Trademark Infringement

June 23, 2015

Indiana Trademark Litigation: Weekends Only, Inc. Sues Weekends Only Clearance Outlet

Fort Wayne, Indiana – An Indiana trademark lawyer for Weekends Only, Inc. of St. Louis, Missouri filed a trademark infringement lawsuit in the Northern District of Indiana alleging that AK Distribution LLC and KASH Subsidiaries, Inc. of Fort Wayne, Indiana, one or both of which does business as “Weekends Only Furniture & Mattress Clearance Outlet,” infringed the trademarks WEEKENDS ONLY and WEEKENDS ONLY FURNITURE OUTLET, U.S. Registration Numbers 2,669,149; 2,697,959; 2,834,336; and 2,891,146, which have been registered by the U.S. Trademark Office.

Plaintiff Weekends Only, Inc. operates business establishments in Indiana and Missouri. It contends that it owns and has used various trademarks, currently registered by the U.S. Trademark Office, that include the words “Weekends Only” since approximately 1997. These trademarks have been registered in Class 35 for “Retail store services featuring furniture.”

In this federal lawsuit, Plaintiff alleges that Defendants AK Distribution LLC and KASH Subsidiaries, Inc. have used and continue to use confusingly similar versions of the WEEKENDS ONLY and WEEKENDS ONLY FURNITURE OUTLET trademarks. In so doing, states Plaintiff, Defendants have committed trademark infringement under federal and state law, unfair competition under the state law of Indiana, false designation of origin, injury to business reputation and/or trademarks, common law unfair competition.

In the complaint, filed by an Indiana trademark attorney for Plaintiff, the following claims are alleged:

• Count I: Infringement of Federally-Registered Trademark
• Count II: Infringement of Common Law Rights in Trademarks
• Count III: Unfair and Deceptive Trade Practices in Violation of Indiana Code § 24-5-0.5-1 et seq.
• Count IV: False Designation of Origin Under 15 U.S.C. § 1125(a)
• Count V: Common Law Unfair Competition
• Count VI: Motion for Permanent Injunctive Relief

Plaintiff asks the court for injunctive relief and damages.

June 18, 2015

Indiana Trademark Litigation: Imprimis Sues Hook’s Apothecary for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Trademark lawyers for Imprimis Pharmaceuticals, Inc. of California filed an intellectual property lawsuit in the Southern District of Indiana alleging that Hook’s Apothecary, Inc. of Indiana, as well as unidentified Doe Defendants 1 through 20, infringed the following Imprimis Pharmaceuticals, Inc. trademarks: GO DROPLESS! (U.S. Serial No. 96143543), GO DROPLESS! – Logo (U.S. Serial No. 86143553), LESSDROPS (U.S. Serial No. 86497791), DROPLESS CATARACT THERAPY (U.S. Serial No. 86497090 ), and DROPLESS THERAPY (U.S. Serial No. 86497100), which have been registered by the U.S. Patent and Trademark Office.

Imprimis offers slow-releasing ophthalmic compositions containing triamcinolone acetate, moxifloxacin hydrochloride, triamcinolone acetate, and vancomycin. It offers these products for use in the treatment of acute infections of the eye and for use via intraocular injection. These products are sold under the trademarks at issue in this Indiana lawsuit. The products are also claimed to be the subject of patent applications numbers 14/361,242 and 14/227,819, which have been filed with the USPTO.

Hook’s has been accused of infringing all, or some subset, of these intellectual property rights. Imprimis claims that Hook’s has been manufacturing, marketing, and selling “copycat” “Dropless” formulations, the administration of which has been reported to have caused a high incidence of endophthalmitis and other related problems in patients recovering from cataract surgery. This, Imprimis contends, has created confusion, harmed the reputation of Imprimis’ inventions, and caused some physicians to cease ordering from Imprimis.

In this complaint, filed by trademark attorneys for Imprimis in Indiana federal court, the following counts are alleged:

• Infringement of Trademarks (Against All Defendants)
• Common Law Unfair Competition (Against All Defendants)
• Common Law Trademark and Trade Name Infringement (Against All Defendants)
• For Declaratory Relief under 28 U.S.C. § 2201 (Against All Defendants)
• For Injunctive Relief (Against All Defendants)

Imprimis asks for general and special damages, as well as a trebling of those amounts “because of the willful nature of said infringements”; for a judgment that Hook’s has violated §§ 1114 and 1125(a) of the Lanham Act; for a judgment that Hook’s has engaged in unfair competition under the common law; for injunctive relief; and for an award of the costs of litigation, including attorneys’ fees.

June 11, 2015

Indiana Trademark Litigation: Eco Elettrocomponenti Alleges Sale of Counterfeit Lights by National Supply

By Overhauser Law Offices, LLC

South Bend, Indiana – An Indiana trademark lawyer for Eco Elettrocomponenti SRL of Reggio Emilia, Italy (“Eco”) filed a trademark-infringement lawsuit in the Northern District of Indiana alleging that National Supply of Green Bay, Wisconsin sold counterfeit Eco products.

Plaintiff Eco is a manufacturer and supplier of components for lighting attractions. Among its products are cabochon lenses commonly referred to as “Star Lights.” Eco claims that its Star Light cabochon lenses have a distinct physical appearance and configuration. Eco indicates that it owns a trademark, Registration Number 4,401,967, for this distinct configuration.

Defendant National Supply sells specialty lighting and electrical products, including cabochon lenses. National Supply has been accused of having purchased counterfeit Star Lights for resale to consumers. In January 2015, a U.S.-based distributor of Eco’s Star Light contacted National Supply to discuss National Supply’s Internet sales of lenses advertised as Star Light lenses. Eco indicates that, in response to this discussion, National Supply voluntarily agreed not to sell Star Lights.

Eco contends that the sale of such lights by National Supply is nonetheless ongoing, stating that “National Supply offers for sale counterfeit ECO products.” Eco, via its Indiana trademark attorney, has sued National Supply, asserting that National Supply intentionally, knowingly, and willfully purchased and redistributed counterfeit Eco products. This trademark lawsuit asks the Indiana court for actual and/or statutory damages; a finding that this is an exceptional case meriting an award of costs, including attorneys’ fees and enhanced damages; and for injunctive relief.

June 5, 2015

Indiana Trademark and Patent Litigation: Simpson Sues Two Indiana Individuals Alleging Patent Infringement and Counterfeiting

By Overhauser Law Offices, LLC

Hammond, Indiana – Trademark and patent attorneys for Simpson Performance Products, Inc. of Mooresville, North Carolina (“Simpson”) and SFI Foundation, Inc. of Poway, California (“SFI”) commenced trademark litigation in the Western District of North Carolina alleging that Robert Wagoner of North Judson, Indiana and Derek Randall Cathcart of Valparaiso, Indiana infringed the SIMPSON® family of trademarks, some of which have been registered by the U.S. Trademark Office. The case was transferred to the Northern District of Indiana. Among the trademarks at issue are U.S. Trademark Registration Nos. 4,117,821; 1,243,427; 3,026,333; 3,026,334; and 3,050,920. Also at issue are U.S. Patent Nos. 6,931,669 and 8,272,074.

Plaintiff Simpson is a manufacturer of automotive and motorsports specialty/performance products, including head and neck restraints for competitive racing. The Simpson brand of automotive and motorsports products has existed 1959. Plaintiff SFI was established to develop and administer minimum performance standards for the automotive aftermarket and motorsports industries, including standards for specialty/performance racing equipment.

Simpson offers for sale the SIMPSON® Hybrid PRO Rage™ head and neck restraint. Simpson indicates that this product is one of the few such devices to be certified under a special classification, SFI SPEC 38.1, for use in NASCAR competitions.

Defendants Wagoner and Carthcart have been accused of engaging in the business of providing specialty/performance racing equipment, including head and neck restraints that are counterfeit versions of Simpson products. Plaintiffs contend that Wagoner is offering counterfeit head and neck restraints through ebay.com. Plaintiffs allege that Cathcart offers counterfeit head and neck restraints via the website racingjunk.com.

These restraints, Plaintiffs contend, bear trademarks owned by Simpson, including the SIMPSON® federally registered trademark as well as the HUTCHENS Hybrid PRO™ and Hybrid PRO™ common law trademarks.

The accused products also allegedly bear a label that falsely states, “This product designed & manufactured by Safety Solutions, Inc. PATENT NO.: 6931669; other patents pending.” According to Plaintiffs, the alleged counterfeiting activities of Defendants also constitute patent infringement.

In this lawsuit, filed by patent and trademark lawyers for Plaintiffs, the following causes of action are listed:

• Trademark Infringement
• Unfair Competition under 15 U.S.C. § 1125(a); False Designation of Origin; False or Misleading Advertising
• Unfair and Deceptive Trade Practices under N.C. [North Carolina] Gen. Stat. § 75-1.1
• Patent Infringment [sic]

• Common Law Fraud

Plaintiffs ask for a finding in their favor on each of the counts alleged, including a finding that the conduct was knowing and willful, and entry against each Defendant jointly and severally. Plaintiffs seek costs, attorneys’ fees and damages, including enhanced damages, as well as injunctive relief.

This federal trademark complaint was initially filed in the Western District of North Carolina in February 2015. In May 2015, District Judge Richard Voorhees ordered it to be transferred to the Northern District of Indiana, finding that the North Carolina court lacked personal jurisdiction over Defendants.

May 22, 2015

Indiana Trademark Litigation: Hard Rock Hotel Sues Alleging Infringement of Trademarked “Rehab” Pool Party

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana trademark attorneys for HRHH Hotel/Casino, LLC and HRHH IP, LLC, both of Las Vegas, Nevada (collectively, “HRHH”), commenced a trademark lawsuit in the Southern District of Indiana alleging that Bella Vita, LLC, Henri B. Najem, Jr. and 10 unknown defendants, all of Indiana, infringed various trademarks belonging to HRHH.

The HRHH entities together claim ownership to the Hard Rock Hotel & Casino Las Vegas located in Las Vegas, Nevada, along with certain intellectual property rights used in connection with that establishment.

HRHH contends that it created a daytime pool party held at the Hard Rock Hotel & Casino Las Vegas known as the “Rehab Pool Party” or simply “Rehab”. The Hard Rock Hotel & Casino Las Vegas indicates that the Rehab Pool Party was first held in 2004 and that the Rehab Pool Party is still being held regularly. HRHH asserts that its Rehab Pool Party has become famous and that it has licensed the REHAB marks to third parties for clothing and other merchandise.

Bella Vita, an Indianapolis provider of restaurant, bar and related entertainment services, has been accused of organizing and hosting weekly pool parties that are confusingly marketed as “Rehab+ Sundays”.

This federal lawsuit has brought under trademark and anti-dilution laws of the United States, 15 U.S.C. § 1051, et seq., the trademark laws of the State of Indiana, Ind. Code § 24-2-1, and under the statutory and common law of unfair competition. The trademarks at issue, all of which have been registered by the U.S. Trademark Office, are as follows:

• Trademark Registration No. 3,873,673 REHAB
• Trademark Registration No. 4,524,097 REHAB
• Trademark Registration No. 4,611,979 REHAB RX
• Trademark Registration No. 3,182,848 Rxehab
• Trademark Registration No. 4,615,774 Rxehab

• Trademark Registration No. 3,170,859 Rxehab

In the complaint against Bella Vita, its managing member Najem and the unnamed Does, Indiana trademark lawyers for Plaintiffs assert the following causes of action:

• False Designation of Origin and Unfair Competition – 15 U.S.C § 1125(a)
• Trademark Infringement – 15 U.S.C. § 1114, Ind. Code § 24-2-1-13, and Common Law
• Dilution – 15 U.S.C. § 1125(c)

• Unfair Competition

Plaintiffs ask the court for a finding that Defendants have engaged in trademark infringement, trademark dilution and unfair competition; for injunctive relief; for a finding that HRHH is the exclusive owner of the REHAB Marks and that such marks are valid and protectable; for an award of damages and profits earned as a result of infringing activity; for punitive damages; and for an award of interest, costs, expenses, and reasonable attorneys’ fees.

May 20, 2015

Indiana Trademark Litigation: Integrity Trade Services Sues Ex-Employees Alleging Conspiracy and Conversion

By Overhauser Law Offices, LLC

South Bend, Indiana – Trademark attorneys for Integrity Trade Services, Inc. (“ITS”) of Frankfort, Illinois filed an intellectual property complaint in the Northern District of Indiana naming as Defendants Integrity Employment Partners, LLC, Integrity Trade Services, LLC, Janice Hernandez, James Hernandez, Michaela Williams, and Jason Reis, all of Indiana, and alleging multiple claims, including trademark infringement, conversion of ITS trade secrets, breach of contract, and tortious interference with business relationships.

ITS is a national staffing services company, doing businesses in multiple states, including Indiana, Florida, Illinois, and Texas. ITS is wholly owned by John E. Cumbee, III. In 2008, ITS acquired all of the operational assets of the Knox, Indiana branch of a staffing company owned by CES America, Inc. ITS also hired most, if not all, of the CES employees then working at the Knox facility, including defendants James and Janice Hernandez.

ITS contends that, since purchasing the Knox facility, it has invested well over $1 million to build the Knox business and the ITS brand as it is related to that facility. It asserts in this federal lawsuit, inter alia, that Defendants conspired to convert ITS’ customers, employees and trade secrets for their own use.

The accused in this case are husband and wife Janice Hernandez and James Hernandez; several family members of Janice Hernandez, including Michaela Williams, and Jason Reis; and two entities apparently owned by the Hernandezes, Integrity Employment Partners, LLC, Integrity Trade Services, LLC.

Defendant James Hernandez (“James”) worked for ITS from the time that ITS acquired the business until April 30, 2015 when he was fired. ITS asserts that James engaged in a conspiracy to solicit away and convert (a) ITS’ office employees at the Knox location, (b) at least the active ITS field employees servicing the Knox location, and (c) customers comprising the Knox-area business. He is accused of attempting to transfer them to Integrity Employment Partners, LLC, an Indiana limited liability company formed to process the Knox business converted from ITS for his benefit and the benefit of the other co-conspirators.

Defendant Janice Hernandez (“Janice”), also became employed by ITS when ITS was acquired from its prior owner. She has been accused of not only being an integral part of the alleged conspiracy but also of being “likely its “‘mastermind.'” Defendant Michaela Williams is Janice’s daughter. Defendant Jason Reis is the ex-son-in-law of James and Janice, having been married to another of Janice’s daughters.

ITS states that, in the last two weeks in April 2015, it discovered various anomalies in the Knox business. These anomalies alerted ITS to the activities that triggered this federal lawsuit. They included a drop off in weekly gross sales, the formation of Integrity Employment Partners, LLC (“IEP”), and checks issued by existing ITS customers made payable to IEP (and not ITS).

Defendants are accused of orchestrating a scheme to confuse ITS’ customers and employees regarding with which staffing businesses using the name “Integrity” – Plaintiff’s firm or Defendants’ firms – those customers and employees were transacting business. In doing so, ITS contends, Defendants attempted with some success to convert ITS’ business assets and relationships for Defendants’ benefit. Allegations of criminal conduct by Defendants were also made. In a 48-page complaint, filed by trademark lawyers for Plaintiff, those claims and others are made:

• Count I: Federal Trademark Infringement
• Count II: Federal Unfair Competition
• Count III: Illinois Deceptive Trade Practices Act
• Count IV: Breach of Fiduciary Duty
• Count V: Breach of Agreement
• Count VI: Tortious Interference with Contract
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Conversion
• Count IX: Computer Fraud and Abuse Act
• Count X: Uniform Trade Secrets Act
• Count XI: Civil Conspiracy
• Count XII: Unjust Enrichment

• Count XIII: Breach of Contract

Plaintiff asks the court for, inter alia, injunctive relief, compensatory damages, punitive damages, attorneys’ fees, interest and costs.

April 30, 2015

Supreme Court Holds TTAB Decision Can Have Issue Preclusion Effect

By Overhauser Law Offices, LLC

The Supreme Court on March 24, 2015, held that a Trademark Trial and Appeal Board (TTAB) decision should be given issue preclusion effect when the usages it adjudicated are materially the same as those before a district court. B&B Hardware, Inc. v. Hargis Industries, Inc., U.S., No. 13-352, 3/24/2015.

Reversing an Eighth Circuit decision, the Court found no categorical reason why issue preclusion can never apply. The same likelihood of confusion standard applies for both registration and infringement, Justice Alito explained, even if the TTAB and the district court do not always consider the same usages. A concurring opinion was filed by Justice Ginsburg, who stressed that preclusion will not apply for a great many TTAB decisions. Justice Thomas (joined by Justice Scalia) dissented, objecting to the presumption of preclusion for adjudicating agencies. The Court’s decision is consistent with the position taken in an AIPLA amicus brief filed in this case.

Background

April 9, 2015

Indiana Trademark Lawsuit: Bekins Sues Licensee of “Bekins” Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark lawyer for Wheaton Van Lines, Inc. and Bekins Van Lines, Inc., both of Indianapolis, Indiana (collectively, “Bekins”), filed a trademark-infringement lawsuit in the Southern District of Indiana alleging that Faulk-Collier Moving & Storage, LLC and David Vaughn, both of Louisiana, infringed the trademark BEKINS®, which has been registered by the U.S. Trademark Office as Trademark Registration No. 2427605.

Faulk-Collier, a moving-and-storage company in business since 1932, has been sued by Bekins for both trademark infringement and breach of contract. Bekins, which was founded in 1891, contends that it has made extensive use of the Bekins trademark, which it asserts has become both incontestable and famous. Bekins’ uses, it states, include inclusion in all of Bekins’ advertising materials, as well as being emblazoned on the side of all of the trucks, vans and trailers operating under Bekins’ authority for over ten years. Bekins has also sued Vaughn for more than $73,000, alleging that he personally guaranteed payment to Bekins.

In its Indiana trademark complaint, Bekins states that, in February 2014, it entered into an agreement with Faulk-Collier under which Faulk-Collier would serve as an interstate household agent for Bekins. Bekins further claims that, due to uncured breaches of that agreement by Faulk-Collier, Bekins terminated the arrangement in October 2014. After terminating the agreement, Bekins advised Defendants that they must cease all use of logos and trademarks owned by Bekins, including the removal of the Bekins trademark from all advertising, trucks, equipment, websites, and similar.

Nonetheless, contends Bekins, Faulk-Collier has continued to advertise moving services under the name “Bekins.” The accused uses include advertising on social media as well as operating numerous pieces of equipment in interstate commerce which bear one or more trademarks owned by Bekins. Bekins states that these uses by Faulk-Collier are unauthorized.

This federal lawsuit followed. In its complaint, filed by an Indiana trademark attorney, Bekins asserts the following:

• Count I – Breach of Contract
• Count II – Account Stated
• Count III – Federal Trademark Infringement

• Count IV – Federal and State Unfair Competition/Trademark Dilution

Bekins asks the court to enter preliminary and permanent injunctions; award Bekins monetary damages, statutory and otherwise, and punitive damages; and order Defendants to pay Bekins’ attorneys’ fees and costs.

March 20, 2015

Indiana Trademark News: Indiana Brewer Settles Trademark Dispute

By Overhauser Law Offices, LLC

Munster, Indiana – The parties in this dispute were two beer makers, Three Floyds Brewing Company of Munster, Indiana and White Flame Brewing Company of Hudsonville, Michigan, both of which recently manufactured an imperial stout that each named “Black Flame.”

Three Floyds, Indiana’s second-largest brewer, made its Black Flame as a limited-run beer. Microbrewer White Flame, which opened in 2012, also produced a limited run of 600 bottles of a beer called Black Flame. White Flame’s version, which is aged in maple syrup bourbon barrels, was made to celebrate the company’s third anniversary.

White Flame learned of the Three Floyds beer in February and e-mailed Three Floyds to discuss the identically named beers. Bill White and Andy Steenbergen of White Flame later drove to Indiana to meet with Three Floyds.

March 13, 2015

Intellectual Property: Patents, Trademarks, Copyrights and Trade Secrets

By Overhauser Law Offices, LLC

How should I protect my intellectual property?

Different types of intellectual property are protected by different means.

In the United States, patents may be available to any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Patent protection must be sought by application with the U.S. Patent and Trademark Office (“USPTO”). There are three types of patents: