February 12, 2016

132 Trademark Registrations Issued to Indiana Companies in January 2016

The U.S. Trademark Office issued the following 132 trademark registrations to persons and businesses in Indiana in January 2016 based on applications filed by Indiana trademark attorneys:

Registration No.  Word Mark Click To View
4882521 VIEW
4893058 TENDERNEEDS FERTILITY VIEW
4893035 FUN TIME FOR KIDS...FREE TIME FOR PARENTS! VIEW
4893016 GRANDPA'S VIEW
4892928 ODDBIRD VIEW
4892743 BLACK DIAMOND VIEW
4892254 MYCRIMP VIEW
4892123 LOCAL UNIVERSE VIEW

Continue reading " 132 Trademark Registrations Issued to Indiana Companies in January 2016" »

February 11, 2016

Indiana Copyright and Trademark Litigation: Magazine Publisher Sues Commemorative Plaque Maker Alleging Infringement

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Indianapolis, Indiana - Indiana copyright and trademark attorneys for Plaintiff The Rough Notes Company, Inc. ("Rough Notes") of Carmel, Indiana commenced a copyright infringement lawsuit in the Southern District of Indiana.

The Defendant, That's Great News, LLC ("Great News") of Cheshire, Connecticut, is accused of infringing U.S. Trademark Registration No. 2,585,340, which has been filed with the U.S. Patent and Trademark Office, as well as unfair competition, false designation of origin, and dilution under the Lanham Act. Allegations of copyright infringement of material protected by Copyright Registrations Registration Nos. TX 7-988-447 and TX 7-988-464, as well as other related claims, have also been made.

Plaintiff Rough Notes is a publisher of print and online magazines. It indicates that it has used its "Rough Notes" trademark since 1878 and that the trademark was registered in 2002. Rough Notes contends that Defendant Great News has violated it copyright, trademark and other intellectual property rights by producing samples of commemorative plaques that feature protected content owned by Rough Notes and distributing samples via e-mail to solicit the purchase of a plaque.

In this federal complaint, filed with the court by Indiana copyright and trademark lawyers for Rough Notes, the following causes of action are alleged:

• Copyright Infringement
• Federal Unfair Competition & False Designation of Origin
• Federal Trademark Infringement
• Common Law Trademark Infringement
• Federal Trademark Dilution
• Common Law Unfair Competition

• Unjust Enrichment

Rough Notes seeks equitable relief; statutory damages, including up to $150,000 for willful infringement; and reimbursement of costs and attorneys' fees.

Practice Tip: Plaintiff may have difficulty overcoming the defense of nominative fair use of a trademark in this lawsuit. That doctrine provides that, as a matter of law, nominative use of a mark -- where the only word reasonably available to describe a particular thing is pressed into service -- lies outside the strictures of trademark law. Defendant may argue that its use of "Rough Notes" on its commemorative plaques was permissible as those are the only words reasonably available to adequately describe a plaque displaying an article featured in a "Rough Notes" publication.

Continue reading "Indiana Copyright and Trademark Litigation: Magazine Publisher Sues Commemorative Plaque Maker Alleging Infringement" »

February 9, 2016

Indiana Patent Litigation: Eli Lilly Asks Indiana Federal Court to Adjudicate Dispute Regarding Patented Pharmaceutical

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Indianapolis, Indiana - Indiana patent attorneys for Plaintiff Eli Lilly and Company of Indianapolis, Indiana ("Lilly") filed an intellectual property lawsuit in the Southern District of Indiana asserting infringement of U.S. Patent No. 7,772,209 ("the '209 patent"), which was filed with the U.S. Patent and Trademark Office.

This patent infringement lawsuit asserts unlawful behavior by two Defendants. Specifically, the complaint states that Dr. Reddy's Laboratories, Inc. of Princeton, New Jersey is acting on behalf of Dr. Reddy's Laboratories, Ltd. of Hyderabad, India in seeking approval to manufacture and sell a generic version of Lilly's ALIMTA®, a chemotherapy agent used for the treatment of various types of cancer. Lilly further contends that the two Defendants are agents and/or alter-egos of one another.

