Trademark Infringement

January 12, 2016

Indiana Trademark Law: Stratotone Guitar Co. Has Priority Date for Stratotone Trademark; Westheimer Infringed

Fort Wayne, Indiana – District Judge Jon DeGuilo held that prior rights to the Stratotone trademark were abandoned and that the subsequent user held the superior right to the trademark.

This litigation arose as a result of a federal trademark complaint, filed in the Northern District of Indiana by Plaintiff Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana. The Defendant is Westheimer Corporation of Northbrook, Illinois. In the complaint, Agler asserted that Westheimer had infringed the trademark “STRATOTONE” (the “Stratotone trademark”), Trademark Registration No. 3,986,754, which has been issued by the U.S. Patent and Trademark Office.

The claims listed in Agler’s complaint were:

• Count I: Federal Unfair Competition and False Designation of Origin
• Count II: Federal Trademark Infringement
• Count III: Federal Trademark Counterfeiting
• Count IV: Common Law Unfair Competition and Trademark Infringement
• Count V: Unjust Enrichment
• Count VI: Conversion
• Count VII: Deception

• Count VIII: Indiana Crime Victim’s Relief Act

Westheimer counterclaimed, asserting that Agler was infringing on its rights in the Stratotone trademark as well as an additional trademark for “Atom.”

In this opinion, Judge DeGuilo ruled on Agler’s motion for summary judgment on counts I through IV as well as Agler’s motion for summary judgment on all of Westheimer’s counterclaims.

The court first addressed the Stratatone trademark. Agler asserted, and Westheimer conceded, that the Stratatone mark was protected and that Westheimer’s use of the mark was likely to cause confusion. The question for the court was which party had superior rights to the mark, as determined by whether Agler or Westheimer had priority to the trademark. That priority, in turn, was determined by who had established and maintained the earliest claim to the trademark.

It was undisputed that Agler had filed an “intent-to-use” application to register the Stratotone mark on March 7, 2006. Westheimer claimed that it had acquired rights that predated Agler’s 2006 application through its 2009 purchase of trademark rights from Harmony Industries, a third party that had used the Stratotone trademark at least as early as 2001.

The court, however, reviewed the testimony of those involved with Harmony Industries and found that Harmony Industries had both ceased to use the trademark and had demonstrated no intent to use it for more than four years starting at least January 1, 2003. The holder of a trademark has only three years to formulate its intent to resume use before that trademark is presumed abandoned. Thus, Harmony Industries was held to have abandoned the trademark. In turn, because Harmony Industries had no trademark rights to convey in the Stratotone mark, Westheimer acquired none. Consequently, Agler was held to have an earlier priority date and, thus, superior rights to the trademark. The court granted Agler’s motion with respect to his claims, and Westheimer’s counterclaims, regarding the Stratotone trademark.

Regarding the Atom trademark, the court concluded that it did not have sufficient evidence to determine that Agler had acquired priority. It thus denied Agler’s motion for summary judgment with respect to the claims involving the Atom trademark.

January 11, 2016

Indiana Trademark Litigation: Barrington Music Sues Guitar Center, Music & Arts and Eastman Music Alleging Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Indiana trademark attorneys for Plaintiff Barrington Music Products, Inc. of Niles, Michigan filed a trademark infringement lawsuit in the Northern District of Indiana. The Defendants in the litigation are Guitar Center Stores, Inc. of Westlake Village, California; Music & Arts Centers of Bel Air, Maryland, which is owned by Guitar Center; and Eastman Music Company of Pomona, California.

Plaintiff Barrington Music Products offers musical instruments, specifically featuring its “Roy

Benson” and “L.A. Sax” lines. Defendant Guitar Center has been in business more than 50 years and advertises itself as “the world’s largest retailer of guitars, amplifiers, drums, keyboards, recording, live sound, DJ, and lighting equipment.” It has more than 260 stores across the United States. Defendant Music & Arts offers musical instrument for sale, as well as offering repairs, rentals and instruction at its various locations nationwide. Defendant Eastman Music Company, which offers musical instruments globally, has been in business for more than 20 years.

The trademarks at issue in the lawsuit are U.S. Trademark Registration Nos. 3,831,402 and 3,831,403. They have been registered with the U.S. Patent and Trademark Office and cover VENTO both as a standard character trademark and as a stylized trademark.

Defendants are accused of trademark infringement, trademark dilution by blurring, unfair competition via passing off and trade name infringement of the VENTO trademark due to their marketing of wind instruments under the name “Ventus,” which means “wind” in Latin. Defendant’s “Vento” is Italian for “wind.”

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Plaintiff contends that it is “common knowledge that the English translations of VENTUS and VENTO are the same.” Plaintiff also asserts that Defendants use the Ventus mark with the intent to deceive consumers by causing them to believe that Defendants’ Ventus products are related to Plaintiff’s Vento products. Plaintiff claims that the use of the Ventus mark has caused, and will continue to cause, consumer confusion.

In this lawsuit, the following causes of action are alleged:

• Count I: Federal Trademark Infringement – Lanham Act (15 U.S.C. § 1114)
• Count II: Federal Unfair Competition – Lanham Act (15 U.S.C. § 1125(a))
• Count III: False Designation of Origin – Lanham Act (15 U.S.C. § 1125(a)(1)(B))
• Count IV: Federal Trademark Dilution – Lanham Act (15 U.S.C. § 1125(c))
• Count V: Trade Name Infringement under Indiana Common Law

• Count VI: Passing Off in Violation of Indiana’s Unfair Competition Doctrine

Barrington seeks equitable relief along with damages, including punitive damages, costs and attorneys’ fees.

December 21, 2015

Indiana Trademark Litigation: Indiana Botanic Gardens Sues VitalMax Vitamins Alleging Infringing Use of “Accu-Hear”

By Overhauser Law Offices, LLC

Hammond, Indiana – Plaintiff Indiana Botanic Gardens, Inc. of Hobart, Indiana filed a trademark infringement lawsuit in the Northern District of Indiana alleging that Almark Products, Inc. d/b/a VitalMax Vitamins (“VitalMax”) of Delray Beach, Florida infringed its trademarked “ACCU HEAR”, U.S. Trademark No. 3,010,289, which has been registered with the U.S. Patent and Trademark Office.

Indiana Botanic allege that it has been in the business of processing, packaging and otherwise selling variety of herbal products for many years. It contends that it has done so under the ACCU HEAR trademark, which has been registered for use in connection with dietary supplements.

In this trademark litigation, Indiana Botanic accuses Defendant VitalMax of production, labeling, sale and offering for sale of a nutritional supplement offered under the name ACCU-HEAR. This term, Indiana Botanic states, is confusingly similar to Plaintiff’s ACCU HEAR trademark and will irreparably harm Plaintiff by diminishing the reputation and goodwill of that trademark. Indiana Botanic asserts that VitalMax infringed the ACCU HEAR trademark willfully and deliberately.

In this federal complaint, filed by a trademark attorney for Indiana Botanic, the following is alleged:

• Count I: Federal Trademark Infringement

• Count II: Unfair Competition Under Federal Law

The “Jurisdiction and Venue” section of this federal complaint lists additional claims – “state trademark infringement, injury to business reputation and dilution, deceptive trade practices, deceptive business practices and unfair competition under the laws of the State of Indiana” – but those claims were not included as separate counts.

Indiana Botanic seeks equitable relief along with damages, including punitive damages, costs and attorneys’ fees.

December 11, 2015

Indiana Trademark Litigation: Trademark Lawsuit Filed Over Use of “All Star” Name

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Plaintiff All Star Heating & Cooling, Inc. (“All Star”) of Camby, Indiana sued in the Southern District of Indiana alleging that Quality Heating and Air, Inc. (“Quality Heating”) d/b/a All Star Air and Richard Cusick (“Cusick”) of New Palestine, Indiana are infringing its trade name.

Both Plaintiff and Defendants are in the business of providing heating, venting and air conditioning service, installation and repair. Plaintiff All Star states that it began business in December of 2005 and that it has used the same name since that time. It also indicates that it has been using “the same trade dress since 2011.” This trademark infringement complaint does not indicate that Plaintiff’s business name has been registered by the U.S. Patent and Trademark Office.

The complaint states that Defendant Cusick, who is believed to be the owner and operator of Defendant Quality Heating, began business in 2014 under the assumed business name All Star Air. Plaintiff asserts that Quality Heating is currently located less than 30 miles from Plaintiff’s location.

Plaintiff All Star contends that customers and vendors have been confused by Defendants’ use of the All Star name, stating that they have “wrongly believed that there is an association or connection between the Plaintiff’s business and the Defendants’ business.” Plaintiff avers that, as a consequence, Defendants are liable for trade name infringement and unfair competition.

In its lawsuit, filed by an Indiana trademark lawyer, Plaintiff lists the following counts:

• Count I: Federal Unfair Competition
• Count II: State and Common Law Trademark Infringement

• Count III: Common Law Unfair Competition

All Star seeks equitable relief, including an injunction; damages, including treble damages; costs and attorney fees.

November 20, 2015

Indiana Trademark Litigation: Texas A&M Sues the Indianapolis Colts Over Use of “12th Man” Mark

By Overhauser Law Offices, LLC

Houston, Texas – Via its trademark attorneys, Plaintiff Texas A&M University of College Station, Texas filed a trademark lawsuit in the Southern District of Texas alleging that the Indianapolis Colts, Inc. infringed its intellectual property rights in the “12TH MAN” mark, Trademark Registration Nos. 1,612,053; 1,948,306; and 3,354,769, which were issued by the U.S. Patent and Trademark Office. Also alleged were federal unfair competition and false designation of origin as well as unfair competition and trademark dilution under Texas state law.

Texas A&M asserts that, as early as 1922, it has used the trademark 12TH MAN in connection with sporting events and numerous products and services. It contends that the 12TH MAN mark identifies and distinguishes Texas A&M in connection with all of its athletic entertainment services and events. Texas A&M also licenses the mark, including having granted a license to Football Northwest, LLC for use by the Seattle Seahawks professional football team.

Plaintiff contends that the Indianapolis Costs first used 12TH MAN trademark inside of its stadium around 2006. In response to this use, Plaintiff indicates that it sent a cease and desist letter to Defendant, which appeared to result in a resolution of the matter. Texas A&M states that it again became aware of use of the 12TH MAN mark by the Indianapolis Colts in 2012, which again resulted in a cease and desist letter sent to Defendant.

According to the complaint, Texas A&M most recently became aware of use of the 12TH MAN mark by the Indianapolis Colts in July 2015, when Defendant e-mailed a solicitation including the mark to an individual in Texas A&M’s home town of College Station, Texas. Plaintiff claims that this use of the 12TH MAN mark is one of multiple current uses of the trademark by the Indianapolis Colts.

In the complaint, filed by trademark lawyers for Texas A&M, the following claims are listed:

• Count I: Trademark Infringement Under 15 U.S.C. §1114 et seq.
• Count II: Unfair Competition, False Designation and Infringement Under 15 U.S.C. §1125(a)
• Count III: Texas Trademark Dilution

• Count IV: Common Law Unfair Competition

Texas A&M seeks injunctive relief, attorneys’ fees and costs.

November 10, 2015

Indiana Trademark Litigation: Shipshewana Spice Company Sues Amish Farms for Use of “Happy Salt” Trademark

By Overhauser Law Offices, LLC

Shipshewana, Indiana – Indiana trademark lawyers for Plaintiff Kevin Horn, sole proprietor of Shipshewana Spice Company of Warsaw, Indiana, filed an intellectual property lawsuit in the Northern District of Indiana alleging that Bob Wilson d/b/a Amish Farms and Shipshewana’s Best Spice Co. of Millersburg, Indiana infringed the trademark “HAPPY SALT,” Trademark Registration No. 4,241,663, which was granted by the United States Patent and Trademark Office. Horn also alleges trademark counterfeiting, false description, trademark dilution and unfair competition.

Plaintiff Horn of Shipshewana Spice states in his intellectual property complaint that his company has been selling spices and other seasonings since 1994 both locally in north-central Indiana and online at www.shipshewanaspicecompany.com. Plaintiff further claims that the trade name “HAPPY SALT” has been associated with his spices since 1994. A trademark registration for this mark in International Class 30 for “Seasonings, namely, Seasonings in salt” was granted by the USPTO on November 13, 2012.

Defendant Wilson, alleged to be the operator of the website www.amishfarms.com, is accused of offering counterfeit goods offered as “HAPPY SALT SEASONING,” “HAPPY HEARTS SALT FREE SEASONING” and “HAPPY SEA SALT SEASONING.” Plaintiff also protests the use by Defendant of the business name “Shipshewana’s Best Spice Company,” which it contends is nearly identical to Plaintiff’s business name, “Shipshewana Spice Company”.

The complaint, filed by Indiana trademark attorneys for Plaintiff, includes the following counts:

• First Claim: Trademark Infringement Under Lanham Act §32; 15 U.S.C. §1114
• Second Claim: Trademark Counterfeiting Under Lanham Act §32; 15 U.S.C. §1114
• Third Claim: False Description Under Lanham Act §43; 15 U.S.C. §1125
• Fourth Claim: Trademark Dilution Under Lanham Act §43; 15 U.S.C. §1125

• Fifth Claim: Unfair Competition Under Lanham Act §43; 15 U.S.C. §1125

Horn seeks equitable relief along with damages, costs and attorneys’ fees.

October 16, 2015

Indiana Trademark Law: Trademark Plaintiff Abused Legal Process; Trademark Defendant Awarded an Additional $175,000 in Attorneys’ Fees

By Overhauser Law Offices, LLC

Indianapolis, Indiana – In the trademark lawsuit between of Plaintiff Wine & Canvas Development, LLC (“WNC”) and Defendants Christopher Muylle, Theodore Weisser, YN Canvas CA, LLC and Weisser Management Group, LLC, the Southern District of Indiana found that Plaintiffs had engaged in abuse of process and awarded an additional $175,882.68 in attorneys’ fees and costs to Defendant Muylle.

Plaintiff WNC sued Defendants in 2011 on allegations of trademark infringement and false designation of origin after disputes arose regarding the parties’ franchising agreement. Defendants counterclaimed for abuse of process against WNC and its principals Anthony Scott (“Scott”), Tamara McCracken Scott (“Ms. McCracken”), and Donald McCracken (“Mr. McCracken”).

Following a November 2014 trial, the jury found in favor of Defendant Muylle, returning a verdict that there had been no trademark infringement or false designation of origin by Muylle. The jury also found for Muylle on his claim of abuse of process. It awarded him $81,000 from WNC, $81,000 from Scott, $81,000 from Ms. McCracken, and $27,000 from Mr. McCracken.

In this order, the court ruled on Muylle’s most recent petition for attorneys’ fees. These fees had been incurred after September 30, 2014 and consisted of attorneys’ fees that had been neither requested from the jury nor already paid as part of any of three prior payments of Muylle’s attorneys’ fees that had earlier been awarded by the court as sanctions against Plaintiff for failing to follow discovery or court rules.

The court evaluated both whether the fees should be awarded and, if so, whether the amount requested, $175,882.68, was reasonable. Under Seventh Circuit jurisprudence, attorneys’ fees are available when a trademark infringement lawsuit is deemed to be “exceptional.” An example of such an exceptional circumstance under the Lanham Act would be if the plaintiff lost and was also guilty of abuse of process.

The Plaintiff in this litigation lost. At trial, Muylle contended that the trademark infringement lawsuit had been brought for the purpose of causing him to incur considerable litigation costs to put on a defense and, thus, force the closing of the business. Muylle claimed that Scott had told him during a telephone conversation that Scott expected to lose the lawsuit against Muylle but that winning was not the goal of the litigation. Instead his goal was to put Defendants out of business. The jury found that Plaintiff had engaged in abuse of process.

The court also considered whether the amount of the fees was unreasonable. Judge Walton Pratt admitted that, at first blush, the fees did seem questionable for two months of legal services. Upon reviewing the detailed time records, however, the court found that neither the amount of time nor the rates charged per hour were unreasonable. The full amount of attorneys’ fees was awarded to Defendant.

October 14, 2015

Indiana Patent and Trademark Litigation: Global Archery Sues Seattle-Based Company for Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – An Indiana intellectual property attorney for Global Archery Products, Inc. of Ashley, Indiana commenced litigation in the Northern District of Indiana alleging trademark and patent infringement by Jordan Gwyther d/b/a Larping.org and UpshotArrows.com of Seattle, Washington.

Two patents are at issue in this lawsuit: U.S. Patent No. 8,449,413 (the “`413 Patent”) and U.S. Patent No. 8,932,159 (the “`159 Patent”). Both are entitled “Non-Lethal Arrow.” Also at issue are U.S. Trademark Registration No. 4,208,867 and 4,208,868 for ARCHERY TAG for use in connection with non-lethal arrows. The patents and trademarks have been registered by the U.S. Patent and Trademark Office.

Global contends that Jordan Gwyther d/b/a Larping.org (“Larping”) is selling and offering for sale several products including a “Crossbow Bolt,” a “Flat Tip Larp Arrow,” a “Glow in the Dark Larp Arrow” and a “Round Tip Larp Arrow.” These arrows are marketed at www.upshotarrows.com. Global asserts that Larping is violating Global’s trademark rights by, inter alia, using the ARCHERY TAG trademark on advertising and as a paid “key word” on one or more search engines in connection with the marketing of these products. Global also claims that Larping’s products infringe upon two of Global’s patents.

In addition to patent infringement and trademark infringement, Global asserts various additional claims against Larping. The counts listed in this federal lawsuit are as follows:

• Count I: Infringement of the ‘413 Patent by Larping
• Count II: Infringement of the ‘159 Patent by Larping
• Count III: Infringement of Federal Trademarks
• Count IV: False Designation of Origin/Unfair Competition
• Count V: False Advertising
• Count VI: Tortious Interference with Contractual Relations
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Criminal Mischief

• Count IX: Deception

Global seeks equitable relief along with damages, including punitive damages, costs and attorney fees.

October 2, 2015

Indiana Trademark Litigation: Indigo Vapor Enterprises Sues Indigo Vapor Company

By Overhauser Law Offices, LLC

South Bend, Indiana – Indigo Vapor Enterprises LLC of South Bend, Indiana commenced intellectual property litigation against Indigo Vapor Company, LLC, Robert Lee Martin and Charles Nandier of Tucson, Arizona.

Indigo Vapor Enterprises is in the business of selling “vaping” and e-cigarette materials across the United States and throughout the world. It alleges that Defendant sells similar goods in the same marketplace.

Plaintiff contends that Defendants infringed its trademarks, consisting of a stylized INDIGO VAPOR trademark, Registration No. 4,790,247, and a second trademark for INDIGO VAPOR, Registration No. 4,790,244 by using the Indigo Vapor Enterprises name and those trademarks to promote Defendants’ competing products. These accused uses include the operation of a website at www.indigovaporcompany.com. Both trademarks have been filed with the U.S. Patent and Trademark Office.

Plaintiff alleges trademark infringement, dilution and false designation of origin under the Lanham Act. It also asserts cybersquatting under the Anticybersquatting Consumer Protection Act (“ACPA”) and trademark infringement and unfair competition under the common law of Indiana and other states.

In this lawsuit, filed by Indiana trademark attorneys for Indigo Vapor Enterprises, the following causes of action are listed:

• Count I – Federal Trademark Infringement – Lanham Act (15 U.S.C. § 1114)
• Count II – Federal Unfair Competition – Lanham Act (15 U.S.C. § 1125(a))
• Count III – False Designation of Origin – Lanham Act (15 U.S.C. § 1125(a)(1)(B))
• Count IV – Federal Trademark Dilution – Lanham Act (15 U.S.C. § 1125(c))
• Count V – Federal Cybersquatting – ACPA and Lanham Act (15 U.S.C. § 1125(d))
• Count VI – Common Law Trademark Infringement

• Count VII – Common Law Unfair Competition

Plaintiff seeks equitable relief as well as damages, costs and attorneys’ fees.

August 27, 2015

Indiana Trademark Litigation: New Zealand Stroller Company Sued for Use of Navigator Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana trademark attorneys for Baby Trend, Inc. of California filed an intellectual property lawsuit in the Southern District of Indiana alleging trademark infringement. The company claims that Phil and Teds Most Excellent Buggy Company Limited (“Phil and Teds”), a New Zealand-based enterprise, infringed U.S. Trademark Registration No. 4,514,646, which has been registered by Baby Trend in the U.S. Trademark Office.

Plaintiff Baby Trend is in the business of designing, manufacturing and marketing juvenile products. It claims that it has made extensive use of the mark NAVIGATOR in connection with its strollers and related products for over 15 years.

Baby Trend has sued Defendant Phil & Teds contending that Defendant uses a mark that infringes Baby Trend’s NAVIGATOR trademark in connection with its stroller and stroller-related goods. This use is alleged to have taken place online at Phil & Teds’ online marketplace, www.philandteds.com, as well as on third-party websites that offer Defendant Phil & Teds’ stroller products, such as Toys R Us/Babies R Us and the BuyBuyBaby website. Baby Trend further states that products bearing an infringing NAVIGATOR mark are also sold in brick-and-mortar stores, directly by Phil & Teds and/or through others. According to Baby Trend, offers for the sale of products bearing an infringing mark have taken place in Indianapolis, Indiana.

The complaint states that Baby Trend asked Phil & Teds “at least as early as June 30, 2015” to discontinue use of the NAVIGATOR mark but that Phil & Teds refused. The complaint subsequently contends that Phil & Teds’ conduct was done willfully, intentionally, knowingly, and in reckless disregard of the consequences to Baby Trend.

In this federal intellectual property litigation, Indiana trademark lawyers for Baby Trend make the following claims:

• Count I: Federal Trademark Infringement 15 U.S.C. § 1114
• Count II: Federal Unfair Competition and False Designation of Origin 15 .S.C. [sic] § 1125(a)

• Count III: Common Law Unfair Competition and Trademark Infringement

Baby Trend seeks preliminary and permanent injunctive relief; a declaration that Phil & Teds infringed Baby Trend’s rights in its intellectual property in a deliberate, willful, and/or reckless manner; damages, including treble damages; and costs, litigation expenses and attorneys’ fees.