Trademark & Brand Protection Litigation

At Knobbe Martens, trademark litigation is our trademark. Given the firm’s breadth of experience and broad range of success, we are consistently recognized in all aspects of federal and state trademark litigation. Our litigators advocate clients’ rights from initial complaint through appeal, including claims of counterfeiting, trademark infringement, trade dress infringement, false advertising, unfair competition, rights of publicity, domain name disputes, and other related state law claims.

We have successfully represented both plaintiffs and defendants alike in U.S. district courts nationwide, and before the USPTO Trademark Trial and Appeal Board (TTAB) and Federal Circuit. We also advise clients on proceedings involving false and misleading advertising claims before the Better Business Bureau National Advertising Division (NAD) and the FTC. Where appropriate, we position cases for settlement and guide our clients through successful mediation.

Notably, our firm offers collective expertise across a wide range of industries. This experience includes consumer products such as sports and clothing, dolls and toys, food and beverages; financial and insurance services; and high tech including semiconductor chips, medical devices, automobiles, software and hardware, and cleantech.

 

Successes

Monster Energy Company v. Integrated Supply Network LLC

Obtained a $5 million jury verdict in favor of our client Monster Energy. The Los Angeles jury found that Integrated Supply Network infringed Monster Energy’s trademarks and trade dress and awarded punitive damages.

mophie Inc. v. Dharmesh Shah et al.

Obtained a jury verdict and a final judgment including a permanent injunction and damages of $4.5 million against Serve Global d/b/a SourceVista.com and Dharmesh Shah. At trial, mophie asserted copyright, trade dress and trademark infringement arising from the sale of counterfeit battery cases. The jury awarded damages for copyright infringement of mophie's packaging and user manual and infringement of mophie's juice pack plus® trademark. The jury also found mophie's juice pack® and juice pack pro® trademarks, as well as trade dress, in its packaging were infringed, while additionally finding for mophie on its claim of unfair competition. Moreover, the jury found that the defendants’ trademark infringement was willful.

Rolex Watch USA, Inc. v. Agarwal

Sued Melrose.com LLC, a Los Angeles-based e-retailer, and its founder and owner, Krishnan Agarwal, for trademark counterfeiting and trademark infringement on behalf of Rolex. The court permanently enjoined the defendants from all counterfeiting and infringing activities, and also ordered the defendants to permanently take down the Melrose.com website, to transfer the domain name Melrose.com to Rolex, and to deliver to Rolex all watch heads bearing its trademark. We also convinced the court to award Rolex $8.5 million in damages.

Kabushiki Kaisha MegaHouse v. Anjar Co. LLC

Successfully represented MegaHouse Corp., a Japanese toy company and subsidiary of Bandai Co., Ltd., in trademark and copyright litigation regarding the famous game Othello®. As a result, MegaHouse is now the undisputed owner and licensor of the Othello® trademark and related intellectual property. MegaHouse and its predecessors had been involved in disputes regarding the intellectual property rights in Othello® for more than a decade. The firm filed a federal lawsuit in the Central District of California, and defeated the defendants’ motion to dismiss. The litigation was eventually resolved through settlement, and MegaHouse was very pleased with the resolution. The firm’s efforts helped to clarify the rights and obligations of Othello® licensees and distributors throughout the world and bring certainty to Othello® enthusiasts in time for the 2015 World Othello Championship in Cambridge, U.K.

Hansen Beverage Company v. Cytosport Inc.

Represented the owner of the MONSTER ENERGY trademark in trademark infringement, unfair competition and false advertising litigation against a defendant protein beverage manufacturer using the MONSTER MILK mark. We obtained a preliminary injunction for the plaintiff, and the case settled favorably on eve of trial.

Ford Motor Co., Carroll Shelby et al v. Superformance International Replicars, Inc.

Represented the defendant in obtaining a summary judgment dismissing Carroll Shelby’s claims to trade dress rights in the shape of a Cobra vehicle.

