Trademark Law Briefs

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).

Cyclone USA, Inc. v. LL&C Dealer Services, LLC, 2010 US.Dist.LEXIS 51193 (C.D. Cal. 2010); 2010 US.Dist.LEXIS 51172 (C.D. Cal. 2010)

Cyclone USA prevailed in its Lanham Act actions and defense of counterclaims against LL&C (et al.). The court awarded attorneys fees to Cyclone for both the main action and defense costs and for general (non-trademark) counsel. Read the rest of this entry »

Super-Krete International, Inc. v. Sadleir, 2010 U.S.Dist. LEXIS 50090 (C.D. Cal, 2010)

Plaintiff owns the registered trademark for “Super-Krete,” “Super-Krete Products” and “Super-Crete.”  Defendant, plaintiff’s competitor, registered the domain “supercrete.com” which redirected to defendant’s website.  Plaintiff filed a complaint under the cybersquatting act (ACPA) and sought a preliminary injunction to prevent defendant from carrying out its threat to sell the domain to a third party. Read the rest of this entry »

Franklin Mint Company v. Manatt, Phelps & Phillips, LLP (2010) 184 Cal.App.4th 313

Court of Appeal says that the defendant lawfirm’s claims based on trademark rights in the name Princess Diana lacked probable cause under a malicious prosecution anaylsis because her name is so clearly descriptively associated with her as a person that the lawfirm should never have argued her name acted as a trademark for her charitable services.

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