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Georgia IP Litigation: May 2014

BLOGS: Georgia IP Litigation

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Thursday, May 29, 2014, 11:55 AM

Insufficient Evidence of Substantial Revenue Derived in Georgia to Support Camouflage Copyright Infringement Claim

As previously reported here, Jordan Outdoor Enterprises, Ltd. (“Jordan”), asserted copyright infringement and unfair competition against Hubei Wild Trees Textiles Co., LTD. (“Wild Trees”) relating to camouflage patterns, seeking further to cancel a federal copyright registration.  Wild Trees sought to dismiss the action for lack of personal jurisdiction.

Judge Clay Land of the Middle District of Georgia granted Wild Trees’ motion (order here), further holding that its alternative motion for partial summary judgment was moot.  The Court first traced the shifting of the burden from the plaintiff to the defendant and then back to the plaintiff, citing Diamond Crystal Brands, Inc. v. Food Movers Int’l, Inc., 593 F.3d 1249, 1257 (11th Cir. 2010).  The Court further noted that where conflicts in the evidence existed, “’the court must construe all reasonable inferences in favor of the plaintiff.’ Meier ex rel. Meier v. Sun Int’l Hotels, Ltd., 288 F.3d 1264, 1269 (11th Cir. 2002).”

Judge Land noted that Wild Trees’ only place of business is in Hubei, China, and the company “has never sold or shipped any goods to Georgia, registered to conduct business in Georgia, or had an agent for service in Georgia.”  In addition, Wild Trees has had no employees, property or business in Georgia, nor advertised or negotiated any deals in the state.  Wild Trees does have a website accessible to anyone and has obtained 9 U.S. copyrights for camouflage patterns (which Jordan alleged infringe Jordan patterns).  The only Wild Trees sales of goods in the United States has been to Wildfowler Outfitter, Inc., in Minnesota.  The Court noted that “Wildfowler sells and ships these products throughout the United States, including Georgia.”

In reaching his conclusion that dismissal was appropriate, Judge Land noted there is a two-step inquiry.  To be subject to personal jurisdiction, Wild Trees must fall under Georgia’s long-arm statute and the exercise of jurisdiction must comport with the U.S. Constitution’s Due Process Clause.  Diamond Crystal, 593 F.3d at 1257.  The Court first concluded that there was insufficient evidence to infer that the substantial revenue required by subsection 3 of Georgia’s long-arm statute had been met.  Therefore, it was unnecessary to consider the second step.  Motion dismissed.

Jordan Outdoor Enterprises, Ltd. v. Hubei Wild Trees Textiles Co., LTD., 4:12-CV-297, Dkt. No. 44 (M.D. Ga. April 9, 2014) (Judge Clay D. Land).

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Wednesday, May 21, 2014, 2:36 PM

Masterbuilt Raises Heat on Sportsman's Turkey Fryer and Electric Smoker Products

On May 6, 2014, Masterbuilt Manufacturing, Inc. (“Masterbuilt”), a Georgia corporation, filed a complaint in the Middle District of Georgia alleging trademark infringement, design and utility patent infringement, and deceptive trade practices against The Sportsman’s Guild, Inc. (“Sportsman”), a Minnesota corporation.

Masterbuilt asserts ownership of U.S. Trademark Registration Number 2,812,208 for “Hitch Haul,” which was assigned Serial Number 76511619 and published for opposition on November 18, 2003.  Sportsman is alleged to be using “Hitch Haul” for the same goods as Masterbuilt – “namely a detachable hitch-mounted metal storage and carrying rack.”  Materbuilt sent Sportsman a letter on March 20, 2012, “expressing concern about potential infringement.”

Masterbuilt further claims ownership of U.S. Patent No. D615,798 (the ‘798 Patent), a design patent relating to an ornamental design for an electric smoker.  The ‘798 Patent issued on May 18, 2010.  Figure 1 from the ‘798 Patent is depicted below to the right of the accused Sportsman smoker design:

Masterbuilt also asserts that Sportsman has infringed its utility patent, U.S. Patent Number 7,703,389 (the ‘389 Patent), which issued on April 27, 2010.  Specifically, Masterbuilt alleges that the Sportsman smoker depicted above infringes the ‘389 Patent.

Masterbuilt further claims ownership of U.S. Patent No. D560,424 (the ‘424 Patent), a design patent relating to an “ornamental design for a cooking fluid cooking apparatus.”  The ‘424 Patent issued on January 29, 2008.  Figure 1 from the ‘424 Patent is depicted below to the right of the accused Sportsman turkey fryer design:

Masterbuilt also asserts that Sportsman has infringed its utility patent, U.S. Patent Number 6,941,857 (the ‘857 Patent), which issued on September 13, 2005.  Specifically, Masterbuilt alleges that the Sportsman turkey fryer depicted above infringes the ‘857 Patent.

Masterbuilt seeks an injunction, costs of corrective advertising, Sportsman’s profits, compensatory damages, attorneys fees, interests, and costs.

The case is Masterbuilt Manufacturing, Inc. v. The Sportsman’s Guide, Inc., No. 1:14-cv-00112-CDL, filed 05/06/14 in the U.S. District Court for the Middle District of Georgia, Columbus Division, and has been assigned to U.S. District Judge Clay D. Land.

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Monday, May 19, 2014, 10:30 AM

H&R Block Seeks to Enforce “Peace of Mind” Trademark Against Fast Cash Taxes, LLC

On March 28, 2014, HRB Innovations, Inc. (“HRBI”) of Las Vegas, Nevada, and HRB Tax Group, Inc. (“HRBTG”) of Kansas City, Missouri, filed a complaint against Fast Cash Taxes, LLC (“FCT”) of Doraville, Georgia and Gregory A. Solsrud of Atlanta, Georgia for alleged infringement of their federally registered “Peace of Mind” trademark under both the Lanham Act and common law.

Both plaintiffs are wholly-owned indirect subsidiaries of H&R Block, Inc. and are part of a family of companies collectively known as “H&R Block” that together make up the largest provider of individual income tax preparation services in the United States. HRBTG operates offices within the State of Georgia at which it provides individual income tax preparation services, and HRBI licenses the “Peace of Mind” trademark (Registration No. 2939919) to HRBTG (and other authorized licensees) for use in Georgia.

Plaintiffs offer an extended service plan using the "Peace of Mind" mark.  According to the complaint, Plaintiffs have used the “Peace of Mind” mark in relation to audit representation, audit assistance, warranties and support services for nearly two decades.  The complaint alleges that Defendants are using a mark – “Peace of Mind” – that is identical to Plaintiffs’ Peace of Mind® trademark to market Defendants’ identical goods and services – competing audit representation and support services – in direct competition with Plaintiffs.  They also allege that Defendants' practices are likely to confuse and deceive customers, causing irreparable injury to H&R Block.

Plaintiffs allege trademark infringement and fraud and are seeking a preliminary and permanent injunction, profits derived from unlawful conduct, treble damages, exemplary and punitive damages, fees, and costs.

The case is HRB Innovations, Inc. et al. v. Fast Cash Taxes, LLC et al., Case no. 1:14-cv-00903-SCJ in the United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Steve C. Jones.

