Indiana State Law

March 19, 2015

Indiana State Law: Trademarks – Not Just a Federal Matter

In addition to protection under federal trademark law, trademarks can be protected under the state law of Indiana.

What does the Indiana Trademark Act protect?

The Indiana Trademark Act (I.C. §24-2) protects words, phrases, symbols or designs, or any combinations thereof when they are used to distinguish the source of the goods or services rendered by one party from the goods or services of another party. Marks are checked against other marks registered in Indiana, but not against corporate, fictitious, or assumed names. It is the duty of the applicant to perform these searches.

February 18, 2015

Indiana Trademark Litigation: Agdia Sues AC Diagnostics Alleging Deceptive Meta-tags and Other Trademark Harm

By Overhauser Law Offices, LLC

South Bend, Indiana – Indiana trademark attorneys for Agdia Inc. of Elkhart, Indiana sued in the Northern District of Indiana alleging that Jun Q. Xia and AC Diagnostics, Inc. of Fayetteville, Arkansas infringed the trademark AGDIA®, which has been registered as United States Trademark Registration No. 1747994.

For over 30 years, Plaintiff Agdia has been in the business of supplying testing, test kits, and associated products and services related to the presence of pathogens or quality factors in agricultural products. Agdia has sued a former employee, Jun Q. Xia, alleging violations of federal and Indiana intellectual property law. AC Diagnostics, a competing enterprise formed by Xia, has also been named as a defendant in this lawsuit.

Agdia contends that Defendants have been unlawfully using its trademarked name. Among the claims is that Xia has hidden the Agdia trademark followed by the phrase “plant diagnostics,” in the meta tags of nearly every product page associated with the AC Diagnostics website. Agdia asserts that, as an example, the “Company Profiles” section of the AC Diagnostics website, available at http://www.acdiainc.com/Comprofil.htm, appears upon first glance to provide nothing more than company information. However, if the page is printed, Agdia states that it reveals more text at the bottom of the document, hidden as white text on a white background.

Agdia also asserts that, through the AC Diagnostics website, Xia is deceptively and unfairly trading on Agdia’s name by hiding that name, followed by the phrase “plant diagnostics,” in the meta tags of nearly every product page associated with that site. Agdia contends that no fewer than 200 separate URLs from the Defendants’ website use the Agdia name deceptively.

Agdia finally cites the name of AC Diagnostic’s webpage as deceptive, claiming that “acdiainc,” which is used within www.acdiainc.com, AC Diagnostic’s website, is just one letter off from Agdia’s legal name, “Agdia Inc.” Defendants are accused of using this web address with the bad faith intent to profit from the Agdia trademark.

In a five-count complaint, filed by Indiana trademark lawyers for Agdia, Defendants are accused of willful, intentional, and unauthorized use of the Agdia trademark that is unlawful under federal law as well as Indiana state law.

Plaintiff Agdia asks the court to enjoin Defendants from using the Agdia mark; to cancel the domain www.acdiainc.com or transfer it to Agdia; for damages, including treble damages; and for attorneys’ fees and costs.

February 13, 2015

Indiana Trademark Law: Consent Judgment Entered Enjoining Chanel’s Salon from Using “Chanel” in Business Name

By Overhauser Law Offices, LLC

Hammond, Indiana – Chanel’s Salon, LLC, d/b/a Chanel’s Salon and Chanel’s Cosmetology Salon, and Chanel Jones, all of Merrillville, Indiana, entered into a consent judgment with Chanel, Inc. of New York, New York to resolve ongoing trademark disputes regarding the trademarked term CHANEL®.

Indiana trademark attorneys for fashion-and-beauty giant Chanel, Inc. had sued in the Northern District of Indiana alleging that Chanel’s Salon, LLC and Chanel Jones had infringed and were infringing the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which have been registered by the U.S. Patent and Trademark Office.

In this Indiana lawsuit, Chanel, Inc. alleged trademark infringement, trademark dilution, unfair competition under federal law as well as trademark infringement and unfair competition under Indiana state law. Chanel, Inc. claimed that its intellectual property rights to its trademark CHANEL had been infringed and diluted by actions of Defendants Chanel’s Salon, an Indiana beauty salon, and its owner Chanel Jones.

Specifically, Defendants were accused of using the trade names CHANEL’S SALON and/or CHANEL’S COSMETOLOGY SALON in connection with their beauty salon without Chanel’s authorization. Chanel, Inc. also claimed that the Defendants were infringing and diluting the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories.

This litigation ended pursuant to a consent judgment crafted by the parties and entered by the Indiana district court. As part of the consent judgment, the court issued a permanent injunction prohibiting Jones from using CHANEL to identify her beauty salon or any other enterprises, services or products. Jones was also enjoined from any use of the term CHANEL as part of any keyword, meta tag, page tag, or source code in any business marketing.

The order in this intellectual property litigation was issued by Judge Theresa L. Springmann in the Northern District of Indiana. This case is: Chanel, Inc. v. Chanel’s Salon LLC et al., Case No. 2:14-cv-00304-TLS-PRC.

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 5, 2014

Indiana Intellectual Property Litigation: DirecTV Sues Alleging Illegal Satellite Signal Interception

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An intellectual property lawyer for DirecTV, LLC of El Segundo, California has sued in the Southern District of Indiana alleging the illegal use of DirecTV’s satellite signal. Named as Defendants in the complaint are Rodolpho Flores, who has been sued as an individual and also as an officer, director, shareholder, and/or principal of Mexico City Restaurant, Inc., d/b/a Mexico City Grill, and Mexico City Restaurant, Inc., d/b/a Mexico City Grill (collectively, “Defendants”). DirecTV claims that Defendants are located in Fishers and Indianapolis, Indiana. DirecTV seeks declaratory and injunctive relief as well as damages for the improper receipt, transmission and exhibition of its satellite programming signals.

DirecTV distributes satellite programming throughout the United States. Through its operations, DirecTV provides this programming via specialized satellite-signal receiving equipment to subscribers who purchase a programming license by paying a subscription fee.

In its intellectual property complaint, DirecTV acknowledges that it granted a license for commercial service at the Mexico City Grill located on Fishers Station Drive. However, it claims that the DirecTV receiver authorized for the Mexico City Grill on Fishers Station Drive was, in fact, used at a second Mexico City Grill located on Emerson Avenue without the proper authorization from DirecTV.

This intellectual property lawsuit was brought under the Cable Communications Policy Act of 1984, 47 U.S.C. §521, et seq. DirecTV also asserts that Defendants’ conduct violates several federal statutes, including 18 U.S.C. §§2511 and 2512, and 47 U.S.C. §605, and laws of the State of Indiana. The complaint further alleges that Defendants’ use of an authorized commercial subscription to DirecTV in a commercial establishment for which it was not authorized was willful and unlawful.

The complaint, filed by an intellectual property lawyer for DirecTV, lists three causes of action:

Count One: Damages for Violations of Cable Communications Policy Act under 47 U.S.C. §605(e)(3)(c);
Count Two: Damages for Violations of 18 U.S.C. §2511; and
Count Three: Civil Conversion.

DirecTV asks for the following: a declaration that Defendants’ use of DirecTV was a violation of 18 U.S.C. §2511 and 47 U.S.C. §605 and that such violations were willful and for the purpose of commercial advantage; an injunction against further violations; statutory damages under 18 U.S.C. §2511; statutory damages under 47 U.S.C. §605; punitive damages; costs; attorney’s fees and interest.

November 26, 2014

Indiana Trademark Litigation: Hoosier Momma Sues Founding Member Erin Edds

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana trademark attorneys for Hoosier Momma, LLC (“Hoosier Momma”) of Brownsburg, Indiana sued Erin Edds (“Edds”) of Marion County, Indiana in the Southern District of Indiana. In this Indiana litigation, Hoosier Momma accuses Edds of violations of the federal Lanham Act, the Computer Fraud and Abuse Act and Indiana’s Uniform Trade Secret Act, as well as computer tampering, misappropriation and attempted misappropriation of trade secrets, breach of contract, breach of fiduciary duties, tortious interference with business relationships, and conversion. Among its allegations, Hoosier Momma contends that Edds tarnished its “Hoosier Momma” trademark as well as its “Betty Design” trademark, U.S. Trademark Registration Nos. 4584165 and 4584167, which have been registered with the U.S. Trademark Office.

In 2010, Kimberly Cranfill (“Cranfill”), Catherine Hill and Edds formed Hoosier Momma. They are the sole members of Hoosier Momma, which is in the business of developing and selling vegan, gluten-free products that are sold in more than 600 restaurants, stores and hotels in at least six states.

Hoosier Momma alleges multiple wrongs by Edds, including making damaging false statements, engaging in conduct that conduct negatively affects Hoosier Momma’s reputation and sales of its products, tarnishing its trademarks, and changing passwords to Hoosier Momma’s social media accounts without authorization, refusing to relinquish control of the accounts and continuing to post to those accounts.

Edds is also accused of accessing Cranfill’s e-mail account to obtain confidential information as well as sharing confidential information with Wilks & Wilson, a competitor of Hoosier Momma. Hoosier Momma also contends that Edds contacted Tone Products, Inc. (“Tone,”) a direct competitor of Hoosier Momma’s packer, and asked that Tone reverse engineer a Hoosier Momma product to allow Tone to determine the confidential recipe of such product, a trade secret of Hoosier Momma, and provide it to Edds for her personal use and/or a use that jeopardized the disclosure of Hoosier Momma’s trade secrets. Hoosier Momma also claims that Edds improperly contacted several of Hoosier Momma’s distributors, clients, manufacturers and other business partners.

Further, Edds allegedly attempted to sell her interest in Hoosier Momma without the consent purportedly required under the Hoosier Momma operating agreement. Finally, Hoosier Momma contends that Edds sold and traded Hoosier Momma product and improperly retained the proceeds.

In its Indiana trademark complaint, filed by trademark lawyers for Hoosier Momma, the following is claimed:

Count I: Violation of the Lanham Act, 15 U.S.C. § 1051, et seq.
Count II: Violation of the Computer Fraud and Abuse Act, 18 U.S.C. § 1030, et seq.
Count III: Computer Tampering
Count IV: Misappropriation and Attempted Misappropriation of Trade Secrets and Violation of Indiana Uniform Trade Secret Act
Count V: Breach of Contract
Count VI: Breach of Fiduciary Duties
Count VII: Tortious Interference with Business Relationships
Count VIII: Conversion
Count XI [sic]: Unjust Enrichment

Hoosier Momma asks for injunctive relief; compensatory and exemplary damages; costs; expenses; and attorneys’ fees.

November 14, 2014

Indiana Trade Secret Law: Court Rules on Enforceability of Trade Secret Agreements

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Pennsylvania trade secret attorneys, in conjunction with Indiana co-counsel, for Distributor Service, Incorporated (“DSI”) of Pennsylvania sued in the Southern District of Indiana alleging that Rusty J. Stevenson (“Stevenson”) of Indiana and Rugby IPD Corp. d/b/a Rugby Architectural Building Products (“Rugby”) of New Hampshire violated an agreement containing non-competition, non-solicitation, and non-disclosure provisions. In the instant order, the court ruled on motions for summary judgment filed by DSI and Stevenson.

Plaintiff DSI is a seller and distributor of wholesale specialty building products to businesses in the Middle Atlantic and Midwest regions of the country. It has eight locations in Indiana, Pennsylvania, Ohio, Kentucky, and Michigan. Defendant Rugby is also in the business of selling and distributing wholesale specialty building products. It does so throughout the United States, including in Indiana, and is a direct competitor of DSI. Stevenson, formerly an employee of DSI, is currently employed by Rugby.

DSI hired Stevenson in October 1999 to be a salesman. When he started, Stevenson had no sales experience in the specialty-building-products industry or any related industry. DSI indicated that it had invested significant time and resources to provide specialized training to Stevenson. In April 2005, DSI promoted Stevenson to the position of sales manager. Later, as part of his employment, Stevenson signed a Confidentiality and Non-Competition Agreement with DSI. This agreement contained provisions for Non-Competition/Non-Solicitation and Non-Disclosure of Confidential Information.

During his employment with DSI, Stevenson had access to information that DSI considered to be protectable as intellectual property assets. This information included all of DSI’s “Customer Lists,” “Customer Product Preferences,” “Competitive Pricing,” and “Competitive Cost Structure” for DSI’s Indianapolis branch. DSI asserted that this information was “the cornerstone of DSI’s ability to compete effectively in the specialty building products industry in Indiana,” and that the information “derives economic value from not being generally known to other persons who can obtain economic value from its disclosure or use.”

In August 2013, Mr. Stevenson resigned from DSI to take a position as the general manager of Rugby’s Indianapolis branch. Shortly thereafter, DSI sued Rugby and Stevenson seeking, inter alia, damages and injunctive relief. DSI asserted claims for: (1) breach of the Non-Compete Provision; (2) breach of the Non-Solicitation Provision; (3) breach of the Non-Disclosure Provision; (4) recovery of attorneys’ fees and expenses under the Agreement; (5) misappropriation of trade secrets; (6) breach of duty of loyalty, and (7) tortious interference.

In this opinion, District Judge Jane Magnus-Stinson reviewed cross-motions for summary judgment filed by DSI and Stevenson. DSI’s motion was denied in its entirety. Stevenson’s motion for summary judgment was granted as to Count 1, breach of the Non-Compete Provision, and Count 2, breach of the Non-Solicitation Provision. Stevenson’s motion for summary judgment on Count 3, breach of the Non-Disclosure Provision, was denied.

The court began by discussing the standard for upholding the provisions at issue. It is a longstanding principle in Indiana that covenants that restrict a person’s employment opportunities are strongly disfavored as a restraint of trade. To be enforceable, such restraints, such as a noncompetition agreement, must be reasonable. The court noted that it, while in many other contexts reasonableness was a question of fact, the reasonableness of a noncompetition agreement was a question of law and, thus, was capable of evaluation in response to the parties’ motions for summary judgment.

The first hurdle for DSI was to show that the agreement protected a legitimate interest, defined as “an advantage possessed by an employer, the use of which by the employee after the end of the employment relationship would make it unfair to allow the employee to compete with the former employer.” Indiana law provides that goodwill, including “secret or confidential information such as the names and addresses of customers and the advantage acquired through representative contact,” is a legitimate protectable interest. DSI argued that it had a legitimate interest in protecting the customer relationships that Stevenson had developed during his years working for DSI as well as the information embodied in DSI’s Customer Lists, Customer Product Preferences, Competitive Pricing, and Competitive Cost Structure, to which Stevenson had been permitted access. The court agreed that this was a protectable interest.

DSI next had to establish that Non-Compete Provision of the agreement was “reasonable in scope as to the time, activity, and geographic area restricted.” DSI argued that the provision was limited merely to restricting Stevenson from engaging in competitive business activity. The court was not convinced. Instead, it noted that, as drafted, the “competitive business activity” restriction applied to the activities of Stevenson’s new employer, not to Stevenson himself. Thus, because Rugby engaged in business activities that were competitive to DSI, the agreement would de facto prohibit Stevenson from working for Rugby in any capacity, despite that no “in-any-capacity” language was explicitly applied to Stevenson in the agreement. “For example,” the court explained, “[under DSI’s agreement,] Mr. Stevenson could not serve lunch in Rugby’s cafeteria or change light bulbs in Rugby’s offices because Rugby competes with DSI.” The court concluded that, as a result, the Non-Compete Provision was overly broad and unreasonable.

Regarding this provision, DSI also contended that alleging and proving that the employee had been provided with trade secrets could render an otherwise unenforceable non-competition clause enforceable. The court rejected this argument.

The court also granted summary judgment for Stevenson on the Non-Solicitation Provision. This provision attempted to restrict Stevenson’s ability to solicit “any customer or prospective customer of [DSI] with which [Stevenson] communicated while employed by [DSI].” The court found this restriction to be vague as to “prospective customer” as well as overbroad and unreasonable in scope.

Finally, the court declined to rule on the Non-Disclosure Provision on summary judgment. It held that, to evaluate whether this provision had been violated, it would need to determine whether “customer lists” and “the identities of key personnel and the requirements of the customers of [DSI]” were confidential. As the evidence submitted regarding confidentiality was “vague, generalized, and conflicting,” the court found that a genuine issue of material fact existed with regard to the Non-Disclosure Provision and, consequently, partial summary judgment in favor of either party was inappropriate on the record before it.

Practice Tip #1: Summary judgment in federal court is guided by Rule 56 of the Federal Rules of Civil Procedure. A motion for summary judgment asks the court to find that a trial on a particular issue or issues is unnecessary because there is no genuine dispute as to any material fact and, instead, the movant is entitled to judgment as a matter of law. The moving party is entitled to summary judgment only if no reasonable fact-finder could return a verdict for the non-moving party.

Practice Tip 2: In a similar case, decided earlier this year, the Indiana Court of Appeals affirmed the trial court’s ruling that the noncompetition agreement binding an ex-employee of the plaintiff was overly broad and, thus, unenforceable.

October 31, 2014

Indiana Patent and Copyright Litigation: Lake Lite Sues Multiple Defendants for Patent and Copyright Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – A patent and copyright attorney for Lake Lite Inc. of Laotto, Indiana filed a complaint in the Northern District of Indiana asserting, inter alia, that Universal Forest Products, Inc. of Grand Rapids, Michigan (“UFP”); Universal Consumer Products, Inc., also of Grand Rapids, Michigan (“UCP”); and Maine Ornamental, LLC of Greene, Maine infringed “Solar Dock Light” and “Low Profile Solar LED Lamp,” Patent Nos. D697,246 and 8,845,126, which have been issued by the U.S. Patent Office.

Lake Lite is in the business of designing and selling dock lights and other related products and accessories in the boating/dock industry. Its product line includes solar-related dock lights.

In April 2012, Lake Lite first began to offer a “Solar Dot” line of products. Lake Lite indicates that UFP inquired about collaborating with Lake Lite to offer the Solar Dot products to UFP’s customers and that, in November 2012, a mutual non-disclosure agreement was entered so that confidential information regarding Lake Lite’s Solar Dot products could be disclosed and the potential collaboration evaluated. The disclosed information included Lake Lite’s copyright applications to now-copyrighted materials, registered as U.S. Copyright Nos. VAu001118627 and VAu001156962.

Lake Lite asserts that, during these negotiations, it made numerous modifications requested by UFP for which it was not compensated. Lake Lite and UFP failed to reach an agreement about licensing terms and discontinued negotiations. Instead, Lake Lite asserts, UFP has now wrongfully begun offering its own “Solar Deck and Dock Lights.”

In this Indiana copyright and patent litigation, Plaintiff Lake Lite’s specific complaints include that Defendants have been unjustly enriched as a result of their manufacture, importing, marketing and sale of their solar deck and dock light products. Lake Lite contends that Defendants’ acts include infringement of Lake Lite’s copyrights and patents, unauthorized use and misappropriation of Lake Lite’s confidential information and trade secrets and violation of the mutual non-disclosure agreement between Lake Lite and UCP.

The complaint, filed by a copyright and patent lawyer for Lake Lite, alleges the following:

• Count One – Copyright Infringement

• Count Two – Infringement of U.S. Patent No. D697,246

• Count Three – Infringement of U.S. Patent No. 8,845,126

• Count Four – Breach of Contract

• Count Five – Breach of Implied Duty of Good Faith and Fair Dealing

• Count Six – Violation of Indiana Uniform Trade Secret Act

• Count Seven – Unjust Enrichment

Lake Lite asks for a judgment of infringement of its copyrights-in-suit, of infringement of its patents-in-suit, that the non-disclosure agreement was violated by Defendants, that Defendants violated the implied duty of good faith and fair dealing in their dealings with Lake Lite regarding the Solar Dot products, that Defendants have misappropriated Lake Lite’s trade secrets and that Defendants have been unjustly enriched.

Lake Lite seeks injunctive relief; damages, including punitive damages; costs and fees, including attorneys’ fees.

Practice Tip:

Indiana Code Section 24-2-3-2 defines a trade secret as:

information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

1. derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use; and

2. is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

The four general characteristics of a trade secret are:

1. it is information;

2. that derives independent economic value;

3. that is not generally known, or readily ascertainable by proper means by others who can obtain economic value from its disclosure or use; and

4. that is the subject of efforts, reasonable under the circumstances, to maintain its secrecy.

October 20, 2014

Indiana Cyberpiracy Litigation: Burns Rent-Alls Sues Aays Rent-All and Michael Sharp

By Overhauser Law Offices, LLC

South Bend, Indiana – An Indiana intellectual property attorney for Burns Rent-Alls, Inc. of Mishawaka, Indiana filed a cyberpiracy lawsuit in the Northern District of Indiana alleging that Michael Sharpe and Aays Rent-All Co., Inc., also of Mishawaka, Indiana, had wrongfully registered and used domain names that would result in confusion with the “BURNS RENT-ALLS” common-law trademark.

Burns Rent-Alls is a fifth-generation family-owned firm that has been in business for over 100 years. It offers goods and services throughout northern Indiana and southwest Michigan under the BURNS RENT-ALLS brand including equipment rentals, convention services, event rentals, portable toilet rentals, costume rentals, and tent and canopy rentals.

Aays Rent-All is, according to Plaintiff, in a similar business and provides rentals throughout northern Indiana and southwest Michigan, including equipment rentals, convention services, event rentals, and tent and canopy rentals.

Burns Rent-Alls claims that, by virtue of its “longstanding and continuous use” of the BURNS RENT-ALLS mark, it owns common law trademark rights to that mark for use in connection with Burns Rent-Alls’ goods and services.

