cnh america v. davis equipment sales trademark complaint

8/7/2019 CNH America v. Davis Equipment Sales Trademark Complaint

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IUNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF INDIANA

NEW ALBANY DIVISION ' - / - 9 Fi! I:!; 2)4 I tCASE NO.

'Ti ..e,v" cJLCNH AMERICA, LLC, a corporation,

Plaintiff,v.

DAVIS EQUIPMENT SALES &SERVICE, INC., a corporation,

Defendant.

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JUDGE

COMPLAINT FOR TRADEMARKINFRINGEMENT, UNFAIRCOMPETITION, AND TRADEMARKDILUTION

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Plaintiff, CNH America, LLC, alleges as follows:PARTIES AND JURISDICTION

1. Plaintiff, CNH America, LLC ("Plaintiff'), is a Delaware corporation with itsprincipal place of business in Racine, Wisconsin.

2. On information and belief, Defendant, Davis Equipment Sales & Service, Inc.("Davis Equipment" or "Defendant"), is an Indiana corporation with its principal place ofbusiness in Salem, Indiana and is doing business in the State of Indiana and in this judicia ldistrict.

3. This Court has jurisdiction by virtue of the fact that this is an action arising underthe Trademark Act of 1946, as amended, 15 U.S.C. 1051-1127 (the Lanham Act),jurisdictionbeing conferred in accordance with 15 U.S.C. 1121 and 28 U.S.C. 1338(a) and (b).Jurisdiction for the claims asserted under Indiana state law is conferred in accordance with theprinciples of supplemental jurisdiction pursuant to 28 U.S.C. 1367(a).

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4. Venue is proper in this Court under 28 U.S.C. 1391(b) in that, on informationand belief, a substantial part of the events or omissions giving rise to the claim occurred in thisjudicial district, or under 28 U.S.C. 1391(c) in that, on information and belief, Defendant isdeemed to reside in this judicial district because it are subject to personal jurisdiction in thisjudicial district.

FACTSCNH AND THE NEW HOLLAND MARKS

5. Since 1842, Plaintiff, CNH America, LLC, and its predecessors in interest

(collectively, "CNH") have manufactured, marketed, sold, and serviced tractors and otheragricultural equipment throughout the United States. CNH is one of the world's leadingproviders of agricultural equipment, as well as related products and services.

6. CNH has manufactured and sold agricultural equipment and related products formore than a century throughout the United States under its famous NEW HOLLAND mark andits New Holland and Leaflogo (collectively, the "NEW HOLLAND Marks"). By virtue ofCNH's long use, advertising, and promotion, its NEW HOLLAND Marks have become and stillare distinctive, very well-recognized, and famous.

7. For many years, CNH has operated and/or licensed others to operate retail outletsthat sell agricultural equipment and parts for such equipment. Many of these outlets also providerepair and maintenance services and parts for repair and maintenance. These outlets prominently

display the NEW HOLLAND Marks.8. By virtue of CNH's continued use, advertising, and promotion of the NEW

HOLLAND Marks, the goodwill and fame of the NEW HOLLAND Marks have come to signifyCNH, the agricultural equipment products CNH manufactures and sells, and the repair and

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maintenance services CNH and its authorized dealers offer for such products. Thus, the NEWHOLLAND Marks possess a strong secondary meaning and represent an extremely valuablegoodwill that CNH owns.

9. Among others, CNH owns several federal trademark registrations of its NEWHOLLAND Marks for its agricultural equipment, including the following:

MARK REG.NO.

REG.DATE

GOODS/SERVICES

NEW HOLLAND 642,298 March 5,1957Farm equipment, including automatic hay balers,mowers, blower conveyors, wagon unloaders, hayrakes, manure spreaders, forage harvesters, andattachments therefor

NEW HOLLAND 646,749 June 11,1957 Farm wagonsNEW HOLLAND 890,857 May 12,1970 Farm equipment, parts and supplies-namely, animalfeeders, bale throwers, combines, corn harvesters,

agitating crop driers, elevators, fertilizer distributors,forage blowers, forage harvesters, grinder mixers, haybalers, hay conditioners, hay rakes, manure spreaders,material choppers, bale conveyors, transfer augers,mowers, mower-conditioners, and wagon unloaders

