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STATE BAR OF
WISCONSIN,
Plaintiff,
v.
Elsevier, Inc.),
Defendant.
GODFREY &
KAHN, S.C.
James D. Peterson Jennifer L. Gregor One East Main Street, Suite 500 Post Office Box 2719 Madison, WI 53701-2719 Phone: 608-257-3911 Fax: 608-257-0609 Email: jpeterson@gklaw.com
jgregor@gklaw.com
Case: 3:11-cv-00586
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The
plaintiff,
This is below:
an
action for
infringement of the
V.
The State Bar
adopted the Pillar Icon after a careful screening for conflicting marks,
and it
services, which are provided to lawyers and members of the public for
legal profession,
delivery of
legal
public.
Icon is attached 2.
Exhibit A.
LexisNexis has
Pillar Icon,
shown below:
e
LexisNexis
uses
Lawyers.com website,
which
provides lawyer
sought or received
registration of its infringing pillar mark. Upon information and belief, LexisNexis conducted no
trademark
members of the
confused into
Case: 3:11-cv-00586
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there is
some
affiliation
or
public and the legal profession from this inevitable confusion, the
and
declaratory
use
of its
THE PARTIES
4.
Wisconsin
professional association,
Court. The State
auspices
of the Wisconsin
Supreme
located at 5302
5.
employees
principal offices
of LexisNexis
located at 9443
Springboro Pike,
Miamisburg,
6.
Ohio 45342.
is
Elsevier, Inc.,
which is
principal offices
7.
specifically
15 U.S.C.
action pursuant to 28
U.S.C. U. S. C. 8.
1331 and 1338. The Court has the 2201 and 2202.
they form
controversy.
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Page 4 of
11
9.
Stat.
801.05(4) because
solicitation and
service activities here. This Courts exercise of personal jurisdiction with the Due Process Clause of the United States Constitution.
10.
over
LexisNexis comports
1391(b) because
a
substantial
part of the
events
as a
in 1878. It
of the Wisconsin
24, 000
members include all attorneys licensed to practice law in Wisconsin. The State Bars
membership includes 7, 600 non-resident attorneys located throughout the United States and beyond.
12.
as
established in Wisconsin
Supreme
Court Rule
10.02(2),
includes
aiding the
and
of lawyers, and
serving
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13.
are
supported,
in part,
by dues paid by
its members.
The
majority of the
of a broad range of
provides a range of services to the public. Among the most LegalExplorer website,
available at
significant of these
The State Bars and other
as
www.legalexplorer.com.
information
on
legal topics
legal resources
public.
Exhibit B.
15.
portfolio
U.S.
Registration No.
3945835
REACH NEW HEIGHTS IN YOUR PRACTICE U.S. Registration No. 3952559 YOUR PRACTICE. OUR PURPOSE. U.S. Registration No. 4013234 LEADERS IN THE LAW. ADVOCATES FOR JUSTICE. U. S. Registration approved; issue of certificate pending WISBAR U.S. Registration No. 3741623 WISCONSIN LAWYERS EXPERT ADVISERS. SERVING YOU. U. S. Registration No. 2764231
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16.
was
selected and
adopted by the
State Bar
as
part of a the creation of a new brand image intended to facilitate the nationwide sales and
distribution of the State Bars conducted
17.
a
Before
State Bar
conflicting marks.
of the Pillar Icon That
on
February 18,
was
intent to
1051(b).
application
Trademark Office.
as
use
early as
June
1, 2010.
The State Bar submitted to the United States Trademark Office of the Pillar Icon
on
specimens
February 7,
2011.
registration of the Pillar Icon is prima facie evidence of ownership of it, pursuant to
15 U.S.C.
the
State Bars
1115(a). right
The
effective
as
21.
at least
as
early as
June
provides databases
Lexis on-line
service, used by attorneys throughout the United States and the world.
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23.
LexisNexis also
owns
and operates
Lawyers.com,
lawyers
public.
Exhibit C.
24.
based
on
information by
topic,
and do it
26.
of its
Lawyers.com.
Bar
and upon information and belief, well after the U.S. Trademark Office issued the the Pillar Icon.
27.
search for
potentially
by LexisNexis Infringement
The services
the services
provide by the
services to attorneys.
Indeed,
of the services
are
identical to and
The services
services
provided
by the
State Bar
through LegalExplorer.
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30.
The
provided by the
31.
available
and
The information
on
legal topics
available
and may be
33.
of its
cause consumer
confusion
as
sponsorship of the
services
provided
though Lawyers.com.
34.
The
at
http://intellectual-
Trademarks also protect the investment the maker of a product has in the product. Part of this is goodwill. It's unfair for a rival or competing business to play off of the popularity of a particular product or service by using the same or similar mark. This rival or competitor could obtain business based on the quality or years you've spent building your brand name. What's more, your fine product's reputation could be damaged if consumers purchase an inferior product believing it to be yours because of a similar trademark. That's unfair, and trademark law makes it illegal.
35.
use
of its
infringement is enjoined.
FIRST CAUSE OF ACTION Trademark Infringement 15 U.S.C. 1114 36.
Paragraphs
through 35
of this
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37. 38.
State Bar.
in
reproduction, counterfeit,
copy,
or
colorable
LexisNexis
uses
the
reproduction, counterfeit,
copy,
or
specified in the
40.
State Bars
registration.
use
LexisNexis
of its
reproduction, counterfeit,
to cause
copy,
or
colorable imitation of
mistake,
or
to deceive.
LexisNexis
of its
reproduction, counterfeit,
copy,
or
LexisNexis
cause
use
of its
reproduction, counterfeit,
copy,
or
damage
and
State Bar.
declaring and an injunction prohibiting LexisNexis from using its infringing pillar mark.
SECOND CAUSE OF ACTION False Designation of Origin 15 U.S.C. 1125 44. 45.
Paragraphs
LexisNexis
to deceive
as
through 43
in
of this
uses
commerce a
confusion,
to cause
mistake,
or
to the
services. of the
46.
declaring and an injunction prohibiting LexisNexis from using its infringing pillar mark.
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Infringement
Paragraphs
through 47
of this
by the
LexisNexis
uses
own
is
LexisNexis
as
of its
to cause
mistake,
or
to deceive
to the
LexisNexis
of its
injunction prohibiting LexisNexis from any further use confusingly similar to the Pillar Icon;
of its
infringing pillar
mark,
or
3. 4.
Judgment against LexisNexis in favor of the Judgment against LexisNexis in favor of the
State Bar for the costs of this State Bar for the State Bars
action;
1117(a); and,
10
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5.
appropriate.
so
triable.
Dated:
August 19,
2011.
Respectfully submitted,
By:
s/James D. Peterson James D. Peterson Jennifer L. Gregor GODFREY & KAHN, S.C. One East Main Street, Suite 500 Post Office Box 2719 Madison, WI 53701-2719 Phone: 608-257-3911 Fax: 608-257-0609 Email: jpeterson@gklaw.com
jgregor@gklaw.com
A ttorneysfor Plaintiff, State Bar
6716518_2
of Wisconsin
11
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EXHIBIT A
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raint
:s)tate5 of
ame,
jIU
Reg. No. 3,945, 835 Registered Apr. 12,
Int. Cls.:
STATE BAR OF WISCONSIN PO BOX 7158
2011
MADISON, WI 53718
FOR: PUBLICATIONS AND PRACTICE MATERIALS, NAMELY, WOKS, MAGAZINES, NEWSLETTERS, PAMPHLETS, FILL-1N LEGAL FORMS, AND COURSE MATERIALS IN THE FIELD OF LAW, IN CLASS 16 (U.S. CLS. 2, 5, 22, 23, 29, 37, 38 AND 50).
16, 35,
and 41
TRADEMARK
FIRST USE
6-1-2010;
IN COMMERCE 6-1-2010.
SERVICE MARK
FOR: ASSOCIATION
PRINCIPAL REGISTER
SERVICES, NAMELY, PROMOTING THE INTEREST OF LAWYERS SERVICES, IN CLASS 35 (IJ.S. CLS. 100,
102).
6-1-2010; IN COMMERCE 6-1-2010.
FIRST USE
FOR: EDUCATIONAL SERVICES AND PROGRAMS FOR LAWYERS, NAIV1ELY, PROVIDING CONTINUING LEGAL EDUCATION
LINES WITH A CAPITAL FORMED OF TWO HORIZONTAL LINES TOGETHER FORMING A STYLIZED "W" REVERSED FROMA CIRCULAR
(n
1+1.14NT FA"
oF
pod;
.5-7.
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EXHIBIT B
and educational
resources
for the
public.
Wind:Nos Internet
'be
Explorer
I ar
CM!
legalexplorer.com
Edit
View Favorites
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EXHIBIT C
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The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
I. (a) PLAINTIFFS
STATE BAR OF WISCONSIN
DEFENDANTS
LEXISNEXIS (a division of Reed Elsevier, Inc.) Dane
County of Residence of First Listed Defendant
(IN U.S. PLAINTIFF CASES ONLY) NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE LAND INVOLVED.
James D. Peterson, Jennifer L. Gregor of Godfrey & Kahn, S.C., One East Main Street, PO Box 2719, Madison, WI 53701-2719, Tel. 608-257-3911
u 2
u 2 u 3
u u
u 5 u 6
u 5 u 6
(Place an X in One Box Only) TORTS PERSONAL INJURY 310 Airplane 315 Airplane Product Liability 320 Assault, Libel & Slander 330 Federal Employers Liability 340 Marine 345 Marine Product Liability 350 Motor Vehicle 355 Motor Vehicle Product Liability 360 Other Personal Injury CIVIL RIGHTS 441 Voting 442 Employment 443 Housing/ Accommodations 444 Welfare 445 Amer. w/Disabilities Employment 446 Amer. w/Disabilities Other 440 Other Civil Rights PERSONAL INJURY u 362 Personal Injury Med. Malpractice u 365 Personal Injury Product Liability u 368 Asbestos Personal Injury Product Liability PERSONAL PROPERTY u 370 Other Fraud u 371 Truth in Lending u 380 Other Personal Property Damage u 385 Property Damage Product Liability PRISONER PETITIONS u 510 Motions to Vacate Sentence Habeas Corpus: u 530 General u 535 Death Penalty u 540 Mandamus & Other u 550 Civil Rights u 555 Prison Condition
FORFEITURE/PENALTY
BANKRUPTCY
OTHER STATUTES
u u u u u u u u u u u u u u u u u u
110 Insurance 120 Marine 130 Miller Act 140 Negotiable Instrument 150 Recovery of Overpayment & Enforcement of Judgment 151 Medicare Act 152 Recovery of Defaulted Student Loans (Excl. Veterans) 153 Recovery of Overpayment of Veterans Benefits 160 Stockholders Suits 190 Other Contract 195 Contract Product Liability 196 Franchise REAL PROPERTY 210 Land Condemnation 220 Foreclosure 230 Rent Lease & Ejectment 240 Torts to Land 245 Tort Product Liability 290 All Other Real Property
u u u u u u u u u u u u u u u u
u 610 Agriculture u 620 Other Food & Drug u 625 Drug Related Seizure of Property 21 USC 881 u 630 Liquor Laws u 640 R.R. & Truck u 650 Airline Regs. u 660 Occupational Safety/Health u 690 Other LABOR u 710 Fair Labor Standards Act u 720 Labor/Mgmt. Relations u 730 Labor/Mgmt.Reporting & Disclosure Act u 740 Railway Labor Act u 790 Other Labor Litigation u 791 Empl. Ret. Inc. Security Act
IMMIGRATION u 462 Naturalization Application u 463 Habeas Corpus Alien Detainee u 465 Other Immigration Actions
