Orange County Trademark Attorney® Blog

September 2012 Archives

DC Comics Accuses Florida Barber Of Superman Trademark Infringement

September 28, 2012,

barber_shop.jpgOrange County - DC Comics on Tuesday hit an operator of two barbershops with a trademark infringement complaint in Florida federal court, saying the shops are ripping off the Time Warner Inc. unit's famous Superman logo trademark.

Reginal Jones, proprietor of Supermen Fades To Fros and Superman Pro Barbershop respectively located in Eatonville, Florida and Winter Park, Florida, is infringing the Superman trademark by the very name of his shops, the complaint says. He also operates an allegedly infringing website for the businesses, located at www.supermenfadestofros.com.

Jones' outdoor signage on the shops incorporates the Superman logo trademark, as do the shirts, aprons and capes that the barbers inside wear. His companies also use a vehicle wrap as advertising that bears the trademarks.

DC owns all trademark rights in its famous superhero characters like Superman, Batman and Wonderm Woman, the revenues from which are substantial, DC says. Each year DC spends "significant sums of money" to develop and maintain the considerable goodwill it has built up in its trademarks and reputation for high quality, according to the comics publisher.

DC has never at any time authorized Jones or the barbershops to use the infringing trademark promotions in conjunction with any sort of hair grooming services, the complaint says.

"Defendants have ignored DC's lawful demands and continue to utilize the infringing promotions in conjunction with the infringing barbershops," it says. "Defendants are using the infringing promotions intentionally with a bad faith intent to profit from them."
There is a high likelihood that Jones' use of the trademarks will cause confusion, mistakes, or deception among consumers as to the barbershops' affiliation with DC, according to the comics company. His use of the infringing promotions blurs the unique association which has heretofore existed between the DC trademarks and the goods and services sold and offered by DC, it says.

Jones has operated his barbershops and offered hair grooming services into interstate commerce willfully with full knowledge of the falsity of the designation of their origin, in an effort to mislead the purchasing public into believing the barbershops are authorized by or emanate from DC, the complaint says.

PTA Sues Rival Parent-Teacher Organization For Trademark Infringement

September 26, 2012,

Orange County - The National Parent Teacher Association hit School Family Media Inc. with allegations of trademark infringement in Illinois federal court Wednesday, saying its for-profit rival is falsely claiming an association with PTA.

The National PTA Board of Directors said it voted to file a lawsuit after exhausting multiple attempts to get School Family Media, the parent company of PTO Today, to voluntarily discontinue its inaccurate statements about PTA, as well as its misleading statements suggesting the company had a relationship with PTA that does not exist.
National PTA alleges that School Family Media is attempting to confuse or mislead the public into believing they have a relationship with PTA in order to procure advertising for their website and magazine.

The complaint also claims School Family Media makes false statements about PTA to encourage parent groups to leave PTA and purchase services from School Family Media as an alternative.

"PTA has no issue with any for-profit company that wants to provide products and services to PTA and its members," National PTA President Betsy Landers said. "However, we do strenuously object to School Family Media inferring it has a relationship with PTA that does not exist and, at the same time, disparaging PTA to drive business their way."

PTA has made repeated efforts to resolve the situation without litigation, but School Family Media has failed to amend its practices or comply with the measures it agreed to, according to PTA.

"PTA had no choice but to take legal action to protect its respected name and reputation," Landers said. "PTA is an American icon, a charity that has worked to improve the education and well-being of children for more than 116 years."
PTO Today claims to be the only company dedicated exclusively to providing a full suite of products, programs and services to the entire kindergarten through eighth grade school parent group market, according to its website.

"Regardless of the acronym (PTO or PTA, etc.), PTO Today is committed to helping parent group leaders serve their schools more effectively and run their groups more efficiently," the company's website says.

Online Store Sues Conde Nast To Ward Off Trademark Infringement Claims

September 25, 2012,

magazines.jpgOrange County - Voguevert LLC, a company that sells luxury goods online, hit Conde Nast with a declaratory judgment suit on Friday seeking to avoid liability for infringing the magazine publisher's trademark for the name of Vogue Magazine.

Voguevert claims in its complaint in Ohio federal court that its use of the trademark Voguevert does not constitute trademark infringement, and that it is entitled to continue all of its activities in connection with that trademark and the related website Voguevert.com.

Voguevert sells various luxury goods, including handbags, jewelry and accessories designed by "green" or environmentally conscious designers for environmentally conscious women under the Voguevert trademark. It has sold such goods on its website since August 2011.

The company applied for a federal trademark for the name Voguevert with the U.S. Patent and Trademark Office in July 2011, and was granted the trademark in July 2012.
Conde Nast, formally named Advance Magazine Publishers Inc., sent Voguevert a letter through its counsel in May, claiming that the use of the Voguevert trademark constituted trademark infringement and unfair competition, and demanding that Voguevert immediately stop using the trademark.

