Category Archives: Trademark

June 2023 Indiana Intellectual Property Litigation Update

15 Thursday Jun 2023

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

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Summer is almost here and several Indiana IP lawsuits are starting to heat up. Here are some of the most interesting updates from the previous month:

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – No update this month.

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

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – On May 18, 2023, the Plaintiff filed its Reply Brief in Support of Partial Motion for Summary Judgment.

Fans of discovery disputes may want to follow this lawsuit more closely going forward. On May 18, the Plaintiff also filed its Response to Defendant’s Additional Statement of Material Facts.

On May 31, 2023, the Plaintiff filed a Motion to Exclude Testimony and Opinions of the Defendant’s expert witness.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – The lawsuit was dismissed on June 8, 2023.

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – In resolving the prior discovery dispute, on June 5, 2023, the Court ordered that the Plaintiffs shall file a revised version of their Exhibit A that is both “text-copyable” and electronically “searchable.” The Court declined to impose sanctions on the Plaintiff’s counsel.

The Evolutionary Level Above Human, Inc. v. Havel et al (ND, filed 5/18/2022) – Several of Defendant Bartel’s recent motions were stricken by the Court on June 6, 2023. The Court also prohibited the pro-se parties from filing any other motions without the Court’s permission until further order. A status conference was held on June 14, 2023.

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

Honest Abe Roofing franchise, Inc. v. DCH & Associates, LLC et al. (SD, filed 9/7/2022) –  No update this month.

MaddenCo Inc. v. Reed et al. (SD, filed 10/31/2022) –  No update this month.

The Center for Gestalt Development, Inc. v. Bowman (SD (11/09/2022) – No update this month but the other individual defendant has transferred their lawsuit from the Eastern District of Pennsylvania to the Southern District of Indiana. See below.

1.4G Holdings, LLC v. North Central Industries, Inc. et al. (SD 1/05/2023) – A Uniform Stipulated Protective Order was approved on May 17, 2023. The Defendants filed a Preliminary Exhibit List on May 19, 2023.

Stross v. Lynn Boolman Auto Sales Limited Liability Company et al. (ND 1/25/2023) –  The lawsuit was settled and dismissed with prejudice on May 31, 2023.

Albert’s Diamond Jewelers, Inc. v. AaLand Diamond Jewelers LLC (ND 2/01/2023) – On June 2, 2023, the Defendant filed a Motion to Bifurcate Damages from Liability. The Defendant wants a separate trial to first determine whether liability exists before spending time and energy on any damages calculations.

Delta Faucet Company v. Watkins et al. (SD 2/01/2023) – An Affidavit of Service for Defendant Watkins was filed on May 22, 2023, with service on April 27, 2023. On May 24, 2023, the Plaintiff filed a Motion for Clerk’s Entry of Default against Defendant Watkins, which was entered on June 14, 2023 for failure to respond.

USA Football, Inc. v. Flag Football World Championship Tour, LLC et al. (SD 2/13/2023) – On June 6, 2023, the case was transferred to the Eastern District of Texas and assigned case number 4:23-cv-00516.

Roller Ready, LLC v. LA Systems, LLC d/b/a Monkey Rung et al. (ND 2/14/2023) – The response deadline for Defendant Kiley has been extended to July 5, 2023. The Answer for Defendant LA Systems, LLC is due on August 1, 2023.

Taylor Shaye Designs LLC v. Shein Distribution Corp. (SD 4/11/2023) – The Defendant filed its Answer on May 30, 2023. The Answer consists mostly of general denials or “lack of information” responses and includes nineteen affirmative defenses so the Plaintiff can expect to face a vigorous defense. Defense counsel are David J. Carr, Thomas A. Walsh, and Paul C. Sweeney of ICE MILLER LLP.

HealthSmart Foods, Inc. v. Sweet Nothings, Inc. et al. (SD 4/13/2023) – On June 7, the Defendants filed a lengthy Motion to Dismiss for Failure to State a Claim and a Motion to Transfer Case.

Sak Group, Inc. v. Blue Hill Hospitality, Inc. (ND 4/25/2023) – No update this month.

National College Resources Foundation v. The Strong Friends LLC et al. (ND 5/4/2023) – No update yet.