u u u u u u u u u u u u u u u u u u u
SOCIAL SECURITY 861 HIA (1395ff) 862 Black Lung (923) 863 DIWC/DIWW (405(g)) 864 SSID Title XVI 865 RSI (405(g)) FEDERAL TAX SUITS u 870 Taxes (U.S. Plaintiff or Defendant) u 871 IRSThird Party 26 USC 7609
u u u u u
400 State Reapportionment 410 Antitrust 430 Banks and Banking 450 Commerce 460 Deportation 470 Racketeer Influenced and Corrupt Organizations 480 Consumer Credit 490 Cable/Sat TV 810 Selective Service 850 Securities/Commodities/ Exchange 875 Customer Challenge 12 USC 3410 890 Other Statutory Actions 891 Agricultural Acts 892 Economic Stabilization Act 893 Environmental Matters 894 Energy Allocation Act 895 Freedom of Information Act 900Appeal of Fee Determination Under Equal Access to Justice 950 Constitutionality of State Statutes
V. ORIGIN
u 1 Original Proceeding
u 2 Removed from
State Court
u 3 Remanded from
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
u CHECK IF THIS IS A CLASS ACTION VII. REQUESTED IN UNDER F.R.C.P. 23 COMPLAINT: VIII. RELATED CASE(S) (See instructions): JUDGE IF ANY
DATE
Trademark infringement
08/19/2011
FOR OFFICE USE ONLY RECEIPT # AMOUNT
s/James D. Peterson
APPLYING IFP
JUDGE
MAG. JUDGE
Case: 3:11-cv-00586
AO 120 (Rev. 3 04
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TO:
REPORT ON THE
Alexandria, VA 22313-1450
In
Compliance with 35
U.S.C.
the
following
Patents
Q7
Trademarks:
V-9,V-586
DATE FI
i09/2011
COURWTestern
District of Wisconsin
PLAINTIFF
DEFENDANT
LEXISNEXIS
3, 945, 835
4/12/2011
3
4 5
DATE INCLUDED
INCLUDED BY
G
PATENT OR TRADEMARK NO.
1 2
Amendment
Answer
Cross Bill
Other
Pleading
3
4 5
DECISION/JUDGEMENT
CLERK
DATE
Copy 1Upon initiation of action, mail this copy to Director Copy 3Upon termination of action, mail this Copy 2Upon filing document adding patent(s), mail this copy to Director Copy 4Case file copy
copy to Director
Case: 3:11-cv-00586
AO 440
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(Rev. 12/09)
Summons in
Civil Action
Plaintiff
v.
11-CV-586
LEXISNEXIS
(a
Inc.)
Defendant
SUMMONS IN A CIVIL ACTION
To: (Defendants
name
(a
Inc.)
Agent
c/o CT Corporation System, Registered 8040 Excelsior Drive, Ste. 200 Madison, WI 53717
against you.
Within 21 days after service of this summons on you (not counting the day you received it) or 60 days if you the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ. P. 12 (a)(2) or (3) you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff s attorney, whose name and address are: Attorneys James D. Peterson and Jennifer L. Gregor Godfrey & Kahn, S.C. One East Main Street, Suite 500 P.O. Box 2719
are
Madison, WI 53701-2719
(608)
257-3911
If you fail to respond, judgment by default will be entered You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Clerk
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AO 440
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(Rev. 12/09)
Summons in
Civil Action
(Page 2)
(This
This
was
required by Fed. R.
Civ. P.
4(l))
summons
received
by me
on
(date).
served the
summons on
Cl I
personally
(date);
or
Cl I left the
summons
or
usual
place
on
address;
or
Cl I served the
(name ofindividual
of process
on
(date);
or
summons
unexecuted because;
or
My fees
are
for
0.00
Date:
Servers
signature
Servers address