Articles Posted in Indiana State Law

Indianapolis, Indiana – The Indiana Court of Appeals affirmed the judgment of the Marion Superior Court in litigation between two civil engineering firms, Plaintiff American Structurepoint Inc. and Defendant HWC Engineering Inc.  Three former employees of ASI, also listed as Defendants in the trial court, were listed in this appeal.

This dispute arose in 2014 when ASI employee Martin Knowles left ASI to join HWC as its vice president of operations.  Jonathan Day and David Lancet also left ASI to begin employment at HWC.

These former ASI employees had entered into noncompetition and non-solicitation agreements with ASI.  Despite these agreements, ASI contended in a lawsuit filed in Indiana state court that its former employees engaged in various acts prohibited by the agreements.  ASI claimed that Day had created a list of ASI employees whom he believed might be interested in leaving to join HWC.  ASI also asserted that Day subsequently shared that list with Knowles and called various ASI employees regarding employment with HWC.  ASI alleged that a total of six job offers were made by HWC to ASI employees.  ASI further introduced evidence that Knowles engaged in prohibited business-development activities with ASI clients to ASI’s detriment.

Fort Wayne, Indiana – Super 8 Worldwide, Inc. f/k/a Super 8 Motels, Inc. of Parsippany, New Jersey sued in the Northern District of Indiana alleging trademark infringement and other wrongdoings.

Plaintiff Super 8 operates a franchise system for guest lodging.  It claims ownership to the SUPER 8® service mark as well as various related trade names, trademarks and service marks, some of which have been registered with the U.S. Patent and Trademark Office.  It estimates the value of the entity’s goodwill to exceed hundreds of millions of dollars.

In this Indiana intellectual property lawsuit, Super 8 alleges that former franchisees have violated the terms of a franchise agreement entered into with Super 8.  Three Indianapolis Defendants were listed: Auburn Lodging Associates, LLP (“ALA”), Kokila Patel and Dilip Patel.  A fourth Defendant Chicago Capital Holdings, LLC (“CCH”) of Hinsdale, Illinois was also named.

Indianapolis, Indiana – Plaintiffs Acushnet Company of Fairhaven, Massachusetts, Roger Cleveland Golf Company, Inc. of Huntington Beach, California and Dunlop Sports Co. Ltd. of Hyogo, Japan filed a trademark lawsuit in the Southern District of Indiana.  This intellectual property litigation, commenced by an Indiana trademark litigator for Plaintiffs, was filed against both an individual and a business entity.

Listed as Defendants in this lawsuit are Giorgio Nunns a/k/a George Nunns a/k/a Georgie Nunns a/k/a Giorgio, an individual, and Custom Golf Solutions, LLC, individually and jointly, doing business under the names “bogie’s nearly new golf,” “gnunns81” and “golfcustomsolutions15.”  Defendants operate in Indianapolis and Carmel, Indiana.

Defendants are accused of engaging in the sale of counterfeit products and infringing upon Plaintiffs’ trademarks.  The following trademarks, to which Acushnet claims ownership and/or an exclusive license, are at issue:

Trademark Registration No. Registration Date Class/Goods
 Tiltleist 1,155,766 26 May 1981 IC 28: golf equipment, namely golf balls, golf clubs and golf bags.
 T 3,376,961 5 February 2008 IC 24: golf towels

IC 25: golf clothing, namely jackets, shirts, hats and visors.

IC 28: golf equipment, namely golf putters, golf club head covers, golf club grips and divot tools.

 crown 2,620,432 17 September 2002 IC 28: golf clubs and accessories, namely golf tees, golf gloves, golf bags, golf putters, golf drivers, golf woods, golf irons, golf green repair tools, golf club covers and golf bag covers.
 ScottCameron 3,421,373 6 May 2008 IC 28: golf equipment, namely golf bags.

Further, Plaintiff Cleveland Golf asserts ownership of the following federal trademarks, also at issue in this lawsuit:

Trademark Registration No. Registration Date Class/Goods
 cleveland 2,070,051 10 June 1997 IC 18: carry all bags and umbrellas

IC 25: golf apparel, namely shirts, caps, visors, sweatshirts, and sweater vests.

