Snuggie Maker Sues Amazon for Trademark Infringement

By Joseph Mandour on December 9, 2016

amazonLos Angeles – The creator of the Snuggie blanket, Allstar Marketing Group, along with two other companies that sell products on Amazon are in a lawsuit with the mega online retailer alleging that it committed trademark infringement. The lawsuit claims that Seattle-based Amazon is allowing many other competitors to flood Amazon’s marketplace with counterfeit items which is causing a loss in consumer good will and profit.

The alleged counterfeit items are being sold by companies in China, Japan, and Thailand. The counterfeits price their comparable items below market and otherwise try to confuse consumers into buying the counterfeit while believing it is the legitimate version. Online retailers have long been known as a counterfeiting haven because it is easy for counterfeiters to pop up and then disappear just as quickly when the infringement has been discovered. Amazon has actively taken a stance against counterfeit items but it is a never-ending task. To prevent the problem from occurring at all, companies like the NFL and Birkenstock refuse to sell their products on Amazon.

The three companies involved in this recent lawsuit include Allstar Marketing Group LLC, Ideavillage Products Corporation, and Intel Products Corporation. Ideavillage sells Copper Fit compression sleeves and Intel sells Magic Tracks toy racetracks. All three of the companies also sell As Seen on TV products. The counterfeiters on Amazon often use fake images of the products to entice buyers. At times it can be virtually impossible to determine which is the counterfeit and which is the legitimate product.

A few weeks ago, for the first time ever Amazon filed two of its own lawsuits against counterfeiters. The lawsuits are on behalf of TRX which is a maker of athletic training equipment, and Los Angeles-based Forearm Forklift which sells a patented device which facilitates picking up and moving large items. Both lawsuits are still pending and thus far representatives at Amazon aren’t commenting. However, sellers on Amazon can now be encouraged that Amazon is... Read the rest

Ohio State Accuses CafePress of Trademark Infringement

By Joseph Mandour on November 9, 2016

cafepresslogoSan Diego – Ohio State University has filed a trademark infringement lawsuit in federal court in Columbus, Ohio against CafePress, an online retailer based out of Louisville, Kentucky. The lawsuit claims that the online retailer is selling apparel and other merchandise that infringes on Ohio State’s trademarks.

The lawsuit states that merchandise with “Buckeyes” or “O-H-I-O” and pictures of its football coach Urban Meyer are infringing since the uses are without permission from the university.
The lawsuit claims that CafePress “unlawfully appropriated Ohio State’s trademarks and violated the publicity rights assigned to Ohio State by head football coach Urban Meyer.” In May of 2012, Coach Meyer gave Ohio State permission to trademark and use his image for merchandising and other marketing purposes.

The lawsuit also claims that CafePress sold products such as shirts, bags, mugs, calendars and more that appeared to be endorsed, licensed or approved by Ohio State University when in fact this is not the case. CafePress allows users to place custom logos on various types of merchandise and perhaps as a result has gained a reputation as a haven for infringing merchandise. CafePress has declined to make any comment regarding the allegations.

Deborah Mitchell, a professor of marketing at Ohio State’s Fisher College of Business, commented on the need for universities, particularly Ohio State, to become more protective of their brand and show the value in what it can do for the university. This lawsuit continues a recent trend of universities being more proactive in protecting trademarks.

Apart from preserving valuable trademarks, universities are also increasingly searching for avenues to generate more revenue, so product sales are becoming more of a focal point. With coaches’ salaries nearing the $10 million per se... Read the rest

Trump TV Trademark Might Be Taken

By Joseph Mandour on October 31, 2016

Orange County – In a little more than a week, our country will elect a new president. Early voting aside, it is estimated that not all Democrats are voting for Hillary Clinton and not all Republicans are supporting Donald Trump. If for some reason Trump doesn’t win on November 8th, he may already have his contingency plan in place for what he will do next.

For weeks, there have been rumors that Trump may start his own television network if the election doesn’t go his way. It has also been suggested that he would consider taking over an existing network. For what it’s worth, Trump has stated that he has no desire to start a network. “I have no interest in Trump TV,” Trump told an Ohio radio host. “I hear it all over the place, and you know, I have a tremendous fan base. … But I just don’t have any interest in that. I have one interest, and that’s on Nov. 8.”

Although Trump is very focused on the campaign, if there is a remote chance that he does want to get his own television network, he’s going to have to fight for the right. A New York physician and lifelong Democrat, Mark Grabowsky, has filed for the “Trump TV” trademark. If Trump does indeed want the trademark to create his show, his team will have to go to the U.S. Patent and Trademark Office to fight for it.

Even if Trump TV is not a current interest, Trump does have a history of making a profit from trademarking his personal brand and may be upset that someone else has the trademark to a possible profit avenue that he would want to pursue someday in the future.

Earlier this month, Trump’s campaign debuted the first episode of “Trump Tower Live,” a talk show that you can stream on Facebook. In true Trump fashion, he launched his own “news program.” It has been suggested that this online broadcast is a warm up of what’s to come.

Grabowsky has already admitted to a newspaper that he has no intentions of actually using the trademark, which means that it will ... Read the rest

Lucasfilm Sues Jedi School Over Trademark

By Joseph Mandour on October 25, 2016

moviesLos Angeles – Lucasfilm filed a lawsuit this month against the owner of New York Jedi and Lightsaber Academy. The business in question here teaches classes on how to use lightsabers and act out Jedi battles for “illuminated stage combat” according to the New York Jedi website.

Lucasfilm, part of the Walt Disney parent company and creator of the Star Wars films, has a history of legal cases showing that it aggressively protects its intellectual property. In this case Lucasfilm claims that the school’s use of the words “Lightsaber” and “Jedi” are violating its trademark rights. The owner of both New York Jedi and Lightsaber Academy, Michael Brown, had previously asked for licensing permission from Lucasfilm but was denied. He continues to run his businesses even after receiving multiple cease-and-desist letters.

According to their official New York Jedi Facebook page, NewYorkJedi.com “is…designed specifically for its members to create a character that would use a weapon referred to as a lightsaber, and sharing stage-based techniques to use said weapon, while embodying their character through creative costuming and training.” They offer private lessons and group classes. The teachers include dancers, martial artists, and cosplayers who teach choreography.

Lightsaber Academy, based in San Francisco, California, teaches lightsaber techniques and Jedi warfare. They also have classes at comic book conventions and offer “certification in lightsaber instruction” per their website. For $10, you can buy an official LSA (Lightsaber Academy) patch which has been called into question. The lawsuit claims the design is too similar to Lucasfilm’s Jedi Order logo. Lightsaber Academy is a “Consortium for Academic, Stage Combat, and Sport Dueling Lightsaber Instructors” and according their Facebook page, and they sell the patches through their website LightSaberAcademy.com. They also offer t-shirts with the questionable LSA logo on the website.

Michael Brown is the owner of several schools, including some other institutions not mentioned here, that have been in operation since 2005. Lightsaber Academy, Inc. has recently filed a trademark application for a logo that bears a striking resemblance to the Jedi Order logo used in t... Read the rest

Tasty #Burger Chain Claims #Chipotle Has Infringed its #Trademark

By Joseph Mandour on August 12, 2016

cheeseburgerOrange County – Chipotle’s announcement about opening a new burger chain this fall with sustainable ingredients and beef raised free from hormones and antibiotics was met with critics. Their beef? A competitor is claiming trademark infringement.

Chipotle’s branding for its new chain consists of a red banner with white text of the chain’s trademark: “Tasty Made.” The East Coast burger chain whose branding consists of a red banner with white text of the its trademark “Tasty Burger,” is claiming trademark infringement.

Tasty Burger opened in 2010, operating out of six East Coast locations and serving as the official burger of the Boston Red Sox. The company filed a trademark application in 2010, which covers the words “Tasty Burger” inside a stylized banner (no reference to the use of the color red). The trademark was placed on the Supplemental Register, covering trademarks that are at least somewhat descriptive. Once a company gains enough distinctiveness, which Tasty Burger CEO David DuBois claims the company has achieved, it can file a trademark to the Principal Register.

Chipotle argues that the trademark office would not register the Tasty Burger trademark to the principal register due to it being “merely descriptive and not enforceable,” and as a result the company fully intends “to move forward with the name Tasty Made for our burger restaurant and strongly believe that we are on solid footing in doing so.”

A Chipotle spokesperson said, “We believe there is sufficient difference between the names and logo marks so as not to cause consumer confusion, and we believe both brands can co-exist.”

DuBois said after Chipotle’s new chain announcement his company received several emails and texts from customers saying Chipotle took their name, arguing the branding is similar enough to cause customer confusion. The similarities are especially unusual considering the red logos with white text. DuBois also claimed Chipotle would be familiar with Tasty Burger branding given many of its locations are near Chipotle (even sharing a landlord at one location) and because the legal team would’ve needed to search for any existing registrations surrounding the phrase Tasty Made.

Tasty Burger sent C... Read the rest

Rapper Changes Name After #Burberry Files #Trademark Lawsuit

By Joseph Mandour on July 29, 2016

scarfLos Angeles – After months of cease and desist requests, Burberry filed a trademark infringement and dilution lawsuit against rapper and producer Perry Moise. Burberry, an English luxury fashion brand founded in 1853, took issue with the rapper using the Burberry trademark as the rapper’s stage name.

Moise adopted the stage name “Burberry” and released an EP in May 2016. The album cover implemented strikingly similar design features to the iconic Burberry brand, including a checkered print, an equestrian logo, and nearly identical font. Moise’s album featured a track with celebrity Kylie Jenner making her singing debut, increasing the potential reach of the album’s popularity. The possible scope of the album along with Moise’s plans to release new music and go on tour this fall prompted Burberry’s recent legal action.

The concerns by Burberry about Moise are twofold. The use of Burberry branding in any regard is viewed as an abuse of Burberry trademarks, and as a spokesperson stated, “as a global luxury brand, Burberry considers the protection of its intellectual property vital for the health of its business and to safeguard its customers.” Using Burberry trademarks in any industry is obviously concerning to the brand since it can lead to trademark dilution.

The second issue is the use of Burberry branding in the music industry. Central to the Burberry image is its establishment as a lifestyle brand, and music plays a key role in that branding. Burberry uses live music in its runway shows, created a website producing videos of emerging independent artists, and became the first fashion brand to get a channel on Apple music. Moise’s use of Burberry trademarks could cause confusion among consumers when seeking out Burberry musical content and finding Moise’s music instead.

Burberry contacted Moise with a cease and desist letter after the debut album release with no response. Over the next few months, the company made multiple contact attempts with emails, letters, and phone calls and received no response. They recen... Read the rest

#Ivanka #Trump in #Trademark Lawsuit with Luxury #Shoe Brand

By Joseph Mandour on July 4, 2016

shoes-heelsLos Angeles – Ivanka Trump has been called out for infringing one of Aquazzura’s most popular shoe designs and renaming it as her own. Italian-based luxury shoe brand Aquazzura recently alleging trade dress infringement, unfair competition and deceptive trade practices against Trump. Since Trump did not respond to the initial accusations, Aquazzura filed a trade dress infringement lawsuit against her, her company IT Collection, and her licensee Marc Fischer.

The footwear in question made by Aquazzura that was allegedly copied is called “Wild Thing.” Trump’s version is called “Hettie.” Side by side the two shoes look almost identical, including details like the shape of the shoe, the fringe on the toes, and the tassel at the heel. Trade dress is a form of trademark protection that extends to the overall commercial image of a product that identifies the source of the product and distinguishes it from those of others. Trade dress may include the design, shape or configuration of a product.

This is not the first time Aquazzura has claimed that Trump has “copied” its designs. The lawsuit claims that at least two more of its shoe designs have been copied. Trump’s “Teagin Pointy Toe Pump with Tassel” looks very similar to Aquazzura’s “Forever Marilyn Shoe” as does Trump’s “Necila” compared side-by-side with Aquazzura’s “Belgravia.” According to the Italian brand, Trump and her company know exactly what they are doing. In today’s fashion retail market, fringe sandals are very popular this season, and Trump is looking to profit off the in-demand shoe style.

Aquazzura, a brand that is stocked by luxury retailers like Neiman Marcus, was launched in 2011 and founded by Colombian-born designer Edgardo Osorio. In addition to heels like “Wild Thing,” the Florence-based brand designs and sells luxury footwear including sandals, flats, booties, and wedges. The name Aquazzura was inspired by the blue seas of Italy where the company is based. Aquazzura alleges that has a well-known style of shoes, which clearly demand a premium since the “Wild Thing” shoe will set you back $700. By contrast, Trump’s “... Read the rest

#Deadmau5 Sues #Vape Company for #Trademark Infringement

By Joseph Mandour on April 7, 2016

mouseLos Angeles – Electronic dance music star deadmau5 (pronounced “dead mouse”) is suing executives of an e-cigarette company for alleged trademark infringement. The DJ, whose real name is Joel Zimmerman, filed a federal lawsuit in California on March 31, 2016 saying West Coast Vape Supply is intentionally infringing on his deadmau5 trademark.

Zimmerman is alleging that the deadmodz vape brand is confusing deadmau5 fans who think Zimmerman is behind the electronic cigarette line, according to the lawsuit.

Zimmerman claims the deadmodz electronic cigarette line is trying to capitalize on his fame and take advantage of a decade long career. He is suing for trademark infringement and false association, and he is seeking statutory and punitive damages and a permanent injunction to ban West Coast Vape from using deadmodz. Zimmerman’s trademark attorney publicly sent out a statement saying they’re suing to protect not just the artist’s trademark but also his fans.

The lawsuit claims deadmau5 is a brand Zimmerman has been building for more than a decade. It also explains the origins of his onstage persona. In 2002, Zimmerman took his computer apart and found a dead mouse inside. When he posted the story online, people started referring to him as “dead mouse guy.” He embraced the new nickname and tried to change his screen name to “deadmouse.” In doing so, he found that the Internet Relay Chat channel he was using limited usernames to eight characters. Trying to be creative, he used leet spelling, and he became deadmau5.

Not only is the name “deadmodz” similar to “deadmau5,” Zimmerman argues that the vape company also copied the bubble style font Zimmerman uses in his logo. In an effort to avoid the litigation, Zimmerman’s music attorney sent several letters to Alham Benyameen, the principal of West Coast Vape.

After an initial cease and desist letter, sent on February 5, 2016, Benyameen substantially changed his website and logo design. In response, Zimmerman’s attorney made it clear that those minimal... Read the rest

#GreatHarvest Files #Trademark Lawsuit Against #Panera Over Slogan

By Joseph Mandour on March 17, 2016

breadSan Diego – Great Harvest Bread Company has filed a trademark lawsuit, alleging that Panera Bread’s new advertising campaign slogan is confusingly similar to Great Harvest’s corporate slogan.

Both companies are known for their baked goods, with Great Harvest operating more than 200 owner-operated stores and Panera operating close to 2,000 locations. Great Harvest’s corporate slogan is “Bread. The way it ought to be.” The company has used the slogan since August 2014, applied for a trademark in October 2014, and received trademark registration in December 2015.

In June 2015, Panera launched its new advertising campaign “Food as it should be,” which speaks to the company’s pledge to cease using artificial ingredients in its food, claiming it to be more natural.

After Panera launched its advertising campaign, Great Harvest sent a cease and desist letter, asking Panera to stop using the phrase in advertising and promotion. After receiving the letter, Panera then applied for the trademark “Panera Food as it should be”. Great Harvest responded by formally filing an opposition to Panera’s trademark with the United States Trademark Trial and Appeal Board “the TTAB”..

Great Harvest’s concern over Panera’s phrase rests on the possibility of customer confusion. Both Great Harvest and Panera are already known for selling similar baked goods and products. Great Harvest feels that with the similarity in product as well as slogan, it is likely that consumers will be confused between the companies. Great Harvest feels that the similarity in slogans will only breed confusion between the companies that obviously already have similarities. The two organization’s phrases, Great Harvest argues, have the same conotation in a consumer mindset, thus violating Great Harvest’s trademark. Great Harvest further argues that Panera’s use of the phrase intentionally causes confusing among consumers about an implied relationship between the two organizations that does not exist.

Great Harvest president Eric Keshin made a st... Read the rest

Kylie Minogue Opposes #Kylie Jenner’s Attempt to #Trademark “Kylie”

By Joseph Mandour on March 9, 2016

musicLos Angeles – Two famous entertainers are beginning to battle over the trademark rights to the name “Kylie.” Reality TV star Kylie Jenner filed trademark applications for the name in May 2015, which Australian pop-star Kylie Minogue formally opposed in late February 2016.

Jenner applied for two trademarks, one would protect the name “Kylie” for advertising services and one would protect the name in regard to entertainment services. Minogue’s formal opposition is for the marketing and advertising services. Minogue has yet to formally oppose the entertainment services trademark, although it is likely she will.

Minogue opposed the trademark application through KDB Pty Ltd., a company she directs with her parents. The opposition’s argument is that approval of Jenner’s trademark would lead to confusion among consumers and dilute Minogue’s brand.

Minogue argues her brand as “Kylie” is strong and shouldn’t be infringed. She’s been performing as “Kylie” before Jenner was born, selling more than 65 million albums, earning a variety of awards including Grammys, and becoming the first-ever woman and first foreigner to win Britain’s Music Industry Trusts’ Award. Her debut album was titled “Kylie” and she’s owned the domain name kylie.com for more than year before Jenner’s birthdate.

Further, Minogue currently owns trademarks for “Kylie” in some entertainment aspects, such as music recording, as well as trademarks for the phrases “Kylie Minogue darling,” “Lucky-the Kylie Minogue musical” and “Kylie Minogue.”

The opposition not only stresses the possible confusion between Minogue and the “Kylie” brand, but Jenner’s capacity to dilute Minogue’s brand if she is granted the trademark. The opposition cites cases of Jenner’s past controversies, such as social media posts and photo shoots that drew criticism from some communities. So Minogue is claiming that if there is confusion, it will have a negative impact on her brand. Minogue argues that there will be a larger impact on her brand if “Ky... Read the rest

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