The parties to this new Indiana trademark lawsuit have a long personal history, including previously being married, but we’re taking a look at the case for its intellectual property claims, i.e. trademark infringement between the marks JUMPSTART COMMUNICATIONS and JUMPSTART COMMUNICATION. The companies offer the same services, telecommunications construction services, in the same geographic area. The Complaint (below) provides some details about the defendant’s decision to choose a similar name, along with other allegedly damaging behavior, including solicitation of customers and employees.
Stay tuned for updates, although I don’t expect this case to last very long, at least the trademark claims. There are some additional claims that may linger even if the trademark issue is resolved, for example, by a name change.
Jumpstart Communications LLC v. Jumper et al.
Court Case Number: 1:24-cv-00447-HAB-SLC File Date: October 22, 2024 Plaintiff: Jumpstart Communications LLC Plaintiff Counsel: Carrie E. Sheridan, J.Blake Hike, Brendan C. Ruff, Stephanie Fleming of Carson LLP Defendant: Ryan Jumper, Jumpstart Communication LLC Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal Trademark Dilution, Federal Unfair Competition, RICO Violations, Breach of Fiduciary Duties, Tortious Interference with Contract, Tortious Interference with Business Relationship, Civil Theft Court: Northern District of Indiana Judge: Holly A. Brady Referred To: Susan L. Collins
A furniture store in Valparaiso, Indiana is accused of the unauthorized use of the Tempur-Pedic® trademark. The store had been an authorized dealer of Tempur-Pedic products until February 2, 2023, when the dealer relationship was terminated by Tempur Sealy. Upon termination of the relationship, the store was to cease all use of Tempur Sealy’s trademarks.
Despite multiple warnings by Tempur Sealy, the Complaint (below) details continued use by the furniture store, at least through August 27, 2023, of the Tempur-Pedic trademark on point-of-sale materials in the store, on exterior windows, and on the store’s website.
The Valparaiso store is alleged to have continued use of the Tempur-Pedic trademark “to attract customers for the purpose of selling non-authorized and competing products in a manner that falsely suggests and implies to consumers that Defendant maintains a relationship with Tempur Sealy as an authorized retailer.”
Stay tuned for updates.
Tempur Sealy International, Inc. et al. v. Luxury Mattress & Furniture, LLC
Court Case Number: 2:23-cv-00383-PPS-APR File Date: November 9, 2023 Plaintiff: Tempur Sealy International, Inc., Tempur-Pedic Management, Inc., Tempur-Pedic North America, LLC, Tempur World, LCC, Dan-Foam APS, Sealy Technology LLC Plaintiff Counsel: James N. Martin, Jr. of Steptoe & Johnson PLLC Defendants: Luxury Mattress & Furniture, LLC d/b/a Luxury Mattress & Furniture Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal False Advertising, Federal Trademark Dilution Court: Northern District of Indiana Judge: Philip P. Simon Referred To: Andrew P. Rodovich
This lawsuit highlights an awkward but common situation where a senior trademark owner and the USPTO disagree on whether a likelihood of confusion exists between two trademarks. If a junior user’s trademark is allowed to be registered by the USPTO, sometimes a senior user has no option but to bring a federal lawsuit and/or a TTAB cancellation proceeding.
HealthSmart Foods, an Evansville, Indiana-based producer of health food snacks (e.g. snack bars, snack bites, shakes, and candies) has filed a trademark lawsuit against Sweet Nothings, a small California company selling healthy family snacks like packaged smoothies and “nut butter bites.”
HealthSmart Foods sells a line of snack clusters, crisps and patties called SWEET NOTHINGS.
Sweet Nothings has obtained a trademark registration for its SWEET NOTHINGS trademark after successfully overcoming a 2(d) likelihood of confusion refusal citing the HealthSmart Foods’ trademark registration. The 2(d) refusal was seemingly overcome with evidence that the “SWEET NOTHINGS” trademark is very highly suggestive of the type of goods and therefore entitled to a very narrow scope of protection. Specifically, the evidence consisted of fourteen examples of entities in HealthSmart’s industry who use the marks “SWEET NOTHINGS” or “SWEET NOTHING” as a source indicator in connection with goods and services legally identical to HealthSmart’s goods:
Sweet Nothing Desserts, LLC – Located in Georgia, they bake cakes and cookies to order
Sweet Nothing Fine Cakes and Desserts – Located in Wisconsin, they bake high quality
cakes
Sweet Nothings Cake Shop – Located in Southern California, they offer a variety of
baked goods
Sweet Nothings Cakes – Located in Wisconsin, they bake cakes for special occasions
Sweet Nothings – Located in Ohio, they offer a variety of snacks
Sweet Nothings Cookies – Located in Arkansas, they offer custom cookies
Sweet Nothings Custom Cookies – Located in North Carolina, they offer custom cookies
Luv Ice Cream – Located in Minnesota, they offer “Sweet Nothings” branded fruit and
candy
Sweet Nothings – Located in New Jersey, they offer a variety of chocolates and candy
Sweet Nothings Snacks – Located in Utah, they offer a variety of snacks
Sweet Nothings – a brand of nougat cluster candy offered by Healthsmart, located in Indiana
Krissy’s Sweet Nothings – an online business that offers cakes
Sweet Nothings & Pastries – Located in Texas, they offer a variety of cupcakes and cakes
Sweet Nothings Cakes and Confections – Located in Missouri, they offer a variety of
cupcakes, cakes, pastries, and pies
HealthSmart Foods clearly does not agree with the USPTO’s decision to register Sweet Nothings’ trademark and now seeks the intervention of the Southern District of Indiana. I’d expect a similar “very highly suggestive” and “narrow scope of protection” defense to be presented, arguing that the Indiana company simply doesn’t have a strong enough trademark to enforce. Based on the location of the defendant (California), we might also see some preliminary jurisdictional challenges. Or, if the defendant doesn’t have the stomach for a legal fight in federal court in Indiana, a quick name change could be a potential outcome.
Stay tuned for updates.
HealthSmart Foods, Inc. v. Sweet Nothings, Inc. et al.
Court Case Number: 3:23-cv-00060 File Date: April 13, 2023 Plaintiff: HealthSmart Foods, Inc. Plaintiff Counsel: Joshua A. Claybourn of Jackson Kelly PLLC Defendant: Beth Porter, Sweet Nothings, Inc. Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, State Trademark Dilution, Injury to Business Reputation Court: Southern District of Indiana Judge: Matthew P. Brookman Referred To: Mark J. Dinsmore
The plaintiff in this trademark lawsuit is the American Automobile Association (AAA), i.e. that card in your wallet that you only pull out when you get a flat tire or lock your keys in the car. I’m actually surprised to read in the Complaint (below) that AAA has only 60 million members. I figured just about every driving American (231 million Americans held valid driving licenses in 2020) had a membership. For the low price of an annual membership, AAA is an absolute bargain when you’re stuck on the side of the highway far from home. Importantly for this lawsuit, AAA claims to also offer auto repair services.
The defendant is an Anderson, Indiana-based company with the patriotic name “All American Auto Hail Repair” using the internet domains AAA-HAILDENT-REPAIR.BUSINESS.SITE and AAAHAILDENTREPAIR.COM to advertise its services. The defendant is a small garage providing automobile dent removal services.
The defendant might challenge whether AAA really offers auto repairs under the AAA brands, or whether automobiles are just towed away by AAA trucks to have repairs performed by third-party repair companies. However, despite the surprisingly low number of members, AAA will still likely be considered a “famous” brand, which could grant it broader protection for ancillary goods/services like auto dent repairs.
It seems like a quick resolution, although perhaps legally unnecessary, would be for the defendant to just select a different domain name(s). AllAmericanAutoDentRepair.com is available right now, just sayin’. Some fights aren’t worth fighting.
Stay tuned for updates.
The American Automobile Association, Inc. v. All American Auto Hail Dent Repair LLC d/b/a AAA Hail Repair et al.
Case Number: 1:22-cv-00568-JPH-MJD File Date: March 23, 2022 Plaintiff: The American Automobile Association, Inc. Plaintiff Counsel: David O. Tittle, Elizabeth S. Traylor of Dentons Bingham Greenebaum LLP Defendant: All American Auto Hail Dent Repair LLC d/b/a AAA Hail Repair, Lavern Pflugh Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal Unfair Competition, Cybersquatting, Federal Trademark Dilution, Indiana Trademark Infringement, Indiana Trademark Dilution, Indiana Unfair Competition Court: Southern District of Indiana Judge: James Patrick Hanlon Referred To: Mark J. Dinsmore
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
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