The Plaintiff in this lawsuit is an Illinois-based manufacturer of smart mailboxes and customized mail delivery drones.
Unfortunately, this copyright infringement lawsuit doesn’t involve the very interesting mailbox and drone technology but instead focuses on two photographs of Plaintiff’s product. The Defendants, a competing drone mailbox company from Indianapolis, allegedly copied the product photographs, make slight modifications to remove Plaintiff’s identifiers, and included the altered photographs in its own presentation materials, including at a major industry trade show.
Reviewing the images included in the Complaint (below), it certainly seems like these are fairly blatant, and slightly ridiculous, instances of copyright infringement. The Complaint also alleges several other claims based on the Defendants’ alleged attempts to “unfairly advance and promote the commercial identity, status and reputation of the Defendant Companies, to solicit the sale of their products and services to customers and potential customers, and to solicit investors, potential investors and partners, in competition with Plaintiff.”
I’m looking forward to the Defendants’ Answer and their possible explanation for the use of the altered photographs. Stay tuned for updates.
Valqari LLC v. Dronedek Corporation et al.
Case Number: 1:21-cv-01754-JMS-MJD File Date: Wednesday, June 16, 2021 Plaintiff: Valqari LLC Plaintiff Counsel: Deborah Pollack-Milgate, E. Sahara Williams of Barnes & Thornburg LLP, Louis J. Alex of Cook Alex Ltd. Defendant: Dronedek Corporation, Dronedek LLC, Daniel O’Toole Cause: Copyright Infringement, False Advertising, False Representations, False Designations of Origin, Reverse Passing Off, Unfair Competition, State Unfair Competition Court: Southern District of Indiana Judge: Jane Magnus-Stinson Referred To: Mark J. Dinsmore
The Plaintiff in this lawsuit is Sears Authorized Hometown Stores, LLC (“SAHS”), the licensor of Sears Hometown stores, which offer SAHS’s merchandise, such as major home appliances, for sale to the public on consignment from SAHS. For over 25 years, SAHS licensed a Sears Hometown store in Corydon, Indiana through dealership agreements with a series of independent dealers.
The Defendants are accused of using “their personal relationships with SAHS’s former dealer to block SAHS’s access to the market and open their own store, “Schneider’s Hometown,” at the same location as the former Sears Hometown store. Defendants are now unfairly trading off SAHS’s name and goodwill in the Corydon market.”
The Complaint (below) details the history between the original Corydon SAHS store and the Defendants, including the actions of the Defendants in abandoning their own dealer agreement.
The Defendants are also accused of using a sign designed to be confusingly similar to the sign used to designate a Sears Hometown store, including using the same font and color scheme. The interior of the Defendants’ store allegedly uses the same trade dress and fixtures used in SAHS’s branding programs, including, but not limited to, the paint colors and trim and vinyl plank wood flooring. The Defendants also continue to use the same phone number from the SAHS store.
Stay tuned for updates.
Sears Authorized Hometown Stores, LLC v. Lynn Retail, Inc. et al.
Case Number: 4:21-cv-00091-JMS-DML File Date: Friday, June 4, 2021 Plaintiff: Sears Authorized Hometown Stores, LLC Plaintiff Counsel: Michael W. Oyler of Furman Nilsen & Oyler, PLLC, Fredric A. Cohen, Allison R. Grow, Charles J. Hoover of Cheng Cohen LLC Defendant: Lynn Retail, Inc., Jerry Schneider, Laura Schneider Cause: Unfair Competition, Tortious Interference with Contract, Tortious Interference with Prospective Economic Advantage Court: Southern District of Indiana Judge: Jane Magnus-Stinson Referred To: Debra McVicker Lynch
Evansville, Indiana-based Full Throttle Automotive, an auto repair shop, is being sued for trademark infringement by Energy Beverages, producer of Full Throttle energy drinks. The Complaint (below) highlights Energy Beverages’ long history of advertising in auto racing, including being the title sponsor of the National Hot Rod Association’s primary drag racing event.
The auto repair shop has also sponsored vehicles in motorsport events. Energy Beverages sent a cease-and-desist letter in October 2020, but Full Throttle Automotive has refused to discontinue use of its trademark.
Stay tuned for the Answer in the next few weeks, when we’ll likely find out how long Full Throttle Automotive has been using their “Full Throttle” name. They posted their current name and logo on Facebook back in 2014, and it’s likely they were using their name even before that, so they may have a strong acquiescence or laches defense based on many years of inaction from Energy Beverages.
A possible outcome could be a compromise whereby Full Throttle Automotive agrees not to sponsor NHRA events, presumably the most likely source of consumer confusion.
Energy Beverages LLC v. Full Throttle Automotive LLC
Case Number: 3:21-cv-00081-RLY-MPB File Date: Wednesday, May 19, 2021 Plaintiff: Energy Beverages LLC Plaintiff Counsel: James W. Riley, Jr., Jaclyn M. Flint of Riley Bennett Egloff LLP Defendant: Full Throttle Automotive LLC Cause: Trademark Infringement, Trade Dress Infringement, False Designation of Origin, Common Law Trademark Infringement, Unfair Competition Court: Southern District of Indiana Judge: Richard L. Young Referred To: Matthew P. Brookman
The parties in this lawsuit entered into an Asset Purchase Agreement in 2012, by which the Plaintiff purchased all assets and intellectual property of the truck repair company Triple LLL Truck Repair. The Plaintiff has continued to operate the business since the purchase, now located in Andrews, Indiana, and recently registered the “TRIPLE LLL” trademark with the United States Patent and Trademark Office.
The Defendant in the lawsuit is the original seller, who has now allegedly begun operating a new truck repair business under the same name, Triple LLL, out of a location that Plaintiff had previously used.
The Complaint alleges both a likelihood of confusion and instances of actual confusion.
Stay tuned for the Defendants’ Answer and a possible explanation for re-adopting the Triple LLL name (perhaps a violation of the Asset Purchase Agreement?).
Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al.
Court Case Number: 3:21-cv-00282-JD-MGG File Date: Monday, April 26, 2021 Plaintiff: Triple LLL Truck Repair, Inc. Plaintiff Counsel: William A. Ramsey of Barrett McNagny LLP Defendant: Triple LLL, Inc. Cause: Federal Trademark Infringement, False Designation of Origin, Unfair Competition Court: Northern District of Indiana Judge: Jon E. DeGuilio Referred To: Michael G. Gotsch, Sr.
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 Mark
LA MICHOACANA MEAT MARKET for “Retail meat market stores”
Northern District Defendant’s Mark
CARNICERIA Y FRUTERIA LA MICHOACANA for a “Mexican-themed grocery store”
Southern District Defendant’s Mark
SUPER 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
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