Case 1:11-cv-12176-GAO Document 1 Filed 12/08/11 Page 1 of 6

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS

BUTLER HOME PRODUCTS, LLC Plaintiff, v. POLYMER GROUP, INC. and CHICOPEE, INC. Defendants.

: : : : : : : : : :

CIVIL ACTION NO.: JURY TRIAL DEMANDED

COMPLAINT Plaintiff Butler Home Products, LLC (Butler) by and through its attorneys, for its complaint against Defendants Polymer Group, Inc. (PGI) and Chicopee, Inc. (Chicopee) (collectively, Defendants) allege as follows: NATURE OF ACTION 1. This is an action for a declaratory judgment of non-infringement and cancellation

of U.S. Trademark Registration No. 4,047,140 (the 140 Registration). 2. Declaratory relief is necessary and appropriate because it will serve to clarify the

rights between the parties. An actual and justiciable controversy exists between the parties regarding the use of a common pattern on non-woven disposable wipes and fabrics which Defendants seek to preclude Butler from using because of an alleged infringement of the 140 Registration.

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PARTIES 3. Butler is a Delaware Limited Liability Company with its principal place of

business at 237 Cedar Hill Street, Marlborough, MA 01752. Butler is a leading manufacturer and distributor of a variety of branded cleaning products. 4. Upon information and belief, PGI is a Delaware corporation with an address of

9335 Harris Corners Parkway, Suite 300, Charlotte, NC 28269. 5. Upon information and belief, Chicopee is a Delaware corporation with an address

of 9335 Harris Corners Parkway, Suite 300, Charlotte, NC 28269 and is a wholly-owned subsidiary of PGI. Chicopee owns the 140 Registration. JURISDICTION AND VENUE 6. This court has subject matter jurisdiction pursuant to 28 U.S.C. 2201 and 2202

and 15 U.S.C. 1119, 1064. 7. Upon information and belief, this court has personal jurisdiction over PGI and

Chicopee through Defendants purposeful minimum contacts with Massachusetts by transacting business in this State through the selling of its goods in connection with the alleged trademark which is the subject of the 140 Registration and through Defendants contact with Butler. 8. Venue is proper pursuant to 28 U.S.C. 1391(b)-(c) because the events and

communications between the parties that give rise to Butlers claim for declaratory relief occurred in Massachusetts, and because upon information and belief, PGI and Chicopee are subject to the personal jurisdiction in this Court.

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FACTS 9. On or about November 29, 2011, Butler received a cease and desist letter dated

November 28, 2011 from counsel for PGI and Chicopee alleging trademark infringement of the 140 Registration and demanding that Butler cease selling its MR. CLEAN Reusable Wipes (the Demand Letter). Attached as Exhibit A is a true and correct copy of the Demand Letter. 10. In the Demand Letter, Chicopee enclosed a copy of an electronic record from the

U.S. Patent and Trademark Office regarding the 140 Registration. Such record showed that the Registration was for a diamond pattern design for nonwoven textile wipes and fabrics. (See Exh. A). 11. The trademark application for the diamond pattern design which ultimately issued

into the 140 Registration was originally denied registration on the Principal Register of the U.S. Patent and Trademark Office because of a lack of distinctiveness and inability to indicate source. Accordingly, the U.S. Patent and Trademark Office advised that the diamond design pattern was merely ornamental. Attached as Exhibit B is a true and correct copy of the Office Action refusing registration. 12. Chicopee did not respond to the initial refusal to register and a second Office

Action was issued, again refusing registration on the same ground, namely, that the diamond design pattern was merely ornamental and could not function as a trademark. Attached as Exhibit C is a true and correct copy of the second Office Action. 13. Rather than proving that the trademark had acquired distinctiveness to overcome

the refusal to register the mark on the Principal Register, Chicopee chose to amend the

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application for registration on the Supplemental Register. (See Exh. A). Upon information and belief, Chicopee was unable to provide the requisite proof to show acquired distinctiveness. 14. Chicopee did not seek registration of the diamond pattern design until August 20,

2010, which was the filing date of the underlying application. The 140 Registration ultimately issued on the Supplemental Register on October 25, 2011, and Butler subsequently received the Demand Letter approximately one month later. (See Exh. A). 15. The design that is the subject of the 140 Registration is commonly used within

the cleaning industry for non-woven fabrics and wipes. 16. Butler has been using the diamond pattern design on its MR. CLEAN Reusable

Wipes since before the 140 Registration issued. 17. In addition to Butlers use of the diamond pattern design on its MR. CLEAN

Reusable Wipes, upon information and belief, other third parties also use the same design on similar wipe products, including, but not limited to, use in connection with the BRAWNY and BRILLO brands of wipe products. Attached as Exhibit D are true and correct copies of webpages from Amazon.com showing such wipes. 18. Based on such widespread uses of the diamond pattern design in connection with

non-woven disposable wipe products, such design clearly does not act as an indicator of source and therefore does not function as a trademark. 19. The diamond design pattern is simply a generic pattern used widely in the

cleaning products industry for nonwoven textile wipes and fabrics and should not be entitled to trademark protection. 4
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20.

Defendants should not be allowed to maintain the 140 Registration where

Defendants do not have a protectable trademark. Such impermissible trademark registration will cause harm to Butler where Defendants would be able to assert the 140 Registration against Butler and preclude Butler from selling its MR. CLEAN Reusable Wipes. COUNT I (Declaratory Judgment of Non-infringement) 21. 22. Butler repeats and realleges paragraphs 1-20 as though fully set forth herein. Defendants have threatened Butler with trademark infringement based upon the

allegation that Chicopee has a valid trademark registration which is enforceable against Butler. 23. An actual and justiciable controversy exists among the parties stemming from

Defendants assertions as to Chicopees ownership of the alleged diamond pattern design as a trademark and the 140 Registration. 24. 25. This controversy is within this Courts original jurisdiction. Pursuant to 28 U.S.C. 2201, Butler is entitled to a declaratory judgment that its

use of the diamond pattern design is not an infringing use because the diamond pattern design is simply a generic, ornamental design used widely in the cleaning products industry for nonwoven textile fabrics and wipes and is not a trademark. COUNT II (Cancellation of 140 Registration Pursuant to 15 U.S.C. 1119, 1064) 26. 27. Butler repeats and realleges paragraphs 1-25 as though fully set forth herein. Defendants have threatened Butler with trademark infringement based upon the

allegation that Chicopee has a valid trademark registration which is enforceable against Butler.

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28.

An actual and justiciable controversy exists among the parties stemming from

Defendants assertions as to its ownership of the alleged diamond pattern design as a trademark and the 140 Registration. 29. 30. 31. This controversy is within this Courts original jurisdiction. This Court has the power to cancel a federal trademark registration. Pursuant to 28 U.S.C. 2201, Butler is entitled to a declaratory judgment that the

140 Registration be cancelled. WHEREFORE, Butler respectfully demands judgment: A. infringement; B. C. Canceling the 140 Registration; and Awarding Butler such other relief as the Court may deem just and proper. JURY DEMAND Butler demands a trial by jury on all issues so triable. Dated: December 8, 2011 BUTLER HOME PRODUCTS, LLC, By its Attorneys, Declaring that Butlers use of the diamond design pattern is not a trademark

/s/Lori J. Shyavitz Lori J. Shyavitz, BBO # 650172 McCarter & English LLP 265 Franklin Street Boston, MA 02110 Telephone: (617) 449-6500 Facsimile: (617) 607-9200 E-mail: lshyavitz@mccarter.com

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