Indiana Intellectual Property Law News

September 25, 2013

Alcon Sues Wockhardt for Patent Infringement of Pataday™

Indianapolis, Indiana — Alcon Research, Ltd. of Fort Worth, Texas, and Alcon Pharmaceuticals Ltd. of Fribourg, Switzerland (collectively, “Alcon”) have filed a patent infringement lawsuit in the Southern District of Indiana alleging that Wockhardt Limited of Mumbai, Maharashta, India; Wockhardt Bio AG of Zug, Switzerland; Wockhardt Bio Ltd. of Zug, Switzerland; and Wockhardt USA, LLC of Parsippany, New Jersey (collectively, “Wockhardt”) infringed Patent Nos. 6,995,186 (the “‘186 patent”) and 7,402,609 (the “‘609 patent”), both for Olopatadine Formulations For Topical Administration, which have been issued by the U.S. Patent Office.

According to the complaint, the Wockhardt entities are engaged in the generic-pharmaceutical business. Alcon asserts that one or more of the entities manufacture, import, market, offer to sell and/or sell generic drugs throughout the United States.

Wockhardt filed an Abbreviated New Drug Application (“ANDA”) with the U.S. Food and Drug Administration (“FDA”) seeking approval to manufacture and sell a generic version of Pataday™ ophthalmic solution, a drug product containing olopatadine hydrochloride. The two patents-in-suit, which Alcon claims to own, are asserted to cover Pataday™. Alcon contends that Wockhardt’s submission of this ANDA to obtain approval to engage in the commercial manufacture, use, offer for sale, sale and/or importation of Wockhardt’s ANDA product before the expiration of the patents-in-suit is an act of infringement under 35 U.S.C. § 271(e)(2)(A).

Plaintiff Alcon states that it believes that the Wockhardt entities are part of a vertically integrated and unified organization and that they will act in concert to introduce the generic version of Pataday™ to the United States market prior to the expiration of Alcon’s patents.

In the complaint, intellectual property attorneys for Alcon list the following claims:

· Count I: Infringement of the ‘186 Patent

· Count II: Infringement of the ‘609 Patent

· Count III: Declaratory Judgment of Infringement of the ‘186 Patent

· Count IV: Declaratory Judgment of Infringement of the ‘609 Patent

Alcon asks for a judgment that the ‘186 and ‘609 patents are valid and enforceable and have been infringed; a judgment providing that the effective date of any FDA approval of commercial manufacture, use or sale of Wockhardt’s ANDA product be not earlier than the latest of the expiration date of the patents-in-suit, inclusive of any extension(s) and additional periods of exclusivity; preliminary and permanent injunctions protecting products covered by the ‘186 patent prior to its expiration; preliminary and permanent injunctions protecting products covered by the ‘609 patent prior to its expiration; a judgment declaring that the commercial manufacture, use, sale, offer for sale or importation of Wockhardt’s ANDA product, or any other drug product covered by the ‘186 patent, will infringe, induce the infringement of, and contribute to the infringement by others of, that patent; a judgment declaring that the commercial manufacture, use, sale, offer for sale or importation of Wockhardt’s ANDA product, or any other drug product covered by the ‘609 patent, will infringe, induce the infringement of, and contribute to the infringement by others of, that patent; a declaration that this is an exceptional case and an award of attorneys’ fees; and costs and expenses.

Practice Tip: The FDA’s ANDA process for generic drugs has been abbreviated such that, in general, the generic drug seeking approval does not require pre-clinical (animal and in vitro) testing. Instead, the process focuses on establishing that the product is bioequivalent to the “innovator” drug that has already undergone the full approval process. The statute that created the abbreviated process, however, had also created some interesting issues with respect to the period of exclusivity. For an interesting look at some of these issues, see here.

September 23, 2013

J & J Sports Sues Los Chilaquiles Restaurant and Owner Carranza for Unauthorized Interception and Broadcast of “Star Power” Fight

By Overhauser Law Offices, LLC

Indianapolis, Indiana — J & J Sports Productions, Inc. of Campbell, California (“J & J Sports”) sued in the Southern District of Indiana alleging that Loyda A. Carranza and Carranza, Inc. of Indianapolis, Indiana (collectively, “Carranza”), both doing business as Los Chilaquiles Restaurant, intercepted and broadcast “Star Power: Floyd Mayweather, Jr. v. Victor Ortiz” without authorization.

J & J Sports states that it is the exclusive domestic commercial distributor of Star Power: Floyd Mayweather, Jr. v. Victor Ortiz (the “program”). It has sued Carranza, Inc. and Loyda A. Carranza as an individual under the Communications Act of 1934 and The Cable & Television Consumer Protection and Competition Act of 1992.

Specifically, Defendants have been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553 by displaying the program on September 17, 2011 without a commercial license. Regarding the claim under 47 U.S.C. § 605, the complaint alleges that with “full knowledge that the Program was not to be intercepted, received, published, divulged, displayed, and/or exhibited by commercial entities unauthorized to do so, each and every one of the above named Defendants . . . did unlawfully intercept, receive, publish, divulge, display, and/or exhibit the Program” for the purpose of commercial advantage and/or private financial gain.

A count of conversion is also included which asserts that Defendants’ acts were “willful, malicious, egregious, and intentionally designed to harm Plaintiff J & J Sports” and that, as a result of being deprived of their commercial license fee, J & J Sports suffered “severe economic distress and great financial loss.”

In addition to naming the separate legal entity, Carranza, Inc., which apparently owns the restaurant, Plaintiff has also sued Defendant Loyda Carranza as an individual, alleging that she had the right and ability to supervise the activities of Los Chilaquiles. J & J Sports asserts that those activities included the unlawful interception of Plaintiff’s program. J & J Sports also contends that Ms. Carranza specifically directed the employees of Los Chilaquiles to unlawfully intercept and broadcast Plaintiff’s program at Los Chilaquiles or, if she did not, that the actions of the employees of Los Chilaquiles are directly imputable to Ms. Carranza by virtue of her purported responsibility for the activities of Los Chilaquiles. Ms. Carranza has also been named individually as a result of J & J Sports’ contention that she is a managing member of Carranza, Inc. and, further, as an individual specifically identified on the liquor license for Los Chilaquiles, had an obvious and direct financial interest in the activities of Los Chilaquiles.

In the complaint, the intellectual property attorney for J & J Sports listed the following counts and requests for redress:

Count I: Violation of Title 47 U.S.C. Section 605. For this count, J & J Sports requests (a) statutory damages for each willful violation in an amount to $100,000.00 pursuant to Title 47 U.S.C. 605(e)(3)(C)(ii), and (b) the recovery of full costs, including reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 605(e)(3)(B)(iii).
Count II: Violation of Title 47 U.S.C. Section 553. For this count, J & J Sports asks the court for (a) statutory damages for each violation in an amount to $10,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(A)(ii); (b) statutory damages for each willful violation in an amount to $50,000.00 pursuant to Title 47 U.S.C. § 553(c)(3)(B); (c) the recovery of full costs pursuant to Title 47 U.S.C. Section 553 (c)(2)(C); and (d) and in the discretion of the court, reasonable attorneys’ fees, pursuant to Title 47 U.S.C. Section 553 (c)(2)(C).
Count III: Conversion. For this count, the court is requested to order both compensatory and punitive damages from Defendants as the result of the Defendants’ allegedly egregious conduct, theft, and conversion of the program and deliberate injury to the Plaintiff.

Practice Tip #1: The interception claim has a two-year statute of limitations, which explains why this complaint was filed on September 13, 2013, almost exactly two years after the broadcast of the program. J & J Sports initiated 708 lawsuits in 2011 alone. It appears that many of them were also filed near the eve of the two-year anniversary of the broadcast of the program at issue in each individual lawsuit.

Practice Tip #2: While on the surface this appears to be a copyright case, an allegation of interception under 47 U.S.C. § 605 is a different cause of action from copyright infringement. However, a suit alleging interception does not preclude an additional lawsuit alleging different causes of action. For example, the copyright holder can also sue for copyright infringement, which could increase damages by as much as $150,000.

September 20, 2013

CSP Sues Süd-Chemie and Airsec Again for Patent Infringement, Adds Defendant Clariant Produkte Deutschland

By Overhauser Law Offices, LLC

New Albany, Indiana — Patent lawyers for CSP Technologies, Inc. of Auburn, Alabama have sued Clariant Produkte Deutschland GmbH of Frankfurt, Germany, Süd-Chemie, Inc. of Louisville, Kentucky and Airsec S.A.S. of Choisy-le-Roi, France (collectively, “Defendants”) for patent infringement in the Southern District of Indiana. At issue is RESEALABLE MOISTURE TIGHT CONTAINER ASSEMBLY FOR STRIPS AND THE LIKE HAVING A LIP SNAP SEAL, Patent No. 8,528,778 (the “‘778” patent), which has been issued by the U.S. Patent Office.

CSP develops, manufactures, distributes and sells product packaging that enhances the stability and shelf life of package contents. It has been granted patents directed towards desiccant-entrained polymers and other sealing technology incorporated into product packaging. Such technologies are designed to create a moisture-free environment for a packaged product.

CSP has sued Defendants Clariant Produkte Deutschland, Süd-Chemie and Airsec, which compete with CSP in the field of product packaging, for patent infringement. This is at least the third patent infringement lawsuit involving CSP and some or all of the Defendants. The first case was filed in 2003 in Indiana. In that case, CSP asserted infringement of U.S. Patent No. 5,911,937 and U.S. Patent No. 6,214,255, both titled DESICCANT ENTRAINED POLYMER. In a 108-page opinion, the judge held that CSP’s two patents were valid and that Süd-Chemie had infringed them. She ordered the parties into mediation where they eventually settled for $8 million. The court entered a consent order, retaining jurisdiction and enjoining Defendants in that case from infringing the asserted patents.

Following the resolution of that lawsuit, Defendants allegedly began or resumed selling infringing products. In response to Defendants’ sales, CSP filed an additional lawsuit in 2011, again in Indiana, alleging infringement of Patent No. 7,537,137. As is the ‘778 patent, that patent was titled RESEALABLE MOISTURE TIGHT CONTAINER ASSEMBLY FOR STRIPS AND THE LIKE HAVING A LIP SNAP SEAL.

This latest lawsuit was filed on September 10, 2013, the same day as the issuance of the ‘778 patent. It alleges willful infringement of CSP’s patented technology relating to packaging for, among other things, the diagnostic-test-strip market.

Patent attorneys for CSP list a single count of patent infringement in the complaint. It is asserted that Defendants’ conduct is willful and deliberate. CSP asks the court for preliminary and permanent injunctions barring infringement; for an accounting of damages, including both pre- and post-judgment interest and costs; for a determination that Defendants willfully and deliberately infringed the ‘778 patent, and that damages be trebled as a consequence; and that the case be declared exceptional and, pursuant to such a finding, that CSP be awarded its reasonable attorneys’ fees.

Practice Tip: The “willfulness” of the alleged infringement is an important issue in patent litigation because willful infringement results in a tripling of the damages awarded to the patent holder. To establish willfulness, the patent holder must prove that the infringer acted with at least “objective recklessness.”

September 19, 2013

TCYK Sues Nine John Doe Defendants for Copyright Infringement of “The Company You Keep”

By Overhauser Law Offices, LLC

Hammond, Indiana — Copyright lawyers for TCYK LLC of Los Angeles, CA sued for copyright infringement in the Northern District of Indiana alleging that John Does 1-9, all allegedly located in Indiana, infringed the copyrighted work “The Company You Keep,” which has been registered by the U.S. Copyright Office.

The movie stars Robert Redford, Susan Sarandon, Shia LaBeouf, Anna Kendrick, Julie Christie and Nick Nolte. It was directed by Robert Redford. TCYK alleges that the infringing transfer and copying of this movie, which was released on DVD on August 13, 2013, was accomplished by Defendants using BitTorrent, a peer-to-peer file-sharing protocol. Specifically, the Doe Defendants are accused of deliberately participating in a peer-to-peer “swarm,” and illegally reproducing and/or distributing portions of the movie in digital form with other Defendants. TCYK indicates in its complaint that it used geolocation technology to determine that the Doe Defendants were located in Indiana.

The complaint lists a single count of copyright infringement. Copyright attorneys for Plaintiff ask the court for permanent injunctions prohibiting infringement of Plaintiff’s movie; the destruction of all copies of infringing works in any Defendant’s control; judgment that Defendants have willfully infringed Plaintiff’s copyrighted work; judgment that Defendants have otherwise injured the business reputation and business of Plaintiffs; for actual damages or statutory damages; and for attorneys’ fees and litigation expenses.