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Microwave Vision Asserts Use of Goniometer for Antenna Measurement Infringes Patent

Microwave Vision, S.A.Satimo Industries, SAS, and SatimoUSA, Inc. (“Microwave Vision”), filed a complaint in the Northern District of Georgia against ESCO Technologies Inc. and ETS-Lindgren (“ESCO”), alleging a single count of patent infringement of United States Patent No. 7,443,170 filed on August 13, 2004 (the ‘170 Patent) seeking injunctive relief, damages, costs, and attorneys’ fees.
According to the complaint, Microwave Vision has been a pioneer in high-speed microwave measurement systems since 1989.  Beginning in 1996 Microwave Vision focused on antenna measurement systems for the telecom market.  The company had a series of breakthroughs from 1998 through 2005 culminating in the introduction of a multi-probe, fast antenna measurement system for the telecom, automobile, defense, aerospace, and material inspection industries.  In 2008, by virtue of the purchase of ORBIT/FR, Microwave Vision’s business expanded to include positioners for antenna measurements and specialty electromagnetic absorbers. 
The technology of the ‘170 Patent at issue in the case is “a multi-probe array system equipped with a ‘goniometer’ for antenna measurements[, which] allows the system to take a greater number of measurement points than the number of probes in the system,” thereby increasing measurement accuracy.  Pictured below is Figure 1 from the patent with selected descriptive text from the patent’s specifications:

Microwave Vision alleges the defendants “directly and jointly infringe at least claim 12 of the ‘170 Patent literally and under the doctrine of equivalents by making and selling AMS systems including the AMS-8900 Series.”  An image of the AMS-8900 obtained from the Internet is depicted below:

Microwave Vision assets that the AMS-8900 includes a goniometer, which accomplishes successive measurements exceeding the number of probes by pivoting support about a point in the manner patented by the ‘170 Patent.  Below is an image of a goniometer from the Internet.
By letter dated February 14, 2014, followed up by another letter on February 19, Microwave Vision notified ESCO of the patent and alleged infringement.   However, the AMS-8900 was not taken off the market.
The case is Microwave Vision, S.A., Satimo Industries, S.A.S., and Satismo USA, Inc. v. ESCO Technologies Inc. and ETS-Lindgren, Inc., No. 1:14-cv-01153-SCJ, filed in the U.S. District Court for the Northern District of Georgia, Atlanta Division, on April 18, 2014, and is assigned to U.S. District Court Judge Steve C. Jones.

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Monday, May 12, 2014, 3:40 PM

Academic Advertising Seeks to Protect “Community College Jobs” as Trademark

On April 15, 2014, Academic Advertising, LLC (“Academic”), a Georgia based limited liability company, brought suit against Jobelephant.com, Inc., and Michael Ang (“Jobelephant”), of San Diego, California, for trademark infringement, cybersquatting, cyber piracy, and unfair competition under the Lanham Act.

The complaint alleges Academic’s continuous operation of the website, www.CommunityCollegeJobs.com since June 30, 2009, and use of the trademark COMMUNITY COLLEGE JOBS.  Since that date more than 60,000 jobseekers opened accounts on the website.  In the middle of 2009, Academic began using the trademark CCJOBS and set up the user name @CCJobs with Twitter during that same year.  According to the complaint, the public referred to Academic’s placement and job listing services as CCJOBS, and beginning in 2011 the website accounts were referred to as “My CC Jobs” accounts.
The complaint alleges that Academic investigated the availability of CCJobs.com in January 2011 and discovered that the site was owned by a third party.
The defendants worked as sales representatives and agents for Academic beginning in 2011without a written contract.  Jobelephant submitted job postings to Academic by email, which were reviewed and posted on the company’s website.  In late 2011, Jobelephant expressed an interest in purchasing the CommunityCollegeJobs.com website, but Academic was not agreeable.  Interest was again expressed in September 2012 and again rebuffed.  According to the complaint, Jobelephant through its relationship with Academic knew of Academic’s interest in the CCJobs.com website.  Pictured below is Academic’s website offering community college placements.
On March 25, 2014, Jobelephant purchased the website CCJobs.com.  Jobelephant began using the website on March 25 and also began using the name “College Community Jobs” on the website.  Academic alleges that by reversing “College” and “Community” from the Academic mark, Jobelephant demonstrates actual knowledge that CCJobs.com would cause confusion with Academic’s website.  Jobelephant has also started Facebook and LinkedIn pages as CCJobs.  Pictured below is the Jobelephant website.
Academic seeks an injunction, an accounting, compensatory damages, enhanced damages, statutory damages (for bad faith registration of the infringing domain name), delivery of advertising materials for destruction, a 30-day report on compliance with any granted injunction, and attorney's fees.  Academic asserts six counts, including federal trademark infringement under 15 U.S.C. § 1114, cybersquatting under 15 U.S.C. § 1125(d), federal unfair competition under 15 U.S.C. § 1125(a), unfair competition and deceptive trade practices under O.C.G.A. § 10-1-372(a)(2) and 372(a)(3), unfair business practices under O.C.G.A. § 10-1-393, and common law infringement and unfair competition.
The case is Academic Advertising, LLC v. Jobelephant.com, Inc., and Michael Ang, No. 1:14-cv-01115-AT, filed 04/15/14 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and has been assigned to U.S. District Judge Amy Totenberg.

