Update 1/28/22: The case has been transferred to the Fort Wayne division and assigned a new case number.
The Plaintiffs in this trademark lawsuit are a “seventy year old grandmother” and her corporation, Annie Oakley Enterprises, Inc, a Ligonier, Indiana-based company which manufactures and sells health and beauty products like perfumes, essential oils, and lotions (“Annie Oakley”).
Along with 50 John Does selling counterfeit products on the Amazon online marketplace, Annie Oakley is suing Amazon for trademark infringement, false designation, and unfair competition. Amazon is apparently the first and only U.S. company on the U.S. Trade Representative’s “Notorious Market List,” a list of the worst online markets based on counterfeit product sales, copyright piracy, and trademark infringement.
The Complaint (below) details a long history of Annie Oakley attempting to deal with counterfeit products sold on Amazon, with little or no recourse from Amazon. The inferior counterfeit products have resulted in numerous consumer complaints from customers not aware they were buying counterfeits.
This David v. Goliath story will be interesting to follow. Can a small-town Indiana grandmother force the world’s most valuable public company to seriously address recurring intellectual property violations? Or will Amazon simply see a lawsuit like this as a “cost of doing business” and continue to allow counterfeits in their marketplace? Stay tuned for updates.
Gabet et al. v. Amazon.com, Inc. et al.
Case Number: 1:22-cv-00035-HAB-SLC File Date: January 20, 2022 Plaintiff: Renee Gabet, Annie Oakley Enterprises, Inc. Plaintiff Counsel: Paul B. Overhauser of Overhauser Law Offices, LLC Defendant: Amazon.com, Inc., John Does 1-50 Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition Court: Northern District of Indiana Judge: Holly A. Brady Referred To: Susan L. Collins
For nearly 100 years, Methodist Hospital of Indiana has been operated by the plaintiff Methodist Health Group and its predecessors.
In 1990, the defendant in this lawsuit, Thomas A. Brady Sports Medicine Center, P.C., began operating a sports medicine clinic on the Methodist Hospital campus called “Methodist Sports Medicine.” The clinic has now expanded to several locations around Central Indiana.
In 1997, plaintiff IU Health took over operation of Methodist Hospital and gained the exclusive right to use and sublicense the METHODIST trademark.
Jump forward to 2019 and the Defendant has apparently decided to locate a sports medicine clinic on a Franciscan Alliance health care campus, a major competitor of plaintiff IU Health.
As a result, IU Health wants the Defendant to stop using “Methodist” in their name, and the Defendant has apparently refused to comply, hence this lawsuit.
If everything is as it seems in the Complaint (below), I’d expect an eventual rebrand from the Defendant, but it’s interesting that it took a lawsuit for a rebrand to occur. A new home with a new hospital group surely calls for a brand refresh/update? Especially if you’re just a sublicensee of your original name. Either way, things are rarely exactly as a Complaint makes them seem. Stay tuned for the Defendant’s side of the story.
Indiana University Health, Inc et al. v. Thomas A. Brady Sports Medicine Center, P.C.
Case Number: 1:21-cv-02760-JMS-MJD File Date: November 1, 2021 Plaintiff: Indiana University Health, Inc., Methodist Health Group, Inc. Plaintiff Counsel: Louis T. Perry, Elizabeth A. Charles of Faegre Drinker Biddle & Reath LLP Defendant: Thomas A. Brady Sports Medicine Center, P.C. Cause: False Designation of Origin, Common Law Unfair Competition, Deception, Indiana Crime Victim’s Relief Act Court: Southern District of Indiana Judge: Jane Magnus-Stinson Referred To: Mark J. Dinsmore
Since 2004, the Plaintiff has operated an ice cream parlor called “Bubbles” in Michigan City, Indiana. The Plaintiff does not have a registered trademark. Their red, white and blue logo includes several bubbles and an ice cream cone.
In July 16, the Defendant opened a new ice cream parlor called “Scoops & Sweet Bubbles” just 1.5 miles from the Plaintiff’s store. Defendant’s logo is cyan, green and gray, with some abstract shapes and some textual elements describing their products, including bubble tea. It seems clear that “Sweet Bubbles” from Defendant’s name refers to the bubble tea on their latin-flavored menu. The Plaintiff’s menu does not include bubble tea.
The Complaint (below) asserts that Plaintiff first proposed an amicable resolution but was ignored and then overtly rejected. They now seek court intervention.
What do you think? Is Scoops & Sweet Bubbles confusingly similar to Bubbles, particularly considering they are located only 1.5 miles apart? The closest nearby business with “bubbles” in the name is Tiny Bubbles of Chesterton, a car wash 11 miles down the highway.
Stay tuned for updates.
Bubbles Ice Cream Parlor & Pie Shoppe, Inc. v. Scoops & Sweet Bubbles, LLC
Case Number: 3:21-cv-00634 File Date: Wednesday, August 25, 2021 Plaintiff: Bubbles Ice Cream Parlor & Pie Shoppe, Inc. Plaintiff Counsel: Gary E. Hood, Brian Anderson, John Snow of Polsinelli PC Defendant: Scoops & Sweet Bubbles, LLC Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, State Trademark Infringement, Common Law Unfair Competition Court: Northern District of Indiana Judge: Damon R. Leichty Referred To: Michael G. Gotsch, Sr.
Giant Eagle is the owner of GETGO® convenience stores, with 269 locations, including four (4) stores in Fort Wayne, Indiana that were opened in 2018. Giant Eagle owns several U.S. trademark registrations for GETGO, claiming a date of first use of March 2003 for “Convenience store services, including fuel.”
The Defendants are the owners of three (3) retail convenience stores named GET 2 GO in Fort Wayne, Indiana. The Defendants own two U.S. trademark registrations for the GET 2 GO trademark, claiming a date of first use of June 2011. The Plaintiff has contemporaneously filed a Petition for Cancellation (see below) against the Defendants’ registrations.
The Plaintiffs sent communications to Defendants via counsel in February 2020 and April 2021. Per the Complaint (below), “Defendants, through counsel, indicated that they were ”simply not interested” in a business resolution or in discontinuing the use of the Infringing Marks.”
The Complaint doesn’t mention any instances of actual confusion.
Given the decade-long use of their own trademarks, coexisting peacefully with apparently no instances of consumer confusion, I’m not surprised that the Defendants have opted to stand their ground and not change their name. I’ll be interested to see the affirmative defenses and possibly counterclaims in the Defendants’ Answer. Stay tuned for updates on both the lawsuit and the cancellation proceeding.
Phoenix Intangibles Holding Company et al vs. Virk Brothers, LLC et al
Case Number: 1:21-cv-00263-HAB-SLC File Date: Friday, July 9, 2021 Plaintiff: Phoenix Intangibles Holding Company, Giant Eagle, Inc. Plaintiff Counsel: Anthony M. Eleftheri of Drewry Simmons Vornehm, LLC Defendant: Virk Brothers, LLC, Charanjit Singh Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement Court: Northern District of Indiana Judge: Holly A. Brady Referred To: Susan L. Collins
Update 6/2/2021: I went to the grocery store today searching for Egg White Wraps and didn’t find any. Is this really a thing?
Here’s a fairly interesting trade dress lawsuit involving a food product I didn’t even know existed…egg white wraps. Apparently, egg white wraps were the “number one new product in dairy departments…in 2020” (see Complaint below). It begs the question, how many other new dairy products were released in 2020? Dairy product connoisseurs, please educate me in the comments below.
As general information, “trade dress” comprises the characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. However, if trade dress is “functional,” meaning the characteristics are “essential to the use or purpose of the article or if it affects the cost or quality of the article,” it cannot serve as a trademark. See TMEP 1202.02(a).
The Plaintiff in this lawsuit, Egglife, is accusing the Defendant, Crepini, of adopting packaging that is too similar to their own egg white wrap packaging.
Here are the specific elements that the Plaintiff consider to be their own protectable trade dress:
a. Interwoven and overlapping shapes with rounded rather than squared edges that weave in and out of the front of the package
b. The interwoven and overlapping shapes with rounded rather than squared edges are comprised of different, yellow-based colors
c. Transparent center window with overlaid graphics
d. Prominent display of “egg white wraps” in the center of the transparent window in the center of the front of the package
e. Lowercase “egglife”brand straight across the upper quarter of the front of the package
f. Smaller arched text centered over the “egglife” brand near the top of the front of the package
g. All capitalized“KEEP REFRIGERATED” text at bottom of the front of the package
h. Lowercase “egglife”brand straight across the upper quarter of the front of the package
i. Smaller arched text centered over the “egglife” brand near the top of the front of the package
j. All capitalized “KEEP REFRIGERATED” text at bottom of the front of the package
As mentioned above, I’m certainly no expert on egg white wrap packaging, but I have been in a grocery store before, and some/most of the above characteristics seem pretty standard for all types of food products. Food marketers please weigh in below, but many of these characteristics seem almost necessary, i.e. functional, given the limited packaging size for a small food product.
However, the Complaint highlights frequent changes to the Defendant’s packaging from early 2018 up to the 2019 rebrand to the current allegedly infringing packaging, of which the Defendant’s packaging now supposedly copies the characteristics of Plaintiff’s packaging:
a. Interwoven and overlapping shapes with rounded rather than squared edges b. The interwoven and overlapping shapes with rounded rather than squared edges are comprised of nearly identical yellow-based colors c. Transparent center window with overlaid graphics d. Lower case brand straight across the upper quarter of the packaging e. Smaller arched text centered over the top of the brand near the top of the packaging f. Abandoned trademarked EGG THINS in favor of “egg wraps” g. Abandoned the long-used CREPINI Iand crown design trademark in favor of lowercase font across the top of the packaging h. Added “Keep Refrigerated” messaging in all capital letters to the bottom of the packaging
As an unsophisticated egg white wrap consumer, both packagings frankly appear to me just like many other packagings in a grocery store. I’m reminded of flour tortilla packaging. Due in large part to FDA labeling requirements, food producers/marketers have to pack a lot of functional information about a product into a very small space. The use of the colors yellow and white in connection with an egg product seem to be almost a requisite. A transparent center window allowing a consumer to examine the food product seems highly necessary.
The Complaint does include some very limited evidence of instances of actual confusion by Costco consumers posting on Facebook. Considering the type of people that feel a need to post on social media about their Costco purchases, I’m not sure whether I’d consider those to be “significant” instances of confusion. However, they do exist and add an extra wrinkle to the lawsuit and Crepini’s possible defenses and responsibility to avoid consumer confusion.
This trade dress lawsuit will be interesting to follow. Stay tuned for updates.
Egglife Foods, Inc. v. Crepini, LLC
Case Number: 3:21-cv-00388 File Date: Friday, May 28, 2021 Plaintiff: Egglife Foods, Inc. Plaintiff Counsel: Louis T. Perry, David R. Merritt of Faegre Drinker Biddle & Reath LLP Defendant: Crepini, LLC Cause: Trade Dress Infringement, False Designation of Origin, Common Law Unfair Competition, Deception Court: Northern District of Indiana Judge: Jon E. DeGuilio Referred To: Michael G. Gotsch, Sr.
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