Evansville, Indiana - Trademark attorneys for Best Chairs Incorporated of Ferdinand, Indiana filed an intellectual property lawsuit for damages and injunctive relief in the Southern District of Indiana alleging that Factory Direct Wholesale, LLC of Duluth, Georgia ("Factory Direct") infringed Trademark Registration Nos. 1,421,085; 2,871,238; 3,839,150 and 3,531,915, which have been issued by the U.S. Trademark Office.
Best Chairs has done business as a furniture company since 1962. It has used "Best Chairs" and similar marks in its corporate name, trade name, and trademarks. Best Chairs asserts ownership of several related trademarks, Trademark Registration Nos. 1,421,085; 2,871,238; 3,839,150 and 3,531,915, as well as several trademark applications.
Factory Direct, a competitor of Best Chairs which allegedly also does business as Cavalier Wholesale, ("Defendant") sells goods, including chairs and furniture products, nationwide. Best Chairs asserts that Defendant has infringed its intellectual property by using the designations BESTCHAIR and BEST CHAIR as trademarks for a line of furniture and that Defendant's use of these designations is without Best Chair's authorization.
Best Chairs contends that Defendants may have used the BESTCHAIR and BEST CHAIR designations as a trade name in the United States approximately four years ago. Roughly two years ago, Best Chairs alerted Amazon.com of an unauthorized use of the "BESTCHAIR" designation on its website by Cavalier Wholesale. Best Chairs states that discussions with Amazon.com appeared to resolve the issue of the unauthorized use of its intellectual property.
Beginning in January 2014, Best Chairs claims that it began to receive additional information regarding products labeled as "BESTCHAIR" or similar that were not Best Chairs' goods. Specifically, Best Chairs was notified by the Tri-State Better Business Bureau that a complaint had been lodged against Best Chairs for the sale of a defective chair. Best Chairs asserts that complaint, in fact, pertained to a chair that had been purchased from Defendant. In March 2014, Amazon contacted Best Chairs with a warranty inquiry that Best Chairs indicates pertained to a product sold by Defendant. Best Chairs asserts that these examples demonstrate actual confusion in the marketplace.
Best Chairs contends that Defendant's use of the BESTCHAIR and BEST CHAIR marks: has a substantial likelihood of causing confusion and mistake by consumers as to the source of Defendant's products; has a substantial likelihood of causing confusion and mistake by consumers as to the affiliation, connection, or association of Defendant with Best Chairs; and in addition to creating a likelihood of confusion, has caused actual confusion in the marketplace. Best Chairs asserts that Defendant's infringing conduct has been willful and intentional.
Trademark lawyers for Best Chairs have sued on the following theories:
• Count I: Federal Trademark CounterfeitingBest Chairs ask for injunctive relief; damages, including treble damages; costs, including attorneys' fees; an order directing the destruction or alteration of all materials found to infringe Best Chairs' intellectual property; and interest, including prejudgment interest.
• Count II: Trademark Infringement of Federally Registered Trademarks - 15 U.S.C. §1114
• Count III: Unfair Competition, False Advertising, False Designation of Origin and Infringement Under 15 U.S.C. §1125
• Count V [sic]: Unfair Competition Under Indiana State Law
• Count VI: Civil Action Under the Indiana Crime Victims Act
Practice Tip: Indiana Code §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys' fees. The Indiana Court of Appeals has discussed "theft" and "conversion" as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.