Articles Posted in Trademark Infringement

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South Bend, Indiana – Intellectual property attorneys for Plaintiffs Coach, Inc. of New York, New York and Coach Services, Inc. of Jacksonville, Florida (collectively, “Coach”) filed an intellectual property complaint in the Northern District of Indiana.

Coach contends that Defendants Zip Thru Mart, Charles Estok Sr., and Janice Estok, all of Knox, Indiana, infringed various Coach trademarks, which have been registered by the U.S. Patent and Trademark Office. In addition to trademark infringement under the Lanham Act, Coach asserts that Defendants have committed trade dress infringement, trademark dilution and counterfeiting under the Lanham Act, copyright infringement under the Copyright Act, as well as trademark infringement, unfair competition and unjust enrichment under Indiana common law.

Coach’s allegations stem from Defendants’ purported “designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale” products that bear counterfeit Coach trademarks. Defendants are further accused of having engaged in this behavior “negligently and/or knowingly and intentionally, with reckless disregard or willful blindness to Coach’s rights, or with bad faith.”

In support of its allegations of infringement and related conduct, Coach states that it sent an investigator to the Zip Thru Mart. Its investigator saw multiple items bearing Coach trademarks, which Coach contends were counterfeit. Additional goods bearing purportedly counterfeit trademarks were seized by a Homeland Security Investigations officer during a subsequent visit to the business.

The intellectual property listed in this litigation includes numerous trademarks for “Coach,” “Coach New York,” “CC,” “Poppy” and similar trademarks. Coach also claims infringement of its copyrights, listing copyright registrations, registered with the U.S. Copyright Office, for its “Legacy Stripe” design (registration number VA000704542)  “Signature C” design (registration number VA0001228917),  “Op Art” design (registration number VA0001694574) and “Horse & Carriage” design (registration number VA0001714051).

In this Indiana lawsuit, filed by trademark and copyright attorneys for Coach, the intellectual property claims are listed as follows:

• Count I: Trademark Counterfeiting, 15 U.S.C. § 1114
• Count II: Trademark Infringement, 15 U.S.C. § 1114
• Count III: Trade Dress Infringement, 15 U.S.C. § 1125(a)
• Count IV: False Designation of Origin and False Advertising, 15 U.S.C. § 1125(a)
• Count V: Trademark Dilution, 15 U.S.C. § 1125(c)
• Count VI: Copyright Infringement, 17 U.S.C. § 501
• Count VII: Common Law Trademark Infringement
• Count VIII: Common Law Unfair Competition

• Count IX: Unjust Enrichment

In addition to statutory damages of $2 million per counterfeit mark, per type of counterfeit good, Coach seeks equitable relief; additional damages, both statutory and punitive; costs and attorneys’ fees.

Practice Tip: Coach has a history of requesting statutory damages that are considerably in excess of what has eventually been awarded by the courts. For example, in Coach, Inc. v. Paula’s Store Sportwear LLC, 2014 WL 347893 (D.N.J. Jan. 31, 2014), Coach requested $800,000 in statutory damages – $100,000 for each of eight counterfeited marks – from a shop from which four counterfeit Coach wallets and two counterfeit Coach handbags had been seized. When awarding damages to Coach, the court noted that the retail value of the six counterfeit items was less than $1500 and awarded $5000 for each of the eight marks that had been counterfeited, multiplied by the two types of goods, for a total statutory damages award of $80,000.

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South Bend, Indiana – An Indiana trademark attorney for Plaintiffs National Association of Forensic Counselors, Inc. (“NAFC”) and American Academy of Certified Forensic Counselors, Inc. d/b/a American College of Certified Forensic Counselors (“ACCFC”), both of Fort Wayne, Indiana, commenced litigation in the Northern District of Indiana alleging trademark infringement.

