Thursday, April 3, 2008

Motorola Files Counterfeit Lawsuit, Obtains Temporary Restraining and Seizure Order Against Two Las Vegas Trade Show Exhibitors

On April 1, 2008, Motorola, Inc. (“Motorola”) filed a trademark infringement lawsuit against Mocoola Accessories Wholesale, Inc. and Big Apples Accessories, Inc. (together , the Defendants) in the U.S. District Court for the District of Nevada. See Motorola, Inc. v. Mocoola Accessories Wholesale, Inc. et al, Case No. 08-cv-00414 (D. Nev. April 1, 2008). A copy of the complaint can be downloaded here.

Motorola owns the registered marks MOTOROLA, MOTOROLA (and Stylized M Design), and Stylized M Design (pictured above) along with many others. The Defendants are both exhibitors at the CTIA WIRELESS 2008 trade show (hosted by the Cellular Telecommunications and Internet Association) currently running in Las Vegas (today is the final day of the show).

According to the complaint, the Defendants, without license or authorization from Motorola, are selling at the CTIA show (and likely elsewhere) wholesale goods bearing the MOTOROLA registered marks that are the same type of goods sold by Motorola (i.e. counterfeit goods).

The causes of action are for registered trademark infringement and counterfeiting under §32 of the Lanham Act (15 U.S.C. §1114), false designation of origin and federal unfair competition under §43(a) of the Lanham Act (15 U.S.C. §1125(a)), and deceptive trade practices (passing off and false representation as to source) under Nevada law (N.R.S. §598.0903 et seq).

As part of the requested relief, Motorola filed an ex parte application for a temporary restraining order (“TRO”), a seizure order, and order to show cause for a preliminary injunction against the Defendants. A copy of Motorola’s ex parte application can be downloaded here.

Such relief is specifically provided for in §34(d) of the Lanham Act (15 U.S.C. §1116(d)) which authorizes a district court, in the case of a violation of §1114(1)(a) arising from the use of a counterfeit mark, to grant an order, upon ex parte application, providing for the seizure of goods bearing the counterfeit marks as well as records documenting the manufacture, sale, or receipt of things involved in the counterfeiting.

Motorola’s case for immediate irreparable harm and likelihood of success on the merits convinced District Judge Philip Pro to grant the TRO and seizure order on April 2, 2008 (download here) enjoining the Defendants from selling any counterfeit Motorola merchandise and allowing Motorola to go to the Defendants’ booth at the CTIA show and seize any counterfeit merchandise as well as the Defendants’ books and records.

Judge Pro, basically accepting Motorola’s proposed order attached to its ex parte application, found that Motorola was likely to succeed on the merits of its claims that the Defendants are intentionally selling goods using unauthorized reproductions or counterfeits of Motorola’s marks, that the Defendants’ sale of such counterfeit goods are likely to cause immediate and irreparable harm to Motorola’s reputation and goodwill which outweighs any monetary hardship to the Defendants resulting from the TRO and seizure order (subject to Motorola maintaining a $5,000 security bond), that the grant of the TRO and seizure order ex parte is the only adequate remedy to achieve the purposes of §1114, and that such relief is in the public interest (i.e. yjr public interest of avoiding consumer confusion and enforcing trademark rights).

A hearing on the order to show cause why a preliminary injunction should not be entered is scheduled for April 10th.

The case is similar to two lawsuit brought by Motorola in Nevada about a year ago during the 2007 Consumer Electronics Show held in Las Vegas in order to stop two exhibitors from selling counterfeit Motorola headsets. See Motorola, Inc. v. National Electronics, Inc., Case No. 07-cv-00016 (D. Nev. January 8, 2007) (still pending) and Motorola Inc. v. Telcom USA, Case No. 07-cv-00015 (D. Nev. January 8, 2007) (ending in default judgment).

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