Wednesday, July 30, 2008

Las Vegas Mexican Restaurant Loses TTAB Opposition

The TTABlog® reported on a decision by the Trademark Trial and Appeal Board ("TTAB") upholding an opposition brought by the owners of Zabar’s, a gourmet epicurean emporium in the Upper West Side of New York City, against the owners of Zaba's Mexican Grill, a Las Vegas-based Mexican restaurant chain. See Zabar's & Co. v. Zaba's Grill, LLC, Opposition No. 91163191 (T.T.A.B. July 10, 2008).

Zabar’s, in business since 1934, provides food catering services and retail store and mail order services in the field of gourmet foods using the name “Zabar’s” and holds several related trademark registrations for the ZABAR’S mark for such services.

Zaba’s Grill, LLC ("Zaba's") sought to register the mark ZABA’S (both word mark and design mark) for “restaurant services” claiming date of first use on October 10, 2001. Zabar's filed notices of opposition when the applications were published for opposition citing likelihood of confusion and of dilution of its famous mark as grounds for opposing registration.

The TTAB first addressed (and rejected) Zabar’s claim of fame, finding that its evidence of fame was more along the lines of niche fame and fell short of demonstrating the necessary widespread recognition of Zabar’s name with its products and services. [Ed. – I had never heard of Zabar’s before this decision, but I have seen the Zaba’s restaurants around town].

However, the TTAB did find the mark to be strong, thereby entitling the mark to a broader scope of protection than a less distinctive mark.

In analyzing the other likelihood of confusion factors, the TTAB found 1) the marks to be highly similar in appearance and sound; 2) the services to be related (because Zaba’s broad “restaurant services” could include the offering of catering services and because Zabar’s own retail store services includes food bar/café services from a café it has in its store); 3) the services were offered in similar channels of trade (i.e., the general public); and 4) consumers are not likely to exercise a high degree of care in purchasing inexpensive food items.

The TTAB also rejected as too dissimilar various third party registrations offered by Zaba’s to try and show that Zabar’s was not strong. The TTAB also dismissed the lack of any actual confusion despite over six years of coexistence by the parties on the basis that reliable evidence of actual confusion is difficult to adduce and nonetheless is not necessary to establish likelihood of confusion.

Because the factors on balance weighed in favor of Zabar’s, the Board was left with the conclusion that there exists a likelihood of confusion and sustained Zabar’s opposition to registration.

Vegas™Esq. Comments:
This is one of those cases where, upon first glance, it would seem obvious that there is no likelihood of confusion between the two marks. After all, the USPTO found no likelihood of confusion during the examination phase. And yet, when you actually start to do an analysis of each of the factors according to established legal precedents, you find that each of the factors tends to favor Zabar’s, and you are left with the inevitable conclusion that there must be a likelihood of confusion (despite a gut reaction to the contrary).

One of the arguments made by Zaba’s (and rejected by the Board) was that consumers would not be confused between the two marks because the Zaba’s mark is used in connection with a Mexican restaurant and Zabar’s a New York gourmet market and catering service. Naturally, the Board rejected this argument because Zaba’s application recites “restaurant services” and such services are not limited to Mexican restaurants and likewise Zabar’s registration is not limited to “New York style” gourmet food store and catering. However, one wonders if the TTAB might have been willing to perceive some of those factors in Zaba’s favor if the recitation of services in Zaba’s application had been more specific such as “restaurant services, namely, carry out and dine-in restaurants serving Mexican food.”

As a show of my support for the hometown team, I know where I’m going to be eating out this weekend.

Tuesday, July 29, 2008

Facebook Shuts Down Scrabulous in U.S. and Canada After Notice of Lawsuit Against Game Makers

It's Scrabulous . . . no more.

Well, it didn’t take long for Facebook, Inc., the popular online networking site, to give into the demands of Hasbro Inc., the owner of the rights to the famed Scrabble game in the United States and Canada. Reports today from Bloomberg News (link here) are that Facebook, Inc. decided to shut down the popular “Scrabble”-like game Scrabulous in the U.S. and Canada. Last week, Hasbro filed a trademark and copyright infringement lawsuit against Rajat Agarwalla, Jayant Agarwalla and their company, RJ Softwares, the developers of the Scrabulous game. See Hasbro, Inc. v. RJ Softwares, Rajat Agarwalla, and Jayant Agarwalla, Case No. 08-cv-6567 (S.D.N.Y. July 23, 2008). A copy of the complaint can be found on The Trademark Blog.

Hasbro also sent a notice of infringement to Facebook and demanded that Facebook shut down Scrabulous. (Click here for an earlier blog entry on the cease and desist letter sent previously by Hasbro to Facebook). As is often the case, Facebook apparently did not take Hasbro’s earlier demands seriously until it recognized that Hasbro was willing to take legal action.

It will be interesting to see if Mattel, the owner of the rights to Scrabble outside the U.S. and Canada (through J.W. Spear & Sons Limited), decides to take any action to shut down the game elsewhere.

Monday, July 28, 2008

The Next Major Front Line for Trademark Infringement Battles: Children’s Birthday Parties

I'm a little late on this story which ran in the Wall Street Journal last week, but which the Baltimore Sun republished again today (link here) discussing the trademark infringement issues encountered by companies in the business of providing costumed characters for children’s birthday parties.

Such companies have had to stop providing such popular costumed characters as Barney, Dora the Explorer, Cifford the Big Red Dog, and Spongebob Squarepants at any children’s birthday parties because of claims of trademark infringement by the companies which own the rights to these characters.

While some costume companies attempt to avoid a likelihood of confusion by having the costumes only slightly resemble certain popular cartoon characters (“Big Red Tickle Monster” in place of Elmo and “Explorer Girl with Backpack” rather than Dora the Explorer”), others have simply opted to create their own characters.

Some companies such as Marvel Entertainment do authorize certain companies to provide entertainers to dress as its Spider-Man and Iron Man characters. However, many other companies which own the rights to these popular characters have chosen to avoid licensing the rights to these characters for children's birthday parties in order to encourage children to attend live entertainment events or theme parks showcasing licensed versions of these characters.

Vegas™Esq. Comments:
What’s next? DC Comics goes after all birthday clowns for infringing The Joker? Holy Trademark Infringement, Pointy-Eared Hooded Masked Man with a Black Suit and Cape and Utility Belt with Bat logo Belt Buckle!

Thursday, July 24, 2008

Intel Files Opposition Against INTELLEQUITY service mark application

A New Jersey company named Business Development Partners, LLC (“BDP”) is seeking to register the mark INTELLEQUITY for “consulting services in the field of managing intellectual properties.”

On July 23, 2008, however, Intel Corporation (“Intel”) filed a Notice of Opposition against BDP arguing that registration should be denied because the mark is likely to cause confusion with and/or dilution of Intel’s famous family of INTEL marks. See Intel Corporation v. Business Development Partners, LLC, Opposition No. 91185394 (T.T.A.B. Filed July 23, 2008).

The crux of the likelihood of confusion argument comes down to this: “The marks INTELLEQUITY and INTEL share the first five letters such that the first two syllables of both marks are pronounced exactly the same.” So, what Intel seems to be arguing is that no one else can ever register a trademark or service mark that begins with a suggestive reference to the word “Intellectual” (because any such mark will naturally begin with “intel-“) even if the mark is used on services different from anything in which Intel involved – unless Intel has branched out into the business of consulting on how to manage IP portfolios).

As for dilution, there is no doubt that the INTEL mark is famous. However, I think there is a serious question as to whether the similarity between the INTELLEQUITY mark and the INTEL mark which gives rise to an association between the marks that impairs the distinctiveness of the Intel mark. If anything, most consumers seeing the INTELLEQUITY mark would see it as suggestive of the Intellectual Property services being offered – a unitary composite mark joining the first part of the word Intellectual with the word Equity which makes one think of monetary value of property.

It will be interesting to see if BDP opts to fight this battle. While I think the chances of success for BDP are good, it may cost a good deal of money in legal fees in order to mount a fight against a behemoth like Intel. And since the application was filed as a Section 1(b) intent-to-use application, the cheaper route may just be to switch to another name – although I hope they don’t because I personally think it’s actually a pretty good name for the services they intend to offer.

Does Intel have any plans for filing a cybersquatting action against the owners of

Wednesday, July 23, 2008

Victoria’s Secret Files Lawsuit Over Bizarre Nevada Trade Names

This falls into that category of trademark infringement lawsuits called “What were they thinking?”

Last week, Victoria’s Secret filed a trademark infringement lawsuit against several named individuals and purported corporations in the U.S. District Court for the District of Nevada. See Victoria's Secret Stores Brand Management, Inc. vs John Shortt and Family and Cesar E. Batres and Nazir Akhtar and Families, et al, Case No. 08-cv-394 (D. Nev. July 18, 2008). A copy of the complaint can be downloaded here.

The Defendants filed three separate trade name registrations with the Nevada Secretary of State – all of which mention “Victoria’s Secret.”

But what is bizarre is the specific trade names that were registered by the Defendants. Keep in mind that under Nevada law, a “trade name” as “a word, symbol, device, or any combination of them, used by a person to identify his business, vocation or occupation and distinguish it from the business, vocation or occupation of others.” See Nevada Revised Statutes (N.R.S. §600.310. While this may sound similar to a trade mark or service mark, it is technically different because it identifies the business itself whereas a trademark is “any word, name, symbol or device, or any combination of them, adopted and used by a person to identify goods made or sold by him and to distinguish them from goods made or sold by others” (N.R.S. §600.300) while a service mark is “mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.” (N.R.S. §600.290).

On January 12, 2005, one of the Defendants registered the following trade name (Reg. No. TN00370012):
The AAmerican Awinv Js Victoria's Secret Mfg Vip Fashions Garments Worldwide Franchise For Europe,Asia,United Statcs,E.E.C Countries, … [additional countries omitted] Papua New Guinea,New Zealand,New Caledonia,Kiribati,Nauru,Franch Polynesia, All the Above Countries 100% Franchise From The Above Corporations Ownership 100% Only Mr,Mohammed Ali El Mansouri and Mohammed Ali EI Mansouri Familys,And Also Son Ahmed Mohammed Ali EI Mansouri Projects of Plants of A/Z Category Manufacturing and Trading in Worldwide International and Domestoc,Also A/Z Projects Plants of all Kinds OfReady Made Garments,Vips,Fashions Garments, Footwear, Manufacturing,Manufactures, Products,Produces,and Trading In Worldwide,Above Names have 100% Full Right To Issued The Any One or Any Corporations,Companys,Or To Any Manufacturing, Manufacturers, Products, Worldwide International Marketing and Business Link to Above Corporations Franchise in Above Countries,Only Have 100% Full Rights To Set Up In Above Countries Above Corporations Branch Offices, Or Make Shareholders,Or Workers Partners,Or Commission Agents,Only In Above Countries,Mr,Mohammed Ali El Mansouri Familys have 100% Fun Right') To Issued The Above Corporations Franchise or Set Up Above Corporations Branch Offices in any Of The Above countries,or Make Shareholders, Workers Partners, Commission Agents in Above Conturies Only, Mr., Mohammed Ali El Mansouri Son Ahmed Mohammed Ah El Mansouri Have 100% Full Rights From The Above Corporations Can Issued The Above Corporations Franchise,OrSet Up Branch Offices,Or Make Shareholders,Workers Partners, Or Commission Agents inAbove Countries Only, By Above Corporations Have Seucred Up to Thirty Five Millions United States Dollars For Manufacturing and Trading in Projects Plants Above to Sponsored and Secured by The Above Corporations Building Societes Mohammad Khan Worldwide Banking Service E.E.C. Countries Mr. Mohammed Ali El Mansouri and Mohammed Ali El Mansouri Familys and Son,Ahmed Mohgammed Ali El Mansouri and Mohammed Ali El Mansouri Familys and Mr. Mohammed Ali El Mansouri Son Ahmed Mohammed Al El Mansouri Have 100% A/Z Full Rights To Signed Any Official Documents,for the Names of The Above Corporations, By Official With Full Rights To Signed for the Names of The Above Corporations, By Official With Full Rights To Signed for the Above Corporations, in The Above Countries, in Setup Branch Offices, Governments Offices Governments Departments, With 100% Full Power from The Above Corporations Until Next Notice From The Above Corporations Board of Directors,and Chairmans,Nazir Akhtar,Sultan Mohammad,Ref.Numbers,00034884-April,29,2000..
(errors in original).

On June 29, 2006, one of the Defendants registered the following trade name for “knited [sic.], netted; and textile fabric” (Reg. No. E0489502006-9):

Mohamed Ali A.Salem Al Mansouri Worldwide International. Eyurvpean,Asian,Arab The Mansouri The INlWALI EWlMAAM International Arab European Middle East,United Arab Emirates,World Islamic Countries World The International Victoria's Secret Wor1dwide European Arab Industries Mills of China Hong Kong Manufacturing and Trading In All Types of Woman's Garments Vip Fashions,Ladies Under Clothing A/Z Products and Manufacturers,Manufacturing, Manufacturing Manufacturers,Productions Women's Fashions Garments E.T.C Since,jULY,2000 Up Date,Mohamed Ali El Mansouri and Familys have Full Rights To Set Up any Countries of the World Branch Offices and have Full Rights to Make Worldwide Agents With Commission Bases OnlyWorkers Partners With On Commission Bases Only,Shareholders ann Workers mohamed Ali Al Mansouri and Son Ahmed Mohammed Al EI Mansouri and Familys Sponsored and Secured For Five Years From June,19,2005 To Five Years Up To Seventy Five Millions English Pounds Only Also Plants Projects Manufacturing Women's Fashions Garments Under Clothing FromThe Bank of England Until Next Notice 100% Ownership Is Mohammed Ali EI Mansouri and Familys All The Rights Are Reserved By The Mohamed Ali EI Mansouri and Son and Familys Only All Legal, Activities Worldwide Thousand Thousand Types of Manufacturing of Women's Fashions Garments
(errors in original).

Finally, on March 27, 2005, one of the Defendants registered the following trade for the business of “knitted, netted; and textile fabric and substitutes therefor” (Reg. No. E0226492006-9):
Worldwide European International Mohamed Ali AI-Mansouri WEIMAAM Worldwide European Asian, Middle East Victoria's Secret Manufacturing,Manufacturers,Products,Productions,Mfg Vip Fashions Garm All Types of Ladies, Fashions Garments,E,t,c All Women's,Ladies A/Z Items,Productions,Products,and Manufacturing,Exporters,lmporters,General Dealers,General Contractors,Buyers and Suppliers All Kinds of Items of Ladies,and Women's Wear Manufacturing and Trading In All Items of Ladies Wear Fashions of European Products of Brand of Awinveimaam Victoria's Secret Manufacturing,Manufacturers Women's Fashions Garments Et,c Since,July,2000 Up Date Goodstanding,AlI E,E,C Countries,All Asian Countries,All Middle East Countries,United Arab Emirates,All Islamic Countries World,With Full A/Z 100% Rights Up To Five Years From The Date Signed March,25,2006, The Above Corporations Ownership Is Only Mr,Mohammed Ali EI Mansouri and Mohammed Ali El Mansouri Familys and Also Son Ahmed Mohammed Ali El Mansouri,Above Names Have Full Rights To Set Up Any Countries of The World Branch Offices and Have Full Rights To Make Worldwide Agents, With Commission Bases Only,Workers Partners,with Only Commission Bases Only,Shareholder and Workers,Above Corporations Secured Up To FiftyFive Millions English Pounds Also Plants Projects Industries Mills and Mr,Mohammed Ali EI Mansouri and Son Ahmed Mohammed Ali El Mansouri and Familys Sponsored and secured For Five Years From March,25,2006 From Bank of England London E,C2 England Time of The Starting Sponsored and Secured Above Corporations 6 Months Times After The Set Up Above Business In The United Arab Emirates or Any Countries of The World, Workers Partners Listing For Five Years From March 25,2006 Under (5) Names of Workers Partners Working On Only Commission Bases Only Until The Next Notice From The Above Corporations Owners Mr,Mohammed Ali EI Mansoun and Son Mr,Ahmed Mohammed Ali El Mansouri Names of Workers Partners,Mr,Naresh Prasad,Mrs,Kusum Lata,P,O,Box 4156 Nabua Suva Fiji Island,460492/641751,Miss,Kuldip Kaur,Mr,Harpushpinder Singh,Mr,Sarban Lal Dass, C/o Kamiljit Singh Permar Fatehgarh Rahimpur Road Saroop Nagar Street#5 Hoshiarpur Punjab India,Colony Bahliwwal Kdhia P,O,Jallandhar Punjab India,Mr,Tahim Ali Shah,660763,Mrs,Meharoma Sharidun Nisha,551733,Son,Tazeem Zuhyar Shah,551734.P.O.Box949 Lautoka Fiji Islands,Above Corporations 100% Owners Is Mr,Mohammad Ali El Mansouri and Familys and Son Mr,Ahmed Mohammed Ali El Mansouri All Legal Activities Worldwide
(errors in original).

There are so many things one can say about these truly bizarre trade name filings.

First, they demonstrate that the Nevada Secretary of State, like all other states, merely file whatever is provided to them – no matter how ridiculous it may seem to file – so long as it does not conflict with a name already registered in their own database. One wonders what the specimen looked like that the Defendants filed with the paperwork to show use of the mark as a "trade name" – if there was even a specimen beyond what appears to be a poor translation of some kind of fabric manufacturing agreements.

Second, it is not clear why the Defendants felt it necessary to file these agreements as “trade names.” It’s obvious that they are not a “trade name” under which they intend to operate – try fitting all of that on a billboard. Did they get some bad legal advice? Did they not seek legal counsel and misunderstand what a “trade name” filing is for? Were they really afraid someone was going to start using a confusingly similar name, especially given that the “name” itself is confusing enough. Were the parties attempt to officially “record” these agreement with the notion that they would be made more enforceable?

Finally, while I certainly understand and appreciate Victoria’s Secret efforts to go after a business that has incorporated its famous mark into a “trade name” without its consent, is there really any likelihood of confusion (or even dilution) here? I seriously doubt there is any other evidence out there that these Defendants are even operating under these “trade names” – if you can even call them that. And assuming that these filings were to somehow constitute legitimate trade names, there may be an argument that the defendants’ use of “Victoria’s Secret” is nominative fair use if the defendants are indeed manufacturers of Victoria’s Secret lingerie (although arguably they could identify their product or service without using the Victoria’s Secret’s mark).

The complaint filed by Victoria’s Secret indicates that attempts were made to send cease and desist letters to the Defendants, but that all of the addresses on record are mail forwarding services which did not have any information on where any mail to defendants would be forwarded.

Anybody else have any thoughts explaining these unusual trade name filings?

