South Bend, Indiana — Trademark lawyers for Coach, Inc. of New York, New York and Coach Services, Inc. of Jacksonville, Florida (collectively, “Coach“) have sued Maxx Tan; Maxx Tan Logan, LLC — both of Logansport, Indiana — and James Robert McCarthy (“McCarthy”) of Marion, Indiana, individually and d/b/a Maxx Tan, for infringement of the COACH trademark which has been registered by the U.S. Trademark Office.
Coach was founded more than 70 years ago as a family-run workshop in Manhattan. Since then, the company has been engaged in the manufacture, marketing and sale of fine leather and mixed-material products including handbags, wallets and accessories including eyewear, footwear, jewelry and watches. Coach products have become among the most popular in the world, with Coach’s annual global sales currently exceeding three billion dollars.
On October 17, 2012, a private investigator from Coach visited Maxx Tan and observed numerous trademarked handbags, sunglasses and accessories displayed for sale. These items bore the trademarks of many high-end brands, including Coach.
The investigator purchased a purse which bore a Coach trademark for $69 plus tax and left the store. The investigator then returned, explained the reason for the purchase, attempted to serve a cease-and-desist letter on McCarthy, and asked McCarthy to surrender the merchandise. McCarthy agreed to stop selling the merchandise but refused to surrender anything.
The investigator contacted the Logansport police. In the following weeks, Maxx Tan surrendered various purses, a pair of sunglasses and a sunglasses case to the police, all of which bore the Coach mark. All of the surrendered items are alleged to be counterfeit.
Coach, the owner of at least 47 trademarks, subsequently sued Maxx Tan and McCarthy, whom Coach contends is individually liable for any infringing activities. It alleges that Maxx Tan and McCarthy are engaged in designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale products bearing logos and source-identifying indicia and design elements that are studied imitations of the Coach trademarks.
The complaint includes counts for trademark infringement, false designation of origin and false advertising under the Lanham Act, 15 U.S.C. §§ 1114, 1116, 1117, 1125(a) and (c); trademark infringement and unfair competition under the common law of the State of Indiana; and forgery under Indiana Code § 35- 43-5-2(b) as well as counterfeiting under Indiana Code § 35-43-5-2(a), pursuant to Indiana Code § 34-24-3-1. These counts are listed as:
· COUNT I (Trademark Counterfeiting, 15 U.S.C. § 1114)
· COUNT II (Trademark Infringement, 15 U.S.C. § 1114)
· COUNT III (False Designation of Origin and False Advertising, 15
U.S.C. § 1125(a))
· COUNT IV (Common Law Trademark Infringement)
· COUNT V (Common Law Unfair Competition)
· COUNT VI (Forgery Under Ind. Code § 35-43-5-2(b))
· COUNT VII (Counterfeiting Under Ind. Code § 35-43-5-2(a))
· COUNT VIII (Common Law Unjust Enrichment)
· COUNT IX (Attorneys’ Fees)
Coach asks the court, inter alia, to enter judgment against the defendants on all counts; for an injunction against further wrongful activity; to order that all infringing materials be recalled and disposed of; to award to Coach statutory damages of $2,000,000 per counterfeit mark per type of good; to award punitive damages; and to award to Coach its costs and attorneys’ fees.
Practice Tip: Coach has been very aggressive in protecting its intellectual property rights in Indiana courts over the last few years. Coach’s intellectual property attorneys have filed numerous similar lawsuits in Indiana courts, several of which Indiana Intellectual Property Law and News has blogged about.
Coach v. Downtown Gift Shop (blog posting)
Coach v. Kristy’s Trends (blog posting)
Coach v. The Treasure Box (blog posting)
Decision: Coach v. Novelty
Original Complaint: Coach v. Novelty
Decision: Coach v. Tom’s Treasure Chest (blog posting)
Coach v. J and JS Petroleum
Coach v. Lyn-Maree’s
Decision: Coach v. Diva’s House of Style (blog posting)
Complaint: Coach v. Diva’s House of Style
Coach v. Angela Mauller
Decision (partial summary judgment): Coach v. Chaos of Muncie (blog posting)
Complaint: Coach v. Chaos of Muncie
Coach v. Accessory Closet
Coach v. Diggz Clothing