Case: 1:11-cv-04557 Document #: 1 Filed: 07/06/11 Page 1 of 15 PageID #:1

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION BRUNSWICK BOWLING & BILLIARDS CORPORATION, a Delaware corporation, Plaintiff, v. H. BETTI INDUSTRIES, INC. d/b/a IMPERIAL INTERNATIONAL, a New Jersey corporation, Defendant. ) ) ) ) ) ) ) ) ) ) ) ) )

Civil Action No.

Jury Demand

COMPLAINT Plaintiff Brunswick Bowling & Billiards Corporation (Brunswick), for its Complaint against H. Betti Industries, Inc. d/b/a Imperial International (Imperial or Defendant), states as follows: THE PARTIES 1. Plaintiff Brunswick is a Delaware corporation and has its principal place of

business in Lake Forest, Illinois. Brunswick promotes, offers for sale and sells billiard tables and accessories on the Internet and through dealers, including in the State of Illinois. 2. Defendant Imperial is a New Jersey corporation and has its principal place of Imperial promotes, offers for sale and sells billiard tables and

business in New Jersey.

accessories on the Internet and through dealers, including in the State of Illinois. NATURE OF THIS ACTION 3. This is an action for: (1) trademark infringement in violation of 32 of the

Trademark Act of 1946, as amended (the Lanham Act, 15 U.S.C. 1051, et seq.), 15 U.S.C. 1114; (2) trademark infringement in violation of 43(a) of the Lanham Act, 15 U.S.C.

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1125(a); (3) trademark dilution in violation of 43(c) of the Lanham Act, 15 U.S.C. 1125(c); (4) trademark dilution in violation of the Illinois Trademark Registration and Protection Act, 765 ILCS 1036/65; (5) deceptive trade practices in violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 et seq.; (6) consumer fraud and deceptive business practices in violation of the Illinois Consumer Fraud and Deceptive Business Practices Act., 815 ILCS 505/1 et seq.; and (7) common law unfair competition, including as recognized in the Illinois Trademark Registration and Protection Act, 765 ILCS 1036/80. JURISDICTION 4. This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C.

1121 and 28 U.S.C. 1331, 1338, and 1367. Jurisdiction over causes of action arising from violation of Illinois statutory and common law is conferred on this Court under 28 U.S.C. 1338(b) because these claims are joined with substantial and related claims under federal trademark laws. BRUNSWICK AND ITS TRADEMARKS 5. Beginning in 1845, Brunswick began manufacturing billiards products known as

masterpieces of original and exceptional craftsmanship, quality and design. Brunswick has become a global leader and innovator in the design, manufacture and sale of billiards products, including billiards tables, balls, ball racks, cues, cue cases, cue racks, cue tips, bridges, chalk and other billiards accessories, among other products. To identify its products and to distinguish them from products made and sold by others, Brunswick has extensively used, advertised and caused to be advertised throughout the United States its trademarks, including the trademark on and in connection with its products. Brunswick offers its products for sale through dealers and on its www.brunswickbilliards.com website.

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6.

In 1999, Brunswick designed the following Ovate Logo to use in connection

with its products as shown below:

7.

At that time, Brunswick first introduced to consumers a version of the Ovate

Logo, the BRUNSWICK Ovate Logo as shown below:

8.

Later, Brunswick re-branded its CONTENDER line of products to also feature a

version of the Ovate Logo, the CONTENDER Ovate Logo as shown below:

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9.

The Ovate Logo, the BRUNSWICK Ovate Logo, and the CONTENDER Ovate

Logo are collectively referred to as the Brunswick Ovate Logo Trademark Rights. 10. Since the introduction of the Brunswick Ovate Logo Trademark Rights,

Brunswick has achieved substantial commercial success with the products sold in connection with such rights. 11. Specifically, Brunswick has sold over 870,000 units of products in connection

with the Brunswick Ovate Logo Trademark Rights, with total sales exceeding $775 million dollars. Brunswick has expended substantial sums of money advertising and promoting its products under such rights, spending more than $18 million in the United States related to products sold in connection with the Brunswick Ovate Logo Trademark Rights. Brunswick prominently displays such rights on every page of its www.brunswickbilliards.com website, a site that has logged more than 3.6 million visitor hits from 2000 to 2010. And Brunswick sells its products throughout the United States, including in several large retail and recreational stores, such as The Great Escape, Patio.com, The Billiard Collection, The Billiard Factory, Costco and Sears.com, among others. The Brunswick Ovate Logo Trademark Rights are displayed

throughout the Brunswick catalog and on Brunswick promotional materials. 12. Brunswick prominently featured the Brunswick Ovate Logo Trademark Rights at

the Billiards Congress of America trade show, the preeminent billiards trade show in the United States. Moreover, Brunswicks products bearing the Brunswick Ovate Logo Trademark Rights have been associated with prestigious awards in the marketplace, including: First Place for Best New Room in Billiards Digest 2010 Architectura1 & Design Awards, First Place for Best New Room in Billiards Digest 2009 Architectural & Design Awards, Second Place for Best New

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Room in Billiards Digest 2009 Architectural & Design Awards, and Third Place for Best New Room in Billiards Digest 2009 Architectural & Design Awards. 13. Brunswick has continuously used the Brunswick Ovate Logo Trademark Rights

since their introduction. As a result of the marketing and sales of Brunswicks products in interstate commerce in connection with the Brunswick Ovate Logo Trademark Rights for many years, and of the publics widespread use of the Brunswick products, the Brunswick products have come to be, and now are, well and favorably known under the Brunswick Ovate Logo Trademark Rights as products of high quality, durability, and reliability. Consumers have come to rely upon the Brunswick Ovate Logo Trademark Rights as an indication of the source and high quality of the Brunswick products. The Brunswick Ovate Logo Trademark Rights are distinctive and famous and have built up extremely valuable goodwill inuring solely to the benefit of Brunswick. 14. Brunswick has generated substantial goodwill and customer recognition in the

Brunswick Ovate Logo Trademark Rights, such that the Brunswick Ovate Logo Trademark Rights have acquired distinctiveness. Consumers immediately associate the Brunswick Ovate Logo Trademark Rights with Brunswicks business. 15. Brunswick owns three federal trademark registrations, including two registrations

for the BRUNSWICK Ovate Logo and one registration for the Ovate Logo, and has filed one federal trademark application for the Ovate Logo. Those are set out as follows and copies of those registrations and the application are attached hereto as Exhibit A:

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Mark

U.S. Reg./ Serial No. 2,395,558

Status

Goods

Registered on Principal Register and incontestable

(BRUNSWICK Ovate Logo)

billiard equipment, namely, billiard tables, balls, ball racks, cues, cue cases, cue tips, bridges and chalk; game tables for use with gliding surface projectiles, surface projectiles for same and playing accessories (Intl Class 28)

3,257,855

(BRUNSWICK Ovate Logo)

Registered on light fixtures (Intl Class 11); posters; Principal archival prints, photographs; pictorial Register prints; photographic prints (Intl Class 16); and furniture, namely, bars, bar stools, and related bar furniture, namely, chairs (Intl Class 20)

3,266,753

(Ovate Logo)

Registered on billiard equipment, namely, billiard Supplemental tables, balls, ball racks, cues, cue Register cases, cue tips, bridges, chalk; game tables for use with gliding surface projectiles, surface projectiles for same, game playing accessories, namely, sliding discs and hand held disc strikers (Intl Class 28) Pending on Principal Register billiard equipment, namely, billiard tables, balls, racks, cues, cue cases, cue tips, bridges, chalk; game tables for use with gliding surface projectiles, surface projectiles for same, game playing accessories, namely, sliding discs and hand held disc strikers (Intl Class 28)

85,351,379

(Ovate Logo)

16.

United States Registration No. 2,395,558 for the BRUNSWICK Ovate Logo,

registered on the Principal Register, is valid, subsisting and incontestable, and constitutes prima facie evidence of Brunswicks exclusive right to use the trademark in interstate commerce in

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connection with the goods specified in the registration, specifically: billiard equipment, namely, billiard tables, balls, ball racks, cues, cue cases, cue tips, bridges and chalk; game tables for use with gliding surface projectiles, surface projectiles for same and playing accessories in International Class 28 and serves as constructive notice of Brunswicks ownership of the mark under 15 U.S.C. 1057, 1065, 1072 and 1115. 17. United States Registration No. 3,257,855 for the BRUNSWICK Ovate Logo,

registered on the Principal Register, is valid and subsisting and constitutes prima facie evidence of Brunswicks exclusive right to use the trademark in interstate commerce in connection with the goods specified in the registration, specifically: light fixtures in International Class 11; posters; archival prints, photographs; pictorial prints; photographic prints in International Class 16; and furniture, namely, bars, bar stools, and related bar furniture, namely, chairs in International Class 20 and serves as constructive notice of Brunswicks ownership of the mark under 15 U.S.C. 1057, 1072 and 1115. 18. United States Registration No. 3,266,753 for the Ovate Logo, registered on the

Supplemental Register in connection with billiard equipment, namely, billiard tables, balls, ball racks, cues, cue cases, cue tips, bridges, chalk; game tables for use with gliding surface projectiles, surface projectiles for same, game playing accessories, namely, sliding discs and hand held disc strikers in International Class 28, is valid and subsisting and indicates that the mark is capable of distinguishing Brunswicks goods under 15 U.S.C. 1091-96. 19. United States Application Serial No. 85,351,379 for the Ovate Logo is pending on

the Principal Register in connection with billiard equipment, namely, billiard tables, balls, racks, cues, cue cases, cue tips, bridges, chalk; game tables for use with gliding surface

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projectiles, surface projectiles for same, game playing accessories, namely, sliding discs and hand held disc strikers in International Class 28. IMPERIAL AND ITS TRADEMARKS 20. Defendant Imperial designs, manufactures, offers to sell, and sells billiards

products and related products and is a direct competitor to Brunswick. 21. below: Brunswick recently became aware that Imperial has adopted the logo shown

(the Infringing Logo). 22. Imperial displays the Infringing Logo prominently, in a few different formats, on

its billiards products, on promotional materials for such products, and on each page on its www.imperialusa.com website. A photograph of one format of the Infringing Logo as used on billiards products, and a screen shot of another format of the Infringing Logo from Imperials website, are attached hereto as Exhibit B. 23. The Infringing Logo is similar to the Brunswick Ovate Logo Trademark Rights

and creates the same commercial impression. 24. Like Brunswick, Imperial sells billiards products and related products.

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25.

Imperial promotes, offers to sell, and sells its products through the same trade

channels as Brunswick, including on the Internet, at trade shows, and through dealers (some of which carry both Brunswick and Imperial products). 26. The Infringing Logo gives a false impression and misleads the public into

believing that the Imperials products are Brunswick products, that there is a connection or association between Brunswick and Imperial, or that Brunswick is the source of the products sold by Imperial. 27. Imperials Infringing Logo uses the shape of the Ovate Logo with no significant

changes. The Infringing Logo mimics the BRUNSWICK Ovate Logo in numerous ways. In addition to the shape of the logo, the Infringing Logo also imitates the placement of words and a similar reference to a date of establishment, all as found in the BRUNSWICK Ovate Logo. Imperials use of the Infringing Logo creates a similar overall commercial impression to the Brunswick Ovate Logo Trademark Rights. Any differences between the Infringing Logo and the Brunswick Ovate Logo Trademark Rights are insufficient to distinguish Imperials products from Brunswicks, including Imperials use of the term IMPERIAL, a term used not only by Imperial but also by third parties in connection with billiards products and related products. 28. Imperials unlicensed use of the Infringing Logo has been done with knowledge

of Brunswicks ownership of and exclusive rights to the Brunswick Ovate Logo Trademark Rights.

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COUNT I (FEDERAL TRADEMARK INFRINGEMENT IN VIOLATION OF 32 OF THE LANHAM ACT) 29. Brunswick realleges and incorporates by reference paragraphs 1 through 28 of

this Complaint. 30. Without the consent of Brunswick, Defendant is using in commerce the Infringing

Logo, which is a reproduction, counterfeit, copy or colorable imitation of the Ovate Logo and BRUNSWICK Ovate Logo, in connection with the sale, offering for sale, distribution, or advertising of billiards products and related products on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive in violation of 15 U.S.C. 1114(1)(a). 31. Without the consent of Brunswick, Defendant is using in commerce the Infringing

Logo, which is a reproduction, counterfeit, copy, or colorable imitation of the Ovate Logo and BRUNSWICK Ovate Logo, and is applying such marks to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution or advertising of billiards products and related products on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive in violation of 15 U.S.C. 1114(1)(b). 32. Defendant committed the foregoing acts with knowledge that such imitation is Defendants

intended to be used to cause confusion, or to cause mistake or to deceive. commission of such acts constitutes willful violations of 15 U.S.C. 1114. 33.

Defendants acts have irreparably damaged, and, unless enjoined by this Court,

will continue to irreparably damage, Brunswick by causing loss of sales, profits, business, reputation, goodwill and other losses, many of which are virtually impossible to calculate. An

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award of monetary damages alone cannot fully compensate Brunswick for its injuries, and plaintiff lacks an adequate remedy at law. COUNT II (FEDERAL TRADEMARK INFRINGEMENT IN VIOLATION OF 43(a) OF THE LANHAM ACT) 34. Brunswick realleges and incorporates by reference paragraphs 1 through 33 of

this Complaint. 35. Defendants use in commerce of the Infringing Logo on and in connection with its

billiards products and related products, constitutes a false designation of origin and a false or misleading description or representation of fact which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of Defendant with Brunswick and as to the origin, sponsorship, or approval of the Imperial products by Brunswick, all within the meaning of 43(a) of the Lanham Act, 15 U.S.C. 1125(a). 36. Brunswick began using the Brunswick Ovate Logo Trademark Rights in

commerce on and in connection with its billiards products and related products, and the Brunswick Ovate Logo Trademark Rights have been distinctive as applied to such products, since long before Defendant began using the Infringing Logo on its products. 37. Brunswicks longstanding and widespread promotion and use of the Brunswick

Ovate Logo Trademark Rights and the popularity and commercial success of its billiards products and related products, together with Defendants position as a competing seller of such products in the same market, indicates that Defendant committed the foregoing acts with full knowledge of Brunswicks rights for the purpose of capitalizing on the goodwill that Brunswick has built in the Brunswick Ovate Logo Trademark Rights and with an intent to cause confusion

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and mistake and to deceive. Such acts constitute willful violations of Section 43(a) of the Lanham Act. 38. Defendants acts have irreparably damaged, and, unless enjoined by this Court,

will continue to irreparably damage, Brunswick by causing loss of sales, profits, business, reputation, goodwill and other losses, many of which are virtually impossible to calculate. An award of monetary damages alone cannot fully compensate Brunswick for its injuries, and plaintiff lacks an adequate remedy at law. COUNT III (FEDERAL TRADEMARK DILUTION IN VIOLATION OF 43(c) OF THE LANHAM ACT) 39. Brunswick realleges and incorporates by reference paragraphs 1 through 38 of

this Complaint. 40. The Ovate Logo and BRUNSWICK Ovate Logo are famous marks within the

meaning of Section 43(c)(2) of the Lanham Act, 15 U.S.C. 1125(c)(2). Such marks became famous long before Defendant adopted and began using the Infringing Logo. 41. Defendants use of the Infringing Logo is likely to cause dilution of Brunswicks

Ovate Logo and BRUNSWICK Ovate Logo in violation of Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c). 42. Defendants acts constitute willful violations of 43(c) of the Lanham Act.

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COUNT IV (ILLINOIS TRADEMARK DILUTION) 43. Brunswick realleges and incorporates by reference paragraphs 1 through 42 of

this Complaint. 44. The Ovate Logo and BRUNSWICK Ovate Logo are famous marks within the

meaning of the Illinois Trademark Registration and Protection Act, 765 ILCS 1036/65. Such marks became famous long before Defendant adopted and began using the Infringing Logo. 45. Defendants use of the Infringing Logo is likely to cause dilution of Brunswicks

Ovate Logo and BRUNSWICK Ovate Logo and of the distinctive qualities of such marks in violation of the Illinois Trademark Registration and Protection Act, 765 ILCS 1036/65. 46. Defendants acts constitute willful violations of the Illinois Trademark

Registration and Protection Act, 765 ILCS 1036/65. COUNT V (ILLINOIS DECEPTIVE TRADE PRACTICES ACT) 47. Brunswick realleges and incorporates by reference paragraphs 1 through 46 of

this Complaint. 48. Defendants acts constitute unfair methods of competition and unfair or deceptive

acts or practices in violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 et seq., and constitute willful violations of such Act. COUNT VI (ILLINOIS CONSUMER FRAUD AND DECEPTIVE BUSINESS PRACTICES ACT) 49. Brunswick realleges and incorporates by reference paragraphs 1 through 48 of

this Complaint.

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50.

Defendants acts violate the Illinois Consumer Fraud and Deceptive Business

Practices Act, 815 ILCS 505/1 et seq., and constitute willful violations of such Acts. COUNT VII (ILLINOIS COMMON LAW UNFAIR COMPETITION) 51. Brunswick realleges and incorporates by reference paragraphs 1 through 50 of

this Complaint. 52. Defendants acts constitute unfair competition under the common law of the State

of Illinois, including as recognized in the Illinois Trademark Registration and Protection Act, 765 ILCS 1036/80. REQUEST FOR RELIEF WHEREFORE, Brunswick requests that this Court: (a) enter a preliminary and permanent injunction enjoining Imperial and its parents,

affiliates, related companies, officers, agents, servants, employees, attorneys, and those persons and companies in active concert or participation with them, from continuing acts of trademark infringement, unfair competition and dilution and from further violations of any applicable federal and state laws, including but not limited to those cited herein; (b) order Imperial to disgorge all profits that it has derived from its acts of trademark

infringement, unfair competition and violations of Illinois law as set forth in this Complaint; (c) order Imperial to pay damages adequate to compensate Brunswick for Imperials

acts of trademark infringement, unfair competition, dilution and violations of the federal and state laws cited herein, and a proper amount of punitive and exemplary damages; (d) (e) order Imperial to pay three times such damages pursuant to 15 U.S.C. 1117; assess interest upon damages so computed, including prejudgment interest;

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(f)

order Imperial to recall all its products bearing or sold under the Infringing Logo

and to take measures to remedy the misperception in the market that Imperials products are those of Brunswick or are otherwise endorsed, sponsored, or approved by Brunswick, including, without limitation, corrective advertising; (g) (h) award Brunswick its attorneys fees, costs and expenses in this action; and order such other relief as the Court deems necessary and proper.

Brunswick hereby requests trial by jury on all issues so triable. Dated: July 6, 2011 /s/ Adam S. Weiss James A. Clark Adam S. Weiss SCHIFF HARDIN LLP 233 South Wacker Drive Chicago, IL 60606 (312) 258-5500 Attorneys for Plaintiff Brunswick Bowling & Billiards Corporation
CH2\10119269.4

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