Trademark Infringement

September 9, 2020

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

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.

June 29, 2020

Greenfield Convenience Store Sues Indianapolis Competitor for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – KS Equity Company, LLC (“KS”), the Plaintiff, operates a convenience store, Leo’s Market and Eatery (the “Leo’s Store”) in Indianapolis, Indiana. KS claims to own and use the following U.S. Trademark Reg. Nos. 5886802, 5886803, 5892871, and 5962680 (collectively, “Leo’s Trademarks”) in connection with the Leo’s Store. According to the Complaint, KS has also developed trade dress in the unique design elements of the Leo’s Store (“Leo’s Trade Dress”).

KS claims Defendants, RSM Investments LLC, Raghbir Singh, Pushpinder Singh, York Multani, and York Singh (collectively, “Defendants”), operate a convenience store or gas station called Leon’s in Indianapolis, Indiana (the “Leon’s Store”). Per the Complaint, the Leon’s Store is located approximately 22 miles away from the Leo’s Store and uses a confusingly similar name and logo compared to the Leo’s Trademarks. The brand of fuel sold in connection with each store, Marathon, allegedly exacerbates the potential customer confusion between the two stores.

June 2, 2020

Lafayette Company Seeks Damages for Alleged Trademark Infringement

By Overhauser Law Offices, LLC

Lafayette, Indiana – Lafayette Venetian Blind, Inc. (“LVB”), the Plaintiff, claims it has developed substantial goodwill in connection with its distinctive U.S. Trademark Registration No. 3537759 for the word “Allure” for use in connection with window blinds and treatements. LVB claims that Defendant, Blinds to Go (U.S.), Inc. (“Blinds to Go”), uses the term “Allure” “to sell competing goods to many of the same consumers served by LVB.” According to the Complaint, LVB has demanding Blinds to Go cease and desist from using the “Allure” mark in connection with Blinds to Go’s window treatments, but it has failed to do so.

As such, LVB is seeking declaratory relief that it has superior rights to the term “Allure” and has the right to use the term “Allure” throughout the United States for “manufacturing, designing, and selling window treatments, blinds, shades, and related products and services.” Further, LVB is seeking damages for trademark infringement and unfair competition and false designation of origin under the Lanham Act (15 U.S.C. § 1114 and 15 U.S.C.A. § 1125(a), respectively). Finally, LVB is claiming damages for common law trademark infringement and passing off/unfair competition.

The case was assigned to Judge Phillip P. Simon and Magistrate Judge John E. Martin in the Northern District and assigned Case 4:20-cv-00021-PPS-JEM.

April 23, 2020

Syndicate Sales Gains Home-Field Advantage in Trademark Infringement Suit

By Overhauser Law Offices, LLC

Syndicate Sales Inc., an Indiana corporation, along with six other Defendants filed notice to remove a case initially filed in the Superior Court of California, County of Los Angeles by Plaintiff, Natural Pack, Inc. (“Natural Pack”). Defendants sought to remove the case to the United States District Court for the Central District of California pursuant to 28 U.S.C. §§ 1331, 1337, and 1441 for federal question and diversity jurisdiction.

The removed case is a civil action entitled Natural Pack, Inc. v. Syndicate Sales, Inc. et al. Case No 19TSCV32476 (the “State Action”). Natural Pack filed the State Action on September 12, 2019, asserting claims for violation of Uniform Trade Secrets Act, fraud, negligent misrepresentation, breach of contract, intentional interference with prospective economic relations, negligence, violation of the Lanham Act, and California Statutory and common law infringement. Following removal to the Central District of California, the Defendants filed a Motion to Dismiss under F.R.C.P. 12(b)(2) or in the alternative to Change Venue pursuant to 28 U.S.C. § 1401. The case was transferred to the Southern District of Indiana on January 21, 2020.

The Original Notice of Removal was filed October 15, 2019 in the Central District of California; and the case was transferred to the Southern District of Indiana on January 21, 2020 given Case No. 1:20-cv-00219-JRS-DLP and assigned to District Judge James R. Sweeney and Magistrate Judge Doris L. Pryor.

March 10, 2020

Tatuyou Sues Indiana-Based One Ink Seven for Alleged Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – Attorneys for Plaintiff, Tatuyou, L.L.C. (“Tatuyou”) of Hastings, Minnesota, filed suit in the Northern District of Indiana alleging that Defendants, One Ink Seven LLC (“One Ink”) of Goshen, Indiana and Robert F. Smead (“Smead”), infringed its rights in its intellectual property portfolio. Tatuyou is seeking damages,costs, and attorneys’ fees.

Tatuyou claims to be in the business of selling products to be used in the tattoo industry with an intellectual property portfolio all relating to its sales business. According to the complaint, Tatuyou is the owner by assignment of U.S. Patent No. 9,546,281 (the “‘281 Patent”) entitled “Tattoo Stencil Composition and Method for Manufacturing.” Tatuyou also claims to be the owner by assignment of U.S. Patent No. 8,545,613 (the “‘613 Patent”) entitled “Tattoo Transfer Pattern Printed by an Ink Jet Printer.”

According to the complaint, One Ink does business as “Electrum Supply” and owns and operates a website with the domain name: http://www.electrumsupply.com. Tatuyou claims that One Ink is infringing, actively inducing infringement, and contributorily infringing both the ‘281 Patent and the ‘613 Patent under 35 U.S.C. § 271 by offering for sale products named “Electrum Premium Tattoo Stencil Primer,” “Electrum Gold Standard Tattoo Stencil Primer,” “NOX Violet,” and “Eco Stencils.” Tatuyou’s attorney allegedly sent One Ink a letter on December 20, 2018 informing One Ink of the alleged infringement of the ‘281 Patent and a subsequent letter on June 12, 2019 to inform One Ink of the alleged infringement of the ‘613 Patent.