Wheel Pros v. Naim - Complaint

Case 3:19-cv-01170-S Document 1 Filed 05/15/19 Page 1 of 13 PageID 1
UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
WHEEL PROS, LLC, §

§
Plaintiff, § CIVIL ACTION NO.: ______________
§
v. §
§
ABDUL NAIM D/B/A DFD WHEELS, §
AND DOES 1-25, § Electronically Filed
§ JURY DEMANDED
Defendant. §
§
PLAINTIFF WHEEL PROS, LLC’S ORIGINAL COMPLAINT
1. Plaintiff Wheel Pros, LLC brings this suit against Defendants Abdul Naim d/b/a
DFD Wheels, and Does 1-25 for unauthorized and willful infringement and counterfeiting of Wheel
Pros’ trademarks and patents in connection with Defendants’ wheel products, product packaging, and
promotional materials. Wheel Pros seeks preliminary and permanent injunctions; statutory damages;
treble damages or profits; compensatory damages; punitive damages; pre-judgment interest; attorneys’
fees; and investigator fees and costs as a result of Defendants’ sale, offers for sale, distribution,
promotion, and advertising of wheel products infringing on Wheel Pros’ federally registered
trademarks and patents.
THE PARTIES
2. Plaintiff Wheel Pros, LLC is a limited liability company organized and existing under
the laws of the State of Delaware with its principal place of business at 5347 S. Valentia Way, Suite
200, Greenwood Village, Colorado 80111.
3. Wheel Pros is informed and believes, and on that basis alleges, that defendant Adbul
Naim is a resident of Texas who also goes by the name Abderrazak Naim. Naim previously conducted
business under the name Wheels Outlet, Inc. Wheels Outlet, Inc. was a corporation organized under
ORIGINAL COMPLAINT PAGE 1

118872790.1
the laws of the State of Texas but has been dissolved. Upon information and belief, Naim is now
doing business under the name DFD Wheels. DFD Wheels does not appear to be a registered business
entity with the State of Texas. Wheel Pros is informed and believes, and on that basis alleges, that
defendant Naim operates DFD Wheels out of 2445 Houston St. #100, Grand Prairie, TX 75050.
4. Doe Defendants 1 – 25 are entities and individuals who acted jointly and in concert to
commit the acts complained of herein. The Doe Defendants’ true names and capacities are presently
unknown to Wheel Pros but are likely to be obtained through discovery. Together with Naim, each
of the fictitiously named Doe Defendants is responsible in some manner for the acts and occurrences
alleged in this complaint. Defendants Naim and each of the fictitiously named defendants proximately
caused the damages alleged.
JURISDICTION AND VENUE
5. This Court has original jurisdiction over the infringement claims under 15 U.S.C. §
1121 and 28 U.S.C. §§ 1331 and 1338, and supplemental jurisdiction over the state law claims under
28 U.S.C. § 1367 (a) because the state law claims are so related to the federal claims that they form
part of the same case or controversy and derive from a common nucleus of operative fact.
6. The Court also has diversity jurisdiction over all claims under 28 U.S.C. § 1332, as
there is complete diversity of citizenship between Wheel Pros and Defendants, and the amount in
controversy exceeds $75,000 exclusive of interest and costs.
7. Venue is proper in the United States District Court for the Northern District of Texas,
Dallas division under 28 U.S.C. § 1391(b) because a substantial part of the events giving rise to the
claims herein occurred in this judicial district.
GENERAL ALLEGATIONS
A. Wheel Pros’ business, patents, and trademarks.
8. Wheel Pros distributes more than two dozen brands of high- performance wheels and
tires for cars, trucks, and SUVs to customers in roughly 30 countries worldwide. Many of its biggest
designs are wheels marketed under the XD Series Rockstar patent and trademarks.

118872790.1
9. Wheel Pros has provided consumers with goods under its XD Series Rockstar design
marks and patents since at least 2005.
10. Wheel Pros owns a federal design patent registration for the XD Series Rockstar
XD820, Patent No. D772,132, issued November 22, 2016. A true and correct copy of the design
patent is attached as Exhibit A.
11. Wheel Pros’ patents are associated with Wheel Pros in the minds of consumers, the
public, and the automotive industry. They identify high quality products associated with and
originating from Wheel Pros.
12. Wheel Pros owns a federal trademark registration for the XD Series Star design mark
in the middle of a hubcap, Reg. No. 5,001,689, for “automotive vehicle wheels and components
thereof” in Class 12, issued July 19, 2016. The XD Series Star design mark appears as follows and has
been used by Wheel Pros since 2004:
A true and correct copy of the XD Series Star design mark registration is attached as Exhibit B.
13. Wheel Pros’ trademarks are associated with Wheel Pros in the minds of consumers,
the public, and the automotive industry. They identify high quality products associated with and
originating from Wheel Pros.
14. Wheel Pros has gone to great lengths to protect its name and enforce the Wheel
Pros’ patents and trademarks. These trademarks and patents are in full force and effect and have
become incontestable under 15 U.S.C. § 1065.

118872790.1
B. Defendants’ wrongful conduct.
15. Upon information and belief, after Wheel Pros’ federal patent and trademark
registrations, Defendants began selling, offering for sale, distributing, promoting, and advertising
in interstate commerce counterfeit wheels infringing on Wheel Pros’ XD Series Rockstar patents
and Star design trademark, calling them “Rockstarr” wheels.
16. The spurious marks or designations used by Defendants in interstate commerce are
identical with or substantially indistinguishable from Wheel Pros’ patents and trademarks.
17. Defendant Naim has produced, distributed, and sold counterfeit wheels imitating
Wheel Pros’ products before. Wheel Pros obtained a judgment against Naim and his former
business entity Wheels Outlet, Inc. for patent and trademark infringement in 2016 in Cause No.
3:14-CV-04230.
18. On information and belief, Defendants are producing, distributing, and selling
custom wheels appearing as follows:

118872790.1
19. Defendants’ wheel depicted in the upper left corner is identical to Wheel Pros’
patented XD Series Rockstar XD820:
Wheel Pros XD 820 DFD Counterfeit
20. And the Star logos in the center of the other five wheels are identical to the XD
Series Star design mark used by Wheel Pros since at least 2005.
21. Upon information and belief, Defendants are continuing to sell, offer to sell,
distribute, promote, and advertise counterfeit wheels in the style of Wheel Pros’ wheels.
22. Defendants are not now, nor have they ever been, associated, affiliated, or
connected with, or endorsed or sanctioned by Wheel Pros. Wheel Pros has never authorized or
consented in any way to the use by Defendants of the Wheel Pros registered patents, trademarks,
or copies thereof.
23. Defendants use of the Wheel Pros’ patents, trademarks, or copies thereof on
Defendants’ products is likely to cause consumers, the public, and the automotive industry to
erroneously believe that the goods sold by Defendants emanate or originate from Wheel Pros, or
that said items are authorized, sponsored, or approved by Wheel Pros, even though they are not.

118872790.1
This confusion causes irreparable harm to Wheel Pros and weakens the distinctive quality of the
Wheel Pros patents and trademarks.
24. Defendants are trading on the goodwill and reputation of Wheel Pros and creating
the false impression that Defendants goods are Wheel Pros’ legitimate products. Defendants have
been unjustly enriched by illegally using and misappropriating Wheel Pros’ intellectual property for
Defendants’ own financial gain. Furthermore, Defendants have unfairly benefited and profited
from Wheel Pros’ outstanding reputation for high quality products and its significant advertising
and promotion of its wheels.
25. Defendants have also disparaged Wheel Pros, its patents, trademarks, and wheels
by creating a false association with Wheel Pros, its genuine goods, and its patents and trademarks.
Wheel Pros has no control over the nature and quality of the counterfeit products sold by
Defendants bearing infringements of Wheel Pros’ patents and trademarks.
26. Defendants’ acts are calculated to confuse and deceive the public and are
performed with full knowledge of Wheel Pros’ rights.
27. Upon information and belief, Defendants have acted with reckless disregard for
Wheel Pros’ rights or were willfully blind in connection with their unlawful activities.
28. Upon information and belief, Defendants have willfully and maliciously engaged in
their counterfeiting and infringing activities.
29. Defendants’ wrongful acts will continue unless enjoined by the court. Accordingly,
Defendants must be restrained and enjoined from any further counterfeiting or infringement of
Wheel Pros’ patents and trademarks.

