Author Archives: Kenan Farrell

Dispute over TERMINATOR fireworks name leads to trademark lawsuit

08 Monday Jul 2019

Posted by in Indiana, Intellectual Property, Litigation, Trademark

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This lawsuit involves a lengthy dispute, dating back almost two decades, over the ability to use the TERMINATOR trademark in connection with fireworks.

The Defendants apparently are using the TERMINATOR trademark pursuant to a license (which Plaintiff claims is invalid) so I’ll wait to see their Answer for more detailed information before I comment fully.

Stay tuned for updates.

North Central Industries, Inc. v. Winco Fireworks, Inc. et al.

Court Case Number: 1:19-cv-02720-RLY-MPB
File Date: Tuesday, July 2, 2019
Plaintiff: North Central Industries, Inc.
Plaintiff Counsel: John H. Brooke of Brooke | Stevens, P.C.
Defendant: Winco Fireworks, Inc., Winco Fireworks International, LLC, Creative Licensing Center Corp. 
Cause: Federal Trademark Infringement, Federal Trademark Dilution, False Designation of Origin, Federal Unfair Competition, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Brookman

Complaint:

Color Me Badd founding members in court over band name dispute

02 Tuesday Jul 2019

Posted by in Entertainment Law, Indiana, Intellectual Property, Litigation, Musicians, Southern District of Indiana, Trademark

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Two members of the formerly popular R&B group “Color Me Badd” are in a lawsuit in the Southern District of Indiana over the ability of one member to continue using the band’s name in his ongoing solo career.

The named Plaintiff, Bryan Abrams, and Defendant, Mark Calderon, have a recent history of quarreling, including a physical altercation on stage in 2018 that led to Abram’s arrest.

In this lawsuit filed on Monday, July 1, Abrams is challenging Calderon’s ability to use the Color Me Badd name for his solo career, while Calderon (via his attorney) maintains that “Mr. Calderon and Mr. Abrams have equal right to use and exploit the mark provided each party accounts to the other for such use.”

Check out the Complaint (below) for a more detailed history of the parties and Color Me Badd. Stay tuned for updates to see how the parties resolve their band name dispute.

CMB Entertainment, LLC et al v. Mark Calderon and Pyramid Entertainment Group, Inc.

Court Case Number: 1:19-cv-02703-RLY-DML
File Date: Monday, July 1, 2019
Plaintiff: CMB Entertainment, LLC, Bryan Abrams
Plaintiff Counsel: James J. Ammeen, Jr. of Ammeen Valenzuela Associates LLP., Brian D. Caplan of Reitler Kailas & Rosenblatt LLC
Defendant: Mark Calderon, Pyramid Entertainment Group, Inc.
Cause: Federal Trademark Infringement, Federal Unfair Competition, State Unfair Competition, Breach of Fiduciary Duty
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Debra McVicker Lynch

Complaint:

Dispute over Great Western Trail publishing rights leads to trademark lawsuit

18 Thursday Apr 2019

Posted by in Branding, Business Law, Indiana, Indianapolis, Intellectual Property, Litigation, Southern District of Indiana, Trademark

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This is an interesting dispute involving board game publishing rights and exclusive trademark licensing.

The Complaint (below) references a contract by which the plaintiff, Stronghold Games, would exclusively publish a board game called “Great Western Trail” from August 3, 2016 to December 31, 2018. At that time, the game was owned by a German company called eggertspiele. The Complaint alleges that one of the obligations eggertspiele agreed to in the contract was it “will not during the term grant to any other person, firm or company any rights that would derogate from the grant made” in its contract with Stronghold Games.

Stronghold first released Great Western Trail in the U.S. in November 2016. It was very popular and quickly sold out. However, while seeking permission for a second print run of the game in June 2017, Stronghold learned that all assets of eggertspiele had been purchased by Plan B Games, the defendant.

Plan B Games asserted that it had no contract with Stronghold and it did not grant reprint rights to Stronghold. Subsequently, in January 2018, Plan B Games released its own version of Great Western Trail, seemingly identical but removing Stronghold’s logo from the packaging.

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I think this paragraph from the Complaint nicely sums up why Stronghold is unhappy with the current state of affairs: “Plan B was well aware of the pent-up demand for the Stronghold Version of this game in 2017, and the introduction of the nearly identical Plan B Version in early 2018 to satisfy the pent-up demand for the Stronghold Version improperly traded on Stronghold’s goodwill and has led to consumer confusion.”

Unfortunately, while the Complaint references the initial contract between Stronghold and eggertspiele granting publication rights, it didn’t include a copy of the contract for review. Although the contract apparently included language about minimum duration and exclusivity, it’s unclear whether the contract granted any property interest in the Great Western Trail trademark to Stronghold.

As general information, license agreements can give licensees standing to sue for infringement, provided that they grant an exclusive license and a property interest in the trademark. A trademark licensee’s proper use of a mark benefits the trademark owner, not the licensee. This allows trademark owners to rely on use by controlled licensees to prove continuing use of a trademark. Section 5 of the Lanham Act explicitly recognizes the acquisition of trademark rights by a licensor through first use of the mark by a controlled licensee.

However, in this situation, Stronghold appears to assert its own claim to property rights in the GREAT WESTERN TRAIL trademark distinct from the licensor, based on its own exclusive marketing efforts in the United States.

I look forward to reading the Answer, which hopefully will include the original contract. Stay tuned for updates.

Indie Game Studios, LLC v. Plan B Games, Inc et al.

Court Case Number: 1:19-cv-1492
File Date: Monday, April 15, 2019
Plaintiff: Indie Game Studios, LLC d/b/a Stronghold Games LLC
Plaintiff Counsel: Patrick J. Olmstead, Jr., John Bradshaw
Defendant: Plan B Games, Inc., Plan B Games Europe GMBH
Cause: Federal Unfair Competition, False Designation of Origin, Indiana Trademark Infringement, Common Law Unfair Competition, Conspiracy
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Mark J. Dinsmore

Complaint:

Federal Circuit issues precedential opinion on webpages as trademark specimens

17 Wednesday Apr 2019

Posted by in Intellectual Property, Litigation, Trademark

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On April 10, 2019, the United States Court of Appeals for the Federal Circuit issued a precedential opinion regarding webpages as specimens of use.

In the matter of  In re: Siny Corp., the Court upheld a decision of the Trademark Trial and Appeal Board refusing to register Siny’s proposed mark based on an insufficient specimen.

The initially submitted specimen consisted of a webpage printout, which the examining attorney concluded to be “mere advertising material” since the specimen did not include a means for ordering the goods. A substitute specimen was submitted which included the additional language “For sales information:” along with a phone number and address. The examining attorney maintained his refusal, stating that the contact information was “insufficient for consumers to make a purchase; rather, it only indicated how consumers could obtain more information necessary to make a purchase.”

This opinion indicates that, in order for a webpage to be considered a valid specimen, it should include more than just basic contact information, and needs to display standard ordering information, such as minimum quantities, cost, payment options, or shipping information.

Further, of particular interest for online technology companies, the opinion notes that “where the goods are technical and specialized and the applicant and examining attorney disagree on the point-of-sale nature of a submitted webpage specimen, “the applicant would be well advised to provide the examining attorney with additional evidence and information regarding the manner in which purchases are actually made through the webpage.”

This evidence can be documentation or verified statements from knowledgeable personnel as to what happens and how, but should be considered and prepared during the trademark application process if using a webpage specimen.

In re: Siny Corp.:

FTC to host public workshop on video game loot boxes

17 Wednesday Apr 2019

Posted by in Federal Initiatives, Intellectual Property, Legislation, Tech Developments

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The Federal Trade Commission will examine consumer protection issues related to video game loot boxes at a public workshop on August 7, 2019, in Washington, DC. Loot boxes are in-game rewards that contain a random assortment of virtual items (loot) to assist a player advance in the online game or to customize his or her game avatar.

The workshop, titled “Inside the Game: Unlocking the Consumer Issues Surrounding Loot Boxes,” will bring together a variety of stakeholders, including industry representatives, consumer advocates, trade associations, academics, and government officials to discuss concerns regarding the marketing and use of loot boxes and other in-game purchases, and the potential behavioral impact of these virtual rewards on young consumers.

The workshop is expected to address the following topics:

  • A look at the in-game transaction landscape, including the origins and evolution of loot boxes and their role in game play and the digital marketplace;
  • Research examining consumer behavior, including child and adolescent behavior, in the context of video games and digital transactions; and
  • A discussion of consumer awareness and education about in-game digital transactions, including the mechanics, marketing, and financial commitments associated with loot boxes.

The workshop, which is free and open to the public, will be at the Constitution Center, 400 7th St., SW, Washington, D.C., and will be webcast live starting at 9:00 AM.