UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF INDIANA

SOUTH BEND DIVISION

BARRINGTON MUSIC PRODUCTS, 

INC., )

)

Plaintiff, )

)

v. ) Cause No. 3:16-CV-6-RLM-MGG

)

MUSIC & ARTS CENTERS et al., )

)

Defendants. )

OPINION AND ORDER

Plaintiff Barrington Music Products, Inc. (“Barrington”) sues defendants 

Eastman Music Company, Guitar Center Stores, Inc., Music & Arts Centers, and

Woodwind and Brasswind Inc., for state and federal trademark infringement. The 

defendants moved for summary judgment asserting a laches defense. The court 

denies the defendants’ motion.

I. BACKGROUND

Guitar Center Stores, Inc. markets and sells musical instruments both at 

retail stores throughout the country and through a variety of online platforms. It 

owns and operates 150 Music & Arts brand retail stores throughout the country 

as well as more than 260 Guitar Center stores throughout the country.

Barrington doesn’t operate any retail locations and principally sells musical 

instruments through third-parties such as Amazon and Ebay.
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In 2010, Guitar Center was working on developing a new name for a brand 

of musical instruments to be produced by Eastman Music Company. Eastman is 

a well-known manufacturer of woodwind and brass musical instruments, 

including flutes that it sells under its Wm. S. Haynes brand name and 

saxophones sold under the Andreas Eastman brand name. Eastman instruments 

are played by many famous and well-known performers, such as Earth Wind & 

Fire and Bob Mintzer. After vetting several name possibilities with its trademark 

counsel, Guitar Center eventually settled on the name “Ventus” for its new line of 

musical instruments. Because Eastman, as the manufacturer, provided the 

necessary credibility for the new line of instruments, the instruments were 

marketed and sold as “Ventus by Eastman” and “Ventus by Wm. S. Haynes”. 

Prominent engraving on the instruments reinforced this co-branding, as did 

conspicuous branding on the carrying cases.

Guitar Center filed for trademark protection for “Ventus” on May 20, 2010 

under the goods and services designation of “Musical Instruments.” Its 

application was published for opposition on October 26, 2010. No opposition was 

filed and it was registered on the principal register on August 2, 2011. Barrington 

owns the trademark of “Vento,” which is registered with the goods and services 

denomination of musical instruments. Barrington filed for registration of “Vento”

on January 6, 2010. Barrington’s application was published for opposition on 

May 25, 2010, five days after Guitar Center had filed the “Ventus” mark. 

Barrington’s “Vento” was registered on the principal register on August 10, 2010. 
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Barrington’s mark has been used in commerce since May of 2009, achieving gross 

sales of a little less than $700,000. 

In March 2011, Guitar Center began using “Ventus” (in conjunction with 

“by Eastman” and “by Wm. S. Haynes”) in commerce. It marketed and sold flutes, 

trumpets, alto saxophones, tenor saxophones, and clarinets under the “Ventus 

by Eastman” name. From 2011 until the end of 2015, Guitar Center built the 

“Ventus” by Eastman/Wm. S. Haynes brand and achieved gross sales totaling 

about $5 million.

The parties dispute when Barrington was put on notice of the “Ventus” line.

Between 2011 and 2014, Guitar Center sold its “Ventus” products exclusively in 

Music & Arts retail stores—stores that were not located in Indiana or Michigan. 

The combined sales for 2011-2013 totaled less than $800,000. In 2014, Guitar 

Center dramatically expanded its “Ventus” sales, raising the annual sales to $1.4 

million. In 2015, Guitar Center began selling “Ventus” instruments online 

through its websites. Barrington contends that, while web sales have remained a 

small part of Guitar Center’s total sales, the sudden shift to the online 

marketplace in 2015 placed the “Ventus” mark squarely in competition with 

Barrington’s mark for the first time. Guitar Center argues that, had Barrington

notified it at or near the time it registered the “Ventus” mark, Guitar Center would 

have simply avoided a dispute and chosen another name. 

Barrington also says that it regularly reviewed internet and print catalogues 

and other music industry publications for the purposes of market research and 

policing its “Vento” marks from May 2009 until now. Barrington asserts that it
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first discovered that Guitar Center was advertising and selling musical 

instruments using the “Ventus” in November 2014. In February 2015, 

Barrington’s counsel sent a letter to Guitar Music demanding that it cease and 

desist its use of the “Ventus” mark. Barrington engaged in negotiations with 

Guitar Music, attempting to settle its trademark infringement claims. When those 

negotiations broke down, Barrington filed this lawsuit. 

