Opinion
No. 1:18-cv-05383
12-10-2018
GLOBALTAP, LLC, Plaintiff, v. PETERSEN MANUFACTURING CO. INC., CHRIS PETERSEN, MIKE SIEMER, W.W. GRAINGER, INC., ZORO TOOLS, INC., PARK N'POOOL, INC., NEOBITS, INC., AND CAREFORDE SAFETY, INC. Defendants.
Hon. Judge Charles
Charles Norgle Plaintiff's Motion for Entry of Default Judgment against Defendant, Park n' Pool, Inc. Plaintiff, GlobalTap, LLC, through its undersigned counsel, Patterson Law Firm, LLC, and for its Motion for Entry of Default Judgment against Defendant, Park n' Pool, Inc., pursuant to Federal Rules of Civil Procedure 55(a) and 55(b)(2), states as follows:
Facts
1. Plaintiff filed its Verified Complaint on August 8, 2018, asserting claims against several defendants. (Dkt. # 1.)
2. As set forth in Plaintiff's Verified Complaint, Plaintiff possesses two design patents related to the design of free-standing outdoor water bottle filling stations: D634,394 S ("'394 Patent") and D646,348 S ("'348 Patent"). (Dkt. # 1 at ¶¶ 23-28.)
3. Plaintiff also owns two registered service marks, identified as the Water Drop Mark (Registration No. 4,775,089) and the Word Mark (Registration No. 4,920,350) in Plaintiff's Complaint. (Dkt. # 1 at ¶¶ 29-31.)
4. Count II of Plaintiff's Verified Complaint asserts against Park n' Pool, among others, infringement of the '394 Patent. Count IV of Plaintiff's Verified Complaint asserts against Park n' Pool and Careforde, among others, infringement of the '348 Patent. (Dkt. # 1 at Counts II and IV.)
5. Count VI of Plaintiff's Verified Complaint asserts against Park n' Pool, among others, several Lanham Act violations. Specifically, Park n' Pool has used and continues to use Plaintiff's Word Mark and Water Drop Mark on products sold in the United States, without license, consent, or other authorization, and in relation to the marketing, promotion, or advertising of the infringing products, including, but not limited to, promoting the products as genuine GlobalTap products and including the Word Mark and Water Drop Mark on the products, manuals, and marketing materials. (Dkt. # 1 at ¶ 118.)
6. This unauthorized use of the Word Mark and Water Drop Mark is likely to confuse consumers because it is used in conjunction with GlobalTap's patented designs, as well as other designs developed by GlobalTap. (Dkt. # 1 at ¶ 119.)
7. Park n' Pool's use of Plaintiff's Word Mark and Water Drop Mark in conjunction with GlobalTap's designs amounts to counterfeiting, in that each of these Defendants is selling identical or substantially indistinguishable products under the GlobalTap name and including the Word Mark and Water Drop Mark without Plaintiff's license, consent, or authorization. (Dkt. # 1 at ¶ 120.)
8. Park n' Pool acted and is acting willfully in disregard of Plaintiff's rights. (Dkt. # 1 at ¶ 120.)
9. Park n' Pool was served with a Summons and the Verified Complaint in this matter on October 8, 2018. See Affidavit of Peter Evans, attached hereto as Exhibit A at ¶ 5.
10. As reflected in the Court's docket, it has not appeared or filed a responsive pleading. See Exhibit A at ¶ 7.
Analysis
11. This Court properly has jurisdiction over the claims raised against Park n' Pool pursuant to 28 U.S.C. §§ 1331 and 1338(a), which grants the district courts "original jurisdiction of any civil action arising under any Act of Congress relating to patents . . . and trademarks."
12. This Court properly has jurisdiction over Park n' Pool pursuant to Federal Rule of Civil Procedure 4 and 735 ILCS 5/2-209(a), because Park n' Pool has transacted business in Illinois by virtue of its advertising and sales of products, including products marketed as GlobalTap products, to individuals and entities located in Illinois. See uBID, Inc. v. GoDaddy Grp., Inc., 623 F.3d 421, 423-24 (7th Cir. 2010).
13. Pursuant to Rule 55(a), "when a party against whom a judgment for affirmative relief is sought has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise, the clerk must enter the party's default." Fed. R. Civ. P. 55(a). As set forth above, Park n' Pool was served on October 8, 2018. Pursuant to Rule 12(a)(1)(A)(i), Defendant was to answer or otherwise plead within 21 days. Park n' Pool has not appeared or filed any responsive pleading. Accordingly, Plaintiff requests for entry of default against Park n' Pool.
14. Pursuant to Rule 55(b)(2), the Court may enter a default judgment against the defaulting parties, which establishes as a matter of law that the defaulting defendants are liable on each claim asserted against them. United States v. Di Mucci, 879 F.2d 1488, 1497 (7th Cir. 1989). In addressing a motion for entry of default judgment, the Court must take as true the factual allegations of the complaint. Black v. Lane, 22 F.3d 1395, 1399 (7th Cir. 1994).
15. Plaintiff has alleged that it possesses two valid, protected marks; Park n' Pool is not authorized to use the marks; and their use of the marks is likely to cause confusion among consumers, which is sufficient to establish a claim under the Lanham Act. Bliss Salon Day Spa v. Bliss World, LLC, 268 F.3d 494, 496-97 (7th Cir. 2001).
16. Park n' Pool's infringement is apparent from its website, which markets the counterfeit products to the public. See Exhibits E to Plaintiff's Verified Complaint (Dkt. # 1.) As of December 10, 2018, Park n' Pool continued to list for sale on its website three product models identified as GlobalTap products and including the Word Mark and Water Drop Mark. See https://www.parknpool.com/search-v1610.php?search=water+bottle+filling+station&Search1=find (accessed on Dec. 10, 2018). It does so despite knowledge of Plaintiff's claims.
17. Because Park n' Pool has failed to defend itself in this action, Plaintiff requests an entry of default judgment against it and requests an award of statutory damages as authorized under 15 U.S.C. § 1117(c) for its willful infringement and counterfeiting of Plaintiff's Word Mark and Water Drop Mark, as well as permanent injunctive relief as authorized under 15 U.S.C. § 1116.
Damages
18. Under 15 U.S.C. § 1117(c), in cases involving counterfeit marks, a plaintiff may elect to receive "not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just." 15 U.S.C. § 1117(c)(1). If the counterfeiting is willful, statutory damages may be awarded of up to "$2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just." 15 U.S.C. § 1117(c)(2).
19. Because information regarding Park n' Pool's sales and profits is unavailable due to their failure to appear, statutory damages are appropriate here. Lorillard Tobacco Co. v. S&M Cent. Serv. Corp., No. 03-c-4986, 2004 U.S. Dist. LEXIS 22563, *9 (N.D. Ill. Nov. 8, 2004). Statutory damages may be awarded without an evidentiary hearing. Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc., No. 03 c 5311, 2008 U.S. Dist. LEXIS 31761, *11 (N.D. Ill. Apr. 17, 2008). Further, courts have found defaulting defendants to have willfully counterfeited the plaintiff's marks based on the allegations in the complaint. Deckers Outdoor Corp. v. Doe, No. 11 c 10, 2011 U.S. Dist. LEXIS 119448, *13-15 (N.D. Ill. Oct. 14, 2011).
20. Plaintiff, here, requests the Court award a high statutory damages amount. The Court "enjoys wide discretion" in determining a statutory damages award, and may consider factors such as the difficulty in proving actual damages, the circumstances of the infringement, and whether the damages will serve as an effective deterrent. Chi-Boy Music v. Charlie Club, 930 F.2d 1224, 1229 (7th Cir. 1991). A high damages award is also proper when the infringing activity has expansive reach, such as when the counterfeit products are marketed online. Coach, Inc. v. Ocean Point Gifts, No. 12-cv-2254,2010 U.S. Dist. LEXIS 59003, *15-16 (D.N.J. Jun. 14, 2010) and Burberry Ltd. v. Designers Imports, Inc., No. 07 Civ. 3997, 2010 U.S. Dist. LEXIS 3605, *28-29 (S.D.N.Y. Jan. 19, 2010). Further, Park n' Pool's infringement is willful, as evidenced by its continued use of the Water Drop Mark and Word Mark on its website months after this suit was filed.
21. Any statutory damages awarded must also serve as a sufficient deterrent to ensure that the guilty party will not continue to infringe and sell counterfeit goods. Sands, Taylor & Wood v. Quaker Oats Co., 34 F.3d 1340, 1348 (7th Cir. 1994).
22. Accordingly, for Park n' Pool's willful counterfeiting and unauthorized use of Plaintiff's Word Mark and Water Drop Mark, Plaintiff requests a statutory damages award of $200,000 per mark, as permitted by 15 U.S.C. § 1117(c), or a total of $400,000, as well as permanent injunctive relief.
WHEREFORE, Plaintiff, GlobalTap, LLC, respectfully requests this Honorable Court enter default and default judgment against Defendant, Park n' Pool, Inc., award statutory damages in the amount of $400,000 pursuant to 15 U.S.C. § 1117(c), and grant Plaintiff permanent injunctive relief prohibiting defendant from selling counterfeit GlobalTap products, and grant such other relief as the Court deems proper under the circumstances. Dated: 12/10/2018
Respectfully submitted,
/s/Peter J. Evans
Kristi L. Browne
Peter J. Evans
Patterson Law Firm, LLC
200 W. Monroe Street
Suite 2025
Chicago, Illinois 60606
Tel.: 312-223-1699
Fax: 312-223-8549
kbrowne@pattersonlawfirm.com
pevans@pattersonlawfirm.com
EXHIBIT A
Affidavit of Peter J. Evans
I, Peter J. Evans, hereby state and aver to the following facts under penalty of perjury:
1. My name is Peter J. Evans. I am over the age of eighteen and, if called to testify, could competently testify to each of the facts set forth herein.
2. I am an attorney with the Patterson Law Firm, LLC, which represents Plaintiff, GlobalTap, LLC in this matter.
3. On or about August 8, 2018, Plaintiff filed its Verified Complaint in this case, asserting certain claims against, among others, Defendant, Park n' Pool, Inc.
4. Summons was issued to Park n' Pool, Inc. on the same day.
5. Park n' Pool, Inc. was served with the Summons and Verified Complaint on October 8, 2018 at 1:50pm by leaving a copy of same with Brenda Fonner, President. See Affidavit of Service, attached hereto as Exhibit 1.
6. As of December 10, 2018, Park n' Pool, Inc. has not appeared or filed any responsive pleading in this matter.
7. I have received no correspondence from Park n' Pool, Inc., or from anyone acting on their behalf.
8. As of December 10, 2018, Park n' Pool continued to advertise counterfeit GlobalTap products on its website. FURTHER AFFIANT SAYETH NAUGHT. Date: December 10, 2018
By: /s/_________
Peter J. Evans
EXHIBIT 1 GlobalTap, LLC, Plaintiff(s), vs. Petersen Manufacturing Co. Inc., et al, Defendant(s).
Case No.: 1:18 CV 5383
AFFIDAVIT OF SERVICE
KATHRYN F. KINZIE , being first duly sworn on oath, deposes and states the following: I am over the age of 18 and not a party to this action. I am an agent of ATG LegalServe, Inc., Illinois Department of Financial and Professional Regulation number 117.001494. I attempted service of the within Summons in a Civil Case; Verified Complaint to Park n' Pool, Inc. , located at 50 Park Pl., Lexington, VA24450 resulting in the following:
[×] AUTHORIZED SERVICE: By leaving a copy of the Summons in a Civil Case; Verified Complaint with:
NAME BRENDA FONNER
TITLE PRESIDENT.an individual of the company willing and able to accept on behalf of the entity/respondent/witness on:
the 8 day of OCTOBER , 20 18 at 1:50 PM
___/___/___@__________ ___/___/___@__________ ___/___/___@__________ A description of person with whom the documents were left is as follows: Sex: F Race: WHITE Approx. Age: 45 Height 5'7" Weight: 150 Hair: BROWN Noticeable
[ ] NON-SERVICE for the following reasons with the DATE and TIME of each attempt listed along with a description of the attempt (attach a separate sheet if needed):
Features/Notes BROWN EYES , GLASSES The undersigned verifies that the statements set forth in this Affidavit of Service are true and correct. Signed and sworn to before me on this 9 day of OCTOBER , 20 18 .
X/s/_________
KATHRYN F. KINZIE
(Print Name) /s/_________
Notary Public
EXHIBIT 2
United States District Court Northern District of Illinois - CM/ECF LIVE, Ver 6.2.2 (Chicago)
GlobalTap, LLC v. Petersen Manufacturing Co. Inc. et al
Assigned to: Honorable Charles R. Norgle, Sr
Cause: 35:271 Patent Infringement Date Filed: 08/08/2018
Jury Demand: Plaintiff
Nature of Suit: 830 Patent
Jurisdiction: Federal Question
| Plaintiff | |
|---|---|
| GlobalTap, LLC | represented by Peter Joseph EvansPatterson Law Firm LLC200 W. MonroeSuite 2025Chicago, IL 60606(312) 223-1699Email: pevans@pattersonlawfirm.comATTORNEY TO BE NOTICED |
| Kristi L. BrownePatterson Law Firm PC200 W. Monroe2025Chicago, IL 60606(312) 223-1699Email: kbrowne@pattersonlawfirm.comATTORNEY TO BE NOTICED | |
| V. | |
| Defendant | |
| Petersen Manufacturing Co. Inc. | represented by Peter D. SullivanHinshaw & Culbertson LLP151 N. Franklin StreetSuite 2500Chicago, IL 60606(312) 704-3102Email: psullivan@hinshawlaw.comLEAD ATTORNEYATTORNEY TO BE NOTICED |
| Mark K. SuriHinshaw & Culbertson LLP151 N. Franklin StreetSuite 2500 |
| Chicago, IL 60606(312) 704-3000Email: msuri@hinshawlaw.comATTORNEY TO BE NOTICED | |
|---|---|
| Terrence Patrick McAvoyHinshaw & Culbertson LLP151 N. Franklin StreetSuite 2500Chicago, IL 60606(312) 704-3000Email: tmcavoy@hinshawlaw.comATTORNEY TO BE NOTICED | |
| Defendant | |
| Chris Petersen | represented by Peter D. Sullivan(See above for address)LEAD ATTORNEYATTORNEY TO BE NOTICED |
| Mark K. Suri(See above for address)ATTORNEY TO BE NOTICED | |
| Terrence Patrick McAvoy(See above for address)ATTORNEY TO BE NOTICED | |
| Defendant | |
| Mike Siemer | represented by Peter D. Sullivan(See above for address)LEAD ATTORNEYATTORNEY TO BE NOTICED |
| Mark K. Suri(See above for address)ATTORNEY TO BE NOTICED | |
| Terrence Patrick McAvoy(See above for address)ATTORNEY TO BE NOTICED | |
| Defendant | |
| W.W. Grainger, Inc. | represented by James J. Lukas , JrGreenberg Traurig, LLP77 West Wacker DriveSuite 3100Chicago, IL 60601(312) 456-1038 |
| Email: lukasj@gtlaw.comLEAD ATTORNEYATTORNEY TO BE NOTICED | |
|---|---|
| Defendant | |
| Zoro Tools, Inc. | represented by James J. Lukas , Jr(See above for address)LEAD ATTORNEYATTORNEY TO BE NOTICED |
| Defendant | |
| Park n' Pool, Inc. | |
| Defendant | |
| Neobits, Inc. | |
| Defendant | |
| Careforde Safety, Inc. | |
| Counter Claimant | |
| Chris Petersen | represented by Peter D. Sullivan(See above for address)LEAD ATTORNEYATTORNEY TO BE NOTICED |
| Mark K. Suri(See above for address)ATTORNEY TO BE NOTICED | |
| Terrence Patrick McAvoy(See above for address)ATTORNEY TO BE NOTICED | |
| Counter Claimant | |
| Petersen Manufacturing Co. Inc. | represented by Peter D. Sullivan(See above for address)LEAD ATTORNEYATTORNEY TO BE NOTICED |
| Mark K. Suri(See above for address)ATTORNEY TO BE NOTICED | |
| Terrence Patrick McAvoy(See above for address)ATTORNEY TO BE NOTICED | |
| Counter Claimant |
| Mike Siemer | represented by Peter D. Sullivan(See above for address)LEAD ATTORNEYATTORNEY TO BE NOTICED |
|---|---|
| Mark K. Suri(See above for address)ATTORNEY TO BE NOTICED | |
| Terrence Patrick McAvoy(See above for address)ATTORNEY TO BE NOTICED | |
| V. | |
| Counter Defendant | |
| GlobalTap, LLC | represented by Peter Joseph Evans(See above for address)ATTORNEY TO BE NOTICED |
| Kristi L. Browne(See above for address)ATTORNEY TO BE NOTICED |
| Date Filed | # | Docket Text |
|---|---|---|
| 10/12/2018 | 24 | MINUTE entry before the Honorable Charles R. Norgle:Status hearing held on10/12/2018. Agreed Written Status Report is due on 12/5/2018. Mailed notice(ewf, ) (Entered: 10/12/2018) |
| 10/09/2018 | 23 | STIPULATION of Dismissal of Defendant NeoBits, Inc., with prejudice(Attachments: # 1 Notice of Filing)(Evans, Peter) (Entered: 10/09/2018) |
| 10/08/2018 | 22 | ANSWER to counterclaim and affirmative defenses by GlobalTap, LLC(Attachments: # 1 Notice of Filing Notice of Filing)(Evans, Peter) (Entered:10/08/2018) |
| 09/20/2018 | 21 | MINUTE entry before the Honorable Charles R. Norgle: Joint Motion for a Stayof the Case as to Defendants W. W. Grainger, Inc. and Zoro Tools, Inc. 18 isgranted. The parties are not required to appear before the court on Friday,September 21, 2018 Mailed notice (ewf, ) (Entered: 09/20/2018) |
| 09/17/2018 | 20 | ANSWER to Complaint and Affirmative Defenses, COUNTERCLAIM filed byChris Petersen, Petersen Manufacturing Co. Inc., Mike Siemer againstGlobalTap, LLC . by Chris Petersen, Petersen Manufacturing Co. Inc., MikeSiemer(Sullivan, Peter) (Entered: 09/17/2018) |
| 09/17/2018 | 19 | NOTICE of Motion by James J. Lukas, Jr for presentment of motion to stay 18before Honorable Charles R. Norgle Sr. on 9/21/2018 at 09:30 AM. (Lukas,James) (Entered: 09/17/2018) |
| 09/17/2018 | 18 | MOTION by Defendants W.W. Grainger, Inc., Zoro Tools, Inc. to stay [JOINT](Lukas, James) (Entered: 09/17/2018) |
|---|---|---|
| 09/05/2018 | 17 | NOTICE by Peter Joseph Evans of Change of Address (Evans, Peter) (Entered:09/05/2018) |
| 09/05/2018 | 16 | NOTICE by Kristi L. Browne of Change of Address (Browne, Kristi) (Entered:09/05/2018) |
| 08/30/2018 | 15 | STIPULATION regarding motion for preliminary injunction, motion to expedite7 (Sullivan, Peter) (Entered: 08/30/2018) |
| 08/17/2018 | 14 | ATTORNEY Appearance for Defendants Chris Petersen, PetersenManufacturing Co. Inc., Mike Siemer by Mark K. Suri (Suri, Mark) (Entered:08/17/2018) |
| 08/17/2018 | 13 | ATTORNEY Appearance for Defendants Chris Petersen, PetersenManufacturing Co. Inc., Mike Siemer by Terrence Patrick McAvoy (McAvoy,Terrence) (Entered: 08/17/2018) |
| 08/17/2018 | 12 | ATTORNEY Appearance for Defendants Chris Petersen, PetersenManufacturing Co. Inc., Mike Siemer by Peter D. Sullivan (Sullivan, Peter)(Entered: 08/17/2018) |
| 08/17/2018 | 11 | MINUTE entry before the Honorable Charles R. Norgle: Motion hearing held on8/17/2018. Motion for preliminary injunction and motion to expedite 7 are takenunder advisement. Counsel will submit an agreed order. A status hearing is setfor 10/12/2018 at 10:00 a.m. Mailed notice (ewf, ) (Entered: 08/17/2018) |
| 08/17/2018 | 10 | ATTORNEY Appearance for Defendants W.W. Grainger, Inc., Zoro Tools, Inc.by James J. Lukas, Jr (Lukas, James) (Entered: 08/17/2018) |
| 08/09/2018 | 9 | MAILED Patent report to Patent Trademark Office, Alexandria VA (ek, )(Entered: 08/09/2018) |
| 08/08/2018 | 8 | NOTICE of Motion by Kristi L. Browne for presentment of motion forpreliminary injunction, motion to expedite 7 before Honorable Charles R.Norgle Sr. on 8/17/2018 at 09:30 AM. (Browne, Kristi) (Entered: 08/08/2018) |
| 08/08/2018 | 7 | MOTION by Plaintiff GlobalTap, LLC for preliminary injunction , MOTION byPlaintiff GlobalTap, LLC to expedite discovery (Attachments: # 1 Exhibit A)(Browne, Kristi) (Entered: 08/08/2018) |
| 08/08/2018 | SUMMONS Issued as to Defendants Careforde Safety, Inc., Neobits, Inc., Parkn' Pool, Inc., Chris Petersen, Petersen Manufacturing Co. Inc., Mike Siemer,W.W. Grainger, Inc., Zoro Tools, Inc. (lw, ) (Entered: 08/08/2018) | |
| 08/08/2018 | CASE ASSIGNED to the Honorable Charles R. Norgle, Sr. Designated asMagistrate Judge the Honorable Michael T. Mason. (pj, ) (Entered: 08/08/2018) | |
| 08/08/2018 | 6 | Notice of Claims by GlobalTap, LLC (Browne, Kristi) (Entered: 08/08/2018) |
| 08/08/2018 | 5 | NOTIFICATION of Affiliates pursuant to Local Rule 3.2 by GlobalTap, LLC recomplaint, 1 (Browne, Kristi) (Entered: 08/08/2018) |
| 08/08/2018 | 4 |
| ATTORNEY Appearance for Plaintiff GlobalTap, LLC by Peter Joseph Evans(Evans, Peter) (Entered: 08/08/2018) | ||
| 08/08/2018 | 3 | ATTORNEY Appearance for Plaintiff GlobalTap, LLC by Kristi L. Browne(Browne, Kristi) (Entered: 08/08/2018) |
|---|---|---|
| 08/08/2018 | 2 | CIVIL Cover Sheet (Browne, Kristi) (Entered: 08/08/2018) |
| 08/08/2018 | 1 | COMPLAINT filed by GlobalTap, LLC; Jury Demand. Filing fee $ 400, receiptnumber 0752-14794759. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 ExhibitC, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9Exhibit I)(Browne, Kristi) (Entered: 08/08/2018) |
| PACER Service Center | |||
|---|---|---|---|
| Transaction Receipt | |||
| 11/29/2018 14:58:25 | |||
| PACERLogin: | PattersonLF:2645123:0 | Client Code: | |
| Description: | Docket Report | SearchCriteria: | 1:18-cv-05383 |
| Billable Pages: | 5 | Cost: | 0.50 |