The Conkle Firm Wins Injunction Prohibiting Trade Dress Infringement by Zotos

Posted by:

In September 2016, Conkle, Kremer & Engel attorneys filed a case on behalf of Moroccanoil against Zotos International, Inc. for trademark infringement by its “Majestic Oil” products. Just four months later, CK&E obtained a Preliminary Injunction against Zotos’ competing products, and within days the case was over.

A Preliminary Injunction is a powerful litigation tool that can immediately stop a defendant from selling products during the litigation. Securing a Preliminary Injunction at the beginning of the case often brings a prompt settlement, as the defendant must decide whether to settle or to fight over the product packaging that it cannot sell.

Getting a Preliminary Injunction can be challenging because the plaintiff must show that it is likely to win the case, and that it will be irreparably harmed if the defendant’s products are allowed in the market while the case proceeds to trial. Recently, courts have made Preliminary Injunctions tougher to get by raising the standards for showing irreparable harm.

In Moroccanoil’s case, the Preliminary Injunction prohibited Zotos from selling its Majestic Oil products in packaging that was confusingly similar to Moroccanoil’s distinctive trade dress. Zotos is a subsidiary of Shiseido America.  Drawing on its knowledge of the beauty industry, CK&E’s presentation of irreparable harm to Moroccanoil’s reputation proved effective – the Court found that continued sales of Majestic Oil products would erode Moroccanoil’s premium position in the hair care market as a professional brand. The Court’s Order granting Moroccanoil’s Motion for Preliminary Injunction is available here, and is published at Moroccanoil, Inc. v. Zotos Int’l, Inc., 230 F. Supp. 3d 1161 (USDC C.D. Cal. 2017).

On the heels of the Preliminary Injunction, the parties settled the case with Zotos agreeing to pay a substantial portion of Moroccanoil’s attorneys’ fees and to drop the confusingly similar trade dress of the Majestic Oil products. In total, the case was fully resolved within 6 months of filing, and the only litigation activity was CK&E’s Motion for the Preliminary Injunction.

To learn more about the case, contact the CK&E attorneys who lead the team for Moroccanoil, Mark Kremer, Evan Pitchford and Zachary Page.

Print Friendly, PDF & Email
0

The Conkle Firm Visits ISSE

Posted by:

Attorneys from Conkle, Kremer & Engel were on hand as the Professional Beauty Association (PBA) hosted the International Salon and Spa Expo (ISSE) on January 28th-30th, 2017 at the Long Beach Convention and Entertainment Center.  Tens of thousands of industry professionals attended this year’s ISSE show, which featured booths and displays from hundreds of manufacturers and distributors.  CK&E attorneys were pleased to be able to assist clients and meet with professionals in the beauty industry.  CK&E attorneys particularly focus on helping beauty industry participants develop and grow their businesses, such as by expanding into overseas markets or negotiating with distributors. CK&E attorneys are proud members of the PBA, which advances the professional beauty industry by providing members with education, charitable outreach, government advocacy, events and more.

Print Friendly, PDF & Email
0

The Conkle Firm Advises BIMA Participants on IP and Regulatory Issues

Posted by:

Once again, Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim have been honored to participate in and contribute to the revolutionary Beauty Industry Market Access (BIMA) program, led by beauty industry guru Patty Schmucker of American Made Beauty.  BIMA is a multi-day intensive domestic and international trade and business education program taught by leading health and beauty industry experts. BIMA participants focus on key principles essential to expand their personal care products businesses both in the U.S. and overseas.

Mark contributes to the BIMA educational program by teaching modules on domestic and foreign intellectual property protection and international distribution agreements.   Participants are particularly advised about cost-effective methods of protecting their intellectual property internationally, such as international trademark registrations through the Madrid System, which can offer a centralized application process for trademark registration in over 90 countries based on a brand owner’s domestic application or registration.  Kim adds her expertise in domestic regulatory compliance, including Prop 65, California Organic Products Act (COPA), Safe Cosmetics Act, California Air Resources Board (CARB) regulations and survey requirements, and federal and state Made in the USA regulations.

BIMA is sponsored by Universal Companies, which has been in the beauty industry for over 18 years and is an important distributor of more than 300 brands in the spa, salon, esthetics and massage market, as well as their own proprietary brands.

In partnership with the California Trade Alliance (CTA), access to international trade shows are available to companies that participate in the BIMA programs. BIMA participants can exhibit in the popular California Pavilion regularly sponsored by CTA at Cosmoprof Bologna and Cosmoprof Hong Kong, among the world’s largest and most important beauty industry trade shows.

Print Friendly, PDF & Email
0

BIR Publishes the Conkle Firm’s Report of Cosmoprof Bologna

Posted by:

As a follow-up to participating in the 49th annual Cosmoprof Bologna, Conkle, Kremer & Engel attorney Eric S. Engel authored an article for Beauty Industry Reports reviewing the event and its impact.  The just-published article particularly focuses on California Trade Alliance’s California Pavilion and the two USA Pavilions.  CK&E was the sponsor of the exhibitors’ lounge in the California Pavilion again this  year, and it proved useful for the many meetings California Pavilion participants arranged with distributors and buyers, as participants maximized their potential by expanding international business opportunities.  CK&E is glad to be able to continue its support and work with beauty industry members to grow their businesses internationally as well as in the U.S.  We’ll see you next year, at the golden 50th annual Cosmoprof Bologna.

May 2016 Article in Beauty Industry Reports:  Cosmoprof Bologna Sets Records

 

Print Friendly, PDF & Email
0

The Conkle Firm Attends INTA Annual Meeting in Orlando

Posted by:

Conkle, Kremer & Engel attorneys Mark Kremer and Zachary Page attended the Annual Meeting of the International Trademark Association (INTA) in Orlando, Florida this week. The Annual Meeting is INTA’s largest event of the year in which intellectual property attorneys, brand owners and administrative officials gather to discuss developments and trends in trademark law in the United States and across the globe. This year’s Annual Meeting included discussions about rule changes for proceedings in the Trademark Trial and Appeal Board, the impact of TTAB decisions on later litigation, anti-counterfeiting strategies, enforcement strategies in online marketplaces and social media, and changes to international trademark prosecution systems.

CK&E regularly works with clients to identify and protect their intellectual property both in the United States and abroad, and participates in industry conferences like INTA’s Annual Meeting and others to stay abreast of the developing issues affecting the firm’s clients.

Print Friendly, PDF & Email
0

California Pavilion Exhibitors Achieve Goals at Cosmoprof Bologna

Posted by:

Positive Global Sales

Cosmoprof Bologna came to a successful close on March 21.  The overall show statistics are not available yet, but participants in the California Pavilion experienced brisk business.  The California Pavilion this year expanded to two islands with 18 exhibitors, and booths were often crowded with interested buyers.  The CK&E lounge at the center of the California Pavilion buzzed with deal negotiations, and CK&E attorneys Mark Kremer and Eric Engel were glad to be able to lend their assistance to help participants expand their global reach.

Mark Kremer and Eric Engel at Cosmoprof Bologna 2016

Mark Kremer and Eric Engel at the CK&E Lounge in the California Pavilion

Organizer Cesar Arellanes of California Trade Alliance commented that California Pavilion participants reported meeting or exceeding their goals for the show, expanding and strengthening their international business.

CK&E attorneys advise clients to prepare for major trade shows, particularly foreign shows, by verifying that they have taken all appropriate steps to protect their trademarks, trade dress and other valuable intellectual property, before problems arise.  To help one well-prepared client, Mark Kremer successfully initiated an immediate takedown of counterfeit products being sold in another hall.  CK&E attorneys attend major beauty industry trade shows to help protect clients’ brands, to keep current on trends, and to assist clients with the full range of legal skills needed to grow their businesses internationally.

David Lester at Cosmoprof Bologna 2016

COOLA at California Pavilion

 

 

 

 

CK&E Lounge at the center of California Pavilion

CK&E Lounge at the center of California Pavilion

 

 

 

Daily Concepts and Afterspa in California Pavilion at Cosmoprof Bologna 2016

Daily Concepts and Afterspa in California Pavilion

 

 

 

 

Infinite Aloe booth at California Pavilion

Infinite Aloe at California Pavilion

Print Friendly, PDF & Email
0

California Pavilion at Cosmoprof Bologna Opens

Posted by:

Bologna FiereThe huge convention center in Italy known as Bologna Fiere sprang to life today with the opening of Cosmoprof Bologna, featuring the California Pavilion organized by California Trade Alliance.  Conkle, Kremer & Engel sent attorneys Mark Kremer and Eric Engel to help clients and other beauty industry participants groCK&E Lounge at California Pavilionw their businesses by expanding internationally.  Once again this year, CK&E is proud to sponsor the Exhibitor Lounge in the California Pavilion, which enables participants to work, meet and discuss international business deals.

