8/13/2019 American Covers v. OK/USA Distribution et. al.
1/26
8/13/2019 American Covers v. OK/USA Distribution et. al.
2/26
2
COMPLAINT
American Covers complains and alleges as follows:
PARTIES, JURISDICTION AND VENUE
1. American Covers, Inc. is a Utah corporation having a principal place of business
at 102 West 12200 South, Draper Utah 84020.
2. Upon information and belief, Defendant OK/USA is a Washington corporation
having a business address of 1465 Slater Road, Ferndale, Washington 98248.
3. Upon information and belief, Defendant GLOBAL is an Australian business
entity having a principal place of business at Unit 1 No. 153 Beauchamp Rd. Matraville, Sydney
Australia 2036 and a business address of 623 Underwood Avenue Botany, New South WalesAustralia 2019.
4. Upon information and belief, Defendant OK/USA imports, markets, promotes,
sells, and offers to sell Defendant GLOBALs products.
5. Plaintiffs bring this action under U.S. patent laws, 35 U.S.C. 1 et seq., 15
U.S.C. 1051 et seq., and under various other Utah state law and common law provisions.
6. This Court has subject matter jurisdiction over this action under 28 U.S.C.
1331 and 1338.
7. This Court has supplemental jurisdiction over any state law statutory and common
law claims pursuant to 28 U.S.C. 1367.
8. Upon information and belief, this Court has specific personal jurisdiction over
Defendants as they have purposefully directed their activities toward the state of Utah and have
distributed the products at issue in this case into the state of Utah or to retailers/sub-distributors
that sell and/or distribute the products at issue in this case into the state of Utah and/or have
marketed and promoted this product to persons and/or businesses that reside in the state of Utah.
9. Upon information and belief, this Court has general personal jurisdiction over
Defendant OK/USA since its contacts with Utah are substantial, continuous, and systematic and
this action is based upon activities that arise out of or are related to those contacts.
8/13/2019 American Covers v. OK/USA Distribution et. al.
3/26
8/13/2019 American Covers v. OK/USA Distribution et. al.
4/26
4
Freshener and Method. The 037 Patent issued on March 30, 2010. A copy of the 037 Patent
is attached as Exhibit A.
15. American Covers also owns all right, title, and interest in and to another valid and
enforceable United States Patent, U.S. Patent No. 8,480,960 (the 960 Patent), entitled Air
Freshener Clip With Head. The 960 patent issued on July 9, 2013. A copy of the 960 patent
is attached as Exhibit B.
16. American Covers also owns all right, title, and interest in and to another valid and
enforceable United States Patent, U.S. Patent No. 8,147,761 (the 761 Patent), entitled Air
Freshener Clip With Domed Head. The 761 patent issued on April 3, 2012. A copy of the
761 Patent is attached as Exhibit C.
17. The 761 Patent, 960 Patent, and 037 Patent are collectively referred to herein as
the Vent Stick Patents.
18. American Covers also manufactures and sells a line of air freshening devices
referred to as a dual scent air diffuser. An image of one of American Covers dual scent air
diffuser products is pictured below.
19. American Covers is the owner of all right, title, and interest in and to United
States design patent D664,246 (the 246 Patent) protecting its dual scent air diffuser products
8/13/2019 American Covers v. OK/USA Distribution et. al.
5/26
5
from copying and other acts of patent infringement. A copy of the 246 Patent is attached hereto
as Exhibit D.
20. In addition to the products described by the Vent Stick Patents and the 246
Patent, American Covers also has a line of air freshener products marketed under the trade name
Bahama Bag Co., including the Bahama Bag Co. Scent Pouch (Scent Pouch). The Scent
Pouch is a burlap-style sack enclosing an air freshener/odor eliminator composition inside with a
hemp-style cord or string as an attachment member (Scent Pouch Trade Dress). The Scent
Pouch can include tropical designs or images on its external surfaces and is marketed for use in
automobiles.
21. Upon information and belief, the design and configuration of the Scent Pouch is
inherently distinctive and has acquired secondary meaning in the marketplace. As such, the
Scent Pouch configuration and design have become a trademark and trade dress indicating
Bahama Bag Co as the source of the air freshener. As noted above, Bahama Bag Co. is a product
line of plaintiff American Covers. One example of American Covers Scent Pouch is shown
below.
8/13/2019 American Covers v. OK/USA Distribution et. al.
6/26
6
THE DEFENDANTS MISCONDUCT
22. Upon information and belief, OK/USA and GLOBAL make, use, sell, offer for
sale, and/or import into the United States a vent stick that infringes one or more claims of the
Vent Stick Patents (the Infringing Vent Stick Products). An image of one example of the
Infringing Vent Stick Products is shown below. Photographs of the product in American
Covers possession are attached hereto as Exhibit E.
23. Upon information and belief, OK/USA and GLOBAL make, use, sell, offer for
sale, and/or import into the United States a dual scent diffuser that infringes the claim of the 246
Patent (the Infringing Diffuser Scent Products). An image of one example of the Infringing
Dual Scent Diffuser Products is shown below. Photographs of the product in American Covers
possession are attached hereto as Exhibit F.
8/13/2019 American Covers v. OK/USA Distribution et. al.
7/26
7
24. Upon information and belief, the Defendants are in direct competition with
American Covers in the automotive air freshener accessories market.
25. Upon information and belief, the Defendants make, use, sell, import, or offer for
sale, and distribute the Infringing Vent Stick Products and Infringer Dual Scent Diffuser
Products in the United States.
26. Upon information and belief, the Infringing Vent Stick Products and Infringing
Dual Scent Diffuser Products are copies of American Covers products.
27. Upon information and belief, Defendant GLOBAL has purposefully copied
American Covers products to unlawfully benefit from American Covers goodwill in the
marketplace.
28. Upon information and belief, the Defendants continued manufacture, use, sale,
importing, and offering for sale and distribution of the Infringing Vent Stick Products and
8/13/2019 American Covers v. OK/USA Distribution et. al.
8/26
8
Infringing Dual Scent Diffuser Products has injured, is injuring, and will continue to cause
irreparable injury to American Covers.
29. Additionally, upon information and belief, Defendants acted in an objectively
reckless manner with respect to American Covers patent rights. Upon information and belief,
Defendants made, used, sold, offered for sale, and imported into the United States their
infringing products knowing that it was highly likely that their acts would constitute
infringement of a valid patent. Upon information and belief, the Defendants knew or should
have known that their actions were highly likely to result in the infringement of a valid patent.
As a consequence, Defendants have engaged in willful infringement of the Vent Stick Patents
and/or the 246 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.
30. Upon information and belief, OK/USA and GLOBAL market, promote, and/or
distribute, or cause to be distributed the scent pouch air freshener product pictured below
(hereinafter Infringing Scent Pouch).
8/13/2019 American Covers v. OK/USA Distribution et. al.
9/26
9
31. Upon information and belief, Defendants introduced the Infringing Scent Pouch
after the Bahama Bag Co. Scent Pouch acquired secondary meaning.
32. Like the Bahama Bag Co. Scent Pouch, the Infringing Scent Pouch air fresheners
are burlap-style sacks that use a natural hemp-type hanging cord or string.
33. Upon information and belief, Defendants are in direct competition with American
Covers and Defendants products are identical to American Covers product. Defendants and
American Covers products are marketed through identical channels of trade and to identical
consumers.
34. In view of the above, it is clear that Defendants use of its confusingly similar
product design is likely to cause confusion, or to cause mistake, or to deceive consumers as to
the affiliation, connection, or association of Defendants with American Covers in the
marketplace.
8/13/2019 American Covers v. OK/USA Distribution et. al.
10/26
10
35. Upon information and belief, Defendant GLOBAL has purposefully copied
American Covers Bahama Bag Co. Scent Pouch configuration and design to unlawfully benefit
from American Covers distinctiveness and goodwill in the marketplace.
36. American Covers has been, and continues to be, significantly damaged by
Defendants actions. So long as Defendants continue performing the unlawful and improper
actions described in this complaint, American Covers will continue to suffer irreparable harm
that will not be fully compensable by money damages.
FIRST CAUSE OF ACTION
(PATENT INFRINGEMENT OF THE 037 PATENT UNDER 35 U.S.C. 271)
37. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
38. American Covers owns the 037 Patent.
39. The Defendants make, use, sell, offer for sale, and/or import into the United
States a product that infringes the 037 Patent literally as well as under the doctrine of
equivalents.
40. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Vent Stick Products.
41. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
harm to American Covers arising from these acts by Defendants is not fully compensable by
money damages. American Covers has suffered and continues to suffer irreparable harm that has
8/13/2019 American Covers v. OK/USA Distribution et. al.
11/26
11
no adequate remedy at law and that will continue unless this infringing conduct by Defendants is
preliminarily and permanently enjoined.
42. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have 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.
SECOND CAUSE OF ACTION
(CONTRIBUTORYPATENT INFRINGEMENT OF THE 037 PATENT UNDER 35 U.S.C. 271)
43. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
44. American Covers owns the 037 Patent.
45. Upon information and belief, Defendants make, use, sell, offer for sale, and/or
import into the United States a product that is material to practicing claims of the 037 Patent.
46. Upon information and belief, the Infringing Vent Stick Product marketed and sold
by the Defendants has no substantial non-infringing uses.
47. Moreover, upon information and belief, the Infringing Vent Stick Product is
known by Defendants to be especially made or especially adapted for use in an infringement of
the 037 Patent.
48. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Vent Stick Products.
8/13/2019 American Covers v. OK/USA Distribution et. al.
12/26
12
49. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
harm to American Covers arising from these acts by Defendants 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 Defendants is
preliminarily and permanently enjoined.
50. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have 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.
THIRD CAUSE OF ACTION
(INDUCEDPATENT INFRINGEMENT OF THE 037 PATENT UNDER 35 U.S.C. 271)
51. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
52. American Covers owns the 037 Patent.
53. Upon information and belief, Defendants actively induce their customers to make
use of the Infringing Vent Stick Products in a manner that infringes the 037 Patent.
54. Upon information and belief, Defendants possessed specific intent to encourage
their customers to make use of the Infringing Vent Stick Product in a manner that the Defendants
knew, or should have known, would infringe the 037 Patent.
8/13/2019 American Covers v. OK/USA Distribution et. al.
13/26
8/13/2019 American Covers v. OK/USA Distribution et. al.
14/26
14
61. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Vent Stick Products.
62. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
harm to American Covers arising from these acts by Defendants 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 Defendants is
preliminarily and permanently enjoined.
63. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have engaged in willful infringement of the 761
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.
FIFTH CAUSE OF ACTION
(CONTRIBUTORYPATENT INFRINGEMENT OF THE 761 PATENT UNDER 35 U.S.C. 271)
64. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
65. American Covers owns the 761 Patent.
66. Upon information and belief, the Defendants make, use, sell, offer for sale, and/or
import into the United States a product that is material to practicing claims of 761 Patent.
8/13/2019 American Covers v. OK/USA Distribution et. al.
15/26
15
67. Upon information and belief, the Infringing Vent Stick Products marketed and
sold by the Defendants have no substantial non-infringing uses.
68. Moreover, upon information and belief, the Infringing Vent Stick Products are
known by Defendants to be especially made or especially adapted for use in an infringement of
the 761 Patent.
69. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Vent Stick Products.
70. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
harm to American Covers arising from these acts by Defendants 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 Defendants is
preliminarily and permanently enjoined.
71. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have engaged in willful infringement of the 761
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.
SIXTH CAUSE OF ACTION
(INDUCEDPATENT INFRINGEMENT OF THE 761 PATENT UNDER 35 U.S.C. 271)
8/13/2019 American Covers v. OK/USA Distribution et. al.
