Top Trademark Attorney 2010: Cohen IP Law Group, PC

Once again, the Cohen IP Law Group, PC has ranked among the top trademark firms in the nation in the recent May 2010 issue of IP Today Magazine.

Intellectual Property Today Magazine is a promenient monthly publication focused on legal issues in patent, trademark and copyright law.

Tommy Burger Trademark Infringement Family Affair

Trademarks are valuable property. Business partners, friends, and even family members can be split over trademark rights. Take the case of Original Tommy’s World Famous Hamburgers here in L.A. When the original Tommy Koulax died in 1992, he left the franchise in the hands of some of his children and relatives. According to an article in today’s Los Angeles Business Journal, one of his children is trying to start up a Tommy’s-inspired company, and apparently breaking some family ties doing it.

What made Tommy’s world famous was arguably its chili, not hamburgers. In fact, Tommy’s chili recipe is protected by a trade secret. In 2008, Tommy’s son, Tommy Koulax Jr., started an online business selling chili. “Tommy’s Original Chili Factory” received a cease and desist letter from Original Tommy’s (jointly owned by other siblings and relatives). Since then, the name has been changed to “Tommy Jr’s Chili Factory,” but the Tommy Jr. crew is still under attack. They have been sued in California Central District Court for trademark infringement and unfair competition, Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).


It may be a tough case for Tommy Jr. to win. His logo is very similar in style and color to the Original Tommy’s logo, and on his products he claims to be the “son of the originator and founder of Tommy’s World Famous Hamburgers.”

Jessica Seinfeld Copyright Infringement Battle Over Cookbook

Last week, a federal appeals court upheld the previous decision of a lower court in the Jessica Seinfeld cookbook case. Jessica (Jerry Seinfeld’s wife) was sued for both trademark and copyright infringement by Missy Chase Lapine, author of “The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids’ Favorite Meals.” Jessica’s book is titled “Deceptively Delicious: Simple Secrets to Get Your Kids Eating Good Food.” See the original lower district's complaint here. It does seem a bit close for comfort, but two judges have now ruled that Jessica’s book is not a copycat.

According to Judges Reena Raggi and Peter W. Hall of the Second U.S. Circuit Court of Appeals in Manhattan, “stockpiling vegetable purees for covert use in children’s food is an idea that cannot be copyrighted.” Conceptual ideas like that cannot be protected by copyright law. Seinfeld's intellectual property attorney's stated "countless prior works utilized this very same unprotectable idea," including a 1971 book."

Lapine’s book was published four months previous to Seinfeld’s, and apparently, some publishers were looking at the books around the same time. It seems pretty unlikely that Jessica Seinfeld would have had enough time to plagiarize, since both books were published around the same time.

On a side note – a slander case is still pending for Jerry Seinfeld’s jokes (when he said his wife is accused of "vegetable plagiarism") about the suit and Missy Lapine on The Tonight Show.

Patent Application Video by Michael Cohen

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Craigslist awarded $1.3 million judgment in copyright infringement case

Last week, Craigslist sent a clear message to sites offering third-party posting software. Powerpostings.com, owned by one Igor Gasov, had been offering customers the ability to post (including multiple postings) and manage ads on Craigslist. Craigslist sued them for copyright infringement, referencing the Digital Millennium Copyright Act, the Computer Fraud and Abuse Act, and trademark law. The defendants didn’t contest, and Craigslist was awarded a $1.3 million judgment.

In the past, other companies have offered Craigslist posting software, but Powerpostings took it too far. They also offered listing agents, who would post ads for customers, and they used false email addresses on Craigslist. No doubt there were several violations of Craigslist’s terms of use, in addition to the alleged trademark and copyright violations. Because Powerpostings didn’t appear in court, Craigslist didn’t have to prove anything. Craislist would have had to prove they registered parts of their Web site, and that Powerpostings copied those parts, for copyright infringement to have taken place. But considering all the allegations against them, it was probably a smart move for Powerpostings to accept a lesson learned the hard way.

Dental Design Patent and Trademark Infringement: Discus v. Biolase

Discus Dental and Zap Lasers, makers of surgical laser instruments, and cofounded by Dr. Dorfman, notable from his ABC's Extreme Makeover show, filed a complaint in the U.S. District Court for the Central District of California against a company called Biolase, which makes an “iLase” cordless medical laser. The claims were made against Biolase after it began to market its iLase product for sale in the U.S. in March.

According to the Complaint, the issue involves Discus' product the Styla, which is a hand-held cordless soft-tissue laser device, U.S. Patent No. D587,803. Discus claims patent infringement of the design of the Styla in view of a hand-held laser device that Biolase has. The claim for trademark infringement is a bit unclear because we believe that Biolase's product is simply called "iLase".

Biolase CEO David M. Mulder recently stated that "we are very confident in the breadth of our intellectual property portfolio, and in the strength of our laser technology, and we intend to vigorously defend the Company against these allegations levied by Discus and Zap."

Biolase asserts that the suit is being made merely for the design of the unit, and not its functionality or technology.

True Blood Wine Stirring Trademark Trouble

In 2008, HBO created the hit show True Blood, which has since become the most watched show on HBO since the Sopranos. Years before the show, in 2002, TI Beverage Group created True Blood wine, and registered the trademark. TI beverage group must have found it interesting that the HBO program featured a fictional drink called Tru Blood. They weren’t amused, however, when HBO and Hot Topic paired up in 2009 to produce a drink called Tru Blood, based on the show and made from blood oranges. TI’s trademark infringement lawsuit against HBO and Hot Topic was dropped though, after the product was removed from the shelves. The suit was filed again last week, when True Blood began appearing once more at Hot Topic.

The case is reminiscent of recurring trademark litigation involving Duff beer, Homer’s beer of choice on The Simpsons. Over the years, a few different breweries, both in the states and abroad have tried to produce Duff beer, with varying degrees of success. 20th Century Fox and Matt Groening (creator of The Simpsons) have never agreed to license Duff beer, mainly because of concerns that it would encourage underage drinking. All companies that have tried to market Duff have been promptly sued for trademark infringement. The most notable case involves a brewery from Australia that produced about 10,000 cans of Duff before being shut down by 20th Century Fox. From time to time, unopened cans of Australian Duff beer sell for thousands of dollars on Ebay.