macneil automotive products v. kraco enterprises.pdf

8/14/2019 MacNeil Automotive Products v. Kraco Enterprises.pdf

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

MACNEIL AUTOMOTIVE PRODUCTS )

LIMITED, an Illinois Corporation, d/b/a )WEATHERTECH, )

)

Plaintiff, ) No.

)

v. )

)

KRACO ENTERPRISES, LLC, an Illinois )

Limited Liability Company, )

)

Defendant. ) JURY TRIAL DEMANDED

COMPLAINT

Plaintiff, MacNeil Automotive Products Limited d/b/a WeatherTech (WeatherTech),

by its undersigned attorneys, for its Complaint against defendant Kraco Enterprises, LLC

(Kraco), alleges as follows:

NATURE OF THE ACTION

1. This is an action against Kraco for trademark infringement, patent infringement,trademark dilution, false designation of origin, unfair competition, unjust enrichment and

violations of the Illinois Uniform Deceptive Trade Practices Act and the Illinois Consumer Fraud

and Deceptive Business Practices Act.

PARTIES

2. Plaintiff WeatherTech is a corporation organized under the laws of the State ofIllinois with a principal place of business located at 841 Remington Blvd., Bolingbrook, Illinois.

WeatherTech is a manufacturer and supplier of automotive accessories including, among other

things, interior and leather cleaners, floor liners and mats.


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3. Defendant Kraco is a limited liability company organized under the laws ofIllinois with its principal place of business located in Compton, California. Upon information

and belief, Kraco is a manufacturer and supplier of automotive accessories, such as floor liners

and floor mats.

JURISDICTION AND VENUE

4. This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. 1331 and 1338 because WeatherTechs claims arise under the laws of the United States. This

Court has supplemental jurisdiction over WeatherTechs state law claims pursuant to 28 U.S.C.

1367. This Court has personal jurisdiction over Kraco due to its systematic and continuous

business connections and contacts with Illinois.

5. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(c), 1395(a)1400(b) because Kraco is subject to personal jurisdiction in, does business in and has committed

acts of infringement in this district and has systematic and continuous business connections and

contacts with this district.

FACTUAL BACKGROUND

6. WeatherTech is the exclusive licensee of U.S. Trademark Registration Nos.3,534,011 and 1,664,203 for the mark WEATHERTECH, for, among other things, floor trays

for land vehicles and rubber floor mats for automobiles. A copy of duly and legally issued

Registration Nos. 3,534,011 and 1,664,203 is attached hereto as Exhibit 1.

7. As the exclusive licensee of all right, title and interest in the WEATHERTECHmark, WeatherTech has standing to sue for infringement of the mark and may seek monetary

damages, injunctions and other relief for past, current and future infringement of the mark.


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8. Since 1989, WeatherTech has used its WEATHERTECH mark in interstatecommerce. Since WeatherTech launched its company, its products always have been associated

with the WEATHERTECH mark in connection with its goods and services. The

WEATHERTECH mark is highly distinctive with regard to WeatherTechs goods and services

and customers of the same are accustomed to seeing and expecting to see the WEATHERTECH

mark in connection with said goods and services.

9. WeatherTech is the exclusive licensee of multiple U.S. registrations for the markWEATHERTECH. These registrations cover a wide variety of goods, including, but not limited

to: 1) protective liners for the cargo area of vehicles and trucks; 2) rubber floor mats for

automobiles; 3) bug and stone deflector shields for land vehicles; 4) floor trays for land vehicles;

5) mud flaps for land vehicles; 6) shampoo for land vehicles, cleaner for tires and wheels, wax

for land vehicles, glass cleaner, tire shine, cleaner for floor mats and floor trays for land vehicles,

water-based protectant applied as a fluid to the surfaces of land vehicle floor mats and floor

trays, carpet cleaner, cleaner for the interior of land vehicles, leather cleaner, leather conditioner;

7) land vehicle parts, namely, rooftop cargo and luggage carriers for vehicles; wind deflectors for

attachment to the roof or sides of vehicles; pet barriers for land vehicles; headlight guards;

license plate frames, license plate covers and replacement screw caps for license plate covers;

and 8) windshield sun shades for land vehicles.

10. True and correct copies of registrations for the WEATHERTECH mark areattached hereto as Exhibits 1 and 2, and are incorporated by reference as though fully set forth

herein.

11. In addition, WeatherTech has common law rights in the WEATHERTECH markand marks that incorporate WEATHERTECH in connection with various other goods, including


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as identified in pending U.S. trademark applications. True and correct copies of said

applications are attached hereto as Exhibit 3.

12. As a result of the nature and quality of WeatherTechs goods, its widespread useof the WEATHERTECH Marks, extensive and continuous media coverage, the high degree of

consumer recognition of the WEATHERTECH Marks, WeatherTechs enormous and loyal

customer base, its numerous trademark registrations and pending applications, and other factors,

the WEATHERTECH Marks are famous within the meaning of Section 43(c) of the United

States Trademark Act, 15 U.S.C. 1125(c). WeatherTech also owns the website

www.weathertech.com.

13. Through this usage, WeatherTech has permeated all channels of media, includingthe internet, print publications, radio advertising, and television advertising. WeatherTech has

spent 24 years and tens of millions of dollars in advertising all centered around its

WEATHERTECH Marks. WeatherTech, and its WEATHERTECH trademark, are famous.

14. WeatherTech is the exclusive licensee of four U.S. Patents: United States PatentNo. 7,686,370 (the 370 patent), attached hereto as Exhibit 4, duly and legally issued on March

30, 2010; United States Patent No. 8,336,944 (the 944 Patent), attached hereto as Exhibit 5,

duly and legally issued on December 25, 2012; United States Patent No. 8,336,945 (the 945

Patent), attached hereto as Exhibit 6, duly and legally issued on December 25, 2012; and United

States Patent No. 8,277,918 (the 918 Patent), attached hereto as Exhibit 7, duly and legally

issued on October 2, 2012. These patents collectively shall be referred to herein as the Subject

Patents.

15. As the exclusive licensee of all right, title and interest in the Subject Patents,WeatherTech has standing to sue for infringement of the Subject Patents and may seek monetary


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damages, injunctions and other relief pursuant to 35 U.S.C. 271 for past, current and future

infringement of the Subject Patents.

16. Since 2005, WeatherTech has manufactured, distributed, advertised and sold toconsumers throughout the United States its vehicle floor trays which are digitally measured for

precise fit for certain makes and models of vehicles. WeatherTech markets these products

extensively under its mark WEATHERTECH.

17. WeatherTechs floor trays were and are a revolutionary product in the vehiclefloor tray industry. WeatherTechs design and inventions with regard to said floor trays were so

successful that WeatherTech was able to obtain a significant market share in the floor tray

product market very shortly after the products introduction to the marketplace. WeatherTech

also has developed a commercially successful, and patented, All Vehicle Mat, which can be cut

by the consumer to fit a wide variety of different vehicle make and models.

18. WeatherTech recently became aware that Kraco was manufacturing anddistributing an infringing floor tray/liner under the mark Goodyear. See Exhibit 8.

19. WeatherTech also recently became aware that Kraco was manufacturing anddistributing an infringing All Vehicle Floor mat. See Exhibit 9. Kracos floor mat and floor

trays shall be referred to collectively as the Infringing Products. This infringement by Kraco

has been willful, as MacNeil specifically made Kraco aware of its 918 Patent about one year

ago.

20. WeatherTech also became aware of Kracos wrongful activities with regard toInternet search engines, such as Googles Adwords, in that Kraco has been bidding for, and

using, WeatherTechs trademark to confuse consumers and pass off its own floor liners and floor

mats. See Exhibit 10.


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21. For example, Kraco has secured the right to have its advertisement and associatedwebsite link displayed very high in internet searches by using WeatherTechs WEATHERTECH

trademark and variations thereof. Kraco has gone so far as to include the WEATHERTECH

trademark within the actual link which directs a consumer to Kracos website. Ex. 10.

