Trademark Infringement

November 27, 2017

New York Trademark Litigation: Indiana-Based AM General Sues Activision over Call of Duty Videogame

Indianapolis, Indiana – Attorneys for Plaintiff, AM General LLC, of South Bend, Indiana filed suit in the Southern District of Indiana alleging that Defendants, Activision Blizzard, Inc., and Activision Publishing, Inc., both of Santa Monica, California and Major League Gaming Corp., of New York, New York; infringed its rights for the Trademark Registrations of HUMVEE and HMMWV and the trade dress of its HUMVEE brand vehicles. Plaintiff is seeking compensatory damages, punitive damages, corrective advertising, attorneys’ fees and costs, and prejudgment and post judgment interest.

Plaintiff alleges that Defendant’s series of Call of Duty videogames have consistently infringed by incorporating and allowing players to control vehicles in-game that, allegedly, infringe on Plaintiff’s real-life protected marks. In the complaint, Plaintiff points to various in-game levels that require the player to control a vehicle that allegedly copies the registered trade dress elements, and other moments in the game where the player sees or interacts with vehicles resembling Humvees. Plaintiff also notes in-game dialogue and marks written on the vehicles that mention “Humvee” specifically.

April 13, 2017

Indiana Trademark Litigation: Indianapolis Hair Accessory Merchant Sued for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Her Imports f/k/a EZJR, Inc. sued in the Southern District of Indiana alleging trademark infringement, trademark dilution and trade dress infringement. The lawsuit names Her Hair, Inc., an Indianapolis hair-extension merchant, as Defendant.

Plaintiff markets and sells wigs, hairpieces and hair accessories. It claims ownership of two trademarks, U.S. Trademark Registration Nos. 4,631,694 for the word mark “HER IMPORTS” and 5,048,646 for “HER IMPORTS” and design. Both trademarks have been registered with the U.S. Patent and Trademark Office.

Plaintiff contends that Defendant designed and used a similar mark, asserting that it was intentionally crafted “for the sole purposes of imitating Plaintiff’s Trademark, causing actual confusion among the general public, and attempting to pass itself off as being associated with the Her Imports brand.” Plaintiff further states that Defendant’s trademark has caused actual customer confusion. Defendant’s mark was registered by the U.S. Patent and Trademark Office under Reg. No. 5,144,514.

Plaintiff further accuses Defendant of copying its “unique store interior trade dress,” comprising black and white Damask wallpaper along with red trim, in Defendant’s store.

In this Indiana lawsuit, filed by trademark attorneys for Plaintiff, the following claims are made:

Count I: Mark Cancellation 15 U.S.C. § 1064
Count II: Trade Dress Infringement 15 U.S.C. § 1125(a) (as to the Store Interior)
Count III: Dilution by Blurring — 15 U.S.C. § 1125(c) (as to Plaintiff’s Trademark)
Count IV: Dilution by Blurring — 15 U.S.C. § 1125(c) (as to Plaintiff’s Store Interior Trade Dress)
Count IV: [sic] Recovery of Profits, Damages, Costs, and Attorneys’ Fees Pursuant to 15 U.S.C. § 1117(a)
Count VI: Destruction of Infringing Articles 15 U.S.C. § 1118
Count VII: Injunctive Relief 15 U.S.C. § 1125(c)(1)

Plaintiff seeks, inter alia, injunctive relief, the cancellation of Defendant’s trademark, damages, attorneys’ fees and costs.

April 10, 2017

Indiana Trademark Litigation: IHOP and Applebee’s Sued on Allegations of Infringement of Splenda Trademarks

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Heartland Consumer Products LLC and TC Heartland LLC, of Carmel, Indiana filed suit in the Southern District of Indiana alleging trademark and trade dress infringement, dilution and unfair competition under the Lanham Act, the Indiana State Trademark Act, and the common law of the State of Indiana.

At issue are trademarks covering Splenda®-brand sweetener, which has been approved for use in over 80 countries and used in more than 4000 products globally. In this Indiana litigation, Heartland claims that some or all of the following trademarks have been infringed: 1544079, 3346910; 4172135, 4165028, 4301712, 4172136, 4165029,4122311, 4187229, 4202774, 4230392, 4238101, 4106164, 4664653, and 4744600. These trademarks have been registered with the U.S. Patent and Trademark Office. In addition, Heartland claims ownership of the following pending applications for United States Trademark Registration Serial Nos. 86865337, 87012521, and 87010504.

Defendants in the lawsuit are DineEquity, Inc., Applebee’s Franchisor LLC, Applebee’s Restaurants LLC, Applebee’s Services, Inc., International House of Pancakes, LLC f/k/a International House of Pancakes, Inc., IHOP Franchising LLC, IHOP Franchise Company, LLC and IHOP Franchisor LLC. Plaintiff asserts that all Defendants have a principal place of business in Glendale, California. They are accused of leading customers to believe that they offer Splenda-brand sweetener when they do not. Plaintiff contends that instead of American-made Splenda, the product offered to the customers is, in fact, “a lower-quality product of China.”

