False Designation of Origin

March 28, 2016

Indiana Trademark Litigation: Great American Bagel Sues Over Sign Modified to Read “Great American Eagle”

Evansville, Indiana – An Indiana trademark lawyer for Plaintiff The Great American Bagel Enterprises, Inc. (“GAB”) of Westmont, Illinois filed a trademark infringement complaint in the Southern District of Indiana against Defendants United HBA Corporation and Harbhajan Singh, d/b/a The Great American Eagle, both of Evansville, Indiana.

GAB owns, operates and franchises food-products stores known as The Great American Bagel. It owns a trademark for “The Great American Bagel,” Trademark Registration No. 2,015,665, which is comprised of the phrase “The Great American Bagel” with stars and bands. The mark has been registered by the U.S. Patent and Trademark Office.

Defendant United HBA operates a gas station and convenience store, which offers retail food products. Defendant Singh is listed as the President and sole principal of United HBA. GAB contends that United HBA is displaying a sign that had previously been used as signage for a The Great American Bagel store. GAB states that Defendants modified “Bagel” to read “Eagle” by removing the “B” and adding an “E” but that the sign is otherwise unaltered.

GAB alleges infringement of its trademark, stating that Defendants’ use of the modified sign has caused customers to confuse the food products offered by GAB with those offered by Defendants. In this federal lawsuit, filed by an Indiana trademark attorney, the following claims are made:

• Count I: Federal Trademark Infringement
• Count II: False Designation of Origin, False Advertising and Unfair Competition under the Lanham Act Section 43(A)
• Count III: Unfair Competition – Trade Name Infringement
• Count IV: Unfair Competition – Passing Off

• Count V: Unjust Enrichment

GAB seeks equitable relief, damages, including punitive damages; costs and attorney’s fees.

March 21, 2016

Indiana Trademark and Copyright Litigation: Sweetwater Contends Hello Music Copied its Website, Infringed its Intellectual Property

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Indiana intellectual property lawyers for Plaintiff Sweetwater Sound, Inc. (“Sweetwater”) of Fort Wayne, Indiana filed an intellectual property lawsuit in the Northern District of Indiana.

Plaintiff alleges that Defendant Hello Music, LLC of Austin, Texas infringed its trademarks, which have registered by the U.S. Patent and Trademark Office as Trademark Nos. 3,652,255 and 3,652,249. In addition, Sweetwater Sound contends that Hello Music infringed its copyright, issued by the U.S. Copyright Office as TX 8-064-067, which protects the contents of its website. Other counts of alleged wrongdoing, including claims under Indiana law, have been asserted.

Hello Music is accused of duplicating copyrighted content from Sweetwater’s website and using that protected content on its own website. Sweetwater contends that part of the content purportedly copied includes the Sweetwater trademark. Sweetwater also asserts that these acts by Hello Music constitute a willful and deliberate attempt to trade on Sweetwater’s goodwill.

In the complaint, filed in federal court Friday, the following claims are made:

• Count I: Copyright Infringement
• Count II: Trademark Infringement (False Designation of Origin)
• Count III: Trademark Dilution

• Count IV: Unfair Competition

Sweetwater asks the court to grant equitable relief, including the destruction of infringing materials. It also seeks actual and treble damages, disgorgement of all profits that resulted from infringing acts, litigation costs and attorneys’ fees.

March 18, 2016

Indiana Trademark Litigation: Indiana-Based “Oak Motors” Sues California-Based “Oak Motors” for Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Oak Motors, Inc. of Anderson, Indiana (“Oak Indiana”) filed a trademark infringement complaint in the Southern District of Indiana alleging that Oak Motors, Inc. of San Mateo, California (“Oak California”) is infringing U.S. Trademark Registration No. 4,487,991, which was issued by the U.S. Patent and Trademark Office.

Plaintiff Oak Indiana, a used-car dealership, has three locations in Indianapolis as well as a location in Anderson, Indiana and another in Muncie, Indiana. It focuses on offering cars to “customers with credit challenges.” It has commenced trademark litigation against a California-based used-car dealership that offers primarily luxury-brand vehicles.

Plaintiff contends that, by using “Oak Motors” to promote its business, Oak California intended to cause, and has caused, initial interest confusion and actual confusion among consumers and potential consumers. Oak Indiana asserts that Oak California’s actions are an intentional attempt to trade off the goodwill of Oak Indiana.

In addition to Oak California’s use of “Oak Motors” as a business name, Oak Indiana also complains of Defendant’s use of three websites, http://oakmotorsusa.com/, http://oakmotorsinc.com/ and http://www.oakmotorsca.com/default.aspx, claiming that the use of those websites is calculated to create consumer confusion regarding whether the two companies are related.

In this federal lawsuit, filed by Indiana trademark lawyers for Oak Indiana, the following claims are asserted:

• Count I: False Designation of Origin and False Description – 15 U.S.C. §1125(a)
• Count II: Common Law Trademark Infringement
• Count III: Unfair Competition
• Count IV: Cybersquatting – 15 U.S.C. §1125(d)

• Count V: Declaratory Judgment

Oak Indiana seeks equitable relief, including the transfer of domain names referencing the “Oak Motors” trademark; Oak California’s profits from the sale of all infringing goods; damages, including actual damages, punitive damages, statutory damages and treble damages; costs of litigation and attorneys’ fees.

February 18, 2016

Indiana Trademark Litigation: Indiana Hoverboard Manufacturer Sued on Allegations of Unauthorized Use of UL Trademark

By Overhauser Law Offices, LLC

South Bend, Indiana – Indiana trademark attorneys for Plaintiff UL LLC of Northbrook, Illinois filed a lawsuit with the federal court in the Northern District of Indiana. Plaintiff alleges that Swagway, LLC and Jianqing “Johnny” Zhu infringed the “UL” trademark, Trademark Registration Nos. 2391140 and 782589, which have been registered by the U.S. Patent and Trademark Office. Plaintiff further claims that Defendants use the Service Mark “UL” in a manner that falsely suggests a relationship between Plaintiff and Defendants. Other causes of action, including claims under the state law of Illinois, are also asserted.

Plaintiff UL, founded in 1894, is a developer of safety standards. It also offers safety testing, inspection and certification of products. Plaintiff states in this federal lawsuit that it owns a family of trademarks featuring the UL mark, including a “UL-in-a-circle” certification mark and the UL service mark.

This lawsuit pertains to hoverboards (also known as self-balancing scooters or skateboards). Plaintiff states that hoverboards have been the subject to inquiries regarding safety. It also contends that Defendants have been sued on allegations that their hoverboard caught on fire and caused property damage.

In this trademark action, Plaintiff complains of Defendants’ alleged improper use of the UL trademark and service mark on the hoverboards that Defendants make and sell. Additionally, Plaintiff contends that Defendants falsely stated that “Swagway also adheres to all required environmental standards and certifications,” including UL certification. According to Plaintiff, Defendants’ conduct was “intentional, unjustified and/or malicious, and done to purposefully harm Plaintiff.”

This Indiana litigation, filed with the court by trademark lawyers for Plaintiff, lists the following:

• Count I: Federal Trademark Counterfeiting and Trademark Infringement (15 U.S.C. § 1114)
• Count II: Federal Unfair Competition – False Designation of Origin (15 U.S.C. § 1125)
• Count III: Federal Unfair Competition – False Advertising (15 U.S.C. § 1125)
• Count IV: Violation of the Illinois Deceptive Trade Practices Act (815 ILCS 510/1 et seq.)

• Count V: Violation of the Illinois Consumer Fraud and Deceptive Business Practices Act (815 ILCS 505/1 et seq.)

Plaintiff seeks equitable and other relief along with damages, including punitive damages, costs and attorney’s fees.

February 11, 2016

Indiana Copyright and Trademark Litigation: Magazine Publisher Sues Commemorative Plaque Maker Alleging Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana copyright and trademark attorneys for Plaintiff The Rough Notes Company, Inc. (“Rough Notes”) of Carmel, Indiana commenced a copyright infringement lawsuit in the Southern District of Indiana.

The Defendant, That’s Great News, LLC (“Great News”) of Cheshire, Connecticut, is accused of infringing U.S. Trademark Registration No. 2,585,340, which has been filed with the U.S. Patent and Trademark Office, as well as unfair competition, false designation of origin, and dilution under the Lanham Act. Allegations of copyright infringement of material protected by Copyright Registrations Registration Nos. TX 7-988-447 and TX 7-988-464, as well as other related claims, have also been made.

Plaintiff Rough Notes is a publisher of print and online magazines. It indicates that it has used its “Rough Notes” trademark since 1878 and that the trademark was registered in 2002. Rough Notes contends that Defendant Great News has violated it copyright, trademark and other intellectual property rights by producing samples of commemorative plaques that feature protected content owned by Rough Notes and distributing samples via e-mail to solicit the purchase of a plaque.

In this federal complaint, filed with the court by Indiana copyright and trademark lawyers for Rough Notes, the following causes of action are alleged:

• Copyright Infringement
• Federal Unfair Competition & False Designation of Origin
• Federal Trademark Infringement
• Common Law Trademark Infringement
• Federal Trademark Dilution
• Common Law Unfair Competition

• Unjust Enrichment

Rough Notes seeks equitable relief; statutory damages, including up to $150,000 for willful infringement; and reimbursement of costs and attorneys’ fees.

Practice Tip: Plaintiff may have difficulty overcoming the defense of nominative fair use of a trademark in this lawsuit. That doctrine provides that, as a matter of law, nominative use of a mark — where the only word reasonably available to describe a particular thing is pressed into service — lies outside the strictures of trademark law. Defendant may argue that its use of “Rough Notes” on its commemorative plaques was permissible as those are the only words reasonably available to adequately describe a plaque displaying an article featured in a “Rough Notes” publication.
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February 2, 2016

Indiana Trademark Litigation: Holder of Verge Trademark Sues The Verge Group

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana trademark attorneys for Plaintiff Indy Founders LLC d/b/a Verge of Indianapolis, Indiana filed a trademark infringement lawsuit with the court in the Southern District of Indiana. The lawsuit alleges that Vox Media, Inc. and The Verge Group LLC (“TVG”) infringed the VERGE trademark, Registration No. 4,153,192, which has been registered by the U.S. Patent and Trademark Office.

Indy Founders is in the business of creating and offering online publications and websites, as well as similar services, for startup technology entrepreneurs, investors, and collaborators. It states that it holds a federal registration on VERGE as a trademark and that the VERGE trademark has been used since at least as early as January 2011.

Defendant Vox Media is a partner and owner of Defendant TVG. Plaintiff asserts that Defendants are engaged in a business similar to Plaintiff’s and that Defendants use the VERGE trademark in connection with their business, THE VERGE, and in their business’ domain name, http://www.theverge.com/. Plaintiffs contend that Defendants’ use of THE VERGE to identify their goods and services is unlawful.

In this Indiana trademark lawsuit, filed with the court by trademark lawyers for Plaintiff, the following claims are made:

• Count I: Trademark Infringement
• Count II: False Designation Of Origin
• Count III: Unfair Competition
• Count IV: Declaratory Judgment
• Count V: Indiana Crime Victims Act [Forgery under IC §35-43-5-2]
• Count VI: Preliminary and Permanent Injunctive Relief

• Count VII: Corrective Advertising

Indy Founders seeks a declaratory judgment, equitable relief, actual damages, treble damages, costs and attorneys’ fees.

January 12, 2016

Indiana Trademark Law: Stratotone Guitar Co. Has Priority Date for Stratotone Trademark; Westheimer Infringed

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – District Judge Jon DeGuilo held that prior rights to the Stratotone trademark were abandoned and that the subsequent user held the superior right to the trademark.

This litigation arose as a result of a federal trademark complaint, filed in the Northern District of Indiana by Plaintiff Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana. The Defendant is Westheimer Corporation of Northbrook, Illinois. In the complaint, Agler asserted that Westheimer had infringed the trademark “STRATOTONE” (the “Stratotone trademark”), Trademark Registration No. 3,986,754, which has been issued by the U.S. Patent and Trademark Office.

The claims listed in Agler’s complaint were:

• 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

Westheimer counterclaimed, asserting that Agler was infringing on its rights in the Stratotone trademark as well as an additional trademark for “Atom.”

In this opinion, Judge DeGuilo ruled on Agler’s motion for summary judgment on counts I through IV as well as Agler’s motion for summary judgment on all of Westheimer’s counterclaims.

The court first addressed the Stratatone trademark. Agler asserted, and Westheimer conceded, that the Stratatone mark was protected and that Westheimer’s use of the mark was likely to cause confusion. The question for the court was which party had superior rights to the mark, as determined by whether Agler or Westheimer had priority to the trademark. That priority, in turn, was determined by who had established and maintained the earliest claim to the trademark.

It was undisputed that Agler had filed an “intent-to-use” application to register the Stratotone mark on March 7, 2006. Westheimer claimed that it had acquired rights that predated Agler’s 2006 application through its 2009 purchase of trademark rights from Harmony Industries, a third party that had used the Stratotone trademark at least as early as 2001.

The court, however, reviewed the testimony of those involved with Harmony Industries and found that Harmony Industries had both ceased to use the trademark and had demonstrated no intent to use it for more than four years starting at least January 1, 2003. The holder of a trademark has only three years to formulate its intent to resume use before that trademark is presumed abandoned. Thus, Harmony Industries was held to have abandoned the trademark. In turn, because Harmony Industries had no trademark rights to convey in the Stratotone mark, Westheimer acquired none. Consequently, Agler was held to have an earlier priority date and, thus, superior rights to the trademark. The court granted Agler’s motion with respect to his claims, and Westheimer’s counterclaims, regarding the Stratotone trademark.

Regarding the Atom trademark, the court concluded that it did not have sufficient evidence to determine that Agler had acquired priority. It thus denied Agler’s motion for summary judgment with respect to the claims involving the Atom trademark.

January 11, 2016

Indiana Trademark Litigation: Barrington Music Sues Guitar Center, Music & Arts and Eastman Music Alleging Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Indiana trademark attorneys for Plaintiff Barrington Music Products, Inc. of Niles, Michigan filed a trademark infringement lawsuit in the Northern District of Indiana. The Defendants in the litigation are Guitar Center Stores, Inc. of Westlake Village, California; Music & Arts Centers of Bel Air, Maryland, which is owned by Guitar Center; and Eastman Music Company of Pomona, California.

Plaintiff Barrington Music Products offers musical instruments, specifically featuring its “Roy

Benson” and “L.A. Sax” lines. Defendant Guitar Center has been in business more than 50 years and advertises itself as “the world’s largest retailer of guitars, amplifiers, drums, keyboards, recording, live sound, DJ, and lighting equipment.” It has more than 260 stores across the United States. Defendant Music & Arts offers musical instrument for sale, as well as offering repairs, rentals and instruction at its various locations nationwide. Defendant Eastman Music Company, which offers musical instruments globally, has been in business for more than 20 years.

The trademarks at issue in the lawsuit are U.S. Trademark Registration Nos. 3,831,402 and 3,831,403. They have been registered with the U.S. Patent and Trademark Office and cover VENTO both as a standard character trademark and as a stylized trademark.

Defendants are accused of trademark infringement, trademark dilution by blurring, unfair competition via passing off and trade name infringement of the VENTO trademark due to their marketing of wind instruments under the name “Ventus,” which means “wind” in Latin. Defendant’s “Vento” is Italian for “wind.”

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Plaintiff contends that it is “common knowledge that the English translations of VENTUS and VENTO are the same.” Plaintiff also asserts that Defendants use the Ventus mark with the intent to deceive consumers by causing them to believe that Defendants’ Ventus products are related to Plaintiff’s Vento products. Plaintiff claims that the use of the Ventus mark has caused, and will continue to cause, consumer confusion.

In this lawsuit, the following causes of action are alleged:

• Count I: Federal Trademark Infringement – Lanham Act (15 U.S.C. § 1114)
• Count II: Federal Unfair Competition – Lanham Act (15 U.S.C. § 1125(a))
• Count III: False Designation of Origin – Lanham Act (15 U.S.C. § 1125(a)(1)(B))
• Count IV: Federal Trademark Dilution – Lanham Act (15 U.S.C. § 1125(c))
• Count V: Trade Name Infringement under Indiana Common Law

• Count VI: Passing Off in Violation of Indiana’s Unfair Competition Doctrine

Barrington seeks equitable relief along with damages, including punitive damages, costs and attorneys’ fees.

December 21, 2015

Indiana Trademark Litigation: Indiana Botanic Gardens Sues VitalMax Vitamins Alleging Infringing Use of “Accu-Hear”

By Overhauser Law Offices, LLC

Hammond, Indiana – Plaintiff Indiana Botanic Gardens, Inc. of Hobart, Indiana filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Almark Products, Inc. d/b/a VitalMax Vitamins (“VitalMax”) of Delray Beach, Florida infringed its trademarked “ACCU HEAR”, U.S. Trademark No. 3,010,289, which has been registered with the U.S. Patent and Trademark Office.

Indiana Botanic allege that it has been in the business of processing, packaging and otherwise selling variety of herbal products for many years. It contends that it has done so under the ACCU HEAR trademark, which has been registered for use in connection with dietary supplements.

In this trademark litigation, Indiana Botanic accuses Defendant VitalMax of production, labeling, sale and offering for sale of a nutritional supplement offered under the name ACCU-HEAR. This term, Indiana Botanic states, is confusingly similar to Plaintiff’s ACCU HEAR trademark and will irreparably harm Plaintiff by diminishing the reputation and goodwill of that trademark. Indiana Botanic asserts that VitalMax infringed the ACCU HEAR trademark willfully and deliberately.

In this federal complaint, filed by a trademark attorney for Indiana Botanic, the following is alleged:

• Count I: Federal Trademark Infringement

• Count II: Unfair Competition Under Federal Law

The “Jurisdiction and Venue” section of this federal complaint lists additional claims – “state trademark infringement, injury to business reputation and dilution, deceptive trade practices, deceptive business practices and unfair competition under the laws of the State of Indiana” – but those claims were not included as separate counts.

Indiana Botanic seeks equitable relief along with damages, including punitive damages, costs and attorneys’ fees.

December 11, 2015

Indiana Trademark Litigation: Trademark Lawsuit Filed Over Use of “All Star” Name

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff All Star Heating & Cooling, Inc. (“All Star”) of Camby, Indiana sued in the Southern District of Indiana alleging that Quality Heating and Air, Inc. (“Quality Heating”) d/b/a All Star Air and Richard Cusick (“Cusick”) of New Palestine, Indiana are infringing its trade name.

Both Plaintiff and Defendants are in the business of providing heating, venting and air conditioning service, installation and repair. Plaintiff All Star states that it began business in December of 2005 and that it has used the same name since that time. It also indicates that it has been using “the same trade dress since 2011.” This trademark infringement complaint does not indicate that Plaintiff’s business name has been registered by the U.S. Patent and Trademark Office.

The complaint states that Defendant Cusick, who is believed to be the owner and operator of Defendant Quality Heating, began business in 2014 under the assumed business name All Star Air. Plaintiff asserts that Quality Heating is currently located less than 30 miles from Plaintiff’s location.

Plaintiff All Star contends that customers and vendors have been confused by Defendants’ use of the All Star name, stating that they have “wrongly believed that there is an association or connection between the Plaintiff’s business and the Defendants’ business.” Plaintiff avers that, as a consequence, Defendants are liable for trade name infringement and unfair competition.

In its lawsuit, filed by an Indiana trademark lawyer, Plaintiff lists the following counts:

• Count I: Federal Unfair Competition
• Count II: State and Common Law Trademark Infringement

• Count III: Common Law Unfair Competition

All Star seeks equitable relief, including an injunction; damages, including treble damages; costs and attorney fees.