Tag Archives: Pittsburgh Trademark Lawsuit

Smiley Face Cookie Trademark Infringement Suit

On December 31, 2009, Eat’n Park, a restaurant group with its principal place of business in Pittsburgh, filed suit against Crumb Corps, a Texas corporation, for trademark infringement, trademark dilution, and unfair competition.

The complaint alleges that Crumb Corps sells “Smiley Faces” cookies which have a design that is confusingly similar to the registered trademark of Eat’n Park and are directly competitive products to the Eat’n Park SMILEY face cookies. Crumb Corps’s cookies are available via retail stores, catalogs, and online. Eat’n Park alleges that Crumb Corp’s sale of cookies using its smiling face design and the SMILEY word mark constitutes unfair competition.

– Katie Cooper

Chevron Files Trademark Infringement Suits

texaco drawingFranchise arrangements often involve a variety of intellectual property rights. Disputes can arise when a franchisee’s license ends, but the franchisee continues to sell a product associated with the franchise or the franchisee continues to display the franchise’s signage.

On September 22, 2009, Chevron Intellectual Property LLC and Chevron U.S.A. Inc. (“Chevron”) filed two separate trademark infringement and unfair competition lawsuits in the United States District Court for the Western District of Pennsylvania against defendants who allegedly owned and operated automobile gasoline and service stations with infringing signage and materials (2:09-cv-01292-AJS and 2:09-cv-01293-TFM).

Chevron owns over twenty trademarks and service marks including trademarks for TEXACO, Star T Design, Service Station Canopy Design, Gasoline Pump Design, and a Building Design for automobile services. There are over 1,500 TEXACO-branded stations currently licensed to use such marks.

Chevron’s authorized TEXACO-branded stations sell TEXACO brand gasoline. Licensed TEXACO-branded service station facilities are authorized to use and prominently display exterior and interior signage that bear Chevron’s registered TEXACO and Star T Design trademarks. Buildings of licensed TEXACO-branded facilities also often have an exterior appearance consisting of: (1) a red and black building in combination with silver and dark gray, with the Star T Design mark; and (2) a rigid canopy over the gas pumps with a black background and a red border, including the TEXACO and Star T Design marks on the side of the canopy.

For a period of time from 2001 to 2006, Chevron licensed the use of the TEXACO marks through Shell Oil Company and other related companies. Chevron claims that the defendants once operated as a licensed TEXACO-branded service station and sold TEXACO brand gasoline and other products. By June 30, 2006 defendants were no longer selling or supplying TEXACO brand gasoline and were no longer authorized licensees of Chevron. At that time, defendants were obligated to remove the TEXACO marks from their facilities, but defendants still have not. Chevron alleges that while defendants’ facilities are presently not operational, defendants displayed and used the infringing signage after June 30, 2006 and defendants continue to display signage on the premises.

Defendants have not yet filed Answers.

– Katie Cooper

Pittsburgh Corporation Files Unfair Competition, Trademark Infringement, and Trade Secret Lawsuit

Burt Hill, Inc. is a Pennsylvania corporation with offices in Pittsburgh, Dubai and Abu Dhabi, United Arab Emirates. On September 21, 2009, Burt Hill filed suit against seven employees of Burt Hill for several causes of action including unfair competition, trademark infringement, and misappropriation of trade secrets. (Burt Hill, Inc. v. Hassan et al Case No. 2:2009cv01285.)

According to the Complaint, “Burt Hill provides architecture and engineering services, including interior design, landscape architecture, sustainable design, project management, and master planning services.”

Burt Hill owns U.S. Trademark Registration Number 3,201,245 for the mark BURT HILL, which registered on January 23, 2007. Burt Hill alleges that the mark is well-known in the architecture, engineering services, and construction industries and that Burt Hill has built significant goodwill through the use of its mark. The Complaint also alleges that Burt Hill has trade secrets and confidential and proprietary information regarding its business and customers that provide Burt Hill with a competitive advantage in its business.

In 2005, Burt Hill decided to expand by opening branch offices in Dubai and Abu Dhabi. Each of the defendants were entrusted employees of Burt Hill for several years in the Butler, Pennsylvania office. They were reassigned to the Dubai and Abu Dhabi offices where they held managerial positions.

From 2005 until 2009 the Dubai office grew very rapidly, which raised concerns for Burt Hill about the business practices of the Dubai office. Burt Hill alleges, “the business practices of the offices, especially the inefficient hiring and uncontrolled staff size, wasteful project and business management, high overhead, and large accounts receivable” were not consistent with Burt Hill’s standard business practice or corporate policies.

Burt Hill states that in March of 2009, the defendants made it known to Burt Hill that they wanted Burt Hill to give them the Dubai and Abu Dhabi offices, and if Burt Hill would not hand the offices over, they would take them themselves. Burt Hill alleges that the defendants “entered into a scheme … to divert Burt Hill’s projects, assets, and employees to a separate covert operation owned and controlled by defendants” and to do this, the defendants “used substantial resources of Burt Hill including its money, employees, trade secrets, intellectual property, and proprietary and confidential information.”

Defendants also “began marketing for BH Global rather than Burt Hill.” Defendants then “represented to current and prospective Burt Hill clients or marketing affiliates that BH Global was affiliated with Burt Hill.”

An Answer to the Complaint has not yet been filed. The Answer is due October 14, 2009.

– Katie Cooper