Case: 4:15-cv-00219-CEJ Doc.

#: 1 Filed: 02/03/15 Page: 1 of 15 PageID #: 1

IN THE UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
RBO PrintLogistix, Inc.
Plaintiff,
v.
Performance Press, Inc., d/b/a
thumbprint,
Defendant.

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Case No. _______________

JURY TRIAL DEMANDED

COMPLAINT
Plaintiff RBO PrintLogistix, Inc. (RBO), for its Complaint against Defendant
Performance Press, Inc., d/b/a thumbprint (Defendant), states as follows:
Introduction
This is an action for trademark infringement, false advertising and unfair competition.
RBO owns an incontestable, federally-registered trademark consisting in part of a fingerprint
logo design when used in connection with printing and graphic design services. Despite
knowing of RBOs mark, Defendant recently adopted a fingerprint logo design as a trademark in
connection with printing and graphic design services that is likely to cause confusion with
RBOs mark (shown below). Defendant has ignored RBOs repeated requests to cease use of the
infringing mark.

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Parties
1.

RBO is a Missouri corporation with a principal place of business located at 2463

Schuetz Road, Maryland Heights, Missouri 63043.

2.

Upon information and belief, Defendant is a Florida corporation with a principal

place of business at 2000 Platinum Road, Apopka, Florida 32703.

Jurisdiction and Venue
3.

Subject matter jurisdiction exists pursuant to 28 U.S.C. 1331 (federal question)

and 1338(a) (trademarks). RBOs claims arise under the laws of the United States; specifically,
15 U.S.C. 1114 and 1125. Subject matter jurisdiction exists over RBOs remaining common
law claims under 28 U.S.C. 1367(a) because the claims are so related that they form part of
the same case or controversy.
4.

Upon information and belief, this Court has personal jurisdiction over Defendant

because Defendant markets its goods and services over the internet at the interactive website
www.thumbprint.is. Defendant thereby committed the tortious acts described herein in
Missouri, and in this judicial district, or otherwise established contacts with this judicial district
sufficient to make the exercise of personal jurisdiction proper.
5.

Upon information and belief, venue is proper pursuant to 28 U.S.C. 1391(b) and

(c) because a substantial part of the events or omissions giving rise to the claims occurred in this
judicial district, and a substantial part of property that is the subject of the action is situated in
this judicial district.

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Facts Common to All Counts

RBOs Business
6.

RBO (and its corporate predecessors) have been in existence since 1985,

providing Web2Print technology, print, marketing, distribution, and fulfillment services to its
customers.
7.

RBOs predecessor, Riley-Barnard Business Products, Inc. was incorporated on

October 28, 1985. Since January 10, 2007, Plaintiff has been known as RBO PrintLogistix, Inc.
8.

RBO is one of the nations largest print distribution organizations, employing 60

people in the St. Louis metropolitan area, with customers located in all 50 states, Mexico,
Canada, and other foreign countries.
9.

RBO has a nationwide customer base.

10.

RBOs continued growth is not constrained by its location in St. Louis because

technology drives its business.

11.

For example, the core aspect of RBOs business Web2Print doesnt require

brick and mortar facilities across the United States, but rather only an internet connection.
12.

Web2Print is a technology platform that allows employees of RBOs customers to

design and order printed goods essentially upon demand. Using this technology, employees of
RBOs customers can design and select any available print job, whether standard or customized,
and apply it to more than 2,500 promotional items.
13.

Web2Print allows RBOs customers to designate which of its employees may

access the platform, as well as the items that they may select.

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14.

After the order is entered and printed by an employee of RBOs customer, the

order is direct shipped from RBOs print facilities in St. Louis or from a print facility located
closer to the customer, if necessary.
15.

RBOs Web2Print offering is the driver of the companys continued success

because it has enabled RBO to compete across the country and internationally.
16.

RBOs clients include national companies and organizations.

17.

In addition to its significant investment in its trade name and branding, RBO

continues to invest in its core business on the Eastern seaboard.

18.

RBO has long-standing customers in the State of Florida, and its newest large

account is located in New York.

RBOs Registered Mark

19.

RBO owns U.S. Registration No. 3,513,178 for the trademark (the Fingerprint

Logo).

20.

The registration is incontestable under 15 U.S.C. 1065. A copy of the

registration is attached and incorporated herein by reference as Exhibit A.

21.

RBO has used the Fingerprint Logo in connection with printing services, graphic

design services, design and maintenance of website services, order fulfillment services, and
warehouse services since at least 2007. U.S. Registration No. 3,513,178 covers these goods and
services in International Classes 35, 39, 40, and 42.

