Articles Posted in Trademark Infringement

BlogPhoto-2-300x179Evansville, Indiana – In 2004, the Coca-Cola Company launched its Full Throttle® energy drink brand, which was later apparently acquired by Monster Beverage Company (“Monster”) in 2015. Monster in turn divested the rights and title to the Full Throttle® energy drink line to its child company, Energy Beverages LLC (“Energy”), the Plaintiff. From that transaction, Energy owns multiple trademark registrations including the three at issue in this case, U.S. Registration Nos. 2,957,843, 5,562,250, and 5,722,956 (the “Energy Marks”). Energy also claims it has used a distinctive trade dress on its Full Throttle® products since 2004.

Apparently, Energy has licensed the Energy Marks and trade dress in connection with a variety of goods and services throughout the years, including sponsoring motorsports. Since 2015, Energy claims it has spent over $22.6 million dollars in promoting the Full Throttle® brand. Additionally, the retail sales of Full Throttle® products allegedly exceed 47 million cans per year, with estimated revenues of approximately $113 million per year. Therefore, Energy claims its Full Throttle® brand including the Energy Marks and trade dress have acquired great value to identify and distinguish its products and services from those of other, including association with the automotive industry.

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Indianapolis, IndianaDelta Faucet Company (“Delta”), the Plaintiff, is an Indiana corporation that is apparently known as “America’s Faucet Innovation Leader.” Delta claims its products may only be purchased in the United States from Delta itself, or its Authorized Sellers.  According to the Complaint, this allows Delta to control the quality of the products and protect the value of its brand(s). As Delta’s brand is important to the company, it has registered numerous trademarks with the U.S. Trademark Office including those in the table below (the “Delta Marks”).

Registered Mark Registration Nos.
Picture1-1 5,273,845
Picture1-1 2,583,761
                              Picture2-1 3,062,101
Picture4-1 2,586,604
DELTA 4,518,067
Picture5 0,668,880
DELTA 4,638,296

Delta has filed multiple infringement suits in Indiana this year to vigorously defend its intellectual property rights. E-commerce sales have exploded over the past decade and while online marketplaces have created opportunities, they have also apparently created a challenge for brand owners to control the quality and safety of their products. Further, Delta claims online marketplaces have a low barrier to entry and do not require sellers to be Authorized Sellers, meaning many unauthorized sellers with no relationship to Delta are able to sell counterfeit or lesser quality products online without Delta’s consent. This can lead to consumer reviews that associate the problem with their product “with the brand/manufacturer rather than the product seller.” Given these risks, Delta claims it imposes additional requirements on its Authorized Sellers who sell online, including only allowing websites that are operated by the Authorized Seller and not a storefront on any online marketplace. The website must also include the “Authorized Seller’s mailing address, telephone number, and email address” along with being fully inspected and approved by Delta.

Delta claims that due to the risks to consumers and reputational concerns, it actively monitors the online sale of its products. Over the course of this monitoring, Delta apparently found a high volume of products being sold illegally on Amazon by Defendants, Dmitrii Iakovlev and John Does, 1-10 (while the identities of John Does 1-10 are currently unknown, Delta intends on discovering their identities and amending its Complaint). Delta claims it sent multiple cease and desist communications to Defendants, but Defendants have continued to sell products bearing the Delta Marks on their “TechnoProffs” Amazon storefront. Additionally, the Complaint cites to numerous one-star reviews for the sales of alleged Delta products on the TechnoProffs storefront that were damaged and/or missing pieces.

Due to the alleged harm of the sales of unauthorized products bearing the Delta Marks, Delta is seeking injunctive relief and enhanced damages for trademark infringement pursuant to 15 U.S.C. §§ 1116 and 1117(a). Also pursuant to the Lanham Act, 15 U.S.C. § 1125(a), Delta claims Defendants actions constitute unfair competition. Delta is further seeking damages for trademark infringement and unfair competition under Indiana common law. Finally, because Defendants have allegedly knowingly and willfully sold products represented as genuine Delta products when they are not, Delta claims Defendants have committed deception in violation of Indiana Crime Victim’s Relief Act, Ind. Code § 35-43-5-3.

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South Bend, Indiana – Apparently Triple LLL Truck Repair, Inc., the Plaintiff, entered into an Asset Purchase Agreement (the “Agreement”) with Defendants, Triple LLL, Inc. (“Triple LLL”) and Maurice Long, in February 2012. Under the Agreement, Plaintiff purportedly purchased the assets of Triple LLL with the exception of Triple LLL’s cash, accounts receivable, motor vehicles not identified in the Agreement, and personal items of Mr. Long that were identified in the Agreement. The assets purchased included the goodwill and intangible assets of the business including, apparently, the intellectual property.

Since purchasing the business, the Plaintiff claims it has run a full-service maintenance and repair facility using the “Triple LLL” mark (the “Mark”). Further, the Plaintiff owns U.S. Registration No. 6,209,305 in connection with “retail stores featuring tractor, truck, and trailer parts and tractor, truck, and trailer maintenance, repair, and tire alignment” (the “Registration”).

It has since come to the attention of the Plaintiff that Triple LLL has begun operating a truck repair facility under the name “Triple LLL, Inc. Truck and Trailer Services.” In addition to the similar name, Triple LLL apparently runs its new business out of the same building it previously used for its business operations. Plaintiff claims the Defendants’ use of the Mark and the use of the same building to operate their business is likely to cause confusion and deceive the public into believing the Parties are connected. Further, Plaintiff claims Triple LLL has actively solicited its customers and actual confusion has occurred between vendors and customers of Plaintiff.

Therefore, Plaintiff is seeking damages for willful trademark infringement in violation of 15 U.S.C. § 1114. Plaintiff also claims Defendants’ actions amount to unfair competition and false designation of origin in violation of 15 U.S.C. § 1125. Plaintiff is requesting damages, treble damages, ill-gotten profits, reasonable attorneys’ fees, statutory damages, and the costs of the suit.

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Indianapolis, IndianaVroom, Inc. (“Vroom”), the Plaintiff, apparently began selling used vehicles online in 2013. As e-commerce has taken off, Vroom sought and registered numerous trademarks including those at issue in this case as shown below (the “Vroom Marks”).​

Mark Registration No./Serial No.
VROOM 4,917,005
Picture1-5076055 5,076,055
VROOM 5,592,887
Picture2-5436572 5,436,572
VROOM GET IN 5,964,489
VROOM 6,075,286
Picture3-6070931 6,070,931
VROOM 87/287,698

According to the Complaint, Vroom became aware of Defendants’, Midwest Motors LLC, d/b/a Vrooomsace Car Selection and Khaled Alragwi, use of VROOMSACE, VROOMSACE CAR SELECTION, VROOMCARS.COM, vroomcars.com, and vroomindy.com in connection with the buying and selling of used cars (collectively the “Allegedly Infringing Properties”) in December 2020. Counsel for Vroom apparently sent multiple letters and emails to Defendants and even attempted to contact Defendants by phone to inform them of their allegedly infringing actions. As of the filing of the Complaint, Vroom claims Defendants did not respond to any of the cease and desist communications and continued using the Allegedly Infringing Properties.

Vroom claims Defendants’ use of the Allegedly Infringing Properties is likely to cause confusion or deceive customers as to the connection of the Defendants and Vroom. Therefore, Vroom is claiming Defendants’ activities and use of the Allegedly Infringing Properties constitute trademark infringement in violation of 15 U.S.C. § 1114. Also, under the Lanham Act, Vroom is seeking damages for false designation of origin and unfair competition in violation of 15 U.S.C. § 1125(a). Vroom is further claiming Defendants’ actions constitute common law unfair competition and trademark infringement. Finally, Vroom claims Defendants are in violation of the Anti-cybersquatting Consumer Protection Act under 15 U.S.C. § 1125(d) for using and registering the domain names “vroomindy.com” and “vroomcars.com.”

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Hotel-Chicago-WestLoop-2Chicago, Illinois – Chicago is apparently home to two hotels named “Hotel Chicago.” The first, owned by plaintiff/appellee, LHO Chicago River, LLC (“LHO”) was allegedly named in 2014. The second hotel, owned by defendants/appellants Rosemoor Suites, LLC, Portfolio Hotel & Resorts, LLC and Chicago Hotel, LLC (collectively “Rosemoor”), was apparently renamed to “Hotel Chicago” in 2016. LHO filed suit for trademark infringement and unfair competition under the Lanham Act, deceptive advertising, and common-law trademark infringement under Illinois law.

