complaint ferracuti law firm

8/3/2019 Complaint Ferracuti Law Firm

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

THE LAW OFFICES OF PETER F.

FERRACUTI, P.C.

Plaintiff,

v.

DREW J. FERRACUTI,

DREW FERRACUTI LAW FIRM

(d/b/a FERRACUTI LAW FIRM),

Defendants.

Case No.:

JURY TRIAL DEMANDED

COMPLAINT

Comes nowPlaintiff, The Law Offices of Peter F. Ferracuti, P.C. (Plaintiff), for its

Complaint against Drew J. Ferracuti and Drew Ferracuti Law Firm (d/b/a Ferracuti Law Firm)

(collectively Defendants). As its Complaint against Defendants, Plaintiff states and alleges as

follows:

NATURE OF THE ACTION

1. This is an action against Defendants for: trademark infringement and unfaircompetition under 15 U.S.C. 1125(a) (a.k.a. 43(a) of the Lanham Act); violation of the

Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505; violation of the

Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510; violation of the Illinois

Trademark Registration and Protection Act, 765 ILCS 1036; and common law unfair

competition and trademark infringement.

Case: 1:11-cv-07265 Document #: 1 Filed: 10/13/11 Page 1 of 13 PageID #:1


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2. Plaintiff, based in Ottawa, Illinois, is the owner of common law rights and stateand federal registrations for several service marks that include the term FERRACUTI and that

are used in connection with legal services. (Ex. 1, Plaintiffs Trademark Registrations.) Plaintiff

has used such marks in connection with legal services in interstate commerce for over thirty

years.

3. As alleged and pleaded herein, despite Plaintiffs long-standing use of thesemarks, Defendants, who are also based in Ottawa, Illinois, recently adopted and used service

marks bearing identity or confusing similarity to Plaintiffs FERRACUTI service marks. For

example, Defendants adopted and used the mark FERRACUTI LAW FIRM and other variations

of marks containing the term FERRACUTI. Defendants misappropriation of Plaintiffs

trademarks is an intentional attempt to pass off Defendants services as Plaintiffs high quality

services by deceiving the relevant public, including consumers.

4. Defendants have also competed unfairly with Plaintiff and employed deceptivebusiness practices. For example, knowing Plaintiffs long-standing and excellent reputation for

legal services, Defendants likely cause confusion by inviting potential clients to [t]urn to the

household name in Illinois' worker's compensation legal circles, stating it has been stated that

Ferracuti is a household name in Illinois workers compensation . . . and stating that Defendant

Drew Ferracuti is [o]ne of the most experienced and results-driven Workers Compensation and

Personal Injury lawyers in Illinois. (Ex. 2, archives of Defendants websites.)

5. Defendants unfair competition, deceptive business practices, and unauthorizeduse of marks bearing identity or confusing similarity to Plaintiffs trademarks is an effort to trade

on the valuable goodwill and reputation associated with Plaintiffs trademarks, and is likely to

cause confusion with regard to the affiliation or connection between Plaintiff and Defendants,



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and with regard to the source, sponsorship, or approval of Defendants services, all to Plaintiffs

harm and Defendants unjust enrichment.

6. Plaintiffs efforts to resolve this matter amicably have been unsuccessful.Accordingly, Plaintiff respectfully seeks an order from this Court barring Defendants from using

FERRACUTI in a misleading manner and requiring Defendants to take reasonable precautions to

avoid consumer confusion.

THE PARTIES

7. Plaintiff The Law Offices of Peter F. Ferracuti, P.C. is an Illinois professionalcorporation offering legal services with a primary place of business at 110 E. Main Street,

Ottawa, IL 61350.

8. Defendant Drew J. Ferracuti (Drew Ferracuti) is an individual practicing law inthe state of Illinois, with an address of 2965 E 1489th Rd., Ottawa, IL 61350-9011 and, upon

information and belief, is the principal of Drew Ferracuti Law Firm.

9. Defendant Drew Ferracuti Law Firm (d/b/a Ferracuti Law Firm) is a law firmoffering legal services with a primary place of business at 607 Clinton Street, Ottawa, IL 61350.

JURISDICTION AND VENUE

10. This Court has subject matter jurisdiction over Plaintiffs federal claims, namely,trademark infringement and unfair competition under 15 U.S.C. 1125(a), pursuant to 15 U.S.C.

1121 and 28 U.S.C. 1331 and 1338(b). This Court has subject matter jurisdiction over

Plaintiffs remaining claims, namely, violation of the Illinois Consumer Fraud and Deceptive

Business Practices Act, violation of the Illinois Uniform Deceptive Trade Practices Act, violation

of the Illinois Trademark Registration and Protection Act, and common law unfair competition,

pursuant to 28 U.S.C. 1367.



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11. This Court has personal jurisdiction over the Defendant for the purposes of thisaction pursuant to 28 U.S.C. 1391 and 1400 because the Defendants reside in this district

and/or sell, offer to sell, and advertise services using Plaintiffs trademarks in this District.

12. Venue is proper in this District under 28 U.S.C. 1391 and 1400 because at leasta substantial part of the events giving rise to Plaintiffs claims occurred in this District and

Defendants are subject to personal jurisdiction in this District.

13. A real, immediate, and justiciable controversy exists between Plaintiff andDefendants relating to the infringement of Plaintiffs trademarks and Defendants unfair

competition and violation of state laws.

PLAINTIFFS TRADEMARKS

14. Plaintiff has provided legal services in commerce under the FERRACUTI marksince 1977 and, through its predecessor-in-interest Peter F. Ferracuti, since 1953. Plaintiff owns

common law rights in the FERRACUTI mark as well as state and federal registered service

marks for FERRACUTI AND ASSOCIATES (IL State Reg. No. 101774); FERRACUTI LAW

(IL State Reg. No. 101739); FERRACUTI LAW OFFICES (IL State Reg. No. 101744); THE

LAW OFFICES OF PETER F. FERRACUTI (IL State Reg. No. 101740); and LAW OFFICES

OF PETER F. FERRACUTI (Serial No. 85269031) (collectively the FERRACUTI Marks).

(Ex. 1.)

15. Plaintiff focuses its practice in the fields of personal injury and workerscompensation, employing approximately 35 persons, including eight attorneys. Plaintiff has

continuously offered legal services under the FERRACUTI MARKS since 1977. Plaintiffs

predecessor-in-interest, Peter F. Ferracuti, first offered legal services under the mark

FERRACUTI in 1953. During this fifty-eight year period, Plaintiff and its predecessor-in-



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interest, Peter F. Ferracuti, have obtained for their clients numerous landmark personal injury

awards in LaSalle County and have recovered over $150 million dollars in workers

compensation cases. Plaintiff routinely handles claims from numerous jurisdictions all across

the State of Illinois, as well claims in Iowa and Indiana

16. Plaintiffs predecessor-in-interest and principal, Peter F. Ferracuti has been aleader of the LaSalle County trial bar for decades. A Harvard Law School survey, starting in

1987 and in several subsequent publications, recognized Peter F. Ferracuti as being one of a

group of eighteen leading civil litigators from the state of Illinois. Along with a group of trial

attorneys from throughout the United States, Peter F. Ferracuti has been recognized as one of the

Best Lawyers in America.

17. Plaintiff has expended substantial time, effort, and money in advertising,promoting, and marketing the FERRACUTI Marks. For example, Plaintiff promotes the

FERRACUTI Marks via its website, www.peterferracuti.com, and in phone books, trade

publications, and legal directories.

18. As a result of Plaintiffs long track record of success, extraordinary investmentsand years of substantial, continuous, and extensive use of the FERRACUTI Marks for the

promotion and provision of legal services, the FERRACUTI Marks have acquired secondary

meaning such that consumers rely on the FERRACUTI Marks to identify and distinguish

Plaintiffs services from services offered by other entities. The FERRACUTI Marks have

acquired exceedingly valuable goodwill and have become widely recognized by consumers as

referring uniquely to Plaintiff as a longstanding source of high quality legal services.



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DEFENDANTS UNAUTHORIZED USE OF PLAINTIFFS TRADEMARKS, UNFAIR

COMPETITION, AND DECEPTIVE BUSINESS PRACTICES

19. With full knowledge of Plaintiffs decades-long use of the FERRACUTI Marks inconnection with legal services, Defendants recently adopted and began using in interstate

commerce marks bearing confusingly similarity to Plaintiffs FERRACUTI Marks for legal

services.

20. Defendants legal practice, like Plaintiffs legal practice, is focused onrepresentation in personal injury and workers compensation matters and Defendants provide

their legal services from offices located in Ottawa, Illinois.

21. Plaintiff employed Defendant Drew Ferracuti from 1987 until 2001. Followinghis employment with the Plaintiff, Defendant Drew Ferracuti founded Defendant law firm in

Ottawa, Illinois focusing on personal injury and workers compensation.

22. Defendants initially took precautions to avoid confusing uses of theFERRACUTI. For example, Defendants preceded use of FERRACUTI with Defendant Drew

Ferracutis given name. Recently, however, Defendants adopted and used identifiers that are

likely to cause consumer confusion, such as the mark FERRACUTI LAW FIRM and the domain

name www.ferracutilaw.com. (Ex. 2; Ex. 3, Defendants Internet listings.) During this period,

Defendants, without Plaintiffs authorization, applied for and registered several FERRACUTI

service marks with the State of Illinois. (Ex. 4, Defendants Trademark Registrations.)

23. Defendants have competed unfairly with Plaintiff and employed deceptivebusiness practices. For example, although Defendant law firm came into existence decades after

Plaintiff and its predecessor-in-interest began using the FERRACUTI Marks, Defendants invite

potential clients to [t]urn to the household name in Illinois' worker's compensation legal



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circles, and stating it has been stated that Ferracuti is a household name in Illinois workers

compensation . . . (Exs. 2, 3.)

24. Defendants have advertised their legal services on websites located at the domainnames www.ferracutilaw.com and http://workerscompattorneyottawa.com. (Id.) Defendants

also advertise their legal services through a wide variety of print and Internet publications. (Id.)

25. Defendants legal services affect and are injected into the stream of commerceand substantially affect interstate commerce.

26. Search engine queries for the phrase Ferracuti Law Ottawa reveal several thirdparty Internet directories that, due to Defendants Internet advertising and use of marks bearing

confusing similarity to Plaintiffs marks, prominently refer to Defendants as Ferracuti Law

Firm. Two online directories, Manta and Merchant Circle, refer to Defendants and Plaintiff,

respectively, as Ferracuti Law Office and Ferracuti Law Offices. (Ex. 5, Third Party

Directories.)

27. Defendants unauthorized adoption and use of the FERRACUTI Marks, unfaircompetition and deceptive business practices have caused actual confusion and deception among

consumers.

COUNT I: TRADEMARK INFRINGEMENT IN VIOLATION OF SECTION

43(a) OF THE LANHAM ACT, 15 U.S.C. 1125(a)

28. Plaintiff incorporates by reference each of the preceding allegations of paragraphs1 - 27 above as though stated herein.

29. Defendants use in interstate commerce of the FERRACUTI Marks andderivatives thereof is likely to cause confusion, mistake, and/or deception among the relevant

public, including consumers, as to the affiliation, connection, or association between Defendants

and Plaintiff, and/or mislead the public into thinking that Plaintiff is the origin of, or have



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sponsored or approved of Defendants legal services, and/or commercial activities. Defendants

copying of Plaintiffs trademarks is an intentional attempt to pass off Defendants services as

Plaintiffs services. Defendants aforesaid acts constitute willful infringement of Plaintiffs

trademark rights in its legal services, in violation of 15 U.S.C. 1125(a)(1).

30. Defendants infringement has caused Plaintiff to suffer economic damage, hasresulted in unjust enrichment to Defendants, and has caused and will continue to cause, unless

enjoined by this Court, substantial and irreparable damage and injury to Plaintiff and the public,

for which damage and injury Plaintiff has no adequate remedy at law.

COUNT II VIOLATION OF THE ILLINOIS CONSUMER FRAUD ANDDECEPTIVE BUSINESS PRACTICES ACT, 815 ILCS 505/1-12


32. Defendants use of the FERRACUTI Marks and derivatives thereof is an unfairmethod of competition and an unfair or deceptive act or practice in that Defendants are using and

have used deception and misrepresentation, on which they intend consumers to rely, and are in

the course of conduct involving trade or commerce, in violation of the Illinois Consumer Fraud

and Deceptive Business Practices Act, S.H.A. 815 ILCS 505/1-12.

33. Defendants conduct involves trade practices that are directed to the marketgenerally and that implicate consumer protection concerns.

34. Defendants unlawful conduct has caused Plaintiff to suffer economic damage,has resulted in unjust enrichment to Defendants, and has caused and will continue to cause,

unless enjoined by this Court, substantial and irreparable damage and injury to Plaintiff and the

public, for which damage and injury Plaintiff has no adequate remedy at law.



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COUNT III VIOLATION OF THE ILLINOIS UNIFORM DECEPTIVE TRADE

PRACTICES ACT, 815 ILCS 510/1-7


36. Defendants use of the FERRACUTI Marks and derivatives thereof is a deceptivetrade practice in that Defendants attempt to pass off their goods and services as those of

Plaintiffs goods and services; Defendants conduct causes a likelihood of confusion or

misunderstanding as to the source, sponsorship, or approval of the parties goods and services

and as to Defendants affiliation, connection, or association with Plaintiff, in violation of the

Illinois Uniform Deceptive Trade Practices Act, S.H.A. 815 ILCS 510/1-7.




COUNT IV VIOLATION OF THE ILLINOIS TRADEMARK REGISTRATION

AND PROTECTION ACT, 765 ILCS 1036


39. Defendants use of the FERRACUTI Marks and derivatives thereof in connectionwith the sale, offer for sale, or advertising of services is likely to cause confusion, mistake,

and/or deception among the relevant public, including consumers, as to the affiliation,

connection, or association between Defendants and Plaintiff, and/or mislead the public into

thinking that Plaintiff is the origin of, or has sponsored or approved of Defendants legal

services, and/or commercial activities. Defendants copying of Plaintiffs trademarks is an

intentional attempt to pass off Defendants services as Plaintiffs services. Defendants aforesaid



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acts constitute willful infringement of Plaintiffs trademark rights in its legal services, in

violation of the Illinois Trademark Registration and Protection Act, 765 ILCS 1036.




