Unfair Competition

January 4, 2012

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

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.
Continue reading

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.
Continue reading

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.
Continue reading

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.
Continue reading

September 20, 2011

Mr. Waterheater Enterprises, Inc. and MRW National, Inc. Sue Greater Midwest Building Solutions, LLC and Ronald O’Connor for Trademark Infringement in Sales and Service of Water Heaters

By Overhauser Law Offices, LLC

Indianapolis, IN – Trademark lawyers for Mr. Waterheater Enterprises, Inc. and MRW National, Inc., both of North Versailles, Pennsylvania filed a trademark infringement suit in the Southern District of Indiana alleging Greater Midwest Building Solutions, LLC and Ronald O’Connor of Franklin, Indiana infringed trademark registration no. 3,338,117, for the mark MR. WATERHEATER KEEPING WATER HOT, registered by the US Trademark Office.

The complaint states that Mr. Waterheater has been selling water heaters using the Mr. Waterheater mark and the trademarked slogan since at least 1988 and spends significant resources to advertise its brand. The complaint alleges that the defendants sell water heaters using the confusingly similar mark “Mr. Water Heater” and uses the confusingly similar website url www.mr-waterheater.com. The complaint states that Mr. Waterheater’s trademark attorneys sent a cease and desist letter to the defendants in June 2011, but the defendant did not cease using their confusingly similar marks. The complaint makes claims of trademark infringement, false designation of origin, unfair competition under Indiana state law, and unjust enrichment. Trademark attorneys seek an injunction, an accounting of profits, damages, attorney fees and costs.

Practice Tip: The parties here are both selling water heaters using very similar marks: The plaintiff’s mark here is “Mr. Waterheater” and the defendant apparently using “Mr. Water Heater.” The Lanham Act, 15 U.S.C. § 1114(1)(b) defines infringement as using a copy or imitation of a mark upon good or service where “such use is likely to cause confusion, or to cause mistake, or to deceive”. Since the difference between the two marks is a space between “water” and “heater,” the marks are virtually identical and the likelihood of confusion is very high. The defendants, however, may have defenses available.
Continue reading

August 26, 2011

Seventh Circuit Affirms That “Quilted” Toilet Paper Design Is Functional, Not Protected By Trademark

By Overhauser Law Offices, LLC

Chicago, IL – The Seventh Circuit Court of Appeals affirmed that a toilet paper design was functional and not subject to trademark protection. Georgia-Pacific began selling Quilted Northern toilet paper about twenty years ago and obtained trademarks, copyrights, and patents of the quilted design. Kimberly-Clark later began selling competing toilet paper that had a diamond design similar to Quilted Northern, called Cottonelle. Intellectual property attorneys for Georgia-Pacific then filed a trademark infringement lawsuit against Kimberly-Clark alleging their new product infringed the Quilted Northern trademark and was unfair competition. The Northern District of Illinois determined that the diamond design was functional and not subject to trademark protection, therefore granting summary judgment in favor of Kimberly-Clark. Georgia-Pacific appealed to the Seventh Circuit Court of Appeals, which affirmed the lower court.

Judge Evans wrote an unusually entertaining opinion for the court that begins: “Toilet paper. This case is about toilet paper. Are there many other things most people use every day but think very little about? We doubt it.” (Editorial Note – Sadly Judge Evans passed away on August 10, 2011, and this opinion may have been one of his last.) Judge Evans commented that the intellectual property attorneys representing both sides were “truly-first rate” and had cited over 119 cases and 20 federal statutes.

Quilted Northern TV Ad (2003) – YouTube.mht

Practice Tip: The registration of a trademark creates a strong presumption of validity. However, if a trademark is challenged as being a functional element of a product, rather than an identifying mark, the mark holder will then have the burden of proving that the mark is not merely functional. The U.S. Supreme Court addressed these types of claims in TrafFix Devices v. Marketing Displays, Inc. In its opinion, the Court in this case quoted the TrafFix opinion to describe the heavy burden of the mark holder to show that “the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.”

April 29, 2011

Southern District Court of Indiana Dismisses Trademark Infringement Lawsuit Against California Company for Lack of Personal Jurisdiction

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The Southern District Court of Indiana has dismissed a trademark infringement lawsuit against Haycco LLC, a California limited liability company, finding a lack of personal jurisdiction. Traveler’s Joy, a Delaware Corporation, Haycco had been sued for trademark infringement, unfair competition, and dilution of trademark. Both companies provide a gift registry service that allows wedding guests to make monetary contributions to the bride and groom’s honeymoon. The complaint alleged infringement of US trademark registration nos. 3,560,502 and 3,718,357, which are for stylized logos of the word TRAVELER’S JOY for gift registration services. The plaintiff operates the website www.travelersjoy.com and defendant runs http://joyhoneymoon.com. Traveler’s Joy alleged that the marks were sufficiently confusing to cause economic harm to Traveler’s Joy. Indiana Intellectual Property Blog has previously blogged about this case.

Traveler’s Joy had claimed that Indiana’s Southern District Court should have personal jurisdiction over Haycco because the website operated by Haycco would allow customers in Indiana to complete transactions. The court, however, noted that no Indiana customers had never had any customers from Indiana and had blocked web transactions from Indiana. The court also noted that Haycco had no employees, property, or bank accounts in Indiana and had not directly targeted Indiana in its marketing efforts. The court, therefore, concluded that Haycco does not have the “minimum contacts” necessary to establish personal jurisdiction. The court dismissed the lawsuit with prejudice.

The publisher of this blog represented Haycco, who prevailed in the motion to dismiss.

March 14, 2011

American Automobile Association Sues AAA Affordable Insurance for Trademark Infringement and Unfair Competition

By Overhauser Law Offices, LLC

New Albany, IN – Trademark lawyers for The American Automobile Association of Heathrow, Florida filed a lawsuit alleging AAA Affordable Insurance of Charlestown, Indiana, infringed Trademark Nos. 829,265, 2,158,654 and 1,101,726 for the mark AAA, as registered with the U.S. Trademark Office, and committed unfair competition and cyberpiracy.
Continue reading

March 10, 2011

Italian manufacturer Tecnomatic files patent, trademark and other claims against Pendleton’s Delco Remy over component for hybrid electric vehicles.

By Overhauser Law Offices, LLC

Chicago, IL– Intellectual property attorneys for Italian company Tecnomatic have filed a lawsuit in the Northern District of Illinois making patent ownership, trademark infringement and other claims against automotive part company Delco Remy of Pendleton, Indiana as well as Delco Remy of Mexico and other parties. The technology at issue is High Voltage Hairpin stator winding technology that is a component of electric motors for hybrid electric vehicles. Tecnomatic alleges that it shared its technology in anticipation of a possible joint venture and that Remy breached confidentiality agreements made as part of that proposal. Tecnomatic further alleges that Remy used its confidential technology to gain business and federal grants and attempted to file patent applications with the US Patent Office without crediting Tecnomatic as inventors.
Continue reading

February 4, 2011

Dion Designs sues Allwin Powersports, et.al. for Copyright, Trademark Infringement and Misappropriation of Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, IN – Copyright lawyers for Dion Designs of Quebec, Canada have filed an infringement suit against Allwin Powersports, Corporation, Inc., Arthur Liao, MHR Helmet Co., Ltd., Foshan Shunde Fengxing Helmets, Ltd., and Jiangmen Pengcheng Helmets, Ltd. Plaintiff Dion claims he is a famous designer of helmets, who signed an agreement in 2005 with the Defendants to receive $0.50 for each helmet sold using Dion’s deigns. Defendants paid Dion for some helmets, but terminated the agreement around 2010. However, Dion claims that Defendants used some of Dion’s latest designs to make several new helmets. While some of these designs have been marketed by the Defendants in Europe, Dion fears that they will be offered in the US at the Dealer Expo 2011 on February 18 – 20, 2011 in Indianapolis. Dion claims that he filed copyright applications and design patent applications on his designs, although none of those applications has resulted in a registration or issued patent.

The complaint asserts a veritable “kitchen sink” of claims, such as a Lanham Act claim based on a misrepresentation that Defendants have “authority to import and sell such products, without disclosing the absence of a valid license or agreement with the designer.” Claims are also alleged for copyright infringement, trade secret misappropriation, breach of contract, conversion, unfair competition, and for declaratory relief. Dion’s complaint is also accompanied by a Motion for Preliminary Injunction seeking to bar the “displaying or promoting” of the allegedly infringing helmets at the Dealer Expo on February 18-20, 2011, or on the Internet.

Practice Note: The Plaintiffs’ complaint appears to have several inconsistencies. The Lanham Act claim based on a “failure to disclose” is highly unusual; normally, a Lanham Act claim is predicated on an overt misrepresentation as to source. Although Dion states that the Defendants’ claim that the helmets were “designed in Europe” is false, even if this is the case, it is hard to see how the Plaintiff is harmed, especially since the complaint states that “Dion’s plans to make commercial use of those designs have been placed on hold.” The copyright infringement claim is suspect because, as discussed elsewhere on this site, the Plaintiffs did not obtain a copyright registration before filing a suit. Also, to support the trade secret misappropriation claim, the plaintiff claims that his designs “derive substantial commercial value from not being generally known.” However, even if the Plaintiffs’ designs were once “not generally known,” they certainly are now since the Plaintiff: (a) attached them to his complaint, (b) filed them with the US Copyright Office, and because (c) the designs are alleged to been sold in Europe for some time. Dion’s claim for “conversion” also appears to be preempted by the Copyright Act. Finally, it seems that Dion will have difficulty establishing the “irreparable harm” factor necessary to obtain preliminary injunctive relief, since his predominant complaint is that he has not received his $0.50 per royalty license fee.