Saturday, October 31, 2009

Weekly Wrapup of Nevada District Court Trademark Lawsuits

It was a busy week for trademark related lawsuit filings in the U.S. District Court for the District of Nevada (and not a single one of them filed by me).

Price Products, LLC v. Juvenile Solutions, Inc., Case No. 09-cv-02067 (D. Nev. October 27, 2009) (Complaint).
The owner of the DRIPSTIK ice cream/frozen treat holder (pictured above) sues for trademark and trade dress infringement over a knockoff product sold under the name FUN STIK by former Canadian distributor Petite Creations through Petite’s American distributor, Juvenile Solutions. Price Products discovered the products being marketed by Juvenile Solutions at an exhibitor’s booth at the ABC Kids Expo held on September 13-16, 2009, at the Las Vegas Convention Center (which is the only reason why an Idaho LLC is apparently suing a California corporation in Nevada district court).

M Holdings, LLC et al v. Hu Mei Lei, Case No. 09-cv-02071 (D. Nev. October 27, 2009) (Complaint) (Las Vegas Sun Article).
Las Vegas’ newest hotel and casino, The M Resort, files cybersquatting action against Chinese resident Hu Mei Lei over the website registered September 5, 2009, and purportedly featuring “provocative images of women” initially and changed thereafter to a typical pay-per-click landing page with links to discount hotel websites.

Rolex Watch U.S.A., Inc. v. Ryska et al, Case No. 09-cv-02093 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).
Rolex sues Las Vegas residents Angelika Ryska and Robert Mayer for counterfeiting over their sale of “replica” Rolex® watches through their website

Mellow Beverage Co., LLC v. Nounna et. al, Case No. 09-cv-02090 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).
A company which sells a “relaxation and sleep aid” beverage under the unregistered trademark MELLOW (pending trademark applications here and here) filed a trademark infringement lawsuit against Shannon N. Nounna and Beverage Concepts, Inc. over a similar type of relaxation beverage using the name MELLOW (pictured below) (pending trademark application here) that Beverage Concepts is apparently launching soon.

CityCenter Land, LLC v. Papillon Airways, Inc. et al, Case No. 09-cv-02088 (D. Nev. October 29, 2009) (Complaint) (Las Vegas Sun Article).
The owner of the massive CityCenter project in Las Vegas is seeking a declaratory judgment that its proposed use of the name PAPILLON (pending trademark applications here and here) for one of CityCenter’s high-end retail stores located at CityCenter’s 500,000 square foot retail complex called “Crystals at CityCenter” does not infringe on the trademark rights of Papillon Airways, Inc. and Monarch Enterprises, Inc. which use the PAPILLON mark in connection with helicopter and bus tour services.

On September 3, 2009, Papillon Airways’ counsel sent a cease and desist letter to CityCenter, citing Paillion Airways’ trademark registration for PAPILLON for various goods and services (e.g., bumper stickers, clothing, helicopter and bus tour services) and claiming that CityCenter’s use of PAPILLON (logo version pictured above) is likely to lead consumers to believe there is an affiliation with Papillon Airways’ goods and services. CityCenter’s response is that Papillon Airways misrepresents the scope of its rights to the PAPILLON mark, which is always used in connection with “Grand Canyon Helicopters” (as pictured below), and thus the second claim for relief for misrepresentation.

Aloha Medicinals, Inc. v. Birkdale Medicinals, Inc., et al, Case No. 09-cv-00639 (D. Nev. October 29, 2009) (Complaint).
A convoluted lawsuit involving claims by Aloha Medicinals, a manufacturer of dietary supplements for people and pets, against former authorized distributor Birkdale Medicinals and one of its officers, Anthony “Tom” Peters, arising from Birkdale Medicinals’ apparent relabeling of Aloha Medicinals’ products to make it appear as if the products were Birkdale Medicinals’ own branded products. There are also claims relating to use of Aloha Medicinals’ copyrighted website, clinical and technical data for Aloha Medicinals’ products (used by Defendants as data for their products), using Aloha Medicinals’ unregistered trademarks as metatags and Google Adwords, and intentional misrepresentation regarding broken promises over special packaging provided by Aloha Medicinals to Birkdale Medicinals.

Friday, October 16, 2009

Nevada District Court dismisses some of Texas Domainer’s counterclaims against World Market Center

In a case that pits the World Market Center against Texas’ most notorious domainer, Texas International Property Associates (“TIPA”), the Nevada District Court granted World Market Center Motion to Dismiss (with leave to amend) several counterclaims that sought cancellation of some of World Market’s Center registered trademarks listed in its complaint that did not form the basis of its trademark infringement and cybersquatting claims against TIPA. World Market Center Venture, LLC v. Texas International Property Associates, Case No. 08-cv-01753, 2009 U.S. Dist. LEXIS 95752 (D. Nev. October 14, 2009).

On December 12, 2008, World Market Center Venture, LLC, (“WMCV”), the owner and operator of the wholesale furniture trade show complex World Market Center in Las Vegas, filed a trademark infringement and cybersquatting lawsuit against TIPA the well-known domain name holding company that is no stranger to cybersquatting lawsuits, over TIPA’s registration of the domain name (the “typosquatting” variation of, used by WMCV to promote the World Market Center) on February 4, 2005, and subsequent use of the domain name in connection with a website that displays links to other websites related to Las Vegas activities (most likely your standard PPC landing page but its currently disabled).

WMCV owns the registered mark WORLD MARKET CENTER along with other variations on the mark including LAS VEGAS MARKET (filed in September 2004 with claimed first use going back to April 2001 and able to be registered on the Principal Register under section 2(f) on the basis of acquired distinctiveness). [Click here my posting on a Nevada district court decision earlier this year on the “genericness” of this particular registered mark].

Soon after the filing of its complaint, WMCV obtained a temporary restraining order requiring the registrar to lock the domain name and ordering TIPA to cease any use of Plaintiff's marks. The court later granted WMCV’s preliminary injunction and denied a motion to dismiss filed by TIPA.

TIPA answered the complaint on June 19, 2009, and included six counterclaims each of which sought to cancel one of WMCV's federal or state trademarks. The Third counterclaim sought to cancel the mark LAS VEGAS FURNITURE MARKET (Note: the court’s opinion seems to mistakenly cite the registration number for this mark as 3,259,971, which is actually WMCV's federal registration for LAS VEGAS MARKET) and the Fourth and Fifth counterclaims sought to cancel LAS VEGAS DESIGN CENTER.

WMCV filed a Motion to Dismiss these counterclaims for lack of standing to request cancellation since WMCV has not claimed that TIPA is infringing these particular marks and because TIPA has claimed no interest in the marks beyond that of the general public nor has it claimed will be damaged by WMCV's registration of the marks. TIPA argued that WMCV “bestowed standing” upon TIPA to counterclaim to cancel these marks when WMCV included claims in its Complaint that it owned these other marks in connection with the mark that it claims TIPA infringed.

The court described the “real interest” that must be demonstrated in the pleadings in order for a party seeking to cancel a registered mark to have standing:
In order to have standing, petitioner for cancellation need not prove actual damage, but only the likelihood of damage from the continuing registration of the mark. 3 McCarthy, Trademarks § 20:46, at 20-109 (4th ed. 2009) (citing Golden Gate Salami Co. v. Gulf States Paper Corp., 332 F.2d 184, 188 (C.C.P.A. 1964)). There must be a “personal commercial interest, rather than the interest of a mere intermeddler.” Golden Gate Salami Co., 332 F.2d at 188. If a party claiming cancellation “does not plead facts sufficient to show a personal interest in the outcome beyond that of the general public, the case may be dismissed for failure to state a claim. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028 (C.C.P.A. 1982) (citing Sierra Club v. Morten, 405 U.S. 727 (1972)). A party attempting cancellation must “demonstrate a real interest in the proceedings.” Id. (citing Universal Oil Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122 (C.C.P.A. 1972)). The Lipton court identified many contexts in which a real interest could be shown, supporting standing: importation of products deterred by a registration, use of copyrighted appearance of an item, pecuniary interest of trade association, prior registration but not priority in use, protection of subsidiary's mark, descriptive use of term in registered mark, and advertising emphasis of American origin. Id. at 1029 (citations omitted).
WMCV argued that TIPA’s counterclaims did not show how TIPA might plausibly be damaged by WMCV's registrations of the LAS VEGAS FURNITURE MARKET or LAS VEGAS DESIGN CENTER marks. TIPA attempted to argue that WMCV “bestowed standing on TIPA” by suing TIPA for infringement and listing those registered marks in the Complaint as marks that were being infringed by TIPA, and thus giving TIPA a “real interest” in the continued registration of the marks.

While the court acknowledged that TIPA was correct that being sued for infringement is sufficient to support standing for a counterclaim for cancellation, the court took the common sense approach in recognizing that, although WMCV included a list of World Market Center-related marks in its Complaint, “it is clear from the complaint identifying the allegedly infringing Domain Name which mark or marks were alleged to have been infringed.” The mere fact that such marks were listed in WMCV's Complaint against TIPA “is not enough to find that Plaintiff has claimed these marks are being infringed. Plaintiff has made no such claim. . . . TIPA's only claim to a real interest in the two marks mentioned in the Third, Fourth, and Fifth Counterclaims is based on having been sued over them.”

As such, the court found that TIPA did not have standing to counterclaim to cancel the LAS VEGAS FURNITURE MARKET or LAS VEGAS DESIGN CENTER marks that were the subject of TIPA’s Third, Fourth, and Fifth Counterclaims, and dismissed those counterclaims, with leave to amend. The court also granted WMCV’s request for leave to amend its complaint to remove references to the LAS VEGAS FURNITURE MARKET and LAS VEGAS DESIGN CENTER marks.

So is the lesson learned that plaintiff’s shouldn’t engage in a long listing of that clearly are not the basis for the alleged infringement? Likewise, should defendant’s not bother seeking to cancel registered marks that clearly are not the basis for the alleged infringement?

Thursday, October 8, 2009

Local Las Vegas companies in a trademark feud over “Appliance Doctor”

The Las Vegas Sun ran a story today (link here) about a dispute between two appliance repair businesses in the Las Vegas valley using the name “Appliance Doctor” to identify their businesses.

Samuel and Mary Gravino, the owners of Applicance Doctor LLC, filed a lawsuit on Tuesday in Clark County District Court against a company operating as “The Appliance Doctor of Las Vegas” owned by Ken and Melissa Jagmin.

The Gravinos claim to have been using the name “Appliance Doctor” in Las Vegas for over 26 years. Of course, it wasn't until a little over a week ago on September 29, 2009, that their company actually registered APPLIANCE DOCTOR LLC as a trade name with the Nevada Secretary of State’s Office (claiming date of first use as October 2, 1989) for “appliance repairs” (of course, their Las Vegas Business license lists the date their business license was issued as October 23, 1989).

According to their complaint, the Gravinos claim to have been receiving calls from angry, disgruntled customers who believed that their company had provided services that it turns out were provided by “The Appliance Doctor of Las Vegas.” The Gravinos claim that the Jagmins, who received their business license on April 30, 2009, are trading off the name, reputation and goodwill that the Gravinos have established over the last 26 years.

When reached for comment, Mr. Jagmin stated that “Appliance Doctor” is commonly used by such companies around the nation and he’s unaware of any trademark covering the name.

A quick internet search does support Mr. Jagmin’s case about the term “Appliance Doctor” being commonly used in connection with appliance repair services. However, as for any trademark on the name, surprisingly, THE APPLIANCE DOCTOR and APPLICANCE DOCTOR are actually federally registered trademarks of a Wichita company named Appliance Doctor, Inc. Based on the widespread (but localized) use of “Appliance Doctor” it would appear that Appliance Doctor, Inc. has not done a very good job of enforcing its trademark rights nationwide. Of course, if it’s true that the Gravinos have been using the name APPLIANCE DOCTOR in the Las Vegas area for over 26 years – long before Appliance Doctor, Inc. received its first trademark registration in 1996– then they would have clear prior user rights to continue to use the name.

Mr. Jagmin also commented that his name was different than his competitor because it includes the phrase “of Las Vegas.” [Someone might want to explain to Mr. Jagmin that additional geographically descriptive words don’t really carry much weight in analyzing whether two marks are likely to cause confusion, especially when the services rendered by “Appliance Doctor” are in the Las Vegas area. I’m thinking about opening a competing hotel/casino called “Red Rock of Las Vegas” – no one would confuse that with “Red Rock” Hotel and Casino in Las Vegas, right?] Of course, Mr. Jagmin fails to mention that on the company's website, the logo (pictured below) is just “The Appliance Doctor” with the “of Las Vegas” used more in the text of the website.

I wonder if the Gravinos would have still claimed trademark infringement if the Jagmin’s had used “The Appliance Doc of Las Vegas.” Given the commonality of the phrase “Appliance Doctor” would use of just the shorthand “Doc” suffice to alleviate consumer confusion?

Thursday, October 1, 2009

Nevada District Court rules that “The Rat Pack” is Generic in connection with “Rat Pack” tribute shows

I previously posted (link here) about the trademark infringement lawsuit brought by TRP Entertainment, LLC (“TRP”) – the production company behind the “Rat Pack” tribute show “The Rat Pack is Back” playing at the Plaza Hotel and Casino in Downtown Las Vegas and which owns the registered trademark for THE RAT PACK IS BACK – against BC Entertainment, Inc. (“BCE”) and Barrie Cunningham (the “Defendants”). See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Case No. 08-cv-00579 (D. Nev.). A copy of the complaint can be downloaded here. In short, TRP claimed that the Defendants use of the term “The Rat Pack” in connection with the Defendants’ production of a Rat Pack tribute show infringed on TRP’s trademark rights.

My law firm was subsequently retained by the Defendants to represent them in the lawsuit. After counterclaims had been filed, but very early into discovery, a Motion for Partial Summary Judgment was filed on behalf of the Defendants on several of Defendants’ counterclaims, including counterclaims seeking a declaration that the term “The Rat Pack” is generic when used in connection with a “Rat Pack” tribute show and an order to the U.S. Patent and Trademark Office ordering that TRP’s registered trademark for THE RAT PACK IS BACK include a disclaimer of the term “THE RAT PACK.”

