Since 2016, the Plaintiff in this trademark lawsuit, NuStar Enterprises of Elkhart, Indiana, has used the registered trademark RELOADED in connection with “clothing and apparel, namely, shirts, jackets, pants, hats, belts, scarves, gloves, socks, underwear, swimwear, and wristbands.” They also have pending applications for sandals, slippers, sneakers, athletic shoes, and tactical vests, as well as hookah pipes and related smoking accessories.
In July 2019, NuStar learned that Bill Omar Carrasquillo, a rapper and YouTube celebrity known as “Omi in a Hellcat,” intended to start an apparel company under the brand name RELOADED. NuStar reached out to Mr. Carrasquillo’s agent about its prior trademark rights and the parties attempted to negotiate a licensing agreement. Those negotiations fell apart in late 2019 “due to Mr. Carrasquillo’s legal and financial troubles.”
Despite knowledge of the Plaintiff’s trademark, the Defendants went forward with plans to launch an apparel company called Reloaded Merch in mid-2021. The Complaint (below) references instances of actual consumer confusion, including a notice of violation received by Plaintiff from Amazon.com because their products were not made by the Defendant. The Plaintiff’s products were even taken off of the Amazon marketplace in favor of the Defendants’ products. Due to the Defendants’ popularity, this truly seems to be a situation where the Plaintiff has lost the ability to control its brand identity, lost control over its goodwill and reputation, and has lost the ability to move into new products and markets.
Stay tuned for updates.
NuStar Enterprises LLC v. Reloaded Merch LLC, Bill Omar Carrasquillo
Case Number: 2:22-cv-00080 File Date: April 1, 2022 Plaintiff: NuStar Enterprises LLC Plaintiff Counsel: Andrew M. Hicks of Warrick & Boyn, LLP Defendant: Reloaded Merch LLC, Bill Omar Carrasquillo Cause: Federal Trademark Infringement, Federal Unfair Competition, State Trademark Infringement, State Unfair Competition Court: Northern District of Indiana Judge: Philip P. Simon Referred To: John E. Martin
In a very short Pro Se Complaint (below), a self-described “failed comedian” is seemingly alleging that legendary comedian Dave Chappelle saw him perform back in 2014-2015 and subsequently used a stolen joke in Chappelle’s Netflix comedy special released in March 2017.
Jokes can be copyrighted, but it’s very rare and “stealing” or “borrowing” jokes from other comedians is commonplace. Further, there’s no mention of copyright anywhere in the Complaint. Without a valid copyright registration, any potential copyright claim will go nowhere. As such, the lawsuit presumably could only proceed on the grounds of something like theft or conversion.
Under Illinois law, where the joke “stealing” allegedly occurred, a person commits theft by: (1) knowingly taking or obtaining control over another’s property, (2) without authorization (including using threats, using deception, or knowing it’s stolen), and (3) with intent to permanently deprive the owner of their property. Retelling a joke doesn’t deprive the original teller from continuing to tell the joke, so a theft claim is probably equally set for failure.
In Illinois, a Plaintiff seeking to prove conversion must establish: (1) they have a personal right to a specific piece of property; (2) they have an absolute and unconditional right to immediate possession of the personal property; (3) they made a demand for possession of the property currently possessed by the defendant; and (4) the defendant wrongfully assumed control of the plaintiff’s property. At least in the current iteration of the Complaint, these elements have not been established.
The Complaint provides only the following limited Statement of Claim:
“Between 2014-2015 while the Defendant was working on the movie “Chiraq” in Chicago, he saw the Plaintiff performing at one or more of the four places where comedy that were within 2 miles of the location the Defendants shoot location. Then knowingly used material from the Plaintiff in a standup special without permission.”
The Complaint doesn’t include the text of either the Plaintiff’s original joke or Chappelle’s allegedly infringing joke, other than mentioning that Chappelle’s joke “was exactly 1 minute.” There’s nothing to establish that the Plaintiff holds any right in any specific piece of property and is silent as to any demand for possession. As such, a conversion claim will likely also be unsuccessful.
The Plaintiff seeks $303,030.30 in damages, more than double the statutory maximum for copyright infringement.
“The Plaintiff is seeking $303,030.30 in relief. The Defendants was paid 20 Million for the special “Deep in the Heart of Texas” by Netflix which has a runtime of 66 mins, the joke was exactly 1 minute and 303,030.30 would be what the Defendant was paid per minute.
It’s not clear that the lawsuit should even be in Indiana as the alleged acts occurred in Illinois and Dave Chappelle lives in Ohio.
Unfortunately, the Plaintiff has already spent $402 filing this Complaint and now will need to spend even more to have it properly served on Chappelle. Without seriously upgrading the sparse information in the Complaint, it’s probably all just lost money. Since we didn’t even get a joke out of the entire Complaint, I’ll leave you with a humorous quote about pro se plaintiffs by arguably our best lawyer-president (who himself was self-taught in the law):
“He who serves as his own counsel has a fool for a lawyer and a jackass for a client.” Abraham Lincoln
Stay tuned for updates.
Gatewood v. Webber Chappelle
Case Number: 2:21-cv-00186-PPS-JEM File Date: Friday, June 4, 2021 Plaintiff: Xavier Gatewood Plaintiff Counsel: Pro Se Defendant: David Khari Webber Chappelle Cause: Nothing specific, possibly theft or conversion? Court: Northern District of Indiana Judge: Philip P. Simon Referred To: John E. Martin
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
Plaintiff National Federal of Professional Trainers, Inc., headquartered in Lafayette, Indiana, brings this action to prevent, and obtain damages for, Defendant Carrington College’s unauthorized copying and distribution of NFPT’s proprietary Certified Personal Trainer (“CPT”) credentialing examinations. Carrington College is a for-profit educational institution headquartered in Sacramento, California.
The Complaint alleges that “Carrington had given students copies of confidential and proprietary NFPT examinations, and then quizzed students on the copied examination questions until students memorized the answers to each specific question.”
Stay tuned for updates.
National Federation of Professional Trainers, Inc. v. Carrington College, Inc.
Court Case Number: 4:18-cv-00047-JVB-JEM File Date: Monday, July 2, 2018 Plaintiff: National Federal of Professional Trainers, Inc. Plaintiff Counsel: Anthony E. Dowell, Richard T. McCaulley, Kenley Eaglestone of McCaulley Dowell Defendant: Carrington College, Inc. Cause: Copyright Infringement, Misappropriation of Trade Secrets, Breach of Contract, Fraud Court: Northern District of Indiana Judge: Joseph S. Van Bokkelen Referred To: John E. Martin
Pursuant to an agreement, Plaintiff created and applied artwork to a limited number of Defendant’s boats.
Defendant is alleged to have continued selling boats with substantially similar artwork outside the terms of the original license.
The Art of Design, Inc. v. Pontoon Boat, LLC et al
Court Case Number: 3:16-cv-00595-JVB-JEM File Date: Tuesday, September 6, 2016
Plaintiff: The Art Of Design, Inc.
Plaintiff Counsel: John D. LaDue, Sean J. Quinn of LaDue | Curran | Kuehn Defendant: Pontoon Boat, LLC d/b/a Bennington and Bennington Marine, Hawkeye Boat Sales Cause: Breach of Contract, Unjust Enrichment, Copyright Infringement, Unfair Competition, Inducing Copyright Infringement, Violations of DMCA
Court: Northern District of Indiana
Judge: Joseph S. Van Bokkelen Referred To: John E. Martin
Indiana Intellectual Property Blog 