Articles Posted in Unfair Competition

June 18, 2014

Indiana Trademark Litigation: Liquid Palace Sues E Liquid Palace for Trademark Infringement

New Albany, Indiana – Trademark attorneys for Liquid Palace, LLC and Robert W. Kaiser, Jr., both of New Albany, Indiana, filed an intellectual property lawsuit alleging that E Liquid Palace, LLC and Austin Simon, both of Jeffersonville, Indiana, and Russell Simon of Louisville, Kentucky infringed registered trademarks “Genie” and “Liquid Genie“, serial numbers 86107913 and 86107799 by using the registered trademark “Electric Genie“, serial number 86194345. This Indiana trademark litigation, initially filed in Indiana state court, was removed to the Southern District of Indiana.

Liquid Palace manufactures, distributes and sells electronic cigarettes, also known as e-cigarettes, and related products through brick-and-mortar and e-commerce channels. Liquid Palace indicates that it began conducting business on or around March 21, 2013. It claims that, in the next few days, it registered the domain name “liquidpalace.com” and began using the trademark “Liquid Genie” along with an accompanying image of a genie. Liquid Palace submitted applications for trademarks to the U.S. Patent and Trademark Office (“USPTO”) for the “Genie” and “Liquid Genie” word marks, with an accompanying image, in November 2013.

E Liquid Palace, which does business as “Electric Genie,” engages in a similar business approximately 6 miles from Liquid Palace’s retail store. Defendant Austin Simon is asserted to be the sole member of E Liquid Palace. On April 4, 2013, two weeks after Plaintiffs’ claimed business-opening date, Defendants submitted articles of organization to the Indiana Secretary of State to form E Liquid Palace, LLC, while Defendant Russell Simon is listed as the owner of the “Electric Genie” trademark.

Liquid Palace contends that it owns rights to the marks “Genie”, “Liquid Genie” and “Electronic Genie”. It claims that Defendants are using those marks and/or marks that are substantially similar. Liquid Palace asserts that these actions violate its trademark rights.

In its complaint, filed by trademark attorneys for Plaintiffs, the following counts are alleged:

• Count I: Violations of 15 U.S.C. § 1051 et seq.
• Count II: Common Law Trademark Infringement
• Count III: Intentional Interference with Prospective Business Advantage and/or Intentional Interference with Business Relationships
• Count IV: Unfair Competition
• Count V: Injunctive Relief

Plaintiffs seek damages, including compensatory and punitive damages; statutory and/or liquidated damages under 15 U.S.C. § 1051; interest; injunctive relief and costs and attorneys’ fees.

Practice Tip:

Plaintiffs may have a difficult case to prove. They claim that at “the time the Defendants’ submitted articles of organization for [E Liquid Palace], the Defendants knew or should have known that the Plaintiff’s [sic] claimed a right to use ‘Liquid Palace’ in its business operations and that the intentional registration of ‘E Liquid Palace, LLC’ would confuse and/or mislead the consuming public.” However, Plaintiffs’ entity, Liquid Palace, LLC, is shown on the website of the Indiana Secretary of State to have been created in Kentucky on April 9, 2013, after the creation of E Liquid Palace, LLC.

Moreover, given that E Liquid Palace, LLC is the Defendants’ legal name, not the name under which they present themselves to the public, Liquid Palace is going to have a hard time showing confusion in the marketplace resulting from any similarities between the legal names of the entities.

It will also be interesting to see how the court handles any competing rights conferred by the registration of the marks at issue, given that both Plaintiff(s) and Defendant(s) have rights in federally registered marks.

Finally, the core infringement standard for trademark law is the “likelihood of confusion” test. This test imposes liability if a substantial number of consumers are likely to be confused by a defendant’s use of a trademark in which the plaintiff in the litigation has intellectual property rights. Given the exceedingly short period of time for which Plaintiffs here claim exclusive use of any mark in question, proving that consumers have come to identify Plaintiffs’ marks exclusively with their goods will be challenging.

June 4, 2014

Indiana Trademark Litigation: Harmony School Sues School Reform Initiative

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Indiana trademark attorneys for Harmony School Corporation (“Harmony”) of Bloomington, Indiana, filed a trademark infringement lawsuit in the Southern District of Indiana alleging, inter alia, that School Reform Initiative, Inc. (“SRI”) of Lakewood, Colorado infringed its service mark “Critical Friends Group,” Trademark Registration No. 2,925,985, which has been registered with the United States Trademark Office.

Established in 1974, Harmony is an Indiana non-profit corporation that seeks “to prepare young people to live in and contribute to a heterogeneous democratic country.” Among its programs is its National School Reform Faculty (“NSRF”), a program designed to develop skills in teachers that will then enable children to learn more effectively. Harmony claims ownership of a service mark in “Critical Friends Group,” as used in connection with providing training in the field of improving teaching skills. “Critical Friends Group” is also referred to as CFG. In addition to the rights conferred by federal registration, Harmony asserts common law trademark rights in the marks through actual use in interstate commerce beginning no later than 2000 and continuing since.

Defendant SRI is also a non-profit organization. It is dedicated to creating transformational learning communities committed to educational equity and excellence. Harmony asserts that SRI is a direct competitor in the business of professional development within the field of education. SRI is accused of having infringed marks belonging to Harmony.

Gene Thompson-Grove is asserted to have worked for Harmony from 2000 to 2009. During that time, Harmony claims that Thompson-Grove was actively involved in Harmony’s use and federal registration of the Critical Friends Group mark. Harmony also contends that, immediately after discontinuing her work for Harmony, Thompson-Grove began working with SRI. Harmony indicates that, around this time, the alleged infringement of the Critical Friends Group and CFG marks began.

In March 2014, Harmony demanded that SRI cease and desist using the Critical Friends Group mark. It claims that infringement continued.

In this Indiana trademark lawsuit, Harmony accuses SRI of having willful intent to deceive the public as to the ownership of the mark, the source of the services, or both. It states that it has incurred substantial damages and irreparable injury as a result of SRI’s alleged infringement. In its complaint, filed by Indiana trademark lawyers, Harmony asserts the following causes of action:

• Federal Trademark Infringement in Violation of § 32 of the Lanham Act
• Unfair Competition in Violation of § 43(a) of the Lanham Act
• Common Law Trademark Infringement
• Common Law Unfair Competition

Harmony asks the court for injunctive relief, including the destruction of materials determined to be infringing and removal of infringing marks from digital media; damages, including treble damages to reflect the deliberateness and willfulness of SRI’s actions; costs and attorneys’ fees.

Practice Tip: There used to be an unspoken rule that organizations operated with the primary objective of public service ought to go out of their way to “get along” with similar organizations. That notion seems to be dissipating. Instead, trademark infringement litigation and other legal disputes between non-profit organizations, once relatively rare, have increased in recent years. Among the organizations issuing cease-and-desist letters and/or initiating intellectual property litigation are some of the largest non-profit organizations in the United States: Susan G. Komen, the Lance Armstrong Foundation and Wounded Warrior Project.

May 23, 2014

Indiana Copyright Law: Court Orders Severance of Misjoined Copyright Infringement Complaint

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Magistrate Judge Denise K. LaRue, writing for the Southern District of Indiana, directed the Clerk of the Court to sever all but one defendant from the copyright infringement complaint of Richard Bell, an Indiana copyright attorney. Bell was also ordered by the court to pay separate filing fees for each new cause of action.

Bell is a copyright lawyer and a professional photographer. He contends that he is the owner of two copyrighted photographs of Indianapolis taken in March 2000. The photos have been registered with the U.S. Copyright Office.

In April, Bell filed another copyright infringement lawsuit in the Southern District of Indiana alleging copyright infringement of his photos by numerous Defendants. The Defendants were: Diversified Vehicle Services of Marion County, Indiana; Cameron Taylor and Taylor Computer Solutions of Indianapolis, Indiana; Rhonda Williams of Indianapolis, Indiana; Forensic Solutions, Inc. of Waterford, New York; Heath Garrett of Nashville, Tennessee; CREstacom, Inc. of Fishers, Indiana; American Traveler Service Corp LLC, location unknown; Mike Cowper of Martinsville, Indiana; Kimberly Hinds of Indianapolis, Indiana; Rensselaer Polytechnic Institute of Troy, New York; EasyStreet Realty of Indianapolis, Indiana; Drohan Management of Reston, Virginia; Metal Markets of Indianapolis, Indiana; Mattison Corporation of Indianapolis, Indiana; Industrial Heating Equipment Association of Taylor Mill, Kentucky; Junk Dawgs of Indianapolis, Indiana and WRTV of Indianapolis, Indiana. Bell is both the copyright lawyer and Plaintiff in this lawsuit.

In this earlier complaint, Bell alleged that each Defendant, independent of each other Defendant, “created their individual website to promote and market their business” and placed the Plaintiff’s copyrighted photo on each of the Defendants’ respective websites. Claiming copyright infringement, unfair competition and theft, Bell asked the court for, inter alia, the maximum allowable statutory damages for each copyright violation.

The court ordered Bell to show cause why all defendants but one should not be severed for misjoinder. Bell argued that the rules regarding joinder should be given a broad scope so that multiple lawsuits could be avoided.

The court was not persuaded. In addressing Bell’s contention that joinder of the unrelated Defendants was proper, it was Bell’s own language, and the factual underpinnings of that language, to which the court pointed in denying joinder. The court noted that Bell’s “complaint alleges that ‘[e]ach defendant, independently of each other, created or had created a website to promote and advertise the business of each Defendant,’ and that Plaintiff discovered that ‘the website [of] each of these Defendants contained [one of the photographs].'” The court also noted that “[e]xcept for defendants Cameron Taylor and Taylor Computer Solutions, the Complaint contains no allegation that any defendant acted in concert with another defendant in appropriating Plaintiff’s photographs and it does not allege any transaction, occurrence, or series of transactions or occurrences in which two or more defendants participated.” (Citations omitted.)

The court then reviewed the requirements of Federal Rule of Civil Procedure 20(a)(2)(A) that a Plaintiff’s claims against defendants joined in the same action must respect or arise out of the same occurrence or the same series of occurrences. While Bell had alleged copyright infringement of the same copyrighted material against all Defendants, the court held this to be insufficient. Similarly, while the same types of questions of fact would arise against each Defendant – “e.g., how did the defendant find Plaintiff’s photograph, what did the defendant know about the photograph’s copyright status, did the defendant make commercial use of the photograph, and did the defendant pay for the use of the photograph” – those similar questions of fact provided no logical relationship among the Defendants that would support joinder.

Instead, the court found that each Defendant was accused of independently committing separate and distinct acts of copyright infringement that happened to involve the same photograph.

The court then directed the Clerk of the Court to sever all defendants other than Diversified Vehicle Services from the complaint as it had been filed and to open separate causes for each of the severed defendants, with the exception of defendants Cameron Taylor and Taylor Computer Solutions, which the court directed to be joined in one cause. WRTV was dropped, as Bell indicated that it had been included as a defendant inadvertently.

The court also ordered Bell to pay the $400 filing fee for each of the 15 severed causes of action no later than June 2, 2014.

Practice Tip #1: There has been a growing trend of attempting to monetize copyright infringement. In this particular case, the docket for the initial complaint showed Bell’s demand to be $5,000,000 for the alleged infringing activities. In ruling that “unrelated claims against unrelated defendants belong in different suits, in part to ensure that plaintiffs pay the required filing fees” and subsequently ordering the Plaintiff to pay a separate filing fee for each of the Defendants, Magistrate Judge LaRue has employed one approach that may be useful in combatting such copyright trolling.

Practice Tip #2: Under 17 U.S.C. § 504(c)(1), a copyright owner may elect actual or statutory damages. Statutory damages range from a sum of not less than $750 to not more than $30,000 per infringed work.

Practice Tip #3: The claims of this case appear calculated to trigger the “advertising injury” clause of many general business liability insurance policies. If a defendant has applicable business insurance, this may allow Bell to negotiate quicker settlements. Overhauser Law Offices, publisher of this Site, counsels clients on insurance coverage for insurance claims.

Practice Tip #4: These latest causes of actions represent the most recent of three ongoing cases filed by Bell asserting infringement of his photos. We have blogged about his copyright infringement litigation before. See here. The Indiana Lawyer also wrote recently about Bell’s copyright litigation. That article includes an interview with Paul B. Overhauser, Managing Partner of Overhauser Law Offices.

May 16, 2014

Indiana Trademark Law: Seventh Circuit Holds Indiana Court Lacked Personal Jurisdiction Over RAP4

By Overhauser Law Offices, LLC

Chicago, Illinois – Indiana trademark attorney Paul B. Overhauser, on behalf of K.T. Tran and Real Action Paintball, Inc., a California corporation (collectively “RAP4”), argued before the United States Court of Appeals for the Seventh Circuit that the trademark infringement suit brought in the Northern District of Indiana by Advanced Tactical Ordnance Systems, LLC, an Indiana corporation (“ATO”), was not properly before the Indiana court, as it lacked personal jurisdiction over RAP4. The Seventh Circuit agreed and instructed the district court to dismiss the complaint.

RAP4 and ATO are competitors in the “irritant projectile” market. Unlike the more familiar game of paintball, in which a paint-filled sphere is shot at opponents as part of a war game, these irritant projectiles are used by the police and military to intervene in hostile situations where lethal force is unnecessary. While paintballs are filled with paint, irritant projectiles use capsaicin, the active ingredient in pepper spray. Irritant projectiles, thus, allow law enforcement personnel to use less-than-lethal force from a distance.

Among the many issues in this lawsuit, including assertions by ATO of trade-dress infringement, unfair competition and misappropriation of trade secrets, were allegations that RAP4 had infringed the trademarked term “PEPPERBALL,” to which ATO claimed ownership. That trademark, Registration No. 2716025, was issued in 1999 by the U.S. Trademark Office to a non-party to this suit.

The trouble began when another company, non-party PepperBall Technologies, Inc. (“PTI”), began to have financial problems. PTI had also been a competitor in the irritant-projectile market. To address its difficulties, PTI held a foreclosure sale, the validity of which was hotly contested. ATO claimed that it had purchased PTI’s trademarks – including “PEPPERBALL” – and other property during this foreclosure sale.

During the time that PTI ceased its operations and was attempting to convey its assets, RAP4 was contacted by an executive of non-party APON, a company which had manufactured some of PTI’s irritant projectiles. He asked if RAP4 was interested in acquiring irritant projectiles from APON.

RAP4 agreed to purchase irritant projectiles from APON. After having negotiated this access to APON’s machinery, recipes, and materials – which had had at one time been used by PepperBall Technologies Inc. – RAP4 announced this fact to the people on its e-mail list. Specifically, it stated in its e-mail that it had acquired access to, “machinery, recipes, and materials once used by PepperBall Technologies Inc.” It was this language to which ATO, which claimed to be the successor in interest to PTI, particularly objected.

ATO sent a cease-and-desist letter to RAP4. In response, RAP4 added a disclaimer that it was not affiliated with PTI. ATO then sued in the Northern District of Indiana. It claimed several different theories of recovery, including intentional violations of the Lanham Act, 15 U.S.C. § 1111 et seq., common law trademark infringement and unfair competition, trade dress infringement, and misappropriation of trade secrets.

