Trademark Infringement

December 18, 2020

Declaratory Judgment Sought Against Dog Trainer Donna Chandler

Indianapolis, Indiana – According to the Complaint, Donna Chandler (“Chandler”), one of the Defendants and owner of Co-Defendant, Show Colors, Inc. (“Show Colors”), is the author of a canine training book called “Good Dog!” Apparently, Chandler along with Plaintiffs, Kevin DeTrude (“DeTrude”) and Content & Commerce, Inc. (“Content” and collectively “Plaintiffs”), are members of nominal defendant, My K9 Behaves LLC (“My K9”). Content is allegedly in the business of website development and marketing and is owned by Keneth Zweigel (“Zweigel”). Per the Complaint, Chandler, DeTrude, and Zweigel began working on an online instruction course based upon two books written by Chandler (the “Online Class”) in January 2016. The parties apparently also discussed converting the text-based course to a video format.

Two videos were allegedly recorded and paid for by DeTrude in 2016 with a script for a third video written around February 2017. It appears Chandler, Content, and DeTrude officially formed their business on April 4, 2017, but the parties did not execute an Operating Agreement for the business until mid-June 2017, which included clauses assigning all common law and registered trademark and copyrights, including Chandler’s books and the publishing rights to My K9 (the “Assigned Rights”). Upon dissolution or the termination of Chandler’s ownership in My K9, the Assigned Rights would allegedly revert back to Chandler. According to the Complaint, shortly after the Operating Agreement was executed, a third video was recorded and paid for by Zweigel.

As My K9 was experiencing apparent success, the company entered into a Publishing Agreement for a third book to be written by Chandler with the rights assigned to My K9. Allegedly due to the length of time spent writing the book, the first Publishing Agreement was revoked, and a Second Publishing Agreement was put in place. The Plaintiffs claim Chandler then began demanding a greater portion of the profits and ultimately decided if the rights to the third book were not in her name only, she simply would not publish the third book. Chandler then apparently informed DeTrude and Content that she was withdrawing her membership in My K9 and demanded they cease and desist using her name or likeness and re-assign the Assigned Rights back to her.

DeTrude and Content are seeking a declaratory judgment of copyright and trademark ownership “including any derivative or original intellectual property created by or on behalf of My K9. Further, to the extent the Plaintiffs own any of the copyrighted works, they allege Chandler and Show Colors have infringed those works by profiting off the sale of the works individually and not for the benefit of My K9. To the extent Plaintiffs own any trademarks, they are similarly claiming trademark infringement. Plaintiffs have also brought derivative and direct claims for breach of fiduciary duty, usurpation of corporate opportunities, theft and conversion pursuant to I.C. § 35-43-4-3. Finally, Plaintiffs are claiming breach of contract for Defendants’ alleged breach of the Operating Agreement.

November 3, 2020

Indiana Trademark Litigation: JetPro Pilots, LLC Seeks Declaratory Judgment of Non-Infringement

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – JetPro Pilots, LLC, the Plaintiff, apparently recruit, staff, and provide pilots, flight attendants, and technicians to its clients for use on their aircrafts. According to the Complaint, Defendants, Jet Pro, Inc. and Keith Kenneally, offer freight brokerage and forwarding services. The Defendants allegedly sent a cease and desist letter to JetPro Pilots claiming JetPro Pilots was violating Defendants’ U.S. Registration No. 3,186,308 (the “Jet Pro, Inc. Mark”). JetPro Pilots claims to have been in business since 2009 with the first allegation relating to confusion arising out of its use of the phrase “Jet Pro” coming from Defendants in July 2020, with no actual consumer confusion in the eleven years of co-existence.

Believing this to be a credible threat of immediate litigation, JetPro Pilots filed suit for a declaratory judgment for unenforceability of a trademark and a declaration of non-infringement pursuant to the Trademark Laws of the United States and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. JetPro Pilots asserts in favor of declaratory judgment that the parties’ logos are dissimilar and the parties provide different goods and services making consumer confusion unlikely.

November 2, 2020

Seventh Circuit Confirms Presumptive Fees in Copyright Litigation are Not Guaranteed

By Overhauser Law Offices, LLC

Seventh Circuit Court of Appeals – The U.S. Court of Appeals for the Seventh Circuit affirmed the denial of fees for the Defendant, David Knott (“Knott”), after Plaintiff, Timothy B. O’Brien LLC (“Apple Wellness”), voluntarily dismissed all its claims with prejudice.

Originally filed in the Western District of Wisconsin, Apple Wellness alleged that Knott, a former employee of Apple Wellness started a similar, competing wellness shop. Apple Wellness sued Knott for alleged trademark, trade dress, and copyright infringement. Knott countersued for tortious interference and retaliation. The District Court found the copyright claims baseless and denied a preliminary injunction on the trademark and trade dress claims. Apple Wellness later voluntarily dismissed all its claims.

While Apple Wellness submitted a motion to dismiss without prejudice, the District Court ordered Apple Wellness to withdraw its motion or accept a dismissal with prejudice because Knott had already expended resources litigating an injunction. The District Court further noted that in its opinion, no party’s claim was strong. Apple agreed to the dismissal with prejudice and the District Court declined to exercise supplemental jurisdiction over the counterclaims. The District Court subsequently denied Knott’s motion for fees leading to this appeal only as to the fees for the copyright claims and the appeal.

The Court of Appeals found that while Apple Wellness’s copyright claims were frivolous, it appears the claims were brought in good faith. Therefore, “there were minimal concerns regarding compensation and deterrence.” Further, Knott did not have to expend a large amount of time, money, or energy defending against the copyright claims as they were quickly dismissed. After considering all of the factors, the Court of Appeals affirmed the judgment of the District Court denying Knott’s motion for fees.

October 27, 2020

Trademark Infringement Case Transferred to Northern District of Indiana

By Overhauser Law Offices, LLC

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.