If Voguevert did not comply with the written demand, Conde Nast said simply that it would "pursue its available remedies," according to Voguevert's complaint.
On Sept. 5 Voguevert received another letter from Conde Nast's counsel, accompanied with a draft petition for the cancellation of Voguevert's trademark registration and a draft complaint,alleging that Voguevert activities constituted trademark infringement, unfair competition, and that Voguevert's use of its trademark constituted trademark dilution. The draft complaint sought preliminary and permanent injunctions, damages and attorneys fees.

In awarding the trademark registration to Voguevert, the PTO found that its trademark was not likely to be confused with any of the Vogue trademarks, Voguevert asserts.
"Voguevert is legally entitled to continue the use of its Voguevert mark, and to continue its use of the URL www.voguevert.com, and Voguevert's activities do not infringe or legally dilute any trademark rights of AMP," the complaint says.

Conde Nast has not yet responded to the complaint.

PTO Shuts Down Science Center's Trademark Appeal

September 19, 2012,

registered R.jpgOrange County -- The U.S. Patent and Trademark Office's Trademark Trial and Appeal Board denied Columbus, Ohio's Center of Science and Industry's attempt to trademark its name earlier in September, ruling that the trademark was merely descriptive and not distinctive enough.

The Franklin County Historical Society sought registration of the trademark "Center of Science and Industry" in standard character format to cover education and entertainment services, namely, operating a museum and conducting workshops, programs and demonstrations in the field of science.

The trademark examining attorney refused registration of the trademark on the grounds that the trademark is merely descriptive of the identified services and has not acquired distinctiveness. The historical society argued against the first refusal, and sought registration with a claim of acquired distinctiveness in the alternative.

The examining attorney submitted dictionary definitions of the separate words "center," "science" and "industry," which the TTAB found to be probative of the relevant public's understanding of the term "Center of Science and Industry" as applied to the historical society's recited services.

"It would not take any complicated reasoning or cogitation for consumers considering the proposed mark in conjunction with the recital of services to conclude that the proposed mark conveys information about a center where one can learn about science and industry," the board said.

The examining attorney also submitted evidence of third parties that use variations on the center's name for museum services.

The dictionary evidence shows the proposed trademark to be a descriptive one, and the use by third parties on their websites further shows that there is a competitive need for the terms "center," "science," and "industry" in connection with the services the historical society sought to register the trademark for, according to the TTAB.

The historical society argued that in addition to over 35 years of "substantially exclusive" use, its Center of Science and Industry has garnered attention by receiving, over the years, 20 million visitors from all 50 states. It features regular and special exhibits with "rare artifacts," and has been awarded national awards and recognition, including the Parents Magazine award of "#1 Science Center" in the country, according to the historical society.

If any term concerning the center has gained a degree of renown, though, it is the acronym COSI, according to the examining attorney. He pointed out that none of the examples the historical society provided show the trademark phrase appearing unaccompanied by the acronym.

"Although applicant's museum services may attract many visitors and indeed it may have national recognition with multiple awards, it has not established acquired distinctiveness specific to the term "'Center of Science and Industry,'" the TTAB ruled.

CafePress Can't Shut Down "Born To Rock" Trademark Infringement Suit

September 18, 2012,

CafePressLogo.jpg Orange County - CafePress Inc. lost its bid for a quick win this month in a trademark infringement suit claiming the online print-on-demand marketplace is violating the registered trademark "Born To Rock" when it allows users to upload designs using the phrase and sells related merchandise.

Born To Rock Design Inc. has shown that there is at least enough of a question of infringement to send the case to a jury, Judge Colleen McMahon of the Southern District of New York ruled in her Sept. 7 decision denying CafePress's motion for summary judgment.

CafePress operates a virtual online marketplace that allows its users to set up virtual shops on CafePress.com. Users upload graphic designs to the website, and in doing so grant CafePress a license to design, produce, market and sell products bearing those designs.

Once the design is uploaded, the website places it on images of merchandise including T-shirts, coffee mugs and key chains. Visitors to CafePress.com can browse designs and select merchandise to custom print with their chosen design.

When a visitor places an order, CafePress.com prints the design on the selected merchandise, ships it to the customer, and collects the payment, a portion of which is remitted to the user who created and uploaded the design.

BTR obtained a trademark in 1994 for the words "Born To Rock" as they relate to electric guitars, after patenting a new kind of neck for electric guitars. The company alleges that CafePress infringes its trademark by selling merchandise uploaded to its website that incorporate the trademark phrase.

BTR asked CafePress in May 2009 to remove user designs that contain the words "Born To Rock" from its website. CafePress responded a month later that it would not remove the designs, relying on the doctrine of fair use, among other principles. After further discussion, BTR filed the current action in November 2010.

CafePress's motion for summary judgment on BTR's infringement claims must be denied unless it has established its fair use affirmative defense as a matter of law, which it has not, the judge said.

"CafePress's litigation strategy upends its cause," Judge McMahon said. "By failing to move for summary judgment on a design-by-design basis, CafePress essentially asks the court to take judicial notice of the fact that every use BTR complains of is a non-trademark use as a matter of law. I cannot do that based on the evidence proffered in this motion."

Chuck Yeager Loses Ninth Circuit Likeness Rights Appeal

September 12, 2012,

ChuckYeager.jpg Orange County - The Ninth Circuit on Monday ruled that pioneering aviator Chuck Yeager cannot pursue claims for unauthorized use of his likeness against two old friends who run an aviation memorabilia business that deals in Yeager-related artifacts.

The appeals court affirmed the Eastern District of California's ruling that Yeager's claims were time-barred. The declaration Yeager submitted along with his opposition to the defendant's summary judgment motion was a sham, replete with hundreds of specific facts Yeager claimed he did not remember at his deposition, the Ninth Circuit said.

In 2008 Yeager, a famous test pilot and retired general who was the first man to break the sound barrier with his legendary flight in the Bell X-1, sued Ed and Connie Bowlin for violations of the Lanham Act, California's common law right to privacy and the state's statutory right to publicity. The Bowlins, retired commercial airline captains who became friends with Yeager in the 1980s, own Aviation Autographs, which sells aviation-related memorabilia, including items related to or signed by Yeager.

At his deposition, Yeager did not recall answers to approximately two hundred questions, including questions on topics central to the case. Three months later, on the same day that he filed his opposition to the Bowlins' motion for summary judgment, Yeager filed a declaration. The declaration contained many facts that Yeager could not remember at his deposition, even when he was shown exhibits in an attempt to refresh his recollection, the Ninth Circuit said.

District Judge William B. Shubb held that Yeager's declaration was a sham and, for summary judgment purposes, disregarded it where it contained facts that Yeager could not remember at his deposition. Judge Shubb granted the Bowlins' motion for summary judgment on all claims.

On appeal Yeager argued that the district court should not have struck his declaration, and that, under California's single-publication rule, the Bowlins "republished" statements about him on their website -- and thereby restarted the statute of limitations -- when they modified unrelated information on their website. The appeals court rejected both arguments.

The district court could reasonably conclude that no juror would believe Yeager's weak explanation for his sudden ability to remember the answers to important questions about the critical issues of his lawsuit, the Ninth Circuit ruled.

"It is implausible that Yeager could refresh his recollection so thoroughly by reviewing several documents in light of the extreme number of questions to which Yeager answered he could not recall during his deposition and the number of exhibits used during the deposition to try to refresh his recollection," the appeals court said.

As for Yeager's statute of limitations argument, the Ninth Circuit held that a statement on a website is not republished unless the statement itself is substantively altered or added to, or the website is directed to a new audience.

Disney, DC Comics, Sanrio Sue California Party Costume Provider For Copyright, Trademark Infringement

September 4, 2012,

disney.jpgOrange County - Disney Enterprises Inc. and its DC Comics and Sanrio Inc. affiliates sued a Southern California party costume business last week, alleging that The Party Animals LLC is providing costumes that infringe the Disney companies' copyrights and trademarks.

Party Animals, which Jason Lancaster operates via the website www.partyanimalsoc.com, is selling, renting and distributing unlicensed and counterfeit costumes that incorporate unauthorized likenesses of the animated or live action characters or other logos that the Disney companies own, the complaint filed in Los Angeles federal court on August 27 says.

The characters at issue include Mickey and Minnie Mouse, Goofy, Pluto, Winnie the Pooh, Tigger, the cast of Toy Story, Handy Manny, Batman, Robin, Superman, Wonder Woman, Super Girl, The Joker, Hello Kitty and Dear Daniel, according to the complaint.

Lancaster had the right and ability to supervise or control the infringing activity alleged, and had a direct financial interest in that activity, the complaint says. He had knowledge or reason to know of the infringing activity, and took actions that contributed to that activity, it says.

Lancaster and Party Animals have never been authorized by the Disney companies to distribute their copyrighted properties, nor have the Disney companies ever licensed them the right to make or sell merchandise like character costumes bearing the copyrighted properties, the plaintiffs say.

The unauthorized and counterfeit character costumes and related merchandise that Lancaster and Party Animals have sold and distributed exactly duplicates and appropriates the Disney companies' trademarks, the complaint says. Their activities delude and confuse the public into believing that the Disney companies approved or sponsored the character costumes and related merchandise, it says.

The Disney companies are pursuing claims of copyright and trademark infringement, trademark counterfeiting, trademark dilution and unfair competition, and are seeking damages of up to $150,000 for each copyrighted work infringed, plus up to $200,000 per trademark.

Party Animals's website contains a disclaimer saying the company does not and has never carried any other companies' copyrighted or trademarked characters.

Representatives for Party Animals did not immediately respond to emails seeking comment.