Orange County Trademark Attorney® Blog

October 2012 Archives

"Yummi Bears" Trademark Lawsuit Still Alive After Judge's Ruling

October 31, 2012,

gummy_bears.jpgOrange County - This week, a federal Judge in the Central District of California in Orange County ruled in favor of Hero Nutritionals to keep its trademark infringement claim alive against vitamin rival Nutraceutical Corporation.

In the lawsuit, Hero Nutritionals claims that Nutraceutical Corp. is engaging in unfair competition and trademark infringement by using the word "yummy" for its nutritional supplements marketed to children. Hero Nutritionals currently owns the trademark rights to "Yummi Bears" for vitamins.

In a hearing held Monday in Orange County, U.S. District Judge Andrew J. Guilford, reviewed Nutraceutical's motion for summary judgment and denied it stating that it was his belief that the claims asserted by Hero Nutritionals would be better decided by a jury. He further ruled that although it was far from certain that consumers would likely be confused by the names of the two products, there were "genuine issues of fact" related to Hero's allegations that should be settled at trial.

The trial is scheduled for December of this year and both sides had submitted opposing filings just a day prior to Judge Guilford's most recent ruling. In its recent filings, Hero alleges that Nutraceutical's nutritional supplements for children violate its trademark rights on "Yummi Bear" products. In contrast, Nutraceutical asserts that it is "highly unlikely" that consumers would be confused between the products its makes and those of Hero. Nutraceutical argues that the sales history of the products themselves demonstrates that confusion is highly unlikely as to the actual source of these products. Nutraceutical further added that it has been using the term "yummy" on chewable children's supplements for 14 years. In that time, there has not been a single instance of actual confusion and Hero has made no argument against the use until now.

Hero asserts that Nutraceutical is selling infringing products such as "Yummy Greens" and "Yummy Gummy" which it alleges are clear violations of its trademark rights. A representative for Hero stated that "[Nutraceutical's] use of the name 'Yummy Greens' to market bear-shaped gummy vitamins wrongfully infringes on Hero's Yummi trademarks [and] free-rides on the substantial efforts and expenditures Hero invested to establish its reputation and goodwill through public recognition of the 'Yummi' brand." Hero also believes that there is a strong likelihood that if its case is allowed to go to trial, a jury will find in its favor on its trademark infringement and unfair competition claims.

The lawsuit between Hero and Nutraceutical Corp was initially filed in August 2011. The court documents allege trademark infringement under the federal Lanham Act, as well as unfair competition under federal and state laws. A motion for summary judgment asserting arguments similar to those presented in Monday's memorandum was filed by Nutraceutical in September of this year. However, after reviewing the relevant documents, Judge Guilford denied that motion in a minute order released Tuesday.

Calif. Appeals Court Shoots Down Mystery House Trademark Lawsuit

October 25, 2012,

Winchester_mansion.jpgOrange County - A California state appeals court on Wednesday declined to revive the popular San Jose tourist attraction the Winchester Mystery House's attempts to keep a film company from using its trademarks in a movie loosely based on the builder of the house.

The 160 room Mystery House was under construction for 38 years starting in 1884, in a quixotic undertaking by Sarah Winchester, the widow of gun manufacturer William Winchester, which only ended with her death in 1922. According to legend, Winchester believed that if she halted construction on the house, she would be haunted by the ghosts of those slain by her husband's weapons.

After Global Asylum Inc. released the film "Haunting of Winchester House," Winchester Mystery House LLC sued the company alleging unauthorized use of its trademarks, among other claims. The trial court granted summary judgment to Global Asylum, and the Mystery House appealed, saying the court failed to look at whether its trademarks have become an integral part of the public's vocabulary.

The trial court properly granted the motion for summary judgment, the California Sixth Appellate District ruled, saying Global Asylum has a First Amendment right to the use of the name.

In 2008 the Mystery House entered an agreement with Imagination Design Works Inc. to use the mansion as a location for the filming and production of a movie, granting IDW exclusive rights to the use of the property and certain trademarks and copyrights relating to its history.

In 2009 the Mystery House received an email from a Global Asylum production coordinator asking about filming location rates for the property. The Mystery House replied that it had granted the exclusive rights to the Winchester story to another company.

The Mystery House learned later that year about Global Asylum's film, and sent it a series of letters informing it of the possible trademark infringement to no avail.

The DVD for "Haunting of Winchester House" features a depiction of a Victorian style structure, and the back cover describes a story in which a family moves into a 160 room mansion only to have a malevolent force abduct their daughter. The cover art, though, does not depict the actual mansion, nor does it feature the phrase Winchester Mystery House anywhere, the appeals court noted.

Nordstrom Seeks To Shut Down Web Retailer's Use Of "Rack" Trademark

October 22, 2012,

hanger.jpg Orange County - Clothing retail giant Nordstrom Inc. filed a new trademark infringement complaint against a web retailer in Seattle federal court on Friday over alleged cybersquatting and unauthorized use of Nordstrom's "Rack" trademark for discount clothing sales.