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22.

RBO has meticulously cultivated its brand since 2007. RBO has invested

significant time and resources developing its branding, including the Fingerprint Logo, and the
goods and services it provides thereunder.
23.

In late 2006, RBO hired renowned brand consultant Eric Thoelke of TOKY

Branding + Design to create a new trade name and trademark for RBO.
24.

Prior to the rebranding, RBO went by the trade name RBO-SWM, as a result of

RBOs merger with SWM Inc.

25.

After the launch of the rebranded RBO in January 2007, RBO has consistently

and extensively applied its trade name and Fingerprint Logo to its internal and external
communications, including its website, customer mailers, stationary, and marketing pieces. See
Exhibit B.
26.

The Fingerprint Logo adopted as a part of the rebranding signifies that each RBO

customer is unique much like a fingerprint. Clients and others from across the United States
who use RBOs goods and services recognize the trade name and Fingerprint Logo as an
indicator of source, and associate the Fingerprint Logo with RBO.
27.

In addition to the Fingerprint Logo, RBO uses other fingerprint images

throughout its marketing materials. For example, the series of fingerprint shaped images shown
below (the Fingerprint Shaped Series) are used throughout RBOs marketing materials:

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28.

RBO has used the Fingerprint Shaped Series regularly, on marketing materials

directed across the United States and elsewhere and has acquired common law trademark rights
in the Fingerprint Shaped Series.

Defendants Awareness of RBO and RBOs Mark

29.

By virtue of RBOs registration of the Fingerprint Logo, Defendant has had

constructive notice of RBOs registered mark since October 7, 2008.

30.

RBO and Defendant are both members of the Print Services & Distribution

Association (PSDA), the predominant trade organization in their field.

31.

Defendant has been aware of the existence of RBO and its corporate predecessors

since at least 2000.

32.

PSDA consists of approximately 1,200 member organizations, 70% of whom are

distributors and resellers of print, marketing, and related services, and the remaining 30% are
printers who sell to the trade.
33.

RBOs President and CEO, Jim Riley, was president of PSDA from 2006 to 2007.

34.

Jim Riley and Greg Gill, President and CEO of Defendant, are longtime business

acquaintances.
35.

Jim Riley first met Greg Gill at a PSDA conference in Bermuda in 2000.

36.

Jim Riley and Greg Gill both served on the Board of Directors for PSDA from

approximately 2005 to 2008, the same time as RBOs launch of its rebranded trade name and
trademark.
37.

RBO is an industry leader in its field. It is one of the largest companies of its kind

in the United States, and the largest in the St. Louis area.

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38.

RBO is frequently called upon to assist other members of PSDA and share its

expertise in the form of presentations at PSDA conferences.

39.

RBOs presentations contain its trade name and trademark.

40.

RBO and Defendant are competitors, deal in the same channels of trade, and both

significantly rely on Web2Print technology, which allows them to compete nationwide.

41.

Upon information and belief, RBO and Defendant have frequent interaction with

the same potential customers.

Defendants Prior Trade Name

42.

Upon information and belief, Defendant incorporated Performance Partners, Inc.

in 1994, and a few years later amended its articles of incorporation to call itself Performance
Press, Inc.
43.

Upon information and belief, Defendant operated for many years under the trade

name Performance Business Solutions.

44.

Defendant registered the website www.ppiprints.com in January 2000, and,

according to internet archiving databases, maintained a presence at that domain through 2013.
Defendant marketed itself as Performance Business Solutions on its website over the course of
several years, as shown in Exhibit C, screenshots taken from 2007 and 2013, respectively,
attached and incorporated herein by reference.
45.

Upon information and belief, Greg Gill has been the owner or otherwise

principally involved with Defendant since the companys inception and remains so today.

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46.

In 2014, after two decades of doing business as Performance Press or some

variation thereof, Defendant made wholesale changes to its branding and started operating under
the trade name thumbprint, and adopted a fingerprint logo design.

Defendants Infringing Activities

47.

On April 10, 2014, Defendant registered the domain name thumbprint.is.

48.

Defendants website, www.ppiprints.com, which was registered in 2000 and,

upon information and belief, was continuously maintained to promote Defendants business
through at least December 2013, now redirects customers and the general public to its new
website, www.thumbprint.is.
49.

On August 15, 2014, Defendant filed a trademark application for the following

design (the Accused Mark).

50.

Defendant first used the Accused Mark in April 2014.

51.

Defendant is using the Accused Mark as a trade name and trademark in interstate

commerce in connection with printing services and its other business operations.
52.

Defendant is using the Accused Mark in connection with a print and marketing

company.

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53.

A side-by-side comparison of RBOs registration and the Accused Mark of the

Defendant is shown below:

54.

Both display the companies trade name next to a fingerprint logo design.

55.

Defendant adopted RBOs font convention wherein words within the trade name

are distinguished by boldface (i.e., RBO is in bold and PrintLogistix is not in bold, with no
space separating the words; in the Accused Mark, print is in bold and thumb is not in bold,
with no space separating the words).
56.

Defendant adopted other aspects of RBOs trademark. For example, one of

RBOs uses of its mark employs a light blue color. RBOs website, www.rboinc.com, also uses
the same blue color for its fingerprint design overlay.
57.

Defendants Accused Mark uses a very similar color. Defendant prominently

displays its newly-adopted logo on its webpage in a similar blue color. RBOs color mark and
Defendants mark using the blue color it selected are shown below:

58.

Thus, despite Defendants awareness of RBO and its Fingerprint Logo, Defendant

adopted a branding scheme that is substantially similar to RBOs.

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59.

In summary, the marks are substantially similar in at least the following features:
RBO

Defendant

Angled fingerprint with

trade name

Angled fingerprint with

trade name

Words combined, with no

space between

Words combined, with no

space between

Proportional
relationship between
fingerprint and trade
name

Fingerprint is
approximately three times
larger.

Fingerprint is
approximately three times
larger.

Font

Use of bold and plain type

to emphasize the
individual words

Use of bold and plain type

to emphasize the
individual words

Trademark and trade

name orientation
Trade name
appearance

60.

Upon information and belief, Defendant recently changed its branding scheme,

yet RBO is already aware of facts showing a significant likelihood of confusion.

61.

Shortly after Defendant changed its branding scheme, RBO President Jim Riley

received an email from Mike Fisher of PrintConcepts, another PSDA member organization,
asking Jim Riley if he was aware that Defendant was copying RBOs trademark.
62.

In order to avoid unnecessary litigation, RBO repeatedly requested that Defendant

cease its use of the Accused Mark. See Exhibit D, attached hereto and incorporated herein by
reference.
63.

Defendant failed to respond to RBOs counsels latest letter, and continues to use

the Accused Mark.

64.

RBO, in order to protect its valuable mark, is forced to bring this action.

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COUNT I
15 U.S.C. 1114
65.

RBO adopts and incorporates by reference the allegations of Paragraphs 1 through

66.

RBO owns U.S. Registration No. 3,513,178, which includes a drawing of a

64.

fingerprint.
67.

Defendants use of the Accused Mark in connection with competing services is

likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or

association of Defendant with RBO, or as to the origin, sponsorship, or approval of Defendants
goods, services or commercial activities by RBO.
68.

Defendants use of the Accused Mark caused and continues to cause irreparable

harm to RBO, for which RBO has no adequate remedy at law.

69.

RBO is entitled to recover as yet undetermined amounts specified in 15 U.S.C.

1117.
70.

RBO has no adequate remedy at law inasmuch as money damages alone would

not compensate RBO for the permanent loss of its proprietary rights, established goodwill and
business reputation from the infringement caused by Defendants use of the Accused Mark.
Unless this Court acts to enjoin Defendant, its acts herein complained of will cause irreparable
damage to RBOs property rights, goodwill, and reputation, and will cause great and irreparable
damage to RBO.
COUNT II
15 U.S.C. 1125(a)
71.

RBO adopts and incorporates by reference the allegations of Paragraphs 1 through

70.

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72.

RBO has used the Fingerprint Logo in connection with its various goods and

services, including Web2Print, printing, graphic design, website design and maintenance, order
fulfillment, and warehousing, since at least as early as 2007. The Fingerprint Logo is distinctive
of the goods and services of RBO.
73.

Defendants use of the Accused Mark in connection with competing goods and

services is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,

connection, or association of Defendant with RBO, or as to the origin, sponsorship, or approval
of Defendants goods, services or commercial activities by RBO, and in commercial advertising
or promotion, misrepresents the nature, characteristics, qualities, and geographical origin of
Defendants goods, services, and commercial activities.
74.

Defendants use of the Accused Marks constitutes false representations, false

descriptions, and false designations of origin of its goods and services.

75.

