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Intellectual Property Lawyer: Trademark Casenotes

The Dozier Federal Court Report: Trademark Infringement and Intellectual Property Lawyer Case Notes. When you visit the main Dozier Trademark Infringement Page you'll find information on trademark infringement from an intellectual property lawyer expert, as well as a listing of the many legal matters Dozier Internet Law has undertaken over the years.

Intellectual Property Lawyer Casenotes

Litigation is extremely expensive. Knowing what tactics or practices can get you sued is imperative. The focus of The Dozier Federal Court Reports is to keep you abreast of the issues that are getting businesses in trouble. Understanding what strategies, tactics and practices are getting online businesses sued will help you make better informed decisions. Of course, all references to facts or summaries of facts are based upon the allegations in the lawsuit only and we make no representation as to whether the facts alleged will ultimately be proven truthful. These case comments are not intended to be legal advice, and you should consult your Internet law expert attorney for guidance and advice.

CANDY BOUQUET INTERNATIONAL, INC. v. GINA McCLENNDON EASTERN DISTRICT OF ARKANSAS (LITTLE ROCK) 4:08-CV-00340-SWW

FILED: 4/17/08

Once again a case that appears to implicate intellectual property infringements and contract violations seems to be fueled by a prolific campaign by Defendant that is alleged to be defamatory in nature. It will be interesting to see how the court deals with the broad requests for restricting future speech in light of the line of U.S. Supreme Court cases on "prior restraint". There are ways to prevent someone from continuing to attack your company in the future, but it is extremely difficult for a court to prohibit future speech in a broad sense. The challenge is figuring out how to address the existing misconduct and at the same time manage the ongoing risk of a "mobosphere" attack fueled by either the litigation or the Defendant in a case.

The Plaintiff has sued the Defendant for trademark infringement, trade dress infringement, breach of franchise contract, defamation, and interference with contractual relationships. Defendant is alleged to have sent email to Plaintiff's personnel and franchisees in which she promoted unapproved vendors, promoted an alternative convention for franchisees, and propagated franchisee complaints against the Plaintiff. Defendant also is alleged to have posted postings in violation of the Plaintiff's user agreement on its website. There are also other allegations of exceeding the franchise agreement Defendant had entered into when it became a franchisee of the Plaintiff. Dozier Internet Law Cross-Reference Number 1173.

The "prayer for damages and relief" includes a request for an award of compensatory damages, punitive damages, treble (triple) damages, and the entry of a temporary restraining order, preliminary injunction and permanent injunction requesting a broad range of court ordered relief including trademark protection provisions but also including prohibitions against "harassing or making unsolicited contact with Plaintiff's franchisees" and using the name, mark, sign, telephone number, etc. of Plaintiff.

SCI TEXAS FUNERAL SERVICES, INC., ET AL. v. DIGNIFIED MANAGEMENT GROUP, INC. SOUTHERN DISTRICT OF TEXAS (HOUSTON) 4:08-CV-01167

FILED: 04/16/08

For those businesses selecting names, this is why an extensive trademark clearance report and analysis is necessary. While the claim here appears to be weak and have its own inherent problem, defending lawsuits like this is an expensive proposition.

Plaintiffs are Texas-based companies that have a network of funeral homes and cemeteries and are North America's leading provider of death care products and services. Plaintiffs own multiple federally registered trademarks including "DIGNITY MEMORIAL", "DIGNITY", "DIGNITY PERSONAL FUNERAL PLANS", and "AFFORDABLE FUNERAL SERVICES". Plaintiffs promote their services on the websites www.sci-corp.com and www.dignitymemorial.com. Plaintiffs contend that Defendant, a Texas corporation, began offering funeral, cremation, and pre-planning services using the mark "Dignified Affordable Cremation & Funerals" which it advertises on both its website www.dignified.us and on signs at its physical location.

Plaintiffs filed suit against Defendant in federal court in Texas alleging trademark infringement, false and misleading representations, and trademark dilution in violation of federal law. Plaintiffs' suit further alleges common law unfair competition and injury to business reputation pursuant to Texas state law. Plaintiffs' suit seeks an injunction preventing Defendant from using its confusingly similar mark, recovery of Defendant's profits, actual damages, treble damages, costs and attorneys' fees. Dozier Internet Law Cross-Reference Number 1167.

FORD MOTOR COMPANY v. BEECHNUT AUTO REPAIR, ET AL. SOUTHERN DISTRICT OF TEXAS (HOUSTON) 4:08-CV-01115

FILED: 04/10/08

This is a pretty extreme example of using a trademark in order to provide support and service to purchasers of a new product. There is a right way to describe your services in offering repairs for a popular brand. If these allegations are true, this isn't the right way to do it.

Plaintiff Ford Motor Company, a Delaware corporation with its principal place of business in Michigan, owns the world-famous, federally registered "FORD" trademark as well as several other trademarks including "FORD" surrounded by a blue oval. According to Plaintiff, Defendants, based in Texas, operate an automobile repair shop in direct competition to Plaintiff's network of licensed repair facilities and dealers. Plaintiff contends that Defendants have purchased the Internet domain name "FordDoctors.com" and are using it in commerce to promote Defendant's goods and services. Plaintiff further contends that Defendants are using Plaintiff's various design trademarks on their website, are using the telephone number 281-933-FORD, have their employees wearing uniforms bearing the FORD blue oval trademark, and are falsely claiming that they are "Ford Trained and Certified."

Plaintiff filed suit against Defendants in federal court in Texas alleging cyberpiracy, trademark dilution, trademark infringement, and false designation of origin in violation of federal law. Plaintiff alleges that Defendants have misappropriated Plaintiff's world-famous "FORD" trademarks by calling their business "Ford Doctors", using the Internet domain name "FordDoctors.com", and having their technicians wear the "FORD" trademark and claim to be "Ford Trained and Certified". Plaintiff's suit seeks a preliminary and permanent injunction enjoining Defendants further unauthorized use of Plaintiff's trademarks and colorable imitations thereof, damages, pre- and post- judgment interest, attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1161.

TVTAXI.COM, INC. v. KEHOE STUDIO, INC. MIDDLE DISTRICT OF FLORIDA (ORLANDO) 6:08-CV-00505-GAP-DAB

FILED: 04/04/08

The practice of creating an account on a website so you can learn about a competitor's business, and then taking that idea and launching a competing site is a legitimate business practice. Perhaps there is more to this case then meets the eye. Unauthorized access in violation of a user agreement could give rise to an "unauthorized access" violation under the Federal Computer Fraud and Abuse Act or State computer crime laws. So, if you intend to go to a website for competitive analysis, make sure you comply with the terms of the user agreement. Some agreements we draft specifically prohibit competitors from accessing the site, and legal liability can arise.

Plaintiff TvTaxie.com, Inc., a Florida corporation, has been operating an online meeting place for models and photographers since 2000. Since that time, Plaintiff used the mark "One Model Place" in commerce in connection with its goods and services and used the website "onemodelplace.com" as a means of promotion. According to Plaintiff, in 2007 it discovered that Defendant, also a Florida corporation, set up two competing websites "onesatinplace.com" and "oneeroticplace.com". Plaintiff contends that a representative of Defendant had created an account on Plaintiff's website for the express purpose of gathering information about Plaintiff's business and improperly used that information to develop and begin Defendant's competing websites. Plaintiff alleges that Defendant violated Plaintiff's terms and conditions by improperly contacting Plaintiff's subscribers based on information Defendant obtained from Plaintiff's website in order to promote and further Defendant's competing business.

Plaintiff filed suit against Defendant in federal court in Florida alleging common law trademark infringement, false designation of origin, trademark dilution, and cybersquatting in violation of federal law. Plaintiff alleges that Defendant improperly gathered information from its website in order to set up a confusingly similar competing business in an attempt to pass its business off as being connected to or associated with Plaintiff's business. Plaintiff's suit seeks injunctive relief, damages, disgorgement of Defendant's profits, costs, and attorneys' fees. Dozier Internet Law Cross-Reference Number 1154.

