Avoiding Loss of Trademark Rights

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You’ve spent time, energy and money developing and protecting your trademark …possibly even obtaining a federal trademark registration. Now what? Going forward, you need to be careful to avoid several pitfalls that can result in the loss of your valuable trademark rights. Set forth below are several important considerations you should think about to avoid losing your rights as you continue to use your trademark and enforce your trademark rights against third parties:

1. Failure to use the trademark. Since trademark rights are based on use, a trademark owner must continue to use the trademark properly in order to avoid forfeiture of rights by abandonment. Non-use occurs when a trademark owner stops using the mark and does not intend to resume use. Further, intention not to resume use may be inferred from a trademark owner’s failure to use the mark for three consecutive years. Once a mark is deemed abandoned, all rights to the trademark are lost.

2. Authorizing uncontrolled use of the trademark. Trademark rights can be lost if you license the trademark to others but don’t take adequate steps to monitor the style and quality of products or services associated with the trademark. After all, trademark law grants you exclusive use of the trademark in exchange for giving the consuming public a reliable indication of quality. If the level of quality falls below a certain level, you may be setting yourself up for cancellation of your trademark right.

3. Failure to enforce your rights against infringers. If you continually allow known infringers to violate your trademark rights, you effectively give up the right to challenge their use. While this might not result in cancellation of your registration, you are undermining your trademark by wilfully adopting a very narrow scope of protection.

4. Generic use. Generic use refers to the situation in which a trademark becomes so familiar that the distinction of the mark diminishes.  We’re all familiar with the following trademarks which were allowed to become generic over time: aspirin, escalator, linoleum. Rights to those trademarks were lost because appropriate steps were not taken to prevent the public from coming to regard the marks as generic products or services, rather than particular brand names.

If you have concerns about whether you are adequately protecting your trademarks, consider consulting a trademark professional who can help you implement procedures for maintaining and enforcing your rights.

Shoe retailer Shoe Carnival sues two counterfeit websites

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Shoe retailer Shoe Carnival brings this lawsuit against the owners of two domains, daretodreamwebdesign.com and afordrunning.com, which appear to be counterfeit Shoe Carnival websites.

I used to love shopping at Shoe Carnival. I remember the frequent sale announcements over the intercom and the booth for catching blowing cash.

SCLC, Inc. v. Kettering et al

Court Case Number: 3:17-cv-00193-RLY-MPB
File Date: November 22, 2017
Plaintiff: SCLC, Inc.
Plaintiff Counsel: Keith E. Rounder, Gary K. Price of Terrell, Baugh, Salmon & Born, LLP
Defendant: Marie Kettering, Lanny Tyndall
Cause: Trade Dress Infringement, Unfair Competition, Trademark Infringement, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Brookman

Complaint: 

Update 11/30/2017: 

Shoe Carnival has requested a Temporary Restraining Order for the purpose of ordering search engines to remove the offending websites.

Copyright lawsuit over movie script removed to Northern District of Indiana

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This lawsuit was removed from St. Joseph Circuit Court, Indiana, to the Northern District of Indiana, South Bend Division based on copyright preemption.

The Plaintiff alleges that he sent an original script and revisions to Defendant, which they used to create and sell a motion picture.

Jones v. Brioche and Mayo, LLC

Court Case Number: 3:17-cv-00289
File Date: Friday, November 3, 2017
Plaintiff: William Jones
Plaintiff Counsel: Andrew B. Jones, Margaret Marnocha of Jones Law Office LLC
Defendant: Brioche and Mayo, LLC
Cause: Breach of Contract, Intentional Infliction of Emotional Distress, Unjust Enrichment
Court: Northern District of Indiana
Judge: TBD
Referred To: TBD

Notice of Removal:

Project management company files trademark lawsuit against potential scam artists

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Plaintiff operates a project management training company called “Project Management Academy.” Plaintiff has used the trademark since 2009 and owns several related federal trademark registrations.

The Defendants are accused of operating a similar company (some call it a scam) using the “Project Management Academy” or “PMA” trademarks.

Educate 360, LLC v. Patchree Patchrint et al.

Court Case Number: 4:17-cv-00078
File Date: Friday, October 6, 2017
Plaintiff: Educate 360, LLC
Plaintiff Counsel: William P. Kelley, David M. Stupich of Stuart & Branigin LLP
Defendant:  Patchree Patchrint a/k/a Patty Jones and Anthony Christopher Jones
Cause: Declaratory Relief, Trademark Infringement, False Designation of Origin, Cybersquatting, Common Law Trademark Infringement, Common Law Passing Off/Unfair Competition
Court: Northern District of Indiana
Judge: TBD
Referred To: TBD

Complaint:

Terre Haute Endocrinology Center sues competing medical center for not having an Endocrinologist in its “Endocrinology Department”

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The Plaintiffs in this lawsuit are an endocrinologist and his medical center in Terre Haute, Indiana, providing endocrinology care and services.

The Defendant is a competing medical center in Terre Haute. Allegedly, the Defendant lost its last board-certified endocrinology physician in 2014 but continues to advertise that it has an “Endocrinology Department.”

Per the Complaint (below):

“due to the use of ‘endocrinology’ in its advertising and representations to the public, patients and potential patients are led to believe that there is a physician practicing at Defendant’s facility that is board-certified in the specialty of endocrinology.”

To Plaintiff, which is a competing medical center in the area that does employ a board-certified endocrinologist, this constitutes false advertising and unfair competition.

The case was originally filed in Vigo Superior Court but removed to the Southern District of Indiana.

Pittman et al. v. Union Medical Group LLC

Court Case Number:2:17-cv-00393-JMS-MPB
File Date: Tuesday, August 15, 2017
Plaintiff: Isaiah Pittman IV, MD, HPW Center For Diabetes, LLC
Plaintiff Counsel: Paul J. Jungers of Wagner, Crawford, Gambill and Jungers
Defendant: Union Medical Group LLC
Cause: False Advertising, Indiana Unfair Competition
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Matthew P. Brookman

Complaint: 

Counterfeit gages result in trade dress, trademark litigation

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The Plaintiff, Dwyer Instruments, is a manufacturer of industrial gages and controls headquartered in Michigan City. Plaintiff has used the registered trademark MAGNEHELIC since 1949.

The Defendants, a California manufacturer and Wal-Mart.com which lists the product, are accused of selling counterfeit gages with identical trade dress tp Plaintiff’s gages and a confusingly similar trademark, MAGRFHELIC.

Dwyer Instruments Inc v. Wal-Mart.com USA, LLC et al.

Court Case Number: 3:17-cv-00636-RLM-MGG
File Date: Tuesday, August 15, 2017
Plaintiff: Dwyer Instruments, Inc.
Plaintiff Counsel: Peter J. Shakula of Wood Phillips
Defendant: Wal-Mart.com USA, LLC, Tasharina Corp.
Cause: Federal Trademark Infringement, Trade Dress Infringement, Federal Unfair Competition, False Designation of Origin, False and Misleading Representations, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Robert L. Miller, Jr.
Referred To: Michael G. Gotsch, Sr.

Complaint: 

STOP THE DROP: Cell Phone Case vs. Seat Gap Filler…are you confused?

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This a declaratory judgment action for both non-infringement of trademark and copyright. The declaratory judgment Plaintiff is Loopy, which sells cell phone cases that include a finger grip on the back of the case.  Loopy uses the trademark STOPTHEDROP in association with its cell phone cases, which you can see have a finger loop to prevent drops.

The Defendant, Drop Stop LLC of Los Angeles, California (as seen on Shark Tank), has a U.S. trademark registration for STOP THE DROP in connection with “IC 12 – Automobile interior accessory, namely, durable and flexible wedge, which can be expanded or contracted, to fill gap between front seat and center console of an automobile preventing objects from dropping into gap.” In other words, a seat gap filler.

Drop Stop sent a trademark cease-and-desist letter demanding that Loopy stop all use of STOPTHEDROP. Instead, Loopy has filed the action in the Northern District of Indiana for a declaratory judgment of non-infringement of Drop Stop’s trademark and copyrights. Stay tuned for updates.

While researching, I spotted a few other interesting uses of STOP THE DROP in the USPTO database:

Loopy Cases LLC v. Drop Stop, LLC

Court Case Number: 2:17-cv-00331-JVB-APR
File Date: Friday, August 4, 2017
Plaintiff: Loopy Cases LLC, John Wangercyn
Plaintiff Counsel: Peter J. Shakula of Wood Phillips
Defendant: Drop Stop, LLC
Cause: Declaratory Judgement of Trademark Non-Infringement, Declaratory Judgment of Copyright Non-Infringement
Court: Northern District of Indiana
Judge: Joseph S. Van Bokkelen
Referred To: Andrew P. Rodovich

Complaint: 

Indiana brewery alleges rights in its CORN MAZE BEER FEST stolen by own marketing agency

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This trademark lawsuit arises out of a dispute over ownership of the term “Corn Maze Beer Fest.”

The Plaintiff, 450 North Brewing Co. of Columbus, Indiana, hosted an event under that name in 2016 in the fields surrounding their brewery.

The Defendant is an Indiana company specializing in marketing for craft beer events.

The parties had worked together (with only an unsigned agreement and oral contract) on the 2016 event but a dispute has arisen over ownership of the event name. Despite the parties terminating their business relationship in early 2017, Defendant appears to be moving forward with its own version of a CORN MAZE BEER FEST, still being actively promoted on the website that Plaintiff believes it should own.

Stay tuned for updates.

Brix Haus Brewing Inc. d/b/a 450 North Brewing Co. v. Indiana On Tap, LLC

Court Case Number: 1:17-cv-02529-JMS-MPB
File Date: July 27, 2017
Plaintiff: Brix Haus Brewing Inc. d/b/a 450 North Brewing Co.
Plaintiff Counsel: Louis T. Perry, Amie Peele Carter of Faegre Baker Daniels LLP
Defendant: Indiana On Tap, LLC
Cause: False Designation of Origin, Common Law Unfair Competition, Indiana Crime Victim’s Relief Act, Deception, Conversion, Theft, Fraud, Tortious Interference with Economic Advantage
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Matthew P. Bookman

Complaint:

North American Van Lines sues North America Prime, trucking competitor started by a former officer

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The Plaintiff, North American Van Lines, has been providing transportation services since 1969. A former officer of Plaintiff started a competing transportation company called North America Prime Lines. Numerous cease-and-desist communications were sent but the parties weren’t able to resolve their differences.

However, there are numerous negative instances of consumer confusion (a few samples below) so this situation definitely requires resolution.

North America Van Lines, Inc. v. North America Prime Inc. et al.

Court Case Number: 1:17-cv-00298-TLS-PRC
File Date: Friday, July 14. 2017
Plaintiff: North American Van Lines, Inc.
Plaintiff Counsel: Siobhán M. Murphy of Lewis Brisbois Bisgaard & Smith LLP
Defendant: North America Prime Inc., Ean Manning
Cause: Federal Trademark Infringement, Federal Unfair Competition, Anticybersquatting Consumer Protection Act, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Theresa L. Springmann
Referred To: Paul R. Cherry

Complaint:

Indy’s COMFORT STAY INN sued for trademark infringement by owner of COMFORT INN

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The Plaintiff in this trademark lawsuit is one of the largest lodging franchisors in the world. Among its many well-known brands are COMFORT INN and COMFORT SUITES. Plaintiff has used its family of COMFORT trademark since at least 1984.

Defendant operates a hotel in Indianapolis, Indiana under the name “Comfort Stay Inn.” Defendant’s utilizes the domain name comfortstayinn.com.

Cease-and-desist coomunications from Plaintiff’s attorney were unsuccessful, hence this lawsuit. Plaintiff asserts that Defendant’s hotel name is confusingly similar and has irreparably damaged the value of the COMFORT family of marks.

Choice Hotels International, Inc. v. American Hospitality Solution, LLC

Court Case Number: 1:17-cv-02402-TWP-DML
File Date: Friday, July 14, 2017
Plaintiff: Choice Hotels International, Inc.
Plaintiff Counsel: Calvert S. Miller of Carson Boxberger LLP
Defendant: American Hospitality Solution, LLC
Cause: Federal Trademark Infringement, False Designation of Origin, Indiana Trademark Infringement, Indiana Unfair Competition
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Debra McVicker Lynch

Complaint: