Tuesday, September 18, 2007

Agassi and Armstrong each sue companies for trademark infringement.

Las Vegas resident Agassi sues Target for trademark infringement

The big story today was Andre Agassi’s lawsuit against Target Corp. for use of his name without his permission. See news articles here, here, and here. A copy of the complaint I downloaded through PACER can be found here.

On September 14, 2007, Agassi Enterprises, Inc. (“AEI”) filed a lawsuit in the U.S. District Court for the District of Nevada against Target Corporation for trademark infringement and unfair competition under 15 U.S.C. §1125(a), common law trademark infringement under Nevada law, and violation of right of publicity under Nevada law (NRS 597.770 et seq.). The complaint arises from Target’s selling in its stores and online of 52,589 "Agassi" leather flip-flops worth an estimate $661,184. In addition to seeking injunctive relief to stop the sale of the sandals (under 15 U.S.C. §1116), and to recover Target’s profits from the infringing use, AEI is also seeking recovery of actual and treble damages, exemplary and punitive damages, and AEI’s costs and attorney’s fees. AEI has the exclusive right to use and sublicense the AGASSI name by virtue of an employment agreement with Andre Agassi entered into in 1994.

According to the complaint, Agassi’s lawyers contacted Target on June 27th and demanded that the retailer stop selling the sandals. Target apparently wrote back on July 27th explaining that using Agassi's name was consistent with Target's convention of using male given names as model names for certain footwear, but that it would relabel or remove Agassi's name from the sandals and would stop selling them online. However, on August 15th, AEI purchased the infringing sandals from a Las Vegas Target store. On August 24th, AEI acquire one of the infringing sandals from amazon.com. On September 3rd, AEI purchased the infringing sandals from a different Las Vegas Target store.

Target officials apparently maintain that the store was still in the process of renaming the sandals at the time it was notified of the lawsuit.

It is interesting to note that Agassi has not obtained a registered trademark on his name. A quick search of the PTO’s TARR database did not reveal any registered or pending AGASSI trademarks except for marks related to his charitable foundation and to his furniture business (all of which are pending applications).

Verdict: Game, Set, and Match Agassi.

Lance Armstrong suing Barkstrong.net over Yellow pet collars

The other big athlete-related trademark story involves Lance Armstrong and his famed LIVESTRONG yellow bracelet.

Last week, the Lance Armstrong Foundation filed a lawsuit in the U.S. District Court for the Western District of Texas against Chris Ohman and the Animal Charity Collar Group (d/b/a Barkstrong.net) for trademark and trade dress infringement. Parts of the actual complaint can be viewed on The Smoking Gun (link)

According to the complaint, beginning in June 2005, the defendants began selling yellow pet collars bearing the words BARKSTRONG or PURRSTRONG. The Foundation alleges that these collars infringe the Foundation’s LIVESTRONG yellow bracelets that sell for $1.00 each and have raised over $70 million for cancer research.

The Foundation holds several trademark registrations (with several other pending applications) for the word LIVESTRONG for various goods and services, most relevant of which is 3052284 (word) for jewelry and charitable fundraising services. The Foundation also holds trademark registrations for the signature yellow bracelets – 3157452 and 3226837, both for charitable fund raising.

The complaint seeks injunctive relief preventing the defendants from continuing to sell its BARKSTRONG or PURRSTRONG collars, a court order shutting down the http://www.barkstrong.net/ website, the destruction of all infringing products, a public notice by the defendants disavowing any connection with the Foundation, monetary damages, and a withdrawal of defendants pending trademark applications for its collars – one of which has already registered (see PURRSTRONG; see also pending applications BARKSTRONG, DOES YOUR DOG BARKSTRONG, and DOES YOUR CAT PURRSTRONG).

The Foundation filed an opposition against BARKSTRONG back on June 21, 2006, but the opposition has been suspended pending settlement negotiations. Curious that the Foundation did not file a similar opposition against PURRSTRONG given that both marks were published for opposition at the same time.

Also interesting to note that another applicant, Donald Westfall, also filed trademark applications for BARKSTRONG and PURRSTRONG, both for pet collars, less than a month after defandant Chris Ohman filed his. Could two people from two parts of the country have possibly come up with the same infringing idea at the same time?

Verdict: Armstrong looks poised to win this race, but its not over until he crosses the finish line given the distinct differences between a wristband and pet collar.

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