Kroger’s Trademark Injunction Request Against Lidl Is Denied

By Joseph Mandour on July 27, 2017

Los Angeles – The Private Selection versus Preferred Selection trademark battle between grocery giants Kroger and Lidl will proceed, as a federal judge in Richmond Virginia has denied Kroger’s preliminary injunction request.

The issue at play is over alleged trademark infringement over the company’s logos for a sub-set of their products. Kroger has a logo for its “Private Selection” brand, found on more than 1,000 of its products. Lidl has a logo for its “Preferred Selection” products, found on about 160 out of 3,000 products.

Kroger is headquartered in Cincinnati, Ohio and operates more than 2,800 grocery stores. It is the largest US-based grocery chain.

Lidl is a company based in Germany with more than 10,000 stores in Europe. The company is slowly entering the U.S. market, currently operating 17 stores. There are four in the works to launch in the Richmond Virginia area, where the case was heard. Their goal is to have more than 100 stores open in the United States by mid-2018.

While Lidl filed the trademark for its Preferred Selection logo last September and Kroger was made aware of it at least by November, Kroger waited to file a lawsuit until June 30 of this year. This was less than two weeks after Lidl opened its first store in the United States.

Kroger claims the similarity in the trademarks will lead consumers to falsely believe the companies are related, giving Lidl an unfair advantage in trading of Kroger’s goodwill. When the case went before a judge, both companies presented expert witnesses who gathered consumer data trying to make a case for or against the likelihood of consumer confusion.

U.S. District Judge John A. Gibney Jr. denied the request for a preliminary injunction, saying that while the logos look “somewhat alike,” they lack identical or similar meanings. The case is set for trial on January 11.

Lidl has argued that Kroger is using the lawsuit to try to damage its emergence into the American market. The lawsuit is meant to “distract from the positive reviews garnered by Lid... Read the rest

Nike Opposes Rob Gronkowski’s Trademark Application

By Joseph Mandour on July 12, 2017

San Diego – Last year New England Patriot TE Rob Gronkowski’s company, Gronk Nation L.L.C, filed a trademark application of a silhouette of the NFL star doing his signature “end zone spike.” In response, Nike has filed a formal opposition with the US Patent and Trademark Office Trial and Appeal Board requesting that Gronk’s application be denied.

Nike claims that the Gronk Spike trademark is too similar to its own very popular design trademark of the silhouette of Michael Jordan flying through the air with a basketball commonly known as the “Jumpman.” When the two trademarks are put next to each other, there are obvious similarities. First of all, both trademarks feature popular athletes in silhouette. Both trademarks depict an athlete with legs apart and one arm raised with a ball in hand. Nike claims that consumers will be confused by the similarities of the trademarks and likely feels the need to protect it because it is prominently used on products that generate enormous amounts of revenue for Nike.

Critics of Nike’s opposition have argued that Nike does not have much of a case. While there are similarities between the design trademarks, there are also differences. Gronk’s trademark shows him clearly holding a football while Nike’s is a basketball. The poses are also different. Regardless, the primary question is whether consumers will be confused as to source or wonder if the trademarks are somehow related.

In an interesting twist, Gronkowski is already endorsed by Nike. The star athlete has been featured in several of Nike’s national commercials. He even wears Nike cleats during NFL games. At some point Gronk may want to make a business decision since he will likely not want to jeopardize his relationship with the sports apparel giant.

Thus, it is expected that Nike and Gronkowski will work to settle this dispute outside of court. Troy Carnrite, Gronkowski’s trademark attorney, stated that Rob Gronkowski has created one ... Read the rest

Forever 21 Sues Gucci, Attempts to Have Trademarks Cancelled

By Joseph Mandour on July 6, 2017

Los Angeles – Los Angeles based fast-fashion company Forever 21, filed a lawsuit against the internationally famous Italian design house Gucci last week. This lawsuit is the latest development in a series of lawsuits by and against Forever 21.

The dispute between Gucci and Forever 21 began in October of 2016, when the Italian company sent a cease and desist letter to Forever 21. In the letter, Gucci demanded that Forever 21 cease all sales of certain garments, specifically any products that features a blue-red-blue stripe or green-red-green stripe. Gucci currently holds numerous trademark protections on garment stripe combinations. Some of those trademarks have been in place since 1988. The specific articles in question are three bomber jackets, a choker neckless, and a sweater. Gucci sent two more subsequent letters, one in January and another in February of 2017.

Forever 21 responded to the letters by filing a lawsuit against Gucci in U.S. District Court for the Central District of California in Los Angeles. In the lawsuit, Forever 21 has taken two courses of action against Gucci. First, Forever 21 is seeking declaratory relief which is basically a judgment of a court which determines the rights of parties without ordering anything be done or awarding damages. It is typically used to settle legal controversies in a favorable venue and allows a company to have certainty that its action are authorized rather than have a litigation cloud hang over the business. In so doing, Forever 21 is hoping a federal court in Los Angeles will rule that they are not infringing on Gucci’s trademarks. Such a ruling would eliminate Gucci’s case against Forever 21.

Furthermore, Forever 21 is suing to have Gucci’s nine trademark registrations in question cancelled, as well as cancelling any pending applications for related trademarks. Forever 21 argues that stripes and particular color patterns are enormously popular and that they do not designate the source of goods. Many garments and accessories are decorated with stripes and as such Gucci should not be a... Read the rest

PayPal Claims Trademark Infringement Over the Pandora App Logo

By Joseph Mandour on May 25, 2017

San Diego – The famous online payment app, PayPal, is suing the famous online music streaming app, Pandora, for trademark infringement and trademark diffusion. The lawsuit, which was filed in Manhattan federal court, is in reaction to Pandora’s change of its logo late last year.

Trademark dilution varies from standard trademark infringement in that it focuses on famous trademarks. The law forbids the use of trademarks that are similar enough to a famous trademark such that it would lessen the uniqueness of the famous trademark.

When Pandora changed its logo in October of 2016, the streaming music service launched a logo that was drastically simplified, featuring a blue capital ‘P’ with a white background. PayPal claims that the logo is so similar to PayPal’s long established logo, which features two blue capital ‘Ps’ on white background, that it is causing customer confusion. In the lawsuit, PayPal included many examples of posts on social media from customers who admitted to being confused between the two apps. One tweet from a customer stated that they were confused when they clicked on the PayPal app and “The Bare Naked Ladies” started playing.

PayPal claims that the infringement is damaging the company in several ways. First, PayPal claims to have invested considerable amounts of time and energy into creating an “iconic” logo. In a statement they made regarding their logo, PayPal outlined how every piece of the logo was meticulously crafted. Every aspect of the logo, from the shape of the Ps, their proximity to each other, the color scheme, the shading, and even the placement on the app tile was designed to give the customer a sense of convenience, simplicity, and security. Since Pandora’s trademark is so similar, PayPal is concerned that the confusion will erode the customer confidence PayPal has built over the years.

Also, PayPal prides itself on customer convenience. If clients are mistakenly clicking on Pandora instead of PayPal, it adds an extra step to the purchasing process. This, they feel,... Read the rest

Faraday Bicycles Sues Faraday&Future Electric Car Company for Trademark Infringement

By Joseph Mandour on May 2, 2017

Los Angeles – Faraday Bicycles, Inc. is suing a Los Angeles, California based electric car startup company, Faraday&Future Inc., over alleged trademark infringement. The lawsuit was filed in the Northern district of California last week. This is the latest development in nearly a year and a half of conflict over the trademark.

Faraday Bicycles, which was purchased by Pon Holdings in January 2017, registered its Faraday trademark in 2013 and has been using the trademark since 2012. Faraday&Future applied for its Faraday Future trademark for “Concept cars and motor vehicle prototypes” in 2015. The United States Patent and Trademark Office denied the application in March of 2016, stating that the trademark was too similar to Faraday Bicycles’ Faraday registration such that it was likely to create confusion among consumers. However, in response to the Office Action Faraday&Future argued that consumers would not be confused and the Examiner subsequently approved the application.

Also in March of 2017, the Faraday Bicycles sent Faraday&Future a cease and desist letter. In the letter, the bicycle company states that consumers have been confused, and will likely continue to be confused about the company’s products, origin or sponsorships. Faraday Bicycles is claiming that this confusion has caused irreparable damage to the company’s image and reputation. As such, Faraday Bicycles is suing Faraday&Future for unspecified damages, legal fees, and an immediate injunction.

Faraday&Future entered the market in 2014 and is looking to be direct market competitors to Tesla. On their website, Faraday&Future announced that they will be creating a self-driving car with plans to roll out a prototype in 2018. Faraday&Future already has more than 1,400 employees and are in the midst of building a one-billion-dollar factory in Nevada. However, construction of the factory was recently put on hold because the company apparently is past due on payments toward $58 million in debt.

This is not the first-time Faraday&Future has faced legal troubles. Faraday Future has also been sued by its landlord, Beim Maple Properties, for allegedly missing $100,000 in rent for one of its warehouses. Additionally, The Mill, a special-ef... Read the rest

KFC Files Lawsuit to Protect Finger Lickin’ Good Trademark

By Joseph Mandour on April 19, 2017

San Diego – Two years ago, Brain Mastrosimone bought 70 acres of land along Canadaigua Lake in New York. Canadaigua Lake is just one of many lakes in upstate New York collectively known as the Finger Lakes. Mastrosimone’s plan is to develop the property with a little bit of every type of business he can think of. His plans for development include a brew hub, pavilion, and even a sunflower patch. He has even developed a slogan for the family owned business, “Finger Lakin’ Good.”

National fast food chain, KFC Corporation, does not appreciate the new slogan. KFC is suing Mastrosimone for alleged trademark infringement of its famous Finger Lickin’ Good slogan. According to a spokesperson for KFC, “’Finger Lickin’ Good’ is one of KFC’s oldest and most important trademarks.” KFC, which initially filed for trademark protection of its “Finger Lickin’ Good” slogan in the 1960s, claims that the Mastrosimone’s slogan is too similar. KFC is claiming that it draws a false connection between the two companies that may confuse consumers. Furthermore, KFC claims that Mastrosimone is preying on the good will developed by KFC over the years, and his use of their slogan could damage the company. The concern is that consumers could think that the products and services offered by Mastrosimone are associated or endorsed in some way by KFC.

Mastrosimone does not feel that he is in any way infringing on KFC’s company or branding. He says his logo in no way looks like that of KFC’s. He says he is not promoting fried chicken or a fast food chain and that the slogan is not intended to connect itself to the fast food chain. Instead, he says it is a clever play on words connecting his property to the nearby popular lakes.

Mastrosimone’s trademark lawyers are encouraging him to change his tag line even though his trademark applications have been approved by the United States Patent and Trademark Office.

Mastrosimone apparently does not have the money to fight KFC in court and has claimed that this is just bullying by a large corporation. Mastrosimone is looking to his community to help fund his defense. He is selling T-shirts and has started a GoFundMe campaign to try to raise money to offset legal fees.

... Read the rest

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

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