Lilly states that unless Defendants are "enjoined from infringing the '209 patent, actively inducing infringement of the '209 patent, and contributing to the infringement by others of the '209 patent, Lilly will suffer irreparable injury."

This lawsuit, filed by Indiana patent lawyers for Lilly, lists a single count: Infringement of U.S. Patent No. 7,772,209. Lilly seeks a declaratory judgment, equitable relief, damages, costs and attorneys' fees.

Continue reading "Indiana Patent Litigation: Eli Lilly Asks Indiana Federal Court to Adjudicate Dispute Regarding Patented Pharmaceutical " »

February 8, 2016

Patent Protection for Bitcoin and Blockchain Technology

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Patent protection for Bitcoin and other blockchain based crypto currencies is a growing issue, as discussed in the February 1, 2016 article by American Banker Magazine, "Crypto Colonizing: Bank of America's Blockchain-Patent Strategy."

On being asked my opinion concerning Bank of America's blockchain patent push, I responded, ""The scope [of the patent application] would have to be limited to the specific new feature that they add," said Paul Overhauser, managing partner at Overhauser Law Offices, a firm that specializes in intellectual property cases. "They could not get patent protection so broad as to give them any patent rights to the original source code idea of having a blockchain."

To read the full article, click here.

February 5, 2016

Indiana Copyright Litigation: Design Basics Sues Builders and Others Alleging Infringement of Copyrighted Architectural Designs

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Northern District of Indiana - Plaintiff Design Basics, LLC of Omaha, Nebraska filed six lawsuits in the Northern District of Indiana alleging that multiple Defendants committed copyright infringement by constructing buildings based on plans derived from Plaintiff's copyrighted works.

Design Basics is engaged in the business of creating, marketing, publishing and licensing the use of architectural works and technical drawings of those works. It has sued multiple Defendants, most of them home designers and builders, for copyright infringement.

The Defendant in the first lawsuit is Big C Lumber Co. Inc. of South Bend, Indiana. Two Defendants are listed in the second lawsuit: Carriage Place Homes, Inc., f/k/a Carriage Properties, Inc., d/b/a Bridle Homes and Bridle Homes, Inc. of Fort Wayne, Indiana.

The third lawsuit lists multiple Defendants: Culver Construction, Inc., d/b/a Culver Remodeling, Culver Design Build, Culver Custom Homes, and Hallmark Homes of Michiana; Culver Development Corporation d/b/a Property Management Services; Wes Culver Realty, LLC d/b/a KW Commercial and Industrial, Wes Culver Auctions, and Wes Culver Home Team; and New Paris Development Company, LLC of Goshen, Indiana.

In the fourth lawsuit, Lancia Homes, Inc. of Fort Wayne, Indiana, which does business as Lancia Construction, Springmill Development, Lancia Real Estate, Lancia Homes, Springmill Wood Development and Waterford Enterprises, is named. Quality Crafted Homes, Inc. of Harlan, Indiana is the sole Defendant in the fifth lawsuit.

The final lawsuit lists Windsor Homes, Inc., d/b/a Windsor Homes by Jeff Gilmore; Windsor Construction, LLC; Windsor Construction, Inc; and Windsor, Inc. of Fort Wayne, Indiana as Defendants.

While the details vary among the different lawsuits, the allegation at the core of each complaint is infringement of one or more of Design Basics' copyrighted architectural designs by Defendants, with each lawsuit complaining of Defendants' "construction and sale" of structures that infringe Plaintiff's copyrights. Design Basics seeks equitable relief, damages, costs and attorney fees.