Practice Tip #1: The impact of distributing large files on servers and networks can be reduced by using BitTorrent. Instead of downloading a file from a single server, the BitTorrent protocol allows users to join a “swarm” of hosts, each of which downloads and uploads data from the others simultaneously.

Practice Tip #2: TCYK has filed dozens of lawsuits in federal courts claiming copyright infringement of “The Company You Keep”, including courts in Indiana, Florida, Illinois, Minnesota, Ohio and Wisconsin. It is estimated that thousands of defendants have been sued by TCYK on the allegation that they have infringed this copyrighted work. TCYK is also featured in an interesting article on the growing practice of using the court system to monetize infringement committed by individual infringers.

Practice Tip #3: It is curious that apparently neither the filing fee nor form AO 121 (Report on the Filing or Determination of an Action or Appeal Regarding a Copyright) was submitted to the court in conjunction with the filing of this complaint.

September 18, 2013

Little Sioux Added as a Defendant in CleanTech’s Multidistrict Litigation

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Patent lawyers for GS CleanTech Corp. of Alpharetta, Georgia (“CleanTech”) sued in the Northern District of Iowa alleging that Little Sioux Corn Processors, LLLP of Marcus, Iowa (“Little Sioux”) had infringed METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, Patent No. 7,601,858, and its family of related patents, which have been issued by the U.S. Patent Office. The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This lawsuit between CleanTech and Little Sioux is one of the most recent added to the Multidistrict Litigation currently underway in the Southern District of Indiana. It is being adjudicated by Judge Larry J. McKinney and Magistrate Judge Debra McVickers Lynch. At issue is CleanTech’s family of patents that claims a process that extracts corn oil from the byproducts created during the manufacture of ethyl alcohol.

Recently, attention has been given to the production of ethyl alcohol, also known as “ethanol,” for use as an alternative fuel. Ethanol burns cleaner than fossil fuels and can be produced using renewable domestic resources such as corn.

A popular method of producing ethanol is known as “dry milling,” whereby the starch in corn is used to produce ethanol through fermentation. In a typical dry milling method, the process starts by grinding each kernel of corn into meal, which is then slurried with water into mash. Enzymes are added to the mash to convert the starch to sugar. Yeast is then added to convert the sugar to ethanol and carbon dioxide. After this fermentation, the mixture is transferred to distillation columns where the ethanol is evaporated and removed, leaving an intermediate product called “whole stillage.” The whole stillage contains corn oil and the parts of each kernel of corn that were not fermented into ethanol. Despite that it still contains corn oil, the whole stillage has traditionally been treated as a byproduct of the dry-milling fermentation process and used primarily to supplement animal feed.

The ‘858 family of patents, which also includes U.S. Patent Nos. 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”) and 8,283,484 (the “‘484 patent”), relates to extracting corn oil from whole stillage. CleanTech claims that the method increases the efficiency and economy of recovering corn oil. Little Sioux is charged with infringing the ‘858 patent, along with the related ‘516, ‘517, and ‘484 patents (collectively “the patents-in-suit”)

This current suit seems to have its roots in a lawsuit filed by ICM, Inc. (hereinafter “ICM”), a Kansas corporation, which sued CleanTech in 2009 for a declaratory judgment of non-infringement and invalidity of the ‘858 patent. CleanTech asserts that ICM admitted in its complaint that that it “designs and builds ethanol production plants for customers and promotes, sells and installs centrifuge equipment to such customers for recovering oil from corn byproducts.” The complaint by ICM stated that it had filed the lawsuit to ask the court to determine whether ICM had the “right to sell and/or use equipment to practice corn oil recovery methods that are in part the subject of the claims of the ‘858 Patent.”

CleanTech asserts that ICM sold products and equipment to Little Sioux that infringe one or more of the claims of the patents-in-suit. Little Sioux is accused of using these products and equipment to infringe one or more of the claims of the patents-in-suit. In the complaint, patent attorneys for CleanTech assert:

· Count I: Infringement of U.S. Patent No. 7,601,858

· Count II: Infringement of U.S. Patent No. 8,008,516

· Count III: Infringement of U.S. Patent No. 8,008,517

· Count IV: Infringement of U.S. Patent No. 8,283,484

CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the patents-in-suit; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the patents-in-suit as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284, 285 and 154(d).

Practice Tip: Multi-district litigation affords consistency and judicial economy, as well as allowing plaintiffs and defendants to concentrate their efforts in one forum. However, lawsuits that are not settled before trial must later be remanded to the transferring court and to a judge who has had little opportunity to become familiar with the issues.

September 16, 2013

CleanTech Sues Aemetis for Infringing Patented Corn Oil Extraction Method

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Patent lawyers for GS CleanTech Corp. of Alpharetta, Georgia (“CleanTech”) filed a patent infringement suit in the United States District Court for the Eastern District of California — Fresno Division alleging that Aemetis, Inc. and Aemetis Advanced Fuels Keyes, Inc., (collectively, “Aemetis”), both of Cupertino, California, infringed CleanTech’s METHOD OF PROCESSING ETHANOL BYPRODUCTS AND RELATED SUBSYSTEMS, Patent No. 7,601,858, (the “‘858 patent”) which has been issued by the U.S. Patent Office. The case was transferred to the Southern District of Indiana as part of Multidistrict Litigation No. 2181.

This Multidistrict Litigation (“MDL”) began with an assertion of patent infringement by CleanTech of the ‘858 patent, which was issued on October 13, 2009. CleanTech sued numerous Defendants alleging infringement of that patent shortly after its issuance. The Defendants accused of patent infringement in prior litigation include: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products and Adkins Energy, LLC.

Since September 29, 2011, when the court overseeing the MDL issued its order on claim construction with respect to the disputed claims of the ‘858 patent, patentees, GS CleanTech Corp., and its parent GreenShift Corp., have asserted three additional patents in the ‘858 patent family against the allegedly infringing Defendants, U.S. Patent Nos., 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”) and 8,283,484 (the “‘484 patent”) (the ‘858, ‘516, ‘517 and ‘484 patents are, collectively, the “‘858 patent family”).

In this current lawsuit, initiated in Eastern District of California, subsidiary GS CleanTech Corp. is the sole Plaintiff. Patent attorneys for CleanTech assert only one count in the complaint: infringement of the ‘858 patent. CleanTech asks the court for preliminary and permanent injunctions prohibiting further infringement of the ‘858 patent; an award of damages adequate to compensate CleanTech for the infringement that has occurred, but in no event less than a reasonable royalty for the use made of the inventions of the ‘858 patent as provided in 35 U.S.C. § 284, together with prejudgment interest from the date the infringement began; and an award to CleanTech of all remedies available under 35 U.S.C. §§ 284 and 285.

Practice Tip: The United States Judicial Panel on Multidistrict Litigation, also known as the “MDL Panel” or, simply the “Panel,” consists of seven sitting federal judges, who are appointed to serve on the Panel by the Chief Justice of the United States. The job of the Panel is to (1) determine whether civil actions pending in different federal districts involve one or more common questions of fact such that the actions should be transferred to one federal district for coordinated or consolidated pretrial proceedings; and (2) select the judge or judges and court assigned to conduct such proceedings.

September 13, 2013

Steak n Shake Sues for Trademark Infringement

By Overhauser Law Offices, LLC

Denver, Colorado — Intellectual property lawyers for Steak n Shake Enterprises, Inc. and Steak n Shake, LLC of Indianapolis, Indiana (collectively “Steak n Shake”) sued in the United States District Court for the District of Colorado alleging that Globex Company, LLC; Springfield Downs, LLC; Christopher Baerns; Larry Baerns; Kathryn Baerns and Control, LLC, all of Colorado, are infringing the “Steak n Shake” marks, which have been registered by the U.S. Trademark Office.

Non-party Steak n Shake Operations, Inc., Steak n Shake Enterprises’ parent company, has continuously operated Steak n Shake restaurants specializing in burgers and milkshakes since 1934. There are currently 415 company-owned Steak n Shake restaurants in 15 states across the country. In addition, Steak n Shake Enterprises grants franchises to establish and operate Steak n Shake restaurants pursuant to written franchise agreements with Steak n Shake Enterprises, and written license agreements with Steak n Shake, LLC. There are currently 100 franchised Steak n Shake restaurants operating in 23 states, including Colorado. Steak n Shake asserts that the Steak n Shake trademarks, and the products and services offered in association with those marks, have been extensively promoted throughout the United States for many years.

This action against Defendants arose subsequent to the termination of franchise and license agreements between Plaintiffs Steak n Shake Enterprises, Inc., as franchisor, and Steak n Shake, LLC, as licensor, and Defendants as franchisees, licensees and/or guarantors. Steak n Shake contends that Defendants materially breached their obligations under the franchise and license agreements and failed to cure such breaches. As a result, Steak n Shake terminated the agreements.

Steak n Shake alleges that, notwithstanding the termination of the franchise and license agreements, Defendants continue to use the Steak n Shake name and marks in connection with the operation of competitive restaurants at the same locations as their former franchised Steak n Shake restaurants, and to hold their restaurants out to the public as authentic Steak n Shake restaurants.

In the complaint, trademark attorneys for Steak n Shake assert the following:

· Count I – Trademark Infringement

· Count II – Unfair Competition

· Count III – Breach of Contract – Specific Performance

· Count IV – Breach of Contract – Damages

· Count V – Breach of Guaranty – Damages

Steak n Shake seeks the following relief against Defendants, jointly and severally: preliminary and permanent injunctive relief enjoining Defendants’ trademark infringement and unfair competition, and ordering Defendants to perform their post-termination obligations under their franchise and license agreements and area development agreement, including their noncompetition covenants; recovery of the amounts owed to them by Defendants, including the damages each has sustained by reason of Defendants’ breaches and the resulting termination of the franchise and license agreements and area development agreement; and an award of the attorneys’ fees and costs incurred by Steak n Shake.

Practice Tip: Franchise agreements typically require the franchisee to cease using all of the franchise marks, as well as return all items bearing the franchise marks, in the event the franchise agreement is terminated. Failure to comply promptly with these provisions can lead to liability for trademark infringement, among other claims.

September 12, 2013

80/20 Sues “John Doe” for Trademark Infringement and Passing Off

By Overhauser Law Offices, LLC

Fort Wayne, Indiana — Trademark lawyers for 80/20, Inc. of Columbia City, Indiana filed a trademark infringement suit in the Northern District of Indiana alleging John Doe d/b/a TNutz of Champlain, New York infringed the trademark “80/20”, Trademark Registration No. 2,699,302, which has been registered with the U.S. Trademark Office.

80/20 is a manufacturer of T-slotted aluminum extrusion products and accessories. It sells to customers through a distribution network and an online “garage sale.” It asserts that it has marketed products and services under the trademark “80/20” since at least 1990. TNutz does business via its own website and an eBay store.

TNutz is accused of unfairly competing with 80/20 by, among other things, falsely representing that some of the products that it offers for sale are genuine 80/20 products when, according to 80/20, they are not. 80/20 indicates that it has no affiliation with TNutz.

The complaint also states that TNutz represents its own goods as 80/20 goods with the intention of causing confusion among, and deceiving, consumers who seek to purchase genuine 80/20 parts from or through 80/20. It also contends that TNutz has purposely hidden its true identity and physical location from consumers and competitors, asserting that the businesses listed as contacts for both TNutz’s website and its physical address are unrelated third parties.

80/20 indicates that it sent a cease-and-desist letter to TNutz on May 10, 2013 demanding that TNutz cease infringement and compensate 80/20 for the damages caused by the allegedly infringing conduct. 80/20 apparently received no response to its demands.

The complaint lists the following causes of action:

· Count I: Trademark Infringement

· Count II: Lanham Act Violation — Passing Off

Trademark lawyers for 80/20 ask the court for preliminary and permanent injunctions prohibiting infringement; an award of actual damages and profits by TNutz attributable to infringement of 80/20’s trademarks and/or statutory damages; an award of reasonable attorneys’ fees, upon a finding that this is an exceptional case; and the destruction of all materials in TNutz’s control bearing the “80/20” mark.

Practice Tip:

If a defendant’s identity is not clear from the evidence available when a complaint is filed, a “John Doe” designation is typically used to represent that unidentified defendant. After filing such a complaint, the plaintiff may then ask the court to use its authority to subpoena various third parties, such as internet service providers, to disclose the identity of the Doe defendant(s). Here, presumably, the plaintiff will subpoena to eBay to discover the identity of “John Doe.”

Although trademark lawsuits with a “John Doe” defendant are a relative rarity, this is the second one we have blogged about this week. Sometimes, as was the case in the other recent trademark complaint with a “John Doe” defendant, revealing the identity of the unknown defendant is largely procedural. In other cases, however, Doe defendants are highly motivated to preserve their anonymity, as they do not want to be associated with the embarrassing allegations in the complaint. See, e.g., one Doe defendant’s request to quash or modify a subpoena in a copyright case which involved the alleged illegal downloading of adult content.

September 9, 2013

USPTO Seeking Nominations for the Trademark Public Advisory Committee

By Overhauser Law Offices, LLC

Washington, D.C. — The United States Patent and Trademark Office (“USPTO”) is seeking nominations to fill upcoming vacancies for the Trademark Public Advisory Committee (“TPAC”). Nominations must be postmarked or electronically transmitted on or before September 30, 2013. Submission details can be found in the Federal Register.

Currently, there are up to three vacancies on the TPAC that need to be filled. Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce. Each member serves a three-year term.

“The Committee’s input is an essential component to our continuing efforts to support American innovation, support job creation and make U.S. businesses more competitive in the global economy,” said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea.

September 6, 2013

Texas Roadhouse Sues Multiple Restaurants Operating as “Texas Corral” or “Amarillo Roadhouse”

By Overhauser Law Offices, LLC

Grand Rapids, Michigan — Trademark lawyers for Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC, both of Louisville, Kentucky (collectively, “Texas Roadhouse”) sued for trademark infringement in the Western District of Michigan alleging that the Defendants, including those doing business as multiple Texas Corral restaurants located in Indiana (collectively “Texas Corral”), as well as one Amarillo Roadhouse restaurant, also located in Indiana, infringed the service mark TEXAS ROADHOUSE, Trademark Registration Nos. 1,833,533; 2,231,309; and 2,250,966, which have been registered by the U.S. Trademark Office.

Texas Roadhouse operates a Texas-themed restaurant chain. The first Texas Roadhouse restaurant opened in Clarksville, Indiana in 1993. As of March 2013, there were 397 Texas Roadhouse restaurants in 47 states and three countries.

Texas Roadhouse contends that each of the restaurants is required to comply with strict exterior and interior design requirements so that the look and feel is substantially identical across all Texas Roadhouse locations. It lists three U.S. Service Mark Registrations that include the mark “Texas Roadhouse” and asserts that each of them is incontestable. Texas Roadhouse also claims ownership of various unregistered marks that include the word “Texas” and “Roadhouse” as well as copyright protection, including a U.S. Copyright registration, of its marquee. Finally, Texas Roadhouse claims intellectual-property rights in the trade dress of its restaurants, including the look of the exterior design of the building, the interior décor, the music and the menu.

Texas Corral, against which Texas Roadhouse filed this complaint, also operates casual, western-themed, family restaurants. It owns and operates nine restaurant locations doing business under the name “Texas Corral.” A total of ten locations are at issue in this lawsuit. Six Indiana cities have “Texas Corral” restaurants: Highland, Merrillville, Portage, Michigan City, Martinsville and Shelbyville. Texas Corral also purportedly owns and operates a location that does business as “Amarillo Roadhouse” in Indiana, which is also at issue in this trademark-infringement lawsuit. In addition, three other Texas Corral restaurants have been listed in the complaint: two in Michigan and one in Illinois.

Also listed in the complaint are Paul Switzer, asserted to be the franchisor/licensor of Texas Corral restaurants and Victor Spina, asserted to be a franchisee/licensee. “John Doe Corp.,” a fictitious name intended to represent entities or individuals whose actual identity is not currently known to Texas Roadhouse, is also listed as a Defendant.

In the complaint, trademark attorneys for Texas Roadhouse assert that Texas Corral and Amarillo Roadhouse routinely use trade dress, trademarks, service marks, trade names, designs or logos that are confusingly similar to or copies of intellectual property owned by Texas Roadhouse. This purportedly infringing use is asserted to be visible in signage, print and electronic promotional materials, menus, décor, building design and websites.

Texas Roadhouse’s complaint against Texas Corral and Amarillo Roadhouse lists the following:

· Count I: Trade Dress Infringement

· Count II: Federal Trademark Infringement

· Count III: Trademark Infringement Under Mich. Comp. Laws § 429.42

· Count IV: Trademark Infringement Under Ind. Code § 24-2-1-13

· Count V: Trademark Infringement Under Common Law

· Count VI: Copyright Infringement Under 17 U.S.C. § 101 et seq.

· Count VII: Unfair Competition Under Michigan and Indiana Common Law

Texas Roadhouse asks for a judgment that Texas Roadhouse owns enforceable rights in the Texas Roadhouse intellectual property and that all registrations for the Texas Roadhouse intellectual property are valid; a judgment that the Defendants have been and are directly or indirectly infringing the Texas Roadhouse intellectual property; a judgment that the Defendants have been and are engaging in unfair competition by their unauthorized use of the Texas Roadhouse intellectual property; a judgment that Defendants acted deliberately, willfully, intentionally or with malicious intent; an injunction against Defendants prohibiting infringement; damages, including treble damages; a judgment that this case is exceptional and that the Defendants be ordered to pay all of Texas Roadhouse’s attorney fees associated with this action pursuant to 15 U.S.C. § 1117 and 17 U.S.C. § 505; and a judgment that the defendants be ordered to pay all costs and expenses incurred by Texas Roadhouse in this action.

Practice Tip:

The U.S. Supreme Court has addressed the requirements for trade dress protection in a similar context. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). At issue in Two Pesos was similar restaurant décor. Taco Cabana had sued rival Two Pesos for copying the look of its restaurant, described as “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.” The lawsuit alleged that Two Pesos had imitated this scheme and had thereby infringed on Taco Cabana’s trade dress. Among the issues considered was whether trade dress which was inherently distinctive must also be shown to have secondary meaning to be granted protection under the Lanham Act. The Supreme Court held that trade dress which is inherently distinctive is protectable under § 43(a) of the Lanham Act without a showing that it has acquired secondary meaning, since such trade dress itself is capable of identifying products or services as coming from a specific source.

Also at issue in this case, among other matters, will be the eligibility of the words “Texas” and “Roadhouse” for protection under federal and Indiana intellectual-property laws. Under the Lanham Act, a federal law, the holder of a mark may ask the United States Patent and Trademark Office to register the mark on the principal register. 15 U.S.C.A. § 1051, et seq. Marks that are “primarily descriptive” and “primarily geographically descriptive” of the goods or services with which they are associated are not eligible for registration on the principal register unless they have “become distinctive of the applicant’s goods in commerce.” 15 U.S.C.A. § 1052(e), (f). Thus, registration of a descriptive mark on the principal register requires a showing of secondary meaning.

Although the Lanham Act protects both registered and unregistered marks, registration is desirable because it constitutes prima facie evidence of the mark’s validity. See 15 U.S.C.A. §§ 1057(b), 1115(a). Thus, federal registration of a mark “‘entitles the plaintiff to a presumption that its registered trademark is not merely descriptive or generic, or, if merely descriptive, is accorded secondary meaning.'” The plaintiff bears the burden, however, of establishing that an unregistered mark is entitled to protection.

The Indiana Trademark Act is similar, and in some respects identical, to the Lanham Act. Although Indiana’s body of trademark law is relatively undeveloped, the General Assembly has specified that the Indiana Trademark Act “is intended to provide a system of state trademark registration and protection that is consistent with the federal system of trademark registration and protection under the Trademark Act of 1946.” Ind. Code Ann. § 24-2-1-0.5. Moreover, “[a] judicial or an administrative interpretation of a provision of the federal Trademark Act may be considered as persuasive authority in construing a provision of the Indiana Trademark Act.

The Indiana Trademark Act’s definitions of “trademark” and “service mark” track the Lanham Act’s definitions of those terms nearly verbatim. See I.C. § 24-2-1-2(8), (9). Like the Lanham Act, the Indiana Trademark Act does not adversely affect common-law trademark rights. See I.C. § 24-2-1-15. Registration of a trademark or service mark with the office of the Indiana Secretary of State provides a registrant with a remedy for the infringement thereof under the Indiana Trademark Act. I.C. § 24-2-1-14(a). Like the Lanham Act, the Indiana Trademark Act prohibits the registration of marks that are “primarily geographically descriptive or deceptively geographically misdescriptive of the goods or services[.]” I.C. § 24-2-1-3. This provision does not, however, prevent the registration of a mark that is used in Indiana by the applicant and has become distinctive of the applicant’s goods or services. In other words, a geographically descriptive mark may be registered under the Indiana Trademark Act if it has acquired secondary meaning.
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