California Trademark Attorney® Blog

October 2012 Archives

LGBT Fraternity Sues Upstart Chapter For Trademark Infringement

October 26, 2012,

university_campus.jpgCalifornia - A collegiate fraternal organization dedicated to the interests of lesbian, gay, bisexual and transgender students filed a trademark infringement lawsuit on Wednesday against a new fraternity at the University of California at Santa Cruz that it says is using a confusingly similar name.

Delta Lambda Phi National Social Fraternity was founded in 1986, and has used the trademark for its name in commerce since at least as early as 1988 and the acronym DLP trademark since 2001, according to its complaint in Oregon federal court. The fraternity currently has thirty chapters located across the U.S. and Canada.

In 2005 a group of unaffiliated gay students at UC Santa Cruz attended a conference focusing on gay issues, where they were exposed to Delta Lambda Phi. The students then formed the defendant fraternity, Delta Lambda Psi at UC Santa Cruz that same year.

Shortly thereafter, Delta Lambda Psi began using its name and the acronym in the Santa Cruz area to promote and identify itself as a college social organization aimed at gay, bisexual, transgender, and progressive students. Although Delta Lambda Phi has chapters at several other California universities, it does not have a presence at UC Santa Cruz.

"Defendant's use of a name that differs by only a single letter from plaintiff's name has already caused many examples of actual confusion," the complaint says. "This confusion has been compounded by defendant's use of DLP to identify itself on Twitter, MySpace, and in its founding documents."

Delta Lambda Psi has also shown that it intends to expand its use of the infringing trademarks at other universities, by opening at least one new chapter at the University of Oregon in Eugene.

"This use and expansion has caused and will cause immediate and irreparable harm to plaintiff," the complaint says.

Delta Lambda Phi is seeking an injunction prohibiting Delta Lambda Psi from using the infringing trademarks or any others that are confusingly similar to the plaintiffs' trademarks in connection with its Greek social organization, as well as to indicate membership within its Greek social organization. It is also seeking damages, costs and attorneys' fees.

Tiffany Sues Texas Counterfeiter For Trademark Infringement

October 24, 2012,

diamond_ring.jpgCalifornia -- Tiffany LLC filed a complaint in Texas federal court on Monday against an online retailer it accuses of ripping off its trademarks in selling counterfeit bracelets, necklaces and other jewelry.

Olga Sanchez, who operates Bag Fashion Under God, Elegant Bags, and, is directly and personally engaging in the sale of counterfeit products, Tiffany says.

Tiffany is in the business of manufacturing and selling high-quality jewelry including bracelets, necklaces, earrings and other goods under its federally registered trademarks for the Tiffany name. The company spends millions of dollars annually in connection with its trademark enforcement efforts, including legal fees, investigative fees and support mechanisms for law enforcement, it says.

Sanchez is advertising, distributing and selling counterfeit products including the aforementioned pieces of jewelry bearing trademarks that are exact copies or colorable imitations of those belonging to Tiffany, according to the complaint.

Her products are far inferior to Tiffany's genuine goods, but she is actively selling substantial quantities of merchandise with the knowledge that they will be mistaken for the real deal, Tiffany says.

"In so advertising these products, defendants improperly and unlawfully use plaintiff's Tiffany marks, and they have correspondingly misappropriated plaintiff's advertising ideas and business styles used in connection with the advertisement and sale of plaintiff's genuine products," the complaint says.

Sanchez's infringement and disparagement of Tiffany's trademark rights does not merely amount to an incorrect description of the goods or a failure of the goods to conform to advertised quality or performance, Tiffany says.

"Instead, by engaging in their wrongful activities, defendants are, upon information and belief, actively defrauding both plaintiff and the consuming public for defendants' own benefit," the complaint says.

Sanchez is knowingly and intentionally infringing the trademarks, or at least acting with reckless disregard or willful blindness to Tiffany's rights, for the purpose of trading on Tiffany's established reputation and goodwill, the company says.

Tiffany is seeking damages of $2 million for each counterfeit Tiffany mark per type of good sold or distributed, as well as treble damages, interest, costs and attorneys' fees.

DC Deli Sues Rival Pizzeria For Trademark Infringement

October 19, 2012,

sandwich-footlong.jpg California - The owners of the venerable Washington, D.C. institution Wisemiller's Grocery and Deli, affectionately known as Wisey's to its customers, sued a neighboring pizza parlor last month for ripping off its trademark name, logo and menu design in what Wisey's called a futile effort to promote its markedly inferior food offerings.

The pizzeria's actions present an "exceptionally blatant" case of intentional trademark infringement and unfair competition, Wisey's #1 LLC said in its September complaint against Davar Ashgrizzadeh and his business Nimellis Pizzeria LLC.

The pizzeria, which the Wisey's complaint calls "markedly inferior" to its business, was formerly known as Cafe Romeo's and is currently doing business as Wise Eats Cafe or simply Wiseats as of earlier this year.

"Defendants did not open another location, expand or even alter Cafe Romeo's," the complaint says. "Defendants simply began marketing their inferior but competing products and services under the confusingly similar Wiseats mark -- using a menu that mimics Wisey's distinctive and well-known menu in a manner that borders on counterfeiting -- for the sole purpose of trafficking of of Wisey's goodwill and reputation, and the strength of the Wisey's mark and menu."

Wisey's is a popular DC restaurant well-known for its carryout and delivery services, which it has marketed extensively and continuously in the DC metropolitan area for many years under the federally registered Wisey's trademark and its accompanying distinctive menu.

Ashgrizzadeh and his pizzeria, meanwhile, did not even try to disguise their willful infringement, instead choosing to "broadcast their bad faith" by using a nearly identical logo design and graphic, with a slogan that erases any remaining doubts regarding their knowledge and malicious intent, according to Wisey's.

"The willful and malicious nature of the defendants' conduct is beyond question," the complaint says.

Whereas Wisey's operates under the slogan "Eat Right. Eat Wisey's," Wiseats is now using the slogan "Eat Wise. Eat Wiseats," the complaint says. The logos also both feature the similar names and slogans in a similar arrangement within a green oval.

"Defendants are intentionally defrauding DC-area consumers and maliciously profiting by, quite literally, brazenly stealing and injuring the reputation and goodwill that Wisey's has spent years building," Wisey's says. "Defendants are competing in the exact same product market from a location on the exact same street as Wisey's, selling a knockoff product and hoping that unsuspecting consumers will not notice until it is too late to cancel their order."

Groupon Trademark Judge Admonishes Groupion For Seeking Recusal

October 17, 2012,

groupon.jpg California - Groupion LLC was scolded Monday by a California federal judge for filing a motion to have the judge recused based on flimsy accusations of bias due to an adverse ruling against it in Groupon Inc.'s trademark infringement and cybersquatting lawsuit against the software company.

Groupion sought to disqualify Judge Jeffrey White on the grounds that he reviewed and considered documents that they contend are confidential settlement offers.

Judge White ruled that the motion to disqualify was untimely, coming as it did on the eve of trial, but even if it wasn't, it would have failed on the merits, he said.

"A motion for disqualification based entirely from the district court judge's adverse ruling is not an adequate basis for recusal," the judge said.

Groupion's motion was premised on the court's consideration of documents which were officially filed in the case and form the basis of Groupon's cybersquatting claim. The company has not demonstrated a bias or prejudice which stems from an extrajudicial source, and the federal rules of civil procedure do not bar consideration of those settlement offers, Judge White said.

Groupon's cybersquatting claim was not a part of the settlement negotiations because it was not yet in existence, he noted. The rule cited is also inapplicable to communications when they are admitted to prove a wrong that was committed in the course of settlement discussions, he said.

Judge White reserved judgment for the moment on Groupion's accompanying motion for a jury trial on Groupon's cancellation claim, and refused its motion to have Groupion's founder dismissed from the case for lack of jurisdiction.

"The court admonishes counter-defendants to not file any more motions without following the proper procedures and without supporting such motions with legal authority and evidence," he said.

Groupion originally sued Groupon for trademark infringement in February 2011. Groupon fired back with cybersquatting claims earlier this year over Groupion's purchase of European domain names infringing its trademarks.

Blue Cross Sues Universal Health Services For Logo Trademark Infringement

October 15, 2012,

medic_alert_bracelet.jpg California - Universal Health Services Inc. came under fire from the Blue Cross and Blue Shield Association in Illinois federal court on Thursday for misappropriating the association's trademark shades of blue for its own cross logo, in direct breach of a previous settlement barring the use.

UHS has long known about BCBSA's trademark rights to the Blue Cross logo, in part due to its involvement in a previous lawsuit over the trademark, but is now violating the settlement agreement that ended that lawsuit, according to BCBSA's complaint against UHS, UHS of Delaware Inc. and Wellington Regional Medical Center Inc.

BCBSA is a nonprofit association encompassing the oldest and largest family of health benefits companies in the U.S. The Blue Cross and Blue Shield brands are the most recognized brands in the nation's entire health insurance industry, the association claims.

The association owns design logo and service trademarks for its namesake images, as well as the word trademarks Blue Cross and Blue Shield, and licenses those trademarks to its member health plans for healthcare insurance, services, financing and related goods and services.

BCBSA has been using those trademarks since at least as early as 1934 for Blue Cross and 1939 for Blue Shield, and owns over 240 valid federal trademark registrations for their use, which have become incontestable, it says. It also owns similar trademark registrations in 170 countries worldwide under the "Blue family" of names and trademarks, according to the complaint.

UHS, meanwhile, is one of the nation's largest healthcare management companies and operates hospitals and health and surgery centers across the U.S. UHS of Delaware is the management arm of the system, which licenses its trademarks to all UHS subsidiaries.

From 2003 through 2009 BCBSA sent the healthcare provider a series of letters regarding UHS's trademarks consisting of a cross design and accompanying application for federal registration of those trademarks, advising UHS of the association's rights in the Blue Cross trademarks and asking whether UHS's cross design would be blue. UHS claimed it did not intend to use its cross design in any color or shade of blue, according to the association.

The association eventually sued UHS in the Northern District of Illinois in December 2009 for trademark infringement, false designation of origin and unfair competition. That lawsuit was settled in July 2011 with an agreement that provided UHS would stop using one of its particular cross designs in the color blue, and that the entire UHS system would refrain from using any blue-shaded cross.

UHS continued to use another cross design in blue, though, well after the settlement agreement was executed, BCBSA now says. The company is also trying to trademark a cross design that would encompass all colors, including blue, the association says.

Philly Deli Refuses To Give Up Fight For Cheesesteak Trademark, Sues PTO

October 9, 2012,

cheesesteak.jpgCalifornia - A Philadelphia deli sued U.S. Patent and Trademark Office Director David Kappos on Thursday after failing to convince the PTO or the office's Trademark Trial and Appeal Board to let it trademark the phrase "Philadelphia's Cheesesteak."

The deli is seeking a court declaration that the trademark is valid and fully enforceable and an accompanying order requiring Kappos to issue a registration for it on the Principal Register, according to TTABlog, which reported the lawsuit on Monday.
Campo's Deli at Market Inc. is a local Philadelphia mom and pop cheesesteak and hoagie shop run by Mike and Denise Campo and their family, with satellite locations at the Phillies stadium and the Flyers and Sixers arena.

Campo's originally filed its application with the PTO for registration of the trademark "Philadelphia's Cheesesteak" in June 2009. The PTO examining attorney ultimately refused registration, and Campo's appealed to the TTAB in November 2010.
In August the TTAB affirmed the PTO's justifications for refusing the trademark on the grounds of likelihood of confusion with previous marks as well as geographic refusal.
Campo's says it has been using the trademark since at least January 2009, strictly in association with its sale of cheesesteaks in a retail environment for direct and immediate consumption by the purchasing public.

The trademark describes "a sandwich so superlative, it could only be called 'Philadelphia's Cheesesteak,'" according to the complaint. The deli is not trying to improperly control the phrase "Philadelphia Cheesesteak," which is simply a generic term to describe a type of sandwich, it says.

"The difference in the two phrases, of course, is an ('s) which demarcates a particular kind of gloriously gluttonous sandwich provided only by the plaintiff -- not just a Philadelphia Cheesesteak, but 'Philadelphia's Cheesesteak,'" the complaint says.
The trademark is "descriptive of the unique and tremendously delicious goods [Campo's] offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration," it says.

The deli needs to register the trademark in order to pursue its franchising aspirations, so that the purchasing public knows that it provides a particular kind of Philadelphia Cheesesteak "of such a tremendous quality, such a gustatory delight and such a propensity for myocardial infarction that it could only be called 'Philadelphia's Cheesesteak' -- the very best example of what is otherwise a very common sandwich," the complaint says.

Campo's could use the trademark at any store in any future location in the country, since it has nothing to do with the sandwich's geographic origin, the deli says.
"No customer at any such prospective location would be under the misconception that the sandwich purchased by the beach from a Campo's store is literally prepared in Philadelphia when, instead, it is prepared on location, at each satellite location, over a steaming hot griddle directly in front of the consumer," the complaint says.

In the TTAB's ruling, the board agreed with the PTO that the trademark is confusingly similar to three registered trademarks including "Philadelphia Cheesesteak Co.," and that the trademark is primarily descriptive.

But the existing trademarks concern the identification of a particular company specializing in prepared foods, namely meat, the complaint says. There is no likelihood of confusion between the requested trademark for a type of sandwich and the three trademarks for a company which produces wholesale sliced meat, it says.

Although the PTO has also refused to register the trademark on the grounds that the use of "Philadelphia's" is too geographically descriptive, the office has previously approved registrations for trademarks including "Philadelphia's Soft Rock Station," "Philadelphia's Big League Sandwich" and "Philadelphia's Home Town Builder," according to Campo's.

Cointreau Gets Rival Orange Liqueur Banned In Trademark Fight

October 3, 2012,

whiskey-in-glasses.jpgCalifornia - A Texas federal judge handed down a preliminary injunction on Tuesday barring two liquor companies from importing and selling an orange liqueur that dilutes Cointreau Corp.'s trademark for its own brand.

Cointreau has shown a substantial likelihood that it will prevail on the merits of its trademark dilution claim, Judge David C. Godbey ruled in granting Cointreau's motion for the injunction.

Pura Vida Tequila Co. LLC and La Madrileña SA de CV respectively import and make Controy orange liqueur, while Cointreau owns and enforces the Cointreau trademarks for the same in the U.S. It was first granted a trademark for the Cointreau name in the U.S. in 1935.

Edouard Cointreau first distilled his eponymous orange liqueur in 1875, and the Cointreau distillery has been selling it ever since, bringing it to the U.S. in 1885.
La Madrileña, meanwhile, has sold Controy in Mexico since the 1930s and dominates the Mexican orange liqueur market with a greater than 60 percent market share. The company only recently arranged to export Controy to the U.S. through Pura Vida.
Controy's name, bottle shape and bottle label infringe on the Cointreau trademark, Cointreau alleges. The company is seeking damages and a permanent injunction against La Madrileña and Pura Vida's sale of Controy.

The Cointreau trademark has become famous and distinctive in the U.S., and the brand is the second most popular orange liqueur by sales volume in the nation, Judge Godbey said.

"The names of the products are alike both visually and aurally," he said. "The fact that many consumers may pronounce the first syllables of the words differently does not undermine the names' similarity, particularly as there is no correct pronunciation of a trademark."

The similarity of the names' sounds when spoken is particularly important, according to the judge.

"A consumer who orders Cointreau by name only in a bar or restaurant may not have the opportunity to scrutinize the bottle and label of the liqueur he is ultimately served," he said. "A bartender or waiter may thus serve Controy in error when a customer orders Cointreau."

The preliminary injunction only covers sales in the U.S. La Madrileña may still make and sell Controy in Mexico, the judge said. He also ordered Cointreau to post a $1 million bond upon the issuance of the injunction.

Brando Estate Sued Over Likeness Rights For Madonna Tour

October 1, 2012,

concert.jpgCalifornia - Celebrity licensing company CMG Worldwide Inc. hit the estate of actor Marlon Brando and a rival licensing agency with a lawsuit seeking to enforce its rights to use Brando's likeness as stage dressing for the concerts on Madonna's 2012 world tour.
In its complaint, originally filed in Indiana state court in August and removed to federal court last week, CMG is seeking a declaration that a valid, enforceable contract between the parties exists. It also wants an order enforcing that contract by enjoining the estate and Brand Sense Partners LLC from bringing any lawsuits against CMG or Madonna in connection with the use of Brando's likeness under the contract.

CMG acts as agent and representative for internationally recognized celebrities as diverse as James Dean, Pamela Anderson and Jackie Robinson. In addition to its celebrity and brand licensing agency activities, CMG sometimes also acts as a clearance agent to help obtain permission to use trademarks, likenesses, rights of publicity and endorsements from heirs and estates of deceased celebrities not represented by CMG, it says.

In February CMG and the estate entered into a license agreement allowing Madonna to use Brando's likeness during the Superbowl halftime show that month for a fee of $3,750.

In May Madonna's tour company Bhakti Touring Inc. contacted CMG seeking assistance in clearing the Brando rights along with 10 other deceased celebrities, including James Dean, Jean Harlow, Ginger Rogers, Bette Davis, Lana Turner, Greta Garbo, Marlene Dietrich, Gene Kelly, Grace Kelly and Joe DiMaggio, all of whom are featured in Madonna's 1990 song "Vogue."

For another payment of $3,750, the estate was supposed to grant the touring company the right to use Brando's image as set dressing during the live performances of "Vogue" on tour. Later in May, the estate increased the fee to $5,000.

By the end of the month, though, BSP and the estate began demanding $20,000 for the use of Brando's rights of publicity, in direct contravention to the terms of the agreement made earlier in May, CMG says.

"BSP and Brando's attempted repudiation of the permission agreement for the use of Brando [rights of publicity] by Madonna on her worldwide tour is detrimental to CMG," the complaint says.

"Absent a declaration that there is a valid and enforceable contract between Bhakti by its agent CMG and Brando by its authorized agent BSP and in light of the most favored nations status of the use of the rights of publicity of the other 10 deceased personalities, CMG will be materially and irreparably harmed," it says.