NoMoreRack Retail Group Inc. and NoMoreRack.com Inc. have willfully misappropriated, diluted and damaged Nordstrom's federally registered trademarks for the terms "Rack," "The Rack" and "Nordstrom Rack," Nordstrom's complaint says.

Nordstrom, one of the nation's leading fashion apparel retailers, launched a new store 40 years ago known as Nordstrom Rack, which the company claims has become "one of the most successful concepts in retailing today." Rack offers clothing, accessories and other consumer goods at deeply discounted prices, and has become a $2 billion per year enterprise, according to Nordstrom.

NoMoreRack, meanwhile, has sought to wrongly profit from Nordstrom's substantial investment in the trademarks by using the business name "No More Rack" and operating the domain names NoMoreRack.com and FriendRack.com, Nordstrom says.

The NoMoreRack website offers products that directly compete with those offered by Nordstrom under its Rack trademarks, the complaint says. FriendRack points to a page on the NoMoreRack site offering rewards to customers who refer friends to NoMoreRack.

"NoMoreRack seeks simultaneously to trade off of the goodwill the Rack marks have come to enjoy among customers, and to reduce the value of that goodwill by improperly associating Nordstrom and the Rack marks with goods and services from unrelated sources," Nordstrom says.

"As a result, the Rack marks' hard-won reputation for high quality merchandise and outstanding customer service is being diluted, the value of Nordstrom's trademarks is being diminished, and customers are being misled and confused," it says.

The NoMoreRack site represents a new type of off-price retail concept, known as a "flash sale" website, according to Nordstrom. Flash sale sites generally offer a particular set of goods at deep discounts, but only for short periods of time.

Nordstrom promptly put NoMoreRack on notice that its name infringes the Rack trademarks as soon as it learned of NoMoreRack's site earlier this year, but NoMoreRack continues to refuse to comply with Nordstrom's demands that it stop using the trademark or any variation, the complaint says.

Longhorn Steakhouse Sued By Golden Nugget Casino Over Cheesecake Trademarks

October 17, 2012,

cheesecake.jpgOrange County - Rare Hospitality International Inc., which owns the Longhorn Steakhouse chain of restaurants, is facing new trademark claims from Las Vegas's Golden Nugget casino, which alleges one of the chain's cheesecake desserts infringes its trademarked name.

GNLV Corp. filed a complaint in Nevada federal court Tuesday alleging the Longhorn Golden Nugget Fried Cheesecake is a bad faith ripoff of GNLV's trademarks for restaurant services.

GNLV holds federally registered trademarks for the name Golden Nugget in conjunction with casino and restaurant services, and has continuously used the name since the casino opened in 1946.

"The Golden Nugget name and mark is among the most recognized and respected names in the gaming industry," the complaint says.

The company and its predecessors have spent tens of millions of dollars over the years on ads and promotions using the trademarks around the world. It has made extensive use of the trademarks in connection with restaurant, hotel and casino services.

In July GNLV learned that Longhorn was using the Golden Nugget trademark in connection with the fried cheesecake dessert at all of its 386 steakhouses.

"The defendant is using the Golden Nugget mark with the bad faith intent to profit from plaintiff's marks," the complaint says.

Longhorn has no trademark or other intellectual property rights in the Golden Nugget name, and has never used it before in connection with any of its goods or services, according to GNLV.

"The defendant intends to obtain a commercial benefit by offering restaurant goods and services under the Golden Nugget Mark and in a manner that could harm the goodwill represented by plaintiff's marks," the company says.

Longhorn is using the trademark in commerce for its restaurant goods and services, which makes it confusingly similar to GNLV's own services and possibly deceptive to consumers, GNLV says.

GNLV is also asserting claims for unfair competition, deceptive trade practices and intentional interference with prospective economic advantage. The company is seeking an injunction barring Longhorn from using the trademark name, damages, costs and attorneys' fees.

Hells Angels Accuse Toys "R" Us, Yo-Yo Maker Of Stealing Death Head Trademark

October 15, 2012,

motorcycle.jpg Orange County - Hells Angels Motorcycle Corp., the official business arm of the notorious motorcycle club, attacked Toys "R" Us Inc. and yo-yo maker Yomega Corp. in California federal court on Wednesday for allegedly infringing the trademark for the club's "death head" logo by making and selling a series of yo-yos bearing the image.

HAMC, a nonprofit mutual benefit corporation, is the owner of the Hells Angels trademarks, which it administers for the benefit of the club, according to its complaint in the Eastern District of California. The Hells Angels have used their design trademark depicting a skull with wings in connection with the motorcycle club for over 50 years, the club says.

Over the course of that half-century of "continuous and conspicuous" usage, the death head trademark has become famous and widely recognized by the public as an indicator of affiliation with the Hells Angels, HAMC says.

"From decades of notoriety, the HAMC death head mark has acquired very widespread public recognition; consequently it evokes strong and immediate reactions whenever used," the complaint says. "The impact of this mark is dramatic, and as a result it has great commercial value. Defendants seek to exploit that value for their own gain."