All arguments relate to all the defendants, so in the interest of 

simplification, the court refers to all defendants as “Guitar Center” in the rest of 

this opinion.

II. STANDARD OF REVIEW

Summary judgment is appropriate when “the pleadings, depositions, 

answers to the interrogatories, and admissions on file, together with the 

affidavits, if any, show that there is no genuine issue of material fact and that the 

moving party is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(c). A 

genuine issue of material fact exists whenever “there is sufficient evidence 

favoring the nonmoving party for a jury to return a verdict for that party.” 

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). In deciding whether a 

genuine issue of material fact exists, “the evidence of the non-movant is to be 

believed, and all justifiable inferences are to be drawn in his favor.” Anderson v. 

Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); Weigle v. SPX Corp., 729 F.3d 724, 

730 (7th Cir. 2013). The existence of an alleged factual dispute, by itself, won’t 

defeat a summary judgment motion; “instead, the nonmovant must present 
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definite, competent evidence in rebuttal,” Parent v. Home Depot U.S.A., Inc., 694 

F.3d 919, 922 (7th Cir. 2012), and “must affirmatively demonstrate, by specific 

factual allegations, that there is a genuine issue of material fact that requires 

trial.” Hemsworth v. Quotesmith.com, Inc., 476 F.3d 487, 490 (7th Cir. 2007); 

see also FED. R. CIV. P. 56(e)(2). “[S]ummary judgment is ‘not a dress rehearsal or 

practice run; it is the put up or shut up moment in a lawsuit, when a party must 

show what evidence it has that would convince a trier of fact to accept its version 

of events.” Steen v. Myers, 486 F.3d 1017, 1022 (7th Cir. 2007) (quoting Hammel 

v. Eau Galle Cheese Factory, 407 F.3d 852, 859 (7th Cir. 2005)).

III. DISCUSSION

Guitar Center contends that the doctrine of laches bars Barrington’s 

claims, while Barrington contends that if the presumption of laches applies, the 

doctrine of progressive encroachment forgives the delay. Guitar Center also 

contends that the Lanham Act preempts Barrington’s state law passing off 

claim. 

A. Laches

When the evidence is viewed in the light most favorable to Barrington (the 

non-movant) the record doesn’t support the statutory presumption of laches at 

this stage of the proceedings. 

The doctrine of laches derives from the maxim that those who sleep on their 

rights, lose them. Chattanoga Mfg., Inc. v. Nike, Inc., 301 F.3d 789, 792 (7th Cir. 
6

2002) (citing Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 820 (7th Cir. 1999)).

To establish laches within the context of a trademark infringement claim, a 

defendant must show that “the plaintiff had knowledge of the defendant's use of 

an allegedly infringing mark . . . that the plaintiff inexcusably delayed in taking 

action with respect to the defendant's use, and that the defendant would be 

prejudiced by allowing the plaintiff to assert its rights at this time.” Chattanoga 

v. Nike, 301 F.3d at 792-793. 

A plaintiff must have actual or constructive notice of the defendant's 

activities. See Blue Ribbon Feed Co. v. Farmers Union Cent. Exch., Inc., 731 F.2d 

415, 419 (7th Cir.1984) (citations omitted); see also 6 McCarthy on Trademarks 

and Unfair Competition § 31:38 (5th ed. 2017). Of constructive notice, “the plaintiff 

is chargeable with such knowledge as he may have obtained upon inquiry, 

provided the facts already known by him were such as to put upon a man of 

ordinary intelligence the duty of inquiry.” Chattanoga v. Nike, 301 F.3d at 793 

(citing Johnston v. Standard Mining Co., 148 U.S. 360, 370 (1893)).

Guitar Center contends that the doctrine of laches bars Barrington’s claims 

because Barrington had constructive knowledge of the “Ventus” mark no later 

than August 2, 2011, when Guitar Center registered “Ventus” on the principal 

register. Under the Lanham Act, registration of a mark on the principal register 

shall be “constructive notice” of the registrant’s claim of ownership. See 15 U.S.C. 

