Indiana Intellectual Property Law News

Indianapolis, Ind. -- The Indiana Court of Appeals has vacated a trial court's judgment in favor of the LaPorte County Convention and Visitors Bureau (the "Bureau") of LaPorte, Ind., holding that neither trademark infringement nor cybersquatting had been committed by Serenity Springs ("Serenity") of LaPorte, Ind.

Serenity operates a resort in LaPorte County.  The Bureau is a special-purpose governmental unit charged with representing the visitor industry by marketing to potential visitors to the LaPorte area.

On September 9, 2009, the Bureau announced at a public meeting that it planned to adopt the phrase "Visit Michigan City LaPorte" as its branding identifier for the area.  A representative of Serenity was in attendance.  Immediately afterward, an employee for Serenity registered the domain name "visitmichigancitylaporte.com" and set it up to redirect internet traffic to Serenity's website.

The Bureau sent a cease-and-desist letter claiming trademark infringement and cybersquatting.  Serenity responded that (1) it had registered and begun using the domain name before the Bureau had made any commercial use of it and (2) the designation was not protectable as a trademark because it was merely descriptive and had not acquired distinctiveness.

In April 2010, the Bureau filed an application with the Indiana Secretary of State to register "Visit Michigan City LaPorte" as a trademark under the Indiana Trademark Act.  In its application, the Bureau indicated that it had first used the mark in commerce on September 9, 2009.  The application was approved.  Nonetheless, Serenity continued using the visitmichigancitylaporte.com domain name.

The Bureau sued Serenity in the LaPorte Superior Court alleging, inter alia, trademark infringement, cybersquatting and unfair competition by Serenity.  The trial court permanently enjoined Serenity from using "Visit Michigan City LaPorte" and ordered the transfer of the domain name "visitmichigancitylaporte.com" to the Bureau.

Serenity appealed the trial court's holding that it had committed trademark infringement and cybersquatting.  The trial court had held that, due to the Bureau's status as a governmental entity, it was entitled to a different application of trademark law.  Specifically, it held that there was a lesser requirement for using the mark to acquire trademark rights.

The appellate court disagreed.  It has long been held that the exclusive right to use a mark is acquired through adoption and use of the mark in commerce.  The appellate court also held that this mark was clearly geographical in nature and that it was "difficult to conceive of a mark that falls more squarely within the category of geographically descriptive marks."  Geographically descriptive designations generally fall within the descriptive category; thus, to be protected, the must have acquire secondary meaning.

The trial court considered the entirety of the time that the Bureau had been using the mark in considering whether the Bureau had established secondary meaning.  It found that such secondary meaning had been established.  However, the correct test for secondary meaning is to evaluate whether secondary meaning had been established by the senior user immediately prior to the time and place that the junior user began to use the mark.  As this was, on its face, entirely unsupported by evidence, the appellate court held that the trial court erred in its determination that the Bureau had acquired secondary meaning in the mark.  The appellate court reversed the trial court's judgment, holding that the Bureau had not established that it held a valid and protectable trademark in the designation "Visit Michigan City LaPorte."

The appellate court did, however, point out that additional claims had been made by the Bureau which had not been reached by the trial court.  One of the claims, unfair competition, does not require the existence of a protectable trademark.  Instead, it is an open-ended category of torts designed to protect "commercial values."  The appellate court remanded with instructions to the trial court to vacate its judgment as to trademark infringement and cybersquatting and to adjudicate the Bureau's remaining claims. 

Practice Tip #1: While the Indiana Trademark Act and the Lanham Act have many similarities, the former does not provide all of the protections afforded by the latter.  While the Lanham Act provides that federal registration of a mark provides prima facie evidence of its validity, the Indiana Trademark Act contains no such provisions.  A certificate of registration with the Indiana Secretary of State is proof of registration only (although such a registration is necessary to support a claim of infringement under the Indiana Trademark Act).

Continue reading "Serenity Springs Prevails Against Allegations of Trademark Infringement and Cybersquatting" »

South Bend, Ind. -- Tough Mudder LLC of Brooklyn, N.Y. sued alleging trademark infringement by Mudderland of Kingsbury, Ind.; and Rick and Susan Hollaway, both of Hebron, Ind. of Tough Mudder trademarks registered under Registration Nos. 3,810,118; 4,131,912; 4,308,918; 4,131,913; 4,241,510; 4,241,512; 4,241,513; and 4,233,607 for marks containing "MUDDER," which have been registered with the U.S. Trademark Office.

