Unfair Competition

January 4, 2019

Indiana Trademark Litigation: Indiana Pyrotechnics Company Sued for Trademark Infringement

South Bend, Indiana – Attorneys for Plaintiff, Jacob J. Dell, Individually, & d/b/a Magic in the Sky of Boerne, Texas, filed suit in the Northern District of Indiana alleging that Defendant, Miand, Inc. of LaPorte, Indiana, infringed its rights in United States Trademark Registration No. 5,184,437 for the mark MAGIC IN THE SKY (the “Mark”). Plaintiff is seeking actual damages, enhanced damages, attorneys’ fees, prejudgment and post-judgment interest, court costs, and any other relief the court deems proper.

Plaintiff owns and operates Magic in the Sky, a pyrotechnics company for which he has used the Mark since at least as early as March 24, 2001. Dell filed a U.S. trademark application on January 22, 2016 and the trademark was granted registration on April 18, 2017. The Defendant, in connection with their fireworks display services, uses the phrase “Sky Magic Pyrotechnics” (“Infringing Mark”).

Dell first learned of the Infringing Mark when a representative of Busch Gardens in Tampa, Florida asked if he was involved with the Defendant due to their use of “Sky Magic” on the internet. He informed Defendant of their infringing use in a cease and desist letter dated June 19, 2018. After he received no response, Dell sent a second letter to Defendant on September 7, 2018. Defendant has continued using the Infringing Mark and has not responded to either cease and desist letter.

Plaintiff is claiming trademark infringement under the Lanham Act. He is further seeking preliminary and permanent injunctive relief pursuant to 15 U.S.C. § 1116 and Defendant’s profits, actual damages, and costs of the action pursuant to 15 U.S.C. § 1117 for unfair competition under the Lanham Act.

January 2, 2019

Indiana Trademark Litigation: Inspire Commerce, Inc. Claims Enspire Commerce Infringed Its Trademark Rights

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Inspire Commerce, Inc. (“Inspire”) of Boulder County, Colorado, filed suit in the Southern District of Indiana alleging that Defendants, enVista, LLC, enVista Interactive Solutions, LLC d/b/a Enspire Commerce, and RetailPoint II, LLC d/b/a RetailPoint, all of Carmel, Indiana, infringed its rights in United States Trademark Registration Number 4,344,942. Plaintiff is seeking damages, injunctive relief, and other relief as the Court may deem just and proper.

Inspire provides services and products related to financial transaction processing for both storefronts and online retail stores. As early as April 24, 2008, Inspire began using its INSPIRE COMMERCE mark (the “Registered Mark”) for their financial transaction services and products. Plaintiff filed for registration with the USPTO for the Registered Mark on October 27, 2010, and was issued a Certificate of Registration for it on June 4, 2013. Inspire filed a Combined Declaration of Use and Incontestability with the USPTO on July 27, 2018. The USPTO accepted and acknowledged the Combined Declaration on August 4, 2018.

Plaintiff alleges Defendants began using their assumed name “ENSPIRE COMMERCE” on or about October 30, 2013. Defendant Interactive Solutions filed a Certificate of Assumed Business Name for Enspire Commerce on or about May 23, 2014. Inspire claims Defendants began using Enspire Commerce in connection with their system for managing transactions, processing, and payments for merchants and retailers. After April 19, 2018, the Interactive Solutions and RetailPoint social media pages were both taken down, their websites were removed, and their domain names began forwarding to an enVista website.

December 13, 2018

Indiana Trademark Litigation: LeSEA, Inc. of Indiana Sues LeSEA Broadcasting Corporation of Colorado

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiffs, LeSEA, Inc., Family Broadcasting Corporation (“FBC”), and LeSEA Global Feed the Hungry, Inc., all three Indiana non-profit corporations, filed suit in the Northern District of Indiana alleging that Defendants, LeSEA Broadcasting Corporation (“LBC”), a Colorado non-profit Corporation, Lester Sumrall of Bristol, Indiana, Dr. John W. Swails III of Tulsa, Oklahoma, and Edward Wassmer, Vice President of LBC, infringed its rights in United States Registration No. 2,206,912 for “LESEA GLOBAL FEED THE HUNGRY” and United States Registration No. 2,122,820 for “LESEA GLOBAL”. Plaintiff is seeking damages, litigation expenses, reasonable attorneys’ fees and costs.