§ 1072. The Lanham Act provides no applicable statute of limitations, but courts 

apply the period for analogous state law claims to determine whether the doctrine 

of laches bars a claim under the Lanham Act. See Hot Wax, Inc. v. Turtle Wax, 
7

Inc., 191 F.3d 813, 821 (7th Cir. 1999). Under Indiana law, the analogous statute 

of limitations for claims to personal property is two years. Ind. Code § 34-11-2-4; 

see e.g., Noble Roman’s Inc. v. Hattenhauer Distributing Co., No. 1:14-CV-1734-

WTL-DML, 2017 WL 747536, at *3–4 (S.D. Ind. Feb. 27, 2017). “Once the relevant 

state limitations period has run, an allegedly infringing party is entitle to a 

presumption that the doctrine of laches applies.” Wis. Cheese Group, Inc. v. V&V 

Superemo Foods, Inc., 537 F. Supp. 994, 1000 (W.D. Wis. 2008). Guitar Center 

asserts that because Barrington had constructive notice in 2011, Barrington 

delayed in bringing the present action more than double the time permitted by 

Indiana’s statute of limitations, giving rise to the presumption of laches.

Barrington denies it had constructive notice it acquired actual knowledge of 

Guitar Center’s use of “Ventus” in November 2014, and argues that Guitar 

Center’s registration of the “Ventus” mark didn’t provide constructive notice for 

purposes of laches. 15 U.S.C. § 1072 “is intended to protect against users of the 

registrant's trademark who might otherwise raise a defense of innocent 

misappropriation.” Mobile Anesthesiologists Chicago, LLC v. Anesthesia Assocs. 

of Houston Metroplex, P.A., 623 F.3d 440, 446 (7th Cir. 2010); accord, In re Int'l 

Flavors & Fragrances, Inc., 183 F.3d 1361, 1367 (Fed. Cir. 1999).

Barrington would have the better argument under 15 U.S.C. § 1072 as the 

senior user of “Vento,” to assert that Guitar Center—the junior user—had 

constructive knowledge of the senior mark. Consequently, Guitar Center’s use of 

15 U.S.C. § 1072 doesn’t provide a strong basis of constructive notice. Guitar 

Center points to nothing in the record to support a finding of constructive notice, 
8

other than proof that Guitar Center registered “Ventus” on the principal register. 

When the facts of record are viewed most favorably to Barrington, a genuine issue

exists as to when Barrington obtained constructive knowledge of the “Ventus”

mark.

If Guitar Center were successful in establishing the presumption of laches,

a trier of fact could reasonably infer that Barrington can rebut that presumption 

and excuse its delay under the doctrine of progressive encroachment. “Under this 

doctrine, where a defendant begins use of a trademark or trade dress in the 

market, and then directs its marketing or manufacturing efforts such that it is 

placed more squarely in competition with the plaintiff, the plaintiff's delay is 

excused.” Chattanoga v. Nike, 301 F.3d at 794 (citing Kason Ind. v. Component 

Hardware Group, 120 F.3d 1199, 1205 (11th Cir.1997)). The doctrine of 

progressive encroachment is relevant in assessing whether laches applies to bar 

a trademark claim. See id.

Barrington relies on Am. Eagle Outfitters, Inc. v. Am. Eagle Furniture, Inc.

to establish progressive encroachment. AE Outfitters had actual knowledge that 

the defendant American Eagle Furniture had applied to register its “AE Furniture” 

design mark in 2006, but was only using the “AE Furniture” mark for some 

furniture products sold out of its warehouse. Am. Eagle Outfitters, Inc. v. Am. 

Eagle Furniture, Inc., No. 11 C 02242, 2013 U.S. Dist. LEXIS 180912, at *41 (N.D. 

Ill. Dec. 27, 2013). Because the use of the mark was so limited, American Eagle

Outfitters “chose not to oppose the defendant’s registration and instead decided 

to wait and see whether the defendant’s mark created any confusion in the 
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marketplace.” Id. In 2009 and 2010, the defendant opened three retail stores using 

the name “American Eagle Furniture” in malls where American Eagle Outfitters 

already had retail stores. Am. Eagle v. Am. Eagle, U.S. Dist. LEXIS 180912, at 

*41-42. When American Eagle Outfitters sued in April 2011, American Eagle 

Furniture sought summary judgment on the issue of laches. The court rejected 

that claim, holding that the “sudden shift from operating a warehouse under a 

different name to opening three retail stores under the name American Eagle 

Furniture in malls where AE Outfitters was already operating its own retail stores 

is a prime example of progressive encroachment.” American Eagle v. American 

Eagle, U.S. Dist. LEXIS 180912, at *42 (citing Union Carbide Corp. v. Ever- Ready, 

Inc., 531 F.2d 366, 388-389 (7th Cir. 1976); Indep. Nail & Packing Co., Inc. v. 

