sales of several hundred million dollars. The energy drinks have been sold in containers having the alleged distinctive trade dress depicted below.

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Defendant Rock On Energy, LLC is accused of using the confusingly similar trademark ROCK ON for a competing energy drink, which is sold by at least one mutual retailer. Also, Defendant is accused of using the confusingly similar “Live Loud. Play Hard. Rock On” tag line for its energy drinks. Further, Defendant allegedly uses a beverage container and product packaging that is confusingly similar to Rockstar’s trade dress. Defendant’s container is mostly black with lettering that is similar in fonts and colors to that of Rockstar’s. The case is Rockstar, Inc. v. Rock On Energy, LLC, CV 09-04017 GAF (C.D. Cal. 2009).

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trademark-attorney-tommys-original-hamburgers.jpgLos Angeles, CA – Tomdan Enterprises, Inc., which does business under the more recognizable “Tommy’s Original World Famous Hamburgers” name and trademark, filed a trademark and trade dress infringement, Lanham Act unfair competition, and trade secret misappropriation lawsuit against Tommy’s Original Chili Factory, Inc., and several individual defendants. Plaintiff has been in the restaurant business for the last fifty years, serving up hamburgers, cheeseburgers, hot dogs, and – my favorite – chili cheese fries, among other food items. Plaintiff alleges that it adopted the Tommy’s trademark in 1960 and registered the trademark with the California Secretary of State in 1978.

Plaintiff’s burgers and dogs are always served with chili, except when a patron specifically requests it be excluded. I have heard that consumption of a Tommy’s burger with a side of chili-cheese fries in the wee hours of the morning, after a night of libations with college friends, are warranted to reduce any morning-after negative side-effects. A side of extra pickles is believed to further suppress any hang-over symptoms. For those not familiar with the structure of a Tommy’s cheese burger, an element by element depiction is provided herein.

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Plaintiff alleges that Defendants were aware of Plaintiff’s Tommy’s mark and trade dress, but adopted a mark, logo, and trade dress that are confusingly similar to Plaintiff’s. Plaintiff alleges that Defendants have misappropriated Plaintiffs proprietary and trade secret information in the form of its recipes, including, but not limited to, its chili. Plaintiff allegedly sent a cease and desist letter – through counsel – to Defendants in December of 2008. But Defendants have allegedly refused to stop their activities. The case is Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).

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trademark-attorney-exercise-fitness-trx.jpgLos Angeles, CA – Fitness Anywhere, Inc. filed a trademark infringement and Lanham Act § 43(a) unfair competition lawsuit against Gofit, LLC. Plaintiff’s founder is a former U.S. Navy SEAL and created the exercise equipment to allow his team to exercise while in the field and without access to traditional exercise equipment. The equipment, which later became known as the TRX device, is manually operated and a variety of exercise routines can be performed with the user’s own body weight providing resistance. Plaintiff also provides a website to support the TRX device by designing and offering various exercise routines.

Plaintiff has registered its “Suspension Training” and “Make Your Body Your Machine” trademarks with the USPTO, for both fitness equipment and physical fitness educational services. Plaintiff alleges that Gofit has used the “Suspension Training” and “Suspension Training At Home” trademarks to advertise and sell its rival product. Gofit received a cease and desist letter from Fitness Anywhere’s counsel and allegedly agreed to stop using the objectionable marks by May 1, 2009. Gofit, however, is accused of continuing to use the “Suspension Training” marks and exacerbating the situation by adopting a “Make Your Body Your Gym” mark. The case is Fitness Anywhere, Inc. v. Gofit, LLC, CV 09-03828 SJO (C.D. Cal. 2009).

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Los Angeles, CA – Oskar Systems, LLC has a registered copyright in a software program that is designed to operate every aspect of a go-kart racing business. The registration certificate is attached as Exhibit D to its complaint (copy of the complaint is available here). The software is adapted for a wide range of functions, from record keeping all the way to individual driver timing and statistical analysis. The software is licensed to several customers, on an annual basis, and Plaintiff charges an annual fee for maintaining the software system.

software-copyright-lawsuit-club-speed-oskar.jpgIn 2005, Oskar alleges that it licensed the software to Pole Position Raceway, Inc., an indoor go-kart racing business located in Corona, California. Pole Position terminated its use of the software two years later. Then, Oskar learned that Pole Position switched to “Speed Sheet” software produced by co-defendant Club Speed, Inc., which is alleged to perform almost exactly the same way that Oskar’s software does, “producing almost identical graphs and reports.” Also, the customer liability waiver agreement is alleged to be identical. A screen capture of Club Speed’s software display, which is at issue in the lawsuit and was obtained from its website, is presented herein.

Plaintiff alleges that Club Speed and Pole Position, and their respective principals, have been aggressively marketing the Speed Sheet software and have successfully lured away Plaintiff’s existing customers. The case is Oskar Systems, LLC v. Club Speed, Inc. et al., CV 09-03854 AHM (C.D. Cal. 2009).

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Yesterday, the Supreme Court agreed to hear the In Re Bilski case (now renamed Bilski v. Doll), which is on appeal from the Federal Circuit. The Board of Patent Appeals and Interferences (BPAI) previously denied a business method patent for hedging in commodities trading. The Federal Circuit – largely overturning the 1998 State Street Bank case, which allowed business method patents – affirmed the BPAI ruling that the applicants’ invention did not meet the “machine-or-transformation” test. The Supreme Court’s agreement to hear the appeal is a rarity in patent law, leaving patent attorneys to ruminate whether the Supremes will curtail or expand the scope of business method patents. Bilski’s Petition for Certiorari can be viewed here and the Government’s Opposition to Certiorari can be viewed here.
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trademark-attorney-jeans-pocket-trade-dress-hudson.jpgLos Angeles, CA – Hudson Clothing,LLC filed a trade dress, Lanham Act § 43(a) trademark infringement, and false advertising complaint against BVDK Design, Inc. Plaintiff designs high end denim jeans and alleges that, since 2002, it has used a distinctive back pocket flap design trademark, which it also claims functions as its trade dress. Plaintiff contends it occupies the “premium” denim market, which means – prepare yourself – jeans in excess of $150 a pair. “This market attracts consumers focused on value, style, fit and comfort.”

Plaintiff alleges that BVDK’s jeans, in contrast, lack the reputation and quality that Hudson’s jeans enjoy. But in order to penetrate the premium denim market, defendant is accused of intentionally adopting and using a confusingly similar pocket flap. David Kahn, the owner of BVDK, is also named in the suit and is accused of selling the purportedly infringing jeans on the www.davidkahnjeanswear.com website. Plaintiff also learned that Defendants’ products, which are sold as the “Nikki” style, was available at the same retailer, Nordstrom. Although there is a false advertising cause of action, Plaintiff does not detail the allegedly false statements that were made with respect to the quality of the products. The case is Hudson Cothing, LLC v. BVDJ Design, Inc., CV 09-3275 R (C.D. Cal. 2009).

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Santa Ana, CA – Plaintiff Planet Coffee Roasters, Inc. filed a trademark infringement, Lanham Act § 43(a), and dilution claim against Garden Grove, California based Defendant Planet Coffee. Plaintiff alleges that it has been using the Planet Coffee trademark since 1993 on coffee beans and services related to coffee, with “a majority of its sales of its products and services in and around the California geographic region, including Orange County, California.” This statement defeats Plaintiff’s cause of action for trademark dilution because the Trademark Dilution Revision Act of 2006 limited dilution causes of action to nationally famous marks.

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Unfortunately for Plaintiff, cups of bitter refills are sure to follow. Plaintiff never registered its trademark with the USPTO and only recently filed a word mark and a design mark application. Both applications, however, have been refused registration based on two 1995 registrations owned by Souper Salad, Inc. for Planet Coffee® and Planet Coffee® plus design. Plaintiff is now going to have an uphill battle establishing ownership of its alleged trademarks. The case is Planet Coffee Roasters, Inc. v. Planet Coffee, SACV 09-571 MLG (C.D. Cal. 2009).

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Los Angeles, CA – The late Evel Knievel was a motorcycle daredevil whose crashes made him more famous than his successful jumps. And now, less than two years after his death, lawsuits continue regarding ownership of the copyrights in his pictures and film clips and infringement thereof. In 2005, Gary Schreiber sued Knievel in Nevada District Court for a declaration of validity of a 1982 written transfer of copyrights to pictures and films made by Knievel (story about the suit is here). While the Nevada lawsuit is still pending, Schreiber has now filed a copyright infringement suit, in the Central District Of California (Los Angeles Division), against American Broadcasting Company, ABC Television Network, Inc. and ESPN, Inc.

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Plaintiff alleges that when Evel was in need to capital to resurrect interest in his career, Plaintiff purchased the rights to the film and the films themselves in 1982 via written agreement executed by Knievel. Plaintiff then produced two compilation films entitled “Evel Knievel’s Specacular Jumps” and “The Last of the Gladiators.” Schreiber alleges that at some time, Knievel once again sold or licensed the same rights – previously granted to Schreiber – to Defendants. Schreiber alleges that Defendant ABC used the copyrighted work in “David Blaine’s Drowned Alive” television show and Defendant ESPN used the copyrighted work during the “Impossible Jump by Mike Metzger” television show. The Defendants are accused of intentional and willful infringement because Defendants’ parent, The Walt Disney Company, has previously paid Schreiber to use the copyrighted Evel Knievel works. The case is Raymond Gary Schreiber v. American Broadcasting Company et al., CV09-03205 AHM (C.D. Cal. 2009).

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trademark-attorney-swimsuit-ipanema.jpgSanta Ana, CA – James Brady and Patricia Brady filed suit at the Federal District Court in Santa Ana against Quicksilver Americas, Inc., Radio Fiji, Dillard’s Inc., B. Suits, Inc., and Pampo’s Dance Emporium, Inc. In 1985, Plaintiffs, through their prior corporation, developed a line of swimwear manufactured in Brazil and used the Ipanema trademark on the goods. The Ipanema trademark was registered with the USPTO in 1993 and subsequently transferred to the Plaintiffs in 1998. The registration has become incontestable under 15 U.S.C. § 1065. Plaintiff’s “The Girl From Ipanema” trademark, however, is not incontestable because it was registered less than five years ago.

Plaintiffs allege that Defendants have recently manufactured swimwear, which they sell under the Ipanema trademark. Plaintiffs contend that they sent Quiksilver a cease and desist letter in August of 2004, but it has refused to stop use of the Ipanema trademark. In addition to the trademark cause of action, Jennifer assert a Lanham Act § 43(a) false designation of origin claim and a California Business and Professions Code §17200 unfair competition claim. The case is James W. Brady, et al. v. Quiksilver Americas, Inc. et al., SACV 09-553 MLG (C.D. Cal. 2009).

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Los Angeles, CA – Manley Toys Ltd filed a trademark and trade dress infringement lawsuit against Radco Ltd in the U.S. District Court for the Central District of California (Los Angeles Division). Manley designs and manufactures a variety of toys including the inflatable waterslide toys that are the subject of the lawsuit. Manley is no stranger to trade dress lawsuits involving waterslides, being previously sued by Wham-O (details here).

trademark-attorney-toys-trade-dress-manley-waterslide-radco.jpgFour years ago, Manley created and sold a waterslide toy under the trademark “The Plunge,” which it alleges has been highly successful. The complaint also contends that Manley has “adopted a distinctive color scheme and appearance for its product which, taken together, form a protectable trade dress for The Plunge product.” The product is also marketed and sold under Manley’s Banzai trademark.

Manley alleges that Radco’s use of the mark “Pipeline Plunge” infringes its trademarks and that it was adopted in bad faith, “Defendants’ use of the term Pipeline in the name Pipeline Plunge is a transparent attempt to associate Defendants’ water slide with Plaintiff’s well-known Banzai brand by reference to the notorious and famous ‘Banzai Pipeline’ surf area off the north shore of Hawaii’s Oahu Island.” Defendants will probably argue that you’d have to, at the very least, be a Kamaaina to make that connection. Manley also claims that Defendants have used a color scheme “that is to all intents and purposes identical to Plaintiff’s The Plunge toy.” The case is Manley Toys Ltd v. Radco Ltd HK, et al., CV09-3129 VBF (C.D. Cal. 2009).

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