Articles Posted in False Designation of Origin

Fort Wayne, Indiana – Super 8 Worldwide, Inc. f/k/a Super 8 Motels, Inc. of Parsippany, New Jersey sued in the Northern District of Indiana alleging trademark infringement and other wrongdoings.

Plaintiff Super 8 operates a franchise system for guest lodging.  It claims ownership to the SUPER 8® service mark as well as various related trade names, trademarks and service marks, some of which have been registered with the U.S. Patent and Trademark Office.  It estimates the value of the entity’s goodwill to exceed hundreds of millions of dollars.

In this Indiana intellectual property lawsuit, Super 8 alleges that former franchisees have violated the terms of a franchise agreement entered into with Super 8.  Three Indianapolis Defendants were listed: Auburn Lodging Associates, LLP (“ALA”), Kokila Patel and Dilip Patel.  A fourth Defendant Chicago Capital Holdings, LLC (“CCH”) of Hinsdale, Illinois was also named.

Indianapolis, Indiana – Plaintiffs Acushnet Company of Fairhaven, Massachusetts, Roger Cleveland Golf Company, Inc. of Huntington Beach, California and Dunlop Sports Co. Ltd. of Hyogo, Japan filed a trademark lawsuit in the Southern District of Indiana.  This intellectual property litigation, commenced by an Indiana trademark litigator for Plaintiffs, was filed against both an individual and a business entity.

Listed as Defendants in this lawsuit are Giorgio Nunns a/k/a George Nunns a/k/a Georgie Nunns a/k/a Giorgio, an individual, and Custom Golf Solutions, LLC, individually and jointly, doing business under the names “bogie’s nearly new golf,” “gnunns81” and “golfcustomsolutions15.”  Defendants operate in Indianapolis and Carmel, Indiana.

Defendants are accused of engaging in the sale of counterfeit products and infringing upon Plaintiffs’ trademarks.  The following trademarks, to which Acushnet claims ownership and/or an exclusive license, are at issue:

Trademark Registration No. Registration Date Class/Goods
 Tiltleist 1,155,766 26 May 1981 IC 28: golf equipment, namely golf balls, golf clubs and golf bags.
 T 3,376,961 5 February 2008 IC 24: golf towels

IC 25: golf clothing, namely jackets, shirts, hats and visors.

IC 28: golf equipment, namely golf putters, golf club head covers, golf club grips and divot tools.

 crown 2,620,432 17 September 2002 IC 28: golf clubs and accessories, namely golf tees, golf gloves, golf bags, golf putters, golf drivers, golf woods, golf irons, golf green repair tools, golf club covers and golf bag covers.
 ScottCameron 3,421,373 6 May 2008 IC 28: golf equipment, namely golf bags.

Further, Plaintiff Cleveland Golf asserts ownership of the following federal trademarks, also at issue in this lawsuit:

Trademark Registration No. Registration Date Class/Goods
 cleveland 2,070,051 10 June 1997 IC 18: carry all bags and umbrellas

IC 25: golf apparel, namely shirts, caps, visors, sweatshirts, and sweater vests.

IC 28: golf clubs, golf club heads, golf club shafts, golf club grips, golf bags, golf bag covers, and golf club head covers.

 cg 2,302,251 21 December 1999 IC 28: golf clubs, and golf club heads, namely woods, irons, and putters.

Plaintiffs state that Defendants are “manufacturing, promoting and otherwise advertising, distributing, selling, and offering for sale…golf clubs and golf accessories…which are counterfeits and/or infringements” of Plaintiffs’ trademarks.  Plaintiffs further contend that Defendants’ goods are of a “different quality” from Plaintiffs’ “high quality products.”

Plaintiffs assert that Defendants’ acts damage Plaintiffs’ brands and constitute a fraud upon the public.  The claims in this lawsuit, brought in Indiana federal court, are as follows:

  • Count I: Trademark Counterfeiting
  • Count II: Trademark Infringement
  • Count III: False Designation of Origin Pursuant to § 43(a) of the Lanham Act
  • Count IV: Common Law Trademark Infringement
  • Count V: Civil Action under Indiana Code § 34-24-3-1 for Recovery of Damages, Costs, and Fees Arising from Defendants’ Conversion in Violation of Indiana Code § 35-43-4-3
  • Count VI: Civil Action under Indiana Code § 34-24-3-1 for Recovery of Damages, Costs, and Fees Arising from Defendants’ Forgery in Violation of Indiana Code § 35-43-5-2(b)
  • Count VII: Civil Action under Indiana Code § 34-24-3-1 for Recovery of Damages, Costs, and Fees Arising from Defendants’ Counterfeiting in Violation of Indiana Code § 35-43-5-2(a)
  • Count VIII: Civil Action under Indiana Code § 34-24-3-1 for Recover [sic] of Damages, Costs and Fees Arising from Defendants’ Theft in Violation of Indiana Code § 35-43-4-2
  • Count IX: Civil Action under Indiana Code § 34-24-3-1 for Recovery of Damages, Costs and Fees Arising from Defendants’ Criminal Mischief in Violation of Indiana Code § 35-43-1-2

Plaintiffs ask the court for statutory damages of $2 million for each counterfeit as well as injunctive relief, costs and attorneys’ fees.

The case was assigned to District Judge Richard L. Young and Magistrate Judge Tim A. Baker in the Southern District and assigned Case No. 1:16-cv-03379-RLY-TAB.

Evansville, Indiana – Richard Litov of Evansville, Indiana sued Freedom Heritage Museum, Inc., of Evansville, Indiana alleging trademark infringement.  Litov asserts claims under both federal and Indiana law.

Litov claims that he conceived the idea for the museum – a collection of exhibits and artifacts from the World War II era – as well as the museum’s name, stating that he served as its founding president and a founding board member.  He asserts that the museum used the trademarked name pursuant to permission that he granted “as president and board member” of the museum.

The trademark in question has been registered under Litov’s name as U.S. Trademark Registration No. 4,939,292.  Litov states in his complaint that the registration covers the words FREEDOM HERITAGE MUSEUM and an associated design.  The word portion of the trademark, as listed by the U.S. Patent and Trademark Office’s website, is FREEDOM HERITAGE MUSEUM, EST. 2012, EVANSVILLE INDIANA.  The application for the trademark registration was filed on July 6, 2015 and granted on April 19, 2016.

Indianapolis, Indiana – Plaintiff Heartland Consumer Products LLC of Carmel, Indiana filed an intellectual property lawsuit in the Southern District of Indiana alleging trademark and trade dress infringement, trademark dilution and unfair competition under the Lanham Act, as well as related wrongdoing under the Indiana State Trademark Act, the common law of the State of Indiana and the Indiana Crime Victims Act.  The intellectual property at issue pertains to Splenda®, a Heartland trademark under which it offers sucralose, a low-calorie sweetener.

Defendants in the litigation are Dunkin’ Brands, Inc. and Dunkin’ Donuts Franchised Restaurants LLC of Canton, Massachusetts.  They are accused of “deceiving customers into believing the Dunkin’ Donuts restaurants carry Splenda® Brand Sweetener,” by both tacitly and affirmatively misrepresenting that the non-Splenda sucralose product that the Dunkin’ Defendants offer is, in fact, Heartland’s Splenda.  Plaintiff contends that consumers were confused about whether the sweetener that the Dunkin’ Defendants offered was Splenda and that some have complained that adding the other sweetener to their Dunkin’ Donuts products imparted a “funny taste.”

Defendants discontinued their agreement to purchase and offer Heartland’s Splenda in April 2016.  According to the Indiana complaint, following that decision, Defendants began offering sweetener in yellow packets similar to the single-serving packets in which Splenda is offered to the public.  Plaintiff contends that, when asked, Defendants in a “clear majority of stores affirmatively represented, through their agents or employees, that non-Splenda® sucralose sweetener was instead Splenda® Brand Sweetener.”  Plaintiff further contends that Dunkin’ Defendants are misappropriating Plaintiff’s trademarked “Sweet Swaps®” by the use of a similar term “Smart Swaps.”

In this complaint, filed by Indiana trademark attorneys for Plaintiff, the following causes of action are alleged:

  • Count I: Common Law Trademark Infringement and Trademark Infringement under 15 U.S.C. § 1114(1)
  • Count II: False Designation of Origin under 15 U.S.C. § 1125(a)
  • Count III: Unfair Competition
  • Count IV: Trademark Dilution under 15 U.S.C. § 1125(c)
  • Count V: Trademark Dilution under I.C. 24-2-1-13.5
  • Count VII [sic]: Preliminary and Permanent Injunctive Relief
  • Count VIII: Corrective Advertising Damages

Plaintiff states that the following registered trademarks and pending trademark applications are implicated in this trademark lawsuit:

Mark Registration Number
SPLENDA 1544079
SPLENDA 3346910
SPLENDA – Design plus words, etc. 4172135
SPLENDA – Design plus words, etc. 4165028
SPLENDA – Design plus words, etc. 4301712
SPLENDA – Design plus words, etc. 4172136
SPLENDA – Design plus words, etc. 4165029
SPLENDA – Design plus words, etc. 4122311
SPLENDA – Design plus words, etc. 4187229
SPLENDA – Design plus words, etc. 4202774
SPLENDA – Design plus words, etc. 4230392
SPLENDA – Design plus words, etc. 4238101
SPLENDA – Design plus words, etc. 4106164
SPLENDA LIVING 4664653
CUANDO PIENSES EN AZUCAR, USA SPLENDA 4744600
Pending Applications Serial Number
THINK SUGAR, USE SPLENDA 86865337
SWEET SWAPS Splenda 87012521
SPLENDA ZERO 87010504

Plaintiff seeks damages, including punitive damages, as well as injunctive relief, costs and attorneys’ fees.

The case was assigned to District Judge Sarah Evans Barker and Magistrate Judge Mark J. Dinsmore in the Southern District of Indiana and assigned Case No. 1:16-cv-03045-SEB-MJD.

 

Indianapolis, Indiana – Plaintiff Delicato Vineyards of Manteca, California filed a lawsuit in the Southern District of Indiana alleging trademark infringement and other wrongdoing. Defendant is Gnarly Grove Cider Co. of Columbus, Indiana.

Plaintiff Delicato claims ownership to two trademarks, U.S. Trademark Registration No. 3165707 for GNARLY HEAD, and U.S. Trademark Registration No. 4777145 for a design trademark. It offers Gnarly Head wine products for sale using these trademarks.

Defendant Gnarly Grove recently launched Gnarly Grove hard cider. Plaintiff contends that both the name and the trade dress of this product are confusingly similar to its Gnarly Head wine. It asserts that the similarities appear to be an intentional effort on the part of Defendant to capitalize on the reputation of the GNARLY HEAD brand.

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In this lawsuit, filed by Indiana trademark attorneys for Delicato, the following causes of action are alleged:

• Registered Trademark and Trade Dress Infringement -15 U.S.C. § 1114(1)
• False Designation of Origin -15 U.S.C. § 1125(a)

• Common Law Unfair Competition

Plaintiff is seeking equitable relief, damages, costs and attorneys’ fees.

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Indianapolis, Indiana – Trademark attorneys for Plaintiff The American Automobile Association, Inc. (“AAA”) filed a trademark lawsuit in the Southern District of Indiana. Two Bloomington Defendants are named, AAA Automotive Parts and Michael Waller, the company’s owner. Defendants also do business as AAA Automotive & Truck Parts, and Waller Automotive Group d/b/a AAA Automotive Parts.

AAA, a not-for-profit corporation, offers “travel and automobile products and services (including automobile repair services at its AAA Car Care Centers and through AAA Approved automobile repair businesses), financial advice, insurance and warranty coverage, and discounts.”

Defendants own and run a website, TRIPLEAPARTS.COM, on which they advertise automobile-related goods and services. Defendants also have brick-and-mortar shops in Indianapolis and Griffith, Indiana as well as locations in Missouri and Florida.

In this Indiana trademark lawsuit, lawyers for AAA listed the following causes of action:

• Count I: Federal Trademark Infringement in Violation of Section 32 of the Lanham Act
• Count II: Federal False Designation of Origin and Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Count III: Federal Trademark Dilution in Violation of Section 43(c) of the Lanham Act
• Count IV: Cybersquatting Under Section 43(d) of the Lanham Act
• Count V: Trademark Dilution Under Ind. Code § 24-2-1-13.5
• Count VI: Trademark Infringement Under Ind. Code § 24-2-1-13

• Count VII: Unfair Competition and Trademark Infringement Under Common Law

AAA, which claims ownership to over 100 trademarks, contends that the following trademarks are at issue in this lawsuit:

Reg. No. 829,265

AAA Mark, used in connection with a
variety of automobile association services and emergency roadside services

Reg. No. 2,158,654

AAA & Design Mark, used in
connection with a variety of automobile association services and emergency roadside
services

Reg. No. 3,316,227

AAA & Design Mark, used in
connection with “[i]ndicating membership in a(n) automobile membership
club”

Reg. No. 1,168,790

TRIPLE A Mark, used in connection
with a variety of automobile association services

