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Fooey, Inc. v. Gap, Inc.No. 12 C 5713, 2013 WL 2237515 (N.D. Ill. May 17, 2013)
The Firm successfully obtained dismissal of a copyright action brought against client Gap, Inc. by clothing retailer Fooey Inc. in the U.S. District Court for the Northern District of Illinois. Fooey alleged in its complaint that two t-shirts sold by Gap infringed two copyrighted designs created by Fooey - one featuring a paper airplane and folding instructions and the other a windblown dandelion - and used on its own clothing. On Gap's motion to dismiss under Fed. R. Civ. P. 12(b)(6) and addressing the claims on the merits, the Court held that Fooey's designs had limited protection given that both depicted commonplace elements. As to infringement, the Court determined as to the paper airplane design that "no ordinary observer comparing the two shirts could reasonably conclude that defendant misappropriated plaintiff's protectable expression," and, as to the dandelion design, that “each shirt impresses upon the ordinary observer its own distinct 'total concept and feel.'" As a result, the complaint was dismissed without leave to amend. |
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Web-adviso v. TrumpNo. 11-CV-1413 (DLI)(VVP), --- F. Supp. 2d ----, 2013 WL 763746 (E.D.N.Y. Feb. 28, 2013)The Firm obtained summary judgment in favor of client Donald J. Trump on a cybersquatting claim brought against J. Taikwok Yung in the U.S. District Court for the Eastern District of New York. Yung, a self-described "domainer," acquired the four domain names trumpbeijing.com, trumpindia.com, trumpmumbai.com and trumpabudhabi.com in 2007, shortly after The Trump Organization announced plans to build TRUMP-branded hotels and condominiums in Mumbai and Bangalore, India. Trump first initiated an arbitration proceeding pursuant to the Uniform Domain Name Resolution Policy and won a favorable decision in the World Intellectual Property Organization. Yung then appealed, filing a declaratory judgment action in federal court, forcing Trump to file counterclaims, inter alia, for cybersquatting under Section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d). In a February 28, 2013 opinion, the Court noted that Trump formulates domain names for TRUMP-branded properties by using the TRUMP mark followed by a geographic term and held that Yung’s parroting of this practice was evidence of bad faith. The Court found additional evidence of bad faith, such as the suspicious timing of Yung’s registration, Yung’s references to the domain names’ value in settlement discussions, Yung’s portfolio of other domain names that contain well-known marks and a previous cybersquatting decision against Yung in an action involving other marks. Given this “overwhelming” evidence of bad faith, the Court granted summary judgment to Trump and rejected Yung’s defense of fair use. |
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Volvo Trademark Holding AB v. Hebei Aulion Heavy Indus. Co.Opp. Nos. 91178281, 91178290, 91178297 and 91178410 (consolidated) (T.T.A.B. Feb. 7, 2013)The Firm successfully defended Hebei Aulion Heavy Industries Co., Ltd. ("Hebei Aulion"), a Chinese company, in its bid to register LOVOL. Volvo Trademark Holding AB ("Volvo") opposed Hebei Aulion's four applications for the marks LOVOL and LOVOL and Design for agricultural and construction vehicles and machines, based on Volvo's claim that the marks VOLVO and LOVOL are confusingly similar for such products. The Trademark Trial and Appeal Board (the "Board") ruled in favor of Hebei Aulion and dismissed the opposition. It adopted Hebei Aulion’s arguments that: 1) the products involved are expensive, so consumers are careful in their purchasing decisions; 2) because of the way the parties' products are marketed, consumers must interact with dealers in order to buy the parties' products; and 3) the marks VOLVO and LOVOL are simply too different to be confused. As to this third and most crucial finding, the Board specifically adopted Hebei Aulion's analysis of the marks. The Board stated: "As applicant notes, its mark LOVOL is a palindrome: its letters read the same from left to right as from right to left. This lends applicant’s mark a visual symmetry that is absent from opposer’s mark VOLVO: the beginning and ending L’s of applicant’s mark balance each other as do the symmetrically placed O’s." In making this statement, the Board echoed Hebei Aulion's evidence that Hebei Aulion had chosen the LOVOL mark for its products because it wanted to adopt a mark that was consistent with the concept of visual balance, which has long been aesthetically treasured in Chinese culture. |
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McNeil-PPC, Inc. v. Walgreen Co.Opposition No. 91184978, 2013 WL 223400 (T.T.A.B. Jan. 22, 2013)The Firm successfully represented our client McNeil-PPC, Inc. (“McNeil”), a subsidiary of Johnson & Johnson and the exclusive licensee of the ZYRTEC mark for allergy products in the United States, in a five-year challenge before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (the “Board”) to Walgreen Co.’s (“Walgreens”) attempt to register the mark WAL-ZYR in connection with an allergy product containing the identical active ingredient to ZYRTEC. McNeil opposed Walgreens’ application, inter alia, on the ground that the WAL-ZYR mark was likely to cause confusion with the ZYRTEC mark or cause consumers to believe that the WAL-ZYR goods were sponsored by, manufactured by, endorsed by or otherwise connected with McNeil and its ZYRTEC brand in violation of Section 2(d) of the Lanham Act. Following trial, the Board found in favor of McNeil. The Board held the ZYRTEC mark to be strong based on 15 years of use by McNeil and its predecessor, as well as substantial advertising expenditures, strong brand awareness and loyalty, and a healthy market share. The Board found the ZYRTEC and WAL-ZYR goods to be commercially identical, sharing the same active ingredient and sold in the same channels of trade to the same classes of customers (including at times being displayed directly next to each other on Walgreens' shelves). The Board also found the marks to be similar, particularly in light of Walgreens' purposeful incorporation of the distinctive first half of McNeil's ZYRTEC mark in its WAL-ZYR mark specifically to refer to ZYRTEC, making it possible that "an appreciable number of consumers could believe some sort of sponsorship or affiliation exists." The Board also found that the Walgreens' likelihood of confusion survey failed to "expose the full potential for confusion" due to deficiencies in the its content, format, and means of calculating respondent confusion, and thus did not find the results of the survey to be probative. |
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Lion Capital LLP v. Stone Lion Capital Partners L.P.Opp. No. 91191681 (T.T.A.B. Jan. 18, 2013)The Firm successfully represented Lion Capital, LLP, a private equity investment firm and owner of the LION and LION CAPITAL trademarks (the “LION Marks”), in a contentious 4-year opposition proceeding against hedge fund manager Stone Lion Capital, LLC’s application to register the mark STONE LION CAPITAL in connection with “financial services, namely investment advisory services, management of investment funds, and fund investment services.” In the opposition proceeding, Stone Lion argued that its hedge fund investment services differ from the private equity investment services of Lion Capital, but the Board rejected this argument given the very broad identification of services set forth in the Application in issue, which were essentially identical to the services identified in Lion Capital’s registrations for the LION Marks. Stone Lion also claimed that Lion Capital’s rights in the LION Marks are weakened by the alleged existence of third party LION-formative marks, relying on third party witness testimony, as well as various web pages found on the Internet. But Lion Capital challenged the credibility of Stone Lion’s third party use evidence, and the Board agreed that Stone Lion’s evidence was insufficient to demonstrate a crowded field of LION-formative marks for similar investment services. In sum, the Board found that the marks in issue were similar, the services, customers and trade channels were legally identical, and all other likelihood of confusion factors were neutral. Accordingly, the opposition was sustained. |
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Athleta, Inc. v. Pitbull Clothing Co.No. CV 12–10499–CAS (FMOx). 2013 WL 142877 (C.D. Cal. Jan. 7, 2013).The Firm was successful in obtaining a preliminary injunction for our client Athleta, Inc. ("Athleta"), a subsidiary of Gap Inc., against Pitbull Clothing Co. and Cory Peck, operators of the website athletica.net ("Pitbull"). In a complaint filed on December 7, 2012, Athleta, a premier retailer of women's fitness clothing and active wear sold under the ATHLETA trademark, pled allegations of trademark infringement, unfair competition and false advertising as a result of Pitbull's use of its athletica.net website and the ATHLETICA mark to market and sell competitive women's fitness clothing. Athleta moved for a preliminary injunction, contending that Pitbull had progressively encroached on Athleta's marks and business over several years, most notably at the end of 2012, by moving from a wholesaler of athletic clothing to a branded website which engaged in a targeted attack on Athleta's business - including through copying elements of Athleta's website and offering ATHLETICA branded clothing for the first time - and that such encroachment created a likelihood of confusion in the marketplace. In a January 7, 2013 opinion, the U.S. District Court for the Central District of California granted Athleta's motion, finding, inter alia, that the ATHLETA mark and other Athleta indicia were strong marks, that the parties' trademarks were highly similar, that the parties sold identical goods to identical customers, that actual confusion had occurred in the marketplace and that Pitbull's actions bore the hallmarks of willfulness. The Court also found that Athleta had carried its burden of proving that it would suffer irreparable injury absent the entry of an injunction and that the balance of the equities and public interest favored injunctive relief. |
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Jumbo Bright Trading Limited v. The Gap, Inc.CV 12-08932 DDP (MANx), 2012 WL 5289784 (C.D. Cal. Oct. 25, 2012), 2012 WL 6721082 (C.D. Cal. Dec. 27, 2012)On behalf of our client The Gap, Inc. ("Gap"), the Firm successfully defeated an emergency motion for a temporary restraining order and a second motion for a preliminary injunction brought by plaintiffs Jumbo Bright Trading Limited and Charles Pozzi ("Plaintiffs") against Gap's offering and sale of certain women's loafers. Plaintiffs, who market and sell English-style loafers with pinstriped interior linings under the brand name Charles Philip Shanghai, allege that Gap's sale of allegedly similar shoes (i) constituted trademark infringement and unfair competition in view of its claimed rights in its striped interior linings and the Charles Philip Shanghai name, (ii) infringed two design patents purportedly covering such designs, and (iii) violated Pozzi's right of publicity under California law. Plaintiffs filed an application for a temporary restraining order on October 22, 2012, Gap opposed the motion 24 hours later, and on October 25, the U.S. District Court for the Central District of California denied Plaintiffs' application. Plaintiffs then filed a motion for a preliminary injunction on November 2, 2012, which Gap opposed on the grounds that Plaintiffs had not proven that they owned protectable trademarks or valid design patents and that there was no infringement in any event, that there had been no right of publicity violation and that Plaintiffs failed to make the requisite showing of irreparable injury to justify injunctive relief. The Court denied Plaintiffs' second motion on December 27, 2012. In both orders, the Court agreed with Gap's position that Plaintiffs had failed to demonstrate that they would be irreparably injured by the conduct at issue. |
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Frank Sinatra Enterprises, LLC v. LoizonOpp. No. 91198282 (T.T.A.B. Sept. 12, 2012)The Firm successfully represented our client Frank Sinatra Enterprises, LLC (“FSEN”), which holds the exclusive right to commercially exploit Mr. Sinatra’s name and likeness, in its challenge before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (the “Board”) to Michigan-based caterer Bill Loizon’s attempt to register the mark FRANKS ANATRA in connection with his catering business. FSEN opposed Loizon’s application on the ground that the FRANKS ANATRA mark created a false suggestion of a connection with Frank Sinatra in violation of Section 2(a) of the Lanham Act and also on the ground that the mark was likely to cause consumer confusion as to the source of Loizon’s catering services in violation Section 2(d) of the Lanham Act. Following the trial, the Board found in favor of FSEN on both grounds. As to false suggestion of a connection, the Board held that Frank Sinatra is an “iconic American cultural figure” and that the FRANKS ANATRA mark—which the Board held was the “phonetic equivalent” of Frank Sinatra—was clearly “a play on the Frank Sinatra name.” Furthermore, the Board explained that because it is “commonplace for performers . . . to expand their product lines to incorporate a diverse set of goods and services,” consumers would presume a connection between Frank Sinatra and Loizon’s catering services offered under the FRANKS ANATRA mark. As to likelihood of confusion, the Board held that the marks FRANK SINATRA and SINATRA are famous for entertainment services and, thus, are entitled to a “broad scope of protection.” Next, the Board determined that the FRANK SINATRA and FRANKS ANATRA mark were both visually and phonetically similar and that Loizon’s catering services were sufficiently related to Mr. Sinatra’s entertainment services since, again, famous performers use their marks on a diverse range of services in order to capitalize on the renown of their names and brands, including on food and restaurant services. |
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Lopez v. Gap, Inc.883 F. Supp. 2d 400 (S.D.N.Y. 2012)The firm successfully defended our clients The Gap, Inc., Gap International Sourcing, Inc., Old Navy, LLC and Old Navy (Apparel), LLC ("Gap") against a trademark infringement and unfair competition action brought by Robert Lopez, who prints and sells t-shirts and other apparel promoting his neighborhood, the Lower East Side of New York City. The lawsuit, commenced in May 2011, claimed that an Old Navy graphic t-shirt that referred to the Lower East Side infringed Lopez's alleged trademark rights in the geographic terms "Lower East Side" and "LES NYC," with designs, and in an "LES" logo. During discovery, Lopez expanded his claims to include a second Old Navy t-shirt printed with the words "Lower East Side NYC." In an August 2, 2012 opinion granting Gap’s motion for summary judgment, Judge Paul A. Engelmayer of the U.S. District Court for the Southern District of New York held that Lopez did not have rights in the alleged "Lower East Side" or "LES NYC" marks because they were geographically descriptive and Lopez failed to show that the terms had developed secondary meaning. The court also held that, even if Lopez had rights in the terms, the Old Navy t-shirts did not infringe the "Lower East Side" or "LES NYC" marks or any rights Lopez may have in the LES logo. |
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Jackson v. BookerNo. 2:10-cv-05371-JLL-CCC, 2011 WL 3236062 (D.N.J. July 27, 2011), aff'd, 465 Fed.Appx. 163 (3d Cir. 2012)The firm successfully defended our clients, who include Sundance Channel, Mayor Cory A. Booker and the documentary producers Marc Benjamin and Marc Levin, against a copyright infringement action brought by author E. Adam Jackson. Jackson’s October 2010 lawsuit alleged that the Sundance Channel’s Emmy Award-winning documentary series Brick City infringed Jackson’s novel of the same name. The Brick City television series follows Newark, New Jersey's Mayor Booker and other local leaders and residents as they seek to combat the city’s crime problems and urban blight. In an opinion granting our clients’ motion for summary judgment, Judge Jose L. Linares of the District of New Jersey held that the works “lack sufficient similarity” to conclude that the series copied the book and dismissed the action it its entirety. The U.S. Court of Appeals for the Third Circuit affirmed the decision, finding that "from a comparison of the two works, it is clear that no reasonable observer could find his book and the defendants' show substantially similar beyond the level of generalized or otherwise nonprotectable ideas." |
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Revelations Perfume v. Prince Rogers NelsonIndex No. 603350/2008, Slip Op. (N.Y. Sup. Aug. 4, 2011)The firm obtained partial summary judgment dismissing the plaintiff's entire $5.6 million claim for damages against our client Universal Music Corp. d/b/a Universal Music Publishing Group ("UMPG") in a license dispute concerning a celebrity fragrance for Prince, the famous recording artist. UMPG had licensed to plaintiff Revelations Perfume & Cosmetics, Inc. ("Revelations") the right to use Prince's name, likeness, and 3121 album title and mark in connection with fragrance products. The products failed in the marketplace, and Revelations sued UMPG in the Commercial Division of New York State Supreme Court, alleging that UMPG breached the parties' contract by failing to "instruct and use reasonable efforts to cause" Prince to promote the products. (Revelations also alleged fraud and tortious interference against Prince and his entertainment company, both of whom are represented in the lawsuit by other counsel.) As its sole claim for damages against UMPG, Revelations sought $5.6 million in alleged "lost profits." UMPG, without admitting liability, moved for partial summary judgment on the damages claim, arguing that Revelations failed to raise an issue for trial on any of the three elements it must prove to obtain lost profits for breach of contract under New York State law: that the parties contemplated lost profits liability when they entered into the contract; that the lost profits are directly traceable to UMPG's alleged breach; and that the lost profits are capable of proof with reasonable certainty (i.e., not speculative). In an August 3, 2011 opinion, Justice Bernard J. Fried granted UMPG's motion, finding that Revelations failed to raise a triable issue as to any of the elements, much less all three as the law requires. |
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Institute for the Development of Earth Awareness v. People for the Ethical Treatment of Animals768 F. Supp. 2d 672 (S.D.N.Y. 2011)The firm obtained summary judgment in favor of client People for the Ethical Treatment of Animals (“PETA”) on a copyright infringement claim brought against PETA in the U.S. District Court for the Southern District of New York. In its 2008 complaint, plaintiff The Institute for the Development of Earth Awareness (“IDEA”) alleged that PETA’s Animal Liberation Project Campaign (“ALP”) infringed a book written by IDEA’s principal, Marjorie Spiegel, titled The Dreaded Comparison: Human and Animal Slavery. The Court concluded that: (i) IDEA was impermissibly trying to copyright “unprotectable ideas based largely on facts, many of a historical nature”; (ii) the idea of comparing human and animal oppression in these time frames was not even original to Ms. Spiegel or IDEA, as the ideas had been discussed before in numerous other works; (iii) there was “nothing original” about the book’s use of third-party quotations from well-known thinkers; (iv) IDEA’s claims alleging that PETA copied the book because both the ALP and the book allegedly use juxtaposed images should be rejected, holding that “it is commonplace for a work comparing or contrasting seemingly disparate events to contain side-by-side illustrations”; and (v) after a comparison of the works, IDEA’s claim that the book and the ALP had a similar “total concept and feel” as the result of combining allegedly similar elements should be rejected. In sum, the Court concluded that “no reasonable jury . . . could find that PETA engaged in unauthorized copying of original components of [plaintiff’s] work.” |
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Clinique Laboratories LLC v. Absolute Dental, LLCOpp. No. 91181263 (T.T.A.B. Apr. 28, 2011)The firm successfully represented Clinique Laboratories, LLC (“Clinique”) in its challenge to Nevada-based Absolute Dental LLC’s attempt to register the mark CLINIQUE DENTIQUE for “cosmetic dentistry services.” In ruling for our client, the Trademark Trial and Appeal Board (the “Board”) of the U.S. Patent and Trademark Office found that the CLINIQUE mark was “extremely famous” and had “been a fashion fixture for decades in the United States” and was entitled to a “very wide scope of protection.” Following an analysis of the DuPont factors, the Board held that Absolute Dental had “appropriated the inherently distinctive and famous CLINIQUE mark in its entirety” and that the addition of the descriptive term DENTIQUE was not sufficient to avoid confusion. The Board ultimately concluded that the mark CLINIQUE DENTIQUE was likely to cause confusion with the established brand CLINIQUE, and therefore sustained Clinique’s challenge. |
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Rodan & Fields, LLC v. Estee Lauder Companies, Inc.Case No. 5:10-cv-02451 HLK, 2010 WL 3910178 (N.D. Cal. Oct. 5, 2010)The Firm successfully defended our clients The Estee Lauder Companies Inc. and Clinique Laboratories LLC against a motion for preliminary injunction filed by Rodan & Fields, LLC. The lawsuit, commenced in June 2010, alleges that Clinique, a subsidiary of Estee Lauder, infringed the design of Rodan & Fields’ packaging for its dermatological regimen kits. Rodan & Fields’ packaging consists of a white pharmacy-style cardboard bag with a wide color‑coded stripe in the top portion, whereas Clinique packages its dermatological solutions kits in a transparent cellophane bag with a two-tone cardboard insert, also having a stripe of contrasting color at the top. Estee Lauder and Clinique were able to successfully show to Judge Lucy H. Koh of the Northern District of California that “far from being ‘strikingly similar,’ the parties’ bags are substantially different in terms of overall appearance,” thereby eliminating any likelihood that consumers would confuse the two, and that the overall look of Rodan & Fields’ bags is both commonplace and functional – and, as such, not protectable. |
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Perfetti Van Melle USA v. Cadbury Adams USA LLC732 F. Supp. 2d 712 (E.D. Ky. 2010)On behalf of our client Cadbury Adams USA LLC--maker of the famous DENTYNE brand of chewing gum--we defeated a motion for a preliminary injunction brought by Perfetti Van Melle USA in the United States District Court for the Eastern District of Kentucky. The motion sought to block the launch of Cadbury's new breath purifying gum, DENTYNE PURE, on the grounds that the name DENTYNE PURE was confusingly similar to Perfetti's MENTOS PURE FRESH and MENTOS PURE WHITE names used for Perfetti's breath freshening gum. Perfetti also owned federal trademark registrations for MENTOS PURE FRESH and PURE WHITE. After a two day evidentiary hearing the Court denied the motion, holding that Perfetti was "unlikely to prevail on the merits of its claims." |
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Missing Cougar Co. v. Edgar Rice Burroughs, Inc.Opp. No. 91189827, 2010 WL 325956 (T.T.A.B. Jan 21, 2010) (summary judgment); 2010 WL 1619443 (T.T.A.B. Apr. 7, 2010) (reconsideration).We successfully represented Edgar Rice Burroughs, Inc. (ERB)--successor to the famous author of the Tarzan and John Carter of Mars stories--in overcoming an opposition to its application to register the mark JOHN CARTER OF MARS for a variety of toys and games. The opposer alleged that when ERB's application should be denied because ERB (i) lacked a bona fide intention to use the mark, and (ii) committed fraud on the USPTO by misrepresenting such intention to use. According to the opposer, ERB acted in bad faith by filing the subject application while ERB's prior application for the same mark for identical goods was still pending. The opposer pointed to language in the legislative history of the Trademark Law Revision Act of 1988 suggesting that the filing of successive applications to register the same mark for identical goods can be evidence that the applicant lacks a bona fide intention to use the mark and is instead merely seeking to reserve a valuable mark to the exclusion of others. The TTAB granted our motion for summary judgment on ERB's behalf, finding that there was ample evidence of ERB's bona fide intent, notably including ERB's entry into a major motion picture deal with Disney for the John Carter of Mars property two weeks before filing the application. We subsequently defeated the opposer's motion for reconsideration. |
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Kam Hing Enterprises, Inc. v. Wal-Mart Stores, Inc. et al.Case No. 07 CV 2316 (S.D.N.Y. Feb. 18, 2009), aff'd, 359 Fed.Appx. 235 (2d. Cir. 2010)The Firm prevailed after trial, winning in excess of $2 million dollars for a copyright infringement claim brought on behalf of client Kam Hing Enterprises, Inc. Prior to trial on damages, in what the Court noted was a rare instance of granting summary judgment to a plaintiff on liability in a copyright infringement case, the Court found the copyrighted works at issue (quilts) strikingly similar, and defendants liable for copyright infringement. The Court rejected defendants' motion for summary judgment seeking a finding that Plaintiff's quilt design was not subject to copyright protection. This ruling was affirmed by the U.S. Court of Appeals for the Second Circuit. |
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Awarded in Intellectual
Property Law