Indiana Trademark Litigation Update – Swag Merchandising v. T.V. Store Online

Plaintiff alleges that Defendant is manufacturing and selling unauthorized “Energy Dome Hats,” the headwear popularized by American New Wave band DEVO.

Plaintiff claims to be the exclusive licensing agent of DEVO’s intellectual property rights. The Complaint references a pair of federal trademark registrations for DEVO in connection with “entertainment services” and “sound and visual recordings.” The ultimate question for this case however, which is less clear in the Complaint, is whether DEVO owns the rights to manufacture and sell Energy Dome Hats, which are “red in color, circular, and including four tiers of the circular design, with each tier becoming larger in circumference from the top of the hat to the bottom of the hat.”

Swag Merchandising Inc. et al v. T.V. Store Online et al

Court Case Number: 1:14-cv-00127-TWP-DKL
File Date: Wednesday, January 29, 2014
Plaintiff: Swag Merchandising Inc., Devo Inc. Corporation California
Plaintiff Counsel: Theodore J. Minch of Sovich Minch LLP
Defendant: T.V. Store Online, Fred Hajjar
Cause: Violation of 1125(a), Trademark Infringement, Common Law Trademark Infringement, Counterfeiting, Dilution, Common Law Unfair Competition, Statutory Right of Publicity, California Right of Publicity Infringement, Common Law Right of Publicity, Deception, Indiana Crime Victims’ Act
Court: Southern District of Indiana
Judge: Judge Tanya Walton Pratt
Referred To: Magistrate Judge Denise K. LaRue

State Court Complaint:

Notice of Removal:

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 – Royal Purple v. Liqui Moly GmbH

Here’s an interesting case involving a color trademark. Plaintiff Royal Purple, based in Indianapolis, owns several trademark registrations for the color purple  in connection with high-performance lubricants. The Defendant, German-based Liqui Moly, is accused of selling lubricants with containers/packaging that is purple.

images

Royal Purple LLC v. Liqui Moly GmbH

Court Case Number: 1:13-cv-00492-SEB-DML
File Date: Friday, March 22, 2013
Plaintiff: Royal Purple LLC
Plaintiff Counsel: Deborah Pollack-Milgate, Olivia M. Fleming of Barnes & Thornburg LLP
Defendant: Liqui Moly GmbH
Cause: Trademark Infringement; Unfair Competition, False Designation of Origin; Dilution; Common Law Trademark Infringement; Common Law Unfair Competition; Unjust Enrichment
Court: Southern District of Indiana
Judge: Judge Sarah Evans Barker
Referred To: Magistrate Judge Debra McVicker Lynch

Indiana Trademark Litigation Update – 1st Source Bank v. Firstsource Solutions Limited

1st Source Bank v. Firstsource Solutions Limited et al

Court Case Number: 3:12-cv-00480-PPS-CAN
File Date: Thursday, September 06, 2012
Plaintiff: 1st Source Bank
Plaintiff Counsel: Patrick David Murphy of Boveri Murphy Rice LLP
Defendant: Firstsource Solutions Limited, Firstsource Solutions USA Inc, Firstsource Advantage LLC, Firstsource Financial Solutions Inc
Cause: Service Mark Infringement, Unfair Competition, Dilution, Cancellation of Registrations
Court: Northern District of Indiana
Judge: Chief Judge Philip P Simon
Referred To: Magistrate Judge Christopher A Nuechterlein

Indiana Trademark Litigation Update – ChaCha Search v. HTC America

ChaCha Search, Inc. v. HTC America, Inc. et al

ChaCha is a Delaware corporation based in Carmel, Indiana. It provides a mobile-based search engine that utilizes the assistance of human guides to provide relevant search results. The CHACHA trademark was registered in 2007 for “Search engine services, namely, providing search engines for obtaining data on a global computer network; Search engine services, namely, providing specific information as requested by customers via the Internet in the nature of customized searching, in Class 42.”

Defendant HTC seeks to introduce a new smartphone called the “HTC ChaCha,” prompting Plaintiff to institute this action.

What do you think? Do you read the services listed in ChaCha’s registration above to include “smartphones”? Is ChaCha overreaching here? Would ChaCha’s money have been better spent on additional trademark registrations if they wanted to also protect ChaCha for “mobile phones,” which are in Class 9?

Court Case Number: 1:11-cv-00262-WTL-MJD
File Date: Tuesday, February 22, 2011
Plaintiff: ChaCha Search, Inc.
Plaintiff Counsel: Bradley M. Stohry and Michael A. Wukmer of Ice Miller, LLP
Defendant: HTC America, Inc.
HTC Corporation
Cause: Trademark Infringement, Unfair Competition, Dilution, Common Law Unfair Competition, Request for Preliminary and Permanent Injunctive Relieve
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Mark J. Dinsmore

Indiana Trademark Litigation Update – Trustees of Purdue University v. Reinke Sports Group LLC et al

The Trustees of Purdue University v. Reinke Sports Group LLC et al

Purdue University, a world-renowned institution of higher learning, is located in West Lafayette, Tippecanoe County, Indiana. In late 2009, the Defendants announced their intention to hold a foot racing event called “Home of Purdue Half Marathon” in the Lafayette-West-Lafayette area. Purdue’s attorneys sent the standard cease-and-desist letters objecting to the use of the University’s trademarks. Nevertheless, Defendant continued to advertise the event as being connected to and affiliated with the University.  The event was run on Oct. 24, 2010 without permission from Purdue University.

This case was removed from Tippecanoe Circuit Court.

Court Case Number: 4:11-cv-00005-PPS -APR
File Date: Thursday, January 13, 2011
Plaintiff: Trustees of Purdue University
Plaintiff Counsel: William P. Kealey of Stuart & Branigin LLP
Defendant: Reinke Sports Group LLC, Dean Reinke, Allsportcentral.com Inc.
Defendant Counsel: Matthew S Tarkington and Peter S French of Lewis & Kappes PC
Cause: Declaratory and Injunctive Relief, Trademark Infringement, Common Law Trademark Infringement, False Designation of Origin, Dilution, Cyberpiracy under the Lanham Act, Unfair Competition by Passing Off
Court: Northern District of Indiana
Judge: Chief Judge Philip P. Simon
Referred To: Magistrate Judge Andrew P. Rodovich

Indiana Trademark Litigation Update – Traveler’s Joy v. Haycco

Traveler’s Joy Inc. v. Haycco, LLC

Straightforward trademark dispute with a hint of intentional imitation. Plaintiff has used the TRAVELER’S JOY trademark in connection with gift registry services since 2005. Defendant operates a honeymoon registry service at joyhoneymoon.com.  The Complaint doesn’t specify how long Defendant has been using the JOYHONEYMOON mark but the copyright notice on their website is 2009.

TRAVELER’S JOY v. JOY HONEYMOON…confusingly similar?

Court Case Number: 1:10-cv-01574-TWP-TAB
File Date: Tuesday, December 07, 2010
Plaintiff: Traveler’s Joy Inc.
Plaintiff Counsel: Robert L. Barlow, III of Bahret & Associates
Defendant: Haycco, LLC
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Dilution of Famous Mark
Court: Southern District of Indiana
Judge: Judge Tanya Walton Pratt
Referred To: Magistrate Judge Tim A. Baker

Indiana Trademark Litigation Update – CNH America v. Davis Equipment Sales & Service

CNH America, LLC v. Davis Equipment Sales & Service, Inc.

Plaintiff CNH has sold agricultural products under the NEW HOLLAND marks since 1957. Defendant was previously an authorized reseller, but continues to use Plaintiff’s marks after termination of the license arrangement. Further evidence that it makes sense to spend some extra time up front drafting a concise trademark license rather than resort to litigation on the back end.

Court Case Number: 4:10-cv-00141-RLY-WGH
File Date: Tuesday, November 09, 2010
Plaintiff: CNH America, LLC
Plaintiff Counsel: Catherine A. Nestrick of Bamberger Foreman Oswald & Hahn
Defendant: Davis Equipment Sales & Service, Inc.
Cause: Trademark Infringement, Unfair Competition, Dilution
Court: Southern District of Indiana
Judge: Judge Richard L. Young
Referred To: Magistrate Judge William G. Hussmann, Jr.

Indiana Trademark Litigation Update – Allison Transmission v. Harlan Global Manufacturing

The complaint alleges that Harlan Global is putting old Allison transmissions into new tractors and selling the tractors around the world as having new components.  Harlan’s advertisements allegedly do not inform the purchasing public that the tractors manufactured and sold by Harlan include previously used components obtained from a source other than the original manufacturer (Allison) or an authorized remanufacturer. Allison has received complaints from consumers.

Allison Transmission, Inc. v. Harlan Global Manufacturing LLC

Court Case Number: 1:10-cv-00789-SEB-TAB
File Date: Monday, June 21, 2010
Plaintiff: Allison Transmission, Inc.
Plaintiff Counsel: Mary J. Frisby of Barnes & Thornburg
Defendant: Harlan Global Manufacturing LLC
Cause: Federal Trademark Infringement Under The Lanham Act, False Designation of Origin/False Advertising Under the Lanham Act, Counterfeiting Under the Lanham Act, Dilution, Unfair Competition Under Indiana Common Law, Common Law Trademark Infringement
Court: Southern District of Indiana
Judge: Judge Sarah Evans Barker
Referred To: Magistrate Judge Tim A. Baker

Indiana Trademark Litigation Update – North American Van Lines files 3 suits in Northern District of Indiana

North American Van Lines (“NAVL”) apparently has a few trademark licensees who haven’t been making their license payments and yet refuse to stop using NAVL’s marks. 3 lawsuits have been filed recently in the Northern District by NAVL to enforce their rights (and collect some cash). For a copy of either complaint, please leave a comment.

North American Van Lines Inc. v. Firebird Moving & Storage Inc.

Court Case Number: 1:10-cv-00199-JVB-RBC
File Date: Monday, June 21, 2010
Plaintiff: North American Van Lines Inc.
Plaintiff Counsel: David K. Hawk, Michael D. Hawk of Hawk Haynie Kammeyer & Chickedantz LLP
Defendant: Firebird Moving & Storage Inc.
Cause: Breach of Contract, Trademark Infringement, False Designation of Origin and Unfair Competition, Trademark Dilution, Unfair Competition
Court: Indiana Northern District Court
Judge: Judge Joseph S. Van Bokkelen
Referred To: Magistrate Judge Roger B. Cosbey

North American Van Lines Inc. v. Wayne Moving & Storage Co Inc

Court Case Number: 1:10-cv-00200-JD-RBC
File Date: Friday, June 18, 2010
Plaintiff: North American Van Lines Inc.
Plaintiff Counsel: David K. Hawk, Michael D. Hawk of Hawk Haynie Kammeyer & Chickedantz LLP
Defendant: Wayne Moving & Storage Co Inc.
Cause: Breach of Contract, Trademark Infringement, False Designation of Origin and Unfair Competition, Trademark Dilution, Unfair Competition
Court: Indiana Northern District Court
Judge: Judge Jon E. DeGuilio
Referred To: Magistrate Judge Roger B. Cosbey

North American Van Lines Inc. v. C&D Moving & Storage Co.

Court Case Number: 1:10-cv-00198-TLS-RBC
File Date: Friday, June 18, 2010
Plaintiff: North American Van Lines Inc.
Plaintiff Counsel: David K. Hawk, Michael D. Hawk of Hawk Haynie Kammeyer & Chickedantz LLP
Defendant: C & D Moving & Storage Co.
Cause: Breach of Contract, Trademark Infringement, False Designation of Origin and Unfair Competition, Trademark Dilution, Unfair Competition
Court: Indiana Northern District Court
Judge: Judge Theresa L. Springmann
Referred To: Magistrate Judge Roger B. Cosbey