IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
MAINE INDUSTRIAL TIRE, LLC, )
v. ) Civil Action No. 11 - _______
SOLID SOURCE TIRE & WHEEL, INC., ) JURY TRIAL DEMANDED
KEN GREGORY, ALISTAIR ROBERTSON, )
and TOM POPOVICH, )
Defendants ) FILED ELECTRONICALLY
Plaintiff Maine Industrial Tire, LLC (“Maine Industrial Tire”) brings this action against
Defendants Solid Source Tire & Wheel Inc. (“Solid Source”), Ken Gregory (“Gregory”), Alistair
Robertson (“Robertson”), and Tom Popovich (“Popovich”) (collectively, “Defendants”) for
design patent infringement under 35 U.S.C. § 101 et seq. and trade dress infringement and unfair
competition under 15 U.S.C. § 1125(a). Maine Industrial Tire seeks injunctive relief, damages,
and attorneys’ fees for Defendants’ violation of its rights.
1. Plaintiff Maine Industrial Tire is a Delaware limited liability company with a
principal place of business at 107 Audubon Road, Building 2, Suite 205, Wakefield, MA 01880.
It is engaged in the business of designing, manufacturing, and selling industrial tires.
2. Upon information and belief, Defendant Solid Source is a Canadian corporation
with a principal place of business at 1190 Meyerside Drive, Mississauga, Ontario, Canada. As
indicated on its brochure, Solid Source has a distribution center located in Rayne, Louisiana.
Solid Source is engaged in the business of designing, manufacturing, and selling industrial tires.
Solid Source may be served pursuant to the Hague Convention on the Service Abroad of Judicial
and Extrajudicial Documents.
3. Upon information and belief, Defendant Gregory is an individual residing at 77
Harbour Square, # 1112, Toronto, Ontario, Canada. Gregory is the owner, president, and
treasurer of Solid Source and a director of Solid Source, and he directs Solid Source’s activities.
Gregory may be served pursuant to the Hague Convention on the Service Abroad of Judicial and
4. Upon information and belief, Defendant Robertson is an individual residing at
7262 7th Line R R 1, Beeton, Ontario, Canada. Robertson is a director and vice president of
Solid Source, and he directs Solid Source’s activities. Robertson may be served pursuant to the
Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents.
5. Upon information and belief, Defendant Popovich is an individual residing at 14
Wybron Road, Fulton, New York. Popovich is engaged in the business of selling Solid Source’s
tires in the United States.
6. This Court has subject matter jurisdiction over this action under 28 U.S.C. §§
1331, 1332, and 1338(a).
7. Venue is proper in this judicial district under 28 U.S.C. §§ 1391(b) and 1400(b)
because the Defendants have committed acts of patent infringement and trade dress infringement
in this district, which give rise to Maine Industrial Tire’s claims in this action.
STATEMENT OF FACTS
I. The ‘065 Patent
8. Maine Industrial Tire is the owner by assignment of United States Patent No.
D499,065 (“the ‘065 patent”), a design patent pertaining to an ornamental design for an
industrial tire, which duly and legally issued on November 30, 2004. Maine Industrial Tire holds
all right, title, and interest in and to the ‘065 patent. A true and accurate copy of the ‘065 patent
is attached as Exhibit 1.
9. Maine Industrial Tire’s ‘065 patented design is not functional and is not covered
by any prior art.
10. Maine Industrial Tire sells a solid skid steer tire called the “Brawler Solidflex,”
which embodies the design claimed in the ‘065 patent. The Brawler Solidflex is used on skid
steer machines and comes in multiple sizes.
11. Maine Industrial Tire marks the Brawler Solidflex with the ‘065 patent in
accordance with the notice provisions of 35 U.S.C. § 287.
II. Ken Gregory’s Employment with Maine Industrial Tire
12. Defendant Gregory worked for Maine Industrial Tire as OE Industrial Sales
Manager from January 14, 2010 to January 6, 2011. In the course of his employment, Gregory
had access to Maine Industrial Tire’s confidential information, including but not limited to: (1)
schematics, design documents, and molds for Maine Industrial Tire’s Brawler Solidflex tire; and
(2) Maine Industrial Tire’s customers and suppliers.
III. Defendants’ Infringement of the ‘065 Patent and Maine Industrial Tire’s Trade
13. Defendants make, use, offer to sell, sell, and/or import a solid skid steer tire called
the “Tyrant SST – Severe Service” (hereinafter, the “Tyrant Tire”) that is virtually
indistinguishable from the ‘065 patent, such that an ordinary observer would confuse the Tyrant
Tire’s design with that covered by the ‘065 patent. Photographs of the Tyrant Tire side-by-side
with Maine Industrial Tire’s Brawler Solidflex tire, which embodies the ‘065 patented design,
are attached as Exhibit 2.
14. Upon information and belief, Defendants have advertised and offered the Tyrant
Tire for sale in this judicial district and elsewhere in the United States.
15. Defendants had actual and constructive notice of the ‘065 patent.
16. Upon information and belief, Defendants have knowingly and willfully infringed
the ‘065 patent and will continue to do so unless enjoined by the Court.
17. Prior to the Defendants’ acts complained of herein, Maine Industrial Tire sold the
Brawler Solidflex throughout the United States.
18. Maine Industrial Tire’s Brawler Solidflex has generated $46,776,524 in sales
19. The configuration of the Brawler Solidflex has a unique and distinctive overall
style and appearance in terms of size, texture, shape, look and feel. This distinctive design is
identified with Maine Industrial Tire and not a mere refinement of common designs for tires.
20. As a commercial embodiment of the ‘065 patent, the Brawler Solidflex’s style
and appearance is non-functional and constitutes inherently distinctive trade dress.
21. The unique and inherently distinctive style and appearance of the Brawler
Solidflex has been featured prominently in Maine Industrial Tire’s advertising and promotional
materials, and is part of the Brawler Solidflex’s success.
22. The trade dress of the Brawler Solidflex has become an indication of a single,
high-quality source for the Brawler Solidflex in the minds of the relevant purchasing public. As
a result, the non-functional trade dress of the Brawler Solidflex represents a valuable asset to
Maine Industrial Tire.
23. In total disregard of Maine Industrial Tire’s prior rights, Defendants have
willfully copied and reproduced the distinctive and unique trade dress of the Brawler Solidflex.
24. Defendants’ Tyrant Tire is sold in the same marketing channels and to the same
customers as Maine Industrial Tire’s Brawler Solidflex.
25. Defendants’ Tyrant Tire trade dress is so similar to the Maine Industrial Tire trade
dress as to be likely to cause confusion, mistake, or deception as to the source or origin of
Defendants’ goods in that the public and others are likely to believe that Defendants’ Tyrant Tire
is provided by, sponsored by, approved by, licensed by, or affiliated with, or in some way
legitimately connected with Maine Industrial Tire, all to Maine Industrial Tire’s irreparable
26. Upon information and belief, Defendants have knowingly and willfully infringed
Maine Industrial Tire’s trade dress with the intention of deceiving and misleading the relevant
trade and public and wrongfully trading on Maine Industrial Tire’s goodwill.
27. By reason of the foregoing, Defendants have used in commerce, on or in
connection with the goods, a false designation of origin, a false or misleading description of fact,
with full knowledge of the falsity of such designations of origin to such descriptions and
representations, all to the detriment of Maine Industrial Tire.
28. Upon information and belief, by their tortious acts, Defendants have caused and
unless restrained by this Court, will continue to cause serious and irreparable injury and damage
to Maine Industrial Tire and to the goodwill associated with the Maine Industrial Tire trade
(Infringement of the ‘065 Patent Under 35 U.S.C. § 271)
29. Maine Industrial Tire incorporates by reference the allegations in Paragraphs 1-28
as if fully set forth herein.
30. Upon information and belief, Defendants Solid Source, Gregory, Robertson, and
Popovich have infringed, induced infringement of, and/or contributed to the infringement of the
‘065 patent in violation of 35 U.S.C. § 271(a), (b) and (c), including without limitation by
making, using, offering for sale, selling, and/or importing the Tyrant Tire.
31. Upon information and belief, Defendants’ infringement of the ‘065 patent has
been and continues to be willful and deliberate.
32. As a result of Defendants’ infringement of the ‘065 patent, Maine Industrial Tire
has suffered damages and irreparable harm, and Maine Industrial Tire will continue to suffer
irreparable harm unless the Court enjoins such infringement.
(Trade Dress Infringement and Unfair Competition Under 35 U.S.C. § 1125)
33. Maine Industrial Tire incorporates by reference the allegations in Paragraphs 1-32
as if fully set forth herein.
34. This count arises under Section 43 of the Lanham Act, 15 U.S.C. § 1125.
35. Defendants Solid Source, Gregory, Robertson, and Popovich have infringed
Maine Industrial Tire’s trade dress and engaged in unfair competition by selling, offering for
sale, distributing, and advertising confusingly similar industrial tires.
36. As a result of Defendants’ unlawful conduct and acts of unfair competition,
Maine Industrial Tire has been and will continue to be irreparably harmed.
37. The foregoing acts of unfair competition and false designation of origin violate
Section 43(a) of the Lanham Act and entitle Maine Industrial Tire to monetary and injunctive
PRAYER FOR RELIEF
WHEREFORE, Maine Industrial Tire respectfully requests that the Court grant the
(1) Adjudge that Defendants have infringed, directly and indirectly, the ‘065 patent
and Maine Industrial Tire’s trade dress;
(2) Preliminarily and permanently enjoin Defendants and their agents, servants,
employees, officers, directors, successors, licensees and assigns, and all those in active concert or
participation with them, from the manufacture, use, sale, offer for sale, and importation of any
products that infringe the ‘065 patent and/or Maine Industrial Tire’s trade dress, including but
not limited to the Tyrant Tire;
(3) Order Defendants to recall and/or gather the infringing goods from all retail or
wholesale outlets to whom Defendants sold or delivered the goods and deliver for destruction all
infringing goods and advertisements, circulars, brochures, or other promotional and advertising
materials for the infringing goods under 15 U.S.C. § 1118;
(4) Award to Maine Industrial Tire compensatory damages caused by Defendants’
infringement under 35 U.S.C. § 284;
(5) Award to Maine Industrial Tire disgorgement of Defendants’ profits under 15
U.S.C. § 1117 and 35 U.S.C. § 289;
(6) Treble the damages assessed against Defendants pursuant to 15 U.S.C. § 1117 and
35 U.S.C. § 284 based on Defendants’ willful and deliberate infringement;
(7) Award punitive damages to Maine Industrial Tire;
(8) Award to Maine Industrial Tire its attorney’s fees and costs incurred in this action
pursuant to 15 U.S.C. § 1117 and 35 U.S.C. § 285;
(9) Award to Maine Industrial Tire pre-judgment and post-judgment interest accrued
on damages at the maximum rate provided by law;
(10) Grant all further relief that the Court deems just and proper.
Maine Industrial Tire demands a jury trial on all issues so triable.
s/ Matthew W. McCullough
Matthew W. McCullough
MacDONALD, ILLIG, JONES & BRITTON LLP
100 State Street, Suite 700
Erie, PA 16507-1459
(814) 454-4647 FAX
Eric D. Levin
HINCKLEY, ALLEN & SNYDER LLP
28 State Street
Boston, MA 02109
Attorneys for Plaintiff
Maine Industrial Tire, LLC
Date: June 10, 2011