Lerner, David, Littenberg, Krumholz & Mentlik, LLP is especially pleased that a number of our cases have resulted in reported opinions. We include below the citations of some of these cases for ready reference. If you wish to obtain copies of any of these decisions or any other cases in which our firm has been involved, please contact any of our attorneys.
U.S. PHARMACEUTICAL CORPORATION v. TRIGEN LABORATORIES, INC., 2011 WL 446148 (N.D. Ga. 2011). Our client TriGen Laboratories was sued by USPC for alleged false advertising and unfair competition in its marketing of prenatal vitamin products in competition with USPC's products. USPC moved for a preliminary injunction. The United District Court for the Northern District of Georgia heard argument, directed the taking of discovery from organizations that list pharmaceutical products, and considered full submissions from all parties.
In a comprehensive opinion issued on January 27, 2011, the Court denied an injunction against TriGen. The Court held that USPC had not established a likelihood of success on its claim that TriGen had falsely advertised or misrepresented its prenatal vitamins. In upholding the labeling of TriGen's products, the Court considered carefully the manner in which these prenatal vitamins are listed with drug databanks and made available to pharmacists for dispensing.
This comprehensive decision should be applicable to numerous other such actions which have been filed by companies challenging the marketing of products in competition with prescription drug products or pharmaceuticals.
G&W LABORATORIES, INC. v. G W PHARMA LIMITED, Opposition No. 91169571 (TTAB January 29, 2009). In a case of first impression dealing with the scope of cancellation of a trademark registration including goods on which the trademark is not used, the Trademark Trial and Appeal Board held in favor of Lerner David's client G&W Laboratories. In an opposition proceeding before the Trademark Trial and Appeal Board, against the mark "G W Pharma," G W Pharma filed a counterclaim seeking cancellation of G&W's trademark registrations alleging fraud based on a lack of use of the mark by G&W for the Class 35 services. G W Pharma sought cancellation of the entirety of G&W's registrations -- not just in Class 35, but G&W's core goods in Class 5 as well. On Lerner David's motion to dismiss this counterclaim as to our client's core goods in Class 5, the Board issued a precedential decision, holding that a multiple-class application can be viewed as a series of applications for registration. Thus, the Board found, fraud in one class can not serve to invalidate any other class in a combined application. This decision fills a void in the line of cases going to back to Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), which have applied a very strict standard of fraud based on a party's failure to use its mark on each and every one of the goods and/or services identified in its registration.
EVERETT LABORATORIES v. VERTICAL PHARMACEUTICALS, INC., 2007 WL 1700688 (3rd Cir. June 13, 2007). In January 2006, the U.S. District Court for the District of New Jersey had denied Everett's request for a preliminary injunction against our client Vertical, holding that Everett had not established a likelihood of success in demonstrating confusing similarity between Everett's mark STROVITE and Vertical's mark CORVITE. After Everett appealed, a three-judge panel of the U.S. Court of Appeals for Third Circuit affirmed the denial of the injunction. While it agreed with the district court's decision, it also suggested that the district court had not sufficiently appreciated the weakness of Everett's case. Everett subsequently agreed to dismiss the case with prejudice.
ECCE PANIS, INC. v. MAPLE LEAF FOODS USA, INC., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. Nov. 7, 2007). Plaintiff Ecce Panis, which markets "artisan" breads, brought an action against our client Maple Leaf Foods alleging trade dress infringement in connection with packaging using a European motif for a competing line of breads. After the plaintiff moved for a preliminary injunction, the court conducted a two-day evidentiary hearing and subsequently issued a decision denying the requested injunction. Noting that the plaintiff's trade dress contained functional elements, the court concluded that the plaintiff had not shown that a likelihood of confusion existed between the two competing products, based upon dissimilarities in the trade dress, the absence of intentional copying, and the failure of the plaintiff's survey to demonstrate actual confusion.
MEDI-FLEX, INC. v. NICE-PAK PRODUCTS, INC., No. 06-2015, 422 F. Supp. 2d 1242 (D. Kan. April 7, 2006). Our client Nice-Pak launched a line of antiseptic skin preparation products under the trademark CHLORASCRUB. It was sued for trademark infringement in federal court in Kansas City, Kansas, by Medi-Flex, a competitor which had used and federally registered the mark CHLORAPREP. After Medi-Flex moved for a preliminary injunction, we successfully convinced the court to deny the injunction. This ruling was based in part on the fact that at the time Medi-Flex searched, cleared, and registered CHLORAPREP, there was a preexisting registration owned by our client for CHLORASCRUB, which was subsequently abandoned. In addition, at our urging, Medi-Flex waived its attorney-client privilege and produced an opinion letter from its trademark counsel which was relied upon by the district court to concluded that "CHLORA-" was a weak, descriptive term such that others could adopt marks with a similar prefix.