Aays Rent-All and Sharpe are accused of registering and using domain names that are confusingly similar to Burns Rent-Alls’ Mark, with a bad-faith intent to profit from their use and registration of those domain names. At issue are: (i) burnspartyrentall.com; (ii) burnspartyrental.com; and (iii) burnsrentall.com. Plaintiff contends that Defendants are using these names to redirect Internet traffic intended for the Burns Rent-Alls’ website to Aays Rent-All’s website. This use, Plaintiff asserts, is likely to cause confusion or mistake, or to deceive consumers into believing that there is an association between Aays Rent-All and Burns Rent-Alls.

Plaintiff also states that it agreed to pay, and did pay, $100 to purchase the burnsrentall.com domain name but that Defendants did not transfer the domain name as allegedly agreed.

In its complaint, Indiana intellectual property counsel for Burns Rent-Alls alleges the following:

Count I: Unfair Competition
Count II: Cyberpiracy
Count III: Breach of Contract

Burns Rent-Alls requests injunctive relief, including the transfer of the domain names at issue; damages, including treble damages; and costs and attorneys’ fees.

Practice Tip:

Plaintiff indicates that it attempted to obtain an agreement from Defendants regarding at least one of the domain names at issue prior to filing this lawsuit. Plaintiff contends that, despite this effort, Defendants continued to use the allegedly infringing website names. This lawsuit for unfair competition, cyberpiracy and breach of contract followed.

Another approach available to a plaintiff in such a situation is to seek a transfer of the domain names under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). This policy was established to resolve “The Trademark Dilemma” inherent in the largely unpoliced sales of domain names — the registration of a trademark without the consent of the trademark owner.

As part of the process of registering a domain name, registrants must, among other things, 1) “represent and warrant” that registering the name “will not infringe upon or otherwise violate the rights of any third party” and 2) agree to have the matter heard as an UDRP proceeding if any third party asserts that the domain name violates its trademark rights.

The UDRP is an administrative procedure. A UDRP limits itself to matters concerning abusive registrations and will not intervene in genuine disputes over trademark rights. To prevail in a UDRP proceeding, for each domain name, the complainant must establish three elements:

The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The registrant does not have any rights or legitimate interests in the domain name; and
The registrant registered the domain name and is using it in “bad faith.”

October 16, 2014

Indiana Trademark Litigation: NextEra Sues Nextra for Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – A trademark attorney for NextEra Energy, Inc. of Juno Beach, Florida filed an intellectual property complaint in the Northern District of Indiana. Defendant Nextra Technologies, LLC of Granger, Indiana is accused of infringing one or more of NextEra’s 132 federally registered trademarks. Nextra is also accused of unfair competition and false advertising.

NextEra is a clean-energy company. It has approximately 42,500 megawatts of generating capacity in 26 states in the United States and four provinces in Canada. Through its affiliates, it provides wind and solar energy goods and services. Its wind-energy services include consulting, developing, construction and installation of wind energy systems, including wind-powered energy-generating turbines and turbine transformers. Its solar-energy systems include solar panels, solar arrays, solar photovoltaic equipment, solar thermal equipment and transformers.

Plaintiff asserts that Defendant Nextra is in a similar business and that it has manufactured, imported, promoted, distributed and/or sold energy products and services – including wind turbine components, solar panels, and energy systems – in the United States. Plaintiff further contends that Nextra’s goods and services are offered under “Nextra” mark and that the “Nextra” mark infringes upon NextEra’s “NextEra” family of trademarks.

Due to the alleged similarity between the types of goods and/or services offered by the two companies and the marks under which they are offered, NextEra claims that Nextra’s sales of energy products and services is likely to cause confusion, mistake and deception among purchasers as to the existence of a relationship between NextEra and Nextra.

In its complaint, filed by a trademark lawyer for NextEra, the following claims are made:

• Federal Trademark Infringement,

• Federal Unfair Competition, and

• Common Law Trademark Infringement and Unfair Competition.

NextEra seeks injunctive relief and damages, including punitive damages, as well as costs and attorneys’ fees.

Practice Tip: A finding of trademark infringement requires a “likelihood of confusion.” There are seven factors relevant to the likelihood-of-confusion analysis: (1) the similarity between the plaintiff’s mark and the allegedly infringing mark in appearance and suggestion; (2) actual confusion; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the area and manner of use; (5) the degree of care likely to be exercised by consumers; (6) the strength of the plaintiff’s mark; and (7) the defendant’s intent.