U.S. District Judge Gene Pratter | OpenJurist.org
PHILADELPHIA – Tropical Naturals won a copyright lawsuit over the use of a trademark for soap in a decision handed down Sept. 10 in U.S. District Court for the Eastern District of Pennsylvania.
Chinjindu Chris Maduka had brought a claim against the company seeking more than $1 million for profits earned in six years of use of the DUDU OSUN, which he claimed he had been using since 1986, and DUDU OSUM trademarks. The trademarks are used for marketing what’s referred to as “African black soap.”
These types of soaps and body products are sold to people in West African countries. They are also popular within the immigrant community living in the United States.
Tropical Naturals claimed that DUDU OSUN was its trademark. It sought $29,235.02 from Maduka as well as attorney’s fees. It also wanted Maducka to be permanently barred from using the DUDU OSUN and DUDU OSUM trademarks in the future, as well as to have his patents pulled from the U.S. Patent Office, and for the court to stop Maducka's claim to patent the DUDU OSUM trademark.
In her 47-page ruling, Judge Gene Pratter said that Maducka's claim to have used the trademark in the United States could not be verified until 2001, and that Tropical’s “ownership of the DUDU OSUN trademark predated any legally cognizable use in commerce by” Maduka. The company has used the DUD OSUM trademark, but they are “confusingly similar,” thus preventing Maduka from being able to claim ownership of DUDU OSUM as well.
Pratter said Tropical was not entitled to profits earned by Maduka and that the company was entitled to an injunction preventing Maduka from using either trademark in the future. Also, she said that the Patent Office must cancel Maduka’s registration for DUDU OSUM. But she would not cancel his patent application for DUDU OSUM. Additionally, Maduka must pay Tropical’s attorney’s fees.