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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.

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

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.

Continue reading "Indiana Trademark Litigation: Integrity Trade Services Sues Ex-Employees Alleging Conspiracy and Conversion " »

February 18, 2015

Indiana Trademark Litigation: Agdia Sues AC Diagnostics Alleging Deceptive Meta-tags and Other Trademark Harm

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South Bend, Indiana - Indiana trademark attorneys for Agdia Inc. of Elkhart, Indiana sued in the Northern District of Indiana alleging that Jun Q. Xia and AC Diagnostics, Inc. of Fayetteville, Arkansas infringed the trademark AGDIA®, which has been registered as United States Trademark Registration No. 1747994.

For over 30 years, Plaintiff Agdia has been in the business of supplying testing, test kits, and associated products and services related to the presence of pathogens or quality factors in agricultural products. Agdia has sued a former employee, Jun Q. Xia, alleging violations of federal and Indiana intellectual property law. AC Diagnostics, a competing enterprise formed by Xia, has also been named as a defendant in this lawsuit.

Agdia contends that Defendants have been unlawfully using its trademarked name. Among the claims is that Xia has hidden the Agdia trademark followed by the phrase "plant diagnostics," in the meta tags of nearly every product page associated with the AC Diagnostics website. Agdia asserts that, as an example, the "Company Profiles" section of the AC Diagnostics website, available at http://www.acdiainc.com/Comprofil.htm, appears upon first glance to provide nothing more than company information. However, if the page is printed, Agdia states that it reveals more text at the bottom of the document, hidden as white text on a white background.

Agdia also asserts that, through the AC Diagnostics website, Xia is deceptively and unfairly trading on Agdia's name by hiding that name, followed by the phrase "plant diagnostics," in the meta tags of nearly every product page associated with that site. Agdia contends that no fewer than 200 separate URLs from the Defendants' website use the Agdia name deceptively.

Agdia finally cites the name of AC Diagnostic's webpage as deceptive, claiming that "acdiainc," which is used within www.acdiainc.com, AC Diagnostic's website, is just one letter off from Agdia's legal name, "Agdia Inc." Defendants are accused of using this web address with the bad faith intent to profit from the Agdia trademark.

In a five-count complaint, filed by Indiana trademark lawyers for Agdia, Defendants are accused of willful, intentional, and unauthorized use of the Agdia trademark that is unlawful under federal law as well as Indiana state law.

Plaintiff Agdia asks the court to enjoin Defendants from using the Agdia mark; to cancel the domain www.acdiainc.com or transfer it to Agdia; for damages, including treble damages; and for attorneys' fees and costs.

Continue reading "Indiana Trademark Litigation: Agdia Sues AC Diagnostics Alleging Deceptive Meta-tags and Other Trademark Harm" »

February 13, 2015

Indiana Trademark Law: Consent Judgment Entered Enjoining Chanel's Salon from Using "Chanel" in Business Name

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Hammond, Indiana - Chanel's Salon, LLC, d/b/a Chanel's Salon and Chanel's Cosmetology Salon, and Chanel Jones, all of Merrillville, Indiana, entered into a consent judgment with Chanel, Inc. of New York, New York to resolve ongoing trademark disputes regarding the trademarked term CHANEL®.

Indiana trademark attorneys for fashion-and-beauty giant Chanel, Inc. had sued in the Northern District of Indiana alleging that Chanel's Salon, LLC and Chanel Jones had infringed and were infringing the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which have been registered by the U.S. Patent and Trademark Office.

In this Indiana lawsuit, Chanel, Inc. alleged trademark infringement, trademark dilution, unfair competition under federal law as well as trademark infringement and unfair competition under Indiana state law. Chanel, Inc. claimed that its intellectual property rights to its trademark CHANEL had been infringed and diluted by actions of Defendants Chanel's Salon, an Indiana beauty salon, and its owner Chanel Jones.

Specifically, Defendants were accused of using the trade names CHANEL'S SALON and/or CHANEL'S COSMETOLOGY SALON in connection with their beauty salon without Chanel's authorization. Chanel, Inc. also claimed that the Defendants were infringing and diluting the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories.

This litigation ended pursuant to a consent judgment crafted by the parties and entered by the Indiana district court. As part of the consent judgment, the court issued a permanent injunction prohibiting Jones from using CHANEL to identify her beauty salon or any other enterprises, services or products. Jones was also enjoined from any use of the term CHANEL as part of any keyword, meta tag, page tag, or source code in any business marketing.

The order in this intellectual property litigation was issued by Judge Theresa L. Springmann in the Northern District of Indiana. This case is: Chanel, Inc. v. Chanel's Salon LLC et al., Case No. 2:14-cv-00304-TLS-PRC.

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January 30, 2015

Indiana Trademark Litigation: Archetype Sues Alleging Trade Dress Infringement

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Indianapolis, Indiana - An Indiana intellectual property attorney for Archetype Ltd. ("Archetype") of Short Hills, New Jersey sued in the Southern District of Indiana alleging that LTD Commodities LLC ("LTD") of Bannockburn, Illinois infringed the trademark PathLights™.

Plaintiff Archetype contends that it has been marketing a distinctive and famous battery-operated motion-detection lighting system under the PathLights trademark since at least as early as 2009. It states that the overall look and feel of the PathLights product is non-functional and serves as a source identifier. In this Indiana lawsuit, Archetype accuses LTD of trade dress infringement, false designation of origin or sponsorship, passing off, and unfair competition.

Archetype indicates in the complaint that LTD is marketing, selling, and promoting a battery-operated motion-detection lighting product that is almost identical to Archetype's PathLights product. It further claims that the accused LTD lights illustrated on LTD's website are actually images of Archetype's PathLights product and that the lighting products that consumers actually receive from LTD upon purchase of the LTD product are not an Archetype's PathLights product but are, instead, a different, lower-quality light.

Defendant LTD is accused of "intentionally, willfully and deliberately pull[ing] a 'bait and switch' on consumers" and, in doing so, damaging Archetype's sales volume and business reputation.

In this lawsuit, filed by an Indiana intellectual property lawyer for Archetype, the following counts are asserted:

• Count I: Trade Dress Infringement

• Count II: False Designation of Origin or Sponsorship and Passing Off

• Count III: False Advertising

• Count IV: Trade Dress Dilution

Archetype asks the court for judgment that LTD's acts constitute trade dress infringement, unfair competition, false designation of origin and/or sponsorship, false advertising and trade dress dilution; for an award of LTD's profits and actual damages, including corrective advertising, as well as trebling those damages pursuant to 15 U.S.C. § 1117; for an order that all accused LTD products and other accused materials be surrendered for destruction; for an injunction; and for an award of Archetype's attorneys' fees, costs and expenses.

The case was assigned to Chief Judge Richard L. Young and Magistrate Judge Denise K. LaRue in the Southern District of Indiana and assigned Case No. 1:15-cv-00106-RLY-DKL.

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January 28, 2015

Indiana Copyright Litigation: Microsoft Asserts Copyright, Trademark Infringement by Ace Recycling

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Fort Wayne, Indiana - An Indiana copyright and trademark attorney for Microsoft Corporation ("Microsoft") of Redmond, Washington sued in the Northern District of Indiana alleging that Ace Recycling, Inc. and Kevin Cawood, both of Fort Wayne, Indiana (collectively, "Defendants"), infringed copyrighted material belonging to Microsoft. Defendants have also been accused of trademark infringement, false designation of origin, false description and representation, counterfeiting and unfair competition. Microsoft seeks damages, an accounting, the imposition of a constructive trust upon Defendants' illegal profits, and injunctive relief.

Microsoft develops, markets, distributes and licenses computer software. Ace Recycling is engaged in the business of advertising, marketing, installing, offering, and distributing computer hardware and software, including the software at issue, which Microsoft contends is unauthorized.

Microsoft's software products, which have been registered by the U.S. Copyright Office, include Microsoft Windows XP and Microsoft Vista, both of which are operating systems for desktop and computers.

Also at issue are the following trademarks and service marks belonging to Microsoft:

• "MICROSOFT," Trademark and Service Mark Registration No. 1,200,236, for computer programs and computer programming services;

• "MICROSOFT," Trademark Registration No. 1,256,083, for computer hardware and software manuals, newsletters, and computer documentation;

• WINDOWS, Trademark Registration No. 1,872,264 for computer programs and manuals sold as a unit; and

• COLORED FLAG DESIGN, Trademark Registration No. 2,744,843, for computer software.

Microsoft contends that Defendants advertised, marketed, installed, offered and distributed unauthorized copies of Microsoft software, despite Microsoft's claims that their actions infringed Microsoft's intellectual property rights. Specifically, Microsoft asserts that, in April 2013, Defendants distributed to an investigator refurbished computer systems with unauthorized copies of Windows XP installed on them. In response, in June 2013, Microsoft asked Defendants to cease and desist from making and distributing infringing copies of Microsoft software. Microsoft alleges that, in May 2014, Defendants again distributed to an investigator a refurbished computer system with an unauthorized copy of a Windows operating system - in that case, Windows Vista - on it.

Microsoft contends that these are not isolated incidents but, instead, indicate Defendants' pattern of acting in reckless disregard of Microsoft's registered copyrights, trademarks and service marks.

In this Indiana lawsuit, Microsoft's copyright and trademark attorney makes the following claims:

• Copyright Infringement - 17 U.S.C. § 501, et seq.

• Trademark Infringement - 15 U.S.C. § 1114

• False Designation Of Origin, False Description And Representation - 15 U.S.C. § 1125 et seq.

• Indiana Common Law Unfair Competition

• For Imposition Of A Constructive Trust Upon Illegal Profits

• Accounting

Microsoft asks for a judgment of copyright infringement; of trademark and service mark infringement; that Defendants have committed and are committing acts of false designation of origin, false or misleading description of fact, and false or misleading representation against Microsoft, in violation of 15 U.S.C. § 1125(a); that Defendants have engaged in unfair competition in violation of Indiana common law; and that Defendants have otherwise injured the business reputation and business of Microsoft.

Microsoft also asks for the impoundment of all counterfeit and infringing copies of purported Microsoft products; the imposition of a constructive trust upon Defendants' illegal profits; injunctive relief; damages, including enhanced damages; and costs and attorneys' fees.

The case was assigned to Judge Joseph Van Bokkelen and Magistrate Judge Susan L. Collins in the Northern District of Indiana and assigned Case No. 1:15-cv-00032-JVB-SLC.

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December 29, 2014

Indiana Trademark Litigation: Bettie Page, LLC Sues Vibes Base

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Indianapolis, Indiana - An Indiana trademark attorney for Bettie Page, LLC of Indianapolis, Indiana ("BPL") sued in the Southern District of Indiana alleging that Vibes Base Enterprises, Inc. of El Monte, California ("Vibes Base") committed unfair competition under federal, California and Indiana common law. BPL has asked the court for the cancellation of a federal trademark registration belonging to Vibes Base.

BLP claims that it is the exclusive owner of the name, likeness, voice, right of publicity and endorsement, worldwide trademarks, copyrights and other intellectual property related to the late model Bettie Page. Among its intellectual property holdings are trademark registrations for BETTIE PAGE, trademark numbers 2,868,613 and 2,868,614 which have been registered by the U.S. Patent and Trademark Office.

Vibes Base develops, manufactures and markets lines of apparel products and accessories under various brand names, including "Bette Paige." In May 1999, Sand K. Inc. obtained federal trademark registration number 2,244,182 for the mark BETTE PAIGE for women's clothing. Sand assigned that mark to Vibes Base in 2011.

In March 2014, BPL filed a federal trademark application for the BETTIE PAGE trademark for "computerized on-line retail store services in the field of clothing..." and similar uses. The USPTO refused registration of this trademark on the grounds that a likelihood of confusion existed between BETTIE PAGE, for which Plaintiff had applied, and the trademark BETTE PAIGE, which had previously been registered.

Plaintiff contends that the registration and/or use of the BETTE PAIGE trademark is an illegal use of the Page intellectual property, including the right of publicity.

In this complaint, filed by an Indiana trademark lawyer, the following counts are asserted:

• Count I: Unfair Competition Under 15 U.S.C. §1125(A)
• Count II: Unfair Competition Under Cal. Bus. & Prof. Code §17200 et seq.
• Count III: Common Law Unfair Competition
• Count IV: Unjust Enrichment
• Count V: Right of Publicity Infringement Under Cal. Civ. Code §3344.1
• Count VI: Request for Declaratory Judgment of No Trademark Infringement
• Count VII: Declaration that Defendant's Registration is Invalid (Non Compliance with 15 U.S.C. §1052(c))
• Count VIII: Declaration that Defendant's Registration is Invalid (False Designation of Origin, Sponsorship or Endorsement)

BPL asks the court to cancel Vibes Base's BETTE PAIGE trademark; for an award of actual damages; for treble damages for willful and/or intentional use of an unauthorized trademark; for an award of attorneys' fees and expenses; to order Vibes Base to destroy or surrender to BPL all unauthorized products, including all products that Vibes Base is able to recall; and, in the alternative, to declare that BPL's trademark, as contained in its trademark application, is not confusingly similar to the BETTE PAIGE trademark.

Continue reading "Indiana Trademark Litigation: Bettie Page, LLC Sues Vibes Base " »

October 15, 2014

Indiana Copyright and Trademark Litigation: Edible Arrangements Sues Edible Creations and Owner

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Fort Wayne, Indiana - An Indiana trademark attorney for Edible Arrangements, LLC ("EA") and Edible Arrangements International, LLC ("EAI") of Wallingford, Connecticut filed an intellectual property complaint in the Northern District of Indiana alleging trademark and copyright infringement by Tom Drummond and Edible Creations, LLC ("EC") of Allen County, Indiana. Defendants are accused of infringing several trademarks (below), which have been issued by the U.S. Trademark Office, as well as a copyrighted work.

Since 1998, EAI has been using the phrase "Edible Arrangements," together with various related design marks, in connection with various food products. Its products include fruit cut to look like flowers as well as other fruit products. EAI operates a franchise network of over 1,200 independent owner-operated franchise locations throughout the United States and internationally. It sublicenses the trademarks at issue in this Indiana litigation to its franchisees.

The other Plaintiff, EA, owns the following trademarks relating to "Edible" and "Edible Arrangements":  

In August 2013, Defendants Edible Creations and the company's owner, Tom Drummond, Filed an application for what Plaintiffs content is a mark that is confusingly similar to one or more of EA's trademarks:  

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In September 2013, Plaintiffs sent a cease-and-desist letter demanding that Edible Creations cease using the mark. It later filed an opposition before the Trademark Trial and Appeal Board ("TTAB") challenging the registration on the grounds of deceptiveness, false suggestion of a connection between Edible Creations and EA, likelihood of confusion, dilution, misdescriptiveness and fraud. Edible Creations did not respond to EA's opposition and the TTAB entered a default against Edible Creations and refused to register Edible Creations' mark.In August 2013, Defendants Edible Creations and the company's owner, Tom Drummond, filed an application for what Plaintiffs contend is a mark that is confusingly similar to one or more of EA's trademarks:

In this lawsuit, Defendants have been accused of continuing to advertise, promote and sell fruit arrangements in Indiana using the phrase "Edible Creations" and "Edible Creations Creator of Edible Floral Arrangements." They have also been accused of violating EA's copyright in a sculpture known as the "Hearts and Berries Fruit Design" by displaying the copyrighted design in print, including on vehicles, and on the internet.

In its complaint, filed by an Indiana trademark and copyright lawyer, Plaintiffs list the following claims:

  • Trademark Infringement
  • False Designation of Origin
  • Trademark Dilution
    • By Blurring
    • By Tarnishment
  • Copyright Infringement
  • Unfair Competition
  • Unfair Competition

Plaintiffs seek damages, including punitive damages, as well as injunctive relief.

Practice Tip

Allegations of trademark dilution involve a different analysis from claims of trademark infringement. The first type of trademark dilution is dilution by blurring. An allegation of dilution by blurring requires that the plaintiff prove, among other things, that its mark is "famous." This is not an easy burden, requiring that the mark have "extensive public recognition and renown" within the population of average consumers. There are some marks, such as Chanel, Coke and Microsoft, for which establishing such renown is likely achievable. However, this bar is extremely high. Even trademarks that are very well known, such as Coach, which has been used since 1961 and under which several billion dollars of sales are made annually, have been found to be "not famous" for the purposes of a dilution analysis. Edible Arrangements will have a difficult time proving this claim.

The second type of trademark dilution is dilution by tarnishment. Edible Arrangements will also have a difficult time establishing the elements of this type of trademark dilution. This cause of action is generally brought when the reputation of a well-known mark is harmed by another's use of that trademark or a similar mark within a sexual context. For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002), the court held that the use of the term "VelVeeda" by a pornographic website tarnished the trademark held by the makers of Velveeta cheese. Courts may also find dilution by tarnishment where a defendant offers inferior products or services. It is unclear that Plaintiffs here have alleged facts sufficient to support a claim of tarnishment.

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October 1, 2014

Indiana Trademark Litigation: KM Innovations Sues LTD Commodities

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Indianapolis, Indiana - An Indiana trademark attorney for KM Innovations LLC of New Castle, Indiana ("KM") sued in the Southern District of Indiana alleging that LTD Commodities LLC of Bannockburn, Illinois ("LTD") infringed the trademarked "INDOOR SNOWBALL FIGHT", Trademark Registration No. 4,425,111 which has been issued by the U.S. Trademark Office.

KM sells synthetic "snowballs" for use in indoor "snowball fights." It contends that it uses two distinct trademarks to market and sell these synthetic snowballs: "SNOWTIME anytime!" and INDOOR SNOWBALL FIGHT. KM has also sought patent protection for its indoor snowballs.

The SNOWTIME anytime!/"indoor snowball fight" concept was conceived in December 2012. At a party, several parents realized that a market might exist for "indoor snowballs," which would enable children to have a "snowball fight" but without the usual requirements of snow or being outside. KM later introduced a product based on this idea.

In this Indiana trademark complaint, KM asserts that an item called an "Indoor Snowball Fight Set" is being offered and sold on by LTD on the LTD website. The retail price of the product offered by LTD is $9.95 per 12 synthetic balls, while an allegedly similar product is offered and sold by KM for somewhat more, with a retail price of about $1 per synthetic snowball.

KM contends that, by using the name "Indoor Snowball Fight Set," LTD has deliberately misappropriated KM's trademark rights. It claims that the use by LTD of this name demonstrates a wrongful attempt by LTD to utilize the goodwill associated with the KM synthetic-snowball product. KM also claims that LTD's product is inferior and that, as a result, KM's reputation will be damaged when consumers are confused into believing that KM is associated with LTD's "Indoor Snowball Fight Set."

In its complaint, filed by an Indiana trademark lawyer, KM claims the following:

• Count I: Infringement of Federal Trademark Registration No. 4,425,111
• Count II: False Designation of Origin/Unfair Competition - 35 U.S.C. § 1125(a)

KM asks the court for a judgment of trademark infringement and unfair competition. It requests that the court award damages, including treble damages; order the surrender of any infringing materials; prohibit the use of "Indoor Snowball Fight" by LTD and its agents; and award to KM its costs and attorneys' fees.

Practice Tip #1: While not included as a separate count, KM did allege trademark dilution in paragraph 24 of the complaint. This cause of action is distinct from trademark infringement and applies to trademarks that are deemed to be famous. An action for dilution can assert either, or both, of two principal harms: blurring and tarnishment. Dilution by blurring, codified in 15 U.S.C. 1125(c)(2)(B), arises when association with another similar mark causes the distinctiveness of the famous mark to be compromised. In contrast, dilution by tarnishment under 15 U.S.C. § 1125(c)(2)(C) happens when the reputation of the famous mark is damaged by association with a similar mark.

Practice Tip #2: KM, no stranger to intellectual property litigation, has previously sued in Indiana federal court alleging trade dress infringement of the packaging for its synthetic snowballs.

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August 27, 2014

Indiana Trademark Litigation: Owner of JOIN® Sues Owner of JOIN.ME®

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Indianapolis, Indiana - An Indiana trademark attorney for Sensory Technologies, LLC of Indianapolis, Indiana ("Sensory") sued in the Southern District of Indiana alleging that LogMeIn, Inc. of Boston, Massachusetts infringed the trademark "JOIN", Trademark Registration No. 3622883, which was issued by the U.S. Trademark Office. This Indiana trademark lawsuit, filed under the Lanham Act, 15 U.S.C. §1114(a), 15 U.S.C. §1125(a) and 15 U.S.C. §1117(c), as well as the common law of Indiana, seeks the following: injunctive relief, a declaratory judgment and damages.

Plaintiff Sensory offers JOIN-branded virtual meeting/video-conference services. The services connect audio, video and web technologies in virtual meeting rooms and include videoconferencing, content sharing and collaboration. Sensory estimates that more than 15,000 users participated in JOIN-enabled conferences in the first six months of 2014. It owns the trademark JOIN in connection with "teleconferencing and video conferencing services."

Defendant LogMeIn is a provider of SaaS and cloud-based remote-connection services. It operates the website join.me, where it offers instant screen sharing, unlimited audio and recording. Up to 250 people may participate in a join.me meeting.

LogMeIn owns three Trademark Registration Nos. 3995301, 3995300 and 4036263 for "JOIN.ME", including two text-with-graphic marks and one text-only mark. These three trademarks are registered in connection with "providing online, non-downloadable software for web-based screen sharing that allows simultaneous and asynchronous viewing, remote control of a computer, document sharing, file transferring, instant messaging and audio conferencing."

This trademark lawsuit pertains to LogMeIn's use of its JOIN.ME trademark in connection with videoconferencing services, which Sensory contends is infringing. Specifically, Sensory asserts that it holds superior rights to JOIN, as its first use of the JOIN trademark in connection with videoconferencing services was on or before March 26, 2008. Sensory claims that, in addition to being inherently distinctive, its JOIN trademark has acquired significant secondary meaning. Sensory states that the federally registered JOIN.ME trademarks owned by LogMeIn are confusingly similar, both visually and phonetically, to Sensory's mark.

LogMeIn is accused of willfully and intentionally using its JOIN.ME trademarks without Sensory's authorization. Sensory contends that LogMeIn's use of the JOIN.ME trademarks is a deliberate attempt to trade on Sensory's goodwill in the JOIN trademark. It states that LogMeIn intended to cause confusion between its registered JOIN.ME trademark and Sensory's registered JOIN trademark.

In the complaint, filed by an Indiana trademark lawyer, the following counts are listed:

• Count I: Trademark Infringement - 15 U.S.C. § 1114
• Count II: False Designation of Origin - 15 U.S.C. § 1125(a)
• Count III: Common Law Trademark Infringement
• Count IV: Unfair Competition
• Count V: Forgery: Indiana Crime Victims Act - IC § 35-43-5-2
• Count VI: Declaratory Judgment of Trademark Invalidity
• Count VIII [sic]: Permanent Injunctive Relief

Sensory seeks a declaratory judgment that LogMeIn infringed Sensory's JOIN trademark under 15 U.S.C. § 1114, engaged in false designation of origin under § 1125(a) and engaged in unfair competition. Sensory also asks the court to enjoin LogMeIn from infringing on the JOIN trademark, representing in any way that the two companies are related, registering any domain name that includes the JOIN trademark, or otherwise using the JOIN trademark. Finally, Sensory seeks the transfer of all of LogMeIn's domain names that incorporate the JOIN trademark, damages under 15 U.S.C. § 1117 including actual damages, statutory damages, LogMeIn's profits, treble damages, costs related to the suit, attorneys' fees and for corrective advertising.

Practice Tip:

Because the Lanham Act does not contain a statute of limitations, federal courts refer to analogous state statutes of limitations to determine whether an infringement claim has been timely filed. Hot Wax Inc. v. Turtle Wax Inc., 191 F.3d 813 (7th Cir. 1999). This time bar applies both to claims for damages and to those sounding in equity. Id. at 822. A trademark is personal property, so Indiana's analogous state statute is I.C. 34-11-2-4(a), which provides for a two-year statute of limitations:

"Sec. 4. (a) An action for . . . (2) injury to personal property . . . must be commenced within two (2) years after the cause of action accrues."

LogMeIn's Trademark Registration No. 4,036,263 for JOIN.ME alleges a "first use" date of July 23, 2010. This would appear to provide laches / "statute of limitations" defense to Sensory's trademark infringement claims.

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August 7, 2014

Indiana Trademark Litigation: Rieke Corporation Sues Riekes Packaging Corporation for Trademark Infringement

Fort Wayne, Indiana - An Indiana trademark attorney for Rieke Corporation d/b/a Rieke Packaging Systems of Auburn, Indiana sued in the Northern District of Indiana alleging that Riekes Packaging Corporation of Nebraska infringed the trademark Rieke Packaging Systems®, Trademark No. 2742836, which has been registered by the U.S. Trademark Office.

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Plaintiff Rieke Corporation states that it is one of the largest manufacturers of packaging components in the world. Its product line includes pumps, foamers, and sprayers for household dispensers as well as plastic and steel closures, caps, drum and pail enclosures, rings and levers for the industrial market. These products are used to store, transport, process and dispense various products in the agricultural, beverage, food, household products, industrial, medical, nutraceutical, personal care and pharmaceutical markets.

Plaintiff asserts that it has spent a considerable amount of money establishing the "Rieke Packaging Systems" trade name and trademark in the minds of customers as a source of high-quality and reliable packaging dispensers and closures. It claims that the trade name and trademark have become associated in the minds of purchasers with Plaintiff as "one of the largest and most reputable manufacturers and distributors of high quality and reliable packaging dispensers and closures in the world."

Defendant Riekes Packaging Corporation has been manufacturing and selling packaging components since the corporation's formation in 2012, according to Plaintiff. Rieke Corporation indicates that the "Riekes Packaging Corporation" name is shown on Defendant's glass bottles, plastic bottles, plastic closures, caps, metal closures, dispensing closures and systems, tubes and other similar goods.

In this Indiana trademark lawsuit, Rieke Corporation accuses Riekes Packaging Corporation of knowing, deliberate, and intentional violations of Plaintiff's trademark rights, stating Defendant's use of the "Riekes Packaging Corporation" trade name or trademark with or on its products is likely to cause confusion in the marketplace regarding whether there is an association between Plaintiff and Defendant and as to the source or origin of Defendant's goods. In their complaint, filed by an Indiana trademark lawyer, Plaintiff lists the following counts:   

  • Count I-rademark Infringement under the Lanham Act
  • Count II-Unfair Competition under Section 43(a) of the Lanham Act
  • Count III-Common Law Trademark Infringement and Unfair Competition

 Rieke Corporation asks the court to:

     • enjoin Defendant and its agents from using "Riekes Packaging Corporation" as business name; in connection with sales or other commercial activities; or in a way that would be likely to lead others to believe that Defendant or its products were connected with Plaintiff; 

     • enjoin Defendant from engaging in any other activity that would constitute unfair               competition; 

     • direct Defendant to recall infringing materials; 

     • declare that Defendant's use of "Riekes Packaging Corporation" in connection with the   sale of packaging products and components constitutes trademark infringement under the Lanham Act and the common law of the state of Indiana; 

    • direct that Defendant cancel or otherwise modify any trademark applications containing the "Riekes Packaging Corporation" name; and

    • award to Rieke Corporation damages, including enhanced damages, costs and attorney's fees.

Practice Tip: Under U.S. trademark law, trademarks that are primarily surnames, or which consist of a surname and other material that is not registrable as a trademark, are treated the same as descriptive trademarks. Thus, the trademark will not be protected as intellectual property until it has achieved secondary meaning through advertising and/or use over an extended period of time. Once that surname has acquired secondary meaning, it may be protectable as a trademark and others can be prevented from using the trademark on confusingly similar goods, even if that person has the same last name. So, for example, Joe McDonald could expect a legal challenge - presumably one that would succeed - if he opened a restaurant named "McDonald's," despite that "McDonald" is his last name. 

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April 7, 2014

Indiana Trademark Litigation: Order Inn Asserts Trademark Infringement by "Order In"

Indianapolis, Indiana - A trademark attorney for Order Inn, Inc. of Las Vegas, Nevada filed a lawsuit in the Southern District of Indiana alleging that TJ Enterprises of Indiana, LLC d/b/a Order In ("Order In") and Tom Ganser, both of Carmel, Indiana and other unknown "Doe" OrderInnPhoto.pngindividuals infringed trademarks for "ORDER INN", Registration Nos. 3,194,903 and 2,801,951, which have been issued by the U.S. Trademark Office.

Order Inn Hospitality Services, also known as Order Inn, was founded in 2001. The company's initial core product, Order Inn Room Service, was created to provide room service to guests of limited-service hotels and timeshares. Order Inn states that it has developed partnerships with over 10,000 hotels and 700 restaurants nationwide and that it does business in Indiana.

Order Inn asserts ownership over several registered trademarks for "Order Inn," among them a registration for "On-line ordering services in the field of restaurant take-out and delivery; on-line order fulfillment services for goods and services which hotel guests, residents or businesses may wish to purchase; promoting the goods and services of others by preparing and placing advertisements in menus placed in hotels, residences or businesses; providing information in the field of on-line restaurant ordering services."

Order Inn claims that, as a result of its extensive, continuous and exclusive use of the "Order Inn" trademark in connection with its services, that trademark has come to be recognized by consumers as identifying Order Inn's services as well as distinguishing them from services offered by others. It further claims that its trademark has developed substantial goodwill throughout the United States.

Order In, which also does business in Indiana, facilitates restaurant takeout and delivery through its website and via telephone. Order In is accused of trademark infringement of a registered trademark and false designation of origin. Ganser is alleged to be an owner and/or manager of Order In and to have personally participated in any trademark infringement. Both Order In and Ganser are accused of infringing upon the Order Inn trademark willfully, intentionally and deliberately and with full knowledge and willful disregard of Order Inn's intellectual property rights.

In its complaint, filed by a trademark lawyer for Order Inn, the following counts are alleged:

• Federal Trademark Infringement Under 15 U.S.C. §1114
• False Designation of Origin and Unfair Competition under 15 U.S.C. §1125(a)

Order Inn asks for an injunction; damages, including treble damages; interest; costs and attorney's fees

Practice Tip:

The protection afforded to a registered trademark is not exhaustive in scope. Among the limits to its applicability are restrictions based on the type of business to which the trademark pertains. From its website, it appears that Order Inn directs its efforts primarily towards guests at hotels, inns and similar temporary-lodging facilities. In contrast, Order In's offerings are not similarly limited.

Trademarks protection is also unavailable for generic words that merely describe the goods or services for sale. For example, while "Apple" could be trademarked for use in conjunction with the sale of computers, a company would not be allowed to trademark the term to refer to the sale of apples. Similarly here, Order Inn may have difficulty in showing that it should be allowed to prohibit nationwide the use by anyone else of the generic term "order in."

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