22. Internet search engines, such as Google, allow internet users to locate websitesthat correspond with entered keywords, or search terms. As a result, links related to websites

are usually displayed in order of relevance determined by the search engine provider.

23. By using search engines such as Google, internet users enter the subject matterthey are interested in, the companies they are looking for, or the goods they wish to buy. This

allows search engines to earn an overwhelming percentage of their revenue from the sale of

contextual advertising, which permits companies to place their advertising in front of consumers.

24. As an example, as part of its business, Google offers a keyword-triggeredadvertising program called AdWords. AdWords enables advertisers to purchase or bid on

certain keywords. Thus, when an internet user enters those keywords in Googles search engine,

the program generates links, known as Sponsored Links, to the advertisers websites.

Sponsored links appear at the top and on the margins of Googles search-result pages and

sometimes at the bottom margin. In many instances, the search results are designed so that the

Sponsored Link display is inconspicuous, confusing and ambiguous so it is not apparent who

sponsors these links and whether a sponsor of the link is associated in any way with the

company that is the subject of the search. Whenever an internet user clicks on a Sponsored Link,

the corresponding advertiser must pay Google. The same or substantially similar policies also

hold true for other search engines, such as, without limitations, Yahoo, Bing, and AOL.


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25. Googles own materials reveal the operation of its AdWords program, and of theability of users to inappropriately trade on the goodwill and registered trademarks of their

competitors. For example, Googles policy states as follows: Google will not investigate or

restrict the use of trademark terms in keywords, even if a trademark complaint is received. As

such, WeatherTech is left with no recourse but this action in which to address Kracos wrongful

actions.

26. As a result of Kracos wrongful actions, whenever an internet consumer conductsa search by entering WeatherTechs WEATHERTECH mark or variations thereof on various

search engines (e.g., Google), Kracos advertisement and website is prominently displayed. As

such, Kracos participation in these internet search programs that use WeatherTechs mark in

order to trade on WeatherTechs goodwill and mark results in consumer confusion and diverts

users away from WeatherTechs website and to Kracos website.

27. WeatherTech is aware of at least the following examples of Google Adwords thatKraco has recently secured involving WeatherTechs registered trademarks:

WeatherTech (phrase and exact wording)

WeatherTech floor Liners

WeatherTech floor LinerWeatherTech DigitalFit

1

WeatherTech mats

WeatherTech car matsWeatherTech coupon code.

28. The fact that Kracos ad occupies a top position next to the link forWeatherTechs website in the search results shows, according to Googles own literature, that

Kraco is both willing to pay for the ad, and that the ad must have a relatively high clickthrough

rate.

1 WeatherTech also is the exclusive licensee of U.S. Trademark Registration No. 3,545,072

for the mark DIGITALFIT for floor trays for land vehicles. See Exhibit 11.


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29. Even worse, the ad content of the link to Kracos website, contains the veryWEATHERTECH trademark, thus creating even a greater likelihood of confusion.

30. WeatherTech has not given Kraco permission to use its trademark, or variationsthereof, for the promotion or sale of Kracos products or services. Through its use of the

WeatherTech marks as keywords, Kraco seeks to exploit the hard-earned goodwill of

WeatherTech and its products and services. Kracos use of WeatherTechs trademark, and

variations thereof, for use in the AdWords program, as well, on information and belief, as other

search engine programs is intended to divert consumers from the website they intended to visit

WeatherTechs website to Kracos website. Thus, Kraco is free riding on the goodwill and

reputation of WeatherTech.

31. By taking steps to ensure that its add appears at the top of search results forWEATHERTECH related searches, Kracos actions are inherently and intentionally deceptive

and mislead and/or confuse consumers into falsely believing that Kracos own website is

sponsored or authorized by and/or originating with WeatherTech. Kracos actions also dilute the

ability of WeatherTechs trademark to identify WeatherTech to consumers as a source of its

products and services.

32. Kracos conduct also constitutes a deceptive bait and switch. Once a potentialcustomer enters the WEATHERTECH mark or a variation thereof from the search result ad,

Kracos products and website are prominently made available to consumers.

33. On information and belief, potential customers have visited Kracos website usingsearch terms involving the WEATHERTECH mark, believing that WEATHERTECH branded

products are available from Kraco.


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34. When a user clicks on the sponsored link, he or she is directed to Kracos websiteselling floor liners and/or floor mats, none of which are WeatherTechs WEATHERTECH floor

liners or floor mats.

35. Kracos actions divert customers from WeatherTechs website, erode thedistinctiveness and dilute WeatherTechs marks, and impair WeatherTechs honest and good

faith efforts to promote and sell its products on the internet. Kracos actions have caused

damage and irreparable injury to WeatherTech.

36. In addition to harming WeatherTechs reputation and the value of its mark, Kracohas realized and continues to realize profits and other benefits rightfully belonging to

WeatherTech.

37. Further, the cost of WeatherTech to advertise on search engines such as Google,using its own registered marks and intellectual property, has been inflated wrongfully by Kracos

misconduct in bidding for search terms that specifically belong to WeatherTech. Kracos actions

in knowingly and intentionally bidding on WeatherTechs trademarks has caused damage to

WeatherTech in causing WeatherTech to pay inflated prices for these keywords or AdWords.

COUNT I FEDERAL TRADEMARK INFRINGEMENT

38. WeatherTech reasserts and incorporates by reference the allegations of its

Complaint at paragraphs 1 through 37 as if fully set forth herein.

39. WeatherTech is the exclusive licensee of the valid and subsisting, federally

registered mark WEATHERTECH and DIGITALFIT, and the good will attendant therewith.

40. Kracos use in interstate commerce of MacNeils registered WEATHERTECH

and DIGITALFIT marks in connection with the promotion, advertisement and sales of its


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competing products constitutes a reproduction, counterfeit, copy and/or colorable imitation of the

WEATHERTECH and DIGITALFIT marks and therefore infringes upon the same.

41. Both WeatherTech and Kraco offer their products or services through the same

channels of trade, such as the internet.

42. Kracos use of the WEATHERTECH and DIGITALFIT Marks is likely to

cause confusion, mistake and/or deceive the public in violation of 15 U.S.C. 1114.

43. WeatherTech is informed and believes, and based thereon alleges, that Kraco used

WEATHERTECH and DIGITALFIT Marks with knowledge of, and the intent to call to mind

and create a likelihood of confusion with regard to, and/or trade off the fame of WeatherTech

and the registered WEATHERTECH and DIGITALFIT Marks.

44. WeatherTech has given notice of its registrations pursuant to section 29 of the

Lanham Act, 15 U.S.C. 1111.

45. Kracos continued use of the WEATHERTECH and DIGITALFIT Marks will

injure WeatherTech by causing a likelihood that the public will be confused or mistaken into

believing that the goods or services provided by Defendant are endorsed or sponsored by

WeatherTech.

46. WeatherTech has no control over the nature and quality of the goods and services

offered by Defendant trading off its WEATHERTECH and DIGITALFIT Marks, and

WeatherTechs reputation and goodwill will be damaged and the value of WeatherTechs

registered and common law marks jeopardized by Defendants continued use of the

WEATHERTECH and DIGITALFIT name and mark. Because of the likelihood of confusion

between the parties marks, any defects, objections, or faults found with Defendants goods and

services marketed under the WEATHERTECH and DIGITALFIT Mark would negatively


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reflect upon and injure the reputation that WeatherTech has established for the goods and

services it offers in connection with the registered WEATHERTECH and DIGITALFIT

Marks. As such, Defendant is liable to WeatherTech for infringement of a registered mark under

15 U.S.C. 1114.

47. Defendants acts alleged above have caused, and if not enjoined will continue to

cause, irreparable and continuing harm to WeatherTechs marks, business, reputation, and

goodwill. WeatherTech has no adequate remedy at law as monetary damages are inadequate to

compensate WeatherTech for the injuries caused by the Defendant.

48. As a result of Defendants infringement of WeatherTechs registered marks,

WeatherTech has incurred damages in an amount to be proven at trial.

49. Defendants intentional and willful infringement of the WEATHERTECH and

DIGITALFIT marks, and disregard of WeatherTechs rights, renders this case an exceptional

case pursuant to 15 U.S.C. 1117(a).

50. Unless enjoined by the Court, Defendant will continue to use and infringe the

mark to WeatherTechs irreparable injury.

COUNT II FEDERAL TRADEMARK DILUTION




registered mark WEATHERTECH, and the good will attendant therewith.

53. Kracos use in interstate commerce of the WEATHERTECH name in

connection with the promotion, advertisement and sales of its products constitutes a


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reproduction, counterfeit, copy and/or colorable imitation of the WEATHERTECH mark and

therefore infringes upon the same.

54. Both WeatherTech and Defendant offer their goods through the same channels of

trade, such as the internet.

55. As a result of the enormous publicity and advertising campaign for almost 25

years by WeatherTech, and the strong and loyal base of customers that enjoy WeatherTechs

goods and services, the WEATHERTECH Marks have a high degree of consumer recognition,

are widely recognized by the general consuming public of the United States as a designation of

WeatherTechs goods and services, and are famous.

56. The WEATHERTECH Marks became famous before Defendant wrongfully

traded on the same.

57. Defendant literally uses WeatherTechs famous mark in trying to divert

consumers to its website and thus is likely to cause an association between Defendants website

and products and the WEATHERTECH Marks that impairs the distinctiveness of the

WEATHERTECH Marks and weakens the connection in consumers minds between the

WEATHERTECH Marks and WeatherTechs goods and services. Defendants wrongful use of

the WEATHERTECH Mark is likely to cause dilution by tarnishment and blurring based on a

number of relevant considerations, including, but not limited to:

(a) Defendants use of the WEATHERTECH mark is identical to the mark itself;

(b) The WEATHERTECH Marks are inherently distinctive;

(c) WeatherTech is engaging in substantially exclusive use of the WEATHERTECH

Marks in connection with automotive care products;


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(d) The WEATHERTECH Marks are widely recognized by the general consuming

public;

(e) Defendants products may produce a negative result and damage the

WEATHERTECH Marks as a result; and

(f) WeatherTech, on information and belief, and based thereon alleges, that Defendant

intends to create an association with the WEATHERTECH Marks.

58. Defendants acts alleged have caused, and if not enjoined will continue to cause,

irreparable and continuing harm to WeatherTechs marks, business, reputation and goodwill.

WeatherTech has no adequate remedy at law as monetary damages are inadequate to compensate

WeatherTech for injuries caused by Defendant.

59. As a result of Defendants acts as alleged above, WeatherTech has incurred

damages in an amount to be proven at trial.

60. Defendants wrongful use of the WEATHERTECH Mark is deliberate, willful,

fraudulent, and without any extenuating circumstances, and constitutes a willful intent to trade

on WeatherTechs reputation or to cause dilution of the famous WEATHERTECH Marks and is

an exceptional case within the meaning of Lanham Act section 35, 15 U.S.C. 1117.

WeatherTech is therefore entitled to recover three times the amount of its actual damages and the

attorneys fees and costs incurred in this action, and prejudgment interest.

COUNT III FEDERAL FALSE DESIGNATION OF ORIGIN




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registered marks WEATHERTECH and DIGITALFIT, and the good will attendant

therewith.

63. Kracos use in interstate commerce of the WEATHERTECH and

DIGITALFIT names in connection with the promotion, advertisement and sales of its

competing products constitutes a reproduction, counterfeit, copy and/or colorable imitation of the

WEATHERTECH and DIGITALFIT marks and therefore infringes upon the same.

64. Both WeatherTech and Defendant offer their goods through the same channels of

trade, such as the internet.

65. Such acts by Defendant are likely to cause confusion and deception among the

purchasing public and/or are likely to lead the consuming public to believe that WeatherTech has

authorized, approved, or somehow sponsored Defendants use of the Marks in connection with

Defendants goods and services.

66. The aforesaid wrongful acts of Defendant constitute the use of a false designation

of origin and false description or representation, all in violation of 15 U.S.C. 1125(a).







69. Defendants wrongful use of the WEATHERTECH and DIGITALFIT Marks is

deliberate, willful, fraudulent, and without any extenuating circumstances, and constitutes a


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willful intent to trade on WeatherTechs reputation or to cause dilution of the famous

WEATHERTECH Marks and is an exceptional case within the meaning of Lanham Act section

35, 15 U.S.C. 1117. WeatherTech is therefore entitled to recover three times the amount of its

actual damages and the attorneys fees and costs incurred in this action, and prejudgment

interest.

COUNT IV COMMON LAW TRADEMARK INFRINGEMENT




registered marks WEATHERTECH and DIGITALFIT, and the good will attendant

therewith.

72. Defendants acts alleged herein, and specifically, without limitation, Defenants

use of the WEATHERTECH and DIGITALFIT Mark, infringe WeatherTechs exclusive

trademark rights in the WEATHERTECH and DIGITALFIT Marks, in violation of the

common law.








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75. Defendants wrongful use of the WEATHERTECH and DIGITALFIT Marks is

deliberate, willful, and in reckless disregard of WeatherTechs trademark rights, entitling

WeatherTech to the recovery of punitive damages.

COUNT V ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT



77. Defendants knowing and willful copying and colorable imitation of

WeatherTechs protected marks WEATHERTECH and DIGITALFIT is intended by

Defendant to allow it to free-ride on WeatherTechs substantial investment in its Marks and the

hard-earned goodwill and excellent reputation of WeatherTech.

78. Defendants knowing and continued and any future sales of its competing

products to unsuspecting Illinois consumers has created a substantial likelihood of confusion and

caused mistake and deception in Illinois consumers minds because the Kraco products are

inferior to, and not the same as, the WeatherTech products.

79. The above-described knowing and willful conduct constitutes deceptive trade

practices within the meaning of Section 2 of the Illinois Uniform Deceptive Trade Practices Act,

815 ILCS 510/2.

80. As a result of Defendants continued sales of its competing product, WeatherTech

has suffered and will continue to suffer irreparable harm to its goodwill and reputation with its

consumers, who confuse the Kraco products for the WEATHERTECH products. WeatherTech

has no adequate remedy at law for the immediate and continuing harm.




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COUNT VI ILLINOIS COMMON LAW UNFAIR COMPETITION



83. For many years, WeatherTech has expended substantial sums of money creating,

advertising, promoting, establishing and supporting its WEATHERTECH mark and with its

customers and Illinois and American consumers in general.

84. As a result of WeatherTechs substantial investment and hard work over the

years, as well as WeatherTechs commitment to quality, excellence and customer service,

WeatherTech has earned tremendous goodwill and a fine reputation with consumers and the

trade, who associate WeatherTech with its Mark.

85. Defendant is aware of the above facts, and has sought to wrongfully capitalize on

WeatherTechs fine reputation and goodwill by advertising, promoting and selling its product

using the WEATHERTECH name, which is an intentional attempt to copy and/or create a

colorable imitation of WeatherTechs Mark. As a result of Defendants wrongful conduct,

Defendant is able to free-ride off of WeatherTechs substantial investment and hard-work by

causing confusion among consumers in the marketplace and attempting to identify or associate

its products with WeatherTech and/or confuse consumers that this is the case. Separate and apart

from causing confusion, Defendants wrongful conduct also involves its ability to free-ride off of

MacNeils superior WeatherTech product and the substantial investment and effort that

MacNeil has put into developing the same. Separate and apart from these facts, Kraco has

wrongfully caused WeatherTech to pay more to advertise its own product on search engines by

improperly bidding up WeatherTechs trademarked terms and thus costing WeatherTech more

money in which to advertise on the internet.


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86. WeatherTech has been, is, and will continue to be damaged by Defendants

actions and WeatherTech does not have an adequate remedy at law. Defendants actions have

damaged, and will continue to damage, WeatherTechs business, market, reputation and

goodwill. As a result of Defendants acts as alleged above, WeatherTech has incurred damages

in an amount to be proven at trial.

COUNT VII UNJUST ENRICHMENT



88. For many years, WeatherTech has expended substantial sums of money creating,

advertising, promoting, establishing and supporting its WEATHERTECH mark with its

customers and Illinois and American consumers in general. As a result of WeatherTechs

substantial investment and hard work over the years, as well as WeatherTechs commitment to

quality, excellence and customer service, WeatherTech has earned tremendous goodwill and a

fine reputation with consumers and the trade, who associate WeatherTech with its Mark.

89. Defendant is aware of the above facts, and has sought to wrongfully capitalize on

WeatherTechs fine reputation and goodwill by advertising, promoting and selling its product

using the WEATHERTECH name, which is an intentional attempt to copy and/or create a

colorable imitation of MacNeils Mark. As a result of Defendants wrongful conduct, Defendant

is able to free-ride off of WeatherTechs substantial investment and hard-work by causing

confusion among consumers in the marketplace and attempting to identify or associate its

products with WeatherTech and/or confuse consumers that this is the case.

90. Defendant unjustly has received the benefit of WeatherTechs substantial

investment in its Mark and its hard-earned goodwill and fine reputation.


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91. Defendant has been unjustly enriched.

92. It would violate the principles of justice, equity and good conscience for

Defendant to retain this benefit.

93. To avoid an unjust enrichment, WeatherTech should be awarded damages

reflecting Defendants enrichment, among other relief.

COUNT VIII VIOLATION OF THE ILLINOIS CONSUMER

FRAUD AND DECEPTIVE BUSINESS PRACTICES ACT 815 ILCS 505 et seq.



95. In violation of the Illinois Consumer Fraud and Deceptive Business Practices Act,

Defendant has engaged in at least the following unfair and/or deceptive acts or practices:

a) By its use of its infringing keywords/search terms WEATHERTECHand its infringing and confusing use of WeatherTechs Mark, Defendant

has confused consumers as to the origins of Kracos products and falsely

attempted to represent that Kraco has some relation to WeatherTech; and

b) Other false statements and misrepresentations, concealments, suppressionsor omissions according to proof.

96. Defendant intended for consumers to suffer confusion and to misrepresent the

source of its products.

97. Defendants unfair and deceptive acts and practices occurred in the normal course

of trade or commerce.

98. Through its unfair and deceptive acts and practices, Defendant has harmed

WeatherTech and American and Illinois consumers of its products.


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COUNT IX TRADEMARK DILUTION, ILLINOIS

TRADEMARK AND REGISTRATION ACT, 765 ILCS 1036, et seq.



100. The WEATHERTECH Marks are distinctive and famous within the meaning of

section 65 of the Illinois Trademark and Registration Act, 765 ILCS 1036/65.

101. Defendants misappropriation of the WEATHERTECH Mark began after the

WEATHERTECH Marks became famous.

102. Defendants continued use of WEATHERTECH Marks is likely to cause injury to

WeatherTechs business reputation and/or the dilution of the distinctive quality of

WeatherTechs famous WEATHERTECH Marks, in violation of the Illinois Trademark and

Registration Act, 765 ILCS 1036/65.





104. Defendants wrongful use of the Mark is deliberate, willful, and in reckless

disregard of WeatherTechs trademark rights, entitling WeatherTech to the recovery of damages

in an amount to be proved at trial, and treble damages.

COUNT X PATENT INFRINGEMENT OF U.S. PATENT NO. 8,336,944




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106. Upon information and belief, without the consent of WeatherTech, Defendant has

made, used, offered for sale, sold and/or imported Infringing Products which directly and/or

indirectly infringe at least one claim of the 944 patent.


committed acts that constitute inducement of infringement of at least one claim of the 944

patent by others through their acts of making, importing, offering to sell and/or selling Infringing

Products.

108. As a direct and proximate result of Defendants direct infringement, indirect

infringement and/or inducement to infringe the 944 patent, WeatherTech has suffered and will

continue to suffer irreparable injury and damages in an amount not yet determined for which

WeatherTech is entitled to relief.

109. Upon information and belief, Defendants direct infringement, indirect

infringement and/or inducement to infringe the 944 patent has been and continues to be willful

and deliberate.

COUNT XI PATENT INFRINGEMENT OF U.S. PATENT NO. 8,336,945









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Products.

113. As a direct and proximate result of Defendants direct infringement and/or

inducement to infringe the 945 patent, WeatherTech has suffered and will continue to suffer

irreparable injury and damages in an amount not yet determined for which WeatherTech is

entitled to relief.



and deliberate.

COUNT XII PATENT INFRINGEMENT OF U.S. PATENT NO. 7,686,370









Products.




entitled to relief.


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and deliberate.

COUNT XIII PATENT INFRINGEMENT OF U.S. PATENT NO. 8,277,918









Products.




entitled to relief.



and deliberate.

PRAYER FOR RELIEF

WHEREFORE, WeatherTech prays:


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A. That this Court grant preliminary and permanent injunctive relief enjoining

Defendant and all others acting in concert with and having knowledge thereof, from using the

WEATHERTECH Mark, and any similar trade name or mark or variant thereof, as a trade name,

trademark, service mark, domain name, or for any other purpose;

B. That this Court order Defendant to account to WeatherTech any and all revenues

and profits that Defendant derived from its wrongful actions and to pay all damages which

WeatherTech has sustained by reason of the acts complained of herein, and that such damages be

trebled;

C. That this Court award WeatherTech the costs of this action, pre and post-

judgment interest, and reasonable attorneys fees and expenses;

D. That this Court award WeatherTech punitive damages;

E. Enter judgment that Defendant has directly infringed the Subject Patents;

F. Enter judgment that Defendant has induced others to infringe the Subject Patents;

G. Enter judgment that Defendant has willfully infringed the Subject Patents;

H. Enter judgment that this case is found to be an exceptional case under 35 U.S.C.

285;

I. Enter a permanent injunction, pursuant to 35 U.S.C. 283, restraining and

enjoining Defendant and its respective officers, agents, servants, employees, attorneys,

customers and those in concert or participation with Defendant from any further sales of the

Infringing Products and any other infringement of the Subject Patents, whether direct or indirect;

J. Enter judgment ordering Defendant to compensate MacNeil for Defendants

infringement of the Subject Patents pursuant to 35 U.S.C. 284;


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K. Enter a judgment ordering Defendant to pay enhanced damages pursuant to 35

U.S.C. 284;

L. Enter a judgment for an award of pre-judgment and post-judgment interest and

costs to WeatherTech pursuant to 35 U.S.C. 284;

M. Enter a judgment for an award of Plaintiffs reasonable attorneys fees pursuant to

35 U.S.C. 285;

N. Enter a permanent injunction pursuant to 35 U.S.C. 283, restraining and

enjoining Defendant and its respective officers, agents, servants, employees, attorneys,

customers and those in concert or participation with Defendant, from offering for sale or selling

the Infringing Products, and requiring destruction of all molds and tooling related to the

Infringing Products; and

O. Grant WeatherTech such other and further relief as the Court may deem just,

proper and equitable under the circumstances.

JURY TRIAL DEMAND

WeatherTech hereby demands a trial by jury on all issues so triable.

Respectfully submitted,

MACNEIL AUTOMOTIVE PRODUCTS

LIMITED d/b/a WEATHERTECH

Dated: November 1, 2013 By: /s/ Robert S. GrabemannOne of Its Attorneys


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Robert S. Grabemann

[email protected]

Timothy M. Schaum

[email protected]

Vincent V. Frigo

[email protected] & AUMENT, LLP

227 West Monroe

Suite 3500Chicago, Illinois 60606

(312)258-1600

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