Unfair Competition

August 7, 2013

Royal Purple Sues Liqui Moly GmbH and Liqui Moly USA for Trademark Infringement

Indianapolis, Indiana — Royal Purple, LLC (“Royal Purple”) of Indianapolis, Indiana sued Liqui Moly GmbH of Ulm, Germany and Liqui Moly USA, Inc. of Hauppauge, New York (collectively, “Liqui Moly”) alleging infringement of two marks, Registration Nos. 2,691,774 and 2,953,996, which have been registered with the U.S. Trademark Office.

Royal Purple is again suing over the use of the color purple. We have blogged previously about the company here. Royal Purple claims it has sold lubricants for more than 20 years and has trademarked the color purple, at least in conjunction with various lubricating oils. It owns several federal trademark registrations for the color purple as applied to lubricating oils for automotive, industrial and household uses. It also owns multiple trademarks incorporating the word “purple” as applied to various goods. These trademarks are registered with the U.S. Trademark Office.

Purple was chosen for its association with royalty. (Historically, purple dye was so expensive to produce that it was used only by royalty.) Royal Purple’s purple-identified lubricant products are sold in over 20,000 retailers in the United States and Royal Purple claims a strong secondary meaning and substantial goodwill in its trademark as a result of this use.

Liqui Moly is accused of distributing, offering to sell and selling products that infringe upon Royal Purple’s trademarks and engaging in acts that constitute unfair competition and dilution. Royal Purple also alleges that Liqui Moly’s use is a purposeful attempt to trade upon Royal Purple’s trademarks. It asserts that Liqui Moly’s infringing use of Royal Purple’s intellectual property is likely to cause confusion, mistake or deception in customers or potential customers who encounter the Liqui Moly products. It also claims that Liqui Moly’s use will dilute the “distinctive quality” Royal Purple’s trademarks. Finally, it alleges that Liqui Moly’s use removes from Royal Purple its ability to control the quality of products and services provided under Royal Purple’s trademark, by placing them partially under the control of Liqui Moly, USA and Liqui Moly GmbH, two third parties unrelated to Royal Purple.

Trademark attorneys for Royal Purple filed suit alleging:

· Count One: Trademark Infringement Under Federal Law – 15 U.S.C. § 1114

· Count Two: Unfair Competition; False Designation of Origin Under Federal Law – 15 U.S.C. § 1125(a)

· Count Three: Dilution Under Federal Law 15 U.S.C. 1125(c)

· Count Four: Dilution in Violation of Indiana Code § 24-2-1-13.5

· Count Five: Common Law Trademark Infringement

· Count Six: Unfair Competition Under Indiana Common Law

· Count Seven: Unjust Enrichment

Royal Purple seeks preliminary and permanent injunctions, the destruction of all allegedly infringing inventory, treble damages, costs and attorneys’ fees.

Practice Tip #1: Color can serve as a useful identifier of the source of goods to consumers. The courts, however, have had to draw some narrow lines to balance the various interests. On the one hand, companies often invest significant amounts of money in promoting their brands and color is frequently a component of that promotion. On the other hand, there are a limited number of colors — and an even more limited number of colors that are pleasing and appropriate for any given type of product — and courts are wary of providing a monopoly on any given color to any one company. After all, if such a monopoly is first provided to one company, all too soon the entire spectrum may be spoken for.

Practice Tip #2: This complaint, which is very similar to an earlier action filed by Royal Purple, has added Liqui Moly USA, Inc. as a defendant and largely omitted the earlier-filed claims relating to a third trademark, registered under the U.S. Registration No. 3,819,988.

July 31, 2013

Riders Choice Sues Golden West Saddle Blankets for Declaratory Relief

By Overhauser Law Offices, LLC

Terre Haute, Indiana — Copyright lawyers for Riders Choice, LLC d/b/a Show and Tell Saddle Blankets (“Riders Choice”) and Loni Rhodes (“Rhodes”; collectively,”Plaintiffs”) of Center Point, Indiana sued for declaratory relief over allegations of copyright infringement made by Lori Heckaman (“Heckaman”) d/b/a Golden West Saddle Blankets (“Golden West” or “Defendant”) of Gainesville, Texas.

Riders Choice, sometimes operating as “Show and Tell Saddle Blankets,” makes and sells products related to horseback riding, including hand-woven saddle blankets with colorful geometric designs. Rhodes owns Riders Choice. Heckaman, doing business as Golden West Saddle Blankets, also makes and sells products related to horseback riding, including blankets with colorful geometric designs.

Intellectual property counsel for Heckaman sent two cease-and-desist letters to Rhodes and Riders Choice, the first on June 14, 2013 and the second on July 2, 2013. The first cease-and-desist letter asserted that the designs on Heckaman’s blankets were copyrighted and alleged against Rhodes and Riders Choice claims for copyright infringement based on Rhodes’s and/or Riders Choice’s manufacture, marketing and sale of its own blankets. The second cease-and-desist letter made similar allegations. Claims were also made against Rhodes and Riders Choice for business interference, unfair competition and misappropriation of trade secrets based on Rhodes’s and/or Riders Choice’s marketing of Riders Choice’s blankets and alleged copying of Golden West’s weaving and design methods.

Both cease-and-desist letters threatened Rhodes and/or Riders Choice with imminent litigation if Rhodes and/or Riders Choice did not comply with Defendant’s demands, the first by writing “we will have no choice but to advise our client to protect her interests by instituting a suit in a court of competent jurisdiction,” and the second by writing that although “Golden West prefers to resolve this matter without the necessity of court intervention, all necessary action will be taken if a voluntary agreement cannot be reached.” Both cease-and-desist letters demanded that Rhodes and/or Riders Choice stop marketing, selling and producing its blankets. Further, a July 3, 2013 e-mail threatened Rhodes and Riders Choice with imminent litigation by writing that if Rhodes and/or Riders Choice did not “refrain from promoting, marketing, producing, and selling saddle blankets,” Heckaman would have “no choice but to seek available remedies.”

In response, copyright lawyers for Riders Choice filed a complaint under the Declaratory Judgment Act. In the complaint, Plaintiffs assert that blankets with similar designs are widely produced and sold by third parties, that they did not believe that Heckaman had registered any of her designs with the U.S. copyright office, that the blankets Riders Choice sells are original works designed by Rhodes and that every blanket Riders Choice sells is unique in that no two blankets are sold with an identical pattern. They further asserted that Rhodes learned these methods from books and other publicly available materials unaffiliated with Heckaman and that Rhodes had never copied Defendant’s designs.

In the complaint, Plaintiffs ask for judgments of:

· Count I — No Copyright Infringement

· Count II — No Business Interference

· Count III — No Unfair Competition

· Count IV — No Misappropriation of Trade Secrets

Plaintiffs request that the court: (a) declare that Rhodes’s and Riders Choice’s blankets did not in the past and do not now infringe any of Defendant’s valid copyrights; (b) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in business interference against Defendant based on the sale, marketing or production of blankets; (c) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in unfair competition against Defendant based on the sale, marketing or production of blankets; (d) declare that Rhodes and Riders Choice did not commit in the past and are not now engaged in the misappropriation of trade secrets from Defendant based on the sale, marketing or production of blankets; (e) award to Plaintiffs their costs and attorneys’ fees.

Practice Tip:

As with a patentee who believes that his or her patent is being infringed, holders of copyrighted materials often will send a “cease-and-desist letter” — a letter demanding that the purported infringer cease infringing. To aid in convincing the accused infringer to meet its demands, the holder of the intellectual property may be tempted to use language such as plans of “instituting a suit” and seeking “court intervention,” as Defendant did here.

As this case demonstrates, this strategy may backfire. By using such language, the Defendant can create an “actual controversy” for purposes of the Declaratory Judgment Act. Thus, the party alleging infringement (the natural plaintiff in an infringement suit) may instead find itself being sued by the alleged infringer (the natural defendant), often in a jurisdiction that would not have been the first choice of the owner of the intellectual property.

One approach that may have yielded better results for Golden West might have been to approach the accused infringer with an offer to license the purportedly protected intellectual property. With carefully crafted language, such a proposal might have served to put Riders Choice on notice of Golden West’s belief that infringement was occurring without going so far as to create an “actual controversy” sufficient to support a lawsuit under the Declaratory Judgment Act.

July 22, 2013

Bekins Van Lines Sues Corporate Transfer & Storage, JLV Software and The Verderber Enterprise for Trademark Infringement of Bekins Marks

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Trademark lawyers for Bekins Van Lines, Inc. (“Bekins”) of Indianapolis, Indiana sued Corporate Transfer & Storage, Inc. (“Corporate Transfer”) of Ronkonkoma, New York; JLV Software of Pompano, Florida (also referred to in the complaint as “JVL Software”) and The Verderber Enterprise of Orlando, Florida (collectively, “Defendants”) alleging infringement of the trademark BEKINS which has been registered as Trademark No. 2,427,605 with the U.S. Trademark Office.

Bekins is the fourth-largest household-goods carrier in the United States. Headquartered in Indianapolis, Indiana, Bekins offers private and corporate household-goods relocation services both domestically and internationally. The United States Military is one of the company’s largest customers.

