Trademarks Issued

June 27, 2012

194 Trademark Registrations Issued to Indiana Companies in May, 2012

The US Trademark Office issued the following 194 trademark registrations to persons and businesses in Indiana in May, 2012, based on applications filed by Indiana Trademark Attorneys:

	Registration No.	Mark
1	4149541	ESENSE INCORPORATED IN EVERYTHING WE DO	VIEW
2	4151667	COOL CURE 365	VIEW
3	4150758	PRESS GANEY OUTCOMES DRIVEN. PERFORMANCE STRONG.	VIEW
4	4141938	JOURNEY FORWARD	VIEW
5	4150205	BODY ENVY	VIEW
6	4150167	SLUMBER MAX	VIEW
7	4150109	OA	VIEW
8	4150083	DON’T BE A TOOL – RENT ONE	VIEW
9	4150077	CTEMS	VIEW
10	4150057	WELLFOUNT	VIEW

June 27, 2012

APP Press Sues Apress Media for Declaration of Non- Infringement of Trademark “App Press”

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark attorneys for App Press, LLC of Indianapolis, Indiana filed a declaratory judgment suit seeking a declaration that it is not infringing the trademarks of Apress Media, LLC of New York, New York.

App Press, LLC brings action against Apress Media, LLC in order to protect the right to use and continue to conduct business under the registered trademark, and asserts that use of the mark for App Press does not infringe on any trademark held by Apress. App Press is a company that creates, owns, and licenses the use of web-based software that allows consumers to create apps that can be used on mobile devices. According to the Complaint, App Press applied for trademark registration on January 7, 2011 and was registered by the United State Patent and Trademark Office on August 9, 2011. During this period, the trademark was open to opposition on May 24, 2011. Apress Media is a publishing company that edits, publishes and sells books with the focus on technological issues and how-to advice. Apress Media applied for trademark registration on May 7, 2010 and was registered on March 8, 2011. According to App Press, on August 15, 2011, Apress Media sent a cease and desist letter demanding App Press immediately stop the use of their trademark alleging that it infringed on the trademark of Apress and constituted trademark infringement, unfair competition, cyberpiracy and dilution. App Press claims that they forwarded the letter to their counsel who contacted Apress Media’s counsel by phone. Almost two weeks passed that counsel for both parties went back and forth via telephone before they were able to confer regarding the issues set forth in the letter in which App Press agreed and sent a letter describing their product and why it was not infringing on Apress Media’s trademark. Approximately eight months later, on May 8, 2012, Apress again contacted App Press and again asserted that App Press’s use of the App Press trademark was infringing on the Apress trademark. Counsel for App Press has filed the Complaint for declaratory relief and to obtain declaration that App Press’s use of their trademark does not infringe upon any trademarks owned by Apress Media.

Practice Tip: The remedy of declaratory judgment is found in 28 U.S.C.A. § 2201 and allows for any US court to declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.
Continue reading

June 26, 2012

Dillinger Sues Pour House on Lincoln for Trademark Infringement of PUBLIC ENEMY

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark attorneys for Dillinger, LLC of Mooresville, Indiana filed a complaint for injunctive relief and damages in alleging The Pour House on Lincoln, Inc. d/b/a Dillinger’s Chicago Bar & Grill, Inc. of Chicago, Illinois infringed trademark registration nos. 3,483,359 for the mark DILLINGER’S and no. 4,091,160 for the mark PUBLIC ENEMY which have been registered by the US Trademark Office.

Dillinger, LLC is owned and operated by Jeff Scalf and, according to the Complaint, is the descendant of gentleman bandit John Dillinger. Dillinger, LLC owns numerous trademark registrations for DILLINGER, JOHN DILLINGER, PUBLIC ENEMIES, and many other trademarks related to the life of John Dillinger. Dillinger, LLC is also the owner of all rights, title, and interest to both DILLINGER’S and PUBLIC ENEMIES and both marks have been used in interstate commerce in connection with restaurant and bar services as early as 2002. According to the Complaint, Dillinger, LLC has never authorized The Pour House on Lincoln d/b/a Dillinger’s Chicago Bar & Grill to use the DILLINGER or PUBLIC ENEMIES marks in any way and also alleges that in July 2010 it came to their attention that the Defendants were operating a restaurant using the DILLINGER and PUBLIC ENEMIES trademarks. Upon their knowledge of the trademark usage, Dillinger, LLC alleges that The Pour House was contacted about the infringement and in August of the same year they traveled to Indianapolis for the purpose of obtaining a license for the use of the trademarks. The Complaint states that an oral agreement was reached and reduced to writing, but never executed and yet The Pour House willfully continued its infringing usage of the DILLINGER and PUBLIC ENEMIES trademarks, specifically on their website, food and drink menus and the menus posted on the storefront. Dillinger, LLC asserts five counts for the violations of the defendants, including demand for preliminary and permanent injunction; federal trademark infringement; cybersquatting; false designation of origin, false descriptions and unfair competition; and dilution by blurring. In order to avoid any irreparable harm from the loss of reputation the DILLINGER names could suffer as a result of the unauthorized use of the trademarks and the accrual thereof, Dillinger, LLC is seeking to permanently enjoin The Pour House from using the DILLINGER and PUBLIC ENEMIES trademarks or inducing such belief, actual damages suffered as a result of the alleged trademark violations, statutory and exemplary damages, and the profits derived from the infringing activities.

Practice Tip: U.S.C. title 15, chapter 22 governs trademarks, and §1117 specifically details the relief which can be granted as a result of trademark violation.
Continue reading

May 3, 2012

138 Trademark Registrations Issued to Indiana Companies in April, 2012

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 138 trademark registrations to persons and businesses in Indiana in April, 2012, based on applications filed by Indiana Trademark Attorneys:

	Registration No.	MARK
1	4133431	INDIANA HAND TO SHOULDER CENTER	VIEW
2	4132040	CHAIRS	VIEW
3	4131967	EV-N-SPRED	VIEW
4	4131894	KEYMARK	VIEW
5	4131738	S25 SPRAY-PRO	VIEW
6	4131665	TAKING ENERGY IN A NEW DIRECTION	VIEW
7	4131578	CLD	VIEW
8	4131522	BLASTMEDIA	VIEW
9	4131326	PR PRECISION RINGS INCORPORATED	VIEW
10	4131155	ASSASSIN HTPC	VIEW
11	4131035	PEOPLE FOR URBAN PROGRESS	VIEW
12	4131029	BE ADVISER	VIEW
13	4131015	VIPER	VIEW
14	4131012	DRIVEVELOCITY	VIEW
15	4131011	DRIVEVELOCITY	VIEW

April 4, 2012

Continued Use of Trademark By Successor Company Relevant to “Piercing the Corporate Veil” and Successor Liability for Breach of Contract

By Overhauser Law Offices, LLC

Indianapolis, IN – The Indiana Court of Appeals has held that a successor company’s continued use of a trademark created a genuine issue of fact as to whether the successor should be liable for a breach of contract by its predecessor. Attorneys for Zeise & Sons Excavating, Inc. of Crown Point,Indiana had sued Boyer Construction Group Corporation (“Group”) of Highland, Indiana in the Lake County Superior Court for breach of contract and had argued that Group should be liable for the breach by its predecessor company, Boyer Construction Corporation (“Corporation”), under theories of breaching the corporate veil of an alter ego corporation. Zeise also argued that Group should be liable under a theory of successor liability. The contract in question involved construction of a retail development. It was undisputed that Zeise had performed all of its obligations under the contract and that Corporation had failed to pay as provided by the contract. The Lake County Superior court had granted Group a partial summary judgment in favor of Group, finding neither of Zeise’s theories created liability for Group.

The Court of Appeals reversed the summary judgment. The court noted that a decision to pierce to corporate veil requires a fact-sensitive inquiry. The court noted that Zeise had presented numerous facts to support piercing the corporate veil, including continued use of trademarks, logos and website address. In addition, the Court of Appeals found that continued use of trademarks, logos and website address created issues of material fact regarding Ziese’s successor liability claim. The court, however, declined to issue a summary judgment in favor of Ziese. Rather, the court found that Ziese raised a genuine question of a material fact and therefore summary judgment was not appropriate. The case has been remanded for trial.

Practice Tip: When a company sells its assets to another company, it is important to remember intellectual property such as trademarks, patents and copyrights. Failure to document an assignment or license can result the “piercing the corporate veil,” and personal liability of the business owners.

April 3, 2012

140 Trademark Registrations Issued to Indiana Companies in March 2012

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 140 trademark registrations to persons and businesses in Indiana in March, 2012, based on applications filed by Indiana Trademark Attorneys:

	TM Number	Title
1	4,119,874	WORLD CLASS BEER	VIEW
2	4,118,716	ON THE BUBBLE	VIEW
3	4,118,715	HIT THE DECK	VIEW
4	4,119,863	BRAND POSITION ANALYSIS	VIEW
5	4,118,628	DISTINXION	VIEW

February 3, 2012

Trademark Registrations Issued to 146 Indiana Companies in January, 2012

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 146 trademark registrations to persons and businesses in Indiana in January, 2012, based on applications filed by Indiana Trademark Attorneys:

	Reg. Number	Mark	Click to View
1	4,089,821	PETSIT USA	VIEW
2	4,092,607	THE SENDING CENTER	VIEW
3	4,091,138	SUBSCRIBERS FANS AND FOLLOWERS	VIEW
4	4,091,088	VIVACIT-E	VIEW
5	4,090,901	VISITBLOOMINGTON.COM	VIEW

January 30, 2012

Trademark Trial and Appeal Board Issues Opinion for Rolex in Trademark Dispute Suit Over Dilution

By Overhauser Law Offices, LLC

Alexandria, VA – The Trademark Trial and Appeal Board of the US Trademark Office has reached a decision regarding the opposition of trademark registration filed by Rolex Watch U.S.A., Inc. of New York, New York against AFP Imaging Corporation of Elmsford, New York on trademark serial no. 77/492,131 for the mark ROLL-X registered with the US Trademark Office.

In 2008, AFP filed a trademark application with the US Trademark Office for the mark ROLL-X, with the product category of “x-ray tables for medical and dental use.” Rolex Watch filed an opposition to that registration, arguing that there was a likelihood of confusion between AFP’s products and the Rolex trademark that Rolex has used for many years and that the Rolex marks would likely be diluted by tarnishing or blurring of the marks. The opinion notes that Rolex’s trademarks state that their products are “watches, clocks, parts of watches and clocks, and their cases.” After considering all the statutory factors, the Board determined that Rolex had not demonstrated that AFP’s proposed trademark registration would result in dilution of Rolex’s trademarks.

Practice Tip: In considering whether a trademark application dilutes a prior mark by blurring, there are six factors to consider pursuant 15 U.S.C. § 1125(c)(2)(B)(i-vi). These are: the degree of similarity between the two marks, the degree of distinctness, the extent to which the owner of the famous mark is engaging in exclusive use, the degree of recognition of the famous mark, intent to create association with the famous mark, and finally, actual association with the famous mark.
Continue reading

December 31, 2011

165 Trademark Registrations Issued to Indiana Companies in December, 2011

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 165 trademark registrations to persons and businesses in Indiana in December, 2011, based on applications filed by Indiana Trademark Attorneys:

	Reg. Number	Mark	Click to View
1	4,077,289	SF	View
2	4,077,266	GATORADE SPORTS SCIENCE INSTITUTE	View
3	4,077,214	IBMX	View
4	4,077,149	{Design}	View
5	4,077,054	FLEXWOOD	View

November 30, 2011

Trademark Registrations Issued to 169 Indiana Companies in November, 2011

By Overhauser Law Offices, LLC

The US Trademark Office issued the following 169 trademark registrations to persons and businesses in Indiana in November, 2011, based on applications filed by Indiana Trademark Attorneys:

	Reg.Number	Mark	Click to View
1	4,064,989	PRAYER CHAIR	VIEW
2	4,064,974	WORLD’S LARGEST BMX STORE	VIEW
3	4,064,973	THE BEST IN BMX	VIEW
4	4,064,960	TRAUMA TECHNICIANS, LLC	VIEW
5	4,063,223	WAITER ON THE WAY	VIEW