Indiana State Law

March 9, 2017

Indiana Trademark Litigation: Trademark Dispute over “Final Four” and “March Madness” Heads to Federal Court

Indianapolis, Indiana – National Collegiate Athletic Association (“NCAA”) of Indianapolis, Indiana sued in the Southern District of Indiana alleging trademark infringement and unfair competition.

NCAA’s trademarks, which have been registered with the U.S. Patent and Trademark office (“USPTO”), pertain to the following uses of FINAL FOUR and MARCH MADNESS:

MARK	GOODS/SERVICES	REG NO. & DATE
FINAL FOUR	Association services, namely, conducting annual basketball tournaments at the college level	1,488,836; May 17, 1988
FINAL FOUR	Promoting the goods and services of others by allowing sponsors to affiliate their goods and services with collegiate championship tournaments	2,377,720; Aug. 15, 2000
FINAL FOUR	Printed matter, namely, guides in the field of sports; Luggage, namely, portfolios, backpacks, duffle bags, rolling luggage, garment bags, briefcases, athletic bags and tote bags; and Entertainment services, Namely, providing information in the field of college sports via the Internet	2,964,266; June 28, 2006
MARCH MADNESS	Entertainment services, namely, presentation of athletic and entertainment personalities in a panel forum	1,571,340; Dec. 12, 1989
MARCH MADNESS	Entertainment in the nature of basketball tournaments between college teams	2,485,443; Sept. 4, 2001
MARCH MADNESS	Telecommunications services; namely the transmission of voice, data, images, audio, video and information via local and long distance telephone, satellite and global computer networks; leasing telecommunications equipment, components, systems and supplies; electronic mail services; telephone voice messaging services; providing multiple-user access to global computer networks to transmit, receive and otherwise access and use information of general interest to consumers; web casting of athletic games, tournaments, exhibitions, and events via the Internet	3,025,527; Dec. 13, 2005

Defendants in this Indiana trademark lawsuit are Kizzang LLC of Las Vegas, Nevada and Robert Alexander, the founder and owner of the business. They are in the business of providing nationwide Internet-based promotions that award prizes for predicting the results of sporting events. Plaintiff states that they have branded their NCAA-related services using the mark FINAL 3.

Plaintiff further asserts that Defendants had planned to adopt APRIL MADNESS for the same services as FINAL 3, but that they delayed doing so upon learning that NCAA objected to their use of FINAL 3. Kizzang has applied for federal trademark registrations for both marks with the USPTO.

Indiana trademark attorneys for Plaintiff contend that Defendants adopted both names because of their similarity to the marks used by NCAA and that Defendants did so with the intention of exploiting the goodwill associated with FINAL FOUR and MARCH MADNESS. In this lawsuit, filed in federal court, the following claims are made:

Trademark Infringement Under 15 U.S.C. § 1114
Trademark Infringement Under 15 U.S.C. § 1125(a)
Trademark Dilution Under 15 U.S.C. § 1125
Common Law Unfair Competition

Plaintiff asks for various remedies from the court, including a judgment of willful and intentional violations of 15 U.S.C. §§ 1114, 1125 and Indiana common law; injunctive relief including restraining Defendants from further use of FINAL 3 and APRIL MADNESS as well as an order that the USPTO deny registration for the marks; damages, including treble damages; and attorneys’ fees.

March 1, 2017

Indiana Trademark Litigation: Choice Hotels Alleges Former Franchisee is Infringing Econo Lodge Trademarks

By Overhauser Law Offices, LLC

Lafayette, Indiana – Choice Hotels International, Inc. of Rockville, Maryland sued in the Northern District of Indiana alleging trademark infringement under federal and Indiana law.

Choice Hotels is in the business of franchising hotels. It offers hotel and motel services under the following brands: CAMBRIA HOTELS & SUITES®, COMFORT INN®, COMFORT SUITES®, QUALITY®, SLEEP IN®, CLARION®, MAINSTAY SUITES®, SUBURBAN EXTENDED STAY HOTEL®, ECONO LODGE®, and RODEWAY INN®.

At issue in this Indiana trademark litigation is the Econo Lodge family of trademarks. These trademarks include U.S. Trademark Nos.:

January 20, 2017

Indiana Court of Appeals Rules on Irreparable Harm in Breach of Non-Compete/Non-Solicitation Agreements

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Indiana Court of Appeals affirmed the judgment of the Marion Superior Court in litigation between two civil engineering firms, Plaintiff American Structurepoint Inc. and Defendant HWC Engineering Inc. Three former employees of ASI, also listed as Defendants in the trial court, were listed in this appeal.

This dispute arose in 2014 when ASI employee Martin Knowles left ASI to join HWC as its vice president of operations. Jonathan Day and David Lancet also left ASI to begin employment at HWC.

These former ASI employees had entered into noncompetition and non-solicitation agreements with ASI. Despite these agreements, ASI contended in a lawsuit filed in Indiana state court that its former employees engaged in various acts prohibited by the agreements. ASI claimed that Day had created a list of ASI employees whom he believed might be interested in leaving to join HWC. ASI also asserted that Day subsequently shared that list with Knowles and called various ASI employees regarding employment with HWC. ASI alleged that a total of six job offers were made by HWC to ASI employees. ASI further introduced evidence that Knowles engaged in prohibited business-development activities with ASI clients to ASI’s detriment.

December 30, 2016

Indiana Trademark Litigation: Super 8 Sues Former Franchisees for Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Super 8 Worldwide, Inc. f/k/a Super 8 Motels, Inc. of Parsippany, New Jersey sued in the Northern District of Indiana alleging trademark infringement and other wrongdoings.

Plaintiff Super 8 operates a franchise system for guest lodging. It claims ownership to the SUPER 8® service mark as well as various related trade names, trademarks and service marks, some of which have been registered with the U.S. Patent and Trademark Office. It estimates the value of the entity’s goodwill to exceed hundreds of millions of dollars.

In this Indiana intellectual property lawsuit, Super 8 alleges that former franchisees have violated the terms of a franchise agreement entered into with Super 8. Three Indianapolis Defendants were listed: Auburn Lodging Associates, LLP (“ALA”), Kokila Patel and Dilip Patel. A fourth Defendant Chicago Capital Holdings, LLC (“CCH”) of Hinsdale, Illinois was also named.

December 27, 2016

Indiana Trademark Litigation: Carmel Golf Merchant Accused of Counterfeiting

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiffs Acushnet Company of Fairhaven, Massachusetts, Roger Cleveland Golf Company, Inc. of Huntington Beach, California and Dunlop Sports Co. Ltd. of Hyogo, Japan filed a trademark lawsuit in the Southern District of Indiana. This intellectual property litigation, commenced by an Indiana trademark litigator for Plaintiffs, was filed against both an individual and a business entity.

Listed as Defendants in this lawsuit are Giorgio Nunns a/k/a George Nunns a/k/a Georgie Nunns a/k/a Giorgio, an individual, and Custom Golf Solutions, LLC, individually and jointly, doing business under the names “bogie’s nearly new golf,” “gnunns81” and “golfcustomsolutions15.” Defendants operate in Indianapolis and Carmel, Indiana.

Defendants are accused of engaging in the sale of counterfeit products and infringing upon Plaintiffs’ trademarks. The following trademarks, to which Acushnet claims ownership and/or an exclusive license, are at issue:

Trademark	Registration No.	Registration Date	Class/Goods
	1,155,766	26 May 1981	IC 28: golf equipment, namely golf balls, golf clubs and golf bags.
	3,376,961	5 February 2008	IC 24: golf towels IC 25: golf clothing, namely jackets, shirts, hats and visors. IC 28: golf equipment, namely golf putters, golf club head covers, golf club grips and divot tools.
	2,620,432	17 September 2002	IC 28: golf clubs and accessories, namely golf tees, golf gloves, golf bags, golf putters, golf drivers, golf woods, golf irons, golf green repair tools, golf club covers and golf bag covers.
	3,421,373	6 May 2008	IC 28: golf equipment, namely golf bags.

December 19, 2016

Indiana Trademark Litigation: Founding Member of Museum Registers Trademark Under His Own Name, Sues Museum for Use

By Overhauser Law Offices, LLC

Evansville, Indiana – Richard Litov of Evansville, Indiana sued Freedom Heritage Museum, Inc., of Evansville, Indiana alleging trademark infringement. Litov asserts claims under both federal and Indiana law.

Litov claims that he conceived the idea for the museum – a collection of exhibits and artifacts from the World War II era – as well as the museum’s name, stating that he served as its founding president and a founding board member. He asserts that the museum used the trademarked name pursuant to permission that he granted “as president and board member” of the museum.

The trademark in question has been registered under Litov’s name as U.S. Trademark Registration No. 4,939,292. Litov states in his complaint that the registration covers the words FREEDOM HERITAGE MUSEUM and an associated design. The word portion of the trademark, as listed by the U.S. Patent and Trademark Office’s website, is FREEDOM HERITAGE MUSEUM, EST. 2012, EVANSVILLE INDIANA. The application for the trademark registration was filed on July 6, 2015 and granted on April 19, 2016.

November 25, 2016

Indiana Trademark Litigation: Dunkin’ Donuts Sued on Allegations of Deceiving Consumers with Fake Splenda

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Heartland Consumer Products LLC of Carmel, Indiana filed an intellectual property lawsuit in the Southern District of Indiana alleging trademark and trade dress infringement, trademark dilution and unfair competition under the Lanham Act, as well as related wrongdoing under the Indiana State Trademark Act, the common law of the State of Indiana and the Indiana Crime Victims Act. The intellectual property at issue pertains to Splenda®, a Heartland trademark under which it offers sucralose, a low-calorie sweetener.

Defendants in the litigation are Dunkin’ Brands, Inc. and Dunkin’ Donuts Franchised Restaurants LLC of Canton, Massachusetts. They are accused of “deceiving customers into believing the Dunkin’ Donuts restaurants carry Splenda® Brand Sweetener,” by both tacitly and affirmatively misrepresenting that the non-Splenda sucralose product that the Dunkin’ Defendants offer is, in fact, Heartland’s Splenda. Plaintiff contends that consumers were confused about whether the sweetener that the Dunkin’ Defendants offered was Splenda and that some have complained that adding the other sweetener to their Dunkin’ Donuts products imparted a “funny taste.”

Defendants discontinued their agreement to purchase and offer Heartland’s Splenda in April 2016. According to the Indiana complaint, following that decision, Defendants began offering sweetener in yellow packets similar to the single-serving packets in which Splenda is offered to the public. Plaintiff contends that, when asked, Defendants in a “clear majority of stores affirmatively represented, through their agents or employees, that non-Splenda® sucralose sweetener was instead Splenda® Brand Sweetener.” Plaintiff further contends that Dunkin’ Defendants are misappropriating Plaintiff’s trademarked “Sweet Swaps®” by the use of a similar term “Smart Swaps.”

November 2, 2016

Indiana Trademark Litigation: Maker of Gnarly Head Wine Alleges Infringement by Gnarly Grove Hard Cider

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff Delicato Vineyards of Manteca, California filed a lawsuit in the Southern District of Indiana alleging trademark infringement and other wrongdoing. Defendant is Gnarly Grove Cider Co. of Columbus, Indiana.

Plaintiff Delicato claims ownership to two trademarks, U.S. Trademark Registration No. 3165707 for GNARLY HEAD, and U.S. Trademark Registration No. 4777145 for a design trademark. It offers Gnarly Head wine products for sale using these trademarks.

Defendant Gnarly Grove recently launched Gnarly Grove hard cider. Plaintiff contends that both the name and the trade dress of this product are confusingly similar to its Gnarly Head wine. It asserts that the similarities appear to be an intentional effort on the part of Defendant to capitalize on the reputation of the GNARLY HEAD brand.

In this lawsuit, filed by Indiana trademark attorneys for Delicato, the following causes of action are alleged:

• Registered Trademark and Trade Dress Infringement -15 U.S.C. § 1114(1)
• False Designation of Origin -15 U.S.C. § 1125(a)

• Common Law Unfair Competition

Plaintiff is seeking equitable relief, damages, costs and attorneys’ fees.

October 26, 2016

Indiana Trademark Litigation: AAA Sues AAA Automotive Parts

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Trademark attorneys for Plaintiff The American Automobile Association, Inc. (“AAA”) filed a trademark lawsuit in the Southern District of Indiana. Two Bloomington Defendants are named, AAA Automotive Parts and the company’s owner. Defendants also do business as AAA Automotive & Truck Parts, and d/b/a AAA Automotive Parts.

AAA, a not-for-profit corporation, offers “travel and automobile products and services (including automobile repair services at its AAA Car Care Centers and through AAA Approved automobile repair businesses), financial advice, insurance and warranty coverage, and discounts.”

Defendants own and run a website, TRIPLEAPARTS.COM, on which they advertise automobile-related goods and services. Defendants also have brick-and-mortar shops in Indianapolis and Griffith, Indiana as well as locations in Missouri and Florida.

In this Indiana trademark lawsuit, lawyers for AAA listed the following causes of action:

• Count I: Federal Trademark Infringement in Violation of Section 32 of the Lanham Act
• Count II: Federal False Designation of Origin and Unfair Competition in Violation of Section 43(a) of the Lanham Act
• Count III: Federal Trademark Dilution in Violation of Section 43(c) of the Lanham Act
• Count IV: Cybersquatting Under Section 43(d) of the Lanham Act
• Count V: Trademark Dilution Under Ind. Code § 24-2-1-13.5
• Count VI: Trademark Infringement Under Ind. Code § 24-2-1-13

• Count VII: Unfair Competition and Trademark Infringement Under Common Law

AAA, which claims ownership to over 100 trademarks, contends that the following trademarks are at issue in this lawsuit:

Reg. No. 829,265	AAA Mark, used in connection with a variety of automobile association services and emergency roadside services
Reg. No. 2,158,654	AAA & Design Mark, used in connection with a variety of automobile association services and emergency roadside services
Reg. No. 3,316,227	AAA & Design Mark, used in connection with “[i]ndicating membership in a(n) automobile membership club”
Reg. No. 1,168,790	TRIPLE A Mark, used in connection with a variety of automobile association services
Reg. No. 3,046,904	AAA Mark, used in connection with repair services
Reg. No. 3,046,905	AAA & Design Mark, used in connection with repair services
Reg. No. 3,102,319	AAA & Design Mark, used in connection with vehicle parts
Reg. No. 5,036,379	AAA Mark & Design, used in connection with a variety of automobile association services and emergency roadside services
Reg. No. 1,449,079	AAA APPROVED AUTO REPAIR & Design Mark, used in connection with automobile repair services
Reg. No. 3,604,164	AAA TOTAL REPAIR CARE Mark, used in connection with auto diagnosis and repair services

AAA seeks damages and asks that those damages be trebled pursuant to 15 U.S.C. § 1117 and Indiana law. It also seeks equitable relief, costs and attorneys’ fees.

October 21, 2016

Indiana Intellectual Property Litigation: Defendant in California Patent Lawsuit Sues Plaintiff in Indiana Court Alleging Unfair Competition

By Overhauser Law Offices, LLC

South Bend, Indiana – Patent lawyers for Plaintiff Swagway, LLC of South Bend, Indiana sued Defendants Hangzhou Chic Intelligent Technology Co., Ltd. (“Chic”) of Hangzhou, People’s Republic of China, Jansco Marketing, Inc. of Pembroke, Massachusetts and COKeM International, Ltd. of Shakopee, Minnesota.

Swagway and Chic both sell self-balancing two-wheeled boards, also known as “hoverboards,” in the U.S. market. The two companies had an intellectual property dispute, with Chic alleging that Swagway infringed two of its patents. This dispute allegedly included letters sent by Chic that appeared to threaten Swagway’s business partners with litigation if they sold Swagway products that Chic alleged were infringing. Swagway also contends that Chic delayed Swagway’s goods by falsely alleging infringement to Chinese customs officials. It also states that Chic later issued a press release falsely stating that Swagway’s goods had been seized as infringing. When the dispute persisted, Chic sued Swagway in the Northern District of California on allegations that Swagway had infringed U.S. Patent No. 9,376,155 and U.S. Design Patent No. D737,723.

Swagway responded in part by filing a second federal lawsuit in the Northern District of Indiana. In its Indiana complaint, it accuses Chic and its agents, including Jansco and COKeM, of having made “numerous false and misleading statements” to Swagway’s retailers and customers regarding Swagway, its hoverboards, as well as the patent rights that Chic alleged in the California litigation. Plaintiff contends that “Defendants made these statements for the sole purpose of causing harm to Swagway’s business and preventing fair competition.” Swagway also contends that Chic withheld material information from the U.S. Patent and Trademark Office and that, consequently, the registration of several patents was improper.

In its Indiana lawsuit, patent attorneys for Plaintiff assert the following claims:

• Count I: Unfair Competition under the Lanham Act
• Count II: Unfair Competition under Indiana State Law
• Count III: Tortious Interference with Business Relationships

• Count IV: Defamation

Plaintiff has requested damages of no less than $30 million and also includes a prayer for punitive damages. Plaintiff further seeks equitable relief as well as reimbursement of costs and attorneys’ fees.