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.