Corporate Transfer offers household moving, corporate relocation and storage services. The Verderber Enterprise specializes in providing technology innovations to entrepreneurs and corporate enterprises worldwide.

In December 1955, Bekins’ predecessors in interest were granted the registration of the stylized mark “Bekins.” The first use in commerce was noted as 1891. A second “Bekins” mark was granted to Bekins’ predecessors in interest in February 2001. The two marks were assigned to the plaintiff in this case on April 16, 2012.

The Defendants were, at one point, licensed agents of Bekins Van Lines, LLC. However, Bekins asserts, they have never been affiliated in any way with Bekins Van Lines, Inc. After Bekins Van Lines, Inc.’s acquisition of certain assets from Bekins Van Lines, LLC and Bekins Holding Corp. on April 2, 2012, Corporate Transfer was allegedly notified that it was required to cease using all of the Bekins marks immediately, as it was not an agent for the new owner of the Bekins marks.

Bekins claims that, despite this notice and three additional notices, the Defendants’ use of the Bekins marks on the Corporate Transfer website, the use of the domain name www.bekinsrelo.com and the use of the Bekins mark on social-media sites continued. Bekins also asserts that Corporate Transfer indicated that its use of the Bekins mark would be discontinued but that, in the spring of 2013, the website was reactivated. Bekins contends that, when it again demanded that the domain name be taken down and transferred to Bekins, Corporate Transfer then redirected the domain to point to a consumer-comment site which was tremendously critical of Bekins Van Lines, Inc.

Finally, Bekins asserts that Corporate Transfer continues to infringe upon the Bekins marks through the maintenance of the www.bekinsrelo.com site, the use of Bekins marks on its website at www.corporatetransfer.com and various references to the Bekins marks on social-media sites.

For its claims, Bekins lists the following:

· Count I: Federal Trademark Infringement

· Count II: Federal and State Unfair Competition/Trademark Dilution

Bekins asks for an injunction; for an award of Defendants’ profits earned from the acts claimed to be infringing; for an award of damages, including punitive damages; and for attorneys’ fees and costs.

Practice Tip: Bekins asserts that its marks have acquired strong secondary meaning as a symbol of origin among consumers and the industry as a result of many years of use. It further asserts that the marks are famous. The assertion that its marks are famous allows it to pursue the additional claim of trademark dilution under the Federal Trademark Dilution Act.

July 19, 2013

Batman Villainess Catwoman Gets “Clean Slate”

By Overhauser Law Offices, LLC

South Bend, Indiana — The Northern District of Indiana has ruled in favor of Warner Brothers Entertainment, Inc. (“Warner Bros.”) of Burbank, California which had been sued by trademark holder Fortres Grand Corporation (“Fortres Grand”) of Plymouth, Indiana. Fortres Grand had alleged that Warner Bros. infringed its trademark, Registration No. 2,514,853, for the mark CLEAN SLATE, which has been registered by the U.S. Trademark Office.

Fortres Grand develops, markets and sells software. Since 2000, it has marketed and sold software called “Clean Slate.” The Clean Slate software protects the security of computer networks by erasing all evidence of user activity so that subsequent users see no indication of a previous user’s activity, meaning that each new user starts his or her computer activity with a “clean slate.” Fortres Grand has sold millions of dollars worth of its Clean Slate software. In 2001, Fortres Grand obtained a federal trademark registration for the use of “Clean Slate” in connection with “computer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot.”

Warner Bros. is one of the most famous names in movie history. In the summer of 2012, it released its latest Batman film, The Dark Knight Rises. One of the plot lines in the film involves the character Selina Kyle (a.k.a. supervillainess Catwoman) and her attempt to procure a software program that will erase her criminal history from every computer database in the world. The software program she is trying to obtain was designed by the fictional company Rykin Data and is referred to four times in the film as “clean slate.”

Two websites — rykindata.com and rykindata.tumblr.com — were also created to promote the film. These websites are consistent with a recent trend in the online advertising of films: rather than just creating a straightforward promotional website where consumers can get information about the film (like, in this instance, www.thedarkknightrises.com), additional websites are created that market the film in a more subtle or creative way. In this instance, the websites are essentially a creative outgrowth of the fictional world of the film. They look like what a (fictional) citizen of Gotham might find if they were looking for information on the (fictional) Rykin Data company. These websites also use the term “clean slate” to describe the software referenced in the film.

Fortres Grand filed suit on September 19, 2012 alleging three counts based on the use of “clean slate” in the film and on the websites: 1) trademark infringement under the Lanham Act (15 U.S.C. § 1051 et seq.); 2) unfair competition under the Lanham Act; and 3) unfair competition under Indiana state law.

Fortres Grand asserted that it is, in fact, trademark infringement when a fictional product bears the same name as a real product. Warner Bros. took the opposite view and moved to dismiss the case.

The court began by noting that there is surprisingly little case law in matters such as these. Despite the many movie and television releases every year, courts have rarely been called upon to answer the question of whether it is trademark infringement if a fictional company or product in a movie or television drama bears the same name or brand as a real company or product.

The court analyzed all three of Fortres Grand’s claims — infringement, federal unfair competition, and state unfair competition — under the same trademark infringement analysis. It noted that an essential ingredient of trademark infringement is a likelihood of confusion among consumers as to the source of a product. Specifically, only confusion about origin supports a trademark claim. For this purpose, “origin” means the producer of the tangible product sold in the marketplace. Moreover, although the hallmark of trademark infringement is protecting against consumer confusion, it is not enough that there just be some generalized confusion. Trademark infringement protects only against mistaken purchasing decisions and not against confusion generally.

In this case, Grand Fortres was arguing a case of reverse confusion. This type of confusion exists when a junior user uses its size and market penetration to overwhelm the senior, but smaller, user. The “senior user” (here, Grand Fortres) is the first to adopt and use a mark anywhere in the country. The “junior user” (Warner Bros.) is the second user. The reverse confusion doctrine protects the senior user’s control of its mark and the goodwill created by the mark from a junior user’s employment of the mark, and protects the public from being deceived into believing that the senior user’s product emanates from, is connected to, or is sponsored by the junior user.

The court was not persuaded by Grand Fortres’ claim of confusion. To state a claim for reverse confusion in this case, the court held that Fortres Grand had to make plausible allegations that Warner Bros. saturated the market with a product that the public had been deceived into believing emanated from, was connected to, or was sponsored by Fortres Grand. The fatal flaw in Fortres Grand’s case had to do with correctly identifying the exact product that Warner Bros. had introduced to the market — a film, not a piece of software.

The court held that a comparison between the two products led to the conclusion that there was no plausible claim for consumer confusion regarding a consumer’s purchasing decision between the two nonfictional products — Fortres Grand’s software and Warner Bros.’s film. “Plaintiff is not in the motion picture business,” the court stated, citing a Warner Bros. pleading. “[I]t would be absurd to think that customers buy tickets to The Dark Knight Rises or purchase the DVD/Blu-ray because of a perceived association of the Film with Fortres Grand’s products.”

Finally, the court discussed the First Amendment issues associated with considering a trademark infringement claim under the Lanham Act when the asserted infringement took place in an artistic work. The Second Circuit’s Decision in Rogers v. Grimaldi, a landmark opinion in such cases, in discussing the use of intellectual property in the title of a work states:

[T]he [Lanham] Act should be construed to apply to artistic works only where the

public interest in avoiding consumer confusion outweighs the public interest in

free expression. In the context of allegedly misleading titles using a celebrity’s

name, that balance will normally not support application of the Act unless the title

has no artistic relevance to the underlying work whatsoever, or, if it has some

artistic relevance, unless the title explicitly misleads as to the source or the

content of the work.

As several Circuits have done, the court extended this analysis to cover not only the title of an artistic work, but also the body of the work. It concluded by holding that, even if there were a potential for consumer confusion caused by the use of “clean slate” in the film, the case still must be dismissed because Warner Bros.’s use of the term is also protected by the First Amendment.

Practice Tip: A more plausible legal argument might have been trademark dilution. The complaint, however, did not bring a claim under the Trademark Dilution Act. This may have been because Fortres Grand recognized that its “Clean Slate” trademark was not a “famous” one, which is a requirement for bringing a trademark dilution case.

July 18, 2013

Master Cutlery Sues Pacific Solution Marketing for Infringement of Three-Dimensional Artwork Applied to Knives

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Intellectual property lawyers for Master Cutlery, Inc. of Secaucus, New Jersey sued Pacific Solution Marketing, Inc. (“Pacific”) of Ontario, California alleging copyright and trademark infringement of three-dimensional artwork applied to knives. Master Cutlery seeks an injunction, damages, treble damages, statutory damages, profits, attorney’s fees and costs.

Founded 30 years ago, Master Cutlery has become the largest importer of knives in the United States. It asserts ownership of federal trademark, patent and copyright registrations for its knives, as well as common law trade dress rights (collectively, “Master Cutlery IP”). Among the rights that Master Cutlery claims are trademarks for the word marks “Sheriff” and “EMT” registered in Class 8 with the U.S. Trademark Office for knives.

