False Designation of Origin

July 27, 2018

Indiana Trademark Litigation: Oakley Sues Indiana Company for Trademark Infringement and Dilution

Indianapolis, Indiana – Attorneys for Plaintiff, Oakley, Inc. of Foothill Ranch, California, filed suit in the Southern District of Indiana alleging that Defendants, Swami Property Sunman Inc., d/b/a Sunman BP of Sunman, Indiana, Chirag Patel, an individual, and Does 1-10 (collectively “Defendants”) infringed its rights in United States Trademarks as seen below:

Plaintiff is seeking judgment against Defendants, preliminary and permanent injunctions, punitive damages, attorneys’ fees, and investigatory fees.

Oakley has been a successful manufacturer and retailer of eyewear since at least 1985. During that time, they have acquired many trademarks including, but not limited to those pictured above (collectively, the “Oakley Marks”). Plaintiff has utilized the Oakley Marks to distinguish their high quality products from those of others and their consumers have come to recognize their distinct marks.

Plaintiff filed this action after discovering counterfeit products bearing infringing Oakley Marks were being offered for sale and/or sold at a gas station with a convenience store operating under the name of “SUNMAN BP.” It is Oakley’s belief that the Defendants are selling and offering for sale these counterfeit products with the intent that they will be mistaken for genuine high quality Oakley eyewear even though the Defendants are not licensees of Oakley nor have they been given the authority to use the Oakley Marks.

July 26, 2018

Indiana Trademark Litigation: Indiana Resident Sued by California Company over Professional Wrestling Trademark Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Attorneys for Plaintiff, Lightning One, Inc. of Sherman Oaks, California, filed suit in the Northern District of Indiana alleging that Defendant, Nicholas P. Harmon of Lake Station, Indiana, infringed its rights in United States Trademark Registration Nos. 4375013 and 4349360 for NATIONAL WRESTLING ALLIANCE, and Trademark Registration No. 5418415 for the Logo associated with NATIONAL WRESTLING ALLIANCE. All of these registered marks will be referred to collectively as the “NWA Marks.” Plaintiff is seeking a permanent injunction, an accounting and judgment, treble damages, punitive damages, and costs including attorneys’ fees.

Lightning One has been involved in the professional wrestling world for seventy years with its NWA Marks being used in interstate commerce as early as 1948. They allege that not only do they have the rights in the federally registered trademarks, they also have strong common law rights based off their prior use. Plaintiff discovered that Harmon was posting videos and other social media content claiming to be “The Real NWA World’s Heavyweight Champion” and “The People’s NWA World’s Heavyweight Champion” in April 2018. Harmon also utilized a logo to promote his services that was allegedly intended to be confusingly similar with that of the registered NWA logo.

After discovering the infringing content, Lightning One sent Harmon a cease and desist letter. Instead of complying with the letter, Harmon posted his interactions with Lightning One on social media and continued using the NWA Marks. A further demand letter sent by Lightning One was also not complied with. In fact, Defendant made a Facebook post saying that he was intending on selling t-shirts using the mark N.W.A shortly after the letter. While he claims it was for his favorite rap group of the same initials, the background of this case seems to show differently.

July 11, 2018

Indiana Trademark Litigation: Indiana Based Moving Company Sues Florida Company for Trademark Infringement and Cybersquatting

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Attorneys for Plaintiff, North American Van Lines, Inc. (“NAVL”) of Fort Wayne, Indiana filed suit in the Northern District of Indiana alleging that Defendant, North America Moving & Storage, Inc. of Miami Beach, Florida infringed its rights in United States Trademark Registration No. 917,431 for the mark “NORTHAMERICAN”. Plaintiff is seeking damages, exemplary damages, punitive damages, attorney’s fees, pre-judgment and post-judgment interest.

Counts one and two of the Plaintiff’s Complaint allege Federal Trademark Infringement and Federal Unfair Competition, both under the Lanham Act. Plaintiffs allege that the Defendant’s use of “NORTH AMERICA” and “NORTH AMERICA MOVING SYSTEMS” (“Infringing Marks”) has caused and will continue to cause confusion, deception, and mistake by giving the impression that the Defendant’s services originate from the Plaintiff or are associated with the Plaintiff. Further, Plaintiffs claim there has been actual consumer confusion as to the source of transportation services sold and advertised by the Defendant. NAVL also asserts that Defendant has taken part in multiple deceptive acts including making false representations, false descriptions, and false designations of origin of its services, providing for unfair competition.

Count three claims that Defendant registered and is using the northamericamoving.com domain name in bad faith under the Anticybersquatting Consumer Protection Act. NAVL alleges that Defendant is using the name without their permission and that Defendant’s intent in registering and using the domain name was and is to divert consumers from NAVL’s own websites. Count four of the Complaint alleges Indiana Trademark Infringement for Defendant’s use of a reproduction, colorable imitation, or copy of NAVL’s marks in connection with the sale, or offer of, distribution, and advertising of goods and services. Finally, Count five alleges Common Law Unfair Competition for consumer confusion and deception by Defendant’s use of the Infringing Marks.

May 4, 2018

Indiana Trademark Litigation: Indiana-Based Simon Property Sued Over Leggings Trademarks

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Muscle Flex, Inc. of Los Angeles, California filed suit in the Southern District of Indiana alleging that Defendants, Simon Property Group, L.P, and Simon Property Group, Inc., both Delaware corporations; Matt Murat Dagli, an individual who resides in Texas and owner of New Purple LLC, a Texas limited liability company, infringed its rights in United States Trademark Registration No. 4,188,135 for “WORLD OF LEGGINGS.” Plaintiff is seeking damages, judgment of infringement, an injunction on the Defendant’s use of the trademark, and recall and destruction of all infringing items.

Plaintiff is a California-based corporation that operates retail stores that specialize in women’s leggings and clothes. These items are marketed under the name “World of Leggings.” According to the complaint, the Plaintiff has invested considerable time and money into developing the World of Leggings brand.

April 30, 2018

Indiana Trademark Litigation: Indiana ATV Manufacturer ASW, LLC Sues Canada Company Over Trademarks

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Attorneys for Plaintiff, ASW, LLC of Columbia City, Indiana filed suit in the Northern District of Indiana alleging that Defendant, Frederick Bisson, of Edmonton, Alberta, Canada infringed its rights in United States Trademark Registration Numbers 3,556,429 for “American SportWorks”, and 5,138,550 for “American LandMaster”. Plaintiff is seeking damages, attorneys’ fees, costs and disbursements, pre-judgment and post-judgment interest, and all other relief just and proper.

Plaintiff is an Indiana-based manufacturer of recreational off-road vehicles, ATVs, UTVs, and go-karts. According to the complaint, Defendant is a Canadian citizen and the owner of the website www.americansportworksparts.com.

March 21, 2018

Italian-Based Luxury Eyewear Manufacturer Files Suit Against Indiana Businesses Alleging Infringement of Rayban Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Luxottica Group S.p.A of Mason, Ohio and Oakley, Inc., of Foothill Ranch, California filed suit in the Southern District of Indiana alleging that Defendants, Avni Petroleum, Inc. d/b/a Delaware BP of Osgood, Indiana, Pari, Inc. d/b/a Batesville Food Mart of Batesville, Indiana, Rani Petroleum, Inc. d/b/a Batesville Shell, and Sai Petroleum Inc. d/b/a New Point Food Mart of New Point, Indiana infringed its rights in United States Trademark Registration Nos. 650,499, 1,093,658, 1,726,955, 1,080,886, 1,490,305, 2,718,485, 1,320,460, and 3,522,603 all with the Owner of Luxottica Group S.p.A. Oakley, Inc., is the owner of Trademark Registration Nos. 1,521,599, 1,984,501, 1,990,262, 3,331,124, and 3,365,728. Plaintiff is seeking injunctive relief, judgment including statutory damages and attorneys’ fees.

Luxottica is an Italian-based corporation that manufacturers and sells luxury eyewear under the “Ray-Ban” trademark. Oakley is a subsidiary of Luxottica that also produces high-end eyewear under the “Oakley” name.

November 27, 2017

New York Trademark Litigation: Indiana-Based AM General Sues Activision over Call of Duty Videogame

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, AM General LLC, of South Bend, Indiana filed suit in the Southern District of Indiana alleging that Defendants, Activision Blizzard, Inc., and Activision Publishing, Inc., both of Santa Monica, California and Major League Gaming Corp., of New York, New York; infringed its rights for the Trademark Registrations of HUMVEE and HMMWV and the trade dress of its HUMVEE brand vehicles. Plaintiff is seeking compensatory damages, punitive damages, corrective advertising, attorneys’ fees and costs, and prejudgment and post judgment interest.

Plaintiff alleges that Defendant’s series of Call of Duty videogames have consistently infringed by incorporating and allowing players to control vehicles in-game that, allegedly, infringe on Plaintiff’s real-life protected marks. In the complaint, Plaintiff points to various in-game levels that require the player to control a vehicle that allegedly copies the registered trade dress elements, and other moments in the game where the player sees or interacts with vehicles resembling Humvees. Plaintiff also notes in-game dialogue and marks written on the vehicles that mention “Humvee” specifically.

April 10, 2017

Indiana Trademark Litigation: IHOP and Applebee’s Sued on Allegations of Infringement of Splenda Trademarks

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Heartland Consumer Products LLC and TC Heartland LLC, of Carmel, Indiana filed suit in the Southern District of Indiana alleging trademark and trade dress infringement, dilution and unfair competition under the Lanham Act, the Indiana State Trademark Act, and the common law of the State of Indiana.

