Category Archives: Branding

Family-owned Hardware Store in Corydon, Indiana sued by Sears Hometown for Unfair Competition and Tortious Interference

08 Tuesday Jun 2021

Posted by in Branding, Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trade Dress

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The Plaintiff in this lawsuit is Sears Authorized Hometown Stores, LLC (“SAHS”), the licensor of Sears Hometown stores, which offer SAHS’s merchandise, such as major home appliances, for sale to the public on consignment from SAHS. For over 25 years, SAHS licensed a Sears Hometown store in Corydon, Indiana through dealership agreements with a series of independent dealers.

The Defendants are accused of using “their personal relationships with SAHS’s former dealer to block SAHS’s access to the market and open their own store, “Schneider’s Hometown,” at the same location as the former Sears Hometown store. Defendants are now unfairly trading off SAHS’s name and goodwill in the Corydon market.”

The Complaint (below) details the history between the original Corydon SAHS store and the Defendants, including the actions of the Defendants in abandoning their own dealer agreement.

The Defendants are also accused of using a sign designed to be confusingly similar to the sign used to designate a Sears Hometown store, including using the same font and color scheme. The interior of the Defendants’ store allegedly uses the same trade dress and fixtures used in SAHS’s branding programs, including, but not limited to, the paint colors and trim and vinyl plank wood flooring. The Defendants also continue to use the same phone number from the SAHS store.

Stay tuned for updates.

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al.

Case Number: 4:21-cv-00091-JMS-DML
File Date: Friday, June 4, 2021
Plaintiff: Sears Authorized Hometown Stores, LLC
Plaintiff Counsel: Michael W. Oyler of Furman Nilsen & Oyler, PLLC, Fredric A. Cohen, Allison R. Grow, Charles J. Hoover of Cheng Cohen LLC
Defendant: Lynn Retail, Inc., Jerry Schneider, Laura Schneider
Cause: Unfair Competition, Tortious Interference with Contract, Tortious Interference with Prospective Economic Advantage
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Debra McVicker Lynch

Complaint:

Three Floyds Brewing sues Floyd’s Spiked Beverages for Trademark Infringement

26 Thursday Sep 2019

Posted by in Branding, Indiana, Intellectual Property, Litigation, Northern District of Indiana, Trademark

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Three Floyds Brewing is one of Indiana’s longest operating breweries, selling nationally-recognized delicious beers under the trademark THREE FLOYDS since 1996.

In 2018, the defendant Floyd’s Spiked Beverages began selling Spiked Lemonade and Spiked Ice Tea under the FLOYD’S trademark. The Defendants’ apparently lower quality beverages are sold within 20 miles of the Three Floyds brewery in Munster, Indiana. The Defendants also sell their product via a website at DrinkFloyds.com.

Three Floyds is already opposing one of Floyd’s trademark applications that claims “Alcoholic beverages, except beer.” The USPTO has refused Floyd’s other trademark application for “Beer-based coolers” based on a likelihood of confusion with Three Floyds’ registered trademarks.

The Complaint (below) spotlights several poor consumer reviews of the Defendants’ spiked beverages, but doesn’t mention any instances of actual consumer confusion.

Stay tuned for updates.

Three Floyds Brewing LLC v. Floyd’s Spiked Beverages LLC et al.

Court Case Number:  2:19-cv-00363
File Date: Wednesday, September 25, 2019
Plaintiff: Three Floyds Brewing LLC
Plaintiff Counsel: Glenn A. Rice, Esq., Carter S. Plotkin, Esq. of Funkhouser Vegosen Liebman & Dunn Ltd.
Defendant: Floyd’s Spiked Beverages LLC, Lawrence Trachtenbroit
Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: TBD

Complaint: 

Fan Company sues Unauthorized Online Dealer for Trademark Infringement

04 Wednesday Sep 2019

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

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The Plaintiff, a fan company based in Zionsville, Indiana, sells its electric fans to consumers via its website, showrooms or through authorized dealers.

The Defendant is alleged to be offering unauthorized sales of Plaintiff’s fans at the website http://www.lightingmerchant.com. Importantly for consumers, electric fans sold by Defendant are not covered by Plaintiff’s warranty.

The Complaint (below) alleges that the Defendant purchases the products from one or more authorized dealers and then sells the products to retail customers. The identity of the authorized dealers is not revealed in the Complaint.

Fanimation, Inc. v. Decor Selections, LLC

Court Case Number: 1:19-cv-03648-JPH-MJD
File Date: Tuesday, August 27, 2019
Plaintiff: Fanimation, Inc.
Plaintiff Counsel: Harold C. Moore, Michael A. Swift of Maginot, Moore & Beck, LLP
Defendant: Decor Selections, LLC d/b/a Lighting Merchant
Cause: Declaratory Judgment, Injunctive Relief, Trademark Infringement, False Designation of Origin, Dilution, Unfair Competition, Unjust Enrichment
Court: Southern District of Indiana
Judge: James Patrick Hanlon
Referred To: Mark J. Dinsmore

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.

UPDATE: This lawsuit was dismissed with prejudice on January 30, 2020.

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:

Proper Use of the Federal Trademark Registration Symbol ®

12 Tuesday Mar 2019

Posted by in Branding, Intellectual Property, Trademark

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As a trademark attorney, I almost always notice whether a company is using the federal trademark registration symbol, ®. From time to time, I’ll check out their registration on the United States Patent and Trademark Office (USPTO) database, only to find that the company doesn’t actually have a federal registration, and sometimes not even an application.

It’s important to know that the federal registration symbol may not be used with trademarks until they are actually registered with the USPTO. Using the ® without a registration can get you into trouble. Knowing and willful misuse of the federal registration symbol can be considered an attempt to deceive or mislead consumers and subject you to potential fraud claims.

However, the USPTO acknowledges that misunderstandings about use of the federal registration symbols are more frequent than occurrences of actual fraudulent intent.  Common reasons for improper use of the federal registration symbol that do not indicate fraud are:

  • Mistake as to the requirements for giving notice (confusion often occurs between notice of trademark registration, which may not be given until after registration, and notice of claim of copyright, which must be given before publication by placing the notice © on material when it is first published);
  • Inadvertence in not giving instructions (or adequate instructions) to the printer, or misunderstanding or voluntary action by the printer;
  • The mistaken belief that registration in a state or foreign country gives a right to use the registration symbol
  • Registration of a portion of the trademark
  • Registration of the trademark for other goods
  • A recently expired or cancelled registration of the subject trademark
  • Another trademark to which the symbol relates on the same label

See TMEP §906.02.

Contact a trademark attorney if you have questions about the proper use of the federal trademark registration symbol.