October 24, 2012, by Mandour & Associates, APC

Los Angeles – The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board recently shut the door on an attempt to cancel the federal registration for the trademark Grupo Pegasso, the name of a defunct Mexican band, rejecting the petitioner music company’s claims of fraud on the PTO.

OTH Enterprises Inc., which does business as Frontera Music, filed a petition to cancel Federico Estevan Vasquez’s federal registration for the trademark Grupo Pegasso and a related logo design. The Grupo Pegasso registration encompasses musical sound recordings and entertainment services, specifically live performances by a musical group.

Frontera Music alleged that it has priority of use for the trademark, as well as claims of likelihood of confusion, abandonment of the registered trademark, non-use and fraud in the procurement of the registration.

Vasquez, a member of the Grupo Pegasso band, left the group in 1985 and started a different band under the name Pegasso del Pollo Estevan, to make records sold only in Mexico.

According to Frontera, Vasquez’s alleged fraudulent conduct includes asserting that the registered trademark was in use in the U.S., and his submission of proof of his use of the trademark in commerce containing images of albums that were digitally altered.

Vasquez denied Frontera’s allegations, and said he has continuously used the trademark in interstate commerce in the U.S. He never granted permission to Frontera to use the trademark, and Frontera’s assignor is a former employee of Vasquez who is barred from using the trademark in Mexico, he said.

In view of the fact that Frontera’s predecessors in interest did not own any rights in the Grupo Pegasso trademark, Frontera could not acquire rights from any such predecessors prior to Vasquez’s first use, so Frontera’s priority and likelihood of confusion claims fail, the TTAB said.

Because Vasquez has continuously used the registered trademark in commerce since as least as early as the filing date of the application for registration, Frontera has not met its burden of proving prior use of the Grupo Pegasso trademark or abandonment of the mark, according to the board.

Frontera also failed to prove its allegations of fraud, since it did not provide conclusive evidence that Vasquez made false statements or submitted false specimens of evidence in support of its application, the board ruled. Even assuming that Vasquez’s statements were false, Frontera has not established that registrant submitted material statements with intent to defraud the PTO, it said.

October 19, 2012, by Mandour & Associates, APC

Los Angeles – The inspirational book publisher Chicken Soup for the Soul Publishing LLC’s planned new line of actual soup products will violate Campbell Soup Co.’s longstanding trademark and trade dress for its iconic soup can design, Campbell said in a new action filed in New Jersey federal court on Wednesday.

The lawsuit is based on Chicken Soup for the Soul’s stated intentions to begin selling chicken noodle soup and related soups and simple meals in packaging featuring a label and brand design that are confusingly similar to the design Campbell has used for its soup and related products, some elements of which have been used for over 100 years, Campbell says.

Chicken Soup for the Soul has “ embarked on an unlawful campaign to lure consumers into purchasing their chicken noodle soup and related goods under the mistaken belief that such products come from, are sponsored by, or are associated or affiliated with, Campbell Soup,” the complaint says.

The publisher’s use of a strikingly similar script typeface and label layout lies “at the heart of defendants’ campaign of deception,” according to Campbell.

“Consumer confusion and dilution is not only likely, but inevitable,” the complaint says.

Campbell has built a large and profitable business as a result of the high quality of its soup products, with worldwide soup sales in excess of $1.5 billion per year, according to the company. It spends hundreds of millions of dollars per year advertising and promoting the brand, the company says.

The soup maker has used the famous “Campbell’s” trademark and related trade dresses since at least as early as 1898, and owns a number of federal trademark registrations for them, according to the complaint.

It recently came to Campbell’s attention that Chicken Soup for the Soul intends to offer a line of soup and other simple meal products through the same channels of trade Campbell employs, such as grocery stores, beginning in 2013.

“That defendants’ intent was to trade on the fame and goodwill of the Campbell’s mark and Campbell trade dress is evident from a simple visual review of the packaging,” the complaint says.

In addition to trademark and trade dress infringement and dilution, the complaint asserts claims for false designation of origin, deceptive acts and practices, and unfair competition.