Defendants activities have caused and, unless enjoined by this Court, will

continue to cause irreparable harm to RBO, a likelihood of confusion and deception of members
of the trade and general public, and, additionally, injury to RBOs goodwill and reputation, for
which RBO has no adequate remedy at law.
76.

RBO is entitled to recover the as yet undetermined amounts specified in 15 U.S.C.

1117.
77.

Upon information and belief, Defendant was aware of RBOs prior use and

registration of the Fingerprint Logo, making Defendants actions willful.

78.

RBO is entitled to injunctive relief and to recover Defendants profits, actual

damages, enhanced profits and damages, costs, and reasonable attorneys fees pursuant to 15
U.S.C. 1125(a), 1116, and 1117.

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COUNT III
Common Law Trademark Infringement
79.

RBO adopts and incorporates the allegations of Paragraphs 1 through 78.

80.

RBO has used the Fingerprint Logo in connection with its various goods and

services, including Web2Print, printing, graphic design, website design and maintenance, order
fulfillment, and warehousing, since at least as early as 2007.
81.

The Fingerprint Logo is inherently distinctive and/or has acquired secondary

meaning, and is a valid common law trademark.

82.

RBO is the rightful owner of all common law rights in the Fingerprint Logo in

connection with its various goods and services.

83.

Defendant could have selected any number of alternative non-infringing marks or

trade logos, but instead decided to use the Accused Mark with, upon information and belief, full
knowledge of RBOs Fingerprint Logo.
84.

Upon information and belief, Defendants use of the Accused Mark is done with

improper motive and reckless indifference to RBOs rights.

85.

Defendants conduct has damaged RBO, and Defendant will be unjustly enriched

by its acts.
86.

Defendants use of the Accused Mark caused and continues to cause irreparable

harm to RBO, for which RBO has no adequate remedy at law.

Prayer for Relief
WHEREFORE, RBO respectfully demands judgment against Defendant as follows:
A.

Defendant, its subsidiaries, affiliates, franchisees, licensees, officers, agents, sales

representatives, servants, employees, associates, successors and assigns, and all persons acting

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under its control, by, through, under, or in active concert or in participation with Defendant,
pursuant to 15 U.S.C. 1116, be permanently enjoined from:
1.

Using the Accused Mark or any other mark or trade name that is likely to

cause confusion, mistake or deception with RBO or the Fingerprint Logo;

2.

Using any mark or trade name or doing any act or thing likely to confuse

the public that Defendants goods or services are in any way connected with RBO,
including, but not limited to, using on the worldwide web the Accused Mark, the
Fingerprint Logo or any mark or logo confusingly similar thereto, or printing, publishing,
promoting, lending, or distributing any advertisement, whether written, audio or video,
which uses the Accused Mark, the Fingerprint Logo, or any mark or logo confusingly
similar thereto.
B.

Defendant must deliver up for destruction all goods, advertising, literature, and

other forms of promotional material bearing or showing the Accused Mark or a confusingly
similar mark or trade name pursuant to 15 U.S.C. 1118;
C.

Defendant must change its logo to a one that does not incorporate a fingerprint or

any other confusingly similar design;

D.

Defendant must pay RBO such damages as RBO has sustained as a result of

Defendants infringement of the Fingerprint Logo;

E.

Defendant must account for all gains, profits, and advantages derived from its acts

of infringement pursuant to 15 U.S.C. 1117 or, at RBOs option, the damages allowed by 15
U.S.C. 1117(c).

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F.

An order that this is an exceptional case under 15 U.S.C. 1117 and an award to

RBO of a sum above the amount found as actual damages, not exceeding three times such
amount, and its reasonable attorneys fees;
G.

Defendant must pay RBO its costs and disbursements in bringing this action, and

prejudgment and post-judgment interest as appropriate pursuant to 15 U.S.C. 1117;

H.

Defendant must pay RBO punitive damages due to Defendants willful

infringement;
I.

Defendant must report to this Court of its compliance of the foregoing within

thirty days of judgment; and,

J.

For such other and further relief that the Court deems just and proper.
Jury Trial Demanded

Plaintiff hereby demands a jury on all issues so triable.

Date: February 3, 2015

Respectfully submitted,
Thompson Coburn, LLP
By: /s/ Michael L. Nepple
Michael L. Nepple, #42082
David B. Jinkins, #49254
Sartouk H. Moussavi, #65577
One US Bank Plaza
St. Louis, MO 63101
(314) 552-6000
(314) 552-7000 (fax)
Attorneys for the Plaintiff,
RBO PrintLogistix, Inc.

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