IC 28: golf clubs, golf club heads, golf club shafts, golf club grips, golf bags, golf bag covers, and golf club head covers.

 cg 2,302,251 21 December 1999 IC 28: golf clubs, and golf club heads, namely woods, irons, and putters.

Plaintiffs state that Defendants are “manufacturing, promoting and otherwise advertising, distributing, selling, and offering for sale…golf clubs and golf accessories…which are counterfeits and/or infringements” of Plaintiffs’ trademarks.  Plaintiffs further contend that Defendants’ goods are of a “different quality” from Plaintiffs’ “high quality products.”

Plaintiffs assert that Defendants’ acts damage Plaintiffs’ brands and constitute a fraud upon the public.  The claims in this lawsuit, brought in Indiana federal court, are as follows:

  • Count I: Trademark Counterfeiting
  • Count II: Trademark Infringement
  • Count III: False Designation of Origin Pursuant to § 43(a) of the Lanham Act
  • Count IV: Common Law Trademark Infringement
  • Count V: Civil Action under Indiana Code § 34-24-3-1 for Recovery of Damages, Costs, and Fees Arising from Defendants’ Conversion in Violation of Indiana Code § 35-43-4-3
  • Count VI: Civil Action under Indiana Code § 34-24-3-1 for Recovery of Damages, Costs, and Fees Arising from Defendants’ Forgery in Violation of Indiana Code § 35-43-5-2(b)
  • Count VII: Civil Action under Indiana Code § 34-24-3-1 for Recovery of Damages, Costs, and Fees Arising from Defendants’ Counterfeiting in Violation of Indiana Code § 35-43-5-2(a)
  • Count VIII: Civil Action under Indiana Code § 34-24-3-1 for Recover [sic] of Damages, Costs and Fees Arising from Defendants’ Theft in Violation of Indiana Code § 35-43-4-2
  • Count IX: Civil Action under Indiana Code § 34-24-3-1 for Recovery of Damages, Costs and Fees Arising from Defendants’ Criminal Mischief in Violation of Indiana Code § 35-43-1-2

Plaintiffs ask the court for statutory damages of $2 million for each counterfeit as well as injunctive relief, costs and attorneys’ fees.

The case was assigned to District Judge Richard L. Young and Magistrate Judge Tim A. Baker in the Southern District and assigned Case No. 1:16-cv-03379-RLY-TAB.

Evansville, Indiana – Richard Litov of Evansville, Indiana sued Freedom Heritage Museum, Inc., of Evansville, Indiana alleging trademark infringement.  Litov asserts claims under both federal and Indiana law.

Litov claims that he conceived the idea for the museum – a collection of exhibits and artifacts from the World War II era – as well as the museum’s name, stating that he served as its founding president and a founding board member.  He asserts that the museum used the trademarked name pursuant to permission that he granted “as president and board member” of the museum.

The trademark in question has been registered under Litov’s name as U.S. Trademark Registration No. 4,939,292.  Litov states in his complaint that the registration covers the words FREEDOM HERITAGE MUSEUM and an associated design.  The word portion of the trademark, as listed by the U.S. Patent and Trademark Office’s website, is FREEDOM HERITAGE MUSEUM, EST. 2012, EVANSVILLE INDIANA.  The application for the trademark registration was filed on July 6, 2015 and granted on April 19, 2016.

Indianapolis, Indiana – Plaintiff Heartland Consumer Products LLC of Carmel, Indiana filed an intellectual property lawsuit in the Southern District of Indiana alleging trademark and trade dress infringement, trademark dilution and unfair competition under the Lanham Act, as well as related wrongdoing under the Indiana State Trademark Act, the common law of the State of Indiana and the Indiana Crime Victims Act.  The intellectual property at issue pertains to Splenda®, a Heartland trademark under which it offers sucralose, a low-calorie sweetener.

Defendants in the litigation are Dunkin’ Brands, Inc. and Dunkin’ Donuts Franchised Restaurants LLC of Canton, Massachusetts.  They are accused of “deceiving customers into believing the Dunkin’ Donuts restaurants carry Splenda® Brand Sweetener,” by both tacitly and affirmatively misrepresenting that the non-Splenda sucralose product that the Dunkin’ Defendants offer is, in fact, Heartland’s Splenda.  Plaintiff contends that consumers were confused about whether the sweetener that the Dunkin’ Defendants offered was Splenda and that some have complained that adding the other sweetener to their Dunkin’ Donuts products imparted a “funny taste.”

Defendants discontinued their agreement to purchase and offer Heartland’s Splenda in April 2016.  According to the Indiana complaint, following that decision, Defendants began offering sweetener in yellow packets similar to the single-serving packets in which Splenda is offered to the public.  Plaintiff contends that, when asked, Defendants in a “clear majority of stores affirmatively represented, through their agents or employees, that non-Splenda® sucralose sweetener was instead Splenda® Brand Sweetener.”  Plaintiff further contends that Dunkin’ Defendants are misappropriating Plaintiff’s trademarked “Sweet Swaps®” by the use of a similar term “Smart Swaps.”

In this complaint, filed by Indiana trademark attorneys for Plaintiff, the following causes of action are alleged:

  • 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 states that the following registered trademarks and pending trademark applications are implicated in this trademark lawsuit:

Mark Registration Number
SPLENDA 1544079
SPLENDA 3346910
SPLENDA – Design plus words, etc. 4172135
SPLENDA – Design plus words, etc. 4165028
SPLENDA – Design plus words, etc. 4301712
SPLENDA – Design plus words, etc. 4172136
SPLENDA – Design plus words, etc. 4165029
SPLENDA – Design plus words, etc. 4122311
SPLENDA – Design plus words, etc. 4187229
SPLENDA – Design plus words, etc. 4202774
SPLENDA – Design plus words, etc. 4230392
SPLENDA – Design plus words, etc. 4238101
SPLENDA – Design plus words, etc. 4106164
SPLENDA LIVING 4664653
CUANDO PIENSES EN AZUCAR, USA SPLENDA 4744600
Pending Applications Serial Number
THINK SUGAR, USE SPLENDA 86865337
SWEET SWAPS Splenda 87012521
SPLENDA ZERO 87010504

Plaintiff seeks damages, including punitive damages, as well as injunctive relief, costs and attorneys’ fees.

The case was assigned to District Judge Sarah Evans Barker and Magistrate Judge Mark J. Dinsmore in the Southern District of Indiana and assigned Case No. 1:16-cv-03045-SEB-MJD.

 

Indianapolis, Indiana – Plaintiff Delicato Vineyards of Manteca, California filed a lawsuit in the Southern District of Indiana alleging trademark infringement and other wrongdoing. Defendant is Gnarly Grove Cider Co. of Columbus, Indiana.

Plaintiff Delicato claims ownership to two trademarks, U.S. Trademark Registration No. 3165707 for GNARLY HEAD, and U.S. Trademark Registration No. 4777145 for a design trademark. It offers Gnarly Head wine products for sale using these trademarks.

Defendant Gnarly Grove recently launched Gnarly Grove hard cider. Plaintiff contends that both the name and the trade dress of this product are confusingly similar to its Gnarly Head wine. It asserts that the similarities appear to be an intentional effort on the part of Defendant to capitalize on the reputation of the GNARLY HEAD brand.

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In this lawsuit, filed by Indiana trademark attorneys for Delicato, the following causes of action are alleged:

• Registered Trademark and Trade Dress Infringement -15 U.S.C. § 1114(1)
• False Designation of Origin -15 U.S.C. § 1125(a)

• Common Law Unfair Competition

Plaintiff is seeking equitable relief, damages, costs and attorneys’ fees.

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Indianapolis, Indiana – Trademark attorneys for Plaintiff The American Automobile Association, Inc. (“AAA”) filed a trademark lawsuit in the Southern District of Indiana. Two Bloomington Defendants are named, AAA Automotive Parts and Michael Waller, the company’s owner. Defendants also do business as AAA Automotive & Truck Parts, and Waller Automotive Group d/b/a AAA Automotive Parts.

AAA, a not-for-profit corporation, offers “travel and automobile products and services (including automobile repair services at its AAA Car Care Centers and through AAA Approved automobile repair businesses), financial advice, insurance and warranty coverage, and discounts.”

Defendants own and run a website, TRIPLEAPARTS.COM, on which they advertise automobile-related goods and services. Defendants also have brick-and-mortar shops in Indianapolis and Griffith, Indiana as well as locations in Missouri and Florida.

In this Indiana trademark lawsuit, lawyers for AAA listed the following causes of action:

• Count I: Federal Trademark Infringement in Violation of Section 32 of the Lanham Act
• Count II: Federal False Designation of Origin and Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Count III: Federal Trademark Dilution in Violation of Section 43(c) of the Lanham Act
• Count IV: Cybersquatting Under Section 43(d) of the Lanham Act
• Count V: Trademark Dilution Under Ind. Code § 24-2-1-13.5
• Count VI: Trademark Infringement Under Ind. Code § 24-2-1-13

• Count VII: Unfair Competition and Trademark Infringement Under Common Law

AAA, which claims ownership to over 100 trademarks, contends that the following trademarks are at issue in this lawsuit:

Reg. No. 829,265

AAA Mark, used in connection with a
variety of automobile association services and emergency roadside services

Reg. No. 2,158,654

AAA & Design Mark, used in
connection with a variety of automobile association services and emergency roadside
services

Reg. No. 3,316,227

AAA & Design Mark, used in
connection with “[i]ndicating membership in a(n) automobile membership
club”

Reg. No. 1,168,790

TRIPLE A Mark, used in connection
with a variety of automobile association services

Reg. No. 3,046,904

AAA Mark, used in connection with
repair services

Reg. No. 3,046,905

AAA & Design Mark, used in
connection with repair services

Reg. No. 3,102,319

AAA & Design Mark, used in
connection with vehicle parts

Reg. No. 5,036,379

AAA Mark & Design, used in
connection with a variety of automobile association services and emergency
roadside services

Reg. No. 1,449,079

AAA APPROVED AUTO REPAIR & Design
Mark, used in connection with automobile repair services

Reg. No. 3,604,164

AAA TOTAL REPAIR CARE Mark, used in connection
with auto diagnosis and repair services

AAA seeks damages and asks that those damages be trebled pursuant to 15 U.S.C. § 1117 and Indiana law. It also seeks equitable relief, costs and attorneys’ fees.

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South Bend, Indiana – Patent lawyers for Plaintiff Swagway, LLC of South Bend, Indiana sued Defendants Hangzhou Chic Intelligent Technology Co., Ltd. (“Chic”) of Hangzhou, People’s Republic of China, Jansco Marketing, Inc. of Pembroke, Massachusetts and COKeM International, Ltd. of Shakopee, Minnesota.

Swagway and Chic both sell self-balancing two-wheeled boards, also known as “hoverboards,” in the U.S. market. The two companies had an intellectual property dispute, with Chic alleging that Swagway infringed two of its patents. This dispute allegedly included letters sent by Chic that appeared to threaten Swagway’s business partners with litigation if they sold Swagway products that Chic alleged were infringing. Swagway also contends that Chic delayed Swagway’s goods by falsely alleging infringement to Chinese customs officials. It also states that Chic later issued a press release falsely stating that Swagway’s goods had been seized as infringing. When the dispute persisted, Chic sued Swagway in the Northern District of California on allegations that Swagway had infringed U.S. Patent No. 9,376,155 and U.S. Design Patent No. D737,723.

Swagway responded in part by filing a second federal lawsuit in the Northern District of Indiana. In its Indiana complaint, it accuses Chic and its agents, including Jansco and COKeM, of having made “numerous false and misleading statements” to Swagway’s retailers and customers regarding Swagway, its hoverboards, as well as the patent rights that Chic alleged in the California litigation. Plaintiff contends that “Defendants made these statements for the sole purpose of causing harm to Swagway’s business and preventing fair competition.” Swagway also contends that Chic withheld material information from the U.S. Patent and Trademark Office and that, consequently, the registration of several patents was improper.

In its Indiana lawsuit, patent attorneys for Plaintiff assert the following claims:

• Count I: Unfair Competition under the Lanham Act
• Count II: Unfair Competition under Indiana State Law
• Count III: Tortious Interference with Business Relationships

• Count IV: Defamation

Plaintiff has requested damages of no less than $30 million and also includes a prayer for punitive damages. Plaintiff further seeks equitable relief as well as reimbursement of costs and attorneys’ fees.

