Trademark Infringement

July 19, 2021

Seventh Circuit Affirms Denial of Fees for Trademark Infringement Case

Chicago, Illinois – Chicago is apparently home to two hotels named “Hotel Chicago.” The first, owned by plaintiff/appellee, LHO Chicago River, LLC (“LHO”) was allegedly named in 2014. The second hotel, owned by defendants/appellants Rosemoor Suites, LLC, Portfolio Hotel & Resorts, LLC and Chicago Hotel, LLC (collectively “Rosemoor”), was apparently renamed to “Hotel Chicago” in 2016. LHO filed suit for trademark infringement and unfair competition under the Lanham Act, deceptive advertising, and common-law trademark infringement under Illinois law.

The district court found that LHO failed “to show that it is likely to succeed in proving secondary meaning” of the alleged mark “Hotel Chicago” and thus denied preliminary injunctive relief. While LHO appealed this ruling, it moved to voluntarily dismiss its claims with prejudice prior to briefing.

After the case was dismissed, Rosemoor filed a motion requesting more than half a million dollars in attorney fees, claiming the case was “exceptional.” This request was denied by the district court. On appeal, the Seventh Circuit held that the district court did not use the proper standard of Octane Fitness to deny the request and remanded. On remand, Rosemoor filed a renewed request for fees including an extra $130,000 on top of the original fee request. However, even after applying the Octane Fitness standard, the district court still denied the fee request. The Seventh Circuit affirmed finding the district court “considered the evidence under the Octane Fitness framework and reasonably determined that this case did not qualify as exceptional.”

Practice Tip: Under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 at n.7. (2014), a district court must consider the totality of the circumstances by simply weighing non-exclusive factors such as “frivolousness, motivation, objective unreasonableness (both in the factual and legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence.”

July 16, 2021

ABI Attachments, Inc. of Mishawaka Sues for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Apparently, ABI Attachments, Inc. (“ABI”), the Plaintiff entered into a Product Lines Purchase Agreement with Defendants, Kiser Arena Specialists, Inc., (“KAS”) Robert D. Kiser, Individually and as Trustee of The Kiser Family Trust, and James Kiser (collectively, the “Defendants”). Under the Agreement, ABI allegedly acquired assets and intellectual property including the trademark “DRAGMASTER®,” U.S. Trademark Registration No. 4,044,235 (the “Mark”), and “Product Lines” including “specifications, shop drawings, records, and intellectual property rights relating to the Product Lines.” ABI claims Defendants have used those documents relating to the Product Lines to market knockoff products. For example, ABI claims the Defendants’ Kiser 1000 Series is substantially similar to the ABI DragMaster as shown below.

Further, ABI asserts that Defendants have promoted the “new” products as “redesigned” which indicates the Defendants’ products are based on intellectual property now owned by ABI rather than a new product developed from scratch. According to the Complaint, KAS has used the same background music in some of its promotional videos as ABI: Compare

https://youtu.be/CWPjo2Ogzbc (KAS) with https://youtu.be/9lY2X2UvoL4 (ABI). ABI claims it has attained significant goodwill throughout the United States and the world and that Defendants alleged misleading and false advertisements have caused irreparable damage to ABI’s reputation.

ABI first seeks damages for Defendants’ alleged breach of their obligations under the Product Lines Purchase Agreement. Next, ABI claims Defendants have misappropriated its trade secrets by using the “specifications, shop drawings, blueprints, records and intellectual property rights relating to the Product Lines.” Pursuant to the Lanham Act, 15 U.S.C. §§ 1116 and 1117, ABI is seeking injunctive relief as well as actual and treble damages for willful trademark infringement. ABI is further claiming Defendants’ actions constitute false designation of origin and false advertising in violation of 15 U.S.C. § 1125(a). Finally, ABI is seeking damages for unfair competition, trademark misappropriation, and unjust enrichment under Indiana common law.

July 14, 2021

Lake Station Grocery Store Sued for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Apparently Plaintiff, La Michoacana Meat Market TM Holdings, LLC (“La Michoacana”) owns numerous federal trademark registrations including the seven at issue in this case (the “Michoacana Marks”):

Mark	Registration No.
LA MICHOACANA MEAT MARKET	3669454
LA MICHOACANA MEAT MARKET	4662100
	4662101
	4662104
LA MICHOACANA MEAT MARKET KIDS	4771484
	4784267
	4784268

According to the Complaint, La Michoacana uses the Michoacana Marks in connection with their meat markets, grocery stores, fruit shops, restaurants, and bakeries. Additionally, La Michoacana claims to sell private label goods such as coffee, beans, and spices.

Cacimiro Galan and Carniceria y Fruteria La Morentita, Defendants, allegedly own and operate a Mexican-themed grocery store using the name “Carniceria y Fruteria La Michoacana.” La Michoacana further asserts that Defendants have a link to La Michoacana’s website on their facebook page, which gives the improper impression that the Parties are affiliated or Defendants have a license to use the Michoacana Marks.

La Michoacana claims it informed Defendants of their infringing actions, but the Defendants did not cease. Therefore, La Michoacana is seeking damages for willful trademark infringement pursuant to 15 U.S.C. § 1117(a). Next, La Michoacana is claiming false designation of origin and unfair competition under 15 U.S.C. § 1125(a). Finally, La Michoacana is seeking relief for common law unfair competition and unjust enrichment.

July 2, 2021

Indianapolis-based Supermercado Sued for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Apparently, La Michoacana Meat Market TM Holdings, LLC (“La Michoacana”), the Plaintiff owns a number of federal trademark registrations for use in connection with its Mexican-styled grocery stores, meat markets, fruit shops, restaurants, and bakeries (the “LA MICHOACANA Marks”).

According to the Complaint, Defendants, Josue Lopez and Supermercado Jireh LLC, own and operate at least one Mexican-themed grocery store using the name “Super Mercado Jireh Pollo Michoacano. La Michoacana claims that Defendants’ use of “MICHOACANO” in connection with food-related goods and services is confusingly similar to the LA MICHOACANA Marks and therefore constitutes infringement of those marks.

La Michoacana is seeking damages for federal trademark infringement pursuant to 15 U.S.C. § 1117(a). It is further claiming damages for false designation of origin and unfair competition under 15 U.S.C. 1125(a). As La Michoacana claims it has suffered irreparable injury for which it has no adequate remedy at law, it is seeking a permanent injunction pursuant to 15 U.S.C. § 1116(a). Finally, La Michoacana is seeking damages for common law unfair competition and unjust enrichment.

June 28, 2021

Defendants File Notice of Removal in Case Filed by Noble Roman’s

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Defendants, Gateway Triangle Corp., 7405 Indy Corp., 850 Indy Corp. Northlake Marketing, LLC and Thomas M. Collins, in a suit originally filed by Noble Roman’s, Inc. in the Superior Court of Marion County, Indiana filed a Notice of Removal to the United States District Court for the Southern District of Indiana.

According to the Complaint, Noble Roman’s is the exclusive holder of licensing and franchising rights relating to the Noble Roman’s pizza brand. Noble Roman’s claims while they had a Franchise Agreement with Defendant Gateway, that Franchise Agreement terminated on December 31, 2019. Noble Roman’s filed suit seeking damages for Defendants’ alleged conversion and theft of Noble Roman’s property rights in violation of Indiana Code §§ 35-43-4-3 and 34-43-4-2. The Complaint further sought damages for breach of the Franchise Agreement, trademark infringement of U.S. Registration Nos. 987,069, 1,920,428, and 1,682,308, and unjust enrichment.

Defendants claim the case is removable under 28 U.S.C. § 1441 in part because federal question jurisdiction exists as Noble Roman’s asserted a federal claim under the Lanham Act. Further, Defendants assert the Southern District of Indiana has supplemental jurisdiction of the state law claims under 28 U.S.C. § 1367(a) because they form part of the same case or controversy as the federal trademark claims.

June 21, 2021

Indianapolis Bouldering LLC Seeks Declaratory Judgment of Non-Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Apparently Indianapolis Bouldering LLC, the Plaintiff, provides bouldering facilities as part of its fitness facility. According to the Complaint, Indianapolis Bouldering intends on opening a 52,000 square foot fitness facility (“North Mass Boulder”) in May 2021 using images of rocks and natural surfaces to create an organic branding aesthetic. The Defendants, BP Holdings Company, LLC, Seattle Bouldering Project, LLC, Minneapolis Bouldering Project, LLC, and Austin Bouldering Project, LLC (“Defendants”), allegedly operate climbing gyms in Washington, Texas, and Minneapolis with colorful and geometric branding.

Indianapolis Bouldering acknowledges in the Complaint that for “a brief period of time in late 2020, one of its members used content from one of Defendant’s websites (the “Website Content”) as a placeholder text during the website design process.” It further claims the Website Content was removed after being publicly available for two weeks and was replaced. The Parties apparently exchanged multiple letters regarding the Website Content and various other intellectual property rights. According to the Complaint, Defendants continued to threaten suit to enforce their purported intellectual property rights.

Therefore, Indianapolis Bouldering is seeking a declaratory judgment that (1) the intellectual property interests asserted by Defendants are invalid and/or unenforceable; (2) it is not infringing, has not infringed, and is not liable for infringing any allegedly enforceable intellectual property interest; and (3) non-violation of alleged trade secrets of Defendants.

June 16, 2021

Midcontinent Independent System Operator Sues for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Carmel, Indiana – Apparently Midcontinent Independent System Operator, Inc. (“MISO”), the Plaintiff, delivers electric power across 15 U.S. states and operates one of the world’s largest energy markets. In connection with its services, MISO claims it has three registered, incontestable, U.S. Trademarks 4,129,745, 4,616,653, and 4,136,817 (the “MISO Marks”). The MISO Marks include a wordmark for “MISO,” and two design marks: .

MISO claims that James F. Sullivan aka Jim Cassidy, the Defendant, under his business ADSNELLC, published a mobile application “Midcontinent ISO with Realtime Dashboard” (the “Infringing App”). The Infringing App and the Google Play listing for the Infringing App allegedly misappropriate and infringe the MISO Marks. Further, MISO claims ADSNELLC has published at least one other mobile application that encourages users to “hunt” and report illegal immigrants. Therefore, MISO claims the mere presence of the Infringing App is causing harm to MISO.

MISO is seeking injunctive relief and damages for trademark infringement and counterfeiting pursuant to 15 U.S.C. §§ 1116 and 1117.

February 25, 2021

Rylie Investments LLC Sued for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Apparently, Armored Heating and Cooling Inc. (“AHC”), the Plaintiff, “is a leading provider of residential and commercial HVAC repair, service, sales and installations in central Indiana.” AHC claims the Defendant, Rylie Investments LLC (“Rylie”) also provides HVAC services in Indiana under the name “Armor Air.”

AHC claims to own U.S. Trademark Application Serial No. 90/058,569, U.S. Trademark Application Serial No. 90/084,330 and Indiana Trademark Registration ID 2020000026067 (the “AHC Trademarks”). According to the Complaint, Rylie filed a federal trademark application for the mark “ARMOR AIR” on July 20, 2020 under Application Serial No. 90/061,501. AHC further claims Rylie advertises its HVAC services despite not being a licensed HVAC contractor in Indianapolis, Indiana. Finally, AHC claims customers have been confused between the two companies and customers have complained that Rylie’s services are inferior and of poor quality.

AHC claims Rylie is liable for trademark infringement of the AHC Trademarks, false designation of origin, and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), and the common law. AHC is further seeking an injunction for trademark infringement pursuant to Ind. Code §§ 24-2-1-13 and 24-2-1-14.

February 15, 2021

Makers of SPLENDA® Sue Speedway for Alleged Trade Dress Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Apparently Heartland Consumer Products LLC (“Heartland”), the Plaintiff, is the owner of the SPLENDA® brand sugar substitute sweetener, which comes in yellow packaging (the “Yellow Trade Dress”). According to the Complaint, Heartland has also used a variety of legally protected trademarks in connection with its SPLENDA® brand products.

In addition to its U.S. trademarks, and common law rights to the Yellow Trade Dress, Heartland also claims to have obtained trademark registrations for the SPLENDA® intellectual property in over 90 countries.

Heartland claims Speedway, LLC (“Speedway”), the Defendant, has “engaged in the active deception of customers through misappropriation of the Yellow Trade Dress in a manner that makes Speedway’s yellow sucralose packets easily mistakable for SPLENDA®’s yellow packets. Per the Complaint, Speedway failed “to provide sufficient cues to the consumer that the yellow sweetener packets in Speedway stores are not the leading brand sucralose-based sweetener sold by Heartland.” Therefore, Heartland claims Speedway’s actions are likely to deceive consumers into believing its sweetener provided in yellow packets is SPLENDA®.

Due to Speedway’s use of yellow packaging for sucralose, Heartland claims it has committed trade dress infringement, trademark dilution, false designation of origin, unfair competition, and false advertising pursuant to the Lanham Act, 15 U.S.C. § 1125. Heartland is seeking enhanced damages and attorneys’ fees under 15 U.S.C. § 1117 because it claims “Speedway’s actions are intentional, willful, and calculated to cause confusion, mistake or deception.” Further, Heartland is claiming common law trade dress infringement under Ind. Code § 24-2-1-15. Next, Heartland is claiming common law unfair competition. Finally, Heartland is claiming trademark dilution under Ind. Code § 24-2-1-13.5.

January 11, 2021

The Trustees of Purdue University Sue for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Trustees of Purdue University (“Purdue”), the Plaintiff, claims to own a number of registered and common law trademarks relating to Purdue University and its mascot (the “Trademarks”). According to the Complaint, Defendants, Vintage Brand, LLC and Sportswear Inc., sell Purdue-branded products utilizing the Trademarks without authorization or a license from Purdue. Purdue seeks declaratory judgment that Purdue owns and enjoys common law rights in the Trademarks and that Purdue’s rights are superior to the Defendants’ claim of any rights. Further, Purdue is seeking judgment against the Defendants for trademark infringement pursuant to 15 U.S.C. § 1114. Finally, Purdue is suing for common law passing off/unfair competition and trademark infringement.

Purdue University’s Registered Trademarks