New Litigation

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 24, 2016

Indiana Trademark Litigation: Donut Sellers Square Off Over Use of Term “Square Donuts”

By Overhauser Law Offices, LLC

Hammond, Indiana – Trademark lawyers for Plaintiff Family Express Corporation of Valparaiso, Indiana filed a complaint for declaratory judgment of non-infringement and trademark cancellation in the Northern District of Indiana.

The Defendant in this litigation is Square Donuts Inc., which has stores in Terre Haute, Indianapolis, Bloomington and Richmond, Indiana. Defendant owns two registered federal trademarks: SQUARE DONUTS, Trademark Reg. No.4341135 for “café services,” and “SQUARE DONUTS” & Design, Trademark Reg. No. 4341136 for “retail bakery shops.” It also holds an Indiana State trademark for the mark “Square Donuts, Inc.” Both Plaintiff and Defendant sell donuts.

The dispute arose in 2006, when a trademark attorney for Defendant Square Donuts sent a letter to Plaintiff Family Express accusing it of “making square donuts and marketing the same under the name ‘Square Donuts,'” which it asserted was a violation of Defendant’s trademark rights. Legal counsel for Family Express responded that there was no trademark infringement, as “square donuts” was merely descriptive and, thus, could not be registered as a trademark without a showing of acquired distinctiveness. Family Express’ trademark lawyer also noted that the trademark in question was not registered with the U.S. Patent and Trademark Office but rather with the State of Indiana.

Ten years later, the dispute remains unresolved. Square Donuts, Inc. has acquired two federal trademarks and continues to express its concerns about Plaintiff’s use of “square donuts” in the marketing its donut products. Plaintiff proposed a co-existence agreement but the notion of such an agreement was rejected.

In January 2016, the U.S. Patent and Trademark Office refused to register Family Express’s “SQUARE DONUTS” mark, Application No. 86779997, in Class 030 for “donuts” and in Class 035 for “retail convenience stores” on the grounds of likely confusion with Defendant’s preexisting trademark registrations for “SQUARE DONUTS.”

In this litigation, Plaintiff Family Express seeks the following from the court:

• Count I: Declaration of Non-Infringement

• Count II: Cancellation

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.

March 17, 2016

Indiana Patent Litigation: Lilly Sues Alleging Infringement of Patented Osteoporosis Drug

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent lawyer for Plaintiff Eli Lilly and Company of Indianapolis, Indiana (“Lilly”) filed a patent infringement lawsuit in the Southern District of Indiana. The allegations of infringement have been directed at Defendants Teva Pharmaceuticals USA, Inc. of North Wales, Pennsylvania and its parent company Teva Pharmaceutical Industries Ltd. of Israel.

This lawsuit was instituted in response to Abbreviated New Drug Application (“ANDA”) No. 208569, which was filed with the U.S. Food and Drug Administration by Teva USA. The ANDA seeks approval to market a generic version of Forteo®, a prescription drug offered by Lilly to treat osteoporosis.

At issue in this litigation are Lilly’s U.S. Patent Nos. 6,770,623; 7,144,861; 7,550,434; 6,977,077; 7,163,684; and 7,351,414. All have been issued by the U.S. Patent and Trademark Office. Lilly contends that the filing of the ANDA constitutes direct infringement, inducement to infringe and contributory infringement of these patents under U.S. patent law.

Lilly seeks equitable relief, costs and attorney’s fees.

March 1, 2016

Indiana Patent Litigation: Lilly Sues India Manufacturer of Generic Drugs for Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana patent attorney for Plaintiff Eli Lilly & Company (“Lilly”) of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging that Biocon Limited of Bangalore, India will infringe its patented chemotherapy drug, which Lilly offers under the brand name ALIMTA.

At issue in this patent litigation is U.S. Patent No. 7,772,209 (the “‘209 patent”). In February, Biocon notified Lilly that it had submitted an Abbreviated New Drug Application (“ANDA”) to the FDA. Lilly believes that the product that is the subject of the ANDA will be marketed as a generic version of ALIMTA and that such conduct will infringe the ‘209 patent.

This federal patent infringement lawsuit, filed by an Indiana lawyer on behalf of Lilly, lists a single count: Infringement of U.S. Patent No. 7,772,209.

Lilly states that it will suffer irreparable injury unless Defendant is “enjoined from infringing the ‘209 patent, actively inducing infringement of the ‘209 patent, and contributing to the infringement by others of the ‘209 patent.” It seeks a declaratory judgment, equitable relief, damages, costs and attorneys’ fees.

February 26, 2016

Indiana Cable/Satellite TV Litigation: DIRECTV Sues Pollo Feliz for Unlawful Interception

By Overhauser Law Offices, LLC

Hammond, Indiana – An intellectual property attorney for Plaintiff DirecTV, LLC of California filed a signal-interception lawsuit in the Northern District of Indiana. It is alleged that Defendants Jorge Aguilera and Patricia Huerta of Delphi, Indiana and Rose Aguilera of Lafayette, Indiana acted unlawfully individually and on behalf of Defendant Pollo Feliz, Inc., which is located in Lafayette, Indiana.

Plaintiff DIRECTV offers encrypted satellite programming on a subscription basis. Customers who pay the appropriate fee are provided with special equipment to unscramble the broadcasts so that they may be viewed.

Fees charged to residential customers are lower than those charged to commercial establishments. DIRECTV states that customers “can surreptitiously gain access to DIRECTV programming without proper authorization by subscribing to DIRECTV services under a residential account and then installing/moving the equipment to their businesses and utilizing those services in a commercial environment.”

Defendant Pollo Feliz, Inc. operates a Mexican restaurant. The individual Defendants allegedly serve as officers, directors, shareholders and/or principals of Pollo Feliz. Defendants are accused of broadcasting DIRECTV content at a commercial establishment, Pollo Feliz, without the proper commercial license. Plaintiff contends that this conduct violates 18 U.S.C. §§2511 and 2512, 47 U.S.C. §605 and Indiana law.

In its complaint, filed with an Indiana federal court by an intellectual property lawyer for Plaintiff, the following counts are alleged:

• Count 1 – Damages for Violations of Cable Communications Policy Act [47 U.S.C. §605(e)(3(C)]
• Count 2 – Damages for Violations of 18 U.S.C. §2511
• Count 3 – Civil Conversion

DirecTV seeks equitable relief along with damages, including punitive damages, costs and attorney’s 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 16, 2016

Indiana Copyright Litigation: Design Basics Files Additional Indiana Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana intellectual property attorneys for Design Basics LLC, Plan Pros, Inc. and Carmichael & Dame Designs, Inc., all of Omaha, Nebraska, sued in the Southern District of Indiana alleging copyright infringement. This lawsuit follows the recent filing by Design Basics of six similar copyright lawsuits in the Northern District of Indiana.

Plaintiffs Design Basics, Plan Pros and Carmichael & Dame are engaged in the business of creating, marketing, publishing and licensing the use of architectural works and technical drawings of those works.

The Defendant in this lawsuit is Michael Shrader. Plaintiffs contend that Shrader does business as Palladian Home Design, Palladian Home Designs, Palladian Blueprints, Palladian Drafting & Design Services, Palladian Architectural Drafting & Design Services and Palladian Design/Build. Shrader is alleged to have infringed the copyrights of multiple home designs that have been registered with the U.S. Copyright Office and to which Plaintiffs claim ownership.

Defendant’s accused activities include, but may not be limited to, reproductions of one or more of the following:

• Design Basics’ Plan No. 1380 – Paterson (U.S. Copyright Registration Nos. 314-024 & 694-094)
• Design Basics’ Plan No. 1752 – Lancaster (U.S. Copyright Registration Nos. 371-204, 694-094 & 756-041)
• Design Basics’ Plan No. 2332 – Corinth (U.S. Copyright Registration Nos. 485-066, 694-088 & 710-606)
• Carmichael & Dame’s Plan No. 9169 – Kempton Court (U.S. Copyright Registration Nos. 867-084 & 867-087) and

• Plan Pros’ Plan No. 29303 – Bloom (U.S. Copyright Registration Nos. 1-397-448 & 1-412-560) (the “Copyrighted Works”).

Plaintiffs seek equitable relief along with damages, costs and attorney 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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