Campbell is seeking an injunction barring the soup line from using the Campbell trademark design or anything confusingly similar, plus damages, costs and attorneys’ fees.

October 17, 2012, by Mandour & Associates, APC

Los Angeles – Yves Saint Laurent SAS asked a Manhattan federal court on Tuesday to dismiss its remaining counterclaims in Christian Louboutin’s trademark lawsuit over his signature red-soled shoes, following the Second Circuit’s September ruling letting YSL off the hook for the infringement claims.

On Sept. 5 the Second Circuit directed that final judgment be entered in YSL’s favor on all of Louboutin’s federal trademark claims. The court ruled conclusively that the YSL monochromatic shoes that Louboutin challenged in the lawsuit do not infringe any trademark rights, even though it also found that Louboutin is indeed entitled to trademark protection for the soles.

The only issues remaining to be litigated following the appeals court’s ruling are YSL’s counterclaims against Louboutin for cancellation of its federal trademarks, tortious interference and unfair competition, YSL said.

“In light of YSL’s conclusive victory in defeating Louboutin’s claims, and for the reasons detailed herein, YSL believes it appropriate to dismiss its counterclaims voluntarily, thus resolving what remains of this litigation and allowing the parties to close the book on this litigation and refocus their attention on their respective fashion creations,” YSL’s motion to dismiss says.

The district court had jurisdiction over the cancellation counterclaims only because of the now-dismissed trademark infringement claims against YSL, the company says. Now that those claims are out of the picture, the court no longer has subject matter jurisdiction, according to YSL.

YSL did note that such cancellation claims can and must be brought before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board if there is no other basis for federal jurisdiction, so the cancellation counterclaims should be dismissed without prejudice.

The counterclaims for tortious interference and unfair competition, meanwhile,were based on Louboutin’s efforts in 2011 to pressure certain retailers to return to YSL the red monochromatic shoes challenged in the case.

“Although YSL maintains its view that such actions were wrongful, YSL was able to mitigate some of its damages by reselling the returned inventory at YSL boutiques or through e-commerce,” YSL’s motion says. “In light of that, and given its desire to refocus its energies on its business and creative designs, YSL has decided that these claims are no longer worth pursuing.”

October 11, 2012, by Mandour & Associates, APC

Los Angeles – MTV parent Viacom Inc. and its flagship “Jersey Shore” reality series star Paul Delvecchio Jr., better know to the world as “DJ Pauly D,” have opted to settle a trademark infringement lawsuit brought by a Connecticut DJ who claims he has been using the trademark “DJ Paulie” since 1973.

Judge Alvin Thompson of the District of Connecticut signed off on the dismissal of Paul Lis and DJ Paulie Broadcasting LLC’s action Wednesday without further comment or any details of the settlement agreement.

Lis sued Delvecchio, MTV, Viacom, the Palms Casino Resort, Baskin-Robbins Inc. and Hearst Communications Inc. in June 2011 alleging they were infringing his trademark and tarnishing his reputation by virtue of the bad behavior Delvecchio and others exhibit on “Jersey Shore.”

Lis adopted the name DJ Paulie in 1971 and has used it continuously in interstate commerce since 1973 for DJ services and performances on various shows and productions, he says. He obtained a federal registration for the trademark from the U.S. Patent and Trademark Office in September 2010.

Throughout his four-decade career Lis has cultivated and maintained a “wholesome, family oriented image and reputation with G-rated content” in his performances and shows, to the extent that he uses radio edits of some songs containing profanity or other objectionable content. He was selected by Disney Radio to be a talent judge in 2000.

In 2009, meanwhile, MTV began airing “Jersey Shore,” with Delvecchio, one of its main figures, promoting himself as DJ Pauly D.

“The reality television show gained immediate popularity by following a group of young adults pursuing a debauched lifestyle suggestive of loose morals, violence, intoxication and liberal profanity— the exact opposite of the reputation the plaintiff . . . had spent decades cultivating and acquiring such goodwill at great expense,” Lis’ complaint said.

