False Designation of Origin

September 25, 2019

Indiana Trademark Litigation: Fanimation, Inc. Sues New Jersey Based Company for Alleged Trademark Infringement

Indianapolis, Indiana – Attorneys for Plaintiff, Fanimation, Inc. of Zionsville, Indiana, filed suit in the Southern District of Indiana alleging that Defendant, Décor Selections, LLC d/b/a Lighting Merchant (“Lighting Merchant”) of Ocean, New Jersey, infringed its rights in United States Trademark Registration No. 2,318,516 for FANIMATION (the “Registered Mark”). Fanimation is seeking injunctive relief, judgment including statutory damages, and attorneys’ fees.

Fanimation claims it owns the Registered Mark for “electric wall mounted fans, electric free-standing floor pedestal fans and electric ceiling fans for non-industrial use.” Further, Fanimation alleges it has been using the Registered Mark, FANIMATION, since at least 1984 and because it has filed all proper paperwork and the Registered Mark has been registered more than five years, the Registered Mark is now “incontestable” pursuant to 15 U.S.C. §1065. According to the complaint, Fanimation sells its fans in a variety of ways through direct sales via its website or showrooms, or through Authorized Dealers. Authorized Dealers have entered into a written Authorized Dealer Agreement (“ADA”) to sell Fanimation fans through specially trained staff. Fanimation claims “original buyers” of its fans from direct sales or those through an Authorized Dealer receive a warranty that is redeemable with proof of purchase, purchase order, or invoice number.

Per the complaint, Fanimation claims Lighting Merchant is and has been selling fans bearing the Registered Mark on its website without authorized use via an ADA. Fanimation claims that Lighting Merchant’s lack of warranty and failure to specially train staff on Fanimation’s products make “the fans sold by Lighting Merchant materially different from the genuine FANIMATION® fans offered by Fanimation and its Authorized Dealers.” Fanimation believes consumers are likely to be confused when purchasing fans from Lighting Merchant as to the source and quality of the fans.

Fanimation allegedly sent a cease and desist letter to Lighting Merchant on or about January 19, 2019. Fanimation believes Lighting Merchant purchases fans from Authorized Dealer(s) and then sells them second-hand. These acts, if true, would breach at least one of the terms of the ADA signed by the Authorized Dealer(s) selling to Lighting Merchant. As such, Fanimation is seeking injunctive relief and seeking damages for trademark infringement, false designation of origin, dilution, unfair competition, and unjust enrichment.

August 29, 2019

Gatorade’s Use of the Term “Sports Fuel” Protected by Fair Use

By Overhauser Law Offices, LLC

Attorneys for Plaintiff-Appellant, SportFuel, Inc. (“SportFuel”), of Chicago, Illinois, originally filed suit against Defendants-Appellees, PepsiCo, Inc. (“Pepsi”) and The Gatorade Company (“Gatorade”) (collectively the “Appellees”), for trademark infringement in the United States District Court for the Northern District of Illinois, Eastern Division. After the District Court granted summary judgment for Gatorade and Pepsi, SportFuel appealed to the United States Court of Appeals for the Seventh Circuit. Circuit Judge Kanne wrote the opinion affirming the grant of summary judgment by the District Court.

SportFuel provides personalized nutrition services to professional and amateur athletes and sells its own brand of dietary supplements. SportFuel registered two trademarks for “SportFuel” the first of which was registered for “food nutrition consultation, nutrition counseling, and providing information about dietary supplements and nutrition.” Pursuant to 15 U.S.C. § 1065, the first registration became “incontestable” in 2013. The second registration for “SportFuel” was for “goods and services related to dietary supplements and sports drinks enhanced with vitamins.”

Gatorade, now a household name, was created in 1965. Although Gatorade is known for its traditional sports drinks, it also sells customizable sports drinks for individual professional athletes and other sports nutrition products. Starting in 2013, Gatorade began describing and marketing its products as “sports fuels” and registered the trademark “Gatorade The Sports Fuel Company” in 2016 with the United States Patent and Trademark Office (“PTO”). During the registration process, “Gatorade disclaimed the exclusive use of ‘The Sports Fuel Company’ after the PTO advised the company that the phrase was merely descriptive of its products.”

July 24, 2019

Indiana Trademark Litigation: Two Members of the Group “Color Me Badd” Face Off Over the Use of the Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiffs, CMB Entertainment, LLC (“CMB”) a limited liability company formed under the laws of the State of Indiana and Bryan Abrams (“Abrams”) of Oklahoma, filed suit in the Southern District of Indiana alleging that Defendants, Mark Calderon (“Calderon”) of Ohio and Pyramid Entertainment Group, Inc. (“Pyramid”) of New York, New York, transacting business in the State of Indiana, infringed CMB’s rights in the federally registered U.S. trademark “COLOR ME BADD” (the “Mark”) and Calderon breached his fiduciary duties. Plaintiffs are seeking a preliminary injunction, damages, treble damages, pre-judgment interest, attorneys’ fees, and costs.

According to the complaint, CMB has two members, Abrams and Calderon, who were also two of the founding members for “Color Me Badd”, (the “Group”) a well-known R&B group. Plaintiffs claim Pyramid conducts business in Indiana as a booking agent which books shows and performances for the Group. Abrams claims he kept the Mark alive during the Group’s hiatus from 2000 to 2009/2010 by performing as Color Me Badd without the other three founding members.

Abrams and Calderon allegedly reformed the Group to perform at a concert in Hawaii in July 2010. A third member, Kevin Thornton (“Thornton”) then allegedly rejoined and the three formed CMB on May 26, 2011 for the business operations of the Group including owning the Group’s intellectual property rights. CMB filed to register the Mark on or about July 22, 2011 and was granted the Serial No. 85,378,693. Plaintiffs claim CMB is the sole owner of the Mark and at the time of formation, each member held an equal one-third interest in the company. While an operating agreement for CMB was drafted in October 2013, according to the complaint, it was never executed.

July 23, 2019

Indiana Trademark Litigation: Indiana-Based Fireworks Distributor Sues for Trademark Infringement of its “Terminator” Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, North Central Industries, Inc. (“North Central”) of Muncie, Indiana, filed suit in the Southern District of Indiana alleging that Defendants, Creative Licensing Center Corporation (“Creative”) of Los Angeles, California, Winco Fireworks, Inc., and Winco Fireworks International, LLC (collectively the “Winco Defendants”), both of Prairie Village, Kansas, infringed its rights in United States Trademark Registration No. 2745764 for the mark “Terminator” (“Registered Mark”). North Central is seeking profits, damages, interest, and reasonable attorneys’ fees.

North Central claims it has been in the business of importing and selling consumer fireworks in Indiana for over 50 years. The complaint asserts that the Registered Mark has been used in commerce since 2000 and that the registration has become incontestable under the Lanham Act, 15 U.S.C. § 1065. According to the complaint, North Central has used the Registered Mark in connection with essential oils since at least May 1, 1998 and, also in connection with consumer fireworks.

The complaint alleges Studiocanal Image S. A. f/k/a +D. A. (“Studiocanal”) filed an opposition to the Registered Mark, but the opposition was withdrawn on January 31, 2003. It was then allegedly dismissed with prejudice on March 31, 2003 by the Trademark Trial and Appeal Board. North Central alleges that the Winco Defendants entered into a licensing agreement with Studiocanal through Studiocanal’s agent, Creative, to use the trademark TERMINATOR. According to the complaint, Creative attempted to demand North Central “cease and desist” its use of the TERMINATOR mark, but the request was withdrawn after North Central’s counsel advised Creative of the Registered Mark’s incontestability status in March 2019. North Central claims it then informed the Winco Defendants of the Registered Mark’s status and demanded they cease and desist their infringing behaviors, which the Winco Defendants did not.

