Harley Davidson - lampshade trademark complaint.pdf

8/10/2019 Harley Davidson - lampshade trademark complaint.pdf

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Harley-Davidson bedding and other productsthat have been reconstructed and materially

altered into completely different products having different functions and purposes, i.e.,

lampshades. The public is likely to believe that the Infringing Products come from or are

authorized, approved, and/or licensed by Harley-Davidson. Defendants unauthorized Infringing

Products also circumvent Harley-Davidsons ability to control the quality of products branded

with the Harley-Davidson Marks.

3. Defendants unlawful activities are also likely to dilute and tarnish the famous

Harley-Davidson Marks, constitute false advertising and unfair competition, and have caused

and will continue to cause irreparable harm to Harley-Davidson, the Harley-Davidson Marks,

and the consuming public.

THE PARTIES

4. Plaintiff H-D U.S.A., LLC is a Wisconsin limited liability company having a

principal place of business at 3700 West Juneau Avenue, Milwaukee, Wisconsin 53208, and is

the owner of the trademark rights asserted in this action, i.e., the Harley-Davidson Marks.

5. Defendant Robert Wright is an individual residing at 610 W. Joliet Street, Crown

Point, Indiana 46307 and doing business as Little Bobby Creations and littlebobbycreations.com.

Defendant advertises, promotes, sells, and distributes numerous lampshades bearing the Harley-

Davidson Marks. Defendant is not an authorized Harley-Davidson dealer or a licensee of any of

the Harley-Davidson Marks.

JURISDICTION AND VENUE

6. This Court has jurisdiction over the subject matter of this action pursuant to 15

U.S.C. 1121, and 28 U.S.C. 1331 and 1338(a) and (b). Because the parties are citizens of

different states and the matter in controversy exceeds the sum or value of seventy-five thousand

Case 2:15-cv-00024-RTR Filed 01/08/15 Page 2 of 28 Document 1


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dollars ($75,000.00), exclusive of interest and costs, this Court also has jurisdiction under 28

U.S.C. 1332. Jurisdiction over the state law claims is also appropriate under 28 U.S.C.

1367(a) and principles of pendent jurisdiction because those claims are substantially related to

the federal claims.

7. This Court has personal jurisdiction over Defendant and venue is proper in the

Eastern District of Wisconsin pursuant to 28 U.S.C. 1391(b) and (c). Harley-Davidson is

located in and being harmed in this District, a substantial portion of the activity about which

Harley-Davidson complains has taken place in this District, and the damages suffered by Harley-

Davidson were suffered, at least in part, in this District. Further, Defendant has purposefully

availed himself of the privilege of acting in this District by, among other things, advertising and

promoting its Infringing Products to customers in this District via a website that is accessible to

users in this District, providing a highly interactive website with its Infringing Products through

which customers in this District can purchase Defendants Infringing Products, and which sells

the Infringing Products and other products targeted to consumers in this District. Venue is also

proper because Defendant is subject to personal jurisdiction in this District.

HARLEY-DAVIDSON, ITS PRODUCTS AND SERVICES,

AND ITS FAMOUS TRADEMARKS

8. Harley-Davidson is a world-famous manufacturer of motorcycles and a wide

variety of other products and services.

9. Founded in 1903, Harley-Davidson has manufactured, promoted, and sold

motorcycles and related products for over 110 years.

10. Since at least as early as 1903, Harley-Davidson has used and promoted the

HARLEY-DAVIDSON name and trademark in connection with motorcycles and motorcycle

parts and accessories.



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11. Since at least as early as 1912, Harley-Davidson has used the H-D trademark and

variations thereof in connection with its motorcycles and motorcycle parts and accessories (the

H-D Mark). Harley-Davidson and its dealers and licensees, motorcycle enthusiasts, the media,

and the general public have for many decades regarded the H-D Mark as being synonymous and

interchangeable with the HARLEY-DAVIDSON mark, and motorcycle enthusiasts, the media,

and the general public have used H-D and HARLEY-DAVIDSON interchangeably to refer to

Harley-Davidson and its products for decades.

12. Since at least as early as 1910, Harley-Davidson has used its Bar & Shield logo.

Over the years, Harley-Davidson has used its Bar & Shield logo and variations thereof, including

but not limited to, those shown below (collectively, the Bar & Shield Logo), for motorcycles

and motorcycle products and services.



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13. Over the years, Harley-Davidson has expanded its business to a wide range of

other products and services, including but not limited to apparel, bedding, signs, collectibles,

home furnishings, housewares, and more. The Harley-Davidson Marks have been used on a

wide variety of products for decades.

14. The Harley-Davidson Marks are famous and premium brands and Harley-

Davidson has a reputation for providing a wide variety of high-quality products and merchandise

under those brands itself and through numerous licensees. Given its substantial commercial

success over the years and its status for many years as a famous, iconic, and cult brand, there has

long been a strong demand from motorcycle enthusiasts as well as the general public for

merchandise bearing the Harley-Davidson Marks, including home furnishings, so they can show

their affinity for Harley-Davidson and its products and brands. To satisfy this demand and to

further build awareness of the Harley-Davidson Marks, Harley-Davidson has for decades

licensed the Harley-Davidson Marks (and other of its trademarks) to numerous licensees for use

on a wide range of products including home furnishings, bedding, and apparel, just to name a few.

15.

To ensure and maintain the premium and high-quality reputation of licensed

merchandise sold under the Harley-Davidson Marks, Harley-Davidson requires its licensees to

comply with its extensive and stringent quality-control standards. These quality standards include,

among other things: (1) the licensee must first submit product concepts and artwork for Harley-

Davidsons prior written approval, (2) once the concept and artwork is approved, the licensee must

then submit a pre-production product sample for Harley-Davidsons prior written approval, and (3)

once the pre-production product sample is approved, the licensee must then submit a production

sample of the product (i.e., the product that will be sold in the public) for Harley-Davidsons prior

written approval. A licensee cannot promote or advertise any licensed products without



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completing all of these steps. As part of this quality-control review process, Harley-Davidson

carefully reviews the licensed products in numerous respects, including the materials used in

making the licensed products, the quality of the craftsmanship and construction of the products, the

design, style, and appearance of the product, and the overall quality of the products.

16. Harley-Davidson has achieved significant commercial success with its licensed

merchandise over the years. The vast majority, if not all, of Harley-Davidsons licensed products

and/or associated labeling and packaging bear one or more of the Harley-Davidson Marks.

Harley-Davidsons royalty revenues from licensing exceeded $400 million during 2005-2013

alone, which translates into billions of dollars of sales at retail.

17. Harley-Davidson markets and sells its motorcycles, motorcycle parts and

accessories, and licensed merchandise, including home furnishings, under the Harley-Davidson

Marks through a network of more than 695 authorized dealers located throughout the country,

and numerous other retail outlets. These other retail outlets consist of Alternative Retail Outlets

(AROs) and Seasonal Retail Outlets (SROs).

18.

AROs are located primarily in high-traffic locations such as malls, airports, or

popular vacation destinations and focus on selling Harley-Davidsons general merchandise as well

as licensed products. SROs are located in similar high-traffic areas, but operate on a seasonal basis

out of temporary locations such as vendor kiosks. AROs and SROs are not authorized to sell new

motorcycles. This right is reserved for authorized Harley-Davidson dealers.

19. Harley-Davidsons licensed merchandise, including home furnishings, are also

sold through the HARLEY-DAVIDSON.COM website, authorized dealers websites, and/or the

websites of Harley-Davidsons licensees.



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20. Harley-Davidson and its dealers and licensees have sold many billions of dollars

of products and services under the Harley-Davidson Marks over the years, and have expended

many millions of dollars advertising and promoting those marks through virtually every media.

For example, Harley-Davidson has promoted its products and marks through dealer promotions,

customer events, direct mailings, national television, print, and radio advertisements, and the

Internet.

21. Harley-Davidson, its products and services, and its Harley-Davidson Marks have

received significant unsolicited media coverage for many years, including, for example, in

national publications such asBusiness Week, The Chicago Tribune, The New York Times, The

Wall Street Journal, The Washington Post, and USA Today, as well as in numerous national

television programs and online publications and websites, such as MSNBC, CNN Money,

CNN.COM, and Yahoo Finance.

22. As a result of Harley-Davidsons significant promotional efforts, commercial

success, and popularity, the HARLEY-DAVIDSON brand has been ranked annually for the past

decade among the top 100 most valuable brands in the world by Interbrand, a leading

independent branding firm. In 2014, Interbrand estimated the value of the HARLEY-

DAVIDSON brand at US $4.77 billion.

23. Based on Harley-Davidsons longstanding and extensive use of the Harley-

Davidson Marks, and the widespread advertising, publicity, promotion, and substantial sales of

products and services under those marks, the Harley-Davidson Marks have been well known and

famous to both the general public and the motorcycling public for many years.

24. InH-D Michigan LLC v. Bryan C. Broehm, Opposition No. 91177156, the

Trademark Trial and Appeal Board of the United States Patent and Trademark Office (Board)



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expressly held that the HARLEY-DAVIDSON, HARLEY, and Bar & Shield Logo marks were

famous for motorcycles, apparel, and accessories. 2009 WL 1227921, at *5 (TTAB 2009).

25. The Boards reviewing court, the Federal Circuit, has also recognized HARLEY-

DAVIDSON as a well-known and famous mark. See Ronda Ag v. Harley-Davidson, Inc., 1997

U.S. App. LEXIS 3597, *3-4 (Fed. Cir. Feb. 27, 1997).

26. Since as early as 2006, Harley-Davidson has used the Harley-Davidson Marks on

and/or in connection with the advertising and sales of bedding and window covering products.

Over the years, these goods have included sheets, pillow cases, pillow shams, pillows, bed skirts,

comforters, blankets, duvets, throws, pillows, and linens, as well as window coverings such as

drapes, and window valances. Representative examples of these products are shown below.

Harley-Davidson Tattoo

Full Sheet Set

Harley-Davidson Fireball

Decorative Pillow

Harley-Davidson Flame

Rider Fireball Pillow Shams

Harley-Davidson Flame Rider

Fireball Drapes

Harley-Davidson

Tattoo Valance

Harley-Davidson

Tattoo Full Bed skirt



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27. H-D has sold home furnishings under the Harley-Davidson Marks since as early as

the 1980s and table lamps since as early as 1986. Over the years, Harley-Davidson has used the

Harley-Davidson Marks on and/or in connection with table lamps, desk lamps, billiard lamps,

neon signs, decorative wall plaques and mirrors, posters, glassware, barware, barstools,

jukeboxes, tables, chairs, benches, wall clocks, beverage carts, mini refrigerators, gas grills,

vaults and safes, and other goods. Representative examples of some of these products are shown

below.

Harley-Davidson Art

Glass Long B&S 14"

Tiffany Style HandPainted Table Lamp

Harley-Davidson Neon

Wall & Table Orange

Lamp

Harley-Davidson

Chrome Bar & Shield

Black Clip Lamp



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Harley-Davidson

Animated Novelty Lamp

Harley-Davidson Art

Glass Table Lamp

Harley-Davidson

Midnight Chrome Billiard Lamp

Harley-Davidson

Art Glass Motorcycle

Table Lamp

Harley-Davidson Tiffany-Style Pendant Lamp

Harley-Davidson

Rotating Pub Light

Barrel End Wooden Sign Mirrored Bar & Shield

Wall Clock



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H-D B&S Flames Storage

Bench w/ Vintage Black Finish

H-D Bar & Shield

Cafe Table

H-D Bar & Shield Bar

Stool w/ Back Rest

HARLEY-DAVIDSONS TRADEMARK REGISTRATIONSFOR THE HARLEY-DAVIDSON MARKS

28. In addition to its longstanding and strong common-law rights in the HARLEY-

DAVIDSON mark, Harley-Davidson owns, among others, the following federal registrations for

that mark:

Mark Reg. No.

Reg. Date

Goods and Services

HARLEY-DAVIDSON 050816004-05-1949

Electric lamps and spare parts for same, electric signs, among othergoods.


Non-luminous, non-mechanical tin signs, non-luminous, non-mechanical metal signs, tool boxes of metal, tool chests of metal,metal keys for locks, key rings of metal, knife handles of metal, metalpet tags, metal luggage tags and metal personal identification tabs


Electric lamps and spare parts for same, spark plugs, electric signs


Pool and billiard cues and cases therefor


Locks and key fobs


Sport and folding knives and knife cases


Mirrors, mugs, drinking glasses, coasters, decanters, cups, plasticmugs, towels, bed spreads, clocks, among other goods



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Mark Reg. No.

Reg. Date

Goods and Services


Knives, screw drivers, wrenches

HARLEY-DAVIDSON 0526750

06-27-1950

Motorcycles and structural parts thereof, accessories-namely,

intermediate stands, seats, foot rests and extensions, windshields,fender tips, exhaust stacks, grips, name plates, saddle covers, luggagecarriers, foot pedal pads, tandem seats, foot rests, rear view mirrors


Vehicles-namely, motorcycles


Retail store services in the field of motorcycles, repair and servicing ofmotorcycles.


House mark for a line of motorcycles, structural parts for motorcyclesand related motorcycle accessories, namely, seats, backrests,decorative fuel tank panels, transmission gears, fuel tanks, wheel

sprockets, gear shifts, clutches, battery covers and straps, front rear,and intermediate kickstands, hub caps, shift knobs, foot rests andextensions, windshields, leg shields, fender tips, brake pedals,handlebar grips, safety guards, namely, bars for attachment tomotorcycles, steering dampers, shock absorbers, spare wheels, sparewheel carriers, boot guards, namely, mud flaps and fenders, saddlecovers, luggage carriers, license plate frames, handlebar cross bars,foot pedal pads, tank and fender pads, rearview, fenders and skirts, andwheel balance weights

29. In addition to its longstanding and strong common-law rights in the Bar & Shield

Logo, Harley-Davidson owns, among others, the following federal registrations for that mark:

Mark Reg. No.

Reg. Date

Goods and Services

364057906-16-2009

Non-luminous, non-mechanical tin signs, non-luminous, non-mechanical metal signs, tool boxes of metal, tool chests of metal,metal keys for locks, key rings of metal, knife handles of metal,metal pet tags, metal luggage tags and metal personalidentification tags

166053910-15-1991

Knives; namely, buck knives, sporting and hunting knives,folding pocket knives, knife cases therefor, and tool kits

comprising wrenches and pliers; books about motorcycles,calendars, decals, pens, photo albums, posters, holders for cans inthe nature of a rubber cylinder, duffle bags, garment bags,suitcases, wall mirrors and wall plaques, drinking glasses, mugs,and can holders in the nature of an insulated rubber cylinder,towels, among other goods



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Mark Reg. No.

Reg. Date

Goods and Services

308286904-18-2006

Watches, clocks and ornamental pins

172591810-20-1992

Pool and billiard cues and cases therefor, among other goods.

126393601-17-1984

Electric Lamps, decorative wall plaques and mirrors, mugs andinsulated drinking steins, towels, among other goods

305872002-14-2006

Retail store services and distributorships in the fields ofmotorcycles, motorcycle parts and accessories, footwear,clothing, jewelry, and leather goods; rendering technicalassistance in the establishment, operation, and businesspromotion of retail stores; retail store services in the fields ofmotorcycles, motorcycle parts and accessories, footwear,clothing, jewelry, and leather goods therefor via a globalcomputer network; dealerships in the fields of motorcycles,motorcycle parts and accessories, footwear, clothing, jewelry, andleather goods

355936501-13-2009

House mark for a line of motorcycles and various motorcycleparts

234468004-25-2000

Rings, watches, jewelry pins, stickers resembling tattoos, coolingsleeves for beverage cans, bandanas, vests, embroidered patches

169217806-09-1992 Jewelry pins



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Mark Reg. No.

Reg. Date

Goods and Services

122486811-02-1982

Decorative Items for Motorcycles-Namely, Medallions; FittedMotorcycle Covers; Key Ring Fobs, General Purpose Decals,Decorative Items for Motorcycles-Namely, Decals, and MetallicFoil Decals; Drinking Cups and Mugs; Clothing-Namely, Jackets,

T-Shirts, Tank Tops, Sweat Shirts, Bandanas, Hats, Caps, Boots;Stick, Lapel, and Hat Pins, All of Nonprecious Metals, andDecorative Cloth Patches; Cigarette Lighters

As shown above, Harley-Davidsons rights in its Bar & Shield Logo extend to the marks design,

regardless of the wording contained within the design.

30. In addition to its longstanding and strong common-law rights in the H-D Mark,

Harley-Davidson owns, among others, the following federal registrations for the H-D Mark:

Mark Reg. No.

Reg. Date

Goods and Services

H-D 1317592

02-05-1985

Motorcycle Parts, Made of Metal-Namely, Dowel Pins, CotterPins, Clamps, Nuts, Bolts, Screws, Brackets, Studs, Spacers,Washers, Studs, Lock Washers, Retainers, Springs, MountingPlates, and Bushings; Motorcycle Electrical Parts-Namely,Spark Plugs: Ignition Wires, Breaker Points, and IgnitionSwitches, Carburetors; Motorcycle Speedometers,

Thermometers, Thermostats, Motorcycle Electrical Parts-Namely, Electrical Wire Terminals, Battery and GroundingCables, Lenses, Magnets, Armatures, Circuit Breakers,Switches, Turn Signals and Indicators, Connectors, VoltageRegulators, Ignition System Pin Plugs, Socket Terminal Pins,Single Socket Pins, Ignition System Clamps, and GroundingStraps, and Motorcycle Parts-Namely, Reflectors and StoplightSwitches Thereto, Solenoid Switches; Motorcycle Parts-Namely, Starter Motor Brushes, and Tappets, Rods, RockerArms, Push Rod Cogers, Coil Covers, Valve Spring Retainersand Collars, Crank Pin Rollers, Lock Rings, Bearings,

Flywheel Crank Pins, Gear Shaft Lock Plates, Bearing Rollersand Bearing Retainers, Crank Case Plugs, Oil Plugs, Oil PumpPlugs, Engine Bearing Shims, Cams, Cam Followers, BrakeControl Levers, Brake Calipers, Starter Pins and Roll Pins,Crank Pins, Shift Lever Pivot Pin Plugs, Engine InstrumentPlugs, Axle Caps, Oil Filler Caps, Gas Filler Caps,Transmission Gears, Pumps, Wheel Weights, Shift Levers,Chain Housings, Pawls for Gear Shifters, Clutch Hubs, Clutch



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Mark Reg. No.

Reg. Date

Goods and Services

Drive Plates, Adjusting Nuts, Wheelbearings, Starter GearShift Levers, Transmission Shift Levers, Shifter Levers, ChokeLevers, Chain Links, Brake Discs, Brake Pads, Brake Calipers,Brake Master Cylinders, Hydraulic Fluid Line Connectors,Brake Pedals, Axle Caps, Foot Rests, Stands, Handle BarGrips, Clutch Cables, Throttle Cables, Mirrors, Oil and AirFilters, Seat Grab Straps, Mud Flaps, Highway Pegs, AirCleaners, Body Trim

H-D 1239313

05-24-1983

Motorcycles

31.

The federal trademark registrations listed in paragraphs 28 to 30 above are prima

facie evidence of Harley-Davidsons ownership and the validity of the Harley-Davidson Marks.

Further, many of these registrations are incontestable, and such registrations constitute

conclusive evidence of Harley-Davidsons exclusive right to use those marks for the products

and services specified in those registrations pursuant to 15 U.S.C. 1065 and 1115(b).

32. In addition, Harley-Davidson owns the following Wisconsin state trademark

registrations for its HARLEY-DAVIDSON, H-D, and Bar & Shield marks:

Mark Reg. Date Goods and Services

HD 11-18-2009 Motorcycles, motorcycle parts, jewelry, clothing, capsand headwear, leather goods, decals and stickers,patches, belt buckles and signs

HARLEY-DAVIDSON 11-18-2009 Motorcycles, motorcycle parts, jewelry, clothing,caps/headwear, leather goods, decals/stickers, patches,belt buckles, and signs.

11-18-2009 Motorcycles, motorcycle parts, jewelry, clothing,caps/headwear, leather goods, decals/stickers, patches,belt buckles, and signs.



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Mark Reg. Date Goods and Services

11-18-2009 Motorcycles, motorcycle parts, jewelry, clothing,caps/headwear, leather goods, decals/stickers, patches,belt buckles, and signs.

DEFENDANTS WRONGFUL ACTS

33. Defendant uses and has used the Harley-Davidson Marks in a variety of

unauthorized ways on and in connection with the Infringing Products that falsely suggest and are

likely to create the mistaken impression that Defendants reconstructed and materially altered

products are authorized, approved, and/or licensed by Harley-Davidson when they are not.

34. Defendant has taken genuine licensed Harley-Davidson products bearing the

Harley-Davidson Marks and materially altered and reconstructed those products to create

completely new and different products having different functions and purposes. Specifically,

Defendant has materially altered and reconstructed genuine Harley-Davidson bedding products and

other genuine Harley-Davidson products and cut and sewed these products to create new products

in the form of lampshades. Representative examples of the Infringing Products sold on

Defendants website www.littlebobbycreations.comare shown below.



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35.

Below is a screenshot from Defendants website with a group display of the

individual Infringing Products shown above.



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HARLEY-DAVIDSONS OBJECTIONS TO

DEFENDANTS WRONGFUL ACTS

36. When Harley-Davidson initially contacted Defendant and objected to Defendants

advertising, promotion, manufacture, and sale of the Infringing Products, Defendant expressly

refused to cease his unlawful conduct and argued that his activities were not in violation of any

trademark or copyright laws.

37.

Harley-Davidson then turned the matter over to its outside counsel. On July 30,

2012, Harley-Davidsons outside counsel objected to Defendants infringing activities and

provided substantive arguments as to why Defendants activities were unlawful, including that

Defendants reliance on certain court decisions was wrong and/or misplaced. In response,

Defendant suspended the sale of the Infringing Products and posted a notice on his website

stating that he had temporarily suspended the sale of our Harley Fabric Lamp Shades.

Defendant sent an email to Harley-Davidsons outside counsel on August 9, 2012 stating that he

would provide a substantive response to Harley-Davidsons outside counsels communications.

Defendant further stated that he would stop sales of our Harley lamp shades on our website until



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I have fully reviewed your letter, making clear to H-D that Defendant would not resume sales of

the Infringing Products until and unles he had responded substantively to H-D.

38. More than a year later, Defendant, without having sent a substantive response to

H-Ds outside counsel and without giving notice to H-Ds outside counsel, removed the

suspension notice from his website and resumed offering the Infringing Products for sale. In

response, Harley-Davidsons outside counsel contacted Defendant on January 7, 2014 and

reiterated its demand that Defendant remove the Infringing Products from his website and

provide a substantive response to Harley-Davidsons outside counsels initial letter. In response,

Defendant sent an email on January 17, 2014 stating that he would again suspend sales of the

Infringing Products. Defendant then put the suspension notice back on his website, and removed

several of the Infringing Products from his website, but still failed to provide the promised

substantive response to Harley-Davidsons outside counsels initial letter. On January 23, 2014,

Harley-Davidsons outside counsel again contacted Defendant and objected to the continued

display of the Infringing Products on Defendants website, and Defendant later removed the

Infringing Products from his website altogether and retained the suspension notice on his website.

39. Harley-Davidsons outside counsel later discovered that Defendant, without

havng sent a substantive response to H-Ds outside counsel and without giving notice to H-Ds

outside counsel, had removed the suspension notice from his website, redisplayed and/or relisted

the Infringing Products he originally had for sale, and displayed or listed new additional

Infringing Products for sale on his website.

40. From time to time, Defendants website has disclaimed an affiliation with Harley-

Davidson. In any event, However, the disclaimer is ineffective to avoid a likelihood of

confusion because the disclaimer is false and misleading, consumers are unlikely to see, read,



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pay attention to, or understand the disclaimer, and the disclaimer has no effect whatsoever on

post-sale confusion.

41. On June 23, 2014, Defendant conducted an interview withHemmings Daily, a

news publication providing information about classic cars. In response to one of the

interviewers questions Defendant stated:

The most difficult challenge has been copyright/trademark owners such as Disney,Marvel Comics, Dr. Seuss Enterprises, WWE and many others who claim ourlampshades violate their copyright/trademark images and logos. As an attorney, I knowthe law, and none of our lampshades violate any copyright/trademark laws. To addressthese false claims, I drafted a 20-page legal document which explains in detail why ourlampshades do not violate any copyright/trademark laws. When a copyright/trademark

owner files a complaint, I send them a copy of the 20-page document. Each of them haswithdrawn their complaint.

42. Defendants above statements in his interview are false. Such statements were

also material to consumers decisions to purchase Defendants Infringing Products. When

Harley-Davidson and its outside counsel objected to Defendants sales of the Infringing

Products, Defendant never responded with a 20-page document. In fact, Defendant has failed

to provide any substantive response to Harley-Davidsons outside counsels first letter despite his

promise to do so before he resumed sales of the Infringing Products. Instead, Defendant

suspended his sales of the Infringing Products multiple times for a substantial period of time,

which is contrary to his above interview.

43. The Infringing Products are not subject to the same standards, review, and

approval process as Harley-Davidsons authorized genuine products, including licensed

products, bearing Harley-Davidson Marks, including without limitation Harley-Davidsons

quality-control measures.

44.

Defendants statements about the nature, characteristics, and/or qualities of the

Infringing Products and/or Harley-Davidsons products are false, deceptive, and/or misleading.



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INJURY TO HARLEY-DAVIDSON AND THE PUBLIC

45. Defendants actions described above have damaged and injured and, if permitted

to continue, will further damage and injure Harley-Davidson, the Harley-Davidson Marks,

Harley-Davidsons reputation and goodwill associated with those trademarks, Harley-Davidsons

reputation for high-quality products and services, and the public interest in being free from

confusion.

46. Defendants actions as described above are likely to cause confusion, mistake,

and deception as to the source or origin of Defendants products, and are likely to falsely suggest

a sponsorship, connection, license, affiliation, or association between Defendant and/or his

products with Harley-Davidson.

47. Defendants actions described above are also likely to dilute the distinctiveness

and value of the famous Harley-Davidson Marks and are likely to tarnish the famous Harley-

Davidson Marks.

48. Defendants actions described above have irreparably harmed, and if not enjoined,

will continue to irreparably harm the general public, which has an inherent interest in being free

from confusion, mistake, and deception.

49. Defendants actions described above have irreparably harmed and, if not enjoined,

will continue to irreparably harm Harley-Davidson and the famous Harley-Davidson Marks.

50. Harley-Davidson has no adequate remedy at law.

FIRST CLAIM FOR RELIEF

Trademark Infringement Under Section 32(1)

of the Lanham Act, 15 U.S.C. 1114(1)

51.

Harley-Davidson hereby repeats and realleges each and every allegation set forth

in paragraphs 1 through 50 of this Complaint.



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52. Defendant used and continues to use in commerce the Harley-Davidson Marks

and/or reproductions, copies, and colorable imitations thereof in connection with the offering,

sale, distribution, and advertising of goods, which is likely to cause confusion, mistake, or

deception as to the origin, sponsorship, or approval of Defendants products and commercial

activities, and thus constitutes infringement of Harley-Davidsons federally registered marks

referred to in paragraphs 28 to 30 above in violation of Section 32 of the Lanham Act, 15 U.S.C.

1114.

53. The actions of Defendant described above have at all times relevant to this action

been willful.

54. As a direct and proximate result of the actions of Defendant alleged above,

Harley-Davidson has been damaged and will continue to be damaged.

SECOND CLAIM FOR RELIEF

Trademark Infringement, False Designation

of Origin, and Unfair Competition

Under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A)

55. Harley-Davidson repeats and realleges each and every allegation set forth in

paragraphs 1 through 54 of this Complaint.

56. Defendants actions described above are likely to cause confusion, mistake, or

deception as to the origin, sponsorship, or approval of Defendants products and commercial

activities, and thus constitute trademark infringement, false designation of origin, and unfair

competition with respect to the Harley-Davidson Marks in violation of Section 43(a)(1)(A) of the

Lanham Act, 15 U.S.C. 1125(a)(1)(A).


been willful.



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THIRD CLAIM FOR RELIEF

Federal Unfair Competition ComprisingFalse and Misleading Statements of Fact

Under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)(1)(B)



60. By engaging in the above-described activities, Defendant has made false and

misleading representations of fact to consumers and potential consumers, in commercial

advertising or promotion, misrepresenting the nature of his or anothers products and services, or

commercial activities in violation of Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C.

1125(a)(1)(B).


been willful.



FOURTH CLAIM FOR RELIEFTrademark Dilution Under Section

43(c) of the Lanham Act, 15 U.S.C. 1125(c)



64.

Harley-Davidson has engaged in extensive nationwide advertising, promotion,

and use of the Harley-Davidson Marks for many years. Further, Harley-Davidson has had

massive sales of its goods and services sold under the Harley-Davidson Marks for decades.



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65. The Harley-Davidson Marks have for many years received extensive unsolicited

media attention nationwide. Such extensive and frequent media attention and commercial

success has had a substantial impact on the public and has long created an association in the

minds of consumers between Harley-Davidson and the Harley-Davidson Marks, and the Harley-

Davidson Marks are famous and were famous nationwide before Defendant commenced his

unauthorized use of the Harley-Davidson Marks.

66. Defendants actions described above, all occurring after the Harley-Davidson

Marks became famous, are likely to cause dilution by blurring and dilution by tarnishment of the

distinctive quality of those trademarks in violation of Section 43(c) of the Lanham Act, 15

U.S.C. 1125(c).


been willful.



FIFTH CLAIM FOR RELIEF

Trademark Infringement

Under Wis. Stat. 132 et. seq.



70. Defendants actions making use of the Harley-Davidson Marks with intent to

deceive as to the affiliation, connection, or association of the Defendant with Harley-Davidson in

the conduct of his business without the authorization of Harley-Davidson as set forth above

constitutes statutory trademark infringement of Harley-Davidsons registered marks referred to

in paragraph 32 above in violation of Chapter 132 of the Wisconsin Statutes.



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71. Upon information and belief, the actions of Defendant described above have at all

times relevant to this action been willful.



SIXTH CLAIM FOR RELIEF

Common Law Trademark Infringement, Unfair

Competition, and Misappropriation



74.

Defendants actions described above constitute common law trademark

infringement, unfair competition, and misappropriation of Harley-Davidsons goodwill under the

common law of Wisconsin and other states.


been willful.



PRAYER FOR RELIEF

WHEREFORE, Harley-Davidson prays that this Court enter judgment in its favor on

each and every claim for relief set forth above and award it relief including, but not limited to,

the following:

A. An injunction permanently enjoining Defendant and his employees, agents,

partners, officers, directors, owners, shareholders, principals, subsidiaries, related companies,

affiliates, distributors, dealers, retailers, and all persons in active concert or participation with

any of them:



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1. From using the HARLEY-DAVIDSON, H-D, and Bar & Shield

Logo trademarks, any other trademarks owned by Harley-Davidson, and any

trademarks and logos that are confusingly similar to or likely to dilute or tarnish

any such marks, in any unauthorized manner, including, but not limited to, use on

or in conjunction with the Infringing Products and on or in connection with any

other unauthorized material alterations and/or reconstructions of genuine products

bearing the Harley-Davidson Marks or variations thereof;

2. From representing by any means whatsoever, directly or indirectly,

that Defendant, any products or services offered by Defendant, or any activities

undertaken by Defendant, are authorized, licensed, or otherwise affiliated with

Harley-Davidson; and

3. From assisting, aiding or abetting any other person or business

entity in engaging in or performing any of the activities referred to in

subparagraphs A.1-2 above.

B. An Order directing Defendant to immediately destroy all Infringing Products and

any other unauthorized material alterations and/or reconstructions of genuine products bearing

the Harley-Davidson Marks or variations thereof.

C. An Order directing Defendant to file with this Court and serve on Harley-

Davidsons attorneys, thirty (30) days after the date of entry of any injunction, a report in writing

and under oath setting forth in detail the manner and form in which it has complied with the

injunction;

D. An Order requiring Defendant to account for and pay to Harley-Davidson any and

all profits arising from the foregoing acts of infringement, dilution, false designation of origin,



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false advertising, unfair competition, and an increasing of such profits for payment to Harley-

Davidson in accordance with 15 U.S.C. 1117, Wis. Stat. 132 et. seq.,and other applicable

statutes and laws;

E. An Order requiring Defendant to pay Harley-Davidson compensatory damages in

an amount as yet undetermined caused by the foregoing acts of infringement, dilution, false

designation of origin, unfair competition, and trebling such compensatory damages for payment

to Harley-Davidson in accordance with 15 U.S.C. 1117, Wis. Stat. 132 et. seq.,and other

applicable statutes and laws;

F. An Order requiring Defendant to pay Harley-Davidson punitive damages in an

amount as yet undetermined caused by the foregoing acts of Defendant;

G. An Order requiring Defendant to pay Harley-Davidsons costs and attorneys fees

in this action pursuant to 15 U.S.C. 1117, and other applicable statutes and laws; and

H. Other relief as the Court may deem appropriate.

JURY DEMAND

Pursuant to Fed. R. Civ. P. 38, Harley-Davidson respectfully demands a trial by jury for

all claims so triable.



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Harley Davidson - lampshade trademark complaint.pdf

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Transcript of Harley Davidson - lampshade trademark complaint.pdf