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.
Delta Faucet Company is going after Russian counterfeit faucet sellers in the Southern District of Indiana. In a lengthy and well-drafted Complaint (below), the Plaintiff details how a company’s trademarks are impacted by negative online marketplace reviews and unauthorized sellers. The lawsuit potentially exposes a gray market existing within Amazon’s “Fulfillment by Amazon” services that allows for counterfeit sales, leading to invalid product warranties, disgruntled consumers, and a damaged brand.
This lawsuit, along with Delta’s upgraded authorized seller policies (described in the Complaint), could serve as a good model for other companies dealing with online counterfeits. Although I predict the individual counterfeiters will simply disappear to continue on behind other aliases, Delta is likely more interested in getting an injunction to prevent further Amazon sales, setting precedent against counterfeiters and possibly allowing them to address the numerous unearned negative product reviews.
Stay tuned for updates.
Delta Faucet Company v. Iakovlev et al.
Court Case Number: 1:21-cv-00733-JRS-TAB File Date: March 25, 2021 Plaintiff: Delta Faucet Company Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP Defendant: Dmitrii Iakovlev, John Does 1-10 Cause: Federal Trademark Infringement, Federal Unfair Competition, Common Law Trademark Infringement, Common Law Unfair Competition, Indiana Crime Victim’s Relief Act, Deception Court: Southern District of Indiana Judge: James R. Sweeney II Referred To: Tim A. Baker
The Plaintiff in this trademark lawsuit, Vroom, is an online nationwide used car retailer based in New York, New York. own 8 U.S. trademark registrations for VROOM and the Vroom Logo, using the marks since at least 2014. The Plaintiff’s domain name is http://www.vroom.com.
The Defendants operate Vrooomsace, a used car retailer located in Indianapolis, Indiana. The Defendants’ use the domain name vrooomcars.com.
Asserting a likelihood of confusion, Plaintiff’s counsel first attempted to contact the Defendants on December 30, 2020, but apparently has received the runaround ever since, never receiving a substantive response from Defendants.
Their patience apparently has run out, resulting in this lawsuit. We’ll see whether Plaintiff finally gets a response. Unfortunately, often it takes a filed complaint for the opposing party to take a matter seriously. If not, this lawsuit could wind up with a default judgment.
Stay tuned for updates.
Vroom, Inc. v. Midwest Motors LLC et al.
Court Case Number: 1:21-cv-00715-TWP-TAB File Date: March 24, 2021 Plaintiff: Vroom, Inc. Plaintiff Counsel: David A.W. Wong, Caitlin R. Byczki, Kathleen S. Fennessy of Barnes & Thornburg LLP Defendant: Midwest Motors LLC dba Vrooomsace Car Selection, Khaled Alragwi Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement, Anticybersquatting Consumer Protection Act Court: Southern District of Indiana Judge: Tanya Walton Pratt Referred To: Tim A. Baker
One company’s efforts to expand its LA MICHOACANA MEAT MARKET brand from meat markets to grocery stores has moved into Indiana.
The Plaintiff, La Michoacana Meat Market, owns several federal trademark registrations for LA MICHOACANA MEAT MARKET for “Retail meat market stores.”
Seeking to claim undeniably broader protection over “LA MICHOACANA” in connection with grocery stores, the Plaintiff has brought numerous lawsuits over the last few years against small grocers using the term “Michoacana” (or some variation) in their name. Two new Indiana lawsuits are the 6th and 7th filed by La Michoacana against small grocers just this year.
“La Michoacana,” is a common term meaning someone or something from the state of Michoacán in western Mexico. Like an Iowan is from Iowa, or a Californian is from California (but not like a Hoosier is from Indiana). It is apparently a very popular term when naming “Mexican-themed grocery stores,” as evidenced by these lawsuits.
Due to the Defendants’ respective locations, one lawsuit was filed in the Southern District of Indiana and the other in the Northern District of Indiana. It will be interesting to track the two lawsuits side-by-side to see whether they reveal any significant differences between the Northern and Southern District.
Plaintiff’s Registered Mark
LA MICHOACANA MEAT MARKET for “Retail meat market stores”
Northern District Defendant’s Mark
CARNICERIA Y FRUTERIA LA MICHOACANA for a “Mexican-themed grocery store”
Southern District Defendant’s Mark
SUPER MERCADO JIREH POLLO MICHOACANO for a “Mexican-themed grocery store”
Between the two, I predict more difficulties for the Northern District Defendant. For some reason, the Northern District Defendant includes a link to the Plaintiff’s website on its Facebook page, which could be interpreted as evidence of intent to confuse or deceive. However, it’s not apparent from the Complaint (below) who added the link on the Facebook page, as it could be an incorrect Facebook-generated link or third-party edit.
Via this Google Maps image, the Northern District Defendant uses “La Michoacana” more prominently than the other literal elements of their brand (“Carniceria Y Fruteria”) on consumer-facing signage, which strengthens the Plaintiff’s argument for likelihood of consumer confusion.
Compare that to the signage of the Southern District Defendant, which uses the allegedly infringing term less prominently, and with a different spelling:
Further, the services seem different between the Northern and Southern District defendants, whereas the Northern District’s signage specifically advertises the sale of meats. Rather, the Southern District Defendant is a “tienda,” a small neighborhood grocery shop, different than a “retail meat market store.”
Perhaps in recognition of the possible narrow application of their “Retail meat market stores” description, La Michoacana has recently filed an additional federal trademark application for LA MICHOACANA SUPERMARKET for “Retail grocery stores.” That trademark application will be published for opposition on March 30, 2021, and might face challenges from among La Michoacana’s growing list of defendants.
The reality is that a single small grocery owner won’t want to spend much money defending their store name in federal court and will likely just choose to change the name, which the Plaintiff undoubtedly has considered. Buying new signage simply costs less than defending a federal lawsuit. Depending on how long each Defendant has been using their respective name, they may have a good acquiescence or laches defense.
Stay tuned for updates.
Sidenote: The LA MICHOACANA brand has also been the subject of a separate, but equally interesting, trademark dispute in connection with fruit popsicles.
La Michoacana Meat Market TM Holdings, LLC v. Lopez et al.
Court Case Number: 1:21-cv-00563-TWP-TAB File Date: March 9, 2021 Plaintiff: La Michoacana Meat Market TM Holdings, LLC Plaintiff Counsel: Ann O’Connor McCready, Neil R. Peluchette of Taft Stettinius & Hollister LLP Defendant: Josue Lopez, Supermercado Jireh LLC Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, Common Law Unfair Competition, Unjust Enrichment Court: Southern District of Indiana Judge: Tanya Walton Pratt Referred To: Tim A. Baker
La Michoacana Meat Market TM Holdings, LLC v. Galan et al.
Court Case Number: 2:21-cv-00087 File Date: March 9, 2021 Plaintiff: La Michoacana Meat Market TM Holdings, LLC Plaintiff Counsel: Ann O’Connor McCready of Taft Stettinius & Hollister LLP, Ruth M. Willars of Monty & Ramirez LLP (pro hac vice) Defendant: Cacimiro Galan, Carniceria y Fruteria La Morenita LLC Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition, Common Law Unfair Competition, Unjust Enrichment Court: Northern District of Indiana Judge: Philip P. Simon Referred To: John E. Martin
The Defendant in this lawsuit, a used car dealership management software company from Georgia, is accused of “repeated and brazen actions…designed to deceive and sow confusion in the marketplace.” Among the alleged actions of Defendant are illegitimate procurement of Plaintiff’s proprietary Run Lists (i.e. “lists containing information regarding automobile auctions”), use of a “bastardized” version of Plaintiff’s logo, and falsely claiming affiliation with Plaintiff.
The Defendant is also accused of inappropriately using Plaintiff’s AUTONIQ trademark in keyword advertising. The Defendant further used the AUTONIQ trademark in a deceptive email campaign which caused Plaintiff to receive inquiries from confused consumers.
Is it just me, or does the “bastardized” logo (see Complaint paragraph 23) actually look more like a goose rather than a “lower in quality” version of the Plaintiff’s eagle?
I’ll reserve judgment until the Answer is filed, as complaints can’t be relied on for the entire story, but this paints the picture of a Defendant who is willing to flout trademark law for a perceived competitive advantage.
Stay tuned for updates.
Adesa, Inc. and Autoniq, LLC v. Laser Appraiser, LLC
Court Case Number: 1:20-cv-02433-RLY-MJD File Date: September 21, 2020 Plaintiff: Adesa, Inc., Autoniq, LLC Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP Defendant: Laser Appraiser, LLC Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal False Designation of Origin, Federal False Advertising, Common Law Unfair Competition, Indiana Crime Victim’s Relief Act, Conversion Court: Southern District of Indiana Judge: Richard L. Young Referred To: Mark J. Dinsmore