Upload
patentblast
View
221
Download
0
Embed Size (px)
Citation preview
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
1/26
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
MACNEIL AUTOMOTIVE PRODUCTS )
LIMITED, an Illinois Corporation, d/b/a )WEATHERTECH, )
)
Plaintiff, ) No.
)
v. )
)
KRACO ENTERPRISES, LLC, an Illinois )
Limited Liability Company, )
)
Defendant. ) JURY TRIAL DEMANDED
COMPLAINT
Plaintiff, MacNeil Automotive Products Limited d/b/a WeatherTech (WeatherTech),
by its undersigned attorneys, for its Complaint against defendant Kraco Enterprises, LLC
(Kraco), alleges as follows:
NATURE OF THE ACTION
1. This is an action against Kraco for trademark infringement, patent infringement,trademark dilution, false designation of origin, unfair competition, unjust enrichment and
violations of the Illinois Uniform Deceptive Trade Practices Act and the Illinois Consumer Fraud
and Deceptive Business Practices Act.
PARTIES
2. Plaintiff WeatherTech is a corporation organized under the laws of the State ofIllinois with a principal place of business located at 841 Remington Blvd., Bolingbrook, Illinois.
WeatherTech is a manufacturer and supplier of automotive accessories including, among other
things, interior and leather cleaners, floor liners and mats.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
2/26
-2-
3. Defendant Kraco is a limited liability company organized under the laws ofIllinois with its principal place of business located in Compton, California. Upon information
and belief, Kraco is a manufacturer and supplier of automotive accessories, such as floor liners
and floor mats.
JURISDICTION AND VENUE
4. This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. 1331 and 1338 because WeatherTechs claims arise under the laws of the United States. This
Court has supplemental jurisdiction over WeatherTechs state law claims pursuant to 28 U.S.C.
1367. This Court has personal jurisdiction over Kraco due to its systematic and continuous
business connections and contacts with Illinois.
5. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(c), 1395(a)1400(b) because Kraco is subject to personal jurisdiction in, does business in and has committed
acts of infringement in this district and has systematic and continuous business connections and
contacts with this district.
FACTUAL BACKGROUND
6. WeatherTech is the exclusive licensee of U.S. Trademark Registration Nos.3,534,011 and 1,664,203 for the mark WEATHERTECH, for, among other things, floor trays
for land vehicles and rubber floor mats for automobiles. A copy of duly and legally issued
Registration Nos. 3,534,011 and 1,664,203 is attached hereto as Exhibit 1.
7. As the exclusive licensee of all right, title and interest in the WEATHERTECHmark, WeatherTech has standing to sue for infringement of the mark and may seek monetary
damages, injunctions and other relief for past, current and future infringement of the mark.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
3/26
-3-
8. Since 1989, WeatherTech has used its WEATHERTECH mark in interstatecommerce. Since WeatherTech launched its company, its products always have been associated
with the WEATHERTECH mark in connection with its goods and services. The
WEATHERTECH mark is highly distinctive with regard to WeatherTechs goods and services
and customers of the same are accustomed to seeing and expecting to see the WEATHERTECH
mark in connection with said goods and services.
9. WeatherTech is the exclusive licensee of multiple U.S. registrations for the markWEATHERTECH. These registrations cover a wide variety of goods, including, but not limited
to: 1) protective liners for the cargo area of vehicles and trucks; 2) rubber floor mats for
automobiles; 3) bug and stone deflector shields for land vehicles; 4) floor trays for land vehicles;
5) mud flaps for land vehicles; 6) shampoo for land vehicles, cleaner for tires and wheels, wax
for land vehicles, glass cleaner, tire shine, cleaner for floor mats and floor trays for land vehicles,
water-based protectant applied as a fluid to the surfaces of land vehicle floor mats and floor
trays, carpet cleaner, cleaner for the interior of land vehicles, leather cleaner, leather conditioner;
7) land vehicle parts, namely, rooftop cargo and luggage carriers for vehicles; wind deflectors for
attachment to the roof or sides of vehicles; pet barriers for land vehicles; headlight guards;
license plate frames, license plate covers and replacement screw caps for license plate covers;
and 8) windshield sun shades for land vehicles.
10. True and correct copies of registrations for the WEATHERTECH mark areattached hereto as Exhibits 1 and 2, and are incorporated by reference as though fully set forth
herein.
11. In addition, WeatherTech has common law rights in the WEATHERTECH markand marks that incorporate WEATHERTECH in connection with various other goods, including
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
4/26
-4-
as identified in pending U.S. trademark applications. True and correct copies of said
applications are attached hereto as Exhibit 3.
