Traverse Internet Law Federal Court Report: November 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


DOCTOR’S ASSOCIATES INC. v. SUBWAY.SY LLC AND HANI KOTIFANI
DISTRICT OF MINNESOTA
0:09-CV-03148
FILED: 11/09/2009

The registration of the subway name in Minnesota reflects a fundamental problem with state trademark registrations. Usually there is very limited review and no notice provided to third parties in a state trademark registration process. How would you like it if your novel or unique business name was trademarked in a dozen other states around the country and you didn’t even know about it? Keep on top of your name by conducting appropriate searches and setting up alerts for anything containing your business name. You might also consider having your attorney conduct an annual trademark review and clearance of your business name to identify any infringers.

The Plaintiff is the owner of the Subway chain of restaurants. Defendants are alleged to have purchased “www.subway-sy.com” and launched a website at that domain name address. The Defendants obtained a Minnesota state trademark registration for “subway.sy eat healthy”.

The lawsuit claims trademark infringement, unfair competition, trademark dilution, violation of the Anti-Cybersquatting Consumer Protection Act, violation of Minnesota Deceptive Trade Practices Act, and dilution and injury to business reputation. Plaintiff requests the cancellation of the Defendant’s state trademark, preliminary and permanent injunctive relief, transfer of the infringing domain name, compensatory relief to be determined at trial, and attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1386.


UNITED STATES OF AMERICA v. AFIP LABORATORIES, INC., ET AL.
DISTRICT OF MARYLAND (GREENBELT)
8:09-CV-02908
FILED: 11/03/2009

I understand the attraction of making a business appear to be a government agency or affiliated government sponsored service provider. Don’t mess with the fed. And don’t ever, ever, ever get near the Department of Defense. A simple lawsuit is the least of your worries. I’ve had clients, in what appears to be much less serious situations, have to deal with coordinated FDI raids. The fact is that if your business touches upon the Department of Defense or national security you need to be squeaky clean. Résumé banks for retiring military, social networks for active duty, government contractors (and wannabes) all need to be above reproach in every single respect.

The Plaintiff is the United States of America, Department of Defense, Armed Forces Institute of Pathology. The Defendants are allegedly using the acronym “AFIP” on its website and thereby holding itself out as affiliated with the Department of Defense’s laboratory since it has a registered trademark in “Ask AFIP”.

The Plaintiff claims trademark infringement, false designation of origin, unfair competition, false or misleading descriptions and representations of fact, and wrongful registration of a domain name. The United States requests that the court enter a preliminary and permanent injunction prohibiting the Defendant from using the trade name, domain name, and any other indicia of the Armed Forces Institute of Pathology or any other Government affiliate. Plaintiff also request that Defendants be required to surrender all works, products, or advertising bearing the trade name, transfer the domain name to Plaintiff, and place a large font disclaimer on all websites or materials that use the marks “AIPL” or “AIP Laboratories” that make it clear Defendants are not affiliated with the Armed Forces Institute of Pathology. Monetary damages requested include compensatory damages, actual damages, and court costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1387.

Traverse Internet Law Federal Court Report: October 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

HAPPY FEET USA, INC. v. BESTSOLE, INC.
MIDDLE DISTRICT OF FLORIDA (ORLANDO)
6:09-CV-01710
FILED: 10/07/2009

It is pretty clear all across the country that the use of a trademark to key a competitor’s ad is likely trademark infringement. If you have been reading the Traverse Internet Law Federal Court Report over the past year you will have seen dozens of these types of lawsuits. Don’t key your ads off of a competitor’s trademark. For trademarks that are registered with the USPTO, it is fairly easy to search its database. But what about state trademark registrations? It is often very difficult to locate and verify the existence of a state trademark without conducting a full blown trademark search. And what about common law trademarks? Those also will have the same protection as a registered trademark and there is really no way to know whether such a trademark exists without a robust trademark legal review. The simple lesson is to stay away from federally registered trademarks, state registered trademarks, and common law trademarks. Don’t key your ads by the trademark of a competitor. The harder part, of course, involves determining whether a trademark actually exists.

The Plaintiff is a Florida corporation in the business of developing, manufacturing, marketing, promoting, distributing and selling high quality fluid filled insoles for insertion into shoes. It owns the “Happy Feet” trademark. The Defendant is a competitor and was keying ads off of the term “Happy Feet” in the Google AdWords system. This is another Google AdWords trademark infringement lawsuit.

The lawsuit alleges trademark infringement, unfair competition, common law unfair competition, and breach of confidential settlement agreement. The Plaintiff requests preliminary and permanent injunctive relief, actual damages, punitive damages, and taxable costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1367.


PROVIDA LIFE SCIENCES INC. v. MACY’S INC., ET AL.
CENTRAL DISTRICT OF CALIFORNIA
2:09-CV-07203
FILED: 10/02/2009

Someone at Macy’s didn’t do a trademark clearance search on the term “Makeover America” or they would have found the trademark of the Plaintiff and picked another name. I surmise that it sounds like such a generic term that someone just made an assumption it was not trademark protectable. Errors of judgment, particularly by omission, can be expensive.

Provida holds a US trademark registration in the term “Makeover America” in a class that involves the general health industry. Macy’s announced a cross country tour of beauty and fashion shows using the mark “Makeover America” and on or about March 4, 2009 it was touted on the “The View”, the popular ABC television program.

The lawsuit alleges federal trademark infringement, common law trademark infringement, federal trademark dilution, federal unfair competition, and state and common law unfair competition. The Plaintiff requests permanent injunctive relief, court costs and attorneys’ fees, and further equitable and legal relief the Court may deem appropriate. Traverse Internet Law Cross-Reference Number 1372.


TREK BICYCLE CORPORATION v. TREK WINERY, LLC AND ANDREW PODSHADLEY
WESTERN DISTRICT OF WISCONSIN (MADISON)
3:09-CV-00603
FILED: 10/01/2009

Another trap for the unwary. If “Trek” is held to be a famous mark, protection extends beyond the category of goods and services of the mark and across all lines of commerce. While this may seem unfair, and almost impossible to manage if you want to use the trademark of another business in a totally unrelated commercial endeavor, the fact is that a famous brand like Coca-Cola could prevent someone from opening a childcare center in the name of “Coca-Cola” or prevent a paving company from using the name “Coca-Cola”. Keep this in mind as you go out and purchase keywords and optimize your website for search engine purposes.

Trek Bicycle Corporation is one of the largest manufacturers of bicycles in the United States. The Defendant is a winery and maintains a website at www.trekwines.com. Plaintiff asserts that their trademark is famous and therefore entitled to protection even outside their category of goods or services being sold.

The lawsuit alleges trademark infringement, false designation of origin, dilution, unfair competition, and common law trademark infringement. The Plaintiff requests immediate preliminary and permanent injunctive relief, the transfer of the domain name “trekwines.com” to the Plaintiff, destruction of all Defendant’s products and materials bearing the “Trek” name, an accounting of profits for damages, actual damages, treble damages, and reasonable attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1368.

Traverse Internet Law Federal Court Report: September 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


PANDORA JEWELERS 1995, INC. v. PANDORA JEWELRY, LLC
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
0:09-CV-61490
FILED: 9/18/2009

Once again the breakdown of geographic boundaries and limitations has reared its ugly head. Businesses that would never have known about each other 20 years ago, and located on different continents of the world, today are direct competitors. If you have a competitor using your business name you are at risk of losing your trademark (either common law or registered) unless you take enforcement measures. This situation was allowed to fester far too long and now the parties find themselves in complex litigation because the problem with the conflict of the names does not seem to have been addressed aggressively and proactively when it arose.

The Plaintiff is a Florida corporation operating out of Broward County as a jewelry retailer. The Defendant is a wholly owned subsidiary of a company organized under the laws of the country of Denmark. The two parties have run up against each other in selling jewelry online and have various competing registered trademarks.

The lawsuit alleges unfair competition, Florida common law unfair competition, Florida common law trademark infringement, and tortious interference with an advantageous business relationship. The Plaintiff requests the cancellation of Defendant’s improper federal registration, preliminary and permanent injunctive relief, disgorgement of profits, and the entry of an award to Plaintiffs for actual damages and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1361.

Traverse Internet Law Federal Court Report: August 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

PRESTIGE ADMINISTRATION, INC. v. US FIDELIS, INC. and CRESCENT MANUFACTURING COMPANY, LLC
DISTRICT OF ARIZONA (PHOENIX)
2:09-CV-01804
FILED: 8/28/2009

This is another example of a hotly debated legal arena and the complications that can arise. The best practice for your business is to not use a competitor’s name in any products, services, or advertising unless you have legal clearance. There may be comparative advertising and other appropriate fair uses for using the name of a competitor, but in today’s online environment it is wise to not do so unless you are prepared to defend the use through the expensive process of litigating the case in federal court. Keep in mind that most review websites are now being recognized as havens for trademark infringement.

The Plaintiff is a corporation organized in Arizona. The Defendants are an auto warranty company located in Missouri. The Defendants are allegedly infringing on the Plaintiff’s “autolife” trademark by selling automobile additive products using the trademark term in its product names.

The lawsuit alleges unfair competition and false designation of origin, dilution by blurring or tarnishment, cyberpiracy, common law trademark infringement, fraudulent misrepresentation, injury to business reputation, and tortious interference with contract. Plaintiff has requested injunctive relief, the disgorgement of gains and profits, compensatory damages in the amount no less that $500,000, treble damages, punitive damages, and attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1350.

Traverse Internet Law Federal Court Report: July 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

GOOGLE INC. v. JOHN BECK AMAZING PROFITS, LLC
NORTHERN DISTRICT OF CALIFORNIA (SAN FRANCISCO)
3:09-CV-03459
FILED: 7/28/2009

This is a fascinating lawsuit attempting to attack a class action suit in which the lead named Plaintiff is targeted as a Defendant. Lawsuits for a declaratory judgment are becoming more common as a weapon to counteract or combat lawsuits brought in unfavorable jurisdictions. Suffice it to say that using the Internet exposes almost everyone to the jurisdiction and the laws of just about every state. Great care needs to be taken in asserting legal claims relating to the Internet to avoid finding yourself sued in a faraway place.

John Beck Amazing Profits, LLC filed suit against Google and AOL in a class action in Texas for trademark infringement relating to the sale of its trademark terms for keying advertisements in Google’s AdWords program. Google has, in return, filed a lawsuit against the named Plaintiff in the class action requesting a declarative judgment of non-infringement in California.

The Plaintiff claims breach of contract and has requested that the court enter an order finding that Google has not violated the Defendant’s trademark. The prayer for relief requests compensatory damages, attorneys’ fees, costs, and other relief that the Court deems just and proper. Traverse Internet Law Cross-Reference Number 1335.

ROSETTA STONE LTD v. GOOGLE INC.
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
1:09-CV-00736
FILED: 7/10/2009

This is another in the numerous lawsuits pending against Google for allowing third parties to purchase trademark terms and present AdWords ads. Google recently revised its policies on the use of trademarks in its advertising and you must be extremely careful not to assume that complying with Google’s guidelines means that you are not infringing on a trademark. In other words, don’t rely on Google to make sure that you are following the law.

