In Feder v. Williams-Sonoma Stores, Inc, the United States District Court for the District of New Jersey joined the New Jersey Superior Court in weighing in on the issue of whether a retailer violates consumer privacy state law by requesting a customer’s zip code at the point of purchase.  Feder was brought by the same plaintiff’s lawyers and with claims similar to those in the state court case Imbert v. Harmon Stores, Inc.(Bed, Bath & Beyond). Imbert was decided last month, but without any written decision, and permitted that case to proceed past the pleading stage. The District Court in Feder, however, issued the first written opinion under the New Jersey statutes, finding that allegations that a zip code was verbally requested could not support a claim under New Jersey law.
 Continue Reading ZIPped Back Up: Williams-Sonoma Gains Federal Dismissal Of New Jersey Consumer Privacy Claim in Feder

A New Jersey state trial court has initially weighed in on the issue of whether a retailer violates state law by requesting a customer’s zip code at the point of purchase.  In a case fashioned after the California Supreme Court’s decision in Pineda v. Williams-Sonoma, 51 Cal.4th 524 (Feb. 10, 2011), New Jersey Superior Court Judge Stephan Hansbury has denied a motion to dismiss brought by Harmon Stores, Inc. (Bed, Bath & Beyond), finding that the plaintiff Robert Imbert adequately pled a claim for violation of New Jersey’s Truth in Consumer Contract, Warranty and Notice Act, N.J.S.A. 56:11-17 (“TCCWNA”).   The Court’s ruling allows plaintiff to proceed beyond this initial stage, but no liability has been found.
 Continue Reading UnZIPped in New Jersey?

Elvis Costello’s 1977 hit song "The Angels Want to Wear My Red Shoes" might be an appropriate theme song for the high profile fashion trademark case that was brought in the United States District Court for the Southern District of New York earlier last month by the designer Christian Louboutin, Christian Louboutin S.A. and Christian Louboutin LLC ("Christian Louboutin") against Yves Saint Laurent America, Inc., Yves Saint Laurent America Holding, Inc., Yves Saint Laurent S.A.S. and Yves Saint Laurent ("YSL). Plaintiff Louboutin and his related corporate entities allege that YSL and its affiliated companies violated Louboutin’s red sole trademark by selling women’s shoes with red uppers and outsoles virtually identical to Louboutin’s red sole trademark. Plaintiffs further allege that: "YSL shoe models Tribute, Tribtoo, Palais, and Woodstock all appear now to carry the copy of Plaintiffs’ Red Sole Mark." The YSL shoes at issue were part of a YSL collection featuring colored soles and uppers in red, green and blue color ways. Plaintiffs seek injunctive relief to prevent YSL from any further sales of red-soled shoes, profits allegedly earned through sales of the accused infringing shoes, actual damages, statutory damages, interest, and costs and reasonable attorneys’ fees.
 Continue Reading YSL has Louboutin Seeing Red

On June 25, 2010, the Trademark Trial and Appeal Board ("TTAB") of the United States Patent and Trademark Office rendered its decision in the case of Valentino U.S.A., Inc. v. Florence Fashions (Jersey) Limited, Opposition Nos. 91094961 and 91095203, Cancellation Nos. 92029390 and 92029476, 2010 WL 2783891 (TTAB June 25, 2010), marking the culmination of a sixteen-year dispute — the opposition proceedings were filed in June 1994 and the cancellation proceedings were commenced in June 1999. Defendant Florence Fashion (Jersey) Limited ("Florence") had filed applications and registrations for the marks "Gianni Valentino" and "Giovanni Valentino" that it used on a variety of clothing and accessory items, including coats, dresses, handbags, and belts. Plaintiff Valentino U.S.A. ("Valentino") brought the proceedings on ground that, as applied to Florence’s goods, the marks so resembled Valentino’s previously used marks "Valentino" and "Valentino Garavani" for similar goods as to be likely to cause confusion under the Lanham Act, 15 U.S.C. § 1052(d) (i.e., consumers would see a Florence Fashion "Giovanni Valentino" purse and think that it was produced by famed designer Valentino Garavani). 
 Continue Reading Valentino Receives Favorable TTAB Ruling in Sixteen-Year Trademark Dispute

L’Oreal scored a major victory in trademark protection against smell-alike perfumes this past month in England’s Court of Appeal. In L’Oréal v. Bellure, the court held that Bellure’s use of lists in its advertising that compared its perfumes’ scents to those of well-known L’Oréal perfumes constituted trademark infringement. This widely-reported decision indicates a sea change in European trademark law, which is now recognizing the marketing and monetary effort a company expends when creating and maintaining trademarks. It also is a broad decision, perhaps having wide-ranging effects in other industries. This decision implements judgment in the European Court of Justice – the highest court in the European Union. Thus, the decision in this case applies to all of Europe.  
 Continue Reading Smells Like Trademark Protection: Copycat Perfumes Cannot Engage in Comparative Advertising, on Odor of the Court

In Fendi Adele S.R.L. v. Burlington Coat Factory, No. 06 Civ. 85 (LBS), 2010 WL 431509 (S.D.N.Y. Feb. 8, 2010), the United States District Court for the Southern District of New York, in light of the prior 1987 injunction prohibiting defendant Burlington Coat Factory ("Burlington") from selling counterfeit Fendi products in its stores, recently held that the continued sale of counterfeit handbags featuring the trademarks of plaintiff Fendi Adele S.R.L. ("Fendi") violated the prior order, was in contempt of the district court’s prior order, and awarded treble damages against Burlington. This decision provides yet another reminder of how courts have dealt harshly with retail vendors who have willfully purchased and sold counterfeit goods, especially where there was a prior injunction against violation of the Fendi trademarks.
 Continue Reading The Southern District Of New York Sends A Clear Message To Retailers Selling Counterfeits That Failing To Exercise Due Diligence In Purchasing Products After An Injunction May Result In Trebled Damages Of Millions Of Dollars

Two recent cases highlight the issues faced when seeking an award for willful damages in trademark infringement cases involving counterfeit goods. Burberry brought an action against Designers Imports ("Designers") in 2007 (the "Designers Action") for selling counterfeit Burberry goods, featuring the Burberry name, the Burberry Check design and the Burberry “Equestrian Knight” on horseback (collectively, the “Burberry Marks”). Burberry also brought suit in 2008 against Euro Moda, Inc., Moda Oggi, Inc., and John Fanning (collectively, “Euro Moda”) for selling counterfeit scarves, hats, clothes, and handbags bearing the Burberry Marks (the "Euro Moda Action"). The Courts awarded Burberry $1.5 million in damages in the Designers Action and $4 million in the Euro Moda Action, each of which was considerably less than the statutory maximum, which was what Burberry sought in each case.
 Continue Reading Courts Double-Burberry-Check The Math And Award Damages Less Than The Statutory Maximum For Willful Infringement

Since the proliferation of the internet and online advertising, trademark owners have sought to prevent  the unauthorized use of their marks as keywords for online advertising on search engines. In the Second Circuit before 2009, trademark owners had difficulty protecting their marks where the competitor’s link simply shows up as "Sponsored Link" on the landing page, and no other use of the mark has been made, because of the decision in 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005), which held that no Lanham Act "use", and, thus, no actionable Lanham Act claim, exists for the use of a trademark in a keyword or metatag, where (a) the defendant does not place the trademark on any product, good or service, (b) it is not used in any way that would indicate source of origin, and (c) where defendant’s use of plaintiff’s trademark is strictly internal and not communicated to the public, as the use does not indicate the source or origin of the product. 
 Continue Reading “Google AdWords — Be Careful What You Bid For”