Indiana trademark attorneys for Heartland sued in federal court. They assert:

Count I: Common Law Trademark Infringement and Trademark Infringement under 15 U.S.C. § 1114(1)
Count II: False Designation of Origin under 15 U.S.C. § 1125(a)
Count III: Unfair Competition
Count IV: Trademark Dilution under 15 U.S.C. § 1125(c)
Count V: Trademark Dilution under I.C. 24-2-1-13.5
Count VII [sic]: Preliminary and Permanent Injunctive Relief
Count VIII: Corrective Advertising Damages

Plaintiff asks the court for injunctive relief, costs and attorneys’ fees. They also seek various types of damages, including actual, statutory, punitive and treble damages.

March 24, 2017

Indiana Trademark Litigation: Bosch Accuses Indiana Man of Counterfeiting

By Overhauser Law Offices, LLC

Hammond, Indiana – Robert Bosch, GmbH of Stuttgart, Germany and Robert Bosch, LLC of Broadview, Illinois sued in the Northern District of Indiana alleging trademark counterfeiting, trademark infringement, false advertising and unfair competition.

At issue in this Indiana lawsuit are the following trademarks, which have been registered with the U.S. Patent and Trademark Office:

MARK

REG. NO

REG. DATE

BOSCH

1,637,401

Mar. 12, 1991

633,563

Aug. 28, 1956

Defendants in the litigation are Joshua Rayner of Portage, Indiana as well as ten unnamed “Doe” Defendants. They are accused of “advertising, offering for sale and sale of counterfeit automotive parts” that bear unauthorized copies of Bosch trademarks.
Indiana trademark attorneys for Plaintiffs list the following claims in this federal lawsuit:

Count I: Trademark Counterfeiting in Violation of Sections 32 and 34(d)(1)(B) of the Lanham Act
Count II: Trademark Infringement in Violation of Section 32 of the Lanham Act
Count III: Unfair Competition in Violation of Section 43(a) of the Lanham Act
Count IV: False Advertising in Violation of Section 43(a) of the Lanham Act

Plaintiffs seek injunctive and monetary relief, including statutory damages, treble damages and attorneys’ fees.

March 13, 2017

Indiana Trademark Litigation: Indiana Winemaker Sues for Right to Continue Using “Generations” Trademark

By Overhauser Law Offices, LLC

New Albany, Indiana – Huber Orchards, Inc. of Borden, Indiana filed a trademark lawsuit in the Southern District of Indiana. Defendants in the litigation are C. Mondavi & Family (“CMF”) and C. Mondavi & Sons, Inc., both of St. Helena, California. Huber filed the lawsuit seeking a declaratory judgment that its mark “Huber Winery Generations Indiana Red Wine” does not infringe Defendants’ trademark.

Both Plaintiff and Defendants produce and offer wine products. In February 2017, CMF sent a cease and desist letter to the president of Huber stating that CMF owns a federally registered trademark for GENERATIONS for wine. This trademark has been registered by the U.S. Patent and Trademark Office as U.S. Reg. No. 2,236,517.

In the letter, sent to Huber by a trademark lawyer for Defendants, CMF asserts that Huber’s use of the word “Generations” in conjunction with the sale of wine violates the Lanham Act by infringing and diluting CMF’s trademark. The letter demanded that Huber cease all use of the trademark GENERATIONS in connection with its Huber Winery Generation Indiana Red blend wines. CMF further contended that Huber is liable for injunctive relief, damages, possible treble damages and attorneys’ fees.

Huber contends that it began selling its “Huber Winery Generations Indiana Red Wine” line locally in 1997, two years before CMF registered its trademark, and that it began selling the wine on the internet in 2004. It further asserts that its use of its “Huber Winery Generations” common law trademark does not infringe any trademark in which CMF has right because there is no likelihood of confusion. It asks the court to declare that Huber’s use of “Generations” and “Huber Winery Generations” do not infringe CMF’s GENERATIONS trademark.

March 10, 2017

Indiana Trademark Law: Court Rules for Winnebago on Trade Dress Claims

By Overhauser Law Offices, LLC

South Bend, Indiana – Judge Robert L. Miller, Jr. of the Northern District of Indiana dismissed claims concerning trade dress infringement.

In this Indiana trademark lawsuit, Forest River, Inc. of Elkhart, Indiana sued Winnebago Industries, Inc. of Forest City, Iowa and its subsidiary Winnebago of Indiana, LLC alleging trademark infringement, trade dress infringement, unfair competition, false designation of origin, and false and misleading representations.

Overhauser Law Offices, LLC filed a partial motion to dismiss with the court, arguing that Forest River had neither sufficiently identified the features that constituted the claimed trade dress nor provided any factual support for its assertion that such features were non-functional.

The court noted that “to survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678. The claim is deemed plausible if “the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id.

In this litigation, such a showing required that Forest River define its trade dress. It must also plead sufficient facts to show that the claimed trade dress is nonfunctional, has acquired secondary meaning and that a likelihood of confusion exists between its trade dress and Winnebago’s trade dress.

The court agreed with Winnebago, concluding that Plaintiff had relied on “conclusory and meaningless” assertions in its pleadings. Consequently, it granted Winnebago’s motion and dismissed without prejudice Forest River’s claims concerning trade dress infringement under the Lanham Act, 15 U.S.C. §1125(a) as well as similar claims made under common law.

Overhauser Law Offices represented Winnebago in obtaining this successful order dismissing the trade dress claims.

March 9, 2017

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

By Overhauser Law Offices, LLC

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.