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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: Tanya Walton Pratt

LA MICHOACANA Grocery Trademark War Expands into Indiana

10 Wednesday Mar 2021

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

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Common Law Unfair Competition, False Designation of Origin, Federal Trademark Infringement, John E. Martin, Philip P. Simon, Tanya Walton Pratt, Tim A. Baker, Unfair Competition, Unjust Enrichment

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 MarkLA MICHOACANA MEAT MARKET for “Retail meat market stores” 
Northern District Defendant’s MarkCARNICERIA Y FRUTERIA LA MICHOACANA for a “Mexican-themed grocery store”
Southern District Defendant’s MarkSUPER 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

Complaint:

View this document on Scribd

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

Complaint:

View this document on Scribd

Indianapolis company accused of selling counterfeit LED lighting fixtures

15 Monday Apr 2019

Posted by Kenan Farrell in Copyright, Indiana, Indianapolis, Intellectual Property, Litigation, Patent, Southern District of Indiana, Trademark

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Copyright Infringement, Counterfeiting, Doris L. Pryor, False Advertising, Federal Unfair Competition, Tanya Walton Pratt

An Indianapolis company has been accused of selling counterfeit LED lighting fixtures.

Electra Display, on Indy’s southeast side, has been sued for copyright infringement based upon the alleged copying of the plaintiff’s intellectual property, including copyrighted images from plaintiff’s sales brochures, and false advertising, based on Electra’s use of the images to deceive customers into believing that it sold plaintiff’s products, when Electra is alleged to actually sell an inferior, knock off product made by a Chinese manufacturer.

Screen Shot 2019-04-15 at 5.47.58 AM.png

The plaintiff, Massachusetts-based JLC-Tech LLC, owns several patents for its LED lighting technology, but doesn’t assert any patent infringement claims in the Complaint (below). Rather, this lawsuit simply seeks damages and injunctive relief against the use of the sales photographs and misleading advertising. 

Stay tuned for updates.

JLC-Tech LLC v. Electra Display

Court Case Number: 1:19-cv-01468-TWP-DLP
File Date: Thursday, April 11, 2019
Plaintiff: JLC-Tech LLC
Plaintiff Counsel: Darren A. Craig of Frost Brown Todd LLC
Defendant: Edge Systems Group LLC d/b/a Electra Display
Cause
: Copyright Infringement, Federal Unfair Competition, False Advertising
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Doris L. Pryor

Complaint:

View this document on Scribd

Sunman BP sued for selling counterfeit Oakley sunglasses

18 Friday May 2018

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

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Common Law Trademark Infringement, Common Law Unfair Competition, Counterfeiting, Debra McVicker Lynch, False Advertising, False Designation of Origin, Federal Trademark Dilution, Federal Trademark Infringement, Tanya Walton Pratt, Unjust Enrichment

The defendants in this counterfeiting lawsuit are the owners and operators of a BP gas station located in Sunman, Indiana, who are accused of selling counterfeit Oakley sunglasses. The counterfeit products were observed for sale in the store by Plaintiff’s representatives.

The plaintiff, Oakley, Inc., seeks damages and injunctive relief.

Oakley, Inc. v. Sunman BP et al.

Court Case Number: 4:18-cv-00085-TWP-DML
File Date: Wednesday, May 16, 2018
Plaintiff: Oakley, Inc.
Plaintiff Counsel: Jason D. Groppe, Esq., Logan S. Bednarczuk, Esq.
Defendants: Swami Property Sunman Inc. dba Sunman BP, Chirag Patel, Does 1-10
Cause: Federal Trademark Infringement, False Designation of Origin, False Advertising, Federal Trademark Dilution, Common Law Trademark Infringement, Common Law Unfair Competition, Unjust Enrichment
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Debra McVicker Lynch

Complaint:

View this document on Scribd

WORLD OF LEGGINGS vs. LEGGINGS WORLD…are you confused?

17 Tuesday Apr 2018

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

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Common Law Trademark Infringement, False Designation of Origin, Tanya Walton Pratt, Tim A. Baker, Trademark Dilution, Trademark Infringement, Unfair Competition, Unjust Enrichment

The Plaintiff in this trademark lawsuit, California-based Muscle Flex, Inc., operates a hosiery website, worldofleggings.com, which boasts “5.5 million visitors, 27 million views, and millions of dollars in sales across the United States.”

The Defendants operate several hosiery stores called “Leggings World” inside Simon Property Group (“Simon”) properties across the Midwest and Northeast. Simon is included as a defendant in the lawsuit.

When Muscle Flex complained of the infringement to Simon, Simon responded by removing instances of “Leggings World” from its website and digital directories inside its malls, and sending cease-and-desist letters to tenants operating under the “Leggings World” name in its properties.

However, this didn’t satisfy Muscle Flex, which also wants to receive some money for damages, leading to some slight lawyer shade:

Simon has seemingly thrown in the towel on Leggings World, removing it from all Simon online directories (really, go try to find a store online), but we’ll see whether Leggings World decides to challenge Muscle Flex and continue operating the physical stores. Stay tuned for updates.

Muscle Flex, Inc. v. Simon Property Group, L.P. et al.

Court Case Number: 1:18-cv-1140
File Date: Friday, April 13, 2018
Plaintiff: Muscle Flex, Inc.
Plaintiff Counsel: Christopher A. Brown of Woodard, Emhardt, Moriarty, McNett & Henry LLP, Connor Lynch of Lynch LLP (pro hac vice)
Defendants: Simon Property Group, L.P., Simon Property Group, Inc., Matt Murat Dagli, New Purple LLC
Cause: Trademark Infringement, Unfair Competition, False Designation of Origin, Trademark Dilution, Common Law Trademark Infringement, Unjust Enrichment
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Tim A. Baker

Complaint:

View this document on Scribd

Indy’s COMFORT STAY INN sued for trademark infringement by owner of COMFORT INN

17 Monday Jul 2017

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

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Tags

Debra McVicker Lynch, False Designation of Origin, Federal Trademark Infringement, Indiana Trademark Infringement, Indiana Unfair Competition, Tanya Walton Pratt

The Plaintiff in this trademark lawsuit is one of the largest lodging franchisors in the world. Among its many well-known brands are COMFORT INN and COMFORT SUITES. Plaintiff has used its family of COMFORT trademark since at least 1984.

Defendant operates a hotel in Indianapolis, Indiana under the name “Comfort Stay Inn.” Defendant’s utilizes the domain name comfortstayinn.com.

Cease-and-desist coomunications from Plaintiff’s attorney were unsuccessful, hence this lawsuit. Plaintiff asserts that Defendant’s hotel name is confusingly similar and has irreparably damaged the value of the COMFORT family of marks.

Choice Hotels International, Inc. v. American Hospitality Solution, LLC

Court Case Number: 1:17-cv-02402-TWP-DML
File Date: Friday, July 14, 2017
Plaintiff: Choice Hotels International, Inc.
Plaintiff Counsel: Calvert S. Miller of Carson Boxberger LLP
Defendant: American Hospitality Solution, LLC
Cause: Federal Trademark Infringement, False Designation of Origin, Indiana Trademark Infringement, Indiana Unfair Competition
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Debra McVicker Lynch

Complaint:

View this document on Scribd

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