Unfair Competition

May 20, 2015

Indiana Trademark Litigation: Integrity Trade Services Sues Ex-Employees Alleging Conspiracy and Conversion

South Bend, Indiana – Trademark attorneys for Integrity Trade Services, Inc. (“ITS”) of Frankfort, Illinois filed an intellectual property complaint in the Northern District of Indiana naming as Defendants Integrity Employment Partners, LLC, Integrity Trade Services, LLC, Janice Hernandez, James Hernandez, Michaela Williams, and Jason Reis, all of Indiana, and alleging multiple claims, including trademark infringement, conversion of ITS trade secrets, breach of contract, and tortious interference with business relationships.

ITS is a national staffing services company, doing businesses in multiple states, including Indiana, Florida, Illinois, and Texas. ITS is wholly owned by John E. Cumbee, III. In 2008, ITS acquired all of the operational assets of the Knox, Indiana branch of a staffing company owned by CES America, Inc. ITS also hired most, if not all, of the CES employees then working at the Knox facility, including defendants James and Janice Hernandez.

ITS contends that, since purchasing the Knox facility, it has invested well over $1 million to build the Knox business and the ITS brand as it is related to that facility. It asserts in this federal lawsuit, inter alia, that Defendants conspired to convert ITS’ customers, employees and trade secrets for their own use.

The accused in this case are husband and wife Janice Hernandez and James Hernandez; several family members of Janice Hernandez, including Michaela Williams, and Jason Reis; and two entities apparently owned by the Hernandezes, Integrity Employment Partners, LLC, Integrity Trade Services, LLC.

Defendant James Hernandez (“James”) worked for ITS from the time that ITS acquired the business until April 30, 2015 when he was fired. ITS asserts that James engaged in a conspiracy to solicit away and convert (a) ITS’ office employees at the Knox location, (b) at least the active ITS field employees servicing the Knox location, and (c) customers comprising the Knox-area business. He is accused of attempting to transfer them to Integrity Employment Partners, LLC, an Indiana limited liability company formed to process the Knox business converted from ITS for his benefit and the benefit of the other co-conspirators.

Defendant Janice Hernandez (“Janice”), also became employed by ITS when ITS was acquired from its prior owner. She has been accused of not only being an integral part of the alleged conspiracy but also of being “likely its “‘mastermind.'” Defendant Michaela Williams is Janice’s daughter. Defendant Jason Reis is the ex-son-in-law of James and Janice, having been married to another of Janice’s daughters.

ITS states that, in the last two weeks in April 2015, it discovered various anomalies in the Knox business. These anomalies alerted ITS to the activities that triggered this federal lawsuit. They included a drop off in weekly gross sales, the formation of Integrity Employment Partners, LLC (“IEP”), and checks issued by existing ITS customers made payable to IEP (and not ITS).

Defendants are accused of orchestrating a scheme to confuse ITS’ customers and employees regarding with which staffing businesses using the name “Integrity” – Plaintiff’s firm or Defendants’ firms – those customers and employees were transacting business. In doing so, ITS contends, Defendants attempted with some success to convert ITS’ business assets and relationships for Defendants’ benefit. Allegations of criminal conduct by Defendants were also made. In a 48-page complaint, filed by trademark lawyers for Plaintiff, those claims and others are made:

• Count I: Federal Trademark Infringement
• Count II: Federal Unfair Competition
• Count III: Illinois Deceptive Trade Practices Act
• Count IV: Breach of Fiduciary Duty
• Count V: Breach of Agreement
• Count VI: Tortious Interference with Contract
• Count VII: Tortious Interference with Business Relationships
• Count VIII: Conversion
• Count IX: Computer Fraud and Abuse Act
• Count X: Uniform Trade Secrets Act
• Count XI: Civil Conspiracy
• Count XII: Unjust Enrichment

• Count XIII: Breach of Contract

Plaintiff asks the court for, inter alia, injunctive relief, compensatory damages, punitive damages, attorneys’ fees, interest and costs.

April 9, 2015

Indiana Trademark Lawsuit: Bekins Sues Licensee of “Bekins” Trademark

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark lawyer for Wheaton Van Lines, Inc. and Bekins Van Lines, Inc., both of Indianapolis, Indiana (collectively, “Bekins”), filed a trademark-infringement lawsuit in the Southern District of Indiana alleging that Faulk-Collier Moving & Storage, LLC and David Vaughn, both of Louisiana, infringed the trademark BEKINS®, which has been registered by the U.S. Trademark Office as Trademark Registration No. 2427605.

Faulk-Collier, a moving-and-storage company in business since 1932, has been sued by Bekins for both trademark infringement and breach of contract. Bekins, which was founded in 1891, contends that it has made extensive use of the Bekins trademark, which it asserts has become both incontestable and famous. Bekins’ uses, it states, include inclusion in all of Bekins’ advertising materials, as well as being emblazoned on the side of all of the trucks, vans and trailers operating under Bekins’ authority for over ten years. Bekins has also sued Vaughn for more than $73,000, alleging that he personally guaranteed payment to Bekins.

In its Indiana trademark complaint, Bekins states that, in February 2014, it entered into an agreement with Faulk-Collier under which Faulk-Collier would serve as an interstate household agent for Bekins. Bekins further claims that, due to uncured breaches of that agreement by Faulk-Collier, Bekins terminated the arrangement in October 2014. After terminating the agreement, Bekins advised Defendants that they must cease all use of logos and trademarks owned by Bekins, including the removal of the Bekins trademark from all advertising, trucks, equipment, websites, and similar.

Nonetheless, contends Bekins, Faulk-Collier has continued to advertise moving services under the name “Bekins.” The accused uses include advertising on social media as well as operating numerous pieces of equipment in interstate commerce which bear one or more trademarks owned by Bekins. Bekins states that these uses by Faulk-Collier are unauthorized.

This federal lawsuit followed. In its complaint, filed by an Indiana trademark attorney, Bekins asserts the following:

• Count I – Breach of Contract
• Count II – Account Stated
• Count III – Federal Trademark Infringement

• Count IV – Federal and State Unfair Competition/Trademark Dilution

Bekins asks the court to enter preliminary and permanent injunctions; award Bekins monetary damages, statutory and otherwise, and punitive damages; and order Defendants to pay Bekins’ attorneys’ fees and costs.

February 18, 2015

Indiana Trademark Litigation: Agdia Sues AC Diagnostics Alleging Deceptive Meta-tags and Other Trademark Harm

By Overhauser Law Offices, LLC

South Bend, Indiana – Indiana trademark attorneys for Agdia Inc. of Elkhart, Indiana sued in the Northern District of Indiana alleging that Jun Q. Xia and AC Diagnostics, Inc. of Fayetteville, Arkansas infringed the trademark AGDIA®, which has been registered as United States Trademark Registration No. 1747994.

For over 30 years, Plaintiff Agdia has been in the business of supplying testing, test kits, and associated products and services related to the presence of pathogens or quality factors in agricultural products. Agdia has sued a former employee, Jun Q. Xia, alleging violations of federal and Indiana intellectual property law. AC Diagnostics, a competing enterprise formed by Xia, has also been named as a defendant in this lawsuit.

Agdia contends that Defendants have been unlawfully using its trademarked name. Among the claims is that Xia has hidden the Agdia trademark followed by the phrase “plant diagnostics,” in the meta tags of nearly every product page associated with the AC Diagnostics website. Agdia asserts that, as an example, the “Company Profiles” section of the AC Diagnostics website, available at http://www.acdiainc.com/Comprofil.htm, appears upon first glance to provide nothing more than company information. However, if the page is printed, Agdia states that it reveals more text at the bottom of the document, hidden as white text on a white background.

Agdia also asserts that, through the AC Diagnostics website, Xia is deceptively and unfairly trading on Agdia’s name by hiding that name, followed by the phrase “plant diagnostics,” in the meta tags of nearly every product page associated with that site. Agdia contends that no fewer than 200 separate URLs from the Defendants’ website use the Agdia name deceptively.

Agdia finally cites the name of AC Diagnostic’s webpage as deceptive, claiming that “acdiainc,” which is used within www.acdiainc.com, AC Diagnostic’s website, is just one letter off from Agdia’s legal name, “Agdia Inc.” Defendants are accused of using this web address with the bad faith intent to profit from the Agdia trademark.

In a five-count complaint, filed by Indiana trademark lawyers for Agdia, Defendants are accused of willful, intentional, and unauthorized use of the Agdia trademark that is unlawful under federal law as well as Indiana state law.

Plaintiff Agdia asks the court to enjoin Defendants from using the Agdia mark; to cancel the domain www.acdiainc.com or transfer it to Agdia; for damages, including treble damages; and for attorneys’ fees and costs.

February 13, 2015

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

By Overhauser Law Offices, LLC

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.