Category Archives: Trademark

September 2022 Indiana Intellectual Property Litigation Update

15 Thursday Sep 2022

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

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Henry Wadsforth Longfellow was invoked by the Court in an Opinion and Order for the Amazon/Ligonier perfumery lawsuit. The Court followed an evocative Longfellow passage about “Ships that pass in the night” with its own damning assessment of the state of the lawsuit:

“There are cases in which all that is shared in the parties’ briefs is the caption. The most mundane facts are passionately disputed. Unfavorable facts are misrepresentations. Unfavorable case law is not just distinguishable, it is irrelevant and misleading. Differing interpretations of evidence are absurd. Every action of opposing counsel is performed with malice.

These cases tax the Court needlessly. Rather than address the salient legal issues, the Court must check and re-check threshold factual matters and blackletter law. Motions cannot be decided before evidentiary objections, and objections to those objections, are resolved. The Court functions less as an adjudicative body and more as a schoolmarm.

This, unfortunately, looks to be one of those cases.”

See the full Opinion and Order below for the rest of the Court’s analysis.

The Omi in a Hellcat lawsuit may also require a schoolmarm soon to intervene in the parties’ dispute over jurisdictional discovery, which has seen charges of obfuscation and improper objections.

Which lawsuits are you following most closely?

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – The Defendants filed a Reply in Support of their Motion for Summary Judgment on August 25, 2022.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – Discovery deadlines have been extended by motion to October 4, 2022.

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – No update this month.

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – The lawsuit was dismissed with prejudice on September 1, 2022.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – The parties’ discovery deadlines were extended by motion on September 2, 2022.

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 this month. 

Innovative Sports Management Inc. v. La Jalisco LLP (SD, filed 12/15/2021) – No update this month. 

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – Amazon’s Motion to Transfer Venue was granted on September 6, 2022. The case will be transferred from the Northern District of Indiana to the Southern District of Indiana, so we’ll be able to continue to follow it on this blog.

Reid v. Stephenson (SD, filed 1/27/2022) – The Complaint was served on Lance Stephenson on August 30, 2022. No further update.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al. (SD, filed 2/25/2022) – The court granted permanent injunction against the Defendants and the lawsuit was dismissed.

NuStar Enterprises LLC v. Reloaded Merch LLC et al. (ND, filed 4/1/2022) – The parties are in the midst of a jurisdictional discovery dispute, and are now awaiting the Court’s ruling on a fully-briefed Motion to Compel Jurisdictional Discovery. The latest filing (below) finds the Plaintiff lamenting the Defendants’ “continued obfuscation” and discovery responses “rife with additional improper objections.” Stay tuned for the Court’s rulings.

Mapes v. Top Tier Marketers LLC d/b/a Artfily et al. (SD, filed 4/4/2022) – Some internal court administration took place over the last month, but no substantive updates.

The Evolutionary Level Above Human, Inc. v. Havel et al (ND, filed 5/18/2022) – On August 17, the Plaintiff filed its Answer to the counterclaims of Defendants Havel and Weaver.

Defendant Bartel filed an Answer on September 9, 2022.

Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC et al. (ND, filed 6/29/2022) – No update yet.

PUMA SE et al. v. Brooks Sports, Inc. (SD, filed 7/8/2022) – Even more attorneys have made pro hac vice appearances this month, but there are no substantive updates.

Broadcast Music, Inc. et al v. Thirty-Six Saloon, LLC d/b/a Thirty Six Saloon et al. (SD, filed 7/27/2022) – BMI filed a Motion for Clerk’s Entry of Default on September 6, 2022.

Schwartz v. Kilroy’s North America, LLC et al (SD, filed 8/5/2022) – On August 25, 2022, Defendant Kilroy’s North America, LLC was dismissed from the lawsuit. Amanda C. Couture has appeared as counsel for the remaining defendants, Kilroy’s on Kirkwood and Kilroy’s Sports.

Oakley, Inc. v. Batter’s Box Training, LLC et al (SD, filed 8/11/2022) – Oakley filed Affidavits of Service on September 12, 2022, so we can anticipate the Defendant’s Answer in the next month.

Honest Ave Roofing franchise, Inc. v. DCH & Associates, LLC et al. (SD, filed 9/7/2022) – Certificates of Service were filed on September 13, 2022. Stay tuned for updates.

August 2022 Updates – July 2022 Updates

June 2022 Updates – May 2022 Updates – April 2022 Updates – March 2022 Updates

February 2022 Updates– January 2022 Updates – December 2021 Updates

Honest Abe Roofing sues Georgia Couple for Breach of Franchise Agreement, Trademark Infringement

09 Friday Sep 2022

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

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In April 2021, the Georgia-based defendants in this Indiana lawsuit entered into a Franchise Agreement with Honest Abe, a roof installation corporation located in Terre Haute, Indiana. The franchise relationship did not last long, and Honest Abe send a first Notice of Default in March 2022 asserting several material defaults. Following the failure by defendants to timely cure the defaults, a Notice of Termination was sent to the defendants on May 5, 2022. The defendants allegedly owe the plaintiff around $186,000 in past-due fees. The defendants are also accused of violating their non-compete agreements by starting a competing roofing company in the same geographic area. The Complaint (below) details interactions between an investigator and the defendants in which the defendants continue to refer to themselves as “Honest Abe.”

Honest Abe also requests a temporary restraining order and preliminary injunction (see Motion below).

Based on the very thorough complaint (with 19 exhibits) and the motion for a temporary restraining order/preliminary injunction, I expect the defendants will have a big fight on their hands. Pursuant to the Franchise Agreements, the defendants could also be responsible for Honest Abe’s attorney fees and costs, which are probably already substantial.

Stay tuned for updates.

Honest Abe Roofing Franchise, Inc. v. DCH & Associates, LLC et al.

Court Case Number: 2:22-cv-00387-JRS-MG
File Date: September 7, 2022
Plaintiff: Honest Abe Roofing Franchise, Inc.
Plaintiff Counsel: William W. Drummy of Wilkinson Goeller Modesitt Wilkinson & Drummy LLP
Defendants: DCH & Associates, LLC, Honest Abe Roofing of Macon Georgia, LLC, Dameion Harris, Christine Harris
Cause: Federal Trademark Counterfeiting, Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Breach of Franchise Agreement, Breach of Contract, Common Law Unfair Competition, Misappropriation of Goodwill
Court: Southern District of Indiana
Judge: James R. Sweeney II
Referred To: Mario Garcia

Complaint:

Brief in Support of Motion for Temporary Restraining Order and Preliminary Injunction:

Mid-August 2022 Indiana Intellectual Property Litigation Update

15 Monday Aug 2022

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

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Summer is winding down and schools are starting to get back in session. The federal courts in Indiana have had a busy close to the summer as they continue to move existing copyright and trademark lawsuits toward resolution. A few interesting new cases were filed in the last month, including claims of counterfeiting, non-payment of wages, and copyright infringement.

What lawsuits are you following most closely?

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – The Plaintiff filed its Response to the Motion for Summary Judgment on August 12, 2022.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – Noble Roman’s filed a motion to extend deadlines on August 12, 2022.

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – No update this month.  

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – The parties filed a Motion to Vacate Settlement Conference and Notice of Settlement on August 1, 2022. The parties have been granted until August 30, 2022 to file a Stipulation of Dismissal.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – On July 28, 2022, the Defendant filed an Opposition Proceeding with the Trademark Trial and Appeal Board against the DELLA TERRA trademark application.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – A Protective Order was entered on August 11, 2022, presumably to protect the terms of settlement. The parties are awaiting the Court’s order on a fully-plead (as of August 8) Motion to Enforce Settlement Agreement.

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

Innovative Sports Management Inc. v. La Jalisco LLP (SD, filed 12/15/2021) – No update this month.

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – On July 19, 2022, the Plaintiffs filed a Motion to Strike Reply to Response to Motion in support of the Motion to Transfer Venue. Amazon filed its Response on July 29, 2022 and the Plaintiffs’ Reply (below) was filed on August 12, 2022. A telephonic conference is scheduled for August 18, 2022.

Reid v. Stephenson (SD, filed 1/27/2022) – No update this month.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al. (SD, filed 2/25/2022) – The Court has ordered that dismissal documents be filed by September 16, 2022.

The American Automobile Association, Inc. v. All American Auto Hail Dent Repair LLC d/b/a AAA Hail Repair et al. (SD, filed 3/23/2022) – The lawsuit was dismissed on August 9, 2022 following entry of a Consent Judgment.

NuStar Enterprises LLC v. Reloaded Merch LLC et al. (ND, filed 4/1/2022) – On August 12, 2022, the Plaintiff filed a Motion to Compel Jurisdictional Discovery. The parties are still working to resolve the jurisdiction issue.

