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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: Common Law Trademark Infringement

Hot Girl Walk v. Hot Walk Indy…are you confused?

17 Wednesday Jul 2024

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

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Business Disparagement, Common Law Trademark Infringement, Common Law Unfair Competition, Defamation, Federal False Designation of Origin, Federal Trademark Infringement, Federal Unfair Competition, Jane E. Magnus-Stinson, Tim A. Baker, Tortious Interference with Business Relationship

An Indianapolis-based inclusive walking group is being sued for trademark infringement by the national walking group which had inspired its original name. The plaintiff operates a national women’s walking group called Hot Girl Walk, a name inspired by Megan Thee Stallion’s song “Hot Girl Summer.” The group promotes walking events for women across the country and has some significant sponsorships. In 2019, the defendant started a walking group called Hot Girl Walk Indy, which was later shortened to Hot Walk Indy. If this was the extent of the conflict, I suspect a federal lawsuit might never have been filed. However, while the trademark infringement claims in the Complaint (below) are the focus of this IP blog, the plaintiff was likely more concerned about an alleged series of defamatory statements, doxing, and aggressive bullying, all detailed in the Complaint. Standing alone, Hot Walk Indy might not cause a conflict with Hot Girl Walk, but when it’s combined with a group campaign of actively seeking to undermine the Hot Girl Walk brand, it puts a plaintiff in a position where they have to file a lawsuit.

It’s difficult to see how keeping the name of a relatively new local walking group would be worth the cost of defending a federal lawsuit, but perhaps the defense funds can be crowdfunded among the group. Considering the other activities detailed in the Complaint, the defendant may already be in too deep despite what name they use and the other group members may stay away for fear of being named as additional defendants.

Stay tuned for updates.

Hot Girl Walk LLC v. Springer d/b/a Hot Walk Indy

Court Case Number: 1:24-cv-01187-JMS-TAB
File Date: July 15, 2024
Plaintiff: Hot Girl Walk LLC
Plaintiff Counsel: Joseph R. Delehanty of Dickinson Wright PLLC
Defendant: Casey Springer d/b/a Hot Walk Indy
Cause: Tortious Interference with Business Relationship, Defamation, Business Disparagement, Federal Trademark Infringement, Federal Unfair Competition, Federal False Designation of Origin, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Jane E. Magnus-Stinson
Referred To: Tim A. Baker

Complaint:

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Twisted Tater Food Truck sues Twisted Taters for Trademark Infringement

06 Monday May 2024

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

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Common Law Trademark Infringement, Federal Trademark Infringement, Indiana State Trademark Infringement, James R. Sweeney II, Tim A. Baker, Tortious Interference with Prospective Economic Advantage, Unfair Competition, Unfair Use of Trade Name

Both parties in the latest Indiana trademark lawsuit operate food trucks in Indiana. The plaintiff has been operating as Twisted Tater since 2012, selling spiral cut potatoes placed on a skewer and deep fried.

The defendant apparently began operating as Twisted Taters in July 2021, selling “gourmet ribbon fryz.”

Plaintiff’s counsel sent a cease-and-desist letter in October 2023 and, unable to find a suitable resolution, now seek the intervention of the Southern District of Indiana.

The plaintiff received an Indiana state registration for their logo in 2016. They also received an Indiana trademark registration for the word mark TWISTED TATER on April 1, 2024. The plaintiff filed a federal trademark application for TWISTED TATER on March 29, 2024. However, a Google search reveals that there are several “Twisted Taters” in operation across the country, so the plaintiff may have some additional enforcement work and/or opposition defenses before they receive a federal registration. There are also some prior registrations for TWISTER FRIES and TWISTER that may lead to a Section 2(d) “likelihood of confusion” refusal.

Stay tuned for updates.

Peugh et al. v. Nadler et al.

Court Case Number: 1:24-cv-00764-JRS-TAB
File Date: May 3, 2024
Plaintiff: Charlotta Pugh, BCC Concessions, LLC d/b/a Twisted Tater
Plaintiff Counsel: Katie M. Charleston of Katie Charleston Law, PC
Defendant: Adam J. Nadler, Jr., Twisted Taters Food Truck and More, Does 1-10
Cause: Federal Trademark Infringement, Indiana State Trademark Infringement, Common Law Trademark Infringement, Unfair Use of Trade Name, Unfair Competition, Tortious Interference with Prospective Economic Advantage, Cybersquatting
Court: Southern District of Indiana
Judge: James R. Sweeney II
Referred To: Tim A. Baker

Complaint:

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Fort Wayne Printing Company sues FortWaynePrintShop.com for Trademark Infringement, Dilution

01 Monday Apr 2024

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

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Common Law Trademark Infringement, Common Law Unfair Competition, Federal False Designation of Origin, Federal Passing Off, Federal Trademark Infringement, Federal Unfair Competition, Holly A. Brady, Susan L. Collins, Trademark Dilution

Fort Wayne Printing Company has performed printing and related services in Northeast Indiana since 1902. They have a pending federal trademark application for FORT WAYNE that successfully passed its 30-day publication window on March 28, 2024. One day later, Fort Wayne Printing Company filed a federal trademark lawsuit in Indiana against a company using the domain FortWaynePrintShop.com.

The defendant, Allen & Goel Marketing Company, has been using the domain name fortwayneprintshop.com to advertise printing and related services. When attempting to purchase services at the domain, it redirects to their primary website, http://www.printshopnation.com.

It’s possible that the marketing company directly targeted Fort Wayne Printing Company in purchasing the FortWaynePrintShop.com domain. However, they may have just purchased a bunch of geographically descriptive domains (i.e. “[cityname]printshop.com) and didn’t check whether any of those names corresponded to a pre-existing company. In the latter scenario, you might expect them to simply give up the domain without incurring a federal lawsuit. By not relinquishing the domain, it could be an indication that this particular geographic domain is especially profitable for them. Further, the FortWaynePrintShop.com domain was first created on 11/11/2011 and the Internet Archive first captured the website in May 2013, so the defendant might have a valid acquiescence or laches defense.

Apparently unable to resolve this situation with normal cease-and-desist communications, probably due to the 10+ years use of the domain name, the plaintiff now seeks court intervention in the Northern District of Indiana. The fact that the lawsuit was filed one day after the trademark application’s publication window closed may indicate that the defendant was never contacted, in order to not tip them off to the application status. Either way, stay tuned for updates.

Optical Tactics, LLC d/b/a Fort Wayne Printing Company v. Allen & Goel Marketing Company

Court Case Number: 1:24-cv-00134-HAB-SLC
File Date: March 29, 2024
Plaintiff: Optical Tactics, LLC d/b/a Fort Wayne Printing Company
Plaintiff Counsel:
Defendant: Allen & Goes Marketing Company
Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal Passing Off, Federal Unfair Competition, Trademark Dilution, Common Law Trademark Infringement, Common Law Unfair Competition, Injunctive Relief
Court: Northern District of Indiana
Judge: Holly A. Brady
Referred To: Susan L. Collins

Complaint:

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Trade Dress Lawsuit filed in Indiana over Trailer Axle Hubcaps

04 Monday Mar 2024

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

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Breach of Contract, Common Law Trade Dress Infringement, Common Law Trademark Infringement, Common Law Unfair Competition, Damon R. Leichty, Federal False Designation of Origin, Federal Trade Dress Infringement, Federal Trademark Infringement, Federal Unfair Competition, Michael G. Gotsch, Unjust Enrichment

An Elkhart, Indiana-based hubcap manufacturer has been sued for trademark and trade dress infringement. The plaintiff, Valcrum of Cypress, Texas, manufactures hubcaps for medium-duty (8,000-16,000 pounds) trailer axles. Valcrum’s axles use a distinctive design consisting of a “signature red hex bezel having a hexagonal outer perimeter and an inner diameter.”

The defendant, Dexter Axle Company, has an extensive business history with Valcrum. The ultimate result of the breakdown of their business relationship, as detailed in the Complaint below, was Dexter producing its own line of axle hubcaps, which allegedly violate the plaintiff’s trademark and trade dress rights. The Complaint also alleges numerous violations of a nondisclosure agreement executed by the parties in 2020.

Stay tuned for updates.

Valcrum, LLC v. Dexter Axle Company, LLC

Court Case Number: 3:24-cv-00190-DRL-MGG
File Date: March 1, 2024
Plaintiff: Valcrum, LLC
Plaintiff Counsel: Andrew J. Chabot of Botkin & Hall, LLP
Defendant: Dexter Axle Company, LLC
Cause: Breach of Contract, Federal Trademark Infringement, Federal Trade Dress Infringement, Federal Unfair Competition, Federal False Designation of Origin, Common Law Trademark Infringement, Common Law Trade Dress Infringement, Common Law Unfair Competition, Unjust Enrichment
Court: Northern District of Indiana
Judge: Damon R. Leichty
Referred To: Michael G. Gotsch, Sr.

Complaint:

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Trademark Infringement Lawsuit filed in Indiana over Surgical Bovine Collagen, Implant Kits

02 Thursday Nov 2023

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

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Tags

Common Law Passing Off, Common Law Trademark Infringement, Common Law Unfair Competition, Federal False Designation of Origin, Federal Trademark Infringement, Federal Unfair Competition, James R. Sweeney II, M. Kendra Klump

The plaintiff in this new Indiana trademark infringement lawsuit, Ventris Medical, offers a bovine collagen product for management of complex wounds called CONNEXT®.

The defendant, Nexxt Spine of Noblesville, Indiana, recently adopted and is using the mark CONNEXX in connection with a surgical implant kit.

Per the Complaint (below), cease-and-desist communications have been unsuccessful to date and the plaintiff now seeks court intervention in the Southern District of Indiana.

In this case, both parties sell products to highly sophisticated consumers, i.e. surgeons. The more sophisticated the purchaser, the less likely that there will be likelihood of confusion. The defendant likely considered that high sophistication level when selecting its similar trademark.

Secada Medical LLC d/b/a Ventris Medical, LLC v. Nexxt Spine, LLC

Court Case Number: 1:23-cv-01960-JRS-MKK
File Date: November 1, 2023
Plaintiff: Secada Medical LLC d/b/a Ventris Medical, LLC
Plaintiff Counsel: Samuel B. Gardner of Ice Miller LLP
Defendant: Nexxt Spine, LLC
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal False Designation of Origin, Common Law Trademark Infringement, Common Law Unfair Competition, Common Law Passing Off
Court: Southern District of Indiana
Judge: James R. Sweeney II
Referred To: M. Kendra Klump

Complaint:

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