March 2012

March 20, 2012, by Mandour & Associates, APC

Los Angeles – Butter IPH LLC filed a lawsuit on Friday against Jayson Sanchez in Las Vegas federal court for trademark infringement. Butter IPH claims that Mr. Sanchez is infringing on its multiple 1 OAK trademarks by using them to promote his Los Angeles based company “1oak Entertainment Group.” The lawsuit states that Mr. Sanchez’s company, a music entertainment promoting agency, is infringing on Butter IPH’s current pending Trademark Applications with the U.S. Patent & Trademark Office which include words only and design marks of “1 OAK One of a Kind.” The Applications were filed in international class 41 for night clubs and class 43 for bar services and cocktail lounge services.

In the lawsuit filed Friday, Butter IPH claims that its popular 1 OAK Nightclub in New York is “synonymous with glamour, luxurious excess, fame and fortune” and its latest 1 OAK club which opened in Las Vegas earlier this year at the Mirage Resort & Casino is “the hottest new nightclub in Las Vegas.”

On 1oak Entertainment Group’s website, 1oakmusic.com, it states that it is a “full service music management company based in Los Angeles, CA.” 1oak Entertainment Group works with nightclubs, bars, and restaurants to book music acts and entertainment.

With both companies in the entertainment industry it is no surprise that Butter IPH took such action. The lawsuit states “The defendants could have adopted a trademark that did not include ’1 OAK’ and/or ‘One of a Kind’, such as Entertainment Group or Sanchez Entertainment Group, or any of a host of other names that would not have infringed upon Butter’s rights,” and “Instead, by using Butter’s trademarks, the defendants are trading off of Butter’s goodwill and reputation.”

Jason Sanchez or a representative from 1oak Entertainment Group has yet to make a statement. Butter IPH LLC is requesting that the Las Vegas court grant its injunction to block Mr. Sanchez and 1aok Entertainment Group from using the name “1oak.”

March 12, 2012, by Mandour & Associates, APC

Los Angeles – Swiss orthopedics and fashion sports shoe maker Kuenzli SwissSchuh AG has lost an ongoing trademark infringement dispute against K-Swiss and will give up its iconic five stripes trademark.

In light of staggering legal costs, the Swiss company’s decision to drop the trademark came after it lost a trademark infringement case earlier this year to K-Swiss in a Duesseldorf superior court. Based on that court’s ruling, Kuenzli was not able to use the five stripes on its shoes sold in Germany because it had not registered the trademark. This decision came down despite the fact that Kuenzli, which helped found K-Swiss, has been using the five stripes trademark for over fifty years, long before the American company.

“The legal row has brought us close to ruin,” commented Kuenzli owner and Chief Executive Officer Barbara Artmann. “That’s why we decided to drop the five stripes and introduce a new trademark that uses five blocks. Since we are also a fashion sports shoe producer, the move may be beneficial as today many sports shoe makers use stripes,” she added.

Founded in 1966 by Swiss immigrant brothers Art and Ernie Brunner, the California-based K-Swiss first registered the five stripes trademark back in 1974 around the same time it launched its legendary white leather tennis shoe line. The Swiss brothers, who had become interested in tennis after immigrating to the United States, began importing Kuenzli tennis shoes. Much of K-Swiss’s success has been attributed to Kuenzli founder, Kurt Kuenzli, who’s name is the inspiration for the K in K-Swiss.

K-Swiss also reportedly used a near identical version of the Kuenzli tennis shoe as the inspiration of its famous line of tennis shoes.

Founded in 1927 in Switzerland, Kuenzli began using the five stripes logo in the 1950′s for its line of orthopedic boots that utilized a special lacing technology in which the five stripes offered a stabilizing function. The company patented the lacing technology, however on the advice of its lawyer at the time, did not register the stripes as a trademark.

A spokesperson for K-Swiss would not comment on the issue.

March 2, 2012, by Mandour & Associates, APC

Los Angeles – On February 17, 2012, Proview Electronics, a computer monitor company based in China and subsidiary of Proview Technology, Inc., filed a complaint with the Santa Clara County Superior Court against Apple. In the complaint, Proview claims that it owns the Chinese trademark rights for iPad and is suing Apple for its use of the trademark in China.

This lawsuit, which has also been filed in various Chinese jurisdictions, and now in the U.S., stems back to 2006 when a company named IP Application Development Limited offered to buy the iPad naming rights in China from Proview for approximately $55,000. Proview claims that Apple hired a law firm to form the company IP Application Development Limited and bid on the iPad Chinese trademark name on Apple’s behalf. Proview also alleges that there was no indication that IP Application Development Limited was linked to Apple. Proview states that it was assured by an employee of IP Application Development via email that the iPad trademark would be used to reference the company name as an acronym and that it would not be used to compete against financially distraught Proview. Also, Proview claims that the said email is fraudulent not only for hiding its relationship with Apple, but the author of the email used the false name of Jonathan Hargreaves to possibly disguise his connection to Apple.

On December 23, 2009, Proview sold the iPad trademark rights to IP Application Development Limited and on January 27, 2010, Apple revealed the iPad tablet computer, which sold about 15 million iPads worldwide last quarter. Proview alleges that in its 2009 contract with Apple, it sold the iPad naming rights but excluded China.

Proview has requested that its 2009 contract with Apple be declared void due to fraud. Also, Proview has requested that the courts grant its request of banning Apple from using the iPad trademark in China, as well as banning or suspending sales of the iPad in China. In multiple Chinese jurisdictions, some stores have removed iPads from shelves or have stopped selling iPads all together until the conclusion of this trademark infringement. Proview has threatened to sue Apple for $2 billion but has stated that it is open to settlement.