Indiana Trade Dress Litigation Update – Patachou v. Crust

Here’s an interesting case involving the trade dress of two Indianapolis neopolitan pizzerias (i.e. “fancy pizza”). Broad Ripple-based Napolese, owned by the same restauranteur as popular local brunch spot Patachou, has complained that the new Crust Pizzeria Napoletana has copied the look and feel of Napolese. Crust is owned by another local restauranteur, Mohey Osman, of The Egyptian Cafe fame.

Images from Complaint

Images from Complaint

In case you haven’t read it in awhile, here’s the preeminent decision in this area, the Supreme Court ruling in Two Pesos v. Taco Cabana.

I won’t get into the facts of Two Pesos (read the decision) or of the current Complaint (see below) but I have the following thoughts:

1. Taco Cabana was a chain with 6 locations open for 7 years by the time of the lawsuit. Napolese has had one location in Broad Ripple for four years. Is the Napolese trade dress well known, much less famous (to support the dilution claim), outside of mid-Marion County suburbanites?

2. Trade dress infringement cases are almost always brought in federal court. The Napolese complaint was filed in Marion County Court with no federal claims. This surely wasn’t by mistake, and makes me think a few things:

a. Napolese doesn’t consider their trade dress to be very strong beyond the local level.

The Complaint relies heavily on the fame of the Patachou brand but is light on discussion of the strength of the Napolese trade dress specifically, although the Napolese trade is what is actually at issue).

b. Napolese doesn’t want the formalities and high legal costs associated with federal court.

Few do.

c. Napolese may not intend to follow through with the lawsuit.

It’s possible the Complaint may just be a cost-effective method (cheaper than advertising) to alert the public that Crust is not associated with Napolese and also expose the many similarities, making Crust look tacky in the process. Napolese may be gambling that media pressure on Crust will force some modifications and they can drop the lawsuit before they get too deep.

The reality is that defending a lawsuit (particularly with a prestigious firm like Woodard Emhardt as counsel) is much more expensive than changing your logo and menu colors. The trade dress of Napolese and Crust is probably similar enough to defeat any counterclaim that this is a “frivolous” complaint, which could entitle Crust to attorney fees, so Napolese has the upper hand to drive this litigation as far as they want it to go.

3. One more thing to consider is the similarity of the trade dress of other neapolitan pizzerias across the state/country. If neopolitan pizzerias frequently utilize the stone oven/shield logo/bar stool/whatever, that info could affect both the “distinctiveness” analysis for the Napolese trade dress and the “likelihood of confusion” analysis in comparing Crust trade dress. I don’t usually eat fancy pizza so I can’t comment here.

What are your thoughts on the Complaint? More info about the lawsuit is available in the Indianapolis Star. Stay tuned to this blog for updates.

Patachou, Inc. v. Mohey Osman d/b/a Crust, and Crust

Court Case Number: 49D12 13 10 CT 038659
File Date: October 18, 2013
Plaintiff: Patachou, Inc.
Plaintiff Counsel: Jonathan G. Polak of Taft/
Defendant: Mohey Osman d/b/a Crust, and Crust
Defendant Counsel: Charles Meyer of Woodard, Emhardt, Moriarty, McNett & Henry
Cause: Common Law Trademark Infringement, Common Law Trade Dress Infringement, Dilution, Forgery, Preliminary and Permanent Injunctive Relief, Corrective Advertising Damages
Court: Marion County Court
Judge: TBD

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

ChaCha Named a Top 100 Startup

Yet another great accolade for an Indianapolis startup, ChaCha, which has been named a Red Herring Top 100 North American Tech Startup.

The award honors promising private technology ventures in North America. The Red Herring editorial team evaluates companies based on financial performance, technological innovation, quality of management, execution of strategy and integration into the company’s respective industry.

Congratulations!

via ChaCha named a top-100 startup | Indianapolis Star | indystar.com.

Symposium at IU-Indy Will Examine New Patent Law

The Intellectual Property Law and Innovation Symposium at Indiana University School of Law – Indianapolis on Dec. 2 will focus on recent changes to patent law created by the America Invents Act (AIA).

The Center for Intellectual Property Law and Innovation has assembled a distinguished group to analyze the AIA from a variety of perspectives, focusing on the Act’s implications for the life sciences. Speakers include a legendary patent law jurist, patent reform leaders, chief corporate patent counsel, leading practitioners and scholars, as well as the PTO’s Patent Reform Coordinator.

The event carries 4.5 hours of CLE credit, pending approval. Registration is $125, which includes materials, refreshments and lunch. The event runs from noon to 6 p.m. at the law school, 530 W. New York St., Indianapolis. For more information, visit the law school’s website.

Purdue Builds Top Supercomputer on Unreleased Chips

Purdue University is home to one of the fastest supercomputers in the country and the 54th most powerful in the world, according to the international Top500.org list. The twist is that the system uses Intel chips that haven’t been released to market yet and aren’t expected until next March.

The new supercomputer, nicknamed “Carter,” for Purdue alumnus Dennis Carter, is an HP Cluster Platform 3000 SL6500. It features Intel Xeon E5 “Sandy Bridge” eight-core, 2.6 GHz processors, which haven’t yet been released to market, along with HP ProLiant servers and Mellanox FDR Infiniband cluster interconnects. The system has a total of 10,368 cores and runs the Linux operating system.

Read more at Campus Technology.

Indianapolis Among First Cities to Get AT&T 4G Network

On November 20,  Indianapolis will become one of the first cities in the U.S. to get access to AT&T’s 4G LTE network. The 4G network is expected to provide broadband speeds as much as 10 times faster than 3G networks.

The other 5 cities to receive 4G are Charlotte, Kansas City, Las Vegas, Oklahoma City, and San Juan, Puerto Rico. AT&T hopes to cover 15 additional markets by the end of November.

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.

Teaching the iGeneration

Adults don’t really understand what it’s like to grow up in the age of the iPhone. I’ve seen plenty of grown-ups struggle to make sense of the role of mobile computing and social media in our society and their own lives, but we need to always remind ourselves that these tools are all our kids have ever known. Fox 59 featured a new book yesterday called Teaching the iGeneration, which attempts to help teachers educate the latest generation of iKids:

You know what the iGeneration in your classroom looks like. They are the students willing to experiment their way through anything, confident that trial and error can crack the code better than reading manuals or following directions. They’re turning to the Internet first and the library second when assigned research projects. Their minds are working fast, but not always as deeply or as accurately as the adults in their lives would like. Yet teachers can capture the attention of the iGeneration and help them grow by integrating technology into classrooms in a way that focuses on the skills that have been important for decades. The purpose of Teaching the iGeneration is to help teachers find the natural overlap between the work that they already believe in and the kinds of digital tools that are defining tomorrow’s learning. Each chapter introduces an enduring skill information fluency, persuasion, communication, collaboration, and problem solving as well as a digital solution that can be used to enhance, rather than replace, traditional skill-based instructional practices.

My law students are glued to their Macbooks during class, no doubt, but I wouldn’t consider them the iGeneration. Has anyone who works with K-12 students read this book? Was it useful for your classroom?

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.