Tag Archives: Mark J. Dinsmore

Trademark Declaratory Judgment Action filed in Indiana over Protective Trading Card Sleeves

01 Tuesday Oct 2024

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

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BCW Diversified, Inc. (“BCW”) is a Middletown, Indiana-based manufacturer of protective card sleeves for collectible trading cards. In this new federal lawsuit filed in the Southern District of Indiana, BCW has filed declaratory judgment complaint against Defendant Ultra PRO International, LLC (“Ultra Pro”). BCW seeks a declaration that Ultra Pro owns no valid, enforceable rights in the following marks: TOPLOADER, PENNY SLEEVES, PRO-BINDER, MINI SNAP, CHROMAFUSION TECHNOLOGY, and DECK VAULT.

Ultra Pro owns U.S. trademark registrations for the disputed trademarks, but BCW asserts that the registrations are invalid. BCW claims that it has used the terms “top loaders,” “penny sleeves,” and “mini-snap” for thirty years in connection with the manufacture, promotion, and sale of protective card sleeves for collectible trading cards. BCW maintains that its use of these terms is not an infringing use because the disputed terms are generic or, at a minimum, merely descriptive of the goods at issue. Allegedly, third parties throughout the industry make wide use of the disputed trademarks in a descriptive fashion.

BCW received cease-and-desist demands from Ultra Pro and a lawsuit was filed against it by Ultra Pro in the Northern District of Illinois in June 2024. Ultra Pro has also filed a lawsuit against 133 of BCW’s retailers.

Stay tuned to see how Ultra Pro responds to this Declaratory Judgment action.

BCW Diversified, Inc. v. Ultra Pro International, LLC

Court Case Number: 1:24-cv-01699-RLY-MJD
File Date: September 30, 2024
Plaintiff: BCW Diversified, Inc.
Plaintiff Counsel: Marc C. Gravino, Joel M. Huotari of WilliamsMcCarthy, LLP
Defendant: Ultra Pro International, LLC
Cause: Declaratory Judgment of Non-Infringement, Declaratory Judgment of No Dilution, Declaratory Judgment of No Unfair Competition, Declaratory Judgment of Trademark Invalidity
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Mark J. Dinsmore

Complaint:

Kingston, Indiana Grocery Store sued for Trademark Infringement

09 Friday Aug 2024

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

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In addition to using an identical name, the defendant in the latest Indiana trademark lawsuit is accused of submitting a fraudulent letter to the Indiana Secretary of State claiming permission to use the name. The Kingston, Indiana grocery store is allegedly operating as “My Market” without the authorization of the plaintiff, who has prior rights in the name.

The plaintiff and defendants likely have some personal background that isn’t discussed in the Complaint (below). If so, the Answer may shed more light on why the defendant thought it had permission to use the name “My Market.”

Stay tuned for updates.

My Market LLC v. Batth Markets Inc. et al.

Court Case Number: 1:24-cv-01335-MPB-MJD
File Date: August 6, 2024
Plaintiff: My Market LLC
Plaintiff Counsel: C. Christopher Dubes, Amanda C. Delekta of Carson LLP
Defendant: Batth Markets Inc., Chhaterpal Singh
Cause: Federal Trademark Infringement, False Designation of Origin, Trademark Dilution, Federal Unfair Competition, Conversion
Court: Southern District of Indiana
Judge: Matthew P. Brookman
Referred To: Mark J. Dinsmore

Complaint:

HIKER vs. HYK OUTDOORS…are you confused?

08 Thursday Aug 2024

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

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Both parties in this new Indiana trademark lawsuit manufacture “pull-behind” camper trailers. The plaintiff, Hiker Trailers of Columbus, Indiana, has sold trailers using the HIKER TRAILER brand since 2004.

The defendant, Hyk Outdoors, is a Missouri company that has been selling towable camping trailers since 2020.

The goods seem very similar, and presumably so are the parties’ respective consumers. The parties likely have or will promote their trailers at the same trade shows. Ultimately, it will need to be determined whether the trademarks HIKER and HYK OUTDOORS are confusingly similar. Although no specific instances of confusion are cited, the Complaint (below) alleges an admission of repeated consumer confusion by an employee of the defendant.

Stay tuned for updates.

Hiker Industries, LLC v. Hyk Outdoors LLC

Court Case Number: 1:24-cv-01320-RLY-MJD
File Date: August 5, 2024
Plaintiff: Hiker Industries, LLC
Plaintiff Counsel: James M. Hinshaw, Brad R. Maurer of Dentons Bingham Greenebaum LLP
Defendant: Hyk Outdoors LLC
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal False Designation of Origin or Sponsorship, Common Law Trademark Infringement, Common Law Unfair Competition
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Mark J. Dinsmore

Complaint:

Muncie Fire Captain sued over EMT Exam Cheating Scheme

18 Thursday May 2023

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

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Here’s a lawsuit straight out of Bayside High School. The lawsuit involves a Muncie, Indiana Fire Captain who allegedly has been providing test questions to individuals before they take their tests. The problem is these aren’t 9th grade English tests, but rather important emergency medical technician (EMT) examinations, meaning unqualified cheaters could be made responsible for saving the lives of the public. This is unfair to everyone, including the creators of the test, who have to rewrite the compromised examinations, and unqualified EMTs, who are advanced to a position where they might not be able to properly carry out their duties. It is most unfair to the endangered public, who could receive unqualified medical treatment and possibly die as a result.

The National Registry of Emergency Medical Technicians (NREMT), which creates the EMT examinations, is now suing the Fire Captain, along with two accomplice test memorizers, for copyright infringement, breach of contract, and trade secret claims. The two test memorizers would allegedly take the examinations, memorize the questions, and then report back to the Fire Captain, who would use that information to train fire department recruits. The test policies specifically forbid such actions.

The “years-long scheme” was reported by a whistleblower in March 2023, leading to an investigation and now this lawsuit. The whistleblower paints a portrait of more than just an overzealous instructor, claiming that the Fire Captain forced his employees to cheat on NREMT examinations “through abuse of power and harassment.”

Stay tuned for updates.

The National Registry of Emergency Medical Technicians v. Dulaney et al.

Court Case Number: 1:23-cv-00840-JRS-MJD
File Date: May 15, 2023
Plaintiff: The National Registry of Emergency Medical Technicians
Plaintiff Counsel: Kandi Kilkelly Hidde, Cameron S. Trachtman of Frost Brown Todd LLP
Defendant: Troy Delaney, Jacob Sutton, Adam Burk
Cause: Copyright Infringement, Breach of Contract, Violation of the Indiana Uniform Trade Secrets Act, Violation of the Defend Trade Secrets Act
Court: Southern District of Indiana
Judge: James R. Sweeney II
Referred To: Mark J. Dinsmore

Complaint:

Trademark Owner Successfully Overcomes USPTO 2(d) Refusal but Still Gets Sued

17 Monday Apr 2023

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

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This lawsuit highlights an awkward but common situation where a senior trademark owner and the USPTO disagree on whether a likelihood of confusion exists between two trademarks. If a junior user’s trademark is allowed to be registered by the USPTO, sometimes a senior user has no option but to bring a federal lawsuit and/or a TTAB cancellation proceeding.

HealthSmart Foods, an Evansville, Indiana-based producer of health food snacks (e.g. snack bars, snack bites, shakes, and candies) has filed a trademark lawsuit against Sweet Nothings, a small California company selling healthy family snacks like packaged smoothies and “nut butter bites.”

HealthSmart Foods sells a line of snack clusters, crisps and patties called SWEET NOTHINGS.

Sweet Nothings has obtained a trademark registration for its SWEET NOTHINGS trademark after successfully overcoming a 2(d) likelihood of confusion refusal citing the HealthSmart Foods’ trademark registration. The 2(d) refusal was seemingly overcome with evidence that the “SWEET NOTHINGS” trademark is very highly suggestive of the type of goods and therefore entitled to a very narrow scope of protection. Specifically, the evidence consisted of fourteen examples of entities in HealthSmart’s industry who use the marks “SWEET NOTHINGS” or “SWEET NOTHING” as a source indicator in connection with goods and services legally identical to HealthSmart’s goods:

  • Sweet Nothing Desserts, LLC – Located in Georgia, they bake cakes and cookies to order
  • Sweet Nothing Fine Cakes and Desserts – Located in Wisconsin, they bake high quality
  • cakes
  • Sweet Nothings Cake Shop – Located in Southern California, they offer a variety of
  • baked goods
  • Sweet Nothings Cakes – Located in Wisconsin, they bake cakes for special occasions
  • Sweet Nothings – Located in Ohio, they offer a variety of snacks
  • Sweet Nothings Cookies – Located in Arkansas, they offer custom cookies
  • Sweet Nothings Custom Cookies – Located in North Carolina, they offer custom cookies
  • Luv Ice Cream – Located in Minnesota, they offer “Sweet Nothings” branded fruit and
  • candy
  • Sweet Nothings – Located in New Jersey, they offer a variety of chocolates and candy
  • Sweet Nothings Snacks – Located in Utah, they offer a variety of snacks
  • Sweet Nothings – a brand of nougat cluster candy offered by Healthsmart, located in Indiana
  • Krissy’s Sweet Nothings – an online business that offers cakes
  • Sweet Nothings & Pastries – Located in Texas, they offer a variety of cupcakes and cakes
  • Sweet Nothings Cakes and Confections – Located in Missouri, they offer a variety of
  • cupcakes, cakes, pastries, and pies

HealthSmart Foods clearly does not agree with the USPTO’s decision to register Sweet Nothings’ trademark and now seeks the intervention of the Southern District of Indiana. I’d expect a similar “very highly suggestive” and “narrow scope of protection” defense to be presented, arguing that the Indiana company simply doesn’t have a strong enough trademark to enforce. Based on the location of the defendant (California), we might also see some preliminary jurisdictional challenges. Or, if the defendant doesn’t have the stomach for a legal fight in federal court in Indiana, a quick name change could be a potential outcome.

Stay tuned for updates.

HealthSmart Foods, Inc. v. Sweet Nothings, Inc. et al.

Court Case Number: 3:23-cv-00060
File Date: April 13, 2023
Plaintiff: HealthSmart Foods, Inc.
Plaintiff Counsel: Joshua A. Claybourn of Jackson Kelly PLLC
Defendant: Beth Porter, Sweet Nothings, Inc.
Cause: Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Unfair and Deceptive Trade Practices, Common Law Trademark Infringement, Common Law Unfair Competition, State Trademark Dilution, Injury to Business Reputation
Court: Southern District of Indiana
Judge: Matthew P. Brookman
Referred To: Mark J. Dinsmore

Complaint: