Complaint Urban Motive Sportswear v Nike

7/31/2019 Complaint Urban Motive Sportswear v Nike

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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

URBAN MOTIVE SPORTSWEAR, INC., )

an Illinois corporation, and Lou Weisbach, ))Plaintiffs, ) Hon._________________________

)

v. )

) Civil Action No.________________

NIKE, INC. )

an Oregon corporation, )

) JURY TRIAL DEMANDED

Defendants. )

COMPLAINT FOR TRADEMARK INFRINGEMENTAND UNFAIR COMPETITION

Plaintiffs, Urban Motive Sportswear, Inc., (AUrban Motive@), and Lou Weisbach

(AWeisbach@), for their complaint against Defendant Nike, Inc., (ANike@), alleges as follows:

I. NATURE OF ACTION

1. This is a complaint for trademark infringement, unfair competition, and dilution

of Urban Motive and Weisbach=s trademark associated with its highly distinctive

ALottery Pick

@

sportswear clothing line. Defendants manufacture, sell and advertise the AJordan LS Lottery

Pick Jacket@ for men and the jackets are infringements and dilutive of Urban Motive and

Weisbach=s trademark.

II. PARTIES

2. Plaintiff, Urban Motives Sportswear, Inc., is an Illinois corporation with its

principal place of business in Chicago, Illinois.

3. Lou Weisbach is an individual who resides in Chicago, Illinois and is a co-

founder of Urban Motives Sportswear, Inc.

4. On information and belief, Defendant, Nike, Inc., is an Oregon corporation with


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its principal place of business in Beaverton, Oregon.

III. JURISDICTION AND VENUE

5. This action arises under the federal Lanham Act, 15 U.S.C. '1051 et seq., 15

U.S.C. ' 1114, 15 U.S.C. 1125, the Illinois Deceptive Trade Practices Act, 815 ILCS 510/1 et seq.,

Illinois Consumer Fraud and Deceptive Practices Act, 815 ILCS 505 et seq., and the common

law of Illinois.

6. The amount in controversy in this action is in excess of $4,000,000.00.

7. This Court has subject matter jurisdiction under 15 U.S.C. '1121 and 28U.S.C.''

1331, 1332, 1338 and 1367 in that this case arises under the trademark laws if the United

States.

8. This Court has personal jurisdiction over Nike because Nike is conducting

business in the State of Illinois and this District, and has committed torts, the effect of which has

been felt in the State of Illinois and this District as alleged above, so as to submit itself to the

jurisdiction and process of this Court.

9. To the extent not already established on the record in hand, the factual contentions

of paragraph 1 above are likely to have evidentiary support after a reasonable opportunity for

further investigation and discovery.

IV. FACTUAL BACKGROUND

A. Urban Motive And Weisbach And Their Asserted Trademark Rights

10. Urban Motive and Weisbach are the manufacturers of an energy drink, sportswear

apparel and other merchandise using their recognizable registered brand ALottery Pick@.

11. Urban Motive and Weisbach are the owners of the registered mark, ALottery

Pick@, associated with clothing and sports apparel. This registration is incontestable, and its


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existence is prima facie evidence of the validity of this mark. Urban Motive and Weisbach are

also the owners of common law trademark rights related to ALottery Pick@, including but not

limited to its association to clothing and sports apparel.

12. Plaintiffs own the trademark rights to ALottery Pick@, which was registered by

Lou Weisbach, May 2, 2006 with the United States Patent and Trademark Office for clothing,

including but not limited to: hats, t-shirts, jerseys, shorts, sweatshirts, warm ups, and footwear, and

was originally filed May 10, 2004, serial number 78-415,673. SEE ATTACHED

CERTIFICATE AS EXHIBIT A.

13. The Plaintiffs first used the mark May 24, 2004 and in commerce on June 8, 2004.

14. The mark is distinctive, either inherently or through establishment of acquired

distinctiveness in commerce through its association with the goods manufactured and distributed

by Plaintiffs.

15. The mark has been extensively and continuously used by Plaintiffs in association

with the sale of their products since June 8, 2004.

16. The ALottery Pick@ mark symbolizes the business goodwill of Urban Motive and

Weisbach, and is an intangible asset of substantial commercial value.

17. For several years, and prior to the acts of the Defendants herein alleged, Urban

Motive and Weisbach have used the ALottery Pick@ mark, alone and in combination, on or in

connection with advertising, marketing, and sales of its energy drink and apparel, throughout the

world, including the United States and this District.

18. Urban Motive and Weisbach has spent hundreds of thousands of dollars in

advertising and promoting its products bearing the ALottery Pick@ mark in a wide range of media,

including television, print, radio, and on-line, and continues to advertise and promotes those


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products today.

19. Sales, advertising and promotion of the products of the Plaintiffs have amounted

to hundreds of thousands of dollars. As a result of such continuous and extensive sales,

advertising and promotion of its products, throughout the world, Urban Motive and Weisbach

were beginning to enjoy worldwide recognition and a world famous reputation, and the ALottery

Pick@ mark was becoming recognized by the public as emanating from Urban Motive and

Weisbach.

20. The ALottery Pick@ mark is becoming famous and represent property of great

value and goodwill to Urban Motive and Weisbach.

21. In addition, prior to the acts of the Defendants, Urban Motive and Weisbach, did a

great amount of marketing and promotions of their products in the Chicagoland area, their

hometown, including, gifting several pieces of their ALottery Pick@ apparel to the two sons of

former Chicago Bulls star, Michael Jordan.

22. Upon information and belief, Michael Jordan has a long standing business

relationship with Defendant which includes a clothing line.

23. Urban Motive is a tiny company in comparison to Nike. It does not have the

resources to compete with Nike with regards to manufacturing, sales, advertising, marketing and

promotions.

24. Nike=s blatant disregard of Plaintiff=s rights was an unfair attempt to push Plaintiff

out of the market place.

B. Defendant Nike s Unauthorized Use of Urban Motive and Weisbach s

Trademark

25. On information and belief, subsequent to Urban Motive and Weisbach=s use of the


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ALottery Pick@ mark as alleged above, and with actual knowledge of Urban Motive and Weisbach=s

use of the ALottery Pick@ mark, and with willful intent to misrepresent the source of Defendant=s

goods, Defendants manufactured, sold and advertised the AJordan LS Lottery Pick Jacket@ for men,

distributed worldwide through its stores, website and various other merchandising websites.

REPRESENTATIVE PHOTOGRAPHS OF DEFENDANT=S INFRINGING PRODUCT AND

ACTIVITIES ARE ATTACHED HERETO AS EXHIBIT B.

26. Defendant=s product is marketed, promoted and sold via its stores around the

world, its website and various other merchandising websites and features the ALottery Pick@ jacket.

27. Defendant has no consent, license, approval or other authorization to use the

ALottery Pick@ mark in connection with its products.

28. Upon information and belief, Defendant has used the mark, ALottery Pick@ with

actual knowledge of Plaintiff=s rights in the ALottery Pick@ mark, and in conscious disregard of

Plaintiff=s rights.

VI. COUNT ONE - TRADEMARK INFRINGEMENT

29. Plaintiff repeats and realleges each of the allegations contained in paragraphs 1

through 28 of this Complaint.

30. Defendant=s use of the AJordan LS Lottery Pick Jacket@ mark, which is

confusingly similar to and includes Plaintiff=s energy drink name and apparel clothing line name

and markALottery Pick@, is likely to cause confusion and mistake. Such use by Defendant of the

infringingAJordan LS Lottery Pick Jacket

@mark deceives, and is likely to deceive, others into

believing that Defendant=s apparel is sponsored by, approved by, or affiliated with Plaintiff

constituting trademark infringement in violation of the Lanham Act ' 32, 15 U.S.C. ' 1114.

31. Plaintiff has been and continues to be damaged in a manner that cannot be fully


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measured or compensated in economic terms and for which there is not adequate remedy at law.

The actions of Defendant have damaged and will continue to damage Plaintiff=s rights, reputation,

and goodwill. Such irreparable harm will continue unless Defendant=s acts are restrained and/or

enjoined during the pendency of this action and thereafter.

32. Plaintiff has been damaged by Defendant=s actions in an amount to be proven at

trial.

VII. COUNT TWO - FALSE DESIGNATION OF ORIGIN

33. Plaintiff repeats and realleges each of the allegations contained in

paragraphs 1 through 28 of this Complaint.

34. Defendant=s use of the infringing AJordan LS Lottery Pick Jacket@ mark

constitutes false designation of origin, false or misleading description, and/or false or misleading

representation. Such unauthorized use causes, and is likely to cause, confusion, mistake, or

deception of others, as to the affiliation, connection, or association of Defendant with Plaintiffs,

and also causes, and is likely to cause confusion, mistake, or deception as to the origin,

sponsorship, or approval of the goods and services of Defendant with those of the Plaintiff.

35. Such false designation, description, and/or representation constitutes unfair

competition and is an infringement of Plaintiff=s rights in its ALottery Pick@ mark in violation of the

Lanham Act '43(a), 15 U.S.C. ' 1125(a).

36. Defendant knew or should have known, of Plaintiff=s rights, and Defendant=s false

description, false representation, and false designation of origin were knowing, willful, and

deliberate, making this an exceptional case within the meaning of 15 U.S.C. ' 1117.

37. Plaintiff has been, and will continue to be, damaged by such false description,

false representation, and false designation of origin in a manner and amount that cannot be fully


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measured or compensated in economic terms. Defendant=s actions have damaged, and will

continue to damage, Plaintiff=s rights, reputation, and goodwill, and may discourage current and

potential customers from dealing with Plaintiff. Such irreparable harm will continue unless

Defendant=s acts are restrained and/or enjoined during the pendency of this action and thereafter.


trial.

VIII. COUNT THREE - FEDERAL TRADEMARK DILUTION

39. Plaintiff repeats and realleges each of the allegations contained in paragraphs 1


40. As a result of Plaintiff=s almost eight years of use and promotion of the ALottery

Pick@ name and mark for its energy drink and apparel, the Defendant=s mark for its Jordan jacket

has had the advantage of Plaintiff=s sales and promotions of its products under the ALottery Pick@

mark, which have been substantial and extensive.

41. Defendant=s unauthorized use of the name and markALottery Pick@ constitutes a

commercial use in commerce and dilutes the distinctive quality of Plaintiff=s famous mark. Upon

information and belief, Defendant willfully intended to trade on Plaintiff=s reputation and to cause

the dilution of the aforementioned trademark in violation of the Lanham Act '43(c), 15 U.S.C. '

1125 (c).

42. Plaintiff has been and will continue to be damaged by Defendant=s dilution of the

ALottery Pick@ mark that cannot be fully measured or compensated in economic terms.

Defendant=s actions have damaged, and will continue to damage Plaintiff=s business, market,

reputation, and goodwill, and may discourage current and potential customers from dealing with

Plaintiff. Such irreparable harm will continue unless Defendant=s acts are restrained and/or

enjoined during the pendency of this action and thereafter.


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43. Plaintiffs has been damaged by Defendant=s actions in an amount to be proven at

trial.

IX. COUNT FOUR - UNFAIR COMPETITION UNDER ILLINOIS LAW

44. Plaintiffs repeats and realleges each of the allegations contained in paragraphs 1


45. Defendant=s conduct complained of herein above constitutes unfair competition

under the common law of Illinois.

46. By reason of and as a direct result of the above identified acts of unfair

competition, Defendant has caused Plaintiffs substantial and irreparable harm, the full extent of

which is currently unknown.

47. The acts complained of herein above have caused irreparable harm, damage

and injury to Plaintiffs, and Plaintiffs has no adequate remedy at law.

48. Defendant=s acts were in bad faith, in conscious and deliberate disregard of

Plaintiffs= rights, and were performed with the intention of depriving Plaintiffs of their rights.

Accordingly, Defendant=s conduct merits, and Plaintiff seeks, an award of punitive damages in an

amount sufficient to punish Defendant and deter such conduct in the future.

49. Plaintiffs has been damaged by Defendant=s actions in an amount to be proven attrial.

X. COUNT FIVE - VIOLATION OF THE ILLINOIS CONSUMER FRAUD

AND DECEPTIVE PRACTICES ACT



51. The use by the Defendant of the infringing name and markAJordan LS Lottery

Pick Jacket@ infringes Plaintiffs=ALottery Pick@name and mark and constitutes an unfair method of


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compensation in business and an unfair trade practice in business, as well as fraudulent

representation, which are damaging to the public interest in violation of the Illinois Consumer

Fraud and Deceptive Practices Act, 815 ILCS 505, et seq.

52. The use by Defendant of a mark that infringes Plaintiffs= name and mark in

connection with the sale of Plaintiffs= energy drink and clothing has been knowing, willful and

deliberate.

53. Plaintiff has been and will continue to be irreparably injured by reason of

Defendant=s unfair methods of competition and unfair trade practices in violation of the Illinois

Consumer Fraud and Deceptive Practices Act. Such irreparable injury will continue unless the

acts of Defendant are enjoined during the pendency of this action and thereafter.


trial.

XI. COUNT FOUR - COMMON LAW TRADEMARK INFRINGEMENT


through 28 of this Complaint

56. Urban Motive and Weisbach were the first to use the ALottery Pick@ mark in

association with the sale of its energy drink and clothing. As a result of the continued activity the

ALottery Pick@ mark has become identified in the public mind as the manufacturer and/or licensor

of the products to which the name and/or markALottery Pick@ are applied.

57. As a result of the experience, care, and service of Plaintiff, their ALottery Pick@

brand is becoming widely known and have acquired a reputation for quality and aesthetic styling.

The ALottery Pick@ mark have become distinctive.

58. Defendant, with knowledge of and with intentional disregard of Plaintiffs= rights,

advertised, promoted and sold products using Plaintiffs= mark. The products are still being sold


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on the internet, such acts by the Defendant is likely to cause, has caused, and will continue to cause

confusion as to the source and/or sponsorship of Defendant=s products and services.

59. Defendant=s acts constitute willful infringement of Plaintiffs= exclusive rights in

the ALottery Pick@ mark, in violation of the common law. Be reason of Defendant=s actions,

Urban Motive and Weisbach has suffered irreparable harm to the valuable ALottery Pick@ mark.

Unless Defendant is restrained from further infringement on the ALottery Pick mark, Urban Motive

and Weisbach will continue to suffer irreparable harm.

60. Urban Motive and Weisbach has no remedy at law that will adequately

compensate it for the irreparable harm that it will suffer if Defendant=s conduct is allowed to

continue.

61. As a direct and proximate result of Defendant=s conduct, Urban Motive and

Weisbach has suffered damages to the valuable ALottery Pick@ mark, and other damages in an

amount to be proved at trial.

XII - PRAYER FOR RELIEF

WHEREFORE, Urban Motive and Weisbach demand entry of a judgment granting relief

against the Defendant as follows:

A. That Defendant and all officers, agents, servants, employees, attorneys and all

other persons in active concert or participation with any of them, be enjoined and restrained during

the pendency of this action and permanently thereafter from using the ALottery Pick@ mark, or any

confusingly similar name or mark in connection with identifying Defendant=s products;

B. That Defendant and all officers, agents, servants, employees, attorneys and all

other persons in active concert or participation with any of them, be enjoined and restrained during

the pendency of this action and permanently thereafter from all acts of false description and

representation and false designation of origin, all acts of unfair competition and unfair business


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practices, including the marketing, promotion and sale of online products that is likely to cause

mistake, or deceive, including the use ofAJordan LS Lottery Pick Jacket@ and any other mark that

is confusingly similar to Plaintiffs= mark:

C. That Defendant be directed to file with this Court and serve on Plaintiffs= counsel

within thirty (30) days after the service of an injunction, a report in writing, under oath, setting

forth in detail the manner and form in which the Defendant has compiled with the injunction;

D. That Defendant be required to pay Plaintiff such damages as Plaintiff has

sustained, or will sustain, in consequence of Defendant=s trademark infringement, false

designation of origin, unfair competition, unfair business practices, and trademark dilution, and to

account for all gains, profits, and advantages derived by Defendant that are attributable to such

unlawful acts; and that such damages be trebled as provided by 15 U.S.C. ' 1117 and 815 ILCS

505 and 510;

E. That the Court adjudge this to be an exceptional case and require the Defendant to

pay over to Plaintiffs the cost of this action, including reasonable attorneys fees and interest as

provided by 15 U.S.C. ' 1116 and 815 ILCS 505 and 510:

F. The Defendant be ordered to pay Plaintiffs prejudgment and post judgment

interest on all sums allowed by law;

G. For an Order permitting Urban Motive and Weisbach, and/or auditors for Urban

Motive and Weisbach, to audit and inspect the books, records, and premises of the Defendant and

related corporations for a period of three (3) months after entry of final relief in this matter, to

determine the scope of the Defendant=s past use of Plaintiffs= intellectual property, including all

manufacturing, distribution, and sales of products bearing the ALottery Pick@ mark, as well as

Defendant=s compliance with the orders of the Court;

H. For an award of Urban Motive and Weisbach= damages arising out Defendant=s


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acts;

I. For an Order requiring Defendant to file with the Court and provide to Plaintiffs

an accounting of all sales and profits realized by Defendant=s through the use of Plaintiffs= mark.

J. That Plaintiffs have such other and further relief as the Court may deem equitable.

XIII - DEMAND FOR JURY

Plaintiffs, Urban Motive and Weisbach, demands a trial by jury for all issues so triable.

DATED this 20th day of April, 2012

s/ Randy CrumptonRandy Cumpton (6227291)70 West Madison, Suite 1400

Chicago, Illinois 60602312-214-3327Email: [email protected]

Attorney for Plaintiffs


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Documents

Complaint Urban Motive Sportswear v Nike