Case: 1:11-cv-07265 Document #: 1 Filed: 10/13/11 Page 1 of 13 PageID #:1

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION THE LAW OFFICES OF PETER F. FERRACUTI, P.C. Plaintiff, v. DREW J. FERRACUTI, DREW FERRACUTI LAW FIRM (d/b/a FERRACUTI LAW FIRM), Defendants. § § § § § § § § § § § § § §

Case No.:

JURY TRIAL DEMANDED

COMPLAINT Comes now Plaintiff, The Law Offices of Peter F. Ferracuti, P.C. (“Plaintiff”), for its Complaint against Drew J. Ferracuti and Drew Ferracuti Law Firm (d/b/a Ferracuti Law Firm) (collectively “Defendants”). As its Complaint against Defendants, Plaintiff states and alleges as follows: NATURE OF THE ACTION 1. This is an action against Defendants for: trademark infringement and unfair

competition under 15 U.S.C. § 1125(a) (a.k.a. § 43(a) of the Lanham Act); violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505; violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510; violation of the Illinois Trademark Registration and Protection Act, 765 ILCS 1036; and common law unfair competition and trademark infringement.

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2.

Plaintiff, based in Ottawa, Illinois, is the owner of common law rights and state

and federal registrations for several service marks that include the term FERRACUTI and that are used in connection with legal services. (Ex. 1, Plaintiff’s Trademark Registrations.) Plaintiff has used such marks in connection with legal services in interstate commerce for over thirty years. 3. As alleged and pleaded herein, despite Plaintiff’s long-standing use of these

marks, Defendants, who are also based in Ottawa, Illinois, recently adopted and used service marks bearing identity or confusing similarity to Plaintiff’s FERRACUTI service marks. For example, Defendants adopted and used the mark FERRACUTI LAW FIRM and other variations of marks containing the term FERRACUTI. Defendants’ misappropriation of Plaintiff’s trademarks is an intentional attempt to pass off Defendants’ services as Plaintiff’s high quality services by deceiving the relevant public, including consumers. 4. Defendants have also competed unfairly with Plaintiff and employed deceptive

business practices. For example, knowing Plaintiff’s long-standing and excellent reputation for legal services, Defendants likely cause confusion by inviting potential clients to “[t]urn to the household name in Illinois' worker's compensation legal circles,” stating “it has been stated that Ferracuti is a household name in Illinois worker’s compensation . . .” and stating that Defendant Drew Ferracuti is “[o]ne of the most experienced and results-driven Workers’ Compensation and Personal Injury lawyers in Illinois.” (Ex. 2, archives of Defendants’ websites.) 5. Defendants’ unfair competition, deceptive business practices, and unauthorized

use of marks bearing identity or confusing similarity to Plaintiff’s trademarks is an effort to trade on the valuable goodwill and reputation associated with Plaintiff’s trademarks, and is likely to cause confusion with regard to the affiliation or connection between Plaintiff and Defendants,

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and with regard to the source, sponsorship, or approval of Defendants’ services, all to Plaintiff’s harm and Defendants’ unjust enrichment. 6. Plaintiff’s efforts to resolve this matter amicably have been unsuccessful.

Accordingly, Plaintiff respectfully seeks an order from this Court barring Defendants from using FERRACUTI in a misleading manner and requiring Defendants to take reasonable precautions to avoid consumer confusion. THE PARTIES 7. Plaintiff The Law Offices of Peter F. Ferracuti, P.C. is an Illinois professional

corporation offering legal services with a primary place of business at 110 E. Main Street, Ottawa, IL 61350. 8. Defendant Drew J. Ferracuti (“Drew Ferracuti”) is an individual practicing law in

the state of Illinois, with an address of 2965 E 1489th Rd., Ottawa, IL 61350-9011 and, upon information and belief, is the principal of Drew Ferracuti Law Firm. 9. Defendant Drew Ferracuti Law Firm (d/b/a Ferracuti Law Firm) is a law firm

offering legal services with a primary place of business at 607 Clinton Street, Ottawa, IL 61350. JURISDICTION AND VENUE 10. This Court has subject matter jurisdiction over Plaintiff’s federal claims, namely,

trademark infringement and unfair competition under 15 U.S.C. § 1125(a), pursuant to 15 U.S.C. §1121 and 28 U.S.C. §§ 1331 and 1338(b). This Court has subject matter jurisdiction over Plaintiff’s remaining claims, namely, violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, violation of the Illinois Uniform Deceptive Trade Practices Act, violation of the Illinois Trademark Registration and Protection Act, and common law unfair competition, pursuant to 28 U.S.C. § 1367.

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11.

This Court has personal jurisdiction over the Defendant for the purposes of this

action pursuant to 28 U.S.C. §§ 1391 and 1400 because the Defendants reside in this district and/or sell, offer to sell, and advertise services using Plaintiff’s trademarks in this District. 12. Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400 because at least

a substantial part of the events giving rise to Plaintiff’s claims occurred in this District and Defendants are subject to personal jurisdiction in this District. 13. A real, immediate, and justiciable controversy exists between Plaintiff and

Defendants relating to the infringement of Plaintiff’s trademarks and Defendants’ unfair competition and violation of state laws. PLAINTIFF’S TRADEMARKS 14. Plaintiff has provided legal services in commerce under the FERRACUTI mark

since 1977 and, through its predecessor-in-interest Peter F. Ferracuti, since 1953. Plaintiff owns common law rights in the FERRACUTI mark as well as state and federal registered service marks for FERRACUTI AND ASSOCIATES (IL State Reg. No. 101774); FERRACUTI LAW (IL State Reg. No. 101739); FERRACUTI LAW OFFICES (IL State Reg. No. 101744); THE LAW OFFICES OF PETER F. FERRACUTI (IL State Reg. No. 101740); and LAW OFFICES OF PETER F. FERRACUTI (Serial No. 85269031) (collectively “the FERRACUTI Marks”). (Ex. 1.) 15. Plaintiff focuses its practice in the fields of personal injury and workers’

compensation, employing approximately 35 persons, including eight attorneys. Plaintiff has continuously offered legal services under the FERRACUTI MARKS since 1977. Plaintiff’s predecessor-in-interest, Peter F. Ferracuti, first offered legal services under the mark FERRACUTI in 1953. During this fifty-eight year period, Plaintiff and its predecessor-in-

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interest, Peter F. Ferracuti, have obtained for their clients numerous landmark personal injury awards in LaSalle County and have recovered over $150 million dollars in worker’s compensation cases. Plaintiff routinely handles claims from numerous jurisdictions all across the State of Illinois, as well claims in Iowa and Indiana 16. Plaintiff’s predecessor-in-interest and principal, Peter F. Ferracuti has been a

leader of the LaSalle County trial bar for decades. A Harvard Law School survey, starting in 1987 and in several subsequent publications, recognized Peter F. Ferracuti as being one of a group of eighteen leading civil litigators from the state of Illinois. Along with a group of trial attorneys from throughout the United States, Peter F. Ferracuti has been recognized as one of the “Best Lawyers in America.” 17. Plaintiff has expended substantial time, effort, and money in advertising,

promoting, and marketing the FERRACUTI Marks. For example, Plaintiff promotes the FERRACUTI Marks via its website, www.peterferracuti.com, and in phone books, trade publications, and legal directories. 18. As a result of Plaintiff’s long track record of success, extraordinary investments

and years of substantial, continuous, and extensive use of the FERRACUTI Marks for the promotion and provision of legal services, the FERRACUTI Marks have acquired secondary meaning such that consumers rely on the FERRACUTI Marks to identify and distinguish Plaintiff’s services from services offered by other entities. The FERRACUTI Marks have acquired exceedingly valuable goodwill and have become widely recognized by consumers as referring uniquely to Plaintiff as a longstanding source of high quality legal services.

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DEFENDANTS’ UNAUTHORIZED USE OF PLAINTIFF’S TRADEMARKS, UNFAIR COMPETITION, AND DECEPTIVE BUSINESS PRACTICES 19. With full knowledge of Plaintiff’s decades-long use of the FERRACUTI Marks in

connection with legal services, Defendants recently adopted and began using in interstate commerce marks bearing confusingly similarity to Plaintiff’s FERRACUTI Marks for legal services. 20. Defendants’ legal practice, like Plaintiff’s legal practice, is focused on

representation in personal injury and workers’ compensation matters and Defendants provide their legal services from offices located in Ottawa, Illinois. 21. Plaintiff employed Defendant Drew Ferracuti from 1987 until 2001. Following

his employment with the Plaintiff, Defendant Drew Ferracuti founded Defendant law firm in Ottawa, Illinois focusing on personal injury and workers’ compensation. 22. Defendants initially took precautions to avoid confusing uses of the

FERRACUTI. For example, Defendants preceded use of FERRACUTI with Defendant Drew Ferracuti’s given name. Recently, however, Defendants adopted and used identifiers that are likely to cause consumer confusion, such as the mark FERRACUTI LAW FIRM and the domain name www.ferracutilaw.com. (Ex. 2; Ex. 3, Defendants’ Internet listings.) During this period, Defendants, without Plaintiff’s authorization, applied for and registered several FERRACUTI service marks with the State of Illinois. (Ex. 4, Defendant’s Trademark Registrations.) 23. Defendants have competed unfairly with Plaintiff and employed deceptive

business practices. For example, although Defendant law firm came into existence decades after Plaintiff and its predecessor-in-interest began using the FERRACUTI Marks, Defendants invite potential clients to “[t]urn to the household name in Illinois' worker's compensation legal

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circles,” and stating “it has been stated that Ferracuti is a household name in Illinois worker’s compensation . . .” (Exs. 2, 3.) 24. Defendants have advertised their legal services on websites located at the domain

names www.ferracutilaw.com and http://workerscompattorneyottawa.com. (Id.) Defendants also advertise their legal services through a wide variety of print and Internet publications. (Id.) 25. Defendants’ legal services affect and are injected into the stream of commerce

and substantially affect interstate commerce. 26. Search engine queries for the phrase “Ferracuti Law Ottawa” reveal several third

party Internet directories that, due to Defendants’ Internet advertising and use of marks bearing confusing similarity to Plaintiff’s marks, prominently refer to Defendants as “Ferracuti Law Firm.” Two online directories, Manta and Merchant Circle, refer to Defendants and Plaintiff, respectively, as “Ferracuti Law Office” and “Ferracuti Law Offices.” (Ex. 5, Third Party Directories.) 27. Defendants’ unauthorized adoption and use of the FERRACUTI Marks, unfair

competition and deceptive business practices have caused actual confusion and deception among consumers. COUNT I: TRADEMARK INFRINGEMENT IN VIOLATION OF SECTION 43(a) OF THE LANHAM ACT, 15 U.S.C. §1125(a) 28. Plaintiff incorporates by reference each of the preceding allegations of paragraphs

1 - 27 above as though stated herein. 29. Defendants’ use in interstate commerce of the FERRACUTI Marks and

derivatives thereof is likely to cause confusion, mistake, and/or deception among the relevant public, including consumers, as to the affiliation, connection, or association between Defendants and Plaintiff, and/or mislead the public into thinking that Plaintiff is the origin of, or have

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sponsored or approved of Defendants’ legal services, and/or commercial activities. Defendants’ copying of Plaintiff’s trademarks is an intentional attempt to pass off Defendants’ services as Plaintiff’s services. Defendants’ aforesaid acts constitute willful infringement of Plaintiff’s trademark rights in its legal services, in violation of 15 U.S.C. § 1125(a)(1). 30. Defendants’ infringement has caused Plaintiff to suffer economic damage, has

resulted in unjust enrichment to Defendants, and has caused and will continue to cause, unless enjoined by this Court, substantial and irreparable damage and injury to Plaintiff and the public, for which damage and injury Plaintiff has no adequate remedy at law. COUNT II – VIOLATION OF THE ILLINOIS CONSUMER FRAUD AND DECEPTIVE BUSINESS PRACTICES ACT, 815 ILCS 505/1-12 31. Plaintiff incorporates by reference each of the preceding allegations of paragraphs

