April 2013

April 20, 2013, by Mandour & Associates, APC

Los Angeles – Tory Burch LLC, fashionable and popular maker of sportswear, shoes, handbags and small accessories, won a default judgment in an Illinois federal court case against several unknown persons who were selling bogus Tory Burch merchandise over the Internet.  The complaint, filed in February of this year, was directed to  “DOES 1 through 100” claiming the entities had infringed on Tory Burch’s trademarks by offering fake goods using the Tory Burch famous name and trademarked logo on several of its websites.

On April 8, U.S. District Judge Rebecca Pallmeyer ruled in favor of plaintiff Tory Burch, requiring the unnamed defendants to pay 20 million dollars in damages for the unauthorized use of trademarks and trying to pass the phony Tory Burch merchandise as authentic. The Judge also granted a permanent injunction against the infringers after they failed to acknowledge the allegations in the complaint.  The infringers were held liable for “trademark infringement, counterfeiting, false designation of origin, cyber piracy and breaking the Illinois Uniform Deceptive Trade Practices Act,” which is directed to those who try to benefit by advertising or selling goods or services using misleading tactics or false representations.

Numerous consumers have already been deceived into believing that the fake goods were real by the infringer’s use of the “Tory Burch” name in the body of hundreds of different URLs, and by using the logo on mock websites.  Tory Burch, started in 2003 and based in New York City, feels its reputation has been tainted due to the vast purchases of knockoffs already sold, although the domain names have since been transferred to Tory Burch.  Additionally, any money held in accounts by defendants was frozen and PayPal funds due to the infringers were also ordered for transfer within 10 days to Tory Burch, as payment toward the judgment.

It is believed the imitation items were manufactured in China as well as several other foreign countries.  However, the culprits went to great lengths to conceal their actual identities and the full extent of the entire operation.  So effective was the scheme, that the true identities may not ever be known.

Tony Burch had previously won in a similar lawsuit last year and was awarded $2 million against online retailers who also did not respond to the complaint.  Similarly, it was awarded $164 million in a 2011 ruling against other trademark infringers selling bogus goods on the Internet.

April 5, 2013, by Mandour & Associates, APC

Los Angeles – Late last year Apple, Inc. filed a trademark application for IPAD MINI for the new smaller and sleeker version of its famous iPad.  Apple has already owned a registered trademark for IPAD since 2010.

On January 24, 2013, the United States Patent & Trademark Office issued a first Office Action rejecting the IPAD MINI Application, claiming that the trademark was merely descriptive.  The Examining Attorney found the word “mini” descriptive as “something that is distinctively smaller than other members of its type or class.”  The Examiner also rejected the IPAD portion of the trademark as descriptive, stating “…‘IPAD’ is descriptive when applied to applicant’s goods because the prefix ‘I’ denotes ‘internet, and the term “PAD” is descriptive of the goods because it “refers to a ‘pad computer’ or ‘internet pad device’”.

The refusal was somewhat surprising in that the U.S. Patent and Trademark Office previously allowed registration of the IPAD trademark.  Beyond the descriptiveness refusal, the specimen of use submitted with the application, a web page from Applicant’s catalog, was also rejected.  The Examining Attorney stated that the specimen “fails to include a picture or a sufficient textual description of the goods in sufficiently close proximity to the necessary ordering information, a web link for ordering the goods, and thus, appears to be mere advertising material.”

However, in a near complete reversal, on April 3, 2013, the Examining Attorney “superseded” the original Office Action and issued a Supplemental Office Action.  In the new Office Action, the Examiner withdraws both the descriptiveness refusal and the refusal of the specimen of use.  Now, with her apologies, she only requires a disclaimer of the term MINI apart from the trademark as shown.

It is unknown whether the Examiner made a second review of her first Office Action, if a supervisor reviewed the Office Action she initially sent to Apple, or if Apple’s counsel spoke to the Examiner requesting clarification of the Office Action.  Regardless, Apple will undoubtedly agree to disclaim the word MINI.

Apart from the descriptiveness and specimen refusals, eight different prior pending applications were cited against the IPAD MINI application on the basis of a likelihood of confusion.  So, unfortunately for Apple, it does not appear that IPAD MINI will be registering any time soon.