COMMERCE BANCORP, INC. v. BANKATLANTIC, 285 F. Supp. 2d 475 (D.N.J. 2003). Our client BankAtlantic, which was based in Florida, used the slogan FLORIDA'S MOST CONVENIENT BANK. It was sued by Commerce Bancorp claiming trademark infringement and unfair competition based upon Commerce's alleged rights in AMERICA'S MOST CONVENIENT BANK. Commerce initially sought a preliminary injunction. On behalf of BankAtlantic, we opposed the preliminary injunction and moved for summary judgment. Commerce voluntarily withdrew its motion for a preliminary injunction, and thereafter the court granted our motion for summary judgment. The court concluded that AMERICA'S MOST CONVENIENT BANK had not acquired secondary meaning in Florida at the time our client began using the accused slogan. The court also concluded that Commerce could not establish a likelihood of confusion, based in large part on the geographic separation between the parties. The court also agreed with our contention that Commerce could not establish that Florida was a "zone of natural expansion."
THOMAS & BETTS CORP. v. PANDUIT CORP., 138 F.3d 277 (7th Cir.), cert. denied, 525 U.S. 929 (1998). Our client Thomas & Betts filed suit under the Lanham Act claiming trade dress rights in the oval shape of the head of a cable tie which our client had sold continuously since 1962. The district court had granted summary judgment against our client on several grounds, one of which was that our client's expired patent provided a complete and separate defense to our client's claim. The Seventh Circuit reversed the district court's decision in all respects, holding that the proper role of our client's expired patent was as non dispositive evidence of functionality. The case was thereafter settled shortly before trial.
PROJECT STRATEGIES CORP. v. NATIONAL COMMUNICATIONS CORP., 38 U.S.P.Q.2d 1053 (E.D.N.Y. 1995); 948 F. Supp. 218 (E.D.N.Y. 1996); and 42 U.S.P.Q.2d 1156 (E.D.N.Y. 1997). The packaging for our client's product included the slogan AS SEEN ON TV, in light of our client's extensive television advertising. The defendant started to market a similar product and also used the slogan AS SEEN ON TV, even though defendant had never actually advertised on television. After the district court preliminarily enjoined the defendant from doing so, the defendant violated the injunction and advertised its product in a television commercial, so that it could then argue that its use of AS SEEN ON TV was no longer false. The court refused to vacate the injunction and refused to consider the defendant's belated advertising as a justification for its false representation, since the advertising was done in violation of a court order. Following a trial, the court awarded a permanent injunction, damages measured by defendant's sales less cost of goods and our client's attorneys' fees.
LEEJAY, INC. v. BED BATH & BEYOND INC., 40 U.S.P.Q.2d 1209 (D. Mass. 1996). Our client had used the mark BED BATH & BEYOND for its rapidly expanding chain of stores. When entering the New England market, our client used the name BB & BEYOND: Bed Bath & Housewares. The company which operated a chain of competing stores in New England under the name "Bed & Bath" filed suit and moved for a preliminary injunction. We defeated the motion for preliminary injunction by challenging the plaintiff's alleged trademark "Bed & Bath." The basis for the denial of the preliminary injunction was so strong that our client was able to settle the action and obtain a consent judgment in favor of its counterclaim by which it was allowed to use its mark BED BATH & BEYOND on stores in New England.
IN RE POLK'S MODEL CRAFT HOBBIES, INC., 40 U.S.P.Q.2d 1711 (Bankr. D.N.J. 1995). Polk's Model Craft Hobbies, a producer of large scale model railroad equipment, had been put into bankruptcy by a claim for more than $30,000,000 from a competitor for alleged infringement of trade dress in model train track and for tortious interference with contractual relations. When the Court scheduled an evidentiary hearing to estimate the claim, our firm was called in to take over the case for discovery and a two week hearing. As a result of our efforts, the Court estimated the claim against our client to be worth "zero," finding that the competitor had no trade dress rights in its model train track and our client had not tortiously interfered.
PAF S.r.l. v. LISA LIGHTING CO., LTD., 712 F. Supp. 394 (S.D.N.Y. 1989). In this case, our Italian client's distinctive DOVE lamp was being copied in this country. Within three months of filing an action, we completed a trial on the merits and obtained a permanent injunction against copying of the trade dress of our client's lamp, as well as an award of the copier's profits and recovery of attorneys' fees and costs. The foreign producer of the copies persisted by making some changes to the design of its lamp and marketing its new version in this country. In LON TAI SHING v. PAF S.r.l., 19 U.S.P.Q.2d 1081 (S.D.N.Y. 1990), we obtained a preliminary injunction against the importation or distribution of the new version in this country. In the trial against the new version, LON TAI SHING CO. v. KOCH + LOWY, 21 U.S.P.Q.2d 1858 (S.D.N.Y. 1992), we obtained a permanent injunction and an order requiring the delivery up for destruction of all infringing lamps. We also obtained for our client an accounting of the copier's profits and a recovery of attorneys' fees and costs on a successful motion for reconsideration of damages after trial. LON TAI SHING CO. LTD. v. KOCH + LOWY, 25 U.S.P.Q.2d 1375 (S.D.N.Y. 1992).
