The defendants in this counterfeiting lawsuit operate an indoor baseball and softball training facility in Indianapolis. The plaintiff, Oakley, has accused the defendants of selling counterfeit sunglasses. The plaintiff’s investigators purchased counterfeit sunglasses from the defendants at the Edinburgh Sports Complex (i.e. a place where baseball is played) and at the defendant’s retail location in Indianapolis.
Oakley seeks an injunction, statutory damages, attorney fees’ and costs. Oakley is probably equally interested in obtaining information about the source of the counterfeit goods, possibly somewhere overseas.
Stay tuned for updates.
Oakley, Inc. v. Batter’s Box Training, LLC et al
Court Case Number: 1:22-cv-01596-RLY-MJD File Date: August 11, 2022 Plaintiff: Oakley, Inc. Plaintiff Counsel: Zachary D. Prendergast of Robbins, Kelly, Patterson & Tucker, LPA Defendants: Batter’s Box Training, LLC, Shawn Lessor, Brandi Pierson Cause: Federal Trademark Infringement Court: Southern District of Indiana Judge: Richard L. Young Referred To: Mark J. Dinsmore
Shoe giants Puma and Brooks are involved in a lawsuit in Indiana over loosely-related trademark and patent design infringement claims.
PUMA began using the NITRO trademark in connection with running shoes in March 2021. Per the Complaint (below), PUMA’s line of NITRO running shoes were apparently a Top 15-selling running shoe brand in the U.S. in the year 2021.
In November 2021, PUMA noticed Brooks’ using the term “Nitro” in advertisements for a line of shoes with nitrogen-infused midsoles. In December 2021, PUMA’s counsel sent a letter describing their “exclusive rights” in the NITRO trademark. The subsequent 7 months apparently saw Brooks reject a settlement offer and offer no counterproposal, resulting in this lawsuit. Puma has a pending trademark application for NITRO filed in December 2021 that is still awaiting initial examination.
I question whether Brooks is really even using “Nitro” as a trademark. It seems they are just using a commonly-used shorthand for nitrogen, the common element infused in the shoe’s midsole. A possible resolution, should Brooks deem it necessary or the fight not worthwhile, would be to simply change their advertising from “Nitro” to “Nitrogen.”
The lawsuit is probably equally about PUMA’s claim for design patent infringement, a common dispute between shoe companies. Design patent claims highlight the constant “fine line” walked by consumer shoe designers to exploit a hot, current shoe trend but not copy a competitor’s design. The claims are loosely connected because the allegedly infringing shoes include nitrogen-infused midsoles, and thus are part of the Brooks “Nitro” advertising campaign. I’m not a shoe guy, so I don’t really know shoe terminology or what else is out in the market currently, but I can spot some obvious differences between PUMAS’s patent and the Brooks shoe.
Upon a quick review, the PUMA’s patent’s sole seems to be clearly 3 segments, while Brooks is 4 segments. The back of the heel is smooth on the patent while it is multi-ridged, both internally and externally, on the Brooks shoe. The back segment of the sole on the Brooks is much longer, has a protrusion with a rear wedge cut-out and also a circular impression on the side. The toe end is ridged on the Brooks shoe versus smooth on the design. These differences are just based on a quick initial review but I’m sure blog readers and Brooks’ counsel can find a few more. People familiar with current shoe trends might find even more.
Since 1851, the test for design patent infringement has been the “ordinary observer” test, which compares two designs from the viewpoint of an “ordinary observer,” not an expert in the trade, and requires that the resemblance be intended to deceive the observer and sufficient to induce him to purchase one supposing it to be the other. Recent jurisprudence in the Federal Circuit has seemingly evolved (or devolved, depending on your viewpoint) the test into what has been deemed an “extra-ordinary observer” test, in which the differences between the accused design and the patented design should be reviewed from the viewpoint of someone familiar with the prior art. As I mentioned above, I’m not familiar with the current women’s running shoe market so I could be a qualified “ordinary observer” but probably would not meet the higher standard. Which of the two standards should apply in the Southern District of Indiana in 2022 will likely be a primary focus of the lawsuit as it could be determinative.
If you’re wondering why this lawsuit was filed in Indiana, one explanation is that Brooks has a 400,000 square foot distribution center located in Whitestown, Indiana. PUMA didn’t specifically request seizure or destruction of Brooks’ existing inventory, but perhaps it is on their mind. Another consideration, as mentioned above, is finding a good venue to apply the lower “ordinary observer” standard.
Based on the size of the parties and the previously failed settlement negotiations, we can probably expect some fireworks in this lawsuit. Stay tuned for updates.
PUMA SE at al v. Brooks Sports, Inc.