12. As a result of the nature and quality of WeatherTechs goods, its widespread useof the WEATHERTECH Marks, extensive and continuous media coverage, the high degree of
consumer recognition of the WEATHERTECH Marks, WeatherTechs enormous and loyal
customer base, its numerous trademark registrations and pending applications, and other factors,
the WEATHERTECH Marks are famous within the meaning of Section 43(c) of the United
States Trademark Act, 15 U.S.C. 1125(c). WeatherTech also owns the website
www.weathertech.com.
13. Through this usage, WeatherTech has permeated all channels of media, includingthe internet, print publications, radio advertising, and television advertising. WeatherTech has
spent 24 years and tens of millions of dollars in advertising all centered around its
WEATHERTECH Marks. WeatherTech, and its WEATHERTECH trademark, are famous.
14. WeatherTech is the exclusive licensee of four U.S. Patents: United States PatentNo. 7,686,370 (the 370 patent), attached hereto as Exhibit 4, duly and legally issued on March
30, 2010; United States Patent No. 8,336,944 (the 944 Patent), attached hereto as Exhibit 5,
duly and legally issued on December 25, 2012; United States Patent No. 8,336,945 (the 945
Patent), attached hereto as Exhibit 6, duly and legally issued on December 25, 2012; and United
States Patent No. 8,277,918 (the 918 Patent), attached hereto as Exhibit 7, duly and legally
issued on October 2, 2012. These patents collectively shall be referred to herein as the Subject
Patents.
15. As the exclusive licensee of all right, title and interest in the Subject Patents,WeatherTech has standing to sue for infringement of the Subject Patents and may seek monetary
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
5/26
-5-
damages, injunctions and other relief pursuant to 35 U.S.C. 271 for past, current and future
infringement of the Subject Patents.
16. Since 2005, WeatherTech has manufactured, distributed, advertised and sold toconsumers throughout the United States its vehicle floor trays which are digitally measured for
precise fit for certain makes and models of vehicles. WeatherTech markets these products
extensively under its mark WEATHERTECH.
17. WeatherTechs floor trays were and are a revolutionary product in the vehiclefloor tray industry. WeatherTechs design and inventions with regard to said floor trays were so
successful that WeatherTech was able to obtain a significant market share in the floor tray
product market very shortly after the products introduction to the marketplace. WeatherTech
also has developed a commercially successful, and patented, All Vehicle Mat, which can be cut
by the consumer to fit a wide variety of different vehicle make and models.
18. WeatherTech recently became aware that Kraco was manufacturing anddistributing an infringing floor tray/liner under the mark Goodyear. See Exhibit 8.
19. WeatherTech also recently became aware that Kraco was manufacturing anddistributing an infringing All Vehicle Floor mat. See Exhibit 9. Kracos floor mat and floor
trays shall be referred to collectively as the Infringing Products. This infringement by Kraco
has been willful, as MacNeil specifically made Kraco aware of its 918 Patent about one year
ago.
20. WeatherTech also became aware of Kracos wrongful activities with regard toInternet search engines, such as Googles Adwords, in that Kraco has been bidding for, and
using, WeatherTechs trademark to confuse consumers and pass off its own floor liners and floor
mats. See Exhibit 10.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
6/26
-6-
21. For example, Kraco has secured the right to have its advertisement and associatedwebsite link displayed very high in internet searches by using WeatherTechs WEATHERTECH
trademark and variations thereof. Kraco has gone so far as to include the WEATHERTECH
trademark within the actual link which directs a consumer to Kracos website. Ex. 10.
22. Internet search engines, such as Google, allow internet users to locate websitesthat correspond with entered keywords, or search terms. As a result, links related to websites
are usually displayed in order of relevance determined by the search engine provider.
23. By using search engines such as Google, internet users enter the subject matterthey are interested in, the companies they are looking for, or the goods they wish to buy. This
allows search engines to earn an overwhelming percentage of their revenue from the sale of
contextual advertising, which permits companies to place their advertising in front of consumers.
24. As an example, as part of its business, Google offers a keyword-triggeredadvertising program called AdWords. AdWords enables advertisers to purchase or bid on
certain keywords. Thus, when an internet user enters those keywords in Googles search engine,
the program generates links, known as Sponsored Links, to the advertisers websites.
Sponsored links appear at the top and on the margins of Googles search-result pages and
sometimes at the bottom margin. In many instances, the search results are designed so that the
Sponsored Link display is inconspicuous, confusing and ambiguous so it is not apparent who
sponsors these links and whether a sponsor of the link is associated in any way with the
company that is the subject of the search. Whenever an internet user clicks on a Sponsored Link,
the corresponding advertiser must pay Google. The same or substantially similar policies also
hold true for other search engines, such as, without limitations, Yahoo, Bing, and AOL.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
7/26
-7-
25. Googles own materials reveal the operation of its AdWords program, and of theability of users to inappropriately trade on the goodwill and registered trademarks of their
competitors. For example, Googles policy states as follows: Google will not investigate or
restrict the use of trademark terms in keywords, even if a trademark complaint is received. As
such, WeatherTech is left with no recourse but this action in which to address Kracos wrongful
actions.
26. As a result of Kracos wrongful actions, whenever an internet consumer conductsa search by entering WeatherTechs WEATHERTECH mark or variations thereof on various
search engines (e.g., Google), Kracos advertisement and website is prominently displayed. As
such, Kracos participation in these internet search programs that use WeatherTechs mark in
order to trade on WeatherTechs goodwill and mark results in consumer confusion and diverts
users away from WeatherTechs website and to Kracos website.
27. WeatherTech is aware of at least the following examples of Google Adwords thatKraco has recently secured involving WeatherTechs registered trademarks:
WeatherTech (phrase and exact wording)
WeatherTech floor Liners
WeatherTech floor LinerWeatherTech DigitalFit
1
WeatherTech mats
WeatherTech car matsWeatherTech coupon code.
28. The fact that Kracos ad occupies a top position next to the link forWeatherTechs website in the search results shows, according to Googles own literature, that
Kraco is both willing to pay for the ad, and that the ad must have a relatively high clickthrough
rate.
1 WeatherTech also is the exclusive licensee of U.S. Trademark Registration No. 3,545,072
for the mark DIGITALFIT for floor trays for land vehicles. See Exhibit 11.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
8/26
-8-
29. Even worse, the ad content of the link to Kracos website, contains the veryWEATHERTECH trademark, thus creating even a greater likelihood of confusion.
30. WeatherTech has not given Kraco permission to use its trademark, or variationsthereof, for the promotion or sale of Kracos products or services. Through its use of the
WeatherTech marks as keywords, Kraco seeks to exploit the hard-earned goodwill of
WeatherTech and its products and services. Kracos use of WeatherTechs trademark, and
variations thereof, for use in the AdWords program, as well, on information and belief, as other
search engine programs is intended to divert consumers from the website they intended to visit
WeatherTechs website to Kracos website. Thus, Kraco is free riding on the goodwill and
reputation of WeatherTech.
31. By taking steps to ensure that its add appears at the top of search results forWEATHERTECH related searches, Kracos actions are inherently and intentionally deceptive
and mislead and/or confuse consumers into falsely believing that Kracos own website is
sponsored or authorized by and/or originating with WeatherTech. Kracos actions also dilute the
ability of WeatherTechs trademark to identify WeatherTech to consumers as a source of its
products and services.
32. Kracos conduct also constitutes a deceptive bait and switch. Once a potentialcustomer enters the WEATHERTECH mark or a variation thereof from the search result ad,
Kracos products and website are prominently made available to consumers.
33. On information and belief, potential customers have visited Kracos website usingsearch terms involving the WEATHERTECH mark, believing that WEATHERTECH branded
products are available from Kraco.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
9/26
-9-
34. When a user clicks on the sponsored link, he or she is directed to Kracos websiteselling floor liners and/or floor mats, none of which are WeatherTechs WEATHERTECH floor
liners or floor mats.
35. Kracos actions divert customers from WeatherTechs website, erode thedistinctiveness and dilute WeatherTechs marks, and impair WeatherTechs honest and good
faith efforts to promote and sell its products on the internet. Kracos actions have caused
damage and irreparable injury to WeatherTech.
36. In addition to harming WeatherTechs reputation and the value of its mark, Kracohas realized and continues to realize profits and other benefits rightfully belonging to
WeatherTech.
37. Further, the cost of WeatherTech to advertise on search engines such as Google,using its own registered marks and intellectual property, has been inflated wrongfully by Kracos
misconduct in bidding for search terms that specifically belong to WeatherTech. Kracos actions
in knowingly and intentionally bidding on WeatherTechs trademarks has caused damage to
WeatherTech in causing WeatherTech to pay inflated prices for these keywords or AdWords.
