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~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: False Designation of Origin

Plan B Games files Answer in Great Western Trail Litigation

01 Tuesday Oct 2019

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

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Common Law Unfair Competition, Conspiracy, False Designation of Origin, Federal Unfair Competition, Indiana Trademark Infringement, Mark J. Dinsmore, Sarah Evans Barker

Plan B Games has filed its Answer and Affirmative Defenses in the “Great Western Trail” lawsuit filed by Stronghold Games.

View this document on Scribd

The Answer is the standard cut-and-paste “Defendants lack knowledge or information sufficient to form a belief as to the truth of the allegations,” with just a few admissions to factual information.

The Affirmative Defenses, starting on Page 25,  challenge the Plaintiff’s rights in the GREAT WESTERN TRAIL trademark.

Stay tuned for updates.

Indie Game Studios, LLC v. Plan B Games, Inc et al.

Court Case Number: 1:19-cv-1492-SEB-MJD
File Date: Monday, April 15, 2019
Plaintiff: Indie Game Studios, LLC d/b/a Stronghold Games LLC
Plaintiff Counsel: Patrick J. Olmstead, Jr., John Bradshaw
Defendant: Plan B Games, Inc., Plan B Games Europe GMBH
Defendant Counsel: Burton S. Ehrlich of Ladas & Parry LLP, Darlene Seymour
Cause: Federal Unfair Competition, False Designation of Origin, Indiana Trademark Infringement, Common Law Unfair Competition, Conspiracy
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Mark J. Dinsmore

 

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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Dispute over TERMINATOR fireworks name leads to trademark lawsuit

08 Monday Jul 2019

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Trademark

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Common Law Unfair Competition, False Designation of Origin, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Matthew P. Brookman, Richard L. Young

This lawsuit involves a lengthy dispute, dating back almost two decades, over the ability to use the TERMINATOR trademark in connection with fireworks.

The Defendants apparently are using the TERMINATOR trademark pursuant to a license (which Plaintiff claims is invalid) so I’ll wait to see their Answer for more detailed information before I comment fully.

Stay tuned for updates.

North Central Industries, Inc. v. Winco Fireworks, Inc. et al.

Court Case Number: 1:19-cv-02720-RLY-MPB
File Date: Tuesday, July 2, 2019
Plaintiff: North Central Industries, Inc.
Plaintiff Counsel: John H. Brooke of Brooke | Stevens, P.C.
Defendant: Winco Fireworks, Inc., Winco Fireworks International, LLC, Creative Licensing Center Corp. 
Cause
: Federal Trademark Infringement, Federal Trademark Dilution, False Designation of Origin, Federal Unfair Competition, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Brookman

Complaint:

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Dispute over Great Western Trail publishing rights leads to trademark lawsuit

18 Thursday Apr 2019

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

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Tags

Common Law Unfair Competition, Conspiracy, False Designation of Origin, Federal Unfair Competition, Gaming, State Trademark Infringement

This is an interesting dispute involving board game publishing rights and exclusive trademark licensing.

The Complaint (below) references a contract by which the plaintiff, Stronghold Games, would exclusively publish a board game called “Great Western Trail” from August 3, 2016 to December 31, 2018. At that time, the game was owned by a German company called eggertspiele. The Complaint alleges that one of the obligations eggertspiele agreed to in the contract was it “will not during the term grant to any other person, firm or company any rights that would derogate from the grant made” in its contract with Stronghold Games.

Stronghold first released Great Western Trail in the U.S. in November 2016. It was very popular and quickly sold out. However, while seeking permission for a second print run of the game in June 2017, Stronghold learned that all assets of eggertspiele had been purchased by Plan B Games, the defendant.

Plan B Games asserted that it had no contract with Stronghold and it did not grant reprint rights to Stronghold. Subsequently, in January 2018, Plan B Games released its own version of Great Western Trail, seemingly identical but removing Stronghold’s logo from the packaging.

Screen Shot 2019-04-17 at 11.03.19 AM.png

I think this paragraph from the Complaint nicely sums up why Stronghold is unhappy with the current state of affairs: “Plan B was well aware of the pent-up demand for the Stronghold Version of this game in 2017, and the introduction of the nearly identical Plan B Version in early 2018 to satisfy the pent-up demand for the Stronghold Version improperly traded on Stronghold’s goodwill and has led to consumer confusion.”

Unfortunately, while the Complaint references the initial contract between Stronghold and eggertspiele granting publication rights, it didn’t include a copy of the contract for review. Although the contract apparently included language about minimum duration and exclusivity, it’s unclear whether the contract granted any property interest in the Great Western Trail trademark to Stronghold.

As general information, license agreements can give licensees standing to sue for infringement, provided that they grant an exclusive license and a property interest in the trademark. A trademark licensee’s proper use of a mark benefits the trademark owner, not the licensee. This allows trademark owners to rely on use by controlled licensees to prove continuing use of a trademark. Section 5 of the Lanham Act explicitly recognizes the acquisition of trademark rights by a licensor through first use of the mark by a controlled licensee.

However, in this situation, Stronghold appears to assert its own claim to property rights in the GREAT WESTERN TRAIL trademark distinct from the licensor, based on its own exclusive marketing efforts in the United States.

I look forward to reading the Answer, which hopefully will include the original contract. Stay tuned for updates.

Indie Game Studios, LLC v. Plan B Games, Inc et al.

Court Case Number: 1:19-cv-1492
File Date: Monday, April 15, 2019
Plaintiff: Indie Game Studios, LLC d/b/a Stronghold Games LLC
Plaintiff Counsel: Patrick J. Olmstead, Jr., John Bradshaw
Defendant: Plan B Games, Inc., Plan B Games Europe GMBH
Cause
: Federal Unfair Competition, False Designation of Origin, Indiana Trademark Infringement, Common Law Unfair Competition, Conspiracy
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Mark J. Dinsmore

Complaint:

View this document on Scribd

Super 8 sues Past Franchisee for Violation of Franchise Agreement

09 Tuesday Apr 2019

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

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Breach of Franchise Agreement, Common Law Unfair Competition, False Designation of Origin, Federal Trademark Counterfeiting, Federal Trademark Infringement, State Trademark Infringement

Well, at least it’s not another photography copyright case…

But it’s not really much of a trademark case either. The defendants are alleged to have continued using Plaintiff’s trademarks after the expiration of a previous Franchise Agreement.

What does make this case interesting is that it has a long history. The prior owner of the same Auburn, Indiana facility was involved in a similar 2016 lawsuit with Super 8.

How about this assertion in the Complaint? Do you agree? Indisputably?

16. The Super 8® Marks are indisputably among the most famous in the United States.

I can think of many brands (at least 100) more famous than Super 8 motels. But, you go, Super 8.

Super 8 found a resolution last time (new franchisee?) so maybe they’ll do the same this time. Stay tuned for updates.

Super 8 Worldwide, Inc. v. Harvee Properties et al

Court Case Number: 1:19-cv-00145
File Date: Thursday, April 4, 2019
Plaintiff: Super 8 Worldwide, Inc.
Plaintiff Counsel: Andrew M. Pendexter, James M. Hinshaw of Bingham Greenebaum Doll LLP
Defendant: Harvee Properties, LLC, Paresh Patel
Cause
: Federal Trademark Infringement, False Designation of Origin, Federal Trademark Counterfeiting, State Trademark Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Theresa L. Springmann
Referred To: Susan L. Collins

Complaint: 

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