toyo tire & rubber et. al. v. hong kong tri-ace tire et. al

8/13/2019 Toyo Tire & Rubber et. al. v. Hong Kong Tri-Ace Tire et. al.

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of this action pursuant to 28 U.S.C. 1331, 1338, and 15 U.S.C. 1121.

2. This Court has personal jurisdiction over the Defendants and venue is proper

in this Judicial District pursuant to 28 U.S.C. 1391(b), (c) and (d), and 1400(b)

Plaintiffs are informed and believe, and on that basis allege, that Defendants have

conducted and continue to conduct business in this District and have engaged in the

complained of activities in this Judicial District.

The Parties

3. Plaintiff TTR is a Japanese corporation with its corporate headquarters and

principal place of business at 1-17-18 Edobori, Nishi-ku, Osaka 550-8661, Japan.

4. Plaintiff TTC is a California corporation with corporate headquarters and

principal place of business located at 5665 Plaza Drive, Suite 300, Cypress, CA 90630

Plaintiff TTC is the exclusive importer and distributor of "Toyo" brand tires, such as the

Toyo Proxes 4, Toyo Open Country A/T II, and Toyo Open Country M/T tires.

5. Plaintiffs are informed and believe, and on that basis allege, that Defendant

Hong Kong Tri-Ace Tire Co., Ltd. ("Tri-Ace HK") is a Hong Kong corporation located at

Unit 602 6F, Causeway Bay Commercial Building 1 Sugar Street, Causeway Bay HK

and that Tri-Ace HK is engaged in the business of manufacturing, using, exporting,importing, marketing, selling and/or offering for sale in this Judicial District the tires at

issue in this lawsuit, including tires sold under the Tri-Ace and Mark Ma series

names and brands, as well as advertising such tires in publications such as Tire Business

that are distributed in this Judicial District and displaying such tires at industry trade

shows, such as the Specialty Equipment Market Associations (SEMA) annual Las Vegas

trade show to which tire industry personnel and buyers from this Judicial District

regularly attend. Plaintiffs are further informed and believe, and on that basis allege, that

Tri-Ace HK focuses on two main brands, TRI-ACE and Mark-Ma, and that the U.S.

trademark registrations for Tri-Ace and Mark Ma are owned by Jinlin Ma, manager

of Tri-Ace HK. Plaintiffs are additionally informed and believe, and on that basis allege

that Tri-Ace HK ships its Mud Gripper M/T from China to Defendant ITG Voma


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Corporation in this Judicial District as alleged hereinbelow, and that Tri-Ace HK has

entered into an agreement with MHT Wheels, a company located in this Judicial District,

to supply private label Fuel Mud Gripper Tires to MHT in this Judicial District to

complement MHT's Fuel line of wheels.


Tri-Ace Wheel & Tire Corporation (Tri-Ace USA) is a Tennessee corporation with its

principal place of business located at 6005 E Shelby Drive, Suite 6, Memphis, Tennessee

38141-7611, and that Tri-Ace USA is engaged in the business of importing, purchasing

using, marketing, selling and/or offering for sale in this Judicial District the tires at issue

in this lawsuit, including tires sold under the Tri-Ace and Mark Ma series name and

brand.


Voma Tire Corporation (Voma Tire) is a Tennessee corporation with its principal place

of business located at 5815 East Shelby Drive, Memphis, Tennessee 38141-6973, and an

additional place of business located at 11972 Hertz Avenue, Moorpark, California 93021-

7130, and that Tri-Ace is one of three brands belonging to Voma Tire. Plaintiffs are

further informed and believe, and on that basis allege, that Voma Tire is engaged in thebusiness of importing, purchasing, using, marketing, selling and/or offering for sale in

this Judicial District the tires at issue in this lawsuit, including tires sold under the Tri-

Ace series name and brand.


