Tag Archives: False Designation of Origin

Kingston, Indiana Grocery Store sued for Trademark Infringement

09 Friday Aug 2024

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

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In addition to using an identical name, the defendant in the latest Indiana trademark lawsuit is accused of submitting a fraudulent letter to the Indiana Secretary of State claiming permission to use the name. The Kingston, Indiana grocery store is allegedly operating as “My Market” without the authorization of the plaintiff, who has prior rights in the name.

The plaintiff and defendants likely have some personal background that isn’t discussed in the Complaint (below). If so, the Answer may shed more light on why the defendant thought it had permission to use the name “My Market.”

Stay tuned for updates.

My Market LLC v. Batth Markets Inc. et al.

Court Case Number: 1:24-cv-01335-MPB-MJD
File Date: August 6, 2024
Plaintiff: My Market LLC
Plaintiff Counsel: C. Christopher Dubes, Amanda C. Delekta of Carson LLP
Defendant: Batth Markets Inc., Chhaterpal Singh
Cause: Federal Trademark Infringement, False Designation of Origin, Trademark Dilution, Federal Unfair Competition, Conversion
Court: Southern District of Indiana
Judge: Matthew P. Brookman
Referred To: Mark J. Dinsmore

Complaint:

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:

Freedom Mortgage (with Roundpoint subsidiary) sues Freedompoint for Trademark Infringement

17 Friday Feb 2023

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

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The plaintiff in this trademark lawsuit, Freedom Mortgage Corporation, has been providing mortgage banking services using its FREEDOM MORTGAGE trademark since December 1992. Freedom Mortgage also has a wholly owned subsidiary called Roundpoint which has provided mortgage banking services since January 2009.

In April 2021, the defendant, Freedompoint, LLC, began using the trademark FREEDOMPOINT in connection with mortgage banking services. The FREEDOMPOINT trademark was registered with the USPTO in August 2021 having received no “likelihood of confusion” refusal during the application process.

It seems that Freedom Mortgage disagrees with the USPTO, believing that there does exist a likelihood of confusion, considering FREEDOMPOINT to be an infringing combination of the FREEDOM MORTGAGE and ROUNDPOINT marks.

The combination argument is interesting, perhaps suggesting that consumers would incorrectly surmise that Freedom Mortgage, owner of the Roundpoint subsidiary, had simply merged the two companies. However, do consumers even know that Roundpoint is a wholly owned subsidiary of Freedom Mortgage? I reviewed both the Freedom Mortgage and Roundpoint websites and don’t see any mentions of the other company.

If consumers don’t have any reason to associate Roundpoint with Freedom Mortgage, then really there are just two applicable comparisons…Freedom Mortgage v. Freedompoint and Roundpoint vs. Freedompoint. The USPTO didn’t consider either to be confusingly similar but perhaps more “combination” evidence will be available for this lawsuit.

Stay tuned for Freedompoint’s Answer.

Freedom Mortgage Corporation v. Freedompoint, LLC

Court Case Number: 4:23-cv-00022-TWP-KMB
File Date: February 14, 2023
Plaintiff: Freedom Mortgage Corporation
Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendant: Freedompoint, LLC
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, State Trademark Infringement, Common Law Unfair Competition, Cancellation of U.S. Registration, Deception, Conversion, Forgery, Counterfeiting, Theft
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Kellie M. Barr

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: