Hippo Golf on the Receiving End of Another Trademark Infringement Lawsuit, This Time Over Alleged Imitation “Mitsubishi Rayon” Golf Shafts

You may recall my prior posts (here and here) regarding a trademark dispute between John Daly and Hippo Holdings and Hippo Golf. Well, Hippo Golf is on the receiving end of another trademark infringement lawsuit; this time from MRC Golf Inc., aka Mitsubishi Rayon Company Golf.

A Complaint was filed on Thursday in the Southern District of California (Case No. 09 CV 0327) by Mitsubishi Rayon alleging: 1. False Designation of Origin and False Description in Violation of the Lanham Act; 2. Dilution of Trademark in Violation of the Lanham Act; 3. Dilution of Trademark in Violation of Cal. Bus. & Prof. Code Section 14245; 4. Untrue and Misleading Advertising in Violation of Cal. Bus. & Prof. Code Section 17500 and 17535; 5. Unfair Competition in Violation of Cal. Bus. & Prof. Code Section 17200; and 6. Common Law Trademark Infringement. Now that is a mouth full!

The Complaint is found /files/22847-21779/20090219_MRC_v_Hippo_Golf_Trademark_Infringement_Complaint___exhibits.pdf”>HERE.

I have reproduced some of the more interesting parts below:

PLAINTIFF’S WORLD RENOWNED NAME AND PRODUCTS

6. For more than ten (10) years Plaintiff and/or its predecessors in interest, have been engaged in the interstate and worldwide manufacture and sale of high quality federally protected and trademarked golf club shafts including but not limited to the Diamana, Bassara, Fubuki and Javlnfx series names, all of which, have been and are identified and branded with Plaintiff’s world renowned name “Mitsubishi Rayon.” These high quality golf club shafts are recognized throughout the world as being premier golf club shafts in the industry and are widely used by the top professional golfers in the world.

7. Plaintiff invests a considerable portion of its multi-million dollar annual budget in the advertisement and promotion of its high quality and well-known golf club shafts throughout the United States and the world, having the general purchasing public as its target market. For such purposes, Plaintiff carefully selects exclusive, highly trained and highly profiled distributors in different territories throughout the United States and the world, to sell its golf club shafts under its world renowned name “Mitsubishi Rayon.”

8. As a result of the superior quality, distinctive and attractive designs of Plaintiff’s golf club shafts, all of which are identified and branded with Plaintiffs world renowned name “Mitsubishi Rayon,” Plaintiff has enjoyed enormous commercial success within the United and throughout the world.

9. Further, as a result of the superior quality, distinctive and attractive designs of Plaintiff’s golf club shafts, Plaintiff has come to be known and recognized by the purchasing public in the United States and throughout the world as having excellent-quality manufactured goods originating from Plaintiff. Accordingly, the business and goodwill associated with Plaintiffs name “Mitsubishi Rayon,” are of incalculable value to Plaintiff.

DEFENDANT’S INFRINGING ACTIVITIES

10. During the months immediately preceding the filing of this action, Defendant has been and continues to be engaged in the manufacturing, importation, sale and distribution of golf club shafts which, while of considerably inferior quality, closely imitate Plaintiff’s products, and bear an infringing, counterfeit, or substantially indistinguishable mark under the name of “Mitsubishi Rayon.”

11. Further, Defendant has stated and continues to state publicly and within Defendant’s brochures and catalogues that Defendant has obtained for sale special proprietary golf club shafts of Plaintiff and has introduced and sold those counterfeit products to the public within the State of California, the continental United States, and throughout the world. (See, Exhibit “1,” which is a true and correct copy of Defendant’s 2008 sales catalog which wrongly and falsely list at pages 04-15, 20, and 31, that Defendant’s golf club shafts are made by and/or contain material produced by Plaintiff.)

12. Upon information and belief, Defendant has also marketed the above-described counterfeit golf club shafts to all golfers regardless of skill level, including but not limited to professional golfers, amateur golfers, weekend golfers, and beginning golfers. Upon information and belief, Defendant also promotes, and continues to promote, the above-described counterfeit golf club shafts on an internet website at www.hippo-golf.com, and places advertisements within other internet websites which include, but are not limited to….<<long list of websites>>…., all of which wrongly and falsely advertise that Defendant has obtained for sale special proprietary golf club shafts made by and/or containing material produced by Plaintiff for Defendant. On information and belief, through these advertisements, and commercial contacts in California, including this judicial district, and throughout the United States and the world, Defendant sells golf club shafts to the public for profit.

13. For purposes of passing-off the above-described infringing golf club shafts, bearing blatant imitations of Plaintiff’s name, trademarks and designs, Defendant has used Plaintiff’s name, “Mitsubishi Rayon,” in order to further prompt the unsuspecting consumer in the belief that the imitations originate from Plaintiff.

14. The above-described inferior quality golf club shafts bearing infringing and counterfeit reproductions of Plaintiff’s name, “Mitsubishi Rayon,” trademarks and designs are also being sold and distributed by Defendant at prices considerably lower than those offered by Plaintiff for its original trademarked golf club shafts.

15. Defendant is not licensed nor authorized by Plaintiff to manufacture, import, distribute, offer for sale, or sell golf club shafts or any other merchandise bearing Plaintiff’s name, “Mitsubishi Rayon,” trademarks or designs or any colorable or substantially indistinguishable imitations thereof.

16. Defendant’s involvement in such unauthorized activities has been willful and deliberate, with full knowledge of the existence, and in total disregard of, Plaintiff’s federally protected intellectual property rights.

17. Defendant’s activities have been intentionally addressed at attempting to palm off
and ride on Plaintiff’s well established goodwill and commercial success and reputation of the
“Mitsubishi Rayon” name, trademarks and designs as actually used and marketed by Plaintiff.

18. Defendant’s use of colorable imitations of Plaintiff’s name, “Mitsubishi Rayon,” trademarks and designs are spurious marks likely to deceive and capable of and/or actually causing confusion and/or mistake in the minds of the purchasing public, and particularly, falsely creating the impression that the goods sold by Defendant are made, authorized, sponsored, and/or approved by Plaintiff, when in fact, they are not.

19. Defendant’s unauthorized use of the “Mitsubishi Rayon” name, trademarks, and designs dilutes the importance of Plaintiff’s world famous name, trademarks and designs and severely and irreparably damages Plaintiff’s outstanding commercial goodwill and reputation.

20. As a result of the above-described infringing and/or counterfeiting activities, Defendant has generated substantia
l profits, to which they are not legally entitled.

21. As a result of the above-described infringing and/or counterfeiting activities on the part of Defendant, Plaintiff has been irreparably damaged.

22. Unless Defendant’ is enjoined from further engaging in the infringing and/or counterfeiting activities’ complained of herein, for which Plaintiff has already suffered considerable and irreparable harm, Plaintiff will continue to suffer increased irreparable injury to its goodwill, commercial reputation and decrease in sales of its well-known original products.

23. Plaintiff has no other adequate remedy at law or equity to preclude Defendant from continuing its infringing and/or counterfeiting activities.

24. The damages suffered and being suffered by Plaintiff as a result of Defendant’s activities are presently incalculable, and, subject to a subsequent accounting include, but are not limited to, three (3) times Plaintiff’s losses, Defendant’s profits, statutory damages, attorneys’ fees, costs and expenses.

Ouch, those are some serious allegations! It will be interesting to see how this lawsuit plays out.

David Dawsey  – Keeping an Eye on Golf Trademark Lawsuits

PS – click HERE to check out more golf litigation posts