Articles Posted in Trademark Dilution

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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Fort Wayne, IndianaShield Exteriors, Inc. (“Shield Exteriors”) filed an infringement suit against five Defendants regarding its U.S. Copyright No. VA 2-174-290 (the “‘290 Registration”) and its “SHIELD EXTERIORS” word mark and logo (the “Shield Marks”) in the Northern District of Indiana. According to the Complaint, the ‘290 Registration protects eight photographs of roof installations completed by Shield Exteriors. Shield Exteriors claims it has used the Shield Marks in connection with roofing services since as early as 2015.

Defendant Roof Genius Pro (“Roof Genius”) allegedly owns and operates two different websites that display the Shield Marks and seven of the eight photographs protected by the ‘290 Registration. According to the Complaint, Roof Genius advertised for Defendant 4Ever Metal Roofing, LLC (“4Ever Metal”) via a video advertisement posted on Facebook that included photographs of metal roofs installed by Shield Exteriors. The link posted with that advertisement redirects viewers to a website hosted by Defendant Local2Online, which displays the name and logo of 4Ever Metal and solicits customer information utilizing photographs protected by the ‘290 Registration. The other two named Defendants, sued in their individual capacities, are the owner of Roof Genius and Local 2Online, John Estabrook, and the owner of 4Ever Metal, Travis Sliger.

The case was assigned to District Judge Holly A. Brady and Magistrate Judge Susan L. Collins in the Northern District and assigned Case 1:20-cv-00064-HAB-SLC.

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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Pic1-300x273Marilyn D. Mintz of Northern California, had filed a Trademark infringement lawsuit in the U.S. District Court, Northern District of California alleging that Subaru of America, Inc., a New Jersey Corporation with place of Business in the State of New Jersey, infringed a phrase and design trademarked by Plaintiff.

Defendant Subaru, which has a large manufacturing presence in Lafayette, Indiana, ran an ad campaign with the slogan “Share the Love.” Plaintiff alleged that this infringed her trademarked phrase, “A World of Love, for You and Those You Love.” In the ad campaign, Plaintiff also used a graphic design showing a hand with a heart on it. Plaintiff alleged that this infringed a similar design she trademarked.

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BlogPhoto-6Indianapolis, IN – The National Collegiate Athletic Association had filed a Trademark infringement lawsuit in the Southern District of Indiana alleging that Kizzang LLC, infringed trademarks registered by the NCAA.

A recent Order signed by Judge Jane Magnus-Stinson grants the National Collegiate Athletic Association’s Motion for Default Judgment and Motion for Permanent Injunction against Defendant, Kizzang LLC.

The NCAA sued over Defendant’s use of the terms “Final 3” and “April Madness,” which Plaintiff alleges infringe on the trademarked phrases “Final Four” and “March Madness,” which are commonly used to refer to the annual men’s college basketball championship tournament.

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