COUNT V COMMON LAW UNFAIR COMPETITION AND TRADEMARK

INFRINGEMENT


42. Defendants use of the FERRACUTI Marks and derivatives thereof constitutescommon law unfair competition and trade dress infringement under Illinois Law because such

use is likely to cause confusion, mistake, or deception as to the source, sponsorship, or approval

by Plaintiff of Defendants goods and services. The public is, for example, likely to believe that

Defendants legal services originate with Plaintiff, are licensed by Plaintiff, and/or are sponsored

by, connected with, or related to Plaintiff.




WHEREFORE, Plaintiff prays that:

A. Defendants, their agents, servants, employees, successors, assigns, and all thosecontrolled by or in active concert or participation with any of them be permanently enjoined

from:



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(1) using in connection with Defendants goods and services any mark bearingconfusing similarity to Plaintiffs FERRACUTI Marks;

(2) utilizing the surname Ferracuti in a misleading manner in connection withDefendants provision of legal services;

(3) trading on the goodwill associated with Plaintiffs FERRACUTI Marks or otherwise

unfairly competing with Plaintiff;

B. Defendants, as the late-comers, be ordered to take all reasonable precautions toavoid consumer confusion in connection with their use of the surname Ferracuti for legal

services;

C. Defendants be ordered to precede any trademark use of the designationFerracuti for use in connection with legal services with the name Drew or Drew J. in

lettering no smaller than the typeface used for the designation Ferracuti;

D. Defendants be ordered to remove Internet advertising, YellowPage listings, andany other electronic signs and advertising that bear marks likely to be confused with Plaintiffs

FERRACUTI Marks or that otherwise fail to comply with paragraphs A.(1), A.(2) or A.(3), and

provide certification of such removal;

E. Defendants be ordered to destroy all displays, advertisements, packaging,brochures, and any other materials, whether in paper or electronic form, in its possession or

control that bear marks likely to be confused with Plaintiffs FERRACUTI Marks or that

otherwise fail to comply with paragraphs A.(1), A.(2) or A.(3), and provide certification of such

destruction;

F. Defendants be ordered to expressly abandon the domain namewww.ferracutilaw.com and any other domain name that is likely to cause confusion with



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Plaintiffs FERRACUTI Marks or that otherwise fail to comply with paragraphs A.(1), A.(2) or

A.(3), and provide certification of such abandonment;

G. Defendants be ordered to expressly abandon any and all trademark applicationsand registrations for marks that are likely to be confused with Plaintiffs FERRATUCI Marks or

that at otherwise fail to comply with paragraphs A.(1), A.(2) or A.(3), and provide certification

of such abandonment;

H. Defendants be ordered to compensate Plaintiff for any and all advertising or otherexpenses necessary to dispel the public confusion caused by Defendants unlawful acts

complained of herein;

I. Defendant be ordered to pay interest, costs, and reasonable attorney fees toPlaintiff under 15 U.S.C. 1117(a), 815 ILCS 505/10a, and 815 ILCS 510/3;

J. Defendants be ordered to account for and pay over to Plaintiff all actual damagessuffered by Plaintiff and all gains, profits, and advantages derived by Defendants from their

unlawful acts complained of herein;

K. That the Court award Plaintiff increased damages, upon a finding that this case isexceptional under the Lanham Act, and punitive damages for the willful nature of Defendants

unlawful acts complained of herein, said award to equal at least three times the amount of

Plaintiffs actual damages; and

L. Plaintiff be awarded such other and further relief as this Court may deem just andproper.

DEMAND FOR JURY TRIAL

Pursuant to Fed. R. Civ. P. 38(b), Plaintiff demands a trial by jury in this action on all

issues triable by jury.



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Respectfully Submitted,

Date: October 13, 2011 /s/ John T. Gabrielides

Christopher M. Dolan (IL Bar No. 6269648)Email: [email protected]

John T. Gabrielides (IL Bar No. 6198323)Email: [email protected]

Jon H. Beaupr (IL Bar No. 6298230)Email: [email protected]

Brinks Hofer Gilson & LioneNBC Tower, Suite 3600

455 North Cityfront Plaza DriveChicago, Illinois 60611-5599Telephone: (312) 321.4200Facsimile: (312) 321.4299

Attorneys for Plaintiff The Law Offices of Peter

F. Ferracuti, P.C.


complaint ferracuti law firm

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