California Pavilion at Cosmoprof Bologna Opens

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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

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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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What Businesses Can Learn from Motorcycle Gangs

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December 11, 2018 Update:

The front page of the Los Angeles Times today features a new article on this long-lived lawsuit by the U.S. government against a motorcycle gang called the Mongols, which lawsuit has the stated goal of seizing for the U.S. government the Mongols’ storied trademark.  The lawsuit has been up and down the appellate process, and is awaiting a jury verdict after trial.  Some aspects of the case make it a real head-scratcher to trademark lawyers, but it has some lessons that can help more conventional business owners.

There is little doubt that the Mongols’ trademark is valuable, but the question that business owners should relate to is, of what value is the trademark if it is owned by someone other than its originator?  In this particular instance, it seems that transferring this trademark to the U.S. government would be of little or no value even toward accomplishing the prosecutors’ laudable goal to preclude the use of the Mongols’ trademark to continue to operate their gang.

Assuming the government wins and is allowed to seize ownership of the Mongols’ design or word trademark, the first problem is that new ownership of the mark does not prevent people who have lawfully received items using the mark to continue to use genuine products that bear the mark.  The “first sale doctrine” means that as long as the products bearing the Mongols’ trademark (such as patches, posters, shirts and vests) are genuine and unaltered U.S. goods, they can continue to be lawfully used and displayed by their owners.  So the existing Mongols members can continue to wear their Mongols’ apparel, or transfer them lawfully, even if the Mongols’ association cannot issue new products with the trademarks that it no longer owns.

Next, trademarks only have substantial value if they are actually used to promote products or services.  Since the government is not a rival motorcycle gang, what exactly is the government going to do with the Mongols’ trademarks other than retire them?  When trademarks are not used for a legally sufficient amount of time, they are subject to a determination that they have been abandoned and they become available to anyone – including their former owner – to again start using them.  So unless the government also manages to get a permanent injunction against the Mongols’ association ever again using their trademark (which seems unlikely, due to serious first amendment issues), once the trademarks are deemed abandoned the Mongols’ association may well be free to take back the trademarks as a full owner.

The ultimate lesson is that any prospective trademark owner must give thorough strategic consideration to who will own each trademark and what will be done with it, before expending substantial resources to create or acquire the trademark.

May 31, 2015 Blog Post:

The Mongols motorcycle gang has a distinctive registered trademark, which the U.S. government very badly wants to own.  Claiming use that dates back to 1969, the Mongols’ design trademark is an image of a man with sunglasses, mustache, and queue, wearing a black vest, holding a sword, and riding a chopper motorcycle, and includes the words “MONGOLS M.C.”  (USPTO Registration No. 4730806)  The MONGOLS design mark is used extensively by the group, including on jackets and motorcycle accessories, to signify affiliation with the association.  The MONGOLS design mark is owned by the corporation formed by the group, Mongols Nation Motorcycle Club, and it is classed as a Collective Membership Mark “indicating membership in an association dedicated to motorcycle riding appreciation.”

Since 2008, the U.S. has been prosecuting individual members of the Mongols for a wide variety of criminal acts, including extortion, drug dealing and assault.  The government’s stated purpose is to “break the back” of the gang and put it out of business.  What better way to achieve that goal than to seize ownership and control of the MONGOLS design trademark that signifies membership in the gang?  The government’s view is that the trademark is an asset – arguably the single biggest asset – of the motorcycle gang and it can be seized when its members are found guilty of crimes requiring penalties and restitution to be paid to the government.  In focusing on the trademark, the U.S. government recognizes that the organization would become essentially non-functional if its members were stripped of the ability to readily identify themselves as being members of the association.

The first attack by the government in 2008 was an attempt to seize the MONGOLS word mark (USPTO Registration No. 2916965).  The government obtained a preliminary injunction restraining the transfer of the mark during the pendency of the action.  But the action stalled when the U.S. District Court found that the government was trying to seize the trademark from the wrong person.  In 2008, the government was prosecuting individual members of the gang for alleged criminal acts, but was trying to seize a trademark owned by the corporate entity that constitutes the Mongols association itself.  This governmental drive skidded off the road because it violated one of the basic tenets of trademark law:  The trademark is controlled by its owner, not by those who have non-exclusive licenses to use the mark such as members who are allowed to wear the mark on their jackets.

Not to be stymied, the U.S. Attorney returned to court beginning in 2013, this time with an indictment against the Mongols organization itself as an unincorporated association that is alleged to be racketeering enterprise.  With this new approach, the registered owner of both the MONGOLS word and design marks is considered part of the indictment and the government seeks forfeiture of its assets, including its trademarks, which can be seized if the court allows that remedy.

One thing more conventional businesses can learn from the Mongols is to pay close attention to who owns the business’ marks, which are often its most valuable assets and usually vital to its survival and growth.  Should the marks be owned by the business entity itself?  By a sister entity that licenses it under strictures?  Or perhaps by the individual founder, who can license the mark to the entity and create a revenue stream for herself?

Even for businesses that are not motorcycle gangs, all structures for trademark ownership options have advantages and disadvantages, and business owners would do well to consult counsel familiar with the issues involved.  Conkle, Kremer & Engel attorneys advise clients about the most suitable trademark ownership and licensing structures for their circumstances and business plans.

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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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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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Beware of Scam Trademark Solicitations

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Trademark applicants and registrants take notice:  There are increasing numbers of domestic and international outfits that issue trademark compliance and renewal notices that look like legitimate invoices or governmental requests.  In actuality, these notices are sent by private individuals or entities trying to make a quick buck.  Some of these notices are solicitations from companies offering to file renewals with the United States Patent & Trademark Office (USPTO) for an exorbitant fee.  Using deceptively official-sounding names such as “United States Trademark Registration Office”, “Trademark and Patent Office” and “Patent & Trademark Agency”, these companies charge excessive fees for routine or unnecessary services or worse, take your money and disappear.  Others, such as IP Data in the Czech Republic, seek to charge a “filing fee” of over $2,400 to publish your trademark in their own private Internet database – an expensive exercise that is not an application for trademark registration and confers no trademark rights.

This problem has become so widespread and severe that the World Intellectual Property Organization (WIPO) published a list of known international trademark registration scams.   The USPTO keeps a similar scammer database, identifying the following organizations that sent non-USPTO solicitations, prompting consumer complaints to the USPTO:

  • TM-DB Register of Protected Trademarks
  • Trademark and Patent Office
  • Trademark Compliance Center (See an example of a scam solicitation sent by TCC)
  • Trademark Registration and Monitoring Office
  • United States Trademark Registration Office
  • Patent & Trademark Agency
  • United States Trademark Maintenance Service
  • U.S. Trademark Compliance Service
  • WDTP
  • WIPT
  • TM Collection
  • TM Edition
  • Patent Trademark Register
  • Register of International Patents and Trademarks
  • Trademark Renewal Service
  • Trademark Safeguard – Trademark Monitoring Service
  • Intellectual Property Agency Ltd.
  • IOPR – Intellectual Property Register
  • GBO, Inc.
  • Intellectual Property Services USA Incorporated
  • USTM Information Services
  • Brand Registration Office

In October 2014, a New York firm successfully won a lawsuit against “Patent & Trademark Agency LLC” for unfair competition and deceptive marketing practices, putting the company out of business.  A Final Consent Judgment was entered against Patent & Trademark Agency LLC, by which it agreed to permanently discontinue marketing and selling trademark registration or renewal services in the United States.

If you receive any unexpected email or correspondence regarding a trademark registration, you should immediately contact the USPTO or your counsel to verify the veracity of the sender and the correspondence.  Conkle, Kremer & Engel assists individuals and companies in all aspects of intellectual property protection, including the filing and maintenance of trademark registrations – and we know how to discriminate legitimate vendors from scammers.

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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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The Conkle Firm Will Attend INTA’s Innovation and Internet Governance Conference

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On September 18-19, 2014, Conkle, Kremer & Engel lawyer Zachary Page will attend the International Trademark Association’s “Internet, Innovation and ICAAN: The Evolving Landscape of the Net” conference in San Francisco. This INTA program will cover issues related to the interplay between trademark owners and new developments in the management of the Internet, including new generic top-level domains (gTLDs), changes to the WHOIS domain name directory system, management of intellectual property rights in social media, and other shifts that impact the way owners’ protect their trademarks online.

The conference features speakers from leading companies in the technology industry, including Google, Facebook and Twitter, as well as representatives from federal and global regulatory organizations, such as the World Intellectual Property Organization (WIPO), U.S. Department of Commerce and the Internet Corporation for Assigned Names and Numbers (ICANN).

Every business is affected by developments regarding the Internet.  CK&E participates in important industry conferences of INTA and others to stay in the forefront of developing issues affecting the firm’s clients.  Check back for blog post updates from the conference to stay abreast of innovations and changes in governance and brand protection on the Internet.


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