Unfair Competition

June 26, 2012

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

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

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

Practice Tip: U.S.C. title 15, chapter 22 governs trademarks, and §1117 specifically details the relief which can be granted as a result of trademark violation.
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May 30, 2012

Tower Reinforcement Sues Crown Castle International for Patent Infringement of TOWER REINFORCEMENT APPARATUS AND METHOD

By Overhauser Law Offices, LLC

Indianapolis; IN – Patent attorneys for Tower Reinforcement of Newburgh, Indiana filed a patent infringement suit in the Southern District of Indiana alleging Crown Castle International and Crown Castle Operating of Houston, Texas, and Aero Solutions, LLC of Boulder, Colorado infringed patent no.7,849,659, TOWER REINFORCEMENT APPARATUS AND METHOD, which has been issued by the US Patent Office.

Both the Crown Defendants and Aero Solutions are incorporated outside of Indiana, but the complaint alleges they maintain substantial contacts with Indiana by regularly conducting business in the state. Tower alleges patent infringement of three of their patents–“the ‘659 patent,” “the ‘972 patent,” and “the ‘712 patent”–to which Tower owns all the rights and interest. According to Tower’s complaint, the Defendants had actual notice of the Tower patents and still infringed on the patents through their making, using, selling and the offer of sale of products utilizing Tower’s patented technology. Tower asserts that the Defendants also encourage the design and construction of the protected patents, their actions being willful and deliberate. The complaint does not give many details about specific acts of infringement. Tower alleges they have, and will continue to, suffer substantial and irreparable financial loss and is therefore seeking to permanently enjoin the Defendants from their infringing activities of their ‘659, ‘972, and ‘712 patents.

Practice Tip: The US Patent laws applicable to this suit are 35 U.S.C. §§ 1, et seq. Specifically, 28 U.S.C. §§ 1338(a) gives district courts jurisdiction in any civil action relating to patents.

April 18, 2012

Cosmetic Warriors Sues Lush Day Spa for Trademark Infringement of “LUSH”

By Overhauser Law Offices, LLC

Evansville; IN – Trademark attorneys for Cosmetic Warriors Limited of the United Kingdom filed a trademark infringement suit in the Southern District of Indiana alleging Lush Day Spa of Evansville, Indiana infringed trademark registration no. 3987808 for the mark LUSH which has been registered with the US Trademark Office.

The complaint states that Cosmetic Warriors operates a retail store in California and operates, www.lush.com, a website selling its bath, hair care, and beauty products, which are described as “made from natural, wholesome ingredients.” The complaint states that the Bartnicks operate an Evansville retail shop called Lush Day Spa. Cosmetic Warriors alleges it has been using the mark “Lush” since 1996 and alleges the mark is distinctive and is an indicator of Cosmetic Warrior’s brand. The complaint states that the defendants began operating the Lush Day Spa on July 18, 2011 and offers salon services and products. The complaint alleges the defendant operate a website at www.thelushdayspa.com and a facebook page under the same name. Cosmetic Warriors states that it has contacted the defendants and demanded they discontinue use of the Lush mark, but that the defendants have failed to discontinue. Cosmetic Warriors alleges the defendant’s use of “Lush” is virtually identical to its trademark and confusingly similar. The complaint makes claims of federal trademark infringement, unfair competition, deceptive consumer sales, and state law unfair competition and seeks an injunction, transfer of the domain name www.thelushdayspa.com, an accounting, damages, punitive damages, attorney fees and costs.

Practice Tip: The plaintiff seems very concerned with the defendant’s website, which is said to be a confusingly similar domain name, however, it has not alleged a cause of action for cybersquatting. The Anti-cybersquatting Consumer Protection Act of 1999 created a cause of action for registering, trafficking or using a domain name that is confusingly similar or dilutive to the trademark of another.

April 9, 2012

Australian Gold, LLC Sues Devoted Creations, Inc. For Trademark Infringement Of “MUST HAVE”

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark attorneys for Australian Gold, LLC of Indianapolis, Indiana filed a trademark infringement suit in the Southern District of Indiana alleging Devoted Creations, Inc. of Oldsmar, Florida infringed trademark registration no. 4089695 for the mark MUST HAVE, which has been registered with the US Trademark Office.

