Unfair Competition

February 13, 2015

Indiana Trademark Law: Consent Judgment Entered Enjoining Chanel’s Salon from Using “Chanel” in Business Name

Hammond, Indiana – Chanel’s Salon, LLC, d/b/a Chanel’s Salon and Chanel’s Cosmetology Salon, and Chanel Jones, all of Merrillville, Indiana, entered into a consent judgment with Chanel, Inc. of New York, New York to resolve ongoing trademark disputes regarding the trademarked term CHANEL®.

Indiana trademark attorneys for fashion-and-beauty giant Chanel, Inc. had sued in the Northern District of Indiana alleging that Chanel’s Salon, LLC and Chanel Jones had infringed and were infringing the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which have been registered by the U.S. Patent and Trademark Office.

In this Indiana lawsuit, Chanel, Inc. alleged trademark infringement, trademark dilution, unfair competition under federal law as well as trademark infringement and unfair competition under Indiana state law. Chanel, Inc. claimed that its intellectual property rights to its trademark CHANEL had been infringed and diluted by actions of Defendants Chanel’s Salon, an Indiana beauty salon, and its owner Chanel Jones.

Specifically, Defendants were accused of using the trade names CHANEL’S SALON and/or CHANEL’S COSMETOLOGY SALON in connection with their beauty salon without Chanel’s authorization. Chanel, Inc. also claimed that the Defendants were infringing and diluting the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories.

This litigation ended pursuant to a consent judgment crafted by the parties and entered by the Indiana district court. As part of the consent judgment, the court issued a permanent injunction prohibiting Jones from using CHANEL to identify her beauty salon or any other enterprises, services or products. Jones was also enjoined from any use of the term CHANEL as part of any keyword, meta tag, page tag, or source code in any business marketing.

The order in this intellectual property litigation was issued by Judge Theresa L. Springmann in the Northern District of Indiana. This case is: Chanel, Inc. v. Chanel’s Salon LLC et al., Case No. 2:14-cv-00304-TLS-PRC.

January 30, 2015

Indiana Trademark Litigation: Archetype Sues Alleging Trade Dress Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana intellectual property attorney for Archetype Ltd. (“Archetype”) of Short Hills, New Jersey sued in the Southern District of Indiana alleging that LTD Commodities LLC (“LTD”) of Bannockburn, Illinois infringed the trademark PathLights™.

Plaintiff Archetype contends that it has been marketing a distinctive and famous battery-operated motion-detection lighting system under the PathLights trademark since at least as early as 2009. It states that the overall look and feel of the PathLights product is non-functional and serves as a source identifier. In this Indiana lawsuit, Archetype accuses LTD of trade dress infringement, false designation of origin or sponsorship, passing off, and unfair competition.

Archetype indicates in the complaint that LTD is marketing, selling, and promoting a battery-operated motion-detection lighting product that is almost identical to Archetype’s PathLights product. It further claims that the accused LTD lights illustrated on LTD’s website are actually images of Archetype’s PathLights product and that the lighting products that consumers actually receive from LTD upon purchase of the LTD product are not an Archetype’s PathLights product but are, instead, a different, lower-quality light.

Defendant LTD is accused of “intentionally, willfully and deliberately pull[ing] a ‘bait and switch’ on consumers” and, in doing so, damaging Archetype’s sales volume and business reputation.

In this lawsuit, filed by an Indiana intellectual property lawyer for Archetype, the following counts are asserted:

• Count I: Trade Dress Infringement

• Count II: False Designation of Origin or Sponsorship and Passing Off

• Count III: False Advertising

• Count IV: Trade Dress Dilution

Archetype asks the court for judgment that LTD’s acts constitute trade dress infringement, unfair competition, false designation of origin and/or sponsorship, false advertising and trade dress dilution; for an award of LTD’s profits and actual damages, including corrective advertising, as well as trebling those damages pursuant to 15 U.S.C. § 1117; for an order that all accused LTD products and other accused materials be surrendered for destruction; for an injunction; and for an award of Archetype’s attorneys’ fees, costs and expenses.

The case was assigned to Chief Judge Richard L. Young and Magistrate Judge Denise K. LaRue in the Southern District of Indiana and assigned Case No. 1:15-cv-00106-RLY-DKL.

January 28, 2015

Indiana Copyright Litigation: Microsoft Asserts Copyright, Trademark Infringement by Ace Recycling

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – An Indiana copyright and trademark attorney for Microsoft Corporation (“Microsoft”) of Redmond, Washington sued in the Northern District of Indiana alleging that Ace Recycling, Inc. and Kevin Cawood, both of Fort Wayne, Indiana (collectively, “Defendants”), infringed copyrighted material belonging to Microsoft. Defendants have also been accused of trademark infringement, false designation of origin, false description and representation, counterfeiting and unfair competition. Microsoft seeks damages, an accounting, the imposition of a constructive trust upon Defendants’ illegal profits, and injunctive relief.

Microsoft develops, markets, distributes and licenses computer software. Ace Recycling is engaged in the business of advertising, marketing, installing, offering, and distributing computer hardware and software, including the software at issue, which Microsoft contends is unauthorized.

Microsoft’s software products, which have been registered by the U.S. Copyright Office, include Microsoft Windows XP and Microsoft Vista, both of which are operating systems for desktop and computers.

Also at issue are the following trademarks and service marks belonging to Microsoft:

• “MICROSOFT,” Trademark and Service Mark Registration No. 1,200,236, for computer programs and computer programming services;

• “MICROSOFT,” Trademark Registration No. 1,256,083, for computer hardware and software manuals, newsletters, and computer documentation;

• WINDOWS, Trademark Registration No. 1,872,264 for computer programs and manuals sold as a unit; and

• COLORED FLAG DESIGN, Trademark Registration No. 2,744,843, for computer software.

Microsoft contends that Defendants advertised, marketed, installed, offered and distributed unauthorized copies of Microsoft software, despite Microsoft’s claims that their actions infringed Microsoft’s intellectual property rights. Specifically, Microsoft asserts that, in April 2013, Defendants distributed to an investigator refurbished computer systems with unauthorized copies of Windows XP installed on them. In response, in June 2013, Microsoft asked Defendants to cease and desist from making and distributing infringing copies of Microsoft software. Microsoft alleges that, in May 2014, Defendants again distributed to an investigator a refurbished computer system with an unauthorized copy of a Windows operating system – in that case, Windows Vista – on it.

Microsoft contends that these are not isolated incidents but, instead, indicate Defendants’ pattern of acting in reckless disregard of Microsoft’s registered copyrights, trademarks and service marks.

In this Indiana lawsuit, Microsoft’s copyright and trademark attorney makes the following claims:

• Copyright Infringement – 17 U.S.C. § 501, et seq.

• Trademark Infringement – 15 U.S.C. § 1114

• False Designation Of Origin, False Description And Representation – 15 U.S.C. § 1125 et seq.

• Indiana Common Law Unfair Competition

• For Imposition Of A Constructive Trust Upon Illegal Profits

• Accounting

Microsoft asks for a judgment of copyright infringement; of trademark and service mark infringement; that Defendants have committed and are committing acts of false designation of origin, false or misleading description of fact, and false or misleading representation against Microsoft, in violation of 15 U.S.C. § 1125(a); that Defendants have engaged in unfair competition in violation of Indiana common law; and that Defendants have otherwise injured the business reputation and business of Microsoft.

Microsoft also asks for the impoundment of all counterfeit and infringing copies of purported Microsoft products; the imposition of a constructive trust upon Defendants’ illegal profits; injunctive relief; damages, including enhanced damages; and costs and attorneys’ fees.

The case was assigned to Judge Joseph Van Bokkelen and Magistrate Judge Susan L. Collins in the Northern District of Indiana and assigned Case No. 1:15-cv-00032-JVB-SLC.

October 27, 2014

Indiana Copyright Litigation: ABRO Sues for Infringement of Product Packaging

By Overhauser Law Offices, LLC

South Bend, Indiana – Indiana copyright attorneys for ABRO Industries, Inc. of South Bend, Indiana sued in the Northern District of Indiana alleging that 1 New Trade, Inc. of Baltimore, Maryland (“New Trade”), Quest Specialty Coatings, LLC of Menomonee Falls, Wisconsin (“Quest”), Igor Zorin and Boris Babenchick and Vadim Fishkin, infringed copyright protections associated with ABRO’s carburetor and choke cleaner package, pending U.S. Copyright Application Case No. 1-1845314781, which is currently under review with the U.S. Copyright Office.

ABRO markets and sells various automotive, industrial and consumer products throughout the world. It claims ownership of an extensive portfolio of intellectual property rights in more than 165 countries. ARBO indicates that, since at least 1992, it has continuously sold and distributed a carburetor and choke cleaner, the packaging of which is the subject of this intellectual property lawsuit.

In this copyright litigation, ABRO alleges that New Trade, under the direction and control of Zorin, Babenchik and Fishkin, is unfairly competing with ABRO by obtaining products from an affiliate of an ABRO supplier in the United States and then distributing the products in containers nearly identical to ABRO’s containers used with identical products, in the same markets, and to the same customers.

Defendants Zorin, Babenchick, Fishkin and New Trade are accused of having reproduced ABRO’s packaging work by using “nearly identical” packaging for New Trade’s competing carburetor and choke cleaning product. Defendants Zorin and Babenchick are the principal owners of Defendant New Trade. Defendant Fishkin is New Trade’s general manager. Defendant Quest is accused of supplying the carburetor and choke cleaning product.

In its complaint, filed by Indiana copyright lawyers, ABRO lists the following claims:

• Count I: Copyright Infringement

• Count II: Personal Liability and/or Vicarious Liability for Copyright Infringement -Zorin, Babenchik, and Fishkin

In its complaint, filed by Indiana copyright lawyers, ABRO asks for the following:

A. Judgment on all counts against each of the Defendants individually and jointly and severally and in favor of ABRO;

B. A preliminary and permanent injunction enjoining and restraining Defendants, their agents, and all persons who act in concert and participation with them who learn of the injunction through personal service or otherwise:

(1) From further acts of infringement; and

(2) From copying, using, distributing, publishing by any means or creating a derivative work of the Work under 17 U.S.C. §502;

C. An award of actual damages caused by and any profits obtained by Defendants attributable to infringement of the Work pursuant to 17 U.S.C. §504(b);

D. For infringement of the Work occurring after registration thereof, an award of statutory damages or alternatively actual damages caused by and any profits obtained by Defendants attributable to the infringement pursuant to 17 U.S.C. §§504(b) and 504(c);

E. Impoundment and destruction of all products, catalogs, advertisements, promotional materials or other materials in Defendants’ possession, custody or control found to have been made or used in violation of ABRO’s copyrights pursuant to 17 U.S.C. §503;

F. An award of reasonable attorneys’ fees and costs pursuant to 17 U.S.C. §505; and

G. An award of prejudgment and post-judgment interest.

Practice Tip:

This is an interesting complaint. Plaintiff makes what, at first glance, appears to be a case of trademark/trade-dress infringement, including allegations such as “intent to capitalize on ABRO’s goodwill and well-known reputation,” which are normally found in a trademark complaint. ABRO also refers in its complaint to its “extensive anti-counterfeiting program throughout the world… [which has] has resulted in countless raids, product seizures, arrests and jail terms for counterfeiters.” Yet this lawsuit is styled as a copyright case.

Copyright law in the United States is founded on the Constitutional goal of “promot[ing] the Progress of Science and useful Arts” by providing exclusive rights to creators. Protection by copyright law gives creators incentives to produce new works and distribute them to the public. In doing so, the law strikes a number of important balances in delineating what can be protected and what cannot, determining what uses are permitted without a license, and establishing appropriate enforcement mechanisms to combat piracy.

The law of copyright is generally thought of as affording protection to works that are typically thought of as art – books, paintings, music and the like. Nonetheless, works that are not primarily designed as art, such as elements of product packaging, might still secure protection by registering with the U.S. Copyright Office. A copyright registration, if available, is easier and less expensive to obtain than a registered patent or trademark. The registration remains valid much longer than a patent and does not require use in commerce, as does a trademark.

Copyright protection also provides benefits to a plaintiff when suing for infringement. In many cases, copyright infringement can be proved more easily than others types of infringement. Moreover, the damages available upon proof of infringement include statutory damages, available without a showing of harm, as well as attorneys’ fees, which are available without pleading or proving that the case was “exceptional.”

October 20, 2014

Indiana Cyberpiracy Litigation: Burns Rent-Alls Sues Aays Rent-All and Michael Sharp

By Overhauser Law Offices, LLC

South Bend, Indiana – An Indiana intellectual property attorney for Burns Rent-Alls, Inc. of Mishawaka, Indiana filed a cyberpiracy lawsuit in the Northern District of Indiana alleging that Michael Sharpe and Aays Rent-All Co., Inc., also of Mishawaka, Indiana, had wrongfully registered and used domain names that would result in confusion with the “BURNS RENT-ALLS” common-law trademark.

Burns Rent-Alls is a fifth-generation family-owned firm that has been in business for over 100 years. It offers goods and services throughout northern Indiana and southwest Michigan under the BURNS RENT-ALLS brand including equipment rentals, convention services, event rentals, portable toilet rentals, costume rentals, and tent and canopy rentals.

Aays Rent-All is, according to Plaintiff, in a similar business and provides rentals throughout northern Indiana and southwest Michigan, including equipment rentals, convention services, event rentals, and tent and canopy rentals.

Burns Rent-Alls claims that, by virtue of its “longstanding and continuous use” of the BURNS RENT-ALLS mark, it owns common law trademark rights to that mark for use in connection with Burns Rent-Alls’ goods and services.

Aays Rent-All and Sharpe are accused of registering and using domain names that are confusingly similar to Burns Rent-Alls’ Mark, with a bad-faith intent to profit from their use and registration of those domain names. At issue are: (i) burnspartyrentall.com; (ii) burnspartyrental.com; and (iii) burnsrentall.com. Plaintiff contends that Defendants are using these names to redirect Internet traffic intended for the Burns Rent-Alls’ website to Aays Rent-All’s website. This use, Plaintiff asserts, is likely to cause confusion or mistake, or to deceive consumers into believing that there is an association between Aays Rent-All and Burns Rent-Alls.

Plaintiff also states that it agreed to pay, and did pay, $100 to purchase the burnsrentall.com domain name but that Defendants did not transfer the domain name as allegedly agreed.

In its complaint, Indiana intellectual property counsel for Burns Rent-Alls alleges the following:

Count I: Unfair Competition
Count II: Cyberpiracy
Count III: Breach of Contract

Burns Rent-Alls requests injunctive relief, including the transfer of the domain names at issue; damages, including treble damages; and costs and attorneys’ fees.

Practice Tip:

Plaintiff indicates that it attempted to obtain an agreement from Defendants regarding at least one of the domain names at issue prior to filing this lawsuit. Plaintiff contends that, despite this effort, Defendants continued to use the allegedly infringing website names. This lawsuit for unfair competition, cyberpiracy and breach of contract followed.

Another approach available to a plaintiff in such a situation is to seek a transfer of the domain names under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). This policy was established to resolve “The Trademark Dilemma” inherent in the largely unpoliced sales of domain names — the registration of a trademark without the consent of the trademark owner.

As part of the process of registering a domain name, registrants must, among other things, 1) “represent and warrant” that registering the name “will not infringe upon or otherwise violate the rights of any third party” and 2) agree to have the matter heard as an UDRP proceeding if any third party asserts that the domain name violates its trademark rights.

The UDRP is an administrative procedure. A UDRP limits itself to matters concerning abusive registrations and will not intervene in genuine disputes over trademark rights. To prevail in a UDRP proceeding, for each domain name, the complainant must establish three elements:

The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The registrant does not have any rights or legitimate interests in the domain name; and
The registrant registered the domain name and is using it in “bad faith.”

October 16, 2014

Indiana Trademark Litigation: NextEra Sues Nextra for Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana – A trademark attorney for NextEra Energy, Inc. of Juno Beach, Florida filed an intellectual property complaint in the Northern District of Indiana. Defendant Nextra Technologies, LLC of Granger, Indiana is accused of infringing one or more of NextEra’s 132 federally registered trademarks. Nextra is also accused of unfair competition and false advertising.

NextEra is a clean-energy company. It has approximately 42,500 megawatts of generating capacity in 26 states in the United States and four provinces in Canada. Through its affiliates, it provides wind and solar energy goods and services. Its wind-energy services include consulting, developing, construction and installation of wind energy systems, including wind-powered energy-generating turbines and turbine transformers. Its solar-energy systems include solar panels, solar arrays, solar photovoltaic equipment, solar thermal equipment and transformers.

Plaintiff asserts that Defendant Nextra is in a similar business and that it has manufactured, imported, promoted, distributed and/or sold energy products and services – including wind turbine components, solar panels, and energy systems – in the United States. Plaintiff further contends that Nextra’s goods and services are offered under “Nextra” mark and that the “Nextra” mark infringes upon NextEra’s “NextEra” family of trademarks.

Due to the alleged similarity between the types of goods and/or services offered by the two companies and the marks under which they are offered, NextEra claims that Nextra’s sales of energy products and services is likely to cause confusion, mistake and deception among purchasers as to the existence of a relationship between NextEra and Nextra.

In its complaint, filed by a trademark lawyer for NextEra, the following claims are made:

• Federal Trademark Infringement,

• Federal Unfair Competition, and

• Common Law Trademark Infringement and Unfair Competition.

NextEra seeks injunctive relief and damages, including punitive damages, as well as costs and attorneys’ fees.

Practice Tip: A finding of trademark infringement requires a “likelihood of confusion.” There are seven factors relevant to the likelihood-of-confusion analysis: (1) the similarity between the plaintiff’s mark and the allegedly infringing mark in appearance and suggestion; (2) actual confusion; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the area and manner of use; (5) the degree of care likely to be exercised by consumers; (6) the strength of the plaintiff’s mark; and (7) the defendant’s intent.

October 15, 2014

Indiana Copyright and Trademark Litigation: Edible Arrangements Sues Edible Creations and Owner

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – An Indiana trademark attorney for Edible Arrangements, LLC (“EA”) and Edible Arrangements International, LLC (“EAI”) of Wallingford, Connecticut filed an intellectual property complaint in the Northern District of Indiana alleging trademark and copyright infringement by Tom Drummond and Edible Creations, LLC (“EC”) of Allen County, Indiana. Defendants are accused of infringing several trademarks (below), which have been issued by the U.S. Trademark Office, as well as a copyrighted work.

Since 1998, EAI has been using the phrase “Edible Arrangements,” together with various related design marks, in connection with various food products. Its products include fruit cut to look like flowers as well as other fruit products. EAI operates a franchise network of over 1,200 independent owner-operated franchise locations throughout the United States and internationally. It sublicenses the trademarks at issue in this Indiana litigation to its franchisees.

