Mexican Restaurants Battle Over “Damn Good Tacos” Trademark
By Joseph Mandour on April 13, 2017
Orange County – A Fort Collins, Colorado based Mexican restaurant named Dam Good Tacos is being sued for trademark infringement by a Texas restaurant chain named Torchy’s Tacos. Torchy’s Tacos claims that Dam Good Tacos is confusing customers by using a name that is identical to its Damn Good Tacos tagline.
In 2015, Torchy’s Tacos received a federal trademark registration for Damn Good Tacos which claims a 2006 date of first use. The chain had been operating solely out of Texas until early 2016 when it expanded into Denver. Dam Good Tacos began as a restaurant inside of a gas station in Basalt, Colorado in 2012, six years after Torchy’s Tacos date of first use. In 2013, Dam Good Tacos migrated to its current location near Colorado State University in Fort Collins.
Torchy’s initially tried to settle the dispute out of court. In an e-mail statement, Torchy’s claims they offered to help defer some of the costs for Dam Good Tacos to rebrand. The offer came a few months after Torchy’s had opened its newest restaurant in Fort Collins. Dam Good Tacos declined the offer. In response, in November of 2016, Torchy’s sent Dam Good Tacos a cease-and-desist letter. Finally, on April 5th, Torchy’s filed a trademark lawsuit against Dam Good Tacos, suing for alleged trademark infringement of the tagline.
In addition to suing for compensation of monetary damages, Torchy’s Tacos is demanding that Dam Good Tacos hand over certain products and promotional materials, a website URL, and even a Twitter handle. US District Court Judge R. Brook Jackson ruled that the case will be heard within 45 days in the US Courthouse in Denver.
In an e-mail statement, Torchy’s Tacos claims, “Through our significant investment in this trademark, it has become inextricably linked to our products in the minds of consumers.” The e-mail went on to state, “They refused our offer and we were left with no choice but to file a lawsuit to protect our trademark and our brand.”
Dam Good Tacos has not responded to inquiries from reporters seeking a comme... Read the rest
Jimmy Buffett Wins Trademark Dispute Over Marijuanaville
By Joseph Mandour on April 6, 2017
San Diego – Jimmy Buffett and his Margaritaville brand empire recently won another trademark dispute. This time, the Trademark Trial and Appeal Board ruled against Colorado based entrepreneur, Rachel Bevis, who was attempting to register “Marijuanaville” for her cannabis based retail products and clothing store. The judge ruled that both trademarks leave a similar impression of “a chemically induced mental paradise.”
The brand “Margaritaville” comes from the famous song recorded by Jimmy Buffett in 1977. In the subsequent 30 years, Margaritaville Enterprises LLC has grown into an internationally recognized business entity. The brand encompasses dozens of casinos, bars, resorts, restaurants, and even a Florida based retirement community. Furthermore, Margaritaville sells a vast array of products around the world, ranging from barbecue sauce to lawn furniture.
Rachel Bevis filed her Marijuanaville trademark application in 2014. Her intent was to open a cannabis retail store that also offered cannabis themed apparel. Trademark Trial and Appeals Board Judge Angela Lykos wrote, “Margaritaville trademarks have been the subject of widespread media and popular culture exposure.” During the ruling, the judge cited that 73 percent of responders knew the Margaritaville brand. Because the brand is so famous, Margaritaville is afforded much broader protection under the Lanham Act.
Buffett’s trademark lawyers argued that adding “Marijuana” instead of “Margarita” to the beginning of “ville” was not a significant enough change to avoid consumer confusion. Essentially, both words call to mind a state of chemically created utopia. They argued that the brands were confusingly similar, and consumers would falsely view Marijuanaville as an extension of Buffett’s brand. According to the judge’s ruling, “Margaritaville is more than a song – it’s a brand that owns the feeling of ‘a chemically induced mental paradise”.
Jimmy Buffett’s Margaritaville Enterprises LLC won a similar trademark dispute in 2012, wh... Read the rest
Dan Akroyd and Crystal Head Vodka Win Trade Dress Infringement Case
By Joseph Mandour on March 31, 2017
Los Angeles – A Los Angeles California federal jury found in favor of Dan Akroyd’s Skull Vodka Co, Crystal Head, on Wednesday morning. The decision finds rival distilled spirits company, Elements, guilty of trade dress infringement. Both companies sell alcohol in skull shaped bottles.
Globefill, which owns Crystal Head, claimed that its bottle came first, and that the Element’s bottle is a “cheap knockoff.” Wednesday’s decision comes at the end of many years of litigation between the two companies.
Crystal Head Vodka was founded in 2007 by movie and TV star Dan Aykroyd. The Vodka brand quickly grew famous due, in part, to its signature skull shaped bottle. In 2009, Elements created a brand of tequila, called KAH, which is also sold in a skull shaped bottle. However, the KAH brand bottle is significantly more colorful and, according to the bottle maker, is inspired by the Mexican holiday, the Day of the Dead.
Globefill brought its first lawsuit against Elements in 2013, suing for trade dress infringement. However, the court found in favor of Elements. Globefill immediately filed for an appeal, claiming that closing arguments were handled improperly. The Ninth Circuit found that the district judge had erred in not honoring Globefill’s request for retrial. The panel found that closing arguments had referenced evidence that was not presented in the case and had incorrectly claimed that Globefill had deliberately kept documents from the jury.
Key testimony was given at the new trial. Globefill called KAH bottle maker Walter Szymoniak. In his testimony, the artist and bottle maker told how he worked side by side with Kim Brandi, (Elements founder), to improve their existing bottle. At one point, Szymoniak stated that Brandi handed him the Crystal Skull bottle to use as he created the clay cast for KAH’s bottle. Later, according to Szymoniak, Brandi called the artist and admitted that she lied under oath.
Element’s trademark attorney defended the company’s right to the bottle. He claimed that both products had ... Read the rest
Meowington Trademark Fight Escalates
By Joseph Mandour on March 17, 2017
Los Angeles – A Florida based entrepreneur is now suing professional entertainer Joel Zimmerman, better known by his stage name Deadmou5, in federal court over a cat name. The dispute began when Zimmerman filed a Petition to Cancel against Emma Bassiri’s Meowington trademark in the Trademark Trial and Appeal Board.
Ms. Bassiri owns the “Meowington” trademark registration, and Zimmerman owns a famous cat that goes by the name “Prof. Meowingtons.” Bassiri applied to register trademark “Meowingtons” with the United States Patent and Trademark Office (USPTO) in July of 2014. Her application was approved without opposition from Zimmerman, or anyone else. Therefore, in March of 2015, Bassiri was granted the trademark for Meowingtons.
In 2014, Bassiri created Meowington.com which is an online retail store that caters to what she claims is an, “underserved demographic of cat owners and cat enthusiasts.” Prior to launching her business, she conducted extensive market research. During her process, she discovered that her first choice in brand name, “Meowington,” was available. Over the past three years, Meowington has been a leading producer of cat themed products, selling cat clothing, jewelry, bags, and various other associated products.
Zimmerman adopted his cat, Professor Meowingtons, in 2010. Professor Meowingtons is considered a minor celebrity. The pet cat has an online following, including thousands of social media followers across varied outlets. Zimmerman filed a petition with the USPTO to cancel Bassiri’s trademark after his application for Professor Meowingtons was rejected.
Zimmerman claims that Bassiri is a longtime fan of his music, was aware of his cat’s fame when she registered her trademark, and is seeking to draw a false connection between the two with a brand name that is “confusingly similar.”
Zimmerman filed his “Prof. Meowingtons” trademark application on an“intent-to-use” basis. To this day, he has not provided any evidence of when he has ever used the trademark to sell a product or service.
Regardless, Zimmerman is asserting his common law right to the trademark due to the prior fame of his cat which began in 2011. With the new federal lawsuit, it appears that neither p... Read the rest
Kobe Bryant Files Opposition Over “Black Mamba” Trademark
By Joseph Mandour on March 2, 2017
Los Angeles – Former Los Angeles Lakers star Kobe Bryant’s nickname, the “Black Mamba”, has landed him in a legal battle to defend the right to use the nickname. Bryant and a California based online retail company named 47 / 72 Inc. have filed trademark applications for variations of “Black Mamba.”
Bryant was drafted directly from high school in 1996 and played in the NBA for 20 years before retiring after last season. Nike declared April 13, 2016, which was the date of Kobe Bryant’s last game, “Mamba Day” because over the course of his career he had been given the nickname the “Black Mamba.”
On May 2, 2016, less than a month after his last game, Bryant filed a trademark application for “Black Mamba” for apparel with the U.S. Patent and Trademark Office. The application was filed on an intent-to-use basis meaning that at the time of the filing Bryant did not allege use in commerce.
The problem for Bryant is that on April 19, 2016, just two week before he filed his Black Mamba trademark application, 47 / 72 Inc. filed a trademark application for “The Black Mamba” also in relation to apparel. Surprisingly, despite basically identical trademarks and the same goods, the trademark office approved both applications. To prevent the 47 / 72 Inc. application from registering, Bryant was forced to file a Notice of Opposition against the “The Black Mamba” application. In the filing, Bryant claims that the 47 / 72 Inc. brand is too similar to his own and that it will confuse consumers into believing that the online retail store is the same as or connected to Bryant.
Since Bryant’s application was filed subsequent to the 47 / 72 Inc. application, he is relying on common law rights and the prior fame of his nickname to assert his claim. Bryant alleges that beginning in 2007 he and his company Kobe Inc. authorized his business partners and sponsors to start using the nickname on a wide variety of products. Thus, he claims he has been using the nickname as a brand for nearly 10 years.
This is not the only trademark application filed by 47 / 72 Inc. The company has recently filed 69 trademark applications many of which appear likely to run into infringement issues such as PETS.COM, POP (T)ART, and MAKE AMERIK... Read the rest
Tesla and Adidas Tangle Over 3 Stripe Design
By Joseph Mandour on February 16, 2017
Los Angeles – Tesla’s design for its Model 3 vehicle logo received a rebrand around the same time Adidas filed a notice of opposition of one of its pending trademark applications, causing some to speculate Tesla’s changes were made in hopes of avoiding a trademark battle between the two companies.
Tesla filed a trademark application on August 9, 2016, for a horizontal stripes design. The three horizontal lines trademark is similar to the “e” part of Tesla’s branded image. The application was to cover the design on a variety of goods, including apparel and automobiles.
Adidas recently filed a notice of opposition over Tesla’s proposed logo, claiming the logo infringes the Adidas 3-Stripes trademark. The stripes in the Adidas trademark, usually found to be diagonal or vertical, were first registered as a trademark in 1969 and Adidas is known to be very aggressive in policing similar uses.
Adidas has argued that its 3-stripe trademark is well-known, given the company is a leading producer of athletic goods, sponsors word-wide athletic events such as the FIFA World Cup Soccer, and has partnered with famous brands and individuals. Given the scope of the trademark’s popularity, Adidas claimed that Tesla had full knowledge of the registration and the fame of the 3-Stripes trademark.
The notice of opposition filed by Adidas asserted two claims. First, a likelihood of confusion of affiliation, which will damage Adidas in its advertising and sales efforts. Second, dilution of the distinctive quality of Adidas’ 3-Stripes trademark, which Adidas argues will also damage the company.
The two companies work in different business spheres, with Tesla being a manufacturer of automobiles and Adidas being an apparel company. However, Adidas expressed concern that the goods referenced in the Tesla registration are the same goods Adidas sells, such as baseball hats and jackets; therefore, the goods are sold to the same types of consumers looking for the same types of p... Read the rest
Former NFL Player Sues Under Armour For Trademark Infringement
By Joseph Mandour on February 8, 2017
San Diego – Former National Football League and University of Maryland star Shawne Merriman, along with his company Lights Out Holdings, filed a lawsuit against sportswear company Under Armour over the trademarked phrase “Lights Out.”
“Lights Out” is a phrase Lights Out Holdings trademarked back in 2007. It was Merriman’s nickname throughout his football career, beginning in high school when he knocked four players unconscious during a game. “Lights Out” eventually became the name of his successful San Diego-based company offering multiple product lines.
Recently Under Armour launched a basketball shoe line with Stephen Curry titled “Curry 3 Lights Out,” along with a “Lights Out” mobile game.
Merriman is claiming that Under Armour’s use of the phrase “Lights Out” is a trademark infringement, and that Under Armour is using the recognition of Merrirman’s Lights Out branding to appeal to customers. Merriman argues that the popularity of his brand along with Under Armour’s similar use is likely to lead to confusion among consumers as to brand affiliation.
The lawsuit also claims federal unfair competition, common law unfair competition, false endorsement, violation of the California business and professions code, and breach of contract.
Merriman’s company is seeking a permanent injunction and damages to be decided upon by a jury trial. It also seeks $2 million for every counterfeit item sold, offered for sale, or distributed. Merriman and Lights Out Holding attempted to negotiate with Under Armour in hopes of avoiding the lawsuit, but the parties were unable to reach an agreement.
In response to the lawsuit, Under Armour released a statement saying “We are aware of Mr. Merriman’s claims and find them without merit. Under Armour plans to defend the case.”
This isn’t the first time the two parties disputed over the “Lights Out” trademark. In March 2015, they reached a settlement over a similar trademark infringement claim.
The newest lawsuit was filed in the U.S. District C... Read the rest
LA Chargers Trademark Application Opposed by LA Gear
By Joseph Mandour on January 27, 2017
Los Angeles – The former San Diego Chargers recently announced that they are moving and will become the Los Angeles Chargers. However, the company owning the team, the Chargers Football Company LLC, has run into some trouble getting a trademark for “LA Chargers”.
Chargers Football Company filed a trademark in January 2016 on an intent to use basis for “LA Chargers”. The trademark was intended to be broad, covering a variety of sports merchandise from posters to toys to athletic gear. The trademark was published for opposition on December 20, 2016. That same day, L.A. Gear, Inc., filed a Notice of Opposition against the Application. LA Gear is a sports footwear company founded in 1979.
LA Gear expressed concerns in its opposition that consumers would be confused between the Chargers trademark application and the 22 trademarks that LA Gear had already filed dating back to 1985. LA Gear argues that because the sports and LA-themed merchandise will be marketed to the same consumers, people may believe the Chargers’ products are connected to LA Gear. Consumers, for example, may assume the products originated from or were sponsored by LA Gear. If a consumer is dissatisfied with the Chargers product, it could damage LA Gear’s reputation.
LA Gear’s concerns apparently only apply to the proposed LA Chargers trademark, not the Los Angeles Chargers trademark. The Chargers have a few options even if the Trademark Trial and Appeal Board rules in favor of LA Gear. The Chargers can fight the issue in federal court. One argument would be that the trademark is weak because other LA sports entities have existed alongside LA Gear for many years. The LA Dodgers existed before LA Gear, and the two brands coexisted for more than 30 years. The LA Galaxy registered its trademark in 2008, with no opposition by LA Gear. It would appear that LA Galaxy is more similar to LA Gear than the LA Chargers. The Chargers can argue that since these organizations exist alongside L... Read the rest
DJ Threatens to Sue to Get Trademark for Cat’s Meowingtons Name
By Joseph Mandour on January 4, 2017
Los Angeles – A cat named Meowingtons is at the center of a recent trademark controversy. Meowingtons is a black and white cat adopted from the Humane Society by famous EDM DJ Deadmau5 (pronounced dead mouse). The Meowingtons trademark is currently registered to Emma Bassiri, but Deadmau5 is threatening to sue to cancel her trademark registration.
The DJ, whose real name is Joel Zimmerman, began using the Meowingtons name publicly in 2010. The Meowingtons name is an extensive brand. Several social media accounts are run under the name. There is a Meowingtons headphone line. The name is featured on Deadma5 merchandise, and even was the name of a tour. While the branding is distinct from Deadmau5 branding, it’s closely tied to the Deadmau5 brand.
In 2015, Zimmerman went to trademark the name Meowingtons and found it was already registered to Bassiri. Bassiri lives in Florida and uses the name for her website selling cat-themed merchandise, which opened in 2014.
Zimmerman claims Bassiri knows the name Meowingtons is connected to his business and is trying to profit off an implied connection, since she follows him on social media and even posted a picture of a nearly-identical cat from her social media. He said he made repeated requests for her to cease using the name, but thus far she has refused to comply.
Zimmerman makes multiple claims in a response to office action related to his trademark application. He has also argued that confusion among consumers is likely and to support this he claims to have evidence of actual confusion in the form of several examples of people asking if he’s involved with the store along with examples of people tagging his cat’s social media profile when posting about their purchase from Bassiri’s website.
Consumers aren’t just being confused about Zimmerman’s connection to the other site, Zimmerman argues his brand perception is being damaged by association. Bassiri’s company received an “F” rating by the Better Business Bureau, with complaints about product quality, customer service, and false and misleading advertising. These customer frustrations could damage their perception of Zimmerman’s Meowingtons brand.
Since Bassiri currently owns the trademark registration, Zimmerm... Read the rest
Kardashian Sisters File Opposition to Blac Chyna’s Kardashian Trademark
By Joseph Mandour on December 13, 2016
Los Angeles – The sisters Kardashian are in another trademark battle, and this time its family. This year Blac Chyna, who is the mother of Rob Kardashian’s (the sister’s brother) first child and the star of Rob and Chyna, filed a trademark application for ANGELA RENEE KARDASHIAN with the United States Patent and Trademark Office. Last week, the corporations owned by the Kardashian sisters filed an opposition to the trademark claiming that its use would confuse the public.
Chyna and Rob have been talking about getting married, so it would be her future married name that she is trying to trademark. But the attorneys for the Kardashian sisters, Kim, Khloe, and Kourtney, say that this trademark would cause damage and irreparable injury to their reputations and goodwill if it were to be granted. The corporations owned by the Kardashian sisters state that Blac Chyna is deliberately seeking to profit off of the goodwill they have created in the Kardashian name. The sisters concern is that Blac Chyna’s use of the Kardashian name will cause the public to believe it is one of their products.
Although the attorneys of both sides have not commented because the case is active, a source said that the Kardashian’s trademark attorneys automatically oppose anyone trying to trademark the family name. It has been suggested that the sisters might not even know of the opposition but that is very unlikely since an attorney cannot act without the consent of a client. At first it may appear that this would cause a rift in the family, but then one must consider that the family is all about publicity and staying in the public eye. So, it is very possible that not only do the sisters know, but that they also planned the entire scenario just to concoct another story line for their various TV shows.
The trio’s corporations and named plaintiffs are Khloemoney Inc., 2Die4Kourt and Kimsaprincess Inc., and the lone defendant is Lashed, LLC. Thus far an Answer has not been filed to the Opposition. The Answer is due by January 10, 2017, and if one is not filed the sisters will automatically prevail.... Read the rest