Orange County Trademark Attorney® Blog

May 2012 Archives

Adidas Sues Orange County Based World Industries for Trademark Infringement

May 24, 2012,

shoes.jpgOrange County - Adidas filed a lawsuit against World Industries for infringing on multiple of its three parallel diagonal-striped design trademarks. Germany's Adidas as well as Adidas America, which is based out of Portland, Oregon, filed a complaint with the U.S. District Court, District of Oregon for alleged trademark infringement. Adidas accuses World Industries, a skateboard company based in Costa Mesa, California, of producing the infringing sneakers. Adidas is also suing Big 5, the sporting goods store, for selling the product.

While Adidas is the world's second largest sporting goods company it is no stranger to similar lawsuits. In previous years Adidas filed similar lawsuits against Wal-Mart Stores and Payless ShoeSource for selling "knock-off" shoes that have two, three, and four parallel diagonal stripes. In fact, Adidas was awarded a $65.3 million by a federal judge in its trademark lawsuit against Wal-Mart. The two companies later settled on a confidential amount.

Adidas trademarked the three parallel diagonal-striped designs in the United States in 1994 but claims use as early as 1952. A spokesperson representing Adidas stated: "World Industries' merchandise is likely to cause consumer confusion, deceive the public regarding its source, and dilute and tarnish the distinctive quality of Adidas' Three-Stripe Mark."

Many of World Industries' products display a "W" on the product. However, the alleged knock-off shoes' "W" is positioned in a way that Adidas states is a certain way to confuse the consumer. The "W" on the shoes in question has three pointed tips that are shaped similar to arrows.

Big 5, based in El Segundo, California is not only being accused of selling the infringing shoes but they are also being accused of promoting the shoes in large advertisements as well as "strategically" placing the World Industries shoes near Adidas shoes in its stores. In the complaint, Adidas included advertisements as exhibits to support its claims.

Adidas is seeking that the sale and production of the alleged infringing shoes stop immediately and that all of these shoes be destroyed. Adidas is also seeking monetary damages. A representative for World Industries could not be reached and a representative of Big 5 had no comment.

GM Files For "Riviera" Trademark: Will We See a Comeback?

May 14, 2012,

automobile.jpgOrange County - On May 3rd General Motors filed a trademark application to secure the rights to the Riviera nameplate, which was used by Buick for almost forty years.

The move to register the Riviera trademark was possibly sparked by the favorable reception it received as a concept car at both the 2007 Shanghai Auto Show and the 2008 North American International Auto Show. The front-wheel drive concept car featured gull-wing doors and a two-plus-two seating configuration.

General Motors is not the only automaker to try to cash in on the nostalgia of old nameplates for a new model. In addition to a possible comeback for the Riviera, GM also brought back the Pontiac GTO in 2004 and recently, the Buick Regal. Chrysler has also looked to its lineup of oldies while attempting to appeal to a younger demographic. For some of its rear-drive full-size sedans, the company re-introduced the popular 300 and Dodge Charger nameplates.

The fact that General Motors has filed to register the Riviera trademark may not mean we will be seeing the production of the vehicle in the near future or even at all. A spokesperson for Buick commented on the recent trademark filing by stating, "I wouldn't read too much into this," adding that the car maker hasn't made any decisions on whether or not to revive the Riviera. General Motors regularly registers trademarks for possible vehicles that come from both new names and historic models.

However, there is also the possibility that General Motors may use the Riviera nameplate to introduce a sporty coupe, vastly different from the flagship Buick models that have widely appealed to older drivers. Now that Saturn and Pontiac are no longer in the business of making coupes and convertibles, it might be a good move for the company to produce a Buick coupe to attract a younger demographic.

As one of General Motors premium brands, Buick manufactured the Riviera from 1963 to 1999, with over 1.1 million models sold in the United States.

Fragrance Fights over Fragrance Flights

May 8, 2012,

perfume_bottle.jpgOrange County - MiN New York is claiming that Sephora, the national retailer of cosmetics and fragrances, has violated its trademark rights to the term Fragrance Flights. In response, Sephora argues that the term is generic similar to "wine flights" for use by a wine bar.

