BIC Files ITC Complaint Against Importers of Allegedly Counterfeit Pocket Lighters
On December 6, 2018, BIC Corporation (“BIC”) petitioned the United States International Trade Commission (“ITC”) for an investigation into the illicit importation into the United States, for the importation, or sale after importation, of six respondents’ pocket lighters, alleging that respondents’ lighters infringe BIC’s intellectual property rights in the design of its disposable cigarette lighters, otherwise known as their “trade dress.” In its petition, BIC argues that similarities in the appearance of respondents’ lighters and its lighters will lead consumers to be confused as to the source and/or sponsorship of respondents’ lighters, or to affiliate respondents’ lighters with BIC. BIC’s petition asks the ITC to issue a general exclusion order blocking the importation of infringing lighters from any source, not just the named respondents, and claims that such an order “is necessary and appropriate to prevent circumvention of limited exclusion orders directed to products of Respondents.”
What makes this case interesting is its focus on trademark claims. Typically, ITC petitions have centered around patent infringement claims, with trademark disputes limited to approximately one petition every two years. While BIC also filed a trademark infringement lawsuit in the U.S. District Court for the Eastern District of New York, civil judgments are often difficult to enforce against small overseas companies, who may cease their operations only to reemerge under new names, or in new locations. BIC hopes that a general exclusion order from the ITC, which allows brand owners and intellectual property owners to stop all counterfeit products from being imported into the United States, not just those of identified defendants, will protect its rights in the trade dress of its disposable cigarette lighters.
Vans Sues Primark for Selling ‘Intentional Copies’ of its Iconic Sneakers
On December 18, 2018, Vans, Inc. and its parent company VF Outdoor, LLC (together, "Vans"), the makers of Vans shoes, sued Primark in the U.S. District Court for the Eastern District of New York, alleging that the fast-fashion retailer has been “offering for sale and selling footwear products . . . [that] are calculated and intentional knock-offs of Vans’ footwear products,” including its “Old Skool” and “Sk8-Hi” models, since August 2017. In the lawsuit, Vans identifies several elements of the “strong enforceable trade dress,” including, with respect to its “Sk8-Hi” model skate sneaker:
(1) the Vans Side Stripe Trademark, in contrasting color to the shoe upper; (2) a white rubberized midsole; (3) a contrast line around the top edge of the midsole; (4) a texturized toe box outer around the front of the midsole; (5) padded corrugated ankle collars; and (6) visible stitching, in contrasting color, including where the lace bracing meets the vamp, separating the individual padded ankle collar corrugations, and bisecting the Vans Side Stripe Trademark.
The lawsuit alleges that Primark “is engaged in designing, manufacturing, advertising, promoting, selling, and/or offering for sale apparel, footwear, and accessory products . . . bearing logos and source-identifying indicia that are studied imitations of Vans’ trademarks.” Vans also pointed out that Primark’s allegedly infringing shoes brazenly bear names similar to its Sk8-Hi model, including “Skater” low tops and “Skate high tops,” “in a blatant attempt to suggest a connection with Vans’ products that bear the Vans’ Trademarks and Trade Dress.” In addition to seeking a preliminary injunction against Primark’s sale of any goods bearing confusingly similar imitations of Vans’ trademarks and/or trade dress (as well as the impoundment or destruction of such goods), Vans seeks monetary damages, including Primark’s profits from the infringement, and requests that any damage award be tripled based on Primark’s willful infringement.
The case is captioned Vans, Inc. and VF Outdoor, LLC v. Primark Stores Ltd., 1:18-cv-07214 (E.D.N.Y. 2018). A copy of Vans’ complaint can be found here.
UPS sues California cannabis delivery companies for trademark infringement
United Parcel Services (“UPS”) filed a complaint on February 13, 2019 in the District Court for the Central District of California against a group of California-based marijuana delivery businesses for federal trademark infringement, trademark dilution, false designation of origin, false advertising, unfair business practice and injunctive relief. The delivery giant is seeking a permanent injunction against the defendants to prevent them from using its marks and logos and an unspecified amount of monetary damages.
UPS accuses United Pot Smokers, UPS420 and THCPlant (the “Defendants”) of using names and logos that are confusingly similar to its mark and well-known shield logo to sell cannabis-related products through the websites www.ups420.com and www.UPS.green. UPS also alleges that in addition to the inclusion of its trademarks in the above-mentioned URLs, the websites describe themselves as ”nationwide logistic expeditor” that “securely packs & ships to ALL 50 states of domestic USA” which is likely to mislead or deceive the consumers by making them believe that the Defendants are affiliated to UPS.
Moreover, UPS argues that the alleged infringement hurts its reputation because it associates the Atlanta-based delivery giant with cannabis companies by creating an “unwholesome, unsavory, and degrading association between Defendant’s services and UPS.”
On February 15, 2019, the District Court judge recognized the “obvious similarities” between the signs used by the Defendants and UPS’ mark and logo. However, he denied UPS’ request for temporary restraining order considering that the “Defendants should […] have the chance to be heard” before such preliminary injunction could be granted.
Senate Judiciary Committee Creates New IP Subcommittee
The Judiciary Committee of the Senate created a subcommittee that will have jurisdiction over the USPTO and the US Copyright Office, and will serve other IP related functions. The Senate subcommittee adds to the already existing IP House Judiciary Committee known as the Subcommittee on Courts, Intellectual Property and the Internet.
Thom Tillis, who was appointed as chairman, referred to China’s IP theft and to the confusion over patent eligibility. "In recent years our country has been faced with a number of challenges in our intellectual property system, from rampant theft from state actors like China to confusion among innovators and inventors about what is even patentable," Tillis explained. "These issues are causing our nation's economy to lose billions of dollars annually and threaten our country's long-term technological dominance."
Subcommittee members showed interest in passing legislation that provides guidance, and clarifies which inventions are eligible for patenting, and which are not.
Campbell Soup Trademarks The Word ‘Chunky’
Campbell Soup Company registered the trademark of the word ‘Chunky’ with the U.S. Patent and Trademark Office. In its application, Campbell referenced the “massive unsolicited media coverage of Chunky” in shows like The Simpsons, Saturday Night Live, Family Guy, and in songs of artists such as Lloyd Banks, Rakim, and rapper Ghostface Killah. Even Pulitzer Prize-winning author Colson Whitehead wrote about Campbell’s Chunky soup in his novel named Sag Harbor.
The registration certificate noted that the word was first used by Campbell Soup Company in 1969. Campbell claims that they spent $1 billion in advertising since 1988 including NFL sponsorships, and that they sold more than $13 billion worth of Chunky soup.
PA Restaurant Sues NY Bakery for Infringing on Smiling Cookie TM
On February 6, the Pittsburgh-based Eat’n Park restaurant chain brought an action against New York cookie-maker Eleni’s for trademark infringement, trademark dilution, and unfair competition claiming that the popular bakery used its registered trademarks for smiling cookies in breach of the parties’ license agreement. According to the complaint, Eat’n Park has been selling its signature smiling face cookies since 1987, and it has registrations for the smiling face design and the words SMILEY for “pancakes and cookies.” In 2009, after Eat’n Park learned that Eleni’s had been selling a cookie bearing a confusingly similar smiling face, the parties entered into a license agreement in which Eleni’s was granted the right to continue to sell the smiling cookies. Eat’n Park commenced the lawsuit after Eleni’s stopped paying it royalties but continued to sell the cookies. The case is pending in the U.S. District Court for the Western District of Pennsylvania.
Nirvana Sues Marc Jacobs and High-End Department Stores for Infringing on Smiling Logo
Marc Jacobs, Saks Fifth Avenue, and Neiman Marcus were not smiling when rock band Nirvana sued them for copyright infringement and trademark infringement for Marc Jacobs’ “Bootleg Redux Grunge” collection of clothing released in November 2018 which prominently features Nirvana’s “Smiley Face” logo. Nirvana claims that it first used and licensed the logo in 1992 for a wide variety of goods including clothing. The complaint alleges that Marc Jacobs copied Nirvana’s copyrighted image on clothing in the collection and used it as the signature image in its advertisements for the collection as an attempt to intentionally mislead the public into falsely believing that Nirvana endorses the collection. Nirvana claims that Marc Jacobs even incorporates various Nirvana references in its marketing campaign including song lyrics and clips of Nirvana music videos on its social media to further confuse the public into believing that the parties are associated. The defendants must respond to the complaint by March 8. The case is pending in the U.S. District Court for the Central District of California.
Drag to Move
'Fearless Girl' Artist Sold Unauthorized Statues, TM Suit Says
On February 14, 2019, State Street Global Advisors Trust Company (“SSGA”) filed a complaint against the artist of New York City’s iconic “Fearless Girl” statue, claiming that the artist, Kristen Visbal, infringed on SSGA’s trademark rights and materially breached its contractual obligations to SSGA by delivering a replica statue to customers in Norway and Australia without authorization from SSGA. According to the Complaint, Visbal was hired by SSGA to sculpt the statue based on the designs that SSGA had developed with their consultants and agents. The Fearless Girl statue, which can be found in Bowling Green NYC, was introduced during the 2017 International Woman’s Day as a symbol of SSGA’s commitment to fighting gender biases. SSGA is asking that the court compel Visbal to mediate the dispute and is seeking injunctive relief and exemplary damages.
The case is filed in the Supreme Court of the State of New York and is captioned State Street Global Advisors Trust Company v. Kristen Visbal, case number 650981/2019. A copy of the complaint can be found here. Click here to be redirected to the related Law360 article.