ACTSOFT, INC. v. ALCOHOL MONITORING SYSTEMS, INC. MIDDLE DISTRICT OF FLORIDA (TAMPA) 8:08-CV-00628-STM-EAJ

FILED: 04/03/08

Marketing materials are increasingly important in the online world since online advertising information is indexed and potentially presented as a top result whenever your product or name is mentioned by a competitor. Be very careful in describing competing products and solutions by name, and particularly be vigilant in avoiding "comparative advertising" without legal review and approval.

Plaintiff Actsoft, Inc., a Florida corporation, develops and distributes client and web-based GPS tracking and mobile management software solutions. Plaintiff distributes a product called "House Arrest Solution" which monitors criminal offenders using GPS tracking as well as their alcohol consumption. According to Plaintiff, Defendant offers a competing system called "SCRAM" which monitors an offender's blood alcohol. Plaintiff contends that Defendant, as part of its national advertising campaign, disseminated marketing materials that contained false and misleading description about Plaintiff's "House Arrest Solution" product. Plaintiff further alleges that Defendant made false representations about Plaintiff and its "House Arrest Solution" to Plaintiff's current and potential customers.

Plaintiff filed suit against Defendant in federal court in Florida alleging unfair competition in violation of federal law and defamation per se. Plaintiff contends that Defendant's dissemination of the false and misleading marketing materials as well as Defendant's false statements to Plaintiff's current and potential customers has damaged Plaintiff's business. Plaintiff's suit seeks injunctive relief, actual damages, treble damages, interest, attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1149.

CRICKET HOLDINGS, LLC f/k/a CRICKET PRODUCTIONS, INC. v. MP INNOVATIONS, INC. DISTRICT OF MASSACHUSETTS (BOSTON) 1:08-CV-10537-NMG

FILED: 03/31/08

Unless the slogan is protected by trademark, this suit will probably come down to a pure trademark matter. There is likely nothing inherently wrong with "incorporating many of the same elements of Plaintiff's advertising" unless such conduct is coupled with trademark infringement.

Plaintiff Cricket Holdings, LLC, a Massachusetts limited liability company, has been marketing, distributing and selling the "One Touch Brand Can Opener" throughout the United States and foreign countries via the Internet, television and retail stores since 2006. Plaintiff's can opener is offered for sale on the websites www.onetouchopener.com and www.asseenontv.com. In 2007, Plaintiff federally registered the trademark "One Touch Can Opener" in connection with its hands-free battery operated can opener. Plaintiff also has a trademark application pending with the United State Patent and Trademark Office for the mark "One Touch" for kitchen products, namely battery operated can and jar openers. Plaintiff contends that Defendant began selling a battery operated can opener that looks similar to Plaintiff's on its website www.magictouchopener.com. Plaintiff claims that Defendant's website and email advertisements for its product prominently feature Plaintiff's "One Touch" and "One Touch Can Opener" marks, have incorporated many of the same elements of Plaintiff's advertising, and use Plaintiff's slogan "No Sharp Edges!".

Plaintiff filed suit against Defendant in federal court in Massachusetts alleging trademark infringement, false designation of origin, and trade dress infringement in violation of federal law. Plaintiff's suit further alleges common law trademark infringement and unfair competition and unfair and deceptive trade practices in violation of Massachusetts law. Plaintiff's suit seeks an injunction enjoining Defendant from using its marks and any other confusingly similar marks. Plaintiff's suit further seeks damages including Defendant's profits, treble damages, and enhanced damages. Dozier Internet Law Cross-Reference Number 1140.

MATSON & ISOM TECHNOLOGY CONSULTING v. DELL INC., ET AL. EASTERN DISTRICT OF CALIFORNIA (SACRAMENTO) 2:08-CV-00348

FILED: 03/31/08

Don't you think Dell Inc. knew about the "ProSupport" registered trademark before selecting the name of its new service? If the allegations are correct, Dell must have confidence that the Plaintiff's mark, which can still be contested, is not going to hold up. Seems to me there were plenty of "ProSupport" services going back to the beginning of the PC in the early 1980s. If those other uses were not disclosed to the trademark office by the Plaintiff this could be an even more difficult case to win.

Plaintiff Matson & Isom Technology Consulting, a California corporation, has been in the business of providing information technology solutions since 2000. Plaintiff contends that in 2002, it began offering information technology consulting serves under the mark "ProSupport" in reference to its computer maintenance services offered to its clients on a "24/7" basis. In 2006, Plaintiff federally registered the service mark "ProSupport" for "consulting services in the field of design, selection, implementation, and ongoing support of computer hardware and software systems for others." Plaintiff alleges that Defendants Dell, Inc. and potentially other yet to be named individuals began offering computer consulting and maintenance services in 2008 under the marks "ProSupport" and "Dell ProSupport." Plaintiff contends that Defendants' launch of their "ProSupport" services included a YouTube video broadcast on the Internet whereon Dell Inc.'s Vice President of Services and Solutions announced "ProSupport" as "Dell's largest global services launch ever."

Plaintiff filed suit against Defendants in federal court in California alleging trademark infringement and false designation of origin in violation of federal law and unfair business practices in violation of California state and common law. Plaintiff's suit contends that its customers, many of whom are also Defendants' customers, have expressed confusion and assume an affiliation between the parties that does not exist. Plaintiff's suit seeks an injunction enjoining Defendants from using the "ProSupport" mark or any other confusingly similar mark. Plaintiff's suit further seeks disgorgement of Defendants' profits in association with their use of infringing marks, compensatory damages, treble damages, attorneys fees, costs, and interest. Dozier Internet Law Cross-Reference Number 1141.

FAROUK SYSTEMS, INC. v. SALLY BEAUTY SUPPLY, LLC, ET AL. SOUTHERN DISTRICT OF TEXAS (HOUSTON) 4:08-CV-00979

FILED: 03/28/08

This is interesting. Plaintiff is suing, in part, because searches conducted on the Defendant's website for the Plaintiff's products return results that are not the Plaintiff's products. If the search is an internal website search reasonable consumers should not be misled if the results only show the products sold on the site. If the search function appears to be an external search then this claim may have some legs to run.

Plaintiff Farouk Systems, Inc., a Texas corporation, owns the federally registered trademark "CHI" for electronic hair curling irons and electronic hand-held hair dryers. Plaintiff contends that it is also has common law rights to the trademarks and trade names "FAROUK" and "FAROUK SYSTEMS" for use with a wide variety of hair care products on the basis that it has exclusively used the names in commerce for several years and the names have come to be known by the consuming public in association with hair care products. Plaintiff alleges that Defendants have recently begun advertising in a way that is likely to cause confusion to consumers. Specifically, Plaintiff claims that searches conducted on Defendants' website www.sallybeauty.com for the search terms "CHI," "FAROUK," and "FAROUK SYSTEMS" return hundreds of hits, none of which are authentic "CHI" branded products. Moreover, Plaintiff contends that Defendants are improperly using "CHI" as part of a display sign at its stores in connection with advertisement of Defendants' "GVP" branded hair irons that improperly makes it appear to consumer that Defendants' product is associated with Plaintiff's.

Plaintiff filed suit against Defendant in federal court in Texas alleging trademark infringement and unfair competition in violation of federal and state law. Plaintiff contends that given the similarity in the products offered by Plaintiff and Defendants, Defendants' use of Plaintiff's marks in its web-based and in-store advertisements creates a substantial likelihood that consumers will be confused, mislead or deceived into thinking Defendants' products are associated with Plaintiff's. Plaintiff's suit seeks an injunction ordering Defendant to discontinue its infringing activities. Plaintiff's suit also seeks actual and consequential damages including Defendants' profits and treble damages. Finally, Plaintiff's suit seeks pre- and post-judgment interest on damages, attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1137.

A.L. ENTERPRISES, INC. v. SERGE L. BRONSTEIN DISTRICT OF UTAH (CENTRAL DIVISION) 2:08-CV-00227-TS

FILED: 03/25/08

This is a PPC keyword or search term lawsuit. This is unsettled law, which does not mean you should use a competitor's trademark in your keywords triggering your PPC ad. It means you may be able to do so. And this lawsuit, and several that follow below, have been filed in the past weeks. If you don't want to get sued, stay away from this practice until the Supreme Court or Federal Circuit Courts reach a consensus, which will be years away.

Plaintiff A.L. Enterprises, Inc., a Utah corporation, manufactures and markets male chastity devices under trademarks including "CB-2000," "DB-3000," "CB-6000" and "The Curve." "CB-3000" is a federally registered trademark and Plaintiff's trademark application for "CB-6000" is currently pending with the United States Patent and Trademark Office. Plaintiff contends that its marks are well recognized by people familiar with the male chastity device market. Plaintiff alleges that Defendant, a California resident, operates numerous unregistered businesses as well as the websites www.sebronco.com and www.JToutlet.com on which a variety of products are offered for sale throughout the United States. According to Plaintiff, Defendant offers counterfeits of Plaintiff's CB-3000 and Curve devices on his website www.JToulet.com. Plaintiff alleges that its attorneys sent Defendant a cease and desist notice and that Defendant subsequently began advertising the counterfeit product as "CB-4000" maintaining the packaging that reads "CB-3000: Male Chastity Device." Plaintiff further contends that defendant has purchased sponsored links on Google such that a search for the term "CB-3000" on Google displays an advertisement for Defendant's website www.JToulet.com.

Plaintiff filed suit against Defendant in federal court in Utah alleging trademark infringement, counterfeiting, trademark dilution, and unfair competition in violation of federal law. Plaintiff's suit further asserts common law claims of trademark infringement and intentional interference with economic relations. Moreover, Plaintiff's lawsuit alleges that Defendant has engaged in unfair competition in violation of Utah law. Plaintiff's suit seeks an injunction preventing Defendant from using any marks, designs, terms or other distinguishing features in a manner likely to cause confusion or create the erroneous belief that Defendant's goods or services are authorized by, sponsored by, licensed by, or otherwise associated with Plaintiff. Plaintiff suit also seeks damages including statutory damages, punitive damages, treble damages, and disgorgement of Defendant's profits and gains derived from its infringing activities. Finally, Plaintiff suit seeks pre-judgment interest on damages, attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1129.

THE STAYWELL COMPANY v. REDICLINIC, LLC, ET AL. SOUTHERN DISTRICT OF TEXAS (HOUSTON) 4:08-CV-00931

FILED: 03/24/08

If the "staywell" trademark was actually federally registered in 1982 then there is going to be quite a bit of litigation over whether health management websites can tell their visitors to "stay well"! You should always get legal trademark clearance on not only your company name but the name of your product or service offerings.

Plaintiff The StayWell Company, a Delaware corporation with its principal place of business in Pennsylvania, is a provider of comprehensive health management programs and services that help organizations maximize business results by improving employee health and productivity. Plaintiff owns service mark "STAYWELL" in connection with its services which was federally registered in 1982 and has been in use in commerce since 1976. Plaintiff also owns the federally registered the marks "STAYWELL INFORMATION THERAPY," "STAYWELL PRODUCTIONS," "STAYWELL SOLUTIONS," "STAYWELL'S NEXTSTEPS," and "STAYWELL ONLINE." As part of its promotion efforts, Plaintiff maintains a website that provides current and potential customers with the ability to obtain information about its services. Plaintiff contends that Defendants, Texas limited liability companies, are also in the business of providing health management programs and services to customers. Plaintiff alleges that Defendants promote a class of preventative services which they call "StayWell Services." Plaintiff further alleges that Defendants are using "Stay Well" on their website www.rediclinic.com to advertise and promote their services which are in direct competition with Plaintiff's services.

Plaintiff filed suit against Defendant in federal court in Texas alleging trademark infringement, trademark dilution, and unfair competition in violation of federal law. Plaintiff's suit further alleges injury to business reputation and dilution pursuant to Texas state and common law. Finally, Plaintiff's lawsuit asserts claims of common law trademark infringement, unfair competition and unjust enrichment. Plaintiff's suit seeks an injunction preventing Defendants from using the term "Stay Well" or any other term that is confusingly similar to Plaintiff's marks. Plaintiff suit also seeks damages including actual damages, Defendants' profits received from each product advertised, marketed or sold using the term "Stay Well" and statutory damages. Plaintiff further seeks pre- and post-judgment interest, attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1124.

IRON MOUNTAIN INCORPORATED v. IRON MOUNTAIN MORTGAGE d/b/a IRON MOUNTAIN HOSTING DISTRICT OF MASSACHUSETTS (BOSTON) 1:08-CV-10484-PBS

FILED: 03/24/08

Very interesting situation here. The defendant's business is evolving, according to the plaintiff, from a mortgage servicer to a data management service, which means the name it is using is allegedly likely to confuse the public since it is now selling similar services. This is an issue we deal with often and as your business grows and expands, and your competitors expand, you should keep an eye on the issue of whether the category of goods or services being sold has changed for both offensive and defensive purposes.

Plaintiff Iron Mountain Incorporated, a Delaware corporation with principal place of business in Massachusetts, has been providing businesses with document management goods and services for over fifty-five years. Over the years, Plaintiff's business, which originally focused on assisting businesses with their paper documents and records management, has evolved such that a large portion of Plaintiff's business involves providing management of electronically stored documents. Many of Plaintiff's services including data collection, retrieval, delivery, searching, conversion, backup, recovery, escrow, and encryption are performed over the Internet. Plaintiff owns the federally registered mark "IRON MOUNTAIN" in relation to the various goods and services it provides. Plaintiff contends that Defendant is a California company founded in 1986 as a provider of mortgage services. Plaintiff alleges that Defendant's business has evolved such that Defendant now performs services relating to webhosting and other Internet data services. According to Plaintiff, Defendant began using the domain name "imountain.com" and the marks "IRON MOUNTAIN SOLAR HOSTING," "IRON MOUNTAIN SOLAR POWER HOSTING," and/or "IMOUNTAIN" in connection with its services.

Plaintiff filed suit against Defendant in federal court in Massachusetts alleging trademark infringement in violation of federal and common law. Plaintiff also asserts claims of false designation of origin in violation of federal law and unfair competition in violation of common law. Plaintiff's suit seeks an injunction preventing Defendant from using the domain name "imountain.com" and its marks "IRON MOUNTAIN SOLAR HOSTING," "IRON MOUNTAIN SOLAR POWER HOSTING," and/or "IMOUNTAIN" as well as any other marks that are confusingly similar to Plaintiff's federally registered marks. Plaintiff's suit further seeks damages attributable to Defendant's use of the infringing marks including Defendant's profits and treble damages. Finally, Plaintiff's suit seeks attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1125.

COPYTALK, LLC. v. DELTEL, INC., ET AL. MIDDLE DISTRICT OF FLORIDA (TAMPA) 8:08-CV-00507-EAK-MSS

FILED: 03/18/08

Another PPC search term or keyword trademark infringement lawsuit.

Plaintiff Copytalk, LLC, a Delaware corporation with principal places of business in Sarasota, Florida, is a transcription service. Plaintiff owns the federally registered trademark "Copytalk." Plaintiff contends that it has acquired common law rights in the mark "Mobile Scribe" and its tag line "You Talk We Type" which Plaintiff claims it has been using for several years has now acquired secondary meaning. Plaintiff alleges that Defendants, corporations located in Utah and California and the director of sales for one of those entities, have intentionally and wrongfully used Plaintiff's trademarks as keywords in their online advertising to divert users searching for Plaintiff to another company's website.

Plaintiff filed suit against Defendants in federal court in Florida alleging trademark infringement, false designation of origin, deceptive advertising and unfair competition in violation of federal law and Florida State and common law. Plaintiff's suit seeks an injunction preventing Defendants from using its marks directly or indirectly in connection with their product offerings and unfairly competing with Plaintiff. Plaintiff's suit further seeks damages including actual damages and disgorgement of Defendants' profits plus interest thereon. Plaintiff's suit seeks attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1114.

KAPPA ALPHA ORDER v. DIRTY WORLD ENTERTAINMENT, LLC WESTERN DISTRICT OF VIRGINIA (LYNCHBURG) 6:08-CV-00008-NKM

FILED: 03/17/08

I think Kappa Alpha was founded at Washington and Lee University in Lexington, Virginia, not far from Lynchburg. This is the same court that has seen its share of free speech public interest groups jump into cases. Let's see what happens, but it is a reminder that when you start suing on privacy and defamation bases the lawsuit often garners negative attention, particularly in the blogosphere if one of the public interest groups decides to incite a "mobosophere" attack. These are very tricky situations that are capable of misfiring or particularly susceptible to unanticipated consequences if not managed proactively from both a legal and business perspective.

Plaintiff Kappa Alpha Order is a Virginia not-for-profit corporation. Plaintiff, founded in 1865, is national social fraternity commonly known as "Kappa Alpha" and/or "KA" which derives revenues from initiation and member fees. Plaintiff contends that it registered "Kappa Alpha" as a collective membership trademark on the Principal Register with the United States Patent and Trademark Office. Plaintiff alleges that Defendant Dirty World Entertainment, LLC, which operates the website www.thedirty.com dedicated to posting pictures of scantily clad and obviously intoxicated people at various social events around the United States, represents itself as "the world's first reality blogger." Plaintiff contends that Defendant posted material containing Plaintiff's registered and common law trademarks which purport to represent Plaintiff's members at Arizona State University involved in various unorthodox and inappropriate situations. Plaintiff further alleges that Defendant's editor posted defamatory statements below the offensive pictures.

Plaintiff filed suit against Defendants in federal court in Virginia alleging trademark infringement and trademark dilution in violation of federal and common law. Plaintiff alleges that Defendant has without authorization posted its "Kappa Alpha" and "KA" marks on its website in association with sexually explicit photographs that do not depict any event that took place at Plaintiff's Arizona State University chapter or any event sponsored or condoned by Plaintiff. Plaintiff contends that Defendant's posting has irreparably harmed Plaintiff's reputation. Plaintiff's suit seeks an injunction forcing Plaintiff to remove the offensive material from its website and preventing Plaintiff from using the marks "Kappa Alpha" and "KA." Plaintiff's suit further seeks damages including actual damages, consequential damages and disgorgement of any profits Defendant may have gained. Finally, Plaintiff's suit seeks attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1112.

NICHE MEDIA HOLDINGS, LLC v. NICHE DOWNTOWN, LLC, ET AL. DISTRICT OF NEVADA (LAS VEGAS) 2:08-CV-00344

FILED: 03/14/08

Many domainers and domain name lawyers might scratch their head at this one. Oh, and add the trademark lawyers into that bunch. Claimants are getting pretty creative out there.

Plaintiff Niche Media Holdings, LLC, a Nevada limited liability company established in 2000, is the leader in regional luxury lifestyle publications. Plaintiff's publications celebrate the worlds of culture, fashion, fine dining, real estate and nightlife and include Aspen Peak, Boston Common, Capitol File, Gotham, Hamptons, Los Angeles, Confidential, and Vegas. Plaintiff contends that it been using, since 2000, a group of marks including "NICHE MEDIA," "NICHE MEDIA ONLINE," and "NICHE MEDIA WORLDWIDE." Plaintiff contends that several of its publications are distributed in Hartford, Connecticut. In addition to having continuously used the marks, Plaintiff's suit claims that Plaintiff has active pending federal trademark applications for each of the marks. Plaintiff alleges that Defendants are a Connecticut based limited liability company established in 2006 who conduct business as "Elegant Nightlife" and "Niche Hartford Magazine." According to Plaintiff, Defendants registered the domain name "nichehartford.com" which links to another website that markets the future release of Defendants' publication "Niche Hartford." "Niche Hartford" is promoted as being dedicated to trending and upscale dining, music, fashion, art, culture and nightlife.

Plaintiff filed suit against Defendants in federal court in Nevada alleging cybersquatting and unfair competition in violation of federal law, common law trademark infringement and intentional interference with prospective economic advantage. Plaintiff's suit seeks an injunction preventing Defendants from using "NICHE" and any colorable variations thereof, from registering any domain names including Plaintiff's marks or any colorable variation thereof, and forcing Defendants to transfer the domain name "nichehartford.com" to Plaintiff. Plaintiff's suit further seeks damages including compensatory, consequential, statutory, exemplary and/or punitive damages. Finally, Plaintiff's suit seeks attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1109.

CRISIS MANAGEMENT, LLC v. YOU WALK AWAY, LLC DISTRICT OF ARIZONA (PHOENIX DIVISION) 2:08-CV-00504-LOA

FILED: 03/13/08

Remember that when your lawyer issues a cease and desist you are often opening up the possibility of getting sued where the other party is located. The issue centers upon the words in the demand letter and whether there is a meaningful threat of litigation made. If so, this can happen to you. And, the words you use both orally and in writing whenever you are involved in a dispute can provide the basis for the other party to sue you, so be careful in your choice of words.

Plaintiff Crisis Management, LLC, an Arizona limited liability company, claims to own the trademark "WALK AWAY PLAN" and the domain name "walkplan.com." According to Plaintiff, Defendant is a California limited liability company. Plaintiff alleges that it received a letter from Defendant's counsel claiming that Defendant has trademark rights in the name "YOU WALK AWAY" and that Plaintiff's use of the name "WALK AWAY PLAN" and the website www.walkawayplan.com is infringing on Defendant�s rights.

Plaintiff filed suit against Defendant in federal court in Arizona requesting a declaratory judgment from the court declaring that Plaintiff's use of "WALK AWAY PLAN" and www.walkplan.com does not infringe on any of Defendant's claimed trademark rights. Dozier Internet Law Cross-Reference Number 1106.

YOUNG LIVING ESSENTIAL OILS, LC v. RICHARD DAVID STRAWCUTTER, ET AL. DISTRICT OF UTAH (CENTRAL DIVISION) 2:08-CV-00196-DB

FILED: 03/12/08

"Inspired by" products are high risk inventory. When you start claiming that your inspirational interpretation is a veritable copy, you are in trouble. Don't sell any replicas, inspirations, or copies without fully understanding what can, and cannot, be advertised.

Plaintiff Young Living Essential Oils, LC, a Utah limited liability company, sells essential oils through a network of distributers. Plaintiff owns several federally registered trademarks for its essential oil products including "Abundance," "Aroma Siez," "Grounding," "Juvaflex," "Live with Passion," "Motivation," "Punaway," "Peace & Calming," "Raven," "Thieves," and "Valor." Plaintiff alleges that since 2001, Defendants, a Michigan resident and his related business entities, have ordered essential oil products from Plaintiff. Plaintiff further alleges that in February 2005, Defendants signed a distributer agreement wherein Defendants agreed that Plaintiff's product names were Plaintiff's exclusive property and could not be used to promote any individual business without Plaintiff's written permission. The agreement also stated that all formulas, consumer lists, marketing materials, distributer lists and manufacturing procedures were Plaintiff's confidential trade secrets. The distribution agreement remained in place between the parties until the agreement was terminated in August 2006.

Plaintiff filed suit against Defendant in federal court in Utah alleging trademark infringement and deceptive trade practices in violation of federal law, trade secret misappropriation in violation of Utah law, and breach of contract and tortious interference with business relationships in violation of common law. Plaintiff alleges that Defendants began advertising and selling some of Plaintiff's trademarked products using Plaintiff�s name, Defendants began advertising products with names similar to Plaintiff's registered trademark names stating that the products were "like" Plaintiff's, and that Defendants began selling products with names similar to Plaintiff's products claiming the formulas were the same as Plaintiff's. Plaintiff alleges that Defendants' unlawful advertisement and sales took place on its eBay store, YouTube and on Defendants' various websites. Plaintiff's suit states that Defendants went so far as to advertise the similarly named products as "rip offs" of Plaintiff's products at half the price. Plaintiff's suit seeks injunctive relief, actual damages, statutory damages, attorneys fees, interest and costs. Dozier Internet Law Cross-Reference Number 1103.

MEDLINE INDUSTRIES, INC. v. MEDLINE RECRUITING, INC. MIDDLE DISTRICT OF FLORIDA (TAMPA) 8:08-CV-00453-SCB-MSS

FILED: 03/10/08

You can only protect the category of goods or services in which you use your trademark unless the mark is famous. This is not a famous mark. Is a medical staffing company going to be confused with a health care provider? Doubtful. But this is the type of issue that obviously can get your business sued in today's environment.

