Trademark Dilution

November 20, 2015

Indiana Trademark Litigation: Texas A&M Sues the Indianapolis Colts Over Use of “12th Man” Mark

Houston, Texas – Via its trademark attorneys, Plaintiff Texas A&M University of College Station, Texas filed a trademark lawsuit in the Southern District of Texas alleging that the Indianapolis Colts, Inc. infringed its intellectual property rights in the “12TH MAN” mark, Trademark Registration Nos. 1,612,053; 1,948,306; and 3,354,769, which were issued by the U.S. Patent and Trademark Office. Also alleged were federal unfair competition and false designation of origin as well as unfair competition and trademark dilution under Texas state law.

Texas A&M asserts that, as early as 1922, it has used the trademark 12TH MAN in connection with sporting events and numerous products and services. It contends that the 12TH MAN mark identifies and distinguishes Texas A&M in connection with all of its athletic entertainment services and events. Texas A&M also licenses the mark, including having granted a license to Football Northwest, LLC for use by the Seattle Seahawks professional football team.

Plaintiff contends that the Indianapolis Costs first used 12TH MAN trademark inside of its stadium around 2006. In response to this use, Plaintiff indicates that it sent a cease and desist letter to Defendant, which appeared to result in a resolution of the matter. Texas A&M states that it again became aware of use of the 12TH MAN mark by the Indianapolis Colts in 2012, which again resulted in a cease and desist letter sent to Defendant.

According to the complaint, Texas A&M most recently became aware of use of the 12TH MAN mark by the Indianapolis Colts in July 2015, when Defendant e-mailed a solicitation including the mark to an individual in Texas A&M’s home town of College Station, Texas. Plaintiff claims that this use of the 12TH MAN mark is one of multiple current uses of the trademark by the Indianapolis Colts.

In the complaint, filed by trademark lawyers for Texas A&M, the following claims are listed:

• Count I: Trademark Infringement Under 15 U.S.C. §1114 et seq.
• Count II: Unfair Competition, False Designation and Infringement Under 15 U.S.C. §1125(a)
• Count III: Texas Trademark Dilution

• Count IV: Common Law Unfair Competition

Texas A&M seeks injunctive relief, attorneys’ fees and costs.

November 10, 2015

Indiana Trademark Litigation: Shipshewana Spice Company Sues Amish Farms for Use of “Happy Salt” Trademark

By Overhauser Law Offices, LLC

Shipshewana, Indiana – Indiana trademark lawyers for Plaintiff Kevin Horn, sole proprietor of Shipshewana Spice Company of Warsaw, Indiana, filed an intellectual property lawsuit in the Northern District of Indiana alleging that Bob Wilson d/b/a Amish Farms and Shipshewana’s Best Spice Co. of Millersburg, Indiana infringed the trademark “HAPPY SALT,” Trademark Registration No. 4,241,663, which was granted by the United States Patent and Trademark Office. Horn also alleges trademark counterfeiting, false description, trademark dilution and unfair competition.

Plaintiff Horn of Shipshewana Spice states in his intellectual property complaint that his company has been selling spices and other seasonings since 1994 both locally in north-central Indiana and online at www.shipshewanaspicecompany.com. Plaintiff further claims that the trade name “HAPPY SALT” has been associated with his spices since 1994. A trademark registration for this mark in International Class 30 for “Seasonings, namely, Seasonings in salt” was granted by the USPTO on November 13, 2012.

Defendant Wilson, alleged to be the operator of the website www.amishfarms.com, is accused of offering counterfeit goods offered as “HAPPY SALT SEASONING,” “HAPPY HEARTS SALT FREE SEASONING” and “HAPPY SEA SALT SEASONING.” Plaintiff also protests the use by Defendant of the business name “Shipshewana’s Best Spice Company,” which it contends is nearly identical to Plaintiff’s business name, “Shipshewana Spice Company”.

The complaint, filed by Indiana trademark attorneys for Plaintiff, includes the following counts:

• First Claim: Trademark Infringement Under Lanham Act §32; 15 U.S.C. §1114
• Second Claim: Trademark Counterfeiting Under Lanham Act §32; 15 U.S.C. §1114
• Third Claim: False Description Under Lanham Act §43; 15 U.S.C. §1125
• Fourth Claim: Trademark Dilution Under Lanham Act §43; 15 U.S.C. §1125

• Fifth Claim: Unfair Competition Under Lanham Act §43; 15 U.S.C. §1125

Horn seeks equitable relief along with damages, costs and attorneys’ fees.

October 2, 2015

Indiana Trademark Litigation: Indigo Vapor Enterprises Sues Indigo Vapor Company

By Overhauser Law Offices, LLC

South Bend, Indiana – Indigo Vapor Enterprises LLC of South Bend, Indiana commenced intellectual property litigation against Indigo Vapor Company, LLC, Robert Lee Martin and Charles Nandier of Tucson, Arizona.

Indigo Vapor Enterprises is in the business of selling “vaping” and e-cigarette materials across the United States and throughout the world. It alleges that Defendant sells similar goods in the same marketplace.

Plaintiff contends that Defendants infringed its trademarks, consisting of a stylized INDIGO VAPOR trademark, Registration No. 4,790,247, and a second trademark for INDIGO VAPOR, Registration No. 4,790,244 by using the Indigo Vapor Enterprises name and those trademarks to promote Defendants’ competing products. These accused uses include the operation of a website at www.indigovaporcompany.com. Both trademarks have been filed with the U.S. Patent and Trademark Office.

Plaintiff alleges trademark infringement, dilution and false designation of origin under the Lanham Act. It also asserts cybersquatting under the Anticybersquatting Consumer Protection Act (“ACPA”) and trademark infringement and unfair competition under the common law of Indiana and other states.

In this lawsuit, filed by Indiana trademark attorneys for Indigo Vapor Enterprises, the following causes of action are listed:

• Count I – Federal Trademark Infringement – Lanham Act (15 U.S.C. § 1114)
• Count II – Federal Unfair Competition – Lanham Act (15 U.S.C. § 1125(a))
• Count III – False Designation of Origin – Lanham Act (15 U.S.C. § 1125(a)(1)(B))
• Count IV – Federal Trademark Dilution – Lanham Act (15 U.S.C. § 1125(c))
• Count V – Federal Cybersquatting – ACPA and Lanham Act (15 U.S.C. § 1125(d))
• Count VI – Common Law Trademark Infringement

• Count VII – Common Law Unfair Competition

Plaintiff seeks equitable relief as well as damages, costs and attorneys’ fees.

June 19, 2015

Indiana Trademark Litigation: ArcelorMittal Sues Arillotta et al. for Tarnishment, Deception and Forgery

By Overhauser Law Offices, LLC

Hammond, Indiana – Trademark attorneys for ArcelorMittal USA LLC of Chicago, Illinois sued alleging violations of intellectual property rights and other rights. The lawsuit, filed in the Northern District of Indiana, alleges that Albert Arillotta, Global Demolition and Recycling, LLC, NMC Metals Corporation, and Arillotta Enterprises, LLC, all of Swampscott, Massachusetts, engaged in false designation of origin and false endorsement; dilution by blurring and tarnishment; deception; forgery; and deceptive trade practices.

ArcelorMittal is a producer and supplier of steel products. It owns and operates a steelmaking facility in Burns Harbor, Indiana. ArcelorMittal claims rights in federal trademark registrations to “ArcelorMittal” (Reg. Nos. 3908649 and 3643643) and “Mittal” (Reg. No. 4686413).

In 2012, Plaintiff ArcelorMittal solicited proposals for the installation of a pig iron casting machine at its Burns Harbor steelmaking facility. Plaintiff indicates that Arillotta, through his company Arillotta Enterprises, Inc., submitted a proposal for the project but that it was rejected. Nonetheless, contends ArcelorMittal, Arillotta subsequently represented to various third parties that “Arcelor Mittal Burns Harbor” and Defendant(s) had, in fact, entered into a contract for such an installation. Plaintiff further claims in its federal lawsuit that Arillotta forged the signature of two individuals, Michael Rippey and Louis Schorsch, listed as officers of ArcelorMittal, on documents related to this false claim.

Plaintiff also indicates in this lawsuit that Arillotta, when later unable to make payments owing on another contract, falsely claimed that ArcelorMittal would wire transfer $338,200.00 to cover an initial payment. When no such payment was forthcoming, because Plaintiff indicates that no such agreement existed, the payee on that contract then began to demand the money directly from ArcelorMittal.

ArcelorMittal contends that, in sum, “Arillotta has forged contracts and purchase orders purporting to represent in excess of ten million dollars ($10,000,00.00) worth of commercial activities between the defendant companies and ArcelorMittal when, in fact, ArcelorMittal has not hired Arillotta or his companies to perform any of the work shown in the forged contracts and purchase orders.”

In its complaint against Arillotta and the other Defendants, trademark lawyers for ArcelorMittal list the following counts:

• Count I: False Designation of Origin and False Endorsement
• Count II: Dilution by Blurring and Tarnishment
• Count III: Deception

• Count IV: Forgery
• Count V: Deceptive Trade Practices

Plaintiff ArcelorMittal asks the court for injunctive relief, money damages, costs and attorneys’ fees.

May 22, 2015

Indiana Trademark Litigation: Hard Rock Hotel Sues Alleging Infringement of Trademarked “Rehab” Pool Party

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana trademark attorneys for HRHH Hotel/Casino, LLC and HRHH IP, LLC, both of Las Vegas, Nevada (collectively, “HRHH”), commenced a trademark lawsuit in the Southern District of Indiana alleging that Bella Vita, LLC, Henri B. Najem, Jr. and 10 unknown defendants, all of Indiana, infringed various trademarks belonging to HRHH.

The HRHH entities together claim ownership to the Hard Rock Hotel & Casino Las Vegas located in Las Vegas, Nevada, along with certain intellectual property rights used in connection with that establishment.

HRHH contends that it created a daytime pool party held at the Hard Rock Hotel & Casino Las Vegas known as the “Rehab Pool Party” or simply “Rehab”. The Hard Rock Hotel & Casino Las Vegas indicates that the Rehab Pool Party was first held in 2004 and that the Rehab Pool Party is still being held regularly. HRHH asserts that its Rehab Pool Party has become famous and that it has licensed the REHAB marks to third parties for clothing and other merchandise.

Bella Vita, an Indianapolis provider of restaurant, bar and related entertainment services, has been accused of organizing and hosting weekly pool parties that are confusingly marketed as “Rehab+ Sundays”.

This federal lawsuit has brought under trademark and anti-dilution laws of the United States, 15 U.S.C. § 1051, et seq., the trademark laws of the State of Indiana, Ind. Code § 24-2-1, and under the statutory and common law of unfair competition. The trademarks at issue, all of which have been registered by the U.S. Trademark Office, are as follows:

• Trademark Registration No. 3,873,673 REHAB
• Trademark Registration No. 4,524,097 REHAB
• Trademark Registration No. 4,611,979 REHAB RX
• Trademark Registration No. 3,182,848 Rxehab
• Trademark Registration No. 4,615,774 Rxehab

• Trademark Registration No. 3,170,859 Rxehab

In the complaint against Bella Vita, its managing member Najem and the unnamed Does, Indiana trademark lawyers for Plaintiffs assert the following causes of action:

• False Designation of Origin and Unfair Competition – 15 U.S.C § 1125(a)
• Trademark Infringement – 15 U.S.C. § 1114, Ind. Code § 24-2-1-13, and Common Law
• Dilution – 15 U.S.C. § 1125(c)

• Unfair Competition

Plaintiffs ask the court for a finding that Defendants have engaged in trademark infringement, trademark dilution and unfair competition; for injunctive relief; for a finding that HRHH is the exclusive owner of the REHAB Marks and that such marks are valid and protectable; for an award of damages and profits earned as a result of infringing activity; for punitive damages; and for an award of interest, costs, expenses, and reasonable attorneys’ fees.

February 13, 2015

Indiana Trademark Law: Consent Judgment Entered Enjoining Chanel’s Salon from Using “Chanel” in Business Name

By Overhauser Law Offices, LLC

Hammond, Indiana – Chanel’s Salon, LLC, d/b/a Chanel’s Salon and Chanel’s Cosmetology Salon, and Chanel Jones, all of Merrillville, Indiana, entered into a consent judgment with Chanel, Inc. of New York, New York to resolve ongoing trademark disputes regarding the trademarked term CHANEL®.

Indiana trademark attorneys for fashion-and-beauty giant Chanel, Inc. had sued in the Northern District of Indiana alleging that Chanel’s Salon, LLC and Chanel Jones had infringed and were infringing the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which have been registered by the U.S. Patent and Trademark Office.

In this Indiana lawsuit, Chanel, Inc. alleged trademark infringement, trademark dilution, unfair competition under federal law as well as trademark infringement and unfair competition under Indiana state law. Chanel, Inc. claimed that its intellectual property rights to its trademark CHANEL had been infringed and diluted by actions of Defendants Chanel’s Salon, an Indiana beauty salon, and its owner Chanel Jones.

Specifically, Defendants were accused of using the trade names CHANEL’S SALON and/or CHANEL’S COSMETOLOGY SALON in connection with their beauty salon without Chanel’s authorization. Chanel, Inc. also claimed that the Defendants were infringing and diluting the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories.

This litigation ended pursuant to a consent judgment crafted by the parties and entered by the Indiana district court. As part of the consent judgment, the court issued a permanent injunction prohibiting Jones from using CHANEL to identify her beauty salon or any other enterprises, services or products. Jones was also enjoined from any use of the term CHANEL as part of any keyword, meta tag, page tag, or source code in any business marketing.

The order in this intellectual property litigation was issued by Judge Theresa L. Springmann in the Northern District of Indiana. This case is: Chanel, Inc. v. Chanel’s Salon LLC et al., Case No. 2:14-cv-00304-TLS-PRC.

October 1, 2014

Indiana Trademark Litigation: KM Innovations Sues LTD Commodities

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for KM Innovations LLC of New Castle, Indiana (“KM”) sued in the Southern District of Indiana alleging that LTD Commodities LLC of Bannockburn, Illinois (“LTD”) infringed the trademarked “INDOOR SNOWBALL FIGHT”, Trademark Registration No. 4,425,111 which has been issued by the U.S. Trademark Office.

KM sells synthetic “snowballs” for use in indoor “snowball fights.” It contends that it uses two distinct trademarks to market and sell these synthetic snowballs: “SNOWTIME anytime!” and INDOOR SNOWBALL FIGHT. KM has also sought patent protection for its indoor snowballs.

The SNOWTIME anytime!/”indoor snowball fight” concept was conceived in December 2012. At a party, several parents realized that a market might exist for “indoor snowballs,” which would enable children to have a “snowball fight” but without the usual requirements of snow or being outside. KM later introduced a product based on this idea.

In this Indiana trademark complaint, KM asserts that an item called an “Indoor Snowball Fight Set” is being offered and sold on by LTD on the LTD website. The retail price of the product offered by LTD is $9.95 per 12 synthetic balls, while an allegedly similar product is offered and sold by KM for somewhat more, with a retail price of about $1 per synthetic snowball.

KM contends that, by using the name “Indoor Snowball Fight Set,” LTD has deliberately misappropriated KM’s trademark rights. It claims that the use by LTD of this name demonstrates a wrongful attempt by LTD to utilize the goodwill associated with the KM synthetic-snowball product. KM also claims that LTD’s product is inferior and that, as a result, KM’s reputation will be damaged when consumers are confused into believing that KM is associated with LTD’s “Indoor Snowball Fight Set.”

In its complaint, filed by an Indiana trademark lawyer, KM claims the following:

• Count I: Infringement of Federal Trademark Registration No. 4,425,111
• Count II: False Designation of Origin/Unfair Competition – 35 U.S.C. § 1125(a)

KM asks the court for a judgment of trademark infringement and unfair competition. It requests that the court award damages, including treble damages; order the surrender of any infringing materials; prohibit the use of “Indoor Snowball Fight” by LTD and its agents; and award to KM its costs and attorneys’ fees.

Practice Tip #1: While not included as a separate count, KM did allege trademark dilution in paragraph 24 of the complaint. This cause of action is distinct from trademark infringement and applies to trademarks that are deemed to be famous. An action for dilution can assert either, or both, of two principal harms: blurring and tarnishment. Dilution by blurring, codified in 15 U.S.C. 1125(c)(2)(B), arises when association with another similar mark causes the distinctiveness of the famous mark to be compromised. In contrast, dilution by tarnishment under 15 U.S.C. § 1125(c)(2)(C) happens when the reputation of the famous mark is damaged by association with a similar mark.

Practice Tip #2: KM, no stranger to intellectual property litigation, has previously sued in Indiana federal court alleging trade dress infringement of the packaging for its synthetic snowballs.

September 5, 2014

Indiana Trademark Litigation: Chanel Sues Chanel’s Salon for Trademark Infringement and Dilution

By Overhauser Law Offices, LLC

Hammond, Indiana – An Indiana trademark lawyer for Chanel, Inc. of New York, New York, in conjunction with New York co-counsel, sued in the Northern District of Indiana alleging that Chanel’s Salon, LLC and Chanel Jones, both of Merrillville, Indiana, committed trademark infringement and trademark dilution of the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which were issued by the U.S. Trademark Office.

Chanel is a fashion and beauty company. For over 85 years, Chanel has used CHANEL as a trade name, house mark and trademark to identify its goods and business. In addition to offering cosmetics, fragrances, and skin care products, Chanel’s goods include hair accessories, such as barrettes, hair clips, and men’s shampoo.

Chanel states that it has spent hundreds of millions of dollars to advertise and promote its goods. It indicates that last year in the United States it spent over $50 million dollars on advertising, all of which prominently featured the CHANEL mark. Consequently, it asserts, the CHANEL name and trademark is one of the most famous marks in the world and has become synonymous with Chanel.

At issue in this Indiana trademark infringement and trademark dilution lawsuit are the actions of Defendants Chanel’s Salon and its owner Chanel Jones. Defendants are accused of having begun to use the trade names CHANEL’S SALON and/or CHANEL’S COSMETOLOGY SALON in October 2012 in connection with their beauty salon without Chanel’s authorization and, in doing so, impinging on Chanel’s intellectual property rights.

Chanel contends in this lawsuit that Defendants are infringing the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories. Chanel also asserts that Defendants’ use of CHANEL dilutes the trademark, which Chanel claims is famous.

In July 2013, Chanel sent Defendants a cease-and-desist letter requesting that Defendants change the name of Chanel’s Salon to a name that did not include the word CHANEL. Chanel states that Defendants did not respond to this letter and that further attempts to resolve the dispute were unsuccessful.

In the complaint, filed by an Indiana trademark attorney, the following is alleged:

• Count I: Federal Trademark Dilution (15 U.S.C. § 1125(c))
• Count II: Federal Trademark Infringement (15 U.S.C. § 1114(1))
• Count III: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count IV: Trademark Infringement and Unfair Competition Under Indiana Common Law

Chanel asks the court for injunctive relief and “such other and further relief as the Court may deem just and proper.”

Practice Tip: This is an unusual trademark case in at least two respects. First, while trademark infringement lawsuits are relatively common, colorable assertions of trademark dilution are less so. This is due in large part to the requirement that the trademark that is allegedly diluted be “famous.” This trademark lawsuit is also unusual in that, while the complaint asks the court in passing for “such other and further relief as the Court may deem just and proper,” it does not explicitly seek damages for the alleged trademark infringement and dilution. Instead, the sole purpose of the complaint seems to be to obtain injunctive relief.

February 10, 2014

Swag Merchandising and Musical Group Devo Sue for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for Swag Merchandising, Inc. and Devo Inc., both of California, sued in Hamilton Superior Court alleging that Your Fantasy Warehouse, Inc. d/b/a T.V. Store Online and Fred Hajjar, both of Commerce Township, Michigan, infringed Devo’s Trademarks, Registration Nos. 3161662 and 3167516, which have been registered by the U.S. Trademark Office. The case has been removed from Indiana state court to the Southern District of Indiana.

Swag claims that it owns the exclusive right to license the various trademarks, copyrights and individual and collective rights of publicity of the musical group Devo. The group is best known for the song “Whip It,” which hit number 14 on the Billboard chart in 1980. Swag indicates that it licenses the Devo intellectual property to third parties around the globe.

T.V. Store Online is in the business of manufacturing, marketing and distributing apparel and memorabilia featuring classic and current television programming, movies and/or music. T.V. Store Online and Hajjar have been accused of manufacturing, producing, marketing, advertising and/or retailing a product known as “Energy Dome Hats.” Plaintiffs assert that these Energy Dome Hats are commonly associated with Devo but have not been licensed by Plaintiffs to Defendants. Plaintiffs further claim that consumers coming into contact with Defendants’ product would “immediately recognize the same as being associated with, sponsored by and/or endorsed by” the ’80s group.

In the complaint, filed by an Indiana trademark attorney, Plaintiffs assert the following:

• I: Violation of 15 U.S.C. §1125(a) of the Lanham Act
• II: Trademark Infringement – 15 U.S.C. §1114 and Common Law
• III: Counterfeiting
• IV: Dilution – 15 U.S.C. §1125(c) and New York General Business Law §360-1
• V: Common Law Unfair Competition
• VI: Statutory Right of Publicity [NB: under Indiana law]
• VII: Right of Publicity Infringement Under California Civil Code §3344
• VIII: Common Law Right of Publicity
• IX: Conversion [NB: under Indiana law]
• X: Deception [NB: under Indiana law]
• XI: Indiana Crime Victims Act

Plaintiffs ask for an injunction; the surrender of infringing materials; damages, including treble damages; costs and fees. An Indiana intellectual property lawyer for Defendants removed the case to federal court, although he noted that the removal was not a concession that the Southern District of Indiana was the proper venue for the California Plaintiffs or the Michigan Defendants.

Practice Tip:

This is at least the third case filed by Theodore Minch about which we have blogged. In at least two prior cases, LeeWay Media Group, LLC v. Laurence Joachim et al. and Leon Isaac Kennedy v. GoDaddy et al., Mr. Minch has filed in an Indiana court despite none of the parties having any connection to Indiana.

It can be surmised that perhaps the choice of Indiana as a forum might have been driven by an attempt to increase damages. I.C. §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys’ fees. The Indiana Court of Appeals has discussed “theft” and “conversion” as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

December 16, 2013

Cummins Alleges Trademark Infringement and Counterfeiting in Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Cummins Inc. of Columbus, Indiana has sued in the Southern District of Indiana alleging counterfeiting, trademark infringement and trademark dilution by T’Shirt Factory of Greenwood, Indiana; Freedom Custom Z of Bloomington, Indiana; Shamir Harutyunyan of Panama City Beach, Florida and Doe Defendants 1 – 10. Defendants are accused of infringing various trademarks, including those protected by Trademark Registration Nos. 4,103,161 and 1,090,272, which have been registered by the U.S. Patent and Trademark Office.