Master Cutlery asserts that, after its use and registration of its various items of intellectual property, Pacific also began using the Master Cutlery intellectual property. It contends that Pacific has manufactured, produced, advertised and/or sold knives that infringe upon the Master Cutlery IP. It also asserts that Pacific has distributed advertisements and packaging bearing reproductions of Master Cutlery’s trademarks, trade dress and copyrights.

Master Cutlery sued alleging copyright infringement under the Copyright Act; federal trademark infringement, federal trademark dilution, false designation of origin and false advertising under the Lanham Act; common law trademark and copyright infringement; unfair competition; and theft and counterfeiting under Indiana state law. It further contends that this infringement was willful, intentional and done with the intent to confuse consumers. The complaint, originally filed in Indiana state court, was removed by a trademark attorney for Pacific on both the grounds of federal question and diversity of citizenship.

For its claims, Master Cutlery lists the following:

· Count I: Copyright Infringement Under 17 U.S.C. § 101 et seq.

· Count II: Federal Trademark Infringement Under U.S.C. § 1114

· Count III: Trademark Dilution Under 15 U.S.C. § 1125(c)

· Count IV: False Designation of Origin or Sponsorship, False Advertising and Trade Dress Infringement Under 15 U.S.C. § 1125(a)

· Count V: Common Law Trademark and Copyright Infringement

· Count VI: Unfair Competition

· Count VII: Theft Under Ind. Code § 35-43-4-2(a)

Master Cutlery asks for a permanent injunction enjoining infringement; that Pacific be required to deliver to Master Cutlery both unsold goods and goods already distributed or sold so that they can be destroyed; for compensatory damages; for treble damages or, alternatively, Pacific’s profits trebled; for statutory damages; and for attorneys’ fees and costs.

Practice Tip: Master Cutlery has included a count of felony theft under Indiana Code § 35-43-4-2(a) in its complaint. The extent to which intellectual property is “property” in the usual sense has been litigated several times recently in the Indiana appellate court, which has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property. For a discussion of two recent cases, see here and here.

July 17, 2013

Coach Sues Again in Indiana Court Alleging Trademark Infringement

By Overhauser Law Offices, LLC

South Bend, Indiana — Trademark lawyers for Coach, Inc. of New York, New York and Coach Services, Inc. of Jacksonville, Florida (collectively, “Coach“) have sued Maxx Tan; Maxx Tan Logan, LLC — both of Logansport, Indiana — and James Robert McCarthy (“McCarthy”) of Marion, Indiana, individually and d/b/a Maxx Tan, for infringement of the COACH trademark which has been registered by the U.S. Trademark Office.

Coach was founded more than 70 years ago as a family-run workshop in Manhattan. Since then, the company has been engaged in the manufacture, marketing and sale of fine leather and mixed-material products including handbags, wallets and accessories including eyewear, footwear, jewelry and watches. Coach products have become among the most popular in the world, with Coach’s annual global sales currently exceeding three billion dollars.

On October 17, 2012, a private investigator from Coach visited Maxx Tan and observed numerous trademarked handbags, sunglasses and accessories displayed for sale. These items bore the trademarks of many high-end brands, including Coach.

The investigator purchased a purse which bore a Coach trademark for $69 plus tax and left the store. The investigator then returned, explained the reason for the purchase, attempted to serve a cease-and-desist letter on McCarthy, and asked McCarthy to surrender the merchandise. McCarthy agreed to stop selling the merchandise but refused to surrender anything.

The investigator contacted the Logansport police. In the following weeks, Maxx Tan surrendered various purses, a pair of sunglasses and a sunglasses case to the police, all of which bore the Coach mark. All of the surrendered items are alleged to be counterfeit.

Coach, the owner of at least 47 trademarks, subsequently sued Maxx Tan and McCarthy, whom Coach contends is individually liable for any infringing activities. It alleges that Maxx Tan and McCarthy are engaged in designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale products bearing logos and source-identifying indicia and design elements that are studied imitations of the Coach trademarks.

The complaint includes counts for trademark infringement, false designation of origin and false advertising under the Lanham Act, 15 U.S.C. §§ 1114, 1116, 1117, 1125(a) and (c); trademark infringement and unfair competition under the common law of the State of Indiana; and forgery under Indiana Code § 35- 43-5-2(b) as well as counterfeiting under Indiana Code § 35-43-5-2(a), pursuant to Indiana Code § 34-24-3-1. These counts are listed as:

· COUNT I (Trademark Counterfeiting, 15 U.S.C. § 1114)

· COUNT II (Trademark Infringement, 15 U.S.C. § 1114)

· COUNT III (False Designation of Origin and False Advertising, 15

U.S.C. § 1125(a))

· COUNT IV (Common Law Trademark Infringement)

· COUNT V (Common Law Unfair Competition)

· COUNT VI (Forgery Under Ind. Code § 35-43-5-2(b))

· COUNT VII (Counterfeiting Under Ind. Code § 35-43-5-2(a))

· COUNT VIII (Common Law Unjust Enrichment)

· COUNT IX (Attorneys’ Fees)

Coach asks the court, inter alia, to enter judgment against the defendants on all counts; for an injunction against further wrongful activity; to order that all infringing materials be recalled and disposed of; to award to Coach statutory damages of $2,000,000 per counterfeit mark per type of good; to award punitive damages; and to award to Coach its costs and attorneys’ fees.

