Case: 1:14-cv-00272-PAG Doc #: 1 Filed: 02/10/14 1 of 6. PageID #: 1 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION THE LINCOLN ELECTRIC COMPANY 22801 St. Clair Avenue Judge: _______________________ Cleveland, Ohio 44117 Case No.: _______________________ THE HARRIS PRODUCTS GROUP 4501 Quality Place Mason, Ohio 45040 Plaintiffs, v. DACO of Missouri, Inc. 1307 Westchester Manor Lane Chesterfield, Missouri 63005 Defendant. COMPLAINT FOR DECLARATORY JUDGMENT The Lincoln Electric Company and The Harris Products Group (“Plaintiffs”), for their Complaint for Declaratory Judgment against Defendant DACO of Missouri, Inc. (“Defendant” or “DACO”), state and allege as follows: NATURE OF THE ACTION 1. For at least 10 years, Plaintiffs have sold propane blow torches under the name “Inferno” (the “Inferno Torch”). One component of the Inferno Torch is the handle assembly, which includes a black grip at the top of the assembly for holding the torch. Until recently, Plaintiffs had purchased this grip, and other components of the torch, from DACO. In January 2014, however, Plaintiffs switched suppliers, and are no longer purchasing any parts for the Inferno Torches from DACO. 2. On or about February 3, 2014, Plaintiffs received a letter from DACO alleging that the handle assembly Plaintiffs are now purchasing from their new supplier, which includes Case: 1:14-cv-00272-PAG Doc #: 1 Filed: 02/10/14 2 of 6. PageID #: 2 the same grip as Plaintiffs had previously been purchasing from DACO, infringes DACO’s “Molded Handle Design” trademark, which seeks to protect the trade dress of the grip. The letter demanded, among other things, that Plaintiffs cease and desist all sales of its Inferno Torches. A copy of the letter is attached as Exhibit A. 3. There is no protectable trade dress in the design of the grip. The grip is functional, and is advertised by DACO as being functional. The grip has no secondary meaning associating it with DACO, as is evidenced by, among other things, the fact that for the last 10 years it has been the grip on Plaintiffs’ Inferno Torch. If anything, the purchasing public associates the grip with Plaintiffs. 4. Further, DACO procured its trademark registration by making affirmative misrepresentations to the United States Patent and Trademark Office (“USPTO”) that its grip was used exclusively on torches sold by DACO, when in fact DACO was selling the grip to Plaintiffs for use on their Inferno Torch. In addition, DACO procured its trademark registration by withholding material information from the USPTO including, among other things, that for years it had been selling the grip to Plaintiffs for use on their Inferno Torch. 5. Plaintiffs, therefore, ask this Court, pursuant to 28 U.S.C. §§ 2201-2202, for a declaratory judgment that DACO’s U.S. federal trademark registration for its “Molded Handle Design” trade dress (Reg. No. 3,700,964) is invalid. THE PARTIES 6. Plaintiff The Lincoln Electric Company is an Ohio corporation with a principal place of business located at 22801 St. Clair Avenue, Cleveland, Ohio 44117. 7. The Harris Products Group is an Ohio corporation with a principal place of business located at 4501 Quality Place, Mason, Ohio 45040. 2 Case: 1:14-cv-00272-PAG Doc #: 1 Filed: 02/10/14 3 of 6. PageID #: 3 8. Upon information and belief, Defendant DACO of Missouri, Inc. is a Missouri corporation with its principal place of business located at 1307 Westchester Manor Lane Chesterfield, Missouri, 63005. JURISDICTION AND VENUE 9. This Court has subject matter jurisdiction over Plaintiffs’ declaratory judgment claims pursuant to 15 U.S.C. § 1121, 28 U.S.C. §§ 1331, 1338(a), and 2201-2202. This Court has personal jurisdiction over Defendant because Defendant conducts business within the Northern District of Ohio. 10. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and (c). FACTUAL BACKGROUND Plaintiffs Sold Inferno Torches For Over a Decade Using DACO’s Grip 11. Plaintiffs have sold their Inferno Torch since approximately November 2002. While they purchase components for the Inferno Torch from various suppliers, Plaintiffs began purchasing parts of the handle assembly from DACO, including the grip, in approximately June 2002. 12. At no point during the time that Plaintiffs purchased the handle assembly from DACO did DACO advise Plaintiffs of its trademark registration. 13. At no point during the time that Plaintiffs purchased the handle assembly from DACO did DACO require Plaintiffs to identify the source of the grip used in the Inferno Torches as DACO, or require that Plaintiffs’ packaging for the Inferno Torch indicate that the trade dress of the grip was registered with the USPTO. 14. Similarly, at no point during the time that Plaintiffs purchased the handle assembly from DACO did DACO complain that Plaintiffs were identified as the source of the Inferno Torch. 3 Case: 1:14-cv-00272-PAG Doc #: 1 Filed: 02/10/14 4 of 6. PageID #: 4 The Molded Handle Provides Better Control And Comfort 15. The handle assembly provides the functionality of allowing the user better control over the torch. DACO touts this functionality on the packaging of its own torches by stating “Molded Handle for better control.” A picture of DACO’s packaging is attached as Exhibit B. 16. Online, DACO repeatedly touts the functionality of its handle offering better comfort and control. Examples of various websites selling DACO’s torches are attached as Exhibit C. DACO Made Misrepresentations to the USPTO 17. On or about September 30, 2008, DACO filed for a trademark for its molded handle. 18. On or about January 5, 2009, the USPTO issued an Office Action rejecting DACO’s application. 19. On or about June 3, 2009, DACO responded to the USPTO’s Office Action. 20. In its response to the Office Action, DACO asserted that the molded handle had acquired distinctiveness, or secondary meaning, and represented that DACO was the exclusive seller of propane torches utilizing the molded handle. 21. At the time that DACO made these representations it knew that Plaintiffs were selling their Inferno Torch that included the molded handle design. Therefore, the representations made to the USPTO stating that DACO was the exclusive seller of propane torches utilizing this molded handle were false and misleading. 22. In its response, DACO also included pictures of other propane torches. DACO, however, was selective and only included pictures of torches that did not include this handle. DACO intentionally withheld from the USPTO pictures of Plaintiffs’ Inferno Torches, which 4 Case: 1:14-cv-00272-PAG Doc #: 1 Filed: 02/10/14 5 of 6. PageID #: 5 included the molded handle. DACO’s intentional withholding of material information from the USPTO was misleading. 23. Moreover, knowing that trademarks may not be obtained for functional design features, DACO failed to inform the USPTO that DACO repeatedly and consistently touted the functionality provided by the molded handle and marketed its molded handle as providing better comfort and control. By omitting such material information DACO intentionally misled the USPTO in an attempt to gain a trademark. 24. Based on DACO’s omissions and misrepresentations, the USPTO granted a trademark regarding the molded handle (Reg. No. 3,700,964). DACO’s Infringement Allegations 25. On or about October 11, 2013, Plaintiffs ordered certain supplies for their Inferno Torches, including a handle assembly with a grip, from a supplier other than DACO. 26. On or about February 3, 2014, Plaintiffs received a letter from DACO alleging that Plaintiffs’ Inferno Torches infringed DACO’s “Molded Handle Design” trademark, and demanded, among other things, that Plaintiffs cease and desist all sales of its Inferno Torches. See Exhibit A. COUNT ONE – DECLARATORY JUDGMENT 27. Plaintiffs restate the allegations contained in paragraphs 1 through 26 as if fully rewritten herein. 28. An actual case and controversy has arisen between the parties because DACO has accused Plaintiffs of infringing DACO’s trademark. 29. DACO’s demands pose an immediate and serious threat to Plaintiffs’ supply chain and sales of its Inferno Torches. 5 Case: 1:14-cv-00272-PAG Doc #: 1 Filed: 02/10/14 6 of 6. PageID #: 6 30. The specific relief requested below, namely, a declaration that DACO’s U.S. federal trademark registration for its “Molded Handle Design” trade dress (Reg. No. 3,700,964) is invalid, will conclusively establish the rights and legal relations of the parties. DEMAND FOR RELIEF WHEREFORE, Plaintiffs request that this Court issue judgment as follows: (a) A declaratory judgment that DACO’s U.S. federal trademark registration for its “Molded Handle Design” trade dress (Reg. No. 3,700,964) is invalid; and (b) A judgment for such other relief in favor of Plaintiffs as may appear necessary and appropriate, including the reasonable attorney’s fees and costs to Plaintiffs in bringing this action. Dated: February 10, 2014 Respectfully submitted, /s/ Thomas L. Anastos Thomas L. Anastos (#0043545) Michael P. Sherban (#0079950) ULMER & BERNE LLP Skylight Office Tower 1660 West 2nd Street, Suite 1100 Cleveland, Ohio 44113-1448 (216) 583-7000 Fax: (216) 583-7037 firstname.lastname@example.org email@example.com Attorneys for Plaintiffs The Lincoln Electric Company and The Harris Products Group 6
"lincoln v daco trade dress.pdf"