San Diego Trademark Attorney® Blog

July 2012 Archives

Gucci Wins Trademark Infringement Lawsuit Against Great-Grandsons of Gucci Founder

July 31, 2012,

purse.jpgSan Diego - Most people know that few fights can be as bad as those within the family. Lately Gucci became as well known for its high profile trademark infringement battle against family members as it is for its famous brand. In 2009, the fashion house sued the former wife of one of the grandsons for attempting to open Gucci coffee shops. In 2010, the Gucci Group sued Cosima and Elizabeth Gucci for attempting to open a line of global hotels. And last week, Gucci announced that it was successful in a trademark infringement lawsuit against the great-grandsons of its founder.

Guccio and Alessandro Gucci, great-grandsons of the founder, produced handbags and accessories under the brand name ToBeG. The grandsons had chosen not to use the trademarks on the actual products themselves. However, a judge in Florence nonetheless found the two guilty of infringing on the Gucci trademarks. Despite having created products under its brand name for over four years, the owners of ToBeG, were sued by the Gucci Group for making unauthorized use of the Gucci trademarks in marketing communications and website activities. Consequently, the Florentine court held that using the names "Guccio Gucci" and "Gucci", created an "unfair association" between the Gucci trademarks and the products of ToBeG. Additionally, unauthorized use of the Gucci trademarks created a likelihood of confusion between consumers of the products produced by the two companies. As a result, the court held that the ToBeG products took unfair advantage of the qualities and reputation of the famous brand.

Gucci was founded in Florence Italy in 1921 and quickly became known for making high-quality clothing, watches, jewelry, shoes and leather goods. Both of the great-grandsons began their careers working for Gucci's well-known fashion label. Guccio Gucci (named after his great-grandfather) left Gucci after 12 years to work for his father, and then to set up his own company in 2008.

Stratosphere Owners Sue Online Gaming Company Marchex for Trademark Infringement

July 24, 2012,

slot_machine.jpgSan Diego - Online gambling is a new threat to traditional casinos. But it appears that brick and mortar casinos still hold a degree of control, particularly when it comes to protecting intellectual property. In a battle of the old versus the new, American Casino and Entertainment Properties which owns the Stratosphere recently filed a lawsuit against Marchex Sales Inc., a mobile and online advertising company out of Seattle, Washington.

The lawsuit, filed in District Court in Las Vegas, alleges trademark infringement and asks for an immediate injunction to shut down a website run and presumably owned my Marchex. In addition to trademark infringement, the court documents allege that Marchex was also in the business of cyberquatting. Cybersquatting involves registering a website domain name that is confusingly similar to that of another party's trademark. Then, the cybersquatter uses the site to direct incoming traffic to its own websites or advertising.

In the lawsuit, American Casino alleges that Marchex used a website called aceplay.com, which led consumers to believe they would be offered information about Stratosphere and three other properties owned by American Casino. However, links to the Marchex website produced a number of non-related links for competing hotels and casinos. The same links directed users to online gaming sites, which in turn generated "click-through" revenue to Marchex from online casinos.

American Casino argues that it owns the exclusive rights to use the words "Ace Play" in connection with gaming services because it owns the "ACE PLAY" trademark. Evidently, the District Court Judge hearing the case agreed because it issued a temporary restraining order requiring the immediate removal of the aceplay.com website from the Internet. U.S. District Court Judge Gloria Navarro specified that the domain name was to be placed on a "hold and lock" and immediately transferred to the control of the court. A final decision on the case is expected in the coming months.

Start-Up Drink Company Sued By Under Armour For Trademark Infringement

July 18, 2012,

lime.jpgSan Diego - In a battle worthy of any David versus Goliath story, the makers of Bodyarmor SuperDrink, are being sued by popular sports apparel company Under Armour. The lawsuit, filed in United States District Court for the District of Maryland, alleges that the name of the new beverage line by Bodyarmor is confusingly similar to the Under Armour trademarks.

In response to the lawsuit, the drink manufacturer filed its answer to the claim last week. Bodyarmor SuperDrink chairman Michael Repole claims that his company has the resources and expertise to fight the lawsuit against Under Armour to the fullest extent possible. Repole also hopes that Bodyarmor can set a positive example for small companies that are harassed by larger companies hoping to bully competitors into submission. In further response to the lawsuit, Bodyarmor commissioned a scientific consumer perception survey to conclusively demonstrate that its products in no way cause confusion with consumers.

According to Lance Collins, founder and CEO of Bodyarmor SuperDrink, the trademark infringement lawsuit by Under Armour came as a surprise. Bodyarmor registered its trademark with the United States Patent and Trademark Office with no objection from Under Armour. Then, almost five years after the trademark application was filed, Under Armour decided to pursue a lawsuit to alleging that Bodyarmor's new products cause confusion with Under Armour's trademarks. He argues that the products manufactured by both companies are distinctly unrelated and share no branding similarities. As such, representatives for Bodyarmor claim that the company is baffled as to why a large multi-national corporation would decided to pursue such a meritless lawsuit against a small start-up company with a distinctly different product specialty.

Lance Collins created FUZE Beverages and NOS Energy Drink. Both were sold to Coca-Cola in 2007. Michael Repole is the co-founder and former president of Vitaminwater, which was also sold to Coca-Cola in 2007. Their new product Bodyarmor Superdrink, is a proprietary blend of nutrients that allegedly contains superior nutrition, excellent hydration and delicious taste. The energy drink comes in 7 fruit and tea flavors and was voted Best Functional Beverage of 2011 by BevNet.com.

Heart Attack Sandwich Doesn't Die Due To Trademark Infringement

July 9, 2012,

cheeseburger.jpgSan Diego - While most restaurants seem to be moving more toward healthier foods, other restaurants are going in a decidedly different direction. Look no further than the Heart Attack Grill in Las Vegas. Recently a U.S. District Judge in New York ruled that a deli there can continue to use the phrase "Instant Heart Attack Sandwich" as described on its restaurant menu despite the Las Vegas eatery's use of a similar name.

The Heart Attack Grill, an off-beat medically themed restaurant located in Las Vegas, has a menu that includes items such as "Fat Bastard Wines", "ButterFat" milkshakes and "Flatliner" fries cooked in lard. The restaurant also displays the slogan "Heart Attack Grill. Taste Worth Dying For!" and "Fight Anorexia". The servers at Heart Attack Grill are dressed in nurse and doctors uniforms and will serve a person weighing over 350 lbs. all they can eat, for free. The restaurant has received a ton of publicity for someone actually having a heart attack in the restaurant. However, despite its critics, the restaurant is using trademarks such as 'Single Bypass Burger" and 'Double Bypass Burger' which it claims a New York deli is infringing on.

On March 29, 2011 Second Avenue Deli, located in Lower Manhattan, received a cease-and-desist letter demanding that it stop serving its Instant Heart Attach Sandwich and the Triple Bypass Sandwich. The letter originated from the accusation that the deli was infringing on the trademark for 'Bypass Burgers' which is currently in use by the Heart Attack Grill. About a month after receiving the letter, the Deli filed a lawsuit in New York asking the court to rule that it was not infringing on the restaurant's trademarks.

A little more than a year later U.S. District Judge Paul A. Engelmayer described the dispute as "restaurants that use provocative names to market their extravagantly caloric food". The judge ruled that the New York deli can continue to sell its Instant Heart Attack Sandwich and promote it on the menu and on the internet. As for the Triple Bypass Sandwich however, it can only be used by the deli only on its menu. The judge also advised, "In the event that future quarrels arise, the court strongly encourages the parties to eschew provocative cease-and-desist letters or precipitous lawsuits, and instead to work together to try to resolve their differences cooperatively."

The Heart attack Grill's attorney, Darren Spielman, stated, "The Court confirms that the Heart Attack Grill will continue to have unbridled use of its trademarks throughout the entire United States" and "Heart Attack Grill will continue to enforce its intellectual property rights against those who would seek to copy or trade off the longstanding goodwill that has accrued."

NBA Player Anthony Davis Register's Monobrow Trademarks With USPTO

July 2, 2012,

basketball.jpgSan Diego - It has been a banner year for sport's stars and their trademarked catchphrases. Witnessing the popularity of trademark licensing and the tremendous opportunity to profit from marketing products with trademarked names and phrases, it seems that athletes are scrambling to find the latest popular catchphrase to trademark.

Jeremy Lin filed for Linsanity, Tim Tebow filed for Tebowing, Bryce Harper filed for "That's a Clown Question, Brow", and now basketball phenom Anthony Davis has filed for "Fear the Brow" and "Raise the Brow" for trademark protection with the United States Patent and Trademark Office. Davis stated that he filed the trademark applications to ensure that no other parties would profit from the feature that has made him instantly recognizable. And although most people would not consider the possession of a uni-brow a positive attribute, the basketball star insists that it is one of his best features and he intends to profit from it.

In addition to the profits for Davis and his family from the uni-brow trend, Anthony Davis is riding a wave of popularity since he was drafted last Thursday. Known as much for his connected eyebrows as his on-the-court abilities, Davis was celebrated with top selling t-shirts sold during Wildcat games that read, "Fear the Brow".

Among his accomplishments, Davis garnered countless awards, led Kentucky to an undefeated 2011-2012 season, helped his team win the 2012 NCAA Basketball Championship and won the NCAA Tournament Outstanding Player award. The power forward and center played just one year with the Kentucky Wildcats before announcing plans to forego the remainder of his college career and become a professional.

Considering the risks and rewards, fans, coaches and sports analysts were surprised by the move. However, given the tremendous momentum of Davis' career thus far, most experts anticipate a smooth transition from college to professional player. And as a first round pick by the New Orleans Hornets, the start of the rookie's first year is highly anticipated. No information has been released yet about potential manufacturers of apparel or sports memorabilia, but given the spectacular rise to fame of the young basketball star, it is likely that the eyebrow trend will prompt successful sales of fan gear.