Intellectual Property Attorney

Litigation Statements

Grimes LLC Prevails in Domain Name Dispute for LeeAnn Powers

In Water Resources Group, LLC v. LeeAnn Powers, Case No. FA 1206001446834 (National Arbitration Forum July 11, 2012), the firm successfully defended against a claim brought under the Uniform Domain Name Dispute Resolution Policy (UDRP). Despite the fact that Ms. Powers had registered and used the iceboxwater.com domain name for over 3 years and had used the ICEBOX trademark for over 5 years in connection with the sale of arctic spring water in a biodegradable box, Water Resources Group (“WRG”) alleged that Ms. Powers’ work for WRG gave it rights in both the domain name and the trademark. A panel appointed by the National Arbitration Forum found that WRG did not own any trademark rights and denied WRG’s request to transfer the domain name.

Grimes LLC is Awarded a Complete Dismissal of Lawsuit in Favor of Altadis U.S.A. Inc. and Imperial Tobacco Group PLC

The firm secured a complete dismissal of a federal lawsuit filed against fine cigar maker Altadis U.S.A. Inc., its corporate parent Imperial Tobacco Group PLC and thirteen other defendants, including its officers, subsidiaries and related companies. In Prakash v. Altadis U.S.A. Inc. et al., 2012 WL 1109918 (Mar. 30, 2012), the U.S. District Court for the Northern District of Ohio found that Plaintiff had not stated valid claims against the Defendants for, inter alia, civil racketeering (RICO), antitrust, false advertising, cancellation of trademarks and unfair competition.

Grimes LLC Secures Judgment for J. Armando Bermudez & Co. in Trademark Opposition

The firm obtained a judgment in favor of rum producer J. Armando Bermudez & Co., C. por A., in a Trademark Trial and Appeal Board Opposition. In J. Armando Bermudez & Co. v. Caribbean-American Tobacco Corporation, Opposition No. 91201924 (TTAB 2012), the firm successfully opposed an application to register the trademark BERMUDEZ for "cigars" in view of the Opposer's longstanding rights in the mark BERMUDEZ for "rum."

Grimes LLC Secures Jury Verdict and Award of Over $1 Million in Favor of M V Sports, Inc.

In M V Sports, Inc. v. Jaime Torres Sports Management, Inc. and Jose A. Contreras Camejo, Case Nos. 08-48128 and 08-48132 (11th Jud. Cir. Fla. 2011), the firm secured a jury verdict and combined award of more than $1 million in favor of M V Sports, Inc. ("M V Sports") against Major League Baseball player, Jose Contreras, and his sports agent, Jaime Torres Sports Management, Inc. ("JT Sports"). Following a week-long trial, the jury found that both Mr. Contreras and JT Sports had breached their respective contracts with M V Sports by failing to pay for services rendered by M V Sports. The jury also found in favor of M V Sports on every one of the Defendants' counterclaims.

Grimes LLC Resolves Trademark Litigation Dispute in Favor of Palm Bay International

The firm effected a successful resolution of a federal trademark litigation on behalf of prominent wine distributor Palm Bay International, Inc. ("Palm Bay"). The dispute involved the Defendants' alleged right to use the trademark "CAVIA" in view of Palm Bay's exclusive rights to use the mark "CAVIT" in connection with wine. A resolution was reached after the firm filed a case-dispositive motion in Palm Bay International, Inc. v. Cork Alliance, Inc. et al., 10 Civ. 23464 (S.D. Fla. 2011).

Grimes LLC Attorney is Awarded a Complete Dismissal of Lawsuits in Favor of GLOCK

Michael Patrick secured two complete dismissals of federal lawsuits filed against GLOCK, Inc. In IP Forensics, LLC v. GLOCK, Inc., Civil Action No. 4:10-cv-639 (2011), the U.S. District Court for the Eastern District of Texas adopted the report and recommendation of a United States Magistrate Judge dismissing the case based on the prior pending action doctrine. In Patent Group, LLC v. GLOCK, Inc., Civil Action No. 6:10-cv-538 (2011), the U.S. District Court for the Eastern District of Texas dismissed the case for failure to satisfy the pleading requirements of Federal Rule of Civil Procedure 9(b). The complaint was dismissed with prejudice.

Grimes LLC Protects CIGAR SAVOR Trademark on Behalf of Altadis U.S.A. Inc.

In Altadis U.S.A. Inc. v. Wentworth E. Miller, Cancellation No. 92050296 (TTAB 2011), the firm petitioned to cancel the "CIGARETTESAVER" trademark registration based upon Altadis U.S.A. Inc.'s prior rights in the "CIGAR SAVOR" trademark. The firm obtained Summary Judgment in favor of Altadis U.S.A. and an Order from the Trademark Trial and Appeal Board that, if upheld on appeal, would have resulted in the cancellation of Defendant's registration. During the pendency of the appeal, the owner of the "CIGARETTESAVER" trademark agreed to resolve the matter by deleting certain goods from his registration in order to avoid a conflict with the rights of Altadis U.S.A.

Grimes LLC Recovers Domain Name on Behalf of Altadis U.S.A. Inc.

The firm recovered the domain name backwoodscigars.org from an unauthorized Registrant on behalf of Altadis U.S.A. Inc. and Max Rohr, Inc., owner of the BACKWOODS trademark. The firm filed a Uniform Domain-Name Dispute-Resolution Policy (UDRP) Complaint in the National Arbitration Forum against the unauthorized Registrant, and then resolved the matter by securing transfer of the domain name.

Grimes LLC Resolves Trademark Infringement Litigation in Favor of CAVIT Italian Wine Cooperative

The firm successfully resolved a federal trademark litigation on behalf of the Italian wine cooperative that produces "CAVIT" brand wine. The dispute involved the Defendants' alleged right to use the trademark "CAVUS" in view of the wine cooperative's right to use the mark "CAVIT" for wine. See Cavit Cantina Viticoltori Consorzio Cantine Sociali Del Trentino Societa Cooperativav. Browman Family Vineyards, 09 Civ. 01070 (N.D. Cal. 2010).

Grimes LLC Shuts Down Use of Infringing Trade Dress on Behalf of Altadis U.S.A. Inc.

The firm was successful in removing from the marketplace cigars that infringed Altadis U.S.A. Inc.'s distinctive trade dress for its "BACKWOODS" brand cigars. In Altadis U.S.A. Inc. v. Productos del Tobaco, S.A. et al., 08 Civ. 61606 (MGC) (S.D. Fla. 2009), the firm secured consent judgments and injunctions against the foreign manufacturer of the infringing cigars, as well as the U.S. based wholesaler and distributor.

Grimes LLC Works with U.S. Attorney for South Florida to Secure Conviction of Counterfeiting Manufacturer, Affirmed on Appeal, on Behalf of Altadis U.S.A. Inc.

The firm worked with the U.S. Attorney for South Florida to score yet another victory for Altadis U.S.A. in its ongoing efforts to prosecute those who engage in counterfeiting of the company's trademarks. On December 17, 2008, the United States Court of Appeals for the Eleventh Circuit affirmed the conviction and sentencing of Defendant Juan Penton. During a sting operation orchestrated by the firm, Penton had sold an undercover Miami-Dade County police officer 60 boxes of cigars, containing a combination of the registered trademarks owned by Altadis U.S.A.'s subsidiaries, Cuban Cigar Brands, N.V. and Max Rohr, Inc., and by General Cigar Co., as well as the words "Habana," "Habana Cuba," "Habanos SA," and "Hecho en Cuba." The boxes were sealed with fabricated Cuban seals and contained inside fake Cuban Government guarantees. "Habana" was also printed on each of the cigar bands. Penton was found guilty by a Miami jury of three counts of trafficking and attempting to traffic in counterfeit goods. On appeal, Penton moved for an acquittal on the grounds that the evidence showed that there were "parallel" marks in the United States and Cuba, that is, the Cuban government sells a Cuban cigar in Cuba and other parts of the world under the same apparent trademark as non-Cuban cigars are sold in the U.S. by Altadis U.S.A. and General Cigar. Penton argued that his cigar boxes imitated the Cuban marks. As the Court noted, the problem for Penton was that such argument had already been rejected by the Court in U.S. v. Guerra, 293 F.3d 1279 (11th Cir. 2002). Penton attempted to suggest that the holding in the Guerra case is no longer good law because of the Helms-Burton Act. The Court rejected Penton's position. Additionally, Penton argued that the government failed to prove that his use was likely "to cause confusion." The Court rejected Penton's argument, citing its prior decision in U.S. v. Torkington, 812 F.2d 1347 (11th Cir. 1987), in which the Court held that it is not necessary to show proof of confusion through the testimony of consumers or experts or the admission of surveys, and that it is a question for the jury to decide whether a direct purchaser or subsequent individual in a post-sale context might be confused, mistaken or deceived.

Grimes LLC Works with Monroe County, Florida Authorities to Raid and Arrest Counterfeiting Key West Retailers on Behalf of Altadis U.S.A. Inc.