COUNT I FEDERAL TRADEMARK INFRINGEMENT
38. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
39. WeatherTech is the exclusive licensee of the valid and subsisting, federally
registered mark WEATHERTECH and DIGITALFIT, and the good will attendant therewith.
40. Kracos use in interstate commerce of MacNeils registered WEATHERTECH
and DIGITALFIT marks in connection with the promotion, advertisement and sales of its
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
10/26
-10-
competing products constitutes a reproduction, counterfeit, copy and/or colorable imitation of the
WEATHERTECH and DIGITALFIT marks and therefore infringes upon the same.
41. Both WeatherTech and Kraco offer their products or services through the same
channels of trade, such as the internet.
42. Kracos use of the WEATHERTECH and DIGITALFIT Marks is likely to
cause confusion, mistake and/or deceive the public in violation of 15 U.S.C. 1114.
43. WeatherTech is informed and believes, and based thereon alleges, that Kraco used
WEATHERTECH and DIGITALFIT Marks with knowledge of, and the intent to call to mind
and create a likelihood of confusion with regard to, and/or trade off the fame of WeatherTech
and the registered WEATHERTECH and DIGITALFIT Marks.
44. WeatherTech has given notice of its registrations pursuant to section 29 of the
Lanham Act, 15 U.S.C. 1111.
45. Kracos continued use of the WEATHERTECH and DIGITALFIT Marks will
injure WeatherTech by causing a likelihood that the public will be confused or mistaken into
believing that the goods or services provided by Defendant are endorsed or sponsored by
WeatherTech.
46. WeatherTech has no control over the nature and quality of the goods and services
offered by Defendant trading off its WEATHERTECH and DIGITALFIT Marks, and
WeatherTechs reputation and goodwill will be damaged and the value of WeatherTechs
registered and common law marks jeopardized by Defendants continued use of the
WEATHERTECH and DIGITALFIT name and mark. Because of the likelihood of confusion
between the parties marks, any defects, objections, or faults found with Defendants goods and
services marketed under the WEATHERTECH and DIGITALFIT Mark would negatively
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
11/26
-11-
reflect upon and injure the reputation that WeatherTech has established for the goods and
services it offers in connection with the registered WEATHERTECH and DIGITALFIT
Marks. As such, Defendant is liable to WeatherTech for infringement of a registered mark under
15 U.S.C. 1114.
47. Defendants acts alleged above have caused, and if not enjoined will continue to
cause, irreparable and continuing harm to WeatherTechs marks, business, reputation, and
goodwill. WeatherTech has no adequate remedy at law as monetary damages are inadequate to
compensate WeatherTech for the injuries caused by the Defendant.
48. As a result of Defendants infringement of WeatherTechs registered marks,
WeatherTech has incurred damages in an amount to be proven at trial.
49. Defendants intentional and willful infringement of the WEATHERTECH and
DIGITALFIT marks, and disregard of WeatherTechs rights, renders this case an exceptional
case pursuant to 15 U.S.C. 1117(a).
50. Unless enjoined by the Court, Defendant will continue to use and infringe the
mark to WeatherTechs irreparable injury.
COUNT II FEDERAL TRADEMARK DILUTION
51. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
52. WeatherTech is the exclusive licensee of the valid and subsisting, federally
registered mark WEATHERTECH, and the good will attendant therewith.
53. Kracos use in interstate commerce of the WEATHERTECH name in
connection with the promotion, advertisement and sales of its products constitutes a
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
12/26
-12-
reproduction, counterfeit, copy and/or colorable imitation of the WEATHERTECH mark and
therefore infringes upon the same.
54. Both WeatherTech and Defendant offer their goods through the same channels of
trade, such as the internet.
55. As a result of the enormous publicity and advertising campaign for almost 25
years by WeatherTech, and the strong and loyal base of customers that enjoy WeatherTechs
goods and services, the WEATHERTECH Marks have a high degree of consumer recognition,
are widely recognized by the general consuming public of the United States as a designation of
WeatherTechs goods and services, and are famous.
56. The WEATHERTECH Marks became famous before Defendant wrongfully
traded on the same.
57. Defendant literally uses WeatherTechs famous mark in trying to divert
consumers to its website and thus is likely to cause an association between Defendants website
and products and the WEATHERTECH Marks that impairs the distinctiveness of the
WEATHERTECH Marks and weakens the connection in consumers minds between the
WEATHERTECH Marks and WeatherTechs goods and services. Defendants wrongful use of
the WEATHERTECH Mark is likely to cause dilution by tarnishment and blurring based on a
number of relevant considerations, including, but not limited to:
(a) Defendants use of the WEATHERTECH mark is identical to the mark itself;
(b) The WEATHERTECH Marks are inherently distinctive;
(c) WeatherTech is engaging in substantially exclusive use of the WEATHERTECH
Marks in connection with automotive care products;
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
13/26
-13-
(d) The WEATHERTECH Marks are widely recognized by the general consuming
public;
(e) Defendants products may produce a negative result and damage the
WEATHERTECH Marks as a result; and
(f) WeatherTech, on information and belief, and based thereon alleges, that Defendant
intends to create an association with the WEATHERTECH Marks.
58. Defendants acts alleged have caused, and if not enjoined will continue to cause,
irreparable and continuing harm to WeatherTechs marks, business, reputation and goodwill.
WeatherTech has no adequate remedy at law as monetary damages are inadequate to compensate
WeatherTech for injuries caused by Defendant.
59. As a result of Defendants acts as alleged above, WeatherTech has incurred
damages in an amount to be proven at trial.
60. Defendants wrongful use of the WEATHERTECH Mark is deliberate, willful,
fraudulent, and without any extenuating circumstances, and constitutes a willful intent to trade
on WeatherTechs reputation or to cause dilution of the famous WEATHERTECH Marks and is
an exceptional case within the meaning of Lanham Act section 35, 15 U.S.C. 1117.
WeatherTech is therefore entitled to recover three times the amount of its actual damages and the
attorneys fees and costs incurred in this action, and prejudgment interest.
COUNT III FEDERAL FALSE DESIGNATION OF ORIGIN
61. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
14/26
-14-
62. WeatherTech is the exclusive licensee of the valid and subsisting, federally
registered marks WEATHERTECH and DIGITALFIT, and the good will attendant
therewith.
63. Kracos use in interstate commerce of the WEATHERTECH and
DIGITALFIT names in connection with the promotion, advertisement and sales of its
competing products constitutes a reproduction, counterfeit, copy and/or colorable imitation of the
WEATHERTECH and DIGITALFIT marks and therefore infringes upon the same.
64. Both WeatherTech and Defendant offer their goods through the same channels of
trade, such as the internet.
65. Such acts by Defendant are likely to cause confusion and deception among the
purchasing public and/or are likely to lead the consuming public to believe that WeatherTech has
authorized, approved, or somehow sponsored Defendants use of the Marks in connection with
Defendants goods and services.
66. The aforesaid wrongful acts of Defendant constitute the use of a false designation
of origin and false description or representation, all in violation of 15 U.S.C. 1125(a).
67. Defendants acts alleged have caused, and if not enjoined will continue to cause,
irreparable and continuing harm to WeatherTechs marks, business, reputation and goodwill.
WeatherTech has no adequate remedy at law as monetary damages are inadequate to compensate
WeatherTech for injuries caused by Defendant.
68. As a result of Defendants acts as alleged above, WeatherTech has incurred
damages in an amount to be proven at trial.
69. Defendants wrongful use of the WEATHERTECH and DIGITALFIT Marks is
deliberate, willful, fraudulent, and without any extenuating circumstances, and constitutes a
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
15/26
-15-
willful intent to trade on WeatherTechs reputation or to cause dilution of the famous
WEATHERTECH Marks and is an exceptional case within the meaning of Lanham Act section
35, 15 U.S.C. 1117. WeatherTech is therefore entitled to recover three times the amount of its
actual damages and the attorneys fees and costs incurred in this action, and prejudgment
interest.
COUNT IV COMMON LAW TRADEMARK INFRINGEMENT
70. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
71. WeatherTech is the exclusive licensee of the valid and subsisting, federally
registered marks WEATHERTECH and DIGITALFIT, and the good will attendant
therewith.
72. Defendants acts alleged herein, and specifically, without limitation, Defenants
use of the WEATHERTECH and DIGITALFIT Mark, infringe WeatherTechs exclusive
trademark rights in the WEATHERTECH and DIGITALFIT Marks, in violation of the
common law.
73. Defendants acts alleged have caused, and if not enjoined will continue to cause,
irreparable and continuing harm to WeatherTechs marks, business, reputation and goodwill.
WeatherTech has no adequate remedy at law as monetary damages are inadequate to compensate
WeatherTech for injuries caused by Defendant.
74. As a result of Defendants acts as alleged above, WeatherTech has incurred
damages in an amount to be proven at trial.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
16/26
-16-
75. Defendants wrongful use of the WEATHERTECH and DIGITALFIT Marks is
deliberate, willful, and in reckless disregard of WeatherTechs trademark rights, entitling
WeatherTech to the recovery of punitive damages.
COUNT V ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT
76. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
77. Defendants knowing and willful copying and colorable imitation of
WeatherTechs protected marks WEATHERTECH and DIGITALFIT is intended by
Defendant to allow it to free-ride on WeatherTechs substantial investment in its Marks and the
hard-earned goodwill and excellent reputation of WeatherTech.
78. Defendants knowing and continued and any future sales of its competing
products to unsuspecting Illinois consumers has created a substantial likelihood of confusion and
caused mistake and deception in Illinois consumers minds because the Kraco products are
inferior to, and not the same as, the WeatherTech products.
79. The above-described knowing and willful conduct constitutes deceptive trade
practices within the meaning of Section 2 of the Illinois Uniform Deceptive Trade Practices Act,
815 ILCS 510/2.
80. As a result of Defendants continued sales of its competing product, WeatherTech
has suffered and will continue to suffer irreparable harm to its goodwill and reputation with its
consumers, who confuse the Kraco products for the WEATHERTECH products. WeatherTech
has no adequate remedy at law for the immediate and continuing harm.
81. As a result of Defendants acts as alleged above, WeatherTech has incurred
damages in an amount to be proven at trial.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
17/26
-17-
COUNT VI ILLINOIS COMMON LAW UNFAIR COMPETITION
82. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
83. For many years, WeatherTech has expended substantial sums of money creating,
advertising, promoting, establishing and supporting its WEATHERTECH mark and with its
customers and Illinois and American consumers in general.
84. As a result of WeatherTechs substantial investment and hard work over the
years, as well as WeatherTechs commitment to quality, excellence and customer service,
WeatherTech has earned tremendous goodwill and a fine reputation with consumers and the
trade, who associate WeatherTech with its Mark.
85. Defendant is aware of the above facts, and has sought to wrongfully capitalize on
WeatherTechs fine reputation and goodwill by advertising, promoting and selling its product
using the WEATHERTECH name, which is an intentional attempt to copy and/or create a
colorable imitation of WeatherTechs Mark. As a result of Defendants wrongful conduct,
Defendant is able to free-ride off of WeatherTechs substantial investment and hard-work by
causing confusion among consumers in the marketplace and attempting to identify or associate
its products with WeatherTech and/or confuse consumers that this is the case. Separate and apart
from causing confusion, Defendants wrongful conduct also involves its ability to free-ride off of
MacNeils superior WeatherTech product and the substantial investment and effort that
MacNeil has put into developing the same. Separate and apart from these facts, Kraco has
wrongfully caused WeatherTech to pay more to advertise its own product on search engines by
improperly bidding up WeatherTechs trademarked terms and thus costing WeatherTech more
money in which to advertise on the internet.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
18/26
-18-
86. WeatherTech has been, is, and will continue to be damaged by Defendants
actions and WeatherTech does not have an adequate remedy at law. Defendants actions have
damaged, and will continue to damage, WeatherTechs business, market, reputation and
goodwill. As a result of Defendants acts as alleged above, WeatherTech has incurred damages
in an amount to be proven at trial.
COUNT VII UNJUST ENRICHMENT
87. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
88. For many years, WeatherTech has expended substantial sums of money creating,
advertising, promoting, establishing and supporting its WEATHERTECH mark with its
customers and Illinois and American consumers in general. As a result of WeatherTechs
substantial investment and hard work over the years, as well as WeatherTechs commitment to
quality, excellence and customer service, WeatherTech has earned tremendous goodwill and a
fine reputation with consumers and the trade, who associate WeatherTech with its Mark.
89. Defendant is aware of the above facts, and has sought to wrongfully capitalize on
WeatherTechs fine reputation and goodwill by advertising, promoting and selling its product
using the WEATHERTECH name, which is an intentional attempt to copy and/or create a
colorable imitation of MacNeils Mark. As a result of Defendants wrongful conduct, Defendant
is able to free-ride off of WeatherTechs substantial investment and hard-work by causing
confusion among consumers in the marketplace and attempting to identify or associate its
products with WeatherTech and/or confuse consumers that this is the case.
90. Defendant unjustly has received the benefit of WeatherTechs substantial
investment in its Mark and its hard-earned goodwill and fine reputation.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
19/26
-19-
91. Defendant has been unjustly enriched.
92. It would violate the principles of justice, equity and good conscience for
Defendant to retain this benefit.
93. To avoid an unjust enrichment, WeatherTech should be awarded damages
reflecting Defendants enrichment, among other relief.
