San Diego Trademark Attorney® Blog

February 2012 Archives

San Diego Based Cricket Wireless Prevails in Trademark Infringement Lawsuit

February 21, 2012,

cellphone-flip-isolated-in-white.jpgSan Diego - Communications provider Cricket Wireless has recently won a trademark infringement and false advertising lawsuit against ABC Wireless Choice, a wireless communications provider in Chicago. The San Diego trademark attorney representing Cricket announced that his client has been awarded a permanent injunction and all attorneys' fees in the case.

According to federal trademark law, the courts may award injunctive relief if there is evidence that the defendant has mislead consumers by falsely implying a connection to the plaintiff, confusing buyers as to the source of its goods and services. In "exceptional" cases, in which the defendant is found to have acted maliciously, fraudulently, willfully, or deliberately, the courts may award attorneys' fees to the plaintiff.

In its trademark infringement complaint against ABC Wireless Choice, Cricket was victorious on all counts and was also able to prove the variables for an "exceptional case," thus receiving the award for attorneys' fees.

According to the complaint, ABC Wireless Choice infringed on the Cricket Wireless trademark and blatantly implied it was somehow connected to the San Diego provider by displaying the Cricket trademark and logo on its signs and banners. ABC was not offering any Cricket Wireless products or services for sale, however its attempts to lure potential Cricket customers to its stores to purchase its competing telecommunications goods and services were intentional. Upon investigation by Cricket Wireless representatives, ABC was found to have engaged in activities that were unlawful and described as a "bait and switch" scam at the expense of Cricket and its customers.

In addition to these findings, ABC Wireless choice reportedly threatened Cricket Wireless employees and repeatedly attempted to evade service of process, the procedure that would give it legal notice of Cricket's complaint.

Founded in 1999, Cricket Wireless provides wireless communications service to seven million customers in the United States. Cricket is a subsidiary company of Leap Wireless, which owns and operates the seventh largest wireless communications network in the country, utilizing its CDMA 1X and 1xEV-DO networks.

No comment was available from either party on the court's verdict.

University of Alabama Trademark Infringement Claim Headed to Court

February 10, 2012,

football.jpgSan Diego - A federal appeals court will hear arguments in a trademark infringement battle between sports artist Daniel Moore and the University of Alabama, whose football program is portrayed in a number of his works. The two parties will present their cases to the United States Eleventh Circuit Court of Appeals in Atlanta later this week.

The trademark infringement dispute began back in 2005 when the university sued Moore for allegedly violating trademark law after he had painted scenes from football games depicting Crimson Tide players in their crimson and white football uniforms without the authorization of the University. The University of Alabama's complaint also contends that Moore reissued previously licensed prints of the football players without paying any royalties to the University, located in Tuscaloosa.

Both parties appealed their cases after a judge's ruling in 2009 found that Moore's paintings and prints were protected under trademark law but that other items, such as coffee mugs, weren't. United States District Court Judge Robert Propst ruled that Moore's artwork depicted on mugs, T-shirts, and other merchandise did indeed infringe on the University's trademark.

The Birmingham-based artist stated that the items covered in Judge Propst's ruling are "incidental items" that are a very small part of his business in terms of revenue. He added that he was pleased with the judge's ruling that his paintings and large prints have not, do not, and will not infringe on the University's trademark, because those are the "meat and potatoes" of his business.

In his defense, Moore denied violating trademark laws and maintained that his artwork constitutes free speech under the United States Constitution. "The University of Alabama believes the court ruled correctly when it found that Daniel Moore and his company engaged in activities that infringe on the University's trademarks," commented University spokeswoman Deborah Lane. "While we regret the necessity of having to involve the courts in this matter, the lawsuit was necessary since the University of Alabama must protect the value and reputation of our trademarks, name, colors, indicia, and logos, by determining who uses them, as well as when and how they are used."

Moore's paintings and prints illustrate some of the more pivotal moments in Alabama sports history, including "The Goal Line Stand" from the 1979 Sugar Bowl game against Penn State. His latest work of art is reportedly going to depict "The Shoutout" from last season's national championship win over LSU.

State Supreme Court Refuses to Dismiss Lottery Trademark Infringement Lawsuit

February 1, 2012,

cash-suitcase.jpgSan Diego - A state Supreme Court in Arkansas is refusing to toss out a Little Rock marketing firm's trademark infringement lawsuit in which it is seeking exclusive rights to certain Arkansas state-related lottery phrases it claims it used before Arkansas ever had a lottery.

In a 4-3 decision, the divided Supreme Court dismissed the Arkansas Lottery Commission's appeal of a circuit judge's ruling which denied its motion for summary judgment in the trademark infringement complaint filed by Alpha Marketing. Throughout the case, the Commission has argued that it is exempt from civil suits, however Circuit Judge Wendell Griffen never addressed that issue in his ruling.

Alpha Marketing reportedly filed its complaint against the Lottery Commission after its owner Ed Dozier was informed by the state attorney general's office that he would be sued if his company continued to use the lottery-related phrases, which have appeared on merchandise such as T-shirts. United States Patent and Trademark Office (USPTO) records indicate that Alpha Marketing registered the lottery-related trademarks as early as 1994, however the state of Arkansas did not have an official lottery until 2009.

In its lawsuit, Alpha Marketing is seeking a decision from the state Supreme Court that it has exclusive trademark rights to the phrases, "Arkansas lottery," "Arkansas Lotto," and "Lottery Arkansas."

During its arguments heard before the Arkansas Supreme Court last month, a trademark lawyer representing the attorney general's office argued that the Lottery Commission has sovereign immunity since it is run as a state agency and therefore exempt from lawsuits. This argument was countered by Alpha Marketing attorneys who insisted that the sovereign immunity defense does not apply because the state lottery is operated as a for-profit business.

The majority ruling from the Supreme Court wrote that it could not consider the sovereign immunity defense without a ruling from the lower-court that specifically addresses it. Although it dismissed the appeal, the Supreme Court did say that the Lottery Commission could return after obtaining a ruling from the circuit judge on the issue of sovereign immunity.

State Supreme Court Justice Robert Brown wrote in his opinion, "In my judgment, it is the obligation of this court to facilitate trials through our procedures, not impede them. By requiring additional magic words from the circuit judge, which would amount to surplusage in light of the judge's clear decision, and by discounting his actions, this court has endorsed a trap for the unwary in the practice of law."