Automobile Club of Southern California v. The Auto Club, Ltd.

Represented the plaintiff in defeating a summary judgment motion claiming invalidity and non-infringement of the AUTO CLUB trademark.

Montano v. Eagle III Diversified, Inc.

Successfully defended a manufacturer of after-market automotive accessory parts against a charge that it had engaged in unfair competition through the alleged copying of an unpatented automotive accessory part. Defeated an application for a temporary restraining order and a motion for preliminary injunction. The plaintiff voluntarily dismissed the case with prejudice following denial of the preliminary injunction.

Express, LLC v. Fetish Group, Inc.

Obtained summary judgment of copyright infringement of the defendant’s lace and embroidery design on clothing and summary judgment dismissing the plaintiff’s fraud and unfair competition claims. The case settled on the eve of trial.

SuperShuttle International, Inc. v. Schafer-Schonewill & Associates, Inc.

Represented SuperShuttle, a well-known provider of airport van services against a competitor that began using the trademark “SuperShuttle Express.” We obtained a preliminary injunction against the use of the SuperShuttle Express trademark. When the defendant switched to the trademark “Super Express Shuttle,” we obtained a judgment of contempt.

99¢ Only Stores v. 99¢ Plus Discount Store

Obtained a judgment against the defendant for trademark infringement and unfair competition for operating a discount retail store using a confusingly similar trademark. After obtaining the judgment, we initiated contempt proceedings for the defendant’s failure to comply with the injunction, which resulted in a favorable settlement, including payment of monetary damages.

Mattel, Inc. v. Simba Toys GmbH & Co. KG et al.

Represented the defendant in a copyright and trade dress infringement suit involving dolls and resulting in a mediated settlement.

Ford Motor Co. v. Ultra Coachbuilders Inc.

Represented the defendant in defeating Ford Motor Co.’s motion for preliminary injunction against a limousine manufacturer’s retention of Ford emblems on converted automobiles. The case was upheld on appeal by the Ninth Circuit.

Dogloo, Inc. v. Dosckocil Mfg. Co., Inc.

Represented the plaintiff in obtaining a preliminary injunction enforcing trade dress rights in the shape of a dog kennel.

Essie Cosmetics, Inc. v . Dae Do International, Ltd. et al.

Represented the plaintiff in obtaining a preliminary injunction enforcing trade dress rights in the shape of a nail polish bottle.

M’Otto Enterprises, Inc. v. Redsand, Inc.

Represented a professional volleyball player and clothing manufacturer against a competing clothing manufacturer. Our client marketed his clothing under a trademark that was a stylized version of his own face, emphasizing his distinctive hairstyle. The competitor marketed its clothing using a cartoon logo having a similar hairstyle. We obtained a judgment after trial that the competitor had infringed our client’s trademark rights, and enjoining further use of the competitor’s logo.

Kyjen, Inc. v. Vo-Toys, Inc.

Represented the plaintiff, a manufacturer and distributor of stuffed animal toys, and obtained summary judgment of copyright infringement and validity, and trademark infringement and validity.

Terri Lee Associates et al. v. Doll City, USA

Represented the plaintiff in a trademark and rights of publicity case involving collectible dolls. The case was resolved through a mediated settlement after the issuance of a preliminary injunction in the plaintiff's favor.

Partners in Leadership, Inc. v. Questmark, LLC. et al.

Obtained a consent injunction in a trademark infringement suit involving leadership consulting training materials.

Investigations at the International Trade Commission (“ITC”) often involve intellectual property disputes that may also be the subject of parallel litigation in district court. This parallel litigation is often stayed pending completion of the ITC investigation.
Knobbe Martens is pleased to report that 14 partners appear in the 2020 edition of The Best Lawyers in America® . Inclusion is determined entirely through peer review evaluations from other leading...
What do UPS and TAPATIO hot sauce have in common? Based on recent California Court filings, both companies are serious about protecting their trademarks from infringement by entities in the cannabis space.