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american softball asociation certification mark
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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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