False Designation of Origin

January 30, 2015

Indiana Trademark Litigation: Archetype Sues Alleging Trade Dress Infringement

Indianapolis, Indiana – An Indiana intellectual property attorney for Archetype Ltd. (“Archetype”) of Short Hills, New Jersey sued in the Southern District of Indiana alleging that LTD Commodities LLC (“LTD”) of Bannockburn, Illinois infringed the trademark PathLights™.

Plaintiff Archetype contends that it has been marketing a distinctive and famous battery-operated motion-detection lighting system under the PathLights trademark since at least as early as 2009. It states that the overall look and feel of the PathLights product is non-functional and serves as a source identifier. In this Indiana lawsuit, Archetype accuses LTD of trade dress infringement, false designation of origin or sponsorship, passing off, and unfair competition.

Archetype indicates in the complaint that LTD is marketing, selling, and promoting a battery-operated motion-detection lighting product that is almost identical to Archetype’s PathLights product. It further claims that the accused LTD lights illustrated on LTD’s website are actually images of Archetype’s PathLights product and that the lighting products that consumers actually receive from LTD upon purchase of the LTD product are not an Archetype’s PathLights product but are, instead, a different, lower-quality light.

Defendant LTD is accused of “intentionally, willfully and deliberately pull[ing] a ‘bait and switch’ on consumers” and, in doing so, damaging Archetype’s sales volume and business reputation.

In this lawsuit, filed by an Indiana intellectual property lawyer for Archetype, the following counts are asserted:

• Count I: Trade Dress Infringement

• Count II: False Designation of Origin or Sponsorship and Passing Off

• Count III: False Advertising

• Count IV: Trade Dress Dilution

Archetype asks the court for judgment that LTD’s acts constitute trade dress infringement, unfair competition, false designation of origin and/or sponsorship, false advertising and trade dress dilution; for an award of LTD’s profits and actual damages, including corrective advertising, as well as trebling those damages pursuant to 15 U.S.C. § 1117; for an order that all accused LTD products and other accused materials be surrendered for destruction; for an injunction; and for an award of Archetype’s attorneys’ fees, costs and expenses.

The case was assigned to Chief Judge Richard L. Young and Magistrate Judge Denise K. LaRue in the Southern District of Indiana and assigned Case No. 1:15-cv-00106-RLY-DKL.

January 28, 2015

Indiana Copyright Litigation: Microsoft Asserts Copyright, Trademark Infringement by Ace Recycling

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – An Indiana copyright and trademark attorney for Microsoft Corporation (“Microsoft”) of Redmond, Washington sued in the Northern District of Indiana alleging that Ace Recycling, Inc. and Kevin Cawood, both of Fort Wayne, Indiana (collectively, “Defendants”), infringed copyrighted material belonging to Microsoft. Defendants have also been accused of trademark infringement, false designation of origin, false description and representation, counterfeiting and unfair competition. Microsoft seeks damages, an accounting, the imposition of a constructive trust upon Defendants’ illegal profits, and injunctive relief.

Microsoft develops, markets, distributes and licenses computer software. Ace Recycling is engaged in the business of advertising, marketing, installing, offering, and distributing computer hardware and software, including the software at issue, which Microsoft contends is unauthorized.

Microsoft’s software products, which have been registered by the U.S. Copyright Office, include Microsoft Windows XP and Microsoft Vista, both of which are operating systems for desktop and computers.

Also at issue are the following trademarks and service marks belonging to Microsoft:

• “MICROSOFT,” Trademark and Service Mark Registration No. 1,200,236, for computer programs and computer programming services;

• “MICROSOFT,” Trademark Registration No. 1,256,083, for computer hardware and software manuals, newsletters, and computer documentation;

• WINDOWS, Trademark Registration No. 1,872,264 for computer programs and manuals sold as a unit; and

• COLORED FLAG DESIGN, Trademark Registration No. 2,744,843, for computer software.

Microsoft contends that Defendants advertised, marketed, installed, offered and distributed unauthorized copies of Microsoft software, despite Microsoft’s claims that their actions infringed Microsoft’s intellectual property rights. Specifically, Microsoft asserts that, in April 2013, Defendants distributed to an investigator refurbished computer systems with unauthorized copies of Windows XP installed on them. In response, in June 2013, Microsoft asked Defendants to cease and desist from making and distributing infringing copies of Microsoft software. Microsoft alleges that, in May 2014, Defendants again distributed to an investigator a refurbished computer system with an unauthorized copy of a Windows operating system – in that case, Windows Vista – on it.

Microsoft contends that these are not isolated incidents but, instead, indicate Defendants’ pattern of acting in reckless disregard of Microsoft’s registered copyrights, trademarks and service marks.

In this Indiana lawsuit, Microsoft’s copyright and trademark attorney makes the following claims:

• Copyright Infringement – 17 U.S.C. § 501, et seq.

• Trademark Infringement – 15 U.S.C. § 1114

• False Designation Of Origin, False Description And Representation – 15 U.S.C. § 1125 et seq.

• Indiana Common Law Unfair Competition

• For Imposition Of A Constructive Trust Upon Illegal Profits

• Accounting

Microsoft asks for a judgment of copyright infringement; of trademark and service mark infringement; that Defendants have committed and are committing acts of false designation of origin, false or misleading description of fact, and false or misleading representation against Microsoft, in violation of 15 U.S.C. § 1125(a); that Defendants have engaged in unfair competition in violation of Indiana common law; and that Defendants have otherwise injured the business reputation and business of Microsoft.

Microsoft also asks for the impoundment of all counterfeit and infringing copies of purported Microsoft products; the imposition of a constructive trust upon Defendants’ illegal profits; injunctive relief; damages, including enhanced damages; and costs and attorneys’ fees.

The case was assigned to Judge Joseph Van Bokkelen and Magistrate Judge Susan L. Collins in the Northern District of Indiana and assigned Case No. 1:15-cv-00032-JVB-SLC.

December 29, 2014

Indiana Trademark Litigation: Bettie Page, LLC Sues Vibes Base

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for Bettie Page, LLC of Indianapolis, Indiana (“BPL”) sued in the Southern District of Indiana alleging that Vibes Base Enterprises, Inc. of El Monte, California (“Vibes Base”) committed unfair competition under federal, California and Indiana common law. BPL has asked the court for the cancellation of a federal trademark registration belonging to Vibes Base.

BLP claims that it is the exclusive owner of the name, likeness, voice, right of publicity and endorsement, worldwide trademarks, copyrights and other intellectual property related to the late model Bettie Page. Among its intellectual property holdings are trademark registrations for BETTIE PAGE, trademark numbers 2,868,613 and 2,868,614 which have been registered by the U.S. Patent and Trademark Office.

Vibes Base develops, manufactures and markets lines of apparel products and accessories under various brand names, including “Bette Paige.” In May 1999, Sand K. Inc. obtained federal trademark registration number 2,244,182 for the mark BETTE PAIGE for women’s clothing. Sand assigned that mark to Vibes Base in 2011.

In March 2014, BPL filed a federal trademark application for the BETTIE PAGE trademark for “computerized on-line retail store services in the field of clothing…” and similar uses. The USPTO refused registration of this trademark on the grounds that a likelihood of confusion existed between BETTIE PAGE, for which Plaintiff had applied, and the trademark BETTE PAIGE, which had previously been registered.

Plaintiff contends that the registration and/or use of the BETTE PAIGE trademark is an illegal use of the Page intellectual property, including the right of publicity.

In this complaint, filed by an Indiana trademark lawyer, the following counts are asserted:

• Count I: Unfair Competition Under 15 U.S.C. §1125(A)
• Count II: Unfair Competition Under Cal. Bus. & Prof. Code §17200 et seq.
• Count III: Common Law Unfair Competition
• Count IV: Unjust Enrichment
• Count V: Right of Publicity Infringement Under Cal. Civ. Code §3344.1
• Count VI: Request for Declaratory Judgment of No Trademark Infringement
• Count VII: Declaration that Defendant’s Registration is Invalid (Non Compliance with 15 U.S.C. §1052(c))
• Count VIII: Declaration that Defendant’s Registration is Invalid (False Designation of Origin, Sponsorship or Endorsement)

BPL asks the court to cancel Vibes Base’s BETTE PAIGE trademark; for an award of actual damages; for treble damages for willful and/or intentional use of an unauthorized trademark; for an award of attorneys’ fees and expenses; to order Vibes Base to destroy or surrender to BPL all unauthorized products, including all products that Vibes Base is able to recall; and, in the alternative, to declare that BPL’s trademark, as contained in its trademark application, is not confusingly similar to the BETTE PAIGE trademark.

October 15, 2014

Indiana Copyright and Trademark Litigation: Edible Arrangements Sues Edible Creations and Owner

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – An Indiana trademark attorney for Edible Arrangements, LLC (“EA”) and Edible Arrangements International, LLC (“EAI”) of Wallingford, Connecticut filed an intellectual property complaint in the Northern District of Indiana alleging trademark and copyright infringement by Tom Drummond and Edible Creations, LLC (“EC”) of Allen County, Indiana. Defendants are accused of infringing several trademarks (below), which have been issued by the U.S. Trademark Office, as well as a copyrighted work.

Since 1998, EAI has been using the phrase “Edible Arrangements,” together with various related design marks, in connection with various food products. Its products include fruit cut to look like flowers as well as other fruit products. EAI operates a franchise network of over 1,200 independent owner-operated franchise locations throughout the United States and internationally. It sublicenses the trademarks at issue in this Indiana litigation to its franchisees.

The other Plaintiff, EA, owns the following trademarks relating to “Edible” and “Edible Arrangements”:

In August 2013, Defendants Edible Creations and the company’s owner, Tom Drummond, Filed an application for what Plaintiffs content is a mark that is confusingly similar to one or more of EA’s trademarks:

In September 2013, Plaintiffs sent a cease-and-desist letter demanding that Edible Creations cease using the mark. It later filed an opposition before the Trademark Trial and Appeal Board (“TTAB”) challenging the registration on the grounds of deceptiveness, false suggestion of a connection between Edible Creations and EA, likelihood of confusion, dilution, misdescriptiveness and fraud. Edible Creations did not respond to EA’s opposition and the TTAB entered a default against Edible Creations and refused to register Edible Creations’ mark.In August 2013, Defendants Edible Creations and the company’s owner, Tom Drummond, filed an application for what Plaintiffs contend is a mark that is confusingly similar to one or more of EA’s trademarks:

In this lawsuit, Defendants have been accused of continuing to advertise, promote and sell fruit arrangements in Indiana using the phrase “Edible Creations” and “Edible Creations Creator of Edible Floral Arrangements.” They have also been accused of violating EA’s copyright in a sculpture known as the “Hearts and Berries Fruit Design” by displaying the copyrighted design in print, including on vehicles, and on the internet.

In its complaint, filed by an Indiana trademark and copyright lawyer, Plaintiffs list the following claims:

Trademark Infringement
False Designation of Origin
Trademark Dilution

By Blurring
By Tarnishment
Copyright Infringement
Unfair Competition
Unfair Competition

Plaintiffs seek damages, including punitive damages, as well as injunctive relief.

Practice Tip:

Allegations of trademark dilution involve a different analysis from claims of trademark infringement. The first type of trademark dilution is dilution by blurring. An allegation of dilution by blurring requires that the plaintiff prove, among other things, that its mark is “famous.” This is not an easy burden, requiring that the mark have “extensive public recognition and renown” within the population of average consumers. There are some marks, such as Chanel, Coke and Microsoft, for which establishing such renown is likely achievable. However, this bar is extremely high. Even trademarks that are very well known, such as Coach, which has been used since 1961 and under which several billion dollars of sales are made annually, have been found to be “not famous” for the purposes of a dilution analysis. Edible Arrangements will have a difficult time proving this claim.

The second type of trademark dilution is dilution by tarnishment. Edible Arrangements will also have a difficult time establishing the elements of this type of trademark dilution. This cause of action is generally brought when the reputation of a well-known mark is harmed by another’s use of that trademark or a similar mark within a sexual context. For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002), the court held that the use of the term “VelVeeda” by a pornographic website tarnished the trademark held by the makers of Velveeta cheese. Courts may also find dilution by tarnishment where a defendant offers inferior products or services. It is unclear that Plaintiffs here have alleged facts sufficient to support a claim of tarnishment.

October 1, 2014

Indiana Trademark Litigation: KM Innovations Sues LTD Commodities

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for KM Innovations LLC of New Castle, Indiana (“KM”) sued in the Southern District of Indiana alleging that LTD Commodities LLC of Bannockburn, Illinois (“LTD”) infringed the trademarked “INDOOR SNOWBALL FIGHT”, Trademark Registration No. 4,425,111 which has been issued by the U.S. Trademark Office.

KM sells synthetic “snowballs” for use in indoor “snowball fights.” It contends that it uses two distinct trademarks to market and sell these synthetic snowballs: “SNOWTIME anytime!” and INDOOR SNOWBALL FIGHT. KM has also sought patent protection for its indoor snowballs.

The SNOWTIME anytime!/”indoor snowball fight” concept was conceived in December 2012. At a party, several parents realized that a market might exist for “indoor snowballs,” which would enable children to have a “snowball fight” but without the usual requirements of snow or being outside. KM later introduced a product based on this idea.

In this Indiana trademark complaint, KM asserts that an item called an “Indoor Snowball Fight Set” is being offered and sold on by LTD on the LTD website. The retail price of the product offered by LTD is $9.95 per 12 synthetic balls, while an allegedly similar product is offered and sold by KM for somewhat more, with a retail price of about $1 per synthetic snowball.

KM contends that, by using the name “Indoor Snowball Fight Set,” LTD has deliberately misappropriated KM’s trademark rights. It claims that the use by LTD of this name demonstrates a wrongful attempt by LTD to utilize the goodwill associated with the KM synthetic-snowball product. KM also claims that LTD’s product is inferior and that, as a result, KM’s reputation will be damaged when consumers are confused into believing that KM is associated with LTD’s “Indoor Snowball Fight Set.”

In its complaint, filed by an Indiana trademark lawyer, KM claims the following:

• Count I: Infringement of Federal Trademark Registration No. 4,425,111
• Count II: False Designation of Origin/Unfair Competition – 35 U.S.C. § 1125(a)

KM asks the court for a judgment of trademark infringement and unfair competition. It requests that the court award damages, including treble damages; order the surrender of any infringing materials; prohibit the use of “Indoor Snowball Fight” by LTD and its agents; and award to KM its costs and attorneys’ fees.

Practice Tip #1: While not included as a separate count, KM did allege trademark dilution in paragraph 24 of the complaint. This cause of action is distinct from trademark infringement and applies to trademarks that are deemed to be famous. An action for dilution can assert either, or both, of two principal harms: blurring and tarnishment. Dilution by blurring, codified in 15 U.S.C. 1125(c)(2)(B), arises when association with another similar mark causes the distinctiveness of the famous mark to be compromised. In contrast, dilution by tarnishment under 15 U.S.C. § 1125(c)(2)(C) happens when the reputation of the famous mark is damaged by association with a similar mark.

Practice Tip #2: KM, no stranger to intellectual property litigation, has previously sued in Indiana federal court alleging trade dress infringement of the packaging for its synthetic snowballs.

August 7, 2014

Indiana Trademark Litigation: Rieke Corporation Sues Riekes Packaging Corporation for Trademark Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – An Indiana trademark attorney for Rieke Corporation d/b/a Rieke Packaging Systems of Auburn, Indiana sued in the Northern District of Indiana alleging that Riekes Packaging Corporation of Nebraska infringed the trademark Rieke Packaging Systems®, Trademark No. 2742836, which has been registered by the U.S. Trademark Office.

Plaintiff Rieke Corporation states that it is one of the largest manufacturers of packaging components in the world. Its product line includes pumps, foamers, and sprayers for household dispensers as well as plastic and steel closures, caps, drum and pail enclosures, rings and levers for the industrial market. These products are used to store, transport, process and dispense various products in the agricultural, beverage, food, household products, industrial, medical, nutraceutical, personal care and pharmaceutical markets.

Plaintiff asserts that it has spent a considerable amount of money establishing the “Rieke Packaging Systems” trade name and trademark in the minds of customers as a source of high-quality and reliable packaging dispensers and closures. It claims that the trade name and trademark have become associated in the minds of purchasers with Plaintiff as “one of the largest and most reputable manufacturers and distributors of high quality and reliable packaging dispensers and closures in the world.”

Defendant Riekes Packaging Corporation has been manufacturing and selling packaging components since the corporation’s formation in 2012, according to Plaintiff. Rieke Corporation indicates that the “Riekes Packaging Corporation” name is shown on Defendant’s glass bottles, plastic bottles, plastic closures, caps, metal closures, dispensing closures and systems, tubes and other similar goods.

In this Indiana trademark lawsuit, Rieke Corporation accuses Riekes Packaging Corporation of knowing, deliberate, and intentional violations of Plaintiff’s trademark rights, stating Defendant’s use of the “Riekes Packaging Corporation” trade name or trademark with or on its products is likely to cause confusion in the marketplace regarding whether there is an association between Plaintiff and Defendant and as to the source or origin of Defendant’s goods. In their complaint, filed by an Indiana trademark lawyer, Plaintiff lists the following counts:

Count I-rademark Infringement under the Lanham Act
Count II-Unfair Competition under Section 43(a) of the Lanham Act
Count III-Common Law Trademark Infringement and Unfair Competition

Rieke Corporation asks the court to:

• enjoin Defendant and its agents from using “Riekes Packaging Corporation” as business name; in connection with sales or other commercial activities; or in a way that would be likely to lead others to believe that Defendant or its products were connected with Plaintiff;

• enjoin Defendant from engaging in any other activity that would constitute unfair competition;

• direct Defendant to recall infringing materials;

• declare that Defendant’s use of “Riekes Packaging Corporation” in connection with the sale of packaging products and components constitutes trademark infringement under the Lanham Act and the common law of the state of Indiana;

• direct that Defendant cancel or otherwise modify any trademark applications containing the “Riekes Packaging Corporation” name; and

• award to Rieke Corporation damages, including enhanced damages, costs and attorney’s fees.

Practice Tip: Under U.S. trademark law, trademarks that are primarily surnames, or which consist of a surname and other material that is not registrable as a trademark, are treated the same as descriptive trademarks. Thus, the trademark will not be protected as intellectual property until it has achieved secondary meaning through advertising and/or use over an extended period of time. Once that surname has acquired secondary meaning, it may be protectable as a trademark and others can be prevented from using the trademark on confusingly similar goods, even if that person has the same last name. So, for example, Joe McDonald could expect a legal challenge – presumably one that would succeed – if he opened a restaurant named “McDonald’s,” despite that “McDonald” is his last name.

April 7, 2014

Indiana Trademark Litigation: Order Inn Asserts Trademark Infringement by “Order In”

By Overhauser Law Offices, LLC

Indianapolis, Indiana – A trademark attorney for Order Inn, Inc. of Las Vegas, Nevada filed a lawsuit in the Southern District of Indiana alleging that TJ Enterprises of Indiana, LLC d/b/a Order In (“Order In”) and Tom Ganser, both of Carmel, Indiana and other unknown “Doe” individuals infringed trademarks for “ORDER INN”, Registration Nos. 3,194,903 and 2,801,951, which have been issued by the U.S. Trademark Office.

Order Inn Hospitality Services, also known as Order Inn, was founded in 2001. The company’s initial core product, Order Inn Room Service, was created to provide room service to guests of limited-service hotels and timeshares. Order Inn states that it has developed partnerships with over 10,000 hotels and 700 restaurants nationwide and that it does business in Indiana.

Order Inn asserts ownership over several registered trademarks for “Order Inn,” among them a registration for “On-line ordering services in the field of restaurant take-out and delivery; on-line order fulfillment services for goods and services which hotel guests, residents or businesses may wish to purchase; promoting the goods and services of others by preparing and placing advertisements in menus placed in hotels, residences or businesses; providing information in the field of on-line restaurant ordering services.”

Order Inn claims that, as a result of its extensive, continuous and exclusive use of the “Order Inn” trademark in connection with its services, that trademark has come to be recognized by consumers as identifying Order Inn’s services as well as distinguishing them from services offered by others. It further claims that its trademark has developed substantial goodwill throughout the United States.

Order In, which also does business in Indiana, facilitates restaurant takeout and delivery through its website and via telephone. Order In is accused of trademark infringement of a registered trademark and false designation of origin. Ganser is alleged to be an owner and/or manager of Order In and to have personally participated in any trademark infringement. Both Order In and Ganser are accused of infringing upon the Order Inn trademark willfully, intentionally and deliberately and with full knowledge and willful disregard of Order Inn’s intellectual property rights.

In its complaint, filed by a trademark lawyer for Order Inn, the following counts are alleged:

• Federal Trademark Infringement Under 15 U.S.C. §1114
• False Designation of Origin and Unfair Competition under 15 U.S.C. §1125(a)

Order Inn asks for an injunction; damages, including treble damages; interest; costs and attorney’s fees

Practice Tip:

The protection afforded to a registered trademark is not exhaustive in scope. Among the limits to its applicability are restrictions based on the type of business to which the trademark pertains. From its website, it appears that Order Inn directs its efforts primarily towards guests at hotels, inns and similar temporary-lodging facilities. In contrast, Order In’s offerings are not similarly limited.

Trademarks protection is also unavailable for generic words that merely describe the goods or services for sale. For example, while “Apple” could be trademarked for use in conjunction with the sale of computers, a company would not be allowed to trademark the term to refer to the sale of apples. Similarly here, Order Inn may have difficulty in showing that it should be allowed to prohibit nationwide the use by anyone else of the generic term “order in.”

April 3, 2014

Indiana Trademark Litigation: Noble Roman’s Sues for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for Noble Roman’s, Inc. of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging that Sahara Sam’s Indoor Water Park, LLC of Pennsauken, New Jersey (“Sahara”) infringed its trademarks. These trademarks are: Noble Roman’s®, Trademark Registration No. 987,069; THE BETTER PIZZA PEOPLE, Trademark Registration No. 1,920,428; and a design mark, Trademark Registration No. 1,682,308. Noble Roman’s also states that it has registered the Tuscano’s® mark. In addition to trademark infringement, Noble Roman’s asserts that Sahara engaged in false designation of origin and unlawful competition. Noble Roman’s has registered its marks with the U.S. Patent and Trademark Office.

Noble Roman’s is in the business of franchising the operation of Noble Roman’s pizza franchises that feature pizza, breadsticks, and other related food items to various franchisees throughout the world. Noble Roman’s has used its trademarks, among them “Noble Roman’s” and “The Better Pizza People,” registered in 1974 and 1995, respectively, in commerce in connection with marketing, identifying, and promoting its pizza franchises.

On or about June 27, 2005, Noble Roman’s and entered into two franchise agreements. Under the terms of the agreements, Sahara became a franchisee of Noble Roman’s, licensed and authorized to sell “Noble Roman’s” and “Tuscano’s” branded food products using Noble Roman’s intellectual property assets. Noble Roman’s asserts that these agreements included terms relating to the accurate reporting of sales and timely payment of franchise fees and other fees.

Sahara is accused of failing to pay royalties as required under the agreement and of misreporting sales, among other things. Noble Roman’s contends that Sahara purposely, intentionally and knowingly misreported its sales to Noble Roman’s for the purpose of avoiding payment of franchise fees and/or royalties which were due.

Noble Roman’s also contends that, after electing not to renew the franchise agreements, Sahara violated certain post-termination provisions of the Agreements, including those which require Sahara to: (1) cease to use any Noble Roman’s proprietary products; and (2) remove from public view and display any signage or other articles containing or depicting the trademarks.

Sahara is further accused of having violated the non-competition covenants by selling, after termination of the franchise agreements, various food items “which can be utilized without knowledge gained from Noble Roman’s.”

Noble Roman’s states that Sahara’s actions were without the authorization or consent of Noble Roman’s and that they constitute trademark infringement, in violation of 15 U.S.C. § 1114(1), as well as false designation of origin in violation of 15 U.S.C. § 1125.

The complaint, filed by an Indiana trademark lawyer, lists the following:

• Count One (Trademark Infringement)
• Count One [sic] (Breach of Contract)
• Count Two (Fraud)
• Count Three (Injunctive Relief)

Noble Roman’s asks for injunctive relief, as well as judgment in its favor in amount to be proven at trial, together with interest, punitive damages, costs of collection and reasonable attorney’s fees.

Practice Tip: Noble Roman’s has been particularly aggressive in enforcing franchise agreements. Since 2007, it has also filed the following suits in the Southern District of Indiana:

February 12, 2014 – NOBLE ROMAN’S, INC. v. B & MP and LESLIE PERDRIAU

September 5, 2012 – NOBLE ROMAN’S, INC. v. VILLAGE PANTRY

March 17, 2011 – NOBLE ROMAN’S, INC. v. FINDLAY TIFFIN OIL, LLC and AYMAN MAGDADDI

January 27, 2011 – NOBLE ROMAN’S INC. et al. v. BRABHAM OIL COMPANY and BRABHAM OIL COMPANY

October 9, 2009 – NOBLE ROMAN’S, INC. v. CITY CENTER FOOD CORP., INC.

August 31, 2009 – NOBLE ROMAN’S INC. v. W.J. INTERNATIONAL GROUP, LLC

July 17, 2009 – NOBLE ROMAN’S, INC. v. MARDAN, INC.

July 8, 2009 – NOBLE ROMAN’S, INC. v. RENTON WILLIAMS

April 21, 2009 – NOBLE ROMAN’S, INC. v. RICHARD A. GOMES and RRCM FOODS, INC.

April 2, 2009 – NOBLE ROMAN’S, INC. v. KANDAKAR ALAM

February 17, 2009 – NOBLE ROMAN’S, INC. v. EXPRESS LANE, INC.

February 10, 2009 – NOBLE ROMAN’S, INC. v. JJP&L, LLC

November 6, 2008 – NOBLE ROMAN’S, INC. v. PARDIS & ASSOCIATES, INC.

October 24, 2008 – NOBLE ROMAN’S, INC. v DELTA PROPERTY MANAGEMENT LLC, ZACK BROTHERS TRUCK STOP, LLC and STANDARD PETROLEUM CORP.

October 6, 2008 – NOBLE ROMAN’S INC. v. JAY’S GAS LLC

April 9, 2008 – NOBLE ROMAN’S, INC. v. SHAHRAM RAHIMIAN

March 17, 2008 – NOBLE ROMAN’S, INC. v. MEDALLION CONVENIENCE STORES, INC.

December 20, 2007 – NOBLE ROMAN’S, INC. v. MICHAEL J. BRUNSWICK, LAURIE BRUNSWICK, and M&L RESTAURANTS, LLC

September 17, 2007 – NOBLE ROMAN’S, INC. v. THE FRENCH BAGUETTE, LLC et al.

July 26, 2007 – NOBLE ROMAN’S, INC. v. MR. RON’S, L.C.

July 19, 2007 – NOBLE ROMAN’S INC. v. BAUER BUILT, INC. et al.

March 31, 2014

Indiana Trademark Litigation: Agler Sues Westheimer Over Use of Stratotone Mark

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Indiana trademark attorneys for Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana, filed a lawsuit in the Northern District of Indiana alleging that Westheimer Corporation of Northbrook, Illinois infringed the trademark “STRATOTONE” (the “Stratotone mark”), Trademark Registration No. 3,986,754 which has been issued by the U.S. Patent and Trademark Office (“USPTO”). Counterfeiting, unfair competition, and false designation of origin arising under the Lanham Act, 15 U.S.C. § 1051 et seq., and the statutes and common law of the State of Indiana have also been alleged.

Agler custom manufactures guitars and sells them across the United States. Each of Agler’s guitars is hand crafted from the wood of a customer’s choosing and features vintage hardware. Agler currently accepts orders for his guitars on his website at www.stratotoneguitar.com. He also displays and sells his guitars, which sell at retail for $1,250 or more, at vintage guitar shows across the nation. Angler asserts that, since at least as early as January of 2007, his marketing and promotions in connection with his guitars have included the Stratotone Mark.

Agler claims a right to exclude others’ use of the “Stratotone” mark in connection with guitars based on, inter alia, ownership of trademark rights to the mark “Stratotone” conferred by U.S. Reg. No. 3,986,754 (“‘754 Registration”). The ‘754 Registration was issued by the USPTO in 2011 as a result of a 2006 application for the Stratotone mark in association with “musical instruments, namely, guitars.”

According to the complaint, at the National Association of Music Merchants (“NAMM”) show in 2010, Westheimer offered and sold cheaper guitars using the Stratatone mark. Agler states that he spoke to Westheimer personnel twice at this show, notifying them that Westheimer’s products were infringing the Stratotone mark. Agler alleges that he was unable to sell any of his guitars at the NAMM show that year.

Agler indicates that, since the 2010 NAMM show, Westheimer has flooded the market with lower quality, cheaper guitars that bear the Stratotone mark. These guitars retail between $199.00 and $399.00. Agler contends that Westheimer’s “Stratotone” guitars have destroyed the market for Agler’s more expensive Stratotone guitars.

On April 25, 2013, Westheimer filed a petition to cancel the ‘754 Registration (the “Cancellation Petition”) with the Trademark Trial and Appeal Board. The Cancellation Petition is currently pending.

In the complaint, filed by Indiana intellectual property lawyers for Agler, the following counts are alleged:

• Count I: Federal Unfair Competition and False Designation of Origin
• Count II: Federal Trademark Infringement
• Count III: Federal Trademark Counterfeiting
• Count IV: Common Law Unfair Competition and Trademark Infringement
• Count V: Unjust Enrichment
• Count VI: Conversion
• Count VII: Deception
• Count VIII: Indiana Crime Victim’s Relief Act

Agler asks the court for injunctive relief; an accounting of damages; the surrender by Westheimer of items featuring the Stratotone mark; damages, including treble damages; and attorney’s fees.

Practice Tip: Indiana Code §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys’ fees. The Indiana Court of Appeals has discussed “theft” and “conversion” as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

February 20, 2014

Noble Roman’s Sues Another Indiana Franchisee Alleging Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for Noble Roman’s, Inc. of Indianapolis, Indiana sued in the Southern District of Indiana alleging that B & MP, LLC (which was dissolved in 2011) and Leslie Perdriau of Apple River, Illinois (collectively, “B & MP”) infringed the trademark Noble Roman’s, Registration No. 987,069, as well as the trademark, The Better Pizza People, Registration No. 1,920,428. Noble Roman’s also lists a design mark, Registration No. 1,682,308 in its complaint. All of the marks have been registered by the U.S. Trademark Office.

Noble Roman’s is in the business of franchising the operation of Noble Roman’s pizza franchises that feature pizza, breadsticks, and other related food items to various franchisees throughout the world. Noble Roman’s has used its trademarks, among them “Noble Roman’s” and “The Better Pizza People,” registered in 1974 and 1995, respectively, in commerce in connection with marketing, identifying, and promoting its pizza franchises.

On or about March 16, 2010, Noble Roman’s and B & MP entered into two franchise agreements. Under the terms of the agreements, B & MP became a franchisee of Noble Roman’s licensed and authorized to sell “Noble Roman’s” and “Tuscano’s” branded food products using Noble Roman’s intellectual property assets. These agreements included terms relating to the accurate reporting of sales and timely payment of franchise and other fees.

B & MP is accused of failing to pay royalties as required under the agreement and of misreporting sales, among other things. Noble Roman’s contends that B & MP purposely, intentionally and knowingly misreported its sales to Noble Roman’s for the purpose of avoiding payment of franchise fees and/or royalties which were due.

Noble Roman’s also states that B & MP used the Noble Roman’s trademarks in connection with the sale of non-Noble Roman’s pizza and other menu items and that such use of the trademarks was without the authorization or consent of Noble Roman’s. Those acts were asserted to constitute trademark infringement, in violation of 15 U.S.C. § 1114(1), as well as a false designation of origin in violation of 15 U.S.C. § 1125.

Although the complaint lists two Defendants, Noble Roman’s states that Defendant B & MP was involuntarily dissolved in 2011 and that Defendant Leslie Perdriau succeeded to its obligations.

The complaint, filed by an Indiana trademark lawyer, lists the following:

• Count One (Trademark Infringement)
• Count One [sic] (Breach of Contract)
• Count Two (Fraud)

Noble Roman’s asks for judgment in its favor in amount to be proven at trial, together with interest, punitive damages, costs of collection and reasonable attorneys’ fees.

Practice Tip: Noble Roman’s has been particularly aggressive in enforcing franchise agreements. Since 2007, it has also filed the following suits in the Southern District of Indiana:

September 5, 2012 – NOBLE ROMAN’S, INC. v. VILLAGE PANTRY

March 17, 2011 – NOBLE ROMAN’S, INC. v. FINDLAY TIFFIN OIL, LLC and AYMAN MAGDADDI

January 27, 2011 – NOBLE ROMAN’S INC. et al. v. BRABHAM OIL COMPANY and BRABHAM OIL COMPANY

October 9, 2009 – NOBLE ROMAN’S, INC. v. CITY CENTER FOOD CORP., INC.

August 31, 2009 – NOBLE ROMAN’S INC. v. W.J. INTERNATIONAL GROUP, LLC

July 17, 2009 – NOBLE ROMAN’S, INC. v. MARDAN, INC.

July 8, 2009 – NOBLE ROMAN’S, INC. v. RENTON WILLIAMS

April 21, 2009 – NOBLE ROMAN’S, INC. v. RICHARD A. GOMES and RRCM FOODS, INC.

April 2, 2009 – NOBLE ROMAN’S, INC. v. KANDAKAR ALAM

February 17, 2009 – NOBLE ROMAN’S, INC. v. EXPRESS LANE, INC.

February 10, 2009 – NOBLE ROMAN’S, INC. v. JJP&L, LLC

November 6, 2008 – NOBLE ROMAN’S, INC. v. PARDIS & ASSOCIATES, INC.

October 24, 2008 – NOBLE ROMAN’S, INC. v DELTA PROPERTY MANAGEMENT LLC, ZACK BROTHERS TRUCK STOP, LLC and STANDARD PETROLEUM CORP.

October 6, 2008 – NOBLE ROMAN’S INC. v. JAY’S GAS LLC

April 9, 2008 – NOBLE ROMAN’S, INC. v. SHAHRAM RAHIMIAN

March 17, 2008 – NOBLE ROMAN’S, INC. v. MEDALLION CONVENIENCE STORES, INC.

December 20, 2007 – NOBLE ROMAN’S, INC. v. MICHAEL J. BRUNSWICK, LAURIE BRUNSWICK, and M&L RESTAURANTS, LLC

September 17, 2007 – NOBLE ROMAN’S, INC. v. THE FRENCH BAGUETTE, LLC et al.

July 26, 2007 – NOBLE ROMAN’S, INC. v. MR. RON’S, L.C.

July 19, 2007 – NOBLE ROMAN’S INC. v. BAUER BUILT, INC. et al.