throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA944847
`01/02/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`Applicants
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Valley Tool & Die, Inc.
`
`Application Serial Number
`
`Application Filing Date
`
`Mark
`
`Date of Publication
`
`Extension Granted to
`
`Extension Granted Until
`
`Attachments
`
`Potential Opposer's
`Correspondence Information
`
`88054325
`
`07/26/2018
`
`VALCO
`
`12/04/2018
`
`Fastenal IP Company
`
`04/03/2019
`
`2019 01 02 Response.PDF(2423790 bytes )
`
`Andrew S. Ehard
`Merchant & Gould P.C.
`P.O. BOX 2903
`MINNEAPOLIS, MN 55402
`UNITED STATES
`dockmpls@merchantgould.com, ae-
`hard@merchantgould.com, cmanth-
`ie@merchantgould.com
`6123325300
`
`Response to Board Inquiry or Order
`
`Potential Opposer, Fastenal IP Company, files the attached response to an order or inquiry of the Board.
`The undersigned represents that this submission is being made by Potential Opposer or someone authorized
`to represent Potential Opposer before the United States Patent and Trademark Office, and with Potential Op-
`poser's consent.
`Respectfully submitted,
`/Andrew S. Ehard/
`Andrew S. Ehard
`aehard@merchantgould.com, cmanthie@merchantgould.com
`01/02/2019
`
`

`

`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`
`To the Commissioner for Trademarks:
`
`Applicant: Valley Tool & Die, Inc.
`Mark: VALCO
`Appln. Serial No.: 88054325
`Appln. Filing Date: 07/26/2018
`Publication Date: December 4, 2018
`
`Potential Opposer: Fastenal IP Company
`ESTTA TRACKING NO: ESTTA939630
`
`
`
`FASTENAL IP COMPANY’S RESPONSE TO VALLEY TOOL & DIE, INC.’S
`PETITION TO THE DIRECTOR
`
`Pursuant to 37 C.F.R. 2.146(e), Fastenal IP Company (“Potential Opposer”) has
`
`until and including 1/7/2019 to timely file this Response to Valley Tool & Die, Inc.’s
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`(“Applicant’s”) Petition to the Director (“Petition”). The Director should deny the
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`Petition because “good cause” exists for at least three separate reasons: (1) Applicant
`
`admits that it has asserted its alleged trademark rights against Potential Opposer in civil
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`litigation, including requesting a preliminary injunction; (2) Applicant’s earlier
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`registration of VALCO was canceled and Applicant only filed this second application
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`after Potential Opposer’s alleged use of the mark; and (3) the “good-cause” rule does not
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`limit the need to confer with counsel to conferring with opposing counsel.
`
`Statement of Facts.
`
`I.
`
`
`Applicant first applied for registration of VALCO for “metal snap fasteners” on
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`July 12, 1976, Serial Number 73093010. Applicant alleged a first use date of February 1,
`
`1975 and first use in commerce date of April 10, 1975. Applicant’s mark was registered
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`on the Principal Register on April 19, 1976 as Registration Number 1063723. (Ex. A.)
`
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`1
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`

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`However, Applicant did not file an affidavit of use in commerce of VALCO as
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`required by 15 U.S.C. § 1058 (Section 8). The UPSTO canceled Applicant’s Registration
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`Number 1063723 on September 13, 1983. (Ex. B.)
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`Applicant’s Complaint against Potential Opposer alleges that Potential Opposer
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`used VALCO on metal snap fasteners on or before May 2018. (Ex. C at ¶¶31-32.) After
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`becoming aware of Potential Opposer’s alleged use, on July 26, 2018, Applicant filed a
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`second application for registration of VALCO, Serial Number 88054325, for use in
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`connection with “spring steel fasteners.” This time Applicant alleged a first use of
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`December 31, 1975. (Ex. D.)
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`Despite an ongoing business relationship with Applicant, Potential Opposer first
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`learned of this dispute when it was served with the Complaint and Motion for Preliminary
`
`Injunction on November 21, 2018. (Ex. E.) Potential Opposer retained the undersigned
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`counsel to investigate the claim. Potential Opposer, through counsel, contacted
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`Applicant’s counsel to discuss settlement of this dispute. No settlement has been reached
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`but discussions are ongoing.
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`On December 4, 2018, Applicant’s registration was published. On December 6,
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`2018, Potential Opposer filed a request for a 90-day extension of time to file an
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`opposition, which was granted. In its request, Potential Opposer explained that it needed
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`additional time to confer with counsel. (Ex. F.)
`
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`2
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`

