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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: Common Law Trade Dress Infringement

Elkhart RV Manufacturer sues Former Employees for Conversion, Trade Dress Infringement

11 Tuesday Oct 2022

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Northern District of Indiana, Trade Dress

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Breach of Fiduciary Duty, Common Law Trade Dress Infringement, Conversion, Criminal Conversion, Damon R. Leichty, Federal Unfair Competition, Michael G. Gotsch, Theft, Trade Dress Dilution

The plaintiff in this lawsuit is Phoenix USA RV, an RV manufacturer located in Elkhart, Indiana, the RV Capital of the World.

The defendants are a large group of former Phoenix USA employees and the competitor company they founded while still working at Phoenix USA. The defendants are accused of sabotaging the plaintiff’s operations, stealings its tangible and intellectual property, and using a stolen RV design to build a prototype for a virtually identical RV. The allegedly infringing RV is now being marketed online and at RV trade shows.

The defendants are represented by Jonathan R. Slabaugh of Sanders Pianowski LLP. Based on the history detailed in the Complaint (below), we can probably expect some fireworks once everything gets going. Employment disputes involving just one employee can get messy, but this situation involves a whole company’s worth of ex-employees plus their new competing company.

This lawsuit was removed from Elkhart Superior Court to the Northern District of Indiana. Stay tuned for updates.

Phoenix USA RV, Inc. v. Hoosier Custom Cruisers LLC et al.

Court Case Number: 3:22-cv-00855
File Date: October 7, 2022
Plaintiff: Phoenix USA RV, Inc.
Plaintiff Counsel: Paul E. Harold, Stephen M. Judge of SouthBank Legal
Defendants: Hoosier Custom Cruisers LLC et al.
Cause: Conversion, Criminal Conversion, Theft, Breach of Fiduciary Duty, Federal Unfair Competition, Trade Dress Dilution, Common Law Trade Dress Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Damon R. Leichty
Referred To: Michael G. Gotsch, Sr.

Complaint:

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Splenda Manufacturer sues Speedway Gas Stations over Knock-off Chinese Sweetener

10 Wednesday Feb 2021

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trade Dress, Trademark

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Common Law Trade Dress Infringement, Common Law Unfair Competition, False Advertising, False Designation of Origin, False or Misleading Representation of Fact, Federal Trademark Dilution, Federal Unfair Competition, State Trademark Dilution, Trade Dress Infringement

Splenda®-loving Speedway patrons beware! Or not.

In the second gas station-related lawsuit this week, Speedway gas stations are accused of providing knock-off Chinese-manufactured Splenda, the well-known sugar substitute sweetener. For our health-minded blog readers who don’t touch the stuff or just crave real sugar, Splenda sweetener is actually sucralose, a low-calorie sugar-substitute first approved by the FDA in 1998.

Splenda’s manufacturer claims trade dress protection for sucralose sold in yellow packets, of which diner-frequenters, coffee and tea drinkers probably recognize:

Speedway is accused of providing knock-off Chinese sucralose sweetener in yellow packaging at their gas station coffee kiosks. The Plaintiff asserts that “Speedway’s yellow-colored packets are not provided to customers with sufficient cues to the consumer to prevent the mistaken belief by consumers that the yellow packets are in fact SPLENDA® Brand Sweetener.”

Blog readers, would you see the above packet at a coffee kiosk and automatically assume that it is Splenda®? If so, reach out to Plaintiff’s attorney, because that’s the basis of this lawsuit. (Aside: Did you know there are over 50 shades of yellow?)

Splenda’s manufacturer asserts trade dress infringement, unfair competition, false advertising, and dilution claims against Speedway. This will be an interesting case to follow, with both parties being fairly large companies, and presumably with Speedway gas stations already providing their yellow “knock-off” sweetener widely. Not being a coffee drinker (although married to one), I can only guess at what goes through the coffee drinker’s mind before consuming that cherished travel-sized cup of lukewarm gas station bitter brown water, but I really wonder if they are confused by the yellow packaging or whether they care at all. I suspect coffee drinkers grabbing a free packet of sweetener from a gas station kiosk don’t care at all what type of sucralose they’re ingesting, so long as the delivery medium is decently warm and caffeinated. Speedway’s packaging does not mention “Splenda” whatsoever, just listing ingredients of dextrose and sucralose. Apparently, it’s the use of the color yellow (but which yellow?) that bought Speedway this lawsuit.

A fairly easy potential compromise would be for Speedway to provide their sucralose sweetener in non-yellow packaging, but I’m guessing Speedway will decide to challenge Splenda’s asserted monopoly over the color yellow for sweeteners. Splenda’s arguably broad trade dress might need to be narrowed to a certain yellow shade (or shades), rather than the entire spectrum of yellow.

Either way, this lawsuit will be interesting to follow…stay tuned for updates.

Heartland Consumer Products LLC v. Speedway, LLC

Court Case Number: 1:21-cv-00322-JMS-TAB
File Date: February 8, 2021
Plaintiff: Heartland Consumer Products LLC
Plaintiff Counsel: Holiday W. Banta, Jessa DeGroote, Alice Kelly of ICE MILLER LLP
Defendant: Speedway, LLC
Cause: Trade Dress Infringement, Common Law Trade Dress Infringement, False Designation of Origin, Federal Unfair Competition, False or Misleading Representation of Fact, False Advertising, Common Law Unfair Competition, Federal Trademark Dilution, State Trademark Dilution
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Tim A. Baker

Complaint:

View this document on Scribd

Indiana Trade Dress Litigation Update – Forest River v. Winnebago Industries

19 Saturday Dec 2015

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trade Dress, Trademark

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Tags

Christopher A. Nuechterlein, Common Law Trade Dress Infringement, Common Law Trademark Infringement, Common Law Unfair Competition, False and Misleading Representations, False Designation of Origin, Federal Trade Dress Infringement, Federal Trademark Infringement, Federal Unfair Competition, Robert L. Miller

This lawsuit involves the popular RPOD travel trailer, sold by Plaintiff since 2009, and an allegedly infringing DROP trailer, sold by Defendant since September 2015.

It will be interesting to see what trade dress rights can be protected for a small travel trailer. Importantly, trade dress cannot be functional. Specifically, the Complaint references “the exterior shape, the total visual image, the interior layout, interior fabric patterns and colors, and model numbers.”

RPOD Complaint Comparison

Forest River Inc v. Winnebago Industries Inc et al

Court Case Number: 3:15-cv-00609-RLM-CAN
File Date: Friday, December 18, 2015
Plaintiff: Forest River, Inc.
Plaintiff Counsel: Jonathan P. Froemel, Georgina D. Jenkins of Barnes & Thornburg LLP
Defendant: Winnebago Industries, Inc., Winnebago of Indiana, LLC
Cause: Federal Trademark Infringement, Federal Trade Dress Infringement, Federal Unfair Competition, False Designation of Origin, False and Misleading Representations, Common Law Trademark Infringement, Common Law Trade Dress Infringement, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Judge Robert L. Miller, Jr.
Referred To: Magistrate Judge Christopher A. Nuechterlein

Complaint:

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Indiana Trade Dress Litigation Update – Patachou v. Crust

24 Thursday Oct 2013

Posted by Kenan Farrell in Indianapolis, Intellectual Property, Litigation, Trade Dress

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Common Law Trade Dress Infringement, Common Law Trademark Infringement, Corrective Advertising Damages, Demand for Preliminary and Permanent Injunction, Dilution, Forgery, Litigation Update, Marion County Court, Pizza, Unfair Competition

Here’s an interesting case involving the trade dress of two Indianapolis neopolitan pizzerias (i.e. “fancy pizza”). Broad Ripple-based Napolese, owned by the same restauranteur as popular local brunch spot Patachou, has complained that the new Crust Pizzeria Napoletana has copied the look and feel of Napolese. Crust is owned by another local restauranteur, Mohey Osman, of The Egyptian Cafe fame.

Images from Complaint

Images from Complaint

In case you haven’t read it in awhile, here’s the preeminent decision in this area, the Supreme Court ruling in Two Pesos v. Taco Cabana.

I won’t get into the facts of Two Pesos (read the decision) or of the current Complaint (see below) but I have the following thoughts:

1. Taco Cabana was a chain with 6 locations open for 7 years by the time of the lawsuit. Napolese has had one location in Broad Ripple for four years. Is the Napolese trade dress well known, much less famous (to support the dilution claim), outside of mid-Marion County suburbanites?

2. Trade dress infringement cases are almost always brought in federal court. The Napolese complaint was filed in Marion County Court with no federal claims. This surely wasn’t by mistake, and makes me think a few things:

a. Napolese doesn’t consider their trade dress to be very strong beyond the local level.

The Complaint relies heavily on the fame of the Patachou brand but is light on discussion of the strength of the Napolese trade dress specifically, although the Napolese trade is what is actually at issue).

b. Napolese doesn’t want the formalities and high legal costs associated with federal court.

Few do.

c. Napolese may not intend to follow through with the lawsuit.

It’s possible the Complaint may just be a cost-effective method (cheaper than advertising) to alert the public that Crust is not associated with Napolese and also expose the many similarities, making Crust look tacky in the process. Napolese may be gambling that media pressure on Crust will force some modifications and they can drop the lawsuit before they get too deep.

The reality is that defending a lawsuit (particularly with a prestigious firm like Woodard Emhardt as counsel) is much more expensive than changing your logo and menu colors. The trade dress of Napolese and Crust is probably similar enough to defeat any counterclaim that this is a “frivolous” complaint, which could entitle Crust to attorney fees, so Napolese has the upper hand to drive this litigation as far as they want it to go.

3. One more thing to consider is the similarity of the trade dress of other neapolitan pizzerias across the state/country. If neopolitan pizzerias frequently utilize the stone oven/shield logo/bar stool/whatever, that info could affect both the “distinctiveness” analysis for the Napolese trade dress and the “likelihood of confusion” analysis in comparing Crust trade dress. I don’t usually eat fancy pizza so I can’t comment here.

What are your thoughts on the Complaint? More info about the lawsuit is available in the Indianapolis Star. Stay tuned to this blog for updates.

Patachou, Inc. v. Mohey Osman d/b/a Crust, and Crust

Court Case Number: 49D12 13 10 CT 038659
File Date: October 18, 2013
Plaintiff: Patachou, Inc.
Plaintiff Counsel: Jonathan G. Polak of Taft/
Defendant: Mohey Osman d/b/a Crust, and Crust
Defendant Counsel: Charles Meyer of Woodard, Emhardt, Moriarty, McNett & Henry
Cause: Common Law Trademark Infringement, Common Law Trade Dress Infringement, Dilution, Forgery, Preliminary and Permanent Injunctive Relief, Corrective Advertising Damages
Court: Marion County Court
Judge: TBD

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Indiana Trademark Litigation Update – Noble Roman’s v. Village Pantry

06 Thursday Sep 2012

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

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Tags

Breach of Contract, Common Law Trade Dress Infringement, Denise K. LaRue, Federal Unfair Competition, Noble Roman's, Richard L. Young, Southern District of Indiana, Trade Dress Infringement, Unfair Competition, Village Pantry

Noble Roman’s Inc. v. Village Pantry LLC

Court Case Number: 1:12-cv-01252-RLY-DKL
File Date: Wednesday, September 05, 2012
Plaintiff: Noble Roman’s Inc.
Plaintiff Counsel: Curtis T. Jones of Bose McKinney & Evans LLP
Defendant: Village Pantry LLC
Cause: Lanham Act Trade Dress Infringement, Common Law Trade Dress Infringement, Federal Unfair Competition, Breach of Contract
Court: Southern District of Indiana
Judge: Judge Richard L. Young
Referred To: Magistrate Judge Denise K. LaRue

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