On November 16, 2010, a complaint was filed against Affliction, Inc., Affliction Retail, Inc., Affliction Holdings, LLC, Affliction Retail, LLC, and Affliction Entertainment Group, LLC in the United States District Court for the Central District of California by Timothy Sean O’Brien and Livfast, LLC.
According to the allegations in the complaint, “O’Brien is a professional motocross rider and a businessman.” The Livfast webpage provides that the company “is owned and operated by Tim O’Brien.”
Plaintiffs alleged that “[n]o later than October 8, 2004, Livfast first used the Livfast name on its clothing, including shirts, pants and hats and has extensively used the Livfast Trademark (defined below) on its goods and services on a continuous basis since that time.” Further, plaintiffs allege that Livfast applied for a trademark registration on July 31, 2003 “for the word mark “Liv Fast” with the United States Patent and Trademark Office [] and the USPTO granted Livfast a registration for its Livfast trademark (Registration No. 2957726) on May 31, 2005 [].”
Livfast claims that it “recently discovered that Affliction bas been infringing upon the Livfast Trademark by using a virtually identical name, the Live Fast name and the Affliction Live Fast name, on its clothing as well as other uses, which is likely to lead to confusion in the marketplace and has actually caused confusion in the marketplace.”
According to the allegations in the complaint, (1) in March 2010, the USPTO “rejected Affliction’s request to register the ‘Affliction Live Fast’ name as its trademark” because “‘of a likelihood of confusion with the mark in U.S. Registration No. 2957726’”; (2) in July 2010, “the USPTO rejected Affliction’s request to obtain a trademark registration in the name ‘Live Fast,’ stating that the ‘Live Fast’ name and the Livfast Trademark are ‘highly similar overall,’ that the goods are ‘very closely related and some are identical and/or legally identical’ and that the trade channels are similar”; and (3) in October 2010, “after Affliction requested the USPTO to reconsider its position on its use of the ‘Live Fast’ name, and after Affliction submitted specimens showing how it uses the ‘Affliction Live Fast’ name on its clothing goods, the USPTO again rejected Affliction’s request to register the ‘Live Fast’ mark.”
Plaintiffs allege that through “Affliction’s continued use of these names, Affliction has committed and continues to commit willful trademark infringement.”
Plaintiffs assert claims for “Federal Trademark Infringement,” “False Designation of Origin,” State Trademark Infringement and Unfair Competition,” Unfair Competition,” “Unjust Enrichment,” Cancellation of Trademark Registration,” “Accounting,” and Declaratory Relief.”
Affliction is no stranger to litigation.
As I have posted at my Fight Lawyer website, Affliction recently settled a trademark infringement action with Chrome Hearts with similar allegations, it recently settled a copyright infringement action with Freeplay Music, LLC; it recently filed a lawsuit against Oficina De Representaciones Mundiales S.A De C.V. and Eduardo Kurian (and is a counterclaim defendant in that litigation), its alleged “exclusive distributor in Mexico for the Affliction and Sinful clothing brands[],” and its litigation with Fedor and M-1 appears to still be going strong.
Justin Klein is an attorney at Satterlee Stephens Burke & Burke LLP in New York City where he concentrates his practice in commercial litigation and represents clients in the fight industry. He regularly addresses current legal issues that pertain to combat sports, including efforts to legalize MMA in New York, at his Fight Lawyer website. He is a licensed boxing manager with the New York State Athletic Commission as well as the founder and Chairman of the Board of the New York Mixed Martial Arts Initiative, a non-profit organization that gives inner city youth the opportunity to experience the emotional and physical benefits of martial arts training. Justin lives in New York City where he trains in jiu jitsu and boxing.
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Why didnt Affliction just drop the Live Fast part anyway? Its not even needed. Its on their products like a motto or catch phrase not a name to begin with. Dropping it and using a different motto would not effect them at all.