Trademark Infringement

March 9, 2017

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

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

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

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

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

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

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

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

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

March 1, 2017

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

By Overhauser Law Offices, LLC

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

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

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

February 21, 2017

Indiana Trademark Litigation: Vendors of Tanning Products in Dispute over “Beachin’ Life” Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Australian Gold, LLC of Indianapolis, Indiana sued in the Southern District alleging trademark infringement and unfair competition.

Plaintiff Australian Gold, which manufactures, distributes and sells tanning preparations, claims ownership to U.S. Federal Trademark Registration No. 5,130,366 for BEACHIN’ LIFE. It states that it has used this trademark since “at least 2016”; the trademark was issued by the U.S. Patent and Trademark Office on January 24, 2017.

Defendant in this Indiana lawsuit is Devoted Creations, Inc. d/b/a Ed Hardy Tanning of Oldsmar, Florida. Devoted Creations has introduced and is selling a #BEACHLIFE tanning preparation for the indoor tanning market.

February 17, 2017

Indiana Trademark Litigation: Trademark Dispute Between Two Veterans’ Museums Heads to Federal Court

By Overhauser Law Offices, LLC

Evansville, Indiana – Henager Family Museum, Inc d/b/a National Veterans Memorial of Buckskin, Indiana filed a lawsuit in the Southern District of Indiana alleging trademark infringement.

Plaintiff operates a military memorial in Indiana under the trademark “NATIONAL VETERANS MEMORIAL,” U.S. Trademark Registration No. 3,420,974. That trademark was filed “in connection with promoting public awareness of the need for reconciliation and recognition by all veterans” and was issued on April 29, 2008 by the U.S. Patent and Trademark Office.

In this Indiana litigation, Henager states that Columbus Downtown Development Corp. (“CDDC”) of Columbus, Ohio is currently developing a museum, scheduled to open in 2018, to be operated under the name “NATIONAL VETERANS MEMORIAL & MUSEUM.” Henager states that CDDC’s use of this name in a state adjoining Indiana, and in conjunction with the offering of the same type of services, is likely to cause confusion or deceive consumers. It also contends that CDDC’s use of the purportedly similar name has resulted in CDDC being unjustly enriched at Henager’s expense.

January 9, 2017

Indiana Trademark Litigation: Klipsch Takes New “Gray Market” Dispute to Federal Court

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Klipsch Group, Inc. of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging trademark infringement and unfair competition by a “gray market” seller of Klipsch audio equipment.

Defendant in this Indiana trademark litigation is listed only as “Concealedaudio.com,” as Klipsch indicates that the website’s proprietors “conceal[] their true identity from customers by using drop shipping addresses and registering their domain name through a third party.” Jurisdiction in Indiana is asserted on the grounds that, inter alia, Defendant sells infringing goods in Indiana.

Klipsch contends that Defendant interfered with its intellectual property rights in three Klipsch trademarks. The trademarks at issue are U.S. Trademark Registration Nos. 978,949; 2,917,215 and 3,863,511. These registrations, which have been issued by the U.S. Patent and Trademark Office, cover various forms of the KLIPSCH® trademark.

December 30, 2016

Indiana Trademark Litigation: Super 8 Sues Former Franchisees for Infringement

By Overhauser Law Offices, LLC

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

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

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

December 27, 2016

Indiana Trademark Litigation: Carmel Golf Merchant Accused of Counterfeiting

By Overhauser Law Offices, LLC

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

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

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

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

December 19, 2016

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

By Overhauser Law Offices, LLC

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

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

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

November 29, 2016

Indiana Trademark Litigation: Klipsch Sues Alleged “Gray Market” Seller of Klipsch Products

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Klipsch Group, Inc. of Indianapolis, Indiana filed a trademark infringement lawsuit in the Southern District of Indiana. It alleges infringement of several trademarks protecting the Klipsch® mark.

Listed as sole Defendant in this lawsuit is Robert Pignari of Costa Mesa, California, who does business as Main St. Electronics. Pignari also maintains an Amazon.com presence under the name “Audio Video Sales Guy.”

Klipsch accuses Defendant Pignari, who is not an authorized Klipsch distributor, of selling Klipsch products without its permission. Pignari is further accused of removing the correct serial numbers from the shipping boxes of the Klipsch products he sells and replacing them with fake serial numbers. Because Klipsch voids a product’s warranty in such cases, Pignari’s customers have purchased Klipsch products advertised as “brand new” but which carry no warranty from Klipsch.

November 25, 2016

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

By Overhauser Law Offices, LLC

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

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

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