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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 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" »

January 11, 2016

Indiana Trademark Litigation: Barrington Music Sues Guitar Center, Music & Arts and Eastman Music Alleging Infringement

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South Bend, Indiana - Indiana trademark attorneys for Plaintiff Barrington Music Products, Inc. of Niles, Michigan filed a trademark infringement lawsuit in the Northern District of Indiana. The Defendants in the litigation are Guitar Center Stores, Inc. of Westlake Village, California; Music & Arts Centers of Bel Air, Maryland, which is owned by Guitar Center; and Eastman Music Company of Pomona, California.

Plaintiff Barrington Music Products offers musical instruments, specifically featuring its "Roy

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 Benson" and "L.A. Sax" lines. Defendant Guitar Center has been in business more than 50 years and advertises itself as "the world's largest retailer of guitars, amplifiers, drums, keyboards, recording, live sound, DJ, and lighting equipment." It has more than 260 stores across the United States. Defendant Music & Arts offers musical instrument for sale, as well as offering repairs, rentals and instruction at its various locations nationwide. Defendant Eastman Music Company, which offers musical instruments globally, has been in business for more than 20 years.

The trademarks at issue in the lawsuit are U.S. Trademark Registration Nos. 3,831,402 and 3,831,403. They have been registered with the U.S. Patent and Trademark Office and cover VENTO both as a standard character trademark and as a stylized trademark.

Defendants are accused of trademark infringement, trademark dilution by blurring, unfair competition via passing off and trade name infringement of the VENTO trademark due to their marketing of wind instruments under the name "Ventus," which means "wind" in Latin. Defendant's "Vento" is Italian for "wind."

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Plaintiff contends that it is "common knowledge that the English translations of VENTUS and VENTO are the same." Plaintiff also asserts that Defendants use the Ventus mark with the intent to deceive consumers by causing them to believe that Defendants' Ventus products are related to Plaintiff's Vento products. Plaintiff claims that the use of the Ventus mark has caused, and will continue to cause, consumer confusion.

In this lawsuit, the following causes of action are alleged:

• Count I: Federal Trademark Infringement - Lanham Act (15 U.S.C. § 1114)
• Count II: Federal Unfair Competition - Lanham Act (15 U.S.C. § 1125(a))
• Count III: False Designation of Origin - Lanham Act (15 U.S.C. § 1125(a)(1)(B))
• Count IV: Federal Trademark Dilution - Lanham Act (15 U.S.C. § 1125(c))
• Count V: Trade Name Infringement under Indiana Common Law

• Count VI: Passing Off in Violation of Indiana's Unfair Competition Doctrine

Barrington seeks equitable relief along with damages, including punitive damages, costs and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Barrington Music Sues Guitar Center, Music & Arts and Eastman Music Alleging Infringement" »

December 21, 2015

Indiana Trademark Litigation: Indiana Botanic Gardens Sues VitalMax Vitamins Alleging Infringing Use of "Accu-Hear"

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Hammond, Indiana - Plaintiff Indiana Botanic Gardens, Inc. of Hobart, Indiana filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Almark Products, Inc. d/b/a VitalMax Vitamins ("VitalMax") of Delray Beach, Florida infringed its trademarked "ACCU HEAR", U.S. Trademark No. 3,010,289, which has been registered with the U.S. Patent and Trademark Office.

Indiana Botanic allege that it has been in the business of processing, packaging and otherwise selling variety of herbal products for many years. It contends that it has done so under the ACCU HEAR trademark, which has been registered for use in connection with dietary supplements.

In this trademark litigation, Indiana Botanic accuses Defendant VitalMax of production, labeling, sale and offering for sale of a nutritional supplement offered under the name ACCU-HEAR. This term, Indiana Botanic states, is confusingly similar to Plaintiff's ACCU HEAR trademark and will irreparably harm Plaintiff by diminishing the reputation and goodwill of that trademark. Indiana Botanic asserts that VitalMax infringed the ACCU HEAR trademark willfully and deliberately.

In this federal complaint, filed by a trademark attorney for Indiana Botanic, the following is alleged:

• Count I: Federal Trademark Infringement

• Count II: Unfair Competition Under Federal Law

The "Jurisdiction and Venue" section of this federal complaint lists additional claims - "state trademark infringement, injury to business reputation and dilution, deceptive trade practices, deceptive business practices and unfair competition under the laws of the State of Indiana" - but those claims were not included as separate counts.

Indiana Botanic seeks equitable relief along with damages, including punitive damages, costs and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Indiana Botanic Gardens Sues VitalMax Vitamins Alleging Infringing Use of "Accu-Hear" " »

December 11, 2015

Indiana Trademark Litigation: Trademark Lawsuit Filed Over Use of "All Star" Name

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Indianapolis, Indiana - Plaintiff All Star Heating & Cooling, Inc. ("All Star") of Camby, Indiana sued in the Southern District of Indiana alleging that Quality Heating and Air, Inc. ("Quality Heating") d/b/a All Star Air and Richard Cusick ("Cusick") of New Palestine, Indiana are infringing its trade name.

Both Plaintiff and Defendants are in the business of providing heating, venting and air conditioning service, installation and repair. Plaintiff All Star states that it began business in December of 2005 and that it has used the same name since that time. It also indicates that it has been using "the same trade dress since 2011." This trademark infringement complaint does not indicate that Plaintiff's business name has been registered by the U.S. Patent and Trademark Office.

The complaint states that Defendant Cusick, who is believed to be the owner and operator of Defendant Quality Heating, began business in 2014 under the assumed business name All Star Air. Plaintiff asserts that Quality Heating is currently located less than 30 miles from Plaintiff's location.

Plaintiff All Star contends that customers and vendors have been confused by Defendants' use of the All Star name, stating that they have "wrongly believed that there is an association or connection between the Plaintiff's business and the Defendants' business." Plaintiff avers that, as a consequence, Defendants are liable for trade name infringement and unfair competition.

In its lawsuit, filed by an Indiana trademark lawyer, Plaintiff lists the following counts:

• Count I: Federal Unfair Competition
• Count II: State and Common Law Trademark Infringement

• Count III: Common Law Unfair Competition

All Star seeks equitable relief, including an injunction; damages, including treble damages; costs and attorney fees.

Continue reading "Indiana Trademark Litigation: Trademark Lawsuit Filed Over Use of "All Star" Name " »

October 16, 2015

Indiana Trademark Law: Trademark Plaintiff Abused Legal Process; Trademark Defendant Awarded an Additional $175,000 in Attorneys' Fees

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Indianapolis, Indiana - In the trademark lawsuit between of Plaintiff Wine & Canvas Development, LLC ("WNC") and Defendants Christopher Muylle, Theodore Weisser, YN Canvas CA, LLC and Weisser Management Group, LLC, the Southern District of Indiana found that Plaintiffs had engaged in abuse of process and awarded an additional $175,882.68 in attorneys' fees and costs to Defendant Muylle.

Plaintiff WNC sued Defendants in 2011 on allegations of trademark infringement and false designation of origin after disputes arose regarding the parties' franchising agreement. Defendants counterclaimed for abuse of process against WNC and its principals Anthony Scott ("Scott"), Tamara McCracken Scott ("Ms. McCracken"), and Donald McCracken ("Mr. McCracken").

Following a November 2014 trial, the jury found in favor of Defendant Muylle, returning a verdict that there had been no trademark infringement or false designation of origin by Muylle. The jury also found for Muylle on his claim of abuse of process. It awarded him $81,000 from WNC, $81,000 from Scott, $81,000 from Ms. McCracken, and $27,000 from Mr. McCracken.

In this order, the court ruled on Muylle's most recent petition for attorneys' fees. These fees had been incurred after September 30, 2014 and consisted of attorneys' fees that had been neither requested from the jury nor already paid as part of any of three prior payments of Muylle's attorneys' fees that had earlier been awarded by the court as sanctions against Plaintiff for failing to follow discovery or court rules.

The court evaluated both whether the fees should be awarded and, if so, whether the amount requested, $175,882.68, was reasonable. Under Seventh Circuit jurisprudence, attorneys' fees are available when a trademark infringement lawsuit is deemed to be "exceptional." An example of such an exceptional circumstance under the Lanham Act would be if the plaintiff lost and was also guilty of abuse of process.

The Plaintiff in this litigation lost. At trial, Muylle contended that the trademark infringement lawsuit had been brought for the purpose of causing him to incur considerable litigation costs to put on a defense and, thus, force the closing of the business. Muylle claimed that Scott had told him during a telephone conversation that Scott expected to lose the lawsuit against Muylle but that winning was not the goal of the litigation. Instead his goal was to put Defendants out of business. The jury found that Plaintiff had engaged in abuse of process.

The court also considered whether the amount of the fees was unreasonable. Judge Walton Pratt admitted that, at first blush, the fees did seem questionable for two months of legal services. Upon reviewing the detailed time records, however, the court found that neither the amount of time nor the rates charged per hour were unreasonable. The full amount of attorneys' fees was awarded to Defendant.


Continue reading "Indiana Trademark Law: Trademark Plaintiff Abused Legal Process; Trademark Defendant Awarded an Additional $175,000 in Attorneys' Fees" »

October 14, 2015

Indiana Patent and Trademark Litigation: Global Archery Sues Seattle-Based Company for Infringement

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Fort Wayne, Indiana - An Indiana intellectual property attorney for Global Archery Products, Inc. of Ashley, Indiana commenced litigation in the Northern District of Indiana alleging trademark and patent infringement by Jordan Gwyther d/b/a Larping.org and UpshotArrows.com of Seattle, Washington.

Two patents are at issue in this lawsuit: U.S. Patent No. 8,449,413 (the "`413 Patent") and U.S. Patent No. 8,932,159 (the "`159 Patent"). Both are entitled "Non-Lethal Arrow." Also at issue are U.S. Trademark Registration No. 4,208,867 and 4,208,868 for ARCHERY TAG for use in connection with non-lethal arrows. The patents and trademarks have been registered by the U.S. Patent and Trademark Office.

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Global contends that Jordan Gwyther d/b/a Larping.org ("Larping") is selling and offering for sale several products including a "Crossbow Bolt," a "Flat Tip Larp Arrow," a "Glow in the Dark Larp Arrow" and a "Round Tip Larp Arrow." These arrows are marketed at www.upshotarrows.com. Global asserts that Larping is violating Global's trademark rights by, inter alia, using the ARCHERY TAG trademark on advertising and as a paid "key word" on one or more search engines in connection with the marketing of these products. Global also claims that Larping's products infringe upon two of Global's patents.

In addition to patent infringement and trademark infringement, Global asserts various additional claims against Larping. The counts listed in this federal lawsuit are as follows:

• Count I: Infringement of the '413 Patent by Larping
• Count II: Infringement of the '159 Patent by Larping
• Count III: Infringement of Federal Trademarks
• Count IV: False Designation of Origin/Unfair Competition
• Count V: False Advertising
• Count VI: Tortious Interference with Contractual Relations
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Criminal Mischief

• Count IX: Deception

Global seeks equitable relief along with damages, including punitive damages, costs and attorney fees.

Continue reading "Indiana Patent and Trademark Litigation: Global Archery Sues Seattle-Based Company for Infringement" »

October 2, 2015

Indiana Trademark Litigation: Indigo Vapor Enterprises Sues Indigo Vapor Company

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South Bend, Indiana - Indigo Vapor Enterprises LLC of South Bend, Indiana commenced intellectual property litigation against Indigo Vapor Company, LLC, Robert Lee Martin and Charles Nandier of Tucson, Arizona.

Indigo Vapor Enterprises is in the business of selling "vaping" and e-cigarette materials across the United States and throughout the world. It alleges that Defendant sells similar goods in the same marketplace.

Plaintiff contends that Defendants infringed its trademarks, consisting of a stylized INDIGO VAPOR trademark, Registration No. 4,790,247, and a second trademark for INDIGO VAPOR, Registration No. 4,790,244 by using the Indigo Vapor Enterprises name and those trademarks to promote Defendants' competing products. These accused uses include the operation of a website at www.indigovaporcompany.com. Both trademarks have been filed with the U.S. Patent and Trademark Office.

Plaintiff alleges trademark infringement, dilution and false designation of origin under the Lanham Act. It also asserts cybersquatting under the Anticybersquatting Consumer Protection Act ("ACPA") and trademark infringement and unfair competition under the common law of Indiana and other states.

In this lawsuit, filed by Indiana trademark attorneys for Indigo Vapor Enterprises, the following causes of action are listed:

• Count I - Federal Trademark Infringement - Lanham Act (15 U.S.C. § 1114)
• Count II - Federal Unfair Competition - Lanham Act (15 U.S.C. § 1125(a))
• Count III - False Designation of Origin - Lanham Act (15 U.S.C. § 1125(a)(1)(B))
• Count IV - Federal Trademark Dilution - Lanham Act (15 U.S.C. § 1125(c))
• Count V - Federal Cybersquatting - ACPA and Lanham Act (15 U.S.C. § 1125(d))
• Count VI - Common Law Trademark Infringement

• Count VII - Common Law Unfair Competition

Plaintiff seeks equitable relief as well as damages, costs and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Indigo Vapor Enterprises Sues Indigo Vapor Company" »

August 27, 2015

Indiana Trademark Litigation: New Zealand Stroller Company Sued for Use of Navigator Trademark

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Indianapolis, Indiana - Indiana trademark attorneys for Baby Trend, Inc. of California filed an intellectual property lawsuit in the Southern District of Indiana alleging trademark infringement. The company claims that Phil and Teds Most Excellent Buggy Company Limited ("Phil and Teds"), a New Zealand-based enterprise, infringed U.S. Trademark Registration No. 4,514,646, which has been registered by Baby Trend in the U.S. Trademark Office.

Plaintiff Baby Trend is in the business of designing, manufacturing and marketing juvenile products. It claims that it has made extensive use of the mark NAVIGATOR in connection with its strollers and related products for over 15 years.

Baby Trend has sued Defendant Phil & Teds contending that Defendant uses a mark that infringes Baby Trend's NAVIGATOR trademark in connection with its stroller and stroller-related goods. This use is alleged to have taken place online at Phil & Teds' online marketplace, www.philandteds.com, as well as on third-party websites that offer Defendant Phil & Teds' stroller products, such as Toys R Us/Babies R Us and the BuyBuyBaby website. Baby Trend further states that products bearing an infringing NAVIGATOR mark are also sold in brick-and-mortar stores, directly by Phil & Teds and/or through others. According to Baby Trend, offers for the sale of products bearing an infringing mark have taken place in Indianapolis, Indiana.

The complaint states that Baby Trend asked Phil & Teds "at least as early as June 30, 2015" to discontinue use of the NAVIGATOR mark but that Phil & Teds refused. The complaint subsequently contends that Phil & Teds' conduct was done willfully, intentionally, knowingly, and in reckless disregard of the consequences to Baby Trend.

In this federal intellectual property litigation, Indiana trademark lawyers for Baby Trend make the following claims:

• Count I: Federal Trademark Infringement 15 U.S.C. § 1114
• Count II: Federal Unfair Competition and False Designation of Origin 15 .S.C. [sic] § 1125(a)

• Count III: Common Law Unfair Competition and Trademark Infringement

Baby Trend seeks preliminary and permanent injunctive relief; a declaration that Phil & Teds infringed Baby Trend's rights in its intellectual property in a deliberate, willful, and/or reckless manner; damages, including treble damages; and costs, litigation expenses and attorneys' fees.

Continue reading "Indiana Trademark Litigation: New Zealand Stroller Company Sued for Use of Navigator Trademark" »

July 24, 2015

Seventh Circuit Trademark Law: WD-40 Did Not Infringe "Inhibitor" Trademark

Chicago, Illinois - The United States Court of Appeals for the Seventh Circuit affirmed the 

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ruling of the United States District Court for the Northern District of Illinois, Western Division in the matter of Sorenson v. WD-40 Company, holding that WD-40's use of "inhibitor" and a crosshair graphic on its product labels did not constitute trademark infringement.

Plaintiff Jeffrey Sorensen founded and is the CEO of a company that produces a line of rust-inhibiting products, which were first sold in 1997. These products contain a substance called volatile corrosion inhibitor ("VCI"). Sorenson owns a federally registered trademark - THE INHIBITOR - for this line of products. He also claims common-law trademark rights to an orange-and-black crosshair design mark that is associated with these products.

In the trial-court litigation, trademark attorneys for Sorenson accused the WD-40 Company of infringing these two marks with its "Specialist" product line, which was introduced in 2011. One product in this line, the "WD-40 Specialist Long-Term Corrosion Inhibitor," contains VCI and also has a similar purpose to Sorenson's VCI product. On that WD-40 product, both the word "inhibitor" and an orange crosshair design, are used. Sorenson sued alleging trademark infringement and unfair competition.

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On a motion for summary judgment, the trial court held in favor of WD-40 on all counts. It found that WD-40's use of the word "inhibitor" constituted a non-trademark descriptive fair use. The trial court also held that insufficient evidence to show a likelihood of confusion between the two companies' crosshair graphics had been presented by Sorenson.

The Seventh Circuit affirmed. While it noted that some of the factors in the likelihood-of-confusion analysis supported Sorenson, the "three most important factors--similarity of the marks, bad faith intent, and evidence of actual confusion--all point decisively in favor of WD-40."

The court concluded by noting that "the clear weakness of Sorenson's marks" significantly influenced its decision. Also of particular importance to the court was the dissimilarity of the marks, held the Seventh Circuit, which stated, "because we conclude that no consumer would think that the marks are similar, we cannot imagine any consumer being confused."

The case was assigned to Hon. William J. Bauer, Hon. Joel M. Flaum and Hon. Daniel A. Manion of the United States Court of Appeals for the Seventh Circuit and assigned Case No. 3:12-cv-50417.


June 23, 2015

Indiana Trademark Litigation: Weekends Only, Inc. Sues Weekends Only Clearance Outlet

Fort Wayne, Indiana - An Indiana trademark lawyer for Weekends Only, Inc. of St. Louis, Missouri filed a trademark infringement lawsuit in the Northern District of Indiana alleging that AK Distribution LLC and KASH Subsidiaries, Inc. of Fort Wayne, Indiana, one or both of which does business as "Weekends Only Furniture & Mattress Clearance Outlet," infringed the trademarks WEEKENDS ONLY and WEEKENDS ONLY FURNITURE OUTLET, U.S. Registration Numbers 2,669,149; 2,697,959; 2,834,336; and 2,891,146, which have been registered by the U.S. Trademark Office.

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Plaintiff Weekends Only, Inc. operates business establishments in Indiana and Missouri. It contends that it owns and has used various trademarks, currently registered by the U.S. Trademark Office, that include the words "Weekends Only" since approximately 1997. These trademarks have been registered in Class 35 for "Retail store services featuring furniture."

In this federal lawsuit, Plaintiff alleges that Defendants AK Distribution LLC and KASH Subsidiaries, Inc. have used and continue to use confusingly similar versions of the WEEKENDS ONLY and WEEKENDS ONLY FURNITURE OUTLET trademarks. In so doing, states Plaintiff, Defendants have committed trademark infringement under federal and state law, unfair competition under the state law of Indiana, false designation of origin, injury to business reputation and/or trademarks, common law unfair competition.

In the complaint, filed by an Indiana trademark attorney for Plaintiff, the following claims are alleged:

• Count I: Infringement of Federally-Registered Trademark
• Count II: Infringement of Common Law Rights in Trademarks
• Count III: Unfair and Deceptive Trade Practices in Violation of Indiana Code § 24-5-0.5-1 et seq.
• Count IV: False Designation of Origin Under 15 U.S.C. § 1125(a)
• Count V: Common Law Unfair Competition
• Count VI: Motion for Permanent Injunctive Relief

Plaintiff asks the court for injunctive relief and damages.

Continue reading "Indiana Trademark Litigation: Weekends Only, Inc. Sues Weekends Only Clearance Outlet" »

June 19, 2015

Indiana Trademark Litigation: ArcelorMittal Sues Arillotta et al. for Tarnishment, Deception and Forgery

Hammond, Indiana - Trademark attorneys for ArcelorMittal USA LLC of Chicago, Illinois sued alleging violations of intellectual property rights and other rights. The lawsuit, filed in the Northern District of Indiana, alleges that Albert Arillotta, Global Demolition and Recycling, LLC, NMC Metals Corporation, and Arillotta Enterprises, LLC, all of Swampscott, Massachusetts, engaged in false designation of origin and false endorsement; dilution by blurring and tarnishment; deception; forgery; and deceptive trade practices.

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ArcelorMittal is a producer and supplier of steel products. It owns and operates a steelmaking facility in Burns Harbor, Indiana. ArcelorMittal claims rights in federal trademark registrations to "ArcelorMittal" (Reg. Nos. 3908649 and 3643643) and "Mittal" (Reg. No. 4686413).

In 2012, Plaintiff ArcelorMittal solicited proposals for the installation of a pig iron casting machine at its Burns Harbor steelmaking facility. Plaintiff indicates that Arillotta, through his company Arillotta Enterprises, Inc., submitted a proposal for the project but that it was rejected. Nonetheless, contends ArcelorMittal, Arillotta subsequently represented to various third parties that "Arcelor Mittal Burns Harbor" and Defendant(s) had, in fact, entered into a contract for such an installation. Plaintiff further claims in its federal lawsuit that Arillotta forged the signature of two individuals, Michael Rippey and Louis Schorsch, listed as officers of ArcelorMittal, on documents related to this false claim.

Plaintiff also indicates in this lawsuit that Arillotta, when later unable to make payments owing on another contract, falsely claimed that ArcelorMittal would wire transfer $338,200.00 to cover an initial payment. When no such payment was forthcoming, because Plaintiff indicates that no such agreement existed, the payee on that contract then began to demand the money directly from ArcelorMittal.

ArcelorMittal contends that, in sum, "Arillotta has forged contracts and purchase orders purporting to represent in excess of ten million dollars ($10,000,00.00) worth of commercial activities between the defendant companies and ArcelorMittal when, in fact, ArcelorMittal has not hired Arillotta or his companies to perform any of the work shown in the forged contracts and purchase orders."

In its complaint against Arillotta and the other Defendants, trademark lawyers for ArcelorMittal list the following counts:

• Count I: False Designation of Origin and False Endorsement
• Count II: Dilution by Blurring and Tarnishment
• Count III: Deception
• Count IV: Forgery
• Count V: Deceptive Trade Practices

Plaintiff ArcelorMittal asks the court for injunctive relief, money damages, costs and attorneys' fees.

Continue reading "Indiana Trademark Litigation: ArcelorMittal Sues Arillotta et al. for Tarnishment, Deception and Forgery" »

June 5, 2015

Indiana Trademark and Patent Litigation: Simpson Sues Two Indiana Individuals Alleging Patent Infringement and Counterfeiting

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Hammond, Indiana - Trademark and patent attorneys for Simpson Performance Products, Inc. of Mooresville, North Carolina ("Simpson") and SFI Foundation, Inc. of Poway, California ("SFI") commenced trademark litigation in the Western District of North Carolina alleging that Robert Wagoner of North Judson, Indiana and Derek Randall Cathcart of Valparaiso, Indiana infringed the SIMPSON® family of trademarks, some of which have been registered by the U.S. Trademark Office. The case was transferred to the Northern District of Indiana. Among the trademarks at issue are U.S. Trademark Registration Nos. 4,117,821; 1,243,427; 3,026,333; 3,026,334; and 3,050,920. Also at issue are U.S. Patent Nos. 6,931,669 and 8,272,074.

Plaintiff Simpson is a manufacturer of automotive and motorsports specialty/performance products, including head and neck restraints for competitive racing. The Simpson brand of automotive and motorsports products has existed 1959. Plaintiff SFI was established to develop and administer minimum performance standards for the automotive aftermarket and motorsports industries, including standards for specialty/performance racing equipment.

Simpson offers for sale the SIMPSON® Hybrid PRO Rage™ head and neck restraint. Simpson indicates that this product is one of the few such devices to be certified under a special classification, SFI SPEC 38.1, for use in NASCAR competitions.

Defendants Wagoner and Carthcart have been accused of engaging in the business of providing specialty/performance racing equipment, including head and neck restraints that are counterfeit versions of Simpson products. Plaintiffs contend that Wagoner is offering counterfeit head and neck restraints through ebay.com. Plaintiffs allege that Cathcart offers counterfeit head and neck restraints via the website racingjunk.com.

These restraints, Plaintiffs contend, bear trademarks owned by Simpson, including the SIMPSON® federally registered trademark as well as the HUTCHENS Hybrid PRO™ and Hybrid PRO™ common law trademarks.

The accused products also allegedly bear a label that falsely states, "This product designed & manufactured by Safety Solutions, Inc. PATENT NO.: 6931669; other patents pending." According to Plaintiffs, the alleged counterfeiting activities of Defendants also constitute patent infringement.

In this lawsuit, filed by patent and trademark lawyers for Plaintiffs, the following causes of action are listed:

• Trademark Infringement
• Unfair Competition under 15 U.S.C. § 1125(a); False Designation of Origin; False or Misleading Advertising
• Unfair and Deceptive Trade Practices under N.C. [North Carolina] Gen. Stat. § 75-1.1
• Patent Infringment [sic]

• Common Law Fraud

Plaintiffs ask for a finding in their favor on each of the counts alleged, including a finding that the conduct was knowing and willful, and entry against each Defendant jointly and severally. Plaintiffs seek costs, attorneys' fees and damages, including enhanced damages, as well as injunctive relief.

This federal trademark complaint was initially filed in the Western District of North Carolina in February 2015. In May 2015, District Judge Richard Voorhees ordered it to be transferred to the Northern District of Indiana, finding that the North Carolina court lacked personal jurisdiction over Defendants.

Continue reading "Indiana Trademark and Patent Litigation: Simpson Sues Two Indiana Individuals Alleging Patent Infringement and Counterfeiting" »

May 22, 2015

Indiana Trademark Litigation: Hard Rock Hotel Sues Alleging Infringement of Trademarked "Rehab" Pool Party

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Indianapolis, Indiana - Indiana trademark attorneys for HRHH Hotel/Casino, LLC and HRHH IP, LLC, both of Las Vegas, Nevada (collectively, "HRHH"), commenced a trademark lawsuit in the Southern District of Indiana alleging that Bella Vita, LLC, Henri B. Najem, Jr. and 10 unknown defendants, all of Indiana, infringed various trademarks belonging to HRHH.

The HRHH entities together claim ownership to the Hard Rock Hotel & Casino Las Vegas located in Las Vegas, Nevada, along with certain intellectual property rights used in connection with that establishment.

HRHH contends that it created a daytime pool party held at the Hard Rock Hotel & Casino Las Vegas known as the "Rehab Pool Party" or simply "Rehab". The Hard Rock Hotel & Casino Las Vegas indicates that the Rehab Pool Party was first held in 2004 and that the Rehab Pool Party is still being held regularly. HRHH asserts that its Rehab Pool Party has become famous and that it has licensed the REHAB marks to third parties for clothing and other merchandise.

Bella Vita, an Indianapolis provider of restaurant, bar and related entertainment services, has been accused of organizing and hosting weekly pool parties that are confusingly marketed as "Rehab+ Sundays".

This federal lawsuit has brought under trademark and anti-dilution laws of the United States, 15 U.S.C. § 1051, et seq., the trademark laws of the State of Indiana, Ind. Code § 24-2-1, and under the statutory and common law of unfair competition. The trademarks at issue, all of which have been registered by the U.S. Trademark Office, are as follows:

• Trademark Registration No. 3,873,673 REHAB
• Trademark Registration No. 4,524,097 REHAB
• Trademark Registration No. 4,611,979 REHAB RX
• Trademark Registration No. 3,182,848 Rxehab
• Trademark Registration No. 4,615,774 Rxehab

• Trademark Registration No. 3,170,859 Rxehab

In the complaint against Bella Vita, its managing member Najem and the unnamed Does, Indiana trademark lawyers for Plaintiffs assert the following causes of action:

• False Designation of Origin and Unfair Competition - 15 U.S.C § 1125(a)
• Trademark Infringement - 15 U.S.C. § 1114, Ind. Code § 24-2-1-13, and Common Law
• Dilution - 15 U.S.C. § 1125(c)

• Unfair Competition

Plaintiffs ask the court for a finding that Defendants have engaged in trademark infringement, trademark dilution and unfair competition; for injunctive relief; for a finding that HRHH is the exclusive owner of the REHAB Marks and that such marks are valid and protectable; for an award of damages and profits earned as a result of infringing activity; for punitive damages; and for an award of interest, costs, expenses, and reasonable attorneys' fees.

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May 20, 2015

Indiana Trademark Litigation: Integrity Trade Services Sues Ex-Employees Alleging Conspiracy and Conversion

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South Bend, Indiana - Trademark attorneys for Integrity Trade Services, Inc. ("ITS") of Frankfort, Illinois filed an intellectual property complaint in the Northern District of Indiana naming as Defendants Integrity Employment Partners, LLC, Integrity Trade Services, LLC, Janice Hernandez, James Hernandez, Tiffany Heineman, Michaela Williams, and Jason Reis, all of Indiana, and alleging multiple claims, including trademark infringement, conversion of ITS trade secrets, breach of contract, and tortious interference with business relationships.

ITS is a national staffing services company, doing businesses in multiple states, including Indiana, Florida, Illinois, and Texas. ITS is wholly owned by John E. Cumbee, III. In 2008, ITS acquired all of the operational assets of the Knox, Indiana branch of a staffing company owned by CES America, Inc. ITS also hired most, if not all, of the CES employees then working at the Knox facility, including defendants James and Janice Hernandez.

ITS contends that, since purchasing the Knox facility, it has invested well over $1 million to build the Knox business and the ITS brand as it is related to that facility. It asserts in this federal lawsuit, inter alia, that Defendants conspired to convert ITS' customers, employees and trade secrets for their own use.

The accused in this case are husband and wife Janice Hernandez and James Hernandez; several family members of Janice Hernandez, including Tiffany Heineman, Michaela Williams, and Jason Reis; and two entities apparently owned by the Hernandezes, Integrity Employment Partners, LLC, Integrity Trade Services, LLC.

Defendant James Hernandez ("James") worked for ITS from the time that ITS acquired the business until April 30, 2015 when he was fired. ITS asserts that James engaged in a conspiracy to solicit away and convert (a) ITS' office employees at the Knox location, (b) at least the active ITS field employees servicing the Knox location, and (c) customers comprising the Knox-area business. He is accused of attempting to transfer them to Integrity Employment Partners, LLC, an Indiana limited liability company formed to process the Knox business converted from ITS for his benefit and the benefit of the other co-conspirators.

Defendant Janice Hernandez ("Janice"), also became employed by ITS when ITS was acquired from its prior owner. She has been accused of not only being an integral part of the alleged conspiracy but also of being "likely its "'mastermind.'" Defendant Tiffany Heineman ("Tiffany") is Janice's niece. Defendant Michaela Williams is Janice's daughter. Defendant Jason Reis is the ex-son-in-law of James and Janice, having been married to another of Janice's daughters.

ITS states that, in the last two weeks in April 2015, it discovered various anomalies in the Knox business. These anomalies alerted ITS to the activities that triggered this federal lawsuit. They included a drop off in weekly gross sales, the formation of Integrity Employment Partners, LLC ("IEP"), and checks issued by existing ITS customers made payable to IEP (and not ITS).

Defendants are accused of orchestrating a scheme to confuse ITS' customers and employees regarding with which staffing businesses using the name "Integrity" - Plaintiff's firm or Defendants' firms - those customers and employees were transacting business. In doing so, ITS contends, Defendants attempted with some success to convert ITS' business assets and relationships for Defendants' benefit. Allegations of criminal conduct by Defendants were also made. In a 48-page complaint, filed by trademark lawyers for Plaintiff, those claims and others are made:

• Count I: Federal Trademark Infringement
• Count II: Federal Unfair Competition
• Count III: Illinois Deceptive Trade Practices Act
• Count IV: Breach of Fiduciary Duty
• Count V: Breach of Tiffany's Agreement
• Count VI: Tortious Interference with Contract
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Conversion
• Count IX: Computer Fraud and Abuse Act
• Count X: Uniform Trade Secrets Act
• Count XI: Civil Conspiracy
• Count XII: Unjust Enrichment

• Count XIII: Breach of Contract

Plaintiff asks the court for, inter alia, injunctive relief, compensatory damages, punitive damages, attorneys' fees, interest and costs.

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