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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: Dilution

Fan Company sues Unauthorized Online Dealer for Trademark Infringement

04 Wednesday Sep 2019

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

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Declaratory Judgment, Dilution, False Designation of Origin, Injunctive Relief, James Patrick Hanlon, Mark J. Dinsmore, Trademark Infringement, Unfair Competition, Unjust Enrichment

The Plaintiff, a fan company based in Zionsville, Indiana, sells its electric fans to consumers via its website, showrooms or through authorized dealers.

The Defendant is alleged to be offering unauthorized sales of Plaintiff’s fans at the website http://www.lightingmerchant.com. Importantly for consumers, electric fans sold by Defendant are not covered by Plaintiff’s warranty.

The Complaint (below) alleges that the Defendant purchases the products from one or more authorized dealers and then sells the products to retail customers. The identity of the authorized dealers is not revealed in the Complaint.

Fanimation, Inc. v. Decor Selections, LLC

Court Case Number: 1:19-cv-03648-JPH-MJD
File Date: Tuesday, August 27, 2019
Plaintiff: Fanimation, Inc.
Plaintiff Counsel: Harold C. Moore, Michael A. Swift of Maginot, Moore & Beck, LLP
Defendant: Decor Selections, LLC d/b/a Lighting Merchant
Cause
: Declaratory Judgment, Injunctive Relief, Trademark Infringement, False Designation of Origin, Dilution, Unfair Competition, Unjust Enrichment
Court: Southern District of Indiana
Judge: James Patrick Hanlon
Referred To: Mark J. Dinsmore

Complaint:

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Indiana Trademark Litigation Update – HRHH Hotel/Casino v. Bella Vita

21 Thursday May 2015

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

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Dilution, False Designation of Origin, Federal Unfair Competition, Litigation Update, Mark J. Dinsmore, State Unfair Competition, Trademark Infringement, Unfair Competition, William T. Lawrence

The Hardrock Hotel and Casino has been hosting a popular daytime party, The Rehab Pool Party, since 2004. Plaintiffs own multiple trademarks referring to daytime parties, and the Rehab name and logo. For the past few years, Bella Vita Lakeside restaurant and bar in Indianapolis has hosted weekly pool parties called “Rehab+ Sundays.” Plaintiffs allege that Defendant’s party logo is confusingly similar to Plaintiffs’ owned trademarks. In fact, a local blog claimed “Bella Vita borrowed the “Rehab” theme from the Hard Rock Hotel and Casino.” Plaintiffs allege that Defendants have refused to cease their infringing use and intend to continue to organize and host the “Rehab+ Sundays” pool parties in the Summer of 2015.

HRHH Hotel/Casino LLC et al v. Bella Vita LLC et al

Court Case Number: 1:15-cv-00791-WTL-MJD
File Date: Wednesday, May 20, 2015
Plaintiff: HRHH Hotel/Casino LLC, HRHH IP, LLC
Plaintiff Counsel: Gregory F. Hahn, Craig E. Pinkus of Bose McKinney & Evans LLP
Defendant: Bella Vita LLC, Henri B. Najem
Cause: False Designation of Origin and Unfair Competition, Trademark Infringement, Dilution, Unfair Competition
Court: Southern District of Indiana
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Mark J. Dinsmore

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Indiana Trademark Litigation Update – Swag Merchandising v. T.V. Store Online

03 Monday Feb 2014

Posted by Kenan Farrell in Intellectual Property

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California Right of Publicity Infringement, Common Law Right of Publicity, Common Law Trademark Infringement, Common Law Unfair Competition, Counterfeiting, Deception, Denise K. LaRue, Dilution, Indiana Crime Victims' Act, Litigation Update, Statutory Right of Publicity, Tanya Walton Pratt, Trademark Infringement, Violation of 1125(a)

Plaintiff alleges that Defendant is manufacturing and selling unauthorized “Energy Dome Hats,” the headwear popularized by American New Wave band DEVO.

Plaintiff claims to be the exclusive licensing agent of DEVO’s intellectual property rights. The Complaint references a pair of federal trademark registrations for DEVO in connection with “entertainment services” and “sound and visual recordings.” The ultimate question for this case however, which is less clear in the Complaint, is whether DEVO owns the rights to manufacture and sell Energy Dome Hats, which are “red in color, circular, and including four tiers of the circular design, with each tier becoming larger in circumference from the top of the hat to the bottom of the hat.”

Swag Merchandising Inc. et al v. T.V. Store Online et al

Court Case Number: 1:14-cv-00127-TWP-DKL
File Date: Wednesday, January 29, 2014
Plaintiff: Swag Merchandising Inc., Devo Inc. Corporation California
Plaintiff Counsel: Theodore J. Minch of Sovich Minch LLP
Defendant: T.V. Store Online, Fred Hajjar
Cause: Violation of 1125(a), Trademark Infringement, Common Law Trademark Infringement, Counterfeiting, Dilution, Common Law Unfair Competition, Statutory Right of Publicity, California Right of Publicity Infringement, Common Law Right of Publicity, Deception, Indiana Crime Victims’ Act
Court: Southern District of Indiana
Judge: Judge Tanya Walton Pratt
Referred To: Magistrate Judge Denise K. LaRue

State Court Complaint:

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Notice of Removal:

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Indiana Trade Dress Litigation Update – Patachou v. Crust

24 Thursday Oct 2013

Posted by Kenan Farrell in Indianapolis, Intellectual Property, Litigation, Trade Dress

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Common Law Trade Dress Infringement, Common Law Trademark Infringement, Corrective Advertising Damages, Demand for Preliminary and Permanent Injunction, Dilution, Forgery, Litigation Update, Marion County Court, Pizza, Unfair Competition

Here’s an interesting case involving the trade dress of two Indianapolis neopolitan pizzerias (i.e. “fancy pizza”). Broad Ripple-based Napolese, owned by the same restauranteur as popular local brunch spot Patachou, has complained that the new Crust Pizzeria Napoletana has copied the look and feel of Napolese. Crust is owned by another local restauranteur, Mohey Osman, of The Egyptian Cafe fame.

Images from Complaint

Images from Complaint

In case you haven’t read it in awhile, here’s the preeminent decision in this area, the Supreme Court ruling in Two Pesos v. Taco Cabana.

I won’t get into the facts of Two Pesos (read the decision) or of the current Complaint (see below) but I have the following thoughts:

1. Taco Cabana was a chain with 6 locations open for 7 years by the time of the lawsuit. Napolese has had one location in Broad Ripple for four years. Is the Napolese trade dress well known, much less famous (to support the dilution claim), outside of mid-Marion County suburbanites?

2. Trade dress infringement cases are almost always brought in federal court. The Napolese complaint was filed in Marion County Court with no federal claims. This surely wasn’t by mistake, and makes me think a few things:

a. Napolese doesn’t consider their trade dress to be very strong beyond the local level.

The Complaint relies heavily on the fame of the Patachou brand but is light on discussion of the strength of the Napolese trade dress specifically, although the Napolese trade is what is actually at issue).

b. Napolese doesn’t want the formalities and high legal costs associated with federal court.

Few do.

c. Napolese may not intend to follow through with the lawsuit.

It’s possible the Complaint may just be a cost-effective method (cheaper than advertising) to alert the public that Crust is not associated with Napolese and also expose the many similarities, making Crust look tacky in the process. Napolese may be gambling that media pressure on Crust will force some modifications and they can drop the lawsuit before they get too deep.

The reality is that defending a lawsuit (particularly with a prestigious firm like Woodard Emhardt as counsel) is much more expensive than changing your logo and menu colors. The trade dress of Napolese and Crust is probably similar enough to defeat any counterclaim that this is a “frivolous” complaint, which could entitle Crust to attorney fees, so Napolese has the upper hand to drive this litigation as far as they want it to go.

3. One more thing to consider is the similarity of the trade dress of other neapolitan pizzerias across the state/country. If neopolitan pizzerias frequently utilize the stone oven/shield logo/bar stool/whatever, that info could affect both the “distinctiveness” analysis for the Napolese trade dress and the “likelihood of confusion” analysis in comparing Crust trade dress. I don’t usually eat fancy pizza so I can’t comment here.

What are your thoughts on the Complaint? More info about the lawsuit is available in the Indianapolis Star. Stay tuned to this blog for updates.

Patachou, Inc. v. Mohey Osman d/b/a Crust, and Crust

Court Case Number: 49D12 13 10 CT 038659
File Date: October 18, 2013
Plaintiff: Patachou, Inc.
Plaintiff Counsel: Jonathan G. Polak of Taft/
Defendant: Mohey Osman d/b/a Crust, and Crust
Defendant Counsel: Charles Meyer of Woodard, Emhardt, Moriarty, McNett & Henry
Cause: Common Law Trademark Infringement, Common Law Trade Dress Infringement, Dilution, Forgery, Preliminary and Permanent Injunctive Relief, Corrective Advertising Damages
Court: Marion County Court
Judge: TBD

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Indiana Trademark Litigation Update – Royal Purple v. Liqui Moly GmbH

23 Saturday Mar 2013

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

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Common Law Trademark Infringement, Common Law Unfair Competition, Debra McVicker Lynch, Dilution, False Designation of Origin, Litigation Update, Sarah Evans Barker, Trademark Infringement, Unfair Competition, Unjust Enrichment

Here’s an interesting case involving a color trademark. Plaintiff Royal Purple, based in Indianapolis, owns several trademark registrations for the color purple  in connection with high-performance lubricants. The Defendant, German-based Liqui Moly, is accused of selling lubricants with containers/packaging that is purple.

images

Royal Purple LLC v. Liqui Moly GmbH

Court Case Number: 1:13-cv-00492-SEB-DML
File Date: Friday, March 22, 2013
Plaintiff: Royal Purple LLC
Plaintiff Counsel: Deborah Pollack-Milgate, Olivia M. Fleming of Barnes & Thornburg LLP
Defendant: Liqui Moly GmbH
Cause: Trademark Infringement; Unfair Competition, False Designation of Origin; Dilution; Common Law Trademark Infringement; Common Law Unfair Competition; Unjust Enrichment
Court: Southern District of Indiana
Judge: Judge Sarah Evans Barker
Referred To: Magistrate Judge Debra McVicker Lynch

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