IP Law Daily, TRADEMARK—S.D. Ind.: Trademark owner’s partial motion for summary judgment granted in part and denied in part, (Jan 12, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

In a trademark dispute involving two Indiana valve companies over the use of yellow valve handles, the trademark owner’s partial motion for summary judgment was granted in part and denied in part.

The federal district court in Indianapolis granted in part and denied in part Banjo Corporation’s partial motion for summary judgment and denied Green Leaf, Inc.’s cross-motion for summary judgment. Banjo’s motion was granted as to the affirmative defenses of statute of limitations, abandonment, and genericness; and as to Green Leaf’s counterclaim for cancellation of Banjo’s trademark based on the theories of abandonment and genericness. However, Banjo’s motion was denied as to Green Leaf’s affirmative defenses of laches and functionality; and as to Green Leaf’s counterclaim for trademark cancellation based on functionality (Banjo Corp. v. Green Leaf, Inc., No. 1:23-cv-01770-SEB-MG (S.D. Ind. Jan. 9, 2026)).

Background. Banjo Corporation (Banjo) formerly known as Terra-Knife and Terra-Products is an Indiana-based manufacturer of liquid handling products utilized in the commercial, industrial, and agricultural sectors. Since 1994, Banjo has regarded the color yellow as a signature feature of its brand, incorporating the color into its marketing materials as well as the products themselves. In the early 2000s, Banjo began marketing its control valves as the "original yellow handle.”

Green Leaf is also an Indiana-based manufacturer of liquid-handling products that competes with Banjo in the production and sale of control valves. Green Leaf had predominantly used green in its branding and products. In 2018, Green Leaf launched its commercial agriculture division under the name “TerreMax.” In addition to emulating Banjo's product selection and alphanumeric identification system, Green Leaf opted to use yellow, rather than its trademark green color, on the control valve handles. On February 20, 2018, Banjo issued a cease-and-desist letter to Green Leaf, contending that Green Leaf was actively engaging in trade dress violations, false advertising, and unfair trade practices.

In July 2020, Banjo renewed its application and, on December 28, 2021, successfully obtained a registered trademark for the Yellow Handle® Design. On September 29, 2023, Banjo filed a three-count complaint against Green Leaf asserting claims for (1) trademark/trade dress infringement, pursuant to 15 U.S.C § 1114(1); (2) unfair competition, false designations of origin, and false advertising, pursuant to 15 U.S.C. § 1125(a); and (3) unfair competition and trademark infringement under Indiana common law. In an answer denying all counts against it, Green Leaf asserted five separate affirmative defenses as well as a counterclaim for the cancellation of Banjo's trademark on the Yellow Handle® Design, pursuant to 15 U.S.C. § 1119. On January 13, 2025, Banjo moved for partial summary judgment, seeking the dismissal of Green Leaf's counterclaim to cancel the trademark registration and the denial of Green Leaf's five affirmative defenses.

Banjo’s claims. To prevail on its claims, Banjo must establish that (1) its mark is protectable and (2) the defendant’s use of the mark is likely to cause confusion among consumers.

The district court found that Banjo’s Yellow Handle® Design became presumptively valid upon its registration on December 28, 2021. Consequently, Green Leaf bears the burden of proof to establish a lack of secondary meaning with regard to Banjo's trademark infringement claims. Further, Banjo has adduced sufficient evidence from which a reasonable jury could find that the Yellow Handle® Design holds a secondary meaning. The record evidence demonstrated that Banjo has used yellow as a signature feature of its brand since 1994 and that by the early 2000s, Banjo represented its control valves as the “original yellow handle.” The district court noted that Banjo's success with its Yellow Handle® valves was convincingly established by Mr. Hays’s (the Business Line Leader, Pumps & Compressors of Advanced Flow Solutions of Banjo's parent company IDEX Corporation) Declaration stating that Banjo has in the past sold 675,000 units on an annual basis, amounting to tens of millions of dollars. Additionally, Banjo’s best evidence of secondary meaning consists of numerous email exchanges among members of Green Leaf’s executive team documenting its intentional copying of Banjo’s trade dress and that Green Leaf understood the acquired distinctiveness of the yellow handle. The district court concluded that based on the record evidence a reasonable jury could find that Banjo’s Yellow Handle® Design holds secondary meaning and is therefore a protectable mark.

The district court determined that Banjo has adduced sufficient evidence to create a triable question of fact as to the likelihood of consumer confusion. The district court noted that Green Leaf literally designed TerreMax products to serve as direct and indistinguishable substitutions to Banjo’s. Further indication of the likelihood of confusion is evidence of actual confusion: in April 2021, one distributor relayed to Mr. Wagner (Banjo’s former employee who then joined Green Leaf as a sales representative) that "customers can't tell a difference" between TerreMax and Banjo products; in June and July 2023, Banjo received customer complaints about defective products that were in fact purchased from TerreMax,; and, in February 2020, John Bray, Green Leaf's Regional Accounts Manager, confused TerreMax valve handles as belonging to Banjo. In short, a non-exhaustive review of the evidence in the record before the district court revealed a sufficient basis on which a reasonable jury could conclude that Green Leaf's imitation of Banjo's Yellow Handle® Design created a likelihood of customer confusion.

Thus, Green Leaf’s motion for summary judgment was denied.

Affirmative defences. The parties cross-moved for summary judgment on Green Leaf's affirmative defenses. Green Leaf's affirmative defenses include: the statute of limitations; laches; functionality and lack of secondary meaning; abandonment; and lack of trademark significance.

Green Leaf argued that the two-year statute of limitations renders this lawsuit entirely time-barred because Banjo was aware of the alleged infringement by February 2018, when it sent the cease-and-desist letter to Green Leaf. The district court found that Green Leaf’s alleged misconduct—e.g., its production and sale of yellow-handled valves and its retooling operation is active and ongoing Green Leaf’s alleged course of illegal conduct was not yet complete, the limitations period has not begun to run, and this action is therefore timely.

The district court determined that the record makes clear that further factual development is necessary to resolve the parties' legal arguments concerning the applicability of the doctrine of laches here. Accordingly, the parties’ cross-motions for summary judgment were denied as to the issue of laches.

Regarding functionality and lack of secondary meaning, the district court noted that the deficiencies in the parties' arguments, coupled with the competing evidence presented by Banjo regarding the source-identifying significance of the color yellow, persuaded it that summary judgment cannot be granted in favor of either party.

Green Leaf argued that Banjo abandoned its trademark by permitting third parties, including Green Leaf, to sell yellow handled control valves. The district court noted that although there is evidence that other competitors have occasionally sold yellow handled valves, Green Leaf failed to adduce any relevant evidence revealing the extent to which third parties used, promoted, and became known by the consuming public as the source of yellow handled control valves. Therefore, there was no basis on which a reasonable jury could conclude that third parties’ occasional sales of yellow handled valves weakened Banjo's trademark to the point of abandonment. Thus, Banjo was entitled to judgment as a matter of law on the issue of abandonment.

Lastly, the district court found that Green Leaf provide no evidence establishing that Banjo's Yellow Handle® Design is generic as a matter of law. Thus, Green Leaf failed to adduce sufficient evidence to present the question of genericness to a jury. Accordingly, on the issue of genericness summary judgment was granted in Banjo's favor.

The Case is No. 1:23-cv-01770-SEB-MG.

Judge: Barker, S.

Attorneys: Caroline Payne (Barnes and Thornburg LLP) for Banjo Corp. Andrea Kochert Townsend (Plews Shadley Racher & Braun LLP) for Green Leaf, Inc.

Companies: Banjo Corp.; Green Leaf, Inc.

Cases: Trademark IndianaNews