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lincoln v daco trade dress.pdf

VIEWS: 64 PAGES: 6

									       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.



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        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.

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                  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



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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.



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        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
                                                       tanastos@ulmer.com
                                                       msherban@ulmer.com

                                                       Attorneys for Plaintiffs
                                                       The Lincoln Electric Company and
                                                       The Harris Products Group




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