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June 6, 2016

Indiana Trademark Litigation: Brew Pub Accused of Infringing Use of Yeti Trademarks

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New Albany, Indiana - Trademark attorneys for Plaintiff Great Divide Brewing Company of Denver, Colorado filed an infringement lawsuit in the Southern District of Indiana against Defendant Red Yeti Brewing Company, Inc. of Jeffersonville, Indiana.

Defendant is listed in the complaint as the owner of a restaurant and brewery named "Red Yeti Brewing Co." a/k/a "Red Yeti Restaurant and Brewpub." The complaint asserts that Red Yeti Brewing Co. wrongfully employs the term "Yeti" and a yeti design in its marketing.

Specifically, Plaintiff contends that Defendant Red Yeti's conduct infringes two of its trademarks, U.S. Trademark Registration No. 2,957,257 for a Yeti word mark and U.S. Trademark Registration No. 4,115,050 for a Yeti design mark. Both have been registered by the U.S. Patent and Trademark Office.

Plaintiff asserts that Red Yeti's actions constitute a deliberate attempt to trade upon Defendant's goodwill and reputation and that its actions are willful and malicious. In this Indiana federal lawsuit, filed by trademark lawyers for Plaintiff, the following claims for relief are listed:

• Trademark Infringement in Violation of 15 U.S.C. § 1114(1)
• Unfair Competition - False Designation of Origin in Violation of 15 U.S.C. 1125(a)
• Federal Dilution
• Common Law Unfair Competition
• Common Law Trademark Infringement

• Deceptive Trade Practices in Violation of C.R.S. § 6-1-113

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

Continue reading "Indiana Trademark Litigation: Brew Pub Accused of Infringing Use of Yeti Trademarks" »

May 12, 2016

Indiana Trademark Litigation: Usage of "Hyperpure" Alleged to Infringe Hydrapure Trademark

Hammond, Indiana - A trademark attorney for Plaintiff NIBCO Inc. of Elkhart, Indiana commenced trademark infringement litigation in the Northern District of Indiana.

Defendant in the litigation is Legend Valve & Fitting, Inc. of Auburn Hills, Michigan. It is accused of infringing NIBCO's HYDRAPURE trademark, which has been registered with the U.S. Patent and Trademark Office under Trademark Registration Nos. 4,296,125 and 4,314,186 in conjunction with the sale of metal pipe fittings.

Plaintiff alleges Defendant's use of HYPERPURE to market its goods creates an identical commercial impression to Plaintiff's HYDRAPURE trademark. Calling Defendant's use "a reproduction, counterfeit, copy, or colorable imitation" of its own trademark, Plaintiff states that Defendant's use of HYPERPURE will confuse consumers as to the source of the goods.

2016-05-12-blogphoto.pngPlaintiff further contends that Defendant Legend chose the HYPERPURE mark in bad faith in an attempt to associate Defendant's products with Plaintiff's trademark and, in so doing, appropriate the goodwill that Plaintiff has built in the brand.

In this Indiana lawsuit, a trademark lawyer for NIBCO lists the following claims:

• Count I: Federal Trademark Infringement
• Count II: Federal Unfair Competition/False Designation of Origin
• Count III: Common Law Trademark Infringement
• Count IV: Common Law Unfair Competition

• Count V: Federal Trademark Dilution

NIBCO asks the court for equitable relief; damages, including punitive damages; costs and attorney fees.

Continue reading "Indiana Trademark Litigation: Usage of "Hyperpure" Alleged to Infringe Hydrapure Trademark" »

May 2, 2016

Indiana Trademark Litigation: Federal Lawsuit Filed Over Use of "Co-op" Trademark

Indianapolis, Indiana - Indiana trademark attorneys for Countrymark Refining and Logistics, LLC of Indianapolis, Indiana filed a trademark lawsuit against Coop Fuels Inc. of Morrisville, North Carolina. The complaint asserts direct and contributory trademark infringement, false designation of origin, and unfair competition arising under the Lanham Act as well as claims under Indiana law.

At issue are two trademarks owned by Countrymark, U.S. Registration Nos. 2,657,529 and 2,679,308 for the CO-OP trademark, which have been registered with the U. S. Patent and Trademark Office.

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Defendant Coop Fuels is alleged to have infringed these trademarks by using "coop" to market its competing products.

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Additionally, Countrymark contends that Coop Fuels has also knowingly induced and materially contributed to its retail partners' unauthorized adoption and use of Countrymark's trademarks.

In this lawsuit, Indiana trademark lawyers for Countrymark list the following allegations of wrongdoing:

• Count I: Infringement of Federally Registered Marks - 15 U.S.C. § 1114
• Count II: False Designation of Origin and Unfair Competition - 15 U.S.C. § 1125(a)
• Count III: Contributory Trademark Infringement
• Count IV: Common Law Unfair Competition
• Count V: Deception - Indiana Code § 35-43-5-3(a)(6)
• Count VI: Conversion - Indiana Code § 35-43-4-3

• Count VII: Indiana Crime Victim's Relief Act- Indiana Code § 35-24-3-1

Countrymark asks the federal court for injunctive relief, actual and treble damages, attorneys' fees and costs.

Continue reading "Indiana Trademark Litigation: Federal Lawsuit Filed Over Use of "Co-op" Trademark" »

April 27, 2016

Indiana Trademark Litigation: Trademark Dispute Between Kimball and Coaster Heads to Federal Court

Evansville, Indiana - An Indiana trademark attorney for Plaintiff Kimball International, Inc. ("Kimball") of Jasper, Indiana filed an intellectual property lawsuit in the Southern District of Indiana.

Defendant COA, Inc. d/b/a Coaster Company of America ("Coaster") of Santa Fe Springs, California is accused of infringing Kimball's Trademark KIMBALL, Reg. No. 1,180,193, which has been registered with the U.S. Patent and Trademark Office, by using the trademark without authorization.

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In addition to direct trademark infringement, Kimball asserts counts of contributory trademark infringement, false designation of origin, unfair competition arising under the Lanham Act as well as violations of the statutes and common law of the State of Indiana.

In particular, Kimball asserts that some of Coaster's retail partners have infringed the KIMBALL trademark at Coaster's behest, including retail giant Sears. As an example of this alleged contributory infringement, Kimball cites Bradley Home Furnishings' website, which Kimball states features an unauthorized "Kimball Bedroom Collection" that originated from Defendant Coaster:

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Kimball indicates in the complaint that it first informed Defendant less than a month before this lawsuit was filed that it believed it held superior rights to the KIMBALL trademark but states that Coaster "continues its unlawful use of the KIMBALL Mark and continues to encourage, induce, and materially contribute to its retail partners' unlawful use of the KIMBALL Mark."

In this litigation, filed by an Indiana trademark lawyer for Kimball, the following counts are alleged:

• Count I: Infringement of Federally Registered Marks - 15 U.S.C. § 1114
• Count II: False Designation of Origin - 15 U.S.C. § 1125(a)
• Count III: Contributory Trademark Infringement
• Count IV: Common Law Unfair Competition
• Count V: Deception - Indiana Code § 35-43-5-3(a)(6)
• Count VI: Conversion - Indiana Code § 35-43-4-3

• Count VII: Indiana Crime Victim's Relief Act - Indiana Code § 35-24-3-1

Among other remedies, Kimball seeks equitable relief, actual and treble damages, costs and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Trademark Dispute Between Kimball and Coaster Heads to Federal Court" »

April 6, 2016

Indiana Trademark and Copyright Litigation: Coach Sues Indiana Retailer on Allegations of Counterfeiting

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South Bend, Indiana - Intellectual property attorneys for Plaintiffs Coach, Inc. of New York, New York and Coach Services, Inc. of Jacksonville, Florida (collectively, "Coach") filed an intellectual property complaint in the Northern District of Indiana.

Coach contends that Defendants Zip Thru Mart, Charles Estok Sr., and Janice Estok, all of Knox, Indiana, infringed various Coach trademarks, which have been registered by the U.S. Patent and Trademark Office. In addition to trademark infringement under the Lanham Act, Coach asserts that Defendants have committed trade dress infringement, trademark dilution and counterfeiting under the Lanham Act, copyright infringement under the Copyright Act, as well as trademark infringement, unfair competition and unjust enrichment under Indiana common law.

Coach's allegations stem from Defendants' purported "designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale" products that bear counterfeit Coach trademarks. Defendants are further accused of having engaged in this behavior "negligently and/or knowingly and intentionally, with reckless disregard or willful blindness to Coach's rights, or with bad faith."

In support of its allegations of infringement and related conduct, Coach states that it sent an investigator to the Zip Thru Mart. Its investigator saw multiple items bearing Coach trademarks, which Coach contends were counterfeit. Additional goods bearing purportedly counterfeit trademarks were seized by a Homeland Security Investigations officer during a subsequent visit to the business.

The intellectual property listed in this litigation includes numerous trademarks for "Coach," "Coach New York," "CC," "Poppy" and similar trademarks. Coach also claims infringement of its copyrights, listing copyright registrations, registered with the U.S. Copyright Office, for its "Legacy Stripe" design (registration number VA000704542)  "Signature C" design (registration number VA0001228917),  "Op Art" design (registration number VA0001694574) and "Horse & Carriage" design (registration number VA0001714051).

In this Indiana lawsuit, filed by trademark and copyright attorneys for Coach, the intellectual property claims are listed as follows:

• Count I: Trademark Counterfeiting, 15 U.S.C. § 1114
• Count II: Trademark Infringement, 15 U.S.C. § 1114
• Count III: Trade Dress Infringement, 15 U.S.C. § 1125(a)
• Count IV: False Designation of Origin and False Advertising, 15 U.S.C. § 1125(a)
• Count V: Trademark Dilution, 15 U.S.C. § 1125(c)
• Count VI: Copyright Infringement, 17 U.S.C. § 501
• Count VII: Common Law Trademark Infringement
• Count VIII: Common Law Unfair Competition

• Count IX: Unjust Enrichment

In addition to statutory damages of $2 million per counterfeit mark, per type of counterfeit good, Coach seeks equitable relief; additional damages, both statutory and punitive; costs and attorneys' fees.

Practice Tip: Coach has a history of requesting statutory damages that are considerably in excess of what has eventually been awarded by the courts. For example, in Coach, Inc. v. Paula's Store Sportwear LLC, 2014 WL 347893 (D.N.J. Jan. 31, 2014), Coach requested $800,000 in statutory damages - $100,000 for each of eight counterfeited marks - from a shop from which four counterfeit Coach wallets and two counterfeit Coach handbags had been seized. When awarding damages to Coach, the court noted that the retail value of the six counterfeit items was less than $1500 and awarded $5000 for each of the eight marks that had been counterfeited, multiplied by the two types of goods, for a total statutory damages award of $80,000.

Continue reading "Indiana Trademark and Copyright Litigation: Coach Sues Indiana Retailer on Allegations of Counterfeiting" »

March 28, 2016

Indiana Trademark Litigation: Great American Bagel Sues Over Sign Modified to Read "Great American Eagle"

Evansville, Indiana - An Indiana trademark lawyer for Plaintiff The Great American Bagel Enterprises, Inc. ("GAB") of Westmont, Illinois filed a trademark infringement complaint in the Southern District of Indiana against Defendants United HBA Corporation and Harbhajan Singh, d/b/a The Great American Eagle, both of Evansville, Indiana.

GAB owns, operates and franchises food-products stores known as The Great American Bagel. It owns a trademark for "The Great American Bagel," Trademark Registration No. 2,015,665, which is comprised of the phrase "The Great American Bagel" with stars and bands. The mark has been registered by the U.S. Patent and Trademark Office.

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Defendant United HBA operates a gas station and convenience store, which offers retail food products. Defendant Singh is listed as the President and sole principal of United HBA. GAB contends that United HBA is displaying a sign that had previously been used as signage for a The Great American Bagel store. GAB states that Defendants modified "Bagel" to read "Eagle" by removing the "B" and adding an "E" but that the sign is otherwise unaltered.

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GAB alleges infringement of its trademark, stating that Defendants' use of the modified sign has caused customers to confuse the food products offered by GAB with those offered by Defendants. In this federal lawsuit, filed by an Indiana trademark attorney, the following claims are made:

• Count I: Federal Trademark Infringement
• Count II: False Designation of Origin, False Advertising and Unfair Competition under the Lanham Act Section 43(A)
• Count III: Unfair Competition - Trade Name Infringement
• Count IV: Unfair Competition - Passing Off

• Count V: Unjust Enrichment

GAB seeks equitable relief, damages, including punitive damages; costs and attorney's fees.


Continue reading "Indiana Trademark Litigation: Great American Bagel Sues Over Sign Modified to Read "Great American Eagle"" »

March 21, 2016

Indiana Trademark and Copyright Litigation: Sweetwater Contends Hello Music Copied its Website, Infringed its Intellectual Property

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Fort Wayne, Indiana - Indiana intellectual property lawyers for Plaintiff Sweetwater Sound, Inc. ("Sweetwater") of Fort Wayne, Indiana filed an intellectual property lawsuit in the Northern District of Indiana.

Plaintiff alleges that Defendant Hello Music, LLC of Austin, Texas infringed its trademarks, which have registered by the U.S. Patent and Trademark Office as Trademark Nos. 3,652,255 and 3,652,249. In addition, Sweetwater Sound contends that Hello Music infringed its copyright, issued by the U.S. Copyright Office as TX 8-064-067, which protects the contents of its website. Other counts of alleged wrongdoing, including claims under Indiana law, have been asserted.

Hello Music is accused of duplicating copyrighted content from Sweetwater's website and using that protected content on its own website. Sweetwater contends that part of the content purportedly copied includes the Sweetwater trademark. Sweetwater also asserts that these acts by Hello Music constitute a willful and deliberate attempt to trade on Sweetwater's goodwill.

In the complaint, filed in federal court Friday, the following claims are made:

• Count I: Copyright Infringement
• Count II: Trademark Infringement (False Designation of Origin)
• Count III: Trademark Dilution

• Count IV: Unfair Competition

Sweetwater asks the court to grant equitable relief, including the destruction of infringing materials. It also seeks actual and treble damages, disgorgement of all profits that resulted from infringing acts, litigation costs and attorneys' fees.

Continue reading "Indiana Trademark and Copyright Litigation: Sweetwater Contends Hello Music Copied its Website, Infringed its Intellectual Property" »

March 18, 2016

Indiana Trademark Litigation: Indiana-Based "Oak Motors" Sues California-Based "Oak Motors" for Infringement

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Indianapolis, Indiana - Plaintiff Oak Motors, Inc. of Anderson, Indiana ("Oak Indiana") filed a trademark infringement complaint in the Southern District of Indiana alleging that Oak Motors, Inc. of San Mateo, California ("Oak California") is infringing U.S. Trademark Registration No. 4,487,991, which was issued by the U.S. Patent and Trademark Office.

Plaintiff Oak Indiana, a used-car dealership, has three locations in Indianapolis as well as a location in Anderson, Indiana and another in Muncie, Indiana. It focuses on offering cars to "customers with credit challenges." It has commenced trademark litigation against a California-based used-car dealership that offers primarily luxury-brand vehicles.

Plaintiff contends that, by using "Oak Motors" to promote its business, Oak California intended to cause, and has caused, initial interest confusion and actual confusion among consumers and potential consumers. Oak Indiana asserts that Oak California's actions are an intentional attempt to trade off the goodwill of Oak Indiana.

In addition to Oak California's use of "Oak Motors" as a business name, Oak Indiana also complains of Defendant's use of three websites, http://oakmotorsusa.com/, http://oakmotorsinc.com/ and http://www.oakmotorsca.com/default.aspx, claiming that the use of those websites is calculated to create consumer confusion regarding whether the two companies are related.

In this federal lawsuit, filed by Indiana trademark lawyers for Oak Indiana, the following claims are asserted:

• Count I: False Designation of Origin and False Description - 15 U.S.C. §1125(a)
• Count II: Common Law Trademark Infringement
• Count III: Unfair Competition
• Count IV: Cybersquatting - 15 U.S.C. §1125(d)

• Count V: Declaratory Judgment

Oak Indiana seeks equitable relief, including the transfer of domain names referencing the "Oak Motors" trademark; Oak California's profits from the sale of all infringing goods; damages, including actual damages, punitive damages, statutory damages and treble damages; costs of litigation and attorneys' fees.

Continue reading "Indiana Trademark Litigation: Indiana-Based "Oak Motors" Sues California-Based "Oak Motors" for Infringement" »

February 18, 2016

Indiana Trademark Litigation: Indiana Hoverboard Manufacturer Sued on Allegations of Unauthorized Use of UL Trademark

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South Bend, Indiana - Indiana trademark attorneys for Plaintiff UL LLC of Northbrook, Illinois filed a lawsuit with the federal court in the Northern District of Indiana. Plaintiff alleges that Swagway, LLC and Jianqing "Johnny" Zhu infringed the "UL" trademark, Trademark Registration Nos. 2391140 and 782589, which have been registered by the U.S. Patent and Trademark Office. Plaintiff further claims that Defendants use the Service Mark "UL" in a manner that falsely suggests a relationship between Plaintiff and Defendants. Other causes of action, including claims under the state law of Illinois, are also asserted.

