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The American Lawyer 2008 IP Finalist


Industry Expertise:

Trademark Litigation

Matters

2007

R&R Partners, Inc. and Las Vegas Convention and Visitors Authority v. Tovar and Adrenaline Sports, Inc. , (D. Nev.) The firm represents Las Vegas Convention and Visitors Authority ("LVCVA") in trademark litigation to protect the famous WHAT HAPPENS HERE STAYS HERE mark for the promotion of Las Vegas as a tourist destination. With this action, LVCVA seeks damages, injunctive relief, and cancellation of a registration of the confusingly similar WHAT HAPPENS IN VEGAS STAYS IN VEGAS mark registered by defendants. The Court granted summary judgment after finding that LVCVA's WHAT HAPPENS HERE STAYS HERE mark is a strong mark and that as a matter of law Defendants' use of the WHAT HAPPENS IN VEGAS STAYS IN VEGAS is likely to confuse consumers.

La Jolla Spa MD, Inc. v. Marie Reyes Holdings, LLC et al , (S.D. Cal.) The firm is currently representing La Jolla Spa MD in a trademark infringement action seeking to stop the defendants from using SPA MD in connection with a medical spa in Dallas, Texas. The firm filed a motion for preliminary injunction on behalf of La Jolla Spa MD, after which the defendants stopped using the SPA MD mark. The parties are currently finalizing the terms of a settlement agreement.

Autodesk, Inc. v. Open Design Alliance , (W.D. Wash.) The Firm represents Autodesk in an action for trademark infringement concerning Open Design Alliance's use of the AUTODESK trademark in mimicking Autodesk's authentication mechanism for CAD drawing files in its AutoCAD software. In November 2006, the Court granted Autodesk's motion for a temporary restraining order; preliminary injunction proceedings are pending. Open Design Alliance also has filed counterclaims.

LA Printex Industries, Inc. v. Target Corp., et al. , (C.D. Cal.) In its Complaint, LA Printex asserted that Target Corp. has sold garments made of a floral fabric that infringes LA Printex's registered trademark. The Firm represents Target Corp. in this action.

United Parcel Service of America, Inc. v. Myron MacLeod et al , (S.D. Cal.) The Firm is currently representing UPS, owner of the Mail Boxes Etc. trademark, in a domain name dispute against an infringer who registered the domain name "mailboxesetc.com."

International Consulting Services, Ltd. d/b/a Cheapticket.com v. Cheap Tickets, Inc. , (E.D.N.Y. and 2nd Cir.) The firm successfully obtained summary judgment on claims of trademark infringement and cybersquatting on behalf of Cheap Tickets, Inc., and obtained sanctions against plaintiff for destruction of documents sought in discovery. The firm also defeated summary judgment motion by plaintiff, who claimed that Cheap Tickets’ service marks were generic. After having prevailed in an appeal, Cheap Tickets is currently pursuing an accounting of profits, damages, attorneys' fees, costs and sanctions.

Marie March, dba Playtime Creations v. Target Corp., et al. , (C.D. Cal.). Marie March is the creator of a "coloring playhouse" for children. She sued Target, alleging that after Target Corp. declined to purchase her product for resale, Target Corp. later sold a similar product that infringed her trade dress. The Firm is representing Target Corp. in this matter.

2006

Mon Petit Oiseau LLC v. Birdie, LLC , (C.D. Cal. and D. Colo.) The firm defended Birdie, LLC against allegations of trademark infringement brought by Mon Petit Oiseau, LLC.

QSC Audio Products, Inc. v. BEHRINGER USA, Inc. , (C.D. Cal.) In its complaint, QSC asserted that BEHRINGER’s use of POWERLIGHT on powered lighting products infringes QSC’s registered POWERLIGHT trademark for amplifiers. The Firm defended BEHRINGER USA in this case.

A&V Denim, Inc. v. United Royal Linen , (S.D.N.Y.) A&V Denim filed a complaint alleging trademark infringement of its VIGOSS mark. The complaint claimed jurisdiction based upon United's promotion and advertisement in the district and not actual sale of goods. The Firm represented A&V Denim in this action.

Goal Financial v. Student Loan Finance Corp. , (S.D. Cal.) The Firm represented Student Loan Finance Corporation in a trademark action against a competitor that adopted a confusingly similar GOAL mark for competing products and services.

Thayer Interactive Group LLC v. PC Specialists, Inc. , (D.D.C.) Thayer Interactive Group filed a declaratory judgment action against PC Specialists, and PC Specialists filed a trademark infringement counterclaim. The Firm represented PC Specialists in this action.

Levi Strauss v. A&V Denim , (N.D. Cal.) The firm represented A&V Denim in defense of a suit for trademark infringement, trade dress infringement and unfair competition brought by Levi Strauss based on its stitching designs.

oDesk Corporation v. Brandon Lee, et al. , (C.D. Cal.) The Firm represented oDesk Corporation in an action for cybersquatting, trademark infringement, and business torts against a former business partner.

Bellagio, LLC v. Mainstream Advertising , (D. Nev.) The firm defended Mainstream Advertising in this action alleging trademark infringement and cybersquatting.

Blue Marlin Corp. v. Donna Karan International, Inc. , (N.D. Cal.) The Firm represented Blue Marlin Corp. in a trademark infringement action concerning Donna Karan International’s use of an identical five-star design trademark on apparel.