San Diego Trademark Attorney® Blog

September 2012 Archives

Wright Medical Accused Of Stealing Stryker Knee Implant Name

September 28, 2012,

knee replacement.jpgSan Diego - Medical device maker Stryker Corp. filed a trademark infringement lawsuit against rival Wright Medical Technology Inc. in New Jersey federal court Thursday alleging Wright is misusing the name for Stryker's latest knee replacement implant to draw people to its own products.

Wright is operating a website that uses the knee implant name trademark to bring attention to its own unrelated knee implant devices, according to Stryker.
Stryker has developed a knee implant and accompanying promotional campaign based on the name "GetAroundKnee," according to the complaint. The company filed trademark applications for the phrase with the U.S. Patent and Trademark Office in December, January and March, all of which remain pending.

The GetAroundKnee campaign launched in February, involving a "massive print advertising effort" beginning in April which continues to be distributed within the orthopedic community and the public at large, Stryker says.

Stryker also invested significant time and money in a series of television commercials beginning in May to promote its "circular motion" knee concept, featuring the GetAroundKnee trademark, and maintains a website featuring the name, GetAroundKnee.com The company claims its promotional campaign is likely to be among the most ambitious direct-to-patient advertising and education efforts ever undertaken by an orthopedic device maker.

Long after that ad campaign was in full swing, Wright registered the domain name Get-A-Round-Knee.com. The accompanying website features little information about Wright's knee implants, according to Stryker.

A Google search for the term GetAroundKnee yields three paid placement ad results, the first of which is Stryker's ad but the very next of which is Wright's ad, using the trademark tagline as a caption and link to its own website, Stryker says. It claims similar results can be found using other search engines like Bing or Yahoo! as well.

Wright has no permission to use the GetAroundKnee trademark in any manner, and has no affiliation, association or sponsorship with respect to the trademark, Stryker says.
"Defendants have acted deliberately in an ongoing attempt to cause substantial and irreparable damage to plaintiffs' business and to confuse consumers as to the source or sponsor of the websites, services and owner of the GetAroundKnee mark," the complaint says."

Johnny Love Vodka Fails To Stop Jim Beam From Using Lips Trademark

September 26, 2012,

vodka-russia.jpgSan Diego - A vodka maker on Tuesday lost its bid to bar Beam Inc., which makes Jim Beam bourbon and other spirits, from using a lip print design on its flavored Pucker Vodka bottles that the vodka maker claims is too similar to its own trademark.
The preliminary injunction sought by JL Beverage Co. LLC, which makes Johnny Love Vodka, cannot be granted because the trademarks at issue are not similar enough, a Nevada federal judge ruled.

"Just like snowflakes and fingerprints, no two lip prints are the same," Judge Miranda M. Du said. "And as with snowflakes, fingerprints, and human lips, the trademarks in this case are not so similar as to create consumer confusion."

The Johnny Love line of vodkas was created by bartender Johnny Metheny around 2003. At the time, Metheny owned several California restaurants and bars, most operating under the "Johnny Love" name. Inspired by the possibility of making money in the beverage business, Metheny said he set out to make a "better flavored vodka."
As part of this endeavor, one of Metheny's friends designed the lips image used on his vodka logo. In his declaration, Metheny stated that he chose to brand his vodka with lips because lips are "definitely sexy," but also "to impart flavor" by coloring the lips to denote the flavor within the bottle of vodka.

JL has used two trademarks featuring the lips image since July 2005, one of which has been registered with the U.S. Patent and Trademark Office since August 2006 and the other since October 2011.

Metheny sold the Johnny Love vodkas to Thomas Diab, JL Beverage's current president, in 2005. JL Beverage asserts that the company has spent considerable time, effort, money, and other resources developing and promoting vodkas bearing its two trademarks.

In the spring of 2010 Beam wanted to redesign and rebrand its Pucker vodkas in order to extend to brand into flavored vodka, and had an outside design firm put together a new label that contains a prominent image of a pair of lips, varying by color depending on the vodka flavor like Johnny Love Vodka. The new Pucker Vodka launched in the spring of 2011.

Beam attempted to register its lips design as a trademark with the PTO in March 2011, but an official in its legal department later learned that the lips were stock art from iStockphoto LP, and while it had a license to use the lips, it could not claim ownership. As a result, Beam withdrew its application.

Beam adopted the lips mark despite the fact that a Beam employee knew that JL Beverage uses lips trademarks in connection with its line of vodkas, according to JL.
But JL Beverage tried to define the relevant market for similar goods too narrowly, according to the judge. The fact that lips symbols are a prominent feature of several other alcohol products weakens the Johnny Love trademark, she said.

Chipotle Accuses Jack In The Box Of Misusing Trademark Name

September 25, 2012,

cheeseburger.jpgSan Diego - Chipotle Mexican Grill Inc. sued Jack in the Box Inc. for trademark infringement in Colorado federal court Friday, alleging the rival fast food chain stole the Chipotle name to sell chicken.

Jack in the Box has ignored Chipotle's previous demands to stop using the Chipotle trademark forever, and will not acknowledge that it is infringing the trademark, according to Chipotle's complaint.

Jack in the Box has been advertising its new Chipotle Chicken Club Combo under the Chipotle trademark, in a single line set apart from other words and phrases, and in a nearly identical font and similar color to Chipotle's trademarked red, Chipotle says.
The chain also uses a slight variation of the Chipotle trademark, "Chipotload," in a nearly identical font in various other ads for the Chipotle Chicken Club Combo. Jack in the Box uses both infringing terms in ads with no other source-identifying mark, indicating to the average consumer that the ad is associated with Chipotle, according to Chipotle.

As evidence, Chipotle pointed to a tweet from the official Jack in the Box Twitter account saying, "Introducing my Chipotle Chicken Club Combo. It comes with fries, a drink and a Chipotload of flavor."

When Chipotle wrote to Jack in the Box after noticing the unauthorized use of its trademark and demanding that its rival stop using the name Chipotle, Jack in the Box responded by saying its use of the word does not infringe Chipotle's trademark.
Jack in the Box also stated in its response that it does not currently plan any future use of "Chipotload," but did not agree to never use the mark again.

The company noted that its current use of the name Chipotle was in connection with a limited time offer that had since expired, but asserted that the use did not infringe the trademark and suggested it would use the name again in the future.

"JITB's use of Chipotle in such a prominent position, coupled with JITB's awareness of plaintiff's well-known and famous Chipotle marks, can only be explained by an intention to wrongly profit from and trade off Chipotle's valuable goodwill and reputation in the Chipotle marks," the complaint says.

Martha Stewart, Emeril, HSN Sued Over German Knife Trademark Infringement

September 17, 2012,

knife.jpg San Diego -- Martha Stewart, her company, Home Shopping Network and Emeril Lagasse were sued last week by a German regional chamber of commerce alleging they are promoting knives marked with the German "Solingen" trademark despite the knives' Chinese origin.

The Chamber of Industry and Commerce Wuppertal-Solingen-Remscheid is a German trade association that owns the "certification mark" "Solingen" in connection with high-quality German products, according to its complaint in the Southern District of Florida filed on Sept. 11.

The Solingen trade name dates back to roughly 1853, and represents the finest quality in German cutlery and other German products, the chamber says. Cutlery solid under the Solingen name is manufactured in Solingen, Germany, and the brand name certifies that the goods its name appears on are of a certain origin and comply with very specific high standards of manufacture.

The cutlery includes knives and blades of all kinds and has been made in Solingen for centuries, with its roots in sword and dagger making. Protection under the name Solingen is provided by special legislation in Germany, the Solingen Decree, which requires that goods marked with the brand meet strict conditions.

Under the decree, anyone selling cutlery or related goods that are not made in Solingen must not give the impression to consumers that their products are made there.

Earlier this year the chamber discovered that some types of cutlery products were being distributed through HSN marked with both the Solingen name and the word "China." After an investigation, the chamber determined that the defendants are selling and distributing different types of cutlery bearing counterfeit and infringing uses of the Solingen trademark.

The knives are marked with Emeril's own trademark name, with "Solingen, Germany" marked on one side of the blade and "China" on the other. Martha Stewart Living Omnimedia Inc. is the current owner of the Emeril brand.

"The spurious mark and designation used by defendants in interstate commerce are identical with, or substantially indistinguishable from, the Solingen certification mark," the complaint says.

The infringing products are likely to cause consumer confusion, wrongly trade on the goodwill and reputation of the Solingen mark, and have unjustly enriched their makers and distributors, according to the chamber.

Stewart, Lagasse and the companies have "disparaged and tarnished" the trademark, the complaint says. Moreover, the counterfeit products are of much poorer quality than the genuine article, as customers have complained of knives rusting and breaking in half, it says.

Lagasse in particular is well aware of the sanctity of the Solingen name, having teamed up with German cutlery company Wüsthof Dreizackwerk KG in 2002 to produce a line of co-branded products. Wüsthof is a well-known company with a factory in Solingen, and properly uses the trademark on their premium cutlery, according to the chamber.

Ninth Circuit Overturns $60M NuVasive Trademark Infringement Judgement

September 11, 2012,

nuvasive-san-diego.jpg San Diego -- The Ninth Circuit on Monday vacated a $60 million trademark judgment and accompanying injunction against the San Diego-based medical device maker NuVasive Inc. in its battle with rival Neurovision Medical Products Inc. over the rights to the trademark "Neurovision."

The appeals court remanded the case to the Los Angeles district court for a new trial and ordered the action to be reassigned to another district judge, scolding Judge Manuel L. Real, who originally presided over the matter.

"Reassignment is warranted on remand because the district court ignored our precedent, persistently cut off or excluded relevant testimony, and repeatedly instructed the jury incorrectly," the Ninth Circuit said.

"In light of the district court's adherence to a view of trademark law that is at odds with clear Ninth Circuit precedent, there is reason to believe that the district judge may 'have substantial difficulty in putting out of his . . . mind previously expressed views or findings determined to be erroneous,'" the appeals court said.

Following a five-day jury trial to determine the parties' rights in the
trademark Neurovsion, the jury awarded $60 million to NMP. The jury found that NuVasive committed fraud in procuring its trademark registrations, that NMP had prior rights in the mark, and that NuVasive wilfully infringed NMP's rights.

The district court entered judgment for NMP, issued a permanent injunction barring NuVasive from using the mark, awarded NMP attorneys' fees and costs, and ordered cancellation of NuVasive's trademark registrations.

The jury's verdict that NuVasive fraudulently procured trademark registrations for the Neurovision mark must be vacated because the district court erroneously instructed the jury regarding the elements required to prove fraud on the United States Patent and Trademark Office, the Ninth Circuit ruled.

There is no requirement that an applicant for a trademark registration disclose all prior use of a mark, contrary to the district court's instruction, according to the appeals court. Instead, an applicant must disclose only those prior users that the applicant believes have acquired superior rights to the mark in the classification for which registration is sought, it said.

The Ninth Circuit ruled that the district court erroneously instructing the jury to determine only whether NuVasive omitted knowledge of NMP's prior use of the Neurovision mark. The proper inquiry is whether NuVasive wilfully omitted knowledge of a superior right held by NMP, it said.

The district judge also wrongly omitted from the jury instructions a key element of proving fraud on the USPTO: that a trademark applicant intend to induce reliance on a misrepresentation, the Ninth Circuit said.

A new trial is also required because the district court failed to properly instruct the jury as to the showing required to challenge an "incontestable" mark, the appeals court said. The district court instructed the jury to answer only whether NMP established trademark rights in the mark through prior use of the mark in commerce, and failed to require that the jury determine both the geographic scope of NMP's rights and whether NMP maintained continuous use of the mark following the acquisition of any state law rights in the mark, the appeals court noted.

The district court was found to have abused its discretion by excluding relevant evidence based on its legally erroneous determination that any differences in the functions and user bases of the NMP and NuVasive devices were irrelevant to the likelihood of confusion analysis. The district court should have admitted NuVasive's proffered evidence, the Ninth Circuit said.

Ben & Jerry's Sues Porn Producers For Ripping Off Trademarked Ice Cream Names

September 6, 2012,

ice_cream.jpgSan Diego - Ben & Jerry's Homemade Inc. and parent company Unilever launched a lawsuit on Wednesday against the makers of Ben & Cherry's, a series of pornographic films, alleging they are infringing a number of trademarks, including those covering the names of several of the ice cream maker's most popular flavors.

The North Hollywood, California-based Rodax Distributors Inc., which does business as Caballero Video, and its two principals make, market, distribute and sell a series of DVDs containing "exploitative, hardcore" pornographic films, according to Ben & Jerry's' complaint filed in Manhattan federal court.

The Ben & Cherry's movies bear titles similar to iconic, well-known Ben & Jerry's flavors such as New York Super Fudge Chunk, Peanut Butter Cup and Everything But The ..., the complaint says. Ben & Cherry's has produced films entitled New York Super Fat & Chunky, Peanut Butter D-Cups and Everything But The ... Butt.

The movies also feature nearly identical simulations of Ben & Jerry's trademarked logos, the complaint says.

The DVDs are marketed in product packaging featuring simulations, confusingly similar variations or imitations of the Ben & Jerry's product packaging and trade dress, according to the complaint.

Ben & Jerry's says it has averaged nearly $500 million per year in sales for the past three years, which represents millions of gallons of ice cream.

"The extraordinary and longstanding success of plaintiffs' Ben & Jerry's brand products over the past 35 years has fostered wide renown and fame with the trade and public," the complaint says.

Despite being put on notice of Ben & Jerry's' rights in its famous and registered family of trademarks, the defendants willfully diluted and infringed the marks, and continue to do so, according to the complaint.

The use of the infringing materials is likely to cause confusion in the minds of consumers, who might mistakenly believe that the movies are affiliated with Ben & Jerry's, the ice cream maker says. The defendants' behavior is also likely to tarnish the ice cream brand's reputation and undermine or damage the brand's substantial goodwill and reputation, the complaint says.

Ben & Jerry's is not a complete stranger itself to lewd ice cream names, as the creator of the trademarked flavor Schweddy Balls.