Wednesday, February 6, 2008

No Risqué evidence to be found in trademark infringement lawsuit over RISQUE VIDEO

On February 5, 2008, Risque Video, Inc. and Top Ten Video, Inc. filed a trademark infringement lawsuit in the U.S. District Court for the Eastern District of Pennsylvania against Super Video Plus, Super Video Plus of Blackwood, and Gary Koobrick (together “Koobrick”). See Risque Video, Inc. et al v. Super Video Plus et al, Case. No . 08-CV-00569 (E.D. Penn.). A copy of the complaint can be downloaded here (hat tip to Marty Schwimmer’s Trademark Blog for retrieving the complaint).

According to the complaint, Risqué Video, Inc. (“RVI”) has been in the business of renting and selling adult videos and related merchandise to the public for approximately 20 years through its Risqué Video retail stores. RVI operates four stores throughout Pennsylvania and licenses the use of the Risqué Video name to Top Ten Video, Inc. which operates three stores in New Jersey.


RVI applied to register the RISQUE VIDEO (and Design) mark (pictured above) on May 30, 2002 (claiming first use in commerce back to January 11, 1987) and obtained a registration on October 12, 2004 (for retail stores services featuring video tapes and rental of videocassettes). RVI also operates its business through its website www.risquevideo.com and www.risqueempire.com.

According to the complaint, Gary Koobrick, the owner of two New Jersey stores renting and selling adult videos and related merchandise (Super Video Plus and Super Video Plus of Blackwood) is using the word RISQUE as a trademark to advertise his goods and services both in his stores and on his website – supervideo.formovies.com.

The complaint sets forth the typical allegations of mark similarity, intentional bad faith use, direct competition, similar marketing channels, etc. The causes of action set forth are 1) federal mark infringement under Section 32 of the Lanham Act (15 U.S.C. §1117), 2) false designation of origin under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)), 3) trademark dilution under Section 43(c) of the Lanham Act (15 U.S.C. §1125(c)), 4) state trademark infringement (54 Pa. Cons. Stat. §1126) and common law trademark infringement, 5) state trademark dilution (54 Pa. Cons. Stat. §1124), and 6) common law unfair competition. RVI is seeking injunctive relief, damages, treble damages, costs, and attorney’s fees.

What is noticeably missing from the complaint, however, is any specific evidence regarding actual advertisements showing Koobrick’s allegedly infringing use of RVI’s mark. Granted, RVI does not have to set forth such evidence in its complaint in order to maintain a complaint against Koobrick (notice pleading and all), but it is a little suspicious. A visit to Koobrick’s website (including the adult site) did not reveal any “risqué” use of the word RISQUE. There was a reference to “RISQUE GIFTS” but this could not possibly be the basis for RVI’s complaint for trademark infringement. Furthermore, if Koobrick’s use of the word “Risqué” in connection with adult videotapes was more in the descriptive sense of the word (describing the videotapes as “risqué”), rather than as a service mark for video retail stores services, RVI may be hard pressed to maintain a viable argument for source confusion.

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