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.
This is the second lawsuit filed by an energy drink company in a week!
The Plaintiff, Monster Energy Company, brings this lawsuit after several years of unsuccessful direct communications with the Defendant attempting to seek voluntary compliance with their asserted trademark rights.
Anybody who’s been to a gas station or watched the X Games will recognize the Monster “Claw Icon” logo, an “M-shaped claw design with jagged or irregular contours designed to evoke a claw having torn through the can or other material.” The Complaint (below) claims that Monster brand drinks are the best-selling energy drink in the United States. In October 2020, Monster was named the 4th Most Marketed Brand in Sports.
The Defendant, Bear KompleX, sells fitness equipment such as hand grips, weight belts, compression sleeves, and weight belts. They utilize a “Bear Claw” logo (not the donut) which looks like a slash (not the rocker) from a five-fingered bear paw. Bear KompleX’s logo often appears in various colors, including sometimes green and black.
Monster first contacted Bear KompleX in August 2019 demanding that they stop selling a “Grip, Calicure, & Doc Spartan Monster Bundle.” Later that month, Monster sent another letter warning Bear KompleX not to use a green claw mark. The Defendant apparently responded over the subsequent year by expanding its product offerings bearing a green claw mark, seemingly taunting Monster to take legal action.
That legal action has now been taken by Monster, and I’ll be looking forward to seeing Bear KompleX’s Answer. The Complaint asserts only a likelihood of confusion and no actual instances of confusion, so we can expect the Defendant to argue against any likelihood of confusion. They can point to differences between the logos, such as the Bear KompleX logo having five slashes, versus Monster’s three, and their bear claw facing upward rather than downward.
Stay tuned for updates.
Monster Energy Company v. R&R Medical, LLC d/b/a Bear KompleX
Case Number: 2:21-cv-00179-PPS-JPK File Date: Wednesday, May 26, 2021 Plaintiff: Monster Energy Corporation Plaintiff Counsel: James W. Riley, Jr., Jaclyn M. Flint of Riley Bennett Egloff LLP Defendant: R&R Medical d/b/a Bear KompleX Cause: Trademark Infringement, Trade Dress Infringement, False Designation of Origin, Federal Dilution, State Unfair Competition Court: Northern District of Indiana Judge: Philip P. Simon Referred To: Joshua P. Kolar
Evansville, Indiana-based Full Throttle Automotive, an auto repair shop, is being sued for trademark infringement by Energy Beverages, producer of Full Throttle energy drinks. The Complaint (below) highlights Energy Beverages’ long history of advertising in auto racing, including being the title sponsor of the National Hot Rod Association’s primary drag racing event.
The auto repair shop has also sponsored vehicles in motorsport events. Energy Beverages sent a cease-and-desist letter in October 2020, but Full Throttle Automotive has refused to discontinue use of its trademark.
Stay tuned for the Answer in the next few weeks, when we’ll likely find out how long Full Throttle Automotive has been using their “Full Throttle” name. They posted their current name and logo on Facebook back in 2014, and it’s likely they were using their name even before that, so they may have a strong acquiescence or laches defense based on many years of inaction from Energy Beverages.
A possible outcome could be a compromise whereby Full Throttle Automotive agrees not to sponsor NHRA events, presumably the most likely source of consumer confusion.
Energy Beverages LLC v. Full Throttle Automotive LLC
Case Number: 3:21-cv-00081-RLY-MPB File Date: Wednesday, May 19, 2021 Plaintiff: Energy Beverages LLC Plaintiff Counsel: James W. Riley, Jr., Jaclyn M. Flint of Riley Bennett Egloff LLP Defendant: Full Throttle Automotive LLC Cause: Trademark Infringement, Trade Dress Infringement, False Designation of Origin, Common Law Trademark Infringement, Unfair Competition Court: Southern District of Indiana Judge: Richard L. Young Referred To: Matthew P. Brookman
The parties in this lawsuit entered into an Asset Purchase Agreement in 2012, by which the Plaintiff purchased all assets and intellectual property of the truck repair company Triple LLL Truck Repair. The Plaintiff has continued to operate the business since the purchase, now located in Andrews, Indiana, and recently registered the “TRIPLE LLL” trademark with the United States Patent and Trademark Office.
The Defendant in the lawsuit is the original seller, who has now allegedly begun operating a new truck repair business under the same name, Triple LLL, out of a location that Plaintiff had previously used.
The Complaint alleges both a likelihood of confusion and instances of actual confusion.
Stay tuned for the Defendants’ Answer and a possible explanation for re-adopting the Triple LLL name (perhaps a violation of the Asset Purchase Agreement?).
Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al.
Court Case Number: 3:21-cv-00282-JD-MGG File Date: Monday, April 26, 2021 Plaintiff: Triple LLL Truck Repair, Inc. Plaintiff Counsel: William A. Ramsey of Barrett McNagny LLP Defendant: Triple LLL, Inc. Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition Court: Northern District of Indiana Judge: Jon E. DeGuilio Referred To: Michael G. Gotsch, Sr.
Indiana Intellectual Property Blog 