Friday, July 18, 2008

American Airlines and Google Reach Quiet Settlement in Adword Trademark Infringement Case

I've written before on lawsuits filed by such trademark owners as Rosetta Stone (link here) and Hearts on Fire (link here) against competiting companies that purchased their trademarks as a Google AdWords so that Sponsored Links would appear whenever an internet user would perform a search for those trademarks.

While Rosetta Stone and Hearts on Fire went after the purchasers of the keywords, American Airlines (“AA”) last year filed a similar type of trademark infringement lawsuit only AA went straight to the source of the Adwords and sued Google for the sale of AA’s trademarks as “AdWords.” See prior blogs posts here and here.

The lawsuit had been closely watch by trademark practitioners because many expected that it might go all the way to trial because of AA’s resources to fight the all-mighty Google.

Well, the news came down today that American Airlines and Google have reached a confidential settlement in the case (articles here and here). Thus depriving the trademark world of some additional case law the could have clarified the otherwise confusing jurisprudence (see blog post here) surrounding whether or not the use of another company’s trademark as keywords (either to trigger “sponsored links" or otherwise) constitutes trademark infringement.

Given AA’s reliance upon claims for contributory trademark infringement and vicarious trademark infringement, one wonders if the recent decision in Tiffany v. eBay (blogged here) had anything to do with AA’s sudden decision to settle. Or perhaps AA decided to drop the costly litigation as another cost cutting measure (see news article today about AA's decision to cut 1500 maintenance jobs).

Wednesday, July 16, 2008

Rosetta Stone Files Trademark Infringement Lawsuit Against Rocket Languages Over Keyword Advertising “Piggybacking”

On July 2, 2008, Rosetta Stone Ltd., the maker of the Rosetta Stone line of interactive computer software for learning many different foreign languages, filed a trademark infringement lawsuit in the U.S. District Court for the Central District of California against two New Zealand companies, Rocket Languages Ltd. and Libros Media Ltd. (together “Rocket”) with offices in Los Angeles, two individuals, and several unnamed defendants. See Rosetta Stone Ltd v. Rocket Languages Ltd. et al, Case No. 08-cv-04402 (C.D. Cal.) A copy of the complaint is available here (from; see also related article from the Wall Street Journal here.

Rosetta owns the federally registered mark ROSETTA STONE for computer software for teaching and learning foreign languages. Rocket sells its own line of foreign language tutorial computer software.

One of the individual defendants, Matthew Weidner, owns and operates the websites and The other named individual defendant, Ishmael Lopez, owns and operates the websites,, and

According to the complaint, Weidner, Lopez, and other unnamed defendants are part of “an affiliate advertising program approved and funded” by Rocket in order to promote and sell Rocket’s competing foreign language software products on their websites in return for a 75% commission for every Rocket Languages product sold through their websites.

The primary issue in Rosetta’s complaint is what is being called “piggybacking” – the use of a company’s trademark or brand name by competitors as a keyword or in the text of internet ads in order to direct internet traffic searching for such trademark or brand to their own site. (Click here for Wall Street Journal on the growing resentment by large companies over this practice.)

In this case, Rosetta asserts that the Defendants purchased the words “Rosetta Stone” as an advertising keyword in Google's AdWords program and Yahoo's Marketing Solutions program so that when an internet user performs a search for “Rosetta Stone” or similar variation (e.g., “Rosetta” “Rosetta Spanish” etc.), the Defendants’ websites appear at the top as Sponsored Links offering Rocket’s language software or as websites purporting to offer information and reviews about foreign language software products.

Rosetta also complains about the use by the Defendants of the ROSETTA STONE mark in the header and text of such sponsored links. The complaint illustrates this with the following examples: 1) the sponsored link advertisement for states, “Rosetta Spanish A Scam?” in the header of the advertisement and “Read These Reviews Before Buying Rosetta Spanish!” in the text of the advertisement; and 2) the sponsored link advertisement for, owned by one of the unnamed defendants, states, “Is Rosetta Spanish a Scam?” in the header of the advertisement and “Don't Buy Rosetta Spanish Before You Read This” in the text of the advertisement.

Rosetta further maintains that the Defendants are using certain websites ( and to post “comparison reviews” of ROSETTA STONE products and other competing foreign language software products, including Rocket Languages' products, without disclosing that the sites are funded by Rocket to market its products.

Rosetta also points to what it claims is false and misleading information on two of the websites which supposedly claim that Rosetta is not offering a free trial of its software when in fact a free “online” demonstration of Rosetta’s software is available (Comment: Isn’t there a difference between a free trial of a software and a free demonstration?).

Rosetta also maintains that two of the websites have hyperlinks that purport to direct customers to Rosetta’s official website, but instead lead the user to an advertisement for Rocket’s product (Comment: I could not find evidence of this on one of the sites named and the other site is temporarily unavailable).

Rosetta’s causes of action are for federal trademark infringement under 15 U.S.C. §§ 1114 and 1125(a), federal unfair competition and false advertising under 15 U.S.C. § 1125(a), trademark dilution under 15 U.S.C. § 1125(c), state unfair competition and false advertising under California Bus. & Prof. Code §§ 17200 and 17500 et seq., and claims of contributory and vicarious trademark infringement directed specifically to Rocket.

Rosetta seeks injunctive relief along with the usual claims for damages. Rosetta also wants the Defendants to remove their keyword advertising and sponsored links from Google and Yahoo, place corrective ads on their websites regarding their “misrepresentations” of Rosetta’s software, and to remove the “false and misleading” comparison reviews of Rosetta’s software from their “comparison review” websites.
Regardless of the merits of Rosetta's claims (and as most readers probably know, the question of whether use of a trademark as a keyword even constitutes trademark use is uncertain right now), the lawsuit may have achieved its objective. A search today on both the Google and Yahoo search engines did not result in any Sponsored Links of the type complained of by Rosetta. Of course, it's possible that those sponsored links had already reached their daily advertising budget limit.

Monday, July 14, 2008

Tiffany & Co. loses its contributory trademark infringement lawsuit against eBay

The trademark news story du jour was the long awaited (and lengthy) decision in the Tiffany v. eBay trademark infringement lawsuit. See Tiffany (NJ) Inc. and Tiffany and Company v. eBay, Inc., Case, No. 04-cv-04607 (July 14, 2008). See news stories here and here.

Judge Richard J. Sullivan of the U.S. district Court for the Southern District of New York decided that eBay was not liable for contributory trademark infringement for the actions of sellers of counterfeit Tiffany & Co. items over eBay’s auction website.

