Category Archives: Trademark

Mid-April 2022 Indiana Intellectual Property Litigation Update

15 Friday Apr 2022

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

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Several new interesting lawsuits were filed since mid-March, so we’ll look forward to watching those develop over the next few months. In existing lawsuits, RE/MAX and Amazon have filed Motions to Dismiss, while Think Global have filed their Answer to Microsoft’s allegations of running a phony tech support scheme. The Amazon Brief is an interesting read considering the extensive litigation history between the parties.

What case are you watching most closely?

Noble Roman’s, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – No update this month.

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

Egglife Foods, Inc. v. Crepini, LLC (ND, filed 5/28/2021) – No update this month.

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – A Case Management Plan was approved on March 21, 2022. No other updates.

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

Phoenix Intangibles Holding Company et al. v. Virk Brothers, LLC et al. (ND, filed 7/9/2021) – The parties have been ordered to file dismissal papers by May 2, 2022.

Poulsen Roser A/S v. Gardens Alive, Inc. et al. (SD, filed 7/14/2021) – A Stipulation of Dismissal was filed on April 11, 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. The Plaintiff is still seeking to enforce the default judgment from September 2021.

RE/MAX, LLC et al. v. Dulin et al. (SD, filed 8/24/2021) – On April 1, 2022, RE/MAX filed a Motion to Dismiss Defendants’ Counterclaims. The parties jointly extended discovery deadlines.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – No update this month.

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) – The Defendants’ Preliminary Exhibit List was filed on March 25, 2022. No other updates.

Innovative Sports Management Inc. v. La Jalisco LLP (SD, filed 12/15/2021) – The Complaint was served on March 9, 2022. No other updates.

Corson v. Vive Exterior Design, LLC et al. (SD, filed 1/17/2022) – A Notice of Voluntary Dismissal was filed on April 12, 2022.

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – Amazon filed a Motion to Dismiss on April 4, 2022. The Brief in Support (below) highlights five reasons why the Complaint fails to state a claim. The Answer also informs in a footnote that this is the third lawsuit filed by Plaintiffs against Amazon and that Amazon will separately move to transfer venue to the Southern District of Indiana. The parties held a pretrial conference on April 12, 2022, whereby discovery has been stayed pending the ruling on the Motion to Dismiss.

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

Autoniq, LLC v. Laser Appraiser, LLC (SD, filed 2/21/2022) – No update this month.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al. (SD, filed 2/25/2022) – The Defendants filed an Answer (all general denials) on March 22, 2022. The Defendants’ counsel is Michele S. Katz of ADVITAM IP, LLC, via pro hac vice, with local counsel of Alice M. Morical and Christopher D. Wagner of Hoover Hull Turner LLP.

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 Defendants were served with the Complaint on April 8, 2022.

NuStar Enterprises LLC v. Reloaded Merch LLC et al. (ND, filed 4/1/2022) – No update yet.

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

Broadcast Music, Inc. et al. v. Warehouse L.L.C. d/b/a The Verve et al. (SD, filed 4/6/2022) – No update yet.

March 2022 Updates

February 2022 Updates

January 2022 Updates

December 2021 Updates

YouTube Celebrity Omi in a Hellcat sued in Indiana for Trademark Infringement

04 Monday Apr 2022

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

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Since 2016, the Plaintiff in this trademark lawsuit, NuStar Enterprises of Elkhart, Indiana, has used the registered trademark RELOADED in connection with “clothing and apparel, namely, shirts, jackets, pants, hats, belts, scarves, gloves, socks, underwear, swimwear, and wristbands.” They also have pending applications for sandals, slippers, sneakers, athletic shoes, and tactical vests, as well as hookah pipes and related smoking accessories.

In July 2019, NuStar learned that Bill Omar Carrasquillo, a rapper and YouTube celebrity known as “Omi in a Hellcat,” intended to start an apparel company under the brand name RELOADED. NuStar reached out to Mr. Carrasquillo’s agent about its prior trademark rights and the parties attempted to negotiate a licensing agreement. Those negotiations fell apart in late 2019 “due to Mr. Carrasquillo’s legal and financial troubles.”

Despite knowledge of the Plaintiff’s trademark, the Defendants went forward with plans to launch an apparel company called Reloaded Merch in mid-2021. The Complaint (below) references instances of actual consumer confusion, including a notice of violation received by Plaintiff from Amazon.com because their products were not made by the Defendant. The Plaintiff’s products were even taken off of the Amazon marketplace in favor of the Defendants’ products. Due to the Defendants’ popularity, this truly seems to be a situation where the Plaintiff has lost the ability to control its brand identity, lost control over its goodwill and reputation, and has lost the ability to move into new products and markets.

Stay tuned for updates.

NuStar Enterprises LLC v. Reloaded Merch LLC, Bill Omar Carrasquillo

Case Number: 2:22-cv-00080
File Date: April 1, 2022
Plaintiff: NuStar Enterprises LLC
Plaintiff Counsel: Andrew M. Hicks of Warrick & Boyn, LLP
Defendant: Reloaded Merch LLC, Bill Omar Carrasquillo
Cause: Federal Trademark Infringement, Federal Unfair Competition, State Trademark Infringement, State Unfair Competition
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: John E. Martin

Complaint:

AAA sues Anderson’s All American Auto for Trademark Infringement, Cybersquatting

24 Thursday Mar 2022

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

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The plaintiff in this trademark lawsuit is the American Automobile Association (AAA), i.e. that card in your wallet that you only pull out when you get a flat tire or lock your keys in the car. I’m actually surprised to read in the Complaint (below) that AAA has only 60 million members. I figured just about every driving American (231 million Americans held valid driving licenses in 2020) had a membership. For the low price of an annual membership, AAA is an absolute bargain when you’re stuck on the side of the highway far from home. Importantly for this lawsuit, AAA claims to also offer auto repair services.

