Indiana Intellectual Property Law News
Indianapolis, Indiana – Attorneys for Plaintiff, Alliant Specialty Insurance Services, Inc., of San Diego, California, filed suit in the Northern District of Indiana alleging that Defendant, Tribal-Care Insurance LLC of St. John, Indiana, has and continues to infringe its rights in the TribalCare trademark. Plaintiff is seeking an injunction, damages, statutory damages, costs, expenses, and attorneys’ fees in addition to other relief as the Court may deem just and proper.
The Plaintiff alleges that the TribalCare mark was first used in interstate commerce on or about May 24, 2010 by HealthSmart Holdings, Inc. The mark was registered on November 29, 2011 as United States Trademark Registration No. 4,062,744. Just before the mark was officially registered, on or about October 7, 2011,
HealthSmart and Alliant came to an agreement that would allow Alliant to use the TribalCare trademark.
According to Alliant, HealthSmart learned of the Defendant’s use of the mark “Tribal-Care” in late 2015 or early 2016. After HealthSmart discovered the allegedly infringing use, they sent a cease and desist letter to Tribal-Care on January 8, 2016. Defendant filed a petition to cancel HealthSmart’s registration in the United States Patent and Trademark Office before the Trademark Trial and Appeal Board on August 17, 2016. As a result, HealthSmart assigned the trademark rights in the TribalCare mark to Alliant so they could be substituted into the cancellation action for litigation.
Alliant contends that Defendant stated in their petition to cancel the TribalCare mark that there is a likelihood of confusion with the marks and that Alliant’s services are closely related to Tribal-Care’s services. Further, in response to interrogatories from that cancellation action, Tribal-Care stated that it began using its trade name as early as August of 2014, which is well after it HealthSmart first used their TribalCare mark in 2010. While Tribal-Care’s request for summary judgment in the cancellation proceeding was denied, Alliant failed to make a mandatory filing with the Patent and Trademark Office and the registration of the TribalCare mark was cancelled on July 6, 2018. As of August 27, 2018, Alliant filed two new federal trademark applications for the TribalCare mark.
Plaintiff’s first count of their Complaint alleges unfair competition and false advertising in violation of the Lanham Act Section 43(a). Further, Alliant claims the Defendant is liable for both common law trademark infringement and unfair competition. Due to the domain name “www.Tribal-Care.com”, Alliant claims that Tribal-Care is liable under Lanham Act Section 43(d) for using the domain name with the bad-faith intent to profit from the use of the domain name. Alliant also alleges that Tribal-Care is committing trade name infringement with the use of their name.
The final three counts of the Complaint allege criminal acts by the Defendant under the Indiana Code. First, Alliant alleges Tribal-Care has committed acts that constitute criminal deception under Indiana Code § 35-43-5-3. Plaintiff is also claiming Defendant has committed criminal conversion of the TribalCare mark under Indiana Code § 35-43-4-3. Finally, Alliant asserts the unauthorized and intentional use of its similar mark by Tribal-Care has risen to the level of criminal mischief under Indiana Code § 35-43-1-2.
The case was assigned to Senior Judge Joseph Van Bokkelen and Magistrate Judge John E. Martin in the Northern District and assigned Case 2:18-cv-00363-JVB-JEM.