San Diego Trademark Attorney - San Diego Trademark Lawyer

San Diego - The U.S. Patent and Trademark Office has quietly adopted a more stringent approach to registering "green" trademarks, in practice if not in policy, requiring that applicants demonstrate their genuine environmentally friendly qualities.
Trademark examiners have reportedly started to deny increasing numbers of applications for green trademarks that do not include a statement of environmental friendliness. The trend was first noted by TriplePundit.com in early October, and Forbes subsequently picked up the story, but neither article directly cited hard evidence in support of the reports.

The PTO is said to be refusing the trademark applications on the grounds that the Lanham Act allows it to deny applications that contain deceptive content. Such a justification could suggest that the PTO is taking the initiative to aid in combating the practice of "greenwashing" products that do not actually live up to their green claims.
The PTO, for its part, said no policy change was afoot.

"Contrary to recent reports, the PTO has not adopted a new policy for trademark applications that include the word 'green,'" a PTO representative said Friday. "In fact, there has been no recent policy statement or change in this area."
"All applications are reviewed for statutory compliance with the provisions of the Trademark Act, including Section 2(a) which prohibits the registration of deceptive matter (among other things)," the representative said.

The PTO declined to comment on whether any recent denials of applications could have given rise to policy rumors.

The office doesn't have to adopt or announce any formal new policy to subject green trademarks to greater scrutiny, though, trademark attorney Michael Tschupp said. The PTO already has guidelines and procedures in place for examiners confronted with potentially deceptive matter in a trademark, and that guidance includes provisions for environmental claims, he said.

Tschupp, the proprietor of green trademark news blog SustainableMarks.com, said his own clients have not yet reported any newly aggressive approaches to their green trademarks on the part of PTO examiners. Applicants can expect to see more denials based on deceptiveness going forward, though, he said.

When a trademark conveys some information about a product that is not accurate, the PTO has two basic options, Tschupp said: refuse to register it on grounds of misdescriptiveness, or go a step further and refuse it as deceptive.

A misdescriptiveness refusal can be overcome, and still leaves open the possibility of registering the trademark on the supplemental register, rather than the principal register, Tschupp said. A refusal based on deception, though, is more serious, making the trademark unregisterable under any circumstances, and that is what applicants are now starting to see at the PTO, he said.

An increase in those refusals for green trademarks could lead to challenges to environmental friendliness claims showing up in trademark infringement disputes and litigation, Tschupp said.

"As people are now having to explicitly make these claims in their applications, defendants are going to be able to challenge the underlying environmental benefit of these products," he said. "It basically creates a whole new defense."
The reports of green trademark refusals come on the heels of the Federal Trade Commission's recent updates to its Green Guides on environmental marketing claims.
The Green Guides outline general principles that apply to all environmental marketing claims and provide guidance regarding many specific environmental benefit claims. The guides explain how reasonable consumers likely interpret each such claim, describe the basic elements necessary to substantiate it, and present options for qualifying it to avoid deception.

Both the PTO and FTC developments can be seen as part of a greater attempt to crack down on greenwashing on the part of the Obama administration, according to Tschupp. Trademark examiners in particular now have much better guidelines for defining what is and is not green to use as a basis for deceptiveness decisions, Tschupp said.
"They have a measuring stick they didn't really have before," he said.

San Diego - There is enough of a possibility that William Wrigley Jr. Co.'s Swerve sugar-free chewing gum is infringing a trademark for the name Swerve for artificial sweeteners to consider a preliminary injunction barring Wrigley's use of the name is warranted, an Illinois federal judge ruled Friday.

Swerve IP LLC had asked for the preliminary injunction in Wrigley's declaratory judgment lawsuit seeking to avoid liability for infringing Swerve IP's trademark. Judge Harry D. Leinenweber put off his final decision on Swerve IP's motion until a hearing can be held, but ruled that it is possible for Swerve IP to succeed on the merits of its argument.

Swerve IP holds the trademark for the word Swerve in relation to the company's all-natural non-sugar sweetener, which it has used since 2001. The U.S. Patent and Trademark office officially registered the trademark in September 2009, covering natural sweeteners including a large class of food and candy products.

The sweetener is sold through online retailers and some physical stores, and is used in the commercial manufacture of some food products, but Swerve IP hopes to expand into more mainstream markets, including chewing gum, according to the judge.
Wrigley's popular "5" brand of chewing gum, meanwhile, features a flavor called Swerve, so named because it allegedly changes flavors as it is chewed. The gum is mainly sold in grocery and convenience stores.

Wrigley learned of Swerve IP's trademark in 2010, and at that time applied to register the trademark for the word Swerve in relation to chewing gum. Swerve IP opposed the registration, and the matter remains pending before the PTO's Trademark Trial and Appeal Board.

The gum maker launched its Swerve flavor in July 2011, and a few months later Swerve IP sent it a cease and desist letter, which prompted Wrigley to file its declaratory judgment complaint after settlement talks arising from the TTAB proceeding failed.
Testimony given so far reflects a concern that Swerve gum's flooding the market would undermine the sweetener's independent reputation for being all-natural, the judge said. Such a fear implicitly reflects the assumption that the customer would connect the brands, consistent with a reverse confusion theory, he ruled.

From the consumer's perspective, the Swerve trademark is arbitrary as to the sweetener but suggestive as to the gum, and so is therefore protectable, Judge Leinenweber said.
It appears that other manufacturers, and even Wrigley in the 1980s, have co-branded gum and candy products with sweeteners, according to the judge. Accordingly, the public may well believe that Swerve sweetener has somehow become affiliated with sugar-free Swerve gum, he said.

San 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."

San 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.

San 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.

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.

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.

San 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.

San 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 - 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.

San 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.

San 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.

San 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.

San 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.

San 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."