LeSEA, Inc. was founded in 1957 by Dr. Lester Frank Sumrall, now deceased, and has been a Christian, non-profit operating a variety of ministries including a bookstore and a Bible college ever since. LeSEA Global oversees food and disaster relief efforts for LeSEA, Inc. and has delivered more than $200 million of food and supplies to hungry people around the world through generous donations. FBC, formerly known as LeSEA Broadcasting, operates television and radio stations along with a 24-hour prayer line, and other religious based programs.

According to the Plaintiffs, Defendant Lester Sumrall (“Lester”) has a false belief that he is the “rightful spiritual and legal heir” of LeSEA and based upon this belief, he has continually acted in an abusive, harassing manner towards LeSEA and his family members involved in the company. As such, Lester has attempted to interfere with LeSEA’s relationships with its lenders and clients, sought injunctions against it, and filed improper leans against LeSEA. Lester issued multiple press releases, utilizing the LeSEA registered marks, spreading false claims about LeSEA stating that it was under investigation by The Office of the Indiana Attorney General and that it had been mismanaged, which could endanger the organization’s tax-exempt status. Lester has also tried to interfere with the administration of multiple family members’ estates and even a family member’s divorce due to his false beliefs.

November 12, 2018

Indiana Trademark Litigation: Indiana University Sues Mid-America Publishing for Trademark Infringement

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, The Trustees of Indiana University of Bloomington, Indiana, filed suit in the Southern District of Indiana alleging that Defendants, Mid-America Publishing, Inc., of Spencer, Indiana and Terry R. Self of Spencer, Indiana, infringed its rights in United States Trademark Registration Numbers 1,713,815, 4,912,172, 1,705,521, 2,868,784, 1,728,274, and 4,925,141 (collectively the “IU Marks”). The IU Marks were all instituted at different times, the earliest of which were used as early as 1975, and have been continuously used to date. Indiana University advertises and promotes the IU Marks and has spent a substantial amount of money to make the IU Marks inherently distinctive and easily recognizable. Plaintiff is seeking injunctive relief, judgment including statutory damages, and attorneys’ fees.

As of the date of filing, Mid-America Publishing, Inc. (“Mid-America”) was and had been administratively dissolved since July 15, 2010, according to the Indiana Secretary of State. Mr. Self is the sole officer and owner of Mid-America and as such directs all acts of Mid-America including producing, promoting, and selling posters, calendars, cards, and other printed materials. Previously, Mid-America began selling a poster of the Indiana University (“IU”) Men’s Basketball team with a listing of the games for their upcoming season. These posters included one or more trademarks owned by IU. Mid-America would customize these posters for local companies for them to pass out to as free promotional items.

Up until April 2012, there was an informal understanding between IU and Mid-America regarding the posters and the use of their trademarks. The parties’ informal understanding was formalized in April of 2012 when they entered into a multi-year Marketing and Sponsorship Agreement. The use of the trademarks was non-exclusive and limited, and Mid-America agreed not to use any student-athlete’s name or likeness without advance written approval from IU’s Compliance Officer. Mid-America produced and sold the posters in accordance with this Agreement up until May 2, 2016 when IU informed Mid-America that it would not continue licensing to Mid-America. The term of the Agreement was extended by one year in which Mid-America was allowed to produce the poster for the 2016-2017 season, after it received approval for the artwork from IU.

While IU photographs its student-athletes for promoting its athletic programs and events, it has a policy to prohibit any profits being made from the use of a student-athlete’s name, image, or likeness by IU or any third party. IU filed an expedited application with the United States Copyright Office to register their 2017-2018 IU Student-Athlete Photographs on October 3, 2018. The application has been registered as VA0002121460, but a Certificate of Registration had not been received by the Plaintiff as of the filing of the Complaint.

On October 9, 2017, Mr. Self on behalf of Mid-America, submitted an Application for License Agreement to IU to use the IU Marks in producing the 2017-2018 Mid-America IU Basketball Poster. The Application did not request to use any student-athlete names or likenesses, and the Trademark License Agreement provided by IU for consideration did not contain any license for the same. Mid-America executed the Trademark License Agreement on October 28, 2017. IU did not execute the agreement as it learned that Mid-America was already selling unapproved 2017-2018 IU Basketball Posters including the IU Marks, IU Student-Athlete Photographs, and the names of the student-athletes. After numerous attempts to contact Mid-America to resolve the situation, IU contacted the printers that Mid-America fraudulently induced to print the unapproved posters. The printers ceased printing the posters, agreed to destroy any they had remaining in their possession, and gave a quantity for how many they had already printed and delivered to Mid-America.

Despite all of the communication that was ignored by Mid-America for the 2017-2018 IU Basketball Poster production, Mid-America began producing and offering for sale its 2018-2019 version on August 29, 2018. Further, they are producing a Hoops Hysteria Handbook, which includes the schedule of each Division 1 college in Indiana, including IU’s. The Handbook does contain IU Student-Athlete Photographs and is offered for “free” with each Mid-America IU Basketball Poster, but advertises may pay for their advertisement to be printed on the back for $0.20 per booklet. As such, IU is claiming, trademark infringement and counterfeiting, false and deceptive labeling, unfair competition, and copyright infringement.

October 25, 2018

Indiana-Based Heartland Consumer Products LLC Settles Trademark Lawsuit Against IHOP and Applebee’s Restaurants

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Heartland Consumer Products LLC and TC Heartland LLC (collectively “Heartland”), of Carmel, Indiana, filed suit in the Southern District of Indiana in April of 2017 alleging that Defendants, DineEquity, Inc., Applebee’s Franchisor LLC, Applebee’s Restaurants LLC, Applebee’s Services, Inc., International House of Pancakes, LLC, IHOP Franchisor LLC, IHOP Franchising LLC, and IHOP Franchise Company, LLC all of Glendale, California; infringed its rights in some or all of United States Trademark Registration Nos.: 1544079, 3346910; 4172135, 4165028, 4301712, 4172136, 4165029,4122311, 4187229, 4202774, 4230392, 4238101, 4106164, 4664653, and 4744600 (SPLENDA IP”). In addition, at the time they filed their Complaint, HEARTLAND was the owner of the following applications for United States Trademark Registration Serial Nos. 86865337, 87012521, and 87010504, two of which are still “LIVE” trademarks. The suit settled in October 2018.

SPLENDA® is a low-calorie sweetener using sucralose that is a compound made from sugar. With the FDA approving sucralose for use in food products and food preparations in 1998, SPLENDA® was at the forefront of the market coming out in 1999 and launching in retail stores across the United States in September 2000. SPLENDA® is well-known and famous for their yellow-colored packaging which has been used continuously since the brand began using that color.

Plaintiffs claimed that the Defendants misappropriated the SPLENDA IP to deceive consumers and were actually providing consumers with a lower-quality product from China. For instance, some people working at IHOP and Applebee’s restaurants would orally affirm to customers that the yellow packets provided did in fact contain SPLENDA ® even though they did not. Plaintiffs alleged in their Complaint trademark infringement, false designation of origin, unfair competition, and trademark dilution. They were seeking preliminary and permanent injunctive relief, corrective advertising damages, Defendant’s profits, and costs among other damages. The Parties have settled outside of court as of October 2018.

July 27, 2018

Indiana Trademark Litigation: Oakley Sues Indiana Company for Trademark Infringement and Dilution

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Oakley, Inc. of Foothill Ranch, California, filed suit in the Southern District of Indiana alleging that Defendants, Swami Property Sunman Inc., d/b/a Sunman BP of Sunman, Indiana, Chirag Patel, an individual, and Does 1-10 (collectively “Defendants”) infringed its rights in United States Trademarks as seen below:

Plaintiff is seeking judgment against Defendants, preliminary and permanent injunctions, punitive damages, attorneys’ fees, and investigatory fees.

Oakley has been a successful manufacturer and retailer of eyewear since at least 1985. During that time, they have acquired many trademarks including, but not limited to those pictured above (collectively, the “Oakley Marks”). Plaintiff has utilized the Oakley Marks to distinguish their high quality products from those of others and their consumers have come to recognize their distinct marks.

Plaintiff filed this action after discovering counterfeit products bearing infringing Oakley Marks were being offered for sale and/or sold at a gas station with a convenience store operating under the name of “SUNMAN BP.” It is Oakley’s belief that the Defendants are selling and offering for sale these counterfeit products with the intent that they will be mistaken for genuine high quality Oakley eyewear even though the Defendants are not licensees of Oakley nor have they been given the authority to use the Oakley Marks.