Mapes v. Top Tier Marketers LLC d/b/a Artfily et al. (SD, filed 4/4/2022) – On August 8, 2022, the Plaintiff filed a Motion for Clerk’s Entry of Default.

The Evolutionary Level Above Human, Inc. v. Havel et al (ND, filed 5/18/2022) – The Defendants filed an 82-page Answer (plus 158 pages of Exhibits) on July 26, 2022.

Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC et al. (ND, filed 6/29/2022) – No update yet.

PUMA SE et al. v. Brooks Sports, Inc. (SD, filed 7/8/2022) – Many attorneys have filed appearances, but no other updates yet.

Broadcast Music, Inc. et al v. Thirty-Six Saloon, LLC d/b/a Thirty Six Saloon et al. (SD, filed 7/27/2022) – No update yet.

Schwartz v. Kilroy’s North America, LLC et al (SD, filed 8/5/2022) – No update yet.

Oakley, Inc. v. Batter’s Box Training, LLC et al (SD, filed 8/11/2022) – No update yet.

July 2022 Updates

June 2022 Updates – May 2022 Updates – April 2022 Updates – March 2022 Updates

February 2022 Updates– January 2022 Updates – December 2021 Updates

Mid-July 2022 Indiana Intellectual Property Litigation Update

15 Friday Jul 2022

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

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Summer is here! There’s a big new trademark/design patent lawsuit between shoe giants PUMA and Brooks and few older lawsuits have finally settled. Based on ambiguities in the sales information provided by Omi in a Hellcat in his Motion to Dismiss, he now faces additional jurisdictional discovery from his plaintiff.

What lawsuits are you following?

Noble Roman’s, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – The lawsuit was dismissed with prejudice on July 11, 2022.

Egglife Foods, Inc. v. Crepini, LLC (ND, filed 5/28/2021) – The lawsuit was dismissed with prejudice on July 1, 2022.

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – The Defendants filed Motion for Summary Judgment on June 30, 2022.

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

AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS (SD, filed 7/22/2021) – No update this month.  

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – No update this month.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – A Scheduling Conference is scheduled on September 2, 2022.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – The parties did not meet the Court’s July 1, 2022 deadline to file dismissal documents and have requested until July 28, 2022 to further negotiate settlement terms.

Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) – The parties held a Settlement Conference with the Court on June 30, 2022, but concluded without settlement. No other updates.

Innovative Sports Management Inc. v. La Jalisco LLP (SD, filed 12/15/2021) – A Clerk’s Entry of Default was issued on June 28, 2022.

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – On June 15, 2022, Amazon filed a Reply to the Motion to Transfer Case. No other updates.

Reid v. Stephenson (SD, filed 1/27/2022) – On July 5, the Court issued an Order to Show Cause and the Plaintiff filed its Response to Order to Show Cause on July 14, 2022.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al. (SD, filed 2/25/2022) – No update this month.

The American Automobile Association, Inc. v. All American Auto Hail Dent Repair LLC d/b/a AAA Hail Repair et al. (SD, filed 3/23/2022) – A Notice of Settlement was filed on June 17, 2022 and a Motion for Entry of Consent Order of Judgment was filed on June 21, 2022.

NuStar Enterprises LLC v. Reloaded Merch LLC et al. (ND, filed 4/1/2022) – On June 16, 2022, the Plaintiff filed a Motion for Leave to Conduct Jurisdictional Discovery, which was granted on June 17, 2022. The Defendants must respond to the jurisdictional discovery requests by July 29, 2022. The Plaintiff’s Response to the Defendants’ Motion to Dismiss is due 21 days after receiving the jurisdictional discovery responses.

Mapes v. Top Tier Marketers LLC d/b/a Artfily et al. (SD, filed 4/4/2022) – No update this month.

The Evolutionary Level Above Human, Inc. v. Havel et al (ND, filed 5/18/2022) – The Defendants have been granted until July 25, 2022 to file an Answer.

Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC et al. (ND, filed 6/29/2022) – No update yet.

PUMA SE et al. v. Brooks Sports, Inc. (SD, filed 7/8/2022) – No update yet.

June 2022 Updates

May 2022 Updates – April 2022 Updates – March 2022 Updates

February 2022 Updates– January 2022 Updates – December 2021 Updates

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

11 Monday Jul 2022

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

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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: