Friday, August 20, 2010

Traverse Internet Law Federal Court Report: July 2010 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.


1-800 CONTACTS v. STANDARD OPTICAL
CENTRAL DISTRICT OF UTAH
2:10-CV-00643
FILED: 7/13/2010

We see several of these lawsuits each month. Do not key your pay-per-click ads off of a trademark of a competitive third party or you may also find yourself on the expensive receiving end of one of these lawsuits.

The Plaintiff is engaged in the retail sales of contact lenses. Defendant owns and operates a website relating to the same business. Defendant is alleged to have keyed ads off of the Plaintiff’s name when it is searched.

1-800 Contacts alleges trademark infringement, contributory trademark infringement, common law unfair competition, misappropriation, common law trademark infringement, and unjust enrichment. The complaint requests damages in the form of preliminary and permanent injunctive relief, an accounting of Defendant’s revenue and profits, actual damages, statutory damages, treble damages, prejudgment interest, costs and attorneys’ fees, and further relief the Court deems just and equitable. Traverse Internet Law Cross-Reference Number 1442.

Tuesday, August 10, 2010

Traverse Internet Law Federal Court Report: June 2010 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.


QUIBIDS LLC v. JOHN DOE
WESTERN DISTRICT OF OKLAHOMA (OKLAHOMA CITY)
5:10-CV-00639
FILED: 6/21/2010

There are a lot of disputes today as to what extent copying (copyright infringement) or to what extent consumer confusion (trademark infringement) is enough to trigger unlawful conduct. This is an extremely grey area. The bottom line is that you should avoid even copying the general format of a competitor’s website if you are totally risk averse and cannot sustain the cost of defending a lawsuit. If you are willing to assume certain degrees of risk then you can become more aggressive in getting closer and closer to a competitor’s copyright or trademark rights.

QuiBids is an online auction company. It alleges that the Defendant used its trademark in an unauthorized manner through hosting a video on its website designed to confuse viewers into believing that the Defendant was really the Plaintiff.

The Defendant is accused of trademark infringement, trade dress infringement, unfair competition, false advertising, false designation of origin, violation of the Oklahoma Deceptive Trade Practices Act, and common law unfair competition/trade dress infringement and passing off. The Prayer for Relief requests permanent injunctive relief, compensatory damages, treble damages, attorneys’ fees, punitive damages, and other relief the Court deems appropriate. Traverse Internet Law Cross-Reference Number 1435.

Monday, June 28, 2010

Traverse Internet Law Federal Court Report: May 2010 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.


E.I. DU PONT DE NEMOURS AND COMPANY v. TEFLON BLOOD RECORDS, INC. AND TEFLON BLOOD INCORPORATED
CENTRAL DISTRICT OF CALIFORNIA (LOS ANGELES)
2:10-CV-03908
FILED: 5/25/2010

Make sure you get formal trademark clearance from an attorney before selecting a business or product name. This can be an expensive process, but it is a necessary one.

DuPont is a service company engaged in the development, manufacture, sale, and distribution of a wide variety of products throughout the world. DuPont discovered, and owns a trademark, in “Teflon”. Teflon Blood is a California corporation that is using the “Teflon” trademark in its name in relation to a “bullet-proof” vest wrapped around a pulsating red heart and DuPont alleges that the Defendant is falsely suggesting that the vests are made of its product.

The lawsuit alleges trademark infringement, trademark counterfeiting, false designation or origin, unfair competition, false designation of fact and representation and false advertising, trademark dilution, cyberpiracy, common law trademark infringement, and common law unfair competition. Plaintiff requests extensive injunctive relief along with actual damages, payment of Defendants’ profits, enhanced damages, statutory damages up to $1,000,000 per counterfeit mark, delivery of all infringing merchandise and materials, costs and attorneys’ fees, and any other relief the court deems appropriate. Traverse Internet Law Cross-Reference Number 1427.

Wednesday, May 19, 2010

Traverse Internet Law Federal Court Report: April 2010 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.


DRIVETIME AUTOMOTIVE GROUP, INC. AND DRIVETIME SALES AND FINANCE COMPANY, LLC v. LEAD DISPATCH INTERNATIONAL, INC. d/b/a COMMUNITY AUTO CREDIT
DISTRICT OF ARIZONA (PHOENIX)
2:10-CV-00950
FILED: 4/29/2010

Just another of the many lawsuits over keying advertisements off competitor trademarks on search engines.

The Plaintiffs are the nation’s largest automobile dealership with 79 locations specializing in the sale of used cars. The Defendant is an Internet-based company that has partnered with companies nationwide to provide automobile financing. The Defendant is alleged to be purchasing keywords of the Plaintiffs’ trademark in order to generate sponsored search listings as advertisements.

Plaintiffs allege federal trademark infringement, federal unfair competition, common law trademark infringement, and common law unfair competition. They are requesting injunctive relief, damages arising out of CAC’s unlawful conduct, all state and federal statutory and common law relief available, all costs and reasonable attorneys’ fees incurred in connection with this action plus appropriate interest, punitive and enhanced damages, and such other and further relief the Court may deem just and proper. Traverse Internet Law Cross-Reference Number 1424.


GLAXOSMITHKLINE LLC v. UNITED TREATMENT CENTERS, INC., ET AL.
EASTERN DISTRICT OF NEW YORK (BROOKLYN)
1:10-CV-01819
FILED: 4/23/2010

How close can you get to a trademark before you have a trademark infringement problem? No one really knows since the issue is one of consumer confusion and in many cases you don’t know whether the consuming public is going to be confused until the use of the potentially infringing mark is live and in the marketplace. It is always advisable to try and get a “legal clearance” opinion from a law firm before launching a new product or service to make sure that you understand the risks. Part of that analysis is the identity of the owners of the trademarks which you may arguably be infringing upon. In other words, if you are in a grey area, and a trademark is owned by a Fortune 500 company, the issue is often not whether you will ultimately be right or wrong in using the name, but whether you are prepared to commit huge resources to litigating a case.

The Plaintiff is a large pharmaceutical and consumer product company that owns “Aquafresh” as a trademark for toothpaste, toothbrushes, and other oral care products. The Defendants are alleged to be using “Aquafree” as a name for its line of toothbrushes and dentifrice on the web and extensively on social networks.

Claims in the lawsuit include federal trademark infringement, federal unfair competition, false description, false designation of origin, federal dilution, state trademark dilution and injury to business reputation, unfair and deceptive trade practices, and common law unfair competition. Plaintiff requests relief in the form of extensive injunctive relief, destruction of all products, advertisements, and other materials using the infringing mark, payment of profits resulting from use of the infringing mark, actual damages, interest, exemplary and punitive damages, costs and reasonable attorneys’ fees, and such other relief the Court deems just and proper. Traverse Internet Law Cross-Reference Number 1425.


RACHAEL KATZ v. JOHN LAKEY
DISTRICT OF MASSACHUSETTS (SPRINGFIELD)
3:10-CV-30067
FILED: 4/05/2010

You can’t just tell whether a competitor is using your trademark by viewing the website as rendered through your browser. It is a very common practice to use “hidden text” which basically, in its simplest form, is the repetitive use of a competitor’s trademark in the HTML code of the site but with the background of the page designated to be the same color as the text so that the page appears to be blank. I’ve seen this practiced on many occasions. Obviously Google’s spiders use the HTML of a page to index results so this practice can mislead Google to think that the competitor’s website is highly authoritative or relevant to a search for your own business. If a competitor ever has a blank page or blank area on its website simply perform a “view source” function in your browser and take a look at the HTML to see exactly what is going on with the code.

The Plaintiff is an individual with a principle place of business in Massachusetts and the Defendant resides in Tennessee. The Plaintiff claims that it has a common law trademark in “KatzEye”. The Plaintiff and Defendant are competitors operating as Internet retailers of focusing screens for high-end cameras, which is the product to which the trademark has been attached by the Plaintiff. The Defendant is alleged to have launched a website that includes hidden text incorporating the Plaintiff’s trademarks.

Defendant is accused of trademark infringement, false designation or origin and false representation, cybersquatting, unfair competition, unjust enrichment, conversion, unfair or deceptive acts and practices, and tortious interference with business relations and prospective business relations. Plaintiff requests preliminary and permanent injunctive relief, statutory damages in an amount of $100,000 per confusingly similar metatag, actual damages, treble damages, exceptional damages, costs, expenses, attorneys’ fees, pre- and post-judgment interest, and an accounting of profits. Traverse Internet Law Cross-Reference Number 1426.

Wednesday, April 7, 2010

Traverse Internet Law Federal Court Report: March 2010 Trademark Infringement Cases



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.


LOANS OF AMERICA FL, LLC v. RAPID AUTO LOANS, LLC, ET AL.
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
0:10-CV-60416
FILED: 3/19/2010

It is fairly well understood that you cannot key ads off a competitor’s trademark. There are federal trademarks, state trademarks, and common law (unregistered) trademarks. So how do you make sure that you don’t key ads off of competitor’s trademarks if there is no central registry? This becomes an incredibly complicated process if you go through the traditional “trademark clearance” approach for every keyword you are using. It is a wholly impractical approach for online advertising through AdWords or other pay-per-click advertising solutions. Since it’s impossible to know every common law trademark that could be claimed by competitors, it might be advisable to look at the exact names of competitors and avoid using those names, or slight variations of them, in keying ads on your pay-per-click programs. From a business perspective, that defeats to some extent the benefit of using pay-per-click advertising. But that is really the only way to avoid having to defend these types of lawsuits. The good news for the Defendant in this case is that it will likely be very difficult for the Plaintiff to show common-law trademark rights in the term “Loans of America” due to its generic nature.

Loans of America has sued Rapid Auto Loans and other Defendants for keying Google AdWords advertisements off of the term “Loans of America” or slight variations of it. The Plaintiff does not have a registered trademark, but claims common law trademark rights in the term “Loans of America”.

Loans of America alleges violation of the Lanham Act, conspiracy to commit a Lanham Act violation, contributory trademark infringement, dilution, violation of Florida’s Deceptive and Unfair Trade Practices Act, and breach of contract. Relief requested includes injunctive relief, actual damages together with interest, costs and expenses, and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1413.


SOUTHERN SNOW MANUFACTURING CO., INC. AND SIMEON, INC. v. SNOWIZARD, INC.
EASTERN DISTRICT OF LOUISIANA (NEW ORLEANS)
2:10-CV-00791
FILED: 3/04/2010

Google has recently announced that it does not use metatag information to generate search results. It remains to be seen whether that is, in fact, accurate. In addition, other search engines may use metadata to generate search results. Consequently, it is not a wise practice to use a competitor’s trademarks in any of your metatags. The more significant issue in this case is the use of trademarks as “hidden” or “invisible” text on the Defendant’s website. Anyone who is familiar with search engine optimization (SEO) knows why this is done. As a business, you should avoid using your competitor’s name in any manner on your website, particularly as hidden or invisible text. The only time you can legally use a competitor’s name is when you are conducting “comparative advertising”, and this is a very complicated and slippery slope that requires legal input before undertaking such an endeavor.

Southern Snow and SnoWizard are competitors in the business of selling ice shaving machines, flavoring concentrates, and other supplies for snowball shaved ice confections. Plaintiffs allege that the Defendant, SnoWizard, has published Plaintiffs’ trademark names in metatags on SnoWizard’s website and also published those terms as hidden or invisible text on its website. The Plaintiff claims that the purpose was to cause organic results of its competitor to appear when its own name, or product names, were searched online using a search engine.

The Plaintiffs claim common law trademark infringement, fraud, unfair competition and unfair trade practices and requests actual damages, enhanced damages, lost profits, litigation costs, treble damages, and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1412.


HARLEY-DAVIDSON MOTOR COMPANY AND H-D MICHIGAN v. ELWORTH’S HARLEY-DAVIDSON SALES & SERVICE AND GREGORY J. ELWORTH
DISTRICT OF NEBRASKA (OMAHA)
8:10-CV-00086
FILED: 3/02/2010

The ability to continue to use a trademark after a license agreement ends is typically a fairly clear cut situation. You cannot continue to use it. In the online marketing world, affiliate marketers will sometimes continue to use the trademark of an offer they carried in the past to sell competing products or services of new offers. This is obviously a much less obvious form of trademark infringement, and businesses using affiliate marketers need to monitor the use of their trademarks carefully.

Harley-Davidson has sued a former Harley-Davidson dealer because the dealer is still using its name, has not taken down its Harley-Davidson signs and displays, has not relinquished or changed its domain name so that it does not include the Harley-Davidson trademark, and is still using the famous motorcycle name on its website.

The lawsuit includes claims for trademark infringement, false designation or origin, unfair competition, federal unfair competition comprising false and misleading statements of fact, trademark dilution, common law trademark infringement, and breach of contract. The Plaintiff requests preliminary and permanent injunctive relief, the return of all infringing materials, the alteration of Defendants’ website(s) to remove infringing logos and material, an accounting of profits, actual damages, compensatory damages, treble damages, costs, and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1411.

Friday, March 19, 2010

Traverse Internet Law Federal Court Report: February 2010 Trademark Infringement Cases


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.


ADG, LLC v. GREAT EXPRESSIONS DENTAL CENTER, P.C. AND TRACIE BATTLE
EASTERN DISTICT OF MICHIGAN (DETROIT)
2:10-CV-10813
FILED: 2/26/2010

Every business needs to be aware of the developing use of information by Google in presenting search results. For local results, Google is “validating” the name with available online address information to draw some conclusions about the identity of companies. Obviously there is a chance of error. Just as significant, there is the very real possibility of results’ manipulation. For instance, we recently saw a situation in which our client’s name was being presented in the local results but the telephone number and other contact information was for its primary competitor. Guess who was getting the traffic?

The Plaintiff does business as “Great Expressions Dental Center” and is headquartered in Michigan. The Defendant does business as “Great Expressions Dental Center P.C.” and is headquartered in Alabama. To make a long story short, the Plaintiff claims that Google began erroneously linking the Defendant’s physical address with the Plaintiff’s website address. The problem, according to the Plaintiff, is that there are many negative and disparaging comments about the Defendants and Google is, in effect, associating those derogatory comments with the Plaintiff.

The Defendant is being sued for federal trademark infringement, federal unfair competition, false designation of origin, cybersquatting, common law unfair competition, misappropriation, unjust enrichment, and violation of the Michigan Consumer Protection Act. Plaintiff requests relief in the form of preliminary and permanent injunctions, actual damages in the amount of $100,000 per domain name, transfer of all infringing domain names to Plaintiff, treble damages, punitive and exemplary damages, attorneys’ fees, expenses, and cost. Traverse Internet Law Cross-Reference Number 1403.


1-800 CONTACTS v. EMPIRE VISION CENTER
CENTRAL DISTRICT OF UTAH
2:10-CV-00173
FILED: 2/25/2010

We cover the use of acompetitor’s trademark to key advertising almost every month in this report. I wonder how many Plaintiffs realize that Google’s algorithm in AdWords appears to generate advertisements on terms under a “broad match” program that were not specifically selected. And more importantly, what obligation does a company have to enter its competitors’ trademarks as negative keywords in the advertising campaign even when it has not purchased those keywords? Unanswered questions at this point.

The Plaintiff is the well-known online contact lens distributor. The Defendant is a website in direct competition with the Plaintiff and is allegedly triggering AdWords advertisements by using the “1-800 Contacts” trademark in its keywords.

The lawsuit claims federal trademark infringement, contributory trademark infringement, common law unfair competition, misappropriation, and unjust enrichment. The Prayer for Relief requests preliminary and permanent injunctive relief, actual damages, statutory damages, treble damages, costs, attorneys’ fees, and interest. Traverse Internet Law Cross-Reference Number 1404.

Tuesday, March 16, 2010

Traverse Internet Law Federal Court Report: January 2010 Trademark Infringement Cases


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.


BAIDU, INC. AND BEIJING BAIDU NETCOM SCIENCE & TECHNOLOGY CO., LTD. v. REGISTER.COM, INC.
SOUTHERN DISTRICT OF NEW YORK (FOLEY SQUARE)
1:10-CV-00444
FILED: 1/19/2010

A big part of this case is Baidu’s claim that Register.com’s homepage advertised that customers can “speak to a knowledgeable service specialist anytime you have questions – 24/7”. When Baidu tried to contact Register.com, it claims that nobody answered the phone. For businesses everywhere, understand that you are not only going to be held responsible for what you promise in your “terms of use” but also what you promise on your website. It is important to make sure that the promises and representations in the content on your website are consistent with your “terms of use”. Even if you have the best contract in the world, it doesn’t mean that there isn’t going to be potential problems.

Baidu is the largest search engine in China and the third largest search engine service provider in the world. Register.com is a registrar of Internet domain names, including “baidu.com”, and provided Internet traffic routing services for the Plaintiff. Baidu claims that the database of Register.com was hacked and Internet traffic intended for “Baidu.com” was misdirected to a webpage depicting an Iranian flag and broken Star of David and proclaiming: “This site has been hacked by the Iranian Cyber Army”. The resulting hack interrupted Baidu.com’s service for approximately 5 hours and it did not resume full operation for 2 full days.

The lawsuit claims contributory trademark infringement, breach of contract, gross negligence/recklessness, tortious conversion, aiding and abetting tortious conversion, aiding and abetting trespass, and breach of duty bailment. Prayer for Relief includes requests for actual damages, treble damages, punitive damages, interest, costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1401.


PROTECTMARRIAGE.COM – YES ON 8 v. COURAGE CAMPAIGN AND COURAGE CAMPAIGN INSTITUTE
EASTERN DISTRICT OF CALIFORNIA (SACRAMENTO)
2:10-CV-00132
FILED: 1/19/2010

This is just another example of when the use of a trademark for raising funds or generating advertising revenue often forecloses the defense of “fair use” and creates trademark infringement liability. This is a very hot area for attention and as the use of trademarks becomes more fully understood by trademark holders expect to see a continued heightened level of litigation against sites that are being used for some commercial purpose. Generally speaking, it doesn’t make any difference that “most” of a website’s usage of a trademark is non-commercial. Any commercial use will often foreclose the “fair use” justification and defense.

Plaintiff’s trademark is being used on a website to promote a serious discussion on a trial of national importance involving the gay marriage dispute in California. The Plaintiff claims that the Defendants are also using the infringing logo in conjunction with seeking public contributions to support the efforts of non-traditional marriage support proponents.

The lawsuit claims false designation or origin, common law trademark infringement, and unfair competition. Plaintiff requests preliminary and permanent injunctive relief, an accounting of profits, an order requiring Defendants to recall any products in violation of the injunctive relief, deactivation of all websites displaying the infringing logo, punitive and exemplary damages, attorneys’ fees and costs and indemnification of Plaintiff for any claims brought forth due to any confusion of association between the Plaintiff and Defendant. Traverse Internet Law Cross-Reference Number 1400.


DICK BLICK HOLDINGS INC. v UTRECHT MANUFACTURING CORPORATION
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:10-CV-00352
FILED: 1/19/2010

These types of lawsuits continue to be filed on a regular basis. Don’t key your ads off of a trademark of a competitor. Just about all of the courts are finding that this use is trademark infringement under the “initial interest confusion” doctrine.

Dick Blick is a family owned business and premier art supply source for professional artists, students, and teachers. The Defendant is a competitor. Dick Blick claims that the Defendant is keying its Google AdWords advertisements off of its trademark.

The lawsuit claims trademark infringement, false designation or origin, deceptive trade practices, violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, and common law unfair competition. The plaintiff requests preliminary and permanent injunctive relief, an accounting of profits, actual damages, costs, interest, and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1399.

Tuesday, January 26, 2010

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


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.


CASCADE YARNS INC v. CRAFTS AMERICANA GROUP INCWESTERN DISTRICT OF WASHINGTON (TACOMA)
3:09-CV-05800
FILED: 12/30/2009

This is another reminder that trademark infringement lawsuits for merely keying a competing ad off of a trademark are alive and well and happening on a regular basis all over the country.

Plaintiff owns a trademark in a number of yarn related terms that identify its products or services. Defendant is alleged to be keying ads off of the registered trademark terms and presenting competing offers. The claim is that even if there is no confusion at the time that a consumer arrives at Defendant’s website, the use of the trademarks has captured consumers’ initial attention and serves to divert them to the Defendant’s website, where only competing products are offered.

The Plaintiff’s lawsuit against Defendant alleges trademark infringement, false designation of origin, unfair competition/unfair deceptive acts and practices, and trademark dilution. The Plaintiff requests preliminary and permanent injunctive relief and that Defendant be directed to account for all profits and pay compensatory damages, treble damages, actual damages, lost profits, attorney’s fees and costs, prejudgment interest, post-judgment interest, and further relief as the Court deems equitable, just and appropriate. Traverse Internet Law Cross-Reference Number 1389.


TRAFFIC LAW CENTER OF SULLIVAN & ASSOCIATES, LLC v. BOSLEY AND ASSOCIATES, LLC
EASTERN DISTRICT OF MISSOURI (ST. LOUIS)
4:09-CV-01963
FILED: 12/1/2009

Ignoring cease and desist letters or demands can end up being an expensive proposition.

Traffic Law Center is a law firm representing the public in traffic related offenses. The Defendant is also a law firm doing the same thing. The Defendant has on his law firm website the phrase “Traffic law center”, but the Plaintiff owns a federally registered trademark under that exact term for the category of legal services. Plaintiff requested that Defendant Bosley cease and desist the use of the allegedly infringing mark but he failed to do so.

The lawsuit alleges trademark infringement, common law trademark infringement, and common law unfair competition. The Plaintiff requests permanent injunctive relief, destruction of all goods showing the infringing marks, an accounting of profits, actual damages, treble damages, and reasonable costs, disbursements, and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1388.