Trademark Infringement

March 6, 2018

Ninth Circuit Court of Appeals Grants Defendant, Nike, Inc.’s Motion to Dismiss

Jacobus Rentmeester of Westhampton Beach, New York, had filed a Copyright infringement lawsuit in the U.S. District Court, District of Oregon alleging that Nike, Inc., an Oregon Corporation with place of Business in Beaverton, Oregon infringed a photograph taken by Plaintiff.

The photograph at issue in this case was the iconic photo of Michael Jordan upon which the “Air Jordan” brand logo is based. In the photo, taken by Nike shortly after Jordan was drafted by the Chicago Bulls, Jordan is seen mid-air, reaching towards a basketball hoop with the ball in his left hand and his legs spread. In the background of the photo is the silhouette of the Chicago skyline, with the dusk sky above it. The photo formed the basis for the famous Jordan Brand logo, which is a white silhouette of Jordan’s shape in the photo against a black background.

February 28, 2018

Indiana Trademark Litigation: Klipsch Sues Audiosurplus on Basis of Trademark Infringment

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Klipsch Group, Inc. of Indianapolis, Indiana filed suit in the Southern District of Indiana alleging that Defendant, Audiosurplus, infringed its rights in United States Trademark Nos. 978,949, 2,917,215, and 3,863,511. Plaintiff is seeking judgment, Audiosurplus’s profits and damages, and attorneys’ fees and costs.

Plaintiff is an Indiana-based audio equipment company that manufactures high-end speakers, headphones, subwoofers, and a variety of other items audio items. Defendant is an online retailer that sells audio equipment on Amazon. The three trademarks involved in this case are for the “KLIPSCH” brand name. Plaintiff sells its products across the country through contractually authorized retailers. Plaintiff is suing because Defendant is not an authorized Klipsch retailer, but has allegedly been selling Klipsch products through its online store without permission.

January 29, 2018

The Southern District of Indiana Grants NCAA’s Motion for Default Judgment and Motion for Permanent Injunction

By Overhauser Law Offices, LLC

Indianapolis, 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.

January 26, 2018

Trademark Litigation: Florida Court Dismisses Suit Against Indiana Licensing Company Over Honus Wagner Trademark

By Overhauser Law Offices, LLC

Miami, Florida – Attorneys for Plaintiff, Honus Wagner Company, filed suit in the Southern District of Florida alleging that Defendants, Luminary Group LLC and Leslie Blair Roberts used the Plaintiff Honus Wagner’s name as an infringement to the Trademark “HONUS WAGNER.” The US District Court for the Southern District of Florida has granted the Defendants Motion to Dismiss for lack of personal jurisdiction.

Plaintiff alleged that, based on a chain of sales and succession, “it owns common law rights in the Honus Wagner name and mark.” Wagner was a famous baseball player for the Pittsburgh Pirates in the early 20^th century. Some of Wagner’s trading cards are among the most valuable pieces of sports memorabilia in the world.

January 16, 2018

Indiana Trademark Litigation

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Kimball International, Inc. of Jasper, Indiana filed suit in the Southern District of Indiana alleging that Defendant, Jasper Seating Company, Inc. d/b/a Community of Jasper, Indiana infringed its rights on the Indiana State Trademark Registration No. 2017-0052 for the mark “JEWEL.” Plaintiff is seeking an injunction, damages, lost profits, attorneys’ fees and costs, and any other relief the Court seems just.

Plaintiff is an Indiana corporation that manufactures furniture for offices, schools, healthcare facilities and hotels. According to the complaint, since August 2015 the Plaintiff has manufactured a line of chairs under the “JEWEL” trademark. Plaintiff has sold the chairs across the country and registered the trademark with the Indiana Secretary of State.

January 12, 2018

Indiana Trademark Litigation

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Impact Networking, LLC, of Hammond, and Indianapolis, Indiana filed suit in the Northern District of Indiana alleging that Defendants, Impact Solutions, LLC, of Fishers, Indiana infringed its rights on the United States Trademark registration numbers 2425077 and 2428340. Plaintiff is seeking judgment against Impact Solutions, damages, attorney fees, and costs.

Plaintiff has been in business since 1999, offering IT services. Plaintiff registered two trademarks for its brand, one protecting the word mark “Impact Networking,” and one protecting the company’s logo, which includes the company’s name. According to the complaint, Defendant is also an IT services provider, operating in the same geographic location. Plaintiff alleges that Defendant’s similar name causes consumer confusion and suggests an affiliation between the two companies. Although Plaintiff’s principal place of business is in Illinois, they have offices in Hammond, Indiana and Indianapolis, Indiana, and do business throughout Indiana. According to the complaint, the two companies are direct competitors in the same geographic area.

November 28, 2017

Indiana Trade Dress Infringement: Owner of Shoe Carnival Trademark Sues over Trade Dress and Trademarks

By Overhauser Law Offices, LLC

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 seeking 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.

November 27, 2017

New York Trademark Litigation: Indiana-Based AM General Sues Activision over Call of Duty Videogame

By Overhauser Law Offices, LLC

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

April 13, 2017

Indiana Trademark Litigation: Indianapolis Hair Accessory Merchant Sued for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, 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.

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.

April 10, 2017

Indiana Trademark Litigation: IHOP and Applebee’s Sued on Allegations of Infringement of Splenda Trademarks

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Heartland Consumer Products LLC and TC Heartland LLC, of Carmel, Indiana filed suit in the Southern District of Indiana alleging trademark and trade dress infringement, dilution and unfair competition under the Lanham Act, the Indiana State Trademark Act, and the common law of the State of Indiana.

At issue are trademarks covering Splenda®-brand sweetener, which has been approved for use in over 80 countries and used in more than 4000 products globally. In this Indiana litigation, Heartland claims that some or all of the following trademarks have been infringed: 1544079, 3346910; 4172135, 4165028, 4301712, 4172136, 4165029,4122311, 4187229, 4202774, 4230392, 4238101, 4106164, 4664653, and 4744600. These trademarks have been registered with the U.S. Patent and Trademark Office. In addition, Heartland claims ownership of the following pending applications for United States Trademark Registration Serial Nos. 86865337, 87012521, and 87010504.

Defendants in the lawsuit are DineEquity, Inc., Applebee’s Franchisor LLC, Applebee’s Restaurants LLC, Applebee’s Services, Inc., International House of Pancakes, LLC f/k/a International House of Pancakes, Inc., IHOP Franchising LLC, IHOP Franchise Company, LLC and IHOP Franchisor LLC. Plaintiff asserts that all Defendants have a principal place of business in Glendale, California. They are accused of leading customers to believe that they offer Splenda-brand sweetener when they do not. Plaintiff contends that instead of American-made Splenda, the product offered to the customers is, in fact, “a lower-quality product of China.”

Indiana trademark attorneys for Heartland sued in federal court. They assert:

Count I: Common Law Trademark Infringement and Trademark Infringement under 15 U.S.C. § 1114(1)
Count II: False Designation of Origin under 15 U.S.C. § 1125(a)
Count III: Unfair Competition
Count IV: Trademark Dilution under 15 U.S.C. § 1125(c)
Count V: Trademark Dilution under I.C. 24-2-1-13.5
Count VII [sic]: Preliminary and Permanent Injunctive Relief
Count VIII: Corrective Advertising Damages

Plaintiff asks the court for injunctive relief, costs and attorneys’ fees. They also seek various types of damages, including actual, statutory, punitive and treble damages.