Days Inn Worldwide, Inc. v. Exhibit Chicago, Inc. (U.S. District Court, N.D. Indiana)
No: 1:08-CV-124-TS.
Before: Springmann

For full opinion:
2009 U.S.Dist.LEXIS 32058
2009 WL 1010843

TRADEMARK; DAMAGES (Treble damages and attorney’s fees are appropriate where defendant willfully infringed trademarks for more than a year.)

Opinion (Springmann): Plaintiff Days Inn Worldwide (“Days Inn”) licensed its trademarks to Defendant Exhibit Chicago (“Exhibit”).  Days Inn later revoked the license.  After revocation, Exhibit continued to use Days Inn’s marks, only replacing the name Days with Huntington on the main sign.  Days Inn sued Exhibit for trademark infringement, and Exhibit defaulted. Because Days Inn alleged that Exhibit willfully infringed and continues to infringe its registered incontestable marks, treble damages and attorney’s fees are appropriate.

Source: Willamette Law Online

Jayco, Inc., headquartered in Middlebury, IN (“Jayco”),  is suing Heartland Recreational Vehicles, LLC, of Elkhart, IN (“Heartland”), for trademark infringement and unfair competitive practices.  The case was brought in the Northern District of Indiana, Case No. 3:2009-cv-00171.

The suit alleges Heartland has violated federal trademark law by adopting the Eagle Ridge name for a line of vehicles.  Jayco claims to hold trademark rights in the EAGLE trademark since at least 1991.  Note that the suit is based on common-law trademark rights, as a federal trademark application was only filed by Jayco on March 9, 2009 (see abstract below).

Heartland filed an intent-to-use federal trademark application for EAGLE RIDGE on September 26, 2008.  It was published for opposition on February 17, 2009, which was probably the catalyst that brought Heartland’s intentions to the attention of Jayco (or Jayco’s attorney).

Jayco’s complaint demands that Heartland pay them all profits from Eagle Ridge products and stop using the EAGLE RIDGE name immediately.  I didn’t see any Eagle Ridge products on Heartland’s website (please correct me if I’ve missed anything), so the product line was either never initiated or it has already been pulled.

As we learned from Octomom (TM), the first to use a mark in commerce is generally the owner of that mark.  The primary exception is when an ITU application for a similar mark is filed prior to the adoption and use of the mark by another.  However, since Jayco has used the EAGLE mark since 1991, they almost certainly can claim priority rights.  Whether EAGLE RIDGE causes a likelihood of confusion with Jayco’s EAGLE mark will be determined by the court.  The goods (recreational vehicles) are very similar, so my suspicion is that the court would lean toward a conclusion that confusion exists.

I’ll keep you updated as developments occur, although this case feels like a settlement opportunity, particularly since Heartland doesn’t appear to have too much invested in their EAGLE RIDGE product line.

Source: WNDU