Articles Posted in Trademark Dilution

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The United States Patent and Trademark Office (“USPTO”) has seen a historic surge of new trademark filings over the past year, along with an increase in suspicious submissions ranging from inaccurate to fraudulent.

On January 5, 2022 the USPTO posted a Federal Register Notice that the Commissioner for Trademarks has established an administrative process for investigating submissions filed with the USPTO in trademark matters that appear to violate the Trademark Rules of Practice, including the rules concerning signatures, certificates, and representation of others in trademark matter before the USPTO and/or the USPTO website’s Terms of Use; and imposing sanctions, as appropriate.  Under this process, when a submission appears to violate the Trademark Rules of Practice or the USPTO website’s Terms of Use, the USPTO will issue administrative orders that may result in sanctions being imposed. Sanctions may include:

  • Striking submissions
  • Precluding parties from appearing before the USPTO
  • Terminating USPTO.gov accounts
  • Terminating proceedings

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Indianapolis, Indiana – Apparently Heartland Consumer Products LLC (“Heartland”), the Plaintiff, is the owner of the SPLENDA® brand sugar substitute sweetener, which comes in yellow packaging (the “Yellow Trade Dress”). According to the Complaint, Heartland has also used a variety of legally protected trademarks in connection with its SPLENDA® brand products.

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In addition to its U.S. trademarks, and common law rights to the Yellow Trade Dress, Heartland also claims to have obtained trademark registrations for the SPLENDA® intellectual property in over 90 countries.

Heartland claims Speedway, LLC (“Speedway”), the Defendant, has “engaged in the active deception of customers through misappropriation of the Yellow Trade Dress in a manner that makes Speedway’s yellow sucralose packets easily mistakable for SPLENDA®’s yellow packets. Per the Complaint, Speedway failed “to provide sufficient cues to the consumer that the yellow sweetener packets in Speedway stores are not the leading brand sucralose-based sweetener sold by Heartland.” Therefore, Heartland claims Speedway’s actions are likely to deceive consumers into believing its sweetener provided in yellow packets is SPLENDA®.

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Due to Speedway’s use of yellow packaging for sucralose, Heartland claims it has committed trade dress infringement, trademark dilution, false designation of origin, unfair competition, and false advertising pursuant to the Lanham Act, 15 U.S.C. § 1125. Heartland is seeking enhanced damages and attorneys’ fees under 15 U.S.C. § 1117 because it claims “Speedway’s actions are intentional, willful, and calculated to cause confusion, mistake or deception.” Further, Heartland is claiming common law trade dress infringement under Ind. Code § 24-2-1-15. Next, Heartland is claiming common law unfair competition. Finally, Heartland is claiming trademark dilution under Ind. Code § 24-2-1-13.5.

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Indianapolis, Indiana – Great Grizzly, Inc. (“Grizzly”), Plaintiff, claims to have sold and imported fireworks in Indiana for over 50 years. In addition, Grizzly claims to have several federal trademarks including the one at issue in this case assigned Registration No. 2,329,220 for “PREDATOR” (the “Registered Mark”).

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Grizzly alleges the Defendants, Winco Fireworks, Inc. and Winco Fireworks International, LLC (the “Winco Defendants”) offer and sell fireworks throughout the United States. According to the Complaint, the Winco Defendants have sold fireworks that infringe the Registered Mark and have failed to desist their infringement after being informed of the Registered Mark. Therefore, Grizzly is seeking damages for trademark infringement, trademark dilution, false designation of origin, and unfair competition under the Lanham Act, 15 U.S.C. §§ 1051, et seq. and state common law. Grizzly is also claiming the Winco Defendants violated Indiana Code § 24-5-0.5-3(b)(1) for deceptive consumer practices and committed tortious interference with a business relationship under the common law.

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Indianapolis, Indiana3M Company (“3M”) claims there has been an increase in wrongdoers seeking to exploit the COVID-19 pandemic by using scams including those to price-gouge and offer3M-Blogphoto-use-300x106 fake sales of 3M-brand N95 respirators. 3M claims Defendants, Zachary Puznak, Zenger LLC d/b/a ZeroAqua, and John Does 1-10 offered Indiana an opportunity to purchase 3M N95 masks at approximately $2.82 each, which is more than double 3M’s price.

There were numerous allegedly false communications from the Defendants to various representatives of the State of Indiana, including Indiana Governor Eric Holcomb’s Chief of Staff and the Senior Vice President and Chief of Staff of the Indiana Economic Development Corporation, regarding the sale of 3M-brand N95 respirators. When 3M became aware of the alleged price gouging and false communications, it filed this suit claiming the Defendants infringed its rights in United States Trademark Reg. No. 3,398,329 (the “‘329 Registration”) and Registration No. 2,793,534 (the “‘534 Registration”). 3M is further seeking damages for unfair competition, false endorsement, false association, false designation of origin, trademark dilution, and false advertising. Finally, 3M filed multiple claims pursuant to the Indiana Crime Victim’s Relief Act for deception, conversion, and theft.

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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 FireworksTerminator-BlogPhoto-1 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.

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Indianapolis, Indiana – Attorneys for Heartland Consumer Products LLC and TC Heartland LLC (collectively “Heartland”), of Carmel, Indiana, filed suit in the Southern District of Indiana in April of 2017 alleging that Defendants, DineEquity, Inc., Applebee’s Franchisor LLC, Applebee’s Restaurants LLC, Applebee’s Services, Inc., International House of Pancakes, LLC, IHOP Franchisor LLC, IHOP Franchising LLC, and IHOP Franchise Company, LLC all of Glendale, California; infringed its rights in some or all of United States Trademark Registration Nos.: 1544079, 3346910; 4172135, 4165028, 4301712, 4172136, 4165029,4122311, 4187229,Heartland-v-DineEquity-BlogPhoto 4202774, 4230392, 4238101, 4106164, 4664653, and 4744600 (SPLENDA IP”). In addition, at the time they filed their Complaint, HEARTLAND was the owner of the following applications for United States Trademark Registration Serial Nos. 86865337, 87012521, and 87010504, two of which are still “LIVE” trademarks. The suit settled in October 2018.

SPLENDA® is a low-calorie sweetener using sucralose that is a compound made from sugar. With the FDA approving sucralose for use in food products and food preparations in 1998, SPLENDA® was at the forefront of the market coming out in 1999 and launching in retail stores across the United States in September 2000. SPLENDA® is well-known and famous for their yellow-colored packaging which has been used continuously since the brand began using that color.

Plaintiffs claimed that the Defendants misappropriated the SPLENDA IP to deceive consumers and were actually providing consumers with a lower-quality product from China. For instance, some people working at IHOP and Applebee’s restaurants would orally affirm to customers that the yellow packets provided did in fact contain SPLENDA ® even though they did not. Plaintiffs alleged in their Complaint trademark infringement, false designation of origin, unfair competition, and trademark dilution. They were seeking preliminary and permanent injunctive relief, corrective advertising damages, Defendant’s profits, and costs among other damages. The Parties have settled outside of court as of October 2018.

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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:

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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.

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Eli Lilly & Company and its subsidiary, Elanco US Inc., both of Greenfield, Indiana, filed suit in the Eastern District of Wisconsin alleging that Arla Foods, Inc. USA of Denmark, and Arla Foods Production LLC a Delaware Corporation used false advertising and unfair businessLilly-v-Arla-BlogPhoto-233x300 practices in regards to Arla brand cheeses.

In 2017, Arla Foods launched a $30 million advertising campaign focused on expanding its cheese sales in the U.S. These advertisements included ads featuring a seven-year-old girl describing recombinant bovine somatotropin (“rbST”), an artificial growth hormone used to treat cows, as a type of monster. The ads implied that milk from cows that were treated with rbST was unwholesome and unnatural, therefore not good for your family.

Elanco makes the only FDA-approved rbST supplement, marketed under the name Posilac®. After the Arla campaign launched, Elanco filed suit alleging that Arla was in violation of the Lanham Act and simultaneously moved for a preliminary injunction with supporting copies of ads, evidence that a major cheese distributor decreased its purchasing of rbST in response to the ad campaign, and scientific literature pertaining to rbST’s safety. The district judge issued the requested injunction and later modified the injunction to cure technical deficiencies.

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Indianapolis, Indiana – Attorneys for Plaintiff, Barrington Music Products, Inc. of Niles, Michigan filed suit in the Northern District of Indiana alleging that Defendants, Music & Arts Centers of Bel Air, Maryland, Guitar Center Stores, Inc. of Westlake Village, and Eastman Music Company of Pomona, California infringed the rights in Trademark Registration Numbers 3,831,402 and 3,831,403.  Plaintiff sought actual damages, punitive damages, attorney’s fees and costs, prejudgment interest, and any other relief.

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Plaintiff is an Indiana corporation that sells musical instruments across the country and world. Defendants are various musical instrument shops that sell similar types of items to those that Plaintiff sells. Continue reading

2018-05-04-BlogPhotoIndianapolis, 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.

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