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South Bend, Indiana – Copyright lawyers for Plaintiff The Art of Design, Inc. of Elkhart, Indiana filed an intellectual property lawsuit in the Northern District of Indiana. Defendants in this Indiana lawsuit are Pontoon Boat, LLC d/b/a Bennington and Bennington Marine of Elkhart, Indiana and Hawkeye Boat Sales, Inc. of Dubuque, Iowa.

Plaintiff is in the business of custom airbrushing, including the airbrushing of copyrighted art works onto different surfaces. Defendants offer marine goods, including pontoon boats. In 2011, Plaintiff and Bennington entered into an agreement wherein Bennington paid Plaintiff to apply copyrighted graphics, titled “Shatter Graphics,” to a limited number of Bennington’s pontoon boats in exchange for payment.

Plaintiff contends that, following this authorized application of Shatter Graphics to Defendants’ pontoon boats, Defendant made further use of the copyrighted design without Plaintiff’s authorization.

In this Indiana litigation, Plaintiff makes several allegations, including accusing Defendant of copyright infringement for the sale of pontoon boats bearing graphics “that are copied from and substantially similar to” Plaintiff’s Shatter Graphics, which has been registered with the U.S. Copyright Office under Registration numbers VA 1-979-388 and 1-982-002. The lawsuit lists the following claims for relief:

• Count I – Breach of Contract against Bennington
• Count II – Unjust Enrichment against all Defendants
• Count III – Copyright Infringement against all Defendants
• Count IV – Unfair Competition against all Defendants
• Count V – Inducing Copyright Infringement against Bennington

• Count VI – Violations of DMCA, 17 U.S.C. § 1202

Plaintiff is seeking damages, including treble damages, as well as equitable relief, costs and attorneys’ fees.

Practice Tip: Plaintiff’s copyright attorneys also represent frequent litigant Design Basics. We have blogged about Design Basics’ Indiana copyright litigation before. See:

Design Basics Sues Fort Wayne Homebuilders
Creator of Architectural Designs Files Two New Copyright Lawsuits
Design Basics Files Three New Indiana Copyright Lawsuits
Architecture Firms File Four New Infringement Lawsuits
Design Basics Files Two New Copyright Lawsuits
Architecture Firm Files New Lawsuit Asserting Infringement
Design Basics Files Two Additional Infringement Lawsuits in the Northern District
Design Basics Files Additional Indiana Lawsuit

Design Basics Sues Builders and Others Alleging Infringement of Copyrighted Architectural Designs

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Indianapolis, Indiana – Trademark attorneys for Eli Lilly and Company of Indianapolis, Indiana and Novartis Tiergesundheit AG of Basel, Switzerland filed a lawsuit in the Southern District of Indiana alleging trademark infringement and unfair competition.

Plaintiffs offer pet medications, such as flea-control and heartworm treatments, for sale in the U.S. and other countries worldwide. Among these medications are the following trademarked products, which have been registered by the U.S. Patent and Trademark Office:

ELANCO, registration number 710,473
COMFORTIS, registration number 3,370,168
INTERCEPTOR, registration number 2,015,850
CAPSTAR, registration number 2,510,863

TRIFEXIS, registration number 3,944,743

Plaintiffs allege that Defendants Scott Martin d/b/a Best Value Pet Supplies of Queensland, Australia and various unknown “Doe” Defendants infringed the trademarks at issue by selling in the U.S. trademarked products that were intended for sale in other countries via their website, www.bestvaluepetsupplies.com.

Plaintiffs contend that these products are materially different from products intended for sale in the U.S., citing differences such as different units of measure as well as non-U.S. addresses and telephone numbers listed on packaging as contact information.

In this Indiana trademark lawsuit, the following counts are alleged:

• Count I: Trademark Infringement in Violation of Section 32 of the Lanham Act
• Count II: Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Count III: Unfair Competition in Violation of Indiana Common Law

Plaintiffs contend that Defendants’ conduct was willful and ask the court to order equitable relief, as well as the payment of compensatory and punitive damages, attorneys’ fees and costs of this litigation.

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