Tough Mudder is in the obstacle-course industry with challenges such as multi-mile mud obstacle courses.  In the past three years, Tough Mudder has held such challenges in the United States, Canada, the United Kingdom and Australia with over a million registrations.  Tough Mudder has been recognized by such well-known news sources as The Wall Street Journal, ESPN, National Geographic and Sports Illustrated.

In addition to federally registered marks, Tough Mudder asserts that it is the owner of common law and federal service mark rights available without registration in the words "Mudder" and "Mudders" for use in connection with various outdoor events.  It also asserts common law and federal unregistered service mark rights in the phrases "Walk the Plank" and "Berlins Walls" that are also used in conjunction with outdoor obstacle courses and similar events.

Also in the obstacle-course industry, Rick and Susan Hollaway co-own and co-operate an unincorporated entity named "Mudderland."  In 2012, the Hollaways designed, organized and promoted an obstacle-course mud challenge under the name "Mudderland" which was similar to those held by Tough Mudder. In doing so, Tough Mudder alleges that the Holloways were attempting to benefit illegally from Tough Mudder's brand by using the similar name "Mudderland" for an obstacle-course event.  The Hollaways also included other similar indicia such as the color orange and similar-or-identical obstacle names.  After having been contacted by Tough Mudder, Susan Hollaway agreed to cease using the name "Mudderland" and to abandon the domain name www.mudderland.com.

Despite this purported agreement to discontinue the use of the name "Mudderland" and the associated domain name, Tough Mudder learned in 2013 that the Hollaways had resumed using both.  The Hollaways planned to host a 2013 event which would also include an event named "Walk the Plank" and another named "Berlin Wall," both of which are similar to names claimed by Tough Mudder.  The Holloways' "Mudderland" website is again using the same color scheme as Tough Mudder's website, with orange as the predominant color.

Trademark lawyers for Tough Mudder brought this case after the Holloways failed to abide by the alleged earlier agreement by the Holloways to cease what the complaint calls their "admittedly infringing activity" of Tough Mudder's "extraordinarily valuable trademark rights."

Tough Mudder claims that its first use in commerce of both the Tough Mudder mark and the Mudder family of marks predate the Hollaways' first use and therefore Tough Mudder's use of the marks has priority.  The complaint asserts that, in addition to the constructive notice of the Mudder marks provided by the federal trademark registrations, the Holloways also had actual notice of Tough Mudder's rights in the marks as of May 21, 2012 when Tough Mudder sent the first cease-and-desist letter via e-mail to the Hollaways.  Further, it is asserted that the Holloways knew of Tough Mudder's rights and acted with wanton disregard for those rights and with the willful intent of benefiting from the goodwill of the Tough Mudder marks.  Tough Mudder asserts that the Hollaways' actions are likely to cause confusion, to cause mistake and to deceive consumers as to the source, nature and quality of the goods and services offered by the Hollaways and/or Tough Mudder.

Tough Mudder's complaint lists ten counts:

Ft. Wayne, Ind. -- Trademark lawyers for Manchester University, Inc. ("Manchester") of North Manchester, Ind. sued Sportswear, Inc. of Seattle, Wash. alleging trademark infringement of the "Manchester University" trademark, Registration No. 3,375,265, which is registered with the U.S. Trademark Office.

Manchester is an independent, liberal-arts university with campuses in North Manchester, Ind. and Fort Wayne, Ind.  It owns a federal trademark for "Manchester University."  The use of the Manchester mark dates back to 1895.

Sportswear, doing business as "Prep Sportswear" and "Campus Team Shop," operates the "Manchester University Spartans Apparel Store" as part of its online presence.  The store carries items for men, women and children including assorted shirts, sweatshirts, pants, hats and accessories that bear the name "Manchester," often with another word or words (e.g., "Spartans" or "University"). 

Manchester has sent at least two letters to Sportswear asking it to discontinue selling goods bearing these markings, which Manchester claims infringe upon its trademark.  Despite these requests to stop, Sportswear continues to sell goods bearing the Manchester name.

In counts one and two of its complaint, Manchester alleges federal trademark infringement under §§ 32 and 43 of the Lanham Act, respectively.  Count three asserts trademark infringement and unfair competition under common law.  Manchester further contends that Sportswear's infringement is intentional, deliberate and willful.

Manchester asks for preliminary and permanent injunctions; damages, including treble damages; Sportswear's profits; interest; costs and attorneys' fees.  It also lists a separate request for punitive damages. 

Practice Tip:

Litigation can be time consuming and expensive for parties.  To best protect their clients, litigators usually have the possibility of settlement in mind.  In a settlement, no one typically gets "everything they want."   Everyone, however, usually gets something (even if it's merely paying less in damages than they would likely pay after a trial).  But, to settle, parties need to find common ground.  Sometimes, instead of finding that common ground, they seem determined to compound the dispute. 

This case is an interesting illustration wherein, even in the complaint, one can see the parties moving farther apart.  For example, the complaint includes several exhibits.  One shows a page from the Sportswear website from September 2012 advertising "Manchester College" goods.  A September 2012 letter from Manchester College asked Sportswear to cease infringing.  A November 2012 letter followed, also demanding that the unauthorized use of the "Manchester" name cease.  In that letter, written on Manchester University stationery, the attorney for Manchester also noted that the institution's name had been changed from "Manchester College" to "Manchester University." 

Instead of evidence of an attempt to reach an understanding, and also visible in the exhibits to the complaint, is Sportswear's response.  The screenshots of its website that had been captured prior to the letter from "Manchester University" showed "Manchester College" apparel available for sale.  After Manchester's attorney mentioned the name change in the subsequent letter, Sportswear began carrying new merchandise bearing the "Manchester University" name.  For example, under "New Stuff" on the Sportswear website, you can find items featuring "Manchester University Spartans," apparently designed and ordered after (and, perhaps, somewhat ironically, as a result of) receiving the November 2012 cease-and-desist letter.  Sportswear has also added a disclaimer to its "Manchester University Spartans Apparel Store" in an attempt to avoid liability: "This store is not sponsored or endorsed by Manchester University."

Continue reading "Manchester University Sues Sportswear for Trademark Infringement" »

Indianapolis, Ind. -- Trademark lawyers for American Professional Nursing Resources, LLC ("APNR") and Doyle Silvers ("Silvers") of La Fontaine, Ind. sued Medical Staffing Worldwide, LLC ("MSW") of Marion, Ind. et al. for use of APNR's trademark and trade secrets; for breach of contract and fiduciary duty; for tortious interference with contracts and for violation of § 43(a) of the Lanham Act. 

In March 2004, Silvers formed APNR, a global recruitment company that assists domestic employers in recruiting foreign medical professionals by providing domestic screening, training tools and foreign processing facilities.  APNR and Silvers recruited Larry Myers ("Myers"), Tom Reto ("Reto"), Jon Marler ("Marler"), Dan Hasslinger ("Hasslinger") and James Greg Bowers ("Bowers") to develop APNR into a fully operational business.  Benny Spensieri ("Spensieri"), who signed a Non-Disclosure Agreement ("NDA"), was also recruited.  Myers, Reto, Marler, Hasslinger, Bowers and Spensieri agreed to maintain the secrecy of APNR's confidential, proprietary and trade-secret information.

Silvers provided Myers, Reto, Marler, Hasslinger, Bowers and Spensieri with confidential, proprietary and trade-secret information of APNR including its business plan, business model, financial information, and methods and techniques for global recruitment, immigration, screening and training of foreign medical professionals.

In the summer of 2012, Myers, Reto, Marler, Hasslinger, and Bowers reserved the business name "Medical Staffing Worldwide, LLC."  Using that name, they formed a company that allegedly had the same business plan, business model and financial projections as APNR and that used identical methods and techniques for global recruitment, immigration, screening, and training of foreign medical professionals as APNR.  MSW also began using APNR's trademark, "The Future of Medical Staffing," which APNR had used since 2005.

APNR and Silvers filed suit alleging breach of contract, breach of fiduciary duty, misappropriation of trade secrets, tortious interference with contracts and violation of § 43(a) of the Lanham Act.  They ask for actual, consequential and punitive damages; attorneys' fees; costs; and pre-judgment and post-judgment interest.

Practice Tip: Indiana considers non-compete agreements to be in restraint of trade and, thus, construes them narrowly.  In other states, there has also been a growing trend, fueled in no small part by states' difficulties in paying increasing unemployment benefits, to limit via legislation the enforceability of non-compete agreements.  Among the states that have considered such limitations are Maryland, New Jersey, Minnesota, Massachusetts and Virginia. 

Continue reading "American Professional Nursing Resources Sues Medical Staffing Worldwide for Various Unfair Trade Practices" »

Hammond, Ind. - Robert Payne ("Payne") d/b/a Paynes Products, Paynes Forks and Payne Tools of LaPorte, Ind. sued Northern Tool & Equipment Company, Inc. and Northern Tool & Equipment Catalog Company, Inc. (collectively, "Northern Tool") of Burnsville, Minn. for alleged violations of Payne's intellectual property rights, false advertising and breach of contract.

Payne alleges a prior business relationship with Northern Tool in which Northern Tool sold Payne's products in Northern Tool's stores, via its catalogs and via the Internet pursuant to various agreements between the parties.  Around October 2012, Northern Tool apparently informed Payne that it was terminating the agreements.  Payne alleges that, despite this, Northern Tool continues to advertise Payne's products and has been fulfilling orders with products made by Northern Tool.

The plaintiff complains of trademark infringement, palming off, false advertising and false designation of origin under Section 43 of the Lanham Act as a result of Northern Tool allegedly continuing to advertise and sell imitation Paynes products.  

Payne further complains of "Unfair Competition by Infringement of Common-Law Rights," listing as his authority Indiana Code §§24-2-1-13 and 24-2-1-14.  Payne has also asserted a claim for breach of contract against Northern Tool for failure to disgorge "excessive funds" to Payne.

Finally, the complaint lists as separate counts one of the remedies sought - an injunction - and a count demanding a jury trial.  We have blogged in the past about this method of pleading here.

Continue reading "Robert Payne Sues Northern Tool & Equipment et al. for Trademark Infringement, False Advertising and Breach of Contract" »

Indianapolis, IN - Trademark lawyers for Royal Purple, LLC of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany in the Southern District of Indiana alleging trademark infringement for selling purple automotive lubricants.

At the center of this litigation is the right to use the color purple.  Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple.  It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses.  Among the trademarks are U.S. Registration Nos. 2,691,774; 2,953,996 and 3,819,988 which cover the following:

It also owns multiple trademarks incorporating the word "purple" as applied to various goods.  These trademarks are registered with the US Trademark Office.  Purple was chosen for its association with royalty.  (Historically, purple dye was so expensive to produce that it was used only by royalty.)  Royal Purple's purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

Liqui Moly sells Liqui Moly and Lubra Moly brand motor oil, both of which have packaging that is supposedly purple prior to sale.  Royal Purple alleges that Liqui Moly's use of the color purple in conjunction with the sale of motor oil is likely confuse consumers.   According to Liqui Moly's website, its products are sold in a variety of different containers:

Royal Purple also alleges that Liqui Moly's use is a purposeful attempt to trade upon Royal Purple's trademark and that Liqui Moly's use will dilute the "distinctive quality" Royal Purple's trademarks.  Finally, it alleges that Liqui Moly's use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple's trademark, by placing them partially under the control of Liqui Moly, an unrelated third party.

The federal claims include trademark infringement, unfair competition and dilution under the Lanham Act; Royal Purple has also alleged dilution, trademark infringement, unfair competition and unjust enrichment under Indiana common law.  Royal Purple seeks a preliminary and permanent injunction, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys' fees.

Continue reading "Royal Purple Sues Liqui Moly GmbH for Trademark Infringement for Selling Purple Lubricants" »

Geneva, Switzerland - The World Trade Organization ("WTO") has granted its permission for the twin-island nation of Antigua and Barbuda ("Antigua") to disregard intellectual property rights granted by the United States (i.e., patents, copyrights and trademarks).  The decision follows nearly ten years of negotiations and litigation pursuant to a 2003 complaint to the WTO by Antigua.

In the United States, there are three separate federal laws (the "Wire Act," the "Travel Act" and the "Illegal Gambling Business Act") and various state laws promulgated by Louisiana, Massachusetts, South Dakota and Utah that prohibit certain means of delivering gambling services, most particularly the interstate delivery such services.  The dispute centered on the conformance of these laws with an international trade agreement when the laws restricted online gambling services offered in the U.S. by Antigua.  [NB: Other WTO members participated as complainants but, by 2009, the U.S. had negotiated agreements with each of them.]

Via its attorneys, Antigua alleged that, together, the federal and state restrictions amounted to discrimination against foreign companies and constituted a breach of the United States' agreement under the WTO's General Agreement on Trade in Services ("GATS").  Antigua stated that its economy, which had, without the restrictions, included a substantial volume of online gambling services offered to the residents of the U.S., had been significantly damaged.

The United States argued that it was, in fact, in compliance with the GATS and that the WTO's interpretation of the GATS did not reflect the original intent of the U.S.  It stated that the broad language allowing foreign companies to provide "other recreational services" should not be interpreted to supersede the U.S.'s longstanding restrictions on interstate gambling under federal law.  It also argued that the regulation of interstate gambling fell within the GATS public morals exception.

In 2004, the WTO issued its first ruling in favor of Antigua.  A series of appeals and negotiations followed.  In 2007, the U.S. initiated an attempt to resolve the dispute by engaging in the WTO process that allows clarification of the agreement.

Later in 2007, an Arbitrator determined that Antigua was impaired by the U.S.'s actions in the amount of $21 million per year and suspended Antigua's WTO obligations to the United States with the limitation that the suspension could affect trade between the United States and Antigua by no more than $21 million per year.

 On January 28, 2013, the WTO granted a similar "authorization to retaliate" by suspending U.S. intellectual property rights within Antigua up to $21 million per year.  This sanction not only has the effect of harming innocent property holders, it was designed with that goal in mind.

According to Mark Mendel, an attorney for Antigua in this case, this sanction is not designed to compensate Antigua but rather "to pressure the bad government [the United States] domestically."  Specifically, he says, the retaliation is designed to damage private - and innocent - third parties within the U.S.  This would be done in an attempt to force those private parties to pressure the U.S. government to comply with the GATS as interpreted by the WTO.  Given that ten years of litigation and negotiation have failed, the only way to protect these innocent third parties appears to require the U.S. to change its laws.  If the U.S. does not change its laws or otherwise come into compliance with the GATS, as interpreted by the WTO, the penalty will be borne by a multitude of innocent parties when their private property is taken without payment.

Practice tip #1: The U.S. has successfully negotiated with every country but Antigua in this dispute.  As a result of this failure to reach an agreement that allows the U.S. to keep its laws intact, it appears that the WTO is attempting to force the U.S. to repeal its laws against interstate gambling by legalizing what is all but universally recognized as theft.  This "retaliation" was designed not to compensate Antigua but to punish innocent holders of U.S. intellectual property and thereby cause pressure from those individuals and companies to demand that, in effect, the U.S. cede this portion of its sovereignty to the WTO.

Practice tip #2: Companies should consider proactively registering their .ag domain name(s), as the reach of federal legislation such as the "Anticybersquatting Act," which is designed to protect company names against improper use as a domain name by another company (or "cybersquatting"), is unclear.

South Bend, IN - Trademark attorneys for Coach, Inc. of Jacksonville, FL, filed a lawsuit in the Northern District of Indiana against Defendants Diva's House of Style and its owner Elizabeth Bond of Elkhart, IN, alleging multiple violations of intellectual property laws under the Lanham Act, the Copyright Act, Indiana common law and Indiana statutory law.

Lawyers for Coach sought partial summary judgment as to liability on three of its counts under the Lanham Act: trademark infringement, unfair competition and counterfeiting for the sale of products labeled as "Coach" which had not been manufactured by Plaintiffs (i.e., "knock-offs").

Defendant Bond, proceeding pro se, failed to respond to Plaintiffs' motion for summary judgment, as she had earlier failed to respond to the Plaintiffs' request for admissions. Defendant Diva's House of Style also attempted to proceed pro se despite the court's explicit warning that the company was not permitted to do so.

As a result of Defendant Bond's earlier failure to respond, 19 separate facts were deemed by the court to have been admitted. The undisputed facts were sufficiently robust to support summary judgment on the issue of liability for each of the three counts in question. The remaining counts, as well as a determination of damages for those counts for which Defendants were liable, were not addressed. The court also held that Ms. Bond could be held personally liable for her store's infringement as a result of her personal involvement in the misconduct.

Practice Tip: Pro se litigants should remember that failing to respond to a lawsuit - including failing to respond in a timely and procedurally appropriate manner - can have serious consequences. Moreover, when any business is operated through a corporation or LLC, the business owner is not allowed to represent the business. The business must hire a lawyer, preferably one experienced in litigation, to represent the business. Finally, while corporations are often used to shield owners of personal liability, that protection often does not apply to intellectual property infringement cases, such as those involving patents, trademarks or copyrights.

Continue reading "Indiana Court Grants Coach, Inc. Summary Judgment In Trademark and Copyright Infringement Case" »

Fort Wayne, IN - Three Rivers Archery Supply, Inc. of Ashley, Indiana, along with Dale and Sandra Karch, have filed a trademark infringement suit against Parker Compound Bows, Inc. of Virginia. The suit alleges infringement of the mark TOMAHAWK BOWS, Registration No. 3, 156,258 issued by the US Trademark Office. The plaintiff claims that Parker has been distributing crossbows using the name TOMAHAWK, which infringes their products and could be confusing to the public."

Practice Tip: The complaint does not appear to allege sufficient facts that would give the court personal jurisdiction over the defendant Parker. It merely alleges, "On information and belief, Parker has been conducting continuous and systematic business by marketing and selling infringing bows and related materials and equipment within the State of Indiana and within the Northern District of Indiana." It is also curious that the TOMAHAWK registration is owned by Dale and Sandra Karch individually, yet the complaint alleges that they do not sell bows - only Three Rivers Archery is alleged to sell bows.

Continue reading "Three Rivers Alleges Trademark Infringement against Parker Compound Bows re: Tomahawk Bows Mark" »

Indianapolis, IN - The Southern District of Indiana dismissed multiple claims by Plaintiff Wine & Canvas in its trademark infringement suit against YN Canvas, et al.

Wine & Canvas organizes parties where guests can take a painting class while enjoying cocktails.  Anthony Scott ("Scott"), one of the founders of Wine & Canvas, sued multiple defendants.  He alleged that he entered into a business venture wherein he would license the Wine & Canvas business model to Christopher Muylle ("Muylle") and Theodore Weisser ("Weisser") for use in San Francisco, both to operate a new Wine & Canvas location and to license others to operate under the Wine & Canvas name and business model.  Instead, Scott alleged, the defendants breached that agreement, appropriated the Wine & Canvas model and proceeded without Scott as YN Canvas CA, LLC ("YN Canvas").  Defendants, in turn, alleged that they breached no agreement but instead merely parted ways, changing their business name to "Art Uncorked," when Wine & Canvas insisted on a new agreement with additional terms that were unfavorable to the defendants.

Plaintiff Wine & Canvas Development, LLC ("Wine & Canvas"), via its attorneys, sued multiple defendants: (1) YN Canvas, a Nevada limited liability company with its principal place of business in California; (2) www.art-uncorked.com, the corporate website for Art Uncorked; (3) Weisser, an officer of YN Canvas; and (4) Muylle, an officer of YN Canvas (collectively, "defendants").  [NB: Art Uncorked was also named as a defendant but, as that was merely the new name of YN Canvas, which had already been named as a defendant, the court chose to refer to both by the one name, "YN Canvas."]

The eleven-count complaint was originally filed in Hamilton County Circuit Court and included claims for trademark infringement, false designation of origin, trademark dilution, sales of counterfeit items/services, unfair competition, declaratory judgment, civil action under the Indiana Crime Victims Act, breach of contract, fraud, permanent injunctive relief, and request for writ of attachment.  It was removed to the Southern District of Indiana as its Lanham Act issues provided federal question jurisdiction.  We previously blogged about that element of this case here.

The parties came to the court with several motions.  After a detailed discussion on personal jurisdiction, the court held that it could exercise specific jurisdiction over both Weisser and YN Canvas and denied the motion to dismiss for lack of personal jurisdiction as to them.  The motion to dismiss the website as a defendant was granted, with the court finding that, "[b]ased on common sense and Indiana precedent, it is obvious to this Court that a website alone is not an entity capable of being sued." 

The court declined to discuss jurisdiction regarding "Art Uncorked," finding that it was merely the new name of YN Canvas and, as such, it need not be considered separately.  Any references to YN Canvas would also apply to Art Uncorked.

The court then moved to the defendants' 12(b)(6) motions to dismiss for failure to state a claim.  Two counts - trademark infringement under 15 U.S.C. § 1114(1)(a) and use of a counterfeit mark under 15 U.S.C. § 1116(d) - were dismissed.  Each of those claims required a registered mark, which Wine & Canvas conceded it did not have.  However, the court dismissed the counts without prejudice, as the registration of the marks is pending. 

The court next moved to two "counts" - permanent injunction and attachment - and dismissed them summarily as inappropriate pleading.  "Because these remedies are based on causes of actions in other counts within the Wine & Canvas's complaint and are included within the Wine & Canvas's prayer for relief," the court held, "it is unnecessary to dedicate a separate count for each specific remedy."

Defendants next asked the court to dismiss the claim of fraud for failure to meet the heightened standard required for pleading fraud.  As no time frame or location of the alleged fraud had been included in the plaintiff's complaint, the court dismissed the fraud claim without prejudice.

Finally, as with the "counts" for permanent injunction and attachment noted earlier, the court addressed another "count" by Wine & Canvas seeking a declaratory judgment.  Ruling here on the defendants' motion to strike, the court cited Federal Rule of Civil Procedure 12(f) allowing a court to strike "redundant, immaterial, impertinent, or scandalous matter" from any pleading and, again, held that the "count" was redundant, as appropriate remedies would be addressed in the adjudication of the substantive claims, and granted the defendants' motion to strike.

Practice Tip #1: The decision to sue a website is a curious one and seems to be the modern-day equivalent of suing a book.  It is notable that this has, however, happened.  See, e.g., here.  On the one hand, it is an attorney's duty to pursue zealously his clients' interests and, at times, that leads to maintaining a cause of action that is not a "sure thing."  On the other hand, the law is unambiguous that a website is neither a real person nor a legal entity capable of being sued and, thus, it would have been wiser to omit this "defendant."

Continue reading "Wine & Canvas Litigation Narrowed and Clarified by Court" »

Indianapolis; IN - Trademark attorneys for App Press, LLC of Indianapolis, Indiana filed a declaratory judgment suit seeking a declaration that it is not infringing the trademarks of Apress Media, LLC of New York, New York.

App Press, LLC brings action against Apress Media, LLC in order to protect the right to use and continue to conduct business under the registered trademark, and asserts that use of the mark for App Press does not infringe on any trademark held by Apress. App Press is a company that creates, owns, and licenses the use of web-based software that allows consumers to create apps that can be used on mobile devices. According to the Complaint, App Press applied for trademark registration on January 7, 2011 and was registered by the United State Patent and Trademark Office on August 9, 2011. During this period, the trademark was open to opposition on May 24, 2011. Apress Media is a publishing company that edits, publishes and sells books with the focus on technological issues and how-to advice. Apress Media applied for trademark registration on May 7, 2010 and was registered on March 8, 2011. According to App Press, on August 15, 2011, Apress Media sent a cease and desist letter demanding App Press immediately stop the use of their trademark alleging that it infringed on the trademark of Apress and constituted trademark infringement, unfair competition, cyberpiracy and dilution. App Press claims that they forwarded the letter to their counsel who contacted Apress Media's counsel by phone. Almost two weeks passed that counsel for both parties went back and forth via telephone before they were able to confer regarding the issues set forth in the letter in which App Press agreed and sent a letter describing their product and why it was not infringing on Apress Media's trademark. Approximately eight months later, on May 8, 2012, Apress again contacted App Press and again asserted that App Press's use of the App Press trademark was infringing on the Apress trademark. Counsel for App Press has filed the Complaint for declaratory relief and to obtain declaration that App Press's use of their trademark does not infringe upon any trademarks owned by Apress Media.

Continue reading "APP Press Sues Apress Media for Declaration of Non- Infringement of Trademark "App Press"" »

Indianapolis; IN - Trademark attorneys for Dillinger, LLC of Mooresville, Indiana filed a complaint for injunctive relief and damages in alleging The Pour House on Lincoln, Inc. d/b/a Dillinger's Chicago Bar & Grill, Inc. of Chicago, Illinois infringed trademark registration nos. 3,483,359 for the mark DILLINGER'S and no. 4,091,160 for the mark PUBLIC ENEMY which have been registered by the US Trademark Office.

