• Home
  • About
  • Contact
  • Disclaimer

Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: False Designation of Origin

VROOM Online Car Dealer Sues Indianapolis-based VROOOMSACE Dealership for Trademark Infringement

26 Friday Mar 2021

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

≈ Leave a comment

Tags

Anticybersquatting Consumer Protection Act, Common Law Trademark Infringement, Common Law Unfair Competition, False Designation of Origin, Federal Trademark Infringement, Federal Unfair Competition, Tanya Walton Pratt, Tim A. Baker

The Plaintiff in this trademark lawsuit, Vroom, is an online nationwide used car retailer based in New York, New York. own 8 U.S. trademark registrations for VROOM and the Vroom Logo, using the marks since at least 2014. The Plaintiff’s domain name is http://www.vroom.com.

The Defendants operate Vrooomsace, a used car retailer located in Indianapolis, Indiana. The Defendants’ use the domain name vrooomcars.com.

Asserting a likelihood of confusion, Plaintiff’s counsel first attempted to contact the Defendants on December 30, 2020, but apparently has received the runaround ever since, never receiving a substantive response from Defendants.

Their patience apparently has run out, resulting in this lawsuit. We’ll see whether Plaintiff finally gets a response. Unfortunately, often it takes a filed complaint for the opposing party to take a matter seriously. If not, this lawsuit could wind up with a default judgment.

Stay tuned for updates.

Vroom, Inc. v. Midwest Motors LLC et al.

Court Case Number: 1:21-cv-00715-TWP-TAB
File Date: March 24, 2021
Plaintiff: Vroom, Inc.
Plaintiff Counsel: David A.W. Wong, Caitlin R. Byczki, Kathleen S. Fennessy of Barnes & Thornburg LLP
Defendant: Midwest Motors LLC dba Vrooomsace Car Selection, Khaled Alragwi
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement, Anticybersquatting Consumer Protection Act
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Tim A. Baker

Complaint:

View this document on Scribd

LA MICHOACANA Grocery Trademark War Expands into Indiana

10 Wednesday Mar 2021

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

≈ Leave a comment

Tags

Common Law Unfair Competition, False Designation of Origin, Federal Trademark Infringement, John E. Martin, Philip P. Simon, Tanya Walton Pratt, Tim A. Baker, Unfair Competition, Unjust Enrichment

One company’s efforts to expand its LA MICHOACANA MEAT MARKET brand from meat markets to grocery stores has moved into Indiana.

The Plaintiff, La Michoacana Meat Market, owns several federal trademark registrations for LA MICHOACANA MEAT MARKET for “Retail meat market stores.”

Seeking to claim undeniably broader protection over “LA MICHOACANA” in connection with grocery stores, the Plaintiff has brought numerous lawsuits over the last few years against small grocers using the term “Michoacana” (or some variation) in their name. Two new Indiana lawsuits are the 6th and 7th filed by La Michoacana against small grocers just this year.

“La Michoacana,” is a common term meaning someone or something from the state of Michoacán in western Mexico. Like an Iowan is from Iowa, or a Californian is from California (but not like a Hoosier is from Indiana). It is apparently a very popular term when naming “Mexican-themed grocery stores,” as evidenced by these lawsuits.

Due to the Defendants’ respective locations, one lawsuit was filed in the Southern District of Indiana and the other in the Northern District of Indiana. It will be interesting to track the two lawsuits side-by-side to see whether they reveal any significant differences between the Northern and Southern District.

Plaintiff’s Registered MarkLA MICHOACANA MEAT MARKET for “Retail meat market stores” 
Northern District Defendant’s MarkCARNICERIA Y FRUTERIA LA MICHOACANA for a “Mexican-themed grocery store”
Southern District Defendant’s MarkSUPER MERCADO JIREH POLLO MICHOACANO for a “Mexican-themed grocery store”

Between the two, I predict more difficulties for the Northern District Defendant. For some reason, the Northern District Defendant includes a link to the Plaintiff’s website on its Facebook page, which could be interpreted as evidence of intent to confuse or deceive. However, it’s not apparent from the Complaint (below) who added the link on the Facebook page, as it could be an incorrect Facebook-generated link or third-party edit.

Via this Google Maps image, the Northern District Defendant uses “La Michoacana” more prominently than the other literal elements of their brand (“Carniceria Y Fruteria”) on consumer-facing signage, which strengthens the Plaintiff’s argument for likelihood of consumer confusion.

Compare that to the signage of the Southern District Defendant, which uses the allegedly infringing term less prominently, and with a different spelling:

Further, the services seem different between the Northern and Southern District defendants, whereas the Northern District’s signage specifically advertises the sale of meats. Rather, the Southern District Defendant is a “tienda,” a small neighborhood grocery shop, different than a “retail meat market store.”

Perhaps in recognition of the possible narrow application of their “Retail meat market stores” description, La Michoacana has recently filed an additional federal trademark application for LA MICHOACANA SUPERMARKET for “Retail grocery stores.” That trademark application will be published for opposition on March 30, 2021, and might face challenges from among La Michoacana’s growing list of defendants.

The reality is that a single small grocery owner won’t want to spend much money defending their store name in federal court and will likely just choose to change the name, which the Plaintiff undoubtedly has considered. Buying new signage simply costs less than defending a federal lawsuit. Depending on how long each Defendant has been using their respective name, they may have a good acquiescence or laches defense.

Stay tuned for updates.

Sidenote: The LA MICHOACANA brand has also been the subject of a separate, but equally interesting, trademark dispute in connection with fruit popsicles.

La Michoacana Meat Market TM Holdings, LLC v. Lopez et al.

Court Case Number: 1:21-cv-00563-TWP-TAB
File Date: March 9, 2021
Plaintiff: La Michoacana Meat Market TM Holdings, LLC
Plaintiff Counsel: Ann O’Connor McCready, Neil R. Peluchette of Taft Stettinius & Hollister LLP
Defendant: Josue Lopez, Supermercado Jireh LLC
Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, Common Law Unfair Competition, Unjust Enrichment
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Tim A. Baker

Complaint:

View this document on Scribd

La Michoacana Meat Market TM Holdings, LLC v. Galan et al.

Court Case Number: 2:21-cv-00087
File Date: March 9, 2021
Plaintiff: La Michoacana Meat Market TM Holdings, LLC
Plaintiff Counsel: Ann O’Connor McCready of Taft Stettinius & Hollister LLP, Ruth M. Willars of Monty & Ramirez LLP (pro hac vice)
Defendant: Cacimiro Galan, Carniceria y Fruteria La Morenita LLC
Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, Common Law Unfair Competition, Unjust Enrichment
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: John E. Martin

Complaint:

View this document on Scribd

Rural Internet Provider sues Ex-Employee for False Designation of Origin, Trade Secret Violations, Breach of Contract

09 Tuesday Mar 2021

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

≈ Leave a comment

Tags

Breach of Contract (Competing During Employment), Breach of Contract (Confidentiality), Breach of Contract (Fiduciary Duty of Loyalty), Civil Conspiracy, False Designation of Origin, Indiana Uniform Trade Secrets Act, Mark J. Dinsmore, Richard L. Young, Unfair Competition, Violation of the Defend Trade Secrets Act of 2016

This lawsuit involves a rural broadband internet provider and an ex-employee who allegedly misappropriated proprietary information to set up a competing company.

The primary Defendant, Jarman, is alleged to have undertaken several actions contrary to the interest of his employer, as well as making false representations of an ongoing affiliation with the Plaintiff, Watch Communications of Rushville, Indiana, while conducting business on behalf of his new company. While much of the Complaint (below) implicates employment law issues, readers of the Indiana Intellectual Property Blog will be particularly interested in the “false designation of origin” claim based on an unregistered trademark, in addition to the trade secret claims. The Defendants are alleged to have misappropriated Plaintiff’s financial records, business, marketing, and strategic plans, customer lists, and personnel and payroll records regarding current and former employees, vendors, and suppliers.

As a reminder, a Complaint represents just one party’s side of the story, and the Defendants’ Answer may present the same scenarios in a much different light. Often the truth lies somewhere in the middle. Stay tuned for updates, particularly on the intellectual property-related claims.

Watch Communications v. Jarman et al.

Court Case Number: 1:21-cv-00550-RLY-MJD
File Date: Monday, March 8, 2021
Plaintiff: W.A.T.C.H. TV Company d/b/a Watch Communications
Plaintiff Counsel: Rachel J. Guin, Andrew P. Simmons of Rothberg Logan & Warsco LLP
Defendant: Greg Jarman, Roger Criblez, Tom Kolb, B.Todd Mosby, GRiT Technologies, LLC
Cause: False Designation of Origin, Unfair Competition, Breach of Contract (Confidentiality), Breach of Contract (Competing During Employment), Breach of Contract (Fiduciary Duty of Loyalty), Indiana Uniform Trade Secrets Act, Violation of the Defend Trade Secrets Act of 2016, Civil Conspiracy, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Mark J. Dinsmore

Complaint:

View this document on Scribd

Splenda Manufacturer sues Speedway Gas Stations over Knock-off Chinese Sweetener

10 Wednesday Feb 2021

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

≈ Leave a comment

Tags

Common Law Trade Dress Infringement, Common Law Unfair Competition, False Advertising, False Designation of Origin, False or Misleading Representation of Fact, Federal Trademark Dilution, Federal Unfair Competition, State Trademark Dilution, Trade Dress Infringement

Splenda®-loving Speedway patrons beware! Or not.

In the second gas station-related lawsuit this week, Speedway gas stations are accused of providing knock-off Chinese-manufactured Splenda, the well-known sugar substitute sweetener. For our health-minded blog readers who don’t touch the stuff or just crave real sugar, Splenda sweetener is actually sucralose, a low-calorie sugar-substitute first approved by the FDA in 1998.

Splenda’s manufacturer claims trade dress protection for sucralose sold in yellow packets, of which diner-frequenters, coffee and tea drinkers probably recognize:

Speedway is accused of providing knock-off Chinese sucralose sweetener in yellow packaging at their gas station coffee kiosks. The Plaintiff asserts that “Speedway’s yellow-colored packets are not provided to customers with sufficient cues to the consumer to prevent the mistaken belief by consumers that the yellow packets are in fact SPLENDA® Brand Sweetener.”

Blog readers, would you see the above packet at a coffee kiosk and automatically assume that it is Splenda®? If so, reach out to Plaintiff’s attorney, because that’s the basis of this lawsuit. (Aside: Did you know there are over 50 shades of yellow?)

Splenda’s manufacturer asserts trade dress infringement, unfair competition, false advertising, and dilution claims against Speedway. This will be an interesting case to follow, with both parties being fairly large companies, and presumably with Speedway gas stations already providing their yellow “knock-off” sweetener widely. Not being a coffee drinker (although married to one), I can only guess at what goes through the coffee drinker’s mind before consuming that cherished travel-sized cup of lukewarm gas station bitter brown water, but I really wonder if they are confused by the yellow packaging or whether they care at all. I suspect coffee drinkers grabbing a free packet of sweetener from a gas station kiosk don’t care at all what type of sucralose they’re ingesting, so long as the delivery medium is decently warm and caffeinated. Speedway’s packaging does not mention “Splenda” whatsoever, just listing ingredients of dextrose and sucralose. Apparently, it’s the use of the color yellow (but which yellow?) that bought Speedway this lawsuit.

A fairly easy potential compromise would be for Speedway to provide their sucralose sweetener in non-yellow packaging, but I’m guessing Speedway will decide to challenge Splenda’s asserted monopoly over the color yellow for sweeteners. Splenda’s arguably broad trade dress might need to be narrowed to a certain yellow shade (or shades), rather than the entire spectrum of yellow.

Either way, this lawsuit will be interesting to follow…stay tuned for updates.

Heartland Consumer Products LLC v. Speedway, LLC

Court Case Number: 1:21-cv-00322-JMS-TAB
File Date: February 8, 2021
Plaintiff: Heartland Consumer Products LLC
Plaintiff Counsel: Holiday W. Banta, Jessa DeGroote, Alice Kelly of ICE MILLER LLP
Defendant: Speedway, LLC
Cause: Trade Dress Infringement, Common Law Trade Dress Infringement, False Designation of Origin, Federal Unfair Competition, False or Misleading Representation of Fact, False Advertising, Common Law Unfair Competition, Federal Trademark Dilution, State Trademark Dilution
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Tim A. Baker

Complaint:

View this document on Scribd

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

≈ Leave a comment

Tags

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.

UPDATE: This lawsuit was dismissed with prejudice on January 30, 2020.

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

← Older posts

Categories

  • Artists (20)
  • Authors (18)
  • Bloggers (36)
  • Branding (25)
  • Business Law (5)
  • Copyright (254)
  • Dear KLF Legal (4)
  • Defamation (5)
  • Entertainment Law (14)
  • Estate Law (2)
  • Family Law (2)
  • Fashion (4)
  • Federal Initiatives (33)
  • Indiana (473)
  • Indianapolis (42)
  • Intellectual Property (526)
  • Just for Fun (25)
  • KLF Legal (19)
  • Legislation (34)
  • Litigation (464)
  • Musicians (10)
  • Nonprofit (5)
  • Northern District of Indiana (145)
  • Patent (42)
  • Privacy (15)
  • Right of Publicity (8)
  • Social Media (53)
  • Southern District of Indiana (270)
  • Stories from the Week that Was (42)
  • Supreme Court (13)
  • Tech Developments (119)
  • Trade Dress (13)
  • Trade Secret (14)
  • Trademark (275)
  • What I'm Reading (8)

Bloggers Copyright Federal Initiatives Indiana Indianapolis Intellectual Property Legislation Litigation Northern District of Indiana Patent Social Media Southern District of Indiana Stories from the Week that Was Tech Developments Trademark

Blog at WordPress.com.

Cancel

 
Loading Comments...
Comment
    ×