Plaintiff Medline Industries, Inc., an Illinois corporation, is a privately-held manufacturer and distributer of medial and healthcare supplies and services. Plaintiff has used the name "MEDLINE" since 1967 and owns several federally registered trademarks including "MEDLINE" in connection with medical and health care supplies. Plaintiff promotes its presence and products on its website www.medline.com which receives more than 200,000 hits each day. Defendant, a company located in Tampa, Florida, operates the website www.medlinerecruiting.com and offers recruiting and staffing services focusing on health care companies. Plaintiff claims that Defendant's use of the name "MEDLINE" and its website which incorporates the name are infringing on Plaintiff's rights.

Plaintiff filed suit against Defendant in federal court in Florida alleging trademark infringement, trademark dilution, unfair competition and cybersquatting in violation of federal law. Plaintiff further alleges unfair competition in violation of state law as well as trademark infringement and unfair competition in violation of Florida common law. Plaintiff's suit seeks an injunction barring Defendant from using, registering or maintaining any marks and/or domain names using the word "MEDLINE" or any similar variation thereof. Plaintiff further seeks to order Defendant to transfer the domain name "medlinerecruiting.com" to Plaintiff. Finally, Plaintiff's suit seeks damages including statutory damages, restitution, and treble damages as well as attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1101.

BALL DYNAMICS INTERNATIONAL, LLC v. JAMZ FITNESS, INC. DISTRICT OF COLORADO (DENVER) 1:08-CV-00465

FILED: 03/05/08

Likely just another example of a retailer not getting legal clearance of a product name. The Internet has expanded the geographic reach of trademarks.

Plaintiff, a Colorado limited liability company, has been in business since 1991 and manufactures and distributes fitness and rehabilitation products, including exercise balls, videos, and related books. It has used its "FITBALL" marks in commerce since 1992. Plaintiff has eight federal registrations for the FITBALL marks. Defendant, a Florida corporation, is in the same business as Plaintiff. Defendant began using the marks "Fit Ball" and "FIT BALL" in 2007. Defendant has sold products bearing these marks on Defendant's website, and on Amazon.com and SeventhAvenue.com.

Plaintiff has filed suit against the Defendant in federal court in Colorado. The suit alleges that the Defendant has committed trademark infringement under the federal and common law, false designation of origin under federal law, use of unfair and deceptive business practices under Colorado law, and unfair competition under the common law. Plaintiff seeks an order enjoining Defendant from infringing on Plaintiff's marks in any way, as well as requiring the Defendant to surrender all infringing products for destruction. Finally, Plaintiff seeks an order awarding the Plaintiff actual, compensatory, and treble damages, along with costs and reasonable attorneys' fees. Dozier Internet Law Cross-Reference Number 1090.

LINCOLN DIAGNOSTICS, INC. v. HOLLISTER-STIER LABORATORIES, L.L.C. CENTRAL DISTRICT OF ILLINOIS (URBANA) 2:08-CV-02062

FILED: 03/05/08

With the FTC's new online marketing initiatives compliance with advertising laws is moving to the forefront in litigation.

Plaintiff Lincoln Diagnostics, Inc., an Illinois corporation, is a leading designer and manufacturer of skin test applicators for administering allergenic extracts. Plaintiff, as part of its business, manufactures and sells a line of disposable skin test applicators under its federally registered marks "Multi-Test" "Multi-test II" and "Duotip-Test." According to Plaintiff, Defendant Hollister-Stier Laboratories, L.L.C., a Delaware limited liability company, also markets and sells a line of disposable skin test applicators. Defendant operates the website www.hollisterstier.com on which it promotes its applicators "QUINTEST" and "ComforTen" claiming that its surgical steel tips cause less trauma and pain than plastic devices and ensure that multiple test antigens are placed at one precise and uniform level.

Plaintiff filed suit against Defendant, its direct competitor, in federal court in Illinois alleging that Defendant has engaged in unfair trade practices in violation of federal law and deceptive trade practices in violation of the Illinois deceptive trade practices and consumer protection statutes. Plaintiff alleges that as Defendant's direct competitor, Defendant's actions have caused Plaintiff to sustain damages including loss of business. The suit alleges that Defendant's marketing claims are confusing and misleading and misrepresent the nature, characteristics and qualities of Defendant's products. Plaintiff's suit seeks injunctive relief preventing Defendant from advertising utilizing its confusing and misleading claims, actual damages and restitution, punitive or exemplary damages, pre- and post-judgment interest, attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1084.

Z-MEDICA CORPORATION v. MEDTRADE BIOPOLYMERS, INC. DISTRICT OF CONNECTICUT (NEW HAVEN) 3:08-CV-00324

FILED: 03/03/2008

And here is yet another Google PPC keyword lawsuit. That is three in the last three weeks.

Plaintiff, a Connecticut corporation, is engaged in the business of marketing and selling products associated with stopping blood loss, including hemostatic agents. It has federal trademark registrations for the marks "QUIKCLOT" and "QUIKCLOT ACS." Defendant is an English corporation that sells and markets hemostat agents under the mark "CELOX." Plaintiff alleges that Defendant has misappropriated Plaintiff's marks by using the marks and confusingly similar variations such as "QUICKCLOT" in Internet advertisement keywords, specifically for Google.com and Amazon.com.

Plaintiff has filed suit against Defendant in federal court in Connecticut. Plaintiff alleges federal trademark infringement, unfair competition under federal, state, and common law, and unjust enrichment. It asks that Defendant be enjoined from using Plaintiff's marks or any similar variation in keyword tags for Internet advertisements and from committing unfair competition or unfair or deceptive acts or practices against Plaintiff. Additionally, Plaintiff asks for damages, attorneys' fees, and costs. Dozier Internet Law Cross-Reference Number 1080.

XTREME LASHES, LLC v. XTREME LASH, INC and YVETTE SPENCER SOUTHERN DISTRICT OF TEXAS (HOUSTON) 4:08-CV-00627

FILED: 02/26/08

Plaintiff does not have a registered trademark, so it will have to prove the existence of a common law trademark. This will likely be difficult to prove in Canada, but not so difficult in the US based upon a number of factors, not the least of which is the time the company has been doing business. If the defendants' website is selling to the US, then there is likely infringement on that basis. You are likely going to be subject to the laws of the country and state in which you do business, no matter where your website is located, where you are located, or where your primary market is located.

Plaintiff Xtreme Lashes, LLC is a Texas limited liability company in the eyelash extension and training business. Plaintiff alleges that it has been doing business in Canada since October 2006 and has a trademark application pending for the mark "XTREME LASHES." According to Plaintiff, Defendant Xtreme Lash, Inc. is a Canadian corporation and Defendant Yvette Spencer is an individual that Plaintiff trained to apply its lash extensions and who Plaintiff claims signed a contract prohibiting her from using Plaintiff's brand and logo and competing with Plaintiff for a period of two years. Plaintiff alleges that Defendants are marketing, advertising, and selling eyelash extension products and training in Canada and the United States under the name "Xtremelashcanada" and utilizing the domain name "xtremelashcanada.com" in connection with that business.

Plaintiff filed suit against the Defendants in federal court in Texas. The suit alleges that Defendants have infringed on its mark in violation of federal and state trademark and unfair competition laws. Plaintiff's suit alleges that Defendants' use of the domain name "xtremelashcanada.com" and name "Xtremelashcanada" in a business that directly completes with Plaintiff causes customer confusion, mark dilution, and constitutes unfair competition. Moreover, Plaintiff alleges a breach of contract claim against Defendant Yvette Spencer on the basis that Plaintiff claims she violated her agreement not to use Plaintiff's brand and logo and not to compete with Plaintiff. Plaintiff's suit seeks an injunction preventing Defendants from infringing on Plaintiff's trademark rights and diluting its mark, unfairly competing with Plaintiff, and using a confusingly similar domain name. Moreover, Plaintiff seeks an order forcing Defendants to transfer the domain name "xtremelashcanada.com" to Plaintiff. The suit also seeks actual, treble, and punitive damages, lost profits, attorneys fees, costs and pre- and post-judgment interest. Dozier Internet Law Cross-Reference Number 1059.

1-800 CONTACTS, INC. v. DRUGSTORE.COM, INC. and VISION DIRECT INC. DISTRICT OF UTAH (CENTRAL DIVISION) 2:08CV00157

FILED: 02/26/08

Important Case: The defendant agreed not to cause its ads to be presented when the plaintiff's trademark was typed in as a Google search. There are two ways to do this. One is to not buy the trademark search terms. The other is to enter the trademark search terms as negative keywords. Either would appear to achieve the objective. However, at some point the defendants are alleged to have stopped using the negative keywords. Then this gets interesting. Ads started showing up for the defendants products when the plaintiff's trademark terms were searched. I am not sure either the plaintiff or defendants know what might be causing this, but there could be an explanation that has nothing to do with the defendant buying the terms. I can't elaborate, though. Oh, and the lesson to be learned? Don't do more than you are required to do in carrying out a settlement agreement. When you stop, the other side will think you are violating the agreement by no longer doing something you never promised to do in the first place.

Plaintiff 1-800 Contacts, Inc., a Delaware corporation with its principal place of business in Utah, is a leading seller and distributer of contact lenses and eye care products via the Internet, mail, telephone and fax. Plaintiff is the owner of the federally registered service marks "1800CONTACTS," "1 800 CONTACTS," and "LENS EXPRESS." According to Plaintiff, in 2003 Defendant Drugstore.com, Inc. acquired Defendant Vision Direct, Inc., a direct competitor of Plaintiff, which is now its wholly owned subsidiary. Plaintiff previously filed suit against Vision Direct Inc. in 2002 in federal court in the Southern District of New York which resulted in a settlement whereby Vision Direct Inc. was expressly prohibited from causing advertisements for Vision Direct Inc. to appear when an Internet search was conducted on a search engine for Plaintiff's brand names and trademarks. Plaintiff alleges that after Drugstore.com, Inc. acquired Vision Direct Inc., Defendants for a period of time complied with the terms of the settlement agreement through the use of "negative keywords," which are words or phrases that, if entered by a user as a search term, will cause that advertiser's advertisement not to be presented to that user. Plaintiff believes that Defendants have stopped specifying the negative keywords and that as a result, Defendants' advertisements are appearing when search engine users type in Plaintiff's name and trademarks as search terms.

Plaintiff filed suit against the Defendants in federal court in Utah alleging trademark infringement, dilution and unfair competition claims in violation of federal and state law, deceptive trade practices in violation of state law, and intentional interference with economic relations and unjust enrichment in violation of Utah common law. Plaintiff alleges that Defendant Vision Direct Inc. is still obligated to comply with the settlement agreement and that Defendants have acted jointly to deceive customers and drive business away from Plaintiff. Plaintiff's suit seeks an actual, enhanced and punitive damages, an accounting, restitution and disgorgement, corrective advertising and injunctive relief based on Defendants' alleged infringement of Plaintiff's federally registered and common law trademarks and service marks, Defendants' diversion of customers away from Plaintiff, and Defendants' inducement of Vision Direct to breach its contractual obligations with Plaintiff. Dozier Internet Law Cross-Reference Number 1064.

CHANEL, INC. v. KIN FUNG POON, ET AL. CENTRAL DISTRICT OF CALIFORNIA (EASTERN DIVISION-RIVERSIDE) 5:08-CV-00224

FILED: 02/20/08

A good example of the "policing" actions that are required to protect a brand and a trademark. As a trademark owner you must protect your mark on an ongoing basis or you will lose all rights in the trademark.

Plaintiff Chanel, Inc., a New York corporation, is engaged in the business of manufacturing and distributing necklaces, costume jewelry, and other goods under the federally registered marks "CHANEL" and "CC MONOGRAM." Defendant Just MFG uses the alias justjewel.com in its business of selling counterfeit Chanel products. The Defendants' counterfeit products bear marks that are similar to Chanel marks. The Defendants are confusing the consuming public via their actions.

Plaintiff has filed suit against the Defendants in federal court in California. The suit alleges that the Defendants have committed trademark infringement and false designation of origin under federal law. Plaintiff seeks an order enjoining Defendants from committing the unlawful practices set forth in the complaint. The Plaintiff further seeks an order awarding the Plaintiff statutory damages in the amount of one millions dollars per each counterfeit mark used. The Plaintiff also seeks actual damages, treble damages, punitive damages, and attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1056.

T-MOBILE USA, INC. v. SHAZIA & NOUSHAD CORPORATION, ET AL. NORTHERN DISTRICT OF TEXAS (DALLAS) 3:08-CV-00341

FILED: 02/26/08

Here is a slightly different take on a series of cases filed in Texas by the major mobil phone operators. The reference to "various outlets" as a distribution means suggests to me that other companies could end up being implicated here. And who might that be? Affiliate marketers. The lesson here is to make sure you know the product or service you are selling as if it was your own.

Plaintiff T-Mobile USA, Inc., a Delaware corporation, is one of the world's leading companies in mobile communications and provides service in the United States to over 26 million customers. Plaintiff uses and continues to use the "T-Mobile" and stylized "T" marks in commerce and have the rights to use such marks. Plaintiff has become aware that many of its phones are being sold for the purpose of being "unlocked" and used on other systems and not for the purpose of lawfully connecting to a wireless telephone communication network. This is against prohibitions conspicuously placed on the phones' sales packaging and voids the warranty. Defendants are participating in this bulk reselling scheme though various outlets. Uninformed and confused consumers are calling T-Mobile for service questions, even though the phones are working on other telephone systems.

Plaintiff has filed suit against the Defendants in federal court in Texas. The suit alleges that the Defendants have committed trademark infringement under federal common law, false advertising, trademark dilution, unfair competition, contributory trademark infringement, copyright infringement, tortious interference with prospective business relationships, breach of contract, acts of harm to Plaintiff's good will, and related acts of conspiracy. Plaintiff seeks an order enjoining Defendants from committing the unlawful practices set forth in the complaint and requiring the Defendants to provide all of the phones bearing the infringing marks to Plaintiff. The Plaintiff further seeks an order awarding the Plaintiff compensatory, consequential, statutory, special, treble, and punitive damages, along with attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1067.

TRACFONE WIRELESS, INC. v. SKYNET WHOLESALE DISTRIBUTORS INC., ET AL. SOUTHERN DISTRICT OF TEXAS (MCALLEN) 4:08-CV-00546

FILED: 02/18/08

Make sure that when you are a retailer or distributor of a company's product that you don't advertise and sell the product in a prohibited manner. Even if there is another legal use to be made of a product, your sales pitch should be consistent with the manufacturer's intended use.

Plaintiff TracFone Wireless, Inc., a Delaware corporation, is the largest provider of prepaid wireless telephone service in the United States. TracFone uses and continues to use the "TracFone" and "NET10" marks in commerce. TracFone has also filed federal trademark registrations for various TracFone marks. TracFone has become aware that many of its phones are being sold for the purpose of being "unlocked" and used on other systems and not for the purpose of lawfully connecting to a wireless telephone communication network. This is against prohibitions conspicuously placed on the sales packaging. Defendant Skynet Wholesale Distributors Inc., a Texas corporation, is participating in this bulk reselling scheme through various outlets, including a website located at www.wirelessindustry.com.

Plaintiff has filed suit against the Defendants in federal court in Texas. The suit alleges that the Defendants have committed trademark infringement under federal law, trademark dilution, unfair competition under both federal and common law, contributory trademark infringement, copyright infringement, unlawful software trafficking and circumvention, tortious interference with contracts and business relationships, breach of contract, and related acts of conspiracy. Plaintiff seeks an order enjoining Defendants from committing the unlawful practices set forth in the complaint and requiring the Defendants to provide all of the phones bearing the infringing marks to Plaintiff. The Plaintiff further seeks an order awarding the Plaintiff compensatory, consequential, statutory, special, treble, and punitive damages, along with attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1048.

NAMESCAPE CORPORATION v. THE DOT NET FACTORY, LLC DISTRICT OF ARIZONA (PHOENIX) 2:08-CV-00274

You cannot typically protect against someone creating a similar competing business unless you have a patent and the new business is infringing. Ideas are not generally protectible...competition is good and will lead to improvements. Note in this case the claim for use of a trademark as a keyword term for generating advertising in the Adwords program (a hotly contested issue, to say the least).

Plaintiff is a software developer that creates network account management tools and sells them to companies throughout the world. Plaintiff has a federal trademark registration for "myPassword" for use with computer software that controls self-service terminals. Plaintiff began selling its myPassword software on October 21, 2005. Plaintiff has expended significant funds in developing and advertising this name. Defendant directly competes with Plaintiff. In February 2006, Defendant created a software program similar to Plaintiff's myPassword and began to market it under the name "Password Manager." Plaintiff alleges that Defendant's intentional use of a name that is similar to the name of its own product and federally registered trademark will cause customer confusion. Plaintiff also alleges that Defendant is infringing on its rights by using Plaintiff's marks in its Internet advertising.

Plaintiff has filed a federal suit against the Defendant in Arizona. Among the allegations are trademark infringement, false designation of origin and unfair competition under the Lanham Act, common law trademark infringement, and unfair competition under Arizona law. Plaintiff has requested that the Court preliminarily and permanently enjoin Defendant from using any mark that infringes on its "myPassword" mark, and from using myPassword in any infringing manner, including as a keyword term for pay-per-click advertising or as a search term for any Internet search engine. Plaintiff has also requested that the Court disgorge Defendant's profits and award treble damages, costs and attorneys' fees. Dozier Internet Law Cross-Reference Number 1032.

LEADER MORTGAGE COMPANY, INC. v. LENDERS MORTGAGE CORPORATION DISTRICT OF MASSACHUSETTS (BOSTON) 1:08-CV-10243

Who would have thought that a trademark for "leader" would cover the term "lender" in the mortgage business? Once again, this is competitor litigation, with the older, established business as the plaintiff and the new start-up as the defendant. If this case does not settle, it will likely come down to an expert for the plaintiff conducting surveys that show the consuming public is misled, and an expert for the defense offering just the opposite testimony.

Plaintiff is a well-established full service-licensed mortgage lender that has continuously conducted its business since September 1986. Plaintiff has a registered trademark in "Leader Mortgage." Plaintiff recently learned that Defendant, a competitor in the business, had filed with Massachusetts' Secretary of State to do business under the name "Lenders Mortgage." Plaintiff notified Defendant that its use of that name would constitute trademark infringement, but Plaintiff did not receive a response. Instead, Defendant began operating under that name. Defendant's actions include heavily advertising on the Internet. Plaintiff alleges that Defendant's actions are causing actual confusion among its customers.

Plaintiff has sued Defendant in federal court in Massachusetts alleging violations of federal trademark laws, including trademark infringement, unfair competition and trademark dilution, as well as the violation of common law trademark infringement. Plaintiff also has causes of action based on state law, including unfair competition, unfair business practices, and unjust enrichment. Plaintiff has asked the Court to enjoin Defendant from using "Lenders Mortgage" or "Lenders Mortgage Corporation." Plaintiff has also asked the Court to order Defendant to provide a full accounting for its profits and to award Plaintiff treble damages. Additionally, Plaintiff has requested attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1034.

COLDWELL BANKER REAL ESTATE, LLC v. BRIAN MOSES REALTY, ET AL. DISTRICT OF NEW HAMPSHIRE 1:08-CV-00050

When can you use the trademark of a party with whom you have a business relationship? Typically it is governed by written contract. If not, then by oral agreement. If there was no oral agreement, then the courts will look to other well established legal principles like fair use, waiver and promissory estoppel. In order to hold onto a trademark, appropriate "policing" is required, so plaintiffs are sometimes forced into trademark lawsuits. Monitor and police your trademarks or you�ll be at risk of having every competitor use your name with impunity.

Plaintiff is a widely known franchisor of real estate services. It allows franchisees to use and promote its "Coldwell Banker" mark. In 1996 Plaintiff entered into a franchise agreement with Defendants that clearly explained the rights and obligations of both parties. Upon the expiration of the franchise agreement, Defendants refused to pay their royalty and advertising fees. In 2001 Defendants assumed the rights and responsibilities of another franchisee of the Plaintiff. This second agreement again clearly explained the rights and obligations of both parties. It was set to expire in 2011. During the term of this second agreement, Defendants started to render services for a competing business. As this was a material breach of the agreement, Plaintiff provided notice that Defendants were terminated as a franchisee. However, Defendants continue to advertise their association with Plaintiff by using Plaintiff's marks on their website and on other websites.

Plaintiff has filed suit in federal court in New Hampshire, alleging breach of contract, federal trademark infringement, federal false designation of origin and federal trademark dilution. Plaintiff also alleges common law trademark infringement, unfair competition under New Hampshire law, and unjust enrichment. Plaintiff has asked the Court to order Defendants to stop using the Plaintiff's marks in an infringing manner, to destroy all infringing material in their possession, to pay treble damages to Plaintiff and to pay costs and attorneys' fees. Dozier Internet Law Cross-Reference Number 1038.

MR. ROUTE, INC. v. ROUTE BROKERS, INC. EASTERN DISTRICT OF NEW YORK (CENTRAL ISLIP) 2:08-CV-00598

Pay attention to the interesting issue here...which is whether a competitor's website is using "hidden metatags", which is probably not hidden metatags at all but hidden words, to gain SERPs rank when someone is searching for its competitor. There are all kinds of ways to do this, of course, either on-page or off-page. Be aware that hidden text can get you penalized big time by the search engines.

Plaintiff is the "longest established broker of routes in the country." It services buyers and sellers of routes on Long Island, the New York Metropolitan area, New Jersey, parts of the East Coast and California and has expended significant time and money to promote its "Mr. Route" marks. Defendant, established one year after Plaintiff, is a competitor of Plaintiff and operates two websites located at www.routebrokers.com and www.theroutebrokers.com. Plaintiff alleges that Defendant's websites contain hidden metatags that use Plaintiff's marks to direct Internet searches to Defendant's websites. Defendant has also sent Plaintiff a cease and desist letter, demanding that Plaintiff cease using Defendant's trademarked term "Route Brokers" in its advertising. Plaintiff contends that it is using the phrase as a generic term that describes what services they offer.

Plaintiff has filed suit in federal court against Defendant in New York alleging false designation of origin and unfair competition under the Lanham Act and unfair competition and deceptive acts and practices under New York law. Plaintiff has also asked for the cancellation of Defendant's mark in "The Route Brokers" as it is a generic term, and asked the Court to declare that its use of the phrase "route broker" does not infringe upon Defendant's trademark. Plaintiff has asked the Court to enjoin Defendant from using Plaintiff's trademark, "Mr. Route," or any other terms similar to it and to order Defendant to pay damages, costs and attorneys' fees. Dozier Internet Law Cross-Reference Number 1039.

WORLD DIAMOND SOURCE, INC. v. ZHANG, ET AL. SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE) 0:08-CV-60204

The lesson for online businesses is that you need to be careful about the products or services you are selling. This situation wouldn't be very obvious, but make sure you at least stay away from obvious problems, and always try to get an indemnification agreement from a manufacturer or supplier so you will have recourse to recover your losses. Be careful not to sell or market goods or services that appear to be authentic but are being sold for hugely discounted prices.

Plaintiff, a Florida corporation, markets and sells power tool parts, including power saw blades, throughout the United States. Plaintiff has several trademarks that it uses to market its saw blades, and its customers rely on Plaintiff's trademarks as symbols of assurance as to the origin and quality of Plaintiff's goods. Defendant D-Cut is an Illinois corporation that also manufactures and sells power tool parts, such as power saw blades, through its website www.dcutproducts.com. Plaintiff alleges that Defendant D-Cut's products are counterfeits of Plaintiff's products.

Plaintiff has filed suit in federal court in Florida, alleging federal trademark infringement or counterfeiting, false designation of origin under the Lanham Act, federal unfair competition, common law trademark infringement and common law unfair competition. Plaintiff has asked the Court to enjoin Defendants from continuing to infringe on its marks, to order Defendants to surrender their counterfeit products to Plaintiff and to order Defendants to provide a list of everyone who aided Defendants in this counterfeiting enterprise. Plaintiff has also asked for treble damages, attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1043.

ROLEX WATCH, U.S.A., INC., v. CANALES, ET AL. SOUTHERN DISTRICT OF TEXAS (CORPUS CHRISTI) 2:08-CV-00048

If you have ever been to New York City and walked the streets, you have probably run into the vendors selling Rolex knock-offs for $20. Now this practice has found a new home, allegedly, on the web. Don't do it, don't market for such sites, and don't provide hosting, web development, SEO, or even domain name registrar services to them. It doesn't take much to get included as a co-conspirator defendant in cases like this. Know your customer...but know their products or services even better.

Plaintiff, a New York corporation, is the exclusive distributor and warrantor of Rolex watches in the United States. Rolex has developed an outstanding reputation because of the uniform high quality of its watches, and its trademarks are used to identify these high-quality products. Plaintiff is responsible for maintaining control over the quality of Rolex products and services in this country. Defendants have been using their five websites to offer replica Rolex watches. Defendants' activities also extend to posting online auction listings for these replica Rolex watches. Defendants have been intentionally and maliciously selling counterfeits of Plaintiff's goods despite knowing that such sales are illegal.

Plaintiff has filed a federal lawsuit against Defendants in Texas, alleging trademark counterfeiting, trademark infringement under federal law and Texas common law, federal false designation of origin, injury to business reputation under Texas law, and misappropriation and unfair competition under Texas common law. Plaintiff has requested that the Court enjoin Defendants from distributing counterfeit versions of its goods and from further infringing upon its marks. Plaintiff has also asked for the destruction of all of Defendants counterfeit goods. Additionally, Plaintiff have requested treble and punitive damages, attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1045.

STERLING MARKETING GROUP, LLC, ET AL. v. ALL ABOUT PINS, INC., ET AL. MIDDLE DISTRICT OF FLORIDA (ORLANDO) 6:08-CV-00175

Non-compete agreements can often protect you from a competitor arising out of a former business you have acquired. It is not clear that such an agreement was used in this sales transaction.

Plaintiffs provide promotional products, such as custom lapel pins, throughout the world. Defendants were in a similar business and operated under the name All About Pins, Inc. Defendants sold their products through their website at www.allaboutpins.com from May 2001 until March 2006 when Plaintiffs purchased all of their assets, including their name and domain name. In August 1, 2007, Defendants registered the domain name www.pins365.com and began operating a business that competes with Plaintiffs. Despite selling their name to Plaintiffs in 2006, Defendants named their new business All About Pins, Inc. Defendants' use of this name has created actual confusion among Plaintiffs' and Defendants' customers.

Plaintiffs have filed a federal suit against the Defendants in Florida. Among the allegations are statutory unfair competition under the Lanham Act, common law unfair competition under Florida law and common law trade name infringement under Florida law. Plaintiffs have requested that the Court preliminarily and permanently enjoin the Defendants from using the "All About Pins" name and have also requested that the Court award damages, costs and attorneys' fees. Dozier Internet Law Cross-Reference Number 1017.

VIRTUALCFO, INC. d/b/a VCFO v. RC PROFESSIONAL SERVICES, LLC d/b/a RCFO SERVICES, LLC NORTHERN DISTRICT OF TEXAS (DALLAS) 3-08CV0164-G

Another classic reason why you must get trademark clearance before using a name. Don�t assume you are fine since there is no registered trademark of the exact name.

Plaintiff and Defendant are competitors in the business of providing financial and business consulting services. Plaintiff, which is based in Austin, Texas, has been doing business under the mark "VCFO" and operating its website at www.VCFO.com for many years. Plaintiff obtained a Texas trademark registration in "VCFO" in 2001 and federally registered the mark in 2002. Defendant started doing business in 2004. In 2006 it filed an assumed name certificate to do business as "RCFO Services, LLC" in Dallas, Tarrant and Collins Counties in Texas. Defendant now does business solely under the name "RCFO" and operates a website at www.RCFO.com.

Plaintiff has sued Defendant in federal court in Texas alleging violations of state and federal trademark laws and state business and unfair competition laws. Plaintiff's suit seeks damages and to prevent Defendant from using a similar name and mark in direct competition with Plaintiff. Plaintiff claims that its marks have become well-known within companies that regularly outsource financial consulting, accounting and business support services and that these companies regularly provide referrals to Plaintiff. Plaintiff alleges that Defendant, who for approximately two years did business under the name "RC Professional Services," only began using the name "RCFO' for the express purpose of trading on the goodwill and value created by Plaintiff. Dozier Internet Law Cross-Reference Number 1019.

BUCK OWENS PRODUCTION COMPANY, INCORPORATED v. GREAT NORTHERN BROADCASTING, INC., ET AL. DISTRICT OF IDAHO (BOISE-SOUTHERN) 1:08-CV-00066

Trademarks arise not only in names, but in distinctive images and signs also. Don't let your programmer get overly creative or you may end up with a trademark infringement issue that has nothing to do with your business or a product name.

Plaintiff owns and operates both an AM and an FM radio station under the call sign KUZZ. Plaintiff also owns and operates a restaurant called "Buck Owens' Crystal Palace." This restaurant has a museum that features country music performer Buck Owens' memorabilia, including a prototype of his trademark "Buck Owens' All-American" red, white and blue acoustic guitar. Mr. Owens began using his distinctively colored guitar in the 1960s and further enhanced its public distinctiveness by licensing its use to Sears, Roebuck and Co. for the purpose of selling reproductions of his guitar. Plaintiff obtained a federal registration that depicts the call sign KUZZ with a stylized depiction of a red, white and blue guitar. Defendants, operating under the trade name K-102, have created a service mark that features "K-102" and a stylized red, white and blue acoustic guitar. Defendants use this mark in their advertising, including on their website at www.k102radio.com and on other websites such as www.myspace.com and www.cafepress.com.

Plaintiff has filed suit in federal court in Idaho, claiming trademark infringement, false designation of origin, unfair competition and deceptive trade practices under federal law and injury to business reputation and dilution under Idaho state law. Plaintiff also alleges common law trademark infringement and unfair competition. Plaintiff has asked the court to award it damages, disgorge the Defendants' profits and award it the cost of corrective advertising. Plaintiff also alleges that Defendants' actions are malicious, given the level of public awareness of Plaintiff's mark, and thus has also asked the court to award it treble damages, as well as attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1028.

ROLLS-ROYCE MOTOR CARS NA, LLC, ET AL V. ROLLS ROYCE & BENTLEY SPECIALISTS, LLC SOUTHERN DISTRICT OF FLORIDA (WEST PALM BEACH) 9:08-CV-80084

The age old debate about what use resellers and repairers can make of a famous mark continues. Be careful about trademarks online. But, don't shy away from using one legally. It's just hard to figure out what will, and will not, get you sued without a trademark and risk analysis assessment.

Plaintiffs are the owners of the federally registered Rolls-Royce marks which include name "Rolls-Royce," the Rolls-Royce design logo, the Rolls-Royce hood ornament, and the Rolls-Royce radiator grille. Defendant is a Florida business located in Boca Raton that specializes in servicing and repairing Rolls-Royce automobiles. Plaintiffs allege that Defendant prominently displays its federally protected trademarks on its website, www.bentleymotorcar.com, and improperly uses "Rolls Royce" in its trade name.

Plaintiffs filed suit in federal court in Florida seeking to prevent Defendant from using its trademarks and to enforce a prior agreement whereby Defendant agreed to remove "Rolls Royce" from its trade name and remove Plaintiffs' federally protected trademarks from its website. Plaintiffs' suit alleges that Defendant is violating federal and state trademark law and has breached its prior agreements to stop using Plaintiffs' marks. Plaintiffs' suit seeks an order preventing Defendant from using its marks, damages, attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1010.

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