Orange County Trademark Attorney® Blog

January 2013 Archives

H&R Block Sues Intuit for Trademark Infringement and False Advertising

January 28, 2013,

money-cut.jpgOrange County - Three units of H&R Block Inc. filed a lawsuit against TurboTax maker Intuit Inc. claiming that the company launched an advertising campaign that infringes H&R Block's trademark and misleads consumers as to the legitimacy of H&R Block's services.

H&R Block Eastern Services Inc., HRB Innovations Inc. and H&R Clock Enterprises LLC oppose the newest marketing campaign Intuit launched in order to promote the do-it-yourself tax return software for the upcoming tax season. H&R Block accused Intuit of airing advertisements that make unauthorized use the H&R Block trademark and falsely represent H&R Block's competence to file tax returns.

H&R Block claims it has spent over half a century building its trademark, which is strong, distinctive and famous. The complaint alleges that Intuit is using its trademark in order to degrade the company and enhance its own profits.

The complaint alleges its trademark is being used in the advertisements to compare services and to suggest that H&R Block recruits and employs tax preparers with no experience, who are not adequately trained or credentialed and are simply seasonal employees while TurboTax offers "real tax experts" to handle customer questions.

H&R Block also alleges that Intuit's advertising campaign attacks the reputation of H&R Block by suggesting that more people use, and therefore trust, TurboTax than H&R Block's traditional in-store services.

The complaint goes on to say that Intuit's "claims are unsupported and its actions are not innocent." It alleges that the campaign was timed to launch at the beginning of the tax season in order to maximize Intuit's benefit and to inflict the maximum amount of harm on H&R Block.

The complaint seeks immediate injunctive relief, claiming that if Intuit is allowed to continue its advertising campaign it will do irreparable harm to H&R Block. "Every day that the Campaign continues to run, Plaintiffs suffer great harm in that Defendant's misinformation may lure an untold number of consumers to Defendant's product, dissuade consumers from seeking Plaintiffs' services, or both," the complaint said.

H&R Block claims monetary remedies are not sufficient, as each current customer of H&R Block that is duped by the advertising campaign is likely to be a customer lost for life, as tax preparers tend to use the same method every year. Though, the complaint does ask for Intuit's profits that were obtained by its deceptive ads and for other damages.

Kardashian Sisters Face $10 Million Counterclaim for Trademark Infringement

January 15, 2013,

cosmetics.jpgOrange County - The Kardashian sisters and the cosmetics company Boldface Licensing + Branding were hit with a $10 million trademark infringement counterclaim in California federal court by a Florida-based makeup artist on Wednesday.

Makeup artist Lee Tillett owns the KROMA trademark, a name she uses on her line of cosmetics. In her counterclaim, Tillett alleges Boldface's use of the brand name Khroma, which is endorsed by Kim, Kourtney and Khloe Kardashian, constitutes trademark infringement, false designation of origin, and unfair competition.

The dispute started when Tillett sent a cease and desist letter to Boldface in June 2012 when she learned of the company's intention to use the name. The parties communicated back and forth but were unable to reach an agreement.

Tillett's counterclaim came as a response to the November 2012 lawsuit Boldface filed requesting a declaratory judgment that Boldface be able to use Khroma as the brand for its cosmetics line, despite Tillett's trademark.

In a recent trademark registration for KROMA, Tillett claims she has been using the Kroma name since 2004. Because of the similarity between the two names, the United States Patent and Trademark Office rejected Boldface's applications for the KHROMA trademark on grounds that it would likely cause confusion between the two brands.

Boldface was founded by Nicole Ostoya in Nevada, with the intent of licensing entertainment and designer brands to launch cosmetic lines. "Khroma Beauty by Kourtney, Kim and Khloé" is the first line of cosmetics the company has launched and Tillett claims that Boldface would quickly run out of money without the Kardashian's line.

In the counterclaim, Tillett alleges that the high profile of the Kardashian sisters and the hype around the Khroma brand has caused a significant amount of confusion between the two cosmetic lines. She claims this has caused people to assume her Kroma products are associated with the Kardashian sisters and has diluted and damaged her brand.

Tillett also claims that she was in talks with a representative of Kim Kardashian about a product placement deal for her Kroma cosmetics on the reality television show "The SPINdustry," which Kim Kardashian produces. They were unable to make a deal and Tillett claims Kim came up with the Khroma name after their negotiations ended.
In her prayer for relief, Tillett requested that the court dismiss the case brought by Boldface, issue an injunction prohibiting Boldface from using the name Khroma, require corrective advertising, disgorgement of profits, relief for lost profits, legal costs and treble damages for trademark infringement.

The California-based cosmetics company Chroma Makeup Studio LLC is also suing Boldface for trademark infringement in a separate lawsuit in the same court.