CrossFit Inc. Takes Progenex to Court

CrossFit Inc. filed a lawsuit against Progenex, a supplement company and former CrossFit Games sponsor, the Morning Chalk Up has learned.
The lawsuit, which was filed on Friday with the U.S. District Court Southern District of California, alleges trademark infringement and that Progenex is misleading consumers in marketing materials of their association with CrossFit. Additionally, the suit claims that Progenex and its entities – which include websites and publications based outside the U.S. – are in breach of contract pertaining to their previous settlement agreement and have knowingly infringed on CrossFit Inc.’s trademark in its branding and “directed others to use CrossFit, Inc.’s trademarks in marketing activities.”

“Progenex is not a sponsor of the CrossFit Games. CrossFit does not endorse their products. They have no right to use our trademark,” said Jeff Cain, CrossFit’s CEO. “We object to the implied endorsement they are making, especially regarding their supplements.”
Some specific examples listed in the press release of the trademark infringement include the CrossFit trademark being prominently displayed on Progenex websites, and the publication of posters bearing the CrossFit trademark.

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Penfolds tastes success against a blatant trade mark infringer and wine counterfeiter.

Australia Rush Rich Winery Pty Ltd, a one-man band with paid up capital of $100, apparently thought it was a good idea to put cheap wine into bottles, include on the labels Penfolds English language and Chinese character trade marks and sell the wine, especially in China. An associate company, Eastern Tomorrow (Jinjiang) Import & Export Co., Ltd thought it was a good idea to apply to register in Australia, Chinese character trade marks that infringed Penfolds’ Chinese character trade marks.

The Federal Court of Australia has ordered summary judgment in favour of TWE’s subsidiary, Southcorp Brands in the sum of $352k and $23k in interest plus legal costs. The court also ordered Eastern Tomorrow (Jinjiang) to withdraw its trade mark applications. The court injuncted the Rush Rich parties from using Penfolds Chinese character trade marks or other trade marks substantially identical with or deceptively similar to those Chinese character trade marks, the Penfolds trade mark or Southcorp’s Ben Fu trade mark in relation to wine. The Penfolds Ben Fu trade mark means “chasing prosperity”. One might think that “Rush Rich” was intended to have a deceptively similar meaning.

TWE had also brought an unfair competition claim against Rush Rich in China. Rush Rich had claimed that it was “the largest and most famous winery in Australia” and “the symbol of Australian wine”. It was no surprise then that the week before the Federal Court judgment, the Shanghai Pudong Court found those statements to be false and misleading. The court ordered Rush Rich to pay $426k in compensation to TWE. The court also ordered Rush Rich to publish an apology on its WeChat account and in the China Wine magazine.

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Sportscaster Dave Johnson Files His 3rd Lawsuit In A Year Over Horse Racing Phrase

Sportscaster Dave Johnson, publicly known for his “And down the stretch they come!” phrase, is on a lawsuit filing rampage. The most recent Complaint that Johnson has filed is against Amazon for its alleged sale of a t-shirt displaying an image of a jockey riding a thoroughbred horse with the caption, “DOWN THE STRETCH THEY COME”.
It is the third lawsuit that Johnson has filed in roughly a year. Johnson may have an uphill battle against Amazon when it comes to a claim of trademark infringement. It does not appear that Amazon was the creator or vendor for the t-shirt at issue, but merely a third party service provider serving as a conduit for the sale of the t-shirt to consumers. As such, it is impossible for a company like Amazon to patrol and control the sale of every item on its platform; it needs to be informed of the infringement and given an opportunity to inspect before, potentially, taking down the infringing content.

In August 2018, Johnson sued video game developers Tilting Point Media, LLC and Third Time, Inc. for a violation of his publicity rights. He claimed that they improperly used his publicity rights to advertise their video game, “Horce Racing Manager 2018.”
In March 2019, Johnson fired off another lawsuit. This time, he sued a variety of defendants, including The Weinstein Company, for using his trademarked phrase, which he said has been exploited for commercial gain for decades without his consent. Some of that commercial gain allegedly came from selling merchandise that bears his trademarked signature phrase that is once again at issue in the most recent lawsuit initiated by Johnson.
Johnson’s most recently filed lawsuit was processed on April 30 in the Southern District of New York. Amazon has yet to formally respond to the Complaint.

