Orange County Trademark Attorney® Blog

November 2011 Archives

Tootsie Roll Sues Footwear Company For Trademark Infringement Over "Footzyrolls"

November 23, 2011,

high-heel.jpgOrange County - Tootsie Roll Industries, makers of the Tootsie Roll candy have recently filed suit in a federal district court in Illinois alleging that footwear company Rollashoes committed trademark infringement when it marketed a line of shoes called, "Footzyrolls." Tootsie Roll alleges in its complaint several causes of action ncluding trademark infringement, trademark dilution, and unfair competition.

Tootsie Roll claims that Rollashoes' ove to name the slippers "Footzyrolls" was "willful, malicious, and fraudulent." Tootsie Roll also claimed that the name will confuse consumers into believing that the shoe maker is somehow associate with Tootsie Roll.

Trademark infringement occurs when someone other than the holder of a valid trademark uses a trademark that is confusingly similar to the valid trademark. One of the Sleekcraft factors for determining trademark infringement is the similarity of the goods at issue. The products being compared in this case are footwear and candy. Footzyrolls by Rollashoes are roll up slipper shoes marketed to women and designed to be carried in handbags and purses. Rollashoes advertises that the shoes are completely roll-able and foldable.

Tootsie Roll, on the other hand, manufactures candy products. Rollashoes claims that the difference in goods is clear and that its product does not cross paths in the market with the Tootsie Roll. Sarah Caplan, co-founder of Rollashoes, noted that, "By the way, you can't eat our shoes." However, the similarity of goods is not dispositive and is merely one of several factors considered.

Tootsie Roll also included a claim for trademark dilution. Trademark dilution occurs when a trademark similar to a famous trademark is used on a non-competing class of goods in a way that lessens the impact of the original trademark. Tootsie Roll has claimed that use of the Footzyrolls brand name, a similar sounding trademark to Tootsie Roll, amounts to trademark dilution. In order to prevail on the dilution issue, Tootsie Roll must prove that its trademark is famous and that the Footzyrolls trademark has an impact on the Tootsie Roll trademark.

Cadbury Wins Three-Year Trademark Battle with Nestle

November 22, 2011,

candy-easter-cadbury.jpgOrange County - In a trademark dispute with Nestle spanning more than three years, British chocolate candy manufacturer Cadbury has successfully secured a trademark for the color purple used in its purple candy wrappers. Cadbury has been using the purple packaging for over 100 years and began seeking exclusive trademark rights to the shade in 1995.

After the British Intellectual Property Office (IPO) granted Cadbury the purple trademark in 2008, Nestle, Cadbury's biggest competitor, responded to the registration with a notice of opposition. In its notice, Nestle argued that "the trademark is one which is not unique to the applicant and should be free for everyone in that line of trade to use." Nestle went on to claim in its opposition that by registering the color purple, Cadbury had acted in bad faith.

Earlier this month, the IPO ruled that the particular shade of trademarked purple, known as Pantone 2865c, was indeed distinctive enough for Cadbury to own exclusive rights to. However, the trademark can only be used on certain Cadbury candy wrappers and Nestle still has the option of filing an appeal against the ruling.

The IPO's recent ruling will give Cadbury exclusive rights to use the purple on packaging for "chocolate in bar and tablet form as well as eating and drinking chocolate." Nestle as well as other Cadbury competitors will be able to use the color on packaging in other candy categories, which would include chocolate cake, confectionery, and chocolate assorted candies.

A spokesperson for Cadbury said the chocolatier was "pleased" with the ruling and said, "This color is clearly associated to Cadbury and something we jealously guard."

While Nestle retains the right to appeal the decision, the IPO's ruling would likely remain unchanged. Trademark registrations for colors can be extremely difficult to obtain, mainly because of the challenge to prove that in the mind of the consumer, the color has become synonymous with a particular brand. In this case however, it appears that Cadbury's long standing use of the color purple does give it rights to exclusive use of that color.

Jersey Shore's "The Situation" Sues Abercrombie for Trademark Infringement

November 16, 2011,

jersey_shore.jpgOrange County - A few months after apparel company Abercrombie & Fitch reportedly offered reality television star Mike "The Situation" Sorrentino a "substantial" sum to cease wearing its merchandise on MTV's Jersey Shore, Sorrentino is now suing Abercrombie for trademark infringement, unfair competition, and other claims. Sorrentino claims that despite Abercrombie's attempts to distance itself from Sorrentino and the Jersey Shore cast, Abercrombie used Sorrentino's trademarked slogans on its apparel. Sorrentino claims that Abercrombie marketed shirts bearing the slogans, "GTL...You Know the Deal" and "The Fitchuation" infringing his trademarks.

Sorrentino alleges in his complaint that Abercrombie has profited from a false association with his popular Jersey Shore persona. He also claims that despite a press release issued by Abercrombie asking Sorrentino and Jersey Shore cast members to cease wearing the Abercrombie brand, he was never offered any money to stop wearing the clothes. Sorrentino claims that despite Abercrombie's public statements that he and his fellow cast members were degrading the brand, Abercrombie still attempted to profit from Sorrentino.

Sorrentino makes references to Abercrombie's press release in his complaint, stating that asking him to stop wearing the brand was simply a publicity move that resulted in significant media buzz regarding the Abercrombie name. Abercrombie's press release stated that the association between Sorrentino and cast members created by frequently wearing Abercrombie apparel on the show was "contradictory to the aspirational nature of our brand." Abercrombie also stated that a continued association between Jersey Shore and Abercrombie "may be distressing to many of our fans."

Sorrentino has demanded a jury trial in the action. He alleges seven causes of action including trademark infringement, false description, and unfair competition, among others. He seeks a royalty of $1 million and other damages of $3 million.

Jersey Shore will air its fifth season in January of 2012 as the cast returns to Seaside, New Jersey where the first and third season were filmed. Since the third season, the show has featured the same seven cast members including reality television stars Mike "The Situation" Sorrentino, Nicole "Snooki" Polizzi, and Paul "Pauly D" DelVecchio.

American Petroleum Institute Sues Motor Oil Marketers for Trademark Infringement

November 15, 2011,

oildrop.jpgOrange County - The American Petroleum Institute (API) is suing two Michigan-based motor oil manufacturers and distributors of trademark infringement.

According to the lawsuit, filed in federal court in Washington D.C., API is accusing the two companies of selling engine oils that bear its trademark without its permission. API charges that Detroit-based U.S. Energy Resources LLC and Warren-based Babylon Trading & Development are not licensed to use its trademark and that their engine oils do not meet its quality standards. They are "unfairly trading on API's goodwill" with the intention "of deceiving the public," the lawsuit alleges.

According to its website, The American Petroleum Institute is the only national trade association that represents all aspects of America's oil and gas industry. It has over 400 corporate members, from major oil companies to small independent distributors. API represents all segments of the oil and gas industry including producers, refiners, suppliers, pipeline operators and marine transporters, as well as service and supply companies that support all of the industry segments.

Regarding the trademark infringement allegations against U.S. Energy Resources, company CMO Tiku Vyas responded, "We have never sold a single bottle of motor oil with an API logo on it." Babylon Trading & Development, the second firm named in the lawsuit, could not be reached for comment an no phone number could be found for the company.

API is seeking a permanent injunction that would prevent the two oil companies from using its trademark on any of their products. API is also seeking $1 million in damages for each grade oil that the firms allegedly sold using its logos. In addition, API is demanding a court order that would require the destruction of the infringing products and is requesting that the companies be required to issue corrective statements and notify each purchaser that the oil they bought was not API certified.

API claims that only oils that pass inspection and meet its strict standards may use its Sunburst and Donut trademarks. API's certification program has been in operation since 1985 and has certified and licensed about 530 companies to use the trademarks. A spokesperson for API alleged that testing by an independent laboratory revealed that both of the defendant's products "fell significantly short" of API's quality requirements and "could cause damage to late-model automobile engines."

Serta Seeks Declaratory Judgment In Trademark Case Against Oleg Cassini

November 14, 2011,

mattress.jpgOrange County - Mattress manufacturer Serta recently filed an action in a federal district court in Chicago, Illinois seeking a declaratory judgment that Serta has not infringed trademarks owned by Oleg Cassini, Inc. The action involves mattresses, sold by Serta at J.C. Penny stores, under the name"Perfect Day Cassini." Serta claims it stopped selling mattresses bearing Cassini's name after being accused by Cassini of trademark infringement dating back to the 1950's.

Serta claims however, that despite ceasing use of the Perfect Day Cassini name, that Oleg Cassini, Inc. is still threatening to file an action for trademark infringement. Cassini has allegedly threatened to pursue the action because the Perfect Day Cassini mattress may still be purchased as a close out model or sample and because internet searches still yield results about the Perfect Day Cassini product.

Cassini's continued threats to sue both Serta and J.C. Penny led Serta to file this action for declaratory relief in a Chicago federal district court. Serta attached to its complaint a letter it received from Oleg Cassini, Inc. stating that "Oleg Cassini, Inc. does not consider this matter closed." The fashion designer threatened to file suit if Serta did not provide a full accounting of the Perfect Day Cassini product. The letter also indicated that Cassini will seek reasonable damages for the alleged trademark infringement.

Serta has asked the Chicago court to declare that Serta did not engage in trademark infringement and has also requested that Cassini be barred from bringing its threatened trademark infringement action. Serta claims that it did not infringe Oleg Cassini's trademark but instead named the product after a famed astronomer and a NASA space craft. Serta further alleged that the word 'Cassini' is used in connection with other products unrelated to Oleg Cassini and is even the name of a lunar crater.

Cassini, on the other hand, argues that its trademark has been incontestable since the 1950's and that Serta's use constituted trademark infringement.

Trademark Dispute Between X Factor And British Charity Over Group Name Ends

November 10, 2011,

concert.jpgOrange County - X Factor Executive Producer Simon Cowell recently withdrew his application to trademark "Rhythmix" after being pressured by a British charity of the same name. The American version of Simon Cowell's X Factor, currently airing its first U.S. season, features a four piece girl group called Rhythmix. However, after pressures from the British music charity of the same name, Cowell has withdrawn his attempt to trademark "Rhythmix" and the girl group has changed its name to Little Mix.

Spokespeople from Simon Cowell's entertainment business Syco stated that Syco offered to grant the British charity its trademark rights to the "Rhythmix" trademark. Despite pressuring Syco to withdraw the trademark application, Rhythmix apparently refused Syco's offer.

Rhythmix's chief executive, Mark Davyd, claimed that withdrawing the trademark application put an end to Cowell and Syco's attempts to, "bully the charity into submission." Davyd also claimed that the offer to grant trademark rights to the charity included a term prohibiting the charity's officers and employees from discussing the conduct of Syco officials. Davyd has requested that Syco reimburse Rhythmix for legal fees totaling £8,000. However, despite the fact that Syco did not officially withdraw the trademark application, Cowell and X Factor producers changed the Rhythmix group name to Little Mix several weeks ago when the dispute with the charity began.

Rhythmix is a British charity group based in Brighton that describes itself as one of the UK's leading music charities, offering musical opportunities to children designed to facilitate development of social and personal skills as well as creative expression. X Factor is a singing competition program produced by former American idol judge Simon Cowell. The original UK version of X Factor launched the career of singer-songwriter Leona Lewis, who won the competition in 2006.