Trademark Infringement Update: Court Imposes Preliminary Injunction Against Producers of Cake Boss TV Show

July 22nd, 2010

The popular TV show Cake Boss starring ‘Buddy’ Valastro might be titled something more like ‘Baking Boss’ or ‘Buddy the Cake Champion’ or maybe even ‘Carlo’s Bake Shop’ when the show releases its fourth season (unlikely at this point) or anytime the show is referenced after the third season is done with its first-run.

trademark infringement attorneyOn July 16th the Western District Judge Richard Jones issued a preliminary injunction against Discovery Communications, Inc. (Discovery) for their use of ‘Cake Boss’ in relation to the TV show on TLC.

The lawsuit is Masters Software, Inc. v. Discovery Communications, Inc., No. 10-405 (W.D. Wash. July 16, 2010) (Jones, J.). The plaintiff in this suit is Masters Software, Inc. (Masters), who also owns the federal registered trademark for CAKEBOSS.

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California District Court Finds in Favor of Intel Corporation, Denying ANIPs Motion to Dismiss in Trademark Infringement and Cybersquatting Lawsuit Brought to Protect the Intel Trademark

July 15th, 2010

On Monday July 12, 2010, U.S. District Court Judge Charles Breyer rendered a decision that Intel Corp.’s (Intel) lawsuit against Americas News Intel Publishing, LLC (ANIP) survived ANIP’s motion to dismiss.

trademark infringementThe case is Intel Corporation v. Americas News Intel Publishing, LLC, U.S.D.C. for the Northern District of California. 2010 U.S. Dist. Lexis 69386 (N.D. Cal. July 12, 2010). No. C 09-05085 CRB.

From the facts alleged in its complaint, Plaintiff Intel is a “a world-famous company that develops, manufactures and sells a wide variety of computer, communications and Internet-related products and services,” Compl. P 11, and that “over eighty-six percent (86%) of the general public who associate the term ‘intel’ with any word, definition, or mark, associate the term with Intel Corportation.” Compl. P 12.

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Marquee Nightclub Files Trademark Infringement Lawsuit Against AMC Cinemas

July 13th, 2010

Marquee nightclub filed suit yesterday against AMC Cinema, asking for damages and a permanent injunction to protect its intellectual property.

trademark infringementAMC operates almost 300 theatres and had planned to use the name ‘Marquee’ as a name for a new Las Vegas restaurant it planned to open; however this suit may halt those plans. The Marquee nightclub’s complaint alleges that AMC is already infringing upon the nightclub’s trademark rights by operating “The Marquee” restaurant which opened in Kansas City last year.

In addition to infringing upon the ‘Marquee’ name, the nightclub’s filing alleges that AMC is infringing because the design elements of AMC’s “The Marquee” restaurant were “obviously copied” from the Marquee’s Chelsea nightclub.

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Pfizer Helps Bring Down Phony Viagra Kingpin in Trademark Infringement Settlement

July 12th, 2010

Martin Hickman was formerly a kingpin with a very visible portfolio; a villa on Spain’s Costa del Sol, a Bentley, a diamond-studded Rolex and a flat in London were prominent display pieces of his newly acquired wealth. Hickman utilized some 150 Websites to sell more than $10.4 million worth of counterfeit pills (mostly the widely recognized and counterfeited E.D. medication Viagra) between 2003 and 2007.trademark infringement

However there is was a hitch in Hickman’s plan; the pharmaceutical giant Pfizer is prosecuting individuals and companies benefitting from the sale of counterfeit drugs.

Pfizer’s chief security officer, John Clark, stated that, “the point is to make them realize that there’s no sense from a business perspective in counterfeiting our products, because if we find you, we’re taking your money away.”

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Dirt Cheap Files Trademark-Infringement Lawsuit Against St. Louis Competitor Cheap Cheap

July 12th, 2010

trademark infringementThe Dirt Cheap vs. Cheap Cheap in trademark suit article post last Friday in the St. Louis Business Journal highlighted a lawsuit filed last week alleging trademark-infringement between two St. Louis businesses, Dirt Cheap and Cheap Cheap.

Suit was filed last week by Dirt Cheap, the 12-store chain of discount liquor and cigarette stores located in the St. Louis area against Cheap Cheap who operates stores in the same area and is alleged to display a logo with nearly an identical name, font, and color schemes as Dirt Cheap.

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Fourth Circuit Court Awards Attorney’s Fees and $20,000 in Statutory Damages in Cyber-squatting and Trademark-Infringement Lawsuit

July 12th, 2010

Employers Council on Flexible Compensation v. Kenneth Feltman; Anthony W. Hawks; Employers Council on Flexible Compensation, LTD.

In Emplrs Council on Flexible Comp. v. Feltman, 2010 U.S. App. LEXIS 12688 (4th Cir. Va. June 21, 2010), the U.S. Court of Appeals for the Fourth Circuit recently reaffirmed a district court ruling granting attorney’s fees and an award of statutory damages to plaintiff trademark owners of Employers Council on Flexible Compensation (ECFC).

Brief history of the parties involved;

Plaintiff ECFC is a nonprofit lobbying organization working on behalf of the maintenance and expansion of private employee benefit programs that was incorporated in 1981 in the District of Columbia and in 1999 registered the website “”.

Defendants in the case are Kenneth Feltman, Anthony Hawks, and Employers Council on Flexible Compensation LTD. Feltman worked as ECFC’s executive director until 1997. Although not formally an employee of ECFC after 1997, Feltman continued working on behalf of the ECFC through 2007 when the working relationship soured.

Feltman and Hawks discovered that the ECFC’s corporate charter had been revoked in September of 1998 because ECFC had failed to file certain reports the Department of Consumer and Regulatory Affairs (DCRA). Rather than notifying ECFC, in February 2008, Feltman and Hawks formed a for-profit corporation in the District of Columbia under the name Employers Council on Flexible Compensation, Ltd.

Feltman and Hawks also reserved with the DCRA the acronym “ecfc,” the trade name “Employers Council on Flexible Compensation,” and twenty-one variations of that name. Furthermore, in March 2008, Hawks applied to the United States Patent and Trademark Office to register the mark “Employers Council on Flexible Compensation,” as well as a  design mark identical to ECFC’s “ecfc” logo. Finally, Feltman and Hawks obtained the domain name, (remember that the ECFC had been using since 1999) and used that domain name to maintain a website that was nearly identical to that of ECFC.

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YouTube and eBay Protected by the DMCAs Safe Harbor Provision Even Though they are Used Widely to Facilitate the Distribution Copyright-Infringing Property

July 9th, 2010

Major copyright owners in the entertainment industry and in popular fashion have been frustrated by recent court rulings reinforcing the protection offered by the Digital Millennium Copyright Act’s (DMCA) Safe Harbor Provision. The Safe Harbor Provision draws its authority from the DMCA Title II, the Online Copyright Infringement Liability Limitation Act.

The Safe Harbor Provision protects online service providers (OSPs) from copyright and trademark infringement liability if the service providers follow certain steps;

1) An OSP must take measures to preventtrademark infringement counterfeiting, and

2) After being notified of infringing content by the copyright owner or his agent, the OSP must promptly take down the content in question, and

3) The OSP must take steps to prevent repeat infringers.

Recently we drew your attention to the lawsuit between the entertainment industry giant Viacom and Google where Viacom was alleging more than $1billion in damages. Judge Stanton set a very high bar for any plaintiff wishing to prove that a defendant had actual knowledge of any specific instance of infringing content. More on that suit can be found here;

Gucci America Defeats Motion to Dismiss in Alleged Contributory Infringement Claim for Trademark-Infringement Against Credit Card Service Provider Defendants

July 6th, 2010

trademark infringementGucci America is the trademark owner behind the popular “Gucci” brand. In its quest to rid the streets of “Gucci” knockoff products the company has been very persistent even if seemingly ineffective. However, Gucci America may be gaining some traction with these most recent decisions concerning infringement of the “Gucci” trademark.

The stimulus for the most recent case is the 2008 case of Gucci America, Inc. v. Laurette Co., Inc., 08 Civ. 5065 (LAK) (S.D.N.Y. June 3, 2008)). In that case Gucci was able to get a permanent injunction against defendant Laurette for their use of the now parked Website at That site was used by Laurette prior to the suit for sale of a variety of ‘replica’ goods for sale, including those using both Gucci designs and trademarks without authorization.

After winning the Laurette suit, Gucci went on in 2009 to bring suit against (primarily) the companies providing credit card services for Laurette’s then infringing use of The instant case is the S.D.N.Y. case of Gucci America Inc., v. Frontline Processing Corp., Woodforest National Bank, Durango Merchant Services LLC, “ABC Companies”, and “John Does”, it can be found in its full 24 pages at

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411Pain Trademark Owner Wins $5 million Judgment and Permanent Injunction Against Competitor in Trademark-Infringement Lawsuit

July 2nd, 2010

Broward Rehab Centers, Inc. (BRC) the owner of the federally registered 411PAIN trademark (U.S. Reg. No. 2,621,497), recently won a lawsuit against competitor 888-444-PAIN, Inc. The judgment awarded BRC $5,000,000 in damages and a permanent injunction against 888-444-PAIN, Inc. from using ‘411’, ‘PAIN’ or any confusingly similar variation thereof. trademark infringement lawsuit

The court found that BRC’s 411PAIN trademark is distinctive and has acquired consumer recognition and symbolizes the goodwill that 411PAIN has created amongst consumers looking for information about auto accidents, slip and fall accidents and other types of accidental injuries throughout the United States.

On their BusinessWire article Broward Rehab Center, Inc. (411PAIN) Obtains $5 Million Dollar Judgment and a Permanent Injunction against Competitor Using 444PAIN, BRC/411PAIN provides readers with a short history of the company;

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Viacom v. Google / YouTube Continued- the Trademark-Infringement Lawsuit Between Viacom and Google / YouTube Receives Summary Judgment

July 2nd, 2010

In an article posted Monday about Judge Stanton’s ruling in the form of summary judgment in favor of Defendants Google and YouTube, the contours of the Digital Millennium Copyright Act’s (DMCA) Safe Harbor provision were explored. The authors noted that to be able to appeal to the protection offered by the DMCA’s Safe Harbor provision;

“Any website that allows users to post comments or materials, including on blogs and bulletin boards, must do the following:
(1) identify an agent to receive complaints of infringement and register that agent with the Copyright Office;
(2) publish on the website the procedures that copyright owners must follow to arrange for the take down of infringing content;
(3) follow a takedown procedure that complies with the DMCA; and
(4) establish a policy and procedures for preventing repeat infringers from posting content on the website.”

The DMCA takedown procedure (3) is spelled out with reference to the appropriate authorities here.

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