Tag Archives: Federal Trademark Infringement

Freedom Mortgage (with Roundpoint subsidiary) sues Freedompoint for Trademark Infringement

17 Friday Feb 2023

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

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The plaintiff in this trademark lawsuit, Freedom Mortgage Corporation, has been providing mortgage banking services using its FREEDOM MORTGAGE trademark since December 1992. Freedom Mortgage also has a wholly owned subsidiary called Roundpoint which has provided mortgage banking services since January 2009.

In April 2021, the defendant, Freedompoint, LLC, began using the trademark FREEDOMPOINT in connection with mortgage banking services. The FREEDOMPOINT trademark was registered with the USPTO in August 2021 having received no “likelihood of confusion” refusal during the application process.

It seems that Freedom Mortgage disagrees with the USPTO, believing that there does exist a likelihood of confusion, considering FREEDOMPOINT to be an infringing combination of the FREEDOM MORTGAGE and ROUNDPOINT marks.

The combination argument is interesting, perhaps suggesting that consumers would incorrectly surmise that Freedom Mortgage, owner of the Roundpoint subsidiary, had simply merged the two companies. However, do consumers even know that Roundpoint is a wholly owned subsidiary of Freedom Mortgage? I reviewed both the Freedom Mortgage and Roundpoint websites and don’t see any mentions of the other company.

If consumers don’t have any reason to associate Roundpoint with Freedom Mortgage, then really there are just two applicable comparisons…Freedom Mortgage v. Freedompoint and Roundpoint vs. Freedompoint. The USPTO didn’t consider either to be confusingly similar but perhaps more “combination” evidence will be available for this lawsuit.

Stay tuned for Freedompoint’s Answer.

Freedom Mortgage Corporation v. Freedompoint, LLC

Court Case Number: 4:23-cv-00022-TWP-KMB
File Date: February 14, 2023
Plaintiff: Freedom Mortgage Corporation
Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendant: Freedompoint, LLC
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, State Trademark Infringement, Common Law Unfair Competition, Cancellation of U.S. Registration, Deception, Conversion, Forgery, Counterfeiting, Theft
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Kellie M. Barr

Complaint:

USA Football sues USA Flag for Trademark Infringement

16 Thursday Feb 2023

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

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USA Football organizes football training events for players, coaches, and officials. USA Football was endowed by the National Football League and the National Football League Players Association in 2002.

USA Football has filed a lawsuit in Indiana attempting to prevent the use of the mark USA FLAG in connection with flag football tournaments and leagues. The parties to the lawsuit have a lengthy history, with Defendant Burnett first approaching USA Football in 2017 about a potential collaboration. Over the following years, the relationship involved both a Consulting Agreement and an Event Collaboration Agreement between the parties. However, per the Complaint (below), USA Football always maintained that the USA FLAG mark could not be used, previously opposing a USA FLAG trademark application.

Unable to successfully persuade/convince USA Flag to stop using an allegedly confusingly similar trademark, USA Football now seeks court intervention, including requests for injunctive relief and attorneys’ fees. As USA Flag seems dug into its position, this lawsuit could get interesting. USA Flag previously chose not to defend in the trademark opposition proceeding, resulting in a notice of default. Surely USA Flag won’t attempt that same strategy in federal court. Stay tuned for updates.

USA Football, Inc. v. Flag Football World Championship Tour, LLC et al.

Court Case Number: 1:23-cv-00274-TWP-KMB
File Date: February 13, 2023
Plaintiff: USA Football, Inc.
Plaintiff Counsel: Amie N. Peele of Peele Law Group, PC; Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendants: Flag Football World Championship Tour, LLC, USA Flag, LLC, Travis Burnett
Cause: Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Common Law Unfair Competition, Common Law Trademark Infringement, Contributory Trademark Infringement, Vicarious Trademark Infringement, Unjust Enrichment, Conversion, Deception, Indiana Crime Victim’s Relief Act
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Kellie M. Barr

Complaint:

Delta Faucet Company sues Amazon Counterfeiter over Unauthorized Sales

03 Friday Feb 2023

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

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Delta Faucet Company is once again pursuing a counterfeit faucet seller from Amazon in the Southern District of Indiana. The Complaint (below) details how a company’s trademarks are impacted by unauthorized sellers and the resulting negative online marketplace reviews. As with Delta’s previously-filed lawsuits, the Complaint highlights the gray market existing within Amazon’s “Fulfillment by Amazon” services that allows for counterfeit sales, leading to invalid product warranties, disgruntled consumers, and damaged brands.

Delta’s most recent “counterfeit” lawsuit resulted in a default judgment and permanent injunction as the Defendant never appeared. The lawsuit took just a few days over one years. The injunction, probably Delta’s real goal, presumably allowed them to finally stop the unauthorized Amazon sales. However, like mosquitoes, stop one counterfeiter and another will inevitably appear. We can probably expect a similar result in this lawsuit…no appearance by the defendants, default judgment, and injunction.

Stay tuned for updates.

Delta Faucet Company v. Watkins et al.

Court Case Number: 1:23-cv-00200-JMS-MKK
File Date: February 1, 2023
Plaintiff: Delta Faucet Company
Plaintiff Counsel: Louis T. Perry of Faegre Drinker Biddle & Reath LLP
Defendants: Ben Watkins, 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: Jane Magnus-Stinson
Referred To: M. Kendra Klump

Complaint:

Northwest Indiana Jewelry Stores Clash over Diamond Logos

03 Friday Feb 2023

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

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Since 1905, Albert’s Diamond Jewelers has been selling diamond jewelry in Northwest Indiana. In 2002, they adopted the logo seen below when they moved to their current location in Schererville, Indiana. Their logo has not been registered with the United States Patent and Trademark Office.

The logo is described as follows: “The mark prominently incorporates a diamond drawing with sharp edges and a multitude of internal sketch lines, all intended to evoke in a potential customer’s mind a precision cut, high-quality diamond. It’s name “Albert’s” appears above the term “Diamond Jewelers,” and incorporates a distinct style of typeface/font….” See Complaint (below), Section 13.

AaLand Diamond Jewelers recently opened a new location in Crown Point, Indiana, which is about 9 miles away from Schererville. AaLand has adopted a logo that Albert’s considers to be “suspiciously similar” to the 21-year old Albert’s logo.

Albert’s reached out to AaLand in late 2022 about their concern, but the parties have not found an amicable resolution. Albert’s initial letter, via counsel, references a single instance of consumer confusion in which an anonymous customer congratulated Albert’s on opening a new store. Albert’s has now filed a lawsuit seeking Court intervention.

I’ll let defense counsel do their job and dig up tons of other photos of similar jewelry store logos, but I can at least compare the parties’ respective logos.

In my opinion, the distinctive elements of the Albert’s font are the swooping, extended arm (leg?) of the “A” and the diamond-shaped asterisk. Neither of those elements appear in the AaLand logo. I wouldn’t be surprised to find out that the AaLand font is just a standard, stock font. Font experts leave a comment below. Albert’s utilizes all capitalized letters, while AaLand features the lower case “a”.

Looking at the two diamonds, they are clearly not identical. They both appear just like what you’d expect a diamond logo to look like, basically what you see on most jewelry store signs. Both are the classic diamond-shape outline with many internal lines depicting facets, just like a diamond. Jewelry experts (and eventually defense counsel) may be able to identify the differences in cuts portrayed on the logos.

Both logos incorporate the generic phrase “Diamond Jewelers,” but the Albert’s logo separates their name from the generic phrase with lines both above and below. The generic phrase is about 5/7 the width of the Albert’s name. The AaLand name is the same width as the generic phrase and separated by one line, which is also the same width as the wording.

If these two jewelry stores weren’t 9 miles apart, would there be any problem? Does close proximity (9 miles) override the ability to use generic elements in your logo? AaLand apparently doesn’t think so based off just one anonymous instance of consumer confusion.

Stay tuned for AaLand’s response to Albert’s Complaint.

Albert’s Diamond Jewelers, Inc. v. AaLand Diamond Jewelers LLC

Court Case Number: 2-23-cv-00039-PPS-JPK
File Date: February 1, 2023
Plaintiff: Albert’s Diamond Jewelers, Inc.
Plaintiff Counsel: Gary E. Hood of Hood Legal Group PC, Daniel W. Glavin of O’Neill McFadden & Willett LLP
Defendants: AaLand Diamond Jewelers LLC
Cause: Federal Trademark Infringement, False Designation of Origin, Federal Unfair Competition, Indiana Trademark Infringement, Common Law Unfair Competition
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: Joshua P. Kolar

Complaint:

Fireworks involved in first Indiana Trademark Lawsuit of 2023

10 Tuesday Jan 2023

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

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Happy New Year! It didn’t take long to get the first Indiana trademark (and trade dress) lawsuit of 2023, and in continuation of the festive celebrations, it involves fireworks.

The Defendants are alleged to be selling fireworks that infringe the Plaintiff’s registered TIKI, GHOST, and XL trademarks, as well as a “Tiki Trade Dress”.

The parties seem to be all major players in the fireworks industry, so they likely have some history. The Plaintiff has registered trademarks and it seems that the Defendants introduced new competing products utilizing similar marks after the registration date. As always, the Defendants’ Answer may tell another side of the story so stay tuned for updates.

1.4G Holdings, LLC v. North Central Industries, Inc. et al.

Court Case Number: 1:23-cv-00037-TWP-MG
File Date: January 5, 2023
Plaintiff: 1.4G Holdings, LLC
Plaintiff Counsel: Philip R. Zimmerly of Bose McKinney & Evans LLP
Defendants: North Central Industries, Inc., Great Grizzly, Inc., R.Brown, Inc.
Cause: Federal Trademark Infringement, False Designation of Origin, Trade Dress Infringement, Misappropriation
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Mario Garcia

Complaint: