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Case 2:12-cv-00279-TS Document 2 Filed 03/22/12 Page 1 of 12

Peter M. de Jonge, UT 7185 Jed H. Hansen, UT 10679 Angilee K. Wright, UT 12722 THORPE, NORTH & WESTERN, LLP 8180 South 700 East, Suite 350 Sandy, Utah 84070 Telephone: (801) 566-6633 Facsimile: (801) 566-0750 Mark M. Bettilyon, UT 4798 Samuel C. Straight, UT 7638 RAY QUINNEY & NEBEKER, PC 36 South State Street, Suite 1400 Salt Lake City, UT 84111 Telephone: (801) 532-1500 Facsimile: (801) 532-7543 Attorneys for Plaintiff American Covers, Inc. IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH, CENTRAL DISTRICT American Covers, Inc., a Utah corporation, v. Plaintiff COMPLAINT WITH JURY DEMAND Judge: Ted Stewart Case No.: 2:12-cv-00279-TS

Rok Imports, Inc., a New York corporation, Defendant.

Plaintiff American Covers, Inc. (American Covers) by and through its counsel hereby files this Complaint with Jury Demand against Defendant Rok Imports, Inc. (Rok). COMPLAINT American Covers complains and alleges as follows:

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PARTIES, JURISDICTION AND VENUE 1. 2. 3. American Covers is a Utah corporation having a principal place of business at 102 Upon information and belief, Rok Imports, Inc., is a New York corporation with American Covers brings this action under U.S. Patent laws (35 U.S.C. 1 et

West 12200 South, Draper, Utah 84020. its principal place of business 3021 Lawson Boulevard, Oceanside, New York 11572. seq.), U.S. Trademark laws (15 U.S.C. 1 et seq.) and under various other Utah state and common law provisions. 4. 5. 6. This Court has subject matter jurisdiction over this action under 28 U.S.C. This Court has supplemental jurisdiction over any state of Utah statutory and Upon information and belief, this Court has specific personal jurisdiction over 1331 and 1338. common law claims pursuant to 28 U.S.C. 1367. Rok as Rok has purposefully directed its activities to the state of Utah, and this action is based upon activities that arise out of or related to those contacts. 7. 8. Additionally, upon information and belief, this Court has general personal Venue is proper in the District of Utah pursuant to 28 U.S.C. 1391. GENERAL ALLEGATIONS AMERICAN COVERS PRODUCTS AND INTELLECTUAL PROPERTY 9. American Covers is in the business of inventing, developing, manufacturing, jurisdiction over Rok since its contacts with Utah are substantial, continuous, and systematic.

distributing, and selling various air fresheners, deodorizers, and other products, to be used for home, office, and automotives. 10. American Covers owns all right, title and interest in and to U.S. Patent No. 7,687,037 (the 037 Patent) entitled Air Freshener and Method. The 037 Patent issued on March 30, 2010. A copy of the 037 Patent is attached as Exhibit A. 11. American Covers owns all right, title and interest in and to U.S. Trademark Registration No. 3368769 (the 769 Registration) and all associated common law rights for the
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mark REFRESH YOUR CAR. The 769 Registration issued on January 15, 2008. A copy of the 769 Registration is attached as Exhibit B. 12. American Covers owns all right, title and interest in and to U.S. Trademark Registration No. 3540303 (the 303 Registration) and all associated common law rights for the mark REFRESH YOUR CAR (and design). The 303 Registration issued on December 2, 2008. A copy of the 303 Registration is attached as Exhibit C. 13. American Covers owns all right, title and interest in and to U.S. Trademark Registration No. 3640259 (the 259 Registration) and all associated common law rights for the mark REFRESH YOUR HOME. The 259 Registration issued on June 16, 2009. A copy of the 259 Registration is attached as Exhibit D. 14. American Covers owns all right, title and interest in and to U.S. Trademark Registration No. 3658635 (the 635 Registration) and all associated common law rights for the mark REFRESH YOUR OFFICE. The 635 Registration issued on July 21, 2009. A copy of the 635 Registration is attached as Exhibit E. Collectively, all rights, good will and associated registrations for the marks REFRESH YOUR CAR, REFRESH YOUR CAR (and design), REFRESH YOUR HOME and REFRESH YOUR OFFICE are hereinafter referred to as the REFRESH MARKS. 15. American Covers owns all right, title and interest in and to U.S. Trademark Registration No. 3941926 (the 926 Registration) and all associated common law rights for the mark DRIVEN. The 926 Registration issued on April 5, 2011. A copy of the 926 Registration is attached as Exhibit F. 16. American Covers has also filed Application No. 77943713 (the 713 Application) with the United States Patent and Trademark Office for the mark DRIVEN BY REFRESH YOUR CAR. By virtue of its use, American Covers owns all common law rights associated with the mark DRIVEN BY REFRESH YOUR CAR. The 713 Application was filed February 24, 2010, and is currently pending. See attached Exhibit G. Collectively, all rights, good will and associated registrations for the marks DRIVEN and DRIVEN BY REFRESH YOUR CAR are hereinafter referred to as the DRIVEN MARKS.
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17.

Additionally, American Covers also owns all right, title and interest in and to the

distinctive trade dress associated with the products and packaging used in connection with the REFRESH MARKS and DRIVEN MARKS. 18. Specifically, American Covers has considerable trade dress rights in the REFRESH MARKS line of products. Distinctive trade dress rights exist in the overall look and feel of the packaging, including but not limited to the color selection, color scheme, layout, the style and fonts, etc. See attached Exhibit H. 19. Furthermore, American Covers has considerable trade dress rights in connection with the DRIVEN MARKS line of products. Distinctive trade dress rights exist in the overall look and feel of the packaging, including but not limited to the color selection, color scheme, layout, style and fonts, the prominent use of tire tread images and other indicia. See attached Exhibit I. 20. Furthermore, American Covers has established trade dress rights in the distinctive shape of the REFRESH YOUR CAR Odor Eliminating Dual-Scented oil diffuser (hereinafter the DUAL SCENT TRADE DRESS). See attached Exhibit J.

DEFENDANTS INFRINGING ACTS 21. Upon information and belief, Rok makes, uses, sells, offers for sale, and imports into the United States an air freshener that infringes one or more claims of the 037 Patent. Specifically, the products sold under the brands Be Fresh and Torque infringe the 037 Patent. A photo of a representative sample of Roks infringing product is attached hereto as Exhibit K. 22. Upon information and belief, Rok has actively induced others to infringe one or

more claims of the 037 Patent. Rok knew, upon information and belief, that use of the infringing product by end users would directly infringe the 037 Patent. Upon information and belief, Rok had specific intent to thus induce infringement of the 037 Patent.

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23.

Roks continued making, using, selling, importing, offering for sale and

distribution of the infringing air fresheners has injured, is injuring, and will continue to cause irreparable injury to American Covers valuable patent rights. 24. Additionally, upon information and belief, Rok has acted in an objectively reckless

manner with respect to American Covers patent rights. Upon information and belief, Rok made, used, sold, offered for sale, and imported into the United States its infringing air freshener products knowing that it was highly likely that its acts would constitute infringement of a valid patent. Upon information and belief, Rok knew or should have known that its actions were highly likely to result in the infringement of a valid patent. As a consequence, Rok has engaged in willful infringement of the 037 Patent and American Covers is therefore entitled to treble damages and attorneys fees as well as costs incurred in this action along with prejudgment interest under 35 U.S.C. 284 and 285. 25. Additionally, Rok introduced into the market its new air freshener product under

the mark BE FRESH. See examples of Roks BE FRESH products attached hereto as Exhibit L. Use of the mark BE FRESH in connection with vent stick air fresheners is likely to cause confusion in light of American Covers REFRESH MARKS. Not only is the mark BE FRESH very similar in sound and commercial impression to the REFRESH MARKS but the underlying products, the target consumers and the channels of trade are identical. The BE FRESH products are sold in direct competition to the products associated with the REFRESH MARKS. 26. In addition to adopting the confusingly similar mark BE FRESH, Rok adopted trade dress confusingly similar to the REFRESH MARKS product line (hereinafter the REFRESH TRADE DRESS). The trade dress adopted by the BE FRESH product line has the same overall look and feel of the REFRESH TRADE DRESS, including but not limited to the color selection, color scheme, layout, style and fonts and other indicia. See attached Exhibit M.

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27.

In view of the above, it is clear that Roks use of the BE FRESH mark and

associated trade dress is likely to cause confusion, or to cause mistake, or to deceive consumers as to the source and origin of the underlying goods. Upon information and belief, by adopting the mark BE FRESH and associated trade dress under the current circumstances Rok has purposefully and intentionally attempted to trade on the good will associated with the American Covers REFRESH MARKS and REFRESH TRADE DRESS. 28. Additionally, Rok introduced onto the market a new air freshener product under the mark TORQUE. See examples of Roks TORQUE products attached hereto as Exhibit N. Use of the mark TORQUE, particularly when coupled with the trade dress adopted thereon, in connection with vent stick air fresheners is likely to cause confusion in light of American Covers DRIVEN MARKS. Not only is the mark TORQUE very similar in commercial impression to the DRIVEN MARKS but the underlying products, the target consumers and the channels of trade are all also identical. The TORQUE products are sold in direct competition to the products associated with the DRIVEN MARKS. 29. In addition to adopting the confusingly similar mark TORQUE, Rok adopted trade dress confusingly similar to the DRIVEN PRODUCT line (hereinafter the DRIVEN TRADE DRESS). The trade dress adopted by the TORQUE product line has the same overall look and feel of the packaging, including but not limited to the color selection, color scheme, layout, style and fonts, the prominent use of tire tread images and other indicia. See attached Exhibit O. 30. In view of the above, it is clear that Roks use of the TORQUE mark and the associated trade dress is likely to cause confusion, or to cause mistake, or to deceive consumers as to the source and origin of the underlying goods. Upon information and belief, by adopting the mark TORQUE under the current circumstances Rok has purposefully and intentionally attempted to trade on the good will associated with the American Covers DRIVEN MARKS and DRIVEN TRADE DRESS. 31. Additionally, Rok has introduced a line of dual scent oil diffusers, having a shape that is nearly identical to that of American Covers DUAL SCENT TRADE DRESS. See
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Exhibit P. The adoption by Rok of a product shape that is virtually identical to the distinctive shape of American Covers DUAL SCENT TRADE DRESS is an infringement of American Covers valuable trade dress rights. FIRST CAUSE OF ACTION (Patent Infringement of the 037 Patent under 35 U.S.C. 271) 32. 33. 34. 35. 36. American Covers hereby incorporates by reference each and every preceding American Covers owns all right, title and interest in and to the 037 Patent. Rok makes, uses, sells, offers for sale, and imports into the United States air At no time has American Covers granted Rok permission, license or authorization Roks infringing activities have damaged American Covers in an amount to be

allegation of this complaint as if set forth fully herein.

fresheners that directly infringe one or more claims of the 037 Patent. to use American Covers technology claimed in the 037 Patent. proven at trial. Among other remedies, American Covers is entitled to its lost profits or, in the alternative a reasonable royalty to adequately compensate American Covers for Roks infringing activities under 35 U.S.C. 284. Additionally, the harm to American Covers arising from these acts by Rok is not fully compensable by money damages. American Covers has suffered and continues to suffer irreparable harm that has no adequate remedy at law and that will continue unless this infringing conduct by Rok is preliminarily and permanently enjoined. 37. Upon information and belief, Rok acted in an objectively reckless manner with respect to American Covers patent rights. Upon information and belief, Rok made, used, sold, and offered for sale its infringing air freshener products knowing that it was highly likely that its acts would constitute infringement of a valid patent. Rok knew, or should have known, that its actions were highly likely to result in the infringement of valid patents. As a consequence, Rok has engaged in willful infringement of the 037 Patent and American Covers is therefore entitled to treble damages and attorneys fees as well as costs incurred in this action along with prejudgment interest under 35 U.S.C. 284 and 285.

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SECOND CAUSE OF ACTION (Trademark Infringement of the REFRESH MARKS and DRIVEN MARKS under 15 U.S.C. 1114, 1125) 38. 39. 40. 41. American Covers hereby incorporates by reference the preceding allegations of American Covers owns all right, title and interest in the REFRESH MARKS and Rok makes, uses, sells, offers for sale, and imports into the United States air Roks infringing activities have damaged American Covers in an amount to be

this complaint as if set forth fully herein. DRIVEN MARKS. fresheners that directly infringe one or more of the REFRESH MARKS and DRIVEN MARKS. proven at trial. Among other remedies, American Covers is entitled to disgorge any of Roks profit from sales of its products that include the term BE FRESH or TORQUE as well as its lost profits and other damages sustained by American Covers due to Roks infringing activities, and litigation costs for having to bring this action under 15 U.S.C. 1114 and 1125. Additionally, the harm to American Covers arising from these acts by Rok is not fully compensable by money damages. American Covers has suffered and continues to suffer irreparable harm that has no adequate remedy at law and that will continue unless this infringing conduct by Rok is preliminarily and permanently enjoined. 42. Upon information and belief, Roks infringement of American Covers trademarks is willful and intentional. Upon information and belief, Rok made, used, sold, and offered for sale its infringing air freshener products using a term similar to the REFRESH MARKS or DRIVEN MARKS, knowing it would cause consumers to be confused as to the source or origin. Rok knew, or should have known, that its actions were highly likely to cause confusion, thereby resulting in infringement of a registered mark. As a consequence, Rok has engaged in willful infringement of the REFRESH MARKS and DRIVEN MARKS. American Covers is therefore entitled to treble damages and attorneys fees as well as costs incurred in this action along with prejudgment interest under 15 U.S.C. 1117.

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THIRD CAUSE OF ACTION (Trade Dress Infringement under 15 U.S.C. 1125) 43. 44. American Covers hereby incorporates by reference the preceding American Covers owns protectable trade dress in the REFRESH TRADE DRESS,

allegations of this complaint as if set forth fully herein. the DRIVEN TRADE DRESS and the DUAL SCENT TRADE DRESS that is either inherently distinctive or has acquired distinctiveness through secondary meaning. 45. Rok makes, uses, sells, offers for sale, and imports into the United States air fresheners that create a likelihood of confusion as to source, or sponsorship, affiliation, or connection in light of the REFRESH TRADE DRESS, DRIVEN TRADE DRESS and the DUAL SCENT TRADE DRESS. 46. Upon information and belief, Roks infringing activities have damaged American Covers in an amount to be proven at trial. Among other remedies, American Covers is entitled to disgorge any of Roks profit from sales of its products that include American Covers trade dress, as well as its lost profits and other damages sustained by American Covers due to Roks infringing activities, and litigation costs for having to bring this action under 15 U.S.C. 1125. Additionally, the harm to American Covers arising from these acts by Rok is not fully compensable by money damages. American Covers has suffered and continues to suffer irreparable harm that has no adequate remedy at law and that will continue unless this infringing conduct by Rok is preliminarily and permanently enjoined. 47. By adopting confusingly similar trade dress for use in connection with identical products, Rok is clearly attempting to trade on the significant good will in the marketplace associated with American Covers trade dress. Upon information and belief, Rok made, used, sold, and offered for sale its infringing air freshener products and packaging, knowing that it was highly likely that its acts would constitute infringement of American Covers trade dress. As a consequence, Rok has engaged in willful infringement of American Covers trade dress, and

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American Covers is therefore entitled to treble damages and attorneys fees as well as costs incurred in this action along with prejudgment interest under 15 U.S.C. 1117. FOURTH CAUSE OF ACTION (Unfair Competition, U.C.A. 13-5a-102, 103 and/or 13-5-14 and Utah Common Law) 48. 49. American Covers hereby incorporates by this reference each and American Covers owns all right, title and interest in and to the 037 Patent, the

every preceding allegation as if set forth fully herein. REFRESH MARKS, the DRIVEN MARKS, the REFRESH TRADE DRESS, the DRIVEN TRADE DRESS and the DUAL SCENT TRADE DRESS. 50. Rok has engaged in unfair methods of competition by intentionally infringing one or more claims of the 037 Patent, the REFRESH MARKS, the DRIVEN MARKS, the REFRESH TRADE DRESS, the DRIVEN TRADE DRESS and the DUAL SCENT TRADE DRESS. 51. Rok makes, uses, sells, offers for sale, and imports into the United States air fresheners that infringe one or more claims of the 037 Patent, the REFRESH MARKS, the DRIVEN MARKS, the REFRESH TRADE DRESS, the DRIVEN TRADE DRESS and the DUAL SCENT TRADE DRESS. 52. Rok has actively induced others to use air fresheners that infringe one or more claims of the 037 Patent, the REFRESH MARKS, the DRIVEN MARKS, the REFRESH TRADE DRESS, the DRIVEN TRADE DRESS and the DUAL SCENT TRADE DRESS. 53. Rok knew, upon information and belief, that use of the air fresheners by end users would directly infringe the 037 Patent, the REFRESH MARKS, the DRIVEN MARKS, the REFRESH TRADE DRESS, the DRIVEN TRADE DRESS and the DUAL SCENT TRADE DRESS. 54. law. By engaging in the above-described activities, Rok has engaged in unfair competition under Utah Code Ann. 13-5a-102, 103 and/or 13-5-14 and under Utah common

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55.

American Covers has suffered actual damages as a result of unfair business

practices by Rok in an amount to be proven at trial. Additionally, the harm to American Covers arising from these acts by Rok is not fully compensable by money damages. American Covers has suffered, and continues to suffer irreparable harm that has no adequate remedy at law and that will continue unless this unfair conduct by Rok is preliminarily and permanently enjoined. Furthermore, American Covers is entitled to its attorneys fees and costs. FIFTH CAUSE OF ACTION (Unjust Enrichment) 56. 57. American Covers hereby incorporates by this reference each and every preceding Rok has benefited from the improper, unfair, and unauthorized use of 037 Patent,

allegation as if set forth fully herein. the REFRESH MARKS, the DRIVEN MARKS, the REFRESH TRADE DRESS, the DRIVEN TRADE DRESS and the DUAL SCENT TRADE DRESS as alleged herein. 58. 59. 60. Rok has, or should have knowledge of and fully appreciates the benefits it has Rok would be unjustly enriched if it was permitted to retain the proceeds obtained Equity and good conscience require that Rok be required to account for and pay to received from American Covers as a result of its actions. from such actions. American Covers an amount equal to value of the benefits conferred upon it. WHEREFORE, it is respectfully requested that the Court enter judgment in favor of American Covers as follows: A. B. C. D. DRESS. E. DRESS.
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That the Court enter judgment that Rok has infringed the 037 Patent. That the Court enter judgment that Rok has infringed the REFRESH MARKS. That the Court enter judgment that Rok has infringed the DRIVEN MARKS. That the Court enter judgment that Rok has infringed the REFRESH TRADE That the Court enter judgment that Rok has infringed the DRIVEN TRADE

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F. DRESS. G. H. I.

That the Court enter judgment that Rok has infringed the DUAL SCENT TRADE That Rok be ordered to pay damages to American Covers, together with interest, That the Court award American Covers treble damages pursuant to 35 U.S.C. That the Court award American Covers its costs and attorneys fees related to this

in an amount to be determined by this Court but in no event less than $100,000. 284 and 15 U.S.C. 1117. action pursuant to 35 U.S.C. 285, 15 U.S.C. 1117, U.C.A. 13-5a-102, 103 and punitive damages pursuant to U.C.A. 13-5a-102, 103. J. K. L. That the Court award American Covers prejudgment interest. That American Covers have such other and further relief as shall seem just and That the Court grant preliminary and permanent injunctive relief enjoining Rok,

proper to the Court. its officers, directors, principals, agents, servants, employees, retailers, distributors, successors and assigns, and all other aiding, abetting, or acting in concert or active participation therewith, from directly or indirectly infringing the patents, trademarks, and trade dress in suit. M. Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, American Covers hereby demands a jury trial on all its claims and issues so triable. DATED: March 22, 2012 /s/ Peter M. de Jonge Peter M. de Jonge Jed H. Hansen Angilee K. Wright THORPE NORTH & WESTERN, LLP Mark M. Bettilyon Samuel C. Straight RAY QUINNEY & NEBEKER, PC Attorneys for Plaintiff American Covers

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