Category Archives: Trademark

Dispute over Great Western Trail publishing rights leads to trademark lawsuit

18 Thursday Apr 2019

Posted by in Branding, Business Law, Indiana, Indianapolis, Intellectual Property, Litigation, Southern District of Indiana, Trademark

≈ 1 Comment

Tags

, , , , ,

This is an interesting dispute involving board game publishing rights and exclusive trademark licensing.

The Complaint (below) references a contract by which the plaintiff, Stronghold Games, would exclusively publish a board game called “Great Western Trail” from August 3, 2016 to December 31, 2018. At that time, the game was owned by a German company called eggertspiele. The Complaint alleges that one of the obligations eggertspiele agreed to in the contract was it “will not during the term grant to any other person, firm or company any rights that would derogate from the grant made” in its contract with Stronghold Games.

Stronghold first released Great Western Trail in the U.S. in November 2016. It was very popular and quickly sold out. However, while seeking permission for a second print run of the game in June 2017, Stronghold learned that all assets of eggertspiele had been purchased by Plan B Games, the defendant.

Plan B Games asserted that it had no contract with Stronghold and it did not grant reprint rights to Stronghold. Subsequently, in January 2018, Plan B Games released its own version of Great Western Trail, seemingly identical but removing Stronghold’s logo from the packaging.

Screen Shot 2019-04-17 at 11.03.19 AM.png

I think this paragraph from the Complaint nicely sums up why Stronghold is unhappy with the current state of affairs: “Plan B was well aware of the pent-up demand for the Stronghold Version of this game in 2017, and the introduction of the nearly identical Plan B Version in early 2018 to satisfy the pent-up demand for the Stronghold Version improperly traded on Stronghold’s goodwill and has led to consumer confusion.”

Unfortunately, while the Complaint references the initial contract between Stronghold and eggertspiele granting publication rights, it didn’t include a copy of the contract for review. Although the contract apparently included language about minimum duration and exclusivity, it’s unclear whether the contract granted any property interest in the Great Western Trail trademark to Stronghold.

As general information, license agreements can give licensees standing to sue for infringement, provided that they grant an exclusive license and a property interest in the trademark. A trademark licensee’s proper use of a mark benefits the trademark owner, not the licensee. This allows trademark owners to rely on use by controlled licensees to prove continuing use of a trademark. Section 5 of the Lanham Act explicitly recognizes the acquisition of trademark rights by a licensor through first use of the mark by a controlled licensee.

However, in this situation, Stronghold appears to assert its own claim to property rights in the GREAT WESTERN TRAIL trademark distinct from the licensor, based on its own exclusive marketing efforts in the United States.

I look forward to reading the Answer, which hopefully will include the original contract. Stay tuned for updates.

Indie Game Studios, LLC v. Plan B Games, Inc et al.

Court Case Number: 1:19-cv-1492
File Date: Monday, April 15, 2019
Plaintiff: Indie Game Studios, LLC d/b/a Stronghold Games LLC
Plaintiff Counsel: Patrick J. Olmstead, Jr., John Bradshaw
Defendant: Plan B Games, Inc., Plan B Games Europe GMBH
Cause: Federal Unfair Competition, False Designation of Origin, Indiana Trademark Infringement, Common Law Unfair Competition, Conspiracy
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Mark J. Dinsmore

Complaint:

Federal Circuit issues precedential opinion on webpages as trademark specimens

17 Wednesday Apr 2019

Posted by in Intellectual Property, Litigation, Trademark

≈ Leave a comment

On April 10, 2019, the United States Court of Appeals for the Federal Circuit issued a precedential opinion regarding webpages as specimens of use.

In the matter of  In re: Siny Corp., the Court upheld a decision of the Trademark Trial and Appeal Board refusing to register Siny’s proposed mark based on an insufficient specimen.

The initially submitted specimen consisted of a webpage printout, which the examining attorney concluded to be “mere advertising material” since the specimen did not include a means for ordering the goods. A substitute specimen was submitted which included the additional language “For sales information:” along with a phone number and address. The examining attorney maintained his refusal, stating that the contact information was “insufficient for consumers to make a purchase; rather, it only indicated how consumers could obtain more information necessary to make a purchase.”

This opinion indicates that, in order for a webpage to be considered a valid specimen, it should include more than just basic contact information, and needs to display standard ordering information, such as minimum quantities, cost, payment options, or shipping information.

Further, of particular interest for online technology companies, the opinion notes that “where the goods are technical and specialized and the applicant and examining attorney disagree on the point-of-sale nature of a submitted webpage specimen, “the applicant would be well advised to provide the examining attorney with additional evidence and information regarding the manner in which purchases are actually made through the webpage.”

This evidence can be documentation or verified statements from knowledgeable personnel as to what happens and how, but should be considered and prepared during the trademark application process if using a webpage specimen.

In re: Siny Corp.:

Indianapolis company accused of selling counterfeit LED lighting fixtures

15 Monday Apr 2019

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

≈ Leave a comment

Tags

, , , , ,

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:

Super 8 sues Past Franchisee for Violation of Franchise Agreement

09 Tuesday Apr 2019

Posted by in Indiana, Intellectual Property, Litigation, Northern District of Indiana, Trademark

≈ Leave a comment

Tags

, , , , ,

Well, at least it’s not another photography copyright case…

But it’s not really much of a trademark case either. The defendants are alleged to have continued using Plaintiff’s trademarks after the expiration of a previous Franchise Agreement.

What does make this case interesting is that it has a long history. The prior owner of the same Auburn, Indiana facility was involved in a similar 2016 lawsuit with Super 8.

How about this assertion in the Complaint? Do you agree? Indisputably?

16. The Super 8® Marks are indisputably among the most famous in the United States.

I can think of many brands (at least 100) more famous than Super 8 motels. But, you go, Super 8.

Super 8 found a resolution last time (new franchisee?) so maybe they’ll do the same this time. Stay tuned for updates.

Super 8 Worldwide, Inc. v. Harvee Properties et al

Court Case Number: 1:19-cv-00145
File Date: Thursday, April 4, 2019
Plaintiff: Super 8 Worldwide, Inc.
Plaintiff Counsel: Andrew M. Pendexter, James M. Hinshaw of Bingham Greenebaum Doll LLP
Defendant: Harvee Properties, LLC, Paresh Patel
Cause: Federal Trademark Infringement, False Designation of Origin, Federal Trademark Counterfeiting, State Trademark Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Theresa L. Springmann
Referred To: Susan L. Collins

Complaint: 

Proper Use of the Federal Trademark Registration Symbol ®

12 Tuesday Mar 2019

Posted by in Branding, Intellectual Property, Trademark

≈ Leave a comment

Tags

As a trademark attorney, I almost always notice whether a company is using the federal trademark registration symbol, ®. From time to time, I’ll check out their registration on the United States Patent and Trademark Office (USPTO) database, only to find that the company doesn’t actually have a federal registration, and sometimes not even an application.

It’s important to know that the federal registration symbol may not be used with trademarks until they are actually registered with the USPTO. Using the ® without a registration can get you into trouble. Knowing and willful misuse of the federal registration symbol can be considered an attempt to deceive or mislead consumers and subject you to potential fraud claims.

However, the USPTO acknowledges that misunderstandings about use of the federal registration symbols are more frequent than occurrences of actual fraudulent intent.  Common reasons for improper use of the federal registration symbol that do not indicate fraud are:

  • Mistake as to the requirements for giving notice (confusion often occurs between notice of trademark registration, which may not be given until after registration, and notice of claim of copyright, which must be given before publication by placing the notice © on material when it is first published);
  • Inadvertence in not giving instructions (or adequate instructions) to the printer, or misunderstanding or voluntary action by the printer;
  • The mistaken belief that registration in a state or foreign country gives a right to use the registration symbol
  • Registration of a portion of the trademark
  • Registration of the trademark for other goods
  • A recently expired or cancelled registration of the subject trademark
  • Another trademark to which the symbol relates on the same label

See TMEP §906.02.

Contact a trademark attorney if you have questions about the proper use of the federal trademark registration symbol.