Yomega allegedly designed, made and sold a line of yo-yos featuring a design that is confusingly similar to the death head trademark. The company and Toys "R" Us both allegedly reaped substantial profits from their infringement and exploitation of the Hells Angels trademark, the club says.

HAMC sent Yomega a letter in June notifying it of the potential infringement claims and demanding that the company cease using the logo and provide a full accounting of its profits from the yo-yos. Yomega responded to the letter but has refused to recall the infringing yo-yos or provide an accounting, according to the Hells Angels.

The club also sent a similar letter to Toys "R" Us' corporate headquarters in September, and visited the retailer's Roseville, Calif. store in October to personally deliver the notice and demand to the store's manager, but the infringing items remain on display and available for sale, the complaint says.

HAMC is asserting claims for trademark infringement and dilution, as well as unfair competition under the Lanham Act. The club is seeking an injunction barring the companies from using the trademark and a recall of all remaining inventory of the yo-yos in question so that they may be destroyed under third-party supervision, in addition to damages, costs and attorneys' fees.

Grub Street Sues Book Review Service For Poaching Name Trademark

October 8, 2012,

books.jpgOrange County - The Boston creative writing center Grub Street Inc. hit the book review mill Grub Street Reads with trademark infringement and dilution allegations on Thursday, saying the paid review service is riding on its coattails and stealing its goodwill and reputation for prestigious book awards.

Grub Street, which bills itself as the second-largest creative writing center in the U.S., is operated by established professionals in the literary world, including literary agents, authors and writing teachers. Its literary advisors include numerous bestselling authors such as Anita Shreve. Andre Dubus III, Tom Perrotta and Susan Orlean.

Since 2007 Grub Street has awarded an annual National Book Prize to recognize the best authors in the fields of fiction, nonfiction and poetry. The Grub Street National Book Prize is perceived in the marketplace as a prestigious award that is recognized as Grub Street's endorsement of high-quality literary works, according to Grub Street's complaint in Massachusetts federal court.

The writing center says it recently learned about the Escondido, Calif.-based Grub Street Reads, which operates a website using a name virtually identical to Grub Street's trademark to promote and solicit business for a paid book review service.
For a fee, Grub Street Reads will review and endorse a book as "Grub Street Reads Endorsed," in order to allow the paying author to tout its endorsement in marketing the book, according to Grub Street.

"Given Grub Street's renown in the literary and writing community, there is little doubt that Grub Street Reads was aware of Grub Street's prior use of and rights in the Grub Street mark at the time that it chose to adopt a confusingly similar mark," the complaint says. "Grub Street Reads' adoption of a confusingly similar mark was intentional and designed to free-ride on Grub Street's established goodwill."

The difference between Grub Street Reads' use of the trademark and Grub Street's original use is the "unfettered willingness" with which Grub Street Reads awards its endorsements, according to the complaint. Grub Street Reads claims that it does not endorse everyone, but suggests that almost half of the paid submissions it receives are endorsed, it says.

The name Grub Street originally refers to an area in London famous up until the 19th century for being a home to hack writers, low-end publishers and cheap booksellers existing on the margins of respectable literary society.

UK Court Upholds Cadbury Purple Packaging Trademark Protection

October 2, 2012,

candy-easter-cadbury.jpgOrange County - A United Kingdom court ruled on Monday that venerable candy maker Cadbury PLC is entitled to trademark protection for its signature purple wrapping on its milk chocolate bars, in response to a challenge from Nestle, according to news reports.

Judge Colin Birss of the High Court of Justice reportedly ruled that the Pantone 2865C shade of purple has become distinctively identified with Cadbury's Dairy Milk bars, which Cadbury has packaged in the color since 1914, the New Statesman reported Tuesday.
The judge refused to allow trademark protection for the shade in relation to different types of chocolate, or boxes of chocolate, narrowing Cadbury's desired range of goods for the trademark to milk chocolate and chocolate drinks.

Nestle Inc. originally opposed Cadbury's application for a trademark for purple in relation to chocolate in 2008, arguing that the color is not distinctive enough, covered too wide a range of goods and was applied for in bad faith on Cadbury's part, according to the New Statesman.

Cadbury first applied for the trademark in 2004 in relation to chocolate in bar and tablet form, chocolate confectionery, chocolate assortments, cocoa-based beverages, chocolate-based beverages, preparations for chocolate-based beverages and chocolate cakes. The application was accepted and published in 2008, but could not be officially registered at that time due to Nestle's challenge.

In November the U.K. Intellectual Property Office ruled that the shade held enough distinctive character to merit a trademark.

Cadbury made Kraft Foods Inc. the world's largest producer of chocolate when Kraft bought the company in 2010.

"We welcome the decision of the High Court which allows us to register as a trademark and protect our famous color purple across a range of milk chocolate products," a Cadbury spokesman told Design Week. "Our color purple has been linked with Cadbury for more than a century and the British public have grown up understanding its link with our chocolate."

Nestle, for its part, told Confectionery News that the court's decision represents only a partial victory for Cadbury, as it significantly narrowed the scope of the trademark.