Geekview IP Week in Review

Posted by | August 21, 2011 | Disputes, Geekview IP recap, General | 2 Comments

Only in a trademark lawyer‘s fantasy . . .

Body Fantasies v VS Fantasies

Parfums de Coeur, self-described as “a dominant marketer in the United States of women’s and men’s mass market fragrance brands under $10.00 retail,” filed a lawsuit against Victoria’s Secret for launching its VS FANTASIES and VICTORIA’S SECRET FANTASIES lines, which Parfums claims infringe upon its rights in its BODY FANTASIES, FRESH WHITE MUSK FANTASY and SEXIEST FANTASY marks.  Parfums did not allege reverse confusion (when the junior user’s mark becomes better known than the senior user’s mark and the senior user is perceived to be the infringer), though my guess is that may be its strongest case.  It will be interesting to see whether the famous VICTORIA’S SECRET and VS house marks outweigh any potential confusion from use of FANTASIES.  Whether it’s perfume or hot dogs, trademark cases all smell the same . . .

Who’s the top dog?

In 2009, Sara Lee sued Oscar Meyer (who says corporations aren’t people?) for false advertising claims relating to the fact that its hot dogs had won taste tests and are “100% pure beef.”  Oscar Meyer (Kraft Foods) countersued for pretty much the same thing.  Kinda silly, if you ask me, since I think everyone knows hot dogs are not all meat.  A bench trial occurred before the Federal District Court for the northern District of Illinois last week, and now the parties wait for the Judge to determine the top dog, or at least whose advertising is more honest.  And in other food related news . . .

Vita Coco & O.N.E. Coconut Water make wishy washy health claims.

The LA Weekly reported on Monday that class action lawsuits have been filed against the makers of Vita Coco & O.N.E. Coconut Water whose health claims about hydration apparently don’t hold water.  While in other news from the kitchen . . .

Martha Stewart accused of stealing artwork

Original, Authorized, Infringing


In 2009, Gregory Beauchamp, authored the really cool piece above on the left, which he sells through one of my all time favorite websites, Etsy.  Beauchamp also designed the piece in the middle for a Save-the-Date announcement for the Spring 2010 issue of Martha Stewart Weddings.  The July 2011 issue of Martha Stewart Living (shown on the right) however, took Beauchamp by surprise.  The article credits Steve Mattern Design with this piece, though when you look at the puzzles on that site, they are shaped realistically, not fancifully like States United.  It’s a good thing Beauchamp registered his work in a timely manner so he can seek statutory damages and attorney’s fees.  What do Martha Stewart and Forever 21 have in common?  Both oddly appeal to lots of women and both are being sued for copyright infringement. . .

Forever 21 and Feral Childe engage in copyright cat fight.

Copyright infringement Feral Childe v Forever 21

Fashionista reported on this case last week even though the Complaint was filed on July 14, 2011 and the First Amended Complaint was filed on August 4, 2011.  Feral Childe alleges that it has a valid copyright registration (a prerequisite for standing to sue for copyright infringement), even though they oddly did not attach it or list the registration number in their Complaint.  The Complaint states that:

[framed_box] Judging from the claims filed against Forever 21 it is a notorious copyright abuser, having been charged in dozens of lawsuits with the exact sort of infringement alleged in this action.[/framed_box] So far, Forever 21 has settled all the copyright infringement cases brought against it, so hopefully Feral Childe has the chops to stick this out and sock it to Forever 21.  While Dolly Parton sure embodies the Forever 21 attitude (and did long before there was such a store) she also seeks to protect her namesake . . .

Only in . . . Dollywood?!?

Dollywood filed suit against 3 Pigeon Forge Tennessee hotels for: trademark infringement, dilution, unfair competition, cybersquatting, copyright infringement and violations of the Tennessee Consumer Protection Act and Personal Rights Protection Act.  Dolly Parton is a famous celebrity after whom the DOLLYWOOD theme parks are named.  Don’t mess with Dolly is all I’ve gotta say!  And back to the world of fashion we go. . .

Fake tans and fake purses all in one spot!

Coach sued Paradise Cove Sun Studio for selling counterfeit Coach bags, which are protected under copyright, trademark law and design patent law.  Just as I wrote about earlier this week regarding Waldo at Bonnaroo, when you’re selling unauthorized merchandise, you best be careful to whom you’re selling.  And apparently, at least in California, you also best be careful from whom you’re buying legal services.

Lawyers defraud defrauded clients.

California Attorney General, Kamala Harris announced that the California Department of Justice sued numerous lawyers and law firms for defrauding homeowners nationwide in fake “mass joinder” lawsuits.  These miscreants charged retainers up to $10,000 for their clients to be included in non-existent lawsuits and settlements with various deceitful home lenders.  Unbelievable.  I mean, really, who are you gonna trust when the lawyer you hire to go after the bank that’s ripping you off also rips you off?!!  Lawyers aren’t the only ones ripping others off, In-N-Out Burger claims Grab-N-Go ripped off its trademarks and trade dress . . .

Burger Battle!

Trademark infringement In-n-Out v Grab-n-Go
In-N-Out’s going after Grab-N-Go, a fast food joint.  In Maryland.  Doesn’t surprise me at all.  I call In-N-Out Burger Bully Burger for its overreaching “enforcement” of its trademarks.  Within 6 months of opening restaurants in Northern Nevada, In-N-Out Burger bullied In & Out Car Wash into changing its name, despite the fact that the car wash operated in the area for 18 years before the burger joint came to town and never sold even a morsel of food or a single soda.  Now, despite having restaurants in 3 western states — California, Nevada and Arizona — In-N-Out is suing a hamburger joint in Maryland for imitating its concepts.  Well, the last time I checked “concepts” were not protectable under any area of IP law.  Trademarks yes; concepts no.  I just don’t see infringement or dilution here.  I see Bully Burger.

As this week’s review shows, many companies are willing to go to great lengths to protect their brands.  This is because brands symbolize goodwill, and goodwill leads to continued and hopefully increasing sales.

 

 

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

2 Comments

  • Carol Luong says:

    Some of you may be interested in attending the 7th Anti-Counterfeiting & Brand Protection Summit, September 26-28, 2011 in New York City. Early bird rates end this week! Visit http://www.anticounterfeitingsummit.com for more information. Thanks!

    Questions? Email me at carol.luong@iqpc.com or call me at 646-200-7924.

    • Lara says:

      Thanks, Carol. I appreciate you reading my post (I presume you read it, at least). Your seminar sounds great; too bad (for me) it’s on the east coast! In the future, if you want to get the word out about your events, please e-mail me and I might just do a feature on the event instead of having it be lost in the comments.

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