Delta Faucet Company is once again pursuing a counterfeit faucet seller from Amazon in the Southern District of Indiana. The Complaint (below) details how a company’s trademarks are impacted by unauthorized sellers and the resulting negative online marketplace reviews. As with Delta’s previously-filed lawsuits, the Complaint highlights the gray market existing within Amazon’s “Fulfillment by Amazon” services that allows for counterfeit sales, leading to invalid product warranties, disgruntled consumers, and damaged brands.
Delta’s most recent “counterfeit” lawsuit resulted in a default judgment and permanent injunction as the Defendant never appeared. The lawsuit took just a few days over one years. The injunction, probably Delta’s real goal, presumably allowed them to finally stop the unauthorized Amazon sales. However, like mosquitoes, stop one counterfeiter and another will inevitably appear. We can probably expect a similar result in this lawsuit…no appearance by the defendants, default judgment, and injunction.
Stay tuned for updates.
Delta Faucet Company v. Watkins et al.
Court Case Number: 1:23-cv-00200-JMS-MKK File Date: February 1, 2023 Plaintiff: Delta Faucet Company Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP Defendants: Ben Watkins, John Does 1-10 Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, Indiana Crime Victim’s Relief Act, Deception Court: Southern District of Indiana Judge: Jane Magnus-Stinson Referred To: M. Kendra Klump
Shoe giants Puma and Brooks are involved in a lawsuit in Indiana over loosely-related trademark and patent design infringement claims.
PUMA began using the NITRO trademark in connection with running shoes in March 2021. Per the Complaint (below), PUMA’s line of NITRO running shoes were apparently a Top 15-selling running shoe brand in the U.S. in the year 2021.
In November 2021, PUMA noticed Brooks’ using the term “Nitro” in advertisements for a line of shoes with nitrogen-infused midsoles. In December 2021, PUMA’s counsel sent a letter describing their “exclusive rights” in the NITRO trademark. The subsequent 7 months apparently saw Brooks reject a settlement offer and offer no counterproposal, resulting in this lawsuit. Puma has a pending trademark application for NITRO filed in December 2021 that is still awaiting initial examination.
I question whether Brooks is really even using “Nitro” as a trademark. It seems they are just using a commonly-used shorthand for nitrogen, the common element infused in the shoe’s midsole. A possible resolution, should Brooks deem it necessary or the fight not worthwhile, would be to simply change their advertising from “Nitro” to “Nitrogen.”
The lawsuit is probably equally about PUMA’s claim for design patent infringement, a common dispute between shoe companies. Design patent claims highlight the constant “fine line” walked by consumer shoe designers to exploit a hot, current shoe trend but not copy a competitor’s design. The claims are loosely connected because the allegedly infringing shoes include nitrogen-infused midsoles, and thus are part of the Brooks “Nitro” advertising campaign. I’m not a shoe guy, so I don’t really know shoe terminology or what else is out in the market currently, but I can spot some obvious differences between PUMAS’s patent and the Brooks shoe.
Upon a quick review, the PUMA’s patent’s sole seems to be clearly 3 segments, while Brooks is 4 segments. The back of the heel is smooth on the patent while it is multi-ridged, both internally and externally, on the Brooks shoe. The back segment of the sole on the Brooks is much longer, has a protrusion with a rear wedge cut-out and also a circular impression on the side. The toe end is ridged on the Brooks shoe versus smooth on the design. These differences are just based on a quick initial review but I’m sure blog readers and Brooks’ counsel can find a few more. People familiar with current shoe trends might find even more.
Since 1851, the test for design patent infringement has been the “ordinary observer” test, which compares two designs from the viewpoint of an “ordinary observer,” not an expert in the trade, and requires that the resemblance be intended to deceive the observer and sufficient to induce him to purchase one supposing it to be the other. Recent jurisprudence in the Federal Circuit has seemingly evolved (or devolved, depending on your viewpoint) the test into what has been deemed an “extra-ordinary observer” test, in which the differences between the accused design and the patented design should be reviewed from the viewpoint of someone familiar with the prior art. As I mentioned above, I’m not familiar with the current women’s running shoe market so I could be a qualified “ordinary observer” but probably would not meet the higher standard. Which of the two standards should apply in the Southern District of Indiana in 2022 will likely be a primary focus of the lawsuit as it could be determinative.
If you’re wondering why this lawsuit was filed in Indiana, one explanation is that Brooks has a 400,000 square foot distribution center located in Whitestown, Indiana. PUMA didn’t specifically request seizure or destruction of Brooks’ existing inventory, but perhaps it is on their mind. Another consideration, as mentioned above, is finding a good venue to apply the lower “ordinary observer” standard.
Based on the size of the parties and the previously failed settlement negotiations, we can probably expect some fireworks in this lawsuit. Stay tuned for updates.
PUMA SE at al v. Brooks Sports, Inc.
Case Number: 1-22-cv-01362-RLY-MPB File Date: July 8, 2022 Plaintiff: PUMA SE, PUMA North America Inc. Plaintiff Counsel: Joel E. Tragesser, Michael T. Piery, James J. Aquilina of Quarles & Brady LLP Defendant: Brooks Sports, Inc. Cause: Trademark Infringement, Design Patent Infringement, Common Law Trademark Infringement, Common Law Unfair Competition Court: Southern District of Indiana Judge: Richard L. Young Referred To: Matthew P. Brookman
The Plaintiff in this trademark lawsuit is a West Lafayette, Indiana-based provider of high-quality window treatments and blinds. The Plaintiff owns a trademark registration for GENESIS in connection with “window blinds, window shades, and venetian blinds,” with a claimed date of first use of April 1, 1994.
The Defendants are Coulisse, a Dutch company (operating out of Miami, Florida) that has been selling window coverings since 1992. Coulisse has begun promoting a line of “Genesis” smart window coverings, consisting of “elegant screens with a focus on functionality.”
Stay tuned for the Defendants’ response, but the easiest solution seems to be a quick rename of their Genesis concept line, which is just one of several available lines. A few promotional documents will require some text change but that’s fairly easily accomplished.
Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC et al.
Case Number: 4:22-cv-00047 File Date: June 29, 2022 Plaintiff: Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC Plaintiff Counsel: William P. Kealey, David M. Stupich of Stuart & Branigin LLP Defendant: Coulisse Distribution LLC, Coulisse Holding USA Inc. Cause: Declaratory Relief, Trademark Infringement, Unfair Competition, False Designation of Origin, Common Law Trademark Infringement Court: Northern District of Indiana Judge: Philip P. Simon Referred To: Andrew P. Rodovich
Giant Eagle is the owner of GETGO® convenience stores, with 269 locations, including four (4) stores in Fort Wayne, Indiana that were opened in 2018. Giant Eagle owns several U.S. trademark registrations for GETGO, claiming a date of first use of March 2003 for “Convenience store services, including fuel.”
The Defendants are the owners of three (3) retail convenience stores named GET 2 GO in Fort Wayne, Indiana. The Defendants own two U.S. trademark registrations for the GET 2 GO trademark, claiming a date of first use of June 2011. The Plaintiff has contemporaneously filed a Petition for Cancellation (see below) against the Defendants’ registrations.
The Plaintiffs sent communications to Defendants via counsel in February 2020 and April 2021. Per the Complaint (below), “Defendants, through counsel, indicated that they were ”simply not interested” in a business resolution or in discontinuing the use of the Infringing Marks.”
The Complaint doesn’t mention any instances of actual confusion.
Given the decade-long use of their own trademarks, coexisting peacefully with apparently no instances of consumer confusion, I’m not surprised that the Defendants have opted to stand their ground and not change their name. I’ll be interested to see the affirmative defenses and possibly counterclaims in the Defendants’ Answer. Stay tuned for updates on both the lawsuit and the cancellation proceeding.
Phoenix Intangibles Holding Company et al vs. Virk Brothers, LLC et al
Case Number: 1:21-cv-00263-HAB-SLC File Date: Friday, July 9, 2021 Plaintiff: Phoenix Intangibles Holding Company, Giant Eagle, Inc. Plaintiff Counsel: Anthony M. Eleftheri of Drewry Simmons Vornehm, LLC Defendant: Virk Brothers, LLC, Charanjit Singh Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement Court: Northern District of Indiana Judge: Holly A. Brady Referred To: Susan L. Collins
Evansville, Indiana-based Full Throttle Automotive, an auto repair shop, is being sued for trademark infringement by Energy Beverages, producer of Full Throttle energy drinks. The Complaint (below) highlights Energy Beverages’ long history of advertising in auto racing, including being the title sponsor of the National Hot Rod Association’s primary drag racing event.
The auto repair shop has also sponsored vehicles in motorsport events. Energy Beverages sent a cease-and-desist letter in October 2020, but Full Throttle Automotive has refused to discontinue use of its trademark.
Stay tuned for the Answer in the next few weeks, when we’ll likely find out how long Full Throttle Automotive has been using their “Full Throttle” name. They posted their current name and logo on Facebook back in 2014, and it’s likely they were using their name even before that, so they may have a strong acquiescence or laches defense based on many years of inaction from Energy Beverages.
A possible outcome could be a compromise whereby Full Throttle Automotive agrees not to sponsor NHRA events, presumably the most likely source of consumer confusion.
Energy Beverages LLC v. Full Throttle Automotive LLC
Case Number: 3:21-cv-00081-RLY-MPB File Date: Wednesday, May 19, 2021 Plaintiff: Energy Beverages LLC Plaintiff Counsel: James W. Riley, Jr., Jaclyn M. Flint of Riley Bennett Egloff LLP Defendant: Full Throttle Automotive LLC Cause: Trademark Infringement, Trade Dress Infringement, False Designation of Origin, Common Law Trademark Infringement, Unfair Competition Court: Southern District of Indiana Judge: Richard L. Young Referred To: Matthew P. Brookman
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