July 3, 2019

Indiana Trademark Litigation: Fort Wayne Transportation Company Seeks Damages for Alleged Trademark Infringement

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, Kettering Moving and Storage, Inc. (“Kettering”) of Dayton, Ohio, infringed its United States Trademark Registrations.

NAVL is seeking preliminary and permanent injunctions, profits, actual damages, costs and attorney’s fees, investigatory fees, and further relief the court deems appropriate.

NAVL claims it has been providing transportation services since 1933 and has been using the marks NORTH AMERICAN and NORTH AMERICAN VAN LINES in connection with those services for many years. According to the complaint, there are seven registered marks at issue in this case. NAVL claims it has licensed companies to act as NAVL Agents including the right to use NAVL’s registered marks, but it has been careful in limiting such licensing activities. NAVL asserts that through its use of its registered marks and the control it maintained in their use through licensing agreements, the registered marks have acquired a secondary meaning.

Per the complaint, Kettering provides moving and storage services throughout the world. NAVL claims it had an agency contract with Kettering prior to July 24, 2018 in which Kettering was allowed to use NAVL’s registered marks. However, NAVL asserts that it terminated that relationship through a letter sent to Kettering on July 24, 2018. After being informed Kettering was still utilizing NAVL’s registered marks, NAVL claims it informed Kettering to cease and desist on February 28, 2019. NAVL claims Kettering disregarded this cease and desist and continues to display NAVL’s registered marks on its vehicles and signs.

June 19, 2019

Indiana Trademark Litigation: Warsaw-Based Medical Company, Zimmer, Inc., Sues for Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiff, Zimmer, Inc. (“Zimmer”) of Warsaw, Indiana, filed suit in the Northern District of Indiana alleging that Defendants, Zimmer MedizinSystems of Irvine, California and Zimmer Elektromedizin GmbH, of Neu-Ulm, Germany, infringed its rights for multiple trademarks, as seen below:

Zimmer is seeking a permanent injunction, damages, costs, and attorneys’ fees.

According to the complaint, Zimmer is a globally trusted brand for its musculoskeletal care and has utilized the mark ZIMMER in connection with its musculoskeletal goods and services since 1927. Zimmer claims it began using the “Z” logo by 2004 and consumers have come to associate the “Z” logo with Zimmer goods and services including those services for sports medicine and podiatry. Zimmer alleges it has a great amount of commercial success and its annual sales are in the billions, with multiple millions of dollars being used for advertising and promotions each year.

Zimmer claims Defendants have offered goods and services relating to cosmetics and aesthetics applications for years, with which Zimmer had no issue. According to the complaint, the issues began when Defendants began using “Zimmer” “Zimmer MedizinSystems” and “Zimmer MedizinSysteme” (the “Unauthorized Marks”) for the treatment of sports and podiatry injuries. Zimmer alleges Defendants have also used a “Z” logo to promote and advertise their goods and services.

June 14, 2019

Indiana Trademark Litigation: Wyliepalooza Ice Cream Emporium Seeks Damages for Trademark Infringement Against B.A.M. Sweets

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Wyliepalooza Ice Cream Emporium, LLC (“Wyliepalooza”) of Indianapolis, Indiana, filed suit in the Southern District of Indiana alleging that Defendants, B.A.M. Sweets, LLC d/b/a Wylie’s of Brownsburg, Indiana, Amanda R. Johnson, and Stephen B. Johnson infringed multiple common law trademarks utilized by Wyliepalooza. Wyliepalooza is seeking preliminary and permanent injunctions, profits, actual damages, costs and attorney’s fees, investigatory fees, and any further relief the court deems appropriate.

According to the Complaint, Wyliepalooza opened its ice cream shops in Indianapolis in 2013 and began operating its ice cream truck in Indianapolis since May 2014. Wyliepalooza claims its common law trademarks include “WYLIE, WYLIEPALOOZA, WYLIEPALOOZA ICE CREAM EMPORIUM and WYLIEPALOOZA ICE CREAM TRUCK” (collectively, the “Wyliepalooza Trademarks”). Wyliepalooza claims its trademarks are immediately identifying within Indianapolis as it has utilized the Wyliepalooza Trademarks throughout the area to advertise and promote its goods and services.

Wyliepalooza claims Defendants, Amanda Johnson and Stephen Johnson (the “Johnsons”), entered into an asset purchase agreement for Wyliepalooza’s ice cream shop in Brownsburg, Indiana in December 2016. With this agreement, Wyliepalooza alleges the assets sold to the Johnsons did not include the Wyliepalooza Trademarks, but gave them a limited right to use “Wyliepalooza Ice Cream Emporium Brownsburg” at that specific location. Wyliepalooza further claims that the agreement had a clause giving Wyliepalooza the right to revoke the limited use of the name if the Brownsburg location received twenty bad reviews in one quarter or the Johnsons operated the business not within the spirit of the Wyliepalooza business model. According to the Complaint, the agreement was intended to be paid off within three years at which time the Johnsons would change the name of the location to “BAM Sweets.”

April 26, 2019

Indiana Trademark Litigation: Super 8 Sues Auburn, Indiana Hotel for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Attorneys for Plaintiff, Super 8 Worldwide, Inc. (“Super 8”) of Parsippany, New Jersey filed suit in the Northern District of Indiana alleging that Defendants, Harvee Properties, LLC (“Harvee”) and Paresh Patel (“Patel”), both of Auburn, Indiana, infringed its rights in United States Trademark Registration Numbers 1602723 for the mark SUPER 8, 3610108 for the mark SUPER 8 & Design (b/w), 3610109 for the mark SUPER 8 & Design (Color), 1951982 for the mark SUPER 8 HOTEL & Plaque Design, and 1128057 for the mark SUPER 8 MOTEL & Design. Super 8 is seeking preliminary and permanent injunction, direct damages, indirect damages, consequential damages, special damages, costs, actual damages, punitive damages, pre-judgment interest, actual costs, and attorney’s fees.

The Complaint asserts that Super 8 is a widely known provider for guest lodging services and that it first used the SUPER 8 MOTEL mark in 1973. Super 8 claims that pursuant to 15 U.S.C. § 1065, all of the marks at issue in this case (the “Super 8 Marks”) have achieved incontestable status. Per the complaint, Super 8 franchises its guest lodging services and allows its franchisees to utilize the Super 8 Marks to promote its brand and allow consumers to identify the origin of its services.

Super 8 claims it entered into a franchise agreement on March 31, 2017 with Amrex Receivers, LLC (“Amrex”) for Amrex to operate a Super 8 facility for twenty years in Auburn, Indiana. The Complaint alleges that Amrex terminated the franchise agreement on December 4, 2017. On or about December 29, 2017, Super 8 claims it sent a letter acknowledging the termination and informing Amrex that it must immediately discontinue use of the Super 8 Marks and remove any items from the premises bearing any Super 8 mark within ten days of receiving the letter.

April 24, 2019

Stronghold Games Sues for Trademark Infringement of Popular Board Game

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Indie Game Studios, LLC, a Delaware Limited Liability Company, d/b/a Stronghold Games LLC of Florida (“Stronghold”), filed suit in the Southern District of Indiana alleging that Defendants, Plan B Games, Inc., a Canadian corporation, and Plan B Games Europe GMBH, a German Company of Hamburg Germany, (collectively “Plan B”) infringed its rights to the Great Western Trail Board Game. The complaint alleges jurisdiction is proper due to Plan B’s presence and activities at the 2018 GenCon convention in Indianapolis, Indiana along with other sales within the District. Stronghold is seeking damages, cost of the action, attorneys’ fees, and all other relief the court may find just and proper.

Stronghold claims it contracted with a German company, eggertspiele GmbH & Co. KG (“eggertspiele”), in 2016 regarding a soon-to be released game to be marketed under the trademark “Great Western Trail.” The complaint alleges Stronghold provided feedback to eggertspiele regarding the English version of the game prior to its finalization and that Stronghold obtained exclusive rights to sell the board game in the English language throughout Canada and the United States. Stronghold claims the term of the agreement was from August 3, 2016 through December 31, 2018, with future successive one-year extensions, which could be cancelled by 3-month written notice.

The complaint alleges that the Great Western Trail name and its distinctive lettering was inherently distinctive as a board game trademark. Stronghold claims because it promoted and sold the Stronghold version of the game throughout the United States, Stronghold became the common law owner of the Great Western Trail Marks (“GWT Marks”) for board games in the United States. Stronghold further claims that because its “Stronghold Games ‘Castle’ logo” was also placed on the game box, the game was associated with Stronghold. According to the complaint, Stronghold expended a significant amount of time, money, and effort to promote and market its Great Western Trail game throughout the United States and Canada.

March 5, 2019

Indiana Trademark/Trade Dress Litigation: Baskin-Robbins Sues Indiana Company for Trademark and Trade Dress Infringement

By Overhauser Law Offices, LLC

Terre Haute, Indiana – Attorneys for Plaintiffs, Baskin-Robbins Franchising LLC, and BR IP Holder LLC (collectively “Baskin-Robbins”), both Delaware limited liability companies, filed suit in the Southern District of Indiana alleging that Defendants, Big Scoops Inc. and David M. Glasgow, Jr., both of Terre Haute, Indiana breached their Franchise Agreement with Baskin-Robbins by failing to pay required fees. By continuing to operate, Defendants are infringing Baskin-Robbins’ trade dress and numerous registered trademarks.

Baskin-Robbins Franchising is in the business of franchising independent businesses and people to operate Baskin-Robbins shops in the United States. The “Baskin-Robbins” trade name, trademark, and service mark are owned by BR IP Holder along with other related marks. Since October 14, 2015, Big Scoops has been the owner and operator of a Baskin-Robbins shop located in Terre Haute, Indiana pursuant to a Franchise Agreement with Baskin-Robbins. David M. Glasgow, Jr. personally guaranteed the obligations of Big Scoops under the Franchise Agreement.

Pursuant to its Franchise Agreement, Big Scoops was granted a license to use the trademarks, trade names, and trade dress of Baskin-Robbins, but only in the manner specified in the Franchise Agreement. The fees due to Baskin-Robbins from Big Scoops under the Franchise Agreement included a franchise fee equal to 5.9% of gross sales of the business, an advertising fee equal to 5.0% of gross sales of the business, late fees, interest, and costs on unpaid monies due under the Franchise Agreement, and all sums owing and any damages, interest, costs and expenses, including reasonable attorneys’ fees, incurred as a result of Big Scoops’ defaults. Under the Franchise Agreement, Big Scoops agreed that nonpayment of any of the required fees would be a default, that failure to pay within seven days after receiving written notice would be a continued default, and that receiving three notices of default within a twelve-month period would result in Baskin Robbins having the right to terminate the Franchise Agreement.

Plaintiffs sent Big Scoop three separate notices that it was in default of the Franchise Agreement for nonpayment on June 19, 2018, October 9, 2018, and December 7, 2018. As a result of these defaults and failure to cure after the December 7, 2018 notice, Baskin-Robbins sent Big Scoop a Notice of Termination with respect to the franchised business on February 12, 2019. Since receiving the Notice of Termination, Defendants have continued to operate the Baskin-Robbins shop and have used the Baskin-Robbins marks without authorization. Baskin-Robbins is claiming breach of contract, trademark infringement pursuant to 15 U.S.C. § 1114, unfair competition pursuant to 15 U.S.C. § 1125(a), and trade dress infringement pursuant to 15 U.S.C. § 1125.