COUNT VIII VIOLATION OF THE ILLINOIS CONSUMER
FRAUD AND DECEPTIVE BUSINESS PRACTICES ACT 815 ILCS 505 et seq.
94. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
95. In violation of the Illinois Consumer Fraud and Deceptive Business Practices Act,
Defendant has engaged in at least the following unfair and/or deceptive acts or practices:
a) By its use of its infringing keywords/search terms WEATHERTECHand its infringing and confusing use of WeatherTechs Mark, Defendant
has confused consumers as to the origins of Kracos products and falsely
attempted to represent that Kraco has some relation to WeatherTech; and
b) Other false statements and misrepresentations, concealments, suppressionsor omissions according to proof.
96. Defendant intended for consumers to suffer confusion and to misrepresent the
source of its products.
97. Defendants unfair and deceptive acts and practices occurred in the normal course
of trade or commerce.
98. Through its unfair and deceptive acts and practices, Defendant has harmed
WeatherTech and American and Illinois consumers of its products.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
20/26
-20-
COUNT IX TRADEMARK DILUTION, ILLINOIS
TRADEMARK AND REGISTRATION ACT, 765 ILCS 1036, et seq.
99. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
100. The WEATHERTECH Marks are distinctive and famous within the meaning of
section 65 of the Illinois Trademark and Registration Act, 765 ILCS 1036/65.
101. Defendants misappropriation of the WEATHERTECH Mark began after the
WEATHERTECH Marks became famous.
102. Defendants continued use of WEATHERTECH Marks is likely to cause injury to
WeatherTechs business reputation and/or the dilution of the distinctive quality of
WeatherTechs famous WEATHERTECH Marks, in violation of the Illinois Trademark and
Registration Act, 765 ILCS 1036/65.
103. Defendants acts alleged have caused, and if not enjoined will continue to cause,
irreparable and continuing harm to WeatherTechs marks, business, reputation and goodwill.
WeatherTech has no adequate remedy at law as monetary damages are inadequate to compensate
WeatherTech for injuries caused by Defendant.
104. Defendants wrongful use of the Mark is deliberate, willful, and in reckless
disregard of WeatherTechs trademark rights, entitling WeatherTech to the recovery of damages
in an amount to be proved at trial, and treble damages.
COUNT X PATENT INFRINGEMENT OF U.S. PATENT NO. 8,336,944
105. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
21/26
-21-
106. Upon information and belief, without the consent of WeatherTech, Defendant has
made, used, offered for sale, sold and/or imported Infringing Products which directly and/or
indirectly infringe at least one claim of the 944 patent.
107. Upon information and belief, without the consent of WeatherTech, Defendant has
committed acts that constitute inducement of infringement of at least one claim of the 944
patent by others through their acts of making, importing, offering to sell and/or selling Infringing
Products.
108. As a direct and proximate result of Defendants direct infringement, indirect
infringement and/or inducement to infringe the 944 patent, WeatherTech has suffered and will
continue to suffer irreparable injury and damages in an amount not yet determined for which
WeatherTech is entitled to relief.
109. Upon information and belief, Defendants direct infringement, indirect
infringement and/or inducement to infringe the 944 patent has been and continues to be willful
and deliberate.
COUNT XI PATENT INFRINGEMENT OF U.S. PATENT NO. 8,336,945
110. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
111. Upon information and belief, without the consent of WeatherTech, Defendant has
made, used, offered for sale, sold and/or imported Infringing Products which directly and/or
indirectly infringe at least one claim of the 945 patent.
112. Upon information and belief, without the consent of WeatherTech, Defendant has
committed acts that constitute inducement of infringement of at least one claim of the 945
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
22/26
-22-
patent by others through their acts of making, importing, offering to sell and/or selling Infringing
Products.
113. As a direct and proximate result of Defendants direct infringement and/or
inducement to infringe the 945 patent, WeatherTech has suffered and will continue to suffer
irreparable injury and damages in an amount not yet determined for which WeatherTech is
entitled to relief.
114. Upon information and belief, Defendants direct infringement, indirect
infringement and/or inducement to infringe the 945 patent has been and continues to be willful
and deliberate.
COUNT XII PATENT INFRINGEMENT OF U.S. PATENT NO. 7,686,370
115. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
116. Upon information and belief, without the consent of WeatherTech, Defendant has
made, used, offered for sale, sold and/or imported Infringing Products which directly and/or
indirectly infringe at least one claim of the 370 patent.
117. Upon information and belief, without the consent of WeatherTech, Defendant has
committed acts that constitute inducement of infringement of at least one claim of the 370
patent by others through their acts of making, importing, offering to sell and/or selling Infringing
Products.
118. As a direct and proximate result of Defendants direct infringement and/or
inducement to infringe the 370 patent, WeatherTech has suffered and will continue to suffer
irreparable injury and damages in an amount not yet determined for which WeatherTech is
entitled to relief.
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
23/26
-23-
119. Upon information and belief, Defendants direct infringement, indirect
infringement and/or inducement to infringe the 370 patent has been and continues to be willful
and deliberate.
COUNT XIII PATENT INFRINGEMENT OF U.S. PATENT NO. 8,277,918
120. WeatherTech reasserts and incorporates by reference the allegations of its
Complaint at paragraphs 1 through 37 as if fully set forth herein.
121. Upon information and belief, without the consent of WeatherTech, Defendant has
made, used, offered for sale, sold and/or imported Infringing Products which directly and/or
indirectly infringe at least one claim of the 918 patent.
122. Upon information and belief, without the consent of WeatherTech, Defendant has
committed acts that constitute inducement of infringement of at least one claim of the 918
patent by others through their acts of making, importing, offering to sell and/or selling Infringing
Products.
123. As a direct and proximate result of Defendants direct infringement and/or
inducement to infringe the 918 patent, WeatherTech has suffered and will continue to suffer
irreparable injury and damages in an amount not yet determined for which WeatherTech is
entitled to relief.
124. Upon information and belief, Defendants direct infringement, indirect
infringement and/or inducement to infringe the 918 patent has been and continues to be willful
and deliberate.
PRAYER FOR RELIEF
WHEREFORE, WeatherTech prays:
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
24/26
-24-
A. That this Court grant preliminary and permanent injunctive relief enjoining
Defendant and all others acting in concert with and having knowledge thereof, from using the
WEATHERTECH Mark, and any similar trade name or mark or variant thereof, as a trade name,
trademark, service mark, domain name, or for any other purpose;
B. That this Court order Defendant to account to WeatherTech any and all revenues
and profits that Defendant derived from its wrongful actions and to pay all damages which
WeatherTech has sustained by reason of the acts complained of herein, and that such damages be
trebled;
C. That this Court award WeatherTech the costs of this action, pre and post-
judgment interest, and reasonable attorneys fees and expenses;
D. That this Court award WeatherTech punitive damages;
E. Enter judgment that Defendant has directly infringed the Subject Patents;
F. Enter judgment that Defendant has induced others to infringe the Subject Patents;
G. Enter judgment that Defendant has willfully infringed the Subject Patents;
H. Enter judgment that this case is found to be an exceptional case under 35 U.S.C.
285;
I. Enter a permanent injunction, pursuant to 35 U.S.C. 283, restraining and
enjoining Defendant and its respective officers, agents, servants, employees, attorneys,
customers and those in concert or participation with Defendant from any further sales of the
Infringing Products and any other infringement of the Subject Patents, whether direct or indirect;
J. Enter judgment ordering Defendant to compensate MacNeil for Defendants
infringement of the Subject Patents pursuant to 35 U.S.C. 284;
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
25/26
-25-
K. Enter a judgment ordering Defendant to pay enhanced damages pursuant to 35
U.S.C. 284;
L. Enter a judgment for an award of pre-judgment and post-judgment interest and
costs to WeatherTech pursuant to 35 U.S.C. 284;
M. Enter a judgment for an award of Plaintiffs reasonable attorneys fees pursuant to
35 U.S.C. 285;
N. Enter a permanent injunction pursuant to 35 U.S.C. 283, restraining and
enjoining Defendant and its respective officers, agents, servants, employees, attorneys,
customers and those in concert or participation with Defendant, from offering for sale or selling
the Infringing Products, and requiring destruction of all molds and tooling related to the
Infringing Products; and
O. Grant WeatherTech such other and further relief as the Court may deem just,
proper and equitable under the circumstances.
JURY TRIAL DEMAND
WeatherTech hereby demands a trial by jury on all issues so triable.
Respectfully submitted,
MACNEIL AUTOMOTIVE PRODUCTS
LIMITED d/b/a WEATHERTECH
Dated: November 1, 2013 By: /s/ Robert S. GrabemannOne of Its Attorneys
8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf
26/26
Robert S. Grabemann
Timothy M. Schaum
Vincent V. Frigo
[email protected] & AUMENT, LLP
227 West Monroe
Suite 3500Chicago, Illinois 60606
(312)258-1600