San Diego Trademark Attorney® Blog

August 2012 Archives

Gap Settles Kim Kardashian's Old Navy Ad Likeness Suit

August 29, 2012,

old-navy.jpgSan Diego - The Gap Inc. last week put to rest reality television star Kim Kardashian's legal action alleging the company's Old Navy subsidiary ran a television commercial featuring an actress who looks so similar to Kardashian that her rights of publicity were violated.

Judge Dale S. Fischer of the Central District of California dismissed Kardashian's suit on Tuesday, after her counsel told the court on Friday that the parties had struck a settlement deal, without going into any further detail.

Kardashian stars in "Keeping Up With The Kardashians," which her 2011 complaint against the Gap claims to be the most-watched series in the history of its cable channel, E! Entertainment Television. The show has helped her attain "an extraordinary level" of popularity and fame, with over eight million Twitter followers, the complaint notes.

In February 2011 the Gap launched a multimedia advertising campaign to promote its Old Navy apparel and fashion products, allegedly using Kardashian's likeness, identity and persona without her consent, according to the complaint. Kardashian alleged violations of the Lanham Act for unfair competition, as well as California's right of publicity statute.

The Old Navy commercial "Super C-U-T-E" stars model Melissa Molinaro, another reality television personality, who has been featured in "Making the Band 3" and "Pussycat Dolls Present: The Search for the Next Doll." The ad spot is still available to view on YouTube.

In addition to featuring Molinaro as a "celebrity lookalike," the ad incorporated various elements of Kardashian's persona and identity into its visual presentation and storyline, the complaint says.

The commercial immediately received substantial interest and attention from the media and the consuming public, as a direct result of the Gap's use of a Kardashian lookalike, according to the complaint.

The Gap knowingly and intentionally took steps to exacerbate and perpetuate the confusion over whether it really was Kardashian in the commercial, the complaint says.

San Diego Vegan Restaurant Attacks Starbucks Over "Evolution" Trademark

August 23, 2012,

coffee_beans.jpg San Diego - Evolution Fast Foods LLC, operator of a San Diego vegan fast food restaurant, sued Starbucks Corp. and its Evolution Fresh Inc. subsidiary this month for unauthorized use of its trademarked name.

Starbucks has opened restaurants in Washington state under the Evolution Fresh brand name that operate in direct competition with Evolution Fast Foods in the vegan and vegetarian restaurant industry, according to the complaint Evolution Fast Foods filed on August 13.

Beginning in 2009, Evolution Fast Foods was organized as part of a rebranding of an ongoing restaurant called Nature's Express, which served only vegan foods and juices. Evolution Fast Foods manager Mitch C. Wallis holds the trademark rights to the company's name, the complaint says.

The date of first use of the Evolution Fast Food mark was at least as early as April 20, 2010, the company asserts. The mark was registered as a federal trademark as of May 10, 2011 for cafe and restaurant services.

Evolution Fast Food asserts that Juice Harvest Corp. obtained a trademark for "Juice Evolution" in October 1998, and then was issued one for the word mark "Evolution" and a related logo in April 2010, pertaining to fruit and vegetable drinks and juices.

Juice Harvest then assigned all rights to its trademarks to Evolution Fresh in May 2010, and Starbucks bought Evolution Fresh in November 2011, the complaint says. News reports placed the purchase price at $30 million.

Starbucks acquired Evolution Fresh to build a nationally recognized brand name in the health and wellness industry, and to that end opened two restaurants under the Evolution Fresh brand name, first in Bellevue, Washington in March and then in Seattle, Washington in July, Evolution Fast Foods says. The pair of restaurants are only the first of many Starbucks plans to open under the Evolution Fresh name, according to Evolution Fast Foods.

When the Bellevue restaurant opened, Starbucks unveiled a new logo bearing the words "Evolution Fresh" that is far different from Evolution Fresh's original "Evolution" mark, and is substantially similar to Evolution Fast Foods' mark, the complaint says. Evolution Fresh filed an application in May for a federal trademark for "Evolution Fresh" as pertaining to restaurants and cafes, it says.

On August 15, two days after Evolution Fast Foods filed its lawsuit, Starbucks announced that it would be building a major new juice factory in Rancho Cucamonga, California to expand the Evolution Fresh line. The company currently operates a juice plant in San Bernardino, California, where Evolution Fresh got its start.

Melrose Jewelers Accused Of Trademark Infringement By Rolex

August 13, 2012,

watch.jpgSan Diego - Rolex announced that it has recently initiated a trademark infringement lawsuit against Melrose Jewelers. After purchasing multiple products from the Los Angeles jeweler, Rolex alleges that the defendant is offering counterfeit products that use the Rolex trademarks without authorization. In its court documents, Rolex claims that Melrose also intentionally created websites to promote, advertise and sell counterfeit watches and parts. Rolex also says that Melrose is using the registered Rolex trademarks to sell its counterfeit products in retail locations, in advertisements and on the Internet. The famous watchmaker claims that it is in no way affiliated with the jewelry store and use of its trademarks is causing consumer confusion and deception. Rolex alleges that Melrose's actions constitute "false designations of origin, false descriptions and unfair competition".

Melrose argues that it only acquires authentic timepieces and parts to sell on its websites and at its retail locations. The jewelry store insists that it only offers the highest quality products and offers up its $10 million revenue from 2011 as proof. Melrose offers other luxury brands for sale including Breitling, Cartier, Tag Heuer and Omega. The popular jeweler claims that it sells pre-owned timepieces and restores previously worn watches, but vehemently insists that it does not include counterfeit products or parts. It also claims that its jewelers conduct thorough inspections of products to ensure that only the best quality watches are offered to its consumers.

Rolex is also alleging that Melrose conducts business through six separate websites that utilize the Rolex trademarks and direct Rolex consumers to Melrose Jeweler websites. The websites include: rolexgiveaway.ca, rolexblogsite.com, rolexblogsite.net, rolexwatchforum.com, rolexwatchforum.net, rolexwatchforums.com, and rolexwatchforums.

Rolex is asking for a court order to prevent Melrose from using its trademarks. It is also seeking a permanent injunction to shut down the websites offering new or previously owned products under the Rolex brand names or utilizing meta tags or keywords incorporating the Rolex trademarks. The luxury watchmaker is seeking $2 million in damages, or up to $100,000 for each domain name Melrose has used. Rolex is also seeking attorney's fees and court costs.