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`Points to Be Reviewed.
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`II.
`
`
`Applicant filed this Petition asking the Director to deny Potential Opposer’s 90-
`
`day extension alleging that “good cause has not been shown.” Applicant is wrong and its
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`Petition should be denied.
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`A showing of good cause for an extension of time to oppose over thirty days must
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`set forth the reasons why additional time is needed for filing an opposition.
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`Circumstances that may constitute good cause include the potential opposer’s need to
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`investigate the claim, the potential opposer’s need to confer with or obtain counsel,
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`applicant’s consent to the extension, settlement negotiations between the parties, the
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`filing of a letter of protest by the potential opposer, an amendment of the subject
`
`application, the filing of a petition to the Director from the grant or denial of a previous
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`extension, and civil litigation between the parties. The merits of the potential opposition
`
`are not relevant to the issue of whether good cause exists for the requested extension. See
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`TBMP § 207.02 (emphasis added). Applicant’s Petition should be denied for at least
`
`three reasons because good cause exists:
`
`First, Applicant admits that there is civil litigation between the parties, which
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`alone is sufficient good cause for the 90-day extension. If Potential Opposer had filed the
`
`opposition, it would have been stayed pending the outcome of the litigation.
`
` Second, Applicant only filed its second application to register VALCO after it
`
`learned of Potential Opposer’s alleged use. Applicant’s second application to register
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`VALCO includes a different period of use than its first application, but the second
`
`application still alleges use during the period Applicant failed to submit evidence of use
`
`
`
`3
`
`

`

`supporting its first registration, i.e., 1983. Potential Opposer should be allowed at least
`
`90-days to investigate Applicant’s claims of use.
`
`Third, as Potential Opposer stated in its request for the 90-day extension, it needs
`
`to confer with counsel – its counsel. As described above, Applicant’s second registration,
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`coming after Potential Opposer’s alleged use of VALCO and long after Applicant failed
`
`to prove use to support its first registration and accompanied by civil litigation, including
`
`a request for preliminary injunction, supports a 90-day extension for Potential Opposer to
`
`confer with its counsel of record.
`
`Applicant incorrectly argues that good cause to confer with counsel means
`
`conferring with opposing counsel. (Petition at 3.) Applicant provides no authority that
`
`supports such a narrow reading of the good-cause rule and such a reading does not make
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`sense. The “need to confer with or obtain counsel” is broad enough to include the need to
`
`confer with Potential Opposer’s own counsel, which under the circumstances described
`
`above amply supports 90-days.
`
`III. Action Requested.
`
`
`The Director should deny Applicant’s Petition because sufficient good cause
`
`existed to support the 90-day extension granted to Potential Opposer.
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`Respectfully Submitted,
`/s/Andrew S. Ehard
`Andrew S. Ehard
`Merchant & Gould P.C.
`80 S. 8th Street, Suite 3200
`Minneapolis, MN 55402
`Email: aehard@merchantgould.com
`Phone: 612.332.5300
`Attorney for Fastenal IP Company
`
`4
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing FASTENAL IP
`COMPANY’S RESPONSE TO VALLEY TOOL & DIE, INC.’S PETITON TO THE
`DIRECTOR has been served on Applicant’s representative listed, by forwarding said
`copy on January 2, 2019, via email and via first class certified mail, postage prepaid,
`addressed as shown to:
`
`Rita E. Kline
`Tarolli, Sundheim. Covell & Tummino LLP
`1300 East 9th Street, Suite 1700
`Cleveland, OH 44114
`Email: ritakline@tarolli.com
`
`Respectfully Submitted,
`/s/Andrew S. Ehard
`Andrew S. Ehard
`Merchant & Gould P.C.
`80 S. 8th Street, Suite 3200
`Minneapolis, MN 55402
`Email: aehard@merchantgould.com
`Phone: 612.332.5300
`Attorney for Fastenal IP Company
`
`

`

`
`
`Exhibit A
`Exhibit A
`
`

`

`Int. CL: 6
`
`Prior U.S. CL: 13
`Reg. No. 1,063,723
`.
`
`Umted States Patent Office Registered Apr. 19, 1977
`
`TRADEMARK
`
`Principal Register
`
`VALCO
`
`Valley Tool & Die, Inc. (Ohio corporation)
`9801 Walford Ave.
`Cleveland, Ohio
`44111
`
`For: METAL SNAP FASTENERS, in CLASS 6 (U.S.
`CL. 13)‘
`First use Feb. 1, 1975; in commerce Apr. 10, 1975.
`
`Ser. No. 93,010, filed July 12, 1976.
`
`

`

`
`
`Exhibit B
`Exhibit B
`
`

`

`Generated on: This page was generated by TSDR on 2018-12-28 08:50:40 EST
`
`Mark: VALCO
`
`US Serial Number: 73093010
`
`US Registration
`Number:
`
`1063723
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Jul. 12, 1976
`
`Registration Date: Apr. 19, 1977
`
`DEAD/REGISTRATION/Cancelled/Invalidated
`
`The trademark application was registered, but subsequently it was cancelled
`or invalidated and removed from the registry.
`
`Status: Registration cancelled because registrant did not file an acceptable declaration under Section 8. To view all documents in this file, click
`on the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Sep. 13, 1983
`
`Date Cancelled: Sep. 13, 1983
`
` 
`
`Mark Literal
`Elements:
`
`VALCO
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: METAL SNAP FASTENERS
`
`International
`Class(es):
`
`006 - Primary Class
`
`Class Status: SECTION 8 - CANCELLED
`
`Basis: 1(a)
`
`First Use: Feb. 01, 1975
`
`U.S Class(es): 013
`
`Use in Commerce: Apr. 10, 1975
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`

`

`Filed No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: VALLEY TOOL & DIE, INC.
`
`Owner Address: 9801 WALFORD AVE.
`CLEVELAND, OHIO UNITED STATES 44111
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`OHIO
`
`Attorney/Correspondence Information
`
`Attorney of Record - None
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Correspondent
`Name/Address:
`
`?
`
`Date
`
`Description
`
`Sep. 13, 1983
`
`CANCELLED SEC. 8 (6-YR)
`
`Sep. 13, 1983
`
`CANCELLED SEC. 8 (6-YR)
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: FILE DESTROYED
`
`Date in Location: Mar. 12, 1994
`
`Proceeding
`Number
`
`

`

`
`
`Exhibit C
`Exhibit C
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 1 of 17. PagelD #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`VALLEY TOOL & DIE, INC.,
`DBA VALCO/VALLEY TOOL
`& DIE, INC.,
`10020 York-Theta Dr.
`North Royalton, OH 44113
`
`Plaintiff,
`
`v.
`
`FASTENAL COMPANY,
`2001 Theurer Boulevard
`Winona, MN 55987
`
`Defendant.
`
`)
`)
`)
`)
`)
`
`)
`)
`)
`)
`)
`)
`)
`
`CASE NO.:
`
`JUDGE:
`
`VERIFIED COMPLAINT FOR
`PRELIMINARY INJUNCTIVE RELIEF
`AND MONETARY DAMAGES
`(Jury Demand Endorsed Hereon)
`
`Plaintiff Valley Tool & Die, Inc. dba Valco/Valley Tool & Die, Inc. ("Valley
`
`Toor), files this Verified Complaint for injunctive relief and monetary damages against
`
`Defendant Fastenal Company ("Fastenar or "Defendant").
`
`In support of its Complaint,
`
`Valley Tool hereby alleges as follows:
`
`1.
`
`This is an action for violations of Lanham Act, 15 U.S.C. § 1125(a), unfair
`
`competition, false designation, and false advertising; Ohio Deceptive Trade Practices
`
`Act, ORC § 4165.02; unfair competition under Ohio common law; unjust enrichment;
`
`tortious interference with prospective business relationship under Ohio common law;
`
`and for injunctive relief under 15 U.S.C. § 1116, ORC § 4165.02, and Ohio common law.
`
`Defendant has produced— and/or caused to be produced—and sold counterfeit
`
`fastener parts designed and marketed for many years by Valley Tool. The fasteners are
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 2 of 17. PagelD #: 2
`
`a foundation of Valley Tool's business and its reputation. As a result, Valley Tool has
`
`suffered a loss of business, as well as potential reputational damage, due to the sale of
`
`inferior fasteners falsely marked by Defendant as Valley Tool products.
`
`PARTIES
`
`2.
`
`Plaintiff Valley Tool is a corporation organized under the laws of the State
`
`of Ohio, having its principal place of business at the address listed in the caption of the
`
`Complaint.
`
`3.
`
`Defendant Fastenal Company ("Fastenal") has its principal place of
`
`business at the address listed in the caption of the Complaint. According to its website,
`
`Fastenal provides companies with the fasteners, tools, and supplies they need to
`
`manufacture products, build structures, protect personnel, and maintain facilities and
`
`equipment.
`
`JURISDICTION AND VENUE
`
`4.
`
`This Court has subject matter jurisdiction over this case pursuant to 28
`
`U.S.C. § 1331, in that Valley Tool is alleging federal law claims arising under the
`
`Lanham Act, 15 U.S.C. § 1125(a).
`
`5.
`
`This Court has supplemental jurisdiction over the state law claims alleged
`
`herein pursuant to 28 U.S.C. § 1367.
`
`6.
`
`Venue is properly placed in the United States District Court for the
`
`Northern District of Ohio, Eastern Division, because it is the Court for the district,
`
`2
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 3 of 17. PagelD #: 3
`
`division, and county within which a substantial part of the events giving rise to this
`
`Complaint occurred.
`
`7.
`
`This Court is a court of general jurisdiction over all the subject matters of
`
`this Complaint and the claims presented herein.
`
`FACTUAL BACKGROUND
`
`8.
`
`Valley Tool was formed as an Ohio corporation in 1968. Valley Tool
`
`manufactures a variety of metal parts, including but not limited to the snap button for
`
`telescoping tubing, which has more than 1,000 variations, as well as lock pins,
`
`stampings, cord clips, screws, weld nuts, sign hangers, etc. with a stamping capacity for
`
`any metal up to 200 tons.
`
`9.
`
`10.
`
`Valley Tool employs approximately 50 people.
`
`"Valco" is a trademark of Valley Tool. Valco was first registered in 1977,
`
`and Registration No. 1063723 was issued by the United States Patent and Trademark
`
`Office to Valley Tool. The federal registration was cancelled on September 13, 1983 due
`
`to failure to file a declaration of continued use. But Valley Tool has continued to use the
`
`mark in commerce without interruption from 1975 until the present. The Valco mark is
`
`a distinctive mark. Alternatively, the Valco mark has achieved incontestable status.
`
`Valley Tool re-filed for federal registration on July 26, 2018 and was issued Serial
`
`Number 88054325. Furthermore, Valley Tool possesses superior common law rights to
`
`the Valco mark.
`
`3
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 4 of 17. PagelD #: 4
`
`11.
`
`Valley Tool created the Valco snap buttons. The Valco snap button is a
`
`fastener for telescoping tubing typically made from spring steel.
`
`12.
`
`Between 1974 and 1975, Valley Tool developed the Valco snap button A-
`
`140 (Valco A-140" or "A-140"). Valley Tool invested significant resources in
`
`developing and advertising the Valco A-140.
`
`13.
`
`The A-140 is fabricated from steel that is bent into a v-shape, with a
`
`hollow button protruding on one side. The steel is flexible, allowing the part to
`
`compress and expand the button through holes in inner and outer tubular sleeve parts,
`
`thus easily and securely joining the two parts.
`
`14.
`
`The hollow button design sets the A-140 apart. Rather than affixing a
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`button to the part, Valley Tool designed a one-punch manufacturing method, whereby
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`the button is formed by shaping the part before bending. The result is a stronger part,
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`as well as a more efficient production process
`
`15. With more than 1,000 variations, the Valco snap buttons are used in a
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`wide variety of products and industries around the world. The Valco snap buttons are
`
`found in goods ranging from home and health care products to applications in the
`
`sporting goods and construction industries.
`
`16.
`
`Valley Tool has spent millions of dollars in developing the Valco snap
`
`buttons product line.
`
`17.
`
`The Valco A-140 was first placed in the stream of commerce by Valley
`
`Tool in 1975.
`
`4
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 5 of 17. PagelD #: 5
`
`18.
`
`Valley Tool's customers rely on Valley Tool's experience and expertise
`
`when they order the Valco snap buttons, including the A-140. Valley Tool's customers
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`associate the Valco product line with safety and reliability.
`
`19.
`
`In May 2018, Valley Tool discovered a counterfeited Valco A-140 in a
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`number of items, including pressure washers sold by FNA Group, Inc. ("FNA")
`
`20.
`
`Specifically, FNA produces the Simpson Megashot MS60921 power
`
`washer (the "Simpson"), which utilizes the A-140 fastener.
`
`21.
`
`A Valley Tool employee purchased the Simpson in Northeast Ohio, and
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`discovered that the A-140 placed in the Simpson was a counterfeit.
`
`22.
`
`Valley Tool has learned that the counterfeited Valco A-140 was sold to
`
`FNA by Fastenal.
`
`23.
`
`The counterfeited Valco A-140 sold by Fastenal is marked with an imprint
`
`reading "Valco A-140 Cleve. O.
`
`See attached Exhibit A.
`
`24.
`
`The authentic Valco A-140 sold by Valley Tool bears the Valco mark and is
`
`imprinted as follows: "Valco A-140 Cleve. OH". See attached Exhibit B.
`
`25.
`
`Fastenal purchased A-140 fasteners from Valley Tool as recently as April
`
`21, 2015.
`
`26.
`
`In or around October 7, 2015, Josh Hewitt ("Hewite) of Fastenal requested
`
`and obtained the A-140 Part Print, referenced herein as the "A-140 Part Prints," that
`
`enable it to manufacture — or engage others to manufacture— the A-140. The A-140 Part
`
`5
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 6 of 17. PagelD #: 6
`
`Prints set forth in detail the dimensions of the part, the material, heat treatment, finish,
`
`and tolerance of the machining.
`
`27.
`
`Valley Tool provided the A-140 Part Print to Fastenal because Fastenal
`
`had purchased fasteners in the past, and Valco understood that Hewitt was seeking the
`
`A-140 Part Print in order to confirm or match specifications with a Fastenal customer.
`
`28.
`
`Valley Tool has examined the counterfeit A-140, and determined that it
`
`largely mirrors the authentic A-140 with respect to design and construction.
`
`29.
`
`After Fastenal obtained the part prints for the A-140, its orders to Valley
`
`Tool declined precipitously.
`
`30.
`
`Upon information and belief, Fastenal sold the counterfeit A-140 to FNA,
`
`and FNA used the counterfeit part in equipment being sold by retailers such as Tractor
`
`Supply Company, M&D, Lowe's, and The Home Depot in Northeast Ohio.
`
`31.
`
`On May 18, 2018, Valley Tool contacted FNA regarding the use of the
`
`counterfeited Valco snap buttons in its equipment.
`
`32.
`
`After reviewing its records, FNA determined that it acquired the
`
`counterfeited Valco A-140 from Fastenal.
`
`33.
`
`The use of counterfeited Valco A-140 in equipment may pose risk of injury
`
`to end users and the public in general. The counterfeited Valco A-140 fasteners may be
`
`more susceptible to breakage, as they may be manufactured with lower grade materials
`
`than the Valco A-140, and are likely fabricated with different processes.
`
`6
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 7 of 17. PagelD #: 7
`
`34.
`
`Upon information and belief, Fastenal may be producing the counterfeit
`
`A-140 in domestic plants, and is also importing the A-140 from Chinese and/or
`
`Taiwanese manufacturers that have used Valley TooYs specifications to fabricate
`
`counterfeit parts.
`
`35.
`
`The sale and use of the counterfeited A-140 by Fastenal has caused and
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`continues to cause substantial financial detriment to Valley Tool. By example, Valley
`
`Tool estimates that it lost $250,000 or more in sales of the A-140 between April, 2016 and
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`April, 2017. Valley Tool also suffered losses before April, 2016, and after April, 2017.
`
`36.
`
`Upon information and belief, Fastenal continues to sell counterfeited
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`Valco A-140 fasteners.
`
`COUNT I
`(Violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125(a),
`Unfair Competition, False Designation, False Advertising)
`
`37.
`
`Valley Tool incorporates by reference the foregoing paragraphs as if fully
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`re-written herein.
`
`38.
`
`Fastenal's use of the counterfeited Valco mark in commerce as an
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`authentic Valco mark constitutes false designation of origin, false or misleading
`
`description or representations likely to cause confusion, mistake, deceit as to affiliation,
`
`connection or association of Defendants with Valley Tool, in violation of Section 43 of
`
`the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).
`
`39.
`
`Fastenal's false designations of origin or false or misleading descriptions
`
`or representations have also caused confusion, mistake, and/or deceit as to the origin,
`
`7
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 8 of 17. PagelD #: 8
`
`sponsorship, or approval of the snap buttons by Valley Tool, in violation of Section 43
`
`of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).
`
`40.
`
`Fastenal's misrepresentation of the nature, qualities, and/or origin of the
`
`snap buttons, constitute false or misleading description of fact, in violation of Section 43
`
`of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B).
`
`41.
`
`Fastenal's violations of Section 43 of the Lanham Act, 15 U.S.C. § 1125(a)
`
`as described herein have been willful and either have deceived, or are likely to deceive,
`
`the intended audience of Valley Tool's Valco snap buttons.
`
`42.
`
`Fastenal's violations of Section 43 of the Lanham Act, 15 U.S.C. § 1125(a)
`
`as described herein have caused and continue to cause financial detriment and
`
`reputational detriment to Valley Tool.
`
`43.
`
`Valley Tool has been and will continue to be injured as a result of
`
`Fastenal's violations of Section 43 of the Lanham Act, 15 U.S.C. § 1125(a) through
`
`declining sales, revenue, and/or profit for the Valco fastener product line, as well as
`
`other Valco products.
`
`44.
`
`Fastenal has caused and will continue to cause substantial and irreparable
`
`harm to the public and Valley Tool for which there is no adequate remedy at law. Also,
`
`Fastenal has unjustly benefited from its unlawful acts and will continue to carry out
`
`such unlawful acts unless enjoined by this Court.
`
`8
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 9 of 17. PagelD #: 9
`
`COUNT II
`(Ohio Deceptive Trade Practices Act)
`
`45.
`
`Valley Tool incorporates by reference the foregoing paragraphs as if fully
`
`re-written herein.
`
`46.
`
`Fastenal's foregoing activities as described herein constitute unfair or
`
`deceptive trade practices or acts in violation of Ohio Revised Code §§ 4165.02(A)(1), (2),
`
`(3), (4), (7), (9).
`
`47.
`
`Fastenal has passed off the counterfeited Valco fasteners as genuine Valco
`
`parts.
`
`48.
`
`Fastenal's foregoing activities as described herein have created confusion
`
`or have the likelihood of creating confusion or misunderstanding as to the source,
`
`sponsorship, approval, or certification of the snap buttons.
`
`49.
`
`Fastenars foregoing activities as described herein have created confusion
`
`or have the likelihood of creating confusion or misunderstanding as to affiliation,
`
`connection, association with, or certification by, Valley Tool.
`
`50.
`
`Fastenal's foregoing activities as described herein constitute deceptive
`
`representations or designation of origin of the A-140 fasteners.
`
`51.
`
`Fastenal has falsely represented and continues to falsely represent to the
`
`buying public that the counterfeited fasteners have the sponsorship, approval,
`
`characteristics, or benefits of a genuine Valco A-140.
`
`9
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 10 of 17. PagelD #: 10
`
`52.
`
`Fastenal has falsely represented and continues to falsely represent to the
`
`buying public that the counterfeited snap buttons have the particular standard of
`
`quality, or grade of a genuine Valco A-140.
`
`53.
`
`Valley Tool has been injured as a result of FastenaYs unlawful deceptive
`
`trade practices by lessening the goodwill that Valley Tool's products, including the A-
`
`140, have with the buying public.
`
`54.
`
`Fastenal's conduct as described herein constitutes a potential threat to
`
`customer safety.
`
`55.
`
`Fastenal has caused and will continue to cause substantial and irreparable
`
`harm to the public and Valley Tool for which there is no adequate remedy at law. Also,
`
`Fastenal has unjustly benefited from its unlawful acts and will continue to carry out
`
`such unlawful acts unless enjoined by this Court.
`
`56.
`
`Furthermore, Valley Tool has suffered and continues to suffer monetary
`
`damages and loss of profits to be determined at trial and is entitled to recover punitive
`
`damages as well as attorney fees pursuant to Ohio Revised Code § 4165.03 because of
`
`Fastenal's willful conduct.
`
`COUNT III
`(Unfair Competition under Ohio Common Law)
`
`57.
`
`Valley Tool incorporates by reference the foregoing paragraphs as if fully
`
`re-written herein.
`
`58.
`
`FastenaYs actions as described herein constitute unfair competition under
`
`the common law of the State of Ohio.
`
`10
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 11 of 17. PagelD #: 11
`
`59.
`
`Fastenal's actions as described herein have been for the purpose of
`
`deceiving the public that the counterfeited snap buttons are genuine Valco A-140
`
`fasteners.
`
`60.
`
`61.
`
`FastenaYs acts of unfair competition have been willful.
`
`Valley Tool has been and will continue to be injured as a result of
`
`Fastenal's acts of unfair competition through declining goodwill, sales, revenue, and/or
`
`profit for the Valco snap button product line, as well as other Valco products.
`
`62.
`