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Thursday, May 8, 2014, 5:14 PM

"The Next Generation Law Firm" Seeks to Beam Alleged Trademark Infringer Down

On April 12, 2014, FisherBroyles, LLP (“FisherBroyles”), a Georgia based law firm, brought a trademark infringement action against Juris Law Group (“Juris”), a law firm with its principal place of business in Century City, California.  The complaint, filed in the Northern District of Georgia, alleges trademark infringement of the trademark “THE NEXT GENERATION LAW FIRM,” which was registered on August 18, 2009 – Reg. No. 3,945,221.

FisherBroyles has grown from one office in Atlanta to ten offices with 80 partners nationwide.  The complaint alleges that Juris not only misappropriated the FisherBroyles Mark, but also copied many of FisherBroyles webpages verbatim.  Allegations include that Juris’ infringement has continued after actual notice and is, therefore, willful and without regard to FisherBroyles’ registration.

The use of the Mark by the two parties as downloaded from their websites is set forth below:

FisherBroyles seeks an injunction, an accounting of profits, damages, treble profits or damages under 15 U.S.C. § 1117, attorneys’ fees, costs, and other relief as appropriate.

The case is FisherBroyles, LLP v Juris Law Group, No. 1:14-cv-01101-WSD, filed 04/12/14 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and has been assigned to U.S. District Judge William S. Duffey, Jr.

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Tuesday, May 6, 2014, 11:27 AM

Mio Global Brings Suit For Infringement Against Smartmissimo’s “SMART mio” Athletic Monitoring Products

On April 11, 2014, Physical Enterprises, Inc. (“Mio Global”), a Canadian corporation, brought a trademark infringement action against Smartmissimo Technologies, PTE. LTD. (“Smartmissimo”), a Singapore corporation in the Northern District of Georgia.  The complaint asserts international registrations and long term use of well-know Mio® marks, including seven U.S. trademarks.  Smartmissimo is accused of intentionally infringing Mio Global’s mark.  A sample Mio® mark and the Smartmissimo use are set forth below:
In addition to federal trademark infringement, the case asserts unfair competition under the Lanham Act, deceptive trade practices under Georgia law (and other unspecified states), and trademark infringement and unfair competition under Georgia common law (and that of other unspecified states).

Mio Global, according to the complaint, is an industry leader in making and selling wearable athletic training and fitness devices, including, for example, the Mio® heart rate watches.  Mio Global has been making these devices since 1999 and owns the following relevant trademark registrations from the United States Patent and Trademark Office:  2,970,869 (issued July 19, 2005), 3,397,728 (issued March 18, 2008), 4,007,228 (issued August 2, 2011), 3,680,505 (issued on September 8, 2009), 3,661,562 (issued July 28, 2009), 3,667,326 (issued August 11, 2009), and 3,661,561 (issued July 28, 2009).  In 2013 Mio Global sold millions of dollars worth of devices bearing these marks.