Stronghold Screw Prods., Inc., 205 F.2d 921, 927 (7th Cir. 1953)).

Barrington contends that Guitar Center’s conduct is a “prime example” of 

what occurred in American Eagle. Between 2011 and 2014, Guitar Center only 

sold its “Ventus” products in its retail stores—stores that weren’t located in 

Indiana or Michigan. Guitar Center dramatically expanded its “Ventus” sales, 

raising the annual sales from $800,000 to $5 million from 2011-2015. Although 

Guitar Center began its use of “Ventus” in 2011, it placed the “Ventus” line 

squarely in competition with Barrington’s “Vento” line in 2015, when Guitar 

Center shifted from retail to online sales.

When Barrington learned about Guitar Center’s shift to the online 

marketplace, it hired a lawyer and sent a cease and desist letter. When 

negotiations fell through, Barrington contends that it promptly filed suit in 
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January 2016—a little more than a year after it learned of the infringement. So

even if Barrington learned Guitar Center was using “Ventus” in 2011, Barrington 

says, progressive encroachment justifies Barrington in waiting to pursue its 

claims until there was a real threat of confusion in the marketplace.

Guitar Center argues that progressive encroachment isn’t applicable 

because there is no evidence that Guitar Center redirected or expanded its 

business into different markets, and Guitar Center’s use of the internet and 

increase in sales was the “natural growth” of its existing business. To support 

this argument, Guitar Center cites persuasive authority from the Ninth Circuit1

and the western district of Wisconsin. The Wisconsin court held that “increased 

sales alone do not amount to progressive encroachment,” and rejected a plaintiff’s

contention that increased sales over a period of time “constitute a ‘classic 

illustration’ of progressive encroachment.” Wis. Cheese Group, Inc. v. V & V 

Supremo Foods, Inc., 537 F.Supp.2d 994, 1002 (W.D. Wis. 2008). 

A reasonable trier of fact could infer from this record that Guitar Center’s 

shift from brick and mortar to the online market placed the “Ventus” mark 

squarely in competition with the “Vento” mark, even though Guitar Center says

the shift was a minor one. That Barrington’s business is solely online makes the 

shift more significant than it would have been had Barrington sold in different

markets. Barrington’s “Vento” line has been in commerce since 2009, while

 1 See, e.g., Fitbug Ltd. v. Fitbit, Inc., 78 F.Supp. 3d 1180, 1190 (N.D. Cal. 2015). A “junior user’s growth of its 

existing business and the concomitant increase in its use of the mark do not constitute progressive encroachment.” 

Id. quoting Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass’n, 465 F.3d 1102, 1110 (9th Cir. 

2006). As the Ninth Circuit noted in Prudential Ins. Co. of Am. V. Gibralter Fin. Corp. of Cal., 694 F.2d 1150, 1154 

(9th Cir. 1982), “it is true that [defendant] has grown tremendously, but growth alone does not infringement make.” 
11

Guitar Center’s “Ventus” line was sold in stores from 2011 until 2015. A trier of 

fact could infer from this record that Guitar Center’s online sales of “Ventus”—a 

lucrative line of instruments—posed a threat to Barrington’s successful, yet less 

lucrative line of instruments. Guitar Center’s shift to online sales in 2015 creates 

a genuine dispute as to whether Barrington’s delay is reasonable under 

progressive encroachment. 

Lastly, if Barrington’s delay was unreasonable, a genuine issue exists as to 

whether the delay prejudiced the defendants. “A delay prejudices a defendant 

when the assertion of a claim available for some time would be inequitable in light 

of the delay in bringing that claim and ensues when a defendant has changed his 

position in a way that would not have occurred if the plaintiff had not delayed.”

Chattanoga v. Nike, 301 F.3d at 795; See Hot Wax v. Turtle Wax, 191 F.3d at 

824. Prejudice may be shown if the “plaintiff's unexcused [delay] caused the 

defendant to rely to its detriment and build up a valuable business around its 

trademark.” See id.; see also Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 

192 (2d Cir.1996); 5 McCarthy § 31:12, at pp. 31–36 to 31–37.

Prejudice is presumed when the delay is unreasonable and inexcusable. 

Baker Mfg. Co. v. Whitewater Mfg. Co., 430 F.2d 1008, 1012 (7th Cir. 1970). 

When a delay is lengthy, less proof of prejudice is required. See Hot Wax v. Turtle 

Wax, 191 F.3d at 824; Chattanoga v. Nike, 301 F.3d at 795; see also ABB 

Robotics, Inc. v. GMFanuc Robotics Corp., 52 F.3d 1062, 1065 (Fed. Cir.1995) 

(finding that "increasing sales" may alone constitute economic prejudice).
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Guitar Center argues that it would have chosen another name had 

Barrington given proper notice of infringement, and that Guitar Center is 

prejudiced because it spent “significant sums” building its brand and selling its 

product. Guitar Center contends that after getting Barrington’s cease and desist 

letter, it immediately ceased producing new instruments under the “Ventus”

name and began aggressively marketing and selling off all existing “Ventus”

inventory. Barrington’s actions have forced Guitar Center to spend money 

building and developing new lines of musical instruments.

It is plausible that Guitar Center was prejudiced, but that question is 

predicated upon whether Barrington’s delay was unreasonable. Although Guitar 

Center’s “Ventus” line experienced a significant increase in sales—from $1.4 

million in 2014 to $5 million in 2015—Barrington sent Guitar Center a cease and 

desist letter in November 2014, just as Guitar Center’s sales were increasing. 

Although Guitar Center contends it was “forced” to spend money developing a 

new line, it fared pretty well at the end of 2015. When viewing the evidence in the 

light most favorable to Barrington, the non-moving party, a genuine issue exists 

as to whether Guitar Center was prejudiced.

B. Preemption

In the alternative, Guitar Center argues that the Lanham Act bars Barrington’s 

state law claims, even if the laches defense fails. 15 U.S.C. § 1125(c)(6) provides:

The ownership by a person of a valid registration...on the principal 

register under this chapter shall be a complete bar to an action 

against that person, with respect to that mark, that:
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(A)(i) is brought by another person under the common law or 

statute of a State; and (ii) seeks to prevent dilution by blurring or 

dilution by tarnishment; or

(ii) asserts any claim of actual or likely damage or harm to the 

distinctiveness or reputation of a mark, label, or form of 

advertisement. 

15 U.S.C. § 1125(c)(6) (2017). 

Guitar Center asserts that Barrington’s state law “passing off” claim asserts a 

claim of dilution under the Indiana’s unfair competition doctrine. Burns Ind. Code 

Ann. § 24-2-1-13. Because “Ventus” is a registered trademark under the Lanham 

Act, Guitar Center contends the state-law claim is completely barred.

Although our court of appeals hasn’t addressed this issue, applying 15 U.S.C. 

§ 1125(c)(6) to Barrington’s common law claim is contingent upon Barrington’s 

success in cancelling Guitar Center’s “Ventus” mark under the Lanham Act. The 

Ninth Circuit addressed this very issue. “Defendant’s claim that [its mark’s] 

registration acts as a bar to plaintiff’s state law claim is misplaced because 

plaintiff’s counterclaim is for cancellation of the [mark’s] registration under 15 

U.S.C. § 1064. As such, if plaintiff can succeed in obtaining that cancellation, the 

bar to state unfair competition actions found in 15 U.S.C. § 1125(c)(6) will be 

inapplicable.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 635 (9th Cir. 2008).

Although not controlling authority, this dictum provides the court with 

persuasive guidance on how to proceed with this argument. Accordingly, 

Barrington’s outstanding claim under the Lanham Act must be resolved before 

the court can decide whether Barrington’s state-law claims are barred under 15 

U.S.C. § 1125(c)(6).
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IV. CONCLUSION

For the foregoing reasons, the court DENIES the defendants’ motion for 

summary judgment [Doc. No. 50].

SO ORDERED.

ENTERED: October 17, 2017

/s/ Robert L. Miller, Jr.

Judge

United States District Court