FIRST CLAIM FOR RELIEF
Federal Trademark Infringement and Counterfeiting Under 15 U.S.C. § 1114(1)(a)

Wheel Pros incorporates by reference the allegations set forth in Paragraphs 1 through 29.
30. Defendants’ unauthorized use of the XD Series Star design mark as part of their
series of custom wheels and their related services, promotional materials, and advertising materials
constitutes trademark infringement of the XD Series Star design mark in violation of 15 U.S.C.

118872790.1
§ 1114(1)(a). Defendants’ use of Wheel Pros’ design mark is likely to cause, and on information
and belief has actually caused, confusion, mistake, or deception in the market as to the source or
origin of Defendants’ products, and has falsely suggested that Defendants’ goods are sponsored or
endorsed by, connected to, or affiliated with Wheel Pros.
31. As a direct and proximate result of Defendants’ conduct, Wheel Pros has suffered,
and will continue to suffer, irreparable injury to its business, reputation, and goodwill, unless
and until Defendants’ actions are enjoined. Wheel Pros has no adequate remedy at law and has
suffered irreparable injury and is, therefore, entitled to injunctive relief.
32. As a direct and proximate result of Defendants’ actions, Wheel Pros has also
suffered, and will continue to suffer, monetary damages in an amount to be proven at trial.
33. Defendants’ unauthorized use of these marks was and is knowing, deliberate, and
willful. Wheel Pros is, therefore, entitled to recover three times the amount of its damages as well as
its attorney fees and costs incurred in this action.
SECOND CLAIM FOR RELIEF
Federal Trademark Counterfeiting 15 U.S.C. § 1114(1)
34. Defendants’ acts constitute trademark counterfeiting in violation of Section 32 of
the Lanham Act, 15 U.S.C. § 1114(1).
35. Defendants have used spurious designations that are identical with, or substantially
indistinguishable from, the Wheel Pros trademarks on goods covered by the registration for the
trademarks. Defendants have used these spurious designations knowing they are counterfeit in
connection with the advertisement, promotion, sale, offering for sale, and distribution of goods.
36. Defendants use of the Wheel Pros marks to advertise, promote, distribute, and sell
Defendants’ wheels was and is without the consent of Wheel Pros and were willful and malicious.
37. Defendants unauthorized use of the Wheel Pros trademarks is likely to: (a) cause
confusion, mistake, and deception, (b) cause the public to believe that Defendants’ wheels are the
same as Wheel Pros’ wheels or that Defendants are authorized, sponsored, or approved by Wheel

118872790.1
Pros or that Defendants are affiliated, connected, or associated with or in some way related to
Wheel Pros; and (c) result in Defendants unfairly benefiting from Wheel Pros’ advertising and
promotion and profiting from the reputation of Wheel Pros and its XD Series Star design
trademarks all to the substantial and irreparable injury of Wheel Pros and the substantial goodwill
it has built.
38. Under 15 U.S.C. § 1117, Defendants are liable to Wheel Pros for: (a) statutory
damages in the amount of up to $1,000,000 for each mark counterfeited, or at Wheel Pros’ election
an amount representing three times Wheel Pros’ damages or Defendants’ illicit profits; and (b)
reasonable attorneys’ fees, investigative fees, and pre-judgment interest.
THIRD CLAIM FOR RELIEF
Federal Trademark Dilution 15 U.S.C. § 1125(c)
39. Wheel Pros is the largest aftermarket wheel company in the world and its brands,
including the XD Series Star design mark, are famous and distinctive. Wheel Pros has used the XD
Series Star design mark in commerce since at least 2005.
40. Defendants have used and continue to use the XD Series Star design mark after
Wheel Pros mark had become famous.
41. Defendants’ use of the mark is likely to cause dilution of Wheel Pros’ distinctive
quality.
42. Defendants have profited through the infringement of Wheel Pros’ trademark and,
as a result of Defendants’ unlawful infringement of Wheel Pros XD Series Star design mark, Wheel
Pros has suffered and will continue to suffer damages. Wheel Pros is entitled to recover from
Defendants the damages suffered by Wheel Pros as the result of its unlawful acts.
43. On information and belief, Defendants intend to continue their unlawful infringing
activity and Wheel Pros will continue to suffer irreparable harm for which there is no adequate
remedy at law unless the Court enjoins Defendants from further infringing and diluting activities.

118872790.1
FOURTH CLAIM FOR RELIEF
Patent Infringement 35 U.S.C. §§ 271, 289
44. Wheel Pros is the owner of all right, title, and interest in the XD Series Rockstar
wheel design — U.S. Patent No. D772,132.
45. Upon information and belief, in violation of 35 U.S.C. § 271, Defendants are and
have been directly infringing, contributing to the infringement of, or inducing others to infringe
on the XD Series Rockstar patent by making, using, selling, or offering to sell in the United States,
or importing into the United States, products or processes protected by the Wheel Pros patents.
46. Defendants have profited through the infringement of the Wheel Pros patent and
as a result of Defendants unlawful infringement of the XD Series Rockstar patent, Wheel Pros has
suffered and will continue to suffer damages. Wheel Pros is entitled to recover from Defendants
the damages suffered by Wheel Pros as the result of its unlawful acts.
47. On information and belief, Defendants intend to continue their unlawful infringing
activity, and Wheel Pros will continue to suffer irreparable harm for which there is no adequate remedy
at law unless the Court enjoins Defendants from further infringing activities.
FIFTH CLAIM FOR RELIEF
Federal Unfair Competition Lanham Act / False Representation 15 U.S.C. § 1125(a)

48. Defendants’ use in commerce of a copy or colorable imitation of Wheel Pros’ XD
Series Rockstar patent and XD Series Star design mark constitutes a misappropriation of a
distinguishing characteristic of Wheel Pros itself and a false representation to the public of the
character and quality of Defendants’ goods and services, and is likely to cause confusion, mistake,
or deception as to the affiliation, connection, or association of the Defendants with Wheel Pros as
to the origin, sponsorship, or approval of Defendants’ goods by Wheel Pros, as well as confusion,
mistake, or deception concerning the source of Wheel Pros’ patents and trademarks, all in violation
of 15 U.S.C. § 1125(a) and to the great damage of Wheel Pros and the public.

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49. As a direct and proximate result of Defendants’ false representations and
misappropriation of Wheel Pros’ patents and design marks, through the use of a copy, counterfeit,
or colorable imitation thereof in interstate commerce, Defendants have and continue to injure
Wheel Pros, and Wheel Pros has sustained and will continue to sustain substantial damage to its
business, goodwill, reputation, and profits. The precise nature and amount of these accrued and
continuing damages are not presently known to Wheel Pros. As a result of Defendants’ wrongful
conduct, Wheel Pros has also been forced to incur attorneys’ fees and costs.
50. Wheel Pros has no adequate remedy at law against Defendants’ acts of false
representation and unfair competition. Unless Defendants are enjoined from their above-identified
conduct, Wheel Pros will continue to suffer irreparable harm. Wheel Pros is entitled to preliminary
and permanent injunctive relief under 15 U.S.C. § 1116.
51. Wheel Pros is also entitled to an award of Defendants’ profits unlawfully obtained
by way of its infringing uses under 15 U.S.C. § 1117. Such profits constitute the gross sales by
Defendants of all products using the XD Series Rockstar patents and XD Series marks.
52. Wheel Pros also seeks to have all of Defendants’ products and advertisements, and
other infringing uses of Wheel Pros’ mark in the possession, custody, or control of Defendants or
their agents, employees, or attorneys, or those persons or entities otherwise acting in concert with
Defendants, destroyed under 15 U.S.C. § 1118.
53. Wheel Pros is also informed and believes that Defendants contend their conduct
does not constitute false representation or unfair competition. Accordingly, Wheel Pros requests a
declaratory judgment from this Court declaring the rights of Wheel Pros as the sole owner and
exclusive user of the XD Series Rockstar patents and XD Series design marks, as well as
Defendants’ lack of any rights to use or continue to use these marks in interstate commerce.
54. To the extent Defendants’ violations of 15 U.S.C. § 1125(a) were and continue to
be intentional, Wheel Pros is also entitled to an award of treble damages, prejudgment interest, and
reasonable attorneys’ fees against Defendants under 15 U.S.C. § 1117.

118872790.1
SIXTH CLAIM FOR RELIEF

State law trademark infringement and dilution under
TEX. BUS. & COMM. CODE §§ 16.102-16.104
55. Defendants’ unauthorized use of the XD Series Rockstar design as part of their
series of custom wheels and their related services, promotional materials, and advertising materials
constitutes trademark infringement of the Wheel Pros XD Series Star design mark in violation of
TEX. BUS. & COMM. CODE §§ 16.102-16.104. Defendants’ use of Wheel Pros’ design mark is likely
to cause, and on information and belief has actually caused, confusion, mistake, or deception in
the market as to the source or origin of Defendants’ products, and has falsely suggested that
Defendants’ goods are sponsored or endorsed by, connected to, or affiliated with Wheel Pros.
56. As a direct and proximate result of Defendants’ conduct, Wheel Pros has suffered,
and will continue to suffer, irreparable injury to its business, reputation, and goodwill, unless and
until Defendants’ actions are enjoined. Wheel Pros has no adequate remedy at law and has suffered
irreparable injury and is, therefore, entitled to injunctive relief.
57. As a direct and proximate result of Defendants’ actions, Wheel Pros has also
suffered, and will continue to suffer, monetary damages in an amount to be proven at trial.
58. Defendants unauthorized use of these marks was and is knowing, deliberate, and
willful. Wheel Pros is, therefore, entitled to recover three times the amount of its damages as well
as its attorney fees and costs incurred in this action.
SEVENTH CLAIM FOR RELIEF
State law unfair competition by misappropriation
59. Defendants conduct constitutes an unfair, fraudulent, or unlawful business act or
practice in violation of Texas common law, specifically unfair competition by misappropriation.
60. Wheel Pros has no adequate remedy at law against Defendants’ unfair business acts
or practices. Unless Defendants are enjoined from this conduct, Wheel Pros will continue to suffer

118872790.1
irreparable harm and Defendants will be unjustly enriched. Accordingly, Wheel Pros seeks
preliminary and permanent injunctive relief precluding Defendants from any further use in
commerce of the XD Series Star design mark or any copy, counterfeit, or colorable imitation of
Wheel Pros’ XD Rockstar Series wheels.
61. Under Texas law, Wheel Pros seeks to have all of the profits which are the product
of Defendants’ unfair business acts or practices disgorged and paid over to Wheel Pros.
PRAYER FOR RELIEF
Plaintiff Wheel Pros, LLC hereby demands a jury trial on all issues so triable. Wheel Pros prays
for judgment against Defendants as follows:
(a) For preliminary and permanent injunctive relief, enjoining Defendants and each of
their partners, officers, directors, associates, agents, servants, and employees, and all others acting or
attempting to act in concert with Defendants, from directly or indirectly infringing on Wheel Pros’
patents and trademarks, specifically, the XD Series Rockstar patents and XD Series star design mark
and from continuing to sell, market, offer, dispose of, license, transfer, display, advertise, reproduce,
develop, or manufacture any services, events, products, or goods using Wheel Pros’ trademarks or
trade dress or any confusingly similar version of such trademarks or trade dress, or to assist or
participate in any such activity;
(b) For a preliminary and permanent injunction enjoining Defendants and each of their
partners, officers, directors, associates, agents, servants, and employees, and all others acting or
attempting to act in concert with Defendants, from taking any action which may confuse Wheel Pros’
customers or the public about the sponsorship or source of Defendants’ events, services, or goods,
or about Wheel Pros being the source or sponsor of events, services, or goods that are not licensed
or authorized by Wheel Pros;
(c) For an order requiring Defendants: (i) to pay all of Wheel Pros’ compensatory
damages, including but not limited to, damages based upon the Defendants’ acts of trademark
infringement under the Lanham Act, 15 U.S.C. § 1051, et seq., and all other causes of action herein;
(ii) to account to Wheel Pros and disgorge all profits that Defendants have derived from the infringing

118872790.1
use of Wheel Pros’ trademarks; and (iii) to pay Wheel Pros all damages that Wheel Pros has sustained
by reason of Defendants’ conduct alleged herein, including treble damages for willful infringement;
(d) For an order requiring Defendants to provide restitution for their actual and exemplary
damages under Texas law;
(e) For prejudgment interest as authorized by law;
(f) For Wheel Pros’ reasonable attorneys’ fees and costs of suit incurred in bringing this
action to prevent and redress Defendants’ knowing, deliberate, willful, and fraudulent infringement;
and
(g) For such other and further relief as the Court deems just and proper.
Dated: May 15, 2019 Respectfully submitted,
/s/ Susan E. Egeland

SUSAN E. EGELAND
Susan.Egeland@dbr.com
TX State Bar No. 24040854
MATTHEW C. SAPP
Matt.Sapp@dbr.com
TX State Bar No. 24065363
DRINKER BIDDLE & REATH LLP
1717 Main St., Ste. 5400
Dallas, Texas 75201-7367
Phone: (469) 357-2500
Fax: (469) 327-0860
ATTORNEYS FOR WHEEL PROS, LLC

