Articles Posted in Trademark Dilution

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Indianapolis; IN – Trademark and copyright attorneys for Microsoft Corporation of Redmond, Washington filed a copyright and trademark infringement suit in alleging D & A LLC d/b/a/ Asset Recovery and Recycling and David B. Bell of Indianapolis, Indiana infringed trademarks 1256083, 1200236, 1872264 and 2744843 registered by the US Trademark Office. The complaint also makes copyright infringement, false designation of origin, false description and representation, and unfair competition.

The complaint alleges that D&A markets, sells, and distributes computer hardware and software, including Microsoft products. The complaint states that D&A sells computers, which it advertises have Microsoft software pre-installed. Microsoft alleges that the Microsoft software on the computers D&A sells are infringing copies. The complaint states that a Microsoft investigator purchased computers with unauthorized copies of Windows XP from D&A on three occasions in 2011. The unlicensed software contains Microsoft trademarksmicrosoft.jpg and copyrighted works. Microsoft is seeking a declaration of infringement, an injunction, an accounting, an order impounding counterfeit copies of Microsoft software, damages, costs and attorney fees.

Practice Tip: Microsoft has named David Bell personally, the owner of D & B, as a defendant, alleging that he participated in and had a right to control the wrongful conduct. A corporate officer, director or shareholder is, as a general matter, personally liable for all torts which she authorizes or directs or in which she participates, even if she acted as an agent of the corporation and not on her own behalf.

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Indianapolis, IN – Trademark attorneys for Reindeer Logistics, Inc. of Zionsville, Indiana filed a trademark infringement lawsuit in the Southern District of Indiana alleging McKnight Logistics, Inc. of Temecula, California infringed trademark registration no. 3542813 for the mark REINDEER AUTO RELOCATION, which was filed with the US Trademark Office.

The complaint states that Reindeer uses its markThumbnail image for Thumbnail image for Thumbnail image for reindeer.jpg Reindeer Auto Relocation in association with “high quality auto relocation services.” The complaint alleges that the defendant, McKnight, operates a website at www.reindeerautotransport.com to advertise auto relocation services and to “consummate” transactions. Reindeer discovered this allegedly infringing website in February 2012, and its trademark attorneys sent a cease-and-desist letter to McKnight. The complaint states that McKnight continues to use the infringing website and slogan. Reindeer alleges that the only possible purpose of McKnight’s use of that website and slogan are to “illegally divert traffic from Reindeer’s site and/or to confuse the public.” The complaint makes claims of trademark infringement, violation of federal anti-cybersquatting act, federal and state unfair competition and trademark dilution. Trademark attorneys seek an injunction, an accounting of profits, damages, attorney fees and costs.

Practice Tip: The plaintiff here makes a claim under the anti-cyberquatting act, 15 U.S.C. § 1125(d), which establishes a cause of action for registering or operating a domain name that is confusingly similar to a registered trademark or name.

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Indianapolis, IN – Trademark attorneys for Audio Products Corporation of Indianapolis, Indiana filed a trademark infringement suit in the Southern District of Indiana alleging Monster, Inc. of Brisbane, California infringed trademark registration no.1.807.139 for the ENERGY Design and 2,777,234 for the mark ENERGY registered with the US Trademark Office.

The complaint states that Audio designs and manufactures speakers, which are sold in major retail outlets. Audio alleges it has used the Audio-Energy.jpgENERGY marks in connection with its products since at least 1984. The complaint states that Monster has adopted the marks NERGY and N-ERGY to market speakers. The complaint alleges that NERGY and N-ERGY are confusingly similar to Audio’s ENERGY marks and/or a colorable imitation. The complaint characterizes Monster’s marks as attempts to misrepresent its products. The complaint further states that Monster had filed a trademark application with the US Trademark Office seeking to register the NERGY and N-ERGY. The US Trademark Office rejected the application, stating that it was confusingly similar to Audio’s marks. The complaint makes claims of trademark infringement, false designation of origin, common law trademark infringement. Trademark attorneys are seeking a declaration of infringement, an injunction, the destruction of all products and/or NERGY and N-ERGY marks, actual damages, treble damages, costs and attorney fees.

Practice Tip: The complaint alleges that Monster is selling products in the district to establish personal jurisdiction. No specific sales in Indiana are listed; however, the complaint states that limited jurisdictional discovery is expected to uncover Indiana sales.
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Alexandria, VA – The Trademark Trial and Appeal Board of the US Trademark Office has reached a decision regarding the opposition of trademark registration filed by Rolex Watch U.S.A., Inc. of New York, New York against AFP Imaging Corporation of Elmsford, New York on trademark serial no. 77/492,131 for the mark ROLL-X registered with the US Trademark Office.

In 2008, AFP filed a trademark application with the US Trademark Office for the mark ROLL-X, with the product category of “x-ray tables for medical and dental use.” Rolex Watch filed an oppositionROLL-X.jpg to that registration, arguing that there was a likelihood of confusion between AFP’s products and the Rolex trademark that Rolex has used for many years and that the Rolex marks would likely be diluted by tarnishing or blurring of the marks. The opinion notes that Rolex’s trademarks state that their products are “watches, clocks, parts of watches and clocks, and their cases.” After considering all the statutory factors, the Board determined that Rolex had not demonstrated that AFP’s proposed trademark registration would result in dilution of Rolex’s trademarks.

Practice Tip: In considering whether a trademark application dilutes a prior mark by blurring, there are six factors to consider pursuant 15 U.S.C. § 1125(c)(2)(B)(i-vi). These are: the degree of similarity between the two marks, the degree of distinctness, the extent to which the owner of the famous mark is engaging in exclusive use, the degree of recognition of the famous mark, intent to create association with the famous mark, and finally, actual association with the famous mark.
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Indianapolis, IN – Trademark lawyers for Coach, Inc. of New York, New York have filed a trademark infringement suit in the Southern District of Indiana alleging J & JS Petroleum, Inc. of Indianapolis, Indiana infringed the forty-eight trademarks registered with the US Trademark Office. In this suit, CoachThumbnail image for Thumbnail image for Coach.jpg also alleges J & JS infringed the copyrighted works of Registration No. VAu000704542, LEGACY STRIPE, Registration No. VA0001228917, SIGNATURE C DESIGNS, Registration No. VAu1-046658, COACH 70th ANNIVERSARY SNAPHEAD PRINT AND Registration No. VA1-010-918, COACH CLOVER DESIGN which have been registered by the US Copyright Office.

The complaint against J & JS alleges that the company operates a gas station and convenience store at 9025 Brookville Road in Indianapolis where a Coach representative purchased a purse labeled “Coach” on August 21, 2011. The knock-off purse was purchased for $59.99, rather than the normal retail price of the Coach purse of approximately $298. Coach had not authorized the use of the “Coach” mark on the purse sold. The Coach representative viewed additional product labeled “Coach” for sale in the store. The complaint makes claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin and false advertising, trademark dilution, copyright infringement, unfair competition, criminal forgery, and criminal counterfeiting.

Practice Tip: Coach has recently been very aggressively defending its intellectual property rights in Indiana. Indiana Intellectual Property Law News has previously reported on several cases here:

Coach Files Two Trademark and Copyright Infringement Lawsuits in Northern District Over Knock-Off Coach Items

Coach, Inc. Sues Chaos of Muncie and Angelina’s Unique Boutique for Trademark and Trade Dress Infringement For Sale of Coach Knock-Off Products

Coach, Inc. and Coach Services, Inc. Sue Diggz Clothing LLC and Lori Harth for trademark and trade dress infringement
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Indianapolis, Indiana – The Southern District Court of Indiana has dismissed a trademark infringement lawsuit against Haycco LLC, a California limited liability company, finding a lack of personal jurisdiction. Traveler’s Joy, a Delaware Corporation, Haycco had been sued for trademark infringement, unfair competition, and dilution of trademark. Both companies provide a gift registry service that allows wedding guests to make monetary contributions to the bride and groom’s honeymoon. The complaint alleged infringement of US trademark registration nos. 3,560,502 and 3,718,357, which are for stylized logos of the word TRAVELER’S JOY for gift registration services. The plaintiff operates the website www.travelersjoy.com and defendant runs http://joyhoneymoon.com. Traveler’s Joy alleged that the marks were sufficiently confusing to cause economic harm to Traveler’s Joy. Indiana Intellectual Property Blog has previously blogged about this case.

Traveler’s Joy had claimed that Indiana’s Southern District Court should have personal jurisdiction over Haycco because the website operated by Haycco would allow customers in Indiana to complete transactions. The court, however, noted that no Indiana customers had never had any customers from Indiana and had blocked web transactions from Indiana. The court also noted that Haycco had no employees, property, or bank accounts in Indiana and had not directly targeted Indiana in its marketing efforts. The court, therefore, concluded that Haycco does not have the “minimum contacts” necessary to establish personal jurisdiction. The court dismissed the lawsuit with prejudice.

The publisher of this blog represented Haycco, who prevailed in the motion to dismiss.

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Indianapolis, Indiana – Trademark infringement litigation attorneys for Travellers’ Joy, Inc. of Wilmingon, Delaware has filed an infringement suit against Haycco, LLC of California in the Southern District of Indiana.

The complaint alleges infringement of US registration nos. 3,560,502 and 3,718,357, which are for stylized logos of the word TRAVELLER’S JOY for gift registration services. The plaintiff operates the website www.travelersjoy.com and defendant runs http://joyhoneymoon.com. The complaint also alleges trademark dilution and unfair competition.

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Indianapolis, Indiana – Trademark lawyers for Allison Transmission, Inc., of Indianapolis, IN, have filed a complaint alleging Harlan Global Manufacturing, LLC, of Kansas City, KS, is infringing various trademarks incorporating the terms ALLISON and ALLISON TRANSMISSION(R) in connection with transmissions, including Trademark Registration Nos. 2,686,798; 2,615,428; 2,625,008; 1,666,977; and 1,624,473 which are registered with the U.S. Trademark Office.

The defendant is an OEM manufacturer of tractors who allegedly is using the ALLISON marks in its advertising despite not having any relationship with plaintiff. The complaint sets forth causes of action for trademark infringement, false designation of origin, counterfeiting, dilution, and unfair competition.
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 Indianapolis, Indiana – Copyright lawyers for Keystone Builders Resource Group, Inc., and Keystone-Indianapolis, LLC, both of Indianapolis, have filed a lawsuit alleging that Princeton Group, Inc., Princeton Homes, Inc., and their manager Greg Allen, all of Greenwood, IN, as well as Irma Jobst and Trent Bunch, both of Indianapolis, infringed an architectural work and technical drawings, titled THE BIRMINGHAM, which have been registered with the U.S. Copyright Office.
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 Hammond, Indiana – Trademark lawyers for Lorillard Tobacco Company of Greensboro, NC, filed a lawsuit alleging M & M Smoker Den, Inc. d/b/a Smoker Den and Subhash Malhotra, both of Dyer, IN, has infringed the following trademarks as registered with the U.S. Trademark Office: Trademark Registration No. 1,108,876 for the mark NEWPORT; Trademark Registration No. 2,600,870 for the mark NEWPORT (stylized); Trademark Registration No. 3,601,464 for the mark NEWPORT MENTHOL BOX; Trademark Registration No. 3,618,542 for a DESIGN ONLY mark; Trademark Registration No. 1,920,066 for the mark LORILLARD; Trademark Registration No. 1,178,413 for the mark SPINNAKER DESIGN; and Trademark Registration No. 1,191,816 for the mark NEWPORT and Design.
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Indiana Intellectual Property: IP Litigation, Patents, Trademarks, Copyrights
  • Seventh Circuit
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Paul B. Overhauser
Overhauser Law Offices, LLC
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Greenfield, IN 46140
Phone: 317.467.9100
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