Rosetta Stone is a leader in technology based language-learning products and services. This is a claim based upon Google selling advertising to third parties that is triggered off the “keyword” of the Plaintiff. Rosetta Stone alleges that the “sponsored links” in Google’s AdWords program are expressly designed to draw consumers away from Rosetta Stone websites.

The lawsuit alleges federal trademark infringement, contributory trademark infringement, vicarious trademark infringement, false representation, trademark dilution, trademark infringement under Virginia law, and unfair competition under Virginia law. Plaintiff has requested preliminary and permanent injunctive relief, the disgorgement of gains and profits, compensatory damages, punitive damages, treble damages, and attorneys’ fees, interest and cost. Traverse Internet Law Cross-Reference Number 1336.

MARY KAY INC. v. YAHOO! INC.
NORTHERN DISTRICT OF TEXAS (DALLAS)
3:09-CV-01278
FILED: 7/06/2009

This claim is an extension of claims being asserted against the search engines for including advertising of competitors using trademarks in the copy of the ad. The primary allegation rests upon the claim by Mary Kay that ads are directing users to unauthorized reseller sites. The important issue here deals not with this specific case but with the broader quagmire of complex legal issues as to whether an unauthorized reseller can use the name of the trademark.

Mary Kay is a cosmetic company. Yahoo!, of course, is the Internet business best known for its search engine. It also offers a free email service which carries advertisement. Mary Kay alleges that the advertisements being carried within the email messages on the Yahoo! email service infringe its trademarks.

The lawsuit includes counts for trademark infringement and trademark dilution under the Lanham Act, common law trademark infringement, unfair competition under the Lanham Act, common law unfair competition, and misappropriation. Plaintiff requests the entry of a preliminary and permanent injunction, an accounting of profits, an award of compensatory damages, costs and attorneys’ fees, and other relief deemed just and proper by the Court. Traverse Internet Law Cross-Reference Number 1337.

Traverse Internet Law Federal Court Report: June 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


THOMAS PUBLISHING COMPANY AND THOMAS INDUSTRIAL NETWORK, INC. v. INDUSTRIAL QUICK RESEARCH, INC., ET AL.
SOUTHERN DISTRICT OF NEW YORK (FOLEY SQUARE)
1:09-CV-05541
FILED: 6/16/2009

The alleged misconduct in this matter goes far beyond purchasing Plaintiffs’ trademark as a keyword for triggering AdWords advertisements. Their allegations include the use of deceptive emails appearing to come from the Plaintiffs and using the names of various employees to create an appearance of legitimacy. The lawsuit lays out in detail the alleged misconduct and this is a reminder that small businesses must be vigilant in not only monitoring the web but understanding what they are seeing and what is happening before the consequences to their businesses are irreversible.

The Plaintiffs are New York corporations that have been the leading publisher of directories for the industrial marketplace for over one hundred years. The primary print version of the now world famous “Thomas Register” was first published in 1898. The Defendants had a business relationship with the Plaintiffs. Plaintiffs allege that the Defendants are purchasing the trademark of the Plaintiffs as a keyword to trigger their own ads. There are also rather extensive allegations relating to other misuse by the Defendants of the Plaintiffs’ trademark. Apparently a settlement agreement which was reached between the parties has now allegedly been breached.

The lawsuit alleges breach of contract, trademark infringement, unfair competition, false advertising, common law unfair competition and palming off, and tortious interference with business relations. The Plaintiffs request extensive injunctive relief, an award of compensatory damages in excess of $1,000,000.00, triple damages, disgorgement of profits, and the entry of an award to Plaintiffs for punitive damages and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1329.

Traverse Internet Law Federal Court Report: May 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


ADVANTAGE MEDIA GROUP v. SMART DISCIPLINE, LLC, ET AL.
MIDDLE DISTRICT OF LOUISIANA (BATON ROUGE)
3:09-CV-00320
FILED: 05/29/2009

As a business person you must understand that this type of an ad is becoming a very common business practice. It likely arises from a gross misunderstanding as to what is “fair use” of a competitor’s trademark. This type of practice is also evolved because of the strict view taken by the courts with respect to the requirement of defamation resulting from a published statement of fact. At any rate, you must monitor the advertisements across the web as they might relate to your business name, product or service name, and all trademarks, and be prepared to deal with this type of advertising tactic when it arises.

The Plaintiff is a premier producer and publisher of personal development products and services for families. The Plaintiff owns a registered United States trademark in the term “the total transformation”. The Defendants offer, or are marketing and selling, similar competing products and programs. The Plaintiff alleges that the Defendant is keying its advertising off of the Plaintiff’s trademarks. More significant, however, is the claim that the Defendant is using the Plaintiff’s trademark name in the title of the Google AdWords ad and even has one advertisement that states “Transformation Warning” in its title, and “Don’t buy Total Transformation until you’ve read this” in its content.

The Defendant has been sued for trademark infringement, unfair competition and false advertising, cybersquatting, unfair competition under Louisiana state laws, violations of the Louisiana Unfair Trade Practices Act, and Louisiana state trademark dilution. The Plaintiff has requested extensive injunctive relief, an award of statutory damages for cybersquatting of up to $100,000.00 per domain name, an award of compensatory damages, attorneys’ fees, costs, and other relief. Traverse Internet Law Cross-Reference Number 1325.


PURITY 12 v. DRFLORAS
CENTRAL DISTRICT OF UTAH
2:09-CV-00489
FILED: 05/28/2009

I write extensively in “Google Bomb”, my book coming out by September 1, about these types of “review” sites. This advertisement appears to have it all. It not only contains the competitor’s name in its title, but it appears to attempt to artfully defame the products of the Plaintiff without making a definitive factual statement. This case is a perfect example of the evolving laws relating to online defamation and how the courts will have to change their approach to the definition of defamation in light of the Internet. The lesson here is don’t even suggest that competitor might be operating a scam unless you are prepared to prove it and stay away from using competitors’ names in advertising or to drive traffic to your site unless you are prepared to prove fair or nominative use.

Plaintiff and Defendant are competitors in the market of dietary supplements, nutritional supplements, weight loss supplements and related products. The Defendant is alleged to be using the Plaintiff’s trademark in the title of its AdWords ad. The ad’s title reads “Is Purity12 a Scam?”, and the content of the ad starts out “Don’t Get Scammed.” The ad then directs to a purported review site owned and controlled by the Defendant.

The lawsuit alleges trademark infringement, common law trademark infringement, false advertising, unfair competition, injurious falsehood (defamation), intentional interference with economical relations, deceptive trade practices under the state of Utah laws, and civil conspiracy. Plaintiff requests the entry of preliminary and permanent injunctive relief, an order for corrective advertising, an award of compensatory damages, reasonable attorneys’ fees and its costs. Traverse Internet Law Cross-Reference Number 1326.


LOUNGE 22, LLC v. BRAND X FURNITURE, ET AL.
CENTRAL DISTRICT OF CALIFORNIA (LOS ANGELES)
2:09-CV-03692
FILED: 05/22/2009

This case is another in a long line of lawsuits relating to Google AdWords and the best practice is to not use a competitor’s trademark, even if it is a common law trademark, as keywords to generate your business ads.

The Plaintiff and Defendant are competitors in the business of providing event furnishings for special events. The Defendant is alleged to be using the trademarked term of the Plaintiff in the title of its Google AdWords advertising.

The lawsuit alleges federal trademark infringement, trade dress infringement for other alleged misconduct, federal unfair competition, California unfair competition, and unjust enrichment, and the Plaintiff has requested entry of temporary, preliminary, and permanent injunctive relief prohibiting the alleged misconduct set forth in the lawsuit, an award of at least $250,000.00 in damages, triple damages due to the alleged willfulness of the Defendant’s act, restitution and disgorgement of profits, and an award of reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1327.

Traverse Internet Law Federal Court Report: April 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


UNITED STATES GOLF ASSOCIATION v. ISAAC SCORING SYSTEMS, LLC.
DISTRICT OF NEW JERSEY (TRENTON)
3:09-CV-01848
FILED: 4/17/2009

This case is the perfect example of the challenge faced by a trademark holder in policing the use of its trademark online. There are certainly ways that the USGA’s trademarks can be used in the context of “comparative advertising” and under doctrines of “fair use”. There is an involved factual analysis whenever this type of a claim arises and the good news for businesses is that there are legitimate ways to use the trademark of a competitor in an honest and fair manner. More often than not, however, efforts at using a competitor’s trademark is fraught with illegality in the online world.

The United States Golf Association is a governing body of golf dedicated to the task of preserving and improving the game of golf in the United States since 1994. The Defendant Isaac Scoring Systems, LLC has a website that claims to offer “all the benefits of obtaining a USGA handicap index with handicap certificate” and allegedly creates a false impression among golfers that Isaac can properly offer a handicap index.

The Plaintiff claims false advertising, service mark infringement, false designation of origin, common law unfair competition, New Jersey unfair competition, misappropriation, and tortious interference with business relationships. The USGA requests that the court enter a permanent mandatory injunction prohibiting the Defendant from misleading the public, and that it further award compensatory damages, triple damages, punitive damages, interest, court costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1318.


TASER INTERNATIONAL, INC. v. LINDEN RESEARCH, INC., ET AL.
DISTRICT OF ARIZONA (PHOENIX)
2:09-CV-00811
FILED: 4/17/2009

Second Life, and other virtual worlds, are becoming literally lawless countries. These countries, however, have very real and significant commercial aspects to them, and many Fortune 500 companies have acquired virtual real estate in these worlds. Understanding all aspects of the online world, and taking the steps to protect the intellectual property of your business, is an integral part of surviving today and into the future.

The Plaintiff is the manufacturer of the “taser”. The Defendant, Linden Research, Inc., and other individual defendants are the owners of “Second Life” an online virtual world, or otherwise involved in distributing products and services, including a brand of virtual weaponry sold and advertised as a “taser”. In the virtual world, the Defendants attempt to sell the “taser” weaponry as their own, and in association with adult oriented, pornographic images and closely aligned to references of a “crack den”.

The lawsuit claims trademark infringement, unfair competition, common law trademark infringement, violations of Civil Racketeering Influenced Corrupt Organization Act (RICO), trade dress infringement violations, and patent infringement. Plaintiff prays for a declaratory judgment confirming Plaintiff’s trademark rights, an award of Defendants’ profits, compensatory damages, punitive damages, attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1319.

Traverse Internet Law Federal Court Report: March 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


ALLSTAR MARKETING GROUP, LLC AND FELKNOR VENTURES, LLC v. YOUR STORE ONLINE, LLC, ET AL.
CENTRAL DISTRICT OF CALIFORNIA (LOS ANGELES)
2:09-CV-02094
FILED: 3/26/2009

Another keyword advertising case. Yes, it is trademark infringement.

Allstar Marketing is a company that rolled out the “Snuggie” which is a fleece blanket with attached sleeves. These have been prominent in television commercials and the sales of the product have exceeded $35 million in just over six months. The Defendants are alleged to have begun marketing a competing blanket under the name “Snuggle”, and alleged to be purchasing sponsored links in the Google AdWords program and presenting its own ad when users search for the Plaintiff’s blanket.

The Plaintiff alleges false designation of origin, unfair competition and false advertising under the U.S. Trademark Act, federal trademark dilution, unfair competition and false advertising under the California Business Code, common law unfair competition, federal trademark infringement, common law unfair competition, and copyright infringement. Extensive injunctive relief is requested as well as compensatory and punitive damages and an award of attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1299.


VIDEO PROFESSOR, INC. v. AMAZON.COM, INC.
DISCTRICT OF COLORADO (DENVER)
1:09-CV-00636
FILED: 3/23/2009

All of the circuit courts around the country, which is the level immediately below the Supreme Court, are now in agreement that keying competing ads when a trademarked term is searched on Google is a form of trademark infringement. There are many sites with the same problem Amazon apparently has, and as a business protecting your trademark it is wise to be reviewing all of the paid advertising that could be directing traffic to competitor’s products or services, even if those competing products are on retail websites.

Video Professor has been in the business of developing, marketing, and distributing for sale to retailers and the general public computer learning products including video tapes and CD-ROMs for over twenty years. The Defendant, Amazon, is alleged to be purchasing AdWords ads keyed to the term “Video Professor”, even though the term has been trademarked by the Plaintiff. Video Professor alleges that when a user clicks on the Amazon.com advertisement link he is taken to a webpage on Amazon’s website which advertises a number of computer learning products that directly compete with the Plaintiff. In fact, Video Professor alleges that the first six products listed on Amazon’s page are computer learning CDs sold by one of Video Professor’s major competitors.

The lawsuit claims false designation of origin and false representation under the Trademark Act, trademark infringement, violations of the Colorado Consumer Protection Act, unfair competition, tortious interference with business relationships, and common law trademark infringement. The suit requests an accounting, the imposition of a constructive trust upon illegal profits, temporary, preliminary, and permanent injunctive relief prohibiting Amazon from presenting its ads when the Plaintiff’s name is searched, damages, restitution, disgorgement of profits, punitive damages up to three times the amount of actual damages, triple damages and attorneys’ fees, and cost of the suit. Traverse Internet Law Cross-Reference Number 1300.


ALAVEN CONSUMER HEALTHCARE, INC. v. DRFLORAS, LLC
NORTHERN DISTRICT OF GEORGIA (ATLANTA)
1:09-CV-00705
FILED: 3/16/2009

This case is a good example of why it is important to establish clear guidelines for marketing by your publishers or affiliate marketers. If you are running an affiliate marketing program, not only do you have an obligation to establish clearly defined specifications for performance which should prohibit the use of competitor’s names in any type of marketing, but you must do so in such a way that your business is not seen as “controlling” your affiliate marketers or they will be seen as agents and your business will be liable. This is an area ripe for litigation over the coming years. Establish clearly defined rules, do not control the details of an affiliate marketer’s performance, and implement a compliance program to avoid this type of alleged misconduct from creating virtually unlimited liability for your business.

Alaven is in the business of developing, manufacturing, marketing, and selling non-prescription pharmaceutical drug products, dietary supplements, herbal supplements, and intestinal cleanser products. The Plaintiff holds extensive federally registered trademarks in product names. The Defendant is alleged to be operating, controlling, supervising, and directing Internet based advertising and promotional activities through an affiliate program. The affiliates are loading up metatags and are optimizing the affiliate sites with the Plaintiff’s trademark protected product names and diverting business to the Defendant. Plaintiff characterizes Defendant’s conduct as an “illicit metatag practice”. Some of the sites are “comparison” websites or sites that use the Plaintiff’s trademarks in a type of review of the competitor’s product preceding the sales pitch by Defendant’s affiliates to users to purchase the Defendant’s products.

The lawsuit alleges federal trademark infringement, federal unfair competition, false designation of origin, federal false advertising under the trademark laws, trademark dilution, common law trademark infringement, state trademark dilution and injury to business reputation, deceptive trade practices under the Georgia Uniform Deceptive Trade Practices Act, tortious interference with prospective business and economic advantage, and common law unfair competition. Significant in the prayer for relief is a request that all affiliate marketers be enjoined from using the Plaintiff’s trademarks, and that the court award compensatory and punitive damages, triple damages, attorneys’ fees, court costs, and other extensive relief to address the alleged misconduct of the Defendant and its affiliates. Traverse Internet Law Cross-Reference Number 1301.

Traverse Internet Law Federal Court Report: February 2009 Trademark Infringement Cases

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

VIDEO PROFESSOR, INC. v. CAMERON MONTGOMERY
DISTRICT OF COLORADO (DENVER)
1:09-CV-00417
FILED: 2/26/2009

I have blogged about this issue extensively and I have included a chapter on this phenomenon of allegedly false “product review websites” in my upcoming book that is hitting the stands in September, 2009. The publisher is HCI, best known for its “Chicken Soup” books. Obviously if the allegations are true this is a very serious problem for the Defendant. Small businesses ought to stay on top of your Google results, constantly monitor AdWords for your products and services, and be vigilant in reviewing the sites to which both ads and organic results point to identify what has become a very common practice of deceit.