ITG Voma Corp. (ITG Voma), a joint venture of Voma Tire and Chinese conglomerate

Xiamen ITG Group Corp., is a Tennessee corporation with its principal place of business

located 5815 East Shelby Drive, Memphis, Tennessee 38141-6973, and an additional

place of business located at 11972 Hertz Avenue, Moorpark, California 93021-7130, and

that ITG Voma is engaged in the business of importing, purchasing, using, marketing,

selling, and/or offering for sale in this Judicial District the tires at issue in this lawsuit,

including tires sold under the Tri-Ace series name and brand. Plaintiffs are further


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informed and believe, and on that basis allege that Tri-Ace HKs Mud Gripper M/T is

made in China and is subsequently shipped to California to ITG Voma.


Doublestar Dong Feng Tyre Co., Ltd. ("Doublestar Tyre") is a Chinese corporation with

its principal place of business located at No. 21 Hanjiang North Rd., Shiyan, Hubei,

China 442011. Plaintiffs are further informed and believe, and on that basis allege, that

Doublestar Tyre is engaged in the business of manufacturing, using, exporting

importing, marketing, selling, and/or offering for sale in this Judicial District the tires at

issue in this lawsuit, including tires sold under the Mark Ma series name and brand.

10. Plaintiffs are informed and believe, and on that basis allege, that these

Defendants have acted in concert with the other to form an enterprise, partnership, or

other formal or informal business association or affiliation whose goal is the

manufacturing and sale into, and transshipment through, this Judicial District, among

others, copies of tires of the major manufacturers such as Toyo, with such tires being sold

under the Tri-Ace and Mark Ma brands. Plaintiffs are further informed and believe, and

on that basis allege, that pursuant to this association or affiliation, the Defendants use this

Judicial District as a hub from which Defendants effectuate the importation, purchase,use, marketing, sale, and/or offer for sale, or transport of the infringing Tri-Ace and Mark

Ma tires identified herein.

11. Plaintiffs are informed and believe, and on that basis allege, that as part of

such association and/or affiliation, each of these Defendants has ongoing and systematic

contacts with this Judicial District, including: placing the products accused of

infringement herein into the stream of commerce knowing and expecting that such

products would end up in this Judicial District, availing themselves of the Ports of Los

Angeles and Long Beach in this Judicial District, and occupying business locations

within this Judicial District,.

12. Plaintiffs are informed and believe, and on that basis allege, that the

activities of Defendants as set forth in this Complaint arise out of the same transaction


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occurrence, or series of transactions or occurrences and/or involve common questions of

law and fact common to all Defendants.

13. The acts complained of herein, and the claims asserted by TTR and TTC

arise out of the same transaction, occurrence, or series of transactions or occurrences and

involve common questions of law and fact common to TTR and TTC.

Claim 1: Infringement of TTRs 424 Patent by the Tri-Ace Dub Tire

14. This is a claim by TTR against Defendants Tri-Ace HK, Tri-Ace USA

Voma Tire and ITG Voma and each of them for patent infringement under 35 U.S.C.

271.

15. TTR hereby incorporates Paragraphs 1 through 13, inclusive, herein by

reference.

16. On March 9, 2004, the U.S. Patent and Trademark Office duly and legally

issued U.S. Patent No. D487,424 ("the 424 patent") to Takahashi et al. A true and

correct copy of the 424 patent is attached to the Complaint as Ex. 1. The 424 patent

claims an ornamental design for an automobile tire, as shown and described in Figures

1 through 6 of the 424 patent. The United States Patent and Trademark Office issued a

certificate of correction attached as Ex. 2 for the 424 patent.17. TTR is the owner of the entire right, title and interest in and to the 424

patent by assignment made on November 12, 2002, and recorded on November 21, 2002.

18. TTR is informed and believes, and on that basis alleges, that Defendants Tri-

Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have made, exported, imported, used,

marketed, sold and/or offered for sale one or more tire products, including but not limited

to the Tri-Ace Dub tire, that infringe the 424 patent. The design of this tire, in the eye of

the ordinary observer, would appear substantially similar to the ornamental design of the

424 patent.


Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have actively induced others,

including each other, to directly infringe the 424 patent by aiding, abetting, encouraging


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and otherwise promoting the use, manufacture, sale and/or offer for sale by others,

including each other, of infringing tire products, including but not limited to the Tri-Ace

Dub tire, with knowledge of the infringement of the 424 patent and with the intent to

cause such infringement and/or with willful blindness to the existence of the 424 patent.

20. TTR is informed and believes, and on that basis alleges, that the business

model of Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma is built in

large part upon deliberately copying the tire designs of major tire manufacturers such as

TTR, and in conscious ignorance of the patent portfolios of such companies.

21. TTR is informed and believes, and on that basis alleges, that infringement of

the 424 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma has

been and continues to be willful and deliberate.


Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have had notice and actual knowledge

of the 424 patent before the filing of TTRs complaint with the U.S. International Trade

Commission on August 14, 2013, and before the filing of this suit.

23. TTR has been damaged by infringement of the 424 patent by Defendants

Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma in an amount to be determined attrial, such damages including all of these Defendants' profits from the infringement

alleged herein.

24. Furthermore, by these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma

Tire, and ITG Voma have irreparably injured Toyo and such injury will continue unless

these Defendants are enjoined by this Court.

Claim 2: Infringement of TTRs 200 Patent by the Tri-Ace Pioneer A/T Tire


Voma Tire and ITG Voma and each of them for patent infringement under 35 U.S.C.

271.


reference.


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27. On January 31, 2012, the U.S. Patent and Trademark Office duly and legally

issued U.S. Patent No. D653,200 ("the 200 patent") to Kuwano. A true and correct copy

of the 200 patent is attached to the Complaint as Ex. 3. The 200 patent claims an

ornamental design for an automobile tire, as shown and described in Figures 1 through

12 of the 200 patent.

28. TTR is the owner of the entire right, title and interest in and to the 200

patent by assignment made on July 14, 2011, and recorded on October 7, 2011. TTR is

informed and believes, and on that basis alleges, that Defendants Tri-Ace HK, Tri-Ace

USA, Voma Tire and ITG Voma have made, exported, imported, used, marketed, sold

and/or offered for sale one or more tire products, including but not limited to the Tri-Ace

Pioneer A/T tire, that infringe the 200 patent. The design of this tire, in the eye of the

ordinary observer, would appear substantially similar to the ornamental design of the

200 patent.




and otherwise promoting the use, manufacture, sale and/or offer for sale by others,including each other, of infringing tire products, including but not limited to the Tri-Ace

Pioneer A/T tire, with knowledge of the infringement of the 200 patent and with the

intent to cause such infringement and/or with willful blindness to the existence of the

200 patent.







Commission, on August 14, 2013, and before the filing of this suit.


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Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma in an amount to be determined at

trial, such damages including all of these Defendants' profits from the infringement

alleged herein.




Claim 3: Infringement of TTRs 525 Patent by Tri-Ace Pioneer A/T Tire

34. This is a claim by TTR against Defendants and each of them for patent

infringement under 35 U.S.C. 271.


reference.

36. On June 18, 2013, the U.S. Patent and Trademark Office duly and legally

issued U.S. Patent No. D684,525 ("the 525 patent") to Kuwano. A true and correct copy


ornamental design for a tire, as shown and described in Figures 1 through 7 of the 525

patent.37. TTR is the owner of the entire right, title and interest in and to the 525

patent by assignment made on July 14, 2011, and recorded on October 7, 2011.




to the Tri-Ace Pioneer A/T tire, that infringe the 525 patent. The design of this tire, in

the eye of the ordinary observer, would appear substantially similar to the ornamental

design of the 525 patent.





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and otherwise promoting the use, manufacture, sale and/or offer for sale by others of

infringing tire products, including but not limited to the Tri-Ace Pioneer A/T tire, with

knowledge of the infringement of the 525 patent and with the intent to cause such

infringement and/or with willful blindness to the existence of the 525 patent.





Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma in an amount to be determined at


alleged herein.




Claim 4: Infringement of TTRs 765 Patent by the Tri-Ace Pioneer A/T Tire


Voma Tire and ITG Voma and each of them for patent infringement under 35 U.S.C. 271.


reference.

45. On August 13, 2013, the U.S. Patent and Trademark Office duly and legally

issued U.S. Patent No. D687,765 ("the 765 patent") to Kuwano et al. A true and correct

copy of the 765 patent is attached to the Complaint as Ex. 5. The 765 patent claims an

ornamental design for a tire, as shown and described in Figures 1 through 7 of the 765

patent.


patent by assignment made on July 14, 2011, and recorded on October 07, 2011.



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to the Tri-Ace Pioneer A/T tire, that infringe the 765 patent. The design of this tire, in

the eye of the ordinary observer, would appear substantially similar to the ornamental

design of the 765 patent.




and otherwise promoting the use, manufacture, sale and/or offer for sale by others,

including each other, of infringing tire products, including but not limited to the Tri-Ace

Pioneer A/T tire, with knowledge of the infringement of the 765 patent and with the

intent to cause such infringement and/or with willful blindness to the existence of the

765 patent.




50. TTR has been damaged by infringement of the 765 patent by DefendantsTri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma in an amount to be determined at


alleged herein.




Claim 5: Infringement of TTRs 031 Patent by the Mark Ma Dakar M/T Tire


Voma Tire, ITG Voma and Doublestar Tyre and each of them for patent infringemen

under 35 U.S.C. 271.



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reference.

54. On May 4, 2010, the U.S. Patent and Trademark Office duly and legally

issued U.S. Patent No. D615,031 ("the 031patent") to Osaka. A true and correct copy of

the 031 patent is attached to the Complaint as Ex. 6. The 031 patent claims an

ornamental design for an automobile tire, as shown and described in Figures 1 through

10 of the 031 patent. The United States Patent and Trademark Office issued a certificate

of correction attached as Exhibit 10 for the 031 patent.


patent by assignment made on June 10, 2013, and recorded on June 13, 2013.


Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have made,

exported, imported, used, marketed, sold and/or offered for sale one or more tire

products, including but not limited to the Mark Ma Dakar M/T tire, that infringe the 031

patent. The design of this tire, in the eye of the ordinary observer, would appear

substantially similar to the ornamental design of the 031 patent.


Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have activelyinduced others, including each other, to directly infringe the 031 patent by aiding,

abetting, encouraging, and otherwise promoting the use, manufacture, sale and/or offer

for sale by others, including each other, of infringing tire products, including but not

limited to the Mark Ma Dakar M/T tire, with knowledge of the infringement of the 031

patent and with the intent to cause such infringement and/or with willful blindness to the

existence of the 031 patent.

58. TTR is informed and believes, and on that basis alleges, that the business

model of Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma, and Doublestar

Tyre is built in large part upon deliberately copying the tire designs of major tire

manufacturers such as TTR, and in conscious ignorance of the patent portfolios of such

companies.


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the 031 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and

Doublestar Tyre has been and continues to be willful and deliberate.






Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre in an amount to

be determined at trial, such damages including all of Defendants' profits from the

infringement alleged herein.


Tire, ITG Voma, and Doublestar Tyre have irreparably injured Toyo and such injury will

continue unless Defendants are enjoined by this Court.

Claim 6: Infringement of TTRs 975 Patent by the Mark Ma Dakar M/T Tire


Voma Tire, ITG Voma and Doublestar Tyre and each of them for patent infringementunder 35 U.S.C. 271.


reference.

65. On March 2, 2010, the U.S. Patent and Trademark Office duly and legally

issued U.S. Patent No. D610,975 ("the 975 patent") to Osaka. A true and correct copy


ornamental design for a tire, as shown and described in Figures 1 through 12 of the

975 patent. The United States Patent and Trademark Office issued a certificate of

correction attached as Ex. 7 for the 975 patent.


patent by assignment made on June 10, 2013, and recorded on June 13, 2013.


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Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have made, used,

sold and/or offered for sale one or more tire products, including but not limited to the

Mark Ma Dakar M/T tire, that infringe the 975 patent. The design of this tire, in the eye

of the ordinary observer, would appear substantially similar to the ornamental design of

the 975 patent.


Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have actively

induced others, including each other, to directly infringe the 975 patent by aiding,

abetting, encouraging, and otherwise promoting the use, manufacture, sale and/or offer

for sale by others, including each other, of infringing tire products, including but not

limited to the Mark Ma Dakar M/T tire, with knowledge of the infringement of the 975

patent and with the intent to cause such infringement and/or with willful blindness to the

existence of the 975 patent.


the 975 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and

Doublestar Tyre has been and continues to be willful and deliberate.70. TTR is informed and believes, and on that basis alleges, that Defendants Tri-






be determined at trial, such damages including all of Defendants' profits from the

infringement alleged herein.


Tire, ITG Voma, and Doublestar Tyre have irreparably injured Toyo and such injury will

continue unless Defendants are enjoined by this Court.


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Claim 7: Trade Dress Infringement by the Mark Ma Dakar M/T and Tri-Ace Mud

Gripper M/T Tires

73. This is a claim by TTC against Defendants and each of them for trade dress

infringement in violation of 15 U.S.C. 1125.

74. TTC hereby incorporates Paragraphs 1 through 13, inclusive, herein by

reference.

75. TTC has a protectable trade dress in the overall appearance of its Open

Country M/T tires, which was first introduced in 2003 under the Toyo brand. The Open

Country M/T tire is a premium off-road maximum traction tire that combines solid on-

road performance with extra ground clearance and higher load-carrying capacity and, for

truck enthusiasts, a tread pattern with an aggressive appearance.

76. With its unique, aesthetically aggressive appearance and significant sales

volume, the ornamental, distinctive look of the Open Country M/T tire has become

associated with the Toyo brand. This look includes open scalloped shoulder blocks, an

aggressive, attack tread with hook-shaped blocks, a distinctive over-the-shoulder tread,

and deep siping in the tread blocks (hereinafter referred to as the OPMT Trade Dress).

77. The overall tread design of the OPMT Trade Dress is arbitrary, inherentlydistinctive, and non-functional.

78. TTC has always been the exclusive source for Open Country M/T tires,

more than 2.3 million of which have been sold to customers throughout the United States

since 2003.

79. Since 2003, TTC has built up valuable recognition and goodwill in its

distinctive OPMT Trade Dress. TTC has expended, and continues to expend, substantia

time, effort, money, and other resources to develop and maintain the valuable goodwill

that has come to be associated with the Open Country M/T tires incorporating the unique

and recognizable OPMT Trade Dress.

80. TTC has continuously and extensively advertised, marketed, and promoted

its Open Country M/T tires in the United States, investing over $22 million in such


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activities, including advertising directed to the distinctive, non-functional aspects of the

appearance of the Open Country M/T tires.

81. As a result of TTCs efforts, the OPMT Trade Dress has acquired secondary

meaning and distinctiveness among off-road tire consumers and members of the industry

and it continues to have secondary meaning and distinctiveness. The Open Country M/T

tire, which prominently displays the OPMT Trade Dress, is now widely known and

recognized by its unique and distinctive appearance, which identifies to off-road tire

consumers and members of the industry that its source of origin is Toyo. The OPMT

Trade Dress has come to be, and now is, well and favorably known to the public,

particularly to off-road tire consumers, as being associated with Toyos high-quality tires

82. Based on the foregoing, the OPMT Trade Dress has become and now is a

designation of origin of Toyo and a trademark owned by TTC.

83. Upon information and belief, Defendants have made, used, exported

imported, marketed, sold and/or offered for sale tire products, including but not limited to

the Mark Ma Dakar M/T and Tri-Ace Mud Gripper M/T tires, that infringe the OPMT

Trade Dress.

84. To consumers, including off-road tire customers and members of theindustry, the look of the Mark Ma Dakar M/T and Tri-Ace Mud Gripper M/T tires is

confusingly similar to the OPMT Trade Dress and, in particular, the, distinctive look of

the Toyo Open Country M/T tire, which is unique in appearance, eye-catching and

readily recognized among customers and members of the trade.

85. The Past, present and future use, distribution, sale and/or offer for sale by

Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre of

tires using the OPMT Trade Dress, including but not limited to the Mark Ma Dakar M/T

and Tri-Ace Mud Gripper M/T tires, constitutes trade dress infringement under 15 U.S.C

1125(a).

86. TTC is informed and believes, and on that basis alleges, that Defendants

Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have been aware


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of Toyos Open Country M/T tire and the OPMT trade dress, based on TTCs extensive

and exclusive original sales of Open Country M/T tires for over ten years, and their trade

dress infringement has been and continues to be willful and deliberate.

87. TTC has been damaged by willful trade dress infringement by Defendants


be determined at trial, including profits of Defendants Tri-Ace HK, Tri-Ace USA, Voma

Tire, ITG Voma and Doublestar Tyre and three times the amount of actual damages

sustained by TTC, together with costs and reasonable attorneys fees. Furthermore, by

these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma, and

Doublestar Tyre have irreparably injured TTC and caused TTC to suffer a substantial loss

of goodwill and reputation, and such injury will continue unless they are enjoined by this

Court.

88. By reason of the above actions, TTC is entitled to the full range of relief

under the Lanham Act, 15 U.S.C. 1116-1118.

PRAYER FOR RELIEF

WHEREFORE, by virtue of the unlawful conduct of Defendants as alleged in

Counts I through VII above, Plaintiffs respectfully pray for judgment against Defendantsand each of them, as follows:

A. That Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma be

adjudged to have infringed the '424, 200, 525, 765, 031, and 975 patents;

B. That Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma be

adjudged to have induced infringement of the '424, 200, 525, 765, 031, and 975

patents;

C. That Defendant Doublestar Tyre be adjudged to have infringed the 031 and

975 patents;

D. That Defendant Doublestar Tyre be adjudged to have induced infringemen

of the 031 and 975 patents;

E. That such patent infringement be adjudged willful and deliberate;


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F. That this case be deemed exceptional under 35 U.S.C. 285, and that the

damages for patent infringement be enhanced accordingly;

G. That Defendants be adjudged to have infringed TTCs OPMT Trade Dress in

violation of 15 U.S.C. 1125(a);

H. That Defendants trade dress infringement be adjudged willful and

deliberate;

I. That Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma, its

subsidiaries, affiliates, parents, successors, assigns, officers, agents, servants, employees,

attorneys, and all persons acting in concert or in participation with it be preliminarily and

permanently enjoined from:

(1) Infringing or inducing infringement of the '424, 200, 525, 765 031

and 975 patents, and specifically from directly or indirectly making, using, selling

or offering for sale, any products embodying the invention of '424, 200, 525, 765

031 and 975 patents during their terms, without the express written authority of

Plaintiffs;

(2) Using TTCs OPMT Trade Dress or any trade dress or tread or

sidewall design confusingly similar thereto, for or in connection with advertising,marketing, promoting, distributing, offering for sale, or selling tires;

