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.

Las Vegas Creator of HAREM BODY CHAINS Files Trademark Infringement Lawsuit Against eBay Competitor

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.

Vegas Condo-Hotel Management Company Sues Donald Trump for $1 Billion

On January 26, 2008, Nights at Vegas, Inc. (“NAV”), a Vegas-based real estate property management company, filed a lawsuit against Donald Trump, Trump Ruffin LLC, and Trump Ruffin Tower I LLC (together “Trump”) seeking declaratory relief of non-infringement of trademarks as well as $1 billion in damages for alleged anti-trust violations, false promotion, and unfair competition. See Nights at Vegas, Inc. v. Trump Ruffin LLC et al, Case No. 08-cv-00122 (D. Nev.). A copy of the complaint can be downloaded here (courtesy of me).

NAV is in the business of helping owners of Las Vegas’ many high-rise condo hotels rent their units, including owners of condo-hotel units at the Trump International Hotel & Tower (the “Trump Tower”).

The Trump International Hotel & Tower

in Las Vegas

Billionaire Donald Trump needs no introduction, except to say that he is the owner of numerous trademark registrations and applications containing his famous moniker, including TRUMP INTERNATIONAL HOTEL & TOWER (for, among other goods and services, real estate services, namely, listing, leasing, and managing commercial and residential property) as well as a pending application for TRUMP (for real estate services, namely, listing, leasing, financing, and managing commercial, residential, and hotel properties). Trump Ruffin LLC is the joint venture owned by Trump and Phil G. Ruffin – the owner of the land where the Trump Tower now stands. Trump Ruffin Tower I LLC is the official owner of Tower 1 of the Trump International Hotel & Tower in Las Vegas (with Tower 2 now accepting reservations for any interested readers).

The "Donald"

Declaratory Relief
NAV’s first cause of action is for a declaratory judgment of non-infringement. NAV claims that it has received letters from Trump demanding that NAV cease and desist using the trademarks “Trump,” “Trump International,” and “Trump International Hotel and & Tower” in advertising its services or else face a lawsuit. NAV claims that such use is fair use and not likely to cause confusion because the marks serve to describe the public identity and location of the residential units. NAV’s website even has the following disclaimer: “Nights at Vegas, Inc. is an independent property management company which acts directly with and on behalf of the owners of units in condominium hotels, so that it may act independently to bring you better service and rates. None of its partners, agents, employees, or the company itself, are directly affiliated with any one hotel, casino, or condominium hotel.” Under this threat of lawsuit, NAV seeks a declaration that its use of the aforementioned Trump Marks is not trademark infringement.

It should be noted, however, that in arguing that Trump demanded that NAV cease and desist use of the Trump trademarks, NAV attaches a letter from Trump’s attorneys, Snell & Wilmer (with offices, I might add, in the nice, shiny new building in the Howard Hughes complex). However, the demands made by Trump’s attorneys were a) to correct misleading information about NAV’s 80/20 split (which counsel argued was misleading because it was not made clear that such split occurs after certain expenses are deducted); b) to stop contacting purchasers of Trump Tower through proprietary information that may have been misappropriated; and c) remove references on NAV’s website to references to a business relationship with Expedia, Travelocity, and Orbitz. There was no demand made regarding the use of Trump’s trademarks.

Anti-Trust Violations
NAV’s second cause of action is that Trump is engaging in certain monopolitistic practices to prevent NAV from offering its managerial services to owners of condo units at the Trump Tower. First, Trump has exclusive agreements with online travel sites such as Expedia, Travelocity, and Orbitz, which NAV argues prevents it from being able to list and rent units on such sites. Second, Trump is preventing NAV from using the aforementioned Trump trademarks to market its services. Third, NAV claims that Trump is using its own managerial company to offer services similar to NAV while refusing to agree to protocols and administrative procedures with NAV to allow the check-in/check-out of transient guests and the cleaning of the units that NAV manages. Fourth, NAV alleges that Trump has instituted certain fees against companies like NAV that it does not charge its own management company. Finally, NAV argues that Trump has been providing inaccurate information to unit owners who inquire about NAV’s services, in particular, the staff at the Tower tell inquiring customers that NAV is not allowed to market units of the building and is not allowed to rent such units.

NAV seeks injunctive relief, but also requests damages. According to NAV, but for Trump’s anti-competitive actions, at least 50% of the unit owners in the Trump Tower would engage NAV’s services because of NAV’s far more profitable 80/20 split versus the 50/50 split offered by Trump’s in-house management. NAV believes the amount of lost revenue from the many hundreds of units owners who have no alternative but to use Trump’s in-house management services is approx. $250 million. And because of alleged difficulties in switching property management companies, mandatory notice requirements, and mandatory term lengths, Trump has secured such revenue stream for an average of 4 years, and thus NAV seeks damages in excess of $1 billion. In addition, NAV asks for $3 billion in treble damages as well as court costs and attorney’s fees.

False Promotion
NAV’s third cause of action is for false promotion (i.e. false or misleading description or representation of fact in commercial advertising or promotion under 15 U.S.C. §1125(a)(1)(B)). According to NAV, the covenants, conditions & restrictions (CC&R’s) that buyers of the Trump Tower’s residential units must comply state the following:

. . .THAT ANY RENTAL PROGRAM THAT MAY BECOME AVAILABLE IN WHICH A REISDENTIAL UNIT OWNER MIGHT DESIRE TO PARTICIPATE WILL MOST LIKELY PLACE SEVERE RESTRICTIONS ON A RESIDENTIAL OWNER’S RIGHTS TO USE SAID OWNER’S UNIT, INCLUDING IMPOSING BLACKOUT PERIODS OR OTHER DATE RESTRICTIONS ON USE OF THE REISDENTIAL UNIT THAT ARE IN ADDITION TO THE RESTRICTIONS AND REQUIREMENTS IMPOSED BY THIS DECLARATION.

NAV maintains that this statement has harmed it because the statement leads unit owners to believe that any other management service outside of Trump will jeopardize the owner’s ability to use the unit – a statement that NAV claims is false.

Unfair Competition
NAV’s final cause of action is for unfair competition, without any further elaboration.

1 billlllllion dollars !

Ninth Circuit gives copier companies second shot at Ikon/GE in complaint alleging false statements, antitrust violations, and racketeering

The Ninth Circuit today reversed a district court decision to grant a motion to dismiss a complaint brought by Newcal Industries, Inc., Pinnacle Document Systems, Inc. and Kearns Business Solution, Inc. (together “Newcal”) against Ikon Office Solution and General Electric Corporation (together “IKON”). See Newcal Industries Inc. v. Ikon Office Solution, No. 05-16208 (9th Cir. January 23, 2008). The decision can be downloaded here.

Newcal and IKON compete to lease name-brand copier equipment to commercial customers and to provide service contracts for the maintenance of such equipment during the lease term. Newcal alleged in its complaint that IKON was engaging in a scheme to defraud IKON customers by amending their customers’ lease agreements and service contracts without disclosing that the amendments would lengthen the term of the original agreement. By extending such agreements, IKON made it more difficult for Newcal to compete for the business of IKON’s customers at such time as the original lease or service contract expires would normally expire. Newcal alleged antitrust violations under the Sherman Act, false advertising under the Lanham Act, and racketeering under RICO. Newcal also sought a declaratory judgment that IKON’s fraudulently procured contracts were invalid.

The district court dismissed without leave to amend Newcal’s declaratory judgment cause of action, but did allow leave to amend the other claims. Newcal later filed a first amended complaint; however, on motion to dismiss brought by IKON under Rule 12(b)(6) for failure to state a claim, the district court concluded that Newcal had failed to allege a legally cognizable “relevant market” under the Sherman Act, that it had failed to allege any false statement of fact under the Lanham Act, and that it had failed to meet RICO standing requirements, and dismissed the complaint with prejudice.

On appeal, the Ninth Circuit reversed the district court’s dismissal and remanded the case. The court found that Newcal, assuming all facts alleged in the complaint are true (as the court must done in deciding an appeal from a Rule 12(b)(6) dismissal), had pled sufficient allegations to support its asserted claims.

Focusing just on the court’s discussion of Newcal’s Lanham Act claim for allegedly false and misleading statements, Newcal alleged that five particular statements were false or misleading. The district court found all five statements insufficient to support a Lanham Act claim. On appeal, however, the court reversed finding that four of the five statements rested on factual findings rather than legal conclusions, and therefore could not be dismissed under Rule 12(b)(6).

The court began by setting forth the elements necessary to state a prima facie case of false or misleading description or representation of fact in commercial advertising or promotion which misrepresents the nature, characteristics, qualities of the person’s goods, services, or commercial activities under the Section 43(a)(1)(B) of the Lanham Act (15 U.S.C. §1125(a)(1)(B)):

Under the Lanham Act, a “prima facie case requires a showing that (1) the defendant made a false statement either about the plaintiff’s or its own product; (2) the statement was made in commercial advertisement or promotion; (3) the statement actually deceived or had the tendency to deceive a substantial segment of its audience; (4) the deception is material; (5) the defendant caused its false statement to enter interstate commerce; and (6) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct diversion of sales from itself to the defendant, or by a lessening of goodwill associated with the plaintiff’s product.” Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (9th Cir. 2000).

Slip op. at 987.

Newcal set forth in its complaint five particular statements that it alleged were false or misleading statements of fact:

(a) that IKON [ ] would deliver “flexibility” in their “cost-per-copy” contracts and that they would lower copying costs for consumers; (b) that IKON [ ] would deliver 95% up-time service in their IKON Contracts; (c) that original IKON Contracts were intended by IKON to be for a fixed term of sixty (60) months and would expire at the end of that term; (d) that IKON Amendments for sixty (60) months applied only to the changes on the Amendment, not to the entire fleet of IKON [ ] Copier Equipment of the consumer; and (e) that IKON’s “flexing” practices had been declared legal by [the District] Court in its opinion of December 23, 2004.

Slip op. at 987-88 (alterations in original)

The district court had concluded that statement (a) constituted “puffery” and the Ninth Circuit agreed. Citing Cook, Perkiss, & Liehe v. Northern California Collection Service, Inc., 911 F.2d 242, 245-46 (9th Cir. 1990), the court noted that determining whether an alleged misrepresentation is a statement of fact or is instead “mere puffery” is a legal question that may be resolved on a Rule 12(b)(6) motion. The court further noted that a statement is considered puffery if the claim is extremely unlikely to induce consumer reliance and that ultimately, the difference between a statement of fact and mere puffery rests in the specificity or generality of the claim (i.e., consumer reliance will be induced by specific rather than general assertions). A statement that is quantifiable, that makes a claim as to the specific or absolute characteristics of a product may be an actionable statement of fact while a general, subjective claim about a product is non-actionable puffery. The court held that statement (a) was not a quantifiable claim and does not describe any specific or absolute characteristic of IKON’s service, but instead is a general assertion that IKON provides its customers with low costs and flexibility.

As for statement (b), the court noted that whether IKON does or does not actually “deliver 95% up-time service in their IKON Contracts” is a factual question – Newcal’s allegation that this was a false statement at the time it was made is sufficient to survive a 12(b)(6) motion to dismiss.

With respect to statement (c), the court found that this statement could be proved false or possibly true but misleading. In either case, Newcal’s allegation that IKON’s assurance of a 60 month limitation on the contract was misleading since IKON fraudulently extended those contracts will depend on whether IKON knew at the time that it made the statement that it would fraudulently extend the contracts beyond their 60 month terms. IKON’s knowledge and intent at the time and whether the statement was intentionally misleading at the time it was made are factual questions.

As for statements (d) and (e), the issue was whether those statements could reasonably be said to have been made in “a commercial advertisement or promotion.”

The court, citing Coastal Abstract Service, Inc. v. First American Title Insurance Co., 173 F.3d 725, 735 (9th Cir. 1999), stated that in order for a statement of fact to constitute commercial advertising or promotion, it must be (1) commercial speech; (2) by the defendant who is in commercial competition with the plaintiff; (3) for the purpose of influencing consumers to buy defendant’s goods or services; and (4) disseminated sufficiently to the relevant purchasing public to constitute “advertising” or “promotion” within that industry (i.e., the representations need not be made in a “classic advertising campaign” and can include informal types of “promotion”).

The court again notes that whether the statements were disseminated sufficiently to the relevant purchasing public is a factual question, but that Newcal’s allegation that IKON made its allegedly false statements in commercial advertising and promotion of its goods and services through the dissemination of promotional literature to thousands of representatives and employees is sufficient to withstand dismissal at this stage.

As such, the court reversed and remanded Newcal’s Lanham Act claim, finding that the complaint sufficiently alleges all of the elements of a Lanham Act violation, including several false statements of fact that were allegedly disseminated to the relevant market’s consumers.

Clint Eastwood files lawsuit over “The Eastwood” home theater chairs

On January 16, 2008, Clint Eastwood filed a lawsuit in the U.S. District Court for the Central District of California against Palliser Furniture, Ltd, Palliser Furniture Corp. and several John Does (together “Palliser”) over a line of home theater chairs manufactured and sold by Palliser under the name “The Eastwood.” See Clint Eastwood v. Palliser Furniture, Ltd et al, Case No., 08-CV-00266 (C.D. Cal.). A copy of the complaint (courtesy of TMZ) can be downloaded here.

Eastwood’s lawsuit follows a similar lawsuit against Palliser filed in the same court on November 20, 2007, by the Executors of the Estate of Marlin Brando. See Morris Medavoy, et al v. Palliser Furniture Ltd., et al, Case No. 07-CV-07595 (C.D. Cal. November 20, 2007). At issue in that case is a similar line of home theater chairs made by Palliser named “The Brando” (apparently now renamed Sequelle). A press release from the Marlon Brando Estate regarding the dispute can be read here (although it should be noted that the press release discusses the filing of a lawsuit dated March 23, 2007, and may be referring to an earlier court action that apparently was unsuccessful because otherwise, why would the Marlon Brando Estate be pursuing a similar action in federal court eight month s later).