Video Professor is in the business of developing, marketing, and distributing for sale to retailers and the general public computer learning products including video tapes and CD-ROMs for over 15 years. The Defendant, Montgomery, appears to be the registrar and owner of a domain name that purports to be a rip-off review website. The Plaintiff alleges that when someone conducts a Google search on its trademarks the Defendant presents an AdWords ad that diverts the searcher to its own website with claims of being a scam reporting site with incriminating information about Video Professor on the site. In fact, Plaintiff claims that while the site appears to be an objective “product review” website, it is actually a rating site with all of the top ratings having links directly to web properties owned by the Defendant.

Plaintiff has sued for false designation of origin, trademark infringement, common law trademark and trade name infringement, commercial disparagement, violation of the Colorado Consumer Protection Act, tortious interference with business relationships, and common law disparagement. Video Professor is asking for an accounting, the imposition of a constructive trust upon the illegal profits, an award of compensatory and punitive damages, and recovery of reasonable attorneys’ fees and costs together with injunctive relief. Traverse Internet Law Cross-Reference Number 1295.


HOMEDIRECT, INC. v. ENSENDA, INC.
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:09-CV-01157
FILED: 2/23/2009

Another Google AdWords lawsuit this time including not only the triggering of ads through use of a keyword of an alleged trademark, but also the inclusion of the trademark in the ad text itself. Most courts are recognizing this situation as a basis for proving trademark infringement through initial interest confusion. How do you make sure that you are not using another company’s trademark, particularly when there is no requirement that the trademark be registered in any way? It’s almost impossible to know.

HomeDirect is a transportation company specializing in last mile logistics services and the Defendant, Ensenda, Inc., is a competitor of HomeDirect. Defendant is alleged to have purchased keywords for Google AdWords advertising using the Plaintiff’s trademark as a keyword. In addition, Plaintiff alleges that Defendant is using the HomeDirect trademark within the wording of its sponsored advertisement.

The first claim for relief is federal trademark infringement, the second claim is state law deceptive trade practices, the third claim is common law unfair competition, and the fourth claim is common law trademark infringement. Extensive injunctive relief is requested and, in addition, monetary relief including all profits received by the Defendant, all damages sustained by the Plaintiff, triple damages due to willful misconduct, punitive damages, and a recovery of attorneys’ fees and costs are requested. Traverse Internet Law Cross-Reference Number 1296.


MRB ACQUISITION CORP. v. SCOOTER STORE, INC.
MIDDLE DISTRICT OF FLORIDA (ORLANDO)
6:09-CV-00346
FILED: 2/20/2009

Businesses are now fully appreciating the importance of trademarks. It still is difficult to understand how anyone could get a trademark in “The Scooter Store” and not be ready to have to defend the rights to it in court.

The Plaintiff owns “U-Scoot”, a scooter store that sells to the elderly, infirm, obese, and other customers. The Defendant is a competitor of the Plaintiff. The Plaintiff, U-Scoot, admits that it is purchasing keyword advertising on various search engines that are in combinations with what the Defendant considers to be infringing on its “The Scooter Store” trademark.

Plaintiff has requested a declaratory judgment that the Plaintiff is not infringing on Defendant’s trademark. The Plaintiff is also attempting to invalidate the Defendant’s “The Scooter Store” trademark and has requested that the court enter a declaratory judgment which would, in effect, support its use and award attorneys’ fees and costs against the Defendant. Traverse Internet Law Cross-Reference Number 1297.


OPTICSPLANET, INC. v. BETTER OPTICS, L.L.C.
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:09-CV-01090
FILED: 2/19/2009

Every company needs to not only be diligent in not keying AdWords off of competitor’s trademarks, but also avoid using competing trademarks in the html and metatags of a website. There are nuances of law that can allow this practice under certain circumstances, but they are complex and very high risk. The best practice is to simply make sure that you avoid the use of competitor’s names online.

OpticsPlanet, Inc. is an Illinois corporation and leading optics supplier for sports optics, tactical and military gear, microscopes and designer eyewear. Defendant is a competitor. Plaintiff alleges that Defendant has started using the Plaintiff’s trademark as a keyword to trigger its advertising when the Plaintiff is searched on Google and is also using its trademark in the html code of Defendant’s website, in other advertisement, and in other promotional materials.

The lawsuit includes a claim for trademark infringement, false designation of origin, and trademark dilution. Damages requested include compensatory damages, triple damages, profit disgorgement, attorneys’ fees, interest, cost of the suit and other relief. Traverse Internet Law Cross-Reference Number 1298.

HARRY AND DAVID v. HICKORY FARMS, INC.
DISTRICT OF OREGON (MEDFORD)
1:09-CV-03011
FILED: 2/09/2009

Harry and David has now filed a large number of cases in the United States District Court for the District of Oregon. Many of these suits have apparently been settled and were initially brought against smaller companies. One of the strategies in attacking a pervasive legal problem is to start small and work to the bigger companies that can pay more damages since you will have established the law of the case in the earlier cases against weaker Defendants.

Harry and David is the famous gourmet food and fruit gifts purveyor and one of the nation’s oldest catalog mail order companies. Hickory Farms operates an online retail website selling the same kinds of products. Defendant is alleged to be purchasing the “Harry and David” keyword and triggering AdWords ads.

The lawsuit claims federal trademark infringement, federal unfair competition, federal trademark dilution, state trademark infringement, and state trademark dilution and requests injunctive relief against the Defendant’s continued practice of keying ads off of the Harry and David trademark, and an award of compensatory damages, triple damages, attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1287.

IO DATA CENTERS, LLC v. GUTIERREZ-PALMENBERG, INC.
DISTRICT COURT OF ARIZONA (PHOENIX)
2:09-CV-00229
FILED: 2/05/2009

The Defendant’s flat out denial of the purchase of the Plaintiff’s trademark as a keyword to trigger its sponsored advertising does raise the possibility, although this is not widely known, that Google’s algorithms are presenting ads based upon user behavior and not based upon the purchase of keywords. There is little doubt, however, that at some point in the recent past ads were triggered based upon artificial intelligence supplementing keyword purchases, so the Defendant may be correct in its assertion. There are several ways to determine if this is occurring prior to filing a lawsuit.

IO Data Centers provides facilities for the location of computer servers with the equipment of others as a “co-location service provider”. The company holds a trademark in “IO Data Centers”. Defendant is a competitor allegedly keying ads off of Plaintiff’s trademark term in the Google AdWords program. The Defendant flatly denies it has ever purchased the Plaintiff’s trademark terms as a keyword to display its sponsored links in the AdWords program.

Count one of lawsuit is for federal trademark infringement, count two is for unfair competition, count three is for state unfair competition, and count four is for state common law trademark infringement. The prayer for relief requests extensive injunctive relief, compensatory and punitive damages, an award of attorneys’ fees and costs, and other relief. Traverse Internet Law Cross-Reference Number 1281.

Traverse Internet Law Federal Court Report: January 2009 Trademark Infringement Lawsuits

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


QUICK FITTING, INC. v. G.A. MURDOCK, INC.
DISTRICT OF RHODE ISLAND (PROVIDENCE)
1:09-CV-00044
FILED: 1/30/2009

This is another lawsuit over keyword trademark infringement in which a competing ad is presented when the trademark of another company is searched on Google. The more interesting aspect of this case is that the Plaintiff failed to purchase all of the variations of its domain name when it had the chance and neglected to purchase the “hyphen” version of its name. Considering the fact that the search engines consider the hyphen to be merely a space this type of domain name would likely be presented high in search results when searching for the Plaintiff’s business.

The Plaintiff is a manufacturer and distributor of push-to-connect plumbing fixtures. There appears to be a registered trademark for the “quick fitting” product line of the Plaintiff. The Defendant purchased “quick-fittings.com” and is using it on a competing website. The lawsuit also alleges that the Defendant is keying ads on Google off of Plaintiff’s trademark and uses the trademark in the title of the ad.

The lawsuit includes counts for federal trademark infringement, false designation of origin, dilution of Plaintiff’s trademark, violation of the Anti-Cybersquatting Consumer Protection Act, and unfair competition. Plaintiff requests the entry of a temporary restraining order, preliminary injunction, permanent injunction, the transfer of the domain name, an accounting of all Internet traffic statistics form the website, compensatory damages, triple damages, reasonable attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1268.


DEFENSIVE DRIVER ONLINE, LTD. v. I DRIVE SAFELY, LLC
SOUTHERN DISTRICT OF TEXAS (HOUSTON)
4:09-CV-00271
FILED: 1/29/2009

Obviously, the Defendant has contested the trademark to “defensivedriving”. When analyzing domain names and trademarks together, you discard the “.com”. Therefore, this Plaintiff claims to have a valid registered trademark in “defensivedriving”. It is not surprising that the Defendant has filed to cancel the trademark and this lawsuit is partially an attempt to obtain a court order prohibiting the U.S. Patent and Trademark offices review of the trademark. How anyone gets a trademark to such a generic and descriptive phrase is beyond me, but obviously the examiner of the original application approved the filing for registration. A trademark clearance evaluation would have identified this issue prior to the use by the Defendant of the domain names, but a company could spend a small fortune obtaining a trademark clearance legal opinion every time a phrase is used.

The Plaintiff and Defendant are competing driver safety schools and related services. Plaintiff claims to own a federally registered trademark in the term “defensivedriving.com”. Defendant is using various iterations of “defensivedriving” in its domain names.

Plaintiff has sued under the Anti-Cybersquatting Act for federal trademark infringement, false designation of origin, common law trademark infringement, unfair competition, and violation of the Texas Anti-dilution statute. The relief requested includes compensatory and punitive damages and the request for entry of a preliminary and permanent injunction prohibiting further infringement of Plaintiff’s trademarks. The Plaintiff also requests the court to enter an order directing the director of the United States Patent and Trademark Office to deny and dismiss the petition for cancellation of the trademark filed by the Defendant. Traverse Internet Law Cross-Reference Number 1269.


SOAPROJECTS, INC. v. MURDOCK MARTELL
NORTHERN DISTRICT OF CALIFORNIA (SAN FRANCISCO)
3:09-CV-00200
FILED: 1/16/2009

The interesting aspect of this case, aside from the broad use of search engine optimization techniques to flood Google search results with the Defendant’s website when the Plaintiff’s business is searched, is the use of an anchored text link with the Plaintiff’s name that does not link to the Plaintiff. This is an evolving area of law and is a nuance to your typical trademark infringement claim since clicking on the link confuses consumers into thinking that SOAProjects’ website is not operating and at the same time presents advertising for the Defendant. Not mentioned, but likely as equally important, is the effect of this type of an anchored text link on Google search results. Google will see the Defendant’s page as a relevant result when people are searching for the Plaintiff’s business.

SOAProjects, Inc. was founded in 2004 by public accounting and industry professionals and is an international consulting firm offering enterprise advisory, regulatory reporting, accounting and finance, enterprise governance, information technology consulting, and overall crisis management. The Defendant is an accounting firm founded in 2007. The lawsuit alleges that Murdock Martell has employed a deceptive form of “guerilla marketing” to drive traffic to its website by creating web pages on its website for over 25 of its competitors including the Plaintiff. By October, 2008, a forensic analyst at SOAProjects determined that searches in Google for the name “SOAProjects” yielded only the website of the Defendant. The Plaintiff alleges the use of its trademark in extensive search engine optimization techniques practiced by Murdock Martell. One of the uses complained about of the SOAProjects trademark name is an anchored link with the Plaintiff’s name that, when clicked, leads to an error message page with advertising of the Defendant on that same page.

Plaintiff has sued for unfair competition under the Lanham Act and unfair competition under California law. The prayer for relief includes a request for the entry of a permanent injunction prohibiting Murdock Martell from all use of the terms “SOAProjects” and “SOAProjects, Inc” in an unlawful, unfair, false and/or deceptive manner, compensatory damages, punitive damages, attorneys’ fees, costs and such other relief as the court determines as proper. Traverse Internet Law Cross-Reference Number 1270.

Traverse Internet Law Federal Court Report: December 2008 Trademark Infringement Lawsuits

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


BED BATH & BEYOND INC. AND BED BATH & BEYOND PROCUREMENT CO., INC. v. FIXEDCREDITNOW, ET AL.
DISTRICT OF NEW JERSEY (NEWARK)
2:08-CV-06406
FILED: 12/30/2008

1-800 CONTACTS v. MEMORIAL EYE
CENTRAL DISTRICT OF UTAH
2:08-CV-00983
FILED: 12/23/2008

CORPEDIA CORPORATION v. LRN CORPORATION
CENTRAL DISTRICT OF CALIFORNIA (LOS ANGELES)
2:08-CV-08337
FILED: 12/18/2008

CREATIVE MANAGER, INC. v. SOHNAR, LTD AND JASON LANGOS
DISTRICT OF NEW JERSEY (TRENTON)
3:08-CV-06144
FILED: 12/15/2008

SUAREZ CORPORATION INDUSTRIES AND MHE CORPORATION v. TOP TEN IMPORTS, LLC, ET AL.
NORTHERN DISTRICT OF OHIO (AKRON)
5:08-CV-02924
FILED: 12/15/2008

UNITED FIRST FINANCIAL AND NATIONAL LOAN SERVICING CENTER v. STEVE HERMAN
CENTRAL DISTRICT OF UTAH
2:08-CV-00944
FILED: 12/8/2008

HARRY AND DAVID v. GOURMETGIFTBASKETS.COM
DISTRICT OF OREGON (MEDFORD)
1:08-CV-03130
FILED: 12/2/2008

The Plaintiffs in these cases allege that the Defendants have used their trademarks to key pay-per-click ads. In addition, some of the claims include the use of the trademarks in the title of the ads, in the content or ad description, and in the URL presented with the ad.

There are four legal issues dealing with pay-per-click ads and the use of a trademark, either registered or unregistered, of a competitor. The use of a trademark in the domain name that is being presented may implicate a cybersquatting claim, but it is also a potential trademark infringement. The use of the name in the body of the ad and in the title of the ad is almost universally considered to be trademark infringement today. The use of a trademark as a keyword in order for an ad to be presented is, for the most part, considered to be initial interest confusion, which is a form of trademark infringement.

In other words, if your business trademark is being used by a competitor, and fair use, free speech, or non-commercial use is not implicated, then you have remedies available to address the infringement. If, on the other hand, you are using either the trademark of a competing product or service, or even a product or service in the same industry that could create confusion even though you are not directly competing, this is a very high risk practice.

The number of lawsuits filed in December, which traditionally is a very slow month for the filing of new lawsuits, shows a continuing increase in the trend towards bringing lawsuits over pay-per-click advertising related issues. Do not be misled by much of the legal commentary coming from consumer protection and free speech organizations that enjoy blogging about how these types of practices are not illegal. Traverse Internet Law Cross-Reference Number 1266.


CARROLL SHELBY, ET AL. v. FACTORY FIVE RACING, INC., ET AL.
CENTRAL DISTRICT OF CALIFORNIA (LOS ANGELES)
2:08-CV-07881
FILED: 12/1/2008

Metatags include both the description and keywords. The meta-description is often presented in the organic or natural result in a search engine and therefore displays the trademark in the result. In addition, the algorithms of the search engines use the terminology in the metatags to determine relevance. Remarkably, there is significant commentary from some attorneys who claim that this practice should not be unlawful since no search engines use meta-data to determine the rank or priority of results when a search is conducted. Yet the attorneys ignore the fact that description is often presented within the abbreviated search result. In fact, meta-data is used extensively by search engines and the use of a competitor’s trademark is considered “initial interest confusion” under the trademark infringement laws and is illegal. Don’t use competitor’s registered or unregistered trademarks in your metatags. The fact that there is no registered trademark does not mean that no trademark exists.

The Plaintiff is a trustee of the Carroll Hall Shelby Trust. Carroll Shelby is the legendary racecar driver who broke the land speed record at the Bonneville Salt Flats and won the 24-hour Le Mans road race during his racing career, he is also the creator of various automobiles identified as Shelby Cobras and is famous not only to sports car enthusiasts but to the public in general. The Defendant is alleged to be advertising and promoting for sale on his website “kit cars” bearing designs confusingly similar to the trade dress of the Shelby properties. He uses the trademarks owned by, and licensed to, the Plaintiffs in the metatags of his website to draw Internet traffic.

The Plaintiffs have sued for common law trademark infringement, dilution of trademarks, false advertising, common law unfair competition, and violation of rights of publicity. The Plaintiffs request an award of compensatory, punitive damages, preliminary and permanent injunctive relief, its costs and attorneys fees and expenses, and further relief as the court deems proper and just. Traverse Internet Law Cross-Reference Number 1267.