1 - 30 above as though stated herein. 32. Defendants’ use of the FERRACUTI Marks and derivatives thereof is an unfair

method of competition and an unfair or deceptive act or practice in that Defendants are using and have used deception and misrepresentation, on which they intend consumers to rely, and are in the course of conduct involving trade or commerce, in violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, S.H.A. 815 ILCS 505/1-12. 33. Defendants’ conduct involves trade practices that are directed to the market

generally and that implicate consumer protection concerns. 34. Defendants’ unlawful conduct has caused Plaintiff to suffer economic damage,

has resulted in unjust enrichment to Defendants, and has caused and will continue to cause, unless enjoined by this Court, substantial and irreparable damage and injury to Plaintiff and the public, for which damage and injury Plaintiff has no adequate remedy at law.

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COUNT III – VIOLATION OF THE ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT, 815 ILCS 510/1-7 35. Plaintiff incorporates by reference each of the preceding allegations of paragraphs

1 - 34 above as though stated herein. 36. Defendants’ use of the FERRACUTI Marks and derivatives thereof is a deceptive

trade practice in that Defendants attempt to pass off their goods and services as those of Plaintiff’s goods and services; Defendants’ conduct causes a likelihood of confusion or misunderstanding as to the source, sponsorship, or approval of the parties’ goods and services and as to Defendants’ affiliation, connection, or association with Plaintiff, in violation of the Illinois Uniform Deceptive Trade Practices Act, S.H.A. 815 ILCS 510/1-7. 37. Defendants’ unlawful conduct has caused Plaintiff to suffer economic damage,

has resulted in unjust enrichment to Defendants, and has caused and will continue to cause, unless enjoined by this Court, substantial and irreparable damage and injury to Plaintiff and the public, for which damage and injury Plaintiff has no adequate remedy at law. COUNT IV – VIOLATION OF THE ILLINOIS TRADEMARK REGISTRATION AND PROTECTION ACT, 765 ILCS 1036 38. Plaintiff incorporates by reference each of the preceding allegations of paragraphs

1 - 37 above as though stated herein. 39. Defendants’ use of the FERRACUTI Marks and derivatives thereof in connection

with the sale, offer for sale, or advertising of services is likely to cause confusion, mistake, and/or deception among the relevant public, including consumers, as to the affiliation, connection, or association between Defendants and Plaintiff, and/or mislead the public into thinking that Plaintiff is the origin of, or has sponsored or approved of Defendants’ legal services, and/or commercial activities. Defendants’ copying of Plaintiff’s trademarks is an intentional attempt to pass off Defendants’ services as Plaintiff’s services. Defendants’ aforesaid 9

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acts constitute willful infringement of Plaintiff’s trademark rights in its legal services, in violation of the Illinois Trademark Registration and Protection Act, 765 ILCS 1036. 40. Defendants’ unlawful conduct has caused Plaintiff to suffer economic damage,

has resulted in unjust enrichment to Defendants, and has caused and will continue to cause, unless enjoined by this Court, substantial and irreparable damage and injury to Plaintiff and the public, for which damage and injury Plaintiff has no adequate remedy at law. COUNT V – COMMON LAW UNFAIR COMPETITION AND TRADEMARK INFRINGEMENT 41. Plaintiff incorporates by reference each of the preceding allegations of paragraphs

1 - 40 above as though stated herein. 42. Defendants’ use of the FERRACUTI Marks and derivatives thereof constitutes

common law unfair competition and trade dress infringement under Illinois Law because such use is likely to cause confusion, mistake, or deception as to the source, sponsorship, or approval by Plaintiff of Defendants’ goods and services. The public is, for example, likely to believe that Defendants’ legal services originate with Plaintiff, are licensed by Plaintiff, and/or are sponsored by, connected with, or related to Plaintiff. 43. Defendants’ unlawful conduct has caused Plaintiff to suffer economic damage,

has resulted in unjust enrichment to Defendants, and has caused and will continue to cause, unless enjoined by this Court, substantial and irreparable damage and injury to Plaintiff and the public, for which damage and injury Plaintiff has no adequate remedy at law. WHEREFORE, Plaintiff prays that: A. Defendants, their agents, servants, employees, successors, assigns, and all those

controlled by or in active concert or participation with any of them be permanently enjoined from:

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(1)

using in connection with Defendants’ goods and services any mark bearing

confusing similarity to Plaintiff’s FERRACUTI Marks; (2) utilizing the surname Ferracuti in a misleading manner in connection with

Defendants’ provision of legal services; (3) trading on the goodwill associated with Plaintiff’s FERRACUTI Marks or otherwise unfairly competing with Plaintiff; B. Defendants, as the late-comers, be ordered to take all reasonable precautions to

avoid consumer confusion in connection with their use of the surname Ferracuti for legal services; C. Defendants be ordered to precede any trademark use of the designation

“Ferracuti” for use in connection with legal services with the name “Drew” or “Drew J.” in lettering no smaller than the typeface used for the designation “Ferracuti”; D. Defendants be ordered to remove Internet advertising, YellowPage listings, and

any other electronic signs and advertising that bear marks likely to be confused with Plaintiff’s FERRACUTI Marks or that otherwise fail to comply with paragraphs A.(1), A.(2) or A.(3), and provide certification of such removal; E. Defendants be ordered to destroy all displays, advertisements, packaging,

brochures, and any other materials, whether in paper or electronic form, in its possession or control that bear marks likely to be confused with Plaintiff’s FERRACUTI Marks or that otherwise fail to comply with paragraphs A.(1), A.(2) or A.(3), and provide certification of such destruction; F. Defendants be ordered to expressly abandon the domain name

www.ferracutilaw.com and any other domain name that is likely to cause confusion with

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Plaintiff’s FERRACUTI Marks or that otherwise fail to comply with paragraphs A.(1), A.(2) or A.(3), and provide certification of such abandonment; G. Defendants be ordered to expressly abandon any and all trademark applications

and registrations for marks that are likely to be confused with Plaintiff’s FERRATUCI Marks or that at otherwise fail to comply with paragraphs A.(1), A.(2) or A.(3), and provide certification of such abandonment; H. Defendants be ordered to compensate Plaintiff for any and all advertising or other

expenses necessary to dispel the public confusion caused by Defendants’ unlawful acts complained of herein; I. Defendant be ordered to pay interest, costs, and reasonable attorney fees to

Plaintiff under 15 U.S.C. § 1117(a), 815 ILCS 505/10a, and 815 ILCS 510/3; J. Defendants be ordered to account for and pay over to Plaintiff all actual damages

suffered by Plaintiff and all gains, profits, and advantages derived by Defendants from their unlawful acts complained of herein; K. That the Court award Plaintiff increased damages, upon a finding that this case is

exceptional under the Lanham Act, and punitive damages for the willful nature of Defendants’ unlawful acts complained of herein, said award to equal at least three times the amount of Plaintiff’s actual damages; and L. proper. DEMAND FOR JURY TRIAL Pursuant to Fed. R. Civ. P. 38(b), Plaintiff demands a trial by jury in this action on all issues triable by jury. Plaintiff be awarded such other and further relief as this Court may deem just and

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Respectfully Submitted,

Date:

October 13, 2011

/s/ John T. Gabrielides Christopher M. Dolan (IL Bar No. 6269648) Email: cdolan@brinkshofer.com John T. Gabrielides (IL Bar No. 6198323) Email: jgabrielides@brinkshofer.com Jon H. Beaupré (IL Bar No. 6298230) Email: jbeaupre@brinkshofer.com Brinks Hofer Gilson & Lione NBC Tower, Suite 3600 455 North Cityfront Plaza Drive Chicago, Illinois 60611-5599 Telephone: (312) 321.4200 Facsimile: (312) 321.4299 Attorneys for Plaintiff The Law Offices of Peter F. Ferracuti, P.C.

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