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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: Federal Trademark Dilution

AAA sues Anderson’s All American Auto for Trademark Infringement, Cybersquatting

24 Thursday Mar 2022

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

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Cybersquatting, Federal False Designation of Origin, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Indiana Trademark Dilution, Indiana Trademark Infringement, Indiana Unfair Competition, James Patrick Hanlon, 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

Complaint:

View this document on Scribd

Microsoft sues in Indiana over Phony Tech Support Schemes

28 Monday Feb 2022

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

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False Advertising, False Designation of Origin, Federal Trademark Dilution, Tanya Walton Pratt, Telemarketing and Consumer Fraud and Abuse Prevention Act, Telemarketing Sales Rule, Tim A. Baker, Trademark Infringement, Unfair Competition

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:

View this document on Scribd

Splenda Manufacturer sues Speedway Gas Stations over Knock-off Chinese Sweetener

10 Wednesday Feb 2021

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trade Dress, Trademark

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Common Law Trade Dress Infringement, Common Law Unfair Competition, False Advertising, False Designation of Origin, False or Misleading Representation of Fact, Federal Trademark Dilution, Federal Unfair Competition, State Trademark Dilution, Trade Dress Infringement

Splenda®-loving Speedway patrons beware! Or not.

In the second gas station-related lawsuit this week, Speedway gas stations are accused of providing knock-off Chinese-manufactured Splenda, the well-known sugar substitute sweetener. For our health-minded blog readers who don’t touch the stuff or just crave real sugar, Splenda sweetener is actually sucralose, a low-calorie sugar-substitute first approved by the FDA in 1998.

Splenda’s manufacturer claims trade dress protection for sucralose sold in yellow packets, of which diner-frequenters, coffee and tea drinkers probably recognize:

Speedway is accused of providing knock-off Chinese sucralose sweetener in yellow packaging at their gas station coffee kiosks. The Plaintiff asserts that “Speedway’s yellow-colored packets are not provided to customers with sufficient cues to the consumer to prevent the mistaken belief by consumers that the yellow packets are in fact SPLENDA® Brand Sweetener.”

Blog readers, would you see the above packet at a coffee kiosk and automatically assume that it is Splenda®? If so, reach out to Plaintiff’s attorney, because that’s the basis of this lawsuit. (Aside: Did you know there are over 50 shades of yellow?)

Splenda’s manufacturer asserts trade dress infringement, unfair competition, false advertising, and dilution claims against Speedway. This will be an interesting case to follow, with both parties being fairly large companies, and presumably with Speedway gas stations already providing their yellow “knock-off” sweetener widely. Not being a coffee drinker (although married to one), I can only guess at what goes through the coffee drinker’s mind before consuming that cherished travel-sized cup of lukewarm gas station bitter brown water, but I really wonder if they are confused by the yellow packaging or whether they care at all. I suspect coffee drinkers grabbing a free packet of sweetener from a gas station kiosk don’t care at all what type of sucralose they’re ingesting, so long as the delivery medium is decently warm and caffeinated. Speedway’s packaging does not mention “Splenda” whatsoever, just listing ingredients of dextrose and sucralose. Apparently, it’s the use of the color yellow (but which yellow?) that bought Speedway this lawsuit.

A fairly easy potential compromise would be for Speedway to provide their sucralose sweetener in non-yellow packaging, but I’m guessing Speedway will decide to challenge Splenda’s asserted monopoly over the color yellow for sweeteners. Splenda’s arguably broad trade dress might need to be narrowed to a certain yellow shade (or shades), rather than the entire spectrum of yellow.

Either way, this lawsuit will be interesting to follow…stay tuned for updates.

Heartland Consumer Products LLC v. Speedway, LLC

Court Case Number: 1:21-cv-00322-JMS-TAB
File Date: February 8, 2021
Plaintiff: Heartland Consumer Products LLC
Plaintiff Counsel: Holiday W. Banta, Jessa DeGroote, Alice Kelly of ICE MILLER LLP
Defendant: Speedway, LLC
Cause: Trade Dress Infringement, Common Law Trade Dress Infringement, False Designation of Origin, Federal Unfair Competition, False or Misleading Representation of Fact, False Advertising, Common Law Unfair Competition, Federal Trademark Dilution, State Trademark Dilution
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Tim A. Baker

Complaint:

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Dispute over TERMINATOR fireworks name leads to trademark lawsuit

08 Monday Jul 2019

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Trademark

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Tags

Common Law Unfair Competition, False Designation of Origin, Federal Trademark Dilution, Federal Trademark Infringement, Federal Unfair Competition, Matthew P. Brookman, Richard L. Young

This lawsuit involves a lengthy dispute, dating back almost two decades, over the ability to use the TERMINATOR trademark in connection with fireworks.

The Defendants apparently are using the TERMINATOR trademark pursuant to a license (which Plaintiff claims is invalid) so I’ll wait to see their Answer for more detailed information before I comment fully.

Stay tuned for updates.

North Central Industries, Inc. v. Winco Fireworks, Inc. et al.

Court Case Number: 1:19-cv-02720-RLY-MPB
File Date: Tuesday, July 2, 2019
Plaintiff: North Central Industries, Inc.
Plaintiff Counsel: John H. Brooke of Brooke | Stevens, P.C.
Defendant: Winco Fireworks, Inc., Winco Fireworks International, LLC, Creative Licensing Center Corp. 
Cause
: Federal Trademark Infringement, Federal Trademark Dilution, False Designation of Origin, Federal Unfair Competition, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Brookman

Complaint:

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Sunman BP sued for selling counterfeit Oakley sunglasses

18 Friday May 2018

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

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Tags

Common Law Trademark Infringement, Common Law Unfair Competition, Counterfeiting, Debra McVicker Lynch, False Advertising, False Designation of Origin, Federal Trademark Dilution, Federal Trademark Infringement, Tanya Walton Pratt, Unjust Enrichment

The defendants in this counterfeiting lawsuit are the owners and operators of a BP gas station located in Sunman, Indiana, who are accused of selling counterfeit Oakley sunglasses. The counterfeit products were observed for sale in the store by Plaintiff’s representatives.

The plaintiff, Oakley, Inc., seeks damages and injunctive relief.

Oakley, Inc. v. Sunman BP et al.

Court Case Number: 4:18-cv-00085-TWP-DML
File Date: Wednesday, May 16, 2018
Plaintiff: Oakley, Inc.
Plaintiff Counsel: Jason D. Groppe, Esq., Logan S. Bednarczuk, Esq.
Defendants: Swami Property Sunman Inc. dba Sunman BP, Chirag Patel, Does 1-10
Cause: Federal Trademark Infringement, False Designation of Origin, False Advertising, Federal Trademark Dilution, Common Law Trademark Infringement, Common Law Unfair Competition, Unjust Enrichment
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Debra McVicker Lynch

Complaint:

View this document on Scribd

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