The Eastwood

According to Eastwood’s complaint, Palliser, a Canadian-based major manufacturer of home furnishings distributed throughout the Western Hemisphere, has been willfully manufacturing and selling “The Eastwood” home theater chair without Eastwood’s permission. Much of the complaint focuses on describing Eastwood’s film background and fame. The complaint notes that Eastwood has a long history of rejecting solicitations from third parties to license his name, image and likeness for commercial purposes so that he can use his publicity rights and goodwill associated therewith for his own motion picture and entertainment projects as well as his own personal ventures. Some of Palliser’s other home theater chairs named after celebrities noted in the complaint include “The Cagney,” “The Cooper,” “The Bronson,” and “The Connery.”

The complaint sets forth three causes of action: 1) false designation of origin and false description under Section 43(a) of the Lanham Act (15 U.S.C. §1125(a)); 2) violation of Eastwood’s right of publicity in his name in violation of California Civil Code §3344; and 3) common law violation of Eastwood’s right of publicity in his name. Eastwood claims that Palliser’s use of the name “Eastwood” on its chairs will create a false impression that “The Eastwood” home theater chairs are endorsed or associated with Eastwood and constitutes a misleading description of Palliser’s goods. Eastwood also alleges that Palliser committed such actions willfully in order to trade off of Eastwood’s reputation and goodwill. Eastwood further claims that Palliser’s intentional use of the name Eastwood is causing harm to his name by being falsely associated with Palliser’s home theater chairs.

In addition to injunctive relief, Eastwood seeks the usual damages under 15 U.S.C. §1117(a) (Palliser’s profits, damages, and costs) and also maintains that Palliser’s willful conduct makes the case exceptional entitling Eastwood to treble damages and attorney’s fees. Eastwood also requests damages, attorney’s fees, and punitive damages under California law.

Vegas™Esq. Comments:

Eastwood unquestionably has a strong mark in his own last name, especially with goods and services that are related to the movie industry (although one should note that there are many registrations for the mark EASTWOODfor other goods and services such as guitars and insurance brokerage services as well as a multitude of goods and services across four registrations held by Easthill Group, Inc.).

In addition, the goods are related albeit tenuously – Eastwood’s name is commonly associated with the movies and the goods at issue are for home theater chairs (no doubt purchased by movie fans). And to the extent that Palliser named its chairs “The Eastwood,” then the marks are similar – although if you click on the above links, you will note that Palliser appears to be changing the name of its various lines of chairs and moving away from “The …” celebrity names (see also here).

I do question whether the relevant consumers in this case – wealthy homeowners with home theater systems – would honestly believe that these goods (home theater chairs) are truly endorsed by the individuals after which they are named. In addition, home theaters are not cheap – consumers purchasing these chairs are likely to exercise a high degree of care. They will select a chair based on its features – and not because of the “movie actor” after which it is named. The names of these chairs would be recognized by such movie-fan consumers as playful references to famous movie actors – not as an endorsement by those stars. In addition, I doubt that either Eastwood or Brando’s estate is going to be branching out into home theater furnishings anytime soon (although Brando’s estate does have a trademark application for THE BRANDO pending for towels, spa products, and clothing, which was recently published for opposition).

While Eastwood may be able to unearth evidence to the contrary, it would seem that Palliser’s intent in choosing to name its movie theater seats after famous movies stars was not to take advantage of the goodwill in Eastwood’s name, but rather to appeal to the interests of movie aficionados (Palliser’s primary customers for such seats) who are likely to be fans of such great actors as Marlon Brando, Clint Eastwood, James Cagney, and Sean Connery, but who are not likely to buy a particular theater chair simply because a particular celebrities name is tied to it.

So while I would like to believe that the factors tend to favor a finding of no likelihood of confusion, I recognize that Eastwood asked for a jury trial for a good reason, namely so that Eastwood can make such arguments before a group of jurors who will certainly have heard of Eastwood and who may be more easily swayed into finding a likelihood of confusion under the circumstances.

As for Eastwood’s right of publicity claim, Palliser did knowingly use Eastwood’s name on its products without Eastwood’s permission and did so in part to take advantage of the Eastwood's movie actor, which doesn’t bode well for Palliser. However, California Civil Code §3344(e) does provide an exception for the use of a person’s name without such person’s consent even though the use is commercially sponsored. Of course, it becomes a question of fact (for the jury in this case) whether or not Palliser’s use of the name “Eastwood” was “so directly connected with the commercial sponsorship” as to create a use for which consent is required.

Of course, the above assumes that this case even goes to trial, which I can’t imagine to be the case given the steps Palliser is taking to move away from such allegedly infringing use actors’ names for its chairs. More than likely, the parties reach a confidential settlement whereby Palliser agrees to stop using the name and possibly pays some monetary compensation for past infringing use (perhaps a donation to Eastwood's favorite charity).

“A man’s got to know his limitations.”
- Clint Eastwood as Dirty Harry Callahan in “Magnum Force”