`Fastenal has caused and will continue to cause substantial and irreparable
`
`harm to the public and Valley Tool for which there is no adequate remedy at law. Also,
`
`Fastenal has unjustly benefited from said unlawful acts and will continue to carry out
`
`such unlawful acts unless enjoined by this Court.
`
`COUNT IV
`(Trademark infringement under Ohio common law)
`
`63.
`
`Valley Tool incorporates by reference the foregoing paragraphs as if fully
`
`re-written herein.
`
`64.
`
`Fastenal's use of the counterfeited Valco mark in commerce as an
`
`authentic Valco mark constitutes false designation of origin, false or misleading
`
`description or representations likely to cause confusion, mistake, and deceit as to
`
`affiliation, connection or association of Fastenal with Valley Tool.
`
`65.
`
`Fastenal's false designations of origin or false or misleading descriptions
`
`or representations have also caused confusion, mistake, and/or deceit as to the origin,
`
`sponsorship, or approval of the snap buttons by Valley Tool.
`
`11
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 12 of 17. PagelD #: 12
`
`66.
`
`Fastenal's advertisements and communications to FNA and other
`
`customers including, but not limited to, the misrepresentation of the nature, qualities,
`
`and/or origin of the snap buttons, constitute false or misleading description of fact.
`
`67.
`
`Fastenal's conduct, as described herein, has been willful and either has
`
`confused, or is likely to confuse, the intended audience of Valley Tool's Valco snap
`
`buttons.
`
`68.
`
`Fastenal's conduct as described herein has caused and continue to cause
`
`financial detriment and reputational detriment to Valley Tool.
`
`69.
`
`Valley Tool has been and will continue to be injured as a result of
`
`Fastenal's conduct through declining sales, revenue, and/or profit for the Valco snap
`
`button product line, as well as other Valco products.
`
`70.
`
`Fastenal has caused and will continue to cause substantial and irreparable
`
`harm to the public and Valley Tool for which there is no adequate remedy at law. Also,
`
`Fastenal has unjustly benefited from its unlawful acts and will continue to carry out
`
`such unlawful acts unless enjoined by this Court.
`
`COUNT V
`(Misappropriation of trademark under Ohio common law)
`
`71.
`
`Valley Tool incorporates by reference the foregoing paragraphs as if fully
`
`re-written herein.
`
`72.
`
`Fastenal has wrongly used the Valco trademark on snap buttons it
`
`manufactured or caused to be manufactured and presented to customers.
`
`12
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 13 of 17. PagelD #: 13
`
`73.
`
`Fastenal has misled customers as to the origin, quality and nature of the
`
`snap buttons by misappropriating the Valco trademark.
`
`74.
`
`Fastenal has infringed and continues to infringe on the goodwill created
`
`by the Valco mark.
`
`75.
`
`Fastenal has wrongly misappropriated the goodwill associated with the
`
`Valco mark and/or Valley Tool.
`
`76.
`
`Fastenal's conduct, as described herein, has been willful and either has
`
`confused, or is likely to confuse, customers.
`
`77.
`
`Valley Tool has been and will continue to be injured as a result of
`
`Fastenal's conduct through declining sales, revenue, and/or profit for the Valco A-140
`
`fastener product line, as well as other Valco products.
`
`78.
`
`Fastenal has caused and will continue to cause substantial and irreparable
`
`harm to the public and Valley Tool for which there is no adequate remedy at law. Also,
`
`Fastenal has unjustly benefited from its unlawful acts and will continue to carry out
`
`such unlawful acts unless enjoined by this Court.
`
`COUNT VI
`(Unjust Enrichment under Ohio Common Lazo)
`
`79.
`
`Valley Tool incorporates by reference the foregoing paragraphs as if fully
`
`re-written herein.
`
`80.
`
`Fastenal and FNA have been unjustly enriched to the detriment of Valley
`
`Tool by reason of their gains, profits, and advantages obtained from selling
`
`13
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 14 of 17. PagelD #: 14
`
`counterfeited Valco A-140 fasteners or goods/equipment containing such counterfeited
`
`parts in the United States and worldwide.
`
`81.
`
`The exact amount of Fastenal's and FNNs unjust enrichment will be
`
`proven at trial.
`
`82.
`
`Fastenal and FNA have caused and will continue to cause substantial and
`
`irreparable harm to the public and Valley Tool for which there is no adequate remedy at
`
`law. Also, Fastenal and FNA have unjustly benefited from their unlawful acts and will
`
`continue to carry out such unlawful acts unless enjoined by this Court.
`
`CIIT TNTT AM
`(Tortious Interference with Current and Prospective
`Business Relationships under Ohio Common Law)
`
`83.
`
`Valley Tool incorporates by reference the foregoing paragraphs as if fully
`
`re-written herein.
`
`84.
`
`Fastenal knew that a business relationship existed between Valley Tool
`
`and the customers to whom Valley Tool sold its Valco A-140 fasteners or that a business
`
`relationship will exist between Valley Tool and prospective customers.
`
`85.
`
`Fastenal intentionally procured the business relationship between Valley
`
`Tool and its customers, including prospective customers, by engaging in the unlawful
`
`acts described herein.
`
`86.
`
`Fastenal has no privilege to interfere in Valley Tool's existing or
`
`prospective business relationships.
`
`14
`
`

`

`Case: 1:18-cv-02682 Doc #: 1 Filed: 11/19/18 15 of 17. PagelD #: 15
`
`87.
`
`FastenaYs conduct was intentional and evidences the degree of malice
`
`necessary to support an award of punitive damages under Ohio law.
`
`88.
`
`As a direct and proximate result of Fastenal's actions, Valley Tool has
`
`suffered damages, the exact nature, extent and amount of which will be proven at trial.
`
`89.
`
`Fastenal has caused and will continue to cause substantial and irreparable
`
`harm to the public and Valley Tool for which there is no adequate remedy at law. Also,
`
`Fastenal has unjustly benefited from its unlawful acts and will continue to carry out
`
`such unlawful acts unless enjoined by this Court.
`
`COUNT VIII
`(Injunction)
`
`90.
`
`Valley Tool incorporates by reference the foregoing paragraphs as if fully
`
`re-written herein.
`
`91.
`
`Fastenal has sold and continues to sell counterfeited Valco A-140
`
`fasteners, infringed and continued to infringe upon Valley Tool's Valco mark,
`
`committed and continued to commit deceptive trade practices, engaged and continued
`
`to engage in unfair competition, and/or interfered and continue to interfere in Valley
`
`Tool's business relationships.
`
`94.
`
`Valley Tool is thereby entitled to preliminary and permanent injunctive
`
`relief.
`
`95.
`
`Fastenal has caused and will continue to cause s

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