Case Number: 1-22-cv-01362-RLY-MPB File Date: July 8, 2022 Plaintiff: PUMA SE, PUMA North America Inc. Plaintiff Counsel: Joel E. Tragesser, Michael T. Piery, James J. Aquilina of Quarles & Brady LLP Defendant: Brooks Sports, Inc. Cause: Trademark Infringement, Design Patent Infringement, Common Law Trademark Infringement, Common Law Unfair Competition Court: Southern District of Indiana Judge: Richard L. Young Referred To: Matthew P. Brookman
Here’s yet another copyright lawsuit involving the unauthorized use of a photograph on a website.
The Defendant, Vive Exterior Design, is a landscape design company headquartered in Fishers, Indiana. Vive is alleged to have used the Plaintiff’s photograph of a bocce ball court in the portfolio section of its website, www.viveexterior.com. The Plaintiff first sought to recover a standard license fee for use of the photograph via an intellectual property management company called Image Rights. When Image Rights was unsuccessful, Plaintiff’s counsel became involved but apparently never received a response from Vive. As such, Vive now has a federal copyright lawsuit to defend.
Settlement is the most likely outcome, but perhaps Vive has a valid defense for using the Plaintiff’s photograph. Stay tuned for updates.
Corson v. Vive Exterior Design, LLC et al
Case Number: 1:22-cv-00127-RLY-MG File Date: January 17, 2022 Plaintiff: Lisa Corson Plaintiff Counsel: Mathew K. Higbee, Naomi M. Sarega of Higbee & Associates Defendant: Vive Exterior Design, LLC, Does 1-10 Cause: Copyright Infringement Court: Southern District of Indiana Judge: Richard L. Young Referred To: Mario Garcia
January’s first Indiana intellectual property lawsuit involves Atlas Van Lines seeking to again protect its famous “Atlas” brand.
The Plaintiffs, based in Evansville, Indiana, have been transporting goods under the name “Atlas” since 1948. The Atlas family of companies includes more than 430 independent Atlas agencies across the U.S. and Canada, plus authorized partners in 140 countries.
The Defendant is alleged to have offered freight transport, storage, warehousing, logistics and forwarding services under the fictitious business name “Atlas Logistic Courier.” However, due to various acts of subterfuge, the Plaintiffs have been unable to determine the true identity of the Defendant, thus initially filing against a John Doe. This case will be interesting to follow to see how the Plaintiffs try to figure out the Defendant’s identity.
The Defendant’s website, http://www.atlaslogisticcourier.com, is down as of January 10, so they may already have made the decision to give up and likely disappear.
Stay tuned for updates.
AWGI LLC et al. v. Doe
Case Number: 3:22-cv-00004-RLY-MPB File Date: January 7, 2022 Plaintiff: AWGI LLC, Atlas Van Lines, Inc. Plaintiff Counsel: Mark F. Warzecha, Esq. of Widerman Malek, PL Defendant: John Doe d/b/a Atlas Logistic Courier Cause: Federal Trademark Infringement, Common Law Unfair Competition Court: Southern District of Indiana Judge: Richard L. Young Referred To: Matthew P. Brookman
The Plaintiffs in this trademark lawsuit, Atlas Van Lines of Evansville, Indiana, have been transporting goods under the name “Atlas” since 1948. The Atlas family of companies includes more than 430 independent Atlas agencies across the U.S. and Canada, plus authorized partners in 140 countries.
The Defendant is alleged to have offered its moving services to the public since 2015 under the fictitious business name “Atlas Moving Systems AMS,” constituting trademark infringement and unfair competition.
The Plaintiffs first sent a cease-and-desist letter to the Defendants in September 2017. A follow-up letter was sent in November 2020, over three (3) years later. There is no explanation given in the Complaint (below) for the lengthy delay by Plaintiffs in enforcing their trademark rights. However, a Motion for Preliminary Injunction has also been filed along with the Complaint so they’ve clearly determined that they can now no longer abide the Defendants’ ongoing presence in the marketplace. The supporting Memorandum (below) documents instances of actual consumer confusion.
Stay tuned for updates.
AWGI, LLC et al. v. CLD Trucking Co. d/b/a Atlas Moving Systems AMS
Case Number: 3:21-cv-00117-RLY-MPB File Date: Thursday, July 22, 2021 Plaintiff: AWGI, LLC, Atlas Van Lines, Inc. Plaintiff Counsel: Mark. F. Warzecha, Esq. of Wideman Malek, PL Defendant: CLD Trucking Co. d/b/a Atlas Moving Systems AMS Cause: Federal Trademark Infringement, Common Law Unfair Competition Court: Southern District of Indiana Judge: Richard L. Young Referred To: Matthew P. Brookman
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