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					            Case 5:12-cv-01085-M Document 1 Filed 10/01/12 Page 1 of 7



                    IN THE UNITED STATES DISTRICT COURT
                  FOR THE WESTERN DISTRICT OF OKLAHOMA

(1) AMATEUR SOFTBALL                )
    ASSOCIATION OF AMERICA, INC. )
                                    )
                         Plaintiff, )
                                    )
v.                                  )                  Case No. CIV-12-1085-M
                                    )
(2) STEVE SUHM d/b/a Cityboyya,     )                  JURY TRIAL DEMANDED
                                    )
                         Defendant. )

                                        COMPLAINT

       Plaintiff, for its Complaint against the Defendant, alleges and states:

       1.       This Court has jurisdiction over this action pursuant to: (i) 28 U.S.C. §§ 1331,

1338(a) and (b) and 15 U.S.C. § 1121 as an action for violation of the Lanham Act, 15 U.S.C.

§§ 1051 et seq.; and (ii) 28 U.S.C. § 1367(a) pursuant to the principles of supplemental

jurisdiction.

       2.       Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) in that, among

other things, a substantial part of the events or omissions giving rise to the claims herein

occurred in this judicial district.

       3.       This is an action for: (i) infringement of registered trademarks in violation of

Section 32 of the Lanham Act, 15 U.S.C. § 1114; (ii) false designation of origin and

trademark and trade dress infringement in violation of Section 43(a) of the Lanham Act,

15 U.S.C. § 1125(a); (iii) unfair competition and trademark infringement in violation of the

common law of the State of Oklahoma; and (iv) violation of the Oklahoma Deceptive Trade

Practices Act, 78 O.S. § 51, et seq.
            Case 5:12-cv-01085-M Document 1 Filed 10/01/12 Page 2 of 7



       4.     As described more fully below, Defendant has distributed, sold, offered for

sale, or otherwise contributed to the sale of decals incorporating one or more of Plaintiff’s

marks without permission for use on or sold with the intent to be affixed to softball bats, and

are therefore liable for direct and/or contributory infringement of Plaintiff’s lawfully owned

trademarks and trade dress. Defendant’s conduct has produced and, unless enjoined by this

Court, will continue to produce widespread consumer confusion and deception as well as

irreparable injury to Plaintiff. Defendant’s actions constitute deceptive trade practices, unfair

competition and infringement of one or more of Plaintiff’s trademarks. Defendant is liable to

Plaintiff for monetary damages, attorneys’ fees and costs, and this Court should issue an

injunction against Defendant’s unlawful conduct.

                                              PARTIES

       5.     Plaintiff Amateur Softball Association of America, Inc. (“ASA”) is a nonprofit

corporation headquartered in Oklahoma City, Oklahoma, and is the National Governing

Body of Softball in the United States. ASA organizes, governs, sanctions, markets and

regulates the sport of softball throughout the United States.

       6.     Defendant Steve Suhm has distributed, sold, offered for sale, or contributed to

the sale of decals which contain counterfeit or infringing trademarks for use in conjunction

with softball bats. Defendant has sold and shipped decals with infringing marks, as further

described herein, into this judicial district; namely, Norman, Oklahoma.

                                           MARKS




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             Case 5:12-cv-01085-M Document 1 Filed 10/01/12 Page 3 of 7



       7.       ASA is the exclusive owner of the following marks (collectively, “ASA

Marks”) which have been registered on the principal register of the United States Patent and

Trademark Office (hereinafter “USPTO”):

             Registration        Registration                   Trademark
              Number                Date
                                                     AMATEUR SOFTBALL
              1,442,234          June 9, 1987
                                                     ASSOCIATION OF AMERICA
              1,443,350          June 16, 1987       ASA
              2,457,961           June 5, 2001       ASA
                                                     CERTIFIED BY AMATEUR
                                                     SOFTBALL ASSOCIATION –
              2,341,661         April 11, 2000
                                                     CONFORMS TO STANDARD –
                                                     2000 – ASA 2000
              3,077,373          April 4, 2006       ASA CERTIFIED

                                  BACKGROUND FACTS

       8.       For many years, Plaintiff has used, in connection with its respective products

and services, the ASA Marks. Plaintiff has spent substantial time, effort and money

advertising and promoting its Marks throughout the United States, and these Marks have

consequently developed significant goodwill, have become distinctive, and have acquired

secondary meaning.

       9.       In an attempt to profit from Plaintiff’s investments in its Marks, Defendant has

distributed, sold, offered for sale, or otherwise contributed to the sale of decals which

impermissibly bear one or more of the ASA Marks, or spurious marks that are substantially

indistinguishable from those Marks.

       10.      ASA has adopted performance standards for softball bats used in ASA

sanctioned play. Softball bats that exceed or do not meet the ASA performance standards are




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             Case 5:12-cv-01085-M Document 1 Filed 10/01/12 Page 4 of 7



not allowed in ASA sanctioned play and are not authorized to bear any of the ASA Marks.

Upon information and belief, the decals, distributed and sold by Defendant, are sold by

Defendant for the purpose of altering the appearance of softball bats, which do not conform

to ASA’s performance standards, to make such unapproved bats appear approved for ASA

sanctioned play.

       11.     Consumers and players expect that softball bats containing one or more of the

ASA Marks would perform at the level of other bats containing those same Marks. However,

Defendant has distributed and sold decals impermissibly bearing Plaintiff’s Marks with the

knowledge that such decals will be affixed to softball bats that exceed or otherwise do not

meet ASA’s performance standards for use in ASA sanctioned play.

       12.     In and around August of 2012, an individual residing in Norman, Oklahoma

purchased several decals for softball bats from Defendant which impermissibly contained one

or more ASA Marks. The decals were shipped directly to Norman, Oklahoma by Defendant

and/or his agents, and were packaged with specific instructions regarding how to affix the

infringing decals to softball bats. See Exhibit “1” to this Complaint for a photocopy of the

shipping information from the package containing the infringing decals and the instructions

for applying the decals sent by Defendant to Norman, Oklahoma.

       13.     As a result of Defendant’s actions, consumers and players will be confused,

misled, and perhaps ill-prepared for potentially dangerous and unfair competitive conditions

on the field of play, by the differences between the bats bearing the decals sold by Defendant

which contain the infringing marks, and those softball bats approved for ASA-sanctioned




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             Case 5:12-cv-01085-M Document 1 Filed 10/01/12 Page 5 of 7



play. The consequence is that ASA is suffering a loss of the goodwill it has created in its

certification marks and other ASA Marks.

                                          CLAIMS

       14.     The actions of Defendant infringe one or more registered trademarks and

therefore violate Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).

       15.     The actions of Defendant falsely designate the origin of decals sold or

distributed by Defendant and the origin and nature of softball bats bearing such decals sold or

distributed by such Defendant and constitute trademark and trade dress infringement, and

therefore violate Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).

       16.     The actions of Defendant constitute unfair competition and trademark

infringement under Oklahoma common law.

       17.     The actions of Defendant constitute a willful and deceptive trade practice in

violation of the Oklahoma Deceptive Trade Practices Act, 78 O.S. § 51 et seq.

                                  PRAYER FOR RELIEF

       WHEREFORE, Plaintiff respectfully requests judgment as follows:

       A.      For judgment that:

               (i)     Defendant has violated Section 32 of the Lanham Act, 15 U.S.C.
                       § 1114;

               (ii)    Defendant has violated Section 43(a) of the Lanham Act, 15 U.S.C.
                       § 1125(a);

               (iii)   Defendant has violated the Oklahoma Deceptive Trade Practices Act;
                       and

               (iv)    Defendant has engaged in unfair competition and trademark
                       infringement in violation of the common law of the State of Oklahoma.


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           Case 5:12-cv-01085-M Document 1 Filed 10/01/12 Page 6 of 7



      B.     For an injunction restraining and enjoining Defendant and his agents, servants,

employees, successors, assigns and attorneys, and all those persons in active concert or

participation with him, from doing any of the following:

             (i)     altering or counterfeiting in any manner any softball bat to include any
                     of the ASA Marks; or

             (ii)    affixing, displaying, advertising, or otherwise using in any manner
                     whatsoever any ASA Mark in any form or style without prior
                     authorization from the respective Mark owner(s); or

             (iii)   purchasing, distributing, advertising, selling, or offering for sale, any
                     altered softball bat containing any ASA Mark; or

             (iv)    purchasing, distributing, advertising, selling or offering for sale any
                     decals containing any ASA Mark; or

             (v)     using the ASA Marks or trademarks confusingly similar therewith, or
                     the corresponding trade dress or trade dress confusingly similar
                     therewith for any reason whatsoever, except for the sale and offering
                     for sale of genuine softball bats.

      C.     For an order directing the following:

             (i)     Defendant to account for and pay to Plaintiff all of Defendant’s profits
                     derived from his unlawful conduct, to the full extent provided for by
                     Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a);

             (ii)    as an alternative to awarding profits under Section 35(a), awarding
                     Plaintiff statutory damages as provided for by Section 53(c) of the
                     Lanham Act, 15 U.S.C. § 1117(c);

             (iii)   awarding Plaintiff general and special damages to the full extent
                     provided for by the common law of the State of Oklahoma;

             (iv)    awarding treble and/or punitive damages in addition to compensatory or
                     statutory damages;

             (v)     Defendant to retrieve and surrender for destruction all goods and
                     materials of whatever nature constituting the infringement;




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                Case 5:12-cv-01085-M Document 1 Filed 10/01/12 Page 7 of 7



                    (vi)   Defendant to provide Plaintiff with the names of all of Defendant’s
                           customers as well as suppliers of goods or services that enabled
                           Defendant to perform the acts complained of herein.

          D.        For attorneys’ fees and costs of suit together with interest on any damage

award, and for such other and further relief as the Court shall deem appropriate.

                                               Respectfully Submitted,


                                                s/ Robert E. Norman
                                               ROBERT E. NORMAN, OBA #14789
                                               CHEEK & FALCONE, PLLC
                                               6301 Waterford Blvd., Suite 320
                                               Oklahoma City, OK 73118
                                               Telephone: (405) 286-9191
                                               Facsimile: (405) 286-9670
                                               E-mail: rnorman@cheekfalcone.com
                                               Attorneys for Plaintiff, Amateur Softball
                                               Association of America, Inc.
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