NEW HOLLANDand LeafLogo

2,691,822 March 4,

2003 Agricultural machines and implements, namely,round and rectangular automatic balers, bale carriers,bale feeders, bale throwers, bale accumulators,combine headers, forage harvesters, forage blowers,forage boxes, feed grinder-mixers, manure spreaders,mowers, disc mowers, mower-conditioners, discmower-conditioners, planters, air seeders, sidedelivery rakes and combination coupling hitchestherefor, rotary rakes and tedders, round bale moversand handlers, sprayers, tillage implements namelyplows and harrows, tub grinders, windrowers,windrow inverters, utility front end loaders, front-endloaders, backhoes, self propelled agriculturalcombines, self propelled agricultural harvesters andself propelled agricultural windrowers, engines foragricultural machines; Agricultural tractors, baleloading and stacking wagons for agricultural use;engines for tractors; industrial tractors, skid steerloaders in the nature of fork lifts; Wearing appareland clothing, namely, hats, shirts, coats andsweatshirts

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These registrations are valid and subsisting. With the exception of Registration No. 890,857,each of these registrations is incontestable and constitutes conclusive evidence ofCNH's

exclusive right to use the NEW HOLLAND Marks for the goods specified in the registrations,pursuant to 15 U.S.C. 1065 and 1115(b). Registration No. 890,857 listed above constitutesprima facie evidence of the validity of the NEW HOLLAND Mark depicted therein, as well asCNH's ownership of and exclusive right to use this marks for the listed goods. 15 U.S.C. 1057(b). Printouts of the United States Patent and Trademark Office's electronics records ofthese registrations are attached hereto as Exhibit A.

THE PRIOR RELATIONSHIP BETWEEN eNH AND DAVIS EQUIPMENT10. CNH and Davis Equipment executed and were parties to a dealer agreement,

under which Davis Equipment was an authorized dealer for marketing, selling, and servicingNEW HOLLAND-branded agricultural equipment.

11. On October 30, 2009, CNH terminated that relationship and the dealer agreement.

12. Upon termination, Davis Equipment lost all authority to operate under the NEWHOLLAND Marks. The dealer agreement further required Davis Equipment to remove all signsand advertising displays bearing the NEW HOLLAND Marks.

DAVIS EQUIPMENT'S INFRINGING USE OF THE NEW HOLLAND MARKS13. Despite Davis Equipment's ongoing obligations under the dealer agreement and

CNH's repeated demands that Davis Equipment remove all signs and advertising displaysbearing the NEW HOLLAND Marks from its premises, Davis Equipment has not complied withits contractual and legal obligations and refuses to remove such signs and advertising displays.

14. Instead, Davis Equipment deliberately presents itsel f as an authorized dealer ofNEW HOLLAND-branded agricultural equipment and related repair and maintenance services.

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15. Specifically, Davis Equipment displays the NEW HOLLAND Marks on itsbuilding and signs, as depicted in the following images:

, \ IThese images demonstrate Davis Equipment's wrongful use of the NEW HOLLAND Marks topass itself off as an authorized CNH dealer.

16. Davis Equipment's use of the NEW HOLLAND Marks on its building and signsis without the consent or authorization ofCNH.

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FIRST CLAIM FOR RELIEF(TRADEMARK INFRINGEMENT IN VIOLATION OF

SECTION 32 OF THE LANHAM ACT)17. CNH re-alleges paragraphs 1 through 16, as if fully set forth herein.18. Davis Equipment's acts have caused or are likely to cause confusion, mistake, or

deception as to the source or origin, sponsorship, or approval of the agricultural equipment andrelated repair and maintenance services Davis Equipment offers in that consumers and others inthis judicial district and elsewhere in the United States are likely to believe CNH distributes orsells these goods and services, or authorizes and controls their sale, or that Davis Equipment is

associated with or related to CNH, or is authorized by CNH to operate as an authorized NEWHOLLAND dealer.

19. On information and belief, Davis Equipment markets and sells its goods andservices under the NEW HOLLAND Marks for the purpose of trading upon CNH's goodwill inthe NEW HOLLAND Marks and CNH's business reputation, with the intention of creatingconsumer confusion over the source and origin of the goods and services Davis Equipment sellsand to give them a salability they otherwise would not have.

20. On information and belief, Davis Equipment's acts have injured CNH's image andreputation with consumers in this judicial district and elsewhere in the United States by creatingconfusion about, and dissatisfaction with, CNH's legitimate authorized dealers of agriculturalequipment and related repair and maintenance services.

