California Trademark Attorney® Blog

November 2011 Archives

Headphone Maker Skullcandy Sues Skelanimals for Trademark Infringement

November 23, 2011,

headphones.jpgCalifornia - Headphone manufacturer Skullcandy recently filed an action for trademark infringement against music apparel and accessory brand Skelanimals. The action concerns the Skelanimals logo, which Skullcandy claims is confusingly similar to its own.

Park City based Skullcandy filed the action in a Utah federal district court, claiming that the Skelanimals logo will confuse consumers as to the source of goods bearing the logo. Skullcandy claims that Skelanimals deceptively uses several logos confusingly similar to its own in order to piggyback on the good will of the Skullcandy trademark. In addition, Skullcandy alleges that the use of a similar logo by Skelanimals will devalue the Skullcandy brand.

Trademark infringement occurs when someone other than the holder of a valid trademark uses a similar trademark that is likely to cause customer confusion as to the source of goods bearing the trademark. Likelihood of confusion is assessed using several factors including the strength of the original trademark, the similarity of the trademarks, Defendant's intent in selecting the trademark, and the similarity of goods bearing the trademark.

In this case, Skullcandy claims that Skelanimals' intent was to use Skullcandy's success to deceive customers into believing that Skelanimals' products originated from Skullcandy. Regarding similarity of the goods, Skullcandy and Skelanimals both purport to be "lifestyle brands." While Skullcandy primarily manufactures headphones and related accessories, Skelanimals makes music accessories and apparel. Skullcandy's initial market was the action sports industry, though they have since garnered a wider following.

Regarding the similarities of the trademarks,the Skelanimals logos at issue are transparent skeletal animal designs such as cartoon dogs, spiders, and birds. The designs are marketed to be applied to cellular phones, computers, handbags, and other items. Meanwhile the Skullcandy logo is a transparent black and white skull face surrounded by a black circle. The logo appears on the company's headphones and other products.

Skullcandy argues that its trademark is distinctive and that customers strongly associate the trademark with Skullcandy. Skullcandy claims that its logo is a registered trademark in the United States and abroad. Skullcandy will likely have to prove both that the trademarks are confusingly similar and that its logo is a valid U.S. trademark to prevail on the merits of the case.

Tootsie Roll Sues Footwear Company for Trademark Infringement

November 22, 2011,

shoe-high-heel.jpgCalifornia - Chicago-based candy manufacturer Tootsie Roll Industries is suing a small footwear company for trademark infringement over its use of its Footzyrolls shoe.

Tootsie Roll's lawsuit, filed this week in Illinois federal court, alleges that Rollashoe, a company that makes rollable ballet slippers called Footzyrolls, is infringing on the candy-maker's Tootsie Roll brand. The complaint went on to allege that the Footzyrolls shoe brand will confuse and "deceive" consumers into thinking that the shoes are associated with the candy company's line of products.

In its complaint, Tootsie Roll, which made $521 million in sales last year, claims that the $2 million Rollashoe's actions were "willful, malicious, and fraudulent." Launched in 1896, the manufacturer of the iconic chewy, chocolate candy, is also claiming that Footzyrolls, which launched in 2009, will dilute or tarnish the value of the Tootsie Roll brand. The candy maker further insists that the Footzyroll brand name constitutes "copying" and "counterfeiting" of the Tootsie Roll trademark.

In addition to asking that the Florida-based Rollashoe stop using the Footzyroll name for its shoes, Tootsie roll is also asking for undisclosed monetary damages from the startup company. Company officials at Tootsie Roll Industries were not immediately available for comment.

In response to Tootsie Roll's complaint, Rollashoe owners, sisters Sarah and Jenifer Caplan, fired back, "This lawsuit is completely frivolous and has no merit. This is just another example of Tootsie Roll trying to bully a minority-owned women's small business." The sisters continued that the idea for Rollashoe Footzyrolls was sparked by Sarah, who had a fondness for wearing high-heel shoes but didn't like the pain it caused her feet. "All through college I would carry a large bag with me with an extra pair of comfy shoes to change into when my feet started to burn at the end of each night," said Sarah. "My friends would make fun of me all the time."

Less than a year after its launch, Footzyrolls became a million-dollar brand featured in Oprah Winfrey's monthly magazine. The shoes can be found in Bloomingdales and Fred Segal. This appears to us to be a very close case as to whether consumer confusion is likely because we could imagine consumers believing that there was some sponsorship or affiliation between the brands.

Cadbury Registers British Trademark For Shade of Purple

November 22, 2011,

candy-easter-cadbury.jpgCalifornia - The British Intellectual Property Office (IPO) recently granted trademark registration to English chocolatier Cadbury for Cadbury's distinctive shade of purple used on chocolate packaging. Issuing the registration ended three years of litigation between Cadbury and Swiss competitor Nestle who opposed the trademark's registration.

Cadbury has apparently been using the shade of purple, Pantone 2865c, for over 100 years as the primary color on its chocolate bar wrappers. Cadbury began the process to register the purple shade as a trademark in 1995. Cadbury was eventually granted a registered trademark in 2008.

However, the registration was immediately challenged by the world's largest food company, Swiss based Nestle. Nestle claimed that the shade of purple alone was not sufficiently distinctive to qualify for trademark registration and should be available for use by others in the chocolate industry. Cadbury, on the other hand, argued that customers associated the purple shade with Cadbury products and that the color serves to distinguish Cadbury products from other chocolate bars for children too young to read.

After a three year battle with Nestle, the British IPO ruled that Cadbury's shade of purple, Pantone 2865c was sufficiently distinctive to qualify for trademark registration. Cadbury may use its distinctive shade of purple exclusively on chocolate bars, chocolate tablets, and eating and drinking chocolate. The trademark protection does not extend beyond chocolate to other products.

Cadbury is based in Northwest London, United Kingdom and markets a variety of premium chocolate products. Cadbury is now owned by American company Kraft Foods after a 2009 takeover. Nestle operates in 86 countries and manufactures a variety of food products including cereal, yogurt, coffee, bottled water, and candy. Chocolate products by Nestle include the Baby Ruth, Butterfinger, and Wonka candy brands.

Tourna Grip Trade Dress Ruled Not Infringed in Trademark Infringement Case

November 16, 2011,

tennis-ball.jpgCalifornia - Ferrari Importing Company doing business as Gamma Sports recently won a bench trial in a United States District Court in Georgia against Unique Sports Products. Unique Sports brought the action for trade dress infringement alleging that Gamma Sports infringed Unique's distinctive trade dress for the light blue tennis racket grip tape marketed as Tourna Grip.

Unique spends approximately $250,000 annually advertising the Tourna Grip product and counts Andre Agassi, Pete Sampras, Venus Williams, and Maria Sharpova as users. Tourna Grip is the most successful tennis grip tape occupying 50% of the market and experiencing sales of about $40 million. The federal judge ruled in the action that Unique's Tourna Grip trade dress had indeed achieved secondary meaning and was therefore valid. Unique argued that it features its light blue color in its advertising, utilizing ad slogans including "the blue Tourna Grip," "blue tape," and "the original light blue grip."

The court found in the bench trial that Unique's light blue trademark was valid but that Gamma Sports had not infringed the Unique's trademark. The court concluded that while the Tourna Grip comes only in light blue, the Gamma Sports gauze was sold in several shades of blue, the closest being a teal shade. In addition, the gauze functioned differently from the Tourna Grip. The Gamma Sports Gauze product is self-adhesive while the Tourna Grip requires a separate adhesive to attach to the handle of the racket. The products also differ in texture and appearance.

Due to the difference in color, function, and appearance, the court found that the Gamma Sports gauze is not confusingly similar to the Tourna Grip. The judge also noted that because of the two products' functional differences, tennis players typically prefer one product over the other and that allowing Gamma Sports to continue to market its gauze in shades of blue will not confuse customers or harm Unique's Tourna Grip trademark.

AMI Insurance Unable To Trademark "My Insurance" In New Zealand

November 16, 2011,

new_zealand_flag.jpgCalifornia - AMI Insurance recently lost its fight to maintain trademark protection for New Zealand trademarks such as "My Insurance" and 14 other insurance terms preceded by "My." Last year the trademarks were approved by the New Zealand Intellectual Property Office. However, the trademark approval was recently appealed by a united front of competing New Zealand insurance companies including AA Insurance, IAG New Zealand, Tower Insurance, and Vero Insurance.

As in the United States, trademarks in New Zealand must be distinctive and non-generic. In addition, trademarks must not create a likelihood of customer confusion.
In this case, AMI's competitors claimed in their joint appeal that the terms were too generic to the insurance industry to receive protection, as all 15 of the trademarks were common insurance terms with the word 'My' preceding them. Appellants also claimed that the terms were not distinctive and that commercial use of the trademarks could lead to customer confusion.

In its defense, AMI argued that the proposed trademarks were a clever way for customers and the insurance company to communicate about their insurance. AMI also argued that the way in which it used the trademarks would not interfere with other insurance companies' use of the terms.

The New Zealand High Court, ruling that the trademarks were not eligible for protection, noted that other trademark holders had successfully obtained trademark protection for similar "My" terms. For example, Bank of New Zealand successfully obtained protection for "My Money" and Sky Television registered "My Sky." However, the court explained that those terms were not simply generic product names such as the "My" marks AMI pursued. The court held that AMI's proposed trademarks such as "My Car," "My Insurance," and "My House Insurance"were too generic to be eligible for protection.

Ocean City Nightclub Wins Trademark Infringement Lawsuit Against Resort Chain

November 15, 2011,

beach-dune.jpgCalifornia - A Maryland jury recently returned a verdict finding that travel destination and resort company Coryn Corporation infringed a trademark owned by popular Ocean City nightclub O.C. Seacrets. O.C. Seacrets, a large nightclub and resort complex in the Maryland resort town of Ocean City, brought the action against Coryn Corporation alleging that Coryn's trademark "Secrets" for use with resort hotels infringes the "Seacrets" trademark owned by the nightclub.

O.C. Seacrets registered the trademark "Seacrets" with the USPTO in 1997 for restaurant and bar services. Since that time, O.C. Seacrets has expanded to include several bars, restaurants, a nightclub, as well as a hotel and condominium units. The complex takes up three blocks of Ocean City's bay front.

In 2000, Travel destination and resort operator Coryn Corporation filed an intent to use the trademark "Secrets" in conjunction with resort hotel services in the U.S. After the trademark was officially registered by the USPTO, O.C. Seacrets filed a petition to cancel the "Secrets" trademark, alleging that the trademark was in a similar class to its own "Seacrets" trademark and that use of the trademark would create a likelihood of consumer confusion. The Trademark Trial and Appeal Board granted O.C. Seacrets' petition to cancel in 2008 citing Seacret's priority over the trademark and the potential likelihood for confusion. Coryn appealed the decision and its continuing use of the trademark led O.C. Seacrets to file an action for trademark infringement in a Maryland federal district court.

Trademark infringement occurs when someone other than a trademark owner uses a trademark in commerce that is confusingly similar to another trademark. When a trademark holder registers a trademark, it must select the class of goods and services in which the trademark will be used. While using a confusingly similar trademark in the same class of goods may constitute trademark infringement, using a similar trademark on an entirely different class of product may not amount to trademark infringement.

In this case, O.C. Seacrets claimed that its services, restaurant and bar services which have expanded to include hotel and condominium services, were similar to the services claimed by Coryn Corporation for resort hotel destinations. After a weeklong trial, the jury deliberated for two hours before returning a verdict in favor of O.C. Seacrets. The jury awarded nominal damages of $1 and punitive damages of $200,000. However, Coryn Corporation will continue to operate "Secrets" resorts outside of the United States in Jamaica, Mexico, and the Dominican Republic.

X Factor's Simon Cowell Withdraws Application to Trademark Rhythmix

November 10, 2011,

concert.jpgCalifornia - The X Factor host Simon Cowell is abandoning his attempts to trademark the name Rhythmix, after receiving pushback from a United Kingdom-based children's charity organization with the same name. Cowell was seeking to trademark Rhythmix to protect the name of a girl pop group that performs on X Factor.

Rythmix is one of the UK's leading music charities, providing a large range of music-making opportunities for young people across the South East region. Since 1999, the well-established charity has worked with more than 40,000 youngsters.

On Wednesday, Cowell finally agreed to withdraw his trademark application after weeks of mounting pressure from the charity. X Factor executives had already changed the girl group name to Little Mix in October, when the dispute first erupted. Mark Davyd, the chief executive of the Rythmix charity, said he was pleased that Cowell would drop the trademark application and that it was an end to The X Factor's attempt to "bully the charity into submission."

A spokesperson for Cowell's entertainment company, Syco, which co-produces The X Factor, said, "Syco is happy to withdraw the application for the trademark, as initially offered at the time of the name change to Little Mix." The Syco spokesperson also stated that the X Factor trademark lawyer also sent a letter to the charity on October 26, offering to give it the trademark, which the charity refused.

Mark Davyd also told reporters Wednesday that Rythmix had turned down Syco's original offer because it "included strict conditions which meant that we could not talk about the conduct of The X Factor."

Davyd added that he still wants Cowell's company to pay the legal costs that the charity incurred, about £8,000, which he claims is the equivalent to 120 hours of music making for the children sponsored by the charity.