January 2012

January 24, 2012, by Mandour & Associates, APC

Los Angeles – In a long-running trademark infringement battle over the rights to the shape of interlocking bricks in toy construction sets, Mega Brands Inc. of Canada has filed yet another action against the Lego Group.

According to the action, filed in U.S. District Court in Los Angeles, the Montreal-based Mega Brands is seeking to invalidate Lego’s trademark rights to the designs. In a recent news release, the Canadian toymaker said it is also seeking unspecified “other remedies.”

The recent court action was apparently prompted when the United States Customs and Border Protection agency advised Mega Brands that it “intends to restrict the importation of certain of its products which have been sold in the U.S. for over twenty years,” a spokesperson for the company said in a statement. When asked about the ongoing trademark dispute, Mega Brands stated that it is simply challenging Lego’s attempts to use United States trademark laws to protect its well-known plastic mini-bricks used by children to construct mechanical models.

According to Mega Brand’s complaint, Lego’s interlocking block patents expired more than twenty years ago, prompting courts in several other countries to rule against its claims that its famous toy bricks are unique and protected and that no other company can make toy blocks using the same eight-knob pattern.

“Courts around the world, including the United States, have ruled against its attempts to use trademark law for functional elements,” a spokesperson for Mega Brands said.

The Canadian company, which manufacturers and markets its own brand of interlocking bricks called Mega Bloks, says that it will seek a temporary restraining order and a preliminary injunction from the court to ensure that its Mega Bloks sold in the United States are not affected by Lego’s trademark.

The Denmark-based Lego Group has been fighting off competition to manufacture and sell the plastic bricks from Mega Brands for years. Initially designed by Danish carpenter Ole Kirk Christiansen, the plastic building blocks went on to become the company’s flagship product and are still enjoyed by children around the world. The company’s legal troubles began in 1978, when it lost patent protection on the toy bricks, however it has continued to assert its legal rights using trademark laws.

Lego’s claim that its has exclusive rights to the interlocking toy brick technology has been routinely dismissed by courts in Canada, France, Germany, Italy, the Netherlands, and Spain. Furthermore, in September 2010, the European Court of Justice denied Lego’s attempts to use trademark laws to protect the shape of its multi-colored building blocks.

January 16, 2012, by Mandour & Associates, APC

Los Angeles – Two Indiana-based property rental companies are being sued by Penn State University for alleged trademark infringement over the way they advertise properties to be rented for Penn State football weekends.

The trademark infringement lawsuit, filed Tuesday in United States Middle District Court of Pennsylvania, makes the accusations against Double Domer Properties and Rent Like a Champion, both of South Bend, Indiana. According to the complaint, the use of Penn State University house rentals causes confusion in the public and the implied association that the university is involved with the rentals. Specifically, the lawsuit contends that the two rental companies use the Internet, including the website of the New York City chapter of the Penn State Alumni Association, to advertise properties for rent in the State College, Pennsylvania area during football season. One alleged infringing website named in the lawsuit is PSUFootballHouseRentals.com.

Potential tenants can view the properties on the websites at no charge with the two companies taking a small percentage of revenue when a listed home is rented for a football weekend. Statements from the lawsuit add that the infringing website includes an image of a paw print, which represents the Nittany Lion mascot of Penn State. The website also mentions that it is a proud partner of the Lot 13 blog, which offers visitors tips on local bars close to the university as well as barbeque and cocktail recipes.

Penn State maintains that the companies have rented more than seven hundred properties for the football weekends and estimates that they have generated more than $1.1 million in revenue.

In July, the Collegiate Licensing Co., acting on the behalf of Penn State, sent a cease and desist letter to the defendants asking them to stop infringing its trademarks. Reportedly, an attorney representing Double Domer and Rent Like a Champion agreed to advise the defendants to make changes to their websites so as not to cause confusion or the possibility of association between them and the university. Furthermore, upon agreeing to advise his clients, the attorney however did state in his response letter that PSUFootballHouseRentals.com does not infringe on university trademarks since it is descriptive of a rental service provided and no merchandise is actually sold.

“Because this use in no way competes with the uses of the university, there is little likelihood of confusion possible,” the attorney said in his response to the Penn State cease and desist letter.

In addition to asking for a permanent injunction banning any further infringement, Penn State is also seeking unspecified damages as well as the destruction of any materials infringing its trademarks.

January 9, 2012, by Mandour & Associates, APC

Los Angeles – Later this month, the United States Court of Appeals for the 2nd Circuit will hear arguments from both sides on high-fashion shoe designer Christian Louboutin’s appeal to retain the trademark for red lacquered shoe soles. This stems from a trademark infringement lawsuit Louboutin filed last year against competitor Yves Saint Laurent (YSL).

Louboutin’s posh heels, worn by trendy celebrities and businesswomen alike, are known exclusively for the red colored bottom of the shoe. In court, the designer will argue that the red-colored soles serve only to identify the Louboutin brand, much like Tiffany’s robin’s-egg blue packaging for its pricey jewelry. Consequently, Tiffany’s filed an amicus brief on behalf of Louboutin’s interpretation of color and trademarks.

When the case was initially presented to a judge, defendant YSL countered that Louboutin admittedly had aesthetic reasons for lacquering the soles of his shoes red. YSL’s attorneys therefore maintained that Louboutin is not entitled to a trademark for the red soles, citing the United States Supreme Court’s 1995 decision in Qualitex v. Jacobson Products. In that particular case, the court ruled that a color can only be trademarked if it “can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Furthermore, according to YSL’s defense, since the red color serves only as an aesthetic function as in Louboutin’s shoes, it cannot be trademarked.

In court last week, YSL’s interpretation of trademark law got endorsements from eleven law school professors, who filed an amicus brief in support. A statement from the professors’ brief read: “This court should recognize that the shadow cast by a trademark in a single color on a fashion item creates enormous uncertainty for other designers and should regard claims of single-color trademarks in fashion with considerable skepticism.” This opinion was also shared by Manhattan federal court Judge Victor Marrero, who in August denied Louboutin’s request for an injunction to bar all of YSL’s red-sole shoes.

This is definitely not a slam-dunk case. However, fashionistas around the world would probably agree that Louboutin’s red soles distinguishes the shoes as high-fashion, high-priced luxury items that few can afford. In Louboutin’s defense, many women would contend that if someone sees the red soles on your heels, they will know who you’re wearing.

Oral arguments for the case will be presented at 2:00 on January 24.

January 5, 2012, by Mandour & Associates, APC

Los Angeles – Bakers Footwear Group, Inc. announced today that it has entered into a Trademark Sale and License Agreement with Steve Madden, Ltd. for its Wild Pair trademark and related trademarks.

The deal requires Steve Madden to purchase the Wild Pair trademark for up to $4 million and enter into a non-exclusive, non-transferable, royalty-free perpetual license for the trademarks with Bakers Footwear. The agreement also gives Bakers the right to continue selling Wild Pair footwear in its stores, online, and in Wild Pair retail shops. Bakers’ profits are estimated to be around $3.6 million.

“We are pleased to continue the growth of the Wild Pair brand with this transaction,” stated Bakers’ Chairman and Chief Executive Officer, Peter Edison. “Wild Pair, an iconic label known for its sexy, fashion footwear with a 39-year heritage and a highly-loyal following has tremendous potential and we believe Steve Madden is the best possible company to take advantage of the significant opportunity that exists to broaden the appeal and reach of the Wild Pair label,” Edison went on to say.

Edison also stated that Bakers is pleased with the structure of the transaction because it will give the company the freedom to expand on the Wild Pair brand. He elaborated by saying that with a great wholesaling partner like Steve Madden, Bakers will be able to capitalize on increased market share from current Wild Pair growth in its stores and website. The Wild Pair brand consists of brightly-colored stiletto and wedge-style high-heeled shoes, including many with animal prints and studs. The women’s shoes retail from $49.00-$139.00 per pair.

Edward Rosenfeld, Chairman and Chief Executive Officer for Steve Madden, said, “We are pleased to once again expand our diversified portfolio of brands with the addition of Wild Pair. We look forward to broadening the distribution and reach of the brand while maintaining the brand DNA that has made Wild Pair successful for almost 40 years.”

Steve Madden was named “Company of the Year” for 2006 at the Footwear News Achievement Awards in New York City.

Bakers Footwear Group, a St. Louis-based company, is a leading specialty retailer of fashion-forward footwear and accessories for style-driven women. The company’s footwear portfolio includes private label and national brand dress, sport, and casual shoes, boots and sandals. Bakers’ trendy merchandise is mainly marketed to women between the ages of 16 and 35.