On September 29, 2009, nearly a year after the original Motion was filed (and long after our law firm unfortunately had to withdraw as counsel for the Defendants), Nevada District Court Judge Lloyd George entered an order granting in part Defendants’ Motion for Partial Summary Judgment, in particular, finding that “The Rat Pack” is generic when used in connection with a Rat Pack Tribute show. See TRP Entertainment, LLC v. BC Entertainment, Inc. et al, Document #49, Case No. 08-cv-00579-LDG-RJJ (D. Nev. September 28, 2009). A copy of the court’s order can be downloaded here.

The Court stated the following regarding the evidence of the meaning of the term “The Rat Pack”:

Stated succinctly, Cunningham’s evidence establishes that, long before TRP offered live musical shows, the term the “The Rat Pack” had a meaning that was used in connection with the joint performances of members of the Rat Pack during the 1960s. While some of these performances included movie appearances, typically the joint performances were live musical performances. Since the 1960s, the term “The Rat Pack” has been used by producers of many types of goods or services to indicate that the goods or services relates to members of the Rat Pack or to the joint movie or live (or recorded) musical or movie performances of the Rat Pack during the 1960s. From its initial use to refer to members of the group, particularly when jointly performing live musical entertainment, “The Rat Pack” did not and, indeed, could not refer to or identify TRP’s live musical show.

The court acutely recognized that Defendants’ Motion was not directed towards TRP’s registered trademark but rather merely to the component term “The Rat Pack”:

The question before the court on Cunningham’s partial motion for summary judgment is not whether “The Rat Pack is Back” identifies and distinguishes TRP’s show in tribute to members of the Rat Pack from all other such live shows. Rather, the only question is whether the component term “The Rat Pack” so distinguishes TRP’s live show from all others about or in tribute to the Rat Pack. The evidence establishes that it does not and that TRP cannot appropriate the term “The Rat Pack” for its exclusive use.

And just to make it abundantly clear to TRP about the scope of its trademark rights, the court held that “As the term ‘The Rat Pack’ is generic in the context of live shows about or in tribute to members of the Rat Pack, TRP does not have an exclusive right to use the term ‘The Rat Pack.’”

Furthermore, not only did the court grant Defendants’ declaratory relief counterclaim finding the term “The Rat Pack” generic in connection with Rat Pack tribute shows, the court also granted Defendants' counterclaim which requested that the U.S. Patent and Trademark Office enter a disclaimer of TRP’s “incontestable” Trademark Registration No. 2,640,066 to add a disclaimer of the term “RAT PACK” -- something that arguably should have been done during the original prosecution phase, but which for various reasons was not. The lack of a disclaimer in TRP’s trademark registration is very likely what has allowed TRP to take its aggressive position regarding its trademark rights to the term “The Rat Pack” for so long. Not anymore.

As an attorney always hoping for a win for my clients, I am understandably happy with the court’s decision given my personal, direct involvement in preparing the Motion. And while there is so much else I would like to say about this case as a commentary on our legal system, the price of getting justice in this country, the abusive use of trademarks, and even the unintended consequences of maintaining a legal blog, I will defer such remarks to those who would like to hear them from me in person.

Instead, I would like simply to share this victory (however pyrrhic it might be) with the world – and particularly, any other production companies out there that have wanted to produce a Rat Pack tribute show and use the phrase “The Rat Pack” in the title somewhere, but have been scared away from doing so by the aggressive efforts of TRP based on its registered trademark THE RAT PACK IS BACK (or other asserted trademark rights). You now have at least one decision from a court of law that will back you up in your argument that the term “The Rat Pack” when used in connection with a Rat Pack tribute show is generic and cannot be claimed exclusively by anyone. Sounds ridiculously obvious – and yet so much time, energy, resources, and money was spent litigating just this point.

Of course, what’s really sad is that TRP will certainly attempt to appeal the judge’s decision – after all, this decision has dealt a significant blow to one of TRP’s most valuable pieces of intellectual property (at least in the arena of “Rat Pack” tribute shows). And unless the Defendants are able to garner the financial resources to continue the fight, TRP’s appeal might go unchallenged. If such an appeal follows, one can only hope that the Ninth Circuit Court of Appeals will recognize the reasonableness of the district court’s decision.

Lastly, I want to give thanks to my law firm colleague, Mark Borghese, who pushed the idea of pursuing an early Motion for Partial Summary Judgment that was focused on getting a decision that the “The Rat Pack” is generic and who provided other invaluable direction along the way. This victory is as much his as it is mine.

[Update: The Las Vegas Sun has an article
on the decision here.]

[Update #2: On December 14, 2009, the Nevada District Court denied TRP's Motion for Reconsideration of the court's September 28, 2009 order. A copy of the latest order can be read here.]