Plaintiffs offer certifications, for example “Master Addictions Counselor,” to individuals working with criminal offenders in the fields of criminal justice, corrections, addictions and mental health. Defendants in this litigation include individuals as well as organizations offering such services. They are as follows:

NARCONON INTERNATIONAL of California; NARCONON OF GEORGIA, INC. of Georgia; FRIENDS OF NARCONON INTL. of California; PREMAZON, INC. of California; NARCONON SPRING HILL, INC., d/b/a SUNCOAST REHABILITATION CENTER of Florida; BEST DRUG REHABILITATION, INC. of Nevada; A LIFE WORTH LIVING, INC. d/b/a NARCONON COLORADO – A LIFE WORTH SAVING of Colorado; NARCONON FRESH START, INC. of California; NARCONON SOUTH TEXAS, INC. of Texas; NARCONON EASTERN UNITED STATES, INC. of Virginia; ASSOCIATION FOR BETTER LIVING AND EDUCATION INTERNATIONAL of California; RELIGIOUS TECHNOLOGY CENTER of California; NARCONON FREEDOM CENTER, INC. of Michigan; GOLDEN MILLENNIUM PRODUCTIONS of California; INTERNATIONAL ACADEMY OF SPECIALISTS of California; GREATCIRCLE STUDIOS of Florida; CHURCH OF SCIENTOLOGY INTERNATIONAL of California; ROYALMARK MANAGEMENT of California; ROBERT J. HERNANDEZ of California; ROBERT “BOBBY” WIGGINS of California; JONATHAN BEAZLEY of California; JOSEPH GUERNACCINI of California; PHILIP R. KELLY II of California; THOMAS GARCIA of Florida; CLARK CARR of California; MICHAEL DAPALMA of California; DAVID MISCAVIGE of California; NICHOLAS THIEL of Michigan; DAVID S. LEE of Indiana; RICHARD “MATTHEW” HAWK of Louisiana; MARY RIESER of Georgia; ANTHONY BYLSMA of California; KENNETH POMERANCE of Florida; JAMES “JIM” WOODWORTH of Louisiana; CARL SMITH of California; JONATHAN MROETTI of California; GLEN PETCAVAGE of Colorado; DAPHNA HERNANDEZ of California; LURIA K. DION a/k/a KATHY DION of California; and NARCONON OF NORTHERN CALIFORNIA d/b/a NARCONON VISTA BAY d/b/a NARCONON REDWOOD CLIFFS of California.

As part of its certification program, Plaintiffs utilize a federally registered trademark, which is included in Plaintiffs’ logo:

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NAFC and ACCFC allege that Defendants have infringed its trademark, which has been registered by the U.S. Patent and Trademark Office as Federal Trademark Registration No. 3,585,933. Defendants are also accused of misusing Plaintiffs’ certifications and logos.

The following violations of law have been alleged by Plaintiffs:

• Federal Trademark Infringement
• Common Law Trademark Infringement
• Federal Infringement Pursuant to 15 U.S.C. §1125

• Civil Conspiracy

Plaintiffs seek various forms of redress including preliminary and permanent injunctive relief, damages, costs and attorney’s fees.

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Evansville, Indiana – An Indiana trademark lawyer for Plaintiff The Great American Bagel Enterprises, Inc. (“GAB”) of Westmont, Illinois filed a trademark infringement complaint in the Southern District of Indiana against Defendants United HBA Corporation and Harbhajan Singh, d/b/a The Great American Eagle, both of Evansville, Indiana.

GAB owns, operates and franchises food-products stores known as The Great American Bagel. It owns a trademark for “The Great American Bagel,” Trademark Registration No. 2,015,665, which is comprised of the phrase “The Great American Bagel” with stars and bands. The mark has been registered by the U.S. Patent and Trademark Office.

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Defendant United HBA operates a gas station and convenience store, which offers retail food products. Defendant Singh is listed as the President and sole principal of United HBA. GAB contends that United HBA is displaying a sign that had previously been used as signage for a The Great American Bagel store. GAB states that Defendants modified “Bagel” to read “Eagle” by removing the “B” and adding an “E” but that the sign is otherwise unaltered.

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GAB alleges infringement of its trademark, stating that Defendants’ use of the modified sign has caused customers to confuse the food products offered by GAB with those offered by Defendants. In this federal lawsuit, filed by an Indiana trademark attorney, the following claims are made:

• Count I: Federal Trademark Infringement
• Count II: False Designation of Origin, False Advertising and Unfair Competition under the Lanham Act Section 43(A)
• Count III: Unfair Competition – Trade Name Infringement
• Count IV: Unfair Competition – Passing Off

• Count V: Unjust Enrichment

GAB seeks equitable relief, damages, including punitive damages; costs and attorney’s fees.

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Hammond, Indiana – Trademark lawyers for Plaintiff Family Express Corporation of Valparaiso, Indiana filed a complaint for declaratory judgment of non-infringement and trademark cancellation in the Northern District of Indiana.

The Defendant in this litigation is Square Donuts Inc., which has stores in Terre Haute, Indianapolis, Bloomington and Richmond, Indiana. Defendant owns two registered federal trademarks: SQUARE DONUTS, Trademark Reg. No.4341135 for “café services,” and “SQUARE DONUTS” & Design, Trademark Reg. No. 4341136 for “retail bakery shops.” It also holds an Indiana State trademark for the mark “Square Donuts, Inc.” Both Plaintiff and Defendant sell donuts.

The dispute arose in 2006, when a trademark attorney for Defendant Square Donuts sent a letter to Plaintiff Family Express accusing it of “making square donuts and marketing the same under the name ‘Square Donuts,'” which it asserted was a violation of Defendant’s trademark rights. Legal counsel for Family Express responded that there was no trademark infringement, as “square donuts” was merely descriptive and, thus, could not be registered as a trademark without a showing of acquired distinctiveness. Family Express’ trademark lawyer also noted that the trademark in question was not registered with the U.S. Patent and Trademark Office but rather with the State of Indiana.

Ten years later, the dispute remains unresolved. Square Donuts, Inc. has acquired two federal trademarks and continues to express its concerns about Plaintiff’s use of “square donuts” in the marketing its donut products. Plaintiff proposed a co-existence agreement but the notion of such an agreement was rejected.

In January 2016, the U.S. Patent and Trademark Office refused to register Family Express’s “SQUARE DONUTS” mark, Application No. 86779997, in Class 030 for “donuts” and in Class 035 for “retail convenience stores” on the grounds of likely confusion with Defendant’s preexisting trademark registrations for “SQUARE DONUTS.”

In this litigation, Plaintiff Family Express seeks the following from the court:

• Count I: Declaration of Non-Infringement

• Count II: Cancellation

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Fort Wayne, Indiana – Indiana intellectual property lawyers for Plaintiff Sweetwater Sound, Inc. (“Sweetwater”) of Fort Wayne, Indiana filed an intellectual property lawsuit in the Northern District of Indiana.

Plaintiff alleges that Defendant Hello Music, LLC of Austin, Texas infringed its trademarks, which have registered by the U.S. Patent and Trademark Office as Trademark Nos. 3,652,255 and 3,652,249. In addition, Sweetwater Sound contends that Hello Music infringed its copyright, issued by the U.S. Copyright Office as TX 8-064-067, which protects the contents of its website. Other counts of alleged wrongdoing, including claims under Indiana law, have been asserted.

Hello Music is accused of duplicating copyrighted content from Sweetwater’s website and using that protected content on its own website. Sweetwater contends that part of the content purportedly copied includes the Sweetwater trademark. Sweetwater also asserts that these acts by Hello Music constitute a willful and deliberate attempt to trade on Sweetwater’s goodwill.

In the complaint, filed in federal court Friday, the following claims are made:

• Count I: Copyright Infringement
• Count II: Trademark Infringement (False Designation of Origin)
• Count III: Trademark Dilution

• Count IV: Unfair Competition

Sweetwater asks the court to grant equitable relief, including the destruction of infringing materials. It also seeks actual and treble damages, disgorgement of all profits that resulted from infringing acts, litigation costs and attorneys’ fees.

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Indianapolis, Indiana – Plaintiff Oak Motors, Inc. of Anderson, Indiana (“Oak Indiana”) filed a trademark infringement complaint in the Southern District of Indiana alleging that Oak Motors, Inc. of San Mateo, California (“Oak California”) is infringing U.S. Trademark Registration No. 4,487,991, which was issued by the U.S. Patent and Trademark Office.

Plaintiff Oak Indiana, a used-car dealership, has three locations in Indianapolis as well as a location in Anderson, Indiana and another in Muncie, Indiana. It focuses on offering cars to “customers with credit challenges.” It has commenced trademark litigation against a California-based used-car dealership that offers primarily luxury-brand vehicles.

Plaintiff contends that, by using “Oak Motors” to promote its business, Oak California intended to cause, and has caused, initial interest confusion and actual confusion among consumers and potential consumers. Oak Indiana asserts that Oak California’s actions are an intentional attempt to trade off the goodwill of Oak Indiana.

In addition to Oak California’s use of “Oak Motors” as a business name, Oak Indiana also complains of Defendant’s use of three websites, http://oakmotorsusa.com/, http://oakmotorsinc.com/ and http://www.oakmotorsca.com/default.aspx, claiming that the use of those websites is calculated to create consumer confusion regarding whether the two companies are related.

In this federal lawsuit, filed by Indiana trademark lawyers for Oak Indiana, the following claims are asserted:

• Count I: False Designation of Origin and False Description – 15 U.S.C. §1125(a)
• Count II: Common Law Trademark Infringement
• Count III: Unfair Competition
• Count IV: Cybersquatting – 15 U.S.C. §1125(d)

• Count V: Declaratory Judgment

Oak Indiana seeks equitable relief, including the transfer of domain names referencing the “Oak Motors” trademark; Oak California’s profits from the sale of all infringing goods; damages, including actual damages, punitive damages, statutory damages and treble damages; costs of litigation and attorneys’ fees.

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South Bend, Indiana – Indiana trademark attorneys for Plaintiff UL LLC of Northbrook, Illinois filed a lawsuit with the federal court in the Northern District of Indiana. Plaintiff alleges that Swagway, LLC and Jianqing “Johnny” Zhu infringed the “UL” trademark, Trademark Registration Nos. 2391140 and 782589, which have been registered by the U.S. Patent and Trademark Office. Plaintiff further claims that Defendants use the Service Mark “UL” in a manner that falsely suggests a relationship between Plaintiff and Defendants. Other causes of action, including claims under the state law of Illinois, are also asserted.

Plaintiff UL, founded in 1894, is a developer of safety standards. It also offers safety testing, inspection and certification of products. Plaintiff states in this federal lawsuit that it owns a family of trademarks featuring the UL mark, including a “UL-in-a-circle” certification mark and the UL service mark.

This lawsuit pertains to hoverboards (also known as self-balancing scooters or skateboards). Plaintiff states that hoverboards have been the subject to inquiries regarding safety. It also contends that Defendants have been sued on allegations that their hoverboard caught on fire and caused property damage.

In this trademark action, Plaintiff complains of Defendants’ alleged improper use of the UL trademark and service mark on the hoverboards that Defendants make and sell. Additionally, Plaintiff contends that Defendants falsely stated that “Swagway also adheres to all required environmental standards and certifications,” including UL certification. According to Plaintiff, Defendants’ conduct was “intentional, unjustified and/or malicious, and done to purposefully harm Plaintiff.”

This Indiana litigation, filed with the court by trademark lawyers for Plaintiff, lists the following:

• Count I: Federal Trademark Counterfeiting and Trademark Infringement (15 U.S.C. § 1114)
• Count II: Federal Unfair Competition – False Designation of Origin (15 U.S.C. § 1125)
• Count III: Federal Unfair Competition – False Advertising (15 U.S.C. § 1125)
• Count IV: Violation of the Illinois Deceptive Trade Practices Act (815 ILCS 510/1 et seq.)

• Count V: Violation of the Illinois Consumer Fraud and Deceptive Business Practices Act (815 ILCS 505/1 et seq.)

Plaintiff seeks equitable and other relief along with damages, including punitive damages, costs and attorney’s fees.

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Indianapolis, Indiana – Indiana copyright and trademark attorneys for Plaintiff The Rough Notes Company, Inc. (“Rough Notes”) of Carmel, Indiana commenced a copyright infringement lawsuit in the Southern District of Indiana.

The Defendant, That’s Great News, LLC (“Great News”) of Cheshire, Connecticut, is accused of infringing U.S. Trademark Registration No. 2,585,340, which has been filed with the U.S. Patent and Trademark Office, as well as unfair competition, false designation of origin, and dilution under the Lanham Act. Allegations of copyright infringement of material protected by Copyright Registrations Registration Nos. TX 7-988-447 and TX 7-988-464, as well as other related claims, have also been made.

Plaintiff Rough Notes is a publisher of print and online magazines. It indicates that it has used its “Rough Notes” trademark since 1878 and that the trademark was registered in 2002. Rough Notes contends that Defendant Great News has violated it copyright, trademark and other intellectual property rights by producing samples of commemorative plaques that feature protected content owned by Rough Notes and distributing samples via e-mail to solicit the purchase of a plaque.

In this federal complaint, filed with the court by Indiana copyright and trademark lawyers for Rough Notes, the following causes of action are alleged:

• Copyright Infringement
• Federal Unfair Competition & False Designation of Origin
• Federal Trademark Infringement
• Common Law Trademark Infringement
• Federal Trademark Dilution
• Common Law Unfair Competition

• Unjust Enrichment

Rough Notes seeks equitable relief; statutory damages, including up to $150,000 for willful infringement; and reimbursement of costs and attorneys’ fees.


Practice Tip: Plaintiff may have difficulty overcoming the defense of nominative fair use of a trademark in this lawsuit. That doctrine provides that, as a matter of law, nominative use of a mark — where the only word reasonably available to describe a particular thing is pressed into service — lies outside the strictures of trademark law. Defendant may argue that its use of “Rough Notes” on its commemorative plaques was permissible as those are the only words reasonably available to adequately describe a plaque displaying an article featured in a “Rough Notes” publication.
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Indianapolis, Indiana – Indiana trademark attorneys for Plaintiff Indy Founders LLC d/b/a Verge of Indianapolis, Indiana filed a trademark infringement lawsuit with the court in the Southern District of Indiana. The lawsuit alleges that Vox Media, Inc. and The Verge Group LLC (“TVG”) infringed the VERGE trademark, Registration No. 4,153,192, which has been registered by the U.S. Patent and Trademark Office.

Indy Founders is in the business of creating and offering online publications and websites, as well as similar services, for startup technology entrepreneurs, investors, and collaborators. It states that it holds a federal registration on VERGE as a trademark and that the VERGE trademark has been used since at least as early as January 2011.

Defendant Vox Media is a partner and owner of Defendant TVG. Plaintiff asserts that Defendants are engaged in a business similar to Plaintiff’s and that Defendants use the VERGE trademark in connection with their business, THE VERGE, and in their business’ domain name, http://www.theverge.com/. Plaintiffs contend that Defendants’ use of THE VERGE to identify their goods and services is unlawful.

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

• Count I: Trademark Infringement
• Count II: False Designation Of Origin
• Count III: Unfair Competition
• Count IV: Declaratory Judgment
• Count V: Indiana Crime Victims Act [Forgery under IC §35-43-5-2]
• Count VI: Preliminary and Permanent Injunctive Relief

• Count VII: Corrective Advertising

Indy Founders seeks a declaratory judgment, equitable relief, actual damages, treble damages, costs and attorneys’ fees.

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Hammond, Indiana – Trademark litigation commenced in the Western District of Michigan in 2013 was transferred to the Northern District of Indiana yesterday.

This federal lawsuit, filed by trademark attorneys for Plaintiffs Texas Roadhouse, Inc. and Texas Roadhouse Delaware LLC, both of Louisville, Kentucky, alleges infringement of U.S. Service Mark Reg. No. 1,833,533, U.S. Service Mark Reg. No. 2,231,309, and U.S. Service Mark Reg. No. 2,250,966. These marks have been filed with the U.S. Patent and Trademark Office.

The Defendants listed in the Michigan complaint were Texas Corral Restaurants, Inc.; Switzer Properties, LLC; Texcor, Inc.; Texas Corral Restaurant II, Inc.; T.C. of Michigan City, Inc.; T.C. of Kalamazoo, Inc.; Chicago Roadhouse Concepts, LLC; Paul Switzer; Victor Spina; and John Doe Corp. Defendants filed a motion to dismiss or, in the alternative, transfer venue, with the Michigan court, which was granted. The lawsuit will continue in the Northern District of Indiana.

Plaintiffs, via their trademark lawyers, asserted the following claims:

• Count I: Trade Dress Infringement
• Count II: Federal Trademark Infringement
• Count III: Trademark Infringement Under Michigan Statutory Law
• Count IV: Trademark Infringement Under Indiana Statutory Law
• Count V: Trademark Infringement Under Common Law
• Count VI: Copyright Infringement

• Count VII: Unfair Competition Under Michigan and Indiana Common Law

Texas Roadhouse seeks equitable relief; damages, including punitive damages; costs and attorney fees.

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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
Greenfield
18 E Main St #202
Greenfield, IN 46140
Phone: 317.467.9100
Fax: 866.283.8549
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Indianapolis, IN 46204
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