RECENT CASES

    Baker and Rannells represents its clients in various types of litigation before Federal and State Courts and before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO). Below is a summary of some recent cases.

    FEDERAL COURTS

    Nautica Apparel, Inc. v. Quoizel, Inc. and Capitol Lighting Executive Management Corporation d/b/a www.1800lighting.com (DCNJ 2006). Commenced an action on behalf of Nautica to enforce the famous Nautica trademarks.

    Charles Komar & Sons, Inc. v. Dollar General Corporation (SDNY 2005). Commenced an action on behalf of Komar, a leading women’s sleepwear manufacturer, to enforce Komar’s registered copyrighted designs.

    Charles Komar & Sons, Inc. v. A&E Stores, Inc. (DCNJ 2005). Brought an action on behalf of Komar, a leading women’s sleepwear manufacturer, to enforce Komar’s registered copyrighted designs.

    Charles Komar & Sons, Inc. v. Family Dollar Stores, Inc. (DCNJ 2005). Represented Komar, a leading women’s sleepwear manufacturer, in an action to enforce Komar’s registered copyrighted designs.

    Star Creations, Inc. d/b/a ajmadison.com v. Skynet Communications, Corp. d/b/a lizmadison.com and Allen Benz (EDNY 2005). Brought an action on behalf of Star to enforce its MADISON and AJ MADISON trademarks. The case settled on favorable terms and a permanent injunction was issued by the Court to protect Star’s trademarks.

    Car Cash of New York, Inc. v. Fast Cash for Cars, Inc. (DCNJ 2005). Defended Fast Cash for Cars in an action brought by Car Cash of New York alleging trademark infringement, dilution, unfair competition and injury to business reputation arising from the use of certain keyword advertising on the internet. The case settled on confidential terms shortly after Fast Cash for Cars answered and counterclaimed.

    Coast Internet Solutions, Inc. v. Fastservers, Inc. (DCNJ 2005). Brought a declaratory judgment action on behalf of Coast Internet Solutions seeking a declaration of non-infringement of certain of Fastserver’s trademarks. The case settled on favorable terms.

    Mira Foods v. Nile Importing (D.C.N.J. 2003) – brought a federal trade dress infringement case against Nile Importing, a juice company, alleging infringement of Mira Foods’ trade dress packaging design. The District Court issued a permanent injunction against Nira Importing and the case settled on favorable terms.

    TRADEMARK TRIAL AND APPEAL BOARD

    World Confections, Inc. v. Kencraft, Inc. (Mark: ALPINE CONFECTIONS)
    01/25/2006 Opposition No. 91/158237
    Opposition granted on summary judgment motion on basis of priority and
    likelihood of confusion.
    http://ttabvue.uspto.gov/ttabvue/v?pno=91158237&pty=OPP&eno=28

    Drown Corp. v. Premier Wine & Spirits, Inc.,
    02/13/2006 National Arbitration Forum Decision #616805.
    Successful in obtaining transfer of domain name, premierwine.com, to client
    on basis of client's superior and valid rights, likelihood of confusion with
    client's family of PREMIER marks, and bad faith of domain registrant.
    http://www.arb-forum.com/domains/decisions/616805.htm

    Simi Winery, Inc / Franciscan Vineyards, Inc. v. Mr. Container / Simi Global, Inc.     09/09/2005 Cancellation No. 92/031424
    Successful in obtaining cancellation of registration for mark SIMI in stylized form for a variety of food products and condiments on basis of likelihood of confusion with client’s mark SIMI for wine.

    Ravenswood Winery Inc. v. DuClaw Brewery LLC
    04/29/2005 Opposition No. 91/155312
    Successfully opposed application for RAVENWOOD for beer, ale and porter filed on bases of likelihood of confusion with client’s mark RAVENSWOOD for wines and dilution of client’s famous mark. Application withdrawn; judgment for client.

    Instituto Do Vinho Da Madeira (Official Agency of the Regional Government of Madeira, Portugal) v. Constellation Brands, Inc.
    01/25/2005 Opposition No. 91/158791
    Successfully defended opposition to client’s application for ARBOR VALLEY AMERICAN MADEIRA for wine against likelihood of confusion claim asserted by owner of certification mark for “MADEIRA” for wine from autonomous region of Madeira, Portugal. Opposition dismissed and registration issued to client.