Continue reading "Indiana Copyright Litigation: Design Basics Sues Builders and Others Alleging Infringement of Copyrighted Architectural Designs" »

February 3, 2016

Patent Office Issues 119 Patents To Indiana Citizens in January 2016

The U.S. Patent Office issued the following 119 patent registrations to persons and businesses in Indiana in January 2016, based on applications filed by Indiana patent attorneys:

Pat No. Title
1 D748,181 Jib
2 D748,069 Set top box
3 D747,901 Periodical stand with monitor
4 9,246,370 Electric motor stator housing interference gap reducing method and apparatus
5 9,246,207 Antenna aiming system and method for broadband wireless access
6 9,245,503 Musical percussion support stands and related devices and methods
7 9,245,438 Water leak detector for a pipe having a retention reservoir
8 9,244,481 Vehicle pedal assembly with hysteresis assembly
9 9,244,077 Method system and device for assessing insulin sensitivity
10 9,244,060 Site localization and methods for monitoring treatment of disturbed blood vessels

Continue reading "Patent Office Issues 119 Patents To Indiana Citizens in January 2016" »

February 2, 2016

Indiana Trademark Litigation: Holder of Verge Trademark Sues The Verge Group

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Indianapolis, Indiana - Indiana trademark attorneys for Plaintiff Indy Founders LLC d/b/a Verge of Indianapolis, Indiana filed a trademark infringement lawsuit with the court in the Southern District of Indiana. The lawsuit alleges that Vox Media, Inc. and The Verge Group LLC ("TVG") infringed the VERGE trademark, Registration No. 4,153,192, which has been registered by the U.S. Patent and Trademark Office.

Indy Founders is in the business of creating and offering online publications and websites, as well as similar services, for startup technology entrepreneurs, investors, and collaborators. It states that it holds a federal registration on VERGE as a trademark and that the VERGE trademark has been used since at least as early as January 2011.

Defendant Vox Media is a partner and owner of Defendant TVG. Plaintiff asserts that Defendants are engaged in a business similar to Plaintiff's and that Defendants use the VERGE trademark in connection with their business, THE VERGE, and in their business' domain name, http://www.theverge.com/. Plaintiffs contend that Defendants' use of THE VERGE to identify their goods and services is unlawful.

In this Indiana trademark lawsuit, filed with the court by trademark lawyers for Plaintiff, the following claims are made:

• Count I: Trademark Infringement
• Count II: False Designation Of Origin
• Count III: Unfair Competition
• Count IV: Declaratory Judgment
• Count V: Indiana Crime Victims Act [Forgery under IC §35-43-5-2]
• Count VI: Preliminary and Permanent Injunctive Relief

• Count VII: Corrective Advertising

Indy Founders seeks a declaratory judgment, equitable relief, actual damages, treble damages, costs and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Holder of Verge Trademark Sues The Verge Group" »

January 28, 2016

Indiana Patent Law: Court Rules on Eighteen Disputed Terms in Patent Infringement Litigation

Indianapolis Indiana - Following a Markman hearing, Judge Sarah Evans Barker considered 18 disputed terms in five patents owned by Plaintiff Bonutti Research, Inc. of Effingham, Illinois and licensed exclusively to Plaintiff Joint Active Systems, Inc., also of Effingham, Illinois. Fourteen of the terms were construed. The court held that the remaining four needed no further construction.

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The patents-in-suit are: U.S. Patent No. 5,848,979, U.S. Patent No. 7,955,286, U.S. Patent No. 7,404,804, U.S. Patent No. 7,112,179 and U.S. Patent No. 8,784,343, which had been issued by the U.S. Patent and Trademark Office. It is alleged that Defendant Lantz Medical, Inc. of Indianapolis, Indiana infringed those patents.

The following terms were construed by the court:

• "drive means" (construed in two different contexts)
• "a main gear which is connected with said first cuff means and is rotatable with said first cuff means relative to said base"
• "first extension member"
• "second extension member having an arcuate shape extending therefrom"
• "arcuate shape"
• "arcuate path"
• "travels along an arcuate path through the first extension member"
• "removably attachable to the finger"
• "curved path"
• "a first arm member for coupling to the first body portion and defining a curved path"
• "movable along the curved path"
• "operatively coupled"
• "drive assembly"

• "lockout element"

The court determined that no further construction was necessary for the following terms:

• "base"
• "gear means"
• "second gear is at least partially disposed in a recess in said base"

• "bending mechanism"

Continue reading "Indiana Patent Law: Court Rules on Eighteen Disputed Terms in Patent Infringement Litigation" »

