The defendant in the latest Indiana copyright lawsuit is a Lafayette,Indiana-based roofing company alleged to have shared a video showing the tornado damage from the town of Sullivan, Indiana on its company Facebook page. The plaintiff is a professional videographer from Colorado.
Companies, go delete old social media posts that include any content that you don’t own or have well-documented permission to use and share. As we’re seeing, old posts can carry a legal risk, so if they are no longer providing a marketing benefit, consider deletion.
Stay tuned for updates.
Rigsby v. All Seasons Roofing
Court Case Number: 4:24-cv-00023-PPS-JEM File Date: March 14, 2024 Plaintiff: Aaron Rigsby Plaintiff Counsel: Craig Sanders, Esq. of Sanders Law Group Defendant: John W. Darnell, Inc. d/b/a All Seasons Roofing Cause: Direct Copyright Infringement Court: Northern District of Indiana Judge: Philip P. Simon Referred To: John E. Martin
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
Perma-Green, based in Valparaiso, Indiana, has manufactured and sold commercial lawn care products since 1973. They own an incontestable registration for the trademark PERMAGREEN for “mechanical spreaders and sprayers for the lawn care industry” with a claimed date of first use of February 1, 2005.
“Dr. Permagreen” is an eBay Seller account that lists over 1,400 Perma-Green products, including replacement parts. However, the parts being sold by the eBay account are allegedly low-quality counterfeit copies created in China, not authentic Perma-Green products.
Perma-Green alleges consumer confusion has been caused by the eBay account’s use of a similar name and deceptive product titles, with consumers falsely believing that the eBay account is associated with Perma-Green and that the products originate from Perma-Green. Consumer complaints over defective products were incorrectly directed towards Perma-Green, presumably damaging the goodwill in their brand.
Faulty or defective parts can obviously be a big problem when it comes to lawn care equipment by creating an increased risk of serious injury. After unsuccessful cease-and-desist communications, Perma-Green has brought a lawsuit (see Complaint below) seeking court intervention in an attempt to halt the damage currently being done to its brand. The Complaint alleges willful infringement based on email communications from the alleged operator of the eBay account.
Stay tuned for updates.
Perma-Green Supreme, Inc. v. Dr. Permagreen, LLC et al.
Court Case Number: 2:23-cv-00341 File Date: October 6, 2023 Plaintiff: Perma-Green Supreme, Inc. Plaintiff Counsel: P.Stephen Fardy, William D. Patterson of Swanson, Martin & Bell, LLP Defendant: Dr. Permagreen, LLC, Michael Edward Klott, FTW Investments LLC Cause: Federal Trademark Infringement, Federal False Designation of Origin, Federal False Advertising, Deceptive Consumer Sales, Common Law Unfair Competition Court: Northern District of Indiana Judge: Philip P. Simon Referred To: John E. Martin
The plaintiff in Indiana’s latest trademark lawsuit owns three restaurants called Buttermilk Café in the Chicago metropolitan area, along with a federal trademark registration for BUTTERMILK CAFE (Reg. No. 5,888,702) claiming “restaurant services, in International Class 43,” with a date of first use in 2011. Notably, it is a concurrent use registration with another restaurant called Buttermilk Kitchen, based in Atlanta, Georgia.
Since at least 2019, the defendant has operated a restaurant called Buttermilk Pancake House in Munster, Indiana.
The Complaint (below) doesn’t mention any actual instances of consumer confusion. You might think if Buttermilk Café and Buttermilk Kitchen can co-exist, then surely there’s room in the marketplace for a Buttermilk Pancake House, particularly in a crowded field like restaurants, with over 1,000,000 operating restaurant locations in the U.S. However, Munster, Indiana is about 30 miles from Chicago, so proximity may be the plaintiff’s greatest concern in this situation. That’s close enough that both parties’ restaurants would inevitably show up in a map search for either restaurant. It’s close enough that consumers might think the “Pancake House” is an offshoot of the nearby “Café.” The Munster restaurant utilizes a different color and font for “Buttermilk” and “Pancake House” on their exterior signage, a marketing practice often used with a “family mark” and a new descriptive product/service name. This could arguably lead consumers to believing that there is a connection between the parties. However, other than use of a similar name, there’s no other evidence in the Complaint (e.g. similar logo, menu, interior design, color scheme, etc.) that the Munster restaurant is intentionally misrepresenting itself to be connected with the plaintiff’s restaurant.
Stay tuned for updates.
Sak Group, Inc. v. Blue Hill Hospitality, Inc.
Court Case Number: 2:23-cv-00142-PPS-JPK File Date: April 25, 2023 Plaintiff: Sak Group, Inc. Plaintiff Counsel: Michael E. Tolbert, Shelice R. Tolbert, Candace C. Williams of Tolbert & Tolbert, LLC Defendant: Blue Hill Hospitality, Inc. Cause: Federal Trademark Infringement, False Designation of Origin, Passing Off, Federal Unfair Competition, Trademark Dilution, Violation of the Indiana Uniform Deceptive Trade Practices Act, Common Law Trademark Infringement, Common Law Unfair Competition Court: Northern District of Indiana Judge: Philip P. Simon Referred To: Joshua P. Kolar
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
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