New Litigation

August 7, 2013

Royal Purple Sues Liqui Moly GmbH and Liqui Moly USA for Trademark Infringement

Indianapolis, Indiana — Royal Purple, LLC (“Royal Purple”) of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany and Liqui Moly USA, Inc. of Hauppauge, New York (collectively, “Liqui Moly”) alleging infringement of two marks, Registration Nos. 2,691,774 and 2,953,996, which have been registered with the U.S. Trademark Office.

Royal Purple is again suing over the use of the color purple. We have blogged previously about the company here. Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple, at least in conjunction with various lubricating oils. It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses. It also owns multiple trademarks incorporating the word “purple” as applied to various goods. These trademarks are registered with the U.S. Trademark Office.

Purple was chosen for its association with royalty. (Historically, purple dye was so expensive to produce that it was used only by royalty.) Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

Liqui Moly is accused of distributing, offering to sell and selling products that infringe upon Royal Purple’s trademarks and engaging in acts that constitute unfair competition and dilution. Royal Purple also alleges that Liqui Moly’s use is a purposeful attempt to trade upon Royal Purple’s trademarks. It asserts that Liqui Moly’s infringing use of Royal Purple’s intellectual property is likely to cause confusion, mistake or deception in customers or potential customers who encounter the Liqui Moly products. It also claims that Liqui Moly’s use will dilute the “distinctive quality” Royal Purple’s trademarks. Finally, it alleges that Liqui Moly’s use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple’s trademark, by placing them partially under the control of Liqui Moly, USA and Liqui Moly GmbH, two third parties unrelated to Royal Purple.

Trademark attorneys for Royal Purple filed suit alleging:

· Count One: Trademark Infringement Under Federal Law – 15 U.S.C. § 1114

· Count Two: Unfair Competition; False Designation of Origin Under Federal Law – 15 U.S.C. § 1125(a)

· Count Three: Dilution Under Federal Law 15 U.S.C. 1125(c)

· Count Four: Dilution in Violation of Indiana Code § 24-2-1-13.5

· Count Five: Common Law Trademark Infringement

· Count Six: Unfair Competition Under Indiana Common Law

· Count Seven: Unjust Enrichment

Royal Purple seeks preliminary and permanent injunctions, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys’ fees.

Practice Tip #1: Color can serve as a useful identifier of the source of goods to consumers. The courts, however, have had to draw some narrow lines to balance the various interests. On the one hand, companies often invest significant amounts of money in promoting their brands and color is frequently a component of that promotion. On the other hand, there are a limited number of colors — and an even more limited number of colors that are pleasing and appropriate for any given type of product — and courts are wary of providing a monopoly on any given color to any one company. After all, if such a monopoly is first provided to one company, all too soon the entire spectrum may be spoken for.

Practice Tip #2: This complaint, which is very similar to an earlier action filed by Royal Purple, has added Liqui Moly USA, Inc. as a defendant and largely omitted the earlier-filed claims relating to a third trademark, registered under the U.S. Registration No. 3,819,988.

August 1, 2013

Endotach Sues Cook Medical for Infringement of Patented Endovascular Technology

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Endotach, LLC (“Endotach”) of Plano, Texas sued alleging that Cook Medical Incorporated (“Cook Medical”) of Bloomington, Indiana infringed two patents: Endovascular Bypass Graft, Patent No. 5,122,154, and Endovascular Stent with Secure Mounting Means, Patent No. 5,593,417, which have been issued by the U.S. Patent Office.

The patents, both of which were issued in the 1990s, were granted to Dr. Valentine Rhodes, an award-winning surgeon who practiced in the field of vascular medicine for over 30 years. The patents are directed to intraluminal and endovascular grafts for placement within a blood vessel, duct or lumen to hold it open. As it pertains to this lawsuit, the patents-in-suit are used for revascularization of aneurysms or stenosis occurring in blood vessels which includes anchoring projections to aid in securing the graft in place within the blood vessel.

Upon the death of Dr. Rhodes, the patents-in-suit passed as part of his estate to his wife, Brenda Rhodes. While Mrs. Rhodes remains the owner of the patents, Endotach asserts that it is the exclusive licensee and has the right to enforce the patents against all infringers.

In its complaint, patent attorneys for Endotach asserted infringement of one or more claims in each of the patents-in-suit. It seeks a judgment that the patents-in-suit have been infringed, either literally and/or under the doctrine of equivalents; damages, including treble damages; costs; interest; attorneys’ fees and an injunction.

Practice Tip:

This complaint was filed to err on the side of caution. A previous matter, Endotach LLC v. Cook Medical Incorporated, Civil Action No. 1:12-cv-01630-LJM-DKL, which was initiated by a complaint making similar allegations, is currently pending before the same court. However, in that matter, Cook Medical has challenged the sufficiency of the transfer of the exclusive license to Endotach and, thus, Endotach’s standing to bring that prior lawsuit. Pursuant to that allegation, Cook Medical asserted that the matter should be dismissed. That motion is still pending.

Endotach entered into a subsequent agreement that purports to remedy any deficiencies related to standing. It then filed this current complaint. It has indicated its intention to consolidate this later-filed action with the matter currently before the court.

July 31, 2013

Riders Choice Sues Golden West Saddle Blankets for Declaratory Relief

By Overhauser Law Offices, LLC

Terre Haute, Indiana — Copyright lawyers for Riders Choice, LLC d/b/a Show and Tell Saddle Blankets (“Riders Choice”) and Loni Rhodes (“Rhodes”; collectively,”Plaintiffs”) of Center Point, Indiana sued for declaratory relief over allegations of copyright infringement made by Lori Heckaman (“Heckaman”) d/b/a Golden West Saddle Blankets (“Golden West” or “Defendant”) of Gainesville, Texas.

Riders Choice, sometimes operating as “Show and Tell Saddle Blankets,” makes and sells products related to horseback riding, including hand-woven saddle blankets with colorful geometric designs. Rhodes owns Riders Choice. Heckaman, doing business as Golden West Saddle Blankets, also makes and sells products related to horseback riding, including blankets with colorful geometric designs.

Intellectual property counsel for Heckaman sent two cease-and-desist letters to Rhodes and Riders Choice, the first on June 14, 2013 and the second on July 2, 2013. The first cease-and-desist letter asserted that the designs on Heckaman’s blankets were copyrighted and alleged against Rhodes and Riders Choice claims for copyright infringement based on Rhodes’s and/or Riders Choice’s manufacture, marketing and sale of its own blankets. The second cease-and-desist letter made similar allegations. Claims were also made against Rhodes and Riders Choice for business interference, unfair competition and misappropriation of trade secrets based on Rhodes’s and/or Riders Choice’s marketing of Riders Choice’s blankets and alleged copying of Golden West’s weaving and design methods.

Both cease-and-desist letters threatened Rhodes and/or Riders Choice with imminent litigation if Rhodes and/or Riders Choice did not comply with Defendant’s demands, the first by writing “we will have no choice but to advise our client to protect her interests by instituting a suit in a court of competent jurisdiction,” and the second by writing that although “Golden West prefers to resolve this matter without the necessity of court intervention, all necessary action will be taken if a voluntary agreement cannot be reached.” Both cease-and-desist letters demanded that Rhodes and/or Riders Choice stop marketing, selling and producing its blankets. Further, a July 3, 2013 e-mail threatened Rhodes and Riders Choice with imminent litigation by writing that if Rhodes and/or Riders Choice did not “refrain from promoting, marketing, producing, and selling saddle blankets,” Heckaman would have “no choice but to seek available remedies.”

In response, copyright lawyers for Riders Choice filed a complaint under the Declaratory Judgment Act. In the complaint, Plaintiffs assert that blankets with similar designs are widely produced and sold by third parties, that they did not believe that Heckaman had registered any of her designs with the U.S. copyright office, that the blankets Riders Choice sells are original works designed by Rhodes and that every blanket Riders Choice sells is unique in that no two blankets are sold with an identical pattern. They further asserted that Rhodes learned these methods from books and other publicly available materials unaffiliated with Heckaman and that Rhodes had never copied Defendant’s designs.

In the complaint, Plaintiffs ask for judgments of:

· Count I — No Copyright Infringement

· Count II — No Business Interference

· Count III — No Unfair Competition

· Count IV — No Misappropriation of Trade Secrets

Plaintiffs request that the court: (a) declare that Rhodes’s and Riders Choice’s blankets did not in the past and do not now infringe any of Defendant’s valid copyrights; (b) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in business interference against Defendant based on the sale, marketing or production of blankets; (c) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in unfair competition against Defendant based on the sale, marketing or production of blankets; (d) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in the misappropriation of trade secrets from Defendant based on the sale, marketing or production of blankets; (e) award to Plaintiffs their costs and attorneys’ fees.

Practice Tip:

As with a patentee who believes that his or her patent is being infringed, holders of copyrighted materials often will send a “cease-and-desist letter” — a letter demanding that the purported infringer cease infringing. To aid in convincing the accused infringer to meet its demands, the holder of the intellectual property may be tempted to use language such as plans of “instituting a suit” and seeking “court intervention,” as Defendant did here.

As this case demonstrates, this strategy may backfire. By using such language, the Defendant can create an “actual controversy” for purposes of the Declaratory Judgment Act. Thus, the party alleging infringement (the natural plaintiff in an infringement suit) may instead find itself being sued by the alleged infringer (the natural defendant), often in a jurisdiction that would not have been the first choice of the owner of the intellectual property.

One approach that may have yielded better results for Golden West might have been to approach the accused infringer with an offer to license the purportedly protected intellectual property. With carefully crafted language, such a proposal might have served to put Riders Choice on notice of Golden West’s belief that infringement was occurring without going so far as to create an “actual controversy” sufficient to support a lawsuit under the Declaratory Judgment Act.

July 26, 2013

Lippert Components Manufacturing Sues AL-KO Kober for Patent Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana — Lippert Components Manufacturing, Inc. (“Lippert”) of Goshen, Indiana sued AL-KO Kober, LLC (“AL-KO”) of Elkhart, Indiana alleging patent infringement of three patented inventions: Retractable Room Actuation Assembly for Recreational Vehicle Having Engagement Means for Maintaining Constant Distance Between Drive Members and Engagement Members, Patent No. 8,235,455 (the “‘455 Patent”); Retractable Room Actuation Assembly for Recreational Vehicle Having Engagement Mechanism for Maintaining Constant Distance Between Drive Members and Engagement Members, Patent No. 8,240,744 (the “‘744 Patent”); and Retractable Room Actuation Assembly for Recreational Vehicle, Patent No. RE44,002 (the “‘002 Patent”); which have been issued by the U.S. Patent Office.

Lippert claims ownership of the three patents-in-suit, which related to a retractable room assembly used in extending and retracting slide-out compartments for recreational vehicles. The patents were granted in 2012 and 2013.

AL-KO is accused of having made, used, offered for sale and/or sold its retractable room actuation assembly for use in extending/retracting recreational vehicle slide-out compartments. Lippert notified AL-KO of Lippert’s ‘002 Patent, ‘455 Patent and ‘744 Patent and claimed infringement of those patents in a letter dated June 28, 2013 and received by AL-KO on July 1, 2013.

Patent attorneys for Lippert sued AL-KO on July 11, 2013 claiming patent infringement by AL-KO. The complaint also asserts that AL-KO has induced and contributed to others’ use of the patents-in-suit, including at least Augusta RV, by selling to them and instructing them to use Lippert’s intellectual property.

The complaint lists the following:

· Count I: ‘002 Patent Infringement

· Count II: ‘455 Patent Infringement

· Count III: ‘744 Patent Infringement

Lippert also contends that AL-KO has engaged in its conduct willfully and in complete disregard of, or with indifference to, Lippert’s rights and interests. It asks the court to consider this an “exceptional case” as that term is defined in 35 U.S.C. §285.

Lippert, via its patent attorneys, asks for an injunction; for an accounting; for damages, up to treble the amount of actual damages; for attorneys’ fees and costs; and that the court require AL-KO to notify AL-KO’s customers of AL-KO’s unlawful acts.

Practice Tip: While the exact contents of the letter to AL-KO are unclear from the complaint, a company that receives a notification letter alleging infringement is well advised to contact intellectual-property counsel promptly. The receipt of such a letter may constitute a legally significant event which triggers a duty by the recipient to take action, such as investigate whether any of the infringement claims in the letter have merit. If the letter threatens legal action, the alleged infringer should consider initiating a suit under the Declaratory Judgment Act. Declaratory judgment actions are frequently filed in intellectual-property matters, especially patent litigation. Such a suit allows the potential defendant not only to choose its own forum, to the extent that the forum is consistent with jurisdictional restrictions, but also to remove an ever-present cloud of potential litigation and potential damages for patent infringement that may be continuing to accrue.

July 25, 2013

CarCheckup Alleges Infringement by CarMD.com and Innova Electronics of Patented Vehicle Code Readers

By Overhauser Law Offices, LLC

Indianapolis, Indiana — CarCheckup, LLC of Carmel, Indiana has sued CarMD.com Corp. (“CarMD”) and Innova Electronics Corp. (“Innova”), both of Irvine, California, for infringing two patents, Patent Nos. 6,807,469 (the “‘469 Patent) and 6,925,368 (the “‘368 Patent) both titled “Auto Diagnostic Method and Device,” which have been issued by the U.S. Patent Office.

CarCheckup sells a device designed to improve teen-driver safety, track business mileage and explain the check-engine light in vehicles compliant with on-board diagnostic II (also known as “OBD-II”) technology.

CarMD sells a “Handheld Device and Software Solution Kit,” along with “Vehicle Health System” products. The CarMD Vehicle Health System is a consumer product designed to enable car owners to monitor a vehicle’s function, to catch hidden problems and to diagnose dashboard warning lights. CarMD’s products work on newer-model vehicles with on-board diagnostic technology by retrieving diagnostic codes from the vehicle’s computer. By using a CarMD code reader, a car owner, even one unsophisticated in car repair, can identify the problem(s) with his or her vehicle.

CarMD sells its products directly to consumers via infomercials, on its website at www.CarMD.com, through the Home Shopping Network and on www.Amazon.com. Its products are also sold at various retail outlets, including Pep Boys. Innova, an allegedly related enterprise, sells two different code readers in the United States and maintains web sites at www.CodeReader.com and www.Innova.com.

Patent attorneys for CarCheckup sued CarMD and Innova, asserting a right to relief against them jointly, for infringing the ‘469 and ‘368 Patents, which are owned by CarCheckup. CarCheckup alleges that, as part of a joint endeavor, CarMD sells and offers for sale infringing CarMD products, while Innova distributes and manufactures the products. CarCheckup alleges that one or both of the Defendants has known about the patents-in-suit since at least as early as December 2012.

The complaint lists the following claims:

· Count I: Infringement of the ‘469 Patent against CarMD and Innova

· Count II: Infringement of the ‘368 Patent against CarMD and Innova

CarCheckup asks the court for a judgment against CarMD and Innova; for a finding that the infringement has been willful and deliberate; for an award of damages adequate to compensate CarCheckup for the infringement it alleges, but in no event less than a reasonable royalty; for treble damages; for an injunction; and for a finding that this is an exceptional case and, thus, for an award of reasonable attorneys’ fees and costs.

Practice Tip: The law of the “reasonable royalty” has been in transition recently. The “25% rule,” an approach that allocated 25% of the profits from an infringement to the patentee and the remaining 75% to the infringer, has been abandoned. Long used in federal courts to establish a reasonable royalty as compensation for patent infringement under § 284 of the Patent Act, it was rejected by the Federal Circuit in 2011. In its ruling in Uniloc v. Microsoft, the court held: “the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on the 25 percent rule of thumb is thus inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue.”

July 24, 2013

Diamond Back Gutter Covers and Daniel Feldhaus Sue Midwest Enterprises for Patent Infringement

By Overhauser Law Offices, LLC

Lafayette, Indiana — Diamond Back Gutter Covers, Inc. (“Diamond Back”) of Lafayette, Indiana and Daniel E. Feldhaus (“Feldhaus”) of Monticello, Indiana sued Midwest Enterprises of Saint Clair, Missouri alleging infringement of its “Gutter Debris Cover,” Patent No. 7,627,991, (the “‘991 Patent”) which has been issued by the U.S. Patent Office.

Diamond Back manufactures and sells products related to the protection of gutter and drainage systems. Diamond Back states that Midwest Enterprises is in a similar business and also does business under the name E-Z Products.

A complaint against Midwest Enterprises was filed by patent attorneys for Diamond Back. It focuses on Midwest Enterprises’ EZ Double Lock gutter protectors, which Diamond Back asserts infringe upon the ‘991 Patent. That patent, for a Gutter Debris Cover, was issued to Feldhaus in December 2009; Diamond Back is licensed to use the patent.

Specifically, the complaint asserts that Midwest Enterprises has been and still is infringing the ‘991 Patent by making, selling and/or using a gutter-protection system embodying one or more of the patented inventions or by inducing others to infringe the ‘991 Patent.

In June 2012, correspondence to Midwest Enterprises alerted them that Diamond Back believed that they were infringing. Diamond Back claims that Midwest Enterprises’ actions which continued after having received notice, constitute willful conduct in disregard of its rights in the ‘991 Patent.

Diamond Back asserts that this is an exceptional case as defined by 35 U.S.C. 285. It is asking the court for an injunction; for the destruction of infringing goods; for the destruction of items relating to the making and marketing such goods; for corrective advertising; for damages, including treble damages; and for attorneys’ fees.

Practice Tip: If a court finds that a patent has been infringed upon, it may then consider the additional issue of whether the infringement was willful. Infringing behavior that continued despite an allegation of infringement can support such a finding. The determination that an infringement was “willful” can, in turn, increase damages significantly.

July 22, 2013

Bekins Van Lines Sues Corporate Transfer & Storage, JLV Software and The Verderber Enterprise for Trademark Infringement of Bekins Marks

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Trademark lawyers for Bekins Van Lines, Inc. (“Bekins”) of Indianapolis, Indiana sued Corporate Transfer & Storage, Inc. (“Corporate Transfer”) of Ronkonkoma, New York; JLV Software of Pompano, Florida (also referred to in the complaint as “JVL Software”) and The Verderber Enterprise of Orlando, Florida (collectively, “Defendants”) alleging infringement of the trademark BEKINS which has been registered as Trademark No. 2,427,605 with the U.S. Trademark Office.

Bekins is the fourth-largest household-goods carrier in the United States. Headquartered in Indianapolis, Indiana, Bekins offers private and corporate household-goods relocation services both domestically and internationally. The United States Military is one of the company’s largest customers.

Corporate Transfer offers household moving, corporate relocation and storage services. The Verderber Enterprise specializes in providing technology innovations to entrepreneurs and corporate enterprises worldwide.

In December 1955, Bekins’ predecessors in interest were granted the registration of the stylized mark “Bekins.” The first use in commerce was noted as 1891. A second “Bekins” mark was granted to Bekins’ predecessors in interest in February 2001. The two marks were assigned to the plaintiff in this case on April 16, 2012.

The Defendants were, at one point, licensed agents of Bekins Van Lines, LLC. However, Bekins asserts, they have never been affiliated in any way with Bekins Van Lines, Inc. After Bekins Van Lines, Inc.’s acquisition of certain assets from Bekins Van Lines, LLC and Bekins Holding Corp. on April 2, 2012, Corporate Transfer was allegedly notified that it was required to cease using all of the Bekins marks immediately, as it was not an agent for the new owner of the Bekins marks.

Bekins claims that, despite this notice and three additional notices, the Defendants’ use of the Bekins marks on the Corporate Transfer website, the use of the domain name www.bekinsrelo.com and the use of the Bekins mark on social-media sites continued. Bekins also asserts that Corporate Transfer indicated that its use of the Bekins mark would be discontinued but that, in the spring of 2013, the website was reactivated. Bekins contends that, when it again demanded that the domain name be taken down and transferred to Bekins, Corporate Transfer then redirected the domain to point to a consumer-comment site which was tremendously critical of Bekins Van Lines, Inc.

Finally, Bekins asserts that Corporate Transfer continues to infringe upon the Bekins marks through the maintenance of the www.bekinsrelo.com site, the use of Bekins marks on its website at www.corporatetransfer.com and various references to the Bekins marks on social-media sites.

For its claims, Bekins lists the following:

· Count I: Federal Trademark Infringement

· Count II: Federal and State Unfair Competition/Trademark Dilution

Bekins asks for an injunction; for an award of Defendants’ profits earned from the acts claimed to be infringing; for an award of damages, including punitive damages; and for attorneys’ fees and costs.

Practice Tip: Bekins asserts that its marks have acquired strong secondary meaning as a symbol of origin among consumers and the industry as a result of many years of use. It further asserts that the marks are famous. The assertion that its marks are famous allows it to pursue the additional claim of trademark dilution under the Federal Trademark Dilution Act.

July 18, 2013

Master Cutlery Sues Pacific Solution Marketing for Infringement of Three-Dimensional Artwork Applied to Knives

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Intellectual property lawyers for Master Cutlery, Inc. of Secaucus, New Jersey sued Pacific Solution Marketing, Inc. (“Pacific”) of Ontario, California alleging copyright and trademark infringement of three-dimensional artwork applied to knives. Master Cutlery seeks an injunction, damages, treble damages, statutory damages, profits, attorney’s fees and costs.

Founded 30 years ago, Master Cutlery has become the largest importer of knives in the United States. It asserts ownership of federal trademark, patent and copyright registrations for its knives, as well as common law trade dress rights (collectively, “Master Cutlery IP”). Among the rights that Master Cutlery claims are trademarks for the word marks “Sheriff” and “EMT” registered in Class 8 with the U.S. Trademark Office for knives.

Master Cutlery asserts that, after its use and registration of its various items of intellectual property, Pacific also began using the Master Cutlery intellectual property. It contends that Pacific has manufactured, produced, advertised and/or sold knives that infringe upon the Master Cutlery IP. It also asserts that Pacific has distributed advertisements and packaging bearing reproductions of Master Cutlery’s trademarks, trade dress and copyrights.

Master Cutlery sued alleging copyright infringement under the Copyright Act; federal trademark infringement, federal trademark dilution, false designation of origin and false advertising under the Lanham Act; common law trademark and copyright infringement; unfair competition; and theft and counterfeiting under Indiana state law. It further contends that this infringement was willful, intentional and done with the intent to confuse consumers. The complaint, originally filed in Indiana state court, was removed by a trademark attorney for Pacific on both the grounds of federal question and diversity of citizenship.

For its claims, Master Cutlery lists the following:

· Count I: Copyright Infringement Under 17 U.S.C. § 101 et seq.

· Count II: Federal Trademark Infringement Under U.S.C. § 1114

· Count III: Trademark Dilution Under 15 U.S.C. § 1125(c)

· Count IV: False Designation of Origin or Sponsorship, False Advertising and Trade Dress Infringement Under 15 U.S.C. § 1125(a)

· Count V: Common Law Trademark and Copyright Infringement

· Count VI: Unfair Competition

· Count VII: Theft Under Ind. Code § 35-43-4-2(a)

Master Cutlery asks for a permanent injunction enjoining infringement; that Pacific be required to deliver to Master Cutlery both unsold goods and goods already distributed or sold so that they can be destroyed; for compensatory damages; for treble damages or, alternatively, Pacific’s profits trebled; for statutory damages; and for attorneys’ fees and costs.

Practice Tip: Master Cutlery has included a count of felony theft under Indiana Code § 35-43-4-2(a) in its complaint. The extent to which intellectual property is “property” in the usual sense has been litigated several times recently in the Indiana appellate court, which has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property. For a discussion of two recent cases, see here and here.

July 17, 2013

Coach Sues Again in Indiana Court Alleging Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana — Trademark lawyers for Coach, Inc. of New York, New York and Coach Services, Inc. of Jacksonville, Florida (collectively, “Coach“) have sued Maxx Tan; Maxx Tan Logan, LLC — both of Logansport, Indiana — and James Robert McCarthy (“McCarthy”) of Marion, Indiana, individually and d/b/a Maxx Tan, for infringement of the COACH trademark which has been registered by the U.S. Trademark Office.

Coach was founded more than 70 years ago as a family-run workshop in Manhattan. Since then, the company has been engaged in the manufacture, marketing and sale of fine leather and mixed-material products including handbags, wallets and accessories including eyewear, footwear, jewelry and watches. Coach products have become among the most popular in the world, with Coach’s annual global sales currently exceeding three billion dollars.

On October 17, 2012, a private investigator from Coach visited Maxx Tan and observed numerous trademarked handbags, sunglasses and accessories displayed for sale. These items bore the trademarks of many high-end brands, including Coach.

The investigator purchased a purse which bore a Coach trademark for $69 plus tax and left the store. The investigator then returned, explained the reason for the purchase, attempted to serve a cease-and-desist letter on McCarthy, and asked McCarthy to surrender the merchandise. McCarthy agreed to stop selling the merchandise but refused to surrender anything.

The investigator contacted the Logansport police. In the following weeks, Maxx Tan surrendered various purses, a pair of sunglasses and a sunglasses case to the police, all of which bore the Coach mark. All of the surrendered items are alleged to be counterfeit.

Coach, the owner of at least 47 trademarks, subsequently sued Maxx Tan and McCarthy, whom Coach contends is individually liable for any infringing activities. It alleges that Maxx Tan and McCarthy are engaged in designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale products bearing logos and source-identifying indicia and design elements that are studied imitations of the Coach trademarks.

The complaint includes counts for trademark infringement, false designation of origin and false advertising under the Lanham Act, 15 U.S.C. §§ 1114, 1116, 1117, 1125(a) and (c); trademark infringement and unfair competition under the common law of the State of Indiana; and forgery under Indiana Code § 35- 43-5-2(b) as well as counterfeiting under Indiana Code § 35-43-5-2(a), pursuant to Indiana Code § 34-24-3-1. These counts are listed as:

· COUNT I (Trademark Counterfeiting, 15 U.S.C. § 1114)

· COUNT II (Trademark Infringement, 15 U.S.C. § 1114)

· COUNT III (False Designation of Origin and False Advertising, 15

U.S.C. § 1125(a))

· COUNT IV (Common Law Trademark Infringement)

· COUNT V (Common Law Unfair Competition)

· COUNT VI (Forgery Under Ind. Code § 35-43-5-2(b))

· COUNT VII (Counterfeiting Under Ind. Code § 35-43-5-2(a))

· COUNT VIII (Common Law Unjust Enrichment)

· COUNT IX (Attorneys’ Fees)

Coach asks the court, inter alia, to enter judgment against the defendants on all counts; for an injunction against further wrongful activity; to order that all infringing materials be recalled and disposed of; to award to Coach statutory damages of $2,000,000 per counterfeit mark per type of good; to award punitive damages; and to award to Coach its costs and attorneys’ fees.

Practice Tip: Coach has been very aggressive in protecting its intellectual property rights in Indiana courts over the last few years. Coach’s intellectual property attorneys have filed numerous similar lawsuits in Indiana courts, several of which Indiana Intellectual Property Law and News has blogged about.

July 3, 2013

Sensory Technologies, LLC Sues Sensory Technology Consultants, Inc. for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Trademark lawyers for Sensory Technologies, LLC (“Sensory Indiana”) of Indianapolis, Indiana sued Sensory Technology Consultants, Inc. (“Sensory Utah”) of Morgan, Utah alleging infringement of Trademark Registration No. 3282956 for the mark “SENSORY TECHNOLOGIES®” which has been registered with the U.S. Trademark Office.

Sensory Indiana sued in the Southern District of Indiana for declaratory judgment, injunction and damages, alleging that Sensory Utah has committed trademark infringement, false designation of origin and unfair competition with its unauthorized use of “Sensory Technology Consultants,” a mark similar to Sensory Indiana’s “Sensory Technologies” trademark.

Sensory Indiana, which describes itself on its website as “a leading audio-visual, telepresence system and collaboration solutions provider” asserts that Sensory Utah used a mark which is visually and phonetically similar to the “Sensory Technologies” mark with the intent to trade on the goodwill with the public established by Sensory Indiana and to cause confusion, mistake or deception. Sensory Indiana further asserts that Sensory Utah is in the business of providing services similar to those provided by Sensory Indiana.

The “Sensory Technologies” mark is federally registered for audio-visual and video conferencing design services, integrating audio-visual and video conferencing systems, help desk technical consultation services, customized computer programming for others and technical consultation regarding audio-visual equipment and video conferencing systems. Sensory Indiana indicates that the mark has been used in commerce since March 2006 and that it is distinctive and/or has acquired secondary meaning and significance in the minds of the purchasing public.

Several times in early 2013, Sensory Indiana alerted Sensory Utah that Sensory Utah’s use of “Sensory Technology Consultants” was unauthorized. The current lawsuit was commenced after those notices went unanswered. The complaint alleges:

· Count I: Trademark Infringement

· Count II: False Designation of Origin

· Count III: Unfair Competition

· Count VI [sic]: Declaratory Judgment

· Count VIII [sic]: Preliminary and Permanent Injunctive Relief

Sensory Indiana seeks a judgment against Sensory Utah on counts I through III; injunctive relief; and damages, including punitive damages and damages for corrective advertising.

Practice Tip: According to its website, Sensory Utah has been in business since 2006, the same year in which Sensory Indiana’s mark was initially used in commerce. This may cause some difficulties for Sensory Indiana. While federal registration of a trademark has advantages, trademark protection may also be acquired by being the first to use a mark in commerce. As a result, an unregistered trademark may be more robust from a legal standpoint than one that has been registered with the U.S. Trademark Office. This makes it extremely important to do a comprehensive search for others’ potential trademark rights — including those that will not be evident from a search of the Trademark Electronic Search System database — before you begin to use a mark.