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TutorABC wins appeal of name trademark lawsuit

The Intellectual Property Court ordered AMC Language School to pay TutorABC NT$3 million (US$97,072) in damages for trademark infringement in the second round of a lawsuit between the English-language schools.

AMC founder Peter Hsu appealed that ruling, saying that “tutor” and “ABC” are generic terms in common use, citing other nations, such as China, that do not allow the word “tutor” to be trademarked.
TutorABC in 2012 sued more than 10 English-language schools and online teaching services claiming trademark infringement on the commercial use of “tutor” and “ABC.”
The company said it had trademarked the name “TutorABC” in 2007 with the Intellectual Property Office.

“TutorABC” has become a “well-known trademark,” it said, calling the use of similar terms such as “tutor” and “ABC” by other companies commercial theft, resulting in customer confusion and financial damages in contravention of the Trademark Act and Fair Trade Act.
Among those named in the lawsuit were AMC with its Tutor4U trademark and www.tutor4u.com.tw Web site; Wells English with its TutorWell name and www.tutorwell.com.tw site; and Dr MVP with its TutorMVP service.

Hsu disagreed with both rulings on the grounds that common words cannot be trademarked, citing as an example the fact that the phrase “convenience store” is used commercially by all the leading convenience store chains in Taiwan.

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Apple loses another legal battle with Swatch, this time over ‘one more thing’ trademark

Apple has lost another legal battle with Swiss watchmaker Swatch. As reported by The Sydney Morning Herald, Apple has failed in its quest to stop Swatch from using the phrase “one more thing” in Australia.
Apple had argued with the Australian Trade Marks Office that Swatch should not be allowed to use the “one more thing” phrase as it was synonymous with Steve Jobs. Jobs, of course, used it regularly during Apple Keynotes while Tim Cook has also used it. Apple said that Swatch should not be allowed to use its trademark over the phrase, and instead applied for its own trademark. Swatch, however, said that it used the “one more thing” phrase to launch a “film noir inspired set” of watches. It said that its use of the phrase was inspired by the TV detective “Columbo,” who often said “just one more thing.”

Ultimately, hearing officer Adrian Richards sided with Swatch, and ordered Apple to pay the watchmaker’s legal fees. Richards explained that Apple had never used the “one more thing” phrase in conjunction with any “particular” goods or services.

This ruling in Australia comes after Apple lost a similar legal battle with Swatch in Switzerland. That case was over Swatch’s use of the phrase “Tick different” while promoting its new NFC-enabled watch. Apple argued that the phrase unfairly traded on its “Think Different” slogan. A Swiss court, however, sided with Swatch on the issue.
Despite its failed legal battles with Swatch, Apple continues to win in other ways over the Swiss watch market. Apple now sells more watches than the entire Swiss watch industry, and wearables growth is expected to continue at a double-digit pace.

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ittyhawk v. Kitty Hawk? High-Flying Tech Companies Collide Over Historic Name

San Francisco-based startup Kittyhawk.io Inc., which sells software to program and control drone flight, has filed a trademark lawsuit against Kitty Hawk Corp., a flying car start-up based in Mountain View backed by Alphabet CEO Larry Page.

The lawsuit claims that Kitty Hawk Corp. changed its name from Zee.Aero Inc. in October 2017 and that it had “actual and constructive” knowledge of Kittyhawk.io’s prior use of the mark.

“Defendant’s trade name and mark is identical to Kittyhawk’s aurally, and the only visual difference in the two names is a space between the words ‘Kitty’ and ‘hawk,’ although defendant at times does not include the space between the two words,” the drone company’s Winston & Strawn lawyers wrote. The company is asking for unspecified damages and for Kitty Hawk to be barred from using the name on confusingly similarly products.

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