The other Plaintiff, EA, owns the following trademarks relating to “Edible” and “Edible Arrangements”:

In August 2013, Defendants Edible Creations and the company’s owner, Tom Drummond, Filed an application for what Plaintiffs content is a mark that is confusingly similar to one or more of EA’s trademarks:

In September 2013, Plaintiffs sent a cease-and-desist letter demanding that Edible Creations cease using the mark. It later filed an opposition before the Trademark Trial and Appeal Board (“TTAB”) challenging the registration on the grounds of deceptiveness, false suggestion of a connection between Edible Creations and EA, likelihood of confusion, dilution, misdescriptiveness and fraud. Edible Creations did not respond to EA’s opposition and the TTAB entered a default against Edible Creations and refused to register Edible Creations’ mark.In August 2013, Defendants Edible Creations and the company’s owner, Tom Drummond, filed an application for what Plaintiffs contend is a mark that is confusingly similar to one or more of EA’s trademarks:

In this lawsuit, Defendants have been accused of continuing to advertise, promote and sell fruit arrangements in Indiana using the phrase “Edible Creations” and “Edible Creations Creator of Edible Floral Arrangements.” They have also been accused of violating EA’s copyright in a sculpture known as the “Hearts and Berries Fruit Design” by displaying the copyrighted design in print, including on vehicles, and on the internet.

In its complaint, filed by an Indiana trademark and copyright lawyer, Plaintiffs list the following claims:

Trademark Infringement
False Designation of Origin
Trademark Dilution

By Blurring
By Tarnishment
Copyright Infringement
Unfair Competition
Unfair Competition

Plaintiffs seek damages, including punitive damages, as well as injunctive relief.

Practice Tip:

Allegations of trademark dilution involve a different analysis from claims of trademark infringement. The first type of trademark dilution is dilution by blurring. An allegation of dilution by blurring requires that the plaintiff prove, among other things, that its mark is “famous.” This is not an easy burden, requiring that the mark have “extensive public recognition and renown” within the population of average consumers. There are some marks, such as Chanel, Coke and Microsoft, for which establishing such renown is likely achievable. However, this bar is extremely high. Even trademarks that are very well known, such as Coach, which has been used since 1961 and under which several billion dollars of sales are made annually, have been found to be “not famous” for the purposes of a dilution analysis. Edible Arrangements will have a difficult time proving this claim.

The second type of trademark dilution is dilution by tarnishment. Edible Arrangements will also have a difficult time establishing the elements of this type of trademark dilution. This cause of action is generally brought when the reputation of a well-known mark is harmed by another’s use of that trademark or a similar mark within a sexual context. For example, in Kraft Foods Holdings, Inc. v. Helm, 205 F. Supp. 2d 942, 949-50 (N.D. Ill. 2002), the court held that the use of the term “VelVeeda” by a pornographic website tarnished the trademark held by the makers of Velveeta cheese. Courts may also find dilution by tarnishment where a defendant offers inferior products or services. It is unclear that Plaintiffs here have alleged facts sufficient to support a claim of tarnishment.

October 1, 2014

Indiana Trademark Litigation: KM Innovations Sues LTD Commodities

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for KM Innovations LLC of New Castle, Indiana (“KM”) sued in the Southern District of Indiana alleging that LTD Commodities LLC of Bannockburn, Illinois (“LTD”) infringed the trademarked “INDOOR SNOWBALL FIGHT”, Trademark Registration No. 4,425,111 which has been issued by the U.S. Trademark Office.

KM sells synthetic “snowballs” for use in indoor “snowball fights.” It contends that it uses two distinct trademarks to market and sell these synthetic snowballs: “SNOWTIME anytime!” and INDOOR SNOWBALL FIGHT. KM has also sought patent protection for its indoor snowballs.

The SNOWTIME anytime!/”indoor snowball fight” concept was conceived in December 2012. At a party, several parents realized that a market might exist for “indoor snowballs,” which would enable children to have a “snowball fight” but without the usual requirements of snow or being outside. KM later introduced a product based on this idea.

In this Indiana trademark complaint, KM asserts that an item called an “Indoor Snowball Fight Set” is being offered and sold on by LTD on the LTD website. The retail price of the product offered by LTD is $9.95 per 12 synthetic balls, while an allegedly similar product is offered and sold by KM for somewhat more, with a retail price of about $1 per synthetic snowball.

KM contends that, by using the name “Indoor Snowball Fight Set,” LTD has deliberately misappropriated KM’s trademark rights. It claims that the use by LTD of this name demonstrates a wrongful attempt by LTD to utilize the goodwill associated with the KM synthetic-snowball product. KM also claims that LTD’s product is inferior and that, as a result, KM’s reputation will be damaged when consumers are confused into believing that KM is associated with LTD’s “Indoor Snowball Fight Set.”

In its complaint, filed by an Indiana trademark lawyer, KM claims the following:

• Count I: Infringement of Federal Trademark Registration No. 4,425,111
• Count II: False Designation of Origin/Unfair Competition – 35 U.S.C. § 1125(a)

KM asks the court for a judgment of trademark infringement and unfair competition. It requests that the court award damages, including treble damages; order the surrender of any infringing materials; prohibit the use of “Indoor Snowball Fight” by LTD and its agents; and award to KM its costs and attorneys’ fees.

Practice Tip #1: While not included as a separate count, KM did allege trademark dilution in paragraph 24 of the complaint. This cause of action is distinct from trademark infringement and applies to trademarks that are deemed to be famous. An action for dilution can assert either, or both, of two principal harms: blurring and tarnishment. Dilution by blurring, codified in 15 U.S.C. 1125(c)(2)(B), arises when association with another similar mark causes the distinctiveness of the famous mark to be compromised. In contrast, dilution by tarnishment under 15 U.S.C. § 1125(c)(2)(C) happens when the reputation of the famous mark is damaged by association with a similar mark.

Practice Tip #2: KM, no stranger to intellectual property litigation, has previously sued in Indiana federal court alleging trade dress infringement of the packaging for its synthetic snowballs.

September 19, 2014

Indiana Unfair Competition Litigation: Property Damage Appraisers Sues Clinton Body Shop and Its Owner

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Texas defamation and franchise attorneys for Property Damage

Appraisers (“PDA”), in conjunction with Indiana co-counsel, sued alleging that John Mosley (“Mosley”), owner of the Clinton Body Shop, Inc. of Clinton, Mississippi, committed unfair competition under the Lanham Act by falsely representing the nature of an estimate made by one of PDA’s franchisees. Various state-law claims have also been pled to the court. This unfair competition lawsuit was initially filed in Indiana state court. It was removed from the Marion County Superior Court to the Southern District of Indiana by Indiana intellectual property attorneys for Defendants.

Plaintiff PDA is a national franchisor with a network of approximately 185 independent franchisees that are in the business of performing inspections on vehicles and other property. It has been in business for over 50 years. Defendant Mosley is the owner of the Clinton Body Shop. Clinton Body Shop advertises itself as a one-stop, full-service shop for automobile services.

Mosley is accused of inducing a PDA franchisee, John Larry Gentry, into providing a nonconforming auto-services estimate on PDA letterhead. PDA contends that Gentry was told that this estimate was only for comparison purposes and that it would be provided only to the Mississippi Attorney General’s office.

PDA claims that, instead, Mosley subsequently e-mailed this estimate to the Indiana Auto Body Association. PDA also asserts that Mosley mischaracterized the contents of, and process involved in writing, the estimate. According to the complaint, Mosley also delivered this nonconforming estimate to “other body shops around the country, making the same misrepresentations.”

In its complaint, filed by Texas defamation and franchise lawyers for PDA, in conjunction with Indiana co-counsel, the following counts are listed:

• Count I: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count II: State Unfair Competition
• Count III: Defamation
• Count IV: Tortious Interference with Business Relationships

PDA asks the court for damages, including exemplary damages; interest; attorneys’ fees, expenses and costs; and a permanent injunction.

Practice Tip: The vast majority of Indiana intellectual property litigation takes place in federal court, as the intellectual property causes of action that are most often litigated creations of federal statutory law. Thus, they may be heard in federal court under federal-question jurisdiction. However, some intellectual property lawsuits – for example, litigation involving a trademark that is registered only with the state of Indiana and used solely within Indiana’s boundaries – may occur in Indiana state court.

September 5, 2014

Indiana Trademark Litigation: Chanel Sues Chanel’s Salon for Trademark Infringement and Dilution

By Overhauser Law Offices, LLC

Hammond, Indiana – An Indiana trademark lawyer for Chanel, Inc. of New York, New York, in conjunction with New York co-counsel, sued in the Northern District of Indiana alleging that Chanel’s Salon, LLC and Chanel Jones, both of Merrillville, Indiana, committed trademark infringement and trademark dilution of the trademark CHANEL, Registration Nos. 302,690; 510,992; 1,263,845; 1,348,842; 1,464,711; 1,559,404; 1,660,866; 3,134,695; and 4,105,557, which were issued by the U.S. Trademark Office.

Chanel is a fashion and beauty company. For over 85 years, Chanel has used CHANEL as a trade name, house mark and trademark to identify its goods and business. In addition to offering cosmetics, fragrances, and skin care products, Chanel’s goods include hair accessories, such as barrettes, hair clips, and men’s shampoo.

Chanel states that it has spent hundreds of millions of dollars to advertise and promote its goods. It indicates that last year in the United States it spent over $50 million dollars on advertising, all of which prominently featured the CHANEL mark. Consequently, it asserts, the CHANEL name and trademark is one of the most famous marks in the world and has become synonymous with Chanel.

At issue in this Indiana trademark infringement and trademark dilution lawsuit are the actions of Defendants Chanel’s Salon and its owner Chanel Jones. Defendants are accused of having begun to use the trade names CHANEL’S SALON and/or CHANEL’S COSMETOLOGY SALON in October 2012 in connection with their beauty salon without Chanel’s authorization and, in doing so, impinging on Chanel’s intellectual property rights.

Chanel contends in this lawsuit that Defendants are infringing the CHANEL trademark by, inter alia, offering goods and services that are related to those offered under the CHANEL mark, including cosmetics, beauty consultation services and hair accessories. Chanel also asserts that Defendants’ use of CHANEL dilutes the trademark, which Chanel claims is famous.

In July 2013, Chanel sent Defendants a cease-and-desist letter requesting that Defendants change the name of Chanel’s Salon to a name that did not include the word CHANEL. Chanel states that Defendants did not respond to this letter and that further attempts to resolve the dispute were unsuccessful.

In the complaint, filed by an Indiana trademark attorney, the following is alleged:

• Count I: Federal Trademark Dilution (15 U.S.C. § 1125(c))
• Count II: Federal Trademark Infringement (15 U.S.C. § 1114(1))
• Count III: Federal Unfair Competition (15 U.S.C. § 1125(a))
• Count IV: Trademark Infringement and Unfair Competition Under Indiana Common Law

Chanel asks the court for injunctive relief and “such other and further relief as the Court may deem just and proper.”

Practice Tip: This is an unusual trademark case in at least two respects. First, while trademark infringement lawsuits are relatively common, colorable assertions of trademark dilution are less so. This is due in large part to the requirement that the trademark that is allegedly diluted be “famous.” This trademark lawsuit is also unusual in that, while the complaint asks the court in passing for “such other and further relief as the Court may deem just and proper,” it does not explicitly seek damages for the alleged trademark infringement and dilution. Instead, the sole purpose of the complaint seems to be to obtain injunctive relief.