As part of its ongoing efforts to protect the intellectual property rights of Altadis U.S.A. in its famous Cuban heritage brands, the firm worked with investigators from the Monroe County, Florida State's Attorney's Office, assisted by officers and agents from U.S. Department of Homeland Security, Immigration and Customs, the Marathon County, Duval County and Monroe County Sheriffs' Offices, Key West Code Compliance and the Florida Department of Revenue, to simultaneously raid seven Key West retail establishments and arrested five individuals who own those establishments as part of a nationwide crackdown on cigar counterfeiting. The authorities seized a substantial number of boxes of counterfeit MONTECRISTO, H. UPMANN and ROMEO Y JULIETA cigars, and also counterfeit COHIBA cigars as a result of the cooperation of General Cigar.

Grimes LLC Works with Broward County, Florida Authorities to Secure Conviction and Incarceration of Counterfeiting Retailer on Behalf of Altadis U.S.A. Inc.

As part of its ongoing efforts to protect the intellectual property rights of Altadis U.S.A. in its famous Cuban heritage brands, the firm worked first with the Broward County Sheriff's Office to investigate and apprehend a retailer engaged in the sale of counterfeit cigars and then with the Broward County Prosecutor to secure a Florida jury guilty verdict. State of Florida v. James David Joiner, Circuit Court of the Seventeenth Judicial Circuit, Broward County, Florida, Case No. 06-2201CF10A (Rodriguez-Powell). Joiner, who had been found guilty of vending goods with counterfeit trademarks, was sentenced to serve 364 days in Broward County Jail, to pay a fine, to pay restitution to Altadis U.S.A. and to pay the cost of prosecution and of probationary supervision. Altadis U.S.A.'s representative explained to the court during the sentencing hearing that Joiner's conduct was particularly egregious because he had been a direct buying account of Altadis U.S.A. for many years, testifying that: "Consumers had come to trust Joiner and when he engaged in the counterfeiting conduct for which he has been found guilty, he not only broke the law, he violated that trust" and that: "Joiner knew better. He knew what he was doing was wrong, but he did it anyway, motivated by personal greed." After the jury's verdict was announced, the judge took the unusual step of ordering Joiner to be immediately remanded into custody pending sentencing.

Grimes LLC Recovers Domain Name on Behalf of Jessica Simpson

In With You Inc. v. Private, Case No. FA0805001191869 (National Arbitration Forum 2008), the firm recovered the domain name jessicasimpsononline.com from an unauthorized Registrant, who claimed that he was operating a "Fan Site" and that his use of the domain name was therefore permissible "fair use." The National Arbitration Forum found that the Registrant's use of the domain name was intended to redirect Internet traffic for commercial gain and was therefore not permitted, and that the Registrant had acted in bad faith. Accordingly, the domain name was transferred to With You Inc., an entity owned by Jessica Simpson.

Grimes LLC Successfully Resolves Trademark Infringement Litigation on Behalf of Vanguard Productions

In J. David Spurlock, dba Vanguard Productions v. Perseus Books, LLC and Vanguard Press, 08 Civ. 6490 (S.D.N.Y. 2008), the firm effected a successful resolution of a federal trademark litigation on behalf of book publisher, J. David Spurlock, dba Vanguard Productions ("Vanguard Productions"). The dispute involved the Defendants' alleged right to use the name VANGUARD PRESS in connection with books and book publishing in view of Vanguard Productions' long-time use of a family of VANGUARD trademarks and federal registration for the VANGUARD PRODUCTIONS trademark for publishing and distributing books. Notably, the U.S. Patent and Trademark Office subsequently refused registration of the VANGUARD PRESS trademark, citing Vanguard Productions' registered trademark.

Grimes LLC Secures a Successful Trial Verdict for Cuban Cigar Brands

The firm secured a trial verdict in favor of Cuban Cigar Brands, N.V., subsidiary of fine cigar maker Altadis U.S.A. Inc. and owner of the world famous "MONTECRISTO" trademark. In Cuban Cigar Brands, N.V. v. Inter America Cigar Co., Opposition No. 91169391 (TTAB 2008), the Trademark Trial and Appeal Board held there is a likelihood of confusion between Cuban Cigar Brands' "MONTECRISTO" mark for use in connection with cigars, and the Applicant's "PRIMO DEL CRISTO and Design" mark for use in connection with cigars.

Grimes LLC Represents Jessica Simpson in Litigation Involving License Agreement

In Tarrant Apparel Group v. Jessica Simpson, et al., Index No. 601199/06 (N.Y.S. Supreme Court 2006), the firm successfully defended celebrity Jessica Simpson against claims seeking $100 million in damages in a case brought by her former jeans manufacturer alleging breach of a license agreement.

Grimes LLC Obtains $1.7 Million Jury Award for Toy Inventors Against Multinational Toy Company

In Design Innovation, Inc. v. Fisher-Price, Inc., 03 Civ. 222 (JBA) (D. Conn. 2006), the firm obtained a $1.7 million jury verdict in favor of toy inventors in a case involving misappropriation of a novel toy concept. Following a three week trial on the merits, the jury found that the Defendant had misappropriated the inventors' previously-submitted concept for incorporating an image component in connection with the backpack of each of Defendant's "Rescue Heroes" action figures, which enhanced role play for a child by depicting the mission of the particular character (e.g., obstacles and dangers the character might face).

Grimes LLC Launches Anti-Counterfeiting Program on Behalf of Altadis U.S.A. Inc.

Commencing in 2005, when counterfeiting surfaced as a problem for the firm's client, Altadis U.S.A. Inc., the firm's Managing Partner, Chuck Grimes, worked with undercover operatives, private investigators and federal, state and local law enforcement officials to develop a program to carry out numerous investigations of South Florida's cigar counterfeiting industry. Those actions resulted in the seizures in December 2005 of tens of millions of dollars of counterfeit merchandise and the arrests and convictions of a number of individuals:

 

· Miami Dade Police conducted "Operation Smoke Ring"
· Broward Sheriff's Office conducted "Operation Up In Smoke"
· Key West State's Attorney's Office and ICE conducted a joint "Operation Smoke Stack"

As a result of the firm's efforts and the program that the firm put in place, whenever counterfeiting is uncovered, the firm is now able to call upon the continuing support of:

· Florida Department of Law Enforcement
· Florida ABT
· City of Miami PD
· Miami Beach PD
· Key West SAO, Investigative Division
· Broward Sheriff's Office
· MDPD IGB (successor to ECU)
· ICE

Grimes LLC Represents The Hearst Corporation and Harpo Print in Litigation Involving "O The Oprah Magazine"

In Brockmeyer v. The Hearst Corporation, 2003 U.S. Dist. LEXIS 3394 (S.D.N.Y. 2003), the firm successfully defended against a German magazine owner's attempt to halt the publication of Oprah Winfrey's magazine, "O The Oprah Magazine," and subsequently obtained summary judgment against claims of trademark infringement brought by the German magazine owner. The Court held that there was no likelihood of confusion between the parties' magazines as a matter of law, and dismissed all of Plaintiff's federal and state claims.

Grimes LLC Prevails for South Beach Beverage Company in Bottle Design Infringement Action

In Talking Rain Beverage Corp. v. South Beach Beverage Co., et al., 349 F.3d 601 (9th Cir. 2003), the firm obtained summary judgment for South Beach Beverage Company, subsidiary of PepsiCo and maker of SOBE beverages, in a trademark infringement case involving the design of beverage bottles.

Grimes LLC Secures Multimillion-Dollar Award Obtained for International Cigar Company in Trademark Infringement and Counterfeiting Litigation

Following a hearing on damages, the firm obtained a judgment of more than $2.1 million from the United States District Court for the Southern District of New York in the trademark infringement and counterfeiting case Altadis U.S.A., et al. v. Monte Cristi de Tabacos, et al., 96 Civ. 4209 (BSJ) (S.D.N.Y. 2002). The firm had previously obtained summary judgment against the Defendants.

Grimes LLC Firmly Establishes Ownership of Copyrights for Archie Comic Publications, Inc.

In a series of litigations throughout the early-2000's, the firm successfully defended Archie Comic Publications, Inc. ("ACP") against claims made by Daniel S. DeCarlo, a freelance cartoonist who had formerly worked on comic books and strips produced by ACP, alleging that he created and owned copyrights in certain famous characters appearing in such comic books and strips. The firm also obtained a judgment that the characters drawn by the cartoonist were works for hire owned by ACP. Ultimately, ACP's copyrights in its famous characters were affirmed and all of the claims against ACP were dismissed. See Archie Comic Publications, Inc. v. DeCarlo, 258 F.Supp.2d 315 (S.D.N.Y. 2003), aff'd 88 Fed.Appx. 468 (2d Cir. 2004); DeCarlo v. Archie Comic Publications, Inc., 127 F.Supp.2d 497 (S.D.N.Y. 2001), aff'd 11 Fed.Appx. 26 (2d Cir. 2001).