Articles Posted in Trade Dress

The U.S. Court of Appeals for the Seventh Circuit affirmed the district court’s ruling that Flexible Steel Lacing Co.’s (“Flexco”) trade dress is invalid because it is functional.

Flexco originally filed suit in the Northern District of Illinois, Eastern Division for trade dress infringement and unfair competition against Conveyor Accessories, Inc. (“CAI”). CAI counterclaimed seeking cancellation of Flexco’s trademarks and seeking declaratory judgment of invalidity, unenforceability, and noninfringement. The district court granted summary judgment in favor of CAI, finding that Flexco’s trade dress was functional because the product’s utilitarian advantages were disclosed in an expired utility patent, internal corporate documents, and advertising materials.

This case was before Chief Judge, Diane Wood, Judge Joel Flaum and Judge Kenneth Ripple assigned Appeal No. 19-2035 and was decided April 7, 2020.

Indianapolis, Indiana –Boiling Crab Franchise Co., LLC (“The Boiling Crab”), the Plaintiff, filed two separate complaints for trademark infringement and unfair competition alleging similar facts. The first complaint was filed against Defendant The Mad Crab LLC d/b/a The Boiling Crab, Crawfish & Shrimp (“The Mad Crab”). The second complaint was filed against CC Food Enterprise LLC and KC Groups Inc. (collectively “The Boiling Seafood”). According to the complaints, The Boiling Crab owns four relevant U.S. trademarks for “The Boiling Crab” in various styles with Registration Nos. 3,256,219, 4,174,077, 4,491,054, and 5,374,534.

The Boiling Crab franchise, started in California in 2004, has allegedly grown to include locations throughout California and at least four other states. According to the complaints, the Louisiana-style seafood served by The Boiling Crab and the distinctive restaurant décor and menus create a one-of-a-kind dining experience. The Boiling Crab also claims unique trade dress rights in the look and feel of its restaurants.

Continue reading

Indianapolis, Indiana – KS Equity Company, LLC (“KS”), the Plaintiff, operates a convenience store, Leo’s Market and Eatery (the “Leo’s Store”) in Indianapolis, Indiana. KS claims to own and use the following U.S. Trademark Reg. Nos. 5886802, 5886803, 5892871, and 5962680 (collectively, “Leo’s Trademarks”) in connection with the Leo’s Store. According to the Complaint, KS has also developed trade dress in the unique design elements of the Leo’s Store (“Leo’s Trade Dress”).

KS claims Defendants, RSM Investments LLC, Raghbir Singh, Pushpinder Singh, York Multani, and York Singh (collectively, “Defendants”), operate a convenience store or gas station called Leon’s in Indianapolis, Indiana (the “Leon’s Store”). Per the Complaint, the Leon’s Store is located approximately 22 miles away from the Leo’s Store and uses a confusingly similar name and logo compared to the Leo’s Trademarks. The brand of fuel sold in connection with each store, Marathon, allegedly exacerbates the potential customer confusion between the two stores.

Continue reading

Evansville, Indiana – Attorneys for Plaintiff, Baskin-Robbins Franchising LLC and BR IP Holder LLC (collectively “Baskin-Robbins”), both of Canton, Ice-cream-300x201Massachusetts, filed suit in the Southern District of Indiana against Defendants, Radhakrishna LLC (“Radha”) of Indianapolis, Indiana, Naik’s, LLC (“Naik’s”) of Louisville, Kentucky, and Mukesh Naik, a citizen of Indiana (collectively “Defendants”), alleging breach of contract, trademark infringement, trade dress infringement, and unfair competition. Baskin-Robbins is seeking injunctive relief, judgment, including statutory damages, and attorneys’ fees.

According to the Complaint, Baskin-Robbins, along with its franchisees, currently operate more than 7,800 shops worldwide and have been in business for over seventy years. BR IP Holder LLC claims to own numerous registrations for marks relating to “Baskin-Robbins” and derivations thereof, most of which are incontestable under 15 U.S.C. § 1065. Baskin-Robbins further claims that the public knows and recognizes their marks due to the extensive sales and marketing Baskin-Robbins has done while in business.

It is alleged that Mukesh Naik, individually, entered a franchise agreement for PC 361694 on or about September 14, 1998; Radha entered into a franchise agreement for PC 351607 on or about August 10, 2013; and Naik’s entered into two franchise agreements for PC 353400 and PC 360506 in 2014 (collectively the “Franchise Agreements”). Each of the alleged Franchise Agreements were entered into between the Defendants and Baskin-Robbins Franchising LLC to operate Baskin-Robbins shops and each were allegedly personally guaranteed by Mukesh Naik. Baskin-Robbins claims that the Defendants defaulted under the Franchise Agreements and after three separate failures to cure their defaulting actions, were each sent a Notice of Termination. According to the Complaint, Defendants have continued using the Baskin-Robbins marks after the Notice of Termination was received by each Defendant, in breach of the Franchise Agreements.

Continue reading

Indianapolis, Indiana – Judge Richard L. Young in the Southern District of Indiana granted default judgment in favor of Engineered by Schildmeier, LLC (“Engineered”) and against WUHU Xuelang Auto Parts Co., LTD and Amazing Parts Warehouse (collectively the “Defendants”). Engineered filed suit seeking a declaratory judgment of both patent and trade dress infringement in late 2018. The patentEngineered-BlogPhoto-300x254 allegedly infringed in the complaint is United States Patent No. D 816,584 (the “‘584 Patent”) for a “Pair of Bed Rail Stake Pocket Covers”.

When a defendant fails to plead or defend a case against them within the allotted time frame, they are in default. A plaintiff may motion the court for a default judgment, which is a binding judgment of the court for failure of the defendant to answer the allegations. The court can then grant a default judgment. If a proof of damages hearing is necessary, the judge can order such a hearing, but the defendant may not appear at that point to defend the amount of damages asserted by the plaintiff. A default judgment may be set aside upon request of the defendant, but they must show a good defense and legitimate excuse as to why they were in default to the court.

In this case, neither of the Defendants plead or otherwise defended themselves against the allegations set forth in Engineered’s complaint. As such, the court granted Engineered’s motion for default judgment and awarded damages accordingly. First, the Court found that the Defendants infringed the ‘584 Patent. Second, the Court found the Defendants violated Section 43(a) of the Lanham Act by infringing Engineered’s trade dress. Third, the Defendants were enjoined from importing, selling, or offering for sale any imitations of the ‘584 Patent. Finally, Engineered was awarded a total of $1,424,070.00. The damages award was calculated by adding $470,020.00 in lost profits; $940,040.00 in treble damages for willful infringement; $13,610.00 in attorneys’ fees; and $400.00 in court costs. By failing to appear and defend themselves, not only will defendants have default judgments granted against them, but as shown in this case, extremely large damages may also be imposed.

Continue reading

Bodum USA, Inc. (“Bodum”) originally filed this case against A Top New Casting Inc. (“A Top”) in the Northern District of Illinois on claims of trade dress infringement. After a jury verdict found for Bodum and awarded $2 million in damages, A Top brought this appeal in the United States Court of Appeals for the Seventh Circuit. The Court of Appeals affirmed the findings and damages awarded.

BlogPhoto-1-300x232Bodum began selling French press coffeemakers in the 1970s and began distributing the Chambord French press at issue in this case in 1983. Bodum claimed it acquired exclusive distribution rights to the Chambord French press in 1991 and has since spent millions of dollars in marketing and advertising the product. A Top began selling their French press, the SterlingPro, through Amazon in 2014.

In March 2016, Bodum filed a complaint for “trade dress infringement under the Lanham Act, 15 U.S.C. § 1125(a); common law unfair competition; and violation of the Illinois Uniform Deceptive Trade Practices Act”. While A Top moved for summary judgment twice, these motions were denied, and a jury trial took place in March 2018. The jury found that A Top willfully infringed the Chambord trade dress and awarded Bodum $2 million in damages. The district court denied A Top’s motion for judgment as a matter of law and granted Bodum’s motion for enhanced damages to $4 million dollars and a permanent injunction against A Top selling the SterlingPro products.

Continue reading

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.

logo2Baskin-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.

Continue reading

Indianapolis, Indiana – Attorneys for Plaintiff, Engineered by Schildmeier, LLC of Anderson, Indiana, filed suit in the Southern District of Indiana alleging that Defendants, Amazing Parts Warehouse (d/b/a several different names) of Lexington, Kentucky, and Wuhn Xuelang Auto Parts Co., Ltd. of China, infringed its rights in United States Patent No. D 816,584 (“the ‘584 Patent”) for a “Pair of Bed Rail StakeBlogPhoto-300x225 Pocket Covers”. Plaintiff is seeking judgment including damages, pre and post-judgment interests and costs.

Plaintiff asserts that Defendants have been offering to sell products on Amazon, eBay, and other various sites since February 2018. Amazon has taken down the advertisements when shown the ‘584 Patent. After a bit of time, Amazing Parts Warehouse then re-advertises the same product under a different dba. Amazon removes the new advertisements as they are reported and the cycle repeats almost monthly. The advertisements on eBay have not been removed as eBay refuses to act on validity of patents without Court direction. Plaintiff continues to send Cease and Desist letters to Defendants through Amazon and eBay as well as contact with their websites and the U.S. Postal Service.

Count I of the Complaint asserts federal patent infringement as the Plaintiff’s and Defendants’ bed rail stake pocket covers are as they claim, not only identical, but substantially the same leading to customer confusion. Count II claims trade dress infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The third count seeks declaratory judgment of both the design patent and trade dress validity. Next, Plaintiff seeks declaratory judgment of infringement and validity of trade dress. The final count asserts unfair competition under Indiana state law. Plaintiff claims that they have lost nearly $100,000 in lost profits since the Defendants began selling their counterfeit products in February and they continue to lose a minimum of $3,000 in profits per week.

Continue reading

Evansville, Indiana – Attorneys for Plaintiff, SCLC, Inc. of Evansville, Indiana filed suit in the Southern District of Indiana alleging that Defendants, Marie Kettering of Trenton, New Jersey, and Lanny Tyndall of Enfield, Gansu, Canada, infringed the rights of SCLC.  Plaintiff is seblogphoto-1eking a nationwide injunction, compensatory damages, and attorneys’ fees.

Plaintiff owns the rights to the “Shoe Carnival” trademark, and owns and operates shoecarnival.com. The complaint alleges that the Defendants operate shoe sale websites that infringe upon the trade dress of the Shoe Carnival website, and infringe upon the Shoe Carnival trademark by displaying the registered mark on the websites. Specifically, the Defendants’ websites mimic the “look and feel” of Shoe Carnival’s website, including the layouts, placement of photos, borders, frames, colors, and overall impression. Further, Plaintiff alleges that the offending websites used the “Shoe Carnival” registered mark without permission in an effort to generate sales, which Plaintiff claims has caused consumer confusion.

Practice Tip: Although the Plaintiff alleges personal jurisdiction over the Defendants in the complaint, they do not allege any specific facts, such as infringing sales, which occurred in Indiana. This may cause issues for the Plaintiff in trying to secure personal jurisdiction over the Defendant. In a similar case in 2014, the United States Court of Appeals for the Seventh Circuit ruled that an out-of-state business accused of trademark infringement did not have sufficient contacts, arising out of the accused activity, with Indiana to subject it to personal jurisdiction in the state.

Continue reading

Indianapolis, Indiana – Attorneys for Plaintiff, AM General LLC, of South Bend, Indiana filed suit in the Southern District of IndianaBlogPhoto-300x110 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.

Continue reading

Contact Information