Category Archives: Indiana

False Advertising Lawsuit filed in Indiana over Paint Roller Cleaners

21 Tuesday Feb 2023

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

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Paint roller cleaners are the subject of the latest Indiana false advertising and trademark lawsuit. More specifically, the lawsuit involves the alleged behavior of defendants that held out a plaintiff’s product as their own while actually selling competing product.

The plaintiff is Roller Ready, LLC of Fort Wayne, Indiana, owner of trademark and patent rights in a ROLLER READY product that cleans paint rollers.

In 2021, Roller Ready agreed to let an individual promote their product at the 2021 National Hardware Show. However, the product was apparently promoted under the brand of another company, Monkey Rung. The product won an award and all resulting recognitions went to Monkey Rung rather than Roller Ready.

Online links about the Roller Ready product point to Monkey Rung’s website with a competing product. Monkey Rung controls, and seemingly won’t relinquish, an Amazon listing for the Roller Ready product. Monkey Rung even listed the Roller Ready product on its own website’s Product Portfolio (see Complaint below).

The defendants are accused of intentionally misleading the public and degrading Roller Ready’s goodwill. Defendants act as if they own the Roller Ready product, so maybe they think they do. There are often two sides to a story, so stay tuned for what will likely be an interesting Answer. The defendants are not from Indiana, so first there could be some jurisdictional challenges.

Roller Ready, LLC v. LA Systems, LLC d/b/a Monkey Rung et al.

Court Case Number: 1:23-cv-00068-HAB-SLC
File Date: February 14, 2023
Plaintiff: Roller Ready, LLC
Plaintiff Counsel: Benjamin D. Ice of Barrett McNagny LLP
Defendant: LA Systems, LLC d/b/a Monkey Rung, Paul Kiley
Cause: False Advertising, False Marking, Indiana Deceptive Trade Practices Act, Federal Trademark Infringement
Court: Northern District of Indiana
Judge: Holly A. Brady
Referred To: Susan L. Collins

Complaint:

Freedom Mortgage (with Roundpoint subsidiary) sues Freedompoint for Trademark Infringement

17 Friday Feb 2023

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

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The plaintiff in this trademark lawsuit, Freedom Mortgage Corporation, has been providing mortgage banking services using its FREEDOM MORTGAGE trademark since December 1992. Freedom Mortgage also has a wholly owned subsidiary called Roundpoint which has provided mortgage banking services since January 2009.

In April 2021, the defendant, Freedompoint, LLC, began using the trademark FREEDOMPOINT in connection with mortgage banking services. The FREEDOMPOINT trademark was registered with the USPTO in August 2021 having received no “likelihood of confusion” refusal during the application process.

It seems that Freedom Mortgage disagrees with the USPTO, believing that there does exist a likelihood of confusion, considering FREEDOMPOINT to be an infringing combination of the FREEDOM MORTGAGE and ROUNDPOINT marks.

The combination argument is interesting, perhaps suggesting that consumers would incorrectly surmise that Freedom Mortgage, owner of the Roundpoint subsidiary, had simply merged the two companies. However, do consumers even know that Roundpoint is a wholly owned subsidiary of Freedom Mortgage? I reviewed both the Freedom Mortgage and Roundpoint websites and don’t see any mentions of the other company.

If consumers don’t have any reason to associate Roundpoint with Freedom Mortgage, then really there are just two applicable comparisons…Freedom Mortgage v. Freedompoint and Roundpoint vs. Freedompoint. The USPTO didn’t consider either to be confusingly similar but perhaps more “combination” evidence will be available for this lawsuit.

Stay tuned for Freedompoint’s Answer.

Freedom Mortgage Corporation v. Freedompoint, LLC

Court Case Number: 4:23-cv-00022-TWP-KMB
File Date: February 14, 2023
Plaintiff: Freedom Mortgage Corporation
Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendant: Freedompoint, LLC
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, State Trademark Infringement, Common Law Unfair Competition, Cancellation of U.S. Registration, Deception, Conversion, Forgery, Counterfeiting, Theft
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Kellie M. Barr

Complaint:

USA Football sues USA Flag for Trademark Infringement

16 Thursday Feb 2023

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

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USA Football organizes football training events for players, coaches, and officials. USA Football was endowed by the National Football League and the National Football League Players Association in 2002.

USA Football has filed a lawsuit in Indiana attempting to prevent the use of the mark USA FLAG in connection with flag football tournaments and leagues. The parties to the lawsuit have a lengthy history, with Defendant Burnett first approaching USA Football in 2017 about a potential collaboration. Over the following years, the relationship involved both a Consulting Agreement and an Event Collaboration Agreement between the parties. However, per the Complaint (below), USA Football always maintained that the USA FLAG mark could not be used, previously opposing a USA FLAG trademark application.

Unable to successfully persuade/convince USA Flag to stop using an allegedly confusingly similar trademark, USA Football now seeks court intervention, including requests for injunctive relief and attorneys’ fees. As USA Flag seems dug into its position, this lawsuit could get interesting. USA Flag previously chose not to defend in the trademark opposition proceeding, resulting in a notice of default. Surely USA Flag won’t attempt that same strategy in federal court. Stay tuned for updates.

USA Football, Inc. v. Flag Football World Championship Tour, LLC et al.

Court Case Number: 1:23-cv-00274-TWP-KMB
File Date: February 13, 2023
Plaintiff: USA Football, Inc.
Plaintiff Counsel: Amie N. Peele of Peele Law Group, PC; Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendants: Flag Football World Championship Tour, LLC, USA Flag, LLC, Travis Burnett
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement, Contributory Trademark Infringement, Vicarious Trademark Infringement, Unjust Enrichment, Conversion, Deception, Indiana Crime Victim’s Relief Act
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Kellie M. Barr

Complaint:

February 2023 Indiana Intellectual Property Litigation Update

15 Wednesday Feb 2023

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

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The last four weeks have been relatively quiet for Indiana trademark and copyright lawsuits. A few lawsuits settled unceremoniously. Several telephonic conferences were held and some follow-up conferences have been scheduled. A few motions are now fully-briefed, so next month could see several important court orders.

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – On January 27, 2023, the Court, following advisement by counsel that settlement was reached, ordered that dismissal documents be filed within 30 days.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) –  AMI has requested a two-day extension of time to February 17, 2023 to reply to the Noble Roman’s Motion for Partial Summary Judgment.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – A hearing is schedule on February 22, 2023 on Defendant’s fully-briefed Motion to Compel Documents from Plaintiff.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – The parties held a telephonic status conference on February 9, 2023 and another is scheduled on March 8, 2023.

Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) –  The parties held a telephonic status conference on February 2, 2023 and another is scheduled on February 22, 2023.

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – The parties held a telephonic status conference on February 10, 2023 and another is scheduled on March 23, 2023.

NuStar Enterprises LLC v. Reloaded Merch LLC et al. (ND, filed 4/1/2022) – On January 27, 2023, the lawsuit was dismissed with prejudice, all parties bearing their own costs and attorneys’ fees.

The Evolutionary Level Above Human, Inc. v. Havel et al (ND, filed 5/18/2022) –  Motions, responses, and replies, oh my. This case has seen nearly 20 filings in the last month, so if you’re following along with this lawsuit, go check out PACER for all the details.

PUMA SE et al. v. Brooks Sports, Inc. (SD, filed 7/8/2022) – On January 20, 2023, the lawsuit was transferred to the Western District of Washington and assigned case number 2:23-cv-00116.

Broadcast Music, Inc. et al v. Thirty-Six Saloon, LLC d/b/a Thirty Six Saloon et al. (SD, filed 7/27/2022) – On January 27, 2023, BMI filed a Motion for Default Judgment.

Schwartz v. Kilroy’s North America, LLC et al (SD, filed 8/5/2022) – The parties held a telephonic status conference on January 9, 2023 and a settlement conference is scheduled on March 13, 2023.

Oakley, Inc. v. Batter’s Box Training, LLC et al (SD, filed 8/11/2022) – The parties held a telephonic status conference on February 6, 2023 and a settlement conference is scheduled on March 2, 2023.

Honest Abe Roofing franchise, Inc. v. DCH & Associates, LLC et al. (SD, filed 9/7/2022) – No update this month.

Phoenix USA RV, Inc. v. Hoosier Custom Cruisers LLC et al. (ND, removed 10/7/2022) – The Court modified a non-dispositive motion deadline but there we no other updates this month.

MaddenCo Inc. v. Reed et al. (SD, filed 10/31/2022) – On January 26, 2023, Defendant Darby filed a Motion to Dismiss for Lack of Jurisdiction. A telephonic pretrial conference is scheduled for February 22, 2023.

The Center for Gestalt Development, Inc. v. Bowman (SD (11/09/2022) – As of February 10, 2023, the Defendant’s Motion to Dismiss for Lack of Venue is now fully-briefed.

1.4G Holdings, LLC v. North Central Industries, Inc. et al. (SD 1/05/2023) – A telephonic pretrail conference is scheduled on April 11, 2023.

Stross v. Lynn Boolman Auto Sales Limited Liability Company et al. (ND 1/25/2023) – No update yet.

Albert’s Diamond Jewelers, Inc. v. AaLand Diamond Jewelers LLC (ND 2/01/2023) – No update yet.

Delta Faucet Company v. Watkins et al. (SD 2/01/2023) – No update yet.

January 2023 Updates

December 2022 Updates –  December 2021 Updates

Delta Faucet Company sues Amazon Counterfeiter over Unauthorized Sales

03 Friday Feb 2023

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

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Delta Faucet Company is once again pursuing a counterfeit faucet seller from Amazon in the Southern District of Indiana. The Complaint (below) details how a company’s trademarks are impacted by unauthorized sellers and the resulting negative online marketplace reviews. As with Delta’s previously-filed lawsuits, the Complaint highlights the gray market existing within Amazon’s “Fulfillment by Amazon” services that allows for counterfeit sales, leading to invalid product warranties, disgruntled consumers, and damaged brands.

Delta’s most recent “counterfeit” lawsuit resulted in a default judgment and permanent injunction as the Defendant never appeared. The lawsuit took just a few days over one years. The injunction, probably Delta’s real goal, presumably allowed them to finally stop the unauthorized Amazon sales. However, like mosquitoes, stop one counterfeiter and another will inevitably appear. We can probably expect a similar result in this lawsuit…no appearance by the defendants, default judgment, and injunction.

Stay tuned for updates.

Delta Faucet Company v. Watkins et al.

Court Case Number: 1:23-cv-00200-JMS-MKK
File Date: February 1, 2023
Plaintiff: Delta Faucet Company
Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendants: Ben Watkins, John Does 1-10
Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, Indiana Crime Victim’s Relief Act, Deception
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: M. Kendra Klump

Complaint: