Traverse Internet Law Federal Court Report: June 2012 - 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.


STRONG STUDENTS MOVING, INC., ET AL. v. COLLEGE HUNKS HAULING JUNK FRANCHISING, LLC, ET AL.
DISTRICT ARIZONA
2:12-CV-01156-GMS
FILED: 05/30/2012

This type of a lawsuit is very common when one party feels aggrieved by a domain name dispute arbitration decision that goes against it.  Unknown to many, there is a very easy remedy to challenge the transfer of the domain name if you lose a domain name dispute, but it must be done quickly and in a specified court. 

Both the Plaintiffs and the Defendants are moving companies.  The National Arbitration Forum (NAF) issued a written decision through a domain name dispute ordering that the domain name “collegehunksmoving.com” be transferred to the Defendants.  The Plaintiffs have effectively appealed that decision by filing suit in Federal Court and contending that they acquired the domain name prior to the opposing party acquiring any trademark rights and all trademark rights owned by College Hunks Hauling are invalid due to fraud on the US Patent and Trademark Office.  This is a declaratory judgment action filed by the losing party in a domain name dispute to try to get the decision effectively overturned. 

The Plaintiffs allege intentional interference with business/economic relations and the cancelation of trademark registrations.  The prayer for relief requests that Defendants be permanently enjoined from further infringement.  The prayer for relief also requests that Defendants be ordered to pay compensatory and statutory damages, costs, attorneys’ fees, and litigation expenses in recovering disputed domain names. Traverse Internet Law Cross-Reference Number 1566.

Traverse Internet Law Federal Court Report: May 2012 - 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.

CAMPOS, ET AL. v. CAMPOS FAMILY FARMS, LLC, ET AL.
EASTERN DISTRICT OF CALIFORNIA (FRESNO)
1:12-CV-00598-LJO-GSA
FILED: 4/16/2012

The language in a contract selling all of the assets of a company can be a bit confusing.  It is critically important that both the buyer and seller clearly understand exactly what property is included in a contract of sale.  In this case there was evidently a misunderstanding relating to the transfer of trademark rights in the family farm's name, and this has obviously evolved into expensive federal litigation among family members.

The Plaintiffs and Defendants are relatives involved in the dissolution and winding up of their family farms.  The Plaintiffs acquired all rights in the farms but the Defendants are alleged to have acquired domain names that contain the name of the farms and are now competing against the Plaintiffs. 

The Plaintiffs allege infringement of federally registered trademarks, unfair competition, false designation of origin, dilution of trademarks, damage to business reputation, counterfeiting, cyberpiracy, false advertising, prospective interference with prospective business advantage, fraud concealment, misrepresentation of fact, breach of fiduciary duty, and unjust enrichment.  The Plaintiff’s prayer for relief requests a temporary, preliminary, and permanent injunction enjoining Defendants from further infringement, an order awarding Plaintiffs treble damages, punitive damages, attorneys’ fees and costs, and any further relief as may be just and proper.  Traverse Internet Law Cross-Reference Number 1561

Traverse Internet Law Federal Court Report: April 2012 - 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.


METRO INDUSTRIES, INC., ET AL. v. SYSTEMAX, INC., ET AL.
DISTRICT OF NEVADA (RENO)
3:12-CV-00160-VPC
FILED: 3/23/2012

There is clearly a split of authority as to whether purchasing a key word that generates an AdWord ad is trademark infringement and otherwise unlawful. The Courts are split on the issue. With respect to using a competitor’s trademark in text, unless there is a “fair use” this would generally constitute trademark infringement, particularly if the net impact is to increase organic results when the competitor is searched.

The Plaintiffs own numerous federal registrations for trademarks related to “Metro marks”. The Defendants are alleged to have purchased one of the trademarks as an AdWord and for organic purposes in advertising copy on the web. This has allegedly resulted in high indexed results for the competitor’s ads and high organic search results when someone is searching for the Plaintiffs.

The Plaintiffs allege infringement of federally registered marks, federal unfair competition, federal dilution, common law unfair competition, common law trademark infringement, and unjust enrichment. The Plaintiffs’ prayer for relief requests the entry of a judgment to provide relief for all allegations, and an award of the Defendants’ profits, the damages sustained by the Plaintiffs, the cost for this action, and reasonable attorney fees. The prayer for relief also requests that the Defendants be preliminary and permanently enjoined and restrained from further infringements, and any further relief as the Court may deem just and proper. Traverse Internet Law Cross-Reference Number 1555.

Traverse Internet Law Federal Court Report: March 2012 - 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.


ACUSHNET COMPANY, ET AL. v. THE PARTNERSHIPS, ET AL.
SOUTHERN DISTRICT OF FLORIDA (MIAMI)
1:12-CV-20786-PAS
FILED: 2/27/2012

The allegations lay out a classic case of “counterfeiting”. Make sure that when you purchase goods for resale you have “good title” to them. There are many major brands that are the subject of “knock-off” manufacturers counterfeiting goods in the name of legitimate companies. If you get caught you will be responsible if you knew, or through reasonable investigation should have known, of the nature of the counterfeit goods.

The Plaintiffs are U.S. golf manufacturers working together as an anti-counterfeiting group to protect their own intellectual property rights. The Defendants are a partnership or unincorporated business associations operating through domain names registered in multiple foreign countries. The Defendants are alleged to be selling “knock-offs”.

The Plaintiffs allege trademark counterfeiting and infringement and false designation of origin. The Plaintiffs’ prayer for relief requests the entry of preliminary and permanent injunctions enjoining the Defendants from further infringements, the entry of an order requiring the transfer of all infringing domain names, the payment of costs and reasonable attorneys’ fees and investigative fees, and any further relief as the Court may deem just and proper. Traverse Internet Law Cross-Reference Number 1551.

Traverse Internet Law Federal Court Report: February 2012 - 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.


ACTION INK, INC. v. NEW YORK JETS, LLC, ET AL.
EASTERN DISTRICT OF LOUISIANA (NEW ORLEANS)
2:12-CV-00046
FILED: 1/6/2012

Whenever you are going to use a name make sure that you get “clearance” for uses of non-famous names that are only in the same category of goods or services. In other words, “apple” computers can use that name despite the fact that there is an “apple” record label because they are involved in different uses that would not reasonably create any type of confusion among the consuming public.

Action Ink claims to hold a trademark in the term “the ultimate fan”. It alleges that the New York Jets are using that name to identify an application it is distributing. The Plaintiff alleges that the use is conflicting with the category of goods and services for which the trademark provides protection.

The Plaintiff alleges trademark infringement, false designation of origin, and unfair competition. The Plaintiff’s prayer for relief requests the Defendants be permanently enjoined from the use of infringing marks, the entry of an award of the Defendants’ profits and damages sustained by the Plaintiff, the award of a judgment for corrective advertising, and any other further relief as the Court deems just and proper. Traverse Internet Law Cross-Reference Number 1545.

Traverse Internet Law Federal Court Report: January 2012 - 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.


STRONG INDUSTRIES, INC. v. JANNIC, INC.
MIDDLE DISTRICT OF FLORIDA (TAMPA)
8:11-CV-02819-VMC-TGW
FILED: 12/22/2011

The consequences for “cybersquatting” are substantial. You could be liable for up to $100,000 and all attorneys’ fees of the opposing party if you are held to be a cybersquatter, and that is just for the damages for each domain name separately.

Plaintiff uses the name “Aqualife Spas” in connection with the sale of spas and related equipment. The Plaintiff filed a U.S. Trademark Application for the name and this Defendant allegedly launched a website using the same name and opposed the application at the United States Patent and Trademark Office. The Plaintiff then filed this lawsuit for trademark infringement.

Plaintiff alleges trademark infringement, unfair competition, and unfair trade practices. The Plaintiff’s prayer for relief demands that Defendant be permanently enjoined from the use of infringing marks, the entry of an award of all actual damages, costs, disbursements and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1541.