Australian Gold claims it has used the MUST HAVE trademark since 2010 to market its tanning preparation products. The complaint alleges that Devoted has introduced a competing tanning preparation product and is using the mark MUST HAVE! to market the product. The only difference between the marks is that Devoted uses an exclamation mark at the end. The complaint alleges that the marks are confusingly similar and claims the US Trademark Office rejected Devoted’s application to register MUST HAVE! The complaint makes claims of trademark infringement and unfair competition and seeks a judgment of infringement, an injunction, an order requiring all infringing products be delivered and destroyed, damages, attorney fees and costs.

Practice Tip: The complaint alleges, as a jurisdictional fact, that Devoted “does business in Indiana” and sells the allegedly infringing product at a distribution center in Danville, Indiana.

March 13, 2012

Reindeer Logistics Sues McKnight Logistics For Trademark Infringement of Reindeer Auto Relocation Mark

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark attorneys for Reindeer Logistics, Inc. of Zionsville, Indiana filed a trademark infringement lawsuit in the Southern District of Indiana alleging McKnight Logistics, Inc. of Temecula, California infringed trademark registration no. 3542813 for the mark REINDEER AUTO RELOCATION, which was filed with the US Trademark Office.

The complaint states that Reindeer uses its mark Reindeer Auto Relocation in association with “high quality auto relocation services.” The complaint alleges that the defendant, McKnight, operates a website at www.reindeerautotransport.com to advertise auto relocation services and to “consummate” transactions. Reindeer discovered this allegedly infringing website in February 2012, and its trademark attorneys sent a cease-and-desist letter to McKnight. The complaint states that McKnight continues to use the infringing website and slogan. Reindeer alleges that the only possible purpose of McKnight’s use of that website and slogan are to “illegally divert traffic from Reindeer’s site and/or to confuse the public.” The complaint makes claims of trademark infringement, violation of federal anti-cybersquatting act, federal and state unfair competition and trademark dilution. Trademark attorneys seek an injunction, an accounting of profits, damages, attorney fees and costs.

Practice Tip: The plaintiff here makes a claim under the anti-cyberquatting act, 15 U.S.C. § 1125(d), which establishes a cause of action for registering or operating a domain name that is confusingly similar to a registered trademark or name.

March 7, 2012

Orange Communications, LLC Sues Orange Public Relations, LLC and Blastmedia, Inc. for Unfair Competition, Trademark Infringement and Trade Name Infringement

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark attorneys for Orange Communications, LLC of Minneapolis, Minnesota filed a trademark ,trade name infringement in the Southern District of Indiana alleging Orange Public Relations, LLC of Fishers, Indiana and Blastmedia, Inc of Fishers, Indiana infringed Orange trade name and trademark, which apparently has not been registered with the US Trademark Office.

Orange Communications alleges that it applied for LLC status in Indiana in January 2010 and by January 2011 had set up its website, facebook page and twitter account. Orange Communications describes its trademark as “a circular, orange symbol which resembles a gear with a hole in the middle.” The plaintiff alleges that Orange PR was organized in May 2011 and began a website, facebook page and twitter account soon after. The complaint states that Orange Communications sent a cease and desist letter to Orange PR in January 2011 demanding that Orange PR stop using the Orange trade name and logo. The complaint states that Orange PR changed its twitter handle to “Orange Blast” but has not otherwise responded. The complaint further alleges that potential clients have been confused about the relationship and identity of the Plaintiff and Orange PR. The complaint makes claims of unfair competition and trademark infringement under the federal Lanham Act and common law trademark infringement. Orange Communications seeks an injunction, damages, costs and attorney fees.

Practice Tip: The complaint names two corporate defendants: Orange PR and Blastmedia LLC. However, it is unclear what role the plaintiff believes that Blastmedia had in the alleged unfair competition and infringement. The only mention of Blastmedia is the allegation that “Defendants Orange PR and Blastmedia share the same CEO and other senior management employees.”
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January 4, 2012

Southern District Issues Partial Summary Judgment in Norwood Promotional Products v. Kustom Koozies Trademark Suit Over KOOZIE Mark

