Case Victories

Trademark Infringement

(Client Denoted in Blue)

Gary Christopher v. Ryan Grepper
Practice Area: Trademark Infringement
Outcome: Infringing trademark registrations cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for COOLEST coolers trademark registrations based upon client’s earlier trademark rights.

Structural Plastics v. Sam Pievac Company
Practice Area: Trademark Infringement
Outcome: Settled pursuant to a confidential win-win settlement agreement.
Description: Trademark infringement lawsuit involving dispute over the rights to SPC.

Nova-Ortho Medical v. Farinpour
Practice Area: Trademark Infringement; Cybersquatting
Outcome: Settled with domain name being transferred back to client and client paying only the $10k for work performed.
Description: Client’s former IT person demanded nearly $40k (when only $10k worth of work had been performed) and hijacked client’s domain name as ransom. Initiated lawsuit in U.S. District Court for trademark infringement and cybersquatting.

Tom Penny and Flip Skateboards, Inc. v. Absolute International PTY LTD
Practice Area: Trademark Infringement
Outcome: Settled pursuant to confidential agreement.
Description: Prosecution of trademark infringement action against PENNY skateboards in Central District of California Federal Court.

Metasoft v. Global Operations and Development
Practice Area: Intellectual Property
Outcome: Settled Forcing Plaintiff to Pay All Costs and Attorney Fees.
Description: Defended action by Canadian company against Orange County based non-profit corporation.

New Enchantment v. The Journey Spa & Wellness Center
Practice Area: Trademark Infringement
Outcome: Settled pursuant to a confidential settlement agreement.
Description: Defended a trademark infringement action involving the JOURNEY SPA trademark.

Venvest Ballard v. Clockwork Home Services
Practice Area: Trademark Infringement
Outcome: Settled pursuant to confidential settlement agreement.
Description: Federal declaratory judgment action for non-infringement of trademark, non-compete and unfair competition.

Clutch Masters v. eClutchMaster
Practice Area: Trademark Infringement
Outcome: Opposition granted, judgment for client, infringing application cancelled by Trademark Trial and Appeal Board.
Description: Opposition before the Trademark Trial and Appeal Board for a trademark application directed to a mark confusingly similar to my client’s trademark.

RRLH, Inc. v. Golden Rain Foundation, Inc.
Practice Area: Trademark Infringement
Outcome: Settled pursuant to confidential settlement agreement.
Description: Defense of trademark infringement claims concerning LEISURE WORLD trademark; prosecution of counterclaims. Settled pursuant to a confidential settlement agreement after substantial preparation and just a few days before trial scheduled to begin.

Prolab Nutrition, Inc. v. NBTY, Inc. and Met-Rx Substrate Technology, Inc.
Practice Area: Trademark Infringement
Outcome: Settled pursuant to confidential settlement agreement.
Description: Prosecution of declaratory judgment action for non-infringement concerning MET-RX trademark; defense of counterclaims. Resolved via confidential settlement agreement.

Military Order of the Purple Heart v. Purple Heart Veterans Rehabilitation Services
Practice Area: Trademark Infringement
Outcome: Settled pursuant to confidential settlement agreement.
Description: Defended action for trademark infringement concerning PURPLE HEART trademark; prosecuted counterclaims for intentional interference with actual and prospective economic advantage.

Trademark Oppositions

(Client Denoted in Blue)

Bauer Hockey, Inc. v. Bodyjar, Inc. Proceeding No.: 91225213 Practice Area: Trademark Opposition Outcome: Opposition dismissed. Description: Third party attempted to oppose client’s application for SIDE MISSION based upon earlier registrations for MISSION. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Citigroup, Inc. v. City Title Loan, LLC Proceeding No.: 91219849 Practice Area: Trademark Opposition Outcome: Opposition dismissed. Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Echo Design Group, Inc. v. Echo Park Surf Squad Proceeding No.: 91217744 Practice Area: Trademark Opposition Outcome: Opposition dismissed. Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Trademark Cancellations

(Client Denoted in Blue)

Gary Christopher v. Ryan Grepper
Proceeding No.: 92070792 (July 20, 2020)
Practice Area: Trademark Cancellation
Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board.
Description: Cancellation before the Trademark Trial and Appeal Board for COOLEST coolers trademark registrations based upon client’s earlier trademark rights.

