San Diego Reader
December 20, 2011
By Dave Rice

Carlsbad-based Keep A Breast Foundation, a local award winning non-profit, filed a lawsuit today in federal court alleging trademark infringement on its popular “I (heart) Boobies!” logo.

Keep A Breast alleges that Rhode Island Novelty, without the group’s permission, commissioned items including silicone bracelets that were either direct trademark infringements of the logo or deceptively similar.

The non-profit, founded locally in 2004 by Shaney Jo Darden and Mona Mukherjea-Gehrig, who were “deeply affected by a young friend’s diagnosis breast cancer diagnosis,” works to spread awareness of the disease among young adults Darden and Mukherjea-Gehrig felt were ignored by traditional breast cancer awareness campaigns. The group has received a Dramatic Difference Award from the TNT network and Yoplait Champion Award, among others. Its work has been featured numerous times in national media and at music festivals, art events, and other gatherings around the country.

A supporter of the local group first drew attention to the fake products on October 7, the suit claims. Gary Sirota, counsel for the foundation, contacted Jim Connor with Rhode Island Novelty on October 12, demanding his company immediately cease advertising and selling any products containing the “I (heart) Boobies!” logo.

According to Sirota, Connor agreed to immediately pull the trademark infringing bracelets from his website, to provide a complete accounting of the goods sold and those remaining in inventory, and to disclose the foreign manufacturer of the items. Sirota then states he sent two follow-up e-mails to Connor recapping their conversation.

On October 14, however, Michelle Wenner, the foundation’s CFO, placed an order for 24 of the bracelets, which she received about ten days later. On October 24, Sirota contacted Connor, stating he had evidence (the purchased bracelets) that Connor was continuing to sell the infringing merchandise. He also demanded the accounting of inventory Connor had previously promised.

Connor responded that the goods could have been sold to Wenner due to “the result of a lag in the system between removing the goods online and physical fulfillment,” the complaint contends. The next day, Connor reported that the novelty company had 720 units of the bracelets “on order.”

The foundation argued back that this disclosure didn’t constitute a proper accounting, for reasons including the fact that the bands were shipped in canisters of 24 – as the term “unit” was not defined it was unclear whether the reference was to 720 bracelets or 720 cases containing 17,280 bracelets. Sirota threatened to file suit if the true scope of the infringement wasn’t disclosed.

A few days later Sirota sent Connor a photo of Rhode Island Novelty’s fake bands on sale at the Louisiana State Fair in Shreveport, Louisiana, taken since the parties’ last contact and illustrating that the deceptively labeled goods distributed by Rhode Island continued to surface in the marketplace. Sirota again demanded that Keep A Breast’s concerns be addressed, and again threatened legal action without cooperation.

The complaint, as filed, alleges that no communications have been received from Rhode Island Novelty since October 27.