The National Registry of Emergency Medical Technicians v. Dulaney et al. (SD 5/15/2023) – The Defendants’ counsel have now appeared and first extensions of time have been obtained.

Joe Hand Promotions, Inc. v. LNH, LLC d/b/a Burlington Pizza/The Barn (ND 5/24/2023) – No update yet.

The Center for Gestalt Development, Inc. v. Robine et al. (SD 6/13/2023) – No update yet.

May 2023 Updates

April 2023 Updates – March 2023 Updates – February 2023 Updates – January 2023 Updates

December 2022 Updates –  December 2021 Updates

Ivy Tech sued for $2 million over use of BLACK COLLEGE EXPO trademark

17 Wednesday May 2023

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

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The National College Resources Foundation (“NCRF”) is a California-based 501(c)(3) nonprofit and purported owner of the registered BLACK COLLEGE EXPO trademark.

Ivy Tech Community College (“Ivy Tech”), a two-year community college serving over 75 Indiana communities, allegedly used the phrase “Black College Expo” to describe an enrollment event held on its South Bend campus in January 2023. NCRF’s counsel sent a cease-and-desist in December 2022 and Ivy Tech promptly agreed to stop using the phrase but did not do so, apparently using it again in a January 9 Instagram post.

Apparently not satisfied with Ivy Tech’s response (notably during a holiday period when many college employees would not be working or even checking email), NCRF now brings a federal trademark lawsuit against Ivy Tech seeking $2,000,000 as well as punitive damages.

The BLACK COLLEGE EXPO registration is actually owned by a California individual named Theresa Price, apparently the founder and CEO of the National College Resources Foundation. The unsigned Complaint (see below) does not reference any license between Mrs. Price and the organization but presumably that does exist. The registration also includes a disclaimer of the descriptive term “EXPO.”

Should this lawsuit go far enough, I’d expect Ivy Tech and the other defendants to assert that they were not using “BLACK COLLEGE EXPO” as a source-identifying trademark and rather simply as a non-source-identifying descriptive term. However, it’s more likely that the community college (via instructions from its insurance provider) will back down and pay some nominal settlement amount to quickly resolve the lawsuit. The Complaint also includes as defendants two organizations connected to the Ivy Tech event, Mentoring Moments and The Strong Friend. I’m guessing both of those organizations have better ways to spend their funds than fighting a federal lawsuit.

Stay tuned for updates.

National College Resources Foundation v. The Strong Friends LLC et al.

Court Case Number: 3:23-cv-00367-JD-MGG
File Date: May 4, 2023
Plaintiff: National College Resources Foundation
Plaintiff Counsel: Justin A. Smith, Esq. of National College Resources Foundation
Defendant: The Strong Friends LLC, Mentoring Moments, LLC, Ivy Tech Community College
Cause: Federal Trademark Counterfeiting, Federal Trademark Infringement, False Designation of Origin, False Descriptions and Representations, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Jon E. DeGuilio
Referred To: Michael G. Gotsch, Sr.

Complaint:

May 2023 Indiana Intellectual Property Litigation Update

15 Monday May 2023

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

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There were several interesting filings in intellectual property litigation in Indiana over the last month. Just one new lawsuit was filed and several lawsuits were dismissed, so we may have a shorter list next month for a change. Read on for updates on all pending Indiana trademark and copyright litigation.

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – The settlement deadline has been extended by motion to June 26, 2023.

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

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – On May 4, 2023, the Defendant filed several documents, including a Response Brief in Opposition to Plaintiff’s Partial Motion for Summary Judgment, a Response to Statement of Material Facts, and Additional Material Facts. The submitted information gives much more context to the dispute.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – A telephonic status conference was held on May 3, 2023 to discuss discovery status and another is scheduled for June 1, 2023. 

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – On May 8, 2023, the Plaintiff filed Motion for Leave to File a Second Amended Complaint. Amazon promptly challenged with a Motion to Strike, claiming “gamesmanship” by the Plaintiff’s attorney, along with failure to comply with the Court’s electronic filing policies, which prohibit converting a usable electronic document into an unusable version and then filing the unusable version. Amazon has requested monetary sanctions against the Plaintiff’s attorney.