Plaintiff UL, founded in 1894, is a developer of safety standards. It also offers safety testing, inspection and certification of products. Plaintiff states in this federal lawsuit that it owns a family of trademarks featuring the UL mark, including a "UL-in-a-circle" certification mark and the UL service mark.

This lawsuit pertains to hoverboards (also known as self-balancing scooters or skateboards). Plaintiff states that hoverboards have been the subject to inquiries regarding safety. It also contends that Defendants have been sued on allegations that their hoverboard caught on fire and caused property damage.

In this trademark action, Plaintiff complains of Defendants' alleged improper use of the UL trademark and service mark on the hoverboards that Defendants make and sell. Additionally, Plaintiff contends that Defendants falsely stated that "Swagway also adheres to all required environmental standards and certifications," including UL certification. According to Plaintiff, Defendants' conduct was "intentional, unjustified and/or malicious, and done to purposefully harm Plaintiff."

This Indiana litigation, filed with the court by trademark lawyers for Plaintiff, lists the following:

• Count I: Federal Trademark Counterfeiting and Trademark Infringement (15 U.S.C. § 1114)
• Count II: Federal Unfair Competition - False Designation of Origin (15 U.S.C. § 1125)
• Count III: Federal Unfair Competition - False Advertising (15 U.S.C. § 1125)
• Count IV: Violation of the Illinois Deceptive Trade Practices Act (815 ILCS 510/1 et seq.)

• Count V: Violation of the Illinois Consumer Fraud and Deceptive Business Practices Act (815 ILCS 505/1 et seq.)

Plaintiff seeks equitable and other relief along with damages, including punitive damages, costs and attorney's fees.

Continue reading "Indiana Trademark Litigation: Indiana Hoverboard Manufacturer Sued on Allegations of Unauthorized Use of UL Trademark" »

February 11, 2016

Indiana Copyright and Trademark Litigation: Magazine Publisher Sues Commemorative Plaque Maker Alleging Infringement

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Indianapolis, Indiana - Indiana copyright and trademark attorneys for Plaintiff The Rough Notes Company, Inc. ("Rough Notes") of Carmel, Indiana commenced a copyright infringement lawsuit in the Southern District of Indiana.

The Defendant, That's Great News, LLC ("Great News") of Cheshire, Connecticut, is accused of infringing U.S. Trademark Registration No. 2,585,340, which has been filed with the U.S. Patent and Trademark Office, as well as unfair competition, false designation of origin, and dilution under the Lanham Act. Allegations of copyright infringement of material protected by Copyright Registrations Registration Nos. TX 7-988-447 and TX 7-988-464, as well as other related claims, have also been made.

Plaintiff Rough Notes is a publisher of print and online magazines. It indicates that it has used its "Rough Notes" trademark since 1878 and that the trademark was registered in 2002. Rough Notes contends that Defendant Great News has violated it copyright, trademark and other intellectual property rights by producing samples of commemorative plaques that feature protected content owned by Rough Notes and distributing samples via e-mail to solicit the purchase of a plaque.

In this federal complaint, filed with the court by Indiana copyright and trademark lawyers for Rough Notes, the following causes of action are alleged:

• Copyright Infringement
• Federal Unfair Competition & False Designation of Origin
• Federal Trademark Infringement
• Common Law Trademark Infringement
• Federal Trademark Dilution
• Common Law Unfair Competition

• Unjust Enrichment

Rough Notes seeks equitable relief; statutory damages, including up to $150,000 for willful infringement; and reimbursement of costs and attorneys' fees.

Practice Tip: Plaintiff may have difficulty overcoming the defense of nominative fair use of a trademark in this lawsuit. That doctrine provides that, as a matter of law, nominative use of a mark -- where the only word reasonably available to describe a particular thing is pressed into service -- lies outside the strictures of trademark law. Defendant may argue that its use of "Rough Notes" on its commemorative plaques was permissible as those are the only words reasonably available to adequately describe a plaque displaying an article featured in a "Rough Notes" publication.

Continue reading "Indiana Copyright and Trademark Litigation: Magazine Publisher Sues Commemorative Plaque Maker Alleging Infringement" »

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.

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