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Georgia IP Litigation: October 2015

BLOGS: Georgia IP Litigation

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Tuesday, October 20, 2015, 11:10 AM

Beaulieu Group Floored by Competitor Mohawk’s Application and Use of New Mark for Residential Carpet

On September 30, 2015, Beaulieu Group, LLC (“Beaulieu”), a Georgia Corporation, brought a trademark infringement action against Mohawk Carpet Distribution, Inc. (“Mohawk”), a Delaware corporation with a principal place of business in Calhoun, Georgia. The complaint asserts claims for trademark infringement, false designation of origin and unfair competition (state and federal).

According to the complaint, Beaulieu is a global company that manufactures and sells a wide variety of flooring products, including carpet, carpet tiles and luxury vinyl flooring. Part of Beaulieu’s residential carpet product line is marketed under its "Bliss by Beaulieu" brand, including its EverClean collection, which is the mark at issue in this complaint. Beaulieu owns the trademark BLISS BY BEAULIEU EVERCLEAN (U.S. Reg. No. 4,293,216) and has applied for the mark EVERCLEAN (collectively, “EVERCLEAN Marks”) and alleges that these marks are an integral part of the Beaulieu Bliss product line and overall brand identity.

On August 19, 2014, Mohawk sought to register the mark SMARTSTRAND FOREVER CLEAN (App. No. 86/370,536) on an intent-to-use basis. Shortly after, Beaulieu filed an Opposition Proceeding, which is pending, requesting that the TTAB deny Mohawk’s registration on the basis of its EVERCLEAN marks. Beaulieu alleges that Mohawk has since begun to use, and is currently using, the SMARTSTRAND FOREVER CLEAN mark, which it argues is an attempt to capitalize on Beaulieu’s goodwill and is further confusing to consumers.

Beaulieu’s argument is that the marks are not only substantially similar with the use of words “ever” and “clean”, but because the goods are in the same industry consumers will likely be deceived as to the association, or lack thereof, between the brands. Further, Beaulieu cites Mohawk’s advertising strategy as an additional layer of deception to consumers, as Mohawk states their carpet is “the perfect carpet for families with kids and pets” and Beaulieu has advertised their carpet as the “carpet pet owners love to love!” Consumer confusion is an issue for companies as they typically do not have quality control over the competitor’s product, even though they may be wrongly associated with that product.
Beaulieu demanded a jury trial and asked for a permanent injunction restraining Mohawk from using SMARTSTRAND FOREVER CLEAN or any similar mark, damages, including attorneys’ fees and costs, as well as punitive damages, to be increased three times the amount thereof and lastly, a preliminary injunction forbidding Mohawk from registering or attempting to register the SMARTSTRAND FOREVER CLEAN mark. Mohawk waived service of the complaint, and its answer is currently due on November 30, 2015.  
These competitors have another trademark infringement case pending, Beaulieu Group, LLC v. Mohawk Industries, Inc., No. 4:15-cv-00124-HLM (N.D. Ga.), which was filed in July of 2015.

This case is Beaulieu Group, LLC v. Mohawk Carpet Distribution, Inc., No. 4:15-cv-00184-HLM, filed 09/30/15 in the U.S. District Court for the Northern District of Georgia, Rome Division, and assigned to U.S. District Judge Harold L. Murphy.

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Tuesday, October 6, 2015, 4:40 PM

Hi-Tech Accuses Dynamic of Trademark Infringement and False Claims of Steroid Powered Products

On September 28, 2015, Hi-Tech Pharmaceuticals, Inc. (“Hi-Tech”), a Georgia corporation, brought a trademark infringement action against Dynamic Sports Nutrition, LLC d/b/a Anabolic Research (“Dynamic”), and Brian Clapp (“Clapp”) (collectively Dynamic and Clapp are referred to as “Defendants”).  The complaint asserts claims for trademark infringement, false designation of origin and unfair competition (state and federal), false advertising, deceptive trade practices, and Georgia RICO violations. 

Hi-Tech, according to the complaint, “is a producer of high quality dietary supplements, including numerous products designed for muscle and body building, such as testosterone boosters, muscle-gainers, muscle preservation products, and legal hormone boosters.”  The complaint relates to DIANABOL® - “a muscle preservation dietary supplement for consumers seeking to gain muscle.”  Hi-Tech owns the registration to this mark (U.S. Reg. No. 3,378,354).

Dynamic has sought a trademark for D-Anabol 25 (U.S.Serial No. 85/280,036), which was denied by the USPTO based on the DIANABOL® mark.  The below image pictures the products of the two companies side by side.
The Hi-Tech Complaint paints a comprehensive picture quoting the USPTO's Office Action denying registration in paragraphs 23 and 24:
Online literature and/or advertisements for applicant’s product [DSN’s D-ANABOL] demonstrate that applicant’s and registrant’s [Hi-Tech’s] goods are:  (1) marketed through the same channels; (2) directed to the same potential customers; and (3) even promoted as comparable competing products wherein they provide, in part, ‘If you are looking to buy Dinabol … online, our D-anabol 25 is exactly what you need. . . . The dominate feature of the applicant’s mark is nearly identical in appearance to registrant’s mark.  The letter I is merely replaced with a hyphen.
Hi-Tech cites a number of different websites used by Defendants to promote the product, including www.BuySteroids.com, www.Steroid.com, and www.RoidStore.com.  Communications between representatives of Hi-Tech and Clapp are referenced that illustrate, according to the complaint, a pattern of deception regarding Clapp’s relationship with Dynamic and his interest protecting intellectual property rights.  After Hi-Tech learned of Clapp’s relationship, the complaint asserts that Clapp asserted that D-ANABOL 25 had an earlier first use date and that Dynamic continued to use that mark even after the claimed misperception of first use date was straightened out.

In paragraphs 56 through 123, the complaint set forth detailed allegations of specific false advertising claims alleged to have been made by Dynamic, including the mischaracterization of ingredients used in Dynamic products and the effect of the disclosed ingredients.  It remains to be seen whether the opening foray in this litigation will be vigorously opposed or the suit will be quickly settled, as often occurs with trademark lawsuits.

The case is Hi-Tech Pharmaceuticals, Inc. v. Dynamic Sports LLC, et al., No. 1:15-cv-03393-MHC, filed 09/28/15 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and assigned to U.S. District Judge Mark H. Cohen.

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