On March 4, 2008, Trinity's Jewelry LLC filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against Inquisition Tattoo, Inc. and its husband and wife owners, Tatiana Metaxa (aka Tatiana Eivin or Tatiana Metaxa-Rosenfeld) and Michael Metaxa (collectively, the "defendants"). See Trinity's Jewelry LLC v. Inquisition Tatto, Inc. et al, Case No. 08-cv-00273 (D. Nev. March 4, 2008). A copy of the complaint (excluding exhibits due to the large number of exhibits and my limited blogging budget) can be downloaded here.
In the summer of 2003, Lori Jeanne Foell started making and selling her own style of body chains under the business name Trinity’s Jewelry. She sells one line of her body chains under the marks HAREM and HAREM BODY CHAINS through her website http://www.trinitysjewelry.com/ and http://www.harembodychains.com/. On March 15, 2007, Foell filed a federal trademark application for the mark HAREM BODY CHAINS ("body chains" disclaimed) for jewelry chains (claiming first use in commerce on September 1, 2003). The mark was subsequently registered on November 13, 2007.
On January 25, 2008, Foell organized Trinity's Jewelry LLC ("TJ"), and assigned all of her right, title and interest in and to the Trinity’s Jewelry business to TJ. On January 30, 2008, TJ filed a second federal trademark application for the mark HAREM for jewelry (claiming the same first use in commerce date of September 1, 2003). That application is currently pending. On February 14, 2008, Foell executed a Nunc Pro Tunc assignment of the HAREM BODY CHAINS trademark registration to TJ, which was recorded by the USPTO on February 28, 2008.
Defendants, under the eBay username "inquisition-tattoo," operate the online eBay store "Sexy Naughty Crotchless." According to the complaint, the defendants are using TJ’s HAREM mark to sell its own body chains through the defendants’ eBay store, website, and MySpace page, including using the HAREM mark in the title of its body chain eBay listings and displaying the HAREM mark on several other pages in combination with other various words serving as search engine "keywords."
Without the benefit of actually reviewing the multitude of exhibits attached to the complaint, one can glean from a quick search of defendants’ eBay store and some pending auctions for body chains that they do use the word "harem" in numerous places in connection with body chains:
"exotic dancer harem chain"
"harem neck to waist chains"
"Full Body HAREM Belly Chain Figaro 925 Silver sep SEXY"
"That makes this harem chain so sensual"
"This beautiful harem belly chain is totally adjustable, one size fits all."
"Looking for ultimate HAREM belly chain which will include ALL IN ONE?"
On December 22, 2007, TJ sent a cease and desist letter to defendants. Defendants promptly responded by claiming that they were not infringing TJ’s marks because they use the word Harem in different combinations of words that do not overlap with TJ’s registered mark HAREM BODY CHAINS. Defendants’ counsel wrote to TJ on January 4, 2008, attempting to argue that the defendants are justified in using the name HAREM as they do based on an alleged prior third party use of the term to identify body chains by someone identified as "Strangeblades," which also has a web page devoted to selling various "harem chains" (along with the claim "Harem Body Chains™ is a trademark name for Strangeblades & More exclusive designs first published by December 2002.") TJ maintains that Strangeblades assertion of superior rights is without basis.
TJ’s first cause of action alleges willful infringement of TJ’s federally registered mark in violation of §32 of the Lanham Act (15 U.S.C. §1114) and willful use of TJ’s marks as a false designation or origin and false and misleading representation of fact in violation of §43(a) of the Lanham Act (15 U.S.C. §1125(a)(1)(A)). The complaint alleges that defendants’ are using TJ’s HAREM mark on similar goods (body chains) sold to similar customers ("women seeking accessories that will make them more attractive to male partners") through similar marketing channels (online) with the intent of deceiving and misleading consumers and wrongfully trading on TJ’s goodwill and reputation.
TJ argues that the defendants’ use of TJ’s marks allows the defendants to take advantage of and benefit from TJ’s name and reputation in order to create confusion and divert sales from TJ by offering similar-looking lesser-quality body chains at much cheaper prices. The complaint cites several examples of similar jewelry sold by the defendants at a fraction of TJ’s price (e.g., a body chain that would sell for $179 by TJ sells for $49 by the defendants).
TJ seeks injunctive relief to stop the defendants from using the mark "harem" in connection with jewelry as well as actual damages, treble damages, costs and attorney’s fee.
TJ’s second cause of action alleges false advertising by the defendants in violation of §43(a)(1)(B) of the Lanham Act (15 U.S.C. §1125(a)(1)(B) (for misleading representation of fact in the defendants’ promotion of its goods misrepresenting the nature, characteristics, and qualities of their goods).
TJ argues that the defendants regularly advertise their body chain jewelry as "solid gold" or "solid silver" when in fact such items are actually gold-plated or silver-plated. The defendants allegedly use such descriptions as "SOLID 18K GOLD Gep Full Body Bell Chain Chains HOT" and "Solid 925 SILVER sep Full Body Belly Chain chains Eros." TJ argues that such descriptions are false and misleading because the goods are not solid gold or silver, but rather gold or silver electroplated. The defendants use the little-known abbreviations "gep" (for gold electroplating) and "sep" (for silver electroplating) in the titles of their product offerings. However, TJ argues that the abbreviations are typically presented in lower case lettering (along with the description of the product) in stark contrast to the ALL UPPERCASE description of SOLID 18K GOLD or Solid 925 SILVER, which makes the gep/sep abbreviations appear to be associated with the product description and not the gold/silver description. In addition, TJ argues that the defendants mislead consumers by directly contradicting the gep/sep abbreviations by using the qualifiers "SOLID" "18K GOLD" and "925 SILVER."
TJ maintains that such misleading advertising harms TJ’s sales and damages TJ’s reputation by making TJ’s truthfully advertised goods appear overpriced compared to the defendant’s cheap, but deceptively advertised goods. TJ seeks injunctive relief to stop the defendants from such false and misleading advertising as well as actual damages, treble damages, costs and attorney’s fee.
No comments:
Post a Comment