Case 4:10-cv-00141-RLY-WGH Document 1 Filed 11/09/10 Page 1 of 10

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF INDIANA
NEW ALBANY DIVISION '- / - 9 Fi! I:!; 2

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•CASE
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CNH AMERICA, LLC, a corporation, )
)
Plaintiff, ) JUDGE
_
)
v. ) COMPLAINT FOR TRADEMARK

) INFRINGEMENT, UNFAIR

DA VIS EQUIPMENT SALES &

) COMPETITION, AND TRADEMARK

SERVICE, INC., a corporation, ) DILUTION

)
Defendant. )
)

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 Court 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. REG. GOODS/SERVICES

NO. DATE
NEW HOLLAND 642,298 March 5, Farm equipment, including automatic hay balers,
1957 mowers, blower conveyors, wagon unloaders, hay
rakes, manure spreaders, forage harvesters, and
attachments therefor
NEW HOLLAND 646,749 June 11, Farm wagons
1957
NEW HOLLAND 890,857 May 12, Farm equipment, parts and supplies-namely, animal
1970 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 2,691,822 March 4, Agricultural machines and implements, namely,
and Leaf Logo 2003 round and rectangular automatic balers, bale carriers,
bale feeders, bale throwers, bale accumulators,
combine headers, forage harvesters, forage blowers,

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forage boxes, feed grinder-mixers, manure spreaders,
mowers, disc mowers, mower-conditioners, disc
mower-conditioners, planters, air seeders, side
~WHOLLAr\D 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, self propelled agricultural
combines, self propelled agricultural harvesters and
self 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 of CNH'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 itself 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:

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These images demonstrate Davis Equipment's wrongful use of the NEW HOLLAND Marks to

pass itself off 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 of CNH.

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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 authorized NEW

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 sale of 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 competition 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 competition 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 temporarily 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 OF
INDIANA 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: November~, 2010 Respectfully submitted,

~~:aER' FOREMAN, OSW~

By: ~
Cat erine A. Nestri~-P A '
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 LLP
Robert W. Sacoff
Ian J. Block
311 South Wacker Drive, Suite 5000
Chicago, Illinois 60606
Phone: 312/554-8000
Facsimile: 312/554-8015
rws@pattishall.com; ijb@pattishall.com
Attorneys/or Plaintiff, CNH America, LLC

L\LIB\DOCS\58142\COMPLAIN\U40953.DOC

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