Confusion immediately broke out between DJ Paulie and DJ Pauly D due to their similar spelling and identical sound, with a negative impact on Lis’ internet search rankings, Lis claimed. MTV even tagged its DJ Pauly D related content with the misspelling DJ Paulie D to drive more traffic to its sites, he said.

“To date the defendants have ignored the rights of the plaintiffs, and bulldozed ahead utilizing their immense market power in advertising and promotion of their star performer,” the complaint said.

The Palms Casino has advertised and promoted Delvecchio as its current resident DJ, Baskin-Robbins has sold DJ software incorporating the DJ Pauly D trademark, and Hearst has promoted its Cosmopolitan magazine iPad app with Delvecchio and the DJ Pauly D trademark, according to the complaint.

Delvecchio has repeatedly attempted to trademark the name DJ Pauly D since 2010, but the PTO has time and again rejected his overtures.

October 10, 2012, by Mandour & Associates, APC

Los Angeles – Bridgestone Americas Tire Operations LLC said Thursday that it was completely within its rights to use the actor who played the “Kevin Butler” character in Sony Computer Entertainment America LLC’s Playstation ads for years in one of its own commercials featuring him playing a Nintendo Wii, in response to Sony’s trademark infringement and other claims.

In September a Bridgestone commercial aired on national television in connection with a tire promotion under which a customer could receive a Wii video game system upon the purchase of select Bridgestone tires. The commercial featured actor Jerry Lambert as a Bridgestone engineer playing a Wii.

Lambert is principally known for the many Sony television commercials and ads in which he has played the character of Kevin Butler, a fictional Sony vice president whose stated mission is to bring “glory” back to video gaming.

Sony owns the distinctive Kevin Butler character, and has used him for years as a trademark in commercials advertising Playstation products, Sony says.

“Through widespread and continuous use and promotion, the ‘Kevin Butler’ character has obtained secondary meaning and achieved widespread recognition,” the complaint filed in September against Bridgestone and Lambert’s company says. “With the intent of unfairly capitalizing on the consumer goodwill generated by ‘Kevin Butler,’ Bridgestone has used and is using the same or confusingly similar character, also played by the same actor, to advertise its products or services in the commercial.”

Bridgestone’s actions accordingly constitute a violation of Sony’s rights under the Lanham Act, Sony claims.

“Bridgestone denies that ‘Kevin Butler’ appears in any Bridgestone commercial, and thus denies that he does anything whatsoever in any such commercial,” Bridgestone’s answer to the complaint says.

Sony says the Bridgestone commercial features the character as a lead video game tester participating in a test of Nintendo’s Mario Kart game for the Wii, who “speaks excitedly about the Nintendo Wii and shouts gleefully when his colleague wins first place in the game.”

Consumers clearly recognize Lambert as Kevin Butler, and are confused as to why he is now appearing to endorse Nintendo products, Sony says. Their confusion is only increased by the fact that the character appears to be playing Mario Kart while Sony is actively promoting the launch of its own go-kart racing video game, Little Big Planet Karting, in conjunction with a cartoon version of the Kevin Butler character, the company says.

Sony is also asserting claims for unfair competition, misappropriation and breach of contract

October 4, 2012, by Mandour & Associates, APC

Los Angeles – Todd McFarlane, creator of the vastly popular 1990s comic book superhero Spawn, accused an ex-employee of trademark and copyright infringement, among other claims, in a lawsuit filed last week over the ex-employee’s publication of an autobiography claiming to have served as the inspiration for Spawn.

Al Simmons and his wife Melanie both formerly worked at Todd McFarlane Productions Inc., according to McFarlane’s complaint in Arizona federal court. Many years ago, Al Simmons gave McFarlane his permission to use his name as the Spawn character’s given, non-superhero name, but Simmons has now published a book about his connection to Spawn that infringes McFarlane’s intellectual property rights, McFarlane says.

The Simmonses breached their duties and employment agreements during their time with the company by misappropriating trade secrets and confidential information from TMP, and have violated McFarlane’s intellectual property rights, the complaint says.

In early 2011 Al Simmons approached TMP and McFarlane to discuss his desire to write or co-author an autobiography. McFarlane questioned Simmons’ decision, but gave his blessing to the project so long as Simmons remained accurate regarding McFarlane and the company, honored his company obligations and did not spend work time on the book.

Later that year, Al Simmons and McFarlane participated in a background discussion with a ghostwriter Simmons had hired. McFarlane again cautioned Simmons to be sure the book did not infringe on any intellectual property rights and be careful of its accuracy. He further told Simmons that he questioned the purpose of the book and did not endorse it.

Al Simmons published the book “The Art Of Being Spawn” this year. The book “is riddled with knowing untruths, inaccuracies, misappropriations of the McFarlane companies’ trade secrets, disclosures of the McFarlane companies’ and McFarlane’s confidential information, and infringements on the McFarlane Companies’ and McFarlane’s intellectual property rights,” the complaint says.

One of the most egregious examples of false and misleading information in the book is Al Simmons’ suggestion that his life was allegedly the inspiration for or provided any background for the Spawn character, according to McFarlane.

“Al Simmons, who was flattered and eagerly gave his consent to McFarlane in 1992 for his name to be a part of ‘Spawn,’ was not the inspiration for ‘Spawn’s central character and no one has ever confused that character with defendant Al Simmons,” the complaint says.

“Curiously, defendant Al Simmons has, over the years, as ‘Spawn’ enjoyed popularity, remarked on how his association with plaintiffs has provided him with some name recognition or notoriety, where he had none before ‘Spawn’,” it says.

Simmons has effectively traded on McFarlane’s fame, brand and copyright and trademark protected creation McFarlane says. He deliberately included falsehoods in the book in a further attempt to wrongly capitalize and infringe upon the McFarlane Companies’ intellectual property interests and McFarlane’s name, likeness and identity, according to the complaint.

TMP is the owner of the federally registered trademark in the Spawn name, and holds various other related trademarks arising out of the Spawn comic book franchise. Al Simmons is using the trademark to falsely indicate an association with McFarlane, and is doing so in a way that is likely to cause confusion amongst consumers, the complaint says.

In his infringing use of the trademark, Al Simmons is trying to increase sales of his book by attracting fans of Spawn and McFarlane, his desired audience, McFarlane alleges.

Al Simmons has also knowingly and intentionally reproduced, displayed and used McFarlane’s copyrighted work relating to the Spawn series without permission, with total disregard for McFarlane’s rights, the complaint says.

In addition to the trademark and copyright infringement claims, McFarlane is asserting claims for actual and threatened misappropriation of trade secrets, unfair competition, breach of fiduciary duty and duty of loyalty, false endorsement, false advertising and libel.

McFarlane is seeking an injunction barring the Simmonses from misappropriating or using any trade secrets or confidential information, and an order that they return any such information in their position to the company. He also wants the court to compel them to produce their computers for inspection for any such information, and has asked for statutory, compensatory, punitive and exemplary damages.

October 2, 2012, by Mandour & Associates, APC

Los Angeles – Raytheon Co. hit Lockheed Martin Corp. with a new trademark infringement lawsuit in Arizona federal court Thursday over Lockheed’s alleged misappropriation of the Raytheon trademark name Paveway for laser guided bombs.

At the time of their introduction 40 years ago by Raytheon predecessor Texas Instruments, Paveway LGBs revolutionized tactical air-to-ground warfare. Since then, Raytheon has sold billions of dollars worth of Paveway bombs, which have been used in every major U.S. military operation since the 1970s, and has developed strong rights and substantial goodwill in the Paveway trademark, Raytheon says.

Lockheed entered the laser guided training round market in the early 1990s and sold its LTGRs for over 10 years under that generic name, according to Raytheon. When Lockheed started making LGBs, in kept using the generic name “laser guided bombs” or its abbreviation.

Around 2005, though, three years after entering the laser guided bomb market and decades after the Paveway trademark was first used, Lockheed decided to start calling its own LGBs Paveway, to capitalize on the goodwill Raytheon had already established, the complaint alleges.

Lockheed “set in motion a deliberate strategy to simultaneously misappropriate and destroy Raytheon’s rights in the term Paveway,” the complaint says.

Lockheed’s “continued and progressive encroachment” on Raytheon’s rights in the Paveway trademark has caused actual confusion in the market already, Raytheon says. Lockheed’s LGB products have also experienced poor quality issues, causing post-sale confusion and direct harm to Raytheon’s reputation, as well as millions of dollars in lost sales, according to Raytheon.

From 2005 through 2011 Raytheon and Lockheed waged war over whether Paveway can be registered as a trademark before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board. Lockheed eventually convinced the TTAB that Paveway is a generic term, primarily based on evidence dating from 2005, three years after it entered the market.

In the district court and the Ninth Circuit, though, the distinctiveness of the Paveway trademark must be determined at the time that Lockheed entered the market in 2002, Raytheon says. The Paveway trademark was and is a distinctive mark identifying Raytheon as the source of the LGBs, it claims.

September 27, 2012, by Mandour & Associates, APC

Los Angeles – Liz Claiborne Inc. and its Lucky Brand Dungarees Inc. denim unit won summary judgment from a Manhattan federal court Tuesday on a fashion group’s claims that Lucky Brand infringes its “Get Lucky” trademark.

Marcel Fashions Group Inc. already had its trademark claims against Lucky adjudicated in an earlier action, Judge Laura Taylor Swain ruled.

Lucky has been selling vintage-inspired jeans and casual apparel for over 20 years, and is the owner of numerous trademarks registered with the U.S. Patent and Trademark Office, including “Lucky Brand,” a clover-shaped design trademark and “Lucky brand Dungarees of America.”

Marcel sued Lucky Brand in September 2001 in Florida federal court asserting claims for trademark infringement and unfair competition based on Lucky’s use of the “Get Lucky” trademark, which Marcel owns. It later sued Liz Claiborne in the same court with similar allegations, and the two cases were rolled together into consolidated litigation.

The companies settled the 2001 action in May 2003, providing that Liz Claiborne and Lucky would desist from the use of “Get Lucky” as a trademark in connection with clothing sales.

In 2004, meanwhile, Marcel licensed the “Get Lucky” trademark to Ally Apparel Resources LLC, which launched a “Get Lucky” line of jeans that competed with Lucky. Lucky filed its own lawsuit in 2005 alleging Ally’s products infringed its “Lucky Brand” trademarks.

Marcel and Ally counterclaimed that Marcel was the senior user of the “Get Lucky” trademark, and that Lucky’s use of that trademark and others infringed Marcel’s rights and violated the 2003 settlement agreement. In 2010 a jury found that Lucky had infringed the trademarks, and awarded Marcel several hundred thousand dollars in damages.

Marcel then filed its current lawsuit in April 2011, seeking an injunction based on Lucky’s continued use of the Lucky Brand trademarks. It conceded that the action was based on the identical manner and form of trademark infringement and on the same goods for which Lucky was found liable for infringement in the 2005 lawsuit.

“Marcel merely seeks broad injunctive relief prohibiting Lucky Brand from using the same trademarks that were the subject of the 2005 action, and further damages for use of those marks,” Judge Swain said.

The company could have obtained such relief in the 2005 action, and did actually seek it, but the negotiated final order in that case did not provide for such an injunction, she said.

Judge Swain also denied Marcel’s motions for leave to file an amended complaint and for contempt sanctions against Lucky and Liz Claiborne.

September 26, 2012, by Mandour & Associates, APC

Los Angeles – Public listing database service 3Taps Inc. struck back on Monday at Craigslist Inc.’s copyright and trademark infringement claims against it, accusing Craigslist of exploiting its dominant position in the online classified ad business.

Craigslist sued 3Taps and PadMapper Inc. in the Northern District of California in July alleging their use of data gleaned from Craigslist’s listings violates Craigslist’s copyrights and trademarks.

“For their own commercial benefit, defendants 3Taps and PadMapper are unlawfully and unabashedly mass-harvesting and redistributing postings entrusted by Craigslist users to their local Craigslist sites,” Craigslist’s complaint says.

3Taps, on the other hand, contends in its counterclaims filed Monday that Craigslist’s legal actions constitute unfair competition and interference with economic advantage, and that Craigslist is a monopolist of certain markets for online classified advertising in violation of antitrust laws.

“Craigslist has an overwhelming share in numerous online classified ad markets and improperly maintains those monopoly shares through a broad-based, anti-competitive scheme,” 3Taps says. “Certainly, Craigslist has not maintained this power by competing on the merits. Indeed, for years, craigslist has espoused the classic principles of a monopolist that believed it did not need to compete: a “strategy” of “unbranding,” “demonetizing,” and “uncompeting” — the epitome of a lethargic monopolist.”

As an “unchallenged monopolist” across various markets, Craigslist has generated revenues of $100 milion to $300 million per year without sinking any significant costs into research and development or innovation, according to 3Taps.

To protect its position, Craigslist files serial sham cease and desist letters and shaw lawsuits like the one in question against 3Taps and PadMapper, 3Taps says.

The data indexed by 3Taps is factual material not subject to copyright protection, and to the extent the user postings are entitled to copyright protection, Craigslist does not have standing to enforce these copyrights because it is neither the owner nor exclusive licensee of this content, 3Taps says. Craigslist’s conduct also amounts to copyright misuse, according to 3Taps.

“Nevertheless, even with knowledge that its claims utterly lack merit, Craigslist has threatened and filed lawsuits as part of a policy intended to intimidate innovators and force them to cease competing with Craigslist,” the counterclaims say. “Craigslist has sucked the oxygen out of the innovation demanded by consumers and will continue to do so unless enjoined by this court.”

Craigslist already has caused 3Taps significant injury in the form of millions of dollars of lost sunk cost investments and lost opportunities with its partners, the company claims.

September 21, 2012, by Mandour & Associates, APC

Los Angeles – A new arcade game and craft beer themed bar under construction in North Hollywood struck back this week against a trademark infringement lawsuit filed in August by the proprietor of three bars in the Northeast that also use the name “Barcade.”

The trademark Barcade is not used in interstate commerce, and Barcade LLC should be barred form asserting its claims by the fair use doctrine and the first sale doctrine, among other reasons, NoHo Barcade says in its Monday answer to Barcade LLC’s complaint in the Central District of California.

Barcade LLC’s claims should also be barred due to a general lack of fame of the trademark, NoHo Barcade says. NoHo Barcade acted with innocent intent in using the name, it says.

The alleged trademark is merely functional, and so is therefore contestable, not a trademark from its inception and incapable of protection under the law, NoHo Barcade says. The claimed trademark is simply a generic name for goods and services, is not inherently distinctive and has not acquired distinctiveness, since consumers do not associate the trademark with Barcade LLC alone, it says.

Moreover, there is no actual confusion or even a likelihood of confusion between Barcade LLC’s name or trademark and that of NoHo Barcade, according to NoHo Barcade.

Barcade LLC registered the trademark for the name Barcade with the U.S. Patent and Trademark Office in March 2008 in relation to bars and bar services. It says it used the trademark as early as October 2004.

The plaintiff company registered the trademark Barcade in April 2011 to cover beverage glassware, foam drink holders, sports caps and hats, sweatshirts and T-shirts, as well. It claims to have used the trademark as early as October 2005 with respect to those categories of goods.

The East Coast company owns three bars that operate under the Barcade trademark in Brooklyn, Philadelphia and Jersey City.

The Barcade trademark is inherently distinctive and represents exceedingly valuable good will, Barcade LLC says. It claims the trademark has become well known throughout the general community of adults looking for an entertainment establishment with arcade games.

“Plaintiff has developed a very positive reputation for its products and services and has been recognized as a leader and a pioneer in the field of arcade themed entertainment establishments that combine bar service and a variety of arcade games,” the complaint says.

Barcade LLC contacted NoHo Barcade to request it stop using the trademark, and NoHo Barcade refused, according to Barcade LLC.

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