Indiana Intellectual Property Law News
Indianapolis, Indiana — Royal Purple, LLC (“Royal Purple”) of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany and Liqui Moly USA, Inc. of Hauppauge, New York (collectively, “Liqui Moly”) alleging infringement of two marks, Registration Nos. 2,691,774 and 2,953,996, which have been registered with the U.S. Trademark Office.
Royal Purple is again suing over the use of the color purple. We have blogged previously about the company here. Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple, at least in conjunction with various lubricating oils. It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses. It also owns multiple trademarks incorporating the word “purple” as applied to various goods. These trademarks are registered with the U.S. Trademark Office.
Purple was chosen for its association with royalty. (Historically, purple dye was so expensive to produce that it was used only by royalty.) Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.
Liqui Moly is accused of distributing, offering to sell and selling products that infringe upon Royal Purple’s trademarks and engaging in acts that constitute unfair competition and dilution. Royal Purple also alleges that Liqui Moly’s use is a purposeful attempt to trade upon Royal Purple’s trademarks. It asserts that Liqui Moly’s infringing use of Royal Purple’s intellectual property is likely to cause confusion, mistake or deception in customers or potential customers who encounter the Liqui Moly products. It also claims that Liqui Moly’s use will dilute the “distinctive quality” Royal Purple’s trademarks. Finally, it alleges that Liqui Moly’s use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple’s trademark, by placing them partially under the control of Liqui Moly, USA and Liqui Moly GmbH, two third parties unrelated to Royal Purple.
Trademark attorneys for Royal Purple filed suit alleging:
· Count One: Trademark Infringement Under Federal Law – 15 U.S.C. § 1114
· Count Two: Unfair Competition; False Designation of Origin Under Federal Law – 15 U.S.C. § 1125(a)
· Count Three: Dilution Under Federal Law 15 U.S.C. 1125(c)
· Count Four: Dilution in Violation of Indiana Code § 24-2-1-13.5
· Count Five: Common Law Trademark Infringement
· Count Six: Unfair Competition Under Indiana Common Law
· Count Seven: Unjust Enrichment
Royal Purple seeks preliminary and permanent injunctions, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys’ fees.
Practice Tip #1: Color can serve as a useful identifier of the source of goods to consumers. The courts, however, have had to draw some narrow lines to balance the various interests. On the one hand, companies often invest significant amounts of money in promoting their brands and color is frequently a component of that promotion. On the other hand, there are a limited number of colors — and an even more limited number of colors that are pleasing and appropriate for any given type of product — and courts are wary of providing a monopoly on any given color to any one company. After all, if such a monopoly is first provided to one company, all too soon the entire spectrum may be spoken for.
Practice Tip #2: This complaint, which is very similar to an earlier action filed by Royal Purple, has added Liqui Moly USA, Inc. as a defendant and largely omitted the earlier-filed claims relating to a third trademark, registered under the U.S. Registration No. 3,819,988.
This case has been assigned to Judge Sarah Evans Barker and Magistrate Judge Mark J. Dinsmore in the Southern District of Indiana, and assigned Case No. 1:13-cv-1155-SEB-MJD.