The US Trademark Office issued the following trademark registrations to persons and businesses in Indiana in May, 2013, based on applications filed by Indiana Trademark Attorneys:
| Reg. Number | Mark | Click to View | |
| 1 | 4332704 | IRIS | View |
| 2 | 4342755 | INTERACTION MOBILIZER | View |
| 3 | 4344545 | IDREADER | View |
| 4 | 4342700 | JOIN THE ASSASSIN NATION | View |
| 5 | 4342671 | RALSTON’S DRAFTHOUSE | View |
| 6 | 4342670 | View | |
| 7 | 4342628 | WHERE DATA MEETS DESIGN | View |
| 8 | 4342547 | View | |
| 9 | 4342402 | AIR DRIVE | View |
| 10 | 4342246 | ROCKREVOLT | View |
The US Patent Office issued the following 121 patent registrations to persons and businesses in Indiana in May, 2013, based on applications filed by Indiana Patent Attorneys:
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PAT. NO. |
Title |
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1 |
D683,434 |
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2 |
D683,432 |
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3 |
D683,431 |
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4 |
D683,430 |
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5 |
D683,429 |
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6 |
D683,428 |
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7 |
D683,350 |
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8 |
8,452,953 |
Insulin pump programming software for selectively modifying configuration data |
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9 |
8,452,570 |
Systems and apparatuses for testing blood glucose measurement engines |
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10 |
8,452,545 |
Evansville, Ind. — Trademark lawyers for XP Innovation, LLC d/b/a Dan’s Comp (“Dan’s Comp”) of Mt. Vernon, Ind. sued Ian Smith (“Smith”) of Massillon, Ohio alleging that he infringed various trademarks owned by Dan’s Comp, Registration Nos. 2,176,911, 2,176,580, 2,607,447, 3,853,112, 3,940,083, 3,957,948, 4,074,705 and 4,101,708, which have been registered with the U.S. Trademark Office.
Dan’s Comp owns and operates one of the world’s largest BMX bicycle stores. It also 
owns related trademarks registered in connection with sales of bicycles and bicycle-related goods. These marks include “Dan’s,” “Dan’s Competition,” “Dan’s BMX” and “high speed mail order.” Dan’s Comp also owns trademarks to “Dan’s Comp” with a lightning-bolt graphic and to the same lightning-bolt graphic and a similar lightning-bolt graphic as separate marks.
In its complaint, Dan’s Comp alleged that it uses its marks in connection with bicycles and bicycle-related goods and services in all fifty states, the District of Columbia, and throughout the world. It further claimed that it spends tens of thousands of dollars each year to advertise and promote the Dan’s Comp marks and the associated goods and services in the United States and throughout the world. It asserts that, as a result of its use of the Dan’s Comp marks, the marks have developed significant goodwill in the market.
This lawsuit pertains to an advertisement that Dan’s Comp claims that Smith placed on Facebook.com. The advertisement read “Free Bike From Dans [sic] Comp.” Users who clicked on the advertisement were redirected to a survey website, which was alleged to have been designed to appear as if it were affiliated with Dan’s Comp through the unauthorized use of the Dan’s Comp marks. Users were prompted to answer survey questions regarding their buying habits in relation to Dan’s Comp goods and services.
At the conclusion of the survey, users were prompted to enter their email addresses and mobile phone numbers. Immediately afterward, a text message containing an “offer” was sent to each user’s mobile number. Various offers included an “Amazing Facts Mobile Alert” for $9.99 per month and a membership to the “Mobile Tunez Club,” also for $9.99 per month. The text message also included a PIN number that was to be entered on the website addressed “http://surveysallday.com/bmx/winner.php” in a box on a page entitled “SCORE YOUR BIKE.” Apparently, entry of the four-digit pin would register the user for the service described in the text message. It is further claimed that no free bicycles were provided to any users. Allegedly, thousands of individuals entered their personal information on the survey website.
Washington, D.C. — Indiana inventors can now take advantage of new Patent Office procedure by having their patent attorneys file the appropriate paperwork. The USPTO launched the 
After Final Consideration Pilot 2.0 (AFCP 2.0) on May 19, 2013. Designed to be more efficient and effective than the AFCP, AFCP 2.0 is part of the USPTO’s on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders.
“Compact prosecution remains one of our top goals,” said Teresa Stanek Rea, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO. “As with the original AFCP pilot, the new AFCP 2.0 pilot allows additional flexibility for applicants and examiners to work together and provides even greater opportunity for communication after final than the original pilot.”
Like AFCP, AFCP 2.0 authorizes additional time for examiners to search and/or consider responses after final rejection. Under AFCP 2.0, examiners will also use the additional time to schedule and conduct an interview to discuss the results of their search and/or consideration with you, if your response does not place the application in condition for allowance. In this way, you will benefit from the additional search and consideration afforded by the pilot, even when the results do not lead to allowance.
In addition, the procedure for obtaining consideration under AFCP 2.0 has been revised. The revised procedure focuses the pilot on review of proposed claim amendments and allows the USPTO to better evaluate the pilot.
To be eligible for consideration under AFCP 2.0, Indiana patent applicants must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. A notice published in the Federal Register at 78 Fed. Reg. 29117 has a complete description of how to request consideration under AFCP 2.0. As was the case with the AFCP, examiners will continue to use their professional judgment to decide whether the response can be fully considered under AFCP 2.0. This will include determining whether any additional search is required and can be completed within the allotted time, in order to determine whether the application can be allowed.
South Bend, Ind. – Patent lawyers for Automated Products International, LLC (“API”) of LaGrange, Ind. sued alleging that Norco Industries, Inc. (“Norco”) of Elkhart, Ind. infringed 
Patent No. 7,134,711 (the “‘711 Patent”) which has been issued by the U.S. Patent Office.
The ‘711 Patent is directed to recreational-vehicle roof-support rafters. API alleges that Norco has been and is currently infringing the patent. API also asserts that through continuous marking of its products, it has provided “constructive notice of [Norco’s] infringement.”
API seeks a judgment declaring that Norco has infringed the ‘711 Patent; damages equal to at least a reasonable royalty; treble damages upon a finding of willful and deliberate infringement; attorneys’ fees upon a finding that the case is exceptional; and an injunction.
Practice Tip: The law of the “reasonable royalty” has been in transition recently. The “25% rule,” an approach that allocated 25% of the profits from an infringement to the patentee and the remaining 75% to the infringer, has been abandoned. Long used in federal courts to establish a reasonable royalty as compensation for patent infringement under § 284 of the Patent Act, it was rejected by the Federal Circuit in 2011. In its ruling in Uniloc v. Microsoft, the court held: “the 25 percent rule of thumb is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation. Evidence relying on the 25 percent rule of thumb is thus inadmissible under Daubert and the Federal Rules of Evidence, because it fails to tie a reasonable royalty base to the facts of the case at issue.”
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Indianapolis, Ind. — Copyright lawyers for Keystone Management Systems, Inc. f/k/a Keystone Builders Resource Group, Inc. (“Keystone Management”) and Lockridge Homes-Indianapolis, LLC (“Lockridge”), both of Richmond, Va., filed a copyright infringement lawsuit 
alleging William Clyde Moore, Jr. (“Moore”) and Carol Cooper (“Cooper”), d/b/a DrafTech, both of Indianapolis, Ind., infringed the copyrighted work “Birkshire II” (architectural work: 1-396-233; and technical drawings: VA 1-396-224), which is registered with the U.S. Copyright Office.
Keystone Management is in the business of creating, designing, producing, distributing and marketing original architectural working drawings, architectural works and related technical drawings (“the Keystone Designs”). Lockridge is in the business of constructing, marketing and selling distinctive single-family residential homes. Keystone Management has granted to Lockridge the right to use the Keystone Designs.
Moore allegedly asked to purchase one of the Keystone Designs but no agreement was reached. He also allegedly discussed various home plans with Lockridge for the purpose of constructing a single-family home on his property. As a part of this discussion, Lockridge provided Moore with a rendering of the floor plan for the Birkshire II design. Moore then allegedly provided these plans to Cooper for the purpose of constructing a home in the Birkshire II design. Construction is either underway or completed.
Keystone Management and Lockridge sued in the Southern District of Indiana. They list two counts in their complaint: copyright infringement and unjust enrichment. They seek an injunction; impoundment and destruction of any homes built from the Keystone Designs; for damages up to $150,000 for each infringement; costs and fees.
We have blogged about similar cases here, here and here.
Practice Tip #1: Copyright protection extends to any architectural work created on or after December 1, 1990, but architectural designs embodied in buildings constructed prior to that date are not eligible for copyright protection.
Practice Tip #2: The second claim, for unjust enrichment, is preempted by The Copyright Act.
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Indianapolis, Ind. — Intellectual property lawyers for J & J Sports Productions, Inc. (“J&J Sports”) of Campbell, Calif. have sued five Indianapolis restaurants and their owners in the Southern District of Indiana for illegally displaying the 2011 World Boxing Organization Welterweight 
Championship Fight.