The Evolutionary Level Above Human, Inc. v. Havel et al (ND, filed 5/18/2022) – On April 27, 2023, Defendant Bartel filed a Motion to Add Evidence Regarding the True and Factual ‘Known Place of Business’ of Plaintiff. The Plaintiff filed its Response on May 12, 2023.

Schwartz v. Kilroy’s North America, LLC et al (SD, filed 8/5/2022) – The lawsuit was dismissed with prejudice on April 18, 2023.

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

Honest Abe Roofing franchise, Inc. v. DCH & Associates, LLC et al. (SD, filed 9/7/2022) –  No update this month. 

Phoenix USA RV, Inc. v. Hoosier Custom Cruisers LLC et al. (ND, removed 10/7/2022) – The lawsuit was dismissed with prejudice on May 3, 2023.

MaddenCo Inc. v. Reed et al. (SD, filed 10/31/2022) – A Settlement Conference was held on May 5, 2023. The parties have been ordered to provide an update on settlement discussions by May 22, 2023, and every 14 days thereafter.

The Center for Gestalt Development, Inc. v. Bowman (SD (11/09/2022) – Witness lists were filed by both parties, but no other updates this month.

1.4G Holdings, LLC v. North Central Industries, Inc. et al. (SD 1/05/2023) – On May 5, 2023, the parties filed a Joint Motion for Protective Order. The Plaintiff files its Preliminary Witness and Exhibits Lists on May 12, 2023.

Stross v. Lynn Boolman Auto Sales Limited Liability Company et al. (ND 1/25/2023) –  Defendant Carsforsale.com filed its Answer on April 20, 2023. The Answer includes just one affirmative defense, that any alleged infringement on the part of Carsforsale.com was innocent and without intention.

A Preliminary Pretrial Conference is scheduled for May 23, 2023.

Albert’s Diamond Jewelers, Inc. v. AaLand Diamond Jewelers LLC (ND 2/01/2023) – On May 4, the Court granted a Stipulated Protective Order.

Delta Faucet Company v. Watkins et al. (SD 2/01/2023) – On April 18, 2023, Delta Faucet filed a Renewed Motion for Alternative Service of Process, which the Court granted on April 26, 2023. Delta Faucet can now serve the Defendant Watkins via electronic means.

USA Football, Inc. v. Flag Football World Championship Tour, LLC et al. (SD 2/13/2023) – On May 3, 2023, the case was reassigned to Magistrate Judge M. Kendra Klump. The new case number is 1:23-cv-00274-TWP-MKK. The Defendant’s time to answer the Complaint has been extended by motion to May 22, 2023.

Freedom Mortgage Corporation v. Freedompoint, LLC (SD 2/14/2023) – The lawsuit has been settled and was dismissed with prejudice on May 11, 2023.

Roller Ready, LLC v. LA Systems, LLC d/b/a Monkey Rung et al. (ND 2/14/2023) – Summons were issued on May 8, 2023. No other updates.

Taylor Shaye Designs LLC v. Shein Distribution Corp. (SD 4/11/2023) – Defense counsel have filed their appearances and a notice of extension of the response deadline.

HealthSmart Foods, Inc. v. Sweet Nothings, Inc. et al. (SD 4/13/2023) – No update yet.

Sak Group, Inc. v. Blue Hill Hospitality, Inc. (ND 4/25/2023) – No update yet.

April 2023 Updates – March 2023 Updates – February 2023 Updates – January 2023 Updates

December 2022 Updates –  December 2021 Updates

April 2023 Indiana Intellectual Property Litigation Update

18 Tuesday Apr 2023

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

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Spring is here! Only two new lawsuits were filed since last month but there were many developments in pending Indiana intellectual property litigation. Several fully-briefed motions have receiving a court ruling, including one defendant successfully winning a motion to dismiss for lack of personal jurisdiction. One lawsuit saw an unusual request to file a “surreply,” which was immediately challenged by the opposing party. BMI received a summary judgment of $28,000 over 4 songs played on a roadhouse jukebox. We don’t know why the roadhouse chose not to defend itself, or attempt settlement as is customary, but surely it would have paid far less for the standard BMI license.

Here are some of the more interesting trademark and copyright litigation filings from the last month:

Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al. (SD, filed 6/4/2021) – The settlement deadline has been extended by motion to April 26, 2023.

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

Forest River, Inc. v. inTech Trailers, Inc. (ND, filed 8/31/2021) – On March 30, 2023, Forest River filed a Motion for Partial Summary Judgement for its trademark infringement and unfair competition claims.

The Motion for Partial Summary Judgment was accompanied by a Motion to Seal Documents, to which inTech filed a Response on April 13, 2023, expressly reserving opposition to inclusion of portions of an Asset Purchase Agreement among the sealed documents.

Thomas v. ooShirts, Inc. et al. (SD, filed 9/24/2021) – A telephonic status conference was held on April 5, 2023 to discuss discovery status and another is scheduled for May 5, 2023.

Edutainment Live, LLC v. Video Game Palooza et al. (SD, filed 10/11/2021) –On April 17, 2023, the Court entered an order granting a permanent injunction against the defendants and dismissal of the lawsuit with prejudice.

Gabet et al. v. Amazon.com. Inc. et al. (ND, filed 1/20/2022) – The parties have a status conference scheduled for May 5, 2023.  

The Evolutionary Level Above Human, Inc. v. Havel et al (ND, filed 5/18/2022) – There were a number of motions and responses filed over the last month, including the Plaintiff’s response to one of the individual defendants’ request to file a “Surreply.”

Broadcast Music, Inc. et al v. Thirty-Six Saloon, LLC d/b/a Thirty Six Saloon et al. (SD, filed 7/27/2022) – On April 13, 2023, a Default Judgment was entered against the Defendants for $28,378. This amount is likely significantly higher than the Rockville, Indiana roadhouse would have paid for a standard BMI jukebox license, but the roadhouse apparently opted to take no action in the lawsuit.

Schwartz v. Kilroy’s North America, LLC et al (SD, filed 8/5/2022) – On April 13, 2023, a Joint Stipulation of Dismissal was filed.

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

Honest Abe Roofing franchise, Inc. v. DCH & Associates, LLC et al. (SD, filed 9/7/2022) –  No update this month.

Phoenix USA RV, Inc. v. Hoosier Custom Cruisers LLC et al. (ND, removed 10/7/2022) – No update this month. 

MaddenCo Inc. v. Reed et al. (SD, filed 10/31/2022) – On April 13, 2023, the Court granted Defendant HG Autotech’s Motion to Dismiss for Lack of Personal Jurisdiction.

The Center for Gestalt Development, Inc. v. Bowman (SD (11/09/2022) – The Court approved a Case Management Plan on April 4, 2023. Discovery is due by August 7, 2023 and dispositive motions are due by October 2, 2023.

1.4G Holdings, LLC v. North Central Industries, Inc. et al. (SD 1/05/2023) – Defendant Brown’s Motion to Dismiss is now fully-briefed as of March 21, 2023. A pretrial conference was held on April 13, 2023. Discovery is due by November 3, 2023 and dispositive motions are due by January 5, 2024.

Stross v. Lynn Boolman Auto Sales Limited Liability Company et al. (ND 1/25/2023) –  Defendant Lynn Boolman Auto Sales filed its Answer on March 28, 2023. The response deadline for Defendant Carsforsale.com has been extended to April 20, 2023.

Albert’s Diamond Jewelers, Inc. v. AaLand Diamond Jewelers LLC (ND 2/01/2023) – Defendant AaLand filed its Answer on March 15, 2023. A telephonic conference was held on April 6, 2023.

Delta Faucet Company v. Watkins et al. (SD 2/01/2023) – On March 27, 2023, the Court denied (without prejudice) Delta Faucet Company’s Motion for Alternative Service of Process. Delta’s counsel will need to try a new strategy to serve the Complaint on the hard-to-find Defendant.

USA Football, Inc. v. Flag Football World Championship Tour, LLC et al. (SD 2/13/2023) – No update this month.

Freedom Mortgage Corporation v. Freedompoint, LLC (SD 2/14/2023) – The Defendant’s response deadline has been extended to May 8, 2023.

Roller Ready, LLC v. LA Systems, LLC d/b/a Monkey Rung et al. (ND 2/14/2023) – No update yet.

Taylor Shaye Designs LLC v. Shein Distribution Corp. (SD 4/11/2023) – No update yet.

HealthSmart Foods, Inc. v. Sweet Nothings, Inc. et al. (SD 4/13/2023) – No update yet.

March 2023 Updates – February 2023 Updates – January 2023 Updates

December 2022 Updates –  December 2021 Updates

Trademark Owner Successfully Overcomes USPTO 2(d) Refusal but Still Gets Sued

17 Monday Apr 2023

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

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This lawsuit highlights an awkward but common situation where a senior trademark owner and the USPTO disagree on whether a likelihood of confusion exists between two trademarks. If a junior user’s trademark is allowed to be registered by the USPTO, sometimes a senior user has no option but to bring a federal lawsuit and/or a TTAB cancellation proceeding.

HealthSmart Foods, an Evansville, Indiana-based producer of health food snacks (e.g. snack bars, snack bites, shakes, and candies) has filed a trademark lawsuit against Sweet Nothings, a small California company selling healthy family snacks like packaged smoothies and “nut butter bites.”

HealthSmart Foods sells a line of snack clusters, crisps and patties called SWEET NOTHINGS.

Sweet Nothings has obtained a trademark registration for its SWEET NOTHINGS trademark after successfully overcoming a 2(d) likelihood of confusion refusal citing the HealthSmart Foods’ trademark registration. The 2(d) refusal was seemingly overcome with evidence that the “SWEET NOTHINGS” trademark is very highly suggestive of the type of goods and therefore entitled to a very narrow scope of protection. Specifically, the evidence consisted of fourteen examples of entities in HealthSmart’s industry who use the marks “SWEET NOTHINGS” or “SWEET NOTHING” as a source indicator in connection with goods and services legally identical to HealthSmart’s goods:

  • Sweet Nothing Desserts, LLC – Located in Georgia, they bake cakes and cookies to order
  • Sweet Nothing Fine Cakes and Desserts – Located in Wisconsin, they bake high quality
  • cakes
  • Sweet Nothings Cake Shop – Located in Southern California, they offer a variety of
  • baked goods
  • Sweet Nothings Cakes – Located in Wisconsin, they bake cakes for special occasions
  • Sweet Nothings – Located in Ohio, they offer a variety of snacks
  • Sweet Nothings Cookies – Located in Arkansas, they offer custom cookies
  • Sweet Nothings Custom Cookies – Located in North Carolina, they offer custom cookies
  • Luv Ice Cream – Located in Minnesota, they offer “Sweet Nothings” branded fruit and
  • candy
  • Sweet Nothings – Located in New Jersey, they offer a variety of chocolates and candy
  • Sweet Nothings Snacks – Located in Utah, they offer a variety of snacks
  • Sweet Nothings – a brand of nougat cluster candy offered by Healthsmart, located in Indiana
  • Krissy’s Sweet Nothings – an online business that offers cakes
  • Sweet Nothings & Pastries – Located in Texas, they offer a variety of cupcakes and cakes
  • Sweet Nothings Cakes and Confections – Located in Missouri, they offer a variety of
  • cupcakes, cakes, pastries, and pies

HealthSmart Foods clearly does not agree with the USPTO’s decision to register Sweet Nothings’ trademark and now seeks the intervention of the Southern District of Indiana. I’d expect a similar “very highly suggestive” and “narrow scope of protection” defense to be presented, arguing that the Indiana company simply doesn’t have a strong enough trademark to enforce. Based on the location of the defendant (California), we might also see some preliminary jurisdictional challenges. Or, if the defendant doesn’t have the stomach for a legal fight in federal court in Indiana, a quick name change could be a potential outcome.

Stay tuned for updates.

HealthSmart Foods, Inc. v. Sweet Nothings, Inc. et al.

Court Case Number: 3:23-cv-00060
File Date: April 13, 2023
Plaintiff: HealthSmart Foods, Inc.
Plaintiff Counsel: Joshua A. Claybourn of Jackson Kelly PLLC
Defendant: Beth Porter, Sweet Nothings, Inc.
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, State Trademark Dilution, Injury to Business Reputation
Court: Southern District of Indiana
Judge: Matthew P. Brookman
Referred To: Mark J. Dinsmore

Complaint: