Orange County Trademark Attorney® Blog

July 2012 Archives

"We Buy Ugly Houses" Company Sues Competitor For Trademark Infringement

July 25, 2012,

shack.jpgOrange County - HomeVestors of America's trademark "We Buy Ugly Houses" would appear to be unique enough to avoid any confusion with would-be competitors. However, despite a history of vigorous enforcement of the trademark and a USPTO registration, HomeVestors was recently forced to enforce its rights again. In a recently filed lawsuit against the House Buyer Network and Duane LeGate, HomeVestors claims that the two have made unauthorized use of the trademark on multiple occasions. The lawsuit, filed in the Northern District of Texas, accuses the two defendants of trademark infringement, unfair competition, unjust enrichment, injury to business reputation and breach of contract.

Complicating the case is the fact that a representative for HomeVestors claims that House Buyer Network and LeGate entered into a settlement agreement with HomeVestors in 2006. As part of that agreement, LeGate transferred a number of domain names to HomeVestors and agreed to stop purchasing keywords that incorporated HomeVestor's registered trademarks. However, the complaint alleges that in violation of that agreement, House Buyer Network continued to purchase Internet advertising keywords containing registered trademarks owned by HomeVestors. House Buyer Network subsequently used these trademarks to advertise its own products and services, as well as to gain increased search engine popularity. HomeVestors is seeking treble and exemplary damages, an injunction to prevent further use of its trademarks, attorney's fees and court costs.

Based in Dallas, Texas, HomeVestors of America is one of the top purchasers of houses in the United States. In addition to buying houses, HomeVestors trains and supports franchisees that buy and rehab residential properties. Homevestors is not just a top franchiser, but it also prides itself in making a positive impact in the communities surrounding its franchises. Its competitor House Buyer Network also buys houses from consumers looking to sell fast. And like HomeVestors, House Buyer Network claims to be one of the fastest buyers and sellers of houses Nationwide since 2002.

Second Avenue Deli Wins Trademark Infringement Lawsuit Over Cheeseburgers

July 18, 2012,

cheeseburger.jpgOrange County - Imagine if you will, a world where meat lovers feast on a decadent cheeseburger consisting of 4 half pound beef patties, eight slices of American Cheese, a whole tomato and ½ of an onion, all nestled on a lightly toasted bun. The Heart Attack Grill appropriately named this meat lover's treat the Quadruple Bypass Burger to compete with a line of Bypass Burgers intended to please the most stringent of burger lovers.

Alternately, to the delight of many, the Second Avenue Deli created its own Triple Bypass Sandwich comprised of two potato latkes filled with mouth-watering slices of corned beef, pastrami, turkey and salami. Most sandwich connoisseurs would argue that there is room for either or both delectable concoctions in the restaurant world. However, when the Heart Attack Grill discovered that the Second Avenue Deli was using its trademarks without authorization, it sued for trademark infringement.

New York's landmark Second Avenue Deli has been the purveyor of Instant Heart Attack Sandwiches since 2004, while the Las Vegas based Heart Attack Grill registered its trademarks with the USPTO in June 2005. Initially, upon discovering products illegally using its trademarked names, the Heart Attack Grill sent a cease and desist letter claiming that the Second Avenue Deli violated its trademarks for "Bypass" Burgers. When the letter yielded no results, the Las Vegas eatery filed a lawsuit in 2011.

In the recent decision, U.S. District Judge Paul A. Englemayer determined that the Manhattan deli would be allowed to continue selling its Instant Heart Attack sandwiches because the distribution did not violate Heart Attack Grill's trademark rights. However, the sale of the Heart Attack sandwiches will only be allowed to continue in current and future restaurants in Manhattan. Additionally, the Triple Bypass Sandwich can only be listed on the menu of current Manhattan restaurants and cannot be listed on any signage. The decision by Judge Englemayer was based on terms agreed to by both parties over the course of oral arguments and months of litigation. The Judge also encouraged both parties to cooperate and practice alternative dispute resolution in the future.

Rap Duo New Boyz Sued By Newsboys for Trademark Infringement

July 10, 2012,

duo.jpgOrange County - Popular rap duo New Boyz have recently found a measure of success in the hip-hop genre, but that success has come with a cost. The media brought on by a series of chart topping hits has brought the two rappers to the attention of popular Christian band the Newsboys, and their manager Wesley Campbell. Although the two groups have found popularity in two opposite music genres, The Newsboys assert that the rap group is using a name that both creates confusion among listeners and damages their carefully constructed Christian reputation that is based on clean lyrics and biblical principles. Consequently, the Christian band filed a lawsuit against the rap duo for trademark infringement last week.

In the non-Christian move, Rappers Earl "Ben J" Benjamin and Dominic "Legacy" Thomas were named as defendants in the lawsuit filed in District Court of Middle Tennessee in Nashville. The Newsboys claim that the rap group is using a name that is too similar to its own trademarked name and the result is brand confusion among fans, listeners and potential fans. The documents filed last week list multiple instances of actual confusion among listeners, consumers, prospective customers and other observers, who mistakenly assumed a connection between the rap duo and the gospel group. The Christian group is seeking a court order preventing further use of the confusingly similar name and damages for lost profits caused by the confusion.

The Newsboys began using their name in 1985, and have found huge success in the Christian music arena on a platform of wholesome, family-friendly music. With a policy of using only clean lyrics and promoting evangelism, the group filed to protect their name with the United States Patent and Trademark Office in 1993. The group received their trademark registration in 1994 and went on to release a number of Christian chart toppers. In contrast, the hip-hop duo's music has supported an image of the rap scene, with popularity based on promiscuity and partying. A decision in the Tennessee case is highly anticipated by fans and group supporters alike. A win for the Christian group could mean a new name and identity for the rap duo, but a loss could be devastating for the Gospel group who already feels their reputation is tarnished.

Orange County Based ZO Skin Health Files Trademark Infringement Lawsuits

July 2, 2012,

labtesting-molecule.jpgOrange County - ZO Skin Health announced that it has filed multiple trademark infringement lawsuits to protect its products. The skincare company prides itself on its high quality skin care products, and claims that it utilizes a strict zero-tolerance policy toward unauthorized distribution of its products.

In addition to its aggressive litigation strategies, ZO also automatically bans anyone caught illegally distributing its products from doing business with the company in the future. The latest round of lawsuits were filed in U.S. District Court for the Southern District of Florida against multiple companies and individuals for illegal online distribution of its products. ZO is seeking an immediate injunction to prevent third-party Internet companies from continuing their unauthorized distribution of ZO products, as well as monetary damages. ZO is accusing the defendants of trademark infringement, false advertising, unfair competition and trademark dilution. Florida based defendants include Elite Depot operated by Web International Inc., Web Incorporated, Aira Cosmetics Company, Aira Cosmetics Inc., Aira Incorporated, Tonia Ryan and Derek Cavan.

To ensure proper and correct use, the products are distributed through a network of carefully selected physicians who receive special authorization and instruction on how to use the products. ZO emphasizes that its products are powerful, potent and should only be used under the guidance of a licensed physician. Additionally, all ZO products include a universal product code, batch code and date code, as a means to ensure quality compliance and protect against counterfeiting. A recent investigation by ZO representatives uncovered the illegal sale of its products from the defendants' websites. The websites included products with ZO trademarks and a number of items manufactured by ZO that require a doctor's prescription. The representatives ordered the ZO products from the defendants' websites and found that the required product codes had been removed and the packaging had been damaged.

Since 2006, ZO products have been created through years of careful research and cutting-edge science. Created by Dr. Zein Obagi, ZO Skin Health is known for reinventing the concept of creating and maintaining healthy skin. Located in Orange County, California, ZO is also known for being fiercely protective of its products and reputation. Its recent lawsuits are part of its plan to protect its trademarks and pursue anyone trying to dilute the integrity of its brand to the fullest extent of the law.