Of particular interest to the Seventh Circuit in addressing this Indiana trademark litigation was the issue of personal jurisdiction over RAP4 in the Northern District of Indiana. RAP4 contested that such jurisdiction over it was lacking. ATO countered that RAP4 had sufficient contacts, including a “blast e-mail” announcement from RAP4 that would suffice for jurisdiction in Indiana, stating that “many [RAP4 customers] are located here in the state of Illinois. I mean, state of Indiana.” It also contended that RAP4 regularly e-mailed customers or potential customers from all over the United States, including Indiana, and that RAP4 had made at least one sale to an Indiana resident.

ATO conceded that it lacked general jurisdiction. Thus, the Seventh Circuit turned to an analysis of specific jurisdiction. “For a State to exercise jurisdiction consistent with due process, the defendant’s suit-related conduct must create a substantial connection with the forum State,” noted the appellate court. Moreover, the relation between the defendant and the forum “must arise out of contacts that the ‘defendant himself’ creates with the forum.”

In determining that personal jurisdiction existed, the Indiana district court had relied on several facts: “first, [RAP4] fulfilled several orders of the allegedly infringing projectiles for purchasers in Indiana; second, it knew that Advanced Tactical was an Indiana company and could foresee that the misleading emails and sales would harm Advanced Tactical in Indiana; third, it sent at least two misleading email blasts to a list that included Indiana residents; fourth, it had an interactive website available to residents of Indiana; and finally, it put customers on its email list when they made a purchase, thereby giving the company some economic advantage.”

The Seventh Circuit held that these facts were insufficient to support specific jurisdiction. The only Indiana sales that would have been relevant were those that related to RAP4’s allegedly unlawful activity. ATO failed to meet its burden of proof of any such Indiana sales. Similarly, the court held that any effects that were purportedly felt in Indiana by ATO did not support specific jurisdiction. Instead, the relation between RAP4 and the Indiana forum “must arise out of contacts that the defendant himself creates with the forum State.”

Further, neither RAP4’s e-mail communications nor its website were held to create specific jurisdiction. If such contacts were sufficient, the court held, there would be no limiting principle on personal jurisdiction and a plaintiff could sue almost any defendant with an Internet presence or which utilized e-mail in almost any forum in the United States or the world. To find jurisdiction on such vanishingly small contacts would offend the long-held and traditional “notions of fair play and substantial justice.”

The Seventh Circuit remanded the case to the Indiana district court with instructions to vacate the judgment and dismiss the complaint for lack of personal jurisdiction.

Practice Tip #1: RAP4’s references to “Pepperball Technologies, Inc.” could not as a matter of law constitute trademark infringement, counterfeiting or false advertising. Instead, RAP4’s use of its competitor’s name is a merely a wholly permissible nominative use of that mark. As a matter of law, a “nominative use of a mark – where the only word reasonably available to describe a particular thing is pressed into service – lies outside the strictures of trademark law.”

Practice Tip #2: Personal jurisdiction is an essential element of federal court jurisdiction, without which the court is powerless to adjudicate the matter before it. However, a defendant’s argument that personal jurisdiction does not exist can easily be waived inadvertently by the incautious litigant. In this case, an evidentiary hearing regarding personal jurisdiction was conducted in December 2012. It was only by careful preservation of this argument by trademark counsel for RAP4 while litigating in the district court that the appellate court was able to hear RAP4’s claim and reverse the district court.

Practice Tip #3: This case was successfully argued before the Seventh Circuit by Paul B. Overhauser, Managing Partner of Overhauser Law Offices.

May 7, 2014

U.S. Supreme Court Holds Commercial Injury and Proximate Cause Necessary for False Advertising Claim Under Lanham Act

By Overhauser Law Offices, LLC

Washington, D.C. – The United States Supreme Court unanimously affirmed a Sixth Circuit ruling that intellectual property lawyers for defendant Static Control Components, Inc. of Sanford, North Carolina had properly pled a counterclaim for false advertising under the Lanham Act against Lexmark International, Inc. of Lexington, Kentucky. The Court held that a Lanham Act claim under §1125(a) may be asserted by plaintiffs who are within the zone of interests protected by the Lanham Act and whose injury was proximately caused by a violation of that statute.

Lexmark sells both printers and toner cartridges for those printers. In addition to selling new Lexmark-branded toner cartridges, it refurbishes used Lexmark cartridges. Those refurbished products are sold in competition with the new cartridges. To hinder others from reusing its cartridges, Lexmark includes a microchip that disables an empty cartridge until Lexmark replaces the chip. Respondent Static Control, a maker and seller of components for the remanufacture of Lexmark cartridges, developed a microchip that enabled empty Lexmark cartridges to be refilled and used again.

Lexmark sued for both copyright infringement and patent infringement. It also informed Static Control’s customers that Static Control had infringed its patents. Static Control counterclaimed, alleging that Lexmark had engaged in false or misleading advertising in violation of §43(a) of the Lanham Act, 15 U. S. C. §1125(a). Static Control alleged that Lexmark’s misrepresentations had damaged Static Control’s business reputation and impaired its sales.

The Supreme Court was asked to decide what had been styled by the District Court as a “prudential standing issue”: whether Static Control fell within the class of potential Lanham Act plaintiffs. Arguments that Lanham Act plaintiffs may assert standing under the Second Circuit‘s test – requiring a “reasonable interest” and a “reasonable basis” for the plaintiff’s claim of harm – were rejected by the Court.

Instead, in determining the appropriate reach of the Lanham Act, the Court relied on the traditional principles of statutory interpretation. It acknowledged the longstanding principle that the question for courts in determining who was a proper plaintiff was not a matter of judicial “prudence” but rather one of determining the intent of Congress when it authorized certain plaintiffs to sue under §1125(a): “We do not ask whether in our judgment Congress should have authorized Static Control’s suit, but whether Congress in fact did so.”

The Court thus held that, in a statutory cause of action, protection is extended only to those plaintiffs whose interests fall within the zone of interests protected by the law invoked. Because the Lanham Act lists among its purposes the protection of “persons engaged in [interstate commerce] against unfair competition,” and because “unfair competition” is interpreted to be concerned with injuries to business reputation and present and future sales, a lawsuit for false advertising must allege injury to a commercial interest in reputation or sales.

The Court then considered whether the harm alleged in this case was sufficiently similar to the conduct that the Lanham Act prohibits. It held that the harm is required to have been proximately caused by violations of the statute. In the case of a false advertising claim under the Lanham Act, a commercial injury caused by deceiving consumers was held to be a sufficient link between the wrongful act (the false advertising) and the injury (damage to a business’ reputation and/or sales).

The Court concluded that Static Control had adequately pleaded all elements of a Lanham Act cause of action for false advertising.

Practice Tip: The Court held that, in the case of a Lanham Act claim for false advertising, “a direct application of the zone-of-interests test and the proximate-cause requirement supplies the relevant limits on who may sue.” This test excludes as Lanham-Act plaintiffs some who have indisputably been damaged by false advertising. For example, the Lanham Act does not apply to non-business consumers who have been the victims of false advertising, as the Act restricts its class of plaintiffs to those who have suffered an injury to a “commercial interest” in reputation or sales.

April 16, 2014

Indiana Trademark Litigation: Roche Diagnostics Sues Polymer Technology Systems for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for Roche Diagnostics GmbH of Roche Picture.jpg Germany and Roche Diagnostics Operations, Inc. of Indianapolis, Indiana (collectively “Roche Diagnostics”) filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Polymer Technology Systems, Inc. d/b/a CHEK Diagnostics of Indianapolis, Indiana (“PTS”) infringed the trademarked “ACCU-CHEK“, Registration Nos. 1,277,867; 2,403,536; 2,628,696; 2,651,417; 2,681,644; 2,703,048; 2,732,629; 3,071,846; 3,076,905; 3,127,170; 3,194,287; 3,199,675; 3,202,402; 3,256,740; 3,411,797; 3,481,185; 3,595,149; 3,602,825; 3,609,052; 3,676,782; 3,703,434; 3,991,903; 3,749,950; 4,214,217; 4,230,563; and 4,226,844, which have been issued by the U.S. Trademark Office.

The Roche Diagnostics entities are global providers of medical products that help healthcare providers and consumers to prevent, diagnose, treat and manage diseases and other medical conditions. Included in the Roche Diagnostics offerings are products and services relating to diabetes care, including blood-glucose testing, monitoring and analysis. In connection with these products and services, Roche Diagnostics owns and uses numerous registrations for the federally registered trademark Accu-Chek and related marks.

Defendant PTS is a manufacturer of point-of-care diagnostic products headquartered in Indianapolis, Indiana. PTS designs, manufactures, and markets products for distribution in over 120 countries around the world and has sales offices in Europe, Latin America, and the Pacific Rim, and manufacturing facilities in Indianapolis, Indiana and Sunnyvale, California.

For several years prior to this trademark infringement complaint by Roche Diagnostics, PTS had sold a product under the name CardioChek, a medical device that measures blood cholesterol. Roche Diagnostics states that it did not assert its trademark rights to oppose the sale of CardioChek when it was marketed under the business name “Polymer Technology Systems.”

In March 2014, PTS announced that it was making two changes. According to a press release, it would be changing its business name to “CHEK Diagnostics” and would begin offering a line of diabetes-care products, the AICNow® family of products, which PTS had purchased from Bayer Diabetes Care. This new line of products would be offered under the CHEK Diagnostics business name. Roche Diagnostics contends the expansion into this new market, in conjunction with Defendants’ changed business name, violates its trademark rights and is likely to cause confusion, mistake and/or deception as to the source of PTS’s diabetes-care goods.

In its complaint, filed by an Indiana trademark lawyer, Roche Diagnostics asserts trademark infringement of its Accu-Chek trademarks under 15 U.S.C. § 1114(1) and § 1125 (a) of the Lanham Act, as well as trademark infringement and unfair competition in violation of the common law of the State of Indiana.

Roche Diagnostics requests that the court enjoin PTS from using “CHEK Diagnostics” as a company name or in a manner in any way related to the promotion or sale of diabetes-care products. It asks that the court direct PTS to immediately recall any materials bearing the “CHEK” business name and to order PTS to cancel or modify any pending trademark registrations that include the CHEK name.

Roche Diagnostics also seeks monetary damages as well as a declaration by the court that the use of “CHEK Diagnostics” as a company name, or in a manner in any way related to the sale or promotion of diabetes-care products, would constitute trademark infringement and unfair competition under both federal and Indiana-state law.

Practice Tip: The protection afforded to a registered trademark is not exhaustive in scope. Among the limits to its applicability are restrictions based on the type of business and product to which the trademark pertains. In this case, while Roche may have declined to object to PTS’s use of “CHEK” in conjunction with the sale of a non-diabetes-related product (here, a cholesterol-measuring product), that failure to object is unlikely to waive its right to assert infringement later if the word “CHEK” is used to market a product that is allegedly related to the product for which Roche Diagnostics owns a trademark (here, the purportedly similar line of diabetes products to be offered by PTS).

April 9, 2014

Indiana Copyright Litigation: Richard Bell Files Another Copyright Infringement Lawsuit

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Richard Bell, an Indiana copyright attorney, filed a lawsuit in the Southern District of Indiana alleging copyright infringement by numerous Defendants. The Defendants are: Diversified Vehicle Services of Marion County, Indiana; Cameron Taylor and Taylor Computer Solutions of Indianapolis, Indiana; Rhonda Williams of Indianapolis, Indiana; Forensic Solutions, Inc. of Waterford, New York; Heath Garrett of Nashville, Tennessee; CREstacom, Inc. of Fishers, Indiana; American Traveler Service Corp LLC, location unknown;
Mike Cowper of Martinsville, Indiana; Kimberly Hinds of Indianapolis, Indiana; Rensselaer Polytechnic Institute of Troy, New York; EasyStreet Realty of Indianapolis, Indiana; Drohan Management of Reston, Virginia; Metal Markets of Indianapolis, Indiana; Mattison Corporation of Indianapolis, Indiana; Industrial Heating Equipment Association of Taylor Mill, Kentucky; Junk Dawgs of Indianapolis, Indiana and WRTV of Indianapolis, Indiana. Mr. Bell is both the copyright lawyer and Plaintiff in this lawsuit.

Bell is a copyright attorney and a professional photographer. He contends that he is the owner of two copyrighted photographs of Indianapolis taken in March 2000. The photos have been registered with the U.S. Copyright Office.

Bell alleges that each Defendant, independent of each other Defendant, “created their individual website to promote and market their business” and placed the Plaintiff’s copyrighted photo on each of the Defendants’ respective websites. It is alleged that no Defendant had obtained the right to publish either photo but that each falsely represented otherwise to the world. Bell asserts that, as a result, Defendants have “realized and continue to realize profits and other benefits rightfully belonging to Plaintiff.” Each Defendant is accused of “willfully and deliberately” engaging in copyright infringement “with oppression, fraud, and malice.”

In his complaint, Bell lists the following claims:

• Count I: Copyright Infringement and Unfair Competition
• Count II: Theft

Bell asserts that he has already suffered, and is continuing to suffer, irreparable injury as a result of the alleged infringement of his copyrighted photos. Bell asks the court to declare that the Defendants’ conduct in using his photos violates his rights under Indiana law and the Copyright Act and asks the court to enjoin further infringing uses of his photos. Among other remedies, he seeks treble damages under Indiana statutory authority. He also asks for an accounting of all gains, profits and advantages derived by Defendants as a result of the alleged infringement and for the maximum allowable statutory and/or actual damages for each violation. Plaintiff also seeks reimbursement of costs and reasonable attorneys’ fees.

Practice Tip #1: The claims of this case appear calculated to trigger the “advertising injury” clause of many general business liability insurance policies. If a defendant has applicable business insurance, this may allow Mr. Bell to negotiate quicker settlements. Overhauser Law Offices, publisher of this Site, counsels clients on insurance coverage for insurance claims.

Practice Tip #2: This newest complaint initiates the latest of three ongoing cases filed by Mr. Bell asserting infringement of his photos. We have blogged about his copyright infringement litigation before. See here. The Indiana Lawyer also wrote today about Mr. Bell’s copyright infringement lawsuits. See here. The Indiana Business Journal ran a similar piece. Those articles include an interview with Paul Overhauser, Managing Partner of Overhauser Law Offices.

April 7, 2014

Indiana Trademark Litigation: Order Inn Asserts Trademark Infringement by “Order In”

By Overhauser Law Offices, LLC

Indianapolis, Indiana – A trademark attorney for Order Inn, Inc. of Las Vegas, Nevada filed a lawsuit in the Southern District of Indiana alleging that TJ Enterprises of Indiana, LLC d/b/a Order In (“Order In”) and Tom Ganser, both of Carmel, Indiana and other unknown “Doe” individuals infringed trademarks for “ORDER INN”, Registration Nos. 3,194,903 and 2,801,951, which have been issued by the U.S. Trademark Office.

Order Inn Hospitality Services, also known as Order Inn, was founded in 2001. The company’s initial core product, Order Inn Room Service, was created to provide room service to guests of limited-service hotels and timeshares. Order Inn states that it has developed partnerships with over 10,000 hotels and 700 restaurants nationwide and that it does business in Indiana.

Order Inn asserts ownership over several registered trademarks for “Order Inn,” among them a registration for “On-line ordering services in the field of restaurant take-out and delivery; on-line order fulfillment services for goods and services which hotel guests, residents or businesses may wish to purchase; promoting the goods and services of others by preparing and placing advertisements in menus placed in hotels, residences or businesses; providing information in the field of on-line restaurant ordering services.”

Order Inn claims that, as a result of its extensive, continuous and exclusive use of the “Order Inn” trademark in connection with its services, that trademark has come to be recognized by consumers as identifying Order Inn’s services as well as distinguishing them from services offered by others. It further claims that its trademark has developed substantial goodwill throughout the United States.

Order In, which also does business in Indiana, facilitates restaurant takeout and delivery through its website and via telephone. Order In is accused of trademark infringement of a registered trademark and false designation of origin. Ganser is alleged to be an owner and/or manager of Order In and to have personally participated in any trademark infringement. Both Order In and Ganser are accused of infringing upon the Order Inn trademark willfully, intentionally and deliberately and with full knowledge and willful disregard of Order Inn’s intellectual property rights.

In its complaint, filed by a trademark lawyer for Order Inn, the following counts are alleged:

• Federal Trademark Infringement Under 15 U.S.C. §1114
• False Designation of Origin and Unfair Competition under 15 U.S.C. §1125(a)

Order Inn asks for an injunction; damages, including treble damages; interest; costs and attorney’s fees

Practice Tip:

The protection afforded to a registered trademark is not exhaustive in scope. Among the limits to its applicability are restrictions based on the type of business to which the trademark pertains. From its website, it appears that Order Inn directs its efforts primarily towards guests at hotels, inns and similar temporary-lodging facilities. In contrast, Order In’s offerings are not similarly limited.

Trademarks protection is also unavailable for generic words that merely describe the goods or services for sale. For example, while “Apple” could be trademarked for use in conjunction with the sale of computers, a company would not be allowed to trademark the term to refer to the sale of apples. Similarly here, Order Inn may have difficulty in showing that it should be allowed to prohibit nationwide the use by anyone else of the generic term “order in.”

April 3, 2014

Indiana Trademark Litigation: Noble Roman’s Sues for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – An Indiana trademark attorney for Noble Roman’s, Inc. of Indianapolis, Indiana filed a lawsuit in the Southern District of Indiana alleging that Sahara Sam’s Indoor Water Park, LLC of Pennsauken, New Jersey (“Sahara”) infringed its trademarks. These trademarks are: Noble Roman’s®, Trademark Registration No. 987,069; THE BETTER PIZZA PEOPLE, Trademark Registration No. 1,920,428; and a design mark, Trademark Registration No. 1,682,308. Noble Roman’s also states that it has registered the Tuscano’s® mark. In addition to trademark infringement, Noble Roman’s asserts that Sahara engaged in false designation of origin and unlawful competition. Noble Roman’s has registered its marks with the U.S. Patent and Trademark Office.

Noble Roman’s is in the business of franchising the operation of Noble Roman’s pizza franchises that feature pizza, breadsticks, and other related food items to various franchisees throughout the world. Noble Roman’s has used its trademarks, among them “Noble Roman’s” and “The Better Pizza People,” registered in 1974 and 1995, respectively, in commerce in connection with marketing, identifying, and promoting its pizza franchises.

On or about June 27, 2005, Noble Roman’s and entered into two franchise agreements. Under the terms of the agreements, Sahara became a franchisee of Noble Roman’s, licensed and authorized to sell “Noble Roman’s” and “Tuscano’s” branded food products using Noble Roman’s intellectual property assets. Noble Roman’s asserts that these agreements included terms relating to the accurate reporting of sales and timely payment of franchise fees and other fees.

Sahara is accused of failing to pay royalties as required under the agreement and of misreporting sales, among other things. Noble Roman’s contends that Sahara purposely, intentionally and knowingly misreported its sales to Noble Roman’s for the purpose of avoiding payment of franchise fees and/or royalties which were due.

Noble Roman’s also contends that, after electing not to renew the franchise agreements, Sahara violated certain post-termination provisions of the Agreements, including those which require Sahara to: (1) cease to use any Noble Roman’s proprietary products; and (2) remove from public view and display any signage or other articles containing or depicting the trademarks.

Sahara is further accused of having violated the non-competition covenants by selling, after termination of the franchise agreements, various food items “which can be utilized without knowledge gained from Noble Roman’s.”

Noble Roman’s states that Sahara’s actions were without the authorization or consent of Noble Roman’s and that they constitute trademark infringement, in violation of 15 U.S.C. § 1114(1), as well as false designation of origin in violation of 15 U.S.C. § 1125.

The complaint, filed by an Indiana trademark lawyer, lists the following:

• Count One (Trademark Infringement)
• Count One [sic] (Breach of Contract)
• Count Two (Fraud)
• Count Three (Injunctive Relief)

Noble Roman’s asks for injunctive relief, as well as judgment in its favor in amount to be proven at trial, together with interest, punitive damages, costs of collection and reasonable attorney’s fees.

Practice Tip: Noble Roman’s has been particularly aggressive in enforcing franchise agreements. Since 2007, it has also filed the following suits in the Southern District of Indiana:

February 12, 2014 – NOBLE ROMAN’S, INC. v. B & MP and LESLIE PERDRIAU

September 5, 2012 – NOBLE ROMAN’S, INC. v. VILLAGE PANTRY

March 17, 2011 – NOBLE ROMAN’S, INC. v. FINDLAY TIFFIN OIL, LLC and AYMAN MAGDADDI

January 27, 2011 – NOBLE ROMAN’S INC. et al. v. BRABHAM OIL COMPANY and BRABHAM OIL COMPANY

October 9, 2009 – NOBLE ROMAN’S, INC. v. CITY CENTER FOOD CORP., INC.

August 31, 2009 – NOBLE ROMAN’S INC. v. W.J. INTERNATIONAL GROUP, LLC

July 17, 2009 – NOBLE ROMAN’S, INC. v. MARDAN, INC.

July 8, 2009 – NOBLE ROMAN’S, INC. v. RENTON WILLIAMS

April 21, 2009 – NOBLE ROMAN’S, INC. v. RICHARD A. GOMES and RRCM FOODS, INC.

April 2, 2009 – NOBLE ROMAN’S, INC. v. KANDAKAR ALAM

February 17, 2009 – NOBLE ROMAN’S, INC. v. EXPRESS LANE, INC.

February 10, 2009 – NOBLE ROMAN’S, INC. v. JJP&L, LLC

November 6, 2008 – NOBLE ROMAN’S, INC. v. PARDIS & ASSOCIATES, INC.

October 24, 2008 – NOBLE ROMAN’S, INC. v DELTA PROPERTY MANAGEMENT LLC, ZACK BROTHERS TRUCK STOP, LLC and STANDARD PETROLEUM CORP.

October 6, 2008 – NOBLE ROMAN’S INC. v. JAY’S GAS LLC

April 9, 2008 – NOBLE ROMAN’S, INC. v. SHAHRAM RAHIMIAN

March 17, 2008 – NOBLE ROMAN’S, INC. v. MEDALLION CONVENIENCE STORES, INC.

December 20, 2007 – NOBLE ROMAN’S, INC. v. MICHAEL J. BRUNSWICK, LAURIE BRUNSWICK, and M&L RESTAURANTS, LLC

September 17, 2007 – NOBLE ROMAN’S, INC. v. THE FRENCH BAGUETTE, LLC et al.

July 26, 2007 – NOBLE ROMAN’S, INC. v. MR. RON’S, L.C.

July 19, 2007 – NOBLE ROMAN’S INC. v. BAUER BUILT, INC. et al.

March 31, 2014

Indiana Trademark Litigation: Agler Sues Westheimer Over Use of Stratotone Mark

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Indiana trademark attorneys for Darryl Agler, doing business as The Stratotone Guitar Company of Fort Wayne, Indiana, filed a lawsuit in the Northern District of Indiana alleging that Westheimer Corporation of Northbrook, Illinois infringed the trademark “STRATOTONE” (the “Stratotone mark”), Trademark Registration No. 3,986,754 which has been issued by the U.S. Patent and Trademark Office (“USPTO”). Counterfeiting, unfair competition, and false designation of origin arising under the Lanham Act, 15 U.S.C. § 1051 et seq., and the statutes and common law of the State of Indiana have also been alleged.

Agler custom manufactures guitars and sells them across the United States. Each of Agler’s guitars is hand crafted from the wood of a customer’s choosing and features vintage hardware. Agler currently accepts orders for his guitars on his website at www.stratotoneguitar.com. He also displays and sells his guitars, which sell at retail for $1,250 or more, at vintage guitar shows across the nation. Angler asserts that, since at least as early as January of 2007, his marketing and promotions in connection with his guitars have included the Stratotone Mark.

Agler claims a right to exclude others’ use of the “Stratotone” mark in connection with guitars based on, inter alia, ownership of trademark rights to the mark “Stratotone” conferred by U.S. Reg. No. 3,986,754 (“‘754 Registration”). The ‘754 Registration was issued by the USPTO in 2011 as a result of a 2006 application for the Stratotone mark in association with “musical instruments, namely, guitars.”

According to the complaint, at the National Association of Music Merchants (“NAMM”) show in 2010, Westheimer offered and sold cheaper guitars using the Stratatone mark. Agler states that he spoke to Westheimer personnel twice at this show, notifying them that Westheimer’s products were infringing the Stratotone mark. Agler alleges that he was unable to sell any of his guitars at the NAMM show that year.

Agler indicates that, since the 2010 NAMM show, Westheimer has flooded the market with lower quality, cheaper guitars that bear the Stratotone mark. These guitars retail between $199.00 and $399.00. Agler contends that Westheimer’s “Stratotone” guitars have destroyed the market for Agler’s more expensive Stratotone guitars.

On April 25, 2013, Westheimer filed a petition to cancel the ‘754 Registration (the “Cancellation Petition”) with the Trademark Trial and Appeal Board. The Cancellation Petition is currently pending.

In the complaint, filed by Indiana intellectual property lawyers for Agler, the following counts are alleged:

• Count I: Federal Unfair Competition and False Designation of Origin
• Count II: Federal Trademark Infringement
• Count III: Federal Trademark Counterfeiting
• Count IV: Common Law Unfair Competition and Trademark Infringement
• Count V: Unjust Enrichment
• Count VI: Conversion
• Count VII: Deception
• Count VIII: Indiana Crime Victim’s Relief Act

Agler asks the court for injunctive relief; an accounting of damages; the surrender by Westheimer of items featuring the Stratotone mark; damages, including treble damages; and attorney’s fees.

Practice Tip: Indiana Code §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys’ fees. The Indiana Court of Appeals has discussed “theft” and “conversion” as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.