21. Davis Equipment's marketing and sale of the goods and services it offers underthe NEW HOLLAND Marks constitute trademark infringement of CNH's registered NEWHOLLAND Marks in violation of Section 32 of the Lanham Act, 15 U.S.c. 1114.

22. Davis Equipment's acts greatly and irreparably damage CNH and will continue toso damage CNH unless restrained by this Court; wherefore, CNH is without an adequate remedy

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permanently enjoining and restraining Davis Equipment from marketing and selling goods andservices under the NEW HOLLAND Marks.

FOURTH CLAIM FOR RELIEF(DILUTION IN VIOLATION OFINDIANA CODE SECTION 24-2-1-13.5)

29. CNH re-alleges paragraphs 1 through 8, 10 through 16, and 18 through 20 as iffully set forth herein.

30. The NEW HOLLAND Marks are famous in Indiana.31. Davis Equipment's use of the NEW HOLLAND Marks began after the NEW

HOLLAND Marks became famous.32. Davis Equipment 's use of the NEW HOLLAND Marks causes dilution of the

distinctive quality of the NEW HOLLAND Marks in violation ofInd. Code 24-2-1-13.5.33. On information and belief, Davis Equipment willfully intended to trade on CNH's

reputation or to cause dilution of the famous NEW HOLLAND Marks.34. Davis Equipment 's acts greatly and irreparably damage CNH and will continue to

so damage CNH unless restrained by this Court; wherefore, CNH is without an adequate remedyat law. Accordingly, CNH is entitled to, among other things, an order temporarily andpermanently enjoining and restraining Davis Equipment from marketing and selling goods andservices under the NEW HOLLAND Marks.

WHEREFORE, CNH prays for a judgment:

A. Preliminarily and permanently enjoining and restraining Davis Equipment,its officers, agents, employees, representatives, and all others acting in concert or participationwith any of them from:

(i) using the NEW HOLLAND Marks, or any other colorableimitation of the NEW HOLLAND Marks, or any mark that is confusingly

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similar to the NEW HOLLAND Marks, on or in connection with DavisEquipment's goods and services, including on Davis Equipment'sbuildings and signs; and(ii) doing any other act or thing likely to induce the belief that DavisEquipment's business or products are in any way connected with CNH'sbusiness or products, or are sponsored or approved by CNH.

B. Directing Davis Equipment to:(i) take down and remove from view any and all signs or displays

bearing the NEW HOLLAND Marks from its buildings, signs, and anyother properties or premises Davis Equipment may own or use;(ii) account for and pay over to CNH all profits derived from its acts oftrademark infringement, unfair competition, and dilution in accordancewith 15 U.S.C. 1117(a), Ind. Code 24-2-1-13.5(d), and the laws ofIndiana, and that this profits award be trebled in accordance with 15U.S.C. 1117(a);(iii) pay to CNH all damages it has suffered as a result of DavisEquipment's trademark infringement, unfair competition, and dilution inaccordance with 15 U.S.C. 1117(a), Ind. Code 24-2-1-13.5(d), and thelaws of Indiana, as well as treble the amount of all damages incurred by

CNH by reason of these acts in accordance with 15 U.S.c. 1117(a);(iv) pay to CNH the costs of this action, together with reasonableattorneys' fees and disbursements, in accordance with 15 U.S.c. 1117(a)and Ind. Code 24-2-1-13.5(d); and

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(v) deliver up for destruction all labels, signs, prints, boxes, packages,advertisements, catalogs, cans, bottles, containers, and all promotional orother material in Davis Equipment's possession or under its controlbearing the NEW HOLLAND Marks, or any other trademarks confusinglysimilar thereto, in accordance with 15 U.S.c. 1118.

C. Awarding CNH such further relief as this Court deems just and equitable.Dated: 2010 Respectfully submitted,

FOREMAN, By: ACat erine A. '20 NW Fourth Street, Seventh Floor

Post Office Box 657Evansville, Indiana 47704-0657Phone: 812/425-1591Facsimile: 812/421-4936cnestrick0lbamberger.com

PATTISHALL, MCAULIFFE, NEWBURY,HILLIARD & GERALDSON LLPRobert W. Sacoff

Ian J. Block311 South Wacker Drive, Suite 5000Chicago, Illinois 60606Phone: 312/554-8000Facsimile: 312/554-8015

[email protected]; [email protected]/or Plaintiff, CNH America, LLC

L\LIB\DOCS\58142\COMPLAIN\U40953.DOC

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