SPECIALTY MEASUREMENTS, INC. v. MEASUREMENT SYSTEMS, INC., 763 F. Supp. 91 (D.N.J. 1991). A former employee of our client (a manufacturer of transducers) had started a competing business having initials (MSI) which were a mere transposition of our client's initials (SMI). Although our client did not have a federal registration for its mark, we obtained a preliminary injunction and partial summary judgment on its behalf.
APOLLO DISTRIBUTING CO. v. JERRY KURTZ CARPET CO., 696 F. Supp. 140 (D.N.J. 1988). Our client, a wholesale carpet distributor operating under the federally registered mark APOLLO, was able to obtain summary judgment against Aladdin Carpet Mills and one of its distributors, which were using APOLLO as a name for one of their carpets. This victory was facilitated by the fact that several years earlier, we had successfully asserted our client's APOLLO mark against a different infringer, also obtaining summary judgment. APOLLO DISTRIBUTING CO. v. APOLLO IMPORTS, INC., 341 F. Supp. 455 (S.D.N.Y. 1972).
TRANSFER PRINT FOILS, INC. v. TRANSFER PRINT AMERICA, INC., 720 F. Supp. 425 (D.N.J. 1989). We were asked by the plaintiff in this case to assume responsibility nine months after the case had been filed, with little having transpired in the litigation. Our client's unregistered mark, TRANSFER PRINT, was subject to a vigorous attack by the defendant, which moved for summary judgment contending that the mark was generic. We defeated the motion for summary judgment and actually obtained a preliminary injunction on behalf of our client. The case was settled immediately thereafter, with the defendant changing its name.
TREE TAVERN PRODUCTS v. CONAGRA, INC., 640 F. Supp. 1263 (D. Del. 1986). Our client was a small New Jersey vendor of SIDE DISH frozen prepared potatoes. The District Court held that our client was entitled to a preliminary injunction against the nation's largest frozen food vendor, which was attempting to sell packaged frozen potatoes under the mark SIDE DISH FOR ONE.
THE MONEY STORE v. HARRISCORP FINANCE, INC., 689 F.2d 666 (7th Cir. 1982). In this case, the Court of Appeals upheld the validity of the federal registration for THE MONEY STORE owned by our client, the prominent mortgage lender.
FITZGERALD v. J.R. CHICKEN & RIBS, INC., 11 U.S.P.Q. 1384 (D.N.J. 1989). In a dispute over the use of the mark CHICKEN HOLIDAY, our client was brought in as a defendant through an amended complaint. We made a motion on behalf of our client to dismiss the entire case for lack of federal jurisdiction, and the motion was granted.
AGA AKTIEBOLAG ET AL. v. ABA OPTICAL CORPORATION, 441 F. Supp. 747 (E.D.N.Y. 1977). Our client, a Swedish corporation, obtained an injunction and attorneys' fees against an employee for violating his fiduciary duty in competing unlawfully with his employer, and for violating the trademark rights of our client in the mark AGA by use of the term ABA.
LOUIS RICH, INC. v. HORACE W. LONGACRE, INC., 423 F. Supp. 1327 (E.D. Pa. 1976). Our client owned the registered trademark GOBBLE GOBBLE for processed turkey products. We obtained for our client a preliminary injunction against the defendant's use of "GOBBLE GOBBLE" in television and radio commercials.
Although our activities regarding seizure of counterfeit goods have never resulted in a reported decision, we have been extremely successful in such activities. Our activities have not only resulted in closing down counterfeit manufacturing activities and seizure of large numbers of counterfeit goods and components therefor, we are pleased that we also have been able to obtain sizable cash settlements for our
clients in these matters. We believe our success in counterfeit cases is due to our approach which emphasizes careful investigation before going to court to obtain seizure orders. The results of our investigations have frequently led us to the source of counterfeit goods, rather than merely seizing goods from a single retail outlet. A recent, successful example is:
PAUL SEBASTIAN, INC. v. JOHN DOES, ET AL. Through a combination of careful, nationwide investigation of counterfeiting activities and coordinated seizure activities, we were able to uncover the manufacturing source for the goods being counterfeited (principally men's cologne), as well as the suppliers of the components used in manufacture of the counterfeit goods. In addition to putting an end to this activity, we were able to obtain the cooperation of "middle men" to testify against the manufacturers and suppliers, and we were able to obtain a significant cash settlement for our client, which more than covered their legal fees.
