NEW Indiana trademark litigation alert:

Franklin College has filed a federal complaint against Franklin University, an Ohio-based institution, for trademark infringement and unfair competitive practices.  Franklin College, located 25 miles south of Indianapolis, is a liberal arts institution with about 1,000 undergraduate students.  It celebrates its 175th anniversary this year.  Franklin University, based in Columbus, Ohio, is opening a new location in the Castleton area.

Franklin College President Jay Moseley says the decision to take action was made after Franklin University began an aggressive advertising campaign in central Indiana to promote classes being offered this fall.  He says the complaint is an effort to protect Franklin College trademarks while shielding alumni and students from confusion.

“Since Franklin University began its advertising blitz in Central Indiana this spring, we have received calls, comments and e-mail messages from many people asking why we changed our name or whether we’ve opened a satellite office for online education in Indianapolis,” Moseley said in a statement.

“We have great concerns about the impact of the obvious confusion, especially with prospective students and employers of our alumni.”

Of particular concern to Franklin College is its trademark clock tower logo.  “Their ads include colors and a ‘clock tower’ design amazingly similar to our logo,” Moseley said.

Moseley also noted that the Ohio school has recently begun referring to itself as “Franklin University – Indianapolis” or simply “Franklin” in local and Internet advertising.

Franklin University has responded with the following statement:

Franklin University is and has been publicizing its presence in Indianapolis using its own name in a completely factual and consistent manner, and in close cooperation with the State of Indiana and the Higher Learning Commission of the North Central Association of Colleges and Schools. It is unfortunate that Franklin College did not contact us if it had concerns about our marketing, since we did advise the President of Franklin College of our intentions prior to beginning to offer programs in Indianapolis in 2009.

Franklin University offers academic programs that are distinct from and targeted to a very different student demographic than Franklin College. Programs are intended for the working individual, not the traditional-age on-campus college student. The University focuses on business and professional education, such as majors in accounting and business administration, not on a traditional liberal arts education.

Founded in 1902, Franklin University has been serving adult students for more than 100 years. It is the leading and most experienced educator of adult students and is nationally recognized for its student-centered approach. Franklin University, a non-profit institution of higher education provides flexible, online as well as face-to-face class scheduling, maximizes transfer of previously earned college credits, and offers tuition rates far below the national average. Franklin University has been serving adult students in Indiana through its online offerings and Community College Alliance program for nearly a decade.

Now that Franklin College has chosen to use the legal system to resolve this matter, rather than contacting Franklin University, Franklin University will certainly act to protect the right to use its own name to publicize its programs in a factual and consistent manner.

For more information about Franklin University, please visit http://www.franklin.edu.

Love the response.  Never miss an opportunity to get the word out about your course offerings and target student body.

Each parties’ respective word mark abstract:

Of course, the Indiana Intellectual Property & Technology Law Blog will keep you updated as this matter proceeds.  No prediction on the outcome here, since I happen to know some of the attorneys involved.  But it should be interesting…

Court Case Number: 1:09-cv-00830-WTL-TAB
File Date: Monday, July 6, 2009
Plaintiff: Franklin College of Indiana
Plaintiff Counsel: Wayne C. Turner, Michael R. Limrick of Bingham McHale LLP
Defendant: Franklin University, Inc.
Cause: 15:1114 Trademark Infringement
Court: Indiana Southern District Court
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Tim A. Baker

The complaint includes the following causes of action: (1) Federal Trademark Infringement; (2) False Designation of Origin and Unfair Competition; (3) Indiana State Trademark Infringement; (4) Indiana State Trademark Dilution; and (5) Common Law Trademark Infringement and Unfair Competition.

Leave a comment with your email if you’d like a copy of the full Complaint.

Indiana RV manufacturers Jayco Inc. (“Jayco”) and Heartland Recreational Vehicles, LLC (“Heartland”) have jointly announced a settlement of the trademark infringement lawsuit filed earlier in the year by Jayco against Heartland.   The case had been brought in the Northern District of Indiana, Case No. 3:2009-cv-00171.

The suit alleged that Heartland has violated federal trademark law by adopting the Eagle Ridge name for a line of vehicles.  Jayco claims to have held trademark rights in the EAGLE trademark since at least 1991.

As I mentioned in an earlier post, this seemed like a prime settlement opportunity.  Heartland just didn’t have enough investment in the Eagle Ridge mark to justify going forward with potentially expensive trademark litigation.  In a crowded trademark marketplace, you’re bound to have friction from time to time.  It’s nice to see this matter resolve itself before the fireworks began.

Coley Brady, Heartland’s director of sales and marketing, said of the settlement, “Even though Heartland believes its Eagle Ridge line does not infringe upon Jayco’s Eagle trademark, we did not have a significant investment in Eagle Ridge as a name for our fifth-wheel travel trailers. We understand Jayco’s concern and out of respect for Jayco will no longer offer any products bearing the Eagle Ridge name.”

Sid Johnson, director of marketing for Jayco, said, “Jayco has used the Eagle name for nearly 20 years on some of our most popular RV product lines. We are grateful that Heartland is willing to change the name of its new product line to address our concerns in protecting our valuable EAGLE trademark.”

If only every trademark dispute could end so peacefully…

Source: RVBusiness