Thirty-five California Pavilion participants began the event with a dinner to share ideas and stories.  The group was glad to be able to use the occasion to celebrate the special birthday of Emilio Smeke, of Daily Concepts and AfterSpa.  The California Pavilion has the unique position of being the only State Pavilion in the Hall of Country Pavilions, with a choice position adjacent to the USA Pavilion.  The prominence of the California Pavilion is a fitting tribute to the strength and growth potential of the California cosmetics business and the leadership of Cesar Arellanes and Jake Rubenstein of California Trade Alliance.California at Hall of National Pavilions in Cosmoprof Bologna 2016

Emilio Smeke Celebrates Birthday at Cosmoprof Bologna 2016Mark Kremer at California Pavilion Dinner

Print Friendly, PDF & Email
0

The Conkle Firm Attends PBA’s International Salon and Spa Expo

Posted by:

The Professional Beauty Association (PBA) hosted the International Salon and Spa Expo (ISSE) on January 30th-February 1st, 2016 at the Convention Center in Long Beach, California, and Conkle, Kremer & Engel attorneys were pleased to attend again this year.  CK&E attorneys were glad to be able to meet and consult with clients and other professionals in the beauty industry who want help to develop and grow their businesses.  More than 400 manufacturers and distributors had booths and displays, and the show was attended by thousands of industry professionals. The sponsor of ISSE, the PBA, advances the professional beauty industry by providing members with education, charitable outreach, government advocacy, events and more.  CK&E attorneys are proud members of the PBA.

Pravana at ISSE 2016

Pravana at ISSE 2016

Print Friendly, PDF & Email
0

The Conkle Firm Secures Summary Judgment in Published Trademark Decision

Posted by:

A motion for summary judgment can be a cost-effective mechanism to efficiently resolve issues in a case by asking a judge to adjudicate certain claims or defenses before going to trial. Success on a motion for summary judgment can also reduce costs and improve outcomes by pushing the other side to settle on favorable terms and avoid the uncertainty and expense of trial.

Moroccanoil, Inc. and Marc Anthony Cosmetics, Inc., ended a legal fight over their trademarks and packaging after attorneys from Conkle, Kremer & Engel prevailed on behalf of Moroccanoil in a battle of competing summary judgment motions.

Marc Anthony’s attorneys filed several motions asking for summary judgment against Moroccanoil’s trademark and trade dress infringement claims while Conkle, Kremer & Engel brought motions for summary judgment on behalf of Moroccanoil to eliminate Marc Anthony’s defenses. While the court denied all of Marc Anthony’s motions, Conkle, Kremer & Engel’s motions successfully defeated almost all of Marc Anthony’s defenses before trial.

Marc Anthony Product Line

Marc Anthony Product Line

Marc Anthony argued that there was no likelihood of consumer confusion between the trademarks and product packaging, and attempted to strike at the heart of Moroccanoil’s brand by attacking the validity of the trademark in the Moroccanoil name and signature blue and copper orange colors. Marc Anthony claimed that Moroccanoil had improperly obtained registration for a name that was a “generic” name for argan oil, and that Moroccanoil had no ownership rights in common colors used for its packaging.

 

Moroccanoil Product Line

Moroccanoil Product Line

In a ruling recently published in the Federal case law reporter, Judge Dolly Gee of the Central District of California denied all of Marc Anthony’s motions, and issued significant rulings rejecting Marc Anthony’s attacks. Judge Gee specifically upheld Moroccanoil’s registration of its name and found that Moroccanoil’s trade dress is distinctive and protectable. Judge Gee also found that the majority of factors concerning the likelihood of confusion between the brands pointed toward trademark infringement. The case settled after Judge Gee’s opinion, without trial.

Judge Gee’s opinion, also published and available on Westlaw and Lexis: Moroccanoil, Inc. v. Marc Anthony Cosmetics, Inc., 57 F. Supp. 3d 1203 (C.D. Cal. 2014).

 

Print Friendly, PDF & Email
0

The Conkle Firm recognized in BIR for BIMA International Trade Program

Posted by:

Industry insider publication Beauty Industry Report recently profiled the Center for International Trade Development (CITD) and its comprehensive international training and trade mission program for beauty companies seeking to expand export sales.  The intensive training program is known as the Beauty Industry Market Access (BIMA) Program.

Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim were recognized in the BIR Article about CITD for their contributions to the BIMA Program. Mark Kremer teaches instructional modules about domestic and international intellectual property protection, including trademarks, and international distribution agreements and relationship management.  Kim Sim provides an overview of state and federal regulatory compliance, such as California’s Proposition 65 and organic claims under the California Organic Products Act, and state and federal advertising and substantiation laws, among other laws and regulations.

CK&E attorneys are subject matter experts in the personal care products industry, and bring a wealth of experience to guide industry clients in both the U.S. and international markets.

Print Friendly, PDF & Email
0
Page 3 of 6 12345...»