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Case No. __________ QUALITY PACIFIC MANUFACTURING INC., d/b/a PACIFIC MARINE & INDUSTRIAL, Defendant.
COMPLAINT FOR PATENT AND TRADEMARK INFRINGEMENT Plaintiffs Cargotec Marine GmbH ("Cargotec Marine") and Cargotec Switzerland S.A. ("Cargotec Switzerland") (Collectively "Plaintiffs"), for its Complaint against Defendant Quality Pacific Manufacturing, Inc., d/b/a Pacific Marine & Industrial ("PMI"), states and alleges as follows: NATURE OF THE ACTION 1. This is an action for patent infringement under the patent laws of the
United States, 35 U.S.C. § 1 et seq., including 35 U.S.C. § 271, and trademark infringement under the United States Lanham Act § 43(a), 15 U.S.C. § 1125(a). THE PARTIES 2. Cargotec Marine is a German corporation with its headquarters at
Reichsbahnstrasse 72, 22525 Hamburg, Germany.
Cargotec Switzerland is a Switzerland corporation with its headquarters at
Poststrasse 9 Zug 6300 CH, Switzerland. Cargotec Switzerland is a wholly-owned subsidiary of Cargotec Marine. 4. Upon information and belief, PMI is a corporation organized and existing
under the laws of the State of California, with its principal place of business located at 111 West Cutting Boulevard, Richmond, CA 94801. Its registered agent for service of process is Kent Brown, 111 West Cutting Boulevard, Richmond, CA 94801. JURISDICTION AND VENUE 5. This Court has subject-matter jurisdiction of this action pursuant to
28 U.S.C. §§ 1331 and 1338(a). 6. Based on information and belief, PMI does substantial and not isolated
business within this district. PMI maintains an online catalog of its industrial and marine products in order to solicit and facilitate sales of its products to customers throughout the world, including customers in Wisconsin. PMI represents to the public through its website that PMI does substantial and not isolated business within this judicial district through its sales to Rockwell Automation, with its principal office located at 1201 South 2nd Street, E-7F19, Milwaukee, WI 53204, to Johnston Controls, Inc., with its principal office located at 5757 North Green Bay Avenue, Milwaukee, WI 53209, and to Bay Shipbuilding Corp., with its principal office located at 605 North 3rd Avenue, Sturgeon Bay, WI 54235. A true and correct copy of PMI's webpage dated March 13, 2014, representing PMI's substantial business and not isolated business with Rockwell Automation, Inc., Johnston Controls, Inc., and Bay Shipbuilding Corp, is attached hereto as Exhibit A.
Because PMI does substantial and not isolated business within this judicial
district and therefore resides here, venue in this district is proper pursuant to 28 U.S.C. §§ 1391 and 1400(b). BACKGROUND 8. Cargotec Marine is the successor-in-interest to intellectual property rights
from MacGREGOR (DEU) GmbH, including the CV-20 coupling piece and U.S. Patent No. 5,758,391 ("the '391 patent"). A true and correct copy of the recordation filed with the United States Patent and Trademark Office of the assignments of the '391 patent is attached hereto as Exhibit B. 9. The '391 patent, entitled "Coupling Piece for the Detachable Connection
of Containers," was duly and legally issued by United States Patent and Trademark Office on June 2, 1998, after full and fair examination. A true and correct copy of the '391 patent is attached hereto as Exhibit C. 10. The CV-20 coupling piece is a locking device used as a detachable
connection of corner fittings of cargo containers stacked on board ships, including container ships used on the Great Lakes. 11. Cargotec Marine owns all right, title, and interest in the trademark
contained on the CV-20 coupling device, including the CV-20 mark. 12. Cargotec Marine has two suppliers of the CV-20 coupling piece. Each
CV-20 coupling piece each supplier manufactures contains a different and highly distinctive marking. 13. Cargotec Switzerland owns all right, title, and interest in the
MacGREGOR mark, which is federally registered under U.S. Federal Trademark
Registration No. 3365990. A true and correct copy of the abstract of title is attached hereto as Exhibit D. 14. Plaintiffs have established substantial goodwill and reputation for products
that bear the MacGREGOR and CV-20 marks, and incur considerable expense to actively enforce their rights in and to the MacGREGOR and CV-20 marks. 15. Through Plaintiffs' extensive use, the MacGREGOR name and mark has
become famous, and MacGREGOR has become a trusted brand. 16. Plaintiffs have not authorized PMI to use Plaintiffs' trademarks, and
Plaintiffs have not sponsored or approved any of PMI's products. 17. PMI is a manufacturer and distributor of marine and industrial products,
including cargo container securing products. 18. Between 2004 and 2009, PMI was, pursuant to an informal pricing
agreement, a stocking distributor for MacGREGOR. Due to low sales and significant carrying costs, PMI terminated the informal pricing agreement with MacGREGOR. PMI is not, and has not been, a recognized authorized distributor of MacGREGOR or Cargotec Marine's products. Furthermore, at the time of the events alleged herein, PMI was not an authorized distributor of Cargotec Marine's CV-20 coupling piece. 19. PMI maintains a website and facilitates sales of its products through an
online catalog, including cargo container securing products. 20. PMI represented to the public, through its website, that PMI was an
authorized distributor of "MacGregor - MacGregor Navire - CargoTec - Navire." A true and correct copy of PMI's webpage, dated May 14, 2013, is attached hereto as Exhibit E.
PMI included on its webpage the CV-20 and MacGREGOR trademarks as
metadata in order to attract potential purchasers to the PMI webpage and facilitate sales of CV-20 coupling pieces. A true and correct copy of PMI's webpage metadata, dated September 10, 2013, is attached hereto as Exhibit F. 22. Between approximately March 15, 2013 and June 13, 2013, PMI sold a
CV-20 coupling piece. The CV-20 coupling piece sold by PMI (the "counterfeit CV-20 coupling piece") contains markings that are significantly different from the markings contained on the CV-20 coupling pieces manufactured by Cargotec Marine's suppliers. 23. The counterfeit CV-20 coupling piece sold by PMI was not manufactured
by Cargotec Marine's suppliers and was not obtained by PMI from Cargotec Marine. Upon information and belief, PMI knowingly obtained the counterfeit CV-20 coupling piece from another source or, alternatively, PMI manufactured the counterfeit CV-20 coupling piece. 24. PMI is not now, and never has been, licensed or otherwise authorized by
Cargotec Marine to import, use, sell, or offer for sale products covered by the '391 patent. 25. Plaintiffs have not granted consent, either written or otherwise, to PMI to
distribute, sell, or offer products or services bearing the CV-20 or MacGREGOR trademarks. 26. Upon information and belief, PMI's use of the CV-20 and MacGREGOR
marks is willful and intentional, done expressly for the purpose of trading upon the valuable goodwill and public recognition built up by Plaintiffs in the CV-20 and MacGREGOR trademarks.
Upon information and belief, PMI has engaged in the above acts willfully
and with actual knowledge of Plaintiffs' ownership rights, and has done so for its own commercial gain through use of Plaintiffs' valuable goodwill and business reputation in violation of Plaintiffs' rights. COUNT I (INFRINGEMENT OF THE '391 PATENT) 28. forth herein. 29. Defendant PMI infringed the '391 patent, literally and/or under the Plaintiffs incorporate each of the preceding paragraphs 1-27 as if fully set
doctrine of equivalents, by making, using, selling, offering for sale, and/or importing in or into the United States, without authority, products, including the counterfeit CV-20 coupling piece, that fall within the scope of the claims of the '391 patent. 30. The acts of PMI complained of herein constitute direct and indirect
infringement of the '391 patent in violation of 35 U.S.C. § 271. 31. As a direct and proximate result of PMI's acts of patent infringement,
Cargotec Marine was injured and sustained substantial damages in an amount not presently known. COUNT II (TRADEMARK INFRINGEMENT, FALSE ADVERTISING, AND UNFAIR COMPETITION IN VIOLATION OF THE LANHAM ACT, 15 U.S.C. § 1125(a)) 32. forth herein. 33. trademarks. Plaintiffs own a protectable interest in its MacGREGOR and CV-20 Plaintiffs incorporate each of the preceding paragraphs 1-31 as if fully set
PMI's use of Plaintiffs' trademarks on the counterfeit CV-20 coupling
device as described above constitutes trademark infringement, false designation of origin, or false or misleading description of fact which is likely to cause confusion among relevant customers, or to cause mistake, or to deceive as to the affiliation, connection or association of PMI with Plaintiffs, or as to the origin, sponsorship, or approval of PMI's goods and services in commercial activities by Plaintiffs, in violation of section 43(a) of the Lanham Trademark Act of 1946, as amended, 15 U.S.C. § 1125(a). 35. PMI's use of Plaintiffs'' trademarks on its webpage in a commercial
setting, misrepresenting the nature, characteristics, qualities, and geographic origin of PMI's goods, services or commercial activities, or alternatively misrepresenting the nature, characteristics, qualities, and geographic origin of the manufacturer of the counterfeit CV-20 coupling device's goods, services or commercial activities constitutes trademark infringement in violation of section 43(a) of the Lanham Trademark Act of 1946, as amended, 15 U.S.C. § 1125(a). 36. As a direct and proximate result of PMI's conduct as alleged above,
Plaintiffs have suffered and will continue to suffer damage and injury to its business, reputation, and goodwill. COUNT III (INTENTIONAL USE OF A COUNTERFEIT MARK IN VIOLATION OF 15 U.S.C. § 1114(1)(a)) 37. forth herein. 38. PMI intentionally used Cargotec Switzerland's federally registered Plaintiffs incorporate each of the preceding paragraphs 1-36 as if fully set
MacGREGOR trademark on its counterfeit CV-20 coupling piece product in connection
with the sale, offering for sale, or distribution, and advertising of goods and services on or in connection with which such use was likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of PMI with Plaintiffs, or as to the origin, sponsorship, or approval of PMI's goods and services in commercial activities by Plaintiffs, in violation of 15 U.S.C. § 1114(1)(a). 39. As a direct and proximate result of PMI's use of Cargotec Switzerland's
federally registered MacGREGOR trademark, Plaintiffs have suffered and will continue to suffer damage and injury to its business, reputation, and goodwill. COUNT IV (TRADEMARK DILUTION) 40. forth herein. 41. The MacGREGOR mark is distinctive and famous and is entitled to Plaintiffs incorporate each of the preceding paragraphs 1-39 as if fully set
protection against dilution by blurring or tarnishment. 42. PMI commenced use of the MacGREGOR mark in commerce after the
mark had become famous and distinctive. 43. PMI's use in commerce of the MacGREGOR mark in connection with the
sale of the CV-20 coupling device has caused dilution of the distinctive quality of the MacGREGOR mark, and infringes Cargotec Switzerland's rights to its famous mark, in violation of 15 U.S.C. § 1125(c). 44. As a result of PMI's dilution of the MacGREGOR mark, Plaintiffs have
suffered substantial damages, as well as the continuing loss of the goodwill and reputation established by Plaintiffs in their marks.
PRAYER FOR RELIEF WHEREFORE, Plaintiffs respectfully requests that the Court enter judgment in its favor against Defendant PMI as follows: A. B. Adjudging that PMI has infringed United States Patent No. 5,758,391; Pursuant to 35 U.S.C. § 283, permanently enjoining PMI and its officers,
agents, servants, employees, attorneys, and all persons in active concert or participation with any of them, from any further acts of infringement of the '391 patent; C. Pursuant to 35 U.S.C. § 284, awarding Plaintiffs any compensatory
damages—along with interest and costs—in an amount according to proof, and in no event less than a reasonable royalty for Defendant PMI's infringement of the '391 patent; D. Finding that this case is an exceptional case under 35 U.S.C. § 285, and
awarding Plaintiffs their attorneys' fees; E. Adjudging that PMI has infringed Plaintiffs' trademarks, including the
CV-20 and MacGREGOR marks; F. G. Finding that PMI's trademark infringement was intentional; Preliminarily and permanently enjoining and restraining PMI, its
employees, agents and representatives, and all persons acting in concert or in participation with PMI, from using on or in connection with any business, service, or the sale, or offering for sale, distribution, advertising, promotion, labeling or packaging, of any services or any goods, or from using for any commercial purpose whatsoever, Plaintiffs' federally registered MacGREGOR trademark, the CV-20 trademark, or any other word or thing calculated or likely to cause confusion or mistake to the public mind or to deceive the public into the belief that PMI or PMI's products or services are related,
endorsed or sponsored in any way to or by Plaintiffs or their services; and any other false designation or false description or representation or any other thing calculated or likely to injure the business reputation of Plaintiffs or to harm or dilute the distinctive quality of Plaintiffs' protectable trademark rights; H. Directing PMI to notify all of its customers that PMI is not affiliated with
Plaintiffs and is not entitled to use the MacGREGOR or CV-20 trademarks; I. Requiring PMI to deliver to the Court for destruction, or to show proof
(upon the oath of PMI's authorized agent) of such destruction, or sufficient modification to eliminate the infringing matter, of any and all products or other material in the possession, custody or control of PMI or PMI's agents or distributors, including any materials posted on any website(s) controlled or owned by, developed or maintained on behalf of PMI, which bear or depict in any manner Plaintiffs' trademarks, including but not limited to the MacGREGOR trademark and designation; J. Directing PMI to recall from any and all channels of distribution any
products, advertising and promotional materials distributed by PMI, or PMI's agents or distributors, bearing the MacGREGOR or CV-20 trademark or any other matter or materials in violation of any injunction entered herein; K. Directing PMI to account to Plaintiffs for PMI's profits and ordering that
Plaintiffs shall recover from PMI all of its damages and costs arising from the foregoing acts of intentional infringement and unfair competition, and at a sum equal to three times the damages and costs pursuant to 15 U.S.C. § 1117(b); L. Pursuant to 15 U.S.C. § 1117(b), awarding to Plaintiffs their reasonable
attorney's fees incurred as a result of this action;
For such other relief as the Court deems just and equitable, including pre-
judgment interest, post-judgment interest, attorneys' fees, costs, and disbursements of this action. JURY TRIAL DEMAND Plaintiffs demand a trial by jury on all matters and issues triable by a jury. Dated this 26th day of March, 2014. s/ Paul J. Stockhausen Paul J. Stockhausen WI State Bar ID No. 1034225 firstname.lastname@example.org Leslie S. Miller WI State Bar ID No. 1034761 email@example.com James N. Law WI State Bar ID No. 1088047 firstname.lastname@example.org Attorneys for Plaintiff Reinhart Boerner Van Deuren s.c. 1000 North Water Street, Suite 1700 Milwaukee, WI 53202 Mailing Address: P.O. Box 2965 Milwaukee, WI 53201-2965 Telephone: 414-298-1000 Facsimile: 414-298-8097
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