Category Archives: Trade Dress

Mid-December 2021 Indiana Intellectual Property Litigation Update

15 Wednesday Dec 2021

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

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IP litigators must have started celebrating the holidays early, as it’s been a very quiet month for intellectual property lawsuits in Indiana. Only one new lawsuit was filed, a copyright case involving a single photograph used by Chicks on the Right in an online news article back in 2019. We did get some big news yesterday that Methodist Sports Medicine has decided to change its name to Forté Sports Medicine and Orthopedics, yet we’ll have to wait to see how the name change will impact the pending lawsuit.

Many cases just received time extensions, saving their fight for the new year.

Happy holidays from the Indiana Intellectual Property Blog. See you in January for next month’s updates.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The filing deadline for outstanding filings has been extended from December 9, 2021 to January 6, 2022.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – No update this month.

Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al. (ND, filed 4/26/2021) – After two short extensions, dismissal papers are now due by December 17, 2021.

Sears Authorized Hometown Stores, LLC v. Lynn Retails, Inc. et al. (SD, filed 6/4/2021) – A Protective Order was entered on December 9, 2021.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – On December 2, 2021, the parties filed a joint motion to extend Court-ordered pretrial deadlines. The motion was denied without prejudice because the motion failed to show good cause for the extension.

Phoenix Intangibles Holding Company et al. v. Virk Brothers, LLC et al. (ND, filed 7/9/2021) – The Scheduling Order was amended to extend discovery deadlines.

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – On November 19, 2021, the Plaintiffs filed a Motion to Enforce Judgment seeking transfer of internet domains and social media accounts.

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – On December 8, 2021, the Defendants filed a motion requesting until January 11, 2022 to respond to Plaintiff’s Discovery Request.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – An Amended Complaint was filed on December 9, 2021 and the Answer to Amended Complaint was filed on December 12, 2021.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – Attorney Kelly V. Milam filed an appearance on behalf of defendant ooShirts, Inc. on November 23, 2021.

Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) – The Defendants’ attorneys filed appearances on December 8, 2021.

Indiana University Health, Inc et al. v. Thomas A. Brady Sports Medicine Center, P.C. (SD, filed 11/1/2021) – No update yet.

Alcorn v. COTR, LLC (SD, filed 11/22/2021) – No update yet.

November 2021 Updates

October 2021 Updates

September 2021 Updates

August 2021 Updates

July 2021 Updates

June 2021 Updates

May 2021 Updates

April 2021 Updates

Mid-November 2021 Indiana Intellectual Property Litigation Update

15 Monday Nov 2021

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

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Well that month flew by! There was just one new lawsuit filed, a big battle between IU Health and Methodist Sports Medicine over use of the “Methodist” name. It was a quiet month in pending lawsuits as well, with just a few noteworthy updates. Compromise must have been in the air last month, as the status update for many pending cases is voluntary dismissal. There’s still no response from Dave Chappelle to his accuser, not that one is expected any time soon.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – On November 11, 2021, the “Gateway” defendants filed a Cross-Motion for Summary Judgment and response to the Noble Roman’s Motion for Summary Judgment.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – No update this month. 

Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al. (ND, filed 4/26/2021) – The parties have settled and dismissal papers are due by November 19, 2021.

Energy Beverages LLC v. Full Throttle Automotive LLC (SD, filed 5/19/2021) – The lawsuit was dismissed on September 20, 2021.

Egglife Foods, Inc. v. Crepini, LLC (ND, filed 5/28/2021) – A Preliminary Pretrial Conference is scheduled for November 15, 2021.

Gatewood v. Webber Chappelle (ND, filed 6/4/2021) – No update this month.

Sears Authorized Hometown Stores, LLC v. Lynn Retails, Inc. et al. (SD, filed 6/4/2021) – A status conference was held on October 29, 2021 and a telephone status conference is schedule for February 23, 2022.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – The parties filed a Joint Motion for a Protective Order on November 2, 2021. A final pretrial conference has been scheduled On October 12, 2023, with jury trial schedule on October 23, 2023.

Valqari LLC v. Dronedek Corporation et al. (SD, filed 6/16/2021) – A Stipulation of Dismissal was filed on October 27, 2021 and the case was dismissed the following day.

Fitzgerald et al. v. Murray et al. (SD, filed 6/18/2021) – On November 7, 2021, the Defendant Murray filed a Motion for Reconsideration of the Court’s October 20, 2021 Order.

Phoenix Intangibles Holding Company et al. v. Virk Brothers, LLC et al. (ND, filed 7/9/2021) – The deadline for parties to exchange pre-discovery disclosures was extended to November 3, 2021. No other updates.

Poulsen Roser A/S v. Gardens Alive, Inc. et al. (SD, filed 7/14/2021) – No update this month.

Haehl v. Dr. Brite, LLC (SD, filed 7/21/2021) – No update this month.

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – The Defendant failed to appear for another telephonic hearing on November 12, 2021. No further rulings yet by the Court.

Berman v. Auralex Acoustics, Inc. (SD, filed 7/22/2021) – The lawsuit was dismissed on October 18, 2021.

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – A Second Amended Complaint was filed on October 25, 2021 and the Defendants filed their Answer and Affirmative Defenses on November 10, 2021.

Bubbles Ice Cream Parlor & Pie Shoppe, Inc. v. Scoops & Sweet Bubbles, LLC (ND, filed 8/25/2021) – A Notice of Voluntary Dismissal was filed on November 5, 2021 and the lawsuit was dismissed on November 8, 2021. The Plaintiff did file an Amended Complaint on November 3, 2021, but apparently the parties settled immediately thereafter.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – The Pretrial Conference was held on November 3, 2021. A Scheduling Order has been issued by the Court.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – No update this month.

Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) – No update yet.

Indiana University Health, Inc et al. v. Thomas A. Brady Sports Medicine Center, P.C. (SD, filed 11/1/2021) – No update yet.

October 2021 Updates

September 2021 Updates

August 2021 Updates

July 2021 Updates

June 2021 Updates

May 2021 Updates

April 2021 Updates

Mid-October 2021 Indiana Intellectual Property Litigation Update

15 Friday Oct 2021

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

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Fall is here! Only two (one trademark, one copyright) lawsuits were filed in Indiana in the last month, but there’s been plenty of action in the existing cases. Dave Chappelle’s “failed comedian” plaintiff has returned with Proof of Service and a Motion for Default Judgment. One plaintiff has filed a Motion for Contempt against a non-responsive defendant after continued infringement following a Default Judgment. Another trademark plaintiff faces a Motion to Dismiss their federal claims based on a lack of interstate commerce. Interesting stuff ahead, so read on and stay tuned for next month’s updates.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The Defendants have been granted until November 11, 2021 to file their response to the Plaintiff’s Motion for Summary Judgment.

Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – The lawsuit was dismissed with prejudice on October 12, 2021.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – No update this month.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al. (SD, filed 4/12/2021) – This lawsuit was dismissed with prejudice on October 6, 2021 via a joint motion.

Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al. (ND, filed 4/26/2021) – No update this month.

Energy Beverages LLC v. Full Throttle Automotive LLC (SD, filed 5/19/2021) – A Stipulation of Dismissal was filed on September 8, 2021 and simply awaits formal dismissal by the Court. 

Egglife Foods, Inc. v. Crepini, LLC (ND, filed 5/28/2021) – The Defendant’s Answer was filed on October 12, 2021.

Gatewood v. Webber Chappelle (ND, filed 6/4/2021) – This case looked set for a dismissal based on failure to serve process but the Plaintiff filed a Proof of Service on September 28, 2021 and filed a Motion for Default Judgment on October 5, 2021. We now at least have a better idea what the “joke” was that Dave Chappelle allegedly “stole”…it’s at minute mark 21:23 until 22:15 in Chappelle’s “Heart of Texas” comedy special. The original Complaint said the stolen joke was “exactly one minute” so there is some discrepancy between the Plaintiff’s documents.

Sears Authorized Hometown Stores, LLC v. Lynn Retails, Inc. et al. (SD, filed 6/4/2021) – No update this month.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – No update this month.

Valqari LLC v. Dronedek Corporation et al. (SD, filed 6/16/2021) – The parties have reported settlement. The Court has worded the Plaintiff to file dismissal documents by October 29, 2021.

Fitzgerald et al. v. Murray et al. (SD, filed 6/18/2021) – The Plaintiffs filed a Motion to Compel Discovery Responses on September 17, 2021 and the Defendant Murray filed a Motion to Strike the following day. A default judgment was entered against the Defendant Beacon Books on October 1, 2021 for failure to respond. A Reply for the Motion to Compel was filed by Plaintiff on October 4, 2021 and the Defendants filed their Answer to Interrogatories on October 4, 2021.

Phoenix Intangibles Holding Company et al. v. Virk Brothers, LLC et al. (ND, filed 7/9/2021) – No update this month.

Poulsen Roser A/S v. Gardens Alive, Inc. et al. (SD, filed 7/14/2021) – The parties have a telephone status conference set for November 15, 2021.

Haehl v. Dr. Brite, LLC (SD, filed 7/21/2021) – The Defendant filed an Answer on September 28, 2021. Defense counsel is John R. Terpstra and Anna Mandula of Lewis Brisbois Bisgaard & Smith LLP.

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – The Defendant failed to appear for a telephonic default judgment hearing on September 28, 2021 and judgment was entered for the Plaintiff. The default judgment apparently did not deter the Defendant from continuing its infringing activities, and a Motion for Contempt was filed by the Plaintiff on October 13, 2021.

Berman v. Auralex Acoustics, Inc. (SD, filed 7/22/2021) – Despite a purported settlement, dismissal documents were not filed by the Court’s deadline of October 8, 2021.

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – An Amended Complaint was filed on September 16, 2021. No other updates.

Bubbles Ice Cream Parlor & Pie Shoppe, Inc. v. Scoops & Sweet Bubbles, LLC (ND, filed 8/25/2021) – The Defendant filed a Motion to Dismiss for failure to state a claim (based on lack of interstate commerce) and lack of supplemental jurisdiction.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – An Answer was filed on September 21, 2021 and the following Amended Answer was filed on October 12, 2021. A Pretrial Conference is scheduled for November 3, 2021 before the Court. (Could this signal an end to almost two years of telephonic court conferences?)

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – No update yet.

Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) – No update yet.

September 2021 Updates

August 2021 Updates

July 2021 Updates

June 2021 Updates

May 2021 Updates

April 2021 Updates

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:

Egg White Wraps are apparently a thing, and now they have a Trade Dress Lawsuit

01 Tuesday Jun 2021

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

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Update 6/2/2021: I went to the grocery store today searching for Egg White Wraps and didn’t find any. Is this really a thing?

Here’s a fairly interesting trade dress lawsuit involving a food product I didn’t even know existed…egg white wraps. Apparently, egg white wraps were the “number one new product in dairy departments…in 2020” (see Complaint below). It begs the question, how many other new dairy products were released in 2020? Dairy product connoisseurs, please educate me in the comments below.

As general information, “trade dress” comprises the characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. However, if trade dress is “functional,” meaning the characteristics are “essential to the use or purpose of the article or if it affects the cost or quality of the article,” it cannot serve as a trademark. See TMEP 1202.02(a).

The Plaintiff in this lawsuit, Egglife, is accusing the Defendant, Crepini, of adopting packaging that is too similar to their own egg white wrap packaging.

Here are the specific elements that the Plaintiff consider to be their own protectable trade dress:

a. Interwoven and overlapping shapes with rounded rather than squared edges that weave in and out of the front of the package

b. The interwoven and overlapping shapes with rounded rather than squared edges are comprised of different, yellow-based colors

c. Transparent center window with overlaid graphics

d. Prominent display of “egg white wraps” in the center of the transparent window in the center of the front of the package

e. Lowercase “egglife”brand straight across the upper quarter of the front of the package

f. Smaller arched text centered over the “egglife” brand near the top of the front of the package

g. All capitalized“KEEP REFRIGERATED” text at bottom of the front of the package

h. Lowercase “egglife”brand straight across the upper quarter of the front of the package

i. Smaller arched text centered over the “egglife” brand near the top of the front of the package

j. All capitalized “KEEP REFRIGERATED” text at bottom of the front of the package

As mentioned above, I’m certainly no expert on egg white wrap packaging, but I have been in a grocery store before, and some/most of the above characteristics seem pretty standard for all types of food products. Food marketers please weigh in below, but many of these characteristics seem almost necessary, i.e. functional, given the limited packaging size for a small food product.

However, the Complaint highlights frequent changes to the Defendant’s packaging from early 2018 up to the 2019 rebrand to the current allegedly infringing packaging, of which the Defendant’s packaging now supposedly copies the characteristics of Plaintiff’s packaging:

a. Interwoven and overlapping shapes with rounded rather than squared edges
b. The interwoven and overlapping shapes with rounded rather than squared edges are comprised of nearly identical yellow-based colors
c. Transparent center window with overlaid graphics
d. Lower case brand straight across the upper quarter of the packaging
e. Smaller arched text centered over the top of the brand near the top of the packaging
f. Abandoned trademarked EGG THINS in favor of “egg wraps”
g. Abandoned the long-used CREPINI Iand crown design trademark in favor of lowercase font across the top of the packaging
h. Added “Keep Refrigerated” messaging in all capital letters to the bottom of the packaging

As an unsophisticated egg white wrap consumer, both packagings frankly appear to me just like many other packagings in a grocery store. I’m reminded of flour tortilla packaging. Due in large part to FDA labeling requirements, food producers/marketers have to pack a lot of functional information about a product into a very small space. The use of the colors yellow and white in connection with an egg product seem to be almost a requisite. A transparent center window allowing a consumer to examine the food product seems highly necessary.

The Complaint does include some very limited evidence of instances of actual confusion by Costco consumers posting on Facebook. Considering the type of people that feel a need to post on social media about their Costco purchases, I’m not sure whether I’d consider those to be “significant” instances of confusion. However, they do exist and add an extra wrinkle to the lawsuit and Crepini’s possible defenses and responsibility to avoid consumer confusion.

This trade dress lawsuit will be interesting to follow. Stay tuned for updates.

Egglife Foods, Inc. v. Crepini, LLC

Case Number: 3:21-cv-00388
File Date: Friday, May 28, 2021
Plaintiff: Egglife Foods, Inc.
Plaintiff Counsel: Louis T. Perry, David R. Merritt of Faegre Drinker Biddle & Reath LLP
Defendant: Crepini, LLC
Cause: Trade Dress Infringement, False Designation of Origin, Common Law Unfair Competition, Deception
Court: Northern District of Indiana
Judge: Jon E. DeGuilio
Referred To: Michael G. Gotsch, Sr.

Complaint: