Lucky Brand Dungarees Inc., et al. v. Ally Apparel Resources LLC, USDC SDNY. Case No. 1:2005cv067 (May 5, 2010). not cited on Westlaw.
Lucky Brand sued Marcel Fashion Group Inc., owners of the “GET LUCKY” apparel line and its licensee Ally Apparel for trademark infringement in 2005. However, the trademark “GET LUCKY” was registered and used by Marcel Fashions long before Lucky Brand came into existence. Also, Lucky Brand, represented by Greenberg Traurig, was sanctioned for discovery violations.
Marcel Fashions counterclaimed and won a partial summary judgment on some trademark issues and breach of a settlement agreement from 2003. Marcel Fashions also won a $580,000 jury verdict for federal trademark infringement at trial against New York-based Liz Claiborne Inc. Marcel Fashions was represented by McCool Smith.
Sunday, October 17, 2010
Two Slashers and an Advertising Company: In Likelihood of Confusion, Actual Confusion of Plaintiff’s Customers and Type of Mark are the Most Important Factors
Caliber Automotive Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 94 U.S.P.Q.2d 1866, 22 Fla. L. Weekly Fed. C 763 (11th Cir.(Ga.), May 07, 2010) (NO. 08-16179)
Caliber Automotive Liquidators, Inc. service mark owner of “Slash-It! Sales Event” provides advertising and promotions to car dealerships. Premier Automotive Group is a car dealership that makes its own promotional infomercial called the “Slasher Show”. Caliber sued Premier for trademark infringement based on it use of “Slasher” words in its promotion of car super sales. Caliber appealed a judgment for Premier in the North District of Georgia. The Appeals Court held that genuine issues of material fact existed as to strength of owner's “slasher” service marks, the actual confusion amongst the relevant consumer class, and likelihood of confusion. The Appeals court found that the actual confusion of actual customers of Caliber weighed very heavily in favor of finding an overall likelihood of confusion. Although the district court found that the Slash-It! Sales Event mark was descriptive, the district court erred in not recognizing that the marks also achieved federal incontestable status, and thus were entitled to strong protection. Moreover, Premier does not point to evidence to counter the evidence of confusion. The Appeals court stated, “the test [is] not whether the goods could be distinguished ... but whether the goods are so related in the minds of consumers that they get the sense that a single producer is likely to put out both goods Caliber has presented sufficient evidence of the strength of its marks and of actual confusion amongst the. The Appeals court reversed and remanded on the Federal issues.
Caliber Automotive Liquidators, Inc. service mark owner of “Slash-It! Sales Event” provides advertising and promotions to car dealerships. Premier Automotive Group is a car dealership that makes its own promotional infomercial called the “Slasher Show”. Caliber sued Premier for trademark infringement based on it use of “Slasher” words in its promotion of car super sales. Caliber appealed a judgment for Premier in the North District of Georgia. The Appeals Court held that genuine issues of material fact existed as to strength of owner's “slasher” service marks, the actual confusion amongst the relevant consumer class, and likelihood of confusion. The Appeals court found that the actual confusion of actual customers of Caliber weighed very heavily in favor of finding an overall likelihood of confusion. Although the district court found that the Slash-It! Sales Event mark was descriptive, the district court erred in not recognizing that the marks also achieved federal incontestable status, and thus were entitled to strong protection. Moreover, Premier does not point to evidence to counter the evidence of confusion. The Appeals court stated, “the test [is] not whether the goods could be distinguished ... but whether the goods are so related in the minds of consumers that they get the sense that a single producer is likely to put out both goods Caliber has presented sufficient evidence of the strength of its marks and of actual confusion amongst the. The Appeals court reversed and remanded on the Federal issues.
Infringement: No Secondary Meaning Outside of Los Angeles, Unregistered Mark, Geographic Breadth Between Two Marks, Different Theme and Style of Restaurants, & No Bad Faith Intent.
Dan Tana v. Dantanna’s., 2010 U.S. App. Lexis 14514 (11th Cir.), (C.A. 11, Jul. 15, 2010) Case No. 09-15123
Los Angeles restaurant Dan Tana sued Atlanta restaurant Dantanna’s for trademark infringement. The district court ruled in favor of Dantanna’s and the Appeal court affirmed. The Appeals court found there was material fact at issue on likelihood of confusion. Although the two businesses were similar, as they were both upscale restaurants, Dan Tana in did not register for a federal trademark and could not prove secondary meaning outside of Los Angeles. The court also considered that the two restaurants were on opposite sides of the country and were different themed restaurants. Dan Tana was a cozy Italian restaurant, whereas Dantanna’s was sports themed, with a surf and turf menu. In also, there was no bad faith intent to infringe or profit off of the confusion because Dantanna’s was named for the owner’s two children Dan and Anna.
Los Angeles restaurant Dan Tana sued Atlanta restaurant Dantanna’s for trademark infringement. The district court ruled in favor of Dantanna’s and the Appeal court affirmed. The Appeals court found there was material fact at issue on likelihood of confusion. Although the two businesses were similar, as they were both upscale restaurants, Dan Tana in did not register for a federal trademark and could not prove secondary meaning outside of Los Angeles. The court also considered that the two restaurants were on opposite sides of the country and were different themed restaurants. Dan Tana was a cozy Italian restaurant, whereas Dantanna’s was sports themed, with a surf and turf menu. In also, there was no bad faith intent to infringe or profit off of the confusion because Dantanna’s was named for the owner’s two children Dan and Anna.
International Marks: Priority and Sufficient Use in the United States for Protection in the United States
Hamdard Trust v. Ajit Newspaper Advertising, Marketing and Communications, Inc., 2010 WL 3749085 (2nd Cir.(N.Y.), (Sep 28, 2010) (NO. 09-4965-CV)
The Appeals court, applying de novo review, affirmed the District court’s order granting defendant’s motion for summary judgment. Plaintiff Sadhu Singh Hamdard Trust failed to prove that it “possessed a priority right to the use” of the mark in question because “meager trickle of business” in the United States was insufficient to “constitute[ ] the kind of bona fide use intended to afford a basis for trademark protection.” More specifically, Plaintiff failed to establish “deliberate” use of the mark in the United States; rather, its “sporadic” and “casual” use was insufficient to defeat the grant of summary judgment in favor of defendants as a matter of law. Id. As the district court observed, a trademark is “recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark.” Therefore, as the court found here, “foreign use is ineffectual to create trademark rights in the United States.”
The Appeals court, applying de novo review, affirmed the District court’s order granting defendant’s motion for summary judgment. Plaintiff Sadhu Singh Hamdard Trust failed to prove that it “possessed a priority right to the use” of the mark in question because “meager trickle of business” in the United States was insufficient to “constitute[ ] the kind of bona fide use intended to afford a basis for trademark protection.” More specifically, Plaintiff failed to establish “deliberate” use of the mark in the United States; rather, its “sporadic” and “casual” use was insufficient to defeat the grant of summary judgment in favor of defendants as a matter of law. Id. As the district court observed, a trademark is “recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark.” Therefore, as the court found here, “foreign use is ineffectual to create trademark rights in the United States.”
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