Thursday, December 19, 2013, 11:22 AM

Recent Trademark Cases Filed in Georgia

The following is a summary of recent trademark suits filed in the Georgia district courts:

The Trade Secrets of Logistics

Warehouse Solutions, Inc. ("WSI") of Rochelle Park, New Jersey, filed suit against Platinum Circle Technologies, LLC, Platinum Circle Holdings, LLC, James Hamilton, Gregory Philman, Lamar Whitley, all of Alpharetta, Georgia, and unnamed John Does 1-10 (collectively, "Defendants"), alleging misappropriation of trade secrets relating to its software for "logistically tracking millions of packages, analyzing tracking data, and providing various reports relating to lost or delayed packages and refunds owed to the customer by the carrier."  WSI claims that it has audited or provided its software and services to the largest US carriers, including FedEx, UPS, and DHL, and has consistently taken steps to protect access to its proprietary trade secrets and information.  WSI claims that some individuals that performed various sales and marketing functions for WSI absconded with the protected information, and have used the information to create a competitive program that "looks almost identical and functions almost identically to WSI's."

WSI asserts claims of misappropriation of trade secrets under O.C.G.A. § 10-1-670 et seq., false designation of origin under 15 U.S.C. § 1125(a), unjust enrichment, conversion, and other related claims, and seeks compensatory damages in excess of $5,000,000, as well as punitive damages, costs, and attorneys' fees. The case is Warehouse Solutions, Inc. v. Platinum Circle Techs. et al., No. 1:13-cv-03355-TCB (N.D. Ga. Oct. 8, 2013), and is assigned to Judge Timothy C. Batten.

Trade Dress Rights in Desktop Calendars and Planners?

International Greetings USA, Inc. d/b/a The Gift Wrap Company ("Gift Wrap") filed suit against Orange Circle Studio Corporation ("Orange Circle"), asking for a declaratory judgment that Gift Wrap does not infringe Orange Circle's trade dress under the Lanham Act.  Both companies design and manufacture, among other things, consumer goods, including calendars and planners.  Orange Circle sent a cease and desist letter to Gift Wrap alleging that Gift Wrap's "IG58265 - Planner" and "IG58266 - Desk Pad Calendar" infringes protectable trade dress of Orange Circle's "Weekly Desk Pad" and "Jotter Planner."  Gift Wrap filed this declaratory judgment action in response, asking for the Court to declare that Orange Circle does not possess any protectable trade dress rights and that there is no likelihood of confusion between Orange Circle's and Gift Wrap's calendars and planners.

The case is International Greetings USA, Inc. v. Orange Circle Studio Corp., No. 1:13-cv-03374-SCJ (N.D. Ga. Oct. 10, 2013), and is assigned to Judge Steve C. Jones.

Cybersquatting and Firearms

Mark Kresser, CEO of firearms manufacturer Taurus International Manufacturing, Inc. ("Taurus"), filed suit against Strategic Source Media, LLC and Ralph Buck, both of Alpharetta, Georgia, alleging that the Defendants had improperly obtained the domain name www.markkresser.com and used it to market to Taurus' competitors, including Glock, Inc., Smith & Wesson, and others.  The Complaint stated claims for violation of the Anti-Cybersquatting Consumer Protection Act under 15 U.S.C. § 8131, violation of Cyberpiracy Prevention under 15 U.S.C. § 1125(d), RICO violations under 18 U.S.C. § 1962(c), false designation of origin under 15 U.S.C. § 1125(a), and other related state claims.

The website in dispute is now inactive.  WhoIs.net indicates that the domain name has now been transferred to Kresser's legal counsel, so it appears that this action has been resolved, though there have been no filings since the original complaint.  The case is Kresser v. Strategic Source Media, LLC et al., No. 1:13-cv-03367-AT (N.D. Ga. Oct. 10, 2013), and is assigned to Judge Amy Totenberg.

Delta Air Lines Takes On Mail Scam Artists

You may have received a recent letter from a party holding itself out as Delta Air Lines, offering you various promotions and SkyMiles rewards offers.  The fraudulent letters, bearing Delta's trademarks and other identifying information, have been flooding US mailboxes over the past few months, as reported by various news outlets.  Delta took affirmative steps to put an end to it by filing a complaint in the Northern District of Georgia against unspecified John Does 1-50, alleging federal trademark infringement, dilution, tarnishment, unfair competition, federal and state RICO violations, and other related claims.  Delta followed up with a motion to conduct third party "John Doe" discovery, which included subpoenas to phone companies, web hosts, and locations of mail box rentals.  The Court granted this motion, and Delta commenced investigating and uncovering the identities of the individuals involved in the scheme.

On December 9, 2013, Delta filed an Ex Parte Motion to Seal (a) Plaintiff's First Amended Complaint for Injunction and Damages, and (b) Plaintiff's Ex Parte Motion for Temporary Restraining Order, Preliminary Injunction, Ex Parte Seizure Order, and Expedited Discovery and Memorandum of Fact and Law in Support Thereof.  The Court granted the motion on the same day, and Delta followed up with confidential motion papers, and a hearing has been set for today, December 19, 2013, before Judge Batten.

The case is Delta Air Lines, Inc. v. Does 1-50, No. 1:13-cv-03388-TCB (N.D. Ga. Oct. 11, 2013), and is assigned to Judge Timothy C. Batten.

Chanel Sues Georgia Company Over Counterfeit Cell Phone Covers

Chanel, Inc. of New York, New York, filed suit against Phone Fancy, LLC and Jasmine Marie Shaw, both of Atlanta, Georgia, alleging that Phone Fancy's cell phone covers incorporating one or more of Chanel's trademarks infringe Chanel's federal trademark rights.  Chanel claims that the cell phone covers are of "a quality substantially different than that of Chanel's genuine goods," and thus are also damaging Chanel's reputation among consumers.  The marks at issue are Registration Nos. 1,171,888, 1,348,842510,992, 4,074,269, and 3,890,159, which represent some of Chanel's most well-known marks (the oldest of which was registered in 1949).  Chanel's complaint includes counts for trademark infringement, counterfeiting, and dilution, and asks the Court to order immediate seizure and destruction of the allegedly infringing goods and to award damages, trebled under 15 U.S.C. § 1117(a).

The case is Chanel, Inc. v. Phone Fancy, LLC et al., No. 1:13-cv-03681-TCB (N.D. Ga. Nov. 7, 2013), and is assigned to Judge Timothy C. Batten.

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