Indiana Intellectual Property Law News
Fort Wayne, Indiana – Attorneys for Plaintiff, Super 8 Worldwide, Inc. (“Super 8”) of Parsippany, New Jersey filed suit in the Northern District of Indiana alleging that Defendants, Harvee Properties, LLC (“Harvee”) and Paresh Patel (“Patel”), both of Auburn, Indiana, infringed its rights in United States Trademark Registration Numbers 1602723 for the mark SUPER 8, 3610108 for the mark SUPER 8 & Design (b/w), 3610109 for the mark SUPER 8 & Design (Color), 1951982 for the mark SUPER 8 HOTEL & Plaque Design, and 1128057 for the mark SUPER 8 MOTEL & Design. Super 8 is seeking preliminary and permanent injunction, direct damages, indirect damages, consequential damages, special damages, costs, actual damages, punitive damages, pre-judgment interest, actual costs, and attorney’s fees.
The Complaint asserts that Super 8 is a widely known provider for guest lodging services and that it first used the SUPER 8 MOTEL mark in 1973. Super 8 claims that pursuant to 15 U.S.C. § 1065, all of the marks at issue in this case (the “Super 8 Marks”) have achieved incontestable status. Per the complaint, Super 8 franchises its guest lodging services and allows its franchisees to utilize the Super 8 Marks to promote its brand and allow consumers to identify the origin of its services.
Super 8 claims it entered into a franchise agreement on March 31, 2017 with Amrex Receivers, LLC (“Amrex”) for Amrex to operate a Super 8 facility for twenty years in Auburn, Indiana. The Complaint alleges that Amrex terminated the franchise agreement on December 4, 2017. On or about December 29, 2017, Super 8 claims it sent a letter acknowledging the termination and informing Amrex that it must immediately discontinue use of the Super 8 Marks and remove any items from the premises bearing any Super 8 mark within ten days of receiving the letter.
Upon information and belief, Super 8 believes Amrex lost possession of the lodging facility and that on or about March 14, 2018, Harvee and Patel obtained possession of it. The Complaint alleges that Harvee and Patel have continued utilizing the Super 8 Marks to induce guests to stay at their facility even after receiving a cease and desist letters from Super 8 on or about September 14, 2018 and October 18, 2018. Harvee and Patel have also allegedly refused Super 8’s attempts to remove all signage from the facility bearing the Super 8 Marks.
Super 8 first claims service mark infringement pursuant to 15 U.S.C. § 1114. Second, Super 8 claims false designation of origin under 15 U.S.C. § 1125. Third, Super 8 is claiming Harvee and Patel are using counterfeit Super 8 Marks pursuant to 15 U.S.C. § 1114(1)(a). Next, Super 8 is claiming trademark infringement in violation of Ind. Code § 24-2-1-13.5. Finally, Super 8 alleges unfair competition and damages pursuant to Ind. Code §§§ 24-2-1-2, 24-2-1-13, and 24-2-1-13.5.
The case was assigned to Chief Judge Theresa L. Springmann and Magistrate Judge Susan L. Collins in the Northern District and assigned Case 1:19−cv−00145-TLS-SLC.