Tag Archives: Federal Trademark Counterfeiting

Super 8 sues Past Franchisee for Violation of Franchise Agreement

09 Tuesday Apr 2019

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

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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: 

Counterfeit Bongs dominate the February Indiana IP Litigation Docket

01 Friday Mar 2019

Posted by in Copyright, Indiana, Intellectual Property, Litigation, Northern District of Indiana, Southern District of Indiana, Trade Dress, Trademark

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Two photography cases, including one from serial filer Richard Bell, and a breach of franchise agreement lawsuit…other than that, the February Indiana IP litigation docket was totally dominated by filings by RooR International. RooR’s defendants are Indiana smokeshops and their alleged sale of counterfeit bongs.

RooR markets itself as “the premier manufacturer of glass water pipes by emphasizing the brand’s unwavering use of quality materials and focusing on scientific principles which facilitate a superior smoking experience.”

As you can see from the screenshot below, RooR International has gone on a recent filing spree to combat the sale of counterfeit products:

Screen Shot 2019-03-01 at 9.18.39 AM.png

RooR’s defendants, small smoke and vape shops from across Indiana, are accused of Federal Trademark Counterfeiting, Federal Trademark Infringement, Federal False Designation of Origin and Federal Unfair Competition. Heavy stuff.

Sample RooR Complaint

The other non-bong, non-Bell cases involve the breach of a franchise agreement and the unauthorized use of a photograph of a New Year’s Eve fireworks display.

Baskin-Robbins Franchising LLC, BR IP Holder LLC v. Big Scoops, Inc., David M. Glasgow Jr.

Bachner v. USA Halloween Planet Inc.

Hoverboard Maker Swagway Sued by UL for Trademark Counterfeiting

19 Friday Feb 2016

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

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If you live anywhere near an electrical outlet (meaning all of you except those few remaining readers of the Indiana IP Zine), you’ve likely seen the Plaintiff’s trademark.

Plaintiff’s UL Certification Marks appear on “billions of household, consumer, commercial, and industrial products including refrigeration equipment, lighting products, cable, wiring, building materials, life safety vests, electric signs, batteries and power packs for computers and consumer electronics, traffic signals, sprinklers, and cash registers.”

The “UL” mark certifies that the product has been tested, inspected and satisfies applicable safety standards. Turn over whatever electrical device is closest and the “UL” probably is on there somewhere. (If not, back away slowly…) 

Defendant makes and sells the explosively popular Swagway hoverboard. Despite having never been tested nor inspected by UL, the Swagway product “allegedly used a mark that is identical to or substantially indistinguishable from the UL Certification Marks to falsely suggest that their Swagway hoverboard products have been tested, inspected, and certified by Plaintiff.”

Screen Shot 2016-02-19 at 6.13.13 AM

Further claims by Defendant’s CEO that the product was UL-certified along with significant safety concerns about the product, detailed in the Complaint below, led to this lawsuit.

UL LLC v. Swagway, LLC et al

Court Case Number: 3:16-cv-00075-RLM-CAN
File Date: Wednesday, February 17, 2016
Plaintiff: UL LLC
Plaintiff Counsel: Thomas F. Waggoner of Straub, Seamen & Allen, P.C.
Defendant: Swagway, LLC, Jianqing “Johnny” Zhu
Cause: Federal Trademark Counterfeiting, Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, False Advertising, Violation of the Illinois Deceptive Trade Practices Act, Violation of the Illinois Consumer Fraud and Deceptive Business Practices Act
Court: Northern District of Indiana
Judge: Robert L. Miller, Jr.
Referred To: Christopher A. Nuechterlein

Complaint:

Indiana Trademark Litigation Update – Best Chairs Incorporated v. Factory Direct Wholesale

09 Friday May 2014

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

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Plaintiff, based in Ferdinand, Indiana, sells chairs and other furniture under the BEST CHAIRS trademark. Defendant is allegedly selling competing furniture products under the BESTCHAIR and BEST CHAIR marks. Despite multiple contacts from Plaintiff, Defendant has refused to refrain from selling under the allegedly infringing mark.

Best Chairs Incorporated v. Factory Direct Wholesale, LLC

Court Case Number: 3:14-cv-00067-RLY-WGH
File Date: Wednesday, May 07, 2014
Plaintiff: Best Chairs Incorporated
Plaintiff Counsel: Amy B. Berge of Bingham Greenebaum Doll LLP
Defendant: Factory Direct Wholesale, LLC
Cause: Federal Trademark Counterfeiting, Federal Trademark Infringement, Unfair Competition, False Advertising, False Designation of Origin, State Unfair Competition, Indiana Crime Victims Act
Court: Southern District of Indiana
Judge: Judge Richard L. Young
Referred To: Magistrate Judge William G. Hussmann, Jr.

Indiana Trademark Litigation Update – Darryl D. Agler v. Westheimer Corporation

28 Friday Mar 2014

Posted by in Intellectual Property

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Alleged Infringing Product - Exhibit F to Complaint

Alleged Infringing Product – Exhibit F to Complaint

Plaintiff is a custom guitar-maker from Fort Wayne, Indiana. He has sold his high-quality guitars under the registered STRATOTONE trademark since 2007.

Plaintiff’s high-end guitars are “painstakingly hand-crafted from the wood of a customer’s choosing and features vintage hardware and pick-ups.” They generally retail for above $1,250. Defendant has allegedly flooded the market with lower quality, cheaper (between $200-400) guitars that bear the STRATOTONE Mark. Plaintiff discovered the infringing products at a NAMM show in 2010, where he confronted Defendant’s personnel.

Defendant, based in Illinois, attempted to file its own trademark application for STRATOTONE in December 2012 but was rejected based on Plaintiff’s registration. In response, Defendant has attempted to cancel Plaintiff’s registration and Plaintiff has brought this lawsuit.

Darryl D. Agler v. Westheimer Corporation

Court Case Number: 1:14-cv-00099
File Date: Thursday, March 27, 2014
Plaintiff: Darryl D. Agler
Plaintiff Counsel: Louis T. Perry, Amie P. Carter of Faegre Baker Daniels LLP
Defendant: Westheimer Corporation
Cause: Federal Unfair Competition, False Designation of Origin, Federal Trademark Infringement, Federal Trademark Counterfeiting, Common Law Unfair Competition, Common Law Trademark Infringement, Unjust Enrichment, Conversion, Deception, Indiana Crime Victim’s Relief Act
Court: Northern District of Indiana
Judge: Jon E. DeGuilio
Referred To: Roger B. Cosbey