By Overhauser Law Offices, LLC

Indianapolis, IN – Judge Magnus-Stinson of the Southern District of Indiana has issued a partial summary judgment in a trademark infringement case. Trademark attorneys for Norwood Promotional Products, Inc. of Indianapolis, Indiana had filed a trademark infringement lawsuit in the Southern District of Indiana alleging that KustomKoozies, LLC and Steve Liddle of Raleigh, North Carolina infringed trademark registration no.3,240,989 for the KOOZIE mark registered with the US Trademark Office. Trademark attorneys for Norwood had sued Kustom in 2005 and 2006 over the use of the term “Koozie.” The parties reached a settlement of those lawsuits that included the terms that Kustom abandon its trademark application for the mark “KUSTOM KOOZIE”and accept a royalty-free license agreement regarding Norwood’s claimed mark, “Koozie.” In 2008, Norwood alleged that Kustom was not complying with terms of the license agreement, specifically it was required that KOOZIE be in all capital letter in any use and was not displaying ® after the mark. Further it was alleged that Kustom had registered internet domain names and sold products that were not allowed by the license agreement. The defendants attempted to cure the non-compliance, but in 2009 Norwood informed Kustom that it was cancelling the license agreement due to Kustom’s non-compliance and filed this lawsuit. Both parties moved for summary judgment.

One of Kustom’s counterclaims was that Norwood’s registered trademark for “KOOZIE” should be cancelled. Kustom argued that the mark was invalid. However, the Court rejected this claim finding that Kustom was estopped from challenging the legitimacy of the KOOZIE mark because it had voluntarily gave up the right to challenge this mark in the prior settlement agreement. The Court also cited the doctrine of “licensee estoppel” that a trademark licensee is barred from challenging the validity of the licensor’s mark. The Court granted summary judgment in favor of Norwood, finding that Kustom had breached the settlement and license agreements. The issue of damages was reserved for trial. The Court, however, granted summary for Kustom, finding that it had not infringed the trademark after the license agreement was cancelled. Several issues in this case remain pending for upcoming trial.

Practice Tip: In its opinion, the Court is critical of both parties’ trademark attorneys litigation strategies. The Court notes “The advocacy in this matter has been zealous if not always effective or efficient.” Later, the Court notes “the briefs have defined the issues with a preference for litigation tactics and strategy, as opposed to clarity.” The court then noted that the parties’ briefs were not well organized and noted it was structuring its opinion in a more logical organization.
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December 13, 2011

The St. Joe Company Sues Epcon Community et al for Trademark Infringement of the Watercolor Mark.

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark attorneys for The St. Joe Company of Watersound, Florida filed a trademark infringement suit in the Southern District of Indianaalleging Epcon Community Franchising, Inc. of Dublin, Ohio, Property Group One, Ltd., Sherri Meyer, and Watercolors Owners Association, Inc. of McCordsville, Indiana, infringed trademark registration no. 2,480,515, 2,532,581, 2,626,297, 2,713,757, and 3,434,972, known as the “Watercolor Registrations” registered with the US Trademark Office.

The complaint states that St. Joe owns the Watercolor marks and uses the marks in association with a variety of goods and services, including real estate development, recreational services, hotel services and clothing. According to the complaint, in 2009 St. Joe became aware that Epcon was planning to use WATERCOLORS to identify an Indiana real estate development and sent a letter to Epcon demanding that it cease using the WATERCOLORS name. Epcon’s franchisee, Property Group, was the entity actually using the WATERCOLORS name. The complaint states that the defendants agreed to stop using the WATERCOLOR name over a 6 month transition period. At the end of the 6 months, the defendants chose the name AQUARELLES as the new name for the Indiana real estate development project. The complaint states that AQUARELLES is French for WATERCOLORS and that the defendants have not ceased to use the name WATERCOLORS in association with the development. St. Joe’s subsequently demanded the defendants cease using the registered marks, but the defendants refused. The complaint states the defendants continue to use the Watercolors marks to this date and maintain a website at www.watercolorsinfishers.com. The complaint makes claims of trademark infringement, unfair competition, common law infringement, common law unfair competition, breach of contract and tortuous interference with a contractual relationship.

Practice Tip: An interesting issue may be the role of a real estate title insurance policy and whether the policy covers claims for trademark infringement related to the name of a real estate development. As shown by Exhibit L, the Defendant Homeowner Association’s title insurance company was engaged in efforts to negotiate a settlement.
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September 22, 2011

80/20, Inc. Sues Parco Inc. and Phillip Andrew Roser for Trademark and Copyright Infringement of Aluminum Products Online and in Product Catalogs

By Overhauser Law Offices, LLC

Fort Wayne, IN – Trademark lawyers for 80/20, Inc. of Columbia City, Indiana filed a trademark infringement suit in the Northern District of Indianaalleging Parco Inc of Huntertown, Indiana and Phillip Andrew Roser of Fort Wayne, Indiana infringed trademark registration no. 2,699,302 for the mark 80/20 and no. 3,362,571 for the mark AUTO QUOTER registered by the US Trademark Office as well as three unregistered trademarks. 80/20 also alleges Parco has infringed five registered copyrights owned by 80/20.

80/20 is a leading seller of aluminum extrusion products and accessories. The complaint alleges that Parco is a former distributor of 80/20 products, and Mr. Roser is the president and majority shareholder of Parco. 80/20 alleges that Parco and Mr. Roser “created a scheme whereby they would use Parco’s status as a distributor to form and launch a direct competitor to 80/20.” The complaint states that Parco has been using 80/20 trademarks and copyrighted material on its online advertising and in catalogs. 80/20 alleges that Parco registered an internet domain name “parco8020.com” which used the 80/20 mark without authorization. 80/20 sent a cease and desist letter to Parco on June 14, 2011, and Parco then removed allegedly infringing material from its website. 80/20 alleges that Parco subsequently used photos of 80/20 products to create Parco promotional material, including a YouTube video. 80/20’s copyright and trademark attorneys have made claims of copyright infringement, federal trademark infringement, Lanham Act violation of “passing off,” common law trademark infringement, common law unfair competition, “anti-cyber squatting,” Indiana law unfair competition and deceptive trade practices. 80/20 is seeking to hold Mr. Roser individually liable, through theories of personal liability arising under copyright and trademark law and vicarious liability. 80/20 seeks an injunction, accounting of profits, impoundment and destruction of infringing catalogs, actual damages, attorney fees and costs.

Practice Tip: 80/20 has designated one of its claims “passing off” and cites 15 U.S.C. 1125(a). The federal law calls this type of claim a false designation of origin and false description. The law prohibits any use of marks or words that create a likelihood of confusion as to the origin, sponsorship or approval of a product.
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September 21, 2011

Allison Transmission, Inc. Sues Authorized Transmission Remanufacturing, Inc. for Trademark Infringement in Connection with Remanufactured Allison Transmissions.

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Allison Transmission Inc of Indianapolis, Indiana filed a trademark infringement suit in the Southern District of Indiana alleging Authorized Transmission Remanufacturing, Inc. of Vernon Hills, Illinois, infringed trademark registration no. 2,686,798 and 3,821,441 for the mark ALLISON TRANSMISSION (words only), 2,720,112, ALLISON DOC (words only) mark, 4,013,075 ALLISON TANSMISSION OPTIMIZED mark, 4,013.074, ALLISON HYBRID mark, 1,666,977, 1,624,473, and 2,625,008, ALLISON TRANSMISSION mark, all registered with the US Trademark Office.

Allison manufactures automotive transmissions and innovative automotive technology. The complaint alleges that Authorized Transmission is in the business of remanufacturing, selling and installing remanufactured Allison Transmission products. Authorized Transmission allegedly displays signs and distributes advertising stating that it is “authorized” by Allison Transmission. However, Allison states it has not granted any “authorization” to Authorized Transmission. The complaint notes that in February 2009, Allison filed a similar lawsuit against Authorized Transmission. That lawsuit was dismissed without prejudice as part of a settlement agreement. The complaint alleges that Authorized has violated the settlement agreement by continuing to display signs and distributing advertising that states it is an “authorized” Allison dealer. The complaint makes claims of false designation of origin, unfair competition, deceptive acts and breach of contract. Allison’s trademark lawyers are seeking a permanent injunction, profits, a declaration that Authorized has breached the settlement agreement, costs, attorney fees, and destruction of the all items with the term “authorized” associated with Allison products.

Practice Tip: This is the second trademark infringement case filed by Allison’s intellectual property attorneys this month. Indiana Intellectual Property Law News blogged about the first case. According to Justia, Allison filed two trademark infringement cases in 2010. Allison is relatively aggressive about enforcing their trademark rights.
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