July 26, 2018

Indiana Trademark Litigation: Indiana Resident Sued by California Company over Professional Wrestling Trademark Infringement

By Overhauser Law Offices, LLC

Hammond, Indiana – Attorneys for Plaintiff, Lightning One, Inc. of Sherman Oaks, California, filed suit in the Northern District of Indiana alleging that Defendant, Nicholas P. Harmon of Lake Station, Indiana, infringed its rights in United States Trademark Registration Nos. 4375013 and 4349360 for NATIONAL WRESTLING ALLIANCE, and Trademark Registration No. 5418415 for the Logo associated with NATIONAL WRESTLING ALLIANCE. All of these registered marks will be referred to collectively as the “NWA Marks.” Plaintiff is seeking a permanent injunction, an accounting and judgment, treble damages, punitive damages, and costs including attorneys’ fees.

Lightning One has been involved in the professional wrestling world for seventy years with its NWA Marks being used in interstate commerce as early as 1948. They allege that not only do they have the rights in the federally registered trademarks, they also have strong common law rights based off their prior use. Plaintiff discovered that Harmon was posting videos and other social media content claiming to be “The Real NWA World’s Heavyweight Champion” and “The People’s NWA World’s Heavyweight Champion” in April 2018. Harmon also utilized a logo to promote his services that was allegedly intended to be confusingly similar with that of the registered NWA logo.

After discovering the infringing content, Lightning One sent Harmon a cease and desist letter. Instead of complying with the letter, Harmon posted his interactions with Lightning One on social media and continued using the NWA Marks. A further demand letter sent by Lightning One was also not complied with. In fact, Defendant made a Facebook post saying that he was intending on selling t-shirts using the mark N.W.A shortly after the letter. While he claims it was for his favorite rap group of the same initials, the background of this case seems to show differently.

June 11, 2018

Indiana Odor Removal Manufacturer Files Suit Alleging Trademark Infringement by Alabama Firm also Operating in Oklahoma

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Phocatox Technologies, LLC of Carmel, Indiana filed suit in the Southern District of Indiana alleging that Defendants, Jerry D. Wiersig of Foley, Alabama, Todd M. Hoffman of Edmond, Oklahoma, BioClean Remediation, LLC of Foley, Alabama, and BioClean Remediation, LLC of Edmond Oklahoma infringed the rights in United States Trademark Registration No. 3,351,509 for “BioSweep”. Plaintiff is seeking injunctive relief and judgment, including statutory damages and attorney’s fees.

Plaintiff operates under the business name “BioSweep” and manufactures and licenses odor removal and decontamination equipment. The name “BioSweep” is trademarked by the Plaintiff under registration No. 3,351,509.

May 4, 2018

Indiana Trademark Litigation: Indiana-Based Simon Property Sued Over Leggings Trademarks

By Overhauser Law Offices, LLC

Indianapolis, Indiana – Attorneys for Plaintiff, Muscle Flex, Inc. of Los Angeles, California filed suit in the Southern District of Indiana alleging that Defendants, Simon Property Group, L.P, and Simon Property Group, Inc., both Delaware corporations; Matt Murat Dagli, an individual who resides in Texas and owner of New Purple LLC, a Texas limited liability company, infringed its rights in United States Trademark Registration No. 4,188,135 for “WORLD OF LEGGINGS.” Plaintiff is seeking damages, judgment of infringement, an injunction on the Defendant’s use of the trademark, and recall and destruction of all infringing items.

Plaintiff is a California-based corporation that operates retail stores that specialize in women’s leggings and clothes. These items are marketed under the name “World of Leggings.” According to the complaint, the Plaintiff has invested considerable time and money into developing the World of Leggings brand.

April 30, 2018

Indiana Trademark Litigation: Indiana ATV Manufacturer ASW, LLC Sues Canada Company Over Trademarks

By Overhauser Law Offices, LLC

Fort Wayne, Indiana – Attorneys for Plaintiff, ASW, LLC of Columbia City, Indiana filed suit in the Northern District of Indiana alleging that Defendant, Frederick Bisson, of Edmonton, Alberta, Canada infringed its rights in United States Trademark Registration Numbers 3,556,429 for “American SportWorks”, and 5,138,550 for “American LandMaster”. Plaintiff is seeking damages, attorneys’ fees, costs and disbursements, pre-judgment and post-judgment interest, and all other relief just and proper.

Plaintiff is an Indiana-based manufacturer of recreational off-road vehicles, ATVs, UTVs, and go-karts. According to the complaint, Defendant is a Canadian citizen and the owner of the website www.americansportworksparts.com.