January 27, 2016

Indiana Patent Litigation: Cummins Sues ADP Distributors for Infringement of Turbocharger Patents

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Indianapolis, Indiana - Patent attorneys for Plaintiffs Cummins Ltd., headquartered in the United Kingdom, and Cummins Inc. of Columbus, Indiana commenced patent infringement litigation in the Southern District of Indiana. The Defendants are ADP Distributors USA, Inc. of Tempe, Arizona and ADP Distributors, Inc., headquartered in British Columbia, Canada. They are accused of infringing two of Plaintiffs' U.S. patents, both of which have been filed with the U.S. Patent and Trademark Office.

Defendants are accused of infringing U.S. Patent No. 6,401,563 ("the '563 patent"), entitled "Actuating Mechanism For A Slidable Nozzle Ring" and U.S. Patent No. 5,941,684 ("the '684 patent"), entitled "Variable Geometry Turbine." The '563 patent is directed to certain components of a turbocharger or turbomachine and to a linkage assembly for linking together certain components within a turbocharger or turbomachine, while the claims of the '684 patent "are generally directed to a turbine, such as one used in connection with a turbocharger, having one or more springs which provide non-linear length to spring force characteristics on a displaceable sidewall."

Plaintiff Cummins Ltd. claims to own all right, title and interest in both patents. Plaintiff Cummins Inc. states that it is an exclusive licensee of the '563 and '684 patents for sales of turbochargers and turbocharger components.

Defendants' accused products include the Rotomaster Turbocharger, offered under model number H1550112N, and a Rotomaster replacement part. Defendants are accused of acting individually or in concert with others or each other to advertise for sale, offer for sale, import, sell and/or use these products in the U.S.

This federal lawsuit, filed with the trial court by patent lawyers for the Plaintiffs, alleges the following claims:

• Count I: Direct Infringement of U.S. Patent No. 6,401,563
• Count II: Direct Infringement of U.S. Patent No. 5,941,684
• Count III: Inducement to Infringe the '563 Patent
• Count IV: Contributory Infringement of the '563 Patent

Plaintiffs seek equitable relief; damages, including treble damages; interest; costs and attorneys' fees.

Continue reading "Indiana Patent Litigation: Cummins Sues ADP Distributors for Infringement of Turbocharger Patents" »

January 26, 2016

Indiana Trademark Litigation: Texas Roadhouse v. Texas Corral Litigation Moves to Indiana

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Hammond, Indiana - Trademark litigation commenced in the Western District of Michigan in 2013 was transferred to the Northern District of Indiana yesterday.

This federal lawsuit, filed by trademark attorneys for Plaintiffs Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC, both of Louisville, Kentucky, alleges infringement of U.S. Service Mark Reg. No. 1,833,533, U.S. Service Mark Reg. No. 2,231,309, and U.S. Service Mark Reg. No. 2,250,966. These marks have been filed with the U.S. Patent and Trademark Office.

The Defendants listed in the Michigan complaint were Texas Corral Restaurants, Inc.; Switzer Properties, LLC; Texcor, Inc.; Texas Corral Restaurant II, Inc.; T.C. of Michigan City, Inc.; T.C. of Kalamazoo, Inc.; Chicago Roadhouse Concepts, LLC; Paul Switzer; Victor Spina; and John Doe Corp. Defendants filed a motion to dismiss or, in the alternative, transfer venue, with the Michigan court, which was granted. The lawsuit will continue in the Northern District of Indiana.

Plaintiffs, via their trademark lawyers, asserted the following claims:

• Count I: Trade Dress Infringement
• Count II: Federal Trademark Infringement
• Count III: Trademark Infringement Under Michigan Statutory Law
• Count IV: Trademark Infringement Under Indiana Statutory Law
• Count V: Trademark Infringement Under Common Law
• Count VI: Copyright Infringement

• Count VII: Unfair Competition Under Michigan and Indiana Common Law

Texas Roadhouse seeks equitable relief; damages, including punitive damages; costs and attorney fees.

Continue reading "Indiana Trademark Litigation: Texas Roadhouse v. Texas Corral Litigation Moves to Indiana" »

January 22, 2016

Celebrating Copyright Week 2016

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Almost three years ago, the Electronic Frontier Foundation ("EFF") began its efforts to reform the U.S. copyright reform process (see the Electronic Frontier Foundation's call to Congress for the Next Great Copyright Act). This week, EFF and others are also celebrating the third annual Copyright Week. This effort is designed to ensure that the public--from technology users to readers, fans and artists--are heard in debates that are all too often limited to a few industry lobbies.

EFF believes that this is a critical stage. It's been four years this week since Internet users staged the largest ever online protest of a bad copyright law, the Stop Online Piracy Act ("SOPA"), that would have curtailed online speech and created a system of blacklists for sites and users. Four years ago, millions spoke up and derailed that proposal. But a lot can change in four years, and EFF states that Hollywood and others are again trying to sneak elements of SOPA back into the debate, through private agreements with intermediaries, influence on state officials, extraordinary injunctions in court, and more.

Beyond site blocking, this summer's DMCA rulemaking revealed another way in which an imbalanced copyright law hurts the public: allowing Digital Rights Management ("DRM") software to encroach on the public's right to use its own physical property. Much of the conversation has focused on cars--a technology that traditionally encouraged tinkering and repair, but which has become increasingly locked down. The writing is on the wall, EFF says: unless we fix the law around DRM, it will be used to take away our rights in more and more of the things we own.

The conversation is incomplete, though, when it includes only discussions about the harms created by overly restrictive copyright. EFF asserts that we also need to pay attention to the benefits of a cultural commons--a shared collection of material that we all may freely share and build upon. That's why to kick off Copyright Week 2016, EFF focused on the public domain, and how the law can foster a stronger one, by putting forward a set of principles for what copyright law and policy should look like:

• Building and Defending a Robust Public Domain. The public domain is our cultural commons and a public trust. Copyright policy should seek to promote, and not diminish, this crucial resource.
• You Bought It, You Own It. Copyright policy should foster the freedom to truly own your stuff: to tinker with it, repair it, reuse it, recycle it, read or watch or launch it on any device, lend it, and then give it away (or resell it) when you're done.
• Fair Use Rights. For copyright to achieve its purpose of encouraging creativity and innovation, it must preserve and promote ample breathing space for unexpected and innovative uses.

• Transparency. Copyright policy must be set through a participatory, democratic, and transparent process. It should not be decided through back room deals or international agreements negotiated in secret.

EFF invites the public to follow along, and participate by writing or creating something to support these principles and sharing it on social media with the tag #CopyrightWeek.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

January 21, 2016

Reporting Computer, Internet-related or Intellectual Property Crime

Internet-related crime, like any other crime, should be reported to appropriate law enforcement investigative authorities at the local, state, federal, or international levels, depending on the scope of the crime. Citizens who are aware of federal crimes should report them to local offices of federal law enforcement.

A guide to reporting intellectual property crime:

Type of Crime

Appropriate federal investigative law enforcement agencies 

Copyright piracy (e.g., software, movie, sound recordings)

Trademark counterfeiting

Theft of trade secrets/Economic Espionage

The U.S. Department of Justice has also produced a guide, "Reporting Intellectual Property Crime: A Guide for Victims of Counterfeiting, Copyright Infringement, and Theft of Trade Secrets," available as a PDF file. This guide is contained in Appendix C of the Report of the Department of Justice's Intellectual Property Task Force (October 2004). The guide also contains the following checklists for reporting intellectual property crime to law enforcement:

Checklist for Reporting a Copyright Infringement or Counterfeit Trademark Offense (PDF)
Checklist for Reporting a Theft of Trade Secrets Offense (PDF)

Other government initiatives to combat cybercrime include:

National Intellectual Property Rights Coordination Center

The IPR Coordination Center's responsibilities include:

• Coordinating U.S. government domestic and international law enforcement activities involving IPR issues.
• Serving as a collection point for intelligence provided by private industry, as well as a channel for law enforcement to obtain cooperation from private industry (in specific law enforcement situations).
• Integrating domestic and international law enforcement intelligence with private industry information relating to IPR crime, and disseminating IPR intelligence for appropriate investigative and tactical use.
• Developing enhanced investigative, intelligence and interdiction capabilities.

