The Plaintiff in this Declaratory Judgment action is an Indianapolis-based LLC that has used the CHARTREUSE trademark in connection with “handmade soy candles” since January 2013.
Defendant is a New Jersey-based LLC that owns a federal registration for CHARTREUSE in connection with “Candles,” with a date of first use in commerce in April 2002. Defendant sent a “cease and desist” letter to Plaintiff in January 2014 asserting their trademark rights. Plaintiff responded by filing a complaint for Declaratory Judgment of Non-Infringement, Unenforceability and Invalidity.
The Plaintiff asserts in their Complaint that Defendant has not used their trademark for over three (3) years, that the CHARTREUSE mark is descriptive and therefore not entitled to registration and that the claimed date of first use in the registration is inaccurate. If these things can be proved, Plaintiff may have a shot to invalidate the registration. However, in addition to counterclaims based on the federal registration, I’d expect Defendant’s Response to include a full slate of common law trademark infringement counterclaims based on their lengthy use of their trademark.
Maybe I’m in the wrong line of work. There must be good money in “handmade soy candles” if Plaintiff can afford to hire a big law firm to pursue federal litigation to protect a trademark in use for just over a year.
Chartreuse LLC v. Chartreuse Fragrances LLC
Court Case Number: 1:14-cv-00181-WTL-DKL
File Date: Friday, February 07, 2014
Plaintiff: Chartreuse LLC
Plaintiff Counsel: Louis T. Perry of Faegre Baker Daniels LLP
Defendant: Chartreuse Fragrances LLC
Cause: Unenforceability and Invalidity of Defendant’s Mark, Non-Infringement of Trademark
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Denise K. LaRue