Cummins was founded nearly a century ago and is a global power leader with complementary business units that design, manufacture, distribute and service engines and related technologies, including fuel systems, controls, air handling, filtration, emission solutions and electrical power generation systems. Cummins employs approximately 46,000 people worldwide and serves customers in approximately 190 countries.

Defendants include T’Shirt Factory and Shamir Harutyunyan, who is alleged to be an owner, agent, and/or officer of T’Shirt Factory. Cummins claims that Harutyunyan was personally aware of, and authorized and/or participated in, the wrongful conduct alleged in Cummins’ complaint. Freedom Custom Z is also named as a Defendant. Its business purportedly includes the sale of t-shirts, sweatshirts and other apparel upon which logos have been printed or affixed. Doe Defendants 1 – 10, the identities of whom are currently unknown, have also been accused of the illegal acts alleged.

Cummins states that it owns and maintains hundreds of trademark registrations worldwide covering a broad spectrum of goods and services. Among those is Trademark Registration No. 4,126,680, which covers the following goods: “Men’s and women’s clothing, namely, sweatshirts, hooded sweatshirts, aprons, shirts, sport shirts, jackets, t-shirts, polo shirts, baseball caps and hats, ski caps, fleece caps, headbands, scarves, quilted vests, coveralls, leather jackets, t-shirts for toddlers and children” in International Class 25.

Cummins also asserts that it owns Trademark Registration No. 4,103,161. It indicates that this trademark registration covers the following goods: “Men’s and women’s clothing, namely, sweatshirts, hooded sweatshirts, aprons, shirts, sport shirts, jackets, t-shirts, polo shirts, baseball caps and hats, ski caps, fleece caps, headbands, scarves, quilted vests, coveralls, leather jackets, t-shirts for toddlers and children” in International Class 25. Cummins also states that it owns Trademark Registration No. 4,305,797, registered for similar goods.

Finally, Cummins claims Trademark Registration Nos. 579,346; 1,090,272 and 1,124,765, which also relate to the Cummins Mark, as its intellectual property.

In December 2013, Cummins employees observed apparel bearing the Cummins Marks offered for sale at kiosks located in the College Mall in Bloomington, Indiana; in the Greenwood Park Mall in Greenwood, Indiana; and in the Castleton Mall in Indianapolis, Indiana.

Trademark lawyers for Cummins have sued in the Southern District of Indiana. Cummins accuses Defendants of having acted intentionally, willfully and maliciously. It makes the following claims in its complaint:

• Count I: Trademark Infringement Under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
• Count II: Trademark Dilution Under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c)
• Count III: Trademark Counterfeiting Under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)

Cummins asks 1) for a temporary restraining order allowing inspection and seizure of the accused goods as well as enjoining Defendants from, inter alia, manufacturing or selling items bearing counterfeit Cummins Marks; 2) for preliminary and permanent injunctions prohibiting Defendants from, inter alia, manufacturing or selling items bearing counterfeit Cummins Marks; and 3) that the court order the destruction of all unauthorized goods.

It also asks the court to find that the Defendants 1) have infringed Cummins’ trademarks in violation of 15 U.S.C. § 1114; 2) have created a false designation of origin and false representation of association in violation of 15 U.S.C. § 1125(a); 3) have diluted Cummins’ famous trademarks in violation of 15 U.S.C. § 1125(c) and 4) have willfully infringed.

Cummins asks for Defendants’ profits from the sales of the infringing and counterfeit goods bearing the Cummins Marks; treble actual damages, costs, reasonable attorneys’ fees as well as pre-judgment and post-judgment interest.

Practice Tip: Repercussions for counterfeiting are not limited to the damages that can be awarded for civil wrongdoing. Increasingly, defendants who engage in counterfeiting, especially counterfeiting on a large scale or during high-profile events, can find themselves facing criminal charges (see, e.g., an arrest made on allegations of counterfeiting during Super Bowl XLVI) in addition to being sued by the owner of the trademark.