Gina L. Durham

As chair of DLA Piper’s California trademark, copyright and media practice, Durham litigates unfair competition, trademark, copyright, trade dress, anti-counterfeiting and unauthorized distribution and domain name cases in multiple districts throughout the country. She has represented clients such as the estate of Marilyn Monroe, Dollar Shave Club Inc., Pfizer Inc., Southwest Airlines Co., United Airlines Inc., Nike Inc. and Harley-Davidson Inc.

“It’s interesting work,” she said. “The Dollar Shave outcome, for example, will be useful down the road for other defendants threatened by similar trademark suits.”

The Venice-based company delivers razors and other personal grooming products to customers by mail. When Simoniz USA Inc., a seller of cleaning products, sued Dollar Shave seeking a declaratory judgment and injunctive relief over a trademark registration issue outside the U.S., Durham and colleagues investigated the claims.

Durham said that the suit was a surprise, especially when she learned the plaintiff had sought to register the trademark “Dollar Clean Club” for use in the European Union.

“Declaratory judgment filings are a tool used by aggressive plaintiffs,” she said. “Our client had not been threatening an infringing act overseas. The first we knew of the case was an email exchange between counsel. We commissioned an investigation that suggested the plaintiff had manufactured evidence to create the impression of use and a controversy specifically in order to make its lawsuit possible.”

The plaintiff had tried to establish standing by securing a website and filing a trademark application, Durham said. “Almost anybody can do that sitting on their couch, but that’s not what U.S. trademark law is for. It was an abuse of the system.” The result was a pretrial win for Dollar Shave when U.S. District Judge Victor A. Bolden of the District of Connecticut granted Durham’s motion to dismiss Simoniz’ complaint for lack of standing.

“Not only did we win the motion, which disposed of the case for Dollar Shave Club, we established an important point of law for the client,” Durham added. “The court decided in our favor largely based on the fact that the plaintiff had not established a dispute of sufficient ‘immediacy and reality.’”

She said the case is important for any trademark owner who seeks to enforce its mark through cease and desist letters. “The decision addresses the increasingly important issue of what may constitute bona fide use of a trademark in commerce in a time when an appearance of use can be easily created through a website.”

Durham was able to dispose of the suit in December, just months after it was filed. Simoniz USA Inc. v. Dollar Shave Club Inc., 16-CV00688 (D. Conn., filed May 4, 2016).

— John Roemer