July 2013

July 19, 2013, by Mandour & Associates, APC

Los Angeles – Designer fashion label Michael Kors LLC filed a lawsuit against Costco Wholesale Corp. for false advertising after the wholesaler included pictures of Michael Kors handbags in advertisements emailed to customers in April.

Costco is not an authorized Michael Kors retailer, and upon investigation, Michael Kors representatives could not find any of its bags for sale at the 19 retail locations it visited.

In its complaint, the fashion label alleges that the Costco deliberately misled customers by including prominently featured photos of Michael Kors handbags in an online advertisement, despite having no intention to sell the luxury designer bags.  Michael Kors brought its lawsuit against Washington-based Costco in U.S. District Court in the Southern District of New York on July 9.

The Costco ad suggested that Michael Kors bags were available for sale for prices starting at $99, when bags sold at authorized retailers cost at least double that price.  Michael Kors purses sell for $198 at the lowest on its online store and can cost upwards of $1,395.

While the ad did not explicitly state that the purses in the photos were Michael Kors designs, the photos did feature multiple Michael Kors designs that would clearly identify the bags as products of the luxury designer.

Michael Kors is seeking a court order barring any future marketing of Michael Kors products as well as payment of monetary damages.

This is not the first time that Costco has been accused of such “bait and switch” tactics.  In February, Tiffany & Co. filed a complaint against Costco for sale of “Tiffany” brand diamond engagement rings.

Tiffany & Co. has manufactured and sold high-end jewelry for 175 years and alleges it has maintained a reputation for quality products.  The rings sold at Costco were not affiliated with the company, and use of the “Tiffany” trademark was not authorized.

Tiffany claims that Costco’s use of the “Tiffany” brand has tarnished its image and done irreparable harm to the brand.  Costco defends that the use of “Tiffany” is the generic name for a ring setting popularized by the store, but Tiffany & Co. disagrees.

The lawsuit against Costco by Tiffany & Co. was also brought in U.S. District Court in New York’s Southern District.

July 2, 2013, by Mandour & Associates, APC

Los Angeles – Superstar Washington Redskins quarterback Robert Lee Griffin III’s bid to trademark his nickname RG3 hit a roadblock when Research Group Three, Inc. filed an opposition to his trademark application, claiming it has been using the trademark RG3 since 1998.

Griffin formed Thr3escompany, LLC in 2012 to develop a label and start producing merchandise bearing his nickname RG3.  The Delaware-based company filed its trademark application for RG3 in January 2012 on an intent to use basis for use in relation to apparel.  Research Group Three filed its Opposition to this trademark on June 24, 2013, initiating proceedings in the Trademark Trial and Appeal Board.

Research Group Three, an Irvine-based corporation, primarily sells motorcycle suspension products but has also developed a line of apparel under the RG3 brand.  The company claims that it has been known by the acronym RG3 since its inception in 1998.  In its Notice of Opposition, the company argued that Griffin’s use of RG3 would confuse consumers into believing that his apparel was associated with the motorcycle company’s own gear.  It argued further that allowing Griffin’s trademark application for RG3 to register would significantly damage the reputation of Research Group Three.

Though the motorcycle products company claims that it has continuously used the mark RG3 on apparel since July 1999, it did not file a trademark application for use on apparel until January 2013.  As a result, that application has been stalled on the basis of Griffin’s previously filed RG3 application.  The examining attorney for the application wrote that Robert Griffin III and his nickname RG3 are so famous that a consumer would believe any use of RG3 is connected to the football star.

Research Group Three disagrees with this assessment, claiming it began using RG3 in 1999, well before Griffin began use of his nickname.  The company argues that it has prior use of RG3 and should therefore be granted the exclusive right to its use.

Thr3escompany has filed a number of other intent to use trademark applications in relation to its apparel brand, which are still pending.  These applications include GO CATCH YOUR DREAMS, WORK HARD STAY HUMBLE, and NO PRESSURE NO DIAMONDS.