Indiana Trademark Litigation Update – Noble Roman’s v. B & MP

This lawsuit involves a franchise arrangement gone bad. Plaintiff Noble Roman’s, an Indianapolis-based corporation, alleges that Defendant breached their Franchise Agreement by failing to pay royalties as required and intentionally misreported sales for the purposes of avoiding payment of franchise fees.

Noble Roman’s Inc. v. B & MP, LLC et al

Court Case Number: 1:14-cv-00206-WTL-MJD
File Date: Wednesday, February 12, 2014
Plaintiff: Noble Roman’s Inc.
Plaintiff Counsel: Steven K. Huffer of S.K. Huffer & Associates PC
Defendant: B & MP, LLC, Leslie Perdriau
Cause: Trademark Infringement, Breach of Contract, Fraud
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Mark J. Dinsmore

Indiana Trade Dress Litigation Update – KM Innovations v. Opportunities, Inc.

This is a trade dress lawsuit involving the product packaging for synthetic fiber snowballs. See the Complaint below for a description of the similarities and some really grainy comparison photos.

Plaintiff is based in New Castle, Indiana. Defendant is based in Colo, Iowa, which has a population of 876 and is named after a railroad official’s dog.

KM Innovations LLC v. Opportunities, Inc.

Court Case Number: 1:14-cv-00199-SEB-DML
File Date: Tuesday, February 11, 2014
Plaintiff: KM Innovations LLC
Plaintiff Counsel: Dean E. McConnell of McConnell Intellectual Property Law
Defendant: Opportunities, Inc.
Cause: Trade Dress Infringement, Unfair Competition
Court: Southern District of Indiana
Judge: Judge Sarah Evans Barker
Referred To: Magistrate Judge Debra McVicker Lynch

Indiana Trademark Litigation Update – Chartreuse v. Chartreuse Fragrances

The Plaintiff in this Declaratory Judgment action is an Indianapolis-based LLC that has used the CHARTREUSE trademark in connection with “handmade soy candles” since January 2013.

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Defendant is a New Jersey-based LLC that owns a federal registration for CHARTREUSE in connection with “Candles,” with a date of first use in commerce in April 2002. Defendant sent a “cease and desist” letter to Plaintiff in January 2014 asserting their trademark rights. Plaintiff responded by filing a complaint for Declaratory Judgment of Non-Infringement, Unenforceability and Invalidity.

The Plaintiff asserts in their Complaint that Defendant has not used their trademark for over three (3) years, that the CHARTREUSE mark is descriptive and therefore not entitled to registration and that the claimed date of first use in the registration is inaccurate. If these things can be proved, Plaintiff may have a shot to invalidate the registration. However, in addition to counterclaims based on the federal registration, I’d expect Defendant’s Response to include a full slate of common law trademark infringement counterclaims based on their lengthy use of their trademark.

Maybe I’m in the wrong line of work. There must be good money in “handmade soy candles” if Plaintiff can afford to hire a big law firm to pursue federal litigation to protect a trademark in use for just over a year.

Chartreuse LLC v. Chartreuse Fragrances LLC

Court Case Number: 1:14-cv-00181-WTL-DKL
File Date: Friday, February 07, 2014
Plaintiff: Chartreuse LLC
Plaintiff Counsel: Louis T. Perry of Faegre Baker Daniels LLP
Defendant: Chartreuse Fragrances LLC
Cause: Unenforceability and Invalidity of Defendant’s Mark, Non-Infringement of Trademark
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Denise K. LaRue

 

Indiana Trademark Litigation Update – James Dean v. Twitter

Screen Shot 2014-02-10 at 4.21.44 PMHere’s a potential Giant of a lawsuit.

Plaintiff, James Dean Inc., wants the @JamesDean Twitter handle. Somebody else has been using the Twitter handle since 2009 as a fan account for the Fairmount, Indiana-raised rebel movie icon. The @JamesDean account has more than 8,200 followers and has sent over 2,200 tweets. CMG Worldwide, the exclusive licensee of James Dean’s name and likeness, unable to convince Twitter to hand over the account, are now suing Twitter directly in federal court to force compliance. Twitter looks set to put up a full defense rather than subject themselves to an onslaught of username complaints.

Stay tuned for what will likely become a precedent-setting case for dead celebrity Twitter handles.

