Tag Archives: Federal Trademark Infringement

Fort Wayne Printing Company sues FortWaynePrintShop.com for Trademark Infringement, Dilution

01 Monday Apr 2024

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

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Fort Wayne Printing Company has performed printing and related services in Northeast Indiana since 1902. They have a pending federal trademark application for FORT WAYNE that successfully passed its 30-day publication window on March 28, 2024. One day later, Fort Wayne Printing Company filed a federal trademark lawsuit in Indiana against a company using the domain FortWaynePrintShop.com.

The defendant, Allen & Goel Marketing Company, has been using the domain name fortwayneprintshop.com to advertise printing and related services. When attempting to purchase services at the domain, it redirects to their primary website, http://www.printshopnation.com.

It’s possible that the marketing company directly targeted Fort Wayne Printing Company in purchasing the FortWaynePrintShop.com domain. However, they may have just purchased a bunch of geographically descriptive domains (i.e. “[cityname]printshop.com) and didn’t check whether any of those names corresponded to a pre-existing company. In the latter scenario, you might expect them to simply give up the domain without incurring a federal lawsuit. By not relinquishing the domain, it could be an indication that this particular geographic domain is especially profitable for them. Further, the FortWaynePrintShop.com domain was first created on 11/11/2011 and the Internet Archive first captured the website in May 2013, so the defendant might have a valid acquiescence or laches defense.

Apparently unable to resolve this situation with normal cease-and-desist communications, probably due to the 10+ years use of the domain name, the plaintiff now seeks court intervention in the Northern District of Indiana. The fact that the lawsuit was filed one day after the trademark application’s publication window closed may indicate that the defendant was never contacted, in order to not tip them off to the application status. Either way, stay tuned for updates.

Optical Tactics, LLC d/b/a Fort Wayne Printing Company v. Allen & Goel Marketing Company

Court Case Number: 1:24-cv-00134-HAB-SLC
File Date: March 29, 2024
Plaintiff: Optical Tactics, LLC d/b/a Fort Wayne Printing Company
Plaintiff Counsel:
Defendant: Allen & Goes Marketing Company
Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal Passing Off, Federal Unfair Competition, Trademark Dilution, Common Law Trademark Infringement, Common Law Unfair Competition, Injunctive Relief
Court: Northern District of Indiana
Judge: Holly A. Brady
Referred To: Susan L. Collins

Complaint:

Trade Dress Lawsuit filed in Indiana over Trailer Axle Hubcaps

04 Monday Mar 2024

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

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An Elkhart, Indiana-based hubcap manufacturer has been sued for trademark and trade dress infringement. The plaintiff, Valcrum of Cypress, Texas, manufactures hubcaps for medium-duty (8,000-16,000 pounds) trailer axles. Valcrum’s axles use a distinctive design consisting of a “signature red hex bezel having a hexagonal outer perimeter and an inner diameter.”

The defendant, Dexter Axle Company, has an extensive business history with Valcrum. The ultimate result of the breakdown of their business relationship, as detailed in the Complaint below, was Dexter producing its own line of axle hubcaps, which allegedly violate the plaintiff’s trademark and trade dress rights. The Complaint also alleges numerous violations of a nondisclosure agreement executed by the parties in 2020.

Stay tuned for updates.

Valcrum, LLC v. Dexter Axle Company, LLC

Court Case Number: 3:24-cv-00190-DRL-MGG
File Date: March 1, 2024
Plaintiff: Valcrum, LLC
Plaintiff Counsel: Andrew J. Chabot of Botkin & Hall, LLP
Defendant: Dexter Axle Company, LLC
Cause: Breach of Contract, Federal Trademark Infringement, Federal Trade Dress Infringement, Federal Unfair Competition, Federal False Designation of Origin, Common Law Trademark Infringement, Common Law Trade Dress Infringement, Common Law Unfair Competition, Unjust Enrichment
Court: Northern District of Indiana
Judge: Damon R. Leichty
Referred To: Michael G. Gotsch, Sr.

Complaint:

Baskin-Robbins sues Ex-Franchisee over Broad Ripple, Greenwood Ice Cream Shops

15 Thursday Feb 2024

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

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The owner of Baskin Robbins ice cream shops in Broad Ripple and Greenwood, Indiana, has been accused of violating the terms of its Baskin-Robbins franchise agreement. The prior franchise relationship was terminated in June 2023 due to nonpayment of about $50,000, but the ice cream shops continued to operate as Baskin Robbins while selling product from a competing ice cream brand.

Subsequent cease-and-desist communications and collection attempts have been unsuccessful, and Baskin Robbins now seeks the intervention of the federal court for the Southern District of Indiana.

Stay tuned for updates.

Baskin-Robbins Franchising LLC et al v. Blu Moo Ice Cream Inc. et al.

Court Case Number: 1:24-cv-00293-JRS-CSW
File Date: February 14, 2024
Plaintiff: Baskin-Robbins Franchising LLC, BR IP Holder LLC
Plaintiff Counsel: Justin O. Sorrell of Riley Bennett Egloff LLP
Defendant: Blue Moo Ice Cream Inc., Robert Holocher
Cause: Breach of Contract, Breach of Personal Guarantees, Federal Trademark Infringement, Federal Unfair Competition
Court: Southern District of Indiana
Judge: James R. Sweeney II
Referred To: Crystal S. Wildeman

Complaint:

Fort Wayne Company sued for sale of Unauthorized Animal Health Supplements on Amazon

09 Friday Feb 2024

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

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Nutramax Laboratories (“Nutramax”), the plaintiff in Indiana’s latest trademark lawsuit, produces health supplements for companion animals. Nutramax distributes its products through multiple trade channels, including through resellers that only have an online sales outlet. Nutramax’s resellers are required to sign an Authorized Reseller Agreement which includes requirements around product quality and customer service.

The defendants, a Fort Wayne company, are allegedly unauthorized resellers that are selling Nutramax products on the Amazon Marketplace. The defendants have not signed the Authorized Reseller Agreement.

Nutramax’s counsel sent cease-and-desist communications in October 2023 and January 2024, but apparently have not received a response and the unauthorized Amazon sales have continued. As such, Nutramax now seeks the assistance of the Northern District of Indiana to enforce its trademark rights.

Stay tuned for updates.

Nutramax Laboratories, Inc. et al. v. CNB Retailers, LLC et al.

Court Case Number: 3:24-cv-00129-DRL-MGG
File Date: February 8, 2024
Plaintiff: Nutramax Laboratories, Inc., Nutramax Laboratories Veterinary Sciences Inc.
Plaintiff Counsel: Mark D. Boveri of Krieg Default LLP
Defendant: CNB Retailers, LLC d/b/a Amazon Seller Account “UniversalExports”; Brett Hart; Christina Miller
Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal False Description, Indiana Common Law Tortious Interference with a Contract
Court: Northern District of Indiana
Judge: Damon R. Leichty
Referred To: Michael G. Gotsch, Sr.

Complaint:

Tempur Sealy sues Valparaiso Furniture Store for Trademark Infringement

14 Tuesday Nov 2023

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

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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

Complaint: