Trademark Law Briefs

Collagen Nutraceuticals v. Neocell Corp., 2010 U.S. Dist. LEXIS 80216 (S.D. Cal. 2010)

I have to read between the lines a little to describe the procedural background.  It appears that the owners of the defendant corporation (Neocell), as individual defendants, filed a summary judgment motion, presumably on the grounds that only Neocell could be held liable for trademark infringement.  Collagen then asked the motion be denied to give Collagen further time to conduct discovery regarding the defendants’ positions at Neocell, and defendants’ knowledge of Plaintiff’s cease and desist letter and other infringing activities.  The court granted Collagen’s motion and denied the summary judgment motion (without prejudice) to allow Collagen to do discovery.  The court noted these facts could defeat summary judgment if they showed that the defendants orchestrated Neocell’s infringing activities or if they established alter ego liability.  Collagen showed that the facts likely existed and could be uncovered through discovery.  Finally, Collagen had only had two months to complete discovery at the time of the filing of the motion for summary judgment.

BBU, Inc. v. Sara Lee Corporation 2010 U.S. Dist. LEXIS 62473 (S.D. Cal. 2010)

Plaintiff sells thin sliced bread called “Sandwich Thins.”  Defendant planned to launch a similar product using the terms “Thins.”  Plaintiff obtained a preliminary injunction, which it appears Defendant pushed the boundaries of on several occassions.  Although the court never found the conduct sanctionable, it did modify the injunction to address these borderline issues.

At issue in this round, plaintiff argued that the injunction was too narrow and should cover all bread-related products.  The court disagreed- Plaintiff’s products are only bread products primarily associated with making sandwiches, hamburgers, and hot dogs,m inlcuding but not limited to buns, rolls, flatbread, sliced bread and thin buns.  It does not extend to other bread products such as baegls, muffins and baguettes because these are sufficiently distinguishable from plaintiff’s Sandwich Things that an ordinary consumer is unlikely to be confused.

 Motor Works, LLC v. Safer Technologies, Inc., 2010 U.S.Dist. LEXIS 56515 (N.D. Cal. 2010)

The court held that a corporate officer who is the “central figure” or “guiding spirit” behind trademark infringement by a corporation can be held personally liable notwithstanding that he acted as an agent of the corporation and not on his own behalf.

The court also ruled on other issues fact specific to the case.

Optimal Pets, Inc. v. Nutri-Vet, LLC et al., 2010 U.S. Dist. LEXIS 55774 (C.D. Cal. 2010)

Plaintiff started selling “Optimal Pet” pet vitamins in 2004.  Plaintiff never registered the mark but used it continuously and as of December 2008, had sold $35,000 worth of product in 34 states.  In 2008, defendants began selling pet vitamins under the name “Optimal Pets.” Defendant applied for registration of “Optimal Pets” for pet viatamins in May 2008.

Plaintiff opposed registration and the lawsuit ensued.  Defendant filed for summary judgment on the grounds that plaintiff “‘cannot establish market recognition or market penetration sufficient to establiosh enforceable… trademark rights [in the name “Optimal Pets”] either nationally or in any specific geographical area.’” (Pages 3-4)  The court held that while the gross ssales may be low, there is evidence that OPI’s Optimal Pets products were at least some sales in 34 states and it was regularly sold in at least 14 stores in at least 2 states.  As such the court could not grant summary judgment.

The court also denied summary judgment on defendant’s good faith adoption, based on facts that could support plaintiff’s argument that defendants knew of plaintiff’s prior use and denied summary judgment on likelihood of confusion as the marks were  identical and used to sell virutally identical products.

Guru Denim, Inc. v. Hayes, 2010 U.S.Dist. LEXIS 52992 (C.D. Cal. 2010)

Plaintiff filed suit against defendant for allegedly selling a counterfeit “hoodie” bearing plaintiff’s trademark.  Plaintiff failed to prosecute the case diligently- letting it linger for 16 months before seeking a default (which defendant overcame based on questions of appropriate service) and then, at the pretrial conference, complained for the first time of defendant’s failure to participate in discovery and sought a continuance.  The court issued an order to show cause why plaintiff should not be sanctioned.  Plaintiff then informed the court that plaintiff’s counsel had misplaced the allegedly infringing hoodie.  As sanctions, the court dismissed the case with prejudicie, awarded defendant costs as the prevailing party, and sanctioned plaintiff’s counsel for the expenses incurred by defendant in attending the pretrial conference and sanctions hearing (defendant could not be awarded attorneys fees because he appeared pro se).