Tag Archives: Common Law Unfair Competition

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

01 Monday Apr 2024

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

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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:

Trade Dress Lawsuit filed in Indiana over Trailer Axle Hubcaps

04 Monday Mar 2024

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

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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:

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

02 Thursday Nov 2023

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

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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:

Indiana Lawn Care Manufacturer sues eBay Counterfeiter in Northern District of Indiana

09 Monday Oct 2023

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

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Perma-Green, based in Valparaiso, Indiana, has manufactured and sold commercial lawn care products since 1973. They own an incontestable registration for the trademark PERMAGREEN for “mechanical spreaders and sprayers for the lawn care industry” with a claimed date of first use of February 1, 2005.

“Dr. Permagreen” is an eBay Seller account that lists over 1,400 Perma-Green products, including replacement parts. However, the parts being sold by the eBay account are allegedly low-quality counterfeit copies created in China, not authentic Perma-Green products.

Perma-Green alleges consumer confusion has been caused by the eBay account’s use of a similar name and deceptive product titles, with consumers falsely believing that the eBay account is associated with Perma-Green and that the products originate from Perma-Green. Consumer complaints over defective products were incorrectly directed towards Perma-Green, presumably damaging the goodwill in their brand.

Faulty or defective parts can obviously be a big problem when it comes to lawn care equipment by creating an increased risk of serious injury. After unsuccessful cease-and-desist communications, Perma-Green has brought a lawsuit (see Complaint below) seeking court intervention in an attempt to halt the damage currently being done to its brand. The Complaint alleges willful infringement based on email communications from the alleged operator of the eBay account.

Stay tuned for updates.

Perma-Green Supreme, Inc. v. Dr. Permagreen, LLC et al.

Court Case Number: 2:23-cv-00341
File Date: October 6, 2023
Plaintiff: Perma-Green Supreme, Inc.
Plaintiff Counsel: P.Stephen Fardy, William D. Patterson of Swanson, Martin & Bell, LLP
Defendant: Dr. Permagreen, LLC, Michael Edward Klott, FTW Investments LLC
Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal False Advertising, Deceptive Consumer Sales, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: John E. Martin

Complaint:

Two Indiana Valve Companies involved in Trade Dress Lawsuit over Yellow Valve Handles

02 Monday Oct 2023

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

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Banjo Corporation of Crawfordsville, Indiana, designs, manufactures, distributes, and sells control valves for regulating the flow of liquids in hoses and pipes. Since 1994, Banjo’s valves have had distinctive yellow-colored handles. Banjo currently sells approximately 150 types of control valves, all bearing the distinctive yellow handles.

Green Leaf of Fontanet, Indiana, has been selling control valves with green handles since 1983. In 2019, after hiring 2 ex-Banjo employees, Green Leaf launched a line of yellow-handled valves. Green Leaf’s new valve line uses the name TERREMAX.

In a lawsuit filed in the Southern District of Indiana, Banjo accuses Green Leaf of violating its trade dress in the yellow valve handles. The name TERREMAX is also allegedly meant to imitate Banjo’s line of TERRE and TERRE KNIFE products. The Complaint (below) details other alleged deceptive conduct by Green Leaf, but we’ll be most interested in watching the trade dress claim for the yellow handle design.

Stay tuned for updates.

Banjo Corporation v. Green Leaf, Inc.

Court Case Number: 1:23-cv-01770-SEB-MG
File Date: September 29, 2023
Plaintiff: Banjo Corporation
Plaintiff Counsel: Dwight D. Lueck of Barnes & Thornburg, LLP, Jonathan E. Moskin of Foley & Lardner LLP
Defendant: Green Leaf, Inc.
Cause: Federal Trademark Infringement, Federal Trade Dress Infringement, Federal Unfair Competition, Federal False Designations of Origin, Federal False Advertising, Common Law Unfair Competition, Common Law Trademark Infringement
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Mario Garcia

Complaint: