Dear Clients, Colleagues and Friends,
The February 8, 2010 New Jersey Law Journal article details my recent Federal District Court “no cause” unanimous jury verdict on behalf of New Jersey based advertising company Ad Magic, Inc. (www.admagic.com) vs. California based advertising company Advertising Magic, Inc. The article cited my successful “pre-emptive strike” legal strategy in seeking declaratory judgment in hometown NJ Court, after the California company sent a “cease and desist” letter (rather than wait to be sued in California).
Article also cited my recovery of $138,000 insurance company payout at outset of case to pay for costs of trial. Notwithstanding receipt of the insurance proceeds, I will now be filing a Motion with the Court seeking to have Advertising Magic reimburse Ad Magic for its legal fees. More info
I am pleased to report on the results of a Federal Trademark Jury Trial (PDF) yesterday before Judge Stanley Chesler of the Federal District Court of NJ, in which the Jury entered a unanimous verdict in favor of my client Ad Magic of Netcong, NJ and against Advertising Magic, of Walnut Grove, California. Specifically, the Jury found that Advertised Magic failed to prove that a “likelihood of confusion,” exists between its ADVERTISING MAGIC service mark and my client’s AD MAGIC service mark.
Background:
Ad Magic is a New Jersey-based advertising company, and owner of the AD MAGIC www.admagic.com website focused upon corporate and product identification. Ad Magic is the owner of a Federal Service Mark Registration for its AD MAGIC mark as used in connection with customized playing cards and poker chips which constitute ninety percent of its business.
Advertising Magic, Inc. is a California-based advertising company. Advertising Magic is the owner of a Federal Service Mark Registration for its mark ADVERTISING MAGIC as used in connection with advertising promotional services. Customized playing cards and poker chips constitute less than one percent of Advertising Magic’s business.
Notice of Intent to Sue:
Advertising Magic has conducted its services continuously since 1998, coextensive with Ad Magic’s operations with each party having no knowledge of the other until late 2005, when Advertising Magic first learned of the existence of Ad Magic’s website, www.admagic.com. In October, 2006 opposing counsel sent Ad Magic a “NOTICE OF INTENT TO SUE” letter, demanded $450,000 in damages and that Ad Magic completely stop using the name Ad Magic and transfer its domain names. Ad Magic refused, but rather than wait to be sued in California, we filed suit in 2006 in New Jersey, seeking a declaration from the court that its use of the name Ad Magic does not interfere with the business or trademark rights of Advertising Magic, and also sought a finding of no likelihood of confusion, among other things. Advertising Magic countersued, asking for $450,000 in damages, that Ad Magic be forever enjoined from using its Ad Magic mark and requested that the Court transfer to it the www.admagic.com domain name.
Burden of Proof and Verdict:
Advertising Magic had the burden of proof in this case. It had to prove by a preponderance of the evidence that that a “likelihood of confusion,” exists between its ADVERTISING MAGIC service mark and my client’s AD MAGIC service mark. After a 4 day trial, the Jury found that Advertised Magic utterly failed to prove its case and a unanimous Verdict was entered in favor of Ad Magic and against Advertising Magic (see attached Verdict Sheet).
Insurance Note:
Once Advertising Magic countersued, I was able to compel Ad Magic’s insurance companies to fund the lawsuit by paying my client $138,000 for its anticipated legal expenses in defending the Counterclaims. Notwithstanding receipt of the insurance proceeds, I will now be filing a Motion with the Court seeking to have Advertising Magic reimburse Ad Magic for its legal fees.
Regards,
Mark J. Ingber, Esq.
Ingber & Gelber, LLP
181 Millburn Avenue
Millburn, New Jersey 07041
Member, District V-B Attorney Ethics Committee
(973) 921-0080
INGBER & GELBER, LLP
MARK J. INGBER
COUNSELLORS AT LAW
181 MILLBURN AVENUE, SUITE 202 P.O. BOX 7
MILLBURN, NEW JERSEY 07041
TEL: (973) 921-00BO
FAX: (973) 921-0021 E-MAIL: INGBER.LAW@VERIZON.NET
MEMBER NJ & NY BAR MEMBER NJ & FL BAR
June/2006
Subject: MARK J. INGBER OBTAINS DIRECTED VERDICT FOR CLIENT IN TRIAL THIS MONTH BEFORE NEW JERSEY SENIOR FEDERAL DISTRICT COURT JUDGE LIFLAND
Dear Clients, Colleagues and Friends,
We are pleased to report on the results of a Trial in June 2006, in which Judge Lifland of the Federal District Court of New Jersey, Ordered that Judgment as a Matter of Law/Directed Verdict be entered in favor of our client Alumet Supply of Orange, New Jersey against Alumet Mfg., of Marysville, Washington. Inc. This is (an exceptional result, meaning the case was dismissed at a very early stage in the trial, because the other party failed to prove its case).
Alumet Mfg. is a Washington State corporation with its only place of business in the United States in Marysville, Washington. Alumet Mfg. is a manufacturer who specializes in making component parts for the window and door fabrication industry. Alumet Mfg. owns a valid federal trademark registration of the mark Alumet, Registration No. 2,275,107 issued on September 7, 1999. The Trademark Registration covers window, door, and screen components, namely, air spacers, corner keys, muntin bars, glazing beads, window frames, patio door frames, screen door and window frames, cladding and moldings, all made of metal.
Alumet Supply is a Orange, New Jersey based wholesale distributor of aluminum sheet and coil operating predominately Uni ted States, with its only place of business Jersey. Alumet Supply has marketed its services under the name Alumet Supply, along with a distinctive logo, since September 1997.
Alumet Mfg. claimed that Alumet Supply had infringed or violated its Federal Trademark. Alumet Mfg. also claimed that its mark was famous and that Alumet' s Supply was diluting its famous mark. Alumet Mfg. had the burden of proof in this case. It had to prove by a preponderance of the evidence that purchasers of goods and services under Alurnet Supply's mark and distinctive logo would probably assume those goods and services are associated with Alumet Mfg.
Alumet Supply denied these claims and asked this Court for a Declaration of Non-Infringement which was granted. We have now filed a Motion seeking to have Alumet Mfg. reimburse Alumet Supply and its insurance carrier (which by the way, reimbursed the bulk of our client's fees pursuant to their Commercial General Liability [CGL] policy) for their legal fees.
Attached is a copy of the Court's Order and the pertinent pages of our successful Motion in Court to have Judgment entered as a Matter of Law.
Very truly yours,
Ingber & Gelber, LLP
By: Mark J. Ingber, Esq.