• Serving as a point of contact regarding IPR law enforcement related issues.

The STOP Initiative (www.stopfakes.gov)

The stopfakes.gov website provides information to consumers and businesses on intellectual property, including information on how to report trade in fake goods.

Those with specific information regarding intellectual property crime can submit an IPR Coordination Center Complaint Referral Form.

January 20, 2016

Seventh Circuit Law: Appellate Court Vacates Order Enjoining Defamation in Copyright/Trademark Case

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Chicago, Illinois - The Seventh Circuit Court of Appeals held that an injunction against Defendants effecting a prior restraint on defamatory speech regarding the Plaintiffs was improper.

This lawsuit springs from an Indiana event occurring in 1956 wherein Mary Ephrem, a Catholic Sister, claimed to have encountered a series of apparitions of the Virgin Mary. Those apparitions told her: "I am Our Lady of America." A program of devotions to Our Lady began, which Patricia Fuller joined in 1965. When Sister Ephrem passed away, she willed her property to Fuller. Between Sister Ephrem's efforts to register intellectual property pertaining to Our Lady and Fuller's efforts, the program's assets included both copyrights and trademarks.

In 2005, Kevin McCarthy and Albert Langsenkamp volunteered to assist Fuller in promoting devotions to Our Lady. By 2007, however, the relationship had soured. Langsenkamp established the Langsenkamp Family Apostolate and McCarthy and Langsenkamp (and the latter's apostolate) claimed to be the authentic promoters of devotions to Our Lady. They also claimed ownership to all documents and artifacts accumulated by Fuller and Sister Ephrem.

Paul Hartman intervened on Fuller's behalf, "launching a campaign to smear McCarthy's and Langsenkamp's reputations." McCarthy and Langsenkamp, as well as the Langsenkamp Family Apostolate, sued Fuller and Hartman asserting tortious conduct, including conversion, fraud and defamation. Plaintiffs also sought a declaratory judgment that they had not infringed any of Fuller's intellectual property. Fuller and Hartman counterclaimed, accusing Plaintiffs of theft, infringement and defamation.

The district court conducted a jury trial that resulted in a verdict in favor of Plaintiffs, who were awarded compensatory and punitive damages, as well as attorney's fees, sanctions and costs. The district court also issued an injunction prohibiting Defendants from making certain statements "as well as any similar statements that contain the same sorts of allegations or inferences, in any manner or forum" and ordered that Fuller take down his website.

Judge Posner, writing for the Seventh Circuit, upheld the damages, fees and costs but vacated the injunction. He noted that, while the jury had held that Plaintiffs had been defamed, there was no specific indication regarding which of the many of Defendants' statements had been deemed by the jury to be defamatory. Thus, by prohibiting all of the statements, the injunction was overbroad.

Moreover, the injunction's preamble greatly expanded the scope of the prohibited conduct by enjoining "any similar statements [that is, similar to the injunction's specific prohibitions] that contain the same sorts of allegations or inferences, in any manner or forum," as those listed in the body of the injunction. This was also held to be improper as overly expansive, as an injunction must be specific about the acts that it prohibits.

The mandate within injunction that Hartman take down his website, made without a finding that everything published on the website defamed any of the Plaintiffs, was also held to be overly broad.

Finally, the Seventh Circuit opined on the injunction as it related to the First Amendment, which forbids, with some exceptions, "prior restraints" on speech by the government. One permissible exception outlined by the other jurisdictions, including the Sixth Circuit, is for defamatory statements, which may be enjoined but only where the injunction is "no broader than necessary to provide relief to plaintiff while minimizing the restriction of expression."

The appellate court thus concluded that the trial court's injunction could not be sustained. Without ruling that the law of the Seventh Circuit allowed the enjoining of defamatory speech, it held that, even were such an injunction permissible in the Seventh Circuit, the injunction issued by the trial court was vague, open-ended and overbroad; that it was thus a patent violation of the First Amendment; and that as a consequence the injunction must be vacated.

Continue reading "Seventh Circuit Law: Appellate Court Vacates Order Enjoining Defamation in Copyright/Trademark Case " »

January 19, 2016

164 Trademark Registrations Issued to Indiana Companies in December 2015

The U.S. Trademark Office issued the following 164 trademark registrations to persons and businesses in Indiana in December 2015 based on applications filed by Indiana trademark attorneys:

Registration No.  Word Mark Click To View
4877757 PERSONALIZING THE HEALTHCARE EXPERIENCE VIEW
4877580 HT VIEW
4877515 GRATITUDE VIEW
4877440 DESKINS RAPIDFLOC MIXER VIEW
4877311 VIEW
4878790 GRAND RESERVE VIEW

Continue reading " 164 Trademark Registrations Issued to Indiana Companies in December 2015" »

January 12, 2016

Indiana Trademark Law: Stratotone Guitar Co. Has Priority Date for Stratotone Trademark; Westheimer Infringed

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Fort Wayne, Indiana - District Judge Jon DeGuilo held that prior rights to the Stratotone trademark were abandoned and that the subsequent user held the superior right to the trademark.

This litigation arose as a result of a federal trademark complaint, filed in the Northern District of Indiana by Plaintiff Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana. The Defendant is Westheimer Corporation of Northbrook, Illinois. In the complaint, Agler asserted that Westheimer had infringed the trademark "STRATOTONE" (the "Stratotone trademark"), Trademark Registration No. 3,986,754, which has been issued by the U.S. Patent and Trademark Office.

The claims listed in Agler's complaint were:

• Count I: Federal Unfair Competition and False Designation of Origin
• Count II: Federal Trademark Infringement
• Count III: Federal Trademark Counterfeiting
• Count IV: Common Law Unfair Competition and Trademark Infringement
• Count V: Unjust Enrichment
• Count VI: Conversion
• Count VII: Deception

• Count VIII: Indiana Crime Victim's Relief Act

Westheimer counterclaimed, asserting that Agler was infringing on its rights in the Stratotone trademark as well as an additional trademark for "Atom."

In this opinion, Judge DeGuilo ruled on Agler's motion for summary judgment on counts I through IV as well as Agler's motion for summary judgment on all of Westheimer's counterclaims.

The court first addressed the Stratatone trademark. Agler asserted, and Westheimer conceded, that the Stratatone mark was protected and that Westheimer's use of the mark was likely to cause confusion. The question for the court was which party had superior rights to the mark, as determined by whether Agler or Westheimer had priority to the trademark. That priority, in turn, was determined by who had established and maintained the earliest claim to the trademark.

It was undisputed that Agler had filed an "intent-to-use" application to register the Stratotone mark on March 7, 2006. Westheimer claimed that it had acquired rights that predated Agler's 2006 application through its 2009 purchase of trademark rights from Harmony Industries, a third party that had used the Stratotone trademark at least as early as 2001.

The court, however, reviewed the testimony of those involved with Harmony Industries and found that Harmony Industries had both ceased to use the trademark and had demonstrated no intent to use it for more than four years starting at least January 1, 2003. The holder of a trademark has only three years to formulate its intent to resume use before that trademark is presumed abandoned. Thus, Harmony Industries was held to have abandoned the trademark. In turn, because Harmony Industries had no trademark rights to convey in the Stratotone mark, Westheimer acquired none. Consequently, Agler was held to have an earlier priority date and, thus, superior rights to the trademark. The court granted Agler's motion with respect to his claims, and Westheimer's counterclaims, regarding the Stratotone trademark.

Regarding the Atom trademark, the court concluded that it did not have sufficient evidence to determine that Agler had acquired priority. It thus denied Agler's motion for summary judgment with respect to the claims involving the Atom trademark.

Continue reading "Indiana Trademark Law: Stratotone Guitar Co. Has Priority Date for Stratotone Trademark; Westheimer Infringed" »