The defendant is an Anderson, Indiana-based company with the patriotic name “All American Auto Hail Repair” using the internet domains AAA-HAILDENT-REPAIR.BUSINESS.SITE and AAAHAILDENTREPAIR.COM to advertise its services. The defendant is a small garage providing automobile dent removal services.

The defendant might challenge whether AAA really offers auto repairs under the AAA brands, or whether automobiles are just towed away by AAA trucks to have repairs performed by third-party repair companies. However, despite the surprisingly low number of members, AAA will still likely be considered a “famous” brand, which could grant it broader protection for ancillary goods/services like auto dent repairs.

It seems like a quick resolution, although perhaps legally unnecessary, would be for the defendant to just select a different domain name(s). AllAmericanAutoDentRepair.com is available right now, just sayin’. Some fights aren’t worth fighting.

Stay tuned for updates.

The American Automobile Association, Inc. v. All American Auto Hail Dent Repair LLC d/b/a AAA Hail Repair et al.

Case Number: 1:22-cv-00568-JPH-MJD
File Date: March 23, 2022
Plaintiff: The American Automobile Association, Inc.
Plaintiff Counsel: David O. Tittle, Elizabeth S. Traylor of Dentons Bingham Greenebaum LLP
Defendant: All American Auto Hail Dent Repair LLC d/b/a AAA Hail Repair, Lavern Pflugh
Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal Unfair Competition, Cybersquatting, Federal Trademark Dilution, Indiana Trademark Infringement, Indiana Trademark Dilution, Indiana Unfair Competition
Court: Southern District of Indiana
Judge: James Patrick Hanlon
Referred To: Mark J. Dinsmore

Complaint:

Mid-March 2022 Indiana Intellectual Property Litigation Update

15 Tuesday Mar 2022

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

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I feel like I’ve been writing this regularly, but this was a very quiet month in Indiana IP Litigation. There were no interesting filings to share, just a bunch of extensions and mostly inaction. Onward to April!

Noble Roman’s, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – No update this month.

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

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – A telephonic settlement conference has been scheduled on June 22, 2022.

Noble Roman’s, Inc. v. AMI Stores Management, Inc. et al. (SD, filed 6/6/2021) – A Witness List was filed by AMI. No other updates.

Phoenix Intangibles Holding Company et al. v. Virk Brothers, LLC et al. (ND, filed 7/9/2021) – A Notice of Settlement was filed on March 1, 2022. The parties have been directed to file dismissal papers by May 2, 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 Plaintiff’s deadline to respond to the Defendants’ counterclaims has been extended to April 1, 2022.

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – The parties have selected a mediator and have been directed to schedule a mediation.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – No update this month. The parties have until July 1, 2022 to file dismissal papers.

Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) – A final pretrial conference is scheduled on March 16, 2022. Jury trial is scheduled on April 10, 2023.  

Alcorn v. COTR, LLC (SD, filed 11/22/2021) – The lawsuit was dismissed on February 17, 2022.

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

AWGI LLC et al. v. Doe (SD, filed 1/7/2022) – The lawsuit was dismissed by the Plaintiff on February 24, 2022.

Corson v. Vive Exterior Design, LLC et al. (SD, filed 1/17/2022) – The initial pretrial conference has been scheduled on May 3, 2022. The Defendant has filed a notice of extension of time for its response to the Complaint.

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – A preliminary pretrial conference is scheduled on April 12, 2022. The Defendants’ response deadline has been extended to April 4, 2022.

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

Autoniq, LLC v. Laser Appraiser, LLC (SD, filed 2/21/2022) – No update yet.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al. (SD, filed 2/25/2022) – The defendants were served with the Complaint on March 1, 2022. Microsoft’s attorneys have been admitted pro hac vice.

February 2022 Updates

January 2022 Updates

December 2021 Updates

Microsoft sues in Indiana over Phony Tech Support Schemes

28 Monday Feb 2022

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

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Nearly seven out of ten Americans have encountered a technical support scam in the previous twelve months. Approximately ten percent of those respondents lost money from such scams. That’s not cool.

Microsoft is attempting to crack down on phony Microsoft support scams, in this particular instance focusing on a New Jersey individual operating a shell Indiana company called “Think Global.” The Complaint (below) details the scam and an interaction between Microsoft’s agent (presumably an attorney or technical investigator) and the alleged scammer(s).

The Complaint names an individual, a Mount Laurel, New Jersey resident (the sole member of the Indiana company), so perhaps there will be some justice for all the scammed individuals.

Stay tuned for updates.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al.

Case Number: 1:22-cv-00396-TWP-TAB
File Date: February 25, 2022
Plaintiff: Microsoft Corporation
Plaintiff Counsel: Jeff M. Barron of Barnes & Thornburg LLP, Bonnie MacNaughton, Meagan Himes of David Wright Tremaine LLP
Defendant: Solution Hat, LLC d/b/a/ Think Global et al,
Cause: Telemarketing and Consumer Fraud and Abuse Prevention Act, Telemarketing Sales Rule, Trademark Infringement, False Advertising, False Designation of Origin, Unfair Competition, Federal Trademark Dilution, Cybersquatting
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Tim A. Baker

Complaint: