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8/8/2019 Complaint: CNH v Davis
http://slidepdf.com/reader/full/complaint-cnh-v-davis 1/10
I
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
NEW ALBANY DIVISION ' - / - 9 Fi! I:!; 2
)4 t
CASE NO.
• 'Ti ..e,v" cJL
CNH AMERICA, LLC, a corporation,
Plaintiff,
v.
DAVIS EQUIPMENT SALES &
SERVICE, INC., a corporation,
Defendant.
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__JUDGE
COMPLAINT FOR TRADEMARK
INFRINGEMENT, UNFAIR
COMPETITION, AND TRADEMARK
DILUTION
_
Plaintiff, CNH America, LLC, alleges as follows:
PARTIES AND JURISDICTION
1. Plaintiff, CNH America, LLC ("Plaintiff' ), is a Delaware corporation with its
principal 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 of
business in Salem, Indiana and is doing business in the State of Indiana and in this judicial
district.
3. This Cour t has jurisdiction by virtue of the fact that this is an action arising under
the Trademark Act of 1946, as amended, 15 U.S.C. §§ 1051-1127 (the Lanham Act),jurisdiction
being 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 the
principles 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 information
and belief, a substantial part of the events or omissions giving rise to the claim occurred in this
judicial district, or under 28 U.S.C. § 1391(c) in that, on information and belief, Defendant is
deemed to reside in this judicial district because it are subject to personal jurisdiction in this
judicial district.
FACTS
CNH 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 other
agricultural equipment throughout the United States. CNH is one of the world's leading
providers of agricultural equipment, as well as related products and services.
6. CNH has manufactured and sold agricultural equipment and related products for
more than a century throughout the United States under its famous NEW HOLLAND mark and
its New Holland and Leaflogo (collectively, the "NEW HOLLAND Marks"). By virtue of
CNH's long use, advertising, and promotion, its NEW HOLLAND Marks have become and still
are distinctive, very well-recognized, and famous.
7. For many years, CNH has operated and/or licensed others to operate retail outlets
that sell agricultural equipment and parts for such equipment. Many of these outlets also provide
repair 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 signify
CNH, 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 NEW
HOLLAND Marks possess a strong secondary meaning and represent an extremely valuable
goodwill that CNH owns.
9. Among others, CNH owns several federal trademark registrations of its NEW
HOLLAND Marks for its agricultural equipment, including the following:
MARK REG.
NO.
REG.
DATE
GOODS/SERVICES
NEW HOLLAND 642,298 March 5,
1957
Farm equipment, including automatic hay balers,
mowers, blower conveyors, wagon unloaders, hay
rakes, manure spreaders, forage harvesters, and
attachments therefor
NEW HOLLAND 646,749 June 11,1957
Farm wagons
NEW HOLLAND 890,857 May 12,
1970
Farm equipment, parts and supplies-namely, animal
feeders, bale throwers, combines, corn harvesters,
agitating crop driers, elevators, fertilizer distributors,
forage blowers, forage harvesters, grinder mixers, hay
balers, hay conditioners, hay rakes, manure spreaders,
material choppers, bale conveyors, transfer augers,
mowers, mower-conditioners, and wagon unloaders
NEW HOLLAND
and LeafLogo
~ ~ W H O L L A r \ D
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, disc
mower-conditioners, planters, air seeders, side
delivery rakes and combination coupling hitches
therefor, rotary rakes and tedders, round bale movers
and handlers, sprayers, tillage implements namely
plows and harrows, tub grinders, windrowers,
windrow inverters, utility front end loaders, front-end
loaders, backhoes, selfpropelled agricultural
combines, self propelled agricultural harvesters andself propelled agricultural windrowers, engines for
agricultural machines; Agricultural tractors, bale
loading and stacking wagons for agricultural use;
engines for tractors; industrial tractors, skid steer
loaders in the nature of fork lifts; Wearing apparel
and clothing, namely, hats, shirts, coats and
sweatshirts
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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 constitutes
prima facie evidence of the validity of the NEW HOLLAND Mark depicted therein, as well as
CNH'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 of
these registrations are attached hereto as Exhibit A.
THE PRIOR RELATIONSHIP BETWEEN eNH AND DAVIS EQUIPMENT
10. CNH and Davis Equipment executed and were parties to a dealer agreement,
under which Davis Equipment was an authorized dealer for marketing, selling, and servicing
NEW 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 NEW
HOLLAND Marks. The dealer agreement further required Davis Equipment to remove all signs
and advertising displays bearing the NEW HOLLAND Marks.
DAVIS EQUIPMENT'S INFRINGING USE OF THE NEW HOLLAND MARKS
13. Despite Davis Equipment's ongoing obligations under the dealer agreement and
CNH's repeated demands that Davis Equipment remove all signs and advertising displays
bearing the NEW HOLLAND Marks from its premises, Davis Equipment has not complied with
its 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 of
NEW HOLLAND-branded agricultural equipment and related repair and maintenance services.
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15. Specifically, Davis Equipment displays the NEW HOLLAND Marks on its
building and signs, as depicted in the following images:
,
These images demonstrate Davis Equipment's wrongful use of the NEW HOLLAND Marks to
pass itself of f as an authorized CNH dealer.
16. Davis Equipment's use of the NEW HOLLAND Marks on its building and signs
is 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 and
related repair and maintenance services Davis Equipment offers in that consumers and others in
this judicial district and elsewhere in the United States are likely to believe CNH distributes or
sells 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 authorizedNEW
HOLLAND dealer.
19. On information and belief, Davis Equipment markets and sells its goods and
services under the NEW HOLLAND Marks for the purpose of trading upon CNH's goodwill in
the NEW HOLLAND Marks and CNH's business reputation, with the intention of creating
consumer confusion over the source and origin of the goods and services Davis Equipment sells
and to give them a salability they otherwise would not have.
20. On information and belief, Davis Equipment's acts have injured CNH's image and
reputation with consumers in this judicial district and elsewhere in the United States by creating
confusion about, and dissatisfaction with, CNH's legitimate authorized dealers of agricultural
equipment and related repair and maintenance services.
21. Davis Equipment's marketing and saleof
the goods and services it offers under
the NEW HOLLAND Marks constitute trademark infringement of CNH's registered NEW
HOLLAND 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 to
so damage CNH unless restrained by this Court; wherefore, CNH is without an adequate remedy
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at law. Accordingly, CNH is entitled to, among other things, an order temporarily and
permanently enjoining and restraining Davis Equipment from marketing and selling goods and
services under the NEW HOLLAND Marks.
SECOND CLAIM FOR RELIEF
(UNFAIR COMPETITION IN VIOLATION OF
SECTION 43(3) OF THE LANHAM ACT)
23. CNH re-alleges paragraphs 1 through 8, 10 through 16, and 18 through 20 as if
fully set forth herein.
24. Davis Equipment's acts constitute unfair competi tion with CNH in violation of
Section 43(a)of
the Lanham Act, 15 U.S.C. § 1125(a).
25. 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 remedy
at law. Accordingly, CNH is entitled to, among other things, an order temporarily and
permanently enjoining and restraining Davis Equipment from marketing and selling goods and
services under the NEW HOLLAND Marks.
THIRD CLAIM FOR RELIEF
(UNFAIR COMPETITION IN VIOLATION OF
INDIANA COMMON LAW)
26. CNH re-alleges paragraphs 1 through 8, 10 through 16, and 18 through 20 as if
fully set forth herein.
27. Davis Equipment's acts constitute unfair competi tion with CNH in violation of
Indiana common law.
28. 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 remedy
at law. Accordingly, CNH is entitled to, among other things, an order temporari ly and
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permanently enjoining and restraining Davis Equipment from marketing and selling goods and
services 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 if
fully 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 remedy
at law. Accordingly, CNH is entitled to, among other things, an order temporarily and
permanently enjoining and restraining Davis Equipment from marketing and selling goods and
services 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 participation
with any of them from:
(i) using the NEW HOLLAND Marks, or any other colorable
imitation 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 Davis
Equipment's goods and services, including on Davis Equipment's
buildings and signs; and
(ii) doing any other act or thing likely to induce the belief that Davis
Equipment's business or products are in any way connected with CNH's
business 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 any
other properties or premises Davis Equipment may own or use;
(ii) account for and pay over to CNH all profits derived from its acts of
trademark infringement, unfair competition, and dilution in accordance
with 15 U.S.C. § 1117(a), Ind. Code § 24-2-1-13.5(d), and the laws of
Indiana, and that this profits award be trebled in accordance with 15
U.S.C. § 1117(a);
(iii) pay to CNH all damages it has suffered as a result of Davis
Equipment's trademark infringement, unfair competition, and dilution in
accordance with 15 U.S.C. § 1117(a), Ind. Code § 24-2-1-13.5(d), and the
laws 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 reasonable
attorneys' 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 or
other material in Davis Equipment's possession or under its control
bearing the NEW HOLLAND Marks, or any other trademarks confusingly
similar thereto, in accordance with 15 U.S.c. § 1118.
C. Awarding CNH such further relief as this Court deems just and equitable.
Dated: N o v e m b e r ~ , 2010 Respectfully submitted,
~ ~ : a E R ' FOREMAN, O S W ~ By: ACat erine A. N e s t r i ~ - P '
20 NW Fourth Street, Seventh Floor
Post Office Box 657
Evansville, Indiana 47704-0657
Phone: 812/425-1591
Facsimile: 812/421-4936
cnestrick0lbamberger.com
PATTISHALL, MCAULIFFE, NEWBURY,
HILLIARD & GERALDSON LLPRobert W. Sacoff
Ian J. Block
311 South Wacker Drive, Suite 5000
Chicago, Illinois 60606
Phone: 312/554-8000
Facsimile: 312/554-8015
[email protected]; [email protected]
Attorneys/or Plaintiff, CNH America, LLC
L\LIB\DOCS\58142\COMPLAIN\U40953.DOC
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