The Conkle Firm Secures Summary Judgment in Published Trademark Decision

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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).

 

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The Conkle Firm recognized in BIR for BIMA International Trade Program

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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.

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Why Bother with the Supplemental Register?

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The United States Patent and Trademark Office (USPTO) maintains two different registers for trademarks: the Principal Register and the Supplemental Register.

To be eligible for registration on the Principal Register, certain marks, such as descriptive marks, surnames, geographic terms and certain types of trade dress, must acquire “secondary meaning.”  “Secondary meaning” means that public primarily sees the mark as identifying the source of the product rather than the product itself.  Registration on the Principal Register gives a mark’s owner several benefits, including:

  • Presumptions of ownership and validity;
  • Constructive notice to others of ownership;
  • The right to request that U.S. Customs exclude infringing goods from import;
  • The ability to claim “incontestable” status after five years of registration; and
  • The ability to obtain certain monetary and equitable relief in an infringement action.

Marks that are actually in use in the United States, but that do not qualify for the Principal Register because they have not yet acquired secondary meaning, may be registered on the Supplemental Register. As you might expect, registration on the Supplemental Register does not provide the same protection as registration on the Principal Register. For example, registration on the Supplemental Register does not create a presumption of ownership or validity; give others constructive notice of ownership; support a later claim of incontestability; imply an exclusive right to use the mark; or allow the mark’s owner to request that products bearing the mark be excluded from import into the United States.

So why bother with the Supplemental Register? The primary benefit of a registration on the Supplemental Register is that a subsequent application for a confusingly similar mark for related goods may be refused by the USPTO. The owner of a Supplemental Registration may also use the registered ® symbol on the products listed in the registration. Further, a registration on the Supplemental Register allows the owner to register the mark in other countries that offer reciprocal trademark rights. And, in the event that a Supplemental Registration’s owner is successful in an infringement action, the owner may be entitled to certain monetary and equitable relief that might otherwise be unavailable.

Given the relative advantages of ownership of a registration on the Principal Register, an applicant should always seek registration on the Principal Register first. But, if the USPTO refuses registration for lack of secondary meaning, an applicant should consider amending the application to the Supplemental Register to ensure the protections discussed above. Keep in mind that if a mark’s owner believes that the mark registered on the Supplemental Register has acquired distinctiveness, a new application for registration on the Principal Register is required.

Conkle, Kremer & Engel assists companies in all aspects of intellectual property protection, including U.S. and international trademark registrations and enforcement of trademark rights.

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The Conkle Firm’s California Pavilion Lounge is Open for Business

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Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim have set up shop in the CK&E Lounge at the California Pavilion at Cosmoprof Bologna.  The California Pavilion, whose theme is “California, A State of Beauty,” is located at Hall Number 30, Stand Number E28-F31 & E31-D34.  The California Pavilion hosts several up and coming California-based beauty businesses that participated in the Beauty Industry Market Access (BIMA) program run by the Center for International Trade Development (CITD).  CITD sponsors California Pavilions at Cosmoprof events to advance international trade for beauty businesses operating in California.  CK&E attorneys including Mark and Kim are proud to have been invited to offer their legal expertise and practical experience to beauty industry participants looking to expand in overseas markets.  At the California Pavilion in Cosmoprof, BIMA participants are able to put their training to its optimum use – growing their international presence and trade.

Simon Smeke and Emilio Smeke of Daily Concepts, with Mark Kremer

Simon and Emilio Smeke of Daily Concepts, with Mark Kremer, at California Pavilion

Israel Segal of Free Your Mane, with Mark Kremer at California Pavilion

Mark Kremer with Israel Segal of Free Your Mane, at California Pavilion

 

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Getting Ready for Cosmoprof Bologna

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Beauty product manufacturers are busy readying their booths for the start of Cosmoprof Bologna.  Here, American International Industries puts the finishing touches on displays of some of its many popular product lines.  In all, more than 2,400 exhibitors will participate in this 48th annual Cosmoprof Bologna event.

Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim will be at the California Pavilion to help clients take full advantage of the unique opportunities to establish and build overseas markets and build strategic alliances. Email them to arrange a meeting at the California Pavilion, or just stop by – they’re at Hall 30, Stand No. E28-F31 & E31-D34.

 

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The Conkle Firm is Appearing at Cosmoprof Bologna

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Conkle, Kremer & Engel attorneys Mark Kremer and Kim Sim are now attending Cosmopack and Cosmoprof Bologna, in conjunction with the California Pavilion, from March 19-23, 2015.  Mark and Kim are there to help clients expand their businesses internationally.  They will consult with clients about their concerns, including trademark registration and brand protection, manufacturer-distributor relations, regulatory compliance and more.  Mark and Kim would be glad to meet with prospective clients who are interested in developing their worldwide reach.  Visit their linked pages and contact them by email to arrange a meeting at the CK&E lounge, located at the California Pavilion, or for a bite at one of Bologna’s incredible restaurants.

 

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The Conkle Firm in BIR Article on Cosmoprof Asia 2014

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Conkle, Kremer & Engel attorneys John Conkle and Kim Sim contributed to the January 2015 Beauty Industry Report coverage of Cosmoprof Asia 2014.  The BIRonline article places special focus on the participants in the California Pavilion sponsored by the California Trade Alliance.  Many participants in the California Pavilion were graduates of the Beauty Industry Market Access (BIMA) program, in which CK&E attorneys proudly participate to help California beauty industry members expand their business into international markets.

 

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California Pavilion at Cosmoprof Asia to Host Visit by U.S. Consul General

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Conkle, Kremer & Engel is pleased to announce that Clifford A. Hart, Jr., the United States Consul General for Hong Kong and Macau, is scheduled to visit the California Pavilion at Cosmoprof Asia on November 12, 2014.  CK&E attorneys John Conkle and Kim Sim will attend Cosmoprof Asia in conjunction with the California Trade Alliance, which sponsors the California Pavilion, and they plan to be available to meet with the Consul General.  CK&E attorneys work with clients to facilitate their international business needs, from manufacturer-distributor relationships and brand protection to government relations and regulatory compliance.  If you are attending Cosmoprof Asia this year, stop by and visit the California Pavilion – it will be time well spent.

 

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The Conkle Firm Will Attend Cosmoprof Asia November 12-14, 2014

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Conkle, Kremer & Engel attorneys John Conkle and Kim Sim will attend the Cosmoprof event for the Asia Pacific region in Hong Kong on Nov. 12-14, 2014.  Cosmoprof Asia will feature more than 2,350 exhibitors in the beauty industry, and expects more than 64,000 visitors from all over the world.  There will be 22 national and group pavilions.  Given the prominence of California’s personal care product industry, CK&E is proud to attend the Hong Kong event in association with the California Pavilion organized by the California Trade Alliance.  CK&E will meet with clients and correspondent counsel to facilitate business between manufacturers, distributors and vendors in the Asia Pacific region and the United States, with particular emphasis on California businesses.  Brand protection and distributor relations are always a major concern when doing business between the U.S. and Asia, and CK&E attorneys are there to help.  If you will be attending Cosmoprof Asia this year, please let us know and we will try to make arrangements for a meeting at the event.

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The Conkle Firm Will Sponsor and Moderate Panel at Counterfeiting & Brand Protection Summit in New York

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John Conkle of the Conkle, Kremer & Engel will moderate a panel presentation at the 13th Anti-Counterfeiting & Brand Protection Summit, on October 1, 2014 in New York City.  The title of the presentation will be Combining Forces:  Coordination of Public and Private Sectors against Pirates and Counterfeiters.  The panel will consist of preeminent experts on effective enforcement of civil and criminal anti-counterfeiting laws:  Marc Misthal (Gottlieb, Rackman & Reisman LLP), James T. Hayes Jr. (Special Agent in Charge, ICE Homeland Security Investigations, New York Field Office), and Jodie Kane (Chief of Rackets Bureau of the New York County District Attorney’s Office).

Confronting product counterfeiters can be an expensive, labor intensive and sometimes frustrating task, particularly when undertaken as a solo effort.  The panel sponsored and moderated by CK&E will highlight strategies for combining the strength of private enforcement and available public sector resources to combat counterfeiters using all available tools.  The panel will assess when and how to use civil resources in partnership with criminal enforcement for the most effective and cost-effective assault on product counterfeiters.  The panel will address practical steps to best leverage the strengths and resources of both arms against the scourge of counterfeiters, illustrating points with real world experiences.

Join us and learn how to get the most bang for your brand protection buck in the battle to defeat counterfeiters.  CK&E is proud to again sponsor this important brand protection event.

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