Practice Tip: Coach has been very aggressive in protecting its intellectual property rights in Indiana courts over the last few years. Coach’s intellectual property attorneys have filed numerous similar lawsuits in Indiana courts, several of which Indiana Intellectual Property Law and News has blogged about.

July 3, 2013

Sensory Technologies, LLC Sues Sensory Technology Consultants, Inc. for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana — Trademark lawyers for Sensory Technologies, LLC (“Sensory Indiana”) of Indianapolis, Indiana sued Sensory Technology Consultants, Inc. (“Sensory Utah”) of Morgan, Utah alleging infringement of Trademark Registration No. 3282956 for the mark “SENSORY TECHNOLOGIES®” which has been registered with the U.S. Trademark Office.

Sensory Indiana sued in the Southern District of Indiana for declaratory judgment, injunction and damages, alleging that Sensory Utah has committed trademark infringement, false designation of origin and unfair competition with its unauthorized use of “Sensory Technology Consultants,” a mark similar to Sensory Indiana’s “Sensory Technologies” trademark.

Sensory Indiana, which describes itself on its website as “a leading audio-visual, telepresence system and collaboration solutions provider” asserts that Sensory Utah used a mark which is visually and phonetically similar to the “Sensory Technologies” mark with the intent to trade on the goodwill with the public established by Sensory Indiana and to cause confusion, mistake or deception. Sensory Indiana further asserts that Sensory Utah is in the business of providing services similar to those provided by Sensory Indiana.

The “Sensory Technologies” mark is federally registered for audio-visual and video conferencing design services, integrating audio-visual and video conferencing systems, help desk technical consultation services, customized computer programming for others and technical consultation regarding audio-visual equipment and video conferencing systems. Sensory Indiana indicates that the mark has been used in commerce since March 2006 and that it is distinctive and/or has acquired secondary meaning and significance in the minds of the purchasing public.

Several times in early 2013, Sensory Indiana alerted Sensory Utah that Sensory Utah’s use of “Sensory Technology Consultants” was unauthorized. The current lawsuit was commenced after those notices went unanswered. The complaint alleges:

· Count I: Trademark Infringement

· Count II: False Designation of Origin

· Count III: Unfair Competition

· Count VI [sic]: Declaratory Judgment

· Count VIII [sic]: Preliminary and Permanent Injunctive Relief

Sensory Indiana seeks a judgment against Sensory Utah on counts I through III; injunctive relief; and damages, including punitive damages and damages for corrective advertising.

Practice Tip: According to its website, Sensory Utah has been in business since 2006, the same year in which Sensory Indiana’s mark was initially used in commerce. This may cause some difficulties for Sensory Indiana. While federal registration of a trademark has advantages, trademark protection may also be acquired by being the first to use a mark in commerce. As a result, an unregistered trademark may be more robust from a legal standpoint than one that has been registered with the U.S. Trademark Office. This makes it extremely important to do a comprehensive search for others’ potential trademark rights — including those that will not be evident from a search of the Trademark Electronic Search System database — before you begin to use a mark.

July 1, 2013

Coach Sues Downtown Gift Shop and Chun Ying Huang for Trademark Infringement, Forgery and Counterfeiting – 1

By Overhauser Law Offices, LLC

South Bend, Ind. — Trademark lawyers for Coach, Inc. of New York, N.Y. and Coach Services, Inc. of Jacksonville, Fla. (collectively, “Coach”) sued Downtown Gift Shop of Mishawaka, Ind. and Chun Ying Huang of Granger, Ind. (“Huang”) alleging various violations of intellectual-property law, including trademark infringement, forgery and counterfeiting.

Coach was founded more than 70 years ago as a family-run workshop in Manhattan. Since then, the company has been engaged in the manufacture, marketing and sale of fine leather and mixed-material products including handbags, wallets and accessories including eyewear, footwear, jewelry and watches. Coach products have also become among the most popular in the world, with Coach’s annual global sales currently exceeding three billion dollars.

On December 8, 2012, a private investigator from Coach visited the Downtown Gift Shop and observed thousands of handbags, boots, and accessories displayed for sale. These items bore the trademarks of many high-end brands including Coach, Louis Vuitton, Chanel and Tiffany.

On December 11, 2012, investigators from Coach accompanied officers from the St. Joseph County Police Department, Indiana State Police Department, and the Department of Homeland Security, to execute a search warrant on Downtown Gift Shop.

The investigators and officers identified, photographed, and seized over 3,000 counterfeit trademarked merchandize, including over 1,000 Coach handbags, wallets, scarves, sunglasses, jewelry, and hats. Coach contends that all of the seized items are counterfeit.

Coach, the owner of at least 47 trademarks, subsequently sued Downtown Gift Shop and Huang, whom Coach contends is individually liable for any infringing activities. It alleges that Downtown Gift Shop and Huang are engaged in designing, manufacturing, advertising, promoting, distributing, selling, and/or offering for sale products bearing logos and source-identifying indicia and design elements that are studied imitations of the Coach trademarks.

The complaint includes counts for trademark infringement, false designation of origin and false advertising under the Lanham Act, 15 U.S.C. §§ 1114, 1116, 1117, 1125(a) and (c); trademark infringement and unfair competition under the common law of the State of Indiana; and forgery under Indiana Code § 35- 43-5-2(b) as well as counterfeiting under Indiana Code § 35-43-5-2(a), pursuant to Indiana Code § 34-24-3-1. These counts are listed as:

· COUNT I (Trademark Counterfeiting, 15 U.S.C. § 1114)

· COUNT II (Trademark Infringement, 15 U.S.C. § 1114)

· COUNT III (False Designation of Origin and False Advertising, 15 U.S.C. § 1125(a))

· COUNT IV (Common Law Trademark Infringement)

· COUNT VII [sic] (Common Law Unfair Competition)

· COUNT VIII (Forgery Under Ind. Code § 35-43-5-2(b))

· COUNT IX (Counterfeiting Under Ind. Code § 35-43-5-2(a))

· COUNT X (Common Law Unjust Enrichment)

· COUNT XI (Attorneys’ Fees)

Coach asks the court, inter alia, to enter judgment against the defendants on all counts; for an injunction against further wrongful activity; to order that all infringing materials be recalled and disposed of; to award to Coach statutory damages of $2,000,000 per counterfeit mark per type of good; to award punitive damages; and to award to Coach its costs and attorneys’ fees.

Practice Tip: Homeland Security Investigations (“HSI”), a directorate of U.S. Immigration and Customs Enforcement, is one of the agencies charged with investigating counterfeit goods. Much of the sales volume of counterfeit goods has moved to the Internet and, as part of its efforts, HSI is authorized to petition a court to order the seizure of domain names of websites selling counterfeit goods over the Internet.

One such seized domain name, http://designsfauxreal.com/, has been redesigned by HSI as a warning for visitors and includes such advertising copy as “FREE identity theft with every purchase” and “LOOK! Low quality counterfeit product. On closer inspection, alligator may resemble a tadpole.”

June 26, 2013

Microsoft Sues Mister HardDrive and Mark Cady for Copyright and Trademark Infringement

By Overhauser Law Offices, LLC

New Albany, Ind. — Intellectual property lawyers for Microsoft Corp. of Redmond, Wash. sued Mister HardDrive and Mark Cady of Scottsburg, Ind. alleging infringement of copyrighted work TX 5-407-055 titled Microsoft Windows XP Professional : version 2002 registered with the U.S. Copyright Office; and Trademark Registration Nos. 1,200,236; 1,256,083; 1,872,264 and 2,744,843 registered with the U.S. Trademark Office.

Microsoft, the seventh largest publically traded company in the world, has sued Mister Harddrive, a business entity of unknown legal structure that is also known as Mister HardDrive’s Wipe and Restore (“Mister HardDrive”), and Mark Cady, an individual, alleging that they engaged in copyright and trademark infringement; false designation of origin, false description and representation; and unfair competition.

Microsoft develops, markets, distributes and licenses computer software. Microsoft’s software programs are recorded on discs, and they are packaged and distributed together with associated proprietary materials such as user’s guides, user’s manuals, end user license agreements, and other components. Mister HardDrive is engaged in the business of advertising, marketing, installing, offering, and distributing computer hardware and software, including products sold as Microsoft software.

In its complaint, Microsoft alleges that Mister HardDrive and Mark Cady offered, installed, and distributed unauthorized copies of Microsoft software and thereby infringed Microsoft’s copyrights, trademarks and/or service mark. Infringement and/or misappropriation of Microsoft’s copyrights, advertising ideas, style of doing business, slogans, trademarks and/or service mark in defendants’ advertising is also alleged.

Microsoft asserts that in December 2012, defendants were found to have distributed computer systems with unauthorized copies of Windows XP installed on them. Microsoft asked defendants to stop making and distributing infringing copies of Microsoft software but claims that additional computers with unauthorized copies of Windows XP were subsequently distributed by defendants. Microsoft claims that such distribution of counterfeit and infringing copies of their software — along with related infringing items — is ongoing.

The complaint lists the following counts:

· First Claim [Copyright Infringement – 17 U.S.C. § 501, et seq.]

· Second Claim [Trademark Infringement – 15 U.S.C. § 1114]

· Third Claim [False Designation Of Origin, False Description And Representation –

· 15 U.S.C. § 1125 et seq.]

· Fourth Claim [Indiana Common Law Unfair Competition]

· Fifth Claim [For Imposition Of A Constructive Trust Upon Illegal Profits]

· Sixth Claim [Accounting]

Microsoft asks that the court adjudge that the defendants have willfully infringed its federally registered copyright; that the defendants have willfully infringed several of its federally registered trademarks and one of its service marks; that the 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; and that the defendants have engaged in unfair competition in violation of Indiana common law.

Microsoft seeks damages, an accounting, the imposition of a constructive trust upon defendants’ illegal profits, and injunctive relief.

Practice Tip: Microsoft has named as defendants both the business entity and the individual who has been identified as related to Mister HardDrive as “an owner, operator, officer, [or] shareholder, [who] does business as and/or otherwise controls” the business. A corporate officer, director or shareholder is, as a general matter, personally liable for all torts which he authorizes or directs or in which he participates, even if he acted as an agent of the corporation and not on his own behalf.

June 25, 2013

Australian Gold Sues Devoted Creations for Trademark Infringement of LIVE LAUGH TAN®

By Overhauser Law Offices, LLC

Indianapolis, Ind. — Trademark lawyers for Australian Gold, LLC of Indianapolis, Ind. sued in the Southern District of Indiana alleging that Devoted Creations, Inc. of Oldsmar, Fla. intentionally and willfully infringed its trademark, Registration No. 4,154,194, for “LIVE LAUGH TAN,” which is registered with the U.S. Trademark Office.

Australian Gold has been in the business of selling indoor-tanning preparations for over 20 years. Devoted Creations also sells indoor-tanning preparations and is a competitor of Australian Gold. Australian Gold contends that, since at least October 2010, it has used the registered mark “LIVE LAUGH TAN” as a trade name and trademark in conjunction with sales of its Australian Gold line of indoor-tanning products. Australian Gold asserts that it has used the LIVE LAUGH TAN mark continuously, notoriously and extensively with respect to sales of the preparations since that time. It claims that, as a result of its promotional activities, the mark has acquired substantial goodwill. It also states that the mark is both “distinctive” and “inherently distinctive” and that it serves to distinguish Australian Gold’s indoor-tanning preparations from those of others.

Devoted Creations advertises its indoor-tanning preparations under the name “LIVE LOVE TAN.” Australian Gold asserts that Devoted Creations is aware that Australian Gold’s customers use the LIVE LAUGH TAN mark to identify Australian Gold products and that the designation LIVE LOVE TAN was an intentional and willful copy. It claims that Devoted Creations acted in bad faith and with full knowledge and conscious disregard of Australian Gold’s rights and that, as a result, this is an exceptional case. It further states that Devoted Creations’ mark is substantially identical, that its indoor-tanning products directly compete with those of Australian Gold and that those products are for sale in the same channels of trade. Finally, Australian Gold claims that Devoted Creations derives significant revenue from products sold using LIVE LOVE TAN and that such use of the mark is likely to cause confusion among consumers regarding the origins of Devoted Creations’ goods and to diminish goodwill associated with Australian Gold’s LIVE LAUGH TAN mark.

Australian Gold’s complaint lists a count of “Federal and Common Law Trademark Infringement” and a count of “Unfair Competition.” It seeks a judgment that the use of LIVE LOVE TAN infringes its mark; an injunction against confusing advertising or sales by Devoted Creations; damages, costs and attorney’s fees; and an award of any wrongful profits made by Devoted Creations.

Practice Tip: Australian Gold’s decision to trademark LIVE LAUGH TAN as a mark for “Tote bags” is a curious one, as tote bags are not the products at issue. While the United States Patent and Trademark Office will not provide legal advice online concerning an individual’s particular circumstance, in addressing similar situations, it states, “similar trademark registrations can co-exist on the register so long as the goods or services identified in the registration are adequately different so as not to raise a likelihood of confusion in the purchasing public.”