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July 24, 2014

Two Toiletry Trademark Infringement Assertions in Georgia Suggest A Bad Odor in the Air As Previously Licensed or Franchised Individuals Continue Trademark Usage After Revocations

First Case

Lubin, SARL, takes on Rhinoceros Boutique and related individuals and entities in Trademark Infringement Action in the Northern District of Georgia,

The verified complaint relates an intriguing story of the efforts to reestablish the brands one of the oldest active perfumeries in the world in the United States.  Pierre-Franҁois Lubin opened his first boutique “Au Bouquet de Roses” in 1798 and his fragrances became a favorite of Empress Joséphine (wife of Napoleon I).  The Parfums Lubin, as they were known,  were first imported into America around 1830 through an American subsidiary – Lubin Company.  An image of a perfume bottle containing one of the brands in issue is depicted below (visit the website at http://www.lubin-parfum.fr/ for the accompanying music and visual effects)

trademark infringement intellectual property GeorgiaUnfortunately, the Lubin Company’s U.S. operation was a casualty of the Great Depression but distribution continued through a New York City distributor.  The French company’s financial condition also deteriorated until in 1998 until its then German owners entered negotiations to return ownership to a French company, which ultimately occurred in 2004.  At that time Lubin, SARL, was created by the purchaser “to manage and control the production and distribution of the products bearing the Lubin Trademarks,” while the purchasing company, Strategem, SAS, retained ownership of the 16 Lubin Trademarks, including Lubin (Registration No. 3,078,477), Idole de Lubin(Registration No. 3,154,199) and Inedit de Lubin (Registration No. 3,699,189).  In January 2007 Lubin, SARL was granted exclusive worldwide licensing rights to the Lubin Trademarks with the express authorization to sue for infringement.

In 2008 Lubin, SARL’s General Director met Ms. Nathalie Welch in New York and began two years of discussions relating authorizing a new distributor.  In the meantime, Lubin, SARL authorized a new distributor in New York, Europerfumes.  Thereafter, in February 2010, Lubin, SARL’s General Director agreed in principle to the formation of a wholly-owned subsidiary of Lubin, SARL to be formed in the U.S. with shares or options to be sold to Welch after the subsidiary began operations.

The only documentation for the business arrangement appears to be the early 2010 exchange of emails.  Ms. Welch reported to Lubin, SARL in March 2010 that the U.S. Subsidiary “Lubin North America, Inc.” has been set up “pursuant to [our] contract.”  Thereafter, Lubin, SARL transferred $140,000 “to cover start-up and operating expenses” and supplied inventory with a value of $230,720.60 for which the subsidiary was invoiced.

For two and one-half years thereafter Ms. Welch provided financial information when requested.  By April 2012, Ms. Welch had hired with Lubin, SARL approval Mr. William Neville as an assistant manager on monthly salary and was expecting the company to turn a profit soon.  In later 2012 Lubin, SARL was paid $17,500 for perfume orders.

Reporting discontinued in early 2013, as Ms. Welch informed Lubin, SARL that whe had incorporated Lubin North America “under her own name only” and would not be sending any more information to Lubin, SARL.  Shortly thereafter Lubin, SARL revoked the trademark license and demanded that defendants “immediately cease and desist form all operations using the Lubin Trademarks and Lubin name.”  The defendants declined.

Lubin, SARL’s 18 count complaint followed.  Leading with Trademark Infringement, Lubin, SARL crafted several commonly asserted counts (contract breaches, Deceptive Trade Practices, Fraud), several less common (Dilution by Blurring and Dilution by Tarnishment, Conversion, Promissory Estoppel, Equitable Lien, Money Had and Received, Equitable Accounting, Unjust Enrichment, Constructive Trust, and Appointment of a Receiver), and one unearthed from the distant past (Quantum Valebant).  After brief research the author equates the Quantum Valebant cause of action to Money Had and Received with two twists:  the items received were not money and the amount sought is the value of the items – not their return.  Despite all the perfume Lubin, SARL shipped to the U.S. the suggestion is that the smell wafting from the transaction is not a pleasant one.

If the case should be energetically defended, it promises a most entertaining docket.  Lubin, SARL has filed for a preliminary injunction, alleging that the infringing activity is continuing and asking the Court to order it stopped.

The case is Lubin, SARL v. Lubin North America, Inc., et al., No. 1:13-cv-02696-AT.  The verified complaint was filed on 08/13/13 in the U.S. District Court for the Northern District of Georgia, Atlanta Division and has been assigned to U.S. District Judge Amy Totenburg.

Second Case

Trademark Infringement Asserted in Complaint by Mr. Rooter, LLC (“Mr. Rooter”), of Waco, Texas, against Kevin Coleman (“Coleman”) of Grovetown, GA, for Using the Name “Mr. Rooter Plumbing” in marketing plumbing services around Augusta.

Operating at the other end of the toiletry spectrum from a French perfume company, Texas based Mr. Rooter initiated suit in the Augusta Division of the Southern District of Georgia on August 2, 2013, against Coleman and John Doe installers for infringement of the registered mark “MR. ROOTER” – U.S. Reg. Nos. 933,4031,964,2492,688,517, and 3,722,155.  Mr. Rooter has over 250 franchisees according to the complaint and has been using the mark continuously since at least May 1970.

The Mr. Rooter graphic of the ‘403 and ‘155 Registrations is show below

 intellectual property trademark infringement 

Mr. Rooter has an authorized Franchisee in the Augusta, Georgia, area, where the infringement has allegedly occurred. 

The complaint claims that Coleman left a prior Mr. Rooter franchisee which closed on January 24, 2013, and commenced a business with the name “Mr. Flush” in mid February.  For approximately three weeks, prior to his first use of the “Mr. Flush” name, Coleman “represented himself as being affiliated or associated with” Mr. Rooter.  During this period the complaint alleges that Coleman did over $45,000 of plumbing business, used Mr. Rooter form invoices and sold “three-year ‘Mr. Rooter Advantage Plans,’” confusing the public as to the source, origin, or sponsorship of the plumbing services provided in violation of the Lanham Act. 15 U.S.C. § 1114, Federal Unfair Competition and False Designation or Origin [15 U.S.C. § 1125], and state law common law and Unfair and Deceptive Trade Practices [O.C.G.A. § 10-1-370 et. seq.].

The destruction of infringing materials and an award of punitive damages are also sought.

The case is Mr. Rooter, LLC v. Kevin Coleman, et al., No. 1:13-cv-00128-JRH-BKE, filed 08/02/13 in the U.S. District Court for the Southern District of Georgia, Augusta Division, and has been assigned to U.S. District Judge J. Randall Hall.

Copyright © 2014 Womble Carlyle Sandridge & Rice, PLLC. All Rights Reserved.

About the Author

Kirk Watkins, Womble Carlyle Law Firm, Business Litigation Attorney
Attorney

Kirk manages and tries complex business litigation, patent and international arbitration disputes. He believes thorough preparation and strategic theme development result in successful trials or settlements.    

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