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Company sues in LV over alleged Shaquille O’Neal trademark infringement

Updated Wednesday, Feb. 10, 2010 | 5:05 p.m.

Click to enlarge photo

The Cleveland Cavaliers' Shaquille O'Neal sits on the bench in the second quarter of a game against the Utah Jazz in Cleveland on Nov. 14, 2009.

A licensing company for NBA veteran Shaquille O’Neal has sued a company and individuals it claims are infringing on O’Neal’s trademarks by operating an online store called "Shaqtus Orange Clothing Co."

The lawsuit was filed in U.S. District Court in Las Vegas last week by Mine O’Mine Inc. against Arizona company True Fan Logo Inc., Michael D. Calmese of Phoenix and Utah resident Dan Mortensen.

Mine O’Mine is a company incorporated in Nevada and based in Woodland Hills, Calif.

O’Neal, who now plays for the Cleveland Cavaliers, was known as "The Big Cactus" and "The Big Shaqtus" when he played for the Phoenix Suns and the "Shaqtus" nickname is at the heart of the Las Vegas lawsuit.

Attorneys for Mine O’Mine with the Las Vegas law firm of Lewis and Roca LLP charge in the suit that in February and March 2008, after O’Neal was traded by Miami to Phoenix, Mortensen registered the Web site domain name shaqtus.com and Calmese, in the name of True Fan Logo, registered the name shaqtus.net.

Both Web site names call up the Shaqtus Orange Web site, which offers for sale "Shaqtus" apparel and collectibles. The lawsuit alleges the Web site features an animated cactus character with O’Neal’s facial features and wearing an orange "Phoenix Shaqtus" jersey bearing No. 32 (O’Neal’s number for the Suns).

The suit says that in 2008 and 2009, ESPN broadcast commercials featuring O’Neal encountering a cactus bearing his face in the Arizona desert, and that on Dec. 4 Calmese sent a letter to ESPN claiming to own the Shaqtus trademark and offering to resolve the matter if ESPN would do business with Calmese, including development of a "Shaqtusclaus" clip for Christmas.

On Dec. 8, attorneys for ESPN responded to Calmese and told him ESPN received consent from Mine O’Mine to use "Shaq" trademarks and asserting that it was Calmese who was infringing on Mine O’Mine’s intellectual property rights, the lawsuit says.

On Dec. 29, attorneys for Mine O’Mine and O’Neal demanded that Calmese and True Fan Logo stop using the Shaqtus name and that the shaqtus.net and shaqtus.com Web site names be transferred to Mine O’Mine, the suit says. It says that on Jan. 4, Calmese responded that O’Neal consented to Calmese’s use of the Shaqtus name when O’Neal agreed to take a picture with Calmese and autograph a t-shirt.

"Neither O’Neal nor Mine O’Mine has granted a license to use the Shaq right of publicity or to use and own the Shaqtus mark or the shaqtus.com or shaqtus.net domain names," the lawsuit charges.

The lawsuit asserts claims including trademark infringement and dilution, unfair competition, violation of O’Neal’s right to control the commercial use of his name and cybersquatting (use of Web site domain names that are identical or confusingly similar to the Shaq trademarks).

"Defendants’ use in commerce of the Shaqtus mark and domain names constitutes a reproduction, copying, counterfeiting, and colorable imitation of the Shaq marks in a manner that is likely to cause confusion or mistake or is likely to deceive consumers," charges the lawsuit.

The suit says that since O’Neal was drafted No. 1 in 1992, he has become one of the greatest players of all time and that his Shaq trademarks have significant value, having been licensed by such companies as Reebok, Radio Shack and 24 Hour Fitness.

On Feb. 2, Calmese filed court papers denying the allegations of wrongdoing and asserting counterclaims against Mine O'Mine.

"In December of 2008 plaintiffs gave defendants implied consent to use this (trademark) by signing a trademarked Shaqtus t-shirt, taking some pictures with Shaqtus representatives and wishing defendants good luck," Calmese

said in his filing. "These pictures clearly show that there was no ill intent by defendants and that there was no indication that plaintiffs had any problems with defendants' Shaqtus trademark, cactus character and/or company."

"By virtue of having used and continuing to use the cactus character, Calmese has acquired common law trademark rights in the cactus character," Calmese wrote. "Shaquille O'Neal's use of the cactus character infringes Calmese's common law rights in its cactus character and is likely to cause confusion, mistake, or deception among consumers, who will believe that Shaquille O'Neal's goods originate from, or are affiliated with, or endorsed by Calmese, when, in fact, they are not."

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