Cybex International v. TuffStuff Fitness Equipment

8/3/2019 Cybex International v. TuffStuff Fitness Equipment

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UNITED STATES DISTRICT COURTFOR THE DISTRICT OF VERMONT

CYBEX INTERNATIONAL, INC.Plaintiff

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Civil Action No. 5: II -Cv_,QC19TUFFSTUFF FITNESS EQUIPMENT, INC.

Defendant

COMPLAINT FOR FEDERAL PATENT, TRADEMARK AND TRADE DRESSINFRINGEMENT

1. Plaintiff, Cybex International, Inc ("Cybex") brings this action seeking monetarydamages and injunctive relief against Defendant TuffStuff Fitness Equipment, Inc.("TuffStuff' ) to remedy TuffStuffs infringement of U.S. Patent No. 8,057,367 (the '367patent, attached as Exhibit A) and U.S. Patent No. 8,070,658 (the '658 patent, attachedas Exhibit B), both entitled "Exercise Apparatus With Selectively VariableStabilization," as well as TuffStuffs infringement and/or dilution ofCybex' trademarks

and trade dress in the brand name "FT-450" or "FT-450/XT" Functional Trainer and itspromotional materials.

PARTIES2. Cybex incorporates by reference each and every allegation contained in the paragraph

above as though fully set forth herein.3. Plaintiff Cybex is a corporation organized under the laws ofNew York that conducts

business generally in the State of Vermont, including marketing, offering for sale and/orselling the products utilizing the methods set forth in the patents-in-suit, to wit, theFT-450.


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4. On information and belief, Defendant TuffStuff is a corporation that regularly conductsand/or transacts business in the State ofVermont, including marketing, selling and/oroffering for sale its line ofproducts generally in the State ofVerrnont, which includes atleast one product, the TuffStuffFTX, the use ofwhich infringes upon the patents-in-suitand infringes upon and dilutes Cybex' trademark in the name and trade dress of its FT-450.

JURISDICTION AND VENUE5. Cybex incorporates by reference each and every allegation contained in the paragraphs

above as though fully set forth herein.6. This is an action for federal patent infringement arising under 35 U.S.C. 271 et seq. and

federal trademark infringement/dilution arising under 15 U.S.C 1125.7. This Court has original jurisdiction over this matter pursuant to 28 U.S.C. 1331, 1332

and 1338(a); and 15 U.S.C. 1116(a) and 1121.8. This Court has personal jurisdiction over the parties because both transact business in

Vermont.9. Venue is proper in this district pursuant to 28 U.S.C. 1391(b) and (c) and 1400(b)

because the Defendant has committed acts of infringement, to wit, advertising, sellingand/or offering for sale a product in the District, the use of which infringes the patents-insuit, as well as trademark infringement/dilution, within the District.

FACTS10. Cybex incorporates by reference each and every allegation contained in the paragraphs

above as though fully set forth herein.

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11. Cybex is engaged in the business of the design, development, sale and manufacture ofexercise equipment.

12. Cybex owns the entire right, title and interest in and to the '367 and '658 patents, issuedon November 15 and December 6, 2011, respectively.

13. In early 2009 Cybex introduced a product that embodied the methods called for by thepatents-in-suit, specifically, the FT-450.

14. The "stabilization pad technology" that is the subject of the patents-in-suit and is utilizedin the FT -450 Functional Trainer is unique and allows the user to isolate specific musclegroups, which in turn promotes greater focus of effort on specific muscles, and thusgreater efficiency ofworkout.

15. Cybex has expended substantial time, effort and financial resources in connection withthe promotion, sale, development and design of the FT -450, including but not limited to,funding third party biomechanical research projects relating to the stabilization padtechnology.

16. Cybex has established and maintains high standards of quality for its FT -450 brandproduct bearing or being offered for sale under the name FT-450. For example, theFT-450 is made in the United States so that Cybex can control the manufacturing processfrom raw materials to shipment. The automobile-grade finish of the FT -450 is the resultof an advanced powder coating process used by Cybex in combination with proprietarypowders developed with DuPont that assures a high quality, long lasting finish thatpurchasers associate with Cybex equipment designs and products. In addition, Cybexpurchases all steel from U.S. based suppliers to stringent material specification andchemistry. This means the best grade materials are put to work with a superior

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manufacturing process, resulting in high levels of quality. Finally, Cybex' upholstery isnot only designed to look good but is also built to endure the most rigorous ofworkouts.Cybex achieves this level of quality in its cushions by sewing with double stitched nylonbonded thread and using only the highest quality vinyl, wood and foam. The foregoingquality control ensures that all FT-450 units, and indeed all functional trainers utilizingCybex' patented stabilization pad technology, will be identified by purchasers asemanating from, licensed by, sponsored by, or authorized by, Cybex.

17. Cybex' FT-450s are widely distributed throughout the United States. There is asubstantial demand for the product, and because of that demand, the right to manufacture,sell, distribute and/or license such goods is a valuable commercial property right.

18. Cybex' FT-450 has been advertized by Cybex to the public, including through theInternet and written sales material.

19. Cybex' products, and the appearance and design of the FT-450 in particular in addition tothe FT -450 brand name, have come to be known to the purchasing public throughout theUnited States as representing products of the highest quality. As a result the uniquefeatures and appearance of the FT -450, valuable good will has been established and isnow associated with the name and appearance of the FT -450 which are of inestimablevalue to Cybex.

20. The FT-450's stabilization pad technology, appearance and design is inherently

distinctive and is immediately identified by the public as being associated with Cybex.21. Due to its unique design and generally high quality, theFT-450 has become Cybex'

largest single unit strength revenue generator and its fourth highest volume strength unit.

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22. On information and belief defendant has marketed and/or offered for sale at least oneproduct, specifically, the TuffStuffFTX, the use of which infringes Claims 1 through 11ofthe '367 patent and Claim 1-5 ofthe '658 patent. This FTX is confusingly similar invisual and structural appearance and design such that prospective purchasers can bemisled into believing that the FTX originates from the same source as the FT-450.

23. At all relevant times, Defendant has had actual and/or constructive knowledge of theclaims of the patents-in-suit and the applications therefor.

COUNT I(PATENT INFRINGEMENT)

24. Cybex incorporates by reference each and every allegation contained in the paragraphsabove as though fully set forth herein.

25. TuffStuffs aforesaid activities constitute a direct, contributory and/or inducement ofinfringement of the aforesaid patents in violation of35 U.S.C. 271 et seq.

26. TuffStuffs aforesaid infringement is, and was, willful and knowing.27. Cybex has suffered and will continue to suffer immediate and ongoing irreparable harm

and monetary damages as a result ofTuffStuffs willful patent infringement.COUNT TWO(VIOLATION OF THE LANHAM ACT, 15 U.S.C 1125)

28. Cybex incorporates by reference each and every allegation contained in the paragraphsabove as though fully set forth herein.

29. Defendant's aforesaid conduct constitutes an unfair attempt to trade on the goodwill ofPlaintiffs business in the FT-450 by intentionally attempting to copy and copying thedesign, shape, size, appearance, look and feel of the FT-450, its name ("FTX" versus

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"FT-450"), and its associated promotional materials, and as such, is an attempt to passof f the FTX as the same or similar in source, design or quality to the FT-450.

30. The aforesaid conduct constitutes a violation of Section 43(a) ofthe Lanham Act, 15U.S.C. 1125(a), and is being undertaken with full knowledge ofCybex' exclusive rightsin and to its FT-450 mark and its trade dress in the FT-450, and such acts have been madeand are being made in conscious disregard for Cybex' rights, entitling Cybex to an awardofTuffStuffs profits, up to thee times Cybex' actual damages, and Cybex' attorneys'fees in bringing this action, pursuant to 15 U.S.C. 1117(a).

31. Plaintiff is suffering and will continue to suffer harm and monetary damage in an amountto be determined at trial unless and until Defendant is enjoined from continuing to engagein this unlawful conduct.

EXCEPTIONAL CASE32. This is an exceptional case under 35 U.S.C. 285 in which Cybex is entitled to attorney's

fees incurred in connection with prosecuting this action.WHEREFORE, Plaintiff requests that this Court enter judgment:

A. Declaring that TuffStuff infringes and has infringed the '367 and '658 patents;B. Declaring that TuffStuffs infringement of the '367 and '658 patents has been willful;C. Declaring that TuffStuff infringes and has infringed Cybex' trademark and trade dress;D. Declaring that TuffStuffs infringement ofCybex' trademark and trade dress has been

willful;E. Awarding Cybex a preliminary and permanent injunction restraining TuffStuff and allthose in active concert or privity with it from further infringement of the '367 and '658patents, and further infringement ofCybex' trademark and trade dress in the FT-450;

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F. Awarding Cybex treble damages based on TuffStuffs willful infringement of the '367and '658 patents, FT-450 trademark and trade dress, as provided under 35 U.S.C. 284 and15 U.S.C. 1117;G. Declaring that this is an exceptional case and awarding Cybex its reasonable attorneysfees and costs pursuant to 35 U.S.C. 285; andH. Granting Cybex such other and further relief as the Court deems jus t and proper.

PLAINTIFF HEREBY DEMANDS TRIAL BY JURYRespectfully submitted,

Dated at Burlington, Vermont this 21st day of December, 2011.CYBEX INTERNATIONAL, INC.,By its attorneys,By: : r ~ (? C - t k - 1 ~ Ian P. Carleton, Esq.SHEEHEY, FURLONG AND BEHM P.C.30 Main Street/P.O. Box 66Burlington, VT 05402(802) 864-9891icarleton(a)sheeheyvt.com

/' ./!.___...,/YJ/ ,; . . /1 ;J, _By: /s/ ) L ~ l c - v u e . . _ _ l , . . 4 ! ; A - , B v f 4 J M. Lawrence Oliverio, Esq.RISSMAN HENDRICKS AND OLIVERIO, LLP100 Cambridge Street, Suite 2101Boston, MA 02114(617) [email protected]

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Cybex International v. TuffStuff Fitness Equipment