Tag Archives: Litigation Update

Coach sues Knox, Indiana Convenience Store over Counterfeit Purses

05 Tuesday Apr 2016

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

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The Defendants in this lawsuit, the owners of a convenience store located in Knox, Indiana, are accused of selling counterfeit Coach merchandise. The counterfeit purses were observed for sale in the store on multiple occasions by a Coach investigator and Homeland Security Investigations officer.

Selling counterfeit merchandise is, not surprisingly, a big no-no and Coach takes its intellectual property very seriously, hence this lawsuit containing trademark, copyright and trade dress claims.

Stay tuned for updates.

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Coach, Inc. et al v. Zip Thru Mart et al

Court Case Number: 3:2016-cv-00209-JD-CAN
File Date: Monday, April 4, 2016
Plaintiff: Coach, Inc., Coach Services, Inc.
Plaintiff Counsel: P. Russell Pardew of Locke Lord LLP
Defendant: Zip Thru Mart, Charles Estok, Sr., Janice Estok
Cause: Trademark Counterfeiting, Trademark Infringement, Trade Dress Infringement, False Designation of Origin, False Advertising, Trademark Dilution, Copyright Infringement, Common Law Trademark Infringement, Common Law Unfair Competition, Unjust Enrichment
Court: Northern District of Indiana
Judge: Jon E. DeGuilio
Referred To: Christopher A. Nuechterlein

Complaint:

The Great American Bagel files Trademark Lawsuit over Rearranged Signage

25 Friday Mar 2016

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

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I’ll let the two trademarks at issue here speak for themselves – THE GREAT AMERICAN BAGEL (stylized) vs. THE GREAT AMERICAN EAGLE (nearly identically stylized). Check out the comparison images from the Complaint:

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The remarkable similarity is, not surprisingly, no coincidence. Defendant obtained an old sign previously used by Plaintiff and apparently opted to save money by just rearranging a few letters and calling his gas station/convenience store “The Great American Eagle”.

As Defendants’ convenience store sells food products, Plaintiff has alleged consumer confusion and is seeking damages and injunctive relief.

Stay tuned for updates.

The Great American Bagel Enterprises, Inc. v. United HBA Corporation et al

Court Case Number:3:16-cv-00038-RLY-MPB
File Date: Thursday, March 24, 2016
Plaintiff: The Great American Bagel Enterprises Inc.
Plaintiff Counsel: Stacy K. Newton of Jackson Kelly PLLC
Defendant: United HBA Corporation and Harbhajan Singh, d/b/a The Great American Eagle
Cause: Federal Trademark Infringement, False Designation of Origin, False Advertising, Unfair Competition, Trade Name Infringement, Passing Off, Unjust Enrichment
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Matthew P. Bookman

Complaint:

Indiana Trademark Litigation Update – Oak Motors, Inc. (Indiana) v. Oak Motors, Inc. (California)

21 Monday Mar 2016

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

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Plaintiff has been operating as “Oak Motors” since 1985, buying and selling automobiles and providing financial services related to the purchase and sale or automobiles. Plaintiff has five primary physical locations and also advertises via its website.

Defendant, a California company providing similar services, began operating as “Oak Motors” in February 2014. Plaintiff first learned of Defendant’s adoption of the name in March 2015 and sent a cease-and-desist letter citing its prior rights and federal registration. Defendant allegedly first agreed to discontinue use of the “Oak Motors” mark but did not follow through and continues to use the trademark (and similar domain names), hence this lawsuit.

Oak Motors, Inc. (Indiana) v. Oak Motors, Inc. (California)

Court Case Number: 1:16-cv-00595-JMS-MJD
File Date: March 16, 2016
Plaintiff: Oak Motors, Inc. (Indiana)
Plaintiff Counsel: Jonathan G. Polak, Zach Gordon of Taft Stettinius & Hollister LLP
Defendant: Oak Motors, Inc. (California)
Cause: False Designation of Origin, False Description, Common Law Trademark Infringement, Unfair Competition, Cybersquatting, Declaratory Judgment
Court: Southern District of Indiana
Judge: Jane Magnus-Stinson
Referred To: Mark J. Dinsmore

Complaint:

Hoverboard Maker Swagway Sued by UL for Trademark Counterfeiting

19 Friday Feb 2016

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

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If you live anywhere near an electrical outlet (meaning all of you except those few remaining readers of the Indiana IP Zine), you’ve likely seen the Plaintiff’s trademark.

Plaintiff’s UL Certification Marks appear on “billions of household, consumer, commercial, and industrial products including refrigeration equipment, lighting products, cable, wiring, building materials, life safety vests, electric signs, batteries and power packs for computers and consumer electronics, traffic signals, sprinklers, and cash registers.”

The “UL” mark certifies that the product has been tested, inspected and satisfies applicable safety standards. Turn over whatever electrical device is closest and the “UL” probably is on there somewhere. (If not, back away slowly…) 

Defendant makes and sells the explosively popular Swagway hoverboard. Despite having never been tested nor inspected by UL, the Swagway product “allegedly used a mark that is identical to or substantially indistinguishable from the UL Certification Marks to falsely suggest that their Swagway hoverboard products have been tested, inspected, and certified by Plaintiff.”

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Further claims by Defendant’s CEO that the product was UL-certified along with significant safety concerns about the product, detailed in the Complaint below, led to this lawsuit.

UL LLC v. Swagway, LLC et al

Court Case Number: 3:16-cv-00075-RLM-CAN
File Date: Wednesday, February 17, 2016
Plaintiff: UL LLC
Plaintiff Counsel: Thomas F. Waggoner of Straub, Seamen & Allen, P.C.
Defendant: Swagway, LLC, Jianqing “Johnny” Zhu
Cause: Federal Trademark Counterfeiting, Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, False Advertising, Violation of the Illinois Deceptive Trade Practices Act, Violation of the Illinois Consumer Fraud and Deceptive Business Practices Act
Court: Northern District of Indiana
Judge: Robert L. Miller, Jr.
Referred To: Christopher A. Nuechterlein

Complaint:

Indiana publication Rough Notes sues over “plaque” solicitations

09 Tuesday Feb 2016

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

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Most professionals will be familiar with the type of solicitation involved in this lawsuit.

Defendant, based in Connecticut, sells customized plaques for people and companies that have been featured in newspapers or magazines. Defendant promotes its product by directly emailing (repeatedly) the individuals featured in the magazine/newspaper with a solicitation to purchase a customized plaque featuring the article. (See examples in the photo and Exhibit C below.) Defendant’s products consist of a scanned copy of the article and publication’s title inserted into an acrylic, wood or aluminum frame. Defendant has allegedly sold over 200,000 plaques.

Plaintiff, a long-standing Indiana publication focused on insurance agents, is one target of Defendant’s activities. Notably, Plaintiff also provides its own free high-quality reprint plaques to individuals profiled in its magazine. Plaintiff brings this lawsuit against Defendant based on the unauthorized use of its trademark and copyrighted materials, among other claims.

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The Rough Notes Company, Inc. v. That’s Great News, LLC

Court Case Number: 1:2016-cv-00319
File Date: Monday, February 8, 2016
Plaintiff: The Rough Notes Company, Inc.
Plaintiff Counsel: David J. Carr, Paul C. Sweeney, Jana E. Harris of Ice Miller LLP
Defendant: That’s Great News, LLC
Cause: Copyright Infringement, Federal Unfair Competition, False Designation of Origin, Federal Trademark Infringement, Common Law Trademark Infringement, Federal Trademark Dilution, Common Law Unfair Competition, Unjust Enrichment
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Mark J. Dinsmore

Complaint:

Exhibit C (Sample e-mail solicitations):