Category Archives: Trade Dress

Monster Energy sues Fitness Equipment Company over Claw Icon

28 Friday May 2021

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

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This is the second lawsuit filed by an energy drink company in a week!

The Plaintiff, Monster Energy Company, brings this lawsuit after several years of unsuccessful direct communications with the Defendant attempting to seek voluntary compliance with their asserted trademark rights.

Anybody who’s been to a gas station or watched the X Games will recognize the Monster “Claw Icon” logo, an “M-shaped claw design with jagged or irregular contours designed to evoke a claw having torn through the can or other material.” The Complaint (below) claims that Monster brand drinks are the best-selling energy drink in the United States. In October 2020, Monster was named the 4th Most Marketed Brand in Sports.

The Defendant, Bear KompleX, sells fitness equipment such as hand grips, weight belts, compression sleeves, and weight belts. They utilize a “Bear Claw” logo (not the donut) which looks like a slash (not the rocker) from a five-fingered bear paw. Bear KompleX’s logo often appears in various colors, including sometimes green and black.

Monster first contacted Bear KompleX in August 2019 demanding that they stop selling a “Grip, Calicure, & Doc Spartan Monster Bundle.” Later that month, Monster sent another letter warning Bear KompleX not to use a green claw mark. The Defendant apparently responded over the subsequent year by expanding its product offerings bearing a green claw mark, seemingly taunting Monster to take legal action.

That legal action has now been taken by Monster, and I’ll be looking forward to seeing Bear KompleX’s Answer. The Complaint asserts only a likelihood of confusion and no actual instances of confusion, so we can expect the Defendant to argue against any likelihood of confusion. They can point to differences between the logos, such as the Bear KompleX logo having five slashes, versus Monster’s three, and their bear claw facing upward rather than downward.

Stay tuned for updates.

Monster Energy Company v. R&R Medical, LLC d/b/a Bear KompleX

Case Number: 2:21-cv-00179-PPS-JPK
File Date: Wednesday, May 26, 2021
Plaintiff: Monster Energy Corporation
Plaintiff Counsel: James W. Riley, Jr., Jaclyn M. Flint of Riley Bennett Egloff LLP
Defendant: R&R Medical d/b/a Bear KompleX
Cause: Trademark Infringement, Trade Dress Infringement, False Designation of Origin, Federal Dilution, State Unfair Competition
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: Joshua P. Kolar

Complaint:

Energy Drink Company Sues Automotive Repair Company for Trademark Infringement

24 Monday May 2021

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

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Evansville, Indiana-based Full Throttle Automotive, an auto repair shop, is being sued for trademark infringement by Energy Beverages, producer of Full Throttle energy drinks. The Complaint (below) highlights Energy Beverages’ long history of advertising in auto racing, including being the title sponsor of the National Hot Rod Association’s primary drag racing event.

The auto repair shop has also sponsored vehicles in motorsport events. Energy Beverages sent a cease-and-desist letter in October 2020, but Full Throttle Automotive has refused to discontinue use of its trademark.

Stay tuned for the Answer in the next few weeks, when we’ll likely find out how long Full Throttle Automotive has been using their “Full Throttle” name. They posted their current name and logo on Facebook back in 2014, and it’s likely they were using their name even before that, so they may have a strong acquiescence or laches defense based on many years of inaction from Energy Beverages.

A possible outcome could be a compromise whereby Full Throttle Automotive agrees not to sponsor NHRA events, presumably the most likely source of consumer confusion.

Energy Beverages LLC v. Full Throttle Automotive LLC

Case Number: 3:21-cv-00081-RLY-MPB
File Date: Wednesday, May 19, 2021
Plaintiff: Energy Beverages LLC
Plaintiff Counsel: James W. Riley, Jr., Jaclyn M. Flint of Riley Bennett Egloff LLP
Defendant: Full Throttle Automotive LLC
Cause: Trademark Infringement, Trade Dress Infringement, False Designation of Origin, Common Law Trademark Infringement, Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Brookman

Complaint:

Mid-May Indiana Intellectual Property Litigation Update

17 Monday May 2021

Posted by in Business Law, Indiana, Intellectual Property, Litigation, Northern District of Indiana, Southern District of Indiana, Trade Dress, Trade Secret, Trademark

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It’s been a slow month for new intellectual property lawsuits in Indiana, with just one filed since mid-April. However, several of the existing lawsuits are heating up, with numerous counterclaims being filed, including one alleging abusive litigation practices.

Schnebelt v. Anglotopia, LLC (ND, filed 1/18/2021) – A Notice of Voluntary Dismissal was filed on April 30, 2021 and the lawsuit was dismissed on May 4, 2021.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – On April 30, 2021, the Defendants filed an Answer and a Counterclaim for Abuse of Process, accusing Noble Roman’s and two Counterclaim Defendants of abusive litigation practices.

On May 14, 2021, the Counterclaim Defendants filed their Answer to the Counterclaim for Abuse of Process. The Counterclaim Defendants are represented by Jaime L. Meyer, Jeffrey D. Roberts, and Randy M. Fisher of Hollingsworth Roberts Means LLC.

Heartland Consumer Products LLC v. Speedway, LLC (SD, filed 2/5/2021) – An Amended Complaint was filed on April 23, 2021, adding an additional Plaintiff, TC Heartland LLC.

Indianapolis Bouldering, LLC v. BP Holdings Co. LLC et al. (SD, filed 2/11/2021) – A Notice of Voluntary Dismissal was filed on May 7, 2021 and the lawsuit was dismissed on May 10, 2021.

Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – Between April 21, 2021 to April 28, 2021, each of the Defendants filed a similar Motion to Dismiss for several counts of the Complaint, including the counts most interesting to intellectual property practitioners, False Designation of Origin and Unfair Competition, Civil Conspiracy, and Common Law Unfair Competition.

On April 28, 2021, Defendants Grit Technologies and Jarman also filed their Answer, Counterclaim and Third-Party Complaint. The Counterclaim and Third-Party Complaint includes claims of Tortious Interference with a Contract, Defamation, Violation of Section 43(a) of the Lanham Act, Common Law Unfair Competition. These Defendants are represented by Wendy D. Brewer and Laura M. Brymer of Fultz Maddox Dickens PLC, with admission pending for Jeffrey L. Widman and Laura Caplin of Fox Rothschild LLP.

La Michoacana Meat Market TM Holdings, LLC v. Lopez et al. (SD, filed 3/9/2021) – No update yet.

La Michoacana Meat Market TM Holdings, LLC v. Galan et al. (ND, filed 3/9/2021) – No update yet.

Vroom, Inc. v. Midwest Motors LLC et al. (SD, filed 3/24/2021) – The Defendant’s owner has mailed a letter to the Court advising them that he is in the process of changing his company name. This isn’t an actual Answer but it might be enough for Plaintiff to seek redress outside of the Court system. Presumably, Plaintiff’s counsel will be seeking assurances that the letter’s claims are true and we’ll have to wait to see whether they continue to pursue additional remedies.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – The Defendant has not responded to the Amended Complaint and Delta Faucet Company filed a Request for Entry of Default on April 29, 2021.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al. (SD, filed 4/12/2021) – Defendants’ counsel have filed their Appearances and submitted a Notice of Extension of Time until June 3, 2021 to answer the Complaint.

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

New Indianapolis Bouldering Facility sues Accusers for Declaratory Judgment of Non-Infringement

12 Friday Feb 2021

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

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The Plaintiff in this action for declaratory judgment of non-infringement is a yet-to-open rock climbing gym in Indianapolis, Indiana. More specifically, the planned gym will provide a venue for “bouldering,” a type of rock climbing low enough to the ground to be done without safety ropes.

The Defendants operate similar “bouldering” facilities in Washington (State), Texas, and Minneapolis. As admitted in the Complaint (see Complaint, Section 10, below), “For a brief period of time in late 2020, one of Plaintiff’s members used content from one of Defendant’s websites as placeholder text during the website design process. This text was removed after two weeks of being publically available, and has been replaced by Plaintiff’s current website: https://www.northmassboulder.com/.”

The Defendants contacted the Plaintiff via counsel in December 2020, at which time the “infringing” content was removed from Plaintiff’s website. Nonetheless, dialogue between the parties’ counsel was apparently unproductive and it became clear that Defendants were going to sue Plaintiff. As such, the Indianapolis-based Plaintiff seized the initiative and filed a declaratory judgment action to prove their lack of infringement.

