Orange County Trademark Attorney - Orange County Trademark Lawyer

Orange County - Bausch & Lomb Inc., well-known optical innovators since the early 1900's, recently filed a counterclaim seeking cancellation of a trademark in a lawsuit in which Bausch & Lomb was sued for trademark infringement. The trademark at issue is "See better Live Better".

The Plaintiff in the lawsuit is Stuart J. Kaufman, M.D., a Florida Ophthalmologist who owns SEE BETTER LIVE BETTER U.S. Trademark Registration No. 3,917,064 for physician services in the field of ophthalmology. Mr. Kaufman is seeking injunctive relief as well as damages from Bausch & Lomb's use of the phrase "See better. Live better" in advertising and on its web site.

The original complaint against Bausch & Lomb was filed in February. In response to being sued, Bausch & Lomb decided to file the counterclaim against Dr. Kaufman asserting that SEE BETTER LIVE BETTER is a generic term in the industry of eye care and therefore the trademark should be cancelled by the U.S. Patent & Trademark Office. In the counterclaim, Bausch & Lomb states that many others in the eye care industry are using the slogan or similar slogans and therefore "No one party should have exclusive rights to this popular phrase." In its counterclaim Bausch & Lomb states that "See Better Live Better is generic for eye services that help people see better so that they can live better."

While it may be a stretch to say that the trademark is inherently generic, Bauch & Lomb can still be successful in cancelling the trademark if it can prove that it is in widespread use. Examples of trademarks that became generic over time are ASPIRIN and CELLOPHANE. To support its claim that the trademark has become generic, the counterclaim lists many other uses of the trademark including uses by ophthalmologists that allegedly used the slogan prior to Mr. Kaufman. This is somewhat of a position pill argument in that Bausch & Lomb is arguing that it also is not entitled to trademark protection in the slogan. Considering this, it may be advisable for Bausch & Lomb to cease use of the phrase regardless of the merits of the claim.

Dr. Kaufman is accusing Bausch & Lomb of "reverse confusion." In other words, he is alleging that the public will believe that Bausch & Lomb is the true owner of the trademark which will lead the public to believe that Mr. Kaufman is the infringer rather than Bausch & Lomb.

Orange County - Unilever NV and International IP Holdings, LLC are in a trademark war, debating whether International IP Holdings' SLIMFUL trademark used in relation to diet foods infringes Unilever's SLIM-FAST trademark.

On March 18th, International IP Holdings filed a lawsuit against Unilever subsidiary Conopco, Inc. in Michigan federal court seeking a declaratory judgment that Conopco has no grounds to preclude it from using the SLIMFUL trademark.

"Conopco does not own a trademark registration for the term 'Slimful,' it has never used the term as a trademark to identify the source of any product, and the term 'Slimful' does not appear anywhere on Conopco's products," Internationbal IP Holdings' complaint said.

International IP Holdings claimed that Conopco gave it notice in mid-February that the Slimful product packaging infringed the Conopco's Slim-Fast meal replacement trademarks and trade dress. International IP Holdings argued that its packaging did not infringe Conopco's trade dress, as it had used significantly more yellow than red to distinguish its product from Slim-Fast. International IP Holdings also claimed that its packaging has other features, such as the typeface and artwork, that are significantly different from what is used on the Slim-Fast bars.

The day after International IP Holdings filed its complaint for declaratory relief, Unilever fired back by filing a lawsuit in New York federal court, claiming that the Slimful products infringe its trademarks and trade dress.

Unilever said in its complaint that Slimful's packaging uses "simulations, confusingly similar variations, or colorable imitations" of the Slim-Fast packaging and that the company has blatantly copied the Slim-Fast trade dress.

Unilever also claims that International IP Holdings filed an application for SLIMFUL even though it had knowledge of the SLIM-FAST trademark and the fact that it has been in use since 1977 on billions of dollars worth of meal replacements and other diet products. Unilever also alleged that International IP Holdings has made false and misleading claims about its own products.

International IP Holdings responded to Unilever's lawsuit on Thursday with a motion to dismiss, claiming that it had filed its claim in Michigan first and that the case was not linked to New York and therefore the New York federal court does not have jurisdiction over the matter.

Orange County - Tiffany & Co. filed a trademark infringement lawsuit against Costco Wholesale Corp. claiming that the discount retail giant sold unauthorized diamond engagement rings with the Tiffany brand name.

The high-end jewelry maker claimed that it discovered Costco was using the Tiffany name to market and sell diamond engagement rings at its various retail locations across the United States through an internal investigation.

"Costco was able to sell... engagement rings falsely identified as 'Tiffany,' and thereby unlawfully trade on Tiffany's goodwill and brand awareness to increase its own sales," the complaint said.

Tiffany claimed that Costco's use of the Tiffany brand name harmed the high-end jewelry retailer by associating its high-end name with a budget retail chain. Tiffany also claimed that Costco purposely attempted to evade detection of its infringement by only selling and marketing the unauthorized Tiffany-branded engagement rings in stores and not promoting the rings online.

"The only place the Tiffany trademarks were displayed were on point of sale signs within a glass case in the jewelry departments of Costco warehouse stores, making them visible only to Costco members shopping for engagement rings in particular stores where the rings were displayed," Tiffany said.

Tiffany claims that Costco's use of its trademark in conjunction with the engagement rings it sold mislead customers to believe they were buying genuine Tiffany rings and caused them to see Costco as a retailer of fine jewelry products.

"Since these rings themselves were not Tiffany, the counterfeits made other non-branded jewelry in the same display case appear more valuable by comparison since those other items were, in fact, no different than what was falsely labeled as Tiffany," Tiffany said.

Tiffany addressed the alleged infringement with Costco in December and Costco agreed to cease using the Tiffany name in all of its store locations. However, Tiffany is still seeking Costco's profits from selling the alleged counterfeit goods, treble damages, and an order requiring Costco to make a public statement regarding its misconduct and to notify all purchasers of the rings that they had not bought authentic Tiffany jewelry.
Tiffany is accusing Costco of trademark infringement, counterfeiting, dilution, and false advertising.

Orange County - DC Comics Inc. filed a lawsuit in Orange County against a custom carmaker claiming that the automaker is infringing its trademarks and copyrights by building and selling replicas of the Batmobile.

Mark Towle, who owns Gotham Garage in Orange County, asked U.S. District Judge Ronald S.W. Lew of the Central District of California to grant his motion for summary judgment claiming that DC Comics knew he had been building the Batmobile for at least ten years and said the company had waited too long to assert its rights.

The carmaker claimed that he was contacted in 2003 by counsel for Warner Bros. Entertainment Inc., the parent company of DC Comics, regarding a photograph the company had come across depicting the Batmobile in various stages of production at Towle's place of business in Santa Ana, the most populous city in Orange County.

Towle argued that although they knew his business made Batmobiles much earlier, DC Comics did not sue him for copyright and trademark infringement until May 2011. Because of this, Towle claims that DC Comics waited too long to file the lawsuit. He also argued that counsel for Warner Bros. never mentioned to him he was infringing on its copyrights or trademarks and never told him to stop his replica building activities.

According to Towle, the testimony of DC Comics' deputy counsel for intellectual property demonstrated that the company had not been enforcing its intellectual property rights with Batmobile reproducers in any way from 1995 to 2010, effectively waiving its right to sue for infringement by failing policing its trademarks and copyrights.

Towle also argued that DC Comic's trademark BATMOBILE only registered in November of last year for use on automobiles. Before that date, DC Comics was not in the automobile market and therefore it could not have suffered any damages from his Batmobile sales.

The comic book publisher argued that Judge Lew should grant its competing motion for summary judgment, arguing there is no evidence DC Comics knew about Towle's infringement in 2003 and claiming he should have to reimburse the company for the profits he earned by using the company's trademarks and copyrights without authorization.

Gotham Garage's business relies on building replicas of the most iconic cars from the movies, the Batmobile being crucial to the business. The cars sell for as much as $90,000 and customers wait more than a year for a custom car.

Orange 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.

Orange 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.

Orange County - Bob Marley's relatives have settled a family feud that began when Marley's half brother exploited the late singer's legacy for financial gain.

Fifty-Six Hope Road Music Ltd., which represents Bob Marley's widow and nine of his children, filed a lawsuit against his half brother Richard Booker in December 2011. The lawsuit followed a cease and desist letter Fifty-Six Hope Road sent to Richard Booker in March 2009, which Booker failed to respond to or comply with.

In the complaint, Hope Road claimed that Booker had used Bob Marley's trademarks, along with his name and likeness, to promote business ventures thereby capitalizing on Marley's legacy even though he does not own right's to Marley's name, likeness, persona or identity.

Hope Road claimed in the complaint that the "defendants' use continues unabated and, in fact, has increased in scope." It also alleged false designation of origin, trademark infringement and dilution, and copyright infringement.

Hope Road claimed that Booker's trademarked 9 Mile Music Festival was named for the Nine Mile Village in Jamaica where Bob Marley was born and buried. It claimed that Booker had used Marley's name in conjunction with the festival, including using the headline "All For the Love of Bob Marley" in a press release promoting the event. Hope Road also claimed that Booker used copyrighted images of Bob Marley on his website to promote the event.

In addition to its claims about the festival, Hope Road claimed that Booker had used Marley's name and likeness to promote business ventures relating to food items, liquor, and tour packages.

Booker attempted to register the trademark "Mama Marley" to use in conjunction with a Jamaican food restaurant, which Hope Road filed an opposition to in August 2008.
Hope Road acknowledged that Booker did have a licensing agreement at one time to use Bob Marley's trademarks, but claimed that Booker reneged on the agreement.
Despite their differences, the parties were able to settle the case, though they are keeping details of the settlement confidential.

According to the joint stipulation filed Friday, the parties "hereby stipulate to and agree that between them they have reached a settlement resolving all claims at issue in this case and that all claims for relief alleged herein ... shall be dismissed with prejudice."

Orange 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.

Orange 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.

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.

Orange 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.

Orange 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.

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.

Orange 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.

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."