Dillinger, LLC is owned and operated by Jeff Scalf and, according to the Complaint, is the descendant of gentleman bandit John Dillinger. Dillinger, LLC owns numerous trademark registrations for DILLINGER, JOHN DILLINGER, PUBLIC ENEMIES, and many other trademarks related to the life of John Dillinger. Dillinger, LLC is also the owner of all rights, title, and interest to both DILLINGER'S and PUBLIC ENEMIES and both marks have been used in interstate commerce in connection with restaurant and bar services as early as 2002. According to the Complaint, Dillinger, LLC has never authorized The Pour House on Lincoln d/b/a Dillinger's Chicago Bar & Grill to use the DILLINGER or PUBLIC ENEMIES marks in any way and also alleges that in July 2010 it came to their attention that the Defendants were operating a restaurant using the DILLINGER and PUBLIC ENEMIES trademarks. Upon their knowledge of the trademark usage, Dillinger, LLC alleges that The Pour House was contacted about the infringement and in August of the same year they traveled to Indianapolis for the purpose of obtaining a license for the use of the trademarks. The Complaint states that an oral agreement was reached and reduced to writing, but never executed and yet The Pour House willfully continued its infringing usage of the DILLINGER and PUBLIC ENEMIES trademarks, specifically on their website, food and drink menus and the menus posted on the storefront. Dillinger, LLC asserts five counts for the violations of the defendants, including demand for preliminary and permanent injunction; federal trademark infringement; cybersquatting; false designation of origin, false descriptions and unfair competition; and dilution by blurring. In order to avoid any irreparable harm from the loss of reputation the DILLINGER names could suffer as a result of the unauthorized use of the trademarks and the accrual thereof, Dillinger, LLC is seeking to permanently enjoin The Pour House from using the DILLINGER and PUBLIC ENEMIES trademarks or inducing such belief, actual damages suffered as a result of the alleged trademark violations, statutory and exemplary damages, and the profits derived from the infringing activities.

Continue reading "Dillinger Sues Pour House on Lincoln for Trademark Infringement of PUBLIC ENEMY" »

Hammond; IN - Trademark attorneys for Mortar Net of Burns Harbor, Indiana filed a trademark infringement suit in alleging Keene Building Products of Mayfield Heights, Ohio infringed trademark registration nos. 3,571,383 and 3,571,384, which have been registered with the US Trademark Office.

Mortar designs and sells construction products and building materials. One of its products is called Mortar Net and has been sold by the company since 1993 for use in masonry. The mark in question is associated with the Mortar Net product. The Mortar Net's dovetail shape has industry recognition, and the shape has been registered as a trademark. The complaint alleges that Keene is offering products for sale that infringe Mortar's trademarks on Keene's website. Keene's allegedly infringing product is called Keystone. The complaint makes claims of trademark infringement, trade dress infringement, false designation of origin, and unfair competition. Mortar seeks an injunction, an order requiring the destruction of all of Keene's keystone products, damages, attorney fees and costs.

Practice Tip: The trademarked image is simply a black colored shape. It doesn't seem to indicate any particular brand or product. There are likely issues about whether the trademark of the shape can be validly enforced.

Continue reading "Mortar Net USA LTD Sues Keene Building Products Company For Trademark Infringement of Dovetail Shaped Mesh for Masonry" »

Indianapolis; IN - Trademark attorneys for Mainstreet Collection of Washington, North Carolina filed a trademark infringement suit in the Southern District of Indiana alleging that Main Street Collection, LLC and Melissa Card of Fishers, Indiana infringed trademark registration no. 4,034,192 for the mark MSC MAINSTREET COLLECTION registered by the US Trademark Office.

The complaint states that the plaintiff is a successful gift product company that sells crafts, kitchenware, handbags and other gift items at over 6000 gift shops such as Hallmark®. The plaintiff also maintains a website at www.gowhimsey.com and a facebook page. The plaintiff states it has used the MSC mark at issue since at least 2000. The complaint alleges that the defendants also sell gift items. The complaint states that the defendants maintain a website at www.themainstreetcollection.com that utilizes a mark MAINSTREET COLLECTION that is very similar to the plaintiff's. The complaint states that the plaintiff attempted to have the defendants transfer www.themainstreetcollection.com domain name to the plaintiff, but the defendants refused. The complaint states that customers have been contacting the defendants who are actually seeking to do business with the plaintiff. The complaint makes claims of trademark infringement and cybersquatting and seeks an injunction, damages, transfer of the www.themainstreetcollection.com domain name, attorney fees and costs.

Practice Tip: The claim of trademark infringement here is based entirely on maintaining a website. As we have previously blogged, it can be difficult to obtain personal jurisdiction when basing a claim solely on web presence. The plaintiff here, however, has avoided is issue by filing suit in the defendants' home jurisdiction.

Continue reading "The Mainstreet Collection, Inc. Sues Main Street Collection, LLC for Trademark Infringement of MAINSTREET COLLECTION MARK" »