Reg. No. 3,046,904

AAA Mark, used in connection with
repair services

Reg. No. 3,046,905

AAA & Design Mark, used in
connection with repair services

Reg. No. 3,102,319

AAA & Design Mark, used in
connection with vehicle parts

Reg. No. 5,036,379

AAA Mark & Design, used in
connection with a variety of automobile association services and emergency
roadside services

Reg. No. 1,449,079

AAA APPROVED AUTO REPAIR & Design
Mark, used in connection with automobile repair services

Reg. No. 3,604,164

AAA TOTAL REPAIR CARE Mark, used in connection
with auto diagnosis and repair services

AAA seeks damages and asks that those damages be trebled pursuant to 15 U.S.C. § 1117 and Indiana law. It also seeks equitable relief, costs and attorneys’ fees.

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Indianapolis, Indiana – Plaintiff Mecca Companies Inc. d/b/a Annex Student Living of Indianapolis, Indiana filed a trademark infringement complaint in the Southern District of Indiana against Defendant Trinitas Ventures LLC of Lafayette, Indiana.

Mecca offers student-housing services in three states, including Indiana and Ohio, under THE ANNEX or ANNEX. It states that it began to use ANNEX to identify its student housing in 2013 but makes no mention of having received a federal or state trademark registration.

Mecca contends that Trinitas offers competing services in an Ohio student-housing property using the name ANNEX and asserts that this use is likely to cause consumer confusion. In this federal lawsuit, brought by Indiana trademark attorneys for Mecca, the following causes of action are listed:

• Count I: Trademark Infringement and Unfair Competition Under 15 U.S.C. § 1125(a)
• Count II: Violation of Ohio Deceptive Trade Practices Act, ORC 4165.02

• Count III: Common Law Unfair Competition under Ohio Law

Mecca seeks damages, including punitive damages, along with injunctive relief, costs and attorneys’ fees.

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Indianapolis, Indiana – Trademark attorneys for Plaintiff Allison Transmission, Inc. of Indianapolis, Indiana filed a lawsuit against Fleetpride, Inc. of Irving, Texas asserting trademark infringement.

Plaintiff Allison is a manufacturer of medium- and heavy-duty automatic transmissions. In conjunction with the manufacture and sale of transmissions, Allison developed a standard under which it would certify transmission fluids as approved for use in its transmissions. This standard, “TES 295,” is incorporated into a family of trademarks, Reg. No. 4,379,699, Reg. No. 4,166,531 and Reg. No. 4,993,880, which have been registered by the U.S. Patent and Trademark Office.

In 2015, Allison discovered what it alleges was an infringing use of the TES 295 trademark by Defendant Fleetpride. Allison contends that Fleetpride offered transmission oil under the name PRIMATECH TES295 and used a version of Allison’s TES 295 trademarks, both in its product numbers and its advertising. Trademark lawyers for Allison contacted Fleetpride to address Allison’s concerns, but no resolution was reached.

This litigation, filed in the Southern District of Indiana, followed. In the complaint, filed yesterday in federal court, Fleetpride is accused of “intentional, willful, and bad faith attempts to deceive or to create mistake or confusion in the minds of customers” as a result of its use of “TES295.” The lawsuit lists the following claims for relief:

• Count I: Infringement of Federally Registered Trademark (Lanham Act, 15 U.S.C. § 1114(1))
• Count II: Federal Unfair Competition and False Designation of Origin (Lanham Act, 15 U.S.C. § 1125(A))
• Count III: Common Law Unfair Competition and Trademark Infringement

• Count IV: False Description of Goods

Allison is seeking damages, including treble damages, along with injunctive relief, costs of the lawsuit and attorneys’ fees.

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Fort Wayne, Indiana – Attorneys for Plaintiffs North Atlantic Operating Company, Inc. and National Tobacco Company, L.P., both of Louisville, Kentucky, filed a trademark infringement lawsuit in the Northern District of Indiana alleging infringement of various registered trademarks covering ZIG-ZAG® roll-your-own cigarette papers and accessories. In addition to trademark infringement under federal law, Plaintiffs allege copyright infringement, false designation of origin and trade dress infringement under federal law as well as trademark infringement and unfair competition under Indiana common law.

Multiple Defendants, most of Fort Wayne, Indiana, are named in this intellectual property lawsuit: KPC Distributor Inc.; Kuldeep Singh; Paramjit Singh; Charanjit Singh; Burger’s, Inc., d.b.a. Burger Dairy; JGM Stores Inc., d.b.a. Burger Dairy II; Kirandeep, Inc., d.b.a. Crescent Corner Express; KSL Stores Inc., d.b.a. Get 2 Go #10; KSL Holdings Inc., d.b.a. Get 2 Go #13; Coliseum Quick Mart Inc., a.k.a. Get 2 Go #15; Calhoun Store Inc., a.k.a. Get 2 Go 16; KPC Brothers Inc., a.k.a. Get 2 Go #17 d.b.a. Get 2 Go; Get 2 Go #18; Virk Brothers Enterprises Inc., a.k.a. Get 2 Go 19, d.b.a. Shell Get 2 Go #19; JAT Boyz Stores Inc., a.k.a Harlan Quick Stop; KPC Investments LLC, a.k.a. Iceway Express; John Does 1-10; and XYZ Companies 1-10.

At issue in this Indiana lawsuit are the following trademarks: Registration No. 610,530 for ZIG-ZAG (stylized), Registration No. 1,127,946 for ZIG-ZAG (text), Registration No. 2,169,540 for Smoking Man (design with circle border), Registration No.2,169,549 for Smoking Man (design with no border), Registration Nos. 2,664,694 and 2,664,695 for North Atlantic Operating Company, Inc. (design), and Registration Nos. 2,610,473 and 2,635,446 for North Atlantic Operating Company (text), all of which have been registered by the U.S. Patent and Trademark Office. The ZIG-ZAG trademarks are owned by a French company, Bolloré, S.A., which is not a party to this litigation, and are licensed to Plaintiff North Atlantic.

Defendants are accused of engaging in a widespread scheme to acquire, sell and/or distribute counterfeit products bearing various registered trademarks and/or copyrighted text that Plaintiffs allege is protected by law. This text includes the phrase “Distributed by North Atlantic Operating Company, Inc.”

Plaintiffs further contend that one or more Defendants’ conduct was willful. They contend that this was demonstrated on more than one occasion when a North Atlantic representative requested a receipt for the purchase of accused goods and this request was refused. On one occasion, when the representative insisted on a receipt, Plaintiffs state that “Defendant KPC Distributor ripped the receipt in two pieces, keeping the piece that displayed Defendant KPC Distributor’s contact information for itself.”

In this Indiana intellectual property lawsuit, filed by trademark litigators for Plaintiffs, Defendants are accused of having sold “dozens of cartons and hundreds of booklets of confirmed counterfeit ZIG-ZAG® Orange to undercover North Atlantic representatives.” Plaintiffs state the following claims:

• Federal Trademark Infringement (15 U.S.C. § 1114)
• False Designation of Origin and Trademark/Trade Dress Infringement (15 U.S.C. § 1225(a))
• Federal Copyright Infringement (17 U.S.C. §§ 101 et seq.)
• Common Law Unfair Competition

• Common Law Trademark Infringement

Plaintiffs ask the federal court for damages, injunctive relief, costs and attorneys’ fees.

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Indianapolis, Indiana – Trademark attorneys for Eye 4 Group, LLC Corporation (“E4G”) of Fishers, Indiana filed an intellectual property lawsuit in the Southern District of Indiana. Defendants are Indianapolis Signworks, Inc. (“ISW”) of Indianapolis, Indiana and Andrew Chapman of Carmel, Indiana, the owner of ISW.

Plaintiff E4G is in the business of graphic design, sign manufacturing, metal fabrication, promotional material and apparel. It owns a registration for the trademark EYE 4 GROUP, Reg. No. 4,694,655, which has been issued by the U.S. Patent and Trademark Office. It has also an application for the registration of a second trademark for EYE 4, pending under Serial No. 87/018,205.

E4G states that Defendant ISW is a direct competitor in the business of making signs as well as associated tools and products. E4G, which owns and operates the website eye4group.com, contends that ISW has used the internet domain name “eyefourgroup.com” and, in doing so, has infringed E4G’s intellectual property. E4G asserts that Defendants’ actions constitute a knowing infringement of its trademark rights and that those actions were intentional, willful and in bad faith.

In this Indiana lawsuit, Plaintiff alleges direct and contributory trademark infringement, false designation of origin, and unfair competition arising under the Lanham Act; dilution under the Federal Trademark Dilution Act; violations of the Anticybersquatting Consumer Protection Act and related wrongdoing under Indiana state law.

Plaintiff seeks injunctive relief and monetary relief, including punitive damages, attorney fees and costs of the litigation.

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