Counterfeit

September 1, 2011

Allison Transmission Inc. Sues Defeo Manufacturing Inc. for Trademark Infringement Over Transmission Speed Sensors and Parts

Indianapolis, IN – Trademark lawyers for Allison Transmission Inc. of Indianapolis, Indiana filed a trademark infringement suit in alleging Defeo Manufacturing, Inc. of Brookfield, Connecticut infringed various ALLISON TRANSMISSION trademarks, including registration nos. 2,866,798, 2,625,008, 1,666,977, 1,624,473 , 3,821,442and 2,678,354; along with registration no. 2,615,428 for the ALLISON ELECTRIC DRIVES, all registered with US Trademark Office.

According to the complaint, Defeo manufactures and supplies replacement parts for Allison transmissions, including aftermarket, refurbished, and used parts. The complaint states that Allison is not associated with Defeo in any way. Allison alleges that Defeo “has a history of deceiving the public as to sponsorship, affiliation, or endorsement of its products by Allison.” In 2009, Allison became aware that Defeo’s website falsely claimed its products met all Allison’s quality standards. After Allison demanded the false advertising be removed, the website claims were taken down. Subsequently, however, Allison became aware that Defeo was responsible for the unauthorized manufacturing of transmission turbine speed sensors that bore the Allison trademarks without authorization. Allison alleges these speed sensors are counterfeit products, and though the products are not authorized by Allison, are advertised as “genuine Allison” products. The complaint makes claims of counterfeiting, federal trademark infringement, false designation of origin, false advertising, Indiana common law unfair competition, common law trademark infringement and seeks seizure of all “counterfeit” products and advertising, an injunction, profits, actual damages, punitive damages, costs and attorney fees.

This is at least the fifth suit filed by Allison since 2009 against a seller of replacement parts for Allison’s products.

Practice Tip: Allison Transmission’s trademark attorneys do not allege any specific infringing sales in Indiana by Defeo Manufacturing. Instead they only said that Defeo “does business in . . . has caused harm in . . and the conduct . . . complained of . . . has occurred in this judicial district.” However, the Complaint only identifies a website maintained by Defeo used to offer allegedly infringing products. This case has been assigned to Judge Sarah Evans Barker, who in similar cases, has refused to find specific personal jurisdiction based on merely maintaining an interactive website not “specifically directed” toward Indiana. To improve the chances of obtaining personal jurisdiction, it is advisable to make at least one purchase of an allegedly infringing product and have it shipped to the jurisdiction where the suit is to be filed.It is also curious that Allison alleges infringement of Federal Registration No. 2,615,428, since this registration was cancelled long ago.
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August 15, 2011

Indiana Court of Appeals Affirms Counterfeiting Conviction and Seven and a Half Years Suspended Sentence for Mail Order Form Counterfeit

By Overhauser Law Offices, LLC

Indianapolis, IN – The Indiana Court of Appeals examined Indiana’s criminal counterfeiting law in affirming a criminal counterfeiting conviction and sentence. The defendant was charged with five counts of counterfeiting, a Class D felony, after he filled out mail order forms and caused an Indiana State Trooper to receive and become indebted for “various collectable items that neither he nor any member of his household had ordered.” The defendant argued that the verdict should be overturned because the order forms were not “written instruments” as defined by the criminal counterfeiting statute. The court found that the order forms were written instruments. They examined the definition, citing I.C. § 35-43-5-1(t) and noted “a written instrument is defined as ‘a paper, a document, or other instrument containing written matter and includes ‘a list of specific items and ‘other objects or symbols of value, right, privilege, or identification.’

The court also affirmed the trial court’s sentence of seven and a half years, suspended with five years of probation. The sentence represented eighteen months for each of the five counterfeiting convictions to run consecutively. The court noted that crimes were committed “to retaliate against Trooper Kaizer for carrying out his duties as a police officer by issuing Trainor a traffic citation.” The court described how the Trooper had cited Trainor for making an illegal U-turn just before committing the criminal acts. Trainor contended his actions were a “prank.”

Practice Tip: Intellectual property attorneys sometimes make additional claims in trademark and copyright infringement cases that allege violations of criminal laws, particularly Indiana’s counterfeiting and conversion criminal statutes. For example, Indiana Intellectual Property Law News reported in February on a trademark infringement case that also made a claim of conversion, knowingly or intentionally exerting control over property of another. In June, Coach filed two trademark infringement lawsuits that also made claims under Indiana’s criminal counterfeit and forgery laws.

June 16, 2011

Coach Files Two Trademark and Copyright Infringement Lawsuits in Northern District Over Knock-Off Coach Items

By Overhauser Law Offices, LLC

South Bend; IN – Trademark and copyright lawyers for Coach, Inc. and Coach Services, Inc. of New York, New York filed two trademark infringement lawsuits in the Northern District of Indiana.

In the first lawsuit, intellectual property attorneys have alleged that Diva’s House of Style and Elizabeth “Beth” Bond of Elkhart, Indiana infringed fifty-one marks that have been registered with the US Trademark Office. The complaint also alleges that Diva’s House and Ms. Bond infringed the copyrighted works LEGACY STRIPE and SIGNATURE C, which have been registered by the US Copyright Office. The complaint alleges that Diva House and Ms. Bond have been designing, manufacturing, and/or selling “studied imitations” of Coach products that bear the Coach trade marks, trade dress and copyrighted works. Coach alleges that Diva House and Ms. Bond advertised the knock-off products on Facebook. A Coach representative used e-mail and phone to correspond with the defendants and purchased a purse from her. The representative then determined that the purse was not a genuine Coach purse and was a knock-off of inferior quality. The complaint makes claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, common law trademark infringement, unfair competition, forgery and counterfeiting. This case has been assigned to Judge Jon E. DeGuilio and Magistrate Judge Christopher A. Nuechterlein in the Northern District of Indiana, and assigned Case No. 3:11-cv-00253-JD-CAN.

In the second lawsuit, intellectual property attorneys allege that Lyn-Maree’s LLC of Auburn, Indiana, and its owners, Emma Taylor and Lynn Siples, infringed fifty-one marks that have been registered with the US Trademark Office. The complaint also alleges that Lyn-Maree’s and its owners infringed the copyrighted works LEGACY STRIPE and SIGNATURE C, which have been registered by the US Copyright Office. The complaint states that a Coach representative purchased a hand bag, wallet and sunglasses labeled “Coach” at the Lyn Maree’s retail store. The items were examined by Coach and determined to be not genuine Coach items, but knock-off items of inferior quality. The complaint makes claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, common law trademark infringement, unfair competition, forgery and counterfeiting.

Practice Tip: Coach has a reputation for vigorously defending their intellectual property. Coach filed two trademark lawsuits in the Northern District of Indiana in April of this year, which were reported on in Indiana Intellectual Property Law News. It seems that a Coach representative is monitoring businesses in the Northern District of Indiana and purchasing knock-off goods that then become the basis of these lawsuits.