MiN New York is a boutique offering fragrances, hair care products, soaps, candles, and home decorating accessories. MiN New York has been offering its customers the opportunity to sample several fragrances at the same time, similar to a wine bar offering small samplings of wine. Calling the sampling process a "fragrance flight," it was not surprising that MiN was unhappy to hear that Sephora is now offering a similar experience under the same name.

Sephora has based its personalized fragrance flight bars off the Sensorium pop-up shop it hosted last year. The company has described the experience as an opportunity for its customers to sample scents without bias, using their "impressions" instead of judging the scents by traditional fragrance notes. At the flight bars, the scents are broken down into four groups: addictive, playful, casual, and chic, and are all presented in stemless wine glasses.

The concept behind the fragrance flights is that since the scents are offered for sample unbranded, the customer will actually choose something they like the smell of, rather than simply choosing it based on its brand or alluring packaging.

After MiN issued a statement to the press saying that Sephora had "blatantly disregarded copyrighted and trademarked content owned by MiN New York," Sephora issued its own statement, saying:

"Today's press report on racked.com is the first we heard of any problem with MiN NY. Sephora is also a brand owner and takes claims of infringement very seriously but in this case, there seems to be a misunderstanding on MiN's part. MiN is not the first retailer to offer personalized fragrance sampling and will not be the last. MiN's use of "fragrance flight" dating back to 2010 seems to be a generic use, using "fragrance flight" in the same manner that a wine bar uses "wine flight," and not as a brand. Sephora used Fragrance Flight and Fragrance Flight Bar in connection with its Sensorium exhibit in 2011, without any protest from MiN and without generating any confusion."

It would appear that MiN New York has an uphill battle in proving that its "trademark" is not generic.

Mmmm...Beer: German Brewer Tries to Trademark Homer's Beer of Choice

May 1, 2012,

beer-bottle-pouring.jpgOrange County - Germany-based Duff Beer UG has applied to the European Union's general court in Luxembourg for permission to register a European Union trademark for "Duff", Homer Simpson's favorite beer.

The German brewer sells "the legendary Duff Beer" without any mention or logos of the legendary Simpson cartoon character on its website or packaging. Twentieth Century Fox, which produces the longest-running scripted show in television history, The Simpsons, already has two European Union trademarks to the fictional beer. In 1996, News Corp., the owner of Twentieth Century Fox, won a court case in Australia, banning another brewer from selling Duff beer.

Homer Simpson's creator Matt Groening maintains that he will not condone Duff to be used as a real beer brand, citing that he does not want to encourage children to drink beer. However, this has not stopped a number of brewers from trying to use the brand in their attempts to capitalize on the popular cartoon. The 1996 trademark infringement case against Australian beer-maker Lion Nathan resulted in the brewer's infringing products being pulled from store shelves and destroyed.

Brewed in Germany by the Eschweger Klosterbrauerei, Duff Beer UG filed a lawsuit with the European Union's general court in Luxembourg, asking it to overturn a previous decision by the EU trademark agency. That decision had prevented the brewer from registering the "Duff" trademark in black, white, and red, the colors used in the cartoon to depict the label of Homer's choice of the canned beverage.

Duff Beer is also requesting that the European Union court wait for final rulings from a Belgian court case last year that invalidated Twentieth Century Fox's two European trademarks on the grounds that they were misleading since they weren't registered for an actual beverage.

Earlier this year, beer consumers in the United Kingdom were able to pop a cold one in honor of Homer, when Duff Beer made the fictional beer brand into a reality by selling it in England, Wales, Scotland, and Northern Ireland.

Debuting on Fox in 1989, The Simpsons is an animated satirical parody of working-class America, depicted by the Simpson family, which consists of Homer, Marge, Bart, Lisa, and Maggie. As the longest-running American sitcom, The Simpsons has won dozens of awards, including 27 Primetime Emmy Awards, 30 Annie Awards, and a Peabody Award. In the animated series, the fictional Duff Beer is Homer's favorite beverage, and is a parody of stereotypical commercial beer: cheaply priced, poor quality, and advertised everywhere.