    Angels Baseball, LP v. Charles Komar & Sons, Inc. (TTAB 2005). Defended Komar in an opposition proceeding involving its trademark application for ANGEL BOTTOMS. The case settled on favorable terms and the opposition was dismissed with prejudice.

    Royal Wine Corporation v. Herzog Wine Collection Ltd. (TTAB 2005). Commenced an opposition proceeding on behalf of Royal Wine to enforce Royal’s HERZOG trademarks on wine. The opposition was sustained and registration to the applicant was refused.

    Retail Brand Alliance v. Oxford Industries, Inc. (TTAB 2005). Commenced an opposition proceeding on behalf of Retail Brand Alliance (the owner of the BROOKS BROTHERS trademarks) to prevent the application for BROOKISLE from proceeding to registration. The opposition was sustained and the applicant withdrew its trademark application with prejudice.

    Candela NYC, LLC v. Hazel Fraser (TTAB 2005). Commenced an opposition proceeding on behalf of Candela to enforce its CANDELA trademark. The opposition was sustained and the applicant withdrew its trademark application with prejudice.

    Nautica Apparel, Inc. v. Michael H. Valentine
    08/06/2004 Opposition No. 91/159247
    Successfully opposed application for NAUTI-CREW in class 25 based upon client’s rights in mark NAUTICA for clothing and retail clothing store services; Judgment for client.

    Goya Foods, Inc. v. First Grade Agency (Cancellation No. 92044726) – commenced litigation on behalf of Goya Foods to cancel a trademark which is confusingly similar to a mark owned and used by Goya.

    Pan American Grain Manufacturing Co. v. Goya Foods, Inc. (Cancellation No. 92044086) – defend Goya Foods against an attack on one of their trademark registrations.
    Goya Foods, Inc. v. Korea Yakult Co., Ltd. (Opposition No. 91167752) - commenced litigation on behalf of Goya Foods to prevent the registration of the trademark KOYA, which is confusingly similar to the famous mark GOYA.

    Nautica Apparel, Inc. v. St. Maarten 12 Metre Enterprises N.V. (Opposition No. 91167747) – brought an opposition proceeding on behalf of Nautica to prevent registration of a sail design trademark that is confusingly similar to our client’s famous design.

    Zabar’s v. Zabas (Opposition No. 91163191) – brought an opposition proceeding on behalf of world-famous gourmet food store Zabar’s, to prevent registration of the confusingly similar trademarks ZABA’S.

    Bully Hill Vineyards v. Harvey Fresh Ltd. (Opposition No. 91161853) – brought an opposition proceeding on behalf of Bully Hill, a prominent New York winery, to prevent registration of a trademark that is confusingly similar to our client’s.

    Bully Hill Vineyards v. A Donkey and Goat LLC (Cancellation No. 91167963) - brought an opposition proceeding on behalf of Bully Hill to prevent registration of a trademark that is confusingly similar to our client’s.

    Diamond Tours v. AAA Mid Atlantic (Cancellation No. 92044423) – commenced both an opposition and cancellation proceeding (which have since been consolidated) against AAA, to prevent and cancel the registrations of confusingly similar AAA trademarks.

    Diamond Tours v. MVI Marketing, Inc. (Cancellation No. 92045298) – brought a cancellation proceeding on behalf of Diamond Tours to revoke trademark registrations for the marks DIAMOND ESCAPES.

    Wet Willies Inc. v. The Pale LLC d/b/a Buskers (Opposition No. 91165639) – commenced litigation on behalf of Wet Willie’s to prevent registration of a trademark for a bar and grill that is confusingly similar to our client’s.

    Harry Forman v. QVC (Cancellation No. 92043305) – prosecuted a cancellation proceeding against QVC to cancel their confusingly similar trademarks M MEDALLION. The case settled on favorable terms, and QVC limited its trademark registration to avoid conflict with our client’s mark.

    Harry Forman v. Kids International (Cancellation No. 92044325) – brought a cancellation proceeding against Kids Int’l to cancel their confusingly similar trademark BLUE MEDALLION.

    TTN Apparel Prts. LLC v. Key Industries, Inc. (Cancellation No. 92045267) – brought cancellation proceeding on behalf of TTN Apparel to cancel the 50-plus year old trademarks TUF NUT, based on abandonment.

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