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Case 6:15-cv-01050-TJM-TWD Document 1 Filed 08/26/15 Page 1 of 16

UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF NEW YORK
BIO-LAB, INC.,
Plaintiff,
6:15-cv-1050 (TJM/TWD)
Civil Action No. __________________

v.
BENJAMIN TUCKER, individually, and
TUCKER BACKYARD POOLS & SPAS,
INC.,
Defendants.

COMPLAINT
___________
NATURE OF THE CASE
1.
This is an action at law and in equity for willful and malicious infringement of a
federally registered trademark, and for unfair competition and false designation of
origin, under the Lanham Act and New York common law. Plaintiff Bio-Lab, Inc. (BioLab) is the owner of the Swimmer Logo design trademark featured below for use in
connection with a variety of pool and spa treatment products sold through Bio-Labs
authorized BioGuard dealers. Bio-Lab owns three incontestable federal registrations
for trademarks that feature the Swimmer Logo mark.

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2.
Defendant Benjamin Tucker (Tucker) is a former employee of a BioGuard
dealer, and, in that capacity, previously sold and promoted products featuring the
Swimmer Logo mark. In 2014, after leaving the employ of this dealer, however, Tucker
set up his company, Defendant Tucker Backyard Pools & Spas, Inc. (TBPS), in the
vicinity of his former employer to directly compete with it and other nearby authorized
Bio-Lab dealers. Rather than compete fairly, however, Tucker and TBPS have sought to
use a design trademark substantially similar to the Swimmer Logo mark, as juxtaposed
below, with the aim of confusing the public and to benefit from the goodwill associated
with the Swimmer Logo mark:

Upon learning of Defendants infringing mark and that a Bio-Lab customer was
actually confused by it, Bio-Lab sent numerous notices to Defendants to cease this
trademark infringement and to amicably transition to a non-infringing trademark, so
that formal legal action and expense can be avoided. Defendants have ignored BioLabs letters and have continued their unlawful actions.
3.
Through this Complaint, Bio-Lab seeks monetary damages in the form of an
accounting and disgorgement of Defendants profits on the basis of Defendants unjust
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enrichment from their willful and malicious trademark infringement and acts of unfair
competition and false designation of origin.

Bio-Lab also seeks an award of its

reasonable attorneys fees and expenses of litigation, in addition to temporary and


permanent injunctive relief to stop the irreparable harm being caused by Defendants
deliberate acts of trademark infringement, unfair competition, and false designation of
origin.
THE PARTIES
4.
Bio-Lab is a Delaware corporation with a principal place of business at 1725
North Brown Road, Lawrenceville, Georgia 30043.
5.
Tucker, upon information and belief, is a citizen and resident of the state of New
York, residing at 510 Reese Road, Frankfort, New York 13340. Tucker is the driving
force behind TBPSs infringement of the Swimmer Logo mark, and authorized and/or
approved the acts of infringement and/or unfair competition complained of herein.
Further, upon information and belief, Tucker individually infringes upon the Swimmer
Logo mark, in addition to doing so through his company, TBPS.
6.
TBPS is a New York corporation that, upon information and belief, is owned by
Tucker and is located at 4780 Commercial Drive, New Hartford, NY.

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JURISDICTION AND VENUE


7.
The Court has subject matter jurisdiction over this action under 15 U.S.C. 1051
et seq. (the Lanham Act), and under 28 U.S.C. 1331 and 1338. The Court has
supplemental jurisdiction over the state law claims asserted in this action under 28
U.S.C. 1338 and 1367.
8.
The amount in controversy, exclusive of interest and costs, exceeds the sum of
$75,000. Therefore, the Court additionally has diversity jurisdiction over this action
under 28 U.S.C. 1332.
9.
The Court has personal jurisdiction over Defendants because Defendants are
domiciled within this state, do business within this state, and have otherwise
established contacts, both general and specific to the claims in this action, with this
state.
10.
Venue is proper in this District pursuant to 28 U.S.C. 1391(b).
FACTS COMMON TO ALL COUNTS OF RELIEF
The Swimmer Logo Mark
11.
Bio-Lab is a leading manufacturer of pool and spa treatment products.

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12.
One aspect of Bio-Labs business is to give consumers access to professional
quality pool and spa treatment products through Bio-Labs authorized dealers. There
are approximately 1,500 such dealers across the country.

Each dealer undergoes

rigorous training and must provide a variety of Bio-Lab products and water testing
services to remain authorized as a dealer. Only authorized dealers may feature the
Swimmer Logo mark in connection with their business.
13.
For many decades now, Bio-Lab dealers carry products that feature Bio-Labs
Swimmer Logo mark.

In particular, Bio-Lab owns the following trademarks and

trademark registrations for use in connection with the pool and spa treatment products
sold by Bio-Labs dealers:
TRADEMARK

REGISTRATION NO.
1257256
Issued: November 15, 1983

GOODS
Variety of pool and spa
treatment products in Int.
Cls. 1, 3, 5, 9, and 11.

2212469
Issued: December 22, 1998

Variety of pool and spa


treatment products in Int.
Cls. 1, 3, 5, 7, 9, and 21.

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1210211
Issued: September 28, 1982

Pool treatment products in


Int. Cl. 5

True and correct copies of each registration above may be found at Exhibit A. Each of
these trademark registrations is incontestable under federal law.
14.
Bio-Lab has continuously and extensively used the Swimmer Logo mark in
connection with its pool and spa treatment products since, at least, May 1980.
15.
Over the past several decades, Bio-Lab has expended a significant amount of
time, money, and resources in advertising and protecting its exclusive ownership of the
Swimmer Logo mark.

As a result, consumers around the country associate the

Swimmer Logo mark with Bio-Labs quality products and Bio-Lab has generated
substantial goodwill in its mark.
Defendants Bad-Faith Trademark Infringement
16.
Bio-Lab has not authorized either Defendant to use the Swimmer Logo mark or
any mark confusingly similar thereto.
17.
Tucker is familiar with the Swimmer Logo mark and associated products
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because, at one time, he was employed by a Bio-Lab dealer and sold and promoted
products featuring this mark.
18.
At some point in 2014, however, Tucker left the employ of this dealer and set up
his own company, TBPS, to compete with his former employer, other nearby authorized
dealers, and with Bio-Lab.
19.
Rather than do business under his own distinctive brand, Tucker decided to copy
and imitate Bio-Labs Swimmer Logo mark. Indeed, as again juxtaposed below, with
Bio-Labs BIOGUARD & Swimmer Logo design mark featured on the left, it is clear that
Defendants have purposely adopted a mark that is substantially similar to the Swimmer
Logo mark:

The substantial similarities between the two marks are strikingly clear. The infringing
mark features a very similar swimmer stick figure at the top, oriented in the same
direction as in the Swimmer Logo mark. The infringing mark features multiple waves
under the swimmer, as does the Swimmer Logo mark. The infringing mark features an
overall trade dress of blue color tones, quite like the Swimmer Logo featured in the
mark above. Further, the infringing mark is presented in an overall oval shape, similar
to the oval shape of the mark above Defendants have imitated.
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20.
Defendants infringing mark appears on prominent signage on the building that
houses TBPSs business, online at the www.tuckerbackyard.com web site, on social
media pages, in advertisements, employee uniforms, and, upon information and belief,
on a billboard.
21.
Clearly, Defendants have adopted their infringing mark several years after BioLab obtained its federal registration for that mark. Bio-Lab is the senior rights holder.
22.
Upon information and belief, Defendants pool and spa treatment products and
services do not have the same high level of quality as Bio-Labs products. Potential and
existing customers of Bio-Lab products are likely to be confused by Defendants use of
the infringing logo and are likely to believe that Defendants business is associated or
affiliated with Bio-Lab, causing severe harm to the goodwill and reputation connected
with the Swimmer Logo mark.
23.
In fact, earlier this year, one customer informed a Bio-Lab dealer that the
customer (mistakenly) believed that TBPS was a new Bio-Lab dealer. In other words,
Defendants unlawful acts have already caused actual confusion in the marketplace.
24.
It is apparent that Defendants infringing mark was designed in bad faith to
induce this sort of customer confusion, so that Defendants could impermissibly ride on
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the goodwill associated with the Swimmer Logo and convert Bio-Lab customers for
themselves through unfair means.
25.
Therefore, in April 2015, Bio-Labs counsel wrote to Defendants and demanded
that they cease their infringement of the Swimmer Logo mark. Defendants did not
respond to this letter. A true and correct copy of the April 2015 letter may be found at
Exhibit B hereto.
26.
Thereafter, in May 2015, Bio-Labs counsel again wrote to Defendants and
warned them that Bio-Lab would commence legal action against them if this
infringement did not cease. Defendants failed to respond. A true and correct copy of
the May 2015 letter may be found at Exhibit C hereto.
27.
Finally, in June 2015, Bio-Labs counsel again wrote to Defendants in a last effort
to obtain their cooperation. A true and correct copy of the June 2015 letter may be
found at Exhibit D hereto. Defendants did not respond to this letter either, despite
being warned about the serious ramifications and liability posed by their continued
unlawful acts.
28.
Bio-Labs attempts to have Defendants cease their infringement and to rebrand to
a non-infringing mark have been rebuffed, forcing Bio-Lab to file this lawsuit.
Defendants actions constitute willful and malicious trademark infringement, unfair
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competition, and false designation of origin in violation of the Lanham Act and New
York common law.
COUNT I: TRADEMARK INFRINGEMENT
(AGAINST ALL DEFENDANTS)
29.
Bio-Lab incorporates and realleges each of the foregoing paragraphs, as though
fully set forth herein.
30.
Bio-Lab has continuously used its federally registered Swimmer Logo mark in
commerce in connection with pool and spa treatment products since 1980.
31.
Defendants, through Tucker, have both actual and constructive knowledge of
Bio-Labs ownership of and rights in its federally registered Swimmer Logo mark prior
to Defendants adoption of their infringing mark.
32.
Defendants adopted and continue to use in commerce a confusingly similar
version of Bio-Labs federally registered mark, with full knowledge of Bio-Labs
superior rights, and with full knowledge that their infringing use of Bio-Labs mark will
cause confusion, mistake and/or deception in the marketplace.
33.
Defendants offer their goods and services under the infringing mark in the same
channels of trade as those in which Bio-Labs products are offered. Defendants conduct
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business in the vicinity of Tuckers former employer and other authorized Bio-Lab
dealers.
34.
Defendants are using the infringing mark, which is substantially similar to the
registered Swimmer Logo mark, in promoting Defendants products and services.
Defendants unauthorized and unlawful actions have caused and are likely to cause
confusion among the consuming public concerning the source of goods and services
marketed under the infringing mark in view of Bio-Labs incontestable and senior
Swimmer Logo mark for competing products.

Defendants actions constitute

trademark infringement under 15 U.S.C. 1114.


35.
Defendants conduct in infringing Bio-Labs mark is, as explained herein,
deliberate, intentional, malicious, and in bad faith. Defendants should be ordered to
account for and disgorge their profits from their use of the infringing mark, in an
amount to be determined at trial. Further, given Defendants deception and bad faith,
this case should be deemed exceptional and Bio-Lab should be awarded, in addition to
actual damages, exemplary damages, punitive damages, costs, and attorneys fees
pursuant to 15 U.S.C. 1117.
36.
In addition, Defendants conduct will continue to irreparably harm Bio-Lab and
damage the goodwill associated with Bio-Labs registered Swimmer Logo mark.
Defendants products and services are of inferior quality, thereby harming the value
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and reputation associated with the Swimmer Logo mark. Hence, Bio-Lab is entitled to a
preliminary and permanent injunction, prohibiting Defendants from using the
Swimmer Logo mark or any mark confusingly similar thereto, in connection with their
business, pursuant to 15 U.S.C. 1116. Bio-Lab has no adequate remedy at law.
COUNT II: FEDERAL UNFAIR COMPETITION
AND FALSE DESIGNATION OF ORIGIN
(AGAINST ALL DEFENDANTS)
37.
Bio-Lab incorporates and realleges each of the foregoing paragraphs, as though
fully set forth herein.
38.
Defendants have deliberately and willfully attempted to trade on Bio-Labs longstanding and hard-earned goodwill in its Swimmer Logo mark and the reputation
established by Bio-Lab in connection with its products, as well as to confuse consumers
as to the origin and sponsorship of Defendants goods and to pass off their products
and services in commerce as those of Bio-Lab.
39.
Defendants unauthorized and tortious conduct has also deprived and will
continue to deprive Bio-Lab of the ability to control the consumer perception of its
products offered under the Swimmer Logo mark, placing the valuable reputation and
goodwill of Bio-Lab in the hands of Defendants.

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40.
Defendants conduct is likely to cause confusion, mistake or deception as to the
affiliation, connection or association of Defendants and their products and services with
Bio-Lab, and as to the origin, sponsorship or approval of Defendants and their products
and services, in violation of 15 U.S.C. 1125(a)(1).
41.
Defendants should be ordered to account for and disgorge their profits from
their unfair and deceptive use of the infringing mark, in an amount to be determined at
trial. Further, given the knowing, intentional, and willful nature of Defendants acts
constituting unfair competition and false designation of origin, this case should be
deemed exceptional and Bio-Lab should be awarded, in addition to actual damages,
exemplary damages, punitive damages, costs, and attorneys fees pursuant to 15 U.S.C.
1117.
42.
In addition, Defendants conduct will continue to irreparably harm Bio-Lab and
damage the goodwill associated with the registered Swimmer Logo mark. Defendants
products and services are of inferior quality, thereby harming the value and reputation
associated with the Swimmer Logo mark. Hence, Bio-Lab is entitled to a preliminary
and permanent injunction, prohibiting Defendants from using the Swimmer Logo mark,
or any mark confusingly similar thereto, in connection with their business, pursuant to
15 U.S.C. 1116. Bio-Lab has no adequate remedy at law.

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COUNT III: COMMON LAW UNFAIR COMPETITION


AND TRADEMARK INFRINGEMENT
(AGAINST ALL DEFENDANTS)
43.
Bio-Lab incorporates and realleges each of the foregoing paragraphs, as though
fully set forth herein.
44.
Per the foregoing allegations, Defendants are using a design mark which is
substantially similar to the registered Swimmer Logo mark, in promoting Defendants
competing business. Defendants unauthorized and unlawful actions are likely to cause
confusion among the consuming public concerning the source of goods and services
marketed under the infringing mark in view of Bio-Labs incontestable and senior
Swimmer Logo mark for competing products.

Defendants actions constitute

trademark infringement under New York common law.


45.
Per the foregoing allegations, Defendants unauthorized and tortious conduct
has also deprived and will continue to deprive Bio-Lab of the ability to control the
consumer perception of its products offered under the Swimmer Logo mark, placing the
valuable reputation and goodwill of Bio-Lab in the hands of Defendants. Defendants
conduct is likely to cause confusion, mistake or deception as to the affiliation,
connection or association of Defendants and their business with Bio-Lab, and as to the
origin, sponsorship or approval of Defendants and their products and services. Such
actions constitute unfair competition under New York common law.
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46.
Defendants should be ordered to account for and disgorge their profits from
their unfair and deceptive use of the infringing mark, in an amount to be determined at
trial.
47.
In addition, Defendants conduct will continue to irreparably harm Bio-Lab and
damage the goodwill associated with Bio-Labs registered Swimmer Logo mark.
Defendants products and services are of inferior quality, thereby harming the value
and reputation associated with the Swimmer Logo mark. Hence, Bio-Lab is entitled to a
preliminary and permanent injunction, prohibiting Defendants from using the
infringing mark, or any mark confusingly similar thereto, in connection with their
business. Bio-Lab has no adequate remedy at law.
PRAYER FOR RELIEF
Wherefore, Bio-Lab prays and respectfully requests that the Court:
A. Enter judgment against Defendants on all claims;
B. Award Bio-Lab all actual damages, exemplary damages, and punitive damages
to which it is entitled;
C. Award Bio-Lab the costs and attorneys fees that it has incurred in proving its
claims through trial;
D. Enter a preliminary injunction and permanent injunction against Defendants,
together with their officers, employees, agents, successors and assigns or others
acting in concert with them, enjoining them from using the infringing mark, or
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any mark confusingly similar thereto, in connection with Defendants business;


and
E. Grant to Bio-Lab such other relief as the Court deems just and proper.

Respectfully submitted, this 26th day of August, 2015.


HINCKLEY, ALLEN & SNYDER LLP
/s/ Christopher V. Fenlon
Michael L. Koenig, Esq. (507425)
Christopher V. Fenlon, Esq. (516392)
Attorneys for Plaintiff Bio-Lab, Inc.
30 South Pearl Street, Suite 901
Albany, New York 12207
Tel: (518) 396-3100
Fax: (518) 396-3101
Email: mkoenig@hinckleyallen.com
Email: cfenlon@hinckleyallen.com
(Of Counsel)
ARNALL GOLDEN GREGORY LLP
Anuj Desai | Ga Bar No. 193889
Andrew C. Stevens | Ga Bar No. 183366
171 17th Street NW, Suite 2100
Atlanta, Georgia 30363
404.873.8500 [TEL]
404.873.8501 [FAX]
Attorneys for Plaintiff Bio-Lab, Inc.

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