Tiffany had tried to argue that the law required eBay to monitor its website and preemptively remove listings of Tiffany jewelry. However, the court held that the law does not impose liability for contributory trademark infringement for eBay refusing to take such steps based on a “reasonable anticipation” that counterfeit goods might be sold on its site, but instead requires that action be taken only after eBay has specific knowledge regarding infringing items and the sellers listing such items.

Stated another way, the standard for contributory trademark infringement is “not whether eBay could reasonably anticipate possible infringement, but rather whether eBay continued to supply its services to sellers when it knew or had reason to know of infringement by those sellers. See Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982).” In this case, the court found that eBay took the appropriate steps to remove listings once it was given specific knowledge about counterfeit items, and thus was not liable for contributory trademark infringement

The court summarized as follows:

[T]he law is clear: it is the trademark owner's burden to police its mark, and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their website.

The court also rejected Tiffany’s claims of false advertising and trademark dilution on the basis that eBay’s use of Tiffany’s trademarks – in its advertising, on its home page, and in sponsored links purchased through Yahoo! and Google – constitutes protected, nominative fair use of such marks. Specifically, eBay established that Tiffany’s product is “one not readily identifiable without use of the trademark,” demonstrated that it “used only so much of the marks as was reasonably necessary to identify the product,” and proved that “it did not do anything that would suggest sponsorship or endorsement” by Tiffany.

What is interesting about this court’s decision is that it stands in stark contrast to the adverse decision eBay has obtained in Europe. Recently, a French court ordered eBay to pay over $60 million to Louis Vuitton for similar claims of counterfeiting (New York Times story here). eBay lost a similar challenge brought by the maker of Hermes scarves (Businessweek story here).

Expect an appeal to the Second Circuit Court of Appeals from Tiffany.

Saturday, July 12, 2008

Las Vegas Businessman ordered to stop using the name COHIBA on cigars and rum

The Associated Press reported today (link here) that Las Vegas businessman Philip Restifo, President of the Nevada corporation Cohiba Caribbean’s Finest Inc. and the Bahamas corporation Data Commodities Ltd., was ordered on June 30, 2008 by U.S. District Court Judge Brian Sandoval to stop using the mark COHIBA on cigars and rum and to pay General Cigar Co. ("General Cigar"), the owner of the COHIBA mark for cigars, $770,000 in damages plus legal costs.

The Cohiba Caribbean's Finest Cigar

The order banned Restifo and his affiliated companies from the importing, marketing, distributing and selling of "Cohiba Caribbean's Finest" cigars and rum. Apparently, Restifo’s use of the COHIBA on his cigars was prominent and the "Caribbean's Finest" were in small italicized font. General Cigar’s vice president and general counsel called Restifo's businesses the most aggressive among several Cohiba counterfeiters in the nation. [Query: Is Restifo a big Cohiba rum counterfeiter as well?]

A real Cohiba® cigar

The Cohiba, which apparently gets its name from the Taino word for "tobacco," was originally the private brand of cigar for Fidel Castro, but is now produced and sold worldwide (except in the U.S.) by the state owned company Cubana del Tabaco (d/b/a Cubatabaco) both directly and through Cubatabaco's licensee, Habanos SA. The Cohiba cigar sold in the U.S. by General Cigar is actually made in the Dominican Republic in order to get around the U.S. ban on trade with Cuba. Of course, because General Cigar's COHIBA is not the cuban-made COHIBA, this has led to some contentious trademark litigation between the parties (more on this later).

Restifo was quoted as saying that as of the 30th, his company stopped sales of the rum and pulled down his website. And while it’s true that if you go to, the home page that appears states the following:

Will no longer be servicing for sale or Wholesale,the products of Cohiba Carribbeans Finest.

Due to Big Bully Business and a pure lack of Money...We could no longer afford to defend our Position.

Please remember General Cigar has never been in theLiqour Business!!!!!!

Court orders have reduced an Honost Brand name to the level of Mogel Money Monsters.

General Cigar without Merit and deep pockets transformed a Mom & Pop Liqour [sic] operation into being the Al Capones of the Cigar & liquor Industry.

However, Restifo’s original home page is still accessible through (Check out the COHIBA girls!). You can view the “infringing” cigar products at

And while I have not reviewed the actual court documents in the litigation, Mr. Restifo’s statements about General Cigar not being in the rum business may have merit.

While General Cigar has two registrations for the mark COHIBA for cigars (one registered in 1981 and a second in 1992), its two applications to register the mark for rum (among many other classes of goods) were not filed until 1996 – and even then, the basis was intent-to-use and General Cigar has never updated the basis to reflect use-in-commerce.

Of course, the failure to update may not be from lack of use, but instead because the application has been continuously suspended pending the outcome of another intent-to-use application to register COHIBA for alcoholic beverages, namely, tequila filed in 1995 by Tequila Cuervo La Rojena, S.A. de C.V., which itself has been the subject of an opposition filed in March 10, 2000 by, guess who, General Cigar. See General Cigar Co. v. Tequila Cuervo La Rojena, S.A. de C.V., Opposition No. 91117311 (Filed Feb. 14, 2000).

And this opposition has been suspended pending the outcome of a cancellation proceeding filed against General Cigar by Cubatabaco. See Empresa Cubana del Tabaco v. General Cigar Co., Cancellation No. 92025859 (Filed Jan. 15, 1997). This cancellation proceeding was the beginning of what became a contentious dispute between the two cigar companaies over the COHIBA name. The cancellation moved over to the federal courts in 1997 (see Empresa Cubana del Tabaco v. General Cigar Co., Case No. 97-cv-8399 (S.D.N.Y.)). Although the district court in 2004 held that Cubatabaco owned the trademark COHIBA for use on cigars under the famous marks doctrine and ordered General Cigar Co's registration cancelled (opinion here), the U.S. Court of Appeals for the Second Circuit reversed the district court on the basis that the U.S. trade embargo against Cuba prevented Cubatabaco from acquiring property rights in United State trademarks under the famous marks doctrine. See Empresa Cubana Del Tabaco v. Culbro Corporation, 399 F.3d 462 (2nd Cir. 2005), cert. denied, 126 S.Ct. 2887, 165 L. Ed. 2d 916 (2006).

Upon remand to the district court, General Cigar subseuqently filed a motion with the district court to amend its prior order to add an order to the USPTO dismissing the pending cancellation proceeding. However, the court denied the motion as untimely because General Cigar had not sought such claim for relief earlier in the case and because the TTAB can properly decide the impact of the Court of Appeal's decision. See Empresa Cubana Del Tabaco v. Culbro Corp., 478 F. Supp. 2d 513 (S.D.N.Y. 2007). General Cigar has appealed this decision to the Second Circuit Court of Appeals (Appeal No. 07-1248), but no oral arguments have been heard nor decision made. In addition, Cubatabaco in early 2008 filed its own motion with the district court seeking relief from the district court's previous dismissal of Cubatabaco's claim of relief based on New York common law unfair competition by misappropriation. (Can you say "BUKHARA"?). Oral arguments have been heard, but no decision has been issued.

Unrelated to the litigation over COHIBA for cigars, there is another application filed in 2000 by New Yorker Kereskedelmi Kft., a Hungarian corporation, for the mark COHIBA for various goods including alcoholic beverages (including rum). The application, originally filed as an intent-to-use (both under Section 1(b) and Section 44(d)), now has an established priority date of September 15, 2000 – the company having obtained a registration for the mark in Hungary and changing the basis for its application to Section 44(e).

All of this fighting over a word that in Spanish actually means “stifle” or “restrain” (a conjugated form of the Spanish verb “cohibir”).

Thursday, July 10, 2008

Tenth Circuit Applies Supreme Court’s MedImmune Precedent to Trademark Infringement Declaratory Judgment Action

Both Likely to be Confused and Blawgletter® have succinct write-ups on the Tenth Circuit’s decision in Surefoot LC v. Sure Foot Corp., No. 06-4294 (10th Cir. July 8, 2008) addressing whether the standard for seeking declaratory judgments of non-infringement established by the U.S. Supreme Court’s 2007 opinion in MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007), which involved a declaratory judgment of non-infringement of patent, also applies to declaratory judgment actions involving trademark infringement.

Surefoot's Ski Boot

The lower court had dismissed a declaratory judgment action filed by Surefoot, L.C., a maker of ski boots among other things, against Sure Foot Corp., which makes products to provide more traction for shoes and owns the registered mark SUREFOOT for “self-adhesive non-ski [sic] pad for shoe soles.”

Sure Foot's Boot Adhesive

Sure Foot had sent Surefoot several cease and desist letters accusing Surefoot of infringement in 1998 and 1999, but nothing thereafter. In 2000, Surefoot filed a use-in-commerce application to register SUREFOOT for various shoes and clothing items (claiming use dating back to February 1995) – the mark registered in 2002. Soonafter, Sure Foot filed a petition to cancel the registration. See Sure Foot Corporation v. Surefoot, L.C., Cancellation No. 92041209 (Filed August 1, 2002) . At the same time, Surefoot also filed an opposition against another intent-to-use application filed in 2000 by Surefoot for SUREFOOT (for bags and ski boot liners). Sure Foot Corporation v. Surefoot, L.C., Opposition No. 91153685 (Filed August 1, 2002).

In 2004, Surefoot filed three more use-in-commerce applications for the mark SUREFOOT for ski boot orthotics; ski googles, helmets, poles, and skis; and ski boot warmers, shoes and clothing, and “detachable devices placed on the bottom of ski boots to improve ski boot traction” claiming date of first use as December 1994. Each of the applications were opposed by Sure Foot upon publication. See Sure Foot Corporation v. Surefoot, L.C., Opposition No. 91165562 (Filed June 16, 2005); Sure Foot Corporation v. Surefoot, L.C., Opposition No. 91169601 (Filed March 7, 2006); and Sure Foot Corporation v. Surefoot, L.C., Opposition No. 91171534 (Filed June 23, 2006) .

Believing that Sure Foot would keeping opposing all future trademark applications and eventually sue for trademark infringement, Surefoot filed a declaratory judgment action in July 2006 seeking a declaration that it did not infringe Sure Foot's SUREFOOT mark.

The district court dismissed the action on the grounds that it lacked Article III jurisdiction to hear the action brought under the Declaratory Judgment Act because Surefoot had not demonstrated that it had a “reasonable apprehension of an imminent suit” by Sure Foot. The district court felt that the threat from the 1998-99cease and desist letters had dissipated by 2006 and that the TTAB administrative actions did not give rise to any reasonable basis of fear imminent litigation.

The Tenth Circuit reversed the district court’s decision and found that the district court did have Article III jurisdiction to hear Surefoot’s declaratory judgment action.

The court held that the Supreme Court’s MedImmune decision – decided after the district court’s decision – where the Supreme Court found the existence of a case or controversy in a declaratory suit where no reasonable apprehension of litigation existed, replaced the Tenth Circuit’s previous "reasonable apprehension of imminent suit" test set forth in Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959 (10th Cir. 1996). The court focused on the language in the Supreme Court’s footnote 11 where the Court stated that the “reasonable apprehension of suit doctrine” conflicted with prior Supreme Court decisions.

The court described the “case or controversy” standard as follows:

[A] declaratory judgment suit must be "definite and concrete, touching the legal relations of parties having adverse legal interests," must be "'real and substantial' and 'admit of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.'" Put differently, "the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment."

(citations omitted).

Based on this standard, the court held that the existence of the TTAB proceedings as well as the previous cease and desist letters demonstrated a sufficient “case or controversy” between the parties to grant the district court Article III jurisdiction.

The court noted that the district court, once it has established that it can exercise jurisdiction, should still consider the discretionary factors set forth in State Farm Fire & Cas. Co. v. Mhoon, 31 F.3d 979, 983 (10th Cir. 1994) in assessing whether it should exercise jurisdiction under the Declaratory Judgment Act:

[1] whether a declaratory action would settle the controversy; [2] whether it would serve a useful purpose in clarifying the legal relations at issue; [3] whether the declaratory remedy is being used merely for the purpose of "procedural fencing" or "to provide an arena for a race to res judicata"; [4] whether use of a declaratory action would increase friction between our federal and state courts and improperly encroach upon state jurisdiction; and [5] whether there is an alternative remedy which is better or more effective.
In light of the change in Tenth Circuit precedent arising from the Supreme Court’s MedImmune decision, the court reversed the district court’s decision that no Article III jurisdiction exists and remanded the case back to the district court for consideration of the above discretionary factors.

Tuesday, July 8, 2008

TTAB fires another fraud salvo into the trademark legal waters

The TTABlog® reports (link here) on another precedential decision by the Trademark Trial and Appeal Board that demonstrates again the ever increasing threat faced by trademark applicants and owners (not to mention the trademark attorneys representing them) of having their trademark applications opposed and trademark registrations cancelled due to fraud. See Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (June 30, 2008) (precedential).

In this case, it was the Hualapai Tribe’s application to register the mark GRAND CANYON WEST. The Hualapai Tribe owns land on the west rim of the Grand Canyon and in 1986 developed a section of the land about 115 mile east of Las Vegas as a tourist destination which it named GRAND CANYON WEST.

The Hualapai Tribe’s application was opposed by a company named Grand Canyon West Ranch, LLC, which provides helicopter tours of the Grand Canyon from a ranch located along the access road to the Hualapai Tribe’s tourist site, thus the name GRAND CANYON WEST RANCH.

The Hualapai Tribe was able to fend off the opposition’s claims that the GRAND CANYON WEST mark was merely descriptive and/or primarily geographically descriptive by demonstrating its long-time use of the mark, the number of visitors and tour operators to its site on a daily basis, and its wide ranging marketing efforts in Las Vegas and beyond. The “Skywalk” – the famed (or infamous depending on your perspective) see-through glass bridge that extends 70 feet over the Grand Canyon to provide a view of the canyon floor from 4,000 feet – is located at GRAND CANYON WEST.

The "Skywalk"
at the Hualpai Tribe's Grand Canyon West

However, the fact that the Hualapai Tribe during prosecution amended its description of goods and services to include services on which it was not using the mark on the dates of claimed use was enough to doom this application – despite the fact that the specific wording was added as part of an Examiner's amendment after the Examining Attorney spoke with the Tribe’s attorney and the two agreed to an identification of services. In the Examining Attorney's final office action, the Examining Attorney had suggested "ARRANGING FOR RECREATIONAL TRAVEL TOURS AND PROVIDING RELATED TRANSPORTATION OF PASSENGERS BY AIR, BOAT, RAIL OR BUS." Then, in the Examiner's Amendment, the description, pursuant to authorization from the Tribe's attorney, was amended to "ARRANGING FOR RECREATIONAL TRAVEL TOURS AND PROVIDING RELATED TRANSPORTATION OF PASSENGERS BY AIR, BOAT, RAFT, RAIL, TRAM, BUS, MOTORIZED ON-ROAD AND OFF-ROAD VEHICLES, NON-MOTORIZED VEHICLES FEATURING BICYCLES, AND DOMESTIC ANIMALS." (Sidenote: while the Hulaipai Tribe's argument suggests that it was the Examining Attorney's own proposed description of services, one seriously doubts that an Examining Attorney would have proposed the additional, and very specific, forms of transportation that ultimately led to this application's downfall). Furthermore, it did not matter that this statement of goods and services was not a “verified statement" of goods and services such as in a statement of use. The TTAB decision makes clear that “false claims of use of the mark on goods or services, wherever they may appear, . . . are essential to the integrity of the application and registration process.”

Lessons learned: The growing threat of fraud is one that cannot be understated. For trademark applications, check, recheck, and check again every single aspect of a trademark application (whether use-in-commerce or intent-to-use) for accuracy, especially listing of goods and services. For trademark registrations, owners may want to consider conducting a “fraudit” to determine if any valuable registrations are prone to attack on the basis of fraud.

Monday, July 7, 2008

The American Trial Lawyers Association loses motion to dismiss lawsuit brought by the former Association of Trial Lawyers of America

The American Association for Justice (“AAJ”), formerly known as the Association of Trial Lawyers of America, won a first round battle in its trademark infringement lawsuit against The American Trial Lawyers Association, Inc. a/k/a THE ATLA (the “Association”), and J. Keith Givens (“Givens,” and together with the Association, the “Defendants”). [Click here for previous blog entry on the filing of the lawsuit.]

On July 1, 2008, the Minnesota District Court denied the Defendants’ motion to dismiss the case for lack of personal jurisdiction, or in the alternative for a change in venue to Alabama. See American Association for Justice v. American Trial Lawyers Association et al, Case No. 07-cv-04626, 2008 U.S. Dist. LEXIS 50897 (D. Minn. July 1, 2008).

In December 2006, the Association of Trial Lawyers of America, an association of trial attorneys with over 56,000 members (with more than 500 in the State of Minnesota), changed its name to the American Association for Justice. AAJ still holds two registered trademarks for the mark ATLA, both of which issued in 1976: 1) a service mark directed to providing seminars and meetings for attorneys and 2) a collective membership mark indicating membership in the organization. AAJ also continues to use the domain name although it now forwards to

Sometime in late December, Givens, an Alabama attorney, along with his two sons, came up with the idea to create what they describe as an organization that would provide selected trial attorneys across the country with practical recognition and networking and educational opportunities. The Association was incorporated in Alabama in 2007 and began using the mark “THE ATLA” to promote its organization. Givens’ sons are the only directors of the Association; Givens serves as a member of the Associations’ Executive Committee, handles some of the Association’s legal matters, and serves as the Association’s resident agent.

In November 2007, the Association mailed up to 100 membership solicitation letters to selected attorneys in Minnesota identifying its organization as “The ATLA” and promoting the Association as an “elite organization” that sought to “offer practical recognition, networking and educational opportunities, educational programs, and legal publications” to trial attorneys. Eight Minnesota residents responded to the Association’s solicitation letter by becoming members of the organization.

Defendants sought to dismiss AAJ’s complaint by arguing that its contacts with Minnesota did not constitute sufficient minimum contacts with Minnesota to establish personal jurisdiction in Minnesota.

With respect to the Association’s contacts, the court found that the Association’s 100 membership solicitation letters and follow-up with the eight Minnesota residents who responded to the letters constituted sufficient minimum contacts in Minnesota to justify the exercise of personal jurisdiction where the letters themselves are what give rise to the causes of action at issue. AAJ’s causes of action for trademark infringement and unfair competition are that the Association’s use of the name THE ATLA on its letters is likely to cause consumer confusion with AAJ and its registered ATLA mark. The court added that such letters by the Association to individual residents of Minnesota represent “purposeful availment” on the part of the Association to generate membership, and as such, the Association should reasonably have anticipated being haled into a Minnesota court to answer for such conduct.

As for Givens, he argued that he was not a shareholder or officer of the Association, only served as resident agent for the Association, was not a “driving participant” in the Association’s activities, and only had a general involvement in the Association. However, the evidence showed that Givens was personally involved in the Association's decisions regarding the membership solicitations, including the solicitations directed to Minnesota residents, and actually signed some of these membership solicitation letters, including letters that were sent directly to Minnesota. Givens also testified that he was active in the planning and decision-making process that led to the mailing of the solicitation letters to Minnesota residents.

Based on the above, the court found Givens to be a “primary participant” in the alleged wrongdoing that was directed at Minnesota residents, and since these specific contacts directly relate to AAJ’s causes of action, they are sufficient enough to establish personal jurisdiction. In addition, by personally directing the allegedly infringing solicitation letters towards Minnesota residents, Givens should reasonably have anticipated being haled into a Minnesota court to answer for such conduct.

Finally, the court agreed with AAJ’s argument that venue was proper in Minnesota because a substantial part of the events giving rise to AAJ’s claims occurred in Minnesota (namely, the 100 membership solicitation letters infringing AAJ’s trademark) (see 28 U.S.C. 1406(a)).

The court determined that the Defendants had not made a strong enough showing to support a transfer of venue based on convenience of the parties and witnesses and in the interest of justice (see 28 U.S.C. § 1404(a). First, both parties will endure some level of inconvenience (with AAJ’s primary business headquarters in the District of Columbia) regardless of what forum is selected and the Defendants have not show how a transfer would result in anything more than a shift of the inconvenience from Defendants to AAJ. Second, as for the interest of justice, Defendants argued that a transfer to Alabama would allow the case to be joined with the existing trademark declaratory judgment action between AAJ and the American College of Trial Lawyers involving the mark “AMERICAN COLLEGE OF TRIAL LAWYERS” and AAJ’s use of the name “The American Trial Lawyers Association.” The court rejected this argument based on the fact that the infringing marks are different in the instant case and because Defendants did not sufficiently substantiate the claim that the cases are parallel or that there is substantial overlap between the two cases.

Wednesday, July 2, 2008

IP Today article highlights splits of authority in sponsored link trademark infringement cases

Intellectual Property Today published an article entitled “Multiple Splits of Authority Point Out the Need to Think Strategically in Sponsored Link and Other Internet Advertising Cases” which provides a nice summary of the confused state of court cases that have dealt with claims of trademark infringement by trademark owners against competitors who have purchased a trademark as a search engine keyword to trigger a “sponsored link” advertisement.

Tuesday, July 1, 2008

Las Vegas Lighting Systems Company Sues Las Vegas Man and His Iowa Corporation Over “4 WALL”

A lighting display designed by 4Wall Entertainment
from the 2008 Consumer Electronics Show

On June 27, 2008, 4 Wall Enterprises, Inc., a Nevada corporation doing business as 4Wall Entertainment (“4 Wall Nevada”), filed a trademark infringement lawsuit in the U.S. District Court for the District of Nevada against 4 Wall Entertainment, Inc., an Iowa corporation (“4 Wall Iowa”), and an individual named Charles Karabes, who is supposedly the principal owner of 4 Wall Iowa. See 4 Wall Enterprises, Inc v. 4 Wall Entertainment, Inc. et al, Case No. 08-cv-00838 (D. Nev.). A copy of the complaint can be downloaded here.

4 Wall Nevada, with offices in Las Vegas, New York, and Phoenix, is in the business of designing, servicing, leasing, and selling entertainment lighting systems for theaters, trade shows, concerts, nightclubs, building exteriors, and themed restaurants and retail stores. 4 Wall Nevada holds several federal trademark registrations for the mark 4 WALL for such goods and services as Online retail stores featuring lighting fixtures; Custom construction of lighting fixture and lighting devices; and Design for others in the field of theater lighting. 4 Wall Nevada also holds a registration for the design mark 4 WALL LIGHTING ENTERTAINMENT (pictured below) for, among other things, lighting design and installation and design of software related thereto. While the marks were only registered in the last two years, all of the marks claim use dating back to 1999.

Sometime in August 2007, Karabes formed 4 Wall Iowa with the Iowa Secretary of State. According to the complaint, sometime in December 2007, Karabes began operating a movie theater in Albion, Michigan using the name “4 Wall”; and then in March 2008, Karabes opened another movie theater in Cordell, Oklahoma under the name “4 Wall.”

According to the complaint, Karabes made representations to officials with the City of Cordell (with whom 4 Wall Iowa was negotiating and eventually entered into a lease agreement for the aforementioned theater property) that 4 Wall Iowa was affiliated with 4 Wall Nevada. Karabes supposedly held himself out to the City of Cordell as a Las Vegas resident and the President of 4 Wall Nevada and that he leased and operated theaters and sold specialty lighting systems and home theater equipment.

In March and then again in May of 2008, counsel for 4 Wall Nevada sent cease and desist letters to Karabes demanding that he stop using the “4 Wall” name and trademarks and holding himself out as being affiliated with 4 Wall Nevada. Karabes did not respond to either letter.

4 Wall Nevada claims that the use of the “4 Wall” name by 4 Wall Iowa is likely to cause confusion with 4 Wall Nevada’s “4 Wall” name and registered trademarks. In addition, 4 Wall Nevada claims that 4 Wall Iowa and Karabes have made false or misleading misrepresentations of fact which are likely to cause confusion or mistake or to deceive as to the association of 4 Wall Iowa with 4 Wall Nevada and as to the origin or approval of 4 Wall Iowa’s services by 4 Wall Nevada. Finally, 4 Wall Nevada claims that there is such unity of interest and ownership between 4 Wall Iowa and Karabes that 4 Wall Iowa is basically the “alter ego” of Karabes and that adherence to the fiction of 4 Wall Iowa as a separate entity would sanction a fraud or promote injustice. This last claim, however, probably has more to do with 4 Wall Nevada’s attempt to argue personal jurisdiction in Nevada over an Iowa corporation based on the personal jurisdiction of Karabes rather than an attempt to pierce the corporate veil to reach Karabes' personal assets for damages arising from acts attributed to 4 Wall Iowa.

4 Wall Nevada’s causes of action are for federal trademark infringement under 15 U.S.C. § 1114, federal unfair competition under 15 U.S.C. § 1125(a), and a claim for “alter ego.” 4 Wall Nevada seeks injunctive relief, damages (compensatory, treble, and punitive) and interest, costs and attorney’s fees.