Tag Archives: False Designation of Origin

Microsoft sues in Indiana over Phony Tech Support Schemes

28 Monday Feb 2022

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

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Nearly seven out of ten Americans have encountered a technical support scam in the previous twelve months. Approximately ten percent of those respondents lost money from such scams. That’s not cool.

Microsoft is attempting to crack down on phony Microsoft support scams, in this particular instance focusing on a New Jersey individual operating a shell Indiana company called “Think Global.” The Complaint (below) details the scam and an interaction between Microsoft’s agent (presumably an attorney or technical investigator) and the alleged scammer(s).

The Complaint names an individual, a Mount Laurel, New Jersey resident (the sole member of the Indiana company), so perhaps there will be some justice for all the scammed individuals.

Stay tuned for updates.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al.

Case Number: 1:22-cv-00396-TWP-TAB
File Date: February 25, 2022
Plaintiff: Microsoft Corporation
Plaintiff Counsel: Jeff M. Barron of Barnes & Thornburg LLP, Bonnie MacNaughton, Meagan Himes of David Wright Tremaine LLP
Defendant: Solution Hat, LLC d/b/a/ Think Global et al,
Cause: Telemarketing and Consumer Fraud and Abuse Prevention Act, Telemarketing Sales Rule, Trademark Infringement, False Advertising, False Designation of Origin, Unfair Competition, Federal Trademark Dilution, Cybersquatting
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Tim A. Baker

Complaint:

Ligonier Perfumery sues Amazon over Persistent Counterfeiting

21 Friday Jan 2022

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

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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

Complaint:

IU Health sues Methodist Sports Medicine to stop use of “Methodist” name

02 Tuesday Nov 2021

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

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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

Complaint:

“Bubbles” vs. “Scoops and Sweet Bubbles” for Ice Cream Parlors…are you confused?

26 Thursday Aug 2021

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

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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.

Complaint:

GETGO vs GET 2 GO for Convenience Stores…Are You Confused?

15 Thursday Jul 2021

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

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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

Complaint:

Petition for Cancellation: