Trademark Law Briefs

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.

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.

Sand Hill Advisors, LLC v. San Hill Advisors, LLC 2010 U.S. Dist. LEXIS 5935 (N.D. Cal. 2010.)

Plaintiff, Sand Hill Advisors, LLC (registered in DE) offer wealth management services in the Silicon Valley area and have an office on Sand Hill Road, a road known for venture capitalists.  Defendant, Sand Hill Advisors, LLC (registered in CA) purchase real estate on behalf of the owners, Sandell and Hill.

Plaintiff filed suit for trademark infringement against Defendant when Plaintiff could not register as a foreign LLC in California.  The court granted defendant’s motion for summary judgment on the grounds that Sand Hill Advisors, as used by plaintiff, was geographically descriptive. (more…)

Original Joe’s Inc. v. Pinsonneault Holdings, LLC, 2009 U.S.Dist. LEXIS 115713 (N.D. Cal. 2009.) 

Original Joe’s Inc., owner of Joe’s Original in San Francisco, brought suit for trademark infringement against the company running “Uptown Joe’s” in the Hotel Majestic in San Francisco.  Plaintiff sought a temporary restraining order and preliminary injunction pending outcome of the case.

The court applied the Sleekcraft factors and then denied the request for injunction. (more…)

General Charles E. “Chuck” Yeager (Ret.) v. Cingular Wireless LLC et al., 673 F.Supp.2d 1089 (E.D. Cal. 2009)

Back in July of 2008, TMLB reported on a case between Gen. Chuck Yeager and AT&T.  Cingular (acquired by AT&T) referenced Yeager’s breaking the sound barrier in a press release on its technology to provide cellular service after disasters.  Yeager sued based on missappropriation of his likeness and AT&T demurred.  The court ruled Yeager had pleaded sufficiently and denied AT&T’s motion.  Read the original post here.

Well, AT&T is back and this time, it’s aiming an MSJ. (more…)