Tag Archives: Common Law Trademark Infringement

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:

Buttermilk Café vs. Buttermilk Pancake House…are you confused?

27 Thursday Apr 2023

Posted by in Intellectual Property

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The plaintiff in Indiana’s latest trademark lawsuit owns three restaurants called Buttermilk Café in the Chicago metropolitan area, along with a federal trademark registration for BUTTERMILK CAFE (Reg. No. 5,888,702) claiming “restaurant services, in International Class 43,” with a date of first use in 2011. Notably, it is a concurrent use registration with another restaurant called Buttermilk Kitchen, based in Atlanta, Georgia.

Since at least 2019, the defendant has operated a restaurant called Buttermilk Pancake House in Munster, Indiana.

The Complaint (below) doesn’t mention any actual instances of consumer confusion. You might think if Buttermilk Café and Buttermilk Kitchen can co-exist, then surely there’s room in the marketplace for a Buttermilk Pancake House, particularly in a crowded field like restaurants, with over 1,000,000 operating restaurant locations in the U.S. However, Munster, Indiana is about 30 miles from Chicago, so proximity may be the plaintiff’s greatest concern in this situation. That’s close enough that both parties’ restaurants would inevitably show up in a map search for either restaurant. It’s close enough that consumers might think the “Pancake House” is an offshoot of the nearby “Café.” The Munster restaurant utilizes a different color and font for “Buttermilk” and “Pancake House” on their exterior signage, a marketing practice often used with a “family mark” and a new descriptive product/service name. This could arguably lead consumers to believing that there is a connection between the parties. However, other than use of a similar name, there’s no other evidence in the Complaint (e.g. similar logo, menu, interior design, color scheme, etc.) that the Munster restaurant is intentionally misrepresenting itself to be connected with the plaintiff’s restaurant.

Stay tuned for updates.

Sak Group, Inc. v. Blue Hill Hospitality, Inc.

Court Case Number: 2:23-cv-00142-PPS-JPK
File Date: April 25, 2023
Plaintiff: Sak Group, Inc.
Plaintiff Counsel: Michael E. Tolbert, Shelice R. Tolbert, Candace C. Williams of Tolbert & Tolbert, LLC
Defendant: Blue Hill Hospitality, Inc.
Cause: Federal Trademark Infringement, False Designation of Origin, Passing Off, Federal Unfair Competition, Trademark Dilution, Violation of the Indiana Uniform Deceptive Trade Practices Act, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: Joshua P. Kolar

Complaint:

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:

USA Football sues USA Flag for Trademark Infringement

16 Thursday Feb 2023

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

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USA Football organizes football training events for players, coaches, and officials. USA Football was endowed by the National Football League and the National Football League Players Association in 2002.

USA Football has filed a lawsuit in Indiana attempting to prevent the use of the mark USA FLAG in connection with flag football tournaments and leagues. The parties to the lawsuit have a lengthy history, with Defendant Burnett first approaching USA Football in 2017 about a potential collaboration. Over the following years, the relationship involved both a Consulting Agreement and an Event Collaboration Agreement between the parties. However, per the Complaint (below), USA Football always maintained that the USA FLAG mark could not be used, previously opposing a USA FLAG trademark application.

Unable to successfully persuade/convince USA Flag to stop using an allegedly confusingly similar trademark, USA Football now seeks court intervention, including requests for injunctive relief and attorneys’ fees. As USA Flag seems dug into its position, this lawsuit could get interesting. USA Flag previously chose not to defend in the trademark opposition proceeding, resulting in a notice of default. Surely USA Flag won’t attempt that same strategy in federal court. Stay tuned for updates.

USA Football, Inc. v. Flag Football World Championship Tour, LLC et al.

Court Case Number: 1:23-cv-00274-TWP-KMB
File Date: February 13, 2023
Plaintiff: USA Football, Inc.
Plaintiff Counsel: Amie N. Peele of Peele Law Group, PC; Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendants: Flag Football World Championship Tour, LLC, USA Flag, LLC, Travis Burnett
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement, Contributory Trademark Infringement, Vicarious Trademark Infringement, Unjust Enrichment, Conversion, Deception, Indiana Crime Victim’s Relief Act
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Kellie M. Barr

Complaint:

Delta Faucet Company sues Amazon Counterfeiter over Unauthorized Sales

03 Friday Feb 2023

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

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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

Complaint: