Trademark Infringement

October 27, 2020

Trademark Infringement Case Transferred to Northern District of Indiana

Hammond, Indiana – Modern Vascular LLC (“Modern Vascular”), the Plaintiff, originally filed suit against Defendants, Modern Vascular & Vein Center, Nazar Golewale and Jane Doe Golewale, in the U.S. District Court for the District of Arizona. In granting the Defendants’ Motion to Dismiss for lack of personal jurisdiction, the case was transferred to the Northern District of Indiana.

According to the Complaint, Modern Vascular has used its mark “MODERN VASCULAR” since 2017, which is registered under U.S. Trademark No. 5,570,334 (the “Registered Mark”). Modern Vascular claims the Defendants have advertised services, entered into agreements, and caused confusion with third parties using its Registered Mark. Due to the alleged continued use of the Registered Mark by the Defendants after being informed of the alleged infringement, Modern Vascular is seeking damages for willful trademark infringement, federal unfair competition, and false designation of origin.

October 19, 2020

Tankless Water Heaters at Heart of Trademark Dispute

By Overhauser Law Offices, LLC

Northern District of Indiana –Apparently, EZ Tankless, Inc. (“EZ Tankless”), the Plaintiff, sells water heaters throughout the world. EZ Tankless also claims to own the trademark for EZ TANKLESS under U.S. Registration No. 5,502,206 (the “Registered Mark”), which has been used in connection with its tankless water heaters since July 2009. According to the Complaint, Noritz America Corporation (“Noritz”), the Defendant, “is one of the world’s largest manufacturers of gas-fired baths and hot water heaters.”

EZ Tankless claims Noritz adopted a confusingly similar mark to the Registered Mark and has been using that mark in connection with Noritz’s EZ Series tankless water heaters since April 2017. Per the Complaint, Noritz applied for and was granted registration for its trademark EZ SERIES under U.S. Registration No. 5,731,024 in connection, in relevant part, with tankless water heaters. Noritz was also apparently granted a trademark registration for EZTR under U.S. Registration No. 4,800,941 with a date of first use on October 31, 2014.

According to the Complaint, EZ Tankless contacted Noritz on multiple occasions through counsel to request Noritz cease use of the EZ related marks. However, Noritz apparently continued to use the marks. Therefore, EZ Tankless is seeking damages for trademark infringement pursuant to the Lanham Act, common law trademark infringement, and common law unfair competition. Additionally, EZ Tankless is seeking to cancel both the EZ SERIES and EZTR marks as it contends they were granted registration based on false representations.

October 8, 2020

Indiana-Based Paul’s Marine, Inc. Sued for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Float-On Corporation (“Float-On”), the Plaintiff, claims to sell unique, high quality immersible boat trailers throughout the United States and in several other countries. According to the Complaint, Float-On has used the registered and incontestable mark FLOAT-ON® (the “Registered Mark”), covered by U.S. Reg. No. 885,333, to identify its boat trailers for over fifty years. Float-On further claims it has expended large amounts of money in advertising its products bearing the Registered Mark.Per the Complaint, Paul’s Marine, Inc. d/b/a PMI Marine Distributors and Paul E. Myers, Jr., the Defendants, copied the Registered Mark and have adopted a confusingly similar mark for boat trailers – FLOTE-ON. Float-On claims the Defendants intentional and willful selling of their products with the alleged infringing mark has caused actual consumer confusion in the marketplace. Float-On is seeking damages for federal trademark infringement, unfair competition, false designation of origin, and counterfeiting pursuant to the Lanham Act among several common law claims.

October 7, 2020

Great Grizzly Sues Winco Fireworks for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Great Grizzly, Inc. (“Grizzly”), Plaintiff, claims to have sold and imported fireworks in Indiana for over 50 years. In addition, Grizzly claims to have several federal trademarks including the one at issue in this case assigned Registration No. 2,329,220 for “PREDATOR” (the “Registered Mark”).

Grizzly alleges the Defendants, Winco Fireworks, Inc. and Winco Fireworks International, LLC (the “Winco Defendants”) offer and sell fireworks throughout the United States. According to the Complaint, the Winco Defendants have sold fireworks that infringe the Registered Mark and have failed to desist their infringement after being informed of the Registered Mark. Therefore, Grizzly is seeking damages for trademark infringement, trademark dilution, false designation of origin, and unfair competition under the Lanham Act, 15 U.S.C. §§ 1051, et seq. and state common law. Grizzly is also claiming the Winco Defendants violated Indiana Code § 24-5-0.5-3(b)(1) for deceptive consumer practices and committed tortious interference with a business relationship under the common law.

September 9, 2020

3M Sues for Trademark Infringement Related to Alleged Price-Gouging Scheme

By Overhauser Law Offices, LLC

Indianapolis, Indiana –3M Company (“3M”) claims there has been an increase in wrongdoers seeking to exploit the COVID-19 pandemic by using scams including those to price-gouge and offer fake sales of 3M-brand N95 respirators. 3M claims Defendants, Zachary Puznak, Zenger LLC d/b/a ZeroAqua, and John Does 1-10 offered Indiana an opportunity to purchase 3M N95 masks at approximately $2.82 each, which is more than double 3M’s price.

There were numerous allegedly false communications from the Defendants to various representatives of the State of Indiana, including Indiana Governor Eric Holcomb’s Chief of Staff and the Senior Vice President and Chief of Staff of the Indiana Economic Development Corporation, regarding the sale of 3M-brand N95 respirators. When 3M became aware of the alleged price gouging and false communications, it filed this suit claiming the Defendants infringed its rights in United States Trademark Reg. No. 3,398,329 (the “‘329 Registration”) and Registration No. 2,793,534 (the “‘534 Registration”). 3M is further seeking damages for unfair competition, false endorsement, false association, false designation of origin, trademark dilution, and false advertising. Finally, 3M filed multiple claims pursuant to the Indiana Crime Victim’s Relief Act for deception, conversion, and theft.

August 18, 2020

Willfulness Not Required for Award of Profits in Trademark Infringement

By Overhauser Law Offices, LLC

The Supreme Court of the United States issued a ruling that a plaintiff alleging trademark infringement does not have to prove willfulness to recover an award of profits. This ruling came down in the case of Romag Fasteners Inc. (“Romag”), versus Fossil Group, Inc. FKA Fossil, Inc. et. al (“Fossil”).

In this case, Romag and Fossil entered into an agreement to use Romag’s fasteners on Fossil’s leather goods. Romag claimed factories in China were making Fossil’s leather goods using counterfeit Romag fasteners. As such, Romag sued Fossil, among other defendants, for trademark infringement, which can trigger an award of a defendant’s profits.

July 20, 2020

Indiana-Based Employment Agency Sued for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana– Nexus Staffing, Inc. (“Nexus Staffing”), the Plaintiff, claims Nexus Employment Solutions Plus of Indiana, Inc. (“Nexus Employment”), the Defendant, intentionally infringed its rights in U.S. Trademark Registration No. 4,722,627 for the word “NEXUS” in connection with employment recruiting and professional staffing services. According to the Complaint, Nexus Staffing has used the NEXUS Mark in connection with staffing and employment services throughout the United States since at least 2005.

Nexus Staffing claims it sent a cease and desist letter to Nexus Employment in July 2018, but Nexus Employment took no action to cease its use of its allegedly confusingly similar name. Nexus Staffing further claims actual consumer confusion has occurred and is likely to continue if Nexus Employment continues using the NEXUS Mark. Based on the allegations, Nexus Staffing is seeking damages for intentional trademark infringement, false advertising, and cyberpiracy, all under the Lanham Act.

The case was assigned to District Judge Theresa L. Springmann and Magistrate Judge Joshua P. Kolar in the Northern District and assigned Case 2:20-cv-00166-TLS-JPK.

July 17, 2020

Indiana-Based Escalade Sports Seeks Declaratory Judgment of Non-Infringement

By Overhauser Law Offices, LLC

Evansville, Indiana – According to the Complaint, DMI Sports, Inc. (“DMI”) entered into an Asset Purchase and License Agreement (the “Purchase Agreement”) with Arachnid, Inc. (“Arachnid”) to purchase Arachnid’s “Consumer Products Line” of dart related products in 1999. Along with the Purchase Agreement, DMI allegedly obtained a Trademark License to make and sell consumer goods under the ARACHNID trademarks (the “Licensed Marks”). Under the Purchase Agreement, Arachnid allegedly retained the ARACHNID name and trademarks to sell dart products commercially. Indian Industries, Inc. d/b/a Escalade Sports (“Escalade”), the Plaintiff, claims to have acquired DMI in 2013 along with the Trademark License. Escalade claims Arachnid 360, the Defendant, is the successor in interest to Arachnid.

Escalade claims that Arachnid 360 began promoting a consumer dart game under the Licensed Marks around August 2015. While Arachnid 360 apparently claimed to have no knowledge of the Purchase Agreement, once it reviewed the Purchase Agreement, Arachnid 360 claimed Escalade was in violation of the Quality Control section for failure to provide samples of new products. Escalade claims after it provided samples to Arachnid 360, the company did not pursue their claims Escalade breached the Purchase Agreement. About four years later in January 2020, Arachnid 360 allegedly sent a letter to Escalade claiming Escalade had materially breached the Purchase Agreement. After responding that it had not breached the Purchase Agreement, Escalade claims Arachnid 360 sent it a letter purporting to terminate the Trademark License.

July 10, 2020

Sundance Botanicals, LLC Seeks Damages for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Sundance Botanicals, LLC (“Sundance”), the Plaintiff, allegedly sells and distributes elderberry syrups bearing the mark “ELDERPOWER.” The ELDERPOWER mark was registered with the United States Patent and Trademark Office under U.S. Registration No. 5,821,635 for “Immune boosting nutritional supplements made from elderberries and organic ingredients” in 2019.

According to the Complaint, The Power of Elderberries, LLC (“Defendant”) markets and sells elderberry syrup with the mark “THE POWER OF ELDERBERRIES.” Sundance claims Defendant knew of the ELDERPOWER mark prior to adopting its mark and adopted the design elements and name for its elderberry syrup bottles in bad faith “to infringe and pray on Sundance’s goodwill.” The Defendant filed a U.S. trademark application for its mark in June 2019. Sundance then opposed the registration of the Defendant’s mark in February 2020. Opposition No. 91,253,891 is currently suspended pending the outcome of this civil suit.

July 2, 2020

Boiling Crab Sues Two Indianapolis Restaurants for Alleged Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana –Boiling Crab Franchise Co., LLC (“The Boiling Crab”), the Plaintiff, filed two separate complaints for trademark infringement and unfair competition alleging similar facts. The first complaint was filed against Defendant The Mad Crab LLC d/b/a The Boiling Crab, Crawfish & Shrimp (“The Mad Crab”). The second complaint was filed against CC Food Enterprise LLC and KC Groups Inc. (collectively “The Boiling Seafood”). According to the complaints, The Boiling Crab owns four relevant U.S. trademarks for “The Boiling Crab” in various styles with Registration Nos. 3,256,219, 4,174,077, 4,491,054, and 5,374,534.

The Boiling Crab franchise, started in California in 2004, has allegedly grown to include locations throughout California and at least four other states. According to the complaints, the Louisiana-style seafood served by The Boiling Crab and the distinctive restaurant décor and menus create a one-of-a-kind dining experience. The Boiling Crab also claims unique trade dress rights in the look and feel of its restaurants.