J & J Sports was granted exclusive nationwide commercial rights to the closed-circuit distribution of the “Manny Pacquiao v. Shane Mosley, WBO World Welterweight Championship Fight” Program (“the Program”), which was telecast nationwide on Saturday, May 7, 2011.
In five separate but similar complaints, J&J Sports has alleged such wrongful acts as interception, reception, publication, divulgence, display, exhibition, and tortious conversion of the Program. The claims have been made both against the restaurants and as personal liability claims against the owners. The five restaurants that have been sued are: Fandango’s Night Club, La Favorita Mexican Restaurant, El Rey Del Taco Mexican Restaurant, Taqueria Night Club and Costa Brava Mexican Restaurant. Of these, at least one, Fandango’s Night Club, has been sued before under similar circumstances.
Each group of defendants has been accused of violating 47 U.S.C. § 605 and 47 U.S.C. § 553. Each complaint also lists a count of conversion. Among its assertions of wrongdoing, J&J Sports has alleged interception under 47 U.S.C. 605, which is a different cause of action from copyright infringement. The interception claim has a two-year statute of limitations, which explains why the complaints were filed on May 6, 2013.
The complaints seek statutory damages of $100,000 for each violation of 47 U.S.C. § 605; $10,000 for each violation of 47 U.S.C. § 553; $50,000 for each willful violation of 47 U.S.C. § 553; costs and attorney fees.
In 2011, J&J Sports filed 708 lawsuits. We have blogged before about J&J Sports here, here and here.
Practice Tip: All of these lawsuits were filed on the eve of the two-year anniversary of the program that the defendants are alleged to have illegally broadcast. When Congress passed the Cable Communication Act, a statute of limitations was not included. Some federal courts have determined that a two-year statute of limitation is appropriate while other federal courts have used a three-year statute of limitations.
Overhauser Law Offices, the publisher of this website, has represented several hundred persons and businesses accused of infringing satellite signals.
Washington D.C. — The U.S. Supreme Court has ruled that “patent exhaustion” does not bar an infringement claim against Indiana farmer Vernon Bowman for reproducing patented seeds by planting and harvesting second generation seeds without the patent holder’s permission. 
Bowman v. Monsanto Co., U.S., No 11-796, 5/13/2013. Monsanto produces and sells patented soybean seed that is genetically altered to resist its “RoundUp” herbicide. Bowman is a farmer who purchased soybean for planting from a grain elevator, expecting that most of the grain elevator soybean would be Monsanto’s herbicide-resistant soybean. In the subsequent patent infringement brought by Monsanto, Bowman argued that Monsanto’s sale of its seed that he ultimately purchased from the grain elevator exhausted any patent rights in the seed. The argument was rejected by both the District Court and the Federal Circuit, and the Supreme Court agreed to review the case.
Patent Exhaustion Only for Sold Article
Under the patent exhaustion doctrine, an authorized sale of a patented product cuts off the patent owner’s right to control of that product, because the sale of that product fulfills the patent law by providing a reward to the patentee. However, this limitation on patent rights applies only to the particular article sold. If the purchaser could make and sell endless copies, the patent would effectively protect just a single sale.
In this case, the patent exhaustion doctrine provides Bowman with the right to use the purchased product in several different ways without Monsanto’s permission, including resale, human consumption or animal consumption of the product. However, it does not permit Bowman to make additional patented soybeans without Monsanto’s permission.
Bowman contended that his use of the purchased seed was covered by the patent exhaustion doctrine because that is the normal way farmers use seed, and that Monsanto seeks an impermissible exception to the exhaustion doctrine for patented seeds and other self-replicating technologies.
The Court rejected the argument, pointing out that it is Bowman who seeks an unprecedented exception to the well-settled rule that the exhaustion doctrine does not extend to the right to make a new product.
Lafayette, Ind. — Purdue University students are creating and patenting products while pursuing their degrees. Purdue is celebrating the inventiveness of five of those students: Julia Alspaugh, Zachary Amodt, Sean Connell, Andrew Glassman and Anne Dye Zakrajsek.
Julia Alspaugh, a mechanical engineer in her second year as a master’s student, researches biomedicine. She says, “I see mechanical engineering as a broad field that analyzes the world’s processes and how the machinery and technology that makes them work can be simplified and improved.”
Julia is part of a large, interdisciplinary team seeking numerous patents related to the use of novel, resorbable biomaterials to create fixation devices for next-generation orthopedic devices, such as the plates, pins and screws used to set broken limbs or repair damaged tissues and joints.
“These devices would provide support while the bone and joint healed, for example, then degrade within a few years without leaving any foreign or potentially toxic materials in the body,” she explains. “It’s a similar concept to the dissolving stitches now used in many dental surgeries, but on a larger and more complex scale.”
For Julia, the most surprising thing she’s encountered in the patent process is unrelated to engineering or biomedicine. “Learning how to make sure what we are working on is novel and patentable has been more challenging than expected,” she says. “It may be an awesome new technology, but we also have to keep in mind its marketability. It requires communication between many different people with different interests and ways of doing things.”
Zachary Amodt dropped out of school to join the military after September 11, 2001. Ten years later, he returned and is now holding a provisional patent inspired by his experience as a combat medic in war zones all over the world.
Indianapolis, Ind. — The Indiana Court of Appeals has vacated a trial court’s judgment in favor of the LaPorte County Convention and Visitors Bureau (the “Bureau”) of LaPorte, Ind., holding that neither trademark infringement nor cybersquatting had been committed by Serenity Springs (“Serenity”) of LaPorte, Ind.
Serenity operates a resort in LaPorte County. The Bureau is a special-purpose governmental unit charged with representing the visitor industry by marketing to potential visitors to the LaPorte area.
On September 9, 2009, the Bureau announced at a public meeting that it planned to adopt the phrase “Visit Michigan City LaPorte” as its branding identifier for the area. A representative of Serenity was in attendance. Immediately afterward, an employee for Serenity registered the domain name “visitmichigancitylaporte.com” and set it up to redirect internet traffic to Serenity’s website.
The Bureau sent a cease-and-desist letter claiming trademark infringement and cybersquatting. Serenity responded that (1) it had registered and begun using the domain name before the Bureau had made any commercial use of it and (2) the designation was not protectable as a trademark because it was merely descriptive and had not acquired distinctiveness.
In April 2010, the Bureau filed an application with the Indiana Secretary of State to register “Visit Michigan City LaPorte” as a trademark under the Indiana Trademark Act. In its application, the Bureau indicated that it had first used the mark in commerce on September 9, 2009. The application was approved. Nonetheless, Serenity continued using the visitmichigancitylaporte.com domain name.
The Bureau sued Serenity in the LaPorte Superior Court alleging, inter alia, trademark infringement, cybersquatting and unfair competition by Serenity. The trial court permanently enjoined Serenity from using “Visit Michigan City LaPorte” and ordered the transfer of the domain name “visitmichigancitylaporte.com” to the Bureau.
Serenity appealed the trial court’s holding that it had committed trademark infringement and cybersquatting. The trial court had held that, due to the Bureau’s status as a governmental entity, it was entitled to a different application of trademark law. Specifically, it held that there was a lesser requirement for using the mark to acquire trademark rights.
The appellate court disagreed. It has long been held that the exclusive right to use a mark is acquired through adoption and use of the mark in commerce. The appellate court also held that this mark was clearly geographical in nature and that it was “difficult to conceive of a mark that falls more squarely within the category of geographically descriptive marks.” Geographically descriptive designations generally fall within the descriptive category; thus, to be protected, the must have acquire secondary meaning.
The trial court considered the entirety of the time that the Bureau had been using the mark in considering whether the Bureau had established secondary meaning. It found that such secondary meaning had been established. However, the correct test for secondary meaning is to evaluate whether secondary meaning had been established by the senior user immediately prior to the time and place that the junior user began to use the mark. As this was, on its face, entirely unsupported by evidence, the appellate court held that the trial court erred in its determination that the Bureau had acquired secondary meaning in the mark. The appellate court reversed the trial court’s judgment, holding that the Bureau had not established that it held a valid and protectable trademark in the designation “Visit Michigan City LaPorte.”
The appellate court did, however, point out that additional claims had been made by the Bureau which had not been reached by the trial court. One of the claims, unfair competition, does not require the existence of a protectable trademark. Instead, it is an open-ended category of torts designed to protect “commercial values.” The appellate court remanded with instructions to the trial court to vacate its judgment as to trademark infringement and cybersquatting and to adjudicate the Bureau’s remaining claims.
Practice Tip #1: While the Indiana Trademark Act and the Lanham Act have many similarities, the former does not provide all of the protections afforded by the latter. While the Lanham Act provides that federal registration of a mark provides prima facie evidence of its validity, the Indiana Trademark Act contains no such provisions. A certificate of registration with the Indiana Secretary of State is proof of registration only (although such a registration is necessary to support a claim of infringement under the Indiana Trademark Act).
Practice Tip #2: One wonders if the entirety of this litigation might have been avoided by taking one simple step: registering the domain name before making the public announcement.
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