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JS 44 (Rev. 06/17) - TXND (Rev. 06/17) CIVIL COVER
Case 3:19-cv-01170-S Document SHEET
1-1 Filed 05/15/19 Page 1 of 1 PageID 14
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS

WHEEL PROS, LLC ABDUL NAIM D/B/A DFD WHEELS,
AND DOES 1-25
(b) County of Residence of First Listed Plaintiff Arapahoe County, Colorado County of Residence of First Listed Defendant Tarrant County, Texas
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Susan E. Egeland and Matthew C. Sapp, Drinker Biddle & Reath LLP, 1717
Main St., Suite 5400, Dallas, TX 75201, (469)357-2500
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
u 1 U.S. Government u 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State u 1 u 1 Incorporated or Principal Place u 4 u 4
of Business In This State
u 2 U.S. Government u 4 Diversity Citizen of Another State u 2 u 2 Incorporated and Principal Place u 5 u 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
Citizen or Subject of a u 3 u 3 Foreign Nation u 6 u 6

Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only) Click here for: Nature of Suit Code Descriptions.
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
u 110 Insurance PERSONAL INJURY PERSONAL INJURY u 625 Drug Related Seizure u 422 Appeal 28 USC 158 u 375 False Claims Act
u 120 Marine u 310 Airplane u 365 Personal Injury - of Property 21 USC 881 u 423 Withdrawal u 376 Qui Tam (31 USC
u 130 Miller Act u 315 Airplane Product Product Liability u 690 Other 28 USC 157 3729(a))
u 140 Negotiable Instrument Liability u 367 Health Care/ u 400 State Reapportionment
u 150 Recovery of Overpayment u 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS u 410 Antitrust
& Enforcement of Judgment Slander Personal Injury u 820 Copyrights u 430 Banks and Banking
u 151 Medicare Act u 330 Federal Employers’ Product Liability u 830 Patent u 450 Commerce
u 152 Recovery of Defaulted Liability u 368 Asbestos Personal u 835 Patent - Abbreviated u 460 Deportation
Student Loans u 340 Marine Injury Product New Drug Application u 470 Racketeer Influenced and
(Excludes Veterans) u 345 Marine Product Liability u 840 Trademark Corrupt Organizations
u 153 Recovery of Overpayment Liability PERSONAL PROPERTY LABOR SOCIAL SECURITY u 480 Consumer Credit
of Veteran’s Benefits u 350 Motor Vehicle u 370 Other Fraud u 710 Fair Labor Standards u 861 HIA (1395ff) u 490 Cable/Sat TV
u 160 Stockholders’ Suits u 355 Motor Vehicle u 371 Truth in Lending Act u 862 Black Lung (923) u 850 Securities/Commodities/
u 190 Other Contract Product Liability u 380 Other Personal u 720 Labor/Management u 863 DIWC/DIWW (405(g)) Exchange
u 195 Contract Product Liability u 360 Other Personal Property Damage Relations u 864 SSID Title XVI u 890 Other Statutory Actions
u 196 Franchise Injury u 385 Property Damage u 740 Railway Labor Act u 865 RSI (405(g)) u 891 Agricultural Acts
u 362 Personal Injury - Product Liability u 751 Family and Medical u 893 Environmental Matters
Medical Malpractice Leave Act u 895 Freedom of Information
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS u 790 Other Labor Litigation FEDERAL TAX SUITS Act
u 210 Land Condemnation u 440 Other Civil Rights Habeas Corpus: u 791 Employee Retirement u 870 Taxes (U.S. Plaintiff u 896 Arbitration
u 220 Foreclosure u 441 Voting u 463 Alien Detainee Income Security Act or Defendant) u 899 Administrative Procedure
u 230 Rent Lease & Ejectment u 442 Employment u 510 Motions to Vacate u 871 IRS—Third Party Act/Review or Appeal of
u 240 Torts to Land u 443 Housing/ Sentence 26 USC 7609 Agency Decision
u 245 Tort Product Liability Accommodations u 530 General u 950 Constitutionality of
u 290 All Other Real Property u 445 Amer. w/Disabilities - u 535 Death Penalty IMMIGRATION State Statutes
Employment Other: u 462 Naturalization Application
u 446 Amer. w/Disabilities - u 540 Mandamus & Other u 465 Other Immigration
Other u 550 Civil Rights Actions
u 448 Education u 555 Prison Condition
u 560 Civil Detainee -
Conditions of
Confinement
V. ORIGIN (Place an “X” in One Box Only)
u 1 Original u 2 Removed from u 3 Remanded from u 4 Reinstated or u 5 Transferred from u 6 Multidistrict u 8 Multidistrict
Proceeding State Court Appellate Court Reopened Another District Litigation - Litigation -
(specify) Transfer Direct File
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
15 U.S.C. § §1114, 1125; 35 U.S.C. §§ 271, 289
VI. CAUSE OF ACTION Brief description of cause:
Trademark and patent infringement of automotive wheel products
VII. REQUESTED IN u CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. JURY DEMAND: u Yes u No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
05/15/2019 /s/ Susan E. Egeland
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE

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Case 3:19-cv-01170-S Document 1 Filed 05/15/19 Page 1 of 13 PageID 1

UNITED STATES DISTRICT COURT

WHEEL PROS, LLC, §

PLAINTIFF WHEEL PROS, LLC’S ORIGINAL COMPLAINT

trademarks and patents.

200, Greenwood Village, Colorado 80111.

ORIGINAL COMPLAINT PAGE 1

caused the damages alleged.

JURISDICTION AND VENUE

controversy exceeds $75,000 exclusive of interest and costs.

claims herein occurred in this judicial district.

A. Wheel Pros’ business, patents, and trademarks.

ORIGINAL COMPLAINT PAGE 2

marks and patents since at least 2005.

patent is attached as Exhibit A.

originating from Wheel Pros.

been used by Wheel Pros since 2004:

originating from Wheel Pros.

become incontestable under 15 U.S.C. § 1065.

ORIGINAL COMPLAINT PAGE 3

B. Defendants’ wrongful conduct.

and Star design trademark, calling them “Rockstarr” wheels.

custom wheels appearing as follows:

ORIGINAL COMPLAINT PAGE 4

patented XD Series Rockstar XD820:

Wheel Pros XD 820 DFD Counterfeit

ORIGINAL COMPLAINT PAGE 5

Wheel Pros patents and trademarks.

and promotion of its wheels.

Defendants bearing infringements of Wheel Pros’ patents and trademarks.

performed with full knowledge of Wheel Pros’ rights.

their counterfeiting and infringing activities.

Wheel Pros’ patents and trademarks.

Federal Trademark Infringement and Counterfeiting Under 15 U.S.C. § 1114(1)(a)

ORIGINAL COMPLAINT PAGE 6

endorsed by, connected to, or affiliated with Wheel Pros.

suffered irreparable injury and is, therefore, entitled to injunctive relief.

its attorney fees and costs incurred in this action.

SECOND CLAIM FOR RELIEF

Federal Trademark Counterfeiting 15 U.S.C. § 1114(1)

34. Defendants’ acts constitute trademark counterfeiting in violation of Section 32 of

the Lanham Act, 15 U.S.C. § 1114(1).

ORIGINAL COMPLAINT PAGE 7

reasonable attorneys’ fees, investigative fees, and pre-judgment interest.

THIRD CLAIM FOR RELIEF

Federal Trademark Dilution 15 U.S.C. § 1125(c)

Series Star design mark in commerce since at least 2005.

Wheel Pros mark had become famous.

ORIGINAL COMPLAINT PAGE 8

FOURTH CLAIM FOR RELIEF

Patent Infringement 35 U.S.C. §§ 271, 289

wheel design — U.S. Patent No. D772,132.

Federal Unfair Competition Lanham Act / False Representation 15 U.S.C. § 1125(a)

48. Defendants’ use in commerce of a copy or colorable imitation of Wheel Pros’ XD

ORIGINAL COMPLAINT PAGE 9

49. As a direct and proximate result of Defendants’ false representations and

and permanent injunctive relief under 15 U.S.C. § 1116.

Defendants, destroyed under 15 U.S.C. § 1118.

reasonable attorneys’ fees against Defendants under 15 U.S.C. § 1117.

ORIGINAL COMPLAINT PAGE 10

SIXTH CLAIM FOR RELIEF

irreparable injury and is, therefore, entitled to injunctive relief.

as its attorney fees and costs incurred in this action.

SEVENTH CLAIM FOR RELIEF