Tara Brands, LLC v. Tiburon Holdings, Inc.
Proceeding No.: 92068088 (March 20, 2019)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: A fraudulent trademark registration for ANATOMY was blocking client’s application to register the ANATOMY trademark for hair care products. Petitioned to cancel the fraudulent registration and successfully moved the Trademark Trial and Appeal Board for terminating sanctions when the opposing party failed to respond to discovery.

Tamara Latta v. Yapp Media, LLC
Proceeding No.: 92066869 (January 10, 2018)
Practice Area: Trademark Cancellation
Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board.
Description: A fraudulent trademark registration for SPORTSYAPPER was blocking client’s application to register the SPORTSYAP! trademark for a sports app. Petitioned to cancel the fraudulent registration and successfully moved the Trademark Trial and Appeal Board for default judgment when the opposing party failed to respond.

LUV.IT Technologies, Inc. v. Bedrock VC, Inc.
Proceeding No.: 92065031 (March 26, 2018)
Practice Area: Trademark Cancellation
Outcome: Successfully defended attempt to cancel client’s trademark registration.
Description: When a company attempted to register LUVIT as a trademark, the U.S. Patent and Trademark Office refused registration based upon our client’s registration for LOVE IT. The company then resorted to trademark bully tactics and attempted to cancel our client’s trademark registration. Through careful and strategic tactics, The Kinder Law Group used the motion and discovery processes to place the case in position for judgment on the pleadings. The Trademark Trial and Appeal Board granted the judgment on the pleadings and dismissed the cancellation attempt.

Streamline Design & Silkscreen, Inc. v. Paper, Denim and Cloth, Inc.
Proceeding No.: 92062238 (March 29, 2016)
Practice Area: Trademark Cancellation
Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board.
Description: Several fraudulent trademark registrations for RESIN were blocking client’s application to register the IRON & RESIN trademark for retail clothing store services. Petitioned to cancel the fraudulent registrations and successfully moved the Trademark Trial and Appeal Board for default judgment when the opposing party failed to respond.

(Client Denoted in Blue)

Relaximals, Inc. v. Brentwood Originals, LLC
Practice Area: Copyright Infringement
Outcome: Transferred case to insurance defense counsel.
Description: Sometimes the attorneys at The Kinder Law Group are doing their best work when they negotiate themselves out of a job. Here, the client was wrongly accused of copyright infringement and was faced with having to spend money to defend the case. The Kinder Law Group persuaded the client’s insurance company to defend the case on behalf of the client. The Kinder Law Group transferred the case to insurance defense counsel to defend the case at no additional cost to the client.

EKPG, Inc. v. LAT, LLC
Practice Area: Copyright Infringement
Outcome: Settled pursuant to a confidential win-win settlement agreement.
Description: Defended copyright infringement case involving fabric design. Resolved the case via confidential settlement agreement. Opposing party was so impressed with the manner in which TKLG resolved the case, they later ended up retaining TKLG. How many firms can claim to make both their client and the opposing party happy.

Cobra Engineering, Inc. v. Harley Davidson, Inc.
Practice Area: Copyright Infringement
Outcome: Settled pursuant to a confidential settlement agreement.
Description: Prosecuted a declaratory judgment action for non-infringement of copyright in regards to claims of copyright infringement involving the fair use display of Harley-Davidson motorcycles in company catalogs promotional of client’s aftermarket motorcycle parts and accessories products.

Domain Name Disputes

(Client Denoted in Blue)

Defy Media v. Virtual Point (WIPO Case No. 2015-1249) [addicting-games.com]: When a well-financed company (successor to Viacom) filed a UDRP action with WIPO in Geneva, Switzerland, Mr. Kinder contacted the company’s in-house counsel and offered them an opportunity to withdraw the complaint before he filed his response. When they refused, Mr. Kinder defended the action and proved that the other side was using the UDRP process in bad faith and attempting to take by force what was not rightfully theirs.

City Title Loan, LLC v. Bellnames Privacy Protection Service (WIPO Case No. 2012-2021) [cityloan.com]: After filing a comprehensive complaint before the World Intellectual Property Organization in Geneva, Switzerland, Mr. Kinder successfully negotiated the immediate transfer of the domain name.

Diamond Mattress Company, Inc. v. Diamond Mattress (WIPO Case No. D2010-1637) [diamondmattress.net] and [diamondmattress.org]: When a customer registered the domain name equivalent of a client’s brand name, Mr. Kinder coordinated a legal strategy that firmly, yet respectfully, took back what rightfully belonged to the client. The relationship with the client was preserved while maintaining the client’s rights.

Smiths Group plc v. Kevin Daste (NAF Case No. FA0603000662360) [smithdetection.com] – A cybersquatter had registered the domain name equivalentof the Smiths Group multinational business. TKLG founder Brian Kinder demonstrated clear rights to the trademark and assembled a hard-hitting complaint. The domain name was ordered transferred to the client. Link to decision.

Gilead Sciences v. Kumar Patel (WIPO Case No. D2005-0831) [gilead-sciences.com] – In this UDRP proceeding, a sophisticated cybersquatter had registered the hyphenated domain name equivalent of the names for several high profile companies, including many in the pharmaceutical industry. The cybersquatter attempted to create a First Amendment defense relating to Freedom of Speech by creating a website that featured highly inflammatory (and wholly untrue) statements concerning the target companies. Despite lawyers for other companies being unsuccessful in their efforts to recover the domain names, TKLG founder Brian Kinder created and implemented a sophisticated research strategy to gather evidence demonstrating bad faith registration and use (as opposed to a legitimately aggrieved and legitimate free speech issue). The domain name was ordered transferred to the client.

Crystal Cathedral v. Ed Stuivenberg (World Intellectual Property Organization) Case No. D2002-0102 [thehourofpower.com]: A cybersquatter registered the domain name equivalent of a religious program broadcast throughout the world. He then put up a pornographic website in an effort to extort a quick settlement. Instead, Mr. Kinder quickly and inexpensively obtained a transfer order on behalf of the client.

Domain Name Disputes

The founder of The Kinder Law Group, Brian P. Kinder, has has litigated many high-profile domain name disputes over the course of his career. Many of the precedent setting decisions that Mr. Kinder has obtained on behalf of his clients have subsequently been cited numerous times as precedent in later cases. The following is a representative sample of some of the more noteworthy cases handled by Mr. Kinder: Defy Media v. Virtual Point (WIPO Case No. 2015-1249) [addicting-games.com]: When a well-financed company (successor to Viacom) filed a UDRP action with WIPO in Geneva, Switzerland, Mr. Kinder contacted the company’s in-house counsel and offered them an opportunity to withdraw the complaint before he filed his response. When they refused, Mr. Kinder defended the action and proved that the other side was using the UDRP process in bad faith and attempting to take by force what was not rightfully theirs. City Title Loan, LLC v. Bellnames Privacy Protection Service (WIPO Case No. 2012-2021) [cityloan.com]: After filing a comprehensive complaint before the World Intellectual Property Organization in Geneva, Switzerland, Mr. Kinder successfully negotiated the immediate transfer of the domain name. Diamond Mattress Company, Inc. v. Diamond Mattress (WIPO Case No. D2010-1637) [diamondmattress.net] and [diamondmattress.org]: When a customer registered the domain name equivalent of a client’s brand name, Mr. Kinder coordinated a legal strategy that firmly, yet respectfully, took back what rightfully belonged to the client. The relationship with the client was preserved while maintaining the client’s rights. Gilead Sciences v. Kumar Patel (WIPO Case No. D2005-0831) [gilead-sciences.com] – In this UDRP proceeding, a sophisticated cybersquatter had registered the hyphenated domain name equivalent of the names for several high profile companies, including many in the pharmaceutical industry. The cybersquatter attempted to create a First Amendment defense relating to Freedom of Speech by creating a website that featured highly inflammatory (and wholly untrue) statements concerning the target companies. Despite lawyers for other companies being unsuccessful in their efforts to recover the domain names, TKLG founder Brian Kinder created and implemented a sophisticated research strategy to gather evidence demonstrating bad faith registration and use (as opposed to a legitimately aggrieved and legitimate free speech issue). The domain name was ordered transferred to the client. Crystal Cathedral v. Ed Stuivenberg (World Intellectual Property Organization) Case No. D2002-0102 [thehourofpower.com]: A cybersquatter registered the domain name equivalent of a religious program broadcast throughout the world. He then put up a pornographic website in an effort to extort a quick settlement. Instead, Mr. Kinder quickly and inexpensively obtained a transfer order on behalf of the client.

Trademark Infringement

(Client Denoted in Blue)

Trademark Oppositions

(Client Denoted in Blue) Bauer Hockey, Inc. v. Bodyjar, Inc. Proceeding No.: 91225213 Practice Area: Trademark Opposition Outcome: Opposition dismissed. Description: Third party attempted to oppose client’s application for SIDE MISSION based upon earlier registrations for MISSION. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition. Citigroup, Inc. v. City Title Loan, LLC Proceeding No.: 91219849 Practice Area: Trademark Opposition Outcome: Opposition dismissed. Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition. Echo Design Group, Inc. v. Echo Park Surf Squad Proceeding No.: 91217744 Practice Area: Trademark Opposition Outcome: Opposition dismissed. Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Trademark Cancellations

(Client Denoted in Blue) Gary Christopher v. Ryan Grepper Proceeding No.: 92070792 (July 20, 2020) Practice Area: Trademark Cancellation Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board. Description: Cancellation before the Trademark Trial and Appeal Board for COOLEST coolers trademark registrations based upon client’s earlier trademark rights. Tara Brands, LLC v. Tiburon Holdings, Inc. Proceeding No.: 92068088 (March 20, 2019) Practice Area: Trademark Cancellation Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board. Description: A fraudulent trademark registration for ANATOMY was blocking client’s application to register the ANATOMY trademark for hair care products. Petitioned to cancel the fraudulent registration and successfully moved the Trademark Trial and Appeal Board for terminating sanctions when the opposing party failed to respond to discovery. Tamara Latta v. Yapp Media, LLC Proceeding No.: 92066869 (January 10, 2018) Practice Area: Trademark Cancellation Outcome: Trademark registration cancelled by Trademark Trial and Appeal Board. Description: A fraudulent trademark registration for SPORTSYAPPER was blocking client’s application to register the SPORTSYAP! trademark for a sports app. Petitioned to cancel the fraudulent registration and successfully moved the Trademark Trial and Appeal Board for default judgment when the opposing party failed to respond. LUV.IT Technologies, Inc. v. Bedrock VC, Inc. Proceeding No.: 92065031 (March 26, 2018) Practice Area: Trademark Cancellation Outcome: Successfully defended attempt to cancel client’s trademark registration. Description: When a company attempted to register LUVIT as a trademark, the U.S. Patent and Trademark Office refused registration based upon our client’s registration for LOVE IT. The company then resorted to trademark bully tactics and attempted to cancel our client’s trademark registration. Through careful and strategic tactics, The Kinder Law Group used the motion and discovery processes to place the case in position for judgment on the pleadings. The Trademark Trial and Appeal Board granted the judgment on the pleadings and dismissed the cancellation attempt. Streamline Design & Silkscreen, Inc. v. Paper, Denim and Cloth, Inc. Proceeding No.: 92062238 (March 29, 2016) Practice Area: Trademark Cancellation Outcome: Trademark registrations cancelled by Trademark Trial and Appeal Board. Description: Several fraudulent trademark registrations for RESIN were blocking client’s application to register the IRON & RESIN trademark for retail clothing store services. Petitioned to cancel the fraudulent registrations and successfully moved the Trademark Trial and Appeal Board for default judgment when the opposing party failed to respond.

Copyright Infringement

(Client Denoted in Blue) Relaximals, Inc. v. Brentwood Originals, LLC Practice Area: Copyright Infringement Outcome: Transferred case to insurance defense counsel. Description: Sometimes the attorneys at The Kinder Law Group are doing their best work when they negotiate themselves out of a job. Here, the client was wrongly accused of copyright infringement and was faced with having to spend money to defend the case. The Kinder Law Group persuaded the client’s insurance company to defend the case on behalf of the client. The Kinder Law Group transferred the case to insurance defense counsel to defend the case at no additional cost to the client. EKPG, Inc. v. LAT, LLC Practice Area: Copyright Infringement Outcome: Settled pursuant to a confidential win-win settlement agreement. Description: Defended copyright infringement case involving fabric design. Resolved the case via confidential settlement agreement. Opposing party was so impressed with the manner in which TKLG resolved the case, they later ended up retaining TKLG. How many firms can claim to make both their client and the opposing party happy. Cobra Engineering, Inc. v. Harley Davidson, Inc. Practice Area: Copyright Infringement Outcome: Settled pursuant to a confidential settlement agreement. Description: Prosecuted a declaratory judgment action for non-infringement of copyright in regards to claims of copyright infringement involving the fair use display of Harley-Davidson motorcycles in company catalogs promotional of client’s aftermarket motorcycle parts and accessories products.

Domain Name Disputes

Trademark Infringement

(Client Denoted in Blue)

Trademark Oppositions

(Client Denoted in Blue)

Bauer Hockey, Inc. v. Bodyjar, Inc.
Proceeding No.: 91225213
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for SIDE MISSION based upon earlier registrations for MISSION. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Citigroup, Inc. v. City Title Loan, LLC
Proceeding No.: 91219849
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Echo Design Group, Inc. v. Echo Park Surf Squad
Proceeding No.: 91217744
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.

Trademark Cancellations

(Client Denoted in Blue)

Domain Name Disputes

(Client Denoted in Blue)

Wind Creek v. Tech Admin (NAF Case No. FA1509001639763) [windcreek.com]: When a well-financed casino filed a domain name complaint with WIPO, Mr. Kinder defended the action and contested the wrongful accusation of cybersquatting. After the Panelist rejected Mr. Kinder’s arguments and issued a decision granting transfer, TKLG filed an appeal to the U.S. District Court. The casino owner retained legal counsel who specialized in tribal law who attempted to subvert the appeal. When Mr. Kinder forcefully opposed, the other side knew they were going to lose and agreed to enter into a consent judgment withdrawing the earlier panel decision. As a result, the client was entirely vindicated of any wrongdoing. Link to decision. Defy Media v. Virtual Point (WIPO Case No. 2015-1249) [addicting-games.com]: When a well-financed company (successor to Viacom) filed a domain name complaint with WIPO, Mr. Kinder contacted the company’s in-house counsel and offered them an opportunity to withdraw the complaint before he filed his response. When they refused, Mr. Kinder defended the action and proved that the other side was wrongly accusing the client of cybersquatting. Moreover, Mr. Kinder proved that the other side was acting in bad faith and attempting to take by force what was not rightfully theirs. The complaint was denied and the client vindicated of any wrongdoing. Link to decision. City Title Loan, LLC v. Bellnames Privacy Protection Service (WIPO Case No. 2012-2021) [cityloan.com]: After filing a comprehensive complaint before the World Intellectual Property Organization in Geneva, Switzerland, Mr. Kinder successfully negotiated the immediate transfer of the domain name without the need to have a formal decision issued. Diamond Mattress Company, Inc. v. Diamond Mattress (WIPO Case No. D2010-1637) [diamondmattress.net] and [diamondmattress.org]: When a customer registered the domain name equivalent of a client’s brand name, Mr. Kinder coordinated a legal strategy that firmly, yet respectfully, took back what rightfully belonged to the client. The relationship with the client was preserved while maintaining the client’s rights. Link to decision. Smiths Group plc v. Kevin Daste (NAF Case No. FA0603000662360) [smithdetection.com] – A cybersquatter had registered the domain name equivalent of the Smiths Group multinational business. TKLG founder Brian Kinder demonstrated clear rights to the trademark and assembled a hard-hitting complaint. The domain name was ordered transferred to the client. Link to decision. Gilead Sciences v. Kumar Patel (WIPO Case No. D2005-0831) [gilead-sciences.com] – In this UDRP proceeding, a sophisticated cybersquatter had registered the hyphenated domain name equivalent of the names for several high profile companies, including many in the pharmaceutical industry. The cybersquatter attempted to create a First Amendment defense relating to Freedom of Speech by creating a website that featured highly inflammatory (and wholly untrue) statements concerning the target companies. Despite lawyers for other companies being unsuccessful in their efforts to recover the domain names, TKLG founder Brian Kinder created and implemented a sophisticated research strategy to gather evidence demonstrating bad faith registration and use (as opposed to a legitimately aggrieved and legitimate free speech issue). The domain name was ordered transferred to the client. Link to decision. Crystal Cathedral v. Ed Stuivenberg (WIPO Case No. D2002-0102) [thehourofpower.com]: A sophisticated cybersquatter registered the domain name equivalent of a religious program that is broadcast throughout the world. He then put up a pornographic website in an effort to build a free speech defense and to use delay as a means of extracting a quick settlement. Instead, Mr. Kinder quickly and inexpensively obtained a transfer order on behalf of the client in what was one of the earliest domain name decisions involving free speech issues and domain policy. The decision remains widely cited precedent to this day. Link to decision.