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

Indiana Trademark Litigation Update – Windstream Technologies v. Rambo, LLC

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Here’s yet another tale of a dealer relationship gone bad. Plaintiff, a California company operating in North Vernon, Indiana, is a wind turbine manufacturer.  Defendant Rambo, LLC, located in Madison, Indiana, was contracted to provide component parts and act as an authorized dealer of Plaintiff’s products in certain territories.

See the Complaint below for the Plaintiff’s version of how things went wrong. Hopefully for the rest of us these parties can sort their differences soon and get back to providing more wind energy for Indiana.

Stay tuned for updates.

Windstream Technologies, Inc. v. Rambo, LLC et al

Court Case Number: 4:13-cv-00180-SEB-WGH
File Date: Tuesday, November 05, 2013
Plaintiff: Windstream Technologies, Inc.
Plaintiff Counsel: Matthew Wilder Lorch of Lorch Law Office, LLC
Defendant: Rambo, LLC, Rambo Montrow Corporation, Rick Keebler, Does 1 through 10
Cause: Federal Unfair Competition, Passing Off, Trademark Infringement, Breach of Contract, Interference with Contract and Prospective Economic Advantage
Court: Southern District of Indiana
Judge: Judge Sarah Evans Barker
Referred To: Magistrate Judge William G. Hussmann, Jr.

 

Trademark Protection of Local Government Official Insignia

Here’s a trademark ruling  from the Federal Circuit Court of Appeals that will interest local government officials.

Both the City of Houston and the District of Columbia applied to the U.S. Patent and Trademark Office (USPTO) for federal registration of their respective official insignias. The USPTO denied their applications. Both plaintiffs appealed the denials and their appeals were addressed together in the Federal Circuit Court of Appeals.

Houston argued that a government entity is not an “applicant” prohibited by § 2(b) of the Lanham Act to register an insignia as a trademark. The District argued that § 2(b) must be read to not prohibit a governmental entity from registering an insignia so as to not conflict with the Paris Convention. The court determined that the statute is unambiguous and held that a government entity cannot register its own insignia as a trademark.

Holding: A local government entity may not obtain a federal trademark registration for the entity’s official insignia.

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Indiana Trademark Litigation Update – 80/20 Inc v. John Doe

Plaintiff, 80/20 Inc. of Columbia City, Indiana, is a leading manufacturer of T-slotted extrusion products (see image) and accessories. Defendant “TNutz” is allegedly representing through its eBay store that numerous products being offered for sale are 80/20 products when they are not. After TNutz failed to respond to several communication attempts, Plaintiff brought this lawsuit.

Stay tuned for updates.

80/20 Inc v. John Doe

Court Case Number: 1:13-cv-00262-RLM-RBC
File Date: Friday, September 06, 2013
Plaintiff: 80/20 Inc
Plaintiff Counsel: D Randall Brown of Barnes & Thornburg LLP
Defendant: John Doe
Cause: Trademark Infringement, Passing Off
Court: Northern District of Indiana
Judge: Judge Robert L. Miller, Jr
Referred To: Magistrate Judge Roger B. Cosbey

Indiana Trademark Litigation Update – North American Van Lines v. North American Master Lines

North American Van Lines Inc. v. North American Master Lines Inc.

Court Case Number: 3:13-cv-00792-PPS-JEM
File Date: Friday, August 02, 2013
Plaintiff: North American Van Lines Inc.
Plaintiff Counsel: Edward A. Sullivan III, Daniel Tychonievich of Faegre Baker Daniels LLP
Defendant: North American Master Lines Inc.
Cause: Cybersquatting, Trademark Infringement, Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement
Court: Northern District of Indiana
Judge: Chief Judge Philip P. Simon
Referred To: Magistrate Judge John E. Martin

New Indiana IP/Technology Laws taking effect July 1, 2013

It’s July 1 and you know what that means. It means hundreds of new laws go into effect to govern, tax, confuse and confound the citizenry.

New Indiana Laws July 2013I’ve reviewed the full list of new Indiana laws (at bottom of post) for intellectual property, privacy or technology-related laws.

Among other things, it is now a felony in Indiana to publish intimidating communications on social media sites. The new provision (SB 361, see below) specifically addresses the increasingly common “bomb threat/gun threat” made via social media with the intent to cause evacuation.

Intimidation (IC 35-45-2-1)

1. (a) A person who communicates a threat to another person, with the intent: (1) that the other person engage in conduct against the other person’s will; (2) that the other person be placed in fear of retaliation for a prior lawful act; or (3) of: (A) causing: (i) a dwelling, building, or other structure; or (ii) a vehicle; to be evacuated; or (B) interfering with the occupancy of: (i) a dwelling, building, or other structure; or (ii) a vehicle

SB 361
Effective: July 1, 2013
Code Citations Affected: IC 35-31.5; 35-45
Intimidation. Provides that for the crime of intimidation, “communicates” includes posting a message electronically, including on a social networking web site. Provides that it is a Class D felony if the person to whom the threat is communicated is: (1) an employee of a hospital, school, church, or religious organization; or (2) is a person that owns a building or structure that is open to the public or is an employee of the person. Specifies that communicating a threat with the intent to interfere with the occupancy of certain buildings may constitute intimidation. Increases the penalty to a Class C felony if it is committed against a judge, bailiff, prosecuting attorney, or deputy prosecuting attorney.

SB 369
Effective: May 11, 2013 (Sections 3-5); July 1, 2013 (Sections 1-2)
Code Citations Affected: IC 4-23; 5-14
Public records. Allows a public agency to withhold from public disclosure records criminal intelligence information. Allows a public agency to refuse to confirm or deny the existence of investigatory records of law enforcement agencies or criminal intelligence information, if the fact of the existence of the information would: (1) impede or compromise an ongoing law enforcement investigation or endanger an individual; or (2) reveal information that would have a reasonable likelihood of threatening public safety. Allows a public agency to refuse to confirm or deny the existence of a record the disclosure of which would expose vulnerability to terrorist attack, if the fact of the record’s existence or nonexistence would reveal information that would have a reasonable likelihood of threatening public safety. Allows a person to file an action in court to appeal an agency’s refusal to confirm or deny the existence of a record. Clarifies when a request for a record is deemed denied and appealable. Provides that when a public agency refuses to confirm or deny the existence of a record under certain circumstances, the name and title or position of the person responsible for the refusal shall be given to the person making the records request.

SB 471
Effective: July 1, 2013
Code Citations Affected: IC 16-42
Prescriptions for brand name drugs. Permits a health care practitioner to use words of similar meaning instead of the statutory phrase “Brand Medically Necessary” when writing a prescription for a brand name drug when the practitioner does not want the pharmacist to substitute, under certain government programs, a generically equivalent drug product for the brand name drug.

HB 1219
Effective: July 1, 2013
Code Citations Affected: IC 34-30; 36-1
Privacy of home addresses. Beginning July 1, 2014, allows a city, town, county, or township (unit) that operates a public Internet web site data base containing the names and addresses of property owners to establish a procedure to permit a law enforcement officer, a judge, or a victim of domestic violence who participates in the attorney general’s address confidentiality program (covered person) to restrict disclosure to the general public of the covered person’s home address. Provides that a covered person must submit a written request to a unit in order for the unit to restrict access to the covered person’s home address through a public property data base web site. Provides that the unit must restrict access to the information of a covered person until the covered person submits a written request to the unit to allow access to the information. Provides that if a covered person: (1) has a name change; and (2) notifies the unit in writing of the name change; the unit must prevent disclosure of the covered person’s home address and both the covered person’s former name and new name. Allows a unit to charge a reasonable fee. Provides immunity from civil liability for certain units that restrict address disclosure.

HB 1341
Effective: July 1, 2013
Code Citations Affected: IC 21-18
Standard electronic transcripts. Establishes the Indiana e-transcript program (program). Provides that the commission for higher education shall administer the program. Provides that, beginning July 1, 2015, the program will allow all students at all accredited high schools to request that their transcripts be transmitted electronically to state educational institutions, participating Indiana not-for-profit or privately endowed institutions, and participating Indiana institutions authorized by the board for proprietary education. Provides that a governing body of an accredited nonpublic secondary school may elect to use the common electronic transcript. Requires the department of education, in collaboration with state educational institutions and the commission for higher education, to develop a common electronic transcript.

HB 1393
Effective: July 1, 2013
Code Citations Affected: IC 33-23; 33-24; 33-37
Judicial technology and automation. Establishes the judicial technology oversight committee (committee) to: (1) conduct a continuous study of information technology applications for Indiana’s judicial system; (2) make recommendations to the division of state court administration (division) for the establishment of a pilot program concerning electronic filing; (3) allow public court records to be available on the Internet [emphasis added]; (4) study the appropriate use of private sector vendors; and (5) make recommendations to the supreme court concerning the implementation of policies, standards, and rules that promote the effective use of technology and automation in Indiana courts. Provides that the committee consists of: (1) the chief justice of the supreme court; (2) the chief information officer of the office of technology; (3) two members of the senate; (4) two members of the house of representatives; (5) one trial court judge; (6) two circuit court clerks, with one clerk for a county that does not operate under the state’s automated judicial system and one clerk for a county that operates under the state’s automated judicial system; (7) one attorney admitted to the practice of law in Indiana; and (8) an individual affiliated with a taxpayer organization. Requires the division to develop and implement a standard protocol for sending and receiving certain court data by December 31, 2013, and requires the standard protocol to permit vendors to access the system on an equitable basis. Allows the budget committee to release funds for the judicial technology and automation project after the division certifies in conjunction with the Indiana office of technology that the judicial technology automation project is in compliance with certain information sharing and exchange requirements. Provides that the automated record keeping fee increases for two years from $5 to $7 for all civil, criminal, infraction, and ordinance violation actions except actions resulting in the accused person entering into a: (1) pretrial diversion program agreement; or (2) deferral program agreement. Allocates the $2 fee increase as follows: (1) $2 to the state, if the county is operating under the state’s automated judicial system; or (2) $1 to the state and $1 to the county if the county is not operating under the state’s automated judicial system. Provides that the automated record keeping fee is $5 for all civil, criminal, infraction, and ordinance violation actions resulting in the accused person entering into a: (1) pretrial diversion program agreement; or (2) deferral program agreement.

Here is the full list of new Indiana laws. There’s plenty of juicy stuff in there so give it a read at your convenience. Good luck out there!