(3) Using photographs, illustrations, or other depictions of TTCs OPMT

Trade Dress or any trade dress or tread or sidewall design confusingly similar

thereto, for or in connection with advertising, marketing, promoting, distributing,

offering for sale, or selling tires;

(4) Using any name, mark, designation, product configuration, trade

dress, or other material for or in connection with advertising, marketing

promoting, distributing, offering for sale, or selling tires that are likely to cause

confusion, mistake or deception as to source relative to any of TTR and TTCs

names, marks, designations, product configurations, or trade dress, including but

not limited to TTCs OPMT Trade Dress;


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(5) Passing off its goods and/or services as those of TTC; and,

(6) Engaging in any conduct aimed at or likely to result in diverting

business intended for TTC or injuring TTCs goodwill or business reputation by

way of imitation, misrepresentation, false statements, advertising, fraud and/or

deception.

J. That Defendant Doublestar Tyre, its subsidiaries, affiliates, parents

successors, assigns, officers, agents, servants, employees, attorneys, and all persons

acting in concert or in participation with it be preliminarily and permanently enjoined

from:

(1) Infringing or inducing infringement of the 031 and 975 patents, and

specifically from directly or indirectly making, using, selling, or offering for sale,

any products embodying the invention of 031 and 975 patents during their terms,

without the express written authority of Plaintiffs;

(2) Using TTCs OPMT Trade Dress or any trade dress or tread or

sidewall design confusingly similar thereto, for or in connection with advertising,

marketing, promoting, distributing, offering for sale, or selling tires;

(3) Using photographs, illustrations, or other depictions of TTCs OPMTTrade Dress or any trade dress or tread or sidewall design confusingly similar

thereto, for or in connection with advertising, marketing, promoting, distributing,

offering for sale, or selling tires;

(4) Using any name, mark, designation, product configuration, trade

dress, or other material for or in connection with advertising, marketing

promoting, distributing, offering for sale, or selling tires that are likely to cause

confusion, mistake or deception as to source relative to any of TTR and TTCs

names, marks, designations, product configurations, or trade dress, including but

not limited to TTCs OPMT Trade Dress;

(5) Passing off its goods and/or services as those of TTC; and,

(6) Engaging in any conduct aimed at or likely to result in diverting


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business intended for TTC or injuring TTCs goodwill or business reputation by

way of imitation, misrepresentation, false statements, advertising, fraud and/or

deception..

K. An order from this Court compelling each Defendant to mail notice letters at

their own expense to all distributors, dealers, accounts, salesmen, employees, jobbers,

and suppliers, informing them that each Defendant has committed patent infringement,

and/or trade dress infringement, and that Defendant has no affiliation, connection, or

other business relationship with Plaintiffs, and requesting that the letter recipients return

to Defendant for full credit or refund all of Defendants tires using the infringing design

and/or trade dress.

L. An order from this Court commanding that each Defendant deliver to

Plaintiffs for destruction all advertising, products, tires, labeling, packaging, sales

literature, promotional literature, owner's manuals, catalogs, displays, boxes, packages

and other trade pieces within their possession or control and which use or display the

infringing design and trade dress.

M. An accounting for all profits of each Defendant derived by reason of the acts

alleged in this Complaint.N. An award of money damages suffered by Plaintiffs in an amount to be

ascertained, and the trebling thereof.

O. An order compelling each Defendant to disgorge the amounts by which it

has been unjustly enriched by the acts alleged herein.

P. A constructive trust imposed on all revenue, income, and things of value

derived by each Defendant in the marketing and selling of tires using imitative tread

designs, trade dress, and marks, including the tread design and trade dress complained of

in Complaint.

Q. Judgment, relief, and requests as set forth in this Complaint.

R. Reasonable attorney's fees, prejudgment interest, and costs of this action.

S. Such other, further, and different relief as the court deems proper under the


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toyo tire & rubber et. al. v. hong kong tri-ace tire et. al

Documents