November 2012

November 30, 2012, by Mandour & Associates, APC

Los Angeles - A California Federal judge ordered a counterfeiter to stop selling toys that infringe on Rovio Entertainment Ltd.’s copyrights and trademarks related to its popular video game, “Angry Birds.”

Finland-based Rovio filed the complaint on October 29th against Royal Plush Toys Inc., a Livermore, California-based company, the company’s President, Jong K. Park, and two other companies affiliated with Park.

The complaint states that Royal Plush’s stuffed toys are “nearly identical with only minor variations that most consumers would not recognize,” to the plush toys made by Commonwealth Toy & Novelty Co. Inc., the toy company that produces “Angry Bird” plush toys under a licensing agreement with Rovio.

In addition to the infringement allegation, the complaint claimed that Park and his affiliated companies were engaging in unfair competition and were being unjustly enriched by using the “Angry Birds” brand which Rovio has devoted time and money into building.   According to Rovio, the “Angry Birds” game, which started out as an application for iPhones, is now available on a wide variety of platforms and devices.  It has been downloaded more than a billion times.

Rovio asked  ex parte early in the case for a temporary restraining order.  U.S. District Judge Saundra Brown Armstrong denied the motion, stating that Rovio had not presented substantial evidence to prove that Royal Plush would likely destroy evidence before the injunction hearing could take place.  Armstrong did, however, set an expedited schedule for the preliminary injunction and granted Rovio’s request for expedited discovery, giving Royal Plush only 14 days to produce certain records relating to its sales of the infringing goods.  Even though Rovio won based on Royal Plush’s failure to file an opposition, Armstrong stated that Rovio would have likely won the case either way based on the merits of their case.

“There are no substantial material differences between the overall design of [Rovio's] plush toys and [Royal Plush's] alleged knockoff plush toys,” Armstrong said. “Given the similarity in the products, the court finds that it is likely that consumers would find the works substantially similar.”

November 6, 2012, by Mandour & Associates, APC

Los Angeles – Reynolds Innovations Inc., a subsidiary of R.J. Reynolds Tobacco Co., is suing electronic cigarette maker SAS Technologies for trademark infringement.

The lawsuit, filed last week in United States District Court in North Carolina, alleges that SAS Technologies is infringing on Reynolds’ signature Camel and Winston trademarked brands.  The Alabama-based SAS Technologies markets its smoke-free electronic cigarettes under the brand name SaveASmoker.com and manufactures and sells flavored liquid nicotine products for use with the smokeless cigarettes.

In its lawsuit, Reynolds is claiming that the defendant is infringing its trademarks because it has been marketing its “E-Liquid” products under names such as “Camell Tobacco” and “Winston” in its array of nicotine products along with images that are similar to the actual Camel and Winston trademarks.  Reynolds’ claim alleges that SaveASmoker.com’s use of the similar names and images will create a likelihood of confusion or cause deception or mistake among consumers as to who the actual maker of the cigarettes really is.

As of November 5th, SAS Technologies had removed the specific products named in the lawsuit from SaveASmoker.com.

In addition to a permanent injunction banning the sales of infringing products, Reynolds is also seeking monetary damages caused by the unauthorized use of its trademarked names and images.  The company also seeks all profits that SAS Technologies generated from the sale of the infringing products.

Interestingly, Reynolds’ trademark infringement lawsuit comes when the company is entering the electronic cigarette market with its “Vuse Sole Disposable Electronic Cigarette.”  After its acquisition of BLU CIGS earlier this year, the company is in the test market phase of the disposable e-cig.  The company says does not require assembly or initial charging and is single use, unlike other brands currently on the market.

With pressure from health advocacy groups and competitors alike, Reynolds is hoping its “Vuse” brand will make up for lost profits from decreased tobacco sales and increased regulations.  However, this isn’t the first time that theWinston-Salem, North Carolina-based company has infused itself into the smokeless cigarette market.  Back in the late eighties, the tobacco giant created its first smokeless product called “Premier.”  Consumers weren’t impressed, complaining that the product tasted bad and that it was impossible to light.  Reynolds discontinued the e-cigs after only four months on the market.

Up to this point, R.J. Reynolds has been somewhat secretive about its new “Vuse” product but plans on unveiling more information about the brand next week over a webcast presentation on its Investor Day.