At issue are trademarks covering Splenda®-brand sweetener, which has been approved for use in over 80 countries and used in more than 4000 products globally. In this Indiana litigation, Heartland claims that some or all of the following trademarks have been infringed: 1544079, 3346910; 4172135, 4165028, 4301712, 4172136, 4165029,4122311, 4187229, 4202774, 4230392, 4238101, 4106164, 4664653, and 4744600. These trademarks have been registered with the U.S. Patent and Trademark Office. In addition, Heartland claims ownership of the following pending applications for United States Trademark Registration Serial Nos. 86865337, 87012521, and 87010504.

Defendants in the lawsuit are DineEquity, Inc., Applebee’s Franchisor LLC, Applebee’s Restaurants LLC, Applebee’s Services, Inc., International House of Pancakes, LLC f/k/a International House of Pancakes, Inc., IHOP Franchising LLC, IHOP Franchise Company, LLC and IHOP Franchisor LLC. Plaintiff asserts that all Defendants have a principal place of business in Glendale, California. They are accused of leading customers to believe that they offer Splenda-brand sweetener when they do not. Plaintiff contends that instead of American-made Splenda, the product offered to the customers is, in fact, “a lower-quality product of China.”

Indiana trademark attorneys for Heartland sued in federal court. They assert:

Count I: Common Law Trademark Infringement and Trademark Infringement under 15 U.S.C. § 1114(1)
Count II: False Designation of Origin under 15 U.S.C. § 1125(a)
Count III: Unfair Competition
Count IV: Trademark Dilution under 15 U.S.C. § 1125(c)
Count V: Trademark Dilution under I.C. 24-2-1-13.5
Count VII [sic]: Preliminary and Permanent Injunctive Relief
Count VIII: Corrective Advertising Damages

Plaintiff asks the court for injunctive relief, costs and attorneys’ fees. They also seek various types of damages, including actual, statutory, punitive and treble damages.

March 24, 2017

Indiana Trademark Litigation: Bosch Accuses Indiana Man of Counterfeiting

By Overhauser Law Offices, LLC

Hammond, Indiana – Robert Bosch, GmbH of Stuttgart, Germany and Robert Bosch, LLC of Broadview, Illinois sued in the Northern District of Indiana alleging trademark counterfeiting, trademark infringement, false advertising and unfair competition.

At issue in this Indiana lawsuit are the following trademarks, which have been registered with the U.S. Patent and Trademark Office:

MARK

REG. NO

REG. DATE

BOSCH

1,637,401

Mar. 12, 1991

633,563

Aug. 28, 1956

Defendants in the litigation are Joshua Rayner of Portage, Indiana as well as ten unnamed “Doe” Defendants. They are accused of “advertising, offering for sale and sale of counterfeit automotive parts” that bear unauthorized copies of Bosch trademarks.
Indiana trademark attorneys for Plaintiffs list the following claims in this federal lawsuit:

Count I: Trademark Counterfeiting in Violation of Sections 32 and 34(d)(1)(B) of the Lanham Act
Count II: Trademark Infringement in Violation of Section 32 of the Lanham Act
Count III: Unfair Competition in Violation of Section 43(a) of the Lanham Act
Count IV: False Advertising in Violation of Section 43(a) of the Lanham Act

Plaintiffs seek injunctive and monetary relief, including statutory damages, treble damages and attorneys’ fees.

March 10, 2017

Indiana Trademark Law: Court Rules for Winnebago on Trade Dress Claims

By Overhauser Law Offices, LLC

South Bend, Indiana – Judge Robert L. Miller, Jr. of the Northern District of Indiana dismissed claims concerning trade dress infringement.

In this Indiana trademark lawsuit, Forest River, Inc. of Elkhart, Indiana sued Winnebago Industries, Inc. of Forest City, Iowa and its subsidiary Winnebago of Indiana, LLC alleging trademark infringement, trade dress infringement, unfair competition, false designation of origin, and false and misleading representations.

Overhauser Law Offices, LLC filed a partial motion to dismiss with the court, arguing that Forest River had neither sufficiently identified the features that constituted the claimed trade dress nor provided any factual support for its assertion that such features were non-functional.

The court noted that “to survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678. The claim is deemed plausible if “the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id.

In this litigation, such a showing required that Forest River define its trade dress. It must also plead sufficient facts to show that the claimed trade dress is nonfunctional, has acquired secondary meaning and that a likelihood of confusion exists between its trade dress and Winnebago’s trade dress.

The court agreed with Winnebago, concluding that Plaintiff had relied on “conclusory and meaningless” assertions in its pleadings. Consequently, it granted Winnebago’s motion and dismissed without prejudice Forest River’s claims concerning trade dress infringement under the Lanham Act, 15 U.S.C. §1125(a) as well as similar claims made under common law.

Overhauser Law Offices represented Winnebago in obtaining this successful order dismissing the trade dress claims.