Just a few updates of note since mid-March in Indiana trademark and copyright lawsuits. Next month should see more filings in the current lawsuits as defendants start to make appearances.
Midcontinent Independent System Operator, Inc. v. Sullivan (SD, 1/18/2021) – The parties have settled and a Consent Judgment was entered on April 7, 2021. The Defendant has agreed to stop using the Plaintiff’s trademarks, with each party to bear its own costs and attorneys’ fees.
The Amended Complaint has dropped the claims of Conversion and Theft, retaining just the claims of Breach of Franchise Agreement and Trademark Infringement. As a result, the Defendants’ Motion to Dismiss filed on March 8 was denied without prejudice as moot.
Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – The Defendants’ counsel filed an appearance on April 6, 2021 and filed a 14-day Notice of Initial Extension of Time. As such, the new response deadline is April 21, 2021.
Here’s an interesting lawsuit, which seems like it wants to be a patent lawsuit but instead is masquerading as a breach of contract or trade secret lawsuit.
In September 2016, the parties allegedly into a “Product Lines Purchase Agreement,” by which the Plaintiff purchased “all specifications, shop drawings, blueprints, records and intellectual property rights” relating to the Kiser DragMaster and Kiser Edge, equipment used for grooming and maintaining equestrian arenas.
Despite selling the intellectual property for those products to Plaintiff as a part of the deal, the Defendants are now accused of selling knockoff products, although under different product names. It seems that what Plaintiff really wants to do is prevent the sale of competing products, but they don’t have any patents to truly protect their product designs. As such, the Plaintiff’s lawyers had to get creative and try to bring breach of contract, trademark, and trade secret claims.
Apparently, representatives of the Defendants have referred to the Defendants’ products as a “redesign” of Plaintiff’s DragMaster. Even if true, the Defendants could claim a nominative fair use defense, as such references seem to actually be referring to old DragMaster products. The law around comparative advertising is pretty well-settled in favor of consumer knowledge, absent evidence of false endorsement. Competitors comparing a new product to an older competing product via name is typically allowed.
By way of example, the Complaint (below) contains the following diagram comparing the Defendants’ “Kiser 1000” to the Plaintiff’s “ABI DragMaster”:
Similarly, the “Kiser 200” is compared to the “ABI Edge”:
These are the types of comparison drawings you’d typically see in a patent lawsuit. All of the features being compared are utilitarian product features. The product names (i.e. trademarks) aren’t compared because they aren’t similar at all…Kiser 1000 vs. ABI DragMaster.
Proving a breach of contract or misappropriation of trade secrets will necessarily depend on proving that the Defendants’ products are actually infringing on the intellectual property owned by Plaintiff. Without any prior patent protection, that could be difficult to do in this context.
Stay tuned to see how the Defendants respond, perhaps with a Motion to Dismiss for some of the claims.
ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al.
Court Case Number: 1:21-cv-00890-SEB-DLP File Date: Monday, April 12, 2021 Plaintiff: ABI Attachments, Inc. Plaintiff Counsel: James M. Lewis, Michael J. Hays of Tuesley Hall Konopa LLP Defendant: Kiser Arena Specialists, Inc., Robert D. Kiser, James Kiser Cause: Breach of Contract, Misappropriation of Trade Secrets, Lanham Act Violations, False Designation, False Advertising, Common Law Unfair Competition, Common Law Trademark Misappropriation, Unjust Enrichment Court: Southern District of Indiana Judge: Sarah Evans Barker Referred To: Doris L. Pryor
The Plaintiff in this trademark lawsuit, Vroom, is an online nationwide used car retailer based in New York, New York. own 8 U.S. trademark registrations for VROOM and the Vroom Logo, using the marks since at least 2014. The Plaintiff’s domain name is http://www.vroom.com.
The Defendants operate Vrooomsace, a used car retailer located in Indianapolis, Indiana. The Defendants’ use the domain name vrooomcars.com.
Asserting a likelihood of confusion, Plaintiff’s counsel first attempted to contact the Defendants on December 30, 2020, but apparently has received the runaround ever since, never receiving a substantive response from Defendants.
Their patience apparently has run out, resulting in this lawsuit. We’ll see whether Plaintiff finally gets a response. Unfortunately, often it takes a filed complaint for the opposing party to take a matter seriously. If not, this lawsuit could wind up with a default judgment.
Stay tuned for updates.
Vroom, Inc. v. Midwest Motors LLC et al.
Court Case Number: 1:21-cv-00715-TWP-TAB File Date: March 24, 2021 Plaintiff: Vroom, Inc. Plaintiff Counsel: David A.W. Wong, Caitlin R. Byczki, Kathleen S. Fennessy of Barnes & Thornburg LLP Defendant: Midwest Motors LLC dba Vrooomsace Car Selection, Khaled Alragwi Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement, Anticybersquatting Consumer Protection Act Court: Southern District of Indiana Judge: Tanya Walton Pratt Referred To: Tim A. Baker
Another month come and gone with just a few developments in Indiana copyright and trademark lawsuits. Some interesting cases were filed this month that should have an update next month.
Schnebelt v. Anglotopia, LLC (ND, filed 1/18/2021) – On 3/10/21, the Plaintiff filed a Notice of Settlement indicating that “The parties have reached a settlement in principle. Plaintiff will filed a notice of dismissal by May 28, 2021.” So this lawsuit is basically over, likely just pending full payment from Defendant to Plaintiff.
Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The Defendants have filed an Answer and Motion to Dismiss for Failure to State a Claim (see below). The Answer is almost entirely just general denials but does include Counterclaims (starting at page 21) that tell some of the Defendants’ side of the story. Allegedly, Noble Roman’s was attempting to use a few minor protocol breaches to force the Defendants’ into signing a 4-year lease agreement. The Counterclaims also allege abusive litigation practices and abuse of process. The Defendants are asking for dismissal of the Complaint, damages against the Plaintiffs, and attorneys’ fees.
Defense counsel are Ronald J. Waicukauski and Carol Nemeth Joven of Price Waicukauski Joven & Catlin, LLC.
The Motion to Dismiss addresses Noble Roman’s failure to make factual allegations of any specific wrongful conduct. If, per the Defendants’ Counterclaims, Noble Roman’s wanted a protracted legal battle, this is the first opportunity for it to spend some serious legal money defending deficiencies in the Complaint.
It should be noted that the original Noble Roman’s counsel who filed the Complaint is not among the team currently litigating the case, who it turns out might be on cleanup duty.
One company’s efforts to expand its LA MICHOACANA MEAT MARKET brand from meat markets to grocery stores has moved into Indiana.
The Plaintiff, La Michoacana Meat Market, owns several federal trademark registrations for LA MICHOACANA MEAT MARKET for “Retail meat market stores.”
Seeking to claim undeniably broader protection over “LA MICHOACANA” in connection with grocery stores, the Plaintiff has brought numerous lawsuits over the last few years against small grocers using the term “Michoacana” (or some variation) in their name. Two new Indiana lawsuits are the 6th and 7th filed by La Michoacana against small grocers just this year.
“La Michoacana,” is a common term meaning someone or something from the state of Michoacán in western Mexico. Like an Iowan is from Iowa, or a Californian is from California (but not like a Hoosier is from Indiana). It is apparently a very popular term when naming “Mexican-themed grocery stores,” as evidenced by these lawsuits.
Due to the Defendants’ respective locations, one lawsuit was filed in the Southern District of Indiana and the other in the Northern District of Indiana. It will be interesting to track the two lawsuits side-by-side to see whether they reveal any significant differences between the Northern and Southern District.
Plaintiff’s Registered Mark
LA MICHOACANA MEAT MARKET for “Retail meat market stores”
Northern District Defendant’s Mark
CARNICERIA Y FRUTERIA LA MICHOACANA for a “Mexican-themed grocery store”
Southern District Defendant’s Mark
SUPER MERCADO JIREH POLLO MICHOACANO for a “Mexican-themed grocery store”
Between the two, I predict more difficulties for the Northern District Defendant. For some reason, the Northern District Defendant includes a link to the Plaintiff’s website on its Facebook page, which could be interpreted as evidence of intent to confuse or deceive. However, it’s not apparent from the Complaint (below) who added the link on the Facebook page, as it could be an incorrect Facebook-generated link or third-party edit.
Via this Google Maps image, the Northern District Defendant uses “La Michoacana” more prominently than the other literal elements of their brand (“Carniceria Y Fruteria”) on consumer-facing signage, which strengthens the Plaintiff’s argument for likelihood of consumer confusion.
Compare that to the signage of the Southern District Defendant, which uses the allegedly infringing term less prominently, and with a different spelling:
Further, the services seem different between the Northern and Southern District defendants, whereas the Northern District’s signage specifically advertises the sale of meats. Rather, the Southern District Defendant is a “tienda,” a small neighborhood grocery shop, different than a “retail meat market store.”
Perhaps in recognition of the possible narrow application of their “Retail meat market stores” description, La Michoacana has recently filed an additional federal trademark application for LA MICHOACANA SUPERMARKET for “Retail grocery stores.” That trademark application will be published for opposition on March 30, 2021, and might face challenges from among La Michoacana’s growing list of defendants.
The reality is that a single small grocery owner won’t want to spend much money defending their store name in federal court and will likely just choose to change the name, which the Plaintiff undoubtedly has considered. Buying new signage simply costs less than defending a federal lawsuit. Depending on how long each Defendant has been using their respective name, they may have a good acquiescence or laches defense.
Stay tuned for updates.
Sidenote: The LA MICHOACANA brand has also been the subject of a separate, but equally interesting, trademark dispute in connection with fruit popsicles.
La Michoacana Meat Market TM Holdings, LLC v. Lopez et al.
Court Case Number: 1:21-cv-00563-TWP-TAB File Date: March 9, 2021 Plaintiff: La Michoacana Meat Market TM Holdings, LLC Plaintiff Counsel: Ann O’Connor McCready, Neil R. Peluchette of Taft Stettinius & Hollister LLP Defendant: Josue Lopez, Supermercado Jireh LLC Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, Common Law Unfair Competition, Unjust Enrichment Court: Southern District of Indiana Judge: Tanya Walton Pratt Referred To: Tim A. Baker
La Michoacana Meat Market TM Holdings, LLC v. Galan et al.
Court Case Number: 2:21-cv-00087 File Date: March 9, 2021 Plaintiff: La Michoacana Meat Market TM Holdings, LLC Plaintiff Counsel: Ann O’Connor McCready of Taft Stettinius & Hollister LLP, Ruth M. Willars of Monty & Ramirez LLP (pro hac vice) Defendant: Cacimiro Galan, Carniceria y Fruteria La Morenita LLC Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, Common Law Unfair Competition, Unjust Enrichment Court: Northern District of Indiana Judge: Philip P. Simon Referred To: John E. Martin
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