Articles Posted in Trade Dress

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.

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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.

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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.

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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.

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Indianapolis, Indiana – Attorneys for Plaintiff, Klipsch Group, Inc. of Indianapolis, Indiana filed suit in the Southern District of Indiana alleging that Defendant, Shenzhen Paiaudio Electronics Co., Ltd of Guangdong, 2017-11-08-BlogPhoto-224x300China infringed on the U.S. Patent No. D603,844 (the ‘844 patent), titled “Headphone,” and violated Klipsch headphones’ trade dress. Plaintiff is seeking judgment, a permanent injunction, lost profits, damages, pre-judgement and post-judgment interest, attorneys’ fees, and all relief just and proper.

Plaintiff Klipsch is an Indianapolis-based audio company that produces headphones, earphones, and speakers for home and commercial use. China-based Defendant Paiaudio specializes in producing high-end earphones. The subject of this litigation is a type of small earphone patented by Klipsch, specifically their “X12i” model. Plaintiff alleges that Defendant’s “π 3.14 Audio” model is virtually identical to the X12i, infringes on the patent, and violates the Lanham Act via trade dress confusion.

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Terre Haute, Indiana – Dshay Towles was charged with theft and “offense against intellectual property” for selling on eBay stolen copies of 2017-10-26-BlogPhoto-231x300Call of Duty: WWII, which is scheduled to be released on November 3, 2017.

According to FOX59, the games were stolen from the Sony DADC facility in Terre Haute, where the company manufactures and distributes Blu-Rays, CDs, and DVDs. The games were later found on eBay, having been posted by Towles for roughly $45 per copy.

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HH-Inc-300x183Indianapolis, Indiana – Her Imports f/k/a EZJR, Inc. sued in the Southern District of Indiana alleging trademark infringement, trademark dilution and trade dress infringement.  The lawsuit names Her Hair, Inc., an Indianapolis hair-extension merchant, as Defendant.

Plaintiff markets and sells wigs, hairpieces and hair accessories.  It claims ownership of two trademarks, U.S. Trademark Registration Nos. 4,631,694 for the word mark “HER IMPORTS” and 5,048,646 for “HER IMPORTS” and design.  Both trademarks have been registered with the U.S. Patent and Trademark Office.

Plaintiff contends that Defendant designed and used a similar mark, asserting that it was intentionally crafted “for the sole purposes of imitating Plaintiff’s Trademark, causing actual confusion among the general public, and attempting to pass itself off as being associated with the Her Imports brand.”  Plaintiff further states that Defendant’s trademark has caused actual customer confusion.  Defendant’s mark was registered by the U.S. Patent and Trademark Office under Reg. No. 5,144,514.

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Plaintiff further accuses Defendant of copying its “unique store interior trade dress,” comprising black and white Damask wallpaper along with red trim, in Defendant’s store.

In this Indiana lawsuit, filed by trademark attorneys for Plaintiff, the following claims are made:

  • Count I: Mark Cancellation 15 U.S.C. § 1064
  • Count II: Trade Dress Infringement 15 U.S.C. § 1125(a) (as to the Store Interior)
  • Count III: Dilution by Blurring — 15 U.S.C. § 1125(c) (as to Plaintiff’s Trademark)
  • Count IV: Dilution by Blurring — 15 U.S.C. § 1125(c) (as to Plaintiff’s Store Interior Trade Dress)
  • Count IV: [sic] Recovery of Profits, Damages, Costs, and Attorneys’ Fees Pursuant to 15 U.S.C. § 1117(a)
  • Count VI: Destruction of Infringing Articles 15 U.S.C. § 1118
  • Count VII: Injunctive Relief 15 U.S.C. § 1125(c)(1)

Plaintiff seeks, inter alia, injunctive relief, the cancellation of Defendant’s trademark, damages, attorneys’ fees and costs.

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South Bend, IndianaJudge 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.

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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.

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Chicago, Illinois – Arlington Specialties, Inc. of Elk Grove Village, Illinois appealed the summary judgment granted by the U.S. District Court of Northern Illinois, Eastern Division in favor of Urban Aid, Inc. of Los Angeles, California.

The plaintiff’s and defendant’s bags are shown on the last page:

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The Seventh Circuit does not issue trade dress opinions very often, but it issued one January 27, 2017.  It is especially helpful because it sums up the state of trade dress law in the Circuit.

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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