Declaratory judgment actions are always interesting as they flip the usual filing paradigm (i.e. the infringed filing against the infringer). There is an admitted temporary use by Plaintiff of some of the Defendant’s online content but other issues like trade dress and trade secrets are raised in the Complaint and will be interesting to follow to resolution. Stay tuned for updates.

Indianapolis Bouldering, LLC v. BP Holdings Company, LLC et al.

Court Case Number: 1:21-cv-00344-JMS-JMD
File Date: February 11, 2021 
Plaintiff: Indianapolis Bouldering, LLC
Plaintiff Counsel: Jonathan G. Polak, Steven T. Henke of TAFT STETTINIUS & HOLLISTER LLP
Defendant: BP Holdings Company, LLC, Seattle Bouldering Project, LLC, Minneapolis Bouldering Project, LLC, and Austin Bouldering Project, LLC
Cause: Invalidity or Unenforceability of Intellectual Property Rights, Non-Infringement of Intellectual Property Rights, Non-Violation of Alleged Trade Secrets
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Mark J. Dinsmore

Complaint:

Splenda Manufacturer sues Speedway Gas Stations over Knock-off Chinese Sweetener

10 Wednesday Feb 2021

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

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Splenda®-loving Speedway patrons beware! Or not.

In the second gas station-related lawsuit this week, Speedway gas stations are accused of providing knock-off Chinese-manufactured Splenda, the well-known sugar substitute sweetener. For our health-minded blog readers who don’t touch the stuff or just crave real sugar, Splenda sweetener is actually sucralose, a low-calorie sugar-substitute first approved by the FDA in 1998.

Splenda’s manufacturer claims trade dress protection for sucralose sold in yellow packets, of which diner-frequenters, coffee and tea drinkers probably recognize:

Speedway is accused of providing knock-off Chinese sucralose sweetener in yellow packaging at their gas station coffee kiosks. The Plaintiff asserts that “Speedway’s yellow-colored packets are not provided to customers with sufficient cues to the consumer to prevent the mistaken belief by consumers that the yellow packets are in fact SPLENDA® Brand Sweetener.”

Blog readers, would you see the above packet at a coffee kiosk and automatically assume that it is Splenda®? If so, reach out to Plaintiff’s attorney, because that’s the basis of this lawsuit. (Aside: Did you know there are over 50 shades of yellow?)

Splenda’s manufacturer asserts trade dress infringement, unfair competition, false advertising, and dilution claims against Speedway. This will be an interesting case to follow, with both parties being fairly large companies, and presumably with Speedway gas stations already providing their yellow “knock-off” sweetener widely. Not being a coffee drinker (although married to one), I can only guess at what goes through the coffee drinker’s mind before consuming that cherished travel-sized cup of lukewarm gas station bitter brown water, but I really wonder if they are confused by the yellow packaging or whether they care at all. I suspect coffee drinkers grabbing a free packet of sweetener from a gas station kiosk don’t care at all what type of sucralose they’re ingesting, so long as the delivery medium is decently warm and caffeinated. Speedway’s packaging does not mention “Splenda” whatsoever, just listing ingredients of dextrose and sucralose. Apparently, it’s the use of the color yellow (but which yellow?) that bought Speedway this lawsuit.

A fairly easy potential compromise would be for Speedway to provide their sucralose sweetener in non-yellow packaging, but I’m guessing Speedway will decide to challenge Splenda’s asserted monopoly over the color yellow for sweeteners. Splenda’s arguably broad trade dress might need to be narrowed to a certain yellow shade (or shades), rather than the entire spectrum of yellow.

Either way, this lawsuit will be interesting to follow…stay tuned for updates.

Heartland Consumer Products LLC v. Speedway, LLC

Court Case Number: 1:21-cv-00322-JMS-TAB
File Date: February 8, 2021
Plaintiff: Heartland Consumer Products LLC
Plaintiff Counsel: Holiday W. Banta, Jessa DeGroote, Alice Kelly of ICE MILLER LLP
Defendant: Speedway, LLC
Cause: Trade Dress Infringement, Common Law Trade Dress Infringement, False Designation of Origin, Federal Unfair Competition, False or Misleading Representation of Fact, False Advertising, Common Law Unfair Competition, Federal Trademark Dilution, State Trademark Dilution
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Tim A. Baker

Complaint: