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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: Trademark Infringement

Puma sues Brooks in Indiana for Trademark Infringement, Design Patent Infringement

11 Monday Jul 2022

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

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Common Law Trademark Infringement, Design Patent Infringement, Matthew P. Brookman, Richard L. Young, Trademark Infringement

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

Complaint:

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Lawsuit filed in Indiana over “Genesis” trademark for Window Blinds

30 Thursday Jun 2022

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

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Common Law Trademark Infringement, Declaratory Relief, False Designation of Origin, Trademark Infringement, Unfair Competition

The Plaintiff in this trademark lawsuit is a West Lafayette, Indiana-based provider of high-quality window treatments and blinds. The Plaintiff owns a trademark registration for GENESIS in connection with “window blinds, window shades, and venetian blinds,” with a claimed date of first use of April 1, 1994.

The Defendants are Coulisse, a Dutch company (operating out of Miami, Florida) that has been selling window coverings since 1992. Coulisse has begun promoting a line of “Genesis” smart window coverings, consisting of “elegant screens with a focus on functionality.”

Stay tuned for the Defendants’ response, but the easiest solution seems to be a quick rename of their Genesis concept line, which is just one of several available lines. A few promotional documents will require some text change but that’s fairly easily accomplished.

Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC et al.

Case Number: 4:22-cv-00047
File Date: June 29, 2022
Plaintiff: Lafayette Venetian Blind, Inc. v. Coulisse Distribution LLC
Plaintiff Counsel: William P. Kealey, David M. Stupich of Stuart & Branigin LLP
Defendant: Coulisse Distribution LLC, Coulisse Holding USA Inc.
Cause: Declaratory Relief, Trademark Infringement, Unfair Competition, False Designation of Origin, Common Law Trademark Infringement
Court: Northern District of Indiana
Judge: Philip P. Simon
Referred To: Andrew P. Rodovich

Complaint:

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Omi in a Hellcat Threatens $30 Million Counterclaim in YouTube Response to Trademark Infringement Lawsuit

25 Monday Apr 2022

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Trademark

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Litigation Update, Trademark Infringement

Ordinarily it’s not wise for a client to speak publicly about their ongoing legal proceedings. But when the client is a YouTube celebrity, I guess it’s expected that there will be some type of video response. Omi in a Hellcat, the defendant in a recently-filed Indiana trademark infringement lawsuit involving his Reloaded Merch brand, has posted an explosive video response on YouTube promising a full legal defense along with a $30 million counterclaim.

Presumably the Defendant has received counsel from attorneys, but you’d be hard pressed to figure out what he was told from his video comments. Starting off by accusing the Plaintiff of trying to steal his hard work, the Defendant then indicates that he intends to litigate and file a petition to cancel against the Plaintiff’s RELOADED trademark registration.

The Defendant claims to have evidence of garments created prior to the Plaintiff’s date of first use. If those garments were created under the Reloaded brand (he does not specify in the video) and sold in interstate commerce (again, not specified), that could be useful for proving priority. Actual court filings by the Defendant’s counsel may give us that information.

With no indication that the Defendant will relinquish his Reloaded Merch brand, I’d expect this litigation to be stayed pending the resolution of the TTAB cancellation proceeding, should that be filed today as mentioned in the video. We’ll post the relevant TTAB documents once filed. Stay tuned for updates.

Microsoft sues in Indiana over Phony Tech Support Schemes

28 Monday Feb 2022

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

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False Advertising, False Designation of Origin, Federal Trademark Dilution, Tanya Walton Pratt, Telemarketing and Consumer Fraud and Abuse Prevention Act, Telemarketing Sales Rule, Tim A. Baker, Trademark Infringement, Unfair Competition

Nearly seven out of ten Americans have encountered a technical support scam in the previous twelve months. Approximately ten percent of those respondents lost money from such scams. That’s not cool.

Microsoft is attempting to crack down on phony Microsoft support scams, in this particular instance focusing on a New Jersey individual operating a shell Indiana company called “Think Global.” The Complaint (below) details the scam and an interaction between Microsoft’s agent (presumably an attorney or technical investigator) and the alleged scammer(s).

The Complaint names an individual, a Mount Laurel, New Jersey resident (the sole member of the Indiana company), so perhaps there will be some justice for all the scammed individuals.

Stay tuned for updates.

Microsoft Corporation v. Solution Hat, LLC d/b/a Think Global et al.

Case Number: 1:22-cv-00396-TWP-TAB
File Date: February 25, 2022
Plaintiff: Microsoft Corporation
Plaintiff Counsel: Jeff M. Barron of Barnes & Thornburg LLP, Bonnie MacNaughton, Meagan Himes of David Wright Tremaine LLP
Defendant: Solution Hat, LLC d/b/a/ Think Global et al,
Cause: Telemarketing and Consumer Fraud and Abuse Prevention Act, Telemarketing Sales Rule, Trademark Infringement, False Advertising, False Designation of Origin, Unfair Competition, Federal Trademark Dilution, Cybersquatting
Court: Southern District of Indiana
Judge: Tanya Walton Pratt
Referred To: Tim A. Baker

Complaint:

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Noble Roman’s sues Ex-Franchisee for Unpaid Royalties, Underreported Sales Figures

09 Wednesday Jun 2021

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

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Breach of Franchise Agreement, Richard L. Young, Tim A. Baker, Trademark Infringement

Noble Roman’s is becoming a regular on this blog. It begs the question, why do they have so many intellectual property problems? Rather than dumping piles of money into back-end enforcement, perhaps they should spend more time on front-end due diligence and avoid many of these problems altogether. Given that most/all of the lawsuits involve ex-franchisees, perhaps Noble Roman’s should re-examine their franchise agreement or franchisee selection process. At least this lawsuit leaves out the ridiculous abandoned theft and conversion claims from their previous complaints.

As with most of their previous lawsuits, Noble Roman’s is suing a prior franchisee for breach of their franchise agreement. Here, the Defendants, with gas station locations in Florida and Georgia, have allegedly not paid the required royalty, underreported sales figures, failed to make available all Noble Roman’s menu items, failed to maintain required business hours, and sold non-Noble Roman’s food offerings.

The Complaint was originally filed in Marion County Superior Circuit Court for Marion County, Indiana but Defendants’ counsel has filed a Notice of Removal to the Southern District of Indiana, Indianapolis Division. Defendants’ counsel is Donald E. Pinaud, Jr. of Jacksonville, Florida.

Stay tuned for updates.

Noble’s Roman’s, Inc. v. AMI Stores Management, Inc. et al.

Case Number: 1:21-cv-01539-RLY-TAB
File Date: Sunday, June 6, 2021
Plaintiff: Noble Roman’s, Inc.
Plaintiff Counsel: Jaime L. Meyer, Jeffrey D. Roberts of Hollingsworth Roberts Means LLC
Defendant: AMI Stores Management, Inc., AMI 57 LLC d/b/a AMI 70 Food Mart, AMI 63 LLC d/b/a AMI 63 Food Mart
Cause: Breach of Franchise Agreement, Trademark Infringement
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Tim A. Baker

Complaint:

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