Angie’s List v. ServiceMagic – Answers and Counterclaims Filed

There are a few updates in Indiana’s first keyword advertising case, Angie’s List v. ServiceMagic. The lawsuit is still in the early stages, with Answers and Counterclaims being filed. An Initial Pretrial Conference is set for 10/12/2012 so stay tuned for updates.

ServiceMagic Answer, Affirmative Defenses and Counterclaims:

Angie’s List Answer to Counterclaims:

Indiana Trademark Litigation Update – Hospitality International v. Indiana Hospitality Real Estate & Management

Plaintiff, Hospitality International Inc., offers franchise opportunities for hotel and motel owners. They own the rights to 5 brands, including Red Carpet Inn, Passport Inn, Master Hosts Inns, Downtowner Inns and the subject of this lawsuit, Scottish Inns. Defendant has allegedly been operating under the Scottish Inns brand without authorization since 2009. Defendant’s predecessor-in-interest had a license agreement (see below) but Defendant never entered into an agreement and allegedly owe back-royalties of around $29,000. After Defendant failed to timely respond to Plaintiff’s cease-and-desist letter (see below), this lawsuit was filed, claiming trademark infringement and unjust enrichment.

Stay tuned for updates.

Hospitality International Inc. v. Indiana Hospitality Real Estate & Management LLC

Court Case Number: 1:12-cv-00998-WTL-MJD
File Date: Thursday, July 19, 2012
Plaintiff: Hospitality International Inc.
Plaintiff Counsel: Michael R. Franceschini of Ayres Carr & Sullivan PC
Defendant: Indiana Hospitality Real Estate & Management LLC
Cause: Trademark Infringement, Unjust Enrichment
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Mark J. Dinsmore

Complaint:

License Agreement:

Cease & Desist Letter:

Stories from the Week that Was – 6/17/12-6/23/12

A week spent getting caught up from vacation. I had a great time giving a seminar at the office on Tuesday, Trademark and Brand Protection for Communicators. Look out for more of those in the future. It’s also about time to start preparing for Art & Museum Law, so expect more art world news in these posts in the upcoming months. Here are the top stories I followed this week:

Google reports ‘alarming’ rise in government censorship requests

Why brands are leaning towards minimalism

More Download Cases filed in Indiana

Washington’s 5 Worst Arguments for Keeping Secrets From You

U.S. rejects requests for documents regarding targeted killings with drones

Supreme Court cops out, again, on “fleeting expletives”

Louisiana Sex Offenders Must List Status on Social Media Profile

“One machine can do the work of fifty ordinary men.  No machine can do the work of one extraordinary man.” -Elbert Hubbard, The Roycroft Dictionary and Book of Epigrams, 1923

Indiana Trademark Litigation Update – Angie’s List v. ServiceMagic

Indiana finally has its own keyword advertising case!

Local internet powerhouse Angie’s List accuses ServiceMagic of using the “Angie’s List” trademark as a keyword in some of its Google AdWords sponsored link advertisements. While several courts around the country have ruled on this issue, in Indiana it is still undetermined whether the purchase and use of a competitor’s trademark in keyword advertising is trademark infringement.

For those unfamiliar with keyword advertising, see the image below. ServiceMagic pays Google to appear in the “Ads related to” box at the top of the search results for the term “Angie’s List,” directly below Angie’s List’s official site. Big companies hate this practice and small competitors love it. Google really loves it, because advertising is where Google gets a big chunk of their revenue. We’ll soon find out what the Southern District of Indiana, via Judge Sarah Evans Barker, thinks about it.

This is no David and Goliath story either. ServiceMagic’s parent company IAC owns many major web products, including Ask.com, Match.com and Vimeo.

Stay tuned for updates as the case proceeds.

Angie’s List Inc. v. Servicemagic Inc.

Court Case Number:    1:12-cv-00755-SEB-TAB
File Date:    Friday, June 01, 2012
Plaintiff:     Angie’s List Inc.
Plaintiff Counsel:     George A. Gasper, Michael A. Wukmer, Bradley M. Stohry of Ice Miller LLP
Defendant:     ServiceMagic Inc.
Cause:    Trademark Infringement, Unfair Competition, Trade Disparagement, Trademark Dilution, Common Law Unfair Competition, Unjust Enrichment, Request for Preliminary and Permanent Injunctive Relief
Court:    Southern District of Indiana
Judge:     Judge Sarah Evans Barker
Referred To: Magistrate Judge Tim A. Baker

Stories from the Week that Was – 5/27/12-6/2/12

China tightens grip on social media with new rules

TV Networks Say You’re Breaking The Law When You Skip Commercials

Germany sets new solar power record, institute says

Got Compliance? The EU Cookie Law & What You Need to Do

Google Applies for More than 50 New Domains Including .LOL and .YouTube

Target on your cyber back: DHS has a list of words deemed ‘suspicious’

Man sues to have ‘Google’ declared a generic word

Privacy practices: how the FTC MySpace settlement affects your business

2012 Logo Trends

Google Obliges Website Copyright Takedown Requests 97% of the Time

NLRB Issues Third Social Media Report

From David Elliott’s Complaint for Cancellation of Trademark and Declaratory Relief:

“3. The term “GOOGLE” is, or has become, a generic term universally used to describe the action of internet searching with any search engine, which cannot serve as a trademark to the exclusion of others.”

Stories from the Week that Was – 1/15/12-1/21/12

Stories from the Week that Was – 1/15/12-1/21/12

The internet stood up and crushed SOPA/PIPA this week (at least temporarily). It was a pretty amazing day as Wikipedia went dark and citizens across the land let their voices be heard. It’s not over yet and there’s news that a new bill, ACTA, is even worse than SOPA. Stay tuned.

