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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Category Archives: Patent

Puma sues Brooks in Indiana for Trademark Infringement, Design Patent Infringement

11 Monday Jul 2022

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

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Common Law Trademark Infringement, Design Patent Infringement, Matthew P. Brookman, Richard L. Young, Trademark Infringement

Shoe giants Puma and Brooks are involved in a lawsuit in Indiana over loosely-related trademark and patent design infringement claims.

PUMA began using the NITRO trademark in connection with running shoes in March 2021. Per the Complaint (below), PUMA’s line of NITRO running shoes were apparently a Top 15-selling running shoe brand in the U.S. in the year 2021.

In November 2021, PUMA noticed Brooks’ using the term “Nitro” in advertisements for a line of shoes with nitrogen-infused midsoles. In December 2021, PUMA’s counsel sent a letter describing their “exclusive rights” in the NITRO trademark. The subsequent 7 months apparently saw Brooks reject a settlement offer and offer no counterproposal, resulting in this lawsuit. Puma has a pending trademark application for NITRO filed in December 2021 that is still awaiting initial examination.

I question whether Brooks is really even using “Nitro” as a trademark. It seems they are just using a commonly-used shorthand for nitrogen, the common element infused in the shoe’s midsole. A possible resolution, should Brooks deem it necessary or the fight not worthwhile, would be to simply change their advertising from “Nitro” to “Nitrogen.”

The lawsuit is probably equally about PUMA’s claim for design patent infringement, a common dispute between shoe companies. Design patent claims highlight the constant “fine line” walked by consumer shoe designers to exploit a hot, current shoe trend but not copy a competitor’s design. The claims are loosely connected because the allegedly infringing shoes include nitrogen-infused midsoles, and thus are part of the Brooks “Nitro” advertising campaign. I’m not a shoe guy, so I don’t really know shoe terminology or what else is out in the market currently, but I can spot some obvious differences between PUMAS’s patent and the Brooks shoe.

Upon a quick review, the PUMA’s patent’s sole seems to be clearly 3 segments, while Brooks is 4 segments. The back of the heel is smooth on the patent while it is multi-ridged, both internally and externally, on the Brooks shoe. The back segment of the sole on the Brooks is much longer, has a protrusion with a rear wedge cut-out and also a circular impression on the side. The toe end is ridged on the Brooks shoe versus smooth on the design. These differences are just based on a quick initial review but I’m sure blog readers and Brooks’ counsel can find a few more. People familiar with current shoe trends might find even more.

Since 1851, the test for design patent infringement has been the “ordinary observer” test, which compares two designs from the viewpoint of an “ordinary observer,” not an expert in the trade, and requires that the resemblance be intended to deceive the observer and sufficient to induce him to purchase one supposing it to be the other. Recent jurisprudence in the Federal Circuit has seemingly evolved (or devolved, depending on your viewpoint) the test into what has been deemed an “extra-ordinary observer” test, in which the differences between the accused design and the patented design should be reviewed from the viewpoint of someone familiar with the prior art. As I mentioned above, I’m not familiar with the current women’s running shoe market so I could be a qualified “ordinary observer” but probably would not meet the higher standard. Which of the two standards should apply in the Southern District of Indiana in 2022 will likely be a primary focus of the lawsuit as it could be determinative.

If you’re wondering why this lawsuit was filed in Indiana, one explanation is that Brooks has a 400,000 square foot distribution center located in Whitestown, Indiana. PUMA didn’t specifically request seizure or destruction of Brooks’ existing inventory, but perhaps it is on their mind. Another consideration, as mentioned above, is finding a good venue to apply the lower “ordinary observer” standard.

Based on the size of the parties and the previously failed settlement negotiations, we can probably expect some fireworks in this lawsuit. Stay tuned for updates.

PUMA SE at al v. Brooks Sports, Inc.

Case Number: 1-22-cv-01362-RLY-MPB
File Date: July 8, 2022
Plaintiff: PUMA SE, PUMA North America Inc.
Plaintiff Counsel: Joel E. Tragesser, Michael T. Piery, James J. Aquilina of Quarles & Brady LLP
Defendant: Brooks Sports, Inc.
Cause: Trademark Infringement, Design Patent Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Brookman

Complaint:

View this document on Scribd

Equestrian Arena Equipment Manufacturer Sues Competitor for Breach of Contract, Misappropriation of Trade Secrets

13 Tuesday Apr 2021

Posted by Kenan Farrell in Business Law, Indiana, Intellectual Property, Litigation, Patent, Southern District of Indiana, Trade Secret, Trademark

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Breach of Contract, Common Law Trademark Misappropriation, Common Law Unfair Competion, Doris L. Pryor, False Advertising, False Designation, Lanham Act Violations, Misappropriation of Trade Secrets, Sarah Evans Barker

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

Complaint:

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Indianapolis company accused of selling counterfeit LED lighting fixtures

15 Monday Apr 2019

Posted by Kenan Farrell in Copyright, Indiana, Indianapolis, Intellectual Property, Litigation, Patent, Southern District of Indiana, Trademark

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Copyright Infringement, Counterfeiting, Doris L. Pryor, False Advertising, Federal Unfair Competition, Tanya Walton Pratt

An Indianapolis company has been accused of selling counterfeit LED lighting fixtures.

Electra Display, on Indy’s southeast side, has been sued for copyright infringement based upon the alleged copying of the plaintiff’s intellectual property, including copyrighted images from plaintiff’s sales brochures, and false advertising, based on Electra’s use of the images to deceive customers into believing that it sold plaintiff’s products, when Electra is alleged to actually sell an inferior, knock off product made by a Chinese manufacturer.

Screen Shot 2019-04-15 at 5.47.58 AM.png

The plaintiff, Massachusetts-based JLC-Tech LLC, owns several patents for its LED lighting technology, but doesn’t assert any patent infringement claims in the Complaint (below). Rather, this lawsuit simply seeks damages and injunctive relief against the use of the sales photographs and misleading advertising. 

Stay tuned for updates.

JLC-Tech LLC v. Electra Display

Court Case Number: 1:19-cv-01468-TWP-DLP
File Date: Thursday, April 11, 2019
Plaintiff: JLC-Tech LLC
Plaintiff Counsel: Darren A. Craig of Frost Brown Todd LLC
Defendant: Edge Systems Group LLC d/b/a Electra Display
Cause
: Copyright Infringement, Federal Unfair Competition, False Advertising
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Doris L. Pryor

Complaint:

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USPTO upgrading website to https

11 Thursday Aug 2016

Posted by Kenan Farrell in Intellectual Property, Patent, Tech Developments, Trademark

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USPTO

On August 12, 2016, the informational web pages currently found at http://www.uspto.gov will be moved to https://www.uspto.gov. The USPTO has decided to finally use HTTPS (Hypertext Transfer Protocol Secure), currently the strongest privacy protection available for public web connections.

Those accessing web pages formerly found at http://www.uspto.gov will automatically be redirected to the pages’ new https location.

Screen Shot 2016-08-11 at 8.50.31 AM

Indiana Copyright Litigation Update – Lake Lite v. Universal Forest Products et al

27 Monday Oct 2014

Posted by Kenan Farrell in Copyright, Indiana, Intellectual Property, Litigation, Northern District of Indiana, Patent, Trade Secret

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Breach of Contract, Breach of Implied Duty of Good Faith and Fair Dealing, Copyright Infringement, Jon E. DeGuilio, Litigation Update, Patent Infringement, Roger B. Cosbey, Unjust Enrichment, Violation of Indiana Uniform Trade Secret Act

This lawsuit arises from Defendants’ alleged infringement of copyrights and patents, as well as unauthorized use and misappropriation of Plaintiff’s trade secrets.

Lake Lite Inc. v. Universal Forest Products, Inc. et al

Court Case Number: 1:14-cv-00337
File Date: Friday, October 24, 2014
Plaintiff: Lake Lite Inc.
Plaintiff Counsel: Michael S. McIntyre
Defendant: Universal Forest Products, Inc., Universal Consumer Products, Inc., Maine Ornamental, LLC
Cause: Copyright Infringement, Patent Infringement, Breach of Contract, Breach of Implied Duty of Good Faith and Fair Dealing, Violation of Indiana Uniform Trade Secret Act, Unjust Enrichment
Court: Northern District of Indiana
Judge: Judge Jon E. DeGuilio
Referred To: Magistrate Judge Roger B. Cosbey

Complaint:

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