Indiana’s Southern District Court, Not Arkansas District Court, Will Hear Brandt Grain Cart Trademark Infringement Suit


Indianapolis, IN – Rulings by district courts in Indiana and Arkansas have ensured that the Southern District Court of Indiana will decide a longstanding trademark dispute over a mark used in agricultural machinery. Last week, the Southern District Court declined to transfer Brandt Industries Limited (BIL) v. Pitonyak Machinery Corporation (PMC) to the Eastern District of Arkansas, and the Eastern District Court of Arkansas has transferred its version of the case to Indiana’s Southern District Court.

On July 6, 2010, attorneys for BIL filed a trademark infringement suit in the Southern District of Indiana seeking a declaratory judgment regarding rights to the trademark.

The next day, July 7, trademark attorneys for PMC filed suit in the Eastern District of Arkansas, making a nearly identical trademark infringement claims. Indiana Intellectual Property Lawyer Blog previously wrote about the case here: PMC then sought transfer of the Indiana case to Arkansas federal court, arguing that all the witnesses were in Arkansas and therefore Arkansas would be a more convenient location for the trial. PMC, based in Carlisle, Arkansas, also argued that Indiana did not have a significant connection to the litigation. BIL is a Canadian company. BIL, however, listed numerous Indiana locations where products with the disputed trademark are sold. The rulings by the two district courts last week settle this dispute over which court will hear the case.

Practice Tip: This case illustrates the importance of being the first party to file a lawsuit when there is a trademark dispute about a product sold in multiple jurisdictions. Certainly, PMC’s argument that it will be inconvenient for it to litigate in Indiana since it is located in Arkansas is well taken. However, inconvenience to PMC was not a sufficient reason for the district courts to transfer the case to Arkansas. Had attorneys for PMC filed the trademark dispute in their preferred court before BIL filed the Indiana case, PMC may have been able to avoid litigating in an inconvenient location.

The mark in question is the word “BRANDT” used in connection with agricultural machinery, goods and services. Both parties allege that the other is infringing upon a trademark, citing he Lanham Act, 15 U.S.C. ยง 1125. PMC alleges it acquired the Brandt mark when it purchased Arkansas companies Brandt Manufacturing and Brandt Incorporated in 2002. PMC’s trademark attorneys allege that the Brandt mark has been used continuously since 1945 by PMC and its predecessors-in-interest. PMC alleges that the defendants have appropriated the Brandt mark and are using the mark on products, in advertising and in various other respects. Specifically, PMC is concerned about the mark’s use on grain carts and other agricultural machinery. BIL’s attorneys, however, dispute these claims. Shortly after PMC acquired Brandt, PMC’s trademark attorneys filed a trademark application for the Brandt mark. BIL filed a trademark application for the Brandt mark in 2003. Noting the dispute, the US Trademark Office has not issued a trademark for either party.

The case has been assigned to Judge Tanya Walton Pratt and Magistrate Judge Debra McVicker Lynch of the Southern District of Indiana. The docket number is 1:10-cv-00857-TWP-DML.

Complaint – Pitonyak v. Brandt

Filed: July 6, 2010 as 1:2010cv00857 Updated: February 12, 2011 07:09:10



Presiding Judge:Tanya Walton Pratt

Referring Judge:Debra McVicker Lynch

Cause Of Action: Trademark Infringement

Court:Seventh Circuit > Indiana > Southern District Court

Type:Intellectual Property > Trademark

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