Mio Global alleges that Smartmissimo is offering devices with “mio” as a part of the mark that use the same coloring scheme as Mio Global products, are in the same niche market of wearable athletic training and fitness devices, and have been reviewed by the same publications reviewing Mio Global products, such as TechCrunch.com.  According to Mio Global the two companies sell their products through “identical and overlapping channels.”  Mio Global accuses Smartmissimo of intentionally utilizing the Mio Global mark to mislead both consumers and investors to make sales or raise funding.  Mio Global’s use of the mark predates Smartmissimo’s use by 15 years.

Mio Global seeks an injunction, a product recall, an accounting, profits, improperly raised funds, damages, enhanced damages, punitive damages, prejudgment interest, and attorneys’ fees.

The case is Physical Enterprises, Inc. v. Smartmissimo Technologies, PTE. LTD., No. 1:14-cv-01090-TWT, filed 04/11/14 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and has been assigned to U.S. District Judge Thomas W. Thrash, Jr.

UPDATE 5/19/2014: On May 15, the Court granted Plaintiff's motion to voluntarily dismiss this action with prejudice.

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Thursday, May 1, 2014, 1:56 PM

Rainbow International Seeks Restoration Of Exclusive Use Of Its Marks

On April 9, 2014, Rainbow International LLC ("Rainbow International"), of Waco, Texas, filed a complaint in the Middle District of Georgia against Brian Whitley, Patricia Whitley, and Quick Whits, Inc. d/b/a "Rainbow International Restoration & Cleaning" and "Rainbow International of Bibb County," all of Macon, Georgia (collectively, "Defendants"), alleging service mark infringement and other claims relating to Defendants' continued use of Rainbow International's marks following the termination of a franchise agreement.

Rainbow International is a franchisor of businesses nationwide specializing in carpet cleaning and repair services, upholstery and drapery services, deodorization services, and water and smoke restoration services.  According to the complaint, Rainbow International has over 400 franchisees worldwide, each of which operates under the name and service mark RAINBOW INTERNATIONAL®.  Rainbow International claims ownership of, among others, the following registered marks: U.S. Reg. No. 1,672,096 (RAINBOW INTERNATIONAL); U.S. Reg. No. 2,054,615 (THE CLEAN EXPERIENCE); U.S. Reg. No. 2,768,905 (stylized "R"); U.S. Reg. No. 2,850,175 (RAINBOW INTERNATIONAL); U.S. Reg. No. 3,207,135 (RAINBOW INTERNATIONAL RESTORATION & CLEANING); and U.S. Reg. No. 3,923,493 (WATER FIRE SMOKE & Design).  Rainbow International asserts that the first five of the six marks are incontestable under 15 U.S.C. § 1065 because they have been in use in commerce for more than five years and the required affidavits of use and incontestability have been filed with the PTO.

Rainbow International alleges that it terminated a franchise agreement with Defendants due to their failure to pay royalties and advertising fees, submit royalty reports, make note payments, and respond to communications from Rainbow International.  According to the complaint, Defendants continued to operate their carpet cleaning and restoration services in the Macon area despite the termination of the franchise agreement.

The complaint includes claims for service mark infringement, unfair competition, false designation of origin, and unfair and deceptive trade practices under the Lanham Act and breach of contract, service mark infringement, unfair and deceptive trade practices, and unfair competition under the Georgia Uniform Deceptive Trade Practices Act (O.C.G.A. § 10-1-370 et seq., O.C.G.A. § 23-2-55) and common law. Rainbow International seeks injunctive relief, compensatory and punitive damages, surrender of Defendants' telephone number, URLs, and email addresses, destruction of all labels, signs, and promotional materials in Defendants' possession, and extension of Defendants' post-termination non-compete period.

The case is Rainbow International LLC v. Whitley et al., 5:14-cv-00139-MTT, filed April 9, 2014 in the Middle District of Georgia, Macon Division, and is assigned to Judge Marc T. Treadwell.

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