Trademark Infringement

April 6, 2018

Indiana Trademark Litigation: Arizona Bathroom Company Sues Indiana Franchisee

Indianapolis, Indiana – Attorneys for Plaintiff, Re-Bath, LLC, of Phoenix, Arizona originally filed suit in the Marion Superior Court alleging that Defendants, Alternative Construction Concepts, LTD. d/b/a Re-Bath Designs of Indianapolis, of Indianapolis, Indiana, Steven O’Reilley of Indianapolis, Indiana, and Deborah O’Reilley of Indianapolis, Indiana of infringing trademark rights. Plaintiff is seeking a temporary restraining order, preliminary and permanent injunction and all other just and proper relief.

Defendant is a franchisee of Plaintiff’s Phoenix-based business. As part of the franchise agreement, Plaintiff allowed Defendant to use its trademarks, goodwill, concepts, operating systems, confidential information, method of operation and technical expertise and know-how to operate a bathroom remodeling business.

March 21, 2018

Italian-Based Luxury Eyewear Manufacturer Files Suit Against Indiana Businesses Alleging Infringement of Rayban Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Luxottica Group S.p.A of Mason, Ohio and Oakley, Inc., of Foothill Ranch, California filed suit in the Southern District of Indiana alleging that Defendants, Avni Petroleum, Inc. d/b/a Delaware BP of Osgood, Indiana, Pari, Inc. d/b/a Batesville Food Mart of Batesville, Indiana, Rani Petroleum, Inc. d/b/a Batesville Shell, and Sai Petroleum Inc. d/b/a New Point Food Mart of New Point, Indiana infringed its rights in United States Trademark Registration Nos. 650,499, 1,093,658, 1,726,955, 1,080,886, 1,490,305, 2,718,485, 1,320,460, and 3,522,603 all with the Owner of Luxottica Group S.p.A. Oakley, Inc., is the owner of Trademark Registration Nos. 1,521,599, 1,984,501, 1,990,262, 3,331,124, and 3,365,728. Plaintiff is seeking injunctive relief, judgment including statutory damages and attorneys’ fees.

Luxottica is an Italian-based corporation that manufacturers and sells luxury eyewear under the “Ray-Ban” trademark. Oakley is a subsidiary of Luxottica that also produces high-end eyewear under the “Oakley” name.

March 19, 2018

Ninth Circuit Court of Appeals Upholds Dismissal of Claims against Subaru of America

By Overhauser Law Offices, LLC

Marilyn D. Mintz of Northern California, had filed a Trademark infringement lawsuit in the U.S. District Court, Northern District of California alleging that Subaru of America, Inc., a New Jersey Corporation with place of Business in the State of New Jersey, infringed a phrase and design trademarked by Plaintiff.

Defendant Subaru, which has a large manufacturing presence in Lafayette, Indiana, ran an ad campaign with the slogan “Share the Love.” Plaintiff alleged that this infringed her trademarked phrase, “A World of Love, for You and Those You Love.” In the ad campaign, Plaintiff also used a graphic design showing a hand with a heart on it. Plaintiff alleged that this infringed a similar design she trademarked.

March 6, 2018

Ninth Circuit Court of Appeals Grants Defendant, Nike, Inc.’s Motion to Dismiss

By Overhauser Law Offices, LLC

Jacobus Rentmeester of Westhampton Beach, New York, had filed a Copyright infringement lawsuit in the U.S. District Court, District of Oregon alleging that Nike, Inc., an Oregon Corporation with place of Business in Beaverton, Oregon infringed a photograph taken by Plaintiff.

The photograph at issue in this case was the iconic photo of Michael Jordan upon which the “Air Jordan” brand logo is based. In the photo, taken by Nike shortly after Jordan was drafted by the Chicago Bulls, Jordan is seen mid-air, reaching towards a basketball hoop with the ball in his left hand and his legs spread. In the background of the photo is the silhouette of the Chicago skyline, with the dusk sky above it. The photo formed the basis for the famous Jordan Brand logo, which is a white silhouette of Jordan’s shape in the photo against a black background.

February 28, 2018

Indiana Trademark Litigation: Klipsch Sues Audiosurplus on Basis of Trademark Infringment

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Klipsch Group, Inc. of Indianapolis, Indiana filed suit in the Southern District of Indiana alleging that Defendant, Audiosurplus, infringed its rights in United States Trademark Nos. 978,949, 2,917,215, and 3,863,511. Plaintiff is seeking judgment, Audiosurplus’s profits and damages, and attorneys’ fees and costs.

Plaintiff is an Indiana-based audio equipment company that manufactures high-end speakers, headphones, subwoofers, and a variety of other items audio items. Defendant is an online retailer that sells audio equipment on Amazon. The three trademarks involved in this case are for the “KLIPSCH” brand name. Plaintiff sells its products across the country through contractually authorized retailers. Plaintiff is suing because Defendant is not an authorized Klipsch retailer, but has allegedly been selling Klipsch products through its online store without permission.

January 29, 2018

The Southern District of Indiana Grants NCAA’s Motion for Default Judgment and Motion for Permanent Injunction

By Overhauser Law Offices, LLC

Indianapolis, IN – The National Collegiate Athletic Association had filed a Trademark infringement lawsuit in the Southern District of Indiana alleging that Kizzang LLC, infringed trademarks registered by the NCAA.

A recent Order signed by Judge Jane Magnus-Stinson grants the National Collegiate Athletic Association’s Motion for Default Judgment and Motion for Permanent Injunction against Defendant, Kizzang LLC.

The NCAA sued over Defendant’s use of the terms “Final 3” and “April Madness,” which Plaintiff alleges infringe on the trademarked phrases “Final Four” and “March Madness,” which are commonly used to refer to the annual men’s college basketball championship tournament.

January 26, 2018

Trademark Litigation: Florida Court Dismisses Suit Against Indiana Licensing Company Over Honus Wagner Trademark

By Overhauser Law Offices, LLC

Miami, Florida – Attorneys for Plaintiff, Honus Wagner Company, filed suit in the Southern District of Florida alleging that Defendants, Luminary Group LLC and Leslie Blair Roberts used the Plaintiff Honus Wagner’s name as an infringement to the Trademark “HONUS WAGNER.” The US District Court for the Southern District of Florida has granted the Defendants Motion to Dismiss for lack of personal jurisdiction.

Plaintiff alleged that, based on a chain of sales and succession, “it owns common law rights in the Honus Wagner name and mark.” Wagner was a famous baseball player for the Pittsburgh Pirates in the early 20^th century. Some of Wagner’s trading cards are among the most valuable pieces of sports memorabilia in the world.

January 16, 2018

Indiana Trademark Litigation

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Kimball International, Inc. of Jasper, Indiana filed suit in the Southern District of Indiana alleging that Defendant, Jasper Seating Company, Inc. d/b/a Community of Jasper, Indiana infringed its rights on the Indiana State Trademark Registration No. 2017-0052 for the mark “JEWEL.” Plaintiff is seeking an injunction, damages, lost profits, attorneys’ fees and costs, and any other relief the Court seems just.

Plaintiff is an Indiana corporation that manufactures furniture for offices, schools, healthcare facilities and hotels. According to the complaint, since August 2015 the Plaintiff has manufactured a line of chairs under the “JEWEL” trademark. Plaintiff has sold the chairs across the country and registered the trademark with the Indiana Secretary of State.

January 12, 2018

Indiana Trademark Litigation

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Impact Networking, LLC, of Hammond, and Indianapolis, Indiana filed suit in the Northern District of Indiana alleging that Defendants, Impact Solutions, LLC, of Fishers, Indiana infringed its rights on the United States Trademark registration numbers 2425077 and 2428340. Plaintiff is seeking judgment against Impact Solutions, damages, attorney fees, and costs.

Plaintiff has been in business since 1999, offering IT services. Plaintiff registered two trademarks for its brand, one protecting the word mark “Impact Networking,” and one protecting the company’s logo, which includes the company’s name. According to the complaint, Defendant is also an IT services provider, operating in the same geographic location. Plaintiff alleges that Defendant’s similar name causes consumer confusion and suggests an affiliation between the two companies. Although Plaintiff’s principal place of business is in Illinois, they have offices in Hammond, Indiana and Indianapolis, Indiana, and do business throughout Indiana. According to the complaint, the two companies are direct competitors in the same geographic area.

November 28, 2017

Indiana Trade Dress Infringement: Owner of Shoe Carnival Trademark Sues over Trade Dress and Trademarks

By Overhauser Law Offices, LLC

Evansville, Indiana – Attorneys for Plaintiff, SCLC, Inc. of Evansville, Indiana filed suit in the Southern District of Indiana alleging that Defendants, Marie Kettering of Trenton, New Jersey, and Lanny Tyndall of Enfield, Gansu, Canada, infringed the rights of SCLC. Plaintiff is seeking a nationwide injunction, compensatory damages, and attorneys’ fees.

Plaintiff owns the rights to the “Shoe Carnival” trademark, and owns and operates shoecarnival.com. The complaint alleges that the Defendants operate shoe sale websites that infringe upon the trade dress of the Shoe Carnival website, and infringe upon the Shoe Carnival trademark by displaying the registered mark on the websites. Specifically, the Defendants’ websites mimic the “look and feel” of Shoe Carnival’s website, including the layouts, placement of photos, borders, frames, colors, and overall impression. Further, Plaintiff alleges that the offending websites used the “Shoe Carnival” registered mark without permission in an effort to generate sales, which Plaintiff claims has caused consumer confusion.

Practice Tip: Although the Plaintiff alleges personal jurisdiction over the Defendants in the complaint, they do not allege any specific facts, such as infringing sales, which occurred in Indiana. This may cause issues for the Plaintiff in trying to secure personal jurisdiction over the Defendant. In a similar case in 2014, the United States Court of Appeals for the Seventh Circuit ruled that an out-of-state business accused of trademark infringement did not have sufficient contacts, arising out of the accused activity, with Indiana to subject it to personal jurisdiction in the state.