Unfair Competition

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

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.

January 31, 2011

Noble Roman’s Sues Brabham Oil Alleging Trademark Infringement Over Use of Warmer Wrap

By Overhauser Law Offices, LLC

Indianapolis, IN –

A trademark attorney for Noble Roman’s, an Indianapolis-based pizza maker, has filed a trademark infringement lawsuit against Brabham Oil, a South Carolina corporation. The compliant, filed by Noble Roman’s lawyer, alleges that Brabham Oil formerly operated seven Noble Roman’s franchise locations. According to the complaint, Brabham continued to use Noble Roman’s trade dress, specifically the Warmer Wrap Trade Dress, after the franchise agreements terminated. The attorney for Noble Romans claims that Brabham Oil has violated the terms of the franchise agreements. The complaint makes claims of trademark infringement, under the Lanham Act, 15 U.S.C. § 1125(a) and the common law as well as unfair competition, citing 15 U.S.C. § 1125, and breach of the franchise contracts. Noble Romans seeks an injunction and damages. This case has been assigned to Judge Sarah Evans Barker and Magistrate Judge Debra McVicker Lynch of the Southern District of Indiana, and assigned case no. 1:11-cv-00135-SEB-DML.

Practice Tip: When a franchise agreement terminates, typically the franchisee must promptly cease using and return all signs and other equipment containing trademarks. Failure to do so may result in a lawsuit for breach of contract as well as trademark infringement. Noble Roman’s has been particularly aggressive in enforcing franchise agreements. Since 2007 it has filed the following suits in the Southern District of Indiana:

January 14, 2011

Osmundson Mfg. sues CFC Distributors, Inc. for Federal Trademark Infringement

By Overhauser Law Offices, LLC

Fort Wayne, IN -Trademark lawyers for Osmundson Mfg. Co. of Perry, IA have filed a trademark infringement suit against CFC Distributors, Inc., of Wabash County, IN for infringement of the mark TURBO, which has been registered by the US Trademark Office. The plaintiff claims that the defendant is selling similar products and is using the trademark in connection with the sale of its products. This case has been assigned to Judge Rudy Lozano and Magistrate Judge Roger Cosbey of the Northern District of Indiana, and assigned case no. 1:10-cv-00021-RL-RBC.

Because Overhauser Law Offices, the publisher of this blog represents a party in this case, a commentary about this case is not provided.

December 15, 2010

Coach, Inc. and Coach Services, Inc. sue Diggz Clothing LLC and Lori Harth for trademark and trade dress infringement

By Overhauser Law Offices, LLC

Lafayette, IN – Trademark lawyers for Coach, Inc. of New York, NY, and Coach Services, Inc. of Jacksonville, FL filed a trademark infringement suit alleging Diggz Clothing, LLC and Lori Harth of Lafayette, IN infringed various Coach trademark registrations which are registered with the US Trademark Office. Coach had sued Diggz in March 2010, then settled the suit for $6,500, and an agreement to stop selling “Accused Products.” However, the latest suit alleges that Diggz breached the settlement agreement, and re-asserts a variety of trademark, copyright, trade dress and unfair competition related claims.

Coach files many infringement suits, and a list of their earlier suits in Indiana in 2010 is at the end of this posting.
Continue reading

December 8, 2010

Operator of TravellersJoy.com Website Files Trademark Infringement, Dilution and Unfair Competition Complaint in Indiana Over Joyhoneymoon.com Website.

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Trademark infringement litigation attorneys for Travellers’ Joy, Inc. of Wilmingon, Delaware has filed an infringement suit against Haycco, LLC of California in the Southern District of Indiana.

The complaint alleges infringement of US registration nos. 3,560,502 and 3,718,357, which are for stylized logos of the word TRAVELLER’S JOY for gift registration services. The plaintiff operates the website www.travelersjoy.com and defendant runs http://joyhoneymoon.com. The complaint also alleges trademark dilution and unfair competition.