September 2011

September 30, 2011, by Mandour & Associates, APC

Los Angeles – Lady Gaga has filed a trademark infringement lawsuit against a Chicago-based marketing company for launching a product line called ‘Lady Gaga by Design.’

The five-time Grammy award-winning singer of hits such as “Poker Face” and “Edge of Glory” is demanding that Excite Worldwide abandon a pair of trademark applications with the United States Trademark and Patent Office. Excite Worldwide filed trademark applications for ‘Lady Gaga LG’ and ‘Lady Gaga’ in the classes for cosmetics and jewelry in May 2010, which are still pending with the USPTO.

The lawsuit, filed in Manhattan Supreme Court, alleges that Excite Worldwide is trying to “squat” on Lady Gaga’s intellectual property rights “by filing frivolous applications” that are thwarting the eccentric singer/songwriter’s own efforts to market her brand. Gaga, whose real name is Stefani Germanotta, owns a company called Ate My Heart, Inc., which has several pending trademark applications for the famous moniker that cover everything from candles, key chains, bags, towels, lanyards, tattoos, wigs, and ornaments.

Fans are likely to be confused by Excite Worldwide’s unauthorized use of the star’s name “when no such affiliation exists,” the lawsuit states. The complaint also went on to say, “Defendants are aware that their applications will never be granted in the absence of plaintiff’s consent, which defendants have been told never will be given.”

It’s fair to say that the New York-born megastar, whose eccentricity and over-the-top costumes have garnered her a reputation for being unique. Understandably, she does not want to be associated with a company’s products that will genericize her name, especially when she is not tied with them in any way.

A representative who answered the phone at Excite Worldwide declined to comment on the lawsuit, however it appears that its website has been removed. Although the USPTO has yet to deny trademark registration to Excite, the fact that its website is unavailable is a good sign for Lady Gaga.

Lady Gaga’s camp did not offer any comment on the matter.

September 29, 2011, by Mandour & Associates, APC

Los Angeles – A lengthy legal battle between the companies of two rival heirs of legendary rock guitarist Jimi Hendrix finally came to a close recently with a ruling that while Hendrix’s brother’s company, Rockin Artwork, had damaged the reputation and goodwill of Hendrix’s adopted sister Janie’s trademark rights, the jury verdict of $1.4 million was excessive.

Widely considered the greatest guitar player of all time, Jimi Hendrix died at age 27 in 1970, leaving his entire estate to his father Al Hendrix. Upon Al’s death, he granted his entire estate to his adopted daughter Janie Hendrix. With that inheritance came rights to the majority of Jimi’s music and various other licensing rights. Leon Hendrix was denied any inheritance by his father.

Since then, both Leon Hendrix and Hendrix licensing companies controlled by Janie Hendrix have marketed and sold a wide variety of Hendrix merchandise. Leon Hendrix has marketed artwork, T-shirts, and even a brand of vodka called “Hendrix Electric Vodka.” Leon recently teamed up with Andrew Pitsicalis, becoming a co-owner of the Las Vegas based company Rockin Artwork. Rockin Artwork has continued to sell merchandise bearing the Hendrix name and likeness.

Hendrix’s adopted sister Janie Hendrix originally brought the action in 2009 against her brother’s company, Rockin Artwork, for trademark infringement and other claims arising out of Rockin Artwork’s registration of domain names such as HendrixLicensing.com and HendrixArtwork.com and the sale of various Hendrix merchandise. Janie Hendrix sought damages for harm to the reputation and goodwill of her trademarks and attorney’s fees totaling $500,000.

A domain name may be used as a trademark if it identifies the source of goods or services. Registration and use of a domain name may constitute trademark infringement if such registration and use is likely to lead to customer confusion. In this case, Janie Hendrix, the rightful owner of Hendrix licensing, alleged that the registration of various domain names including HendrixLicensing.com amounted to trademark infringement.
In February of 2011, District Court Judge Thomas Zilly held that controlling legislation, the Washington State Publicity Rights Act, was unconstitutional, allowing Rockin Artwork to continue to market the Hendrix merchandise. After a separate jury trial to assess damages decided in May of 2011, the Jury issued a verdict mandating that Rockin Artwork and Co-owner Andrew Pitsicalis pay $1.4 million in damages to companies controlled by Janie Hendrix.

Recently, Judge Zilly reduced the jury verdict by more than 90%. Reasoning that the initial verdict was too speculative and unreasonable, Judge Zilly determined that a sum of $110,000 was appropriate. The new verdict provided for $60,000 for lost profits and an additional $50,000 in attorney’s fees. Judge Zilly also issued a permanent injunction allowing Rockin Artwork to continue to sell merchandise but preventing them from owning the domain names to HendrixLicensing.com and HendrixArtwork.com.
Janie Hendrix plans to appeal Judge Zilly’s decision to set aside the initial verdict.

September 28, 2011, by Mandour & Associates, APC

Los Angeles – The Trademark Trial and Appeal Board recently upheld the decision to deny trademark protection to Apple for the term “Multi-Touch.” Apple has used the term to refer to a variety of functions that can be performed using the iPhone or the track pad of MacBooks including, tapping, scrolling, pinching, and swiping. While Apple has had success marketing this feature, the TTAB concluded that the term had not acquired sufficient distinctiveness to receive trademark protection.

A trademark may be either inherently distinctive or may acquire distinctiveness through use in commerce. Arbitrary or fanciful trademarks, such as Google, and suggestive trademarks, such as Coppertone, do not need to acquire secondary meaning for protection. Generic words (soap, refrigerator) are not eligible for trademark protection. Descriptive trademarks may be eligible for trademark registration if they have acquired secondary meaning through use in commerce. In other words, a descriptive trademark must do more than describe the product. To be eligible for registration, a descriptive trademark must create an association in the minds of consumers between the trademark and the source of the product or service.

In this case, the TTAB noted that the term “Multi-Touch” was largely descriptive. The reviewing attorney noted that the term “Multi-Touch” had been referenced in a number of scientific publications and even the New York Times to describe certain functions. The TTAB found that the term “Multi-Touch” served to identify a type of technology rather than Apple Computers, Inc. In addition, the features that the term describes are found on several products not manufactured by Apple, evidencing the term’s descriptive nature.

Despite the success of Apple products featuring Multi-Touch technology, the TTAB denied the appeal as Apple could not demonstrate that the trademark had acquired distinctiveness. The TTAB noted that the more descriptive a term, the more difficult it is to acquire distinctiveness. Finally, the TTAB reiterated that success of products bearing the trademark is not sufficient evidence of acquired distinctiveness for trademark registration. Though the iPhone is widely successful, the term “Multi-Touch” had not acquired sufficient secondary meaning for trademark registration considering its descriptive qualities.

September 26, 2011, by Mandour & Associates, APC

Los Angeles – International fashion house Chanel Inc. has filed a large-scale cyber piracy and trademark infringement lawsuit in Nevada against 399 websites for allegedly selling counterfeit items bearing Chanel’s name and logo.

The complaint, which was filed Tuesday in a U.S. District Court in Las Vegas, is asking for unspecified damages from the owners of the infringing websites that reportedly operate out of China, the Bahamas, and other countries where the enforcement of intellectual property is lax.

Besides seeking damages, Chanel’s lawsuit aims to permanently seize or disable website domain names and an injunction barring the defendants from selling any counterfeit products including handbags, wallets, shoes, boots, scarves, sunglasses, apparel, watches, and jewelry that bears the Chanel name. The lawsuit accuses the operators of domain names such as ChanelOnline.com, replica-coco-lv.com, Chanel handbags-outlet.net, and hundreds of others of being “identical or confusingly similar to” actual Chanel and Tiffany names.

The lawsuit follows a federal judge’s order in August 2010 permitting the defendants in a federal trademark infringement and counterfeiting lawsuit to be served legal notice via email. That ruling by U.S. District Judge Kent Dawson in Las Vegas came in response to claims from an attorney representing Chanel that some of the defendants were purposely falsifying their physical addresses to avoid being served.

The attorney handling the Chanel case is also the lead lawyer in a Las Vegas federal court involving fashion retailers Tiffany LLC and Louis Vuitton Malletier, S.A. The April 2011 Tiffany lawsuit is targeting over 200 unnamed website operators, including some that are also named in the Chanel case. In the Louis Vuitton case, also filed earlier this year, the plaintiff is accusing 182 website operators of online counterfeiting and trademark infringement.