The district court found that LHO failed “to show that it is likely to succeed in proving secondary meaning” of the alleged mark “Hotel Chicago” and thus denied preliminary injunctive relief. While LHO appealed this ruling, it moved to voluntarily dismiss its claims with prejudice prior to briefing.

After the case was dismissed, Rosemoor filed a motion requesting more than half a million dollars in attorney fees, claiming the case was “exceptional.” This request was denied by the district court. On appeal, the Seventh Circuit held that the district court did not use the proper standard of Octane Fitness to deny the request and remanded. On remand, Rosemoor filed a renewed request for fees including an extra $130,000 on top of the original fee request. However, even after applying the Octane Fitness standard, the district court still denied the fee request. The Seventh Circuit affirmed finding the district court “considered the evidence under the Octane Fitness framework and reasonably determined that this case did not qualify as exceptional.”

Practice Tip: Under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 at n.7. (2014), a district court must consider the totality of the circumstances by simply weighing non-exclusive factors such as “frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.”

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Indianapolis, Indiana – Apparently, ABI Attachments, Inc. (“ABI”), the Plaintiff entered into a Product Lines Purchase Agreement with Defendants, Kiser Arena Specialists, Inc., (“KAS”) Robert D. Kiser, Individually and as Trustee of The  Kiser Family Trust, and James Kiser (collectively, the “Defendants”). Under the Agreement, ABI allegedly acquired assets and intellectual property including the trademark “DRAGMASTER®,” U.S. Trademark Registration No. 4,044,235 (the “Mark”), and “Product Lines” including “specifications, shop drawings, records, and intellectual property rights relating to the Product Lines.” ABI claims Defendants have used those documents relating to the Product Lines to market knockoff products. For example, ABI claims the Defendants’ Kiser 1000 Series is substantially similar to the ABI DragMaster as shown below.

ABI-300x212

Further, ABI asserts that Defendants have promoted the “new” products as “redesigned” which indicates the Defendants’ products are based on intellectual property now owned by ABI rather than a new product developed from scratch. According to the Complaint, KAS has used the same background music in some of its promotional videos as ABI: Compare

https://youtu.be/CWPjo2Ogzbc (KAS) with https://youtu.be/9lY2X2UvoL4 (ABI). ABI claims it has attained significant goodwill throughout the United States and the world and that Defendants alleged misleading and false advertisements have caused irreparable damage to ABI’s reputation.

ABI first seeks damages for Defendants’ alleged breach of their obligations under the Product Lines Purchase Agreement. Next, ABI claims Defendants have misappropriated its trade secrets by using the “specifications, shop drawings, blueprints, records and intellectual property rights relating to the Product Lines.” Pursuant to the Lanham Act, 15 U.S.C. §§ 1116 and 1117, ABI is seeking injunctive relief as well as actual and treble damages for willful trademark infringement. ABI is further claiming Defendants’ actions constitute false designation of origin and false advertising in violation of 15 U.S.C. § 1125(a). Finally, ABI is seeking damages for unfair competition, trademark misappropriation, and unjust enrichment under Indiana common law.

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Hammond, Indiana – Apparently Plaintiff, La Michoacana Meat Market TM Holdings, LLC (“La Michoacana”) owns numerous federal trademark registrations including the seven at issue in this case (the “Michoacana Marks”):

Mark Registration No.
LA MICHOACANA MEAT MARKET 3669454
LA MICHOACANA MEAT MARKET 4662100
Picture1 4662101
Picture2 4662104
LA MICHOACANA MEAT MARKET KIDS 4771484
Picture3 4784267
Picture4 4784268

According to the Complaint, La Michoacana uses the Michoacana Marks in connection with their meat markets, grocery stores, fruit shops, restaurants, and bakeries. Additionally, La Michoacana claims to sell private label goods such as coffee, beans, and spices.

Cacimiro Galan and Carniceria y Fruteria La Morentita, Defendants, allegedly own and operate a Mexican-themed grocery store using the name “Carniceria y Fruteria La Michoacana.” La Michoacana further asserts that Defendants have a link to La Michoacana’s website on their facebook page, which gives the improper impression that the Parties are affiliated or Defendants have a license to use the Michoacana Marks.

La Michoacana claims it informed Defendants of their infringing actions, but the Defendants did not cease. Therefore, La Michoacana is seeking damages for willful trademark infringement pursuant to 15 U.S.C. § 1117(a). Next, La Michoacana is claiming false designation of origin and unfair competition under 15 U.S.C. § 1125(a). Finally, La Michoacana is seeking relief for common law unfair competition and unjust enrichment.

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Indianapolis, Indiana – Apparently, La Michoacana Meat Market TM Holdings, LLC (“La Michoacana”), the Plaintiff owns a number of federal trademark registrations for use in connection with its Mexican-styled grocery stores, meat markets, fruit shops, restaurants, and bakeries (the “LA MICHOACANA Marks”).

According to the Complaint, Defendants, Josue Lopez and Supermercado Jireh LLC, own and operate at least one Mexican-themed grocery store using the name “Super Mercado Jireh Pollo Michoacano. La Michoacana claims that Defendants’ use of “MICHOACANO” in connection with food-related goods and services is confusingly similar to the LA MICHOACANA Marks and therefore constitutes infringement of those marks.

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La Michoacana is seeking damages for federal trademark infringement pursuant to 15 U.S.C. § 1117(a). It is further claiming damages for false designation of origin and unfair competition under 15 U.S.C. 1125(a). As La Michoacana claims it has suffered irreparable injury for which it has no adequate remedy at law, it is seeking a permanent injunction pursuant to 15 U.S.C. § 1116(a). Finally, La Michoacana is seeking damages for common law unfair competition and unjust enrichment.

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NobleRomansBlogPhoto-300x143Indianapolis, Indiana – Defendants, Gateway Triangle Corp., 7405 Indy Corp., 850 Indy Corp. Northlake Marketing, LLC and Thomas M. Collins, in a suit originally filed by Noble Roman’s, Inc. in the Superior Court of Marion County, Indiana filed a Notice of Removal to the United States District Court for the Southern District of Indiana.

According to the Complaint, Noble Roman’s is the exclusive holder of licensing and franchising rights relating to the Noble Roman’s pizza brand. Noble Roman’s claims while they had a Franchise Agreement with Defendant Gateway, that Franchise Agreement terminated on December 31, 2019. Noble Roman’s filed suit seeking damages for Defendants’ alleged conversion and theft of Noble Roman’s property rights in violation of Indiana Code §§ 35-43-4-3 and 34-43-4-2. The Complaint further sought damages for breach of the Franchise Agreement, trademark infringement of U.S. Registration Nos. 987,069, 1,920,428, and 1,682,308, and unjust enrichment.

Defendants claim the case is removable under 28 U.S.C. § 1441 in part because federal question jurisdiction exists as Noble Roman’s asserted a federal claim under the Lanham Act. Further, Defendants assert the Southern District of Indiana has supplemental jurisdiction of the state law claims under 28 U.S.C. § 1367(a) because they form part of the same case or controversy as the federal trademark claims.

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BlogPhoto-1Indianapolis, Indiana – Apparently Indianapolis Bouldering LLC, the Plaintiff, provides bouldering facilities as part of its fitness facility. According to the Complaint, Indianapolis Bouldering intends on opening a 52,000 square foot fitness facility (“North Mass Boulder”) in May 2021 using images of rocks and natural surfaces to create an organic branding aesthetic. The Defendants, BP Holdings Company, LLC, Seattle Bouldering Project, LLC, Minneapolis Bouldering Project, LLC, and Austin Bouldering Project, LLC (“Defendants”), allegedly operate climbing gyms in Washington, Texas, and Minneapolis with colorful and geometric branding.

Indianapolis Bouldering acknowledges in the Complaint that for “a brief period of time in late 2020, one of its members used content from one of Defendant’s websites (the “Website Content”) as a placeholder text during the website design process.” It further claims the Website Content was removed after being publicly available for two weeks and was replaced. The Parties apparently exchanged multiple letters regarding the Website Content and various other intellectual property rights. According to the Complaint, Defendants continued to threaten suit to enforce their purported intellectual property rights.

Therefore, Indianapolis Bouldering is seeking a declaratory judgment that (1) the intellectual property interests asserted by Defendants are invalid and/or unenforceable; (2) it is not infringing, has not infringed, and is not liable for infringing any allegedly enforceable intellectual property interest; and (3) non-violation of alleged trade secrets of Defendants.

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