I hope SOPA passes.

Anonymous Attacks Justice Dept as FBI Shuts Down File-Sharing Site

Super Bowl XLVI Gets a Social Media Command Center

The Week That Killed SOPA: A Timeline

“I personally think intellectual property is an oxymoron. Physical objects have a completely different natural economy than intellectual goods. It’s a tricky thing to try to own something that remains in your possession even after you give it to many others.” – John Perry Barlow

Stories from the Week that Was – 1/8/12-1/14/12

Stories from the Week that Was – 1/8/12-1/14/12

More SOPA this week. It’s all coming to a head next week with a big internet protest planned. Stay tuned.

Homeland Security monitors journalists

3 More Reasons SOPA Ought to Scare You

Boycott SOPA: Android app that scans barcodes and tells you whether an object’s manufacturer/publisher supports SOPA

Who Is Flying Unmanned Aircraft in the U.S.?

Why bankruptcy isn’t a brand killer

Full Text of 2012 Indiana State of the Judiciary Address

White House Speaks Out Against SOPA/PIPA, Sort Of…

“The intellectual property situation is bad and getting worse. To be a programmer, it requires that you understand as much law as you do technology.” – Eric Allman

Trademark Licensing Lessons from the Faucet Couture

It looks like a unique cross-licensing venture may force me to revise my standard email that I send to trademark clients. For years, I’ve used the following language to help clients understand how to properly select goods and services for their trademark application:

An applicant must state the specific goods or services for which registration is sought and with which the applicant has actually used the mark in commerce. You will not be able to claim federal trademark protection for goods and services outside of those listed in your application (for example, a plumbing company could begin selling “INSERT CLIENT TRADEMARK” faucets without infringing upon your registration as it will not claim “faucets.”

Introducing Jason Wu for Brizo. It turns out a trademark’s expansion into the faucet market may not be so unlikely after all:

Jason Wu is a popular Manhattan-based fashion designer. Brizo is an Indianapolis-based provider of luxury faucets. The two have collaborated to create faucets that, besides looking good, also have a green tech aspect that is pretty cool:

The Jason Wu for Brizo Odin faucet is equipped with SmartTouchPlus(TM) Technology, which allows users to start and stop the flow of water with a simple touch anywhere on the spout or handle of the faucet. For a more intuitive experience, its hands-free mode activates the flow of water when hands are anywhere within 4″ of the faucet…an exclusive temperature control technology featuring a new temperature sensing indicator. A LED light display built into the base of the faucet uses shades of light, from blue to magenta to red, to indicate actual water temperature. The electronic valve built into the lavatory faucet also monitors the mixture of hot and cold water to help provide a consistent temperature for the user, while its high temperature limit stop offers an added degree of safety.

This teamup is a nice reminder that collaborative trademark cross-licensing can be a win-win for all parties. If successful, the Jason Wu for Brizo collection will reinforce the position of the Brizo faucet brand as fashion forward and innovative, and it marks the debut of the popular Jason Wu into the world of interior design.

Have Jason Wu and Brizo got you thinking about finding a trademark license for your company? Although the terms of every trademark license are different and may be freely negotiated between the licensor and licensee, all licenses must at least include the following provisions to be valid:

  • The legal names of the licensor and licensee
  • Identification of the trademark(s) that are the subject of the licensing agreement
  • Identification of the products/services with which the licensed mark may be used
  • The geographic territory in which the licensee may operate and sell its products/services
  • Quality control provisions that set forth clear standards as to the nature and quality of the licensed products/services

Optimally, a trademark license should also explicitly state:

  • whether the license is exclusive or non-exclusive
  • the duration of the license
  • whether the license may be renewed and under what conditions
  • the amount of any royalty payments or other compensation due to the licensor and when those payments are to be made
  • the responsibilities of both parties upon the termination or expiration of the license
  • the consequences of breaching the license and the time in which the breach must be remedied

Can you think of other innovative trademark cross-licensing efforts from Indiana companies? Leave a comment below.

More questions about LiTEBOX: Trademark Fraud?

When new companies come to Indianapolis promising tech jobs, particularly as part of a joint announcement with the Governor and Mayor, I like to check our their trademark portfolio and make sure all is in order. Apparently in the excitement of watching Michael Jordan highlights on top of semis or receiving multi-million dollar tax abatements, LiTEBOX has added the federal trademark registration notice, ®, to their Facebook page despite not owning a valid trademark registration. This could cause LiTEBOX trademark problems now (fraud) or later (inability to protect their mark based on this earlier fraud).

“Improper use of the federal registration symbol, ®, that is deliberate and intends to deceive or mislead the public or the USPTO is fraud.” Trademark Manual of Examining Procedure 906.04

In addition, LiTEBOX at some point is going to have to reconcile their use of the trademark with the owners of this trademark application:

Trademark considerations may seem small given all of the other questions that have been raised about LiTEBOX, but let’s hope they find good IP counsel soon to get their trademark situation sorted before it results in a big headache.

To everyone else, this is a good reminder to scan your marketing materials and online platforms for improper use of a trademark notice.

Stories from the Week that Was – 9/25-10/1/11

Stories from the Week that Was – 9/25-10/1/11

Facebook Sued Over “Timelines” Trademark

Art and Museum Law course prepares defenders of new art and ideas

How to create future brands

Facebook forms its own PAC to back candidates and issues

Lawyer wants US Marshals to seize copyright troll’s bank account

Only one thing is impossible for God: to find any sense in any copyright law on the planet. – Mark Twain’s Notebook, 1902-1903