Court Case Number: 1:14-cv-00183-WTL-DML
File Date: Friday, February 07, 2014
Plaintiff: James Dean, Inc., John Doe, One, John Doe, Two, John Doe, Three, John Doe, Four
Plaintiff Counsel: Theodore J. Minch of Sovich Minch, LLP
Defendant: Twitter, Inc.
Cause: Trademark Infringement, False Endorsement, Indiana State Statutory Right of Publicity, Common Law Right of Publicity, Common Law Unfair Competition, Unjust Enrichment, Conversion, Deception, Indiana Crime Victims’ Act
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Debra McVicker Lynch

Indiana Cybersquatting Litigation Update – BidPal v. Intermediaone et al

Plaintiff, BidPal, Inc., owns a federal trademark registration for BIDPAL. Defendant owns several BidPal-formative domain names, including Bidpal.com, Bidpal.org, Bidpal.info, Bidpal.biz, Bidpal.mobi, all of which are GoDaddy parked pages. Plaintiff made several attempts to contact Defendant but was unable to reach him.

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Plaintiff’s Complaint makes an interesting assertion that, since Defendant owns all of the domains listed above, Plaintiff was forced to adopt ” the far-inferior domain name www.bidpalnetwork.com.” In the age of search, where bidpalnetwork.com ranks 1st on the Google search results for “Bidpal” and none of Defendant’s domains rank at all, do you agree that there’s such a thing as a “far-inferior” domain name? Or just preferred and non-preferred domain names?

Plaintiff may be hoping for a Default Judgment if Defendant doesn’t decide to defend himself. This case may also help determine whether Indiana courts will rule that “parked” domains can constitute cybersquatting. Stay tuned for updates.

BidPal Inc. v. Intermediaone et al

Court Case Number: 1:14-cv-00168-RLY-MJD
File Date: Wednesday, February 05, 2014
Plaintiff: BidPal Inc.
Plaintiff Counsel: Paul B. Overhauser of Overhauser Law Offices LLC
Defendant: Intermediaone, Intermediaone-AGB, Peter Peterre, Bidpal.com, Bidpal.org, Bidpal.info, Bidpal.biz, Bidpal.mobi
Cause: Cybersquatting, Trademark Infringement
Court: Southern District of Indiana
Judge: Judge Richard L. Young
Referred To: Magistrate Judge Mark J. Dinsmore

Indiana Trademark Litigation Update – Al Reasonover v. Solarium

This is a trademark dispute over the mark “Tiki Tan” as used in connection with tanning salons. Both Plaintiff and Defendant are located in Indiana.

Al Reasonover v. Solarium LLC et al

Court Case Number: 3:14-cv-00235-PPS-CAN
File Date: Wednesday, February 05, 2014
Plaintiff: Al Reasonover
Plaintiff Counsel: Frank J. Agostino – Attorney at Law
Defendant: Solarium LLC, Solarium Bittersweet LLC
Cause: Trademark Infringement, Common Law Trademark Infringement, Injunctive Relief, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Chief Judge Philip P. Simon
Referred To: Magistrate Judge Christopher A. Nuechterlein

Indiana Trademark Litigation Update – Cummins v. T’Shirt Factory

Here’s a lawsuit over counterfeit apparel being sold at kiosks around Indiana malls bearing the CUMMINS trademark. Cummins is an Indianapolis-based designer and manufacturer of power generation equipment, power systems, gasoline engines, custom power supplies. Check out some sample “counterfeits” below:

Counterfeiting

Cummins, Inc. v. T’Shirt Factory et al

Court Case Number: 1:13-cv-01972-WTL-DML
File Date: Friday, December 13, 2013
Plaintiff: Cummins, Inc.
Plaintiff Counsel: T. Joseph Wendt of Barnes & Thornburg LLP
Defendant: T’Shirt Factory, Freedom Custom Z, Shamir Harutyunyan, Does 1-10
Cause: Trademark Infringement, Trademark Dilution, Trademark Counterfeiting
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Debra McVicker Lynch

Indiana State Trademark Registration

Clients often inquire whether they should register their trademarks at the State or Federal level.  Starting with the assumption that even small local businesses may encounter a challenge to their trademark in the future, I generally try to impress upon them the advantages of federal registration.  After all, many of my clients end up being very successful and seek to expand outside of Indiana’s borders. With the exponential growth of “e-commerce,” the Internet is providing opportunities for national and global expansion, even for the smallest Indiana businesses.  It is therefore important for businesses of all types and sizes to choose and protect their trademarks with care…often this can mean protection at BOTH the State and Federal level.

Here’s a quick primer on registration of an Indiana State Trademark:

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Trademarks are registered with the Indiana Secretary of State.

Registration of a trademark with the Indiana Secretary of State creates a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark in Indiana commerce in connection with the goods or services described in the application.  (A federal registration would protect your trademark in all 50 states.)

The Indiana Trademark Act (IC 24-2) protects words, phrases, symbols or designs, or any combinations thereof when they are used to distinguish the source of the goods or services rendered by one party from the goods or services of another party. Marks are checked against other marks registered in Indiana, but not against corporate, fictitious, or assumed names.

Indiana trademark rights arise from actual use of the mark in commerce, i.e. no “intent-to-use” applications.

A mark cannot be registered until it has been used in Indiana. Indiana defines a mark being “used” when it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto, or when it is used to identify the services of one person and distinguish them from the services of others, and such goods or services are sold, otherwise distributed, or rendered in this state.

So what are some of the main benefits of state registration over federal registration?  It’s cheaper (State: $10/class vs. Federal $325/class) and quicker.  I’ve seen turnaround of weeks, not years as with the USPTO.  It can be a good remedy for a purely local entity.  State registration provides an increased level of trademark protection…at least you can claim protection on your “home turf.”  However, in the long run, I’d recommend that any entity which anticipates expanding outside of Indiana, particularly via Internet “e-commerce,” should seek federal trademark registration to best protect their valuable trademark rights.

I look forward to hearing from proponents of State registration…how has an Indiana State registration uniquely benefitted either you or your clients?

Indiana Trademark Litigation Update – Eli Lilly files 2 lawsuits over pet brands ELANCO, COMFORTIS, TRIFEXIS and PANORAMIS

Eli Lilly has filed two related cases involving its many lines of pet medicines, including ELANCO veterinary preparations, COMFORTIS flea-control preparations and TRIFEXIS and PANORAMIS pet medicines. The Defendants allegedly advertise and sell Australian and European version of the pet medicines branded with Eli Lilly’s trademarks through their respective websites.

Eli Lilly and Company v. Graham Nelson et al

Court Case Number: 1:13-cv-01800-JMS-DML
File Date: Tuesday, November 12, 2013
Plaintiff: Eli Lilly and Company
Plaintiff Counsel: Jan M. Carroll of Barnes & Thornburg LLP
Defendant: Graham Nelson, Zoja Pty. Ltd.
Cause: Trademark Infringement, Unfair Competition, False Advertising, State Unfair Competition
Court: Southern District of Indiana
Judge: Judge Jane Magnus-Stinson
Referred To: Magistrate Judge Debra McVicker Lynch

Eli Lilly and Company v. Sebastian Wiradharma et al

Court Case Number: 1:13-cv-01802-RLY-TAB
File Date: Tuesday, November 12, 2013
Plaintiff: Eli Lilly and Company
Plaintiff Counsel: Jan M. Carroll of Barnes & Thornburg LLP
Defendant: Sebastian Wiradharma, Singpet Pte. Ltd.
Cause: Trademark Infringement, Unfair Competition, False Advertising, State Unfair Competition
Court: Southern District of Indiana
Judge: Judge Richard L. Young
Referred To: Magistrate Judge Tim A. Baker

Indiana Trademark Litigation Update – Ambre Blends v. doTERRA

Solace Complaint

Here’s a pretty straightforward trademark dispute. Plaintiff, an Indiana LLC, challenges the defendants’ use of the SOLACE trademark. Plaintiff uses the mark in connection with “essential and/or aromatic oils.” Defendant doTERRA’s Solace is a “proprietary blend of CPTG essential oils that have traditionally been used to balance hormones and manage the symptoms of PMS and the transitional phases of menopause.”

Ambre Blends, LLC v. doTERRA, Inc. et al

Court Case Number: 1:13-cv-01813-SEB-DML
File Date: Wednesday, November 13, 2013
Plaintiff: Ambre Blends, LLC
Plaintiff Counsel: Michael Z. Gordon, Jonathan G. Polak, Amy L. Wright of Taft Stettinius & Hollister LLP
Defendant: doTERRA, Inc., doTERRA International, LLC, Kerry Dodds
Cause: Trademark Infringement, False Designation of Origin, Unfair Competition, Forgery, Corrective Advertising Damages, Declaratory Judgment, Preliminary and Permanent Injunctive Relief
Court: Southern District of Indiana
Judge: Judge Sarah Evans Barker
Referred To: Magistrate Judge Debra McVicker Lynch