Indiana Intellectual Property Law News

June 27, 2012

APP Press Sues Apress Media for Declaration of Non- Infringement of Trademark “App Press”

Indianapolis; IN – Trademark attorneys for App Press, LLC of Indianapolis, Indiana filed a declaratory judgment suit seeking a declaration that it is not infringing the trademarks of Apress Media, LLC of New York, New York.

App Press, LLC brings action against Apress Media, LLC in order to protect the right to use and continue to conduct business under the registered trademark, and asserts that use of the mark for App Press does not infringe on any trademark held by Apress. App Press is a company that creates, owns, and licenses the use of web-based software that allows consumers to create apps that can be used on mobile devices. According to the Complaint, App Press applied for trademark registration on January 7, 2011 and was registered by the United State Patent and Trademark Office on August 9, 2011. During this period, the trademark was open to opposition on May 24, 2011. Apress Media is a publishing company that edits, publishes and sells books with the focus on technological issues and how-to advice. Apress Media applied for trademark registration on May 7, 2010 and was registered on March 8, 2011. According to App Press, on August 15, 2011, Apress Media sent a cease and desist letter demanding App Press immediately stop the use of their trademark alleging that it infringed on the trademark of Apress and constituted trademark infringement, unfair competition, cyberpiracy and dilution. App Press claims that they forwarded the letter to their counsel who contacted Apress Media’s counsel by phone. Almost two weeks passed that counsel for both parties went back and forth via telephone before they were able to confer regarding the issues set forth in the letter in which App Press agreed and sent a letter describing their product and why it was not infringing on Apress Media’s trademark. Approximately eight months later, on May 8, 2012, Apress again contacted App Press and again asserted that App Press’s use of the App Press trademark was infringing on the Apress trademark. Counsel for App Press has filed the Complaint for declaratory relief and to obtain declaration that App Press’s use of their trademark does not infringe upon any trademarks owned by Apress Media.

Practice Tip: The remedy of declaratory judgment is found in 28 U.S.C.A. § 2201 and allows for any US court to declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.
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June 26, 2012

Dillinger Sues Pour House on Lincoln for Trademark Infringement of PUBLIC ENEMY

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark attorneys for Dillinger, LLC of Mooresville, Indiana filed a complaint for injunctive relief and damages in alleging The Pour House on Lincoln, Inc. d/b/a Dillinger’s Chicago Bar & Grill, Inc. of Chicago, Illinois infringed trademark registration nos. 3,483,359 for the mark DILLINGER’S and no. 4,091,160 for the mark PUBLIC ENEMY which have been registered by the US Trademark Office.

Dillinger, LLC is owned and operated by Jeff Scalf and, according to the Complaint, is the descendant of gentleman bandit John Dillinger. Dillinger, LLC owns numerous trademark registrations for DILLINGER, JOHN DILLINGER, PUBLIC ENEMIES, and many other trademarks related to the life of John Dillinger. Dillinger, LLC is also the owner of all rights, title, and interest to both DILLINGER’S and PUBLIC ENEMIES and both marks have been used in interstate commerce in connection with restaurant and bar services as early as 2002. According to the Complaint, Dillinger, LLC has never authorized The Pour House on Lincoln d/b/a Dillinger’s Chicago Bar & Grill to use the DILLINGER or PUBLIC ENEMIES marks in any way and also alleges that in July 2010 it came to their attention that the Defendants were operating a restaurant using the DILLINGER and PUBLIC ENEMIES trademarks. Upon their knowledge of the trademark usage, Dillinger, LLC alleges that The Pour House was contacted about the infringement and in August of the same year they traveled to Indianapolis for the purpose of obtaining a license for the use of the trademarks. The Complaint states that an oral agreement was reached and reduced to writing, but never executed and yet The Pour House willfully continued its infringing usage of the DILLINGER and PUBLIC ENEMIES trademarks, specifically on their website, food and drink menus and the menus posted on the storefront. Dillinger, LLC asserts five counts for the violations of the defendants, including demand for preliminary and permanent injunction; federal trademark infringement; cybersquatting; false designation of origin, false descriptions and unfair competition; and dilution by blurring. In order to avoid any irreparable harm from the loss of reputation the DILLINGER names could suffer as a result of the unauthorized use of the trademarks and the accrual thereof, Dillinger, LLC is seeking to permanently enjoin The Pour House from using the DILLINGER and PUBLIC ENEMIES trademarks or inducing such belief, actual damages suffered as a result of the alleged trademark violations, statutory and exemplary damages, and the profits derived from the infringing activities.

Practice Tip: U.S.C. title 15, chapter 22 governs trademarks, and §1117 specifically details the relief which can be granted as a result of trademark violation.
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June 5, 2012

Trademark to Colt’s Luck Jersey? Recent Trademark Infringement Case over Tim Tebow Products Illustrates Issues

By Overhauser Law Offices, LLC

New York, NY – The Southern District of New York recently issued an injunction in a case involving the trademark rights to NFL player Tim Tebow’s name and jersey. Trademark attorneys for Nike, Inc of Beaverton, Oregon, had filed a Trademark infringement lawsuit in the Southern District of New York alleging that Reebok, International Ltd of Canton, Massachusetts infringed Tebow’s trademarks by producing and selling jerseys and other products bearing the Tebow marks. The complaint stated that Nike had an exclusive license to produce Tebow products bearing the Tebow marks. The complaint alleges that following the Denver Bronco’s trade of Tebow to the New York Jets, Reebok tried to take advantage of the high demand for Tebow’s Jets jersey by offering and selling unlicensed Tebow products.

On April 9, 2012, the court approved a final judgment that recognized Nike, Inc. was awarded the sole rights to the license–including the manufacture, distribution, and sale–of Tim Tebow merchandise, retroactive February 28, 2012, affiliated with the New York Jets. The court order defined Unauthorized Tebow Product as “an NFL-related jersey or t-shirt product sold or distributed by, manufactured by or for, or in the possession or control of Defendant Reebok International Ltd. . . . with the name Tebow affixed to the product after February 28, 2012.” The definition specifically targets any Tebow merchandise produced with his new team, the New York Jets. The terms of the court order issued prohibit Reebok from manufacturing, selling, donating, advertising or permitting any other individual or entity to do the an Unauthorized Tebow Product. Reebok was further ordered to repurchase or recall any existing Tebow merchandise already in distribution that was made after February 28, 2012.

Practice Tip: It will be interesting to see how valuable the trademark rights to number one draft pick Andrew Luck‘s jersey and his new affiliation with the Indianapolis Colts will become. Nike argued that the Tebow trademark was particularly valuable because of his high profile. He was already a prize at Stanford, and with his contract with the Colts, the trademark rights could be very valuable.

May 30, 2012

Tower Reinforcement Sues Crown Castle International for Patent Infringement of TOWER REINFORCEMENT APPARATUS AND METHOD

By Overhauser Law Offices, LLC

Indianapolis; IN – Patent attorneys for Tower Reinforcement of Newburgh, Indiana filed a patent infringement suit in the Southern District of Indiana alleging Crown Castle International and Crown Castle Operating of Houston, Texas, and Aero Solutions, LLC of Boulder, Colorado infringed patent no.7,849,659, TOWER REINFORCEMENT APPARATUS AND METHOD, which has been issued by the US Patent Office.

Both the Crown Defendants and Aero Solutions are incorporated outside of Indiana, but the complaint alleges they maintain substantial contacts with Indiana by regularly conducting business in the state. Tower alleges patent infringement of three of their patents–“the ‘659 patent,” “the ‘972 patent,” and “the ‘712 patent”–to which Tower owns all the rights and interest. According to Tower’s complaint, the Defendants had actual notice of the Tower patents and still infringed on the patents through their making, using, selling and the offer of sale of products utilizing Tower’s patented technology. Tower asserts that the Defendants also encourage the design and construction of the protected patents, their actions being willful and deliberate. The complaint does not give many details about specific acts of infringement. Tower alleges they have, and will continue to, suffer substantial and irreparable financial loss and is therefore seeking to permanently enjoin the Defendants from their infringing activities of their ‘659, ‘972, and ‘712 patents.

Practice Tip: The US Patent laws applicable to this suit are 35 U.S.C. §§ 1, et seq. Specifically, 28 U.S.C. §§ 1338(a) gives district courts jurisdiction in any civil action relating to patents.

May 29, 2012

Northern District Court Dismisses Copyright Infringement Claim in Suit Over RV Sales Agreement and Design

By Overhauser Law Offices, LLC

Fort Wayne; IN – The Northern District of Indiana has granted a partial summary judgment for Forks RV of Shipshewana, Indiana that dismisses copyright infringement claims in a dispute over a recreational vehicle sales agreement and design. Copyright attorneys for Amy and James Ortega had filed a lawsuit against Forks RV of Shipshewana, Indiana alleging that Fork breached a sales distribution agreement and also alleged copyright infringement over Fork’s use of Ortega’s designs for a custom RV. The court summarily dismissed the copyright infringement claim because Ortega had not registered his designs with the U.S. Copyright Office. The court noted “The Copyright Act states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a).

The court, however, denied summary judgment on the breach of contract claim relating to the distribution and/or sales agreement. The court found that there was a genuine dispute of material fact, and therefore, summary judgment would be inappropriate.

Practice Tip: Copyright attorneys for Fork had requested attorney’s fees in defending the copyright infringement claim. The court granted this request, noting that . There is a strong presumption that the “prevailing party” in a copyright infringement case is entitled to recover attorney’s fees in the 7th Circuit, and that a copyright registration must be obtained before pursing an infringement claim (in most instances). Thus, plaintiffs must take care to register their copyrights before filing a copyright infringement suit, at the peril of being liable for the defendant’s attorney’s fees.

May 25, 2012

Norco Industries, Inc. Sues Mito Corporation For Patent Infringement of Roof Bow

By Overhauser Law Offices, LLC

Indianapolis; IN – Patent attorneys for Norco Industries, Inc. of Elkhart, Indiana filed a patent infringement in the Southern District of Indianaalleging Mito Corporation of Elkhart, Indiana infringed patent no. D650,723 ROOF BOW, which has been issued by the US Patent Office.

The patented technology was invented by Bernard F. Garceau and Robert G. Chew, but the complaint states the patent was owned by Norco during the period of alleged infringement. The ‘723 patent was issued in December 2011. The complaint seeks an injunction, damages, attorney fees and costs.

Practice Tip: The complaint makes only a barebones statement regarding the patent infringement: it simply states Mito is infringing the patent by “making, selling and using roof bows that embody the patented invention.”

May 23, 2012

Mortar Net USA LTD Sues Keene Building Products Company For Trademark Infringement of Dovetail Shaped Mesh for Masonry

By Overhauser Law Offices, LLC

Hammond; IN – Trademark attorneys for Mortar Net of Burns Harbor, Indiana filed a trademark infringement suit in alleging Keene Building Products of Mayfield Heights, Ohio infringed trademark registration nos. 3,571,383 and 3,571,384, which have been registered with the US Trademark Office.

Mortar designs and sells construction products and building materials. One of its products is called Mortar Net and has been sold by the company since 1993 for use in masonry. The mark in question is associated with the Mortar Net product. The Mortar Net’s dovetail shape has industry recognition, and the shape has been registered as a trademark. The complaint alleges that Keene is offering products for sale that infringe Mortar’s trademarks on Keene’s website. Keene’s allegedly infringing product is called Keystone. The complaint makes claims of trademark infringement, trade dress infringement, false designation of origin, and unfair competition. Mortar seeks an injunction, an order requiring the destruction of all of Keene’s keystone products, damages, attorney fees and costs.

Practice Tip: The trademarked image is simply a black colored shape. It doesn’t seem to indicate any particular brand or product. There are likely issues about whether the trademark of the shape can be validly enforced.

May 21, 2012

The Mainstreet Collection, Inc. Sues Main Street Collection, LLC for Trademark Infringement of MAINSTREET COLLECTION MARK

By Overhauser Law Offices, LLC

Indianapolis; IN – Trademark attorneys for Mainstreet Collection of Washington, North Carolina filed a trademark infringement suit in the Southern District of Indiana alleging that Main Street Collection, LLC and Melissa Card of Fishers, Indiana infringed trademark registration no. 4,034,192 for the mark MSC MAINSTREET COLLECTION registered by the US Trademark Office.

The complaint states that the plaintiff is a successful gift product company that sells crafts, kitchenware, handbags and other gift items at over 6000 gift shops such as Hallmark®. The plaintiff also maintains a website at www.gowhimsey.com and a facebook page. The plaintiff states it has used the MSC mark at issue since at least 2000. The complaint alleges that the defendants also sell gift items. The complaint states that the defendants maintain a website at www.themainstreetcollection.com that utilizes a mark MAINSTREET COLLECTION that is very similar to the plaintiff’s. The complaint states that the plaintiff attempted to have the defendants transfer www.themainstreetcollection.com domain name to the plaintiff, but the defendants refused. The complaint states that customers have been contacting the defendants who are actually seeking to do business with the plaintiff. The complaint makes claims of trademark infringement and cybersquatting and seeks an injunction, damages, transfer of the www.themainstreetcollection.com domain name, attorney fees and costs.

Practice Tip: The claim of trademark infringement here is based entirely on maintaining a website. As we have previously blogged, it can be difficult to obtain personal jurisdiction when basing a claim solely on web presence. The plaintiff here, however, has avoided is issue by filing suit in the defendants’ home jurisdiction.

May 17, 2012

Southern District Lifts Stay on Patent Infringement Suit Against Google and Grants One Number Corporation’s Motion To Amend Complaint

By Overhauser Law Offices, LLC

Indianapolis, IN – The Southern District of Indiana has lifted a stay on a patent infringement case against Google and allowed the plaintiff, One Number Corp. Motion to amend its complaint. Patent attorneys for One Number Corp. of Anderson, Indiana had filed a patent infringement lawsuit in the Southern District of Indiana alleging that Google of Mountain View, California infringed patent no. 7,680,256 and 8,107,603, CONTACT NUMBER ENCAPSULATION SYSTEM, which has been issued by the US Patent Office.

The litigation was stayed while the US Patent Office re-examined the patents at issue. One Number had motioned the court to remove the stay because a substantial portion of the re-examination process has concluded. Google opposed lifting the stay because there was chance that the Federal Circuit Court would reverse the Board of Patent Appeals and Interferences’ conclusions. The court concluded that the stay should be lifted and granted One Number’s motion to amend their compliant. The parties were ordered to submit a case management plan within 14 days.

Practice Tip: It is common for patent infringement litigation to be stayed when the US Patent Office is re-examining the patent, although the district court is not required to stay the litigation. Each claim of a patent is presumed to be valid and enforceable, even if the patent is being re-examined. The US Patent Office offers this FAQ sheet that explains the re-examination process.

May 10, 2012

Southern District Grants Preliminary Injunction for American Petroleum Institute in Trademark Infringement Suit Over API Logo

By Overhauser Law Offices, LLC

Indianapolis; IN – Judge Tanya Walton Pratt of the Southern District of Indiana has issued a preliminary injunction enjoining Tailor Made Oil Company of Cambridge City, Indiana, TM Oil, LLC of Fishers, Indiana, Circle Town Oil of Fishers, Indiana, et al from infringing trade names API and AMERICAN PETROLEUM INSTITUTE and trademark registration nos. 1,864,428, 1,868,779 and 1,872,999, which have been registered with the US Trademark Office by the American Petroleum Institute (API) of Washington, DC.

Trademark lawyers for American Petroleum Institute (“API”) of Washington, D.C. filed a trademark infringement suit in alleging Tailor Made Oil Co., LLC of Cambridge City, Indiana, TMO Oil, LLC of Fishers, Indiana, Circle Town Oil of Fishers, Indiana, William R. Selkirk and Rebecca Selkirk of Cambridge City, Indiana, Lincoln R. Schneider of Fishers, Indiana and Jafarikal Corporation of Rosedale, New York infringed trademark. The complaint alleges that the individual defendants own and operate the corporate defendants as an interrelated business that offers low quality engine oil for sale. In March 2010, Tailor Made obtained certification for its engine oil, and a one year license to use the starburst mark on its products. In order to renew the one year license, Tailor Made was required to report its sales and to pay a renewal fee to API. Tailor Made failed to comply with these requirements and has continued to sell products bearing the trademarked starburst without authorization. We blogged about the case when it was filed.

The court’s order states that the defendants did not contest API’s motion for preliminary injunction. The parties submitted a joint proposed order, but did not agree on all aspects of the proposed order. The injunction ordered by the court prevents the defendants from registering or using any infringing marks. It also requires that the Jafarikal Corporation must notify API of its intent to distribute engine oil bearing the API marks and allow API to test any engine oil it distributes bearing the API marks.

Practice Tip: The order ordered that the defendants submit an affidavit of compliance within 10 business days of the injunction.