16/26
16
72. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
73. American Covers owns the 761 Patent.
74. Upon information and belief, Defendants actively induce their customers to make
use of the Infringing Vent Stick Products in a manner that infringes the 761 Patent.
75. Upon information and belief, Defendants possessed specific intent to encourage
their customers to make use of the Infringing Vent Stick Products in a manner that the
Defendants knew, or should have known, would infringe the 761 Patent.
76. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Vent Stick Products.
77. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
harm to American Covers arising from these acts by Defendants 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 Defendants is
preliminarily and permanently enjoined.
78. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have engaged in willful infringement of the 761
8/13/2019 American Covers v. OK/USA Distribution et. al.
17/26
17
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.
SEVENTH CAUSE OF ACTION
(PATENT INFRINGEMENT OF THE 960 PATENT UNDER 35 U.S.C. 271)
79. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
80. American Covers owns the 960 Patent.
81. The Defendants make, use, sell, offer for sale, and/or import into the United
States a product that infringes the 960 Patent literally as well as under the doctrine of
equivalents.
82. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Vent Stick Products.
83. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
harm to American Covers arising from these acts by Defendants 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 Defendants is
preliminarily and permanently enjoined.
84. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have engaged in willful infringement of the 960
8/13/2019 American Covers v. OK/USA Distribution et. al.
18/26
18
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.
EIGHTH CAUSE OF ACTION(CONTRIBUTORYPATENT INFRINGEMENT OF THE 960 PATENT UNDER 35 U.S.C. 271)
85. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
86. American Covers owns the 960 Patent.
87. Upon information and belief, the Defendants make, use, sell, offer for sale, and/or
import into the United States a product that is material to practicing claims of 960 Patent.
88. Upon information and belief, the Infringing Vent Stick Products marketed and
sold by the Defendants have no substantial non-infringing uses.
89. Moreover, upon information and belief, the Infringing Vent Stick Products are
known by Defendants to be especially made or especially adapted for use in an infringement of
the 960 Patent.
90. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Vent Stick Products.
91. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
harm to American Covers arising from these acts by Defendants is not fully compensable by
money damages. American Covers has suffered and continues to suffer irreparable harm that has
8/13/2019 American Covers v. OK/USA Distribution et. al.
19/26
19
no adequate remedy at law and that will continue unless this infringing conduct by Defendants is
preliminarily and permanently enjoined.
92. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have engaged in willful infringement of the 960
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.
NINTH CAUSE OF ACTION(INDUCEDPATENT INFRINGEMENT OF THE 960 PATENT UNDER 35 U.S.C. 271)
93. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
94. American Covers owns the 960 Patent.
95. Upon information and belief, Defendants actively induce their customers to make
use of the Infringing Vent Stick Products in a manner that infringes the 960 Patent.
96. Upon information and belief, Defendants possessed specific intent to encourage
their customers to make use of the Infringing Vent Stick Products in a manner that the
Defendants knew, or should have known, would infringe the 960 Patent.
97. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Vent Stick Products.
98. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
8/13/2019 American Covers v. OK/USA Distribution et. al.
20/26
20
harm to American Covers arising from these acts by Defendants 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 Defendants is
preliminarily and permanently enjoined.
99. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have engaged in willful infringement of the 960
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.
TENTH CAUSE OF ACTION
(PATENT INFRINGEMENT OF THE 246 PATENT UNDER 35 U.S.C. 271)
100. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
101. American Covers owns the 246 Patent.
102. The Defendants make, use, sell, offer for sale, and/or import into the United
States a product that infringes the 246 Patent, literally as well as under the doctrine of
equivalents.
103. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Dual Scent Air Diffuser Products.
104. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284 and 289.
8/13/2019 American Covers v. OK/USA Distribution et. al.
21/26
21
Additionally, the harm to American Covers arising from these acts by Defendants 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 Defendants is preliminarily and permanently enjoined.
105. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have engaged in willful infringement of the 246
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 as
well as any other damages available to American Covers pursuant to 35 U.S.C. 289.
ELEVENTH CAUSE OF ACTION
(CONTRIBUTORYPATENT INFRINGEMENT OF THE 246 PATENT UNDER 35 U.S.C. 271)
106. American Covers hereby incorporates by reference each and every preceding
allegation of this complaint as if set forth fully herein.
107. American Covers owns the 246 Patent.
108. Upon information and belief, the Defendants make, use, sell, offer for sale, and/or
import into the United States a product that is material to practicing claims of 246 Patent.
109. Upon information and belief, the Infringing Dual Scent Air Diffuser Products
marketed and sold by the Defendants have no substantial non-infringing uses.
110. Moreover, upon information and belief, the Infringing Dual Scent Air Diffuser
Products are known by Defendants to be especially made or especially adapted for use in an
infringement of the 246 Patent.
8/13/2019 American Covers v. OK/USA Distribution et. al.
22/26
22
111. At no time has American Covers granted the Defendants permission, license, or
authorization to market or sell the Infringing Dual Scent Air Diffuser Product.
112. Upon information and belief, the Defendants infringing activities have damaged
American Covers in an amount to be 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 Defendants infringing activities under 35 U.S.C. 284. Additionally, the
harm to American Covers arising from these acts by Defendants 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 Defendants is
preliminarily and permanently enjoined.
113. Upon information and belief, Defendants acted in an objectively reckless manner
with respect to American Covers patent rights. Upon information and belief, Defendants knew,
or should have known, that their actions were highly likely to result in the infringement of a valid
patent. As a consequence, the Defendants have engaged in willful infringement of the 246
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 as
well as any other damages available to American Covers pursuant to 35 U.S.C. 289.
TWELFTH CAUSE OF ACTION
(TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION,
15 U.S.C. 1125AND COMMON LAW)
114. American Covers hereby incorporates by this reference each and every preceding
allegation as if set forth fully herein.
115. American Covers has used the trademark and trade dress design features
associated with its Bahama Bag Scent Pouch since at least as early as December 15, 2006. Said
8/13/2019 American Covers v. OK/USA Distribution et. al.
23/26
23
trademark and trade dress are indicative of its air fresheners, are inherently distinctive, and have
acquired secondary meaning with the consuming public.
116. Defendants have used design features in connection with its Infringing Scent
Pouch line of air freshener products that are likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, association, origin, sponsorship, or approval of its goods
and commercial activities in light of American Covers trademark and trade dress.
117. By engaging in these activities, Defendants have engaged in trademark
infringement and unfair competition under 15 U.S.C. 1125(a)(1)(A) and under the common
law.
118. American Covers has suffered actual damages as a result of Defendants
trademark infringement and unfair competition in an amount to be proven at trial. Additionally,
the harm to American Covers arising from Defendants acts 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 Defendants conduct is preliminarily and
permanently enjoined.
119. Defendants continued use of a confusingly similar trademark and trade dress is
willful and intentional. As a result, American Covers is further entitled to treble damages and an
award of costs and attorneys fees.
THIRTEENTH CAUSE OF ACTION
(UNFAIR COMPETITION, UTAH CODE ANN. 13-5A-102, 103AND/OR 13-5-14AND
UTAH COMMON LAW)
120. American Covers hereby incorporates by this reference each and every preceding
allegation as if set forth fully herein.
121. American Covers owns the Vent Stick Patents, the 246 Patent, and common law
rights associated with the Scent Pouch Trade Dress.
122. Defendants make, use, sell, offer for sale, and/or import into the United States a
product that infringes the Vent Stick Patents and/or the 246 Patent.
8/13/2019 American Covers v. OK/USA Distribution et. al.
24/26
24
123. The Defendants have engaged in unfair methods of competition by infringing the
Vent Stick Patents and the 246 Patent either directly, indirectly, under the doctrine of
equivalents, contributorily, or induced infringement.
124. Defendants also make, use, sell, offer for sale, and/or import into the United
States a product that infringes American Covers Scent Pouch Trade Dress and have engaged in
unfair methods as a result.
125. Upon information and belief, American Covers has been injured by the
Defendants infringing acts and unfair competition.
126. By engaging in the above-described activities, the Defendants have engaged in
unfair competition under Utah Code Ann. 13-5a-102, 103 and/or 13-5-14 and under Utah
common law.
127. American Covers has suffered actual damages as a result of unfair business
practices by the Defendants in an amount to be proven at trial. Additionally, the harm to
American Covers arising from these acts by Defendants 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 the Defendants is
preliminarily and permanently enjoined. Furthermore, American Covers is entitled to its
attorneys fees and costs.
FOURTEENTH CAUSE OF ACTION
(UNJUST ENRICHMENT UNDER UTAH COMMON LAW)
128. American Covers hereby incorporates by this reference each and every preceding
allegation as if set forth fully herein.
129. The Defendants have benefited from the improper, unfair, and unauthorized use
of the Vent Stick Patents, the 246 Patent, and the Scent Pouch Trade Dress as alleged herein.
8/13/2019 American Covers v. OK/USA Distribution et. al.
25/26
25
130. The Defendants knew, or should have known, that its actions were improper and
fully appreciated the benefits received as a result of its improper actions.
131. The Defendants would be unjustly enriched if it were permitted to retain the
benefits obtained from such actions.
132. Equity and good conscience require that Defendants be required to account for
and pay to 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
Plaintiff as follows:
A. That the Court enter judgment that the Defendants have infringed the Vent Stick
Patents literally and under the doctrine of equivalents.
B. That the Court enter judgment that Defendants are liable to American Covers for
contributory infringement of the Vent Stick Patents.
C. That the Court enter judgment that Defendants are liable to American Covers for
inducement to infringe the Vent Stick Patents.
D. That the Court enter judgment that the Defendants have infringed the 246 Patent
literally and under the doctrine of equivalents.
E. That the Court enter judgment that Defendants are liable to American Covers for
contributory infringement of the Dual Scent Air Diffuser Products.
F. That the Court enter judgment that the Defendants have competed unfairly
pursuant to 15 U.S.C. 1125 and infringed American Covers common law trademark and trade
dress.
G. That the Court enter judgment that the Defendants have competed unfairly
pursuant to Utah Code. Ann. 13-5a-102 and 13-5-14 and Utah common law.
H. That the Court enter judgment that the Defendants have been unjustly enriched
through its misconduct.
8/13/2019 American Covers v. OK/USA Distribution et. al.
26/26
26
I. That the Defendants be ordered to pay damages to American Covers, together
with interest, in an amount to be determined by this Court including, but without limitation, those
set forth in 35 U.S.C. 289.
J. That the Court award American Covers treble damages pursuant to 35 U.S.C.
284.
K. That the Court award American Covers costs and attorneys fees related to this
action.
L. That the Court levy punitive damages against the Defendants.
M. That the Court award American Covers prejudgment interest.
N. That American Covers have such other and further relief as shall seem just and
proper to the Court.
O. That the Court grant preliminary and permanent injunctive relief enjoining the
Defendants, their officers, directors, principals, agents, servants, employees, successors and
assigns, and all other aiding, abetting, or acting in concert or active participation therewith, from
directly or indirectly infringing the Vent Stick Patents, the 246 Patent, or the Scent Pouch Trade
Dress including with limitation, precluding the Defendants from making, using, selling, offering
for sale, or importing into the United States the Infringing Vent Stick Products, the Infringing
Air Diffuser Product, and/or the Infringing Scent Pouch.
DATED: December 13, 2013 THORPE NORTH & WESTERN, LLP
/Jed H. Hansen/
Peter M. de Jonge
Jed H. HansenEric E. Westerberg
Attorneys for American Covers, Inc.
Top Related