Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA136697
`ESTTA Tracking number:
`04/20/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91171309
`Plaintiff
`L.C. Industries, Inc.L.C. Industries, Inc.
`L.C. Industries, Inc. L.C. Industries, Inc.
`L.C. Industries, Inc.
`401 N. Western Avenue
`Chicago, IL 60612
`UNITED STATES
`Andrew L. Goldstein
`Freeborn & Peters LLP
`311 S. Wacker DriveSuite 3000
`Chicago, IL 60606
`UNITED STATES
`agoldstein@freebornpeters.com
`Motion to Suspend for Civil Action
`Andrew L. Goldstein
`agoldstein@freebornpeters.com
`/Andrew Goldstein/
`04/20/2007
`Motion to Suspend.pdf ( 3 pages )(71593 bytes )
`Exhibit A.pdf ( 34 pages )(1132747 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application No. 76/620,199
`Published in the Official Gazette at p. TM 519
`on May 16, 2006
`
`L.C. Industries, Inc.,
`
`Opposer,
`
`V.
`
`Mahco, Inc.,
`
`A licant.
`
`
`
`Opposition No.: 91 171309
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDING PENDING
`
`TERMINATION OF CIVIL ACTION BETWEEN THE PARTIES
`
`Pursuant to §510.02(a) of the Trademark Trial and Appeal Board Manual of Procedure and 37
`C.F.R. §2.1 l7(a), L.C. Industries, Inc. (“Opposer”) hereby moves to have this Opposition
`proceeding suspended until the termination of a civil action that was recently filed between the
`parties. In support of its motion, Opposer states as follows:
`
`1. Pursuant to 37 C.F.R. §2.1l7(a), “[w]henever it shall come to the attention of the [Board] that
`parties to a pending case are engaged in a civil action
`which may have bearing on the case,
`proceedings before the Board may be suspended until termination of the civil action ....”
`
`2. On February 5, 2007, a civil action was initiated between the Opposer and the Applicant that
`is currently pending as Case No. 07 C 0695 before the U.S. District Court for the Northern
`District of Illinois (the “Civil Action”). The Complaint in the Civil Action is attached hereto as
`Exhibit A.
`
`3. The Civil Action involves the same parties and trademarks at issue in this Opposition.
`Specifically, L.C. Industries alleges Federal Lanham Act violations with regard to Mahco, Inc.’s
`use of the mark LEWIS & CLARK OUTDOORS THE EXPEDITION CONTINUES, including
`that such use infringes upon and dilutes L.C. Industries’ federally-registered trademarks for
`LEWIS N. CLARK.
`
`4. The Civil Action has direct bearing on this Opposition because a decision by the Federal
`district court as to L.C. Industries’ claims under the Lanham Act would likely be dispositive as to
`the issues raised in this Opposition.
`
`l288357vl/25349-0001
`
`

`

`Accordingly, for the reasons set forth above, Opposer respectfully requests that the Board grant
`Opposer’s Motion to Suspend Proceedings Pending Termination of Civil Action.
`
`Respectfully submitted,
`
`Andrew L. Goldstein
`
`Andrew L. Goldstein
`
`One of the Attorneys for Opposer
`L.C. Industries, Inc.
`
`FREEBORN AND PETERS LLP
`
`311 S. Wacker Dr., Suite 3000
`Chicago, Illinois 60606
`(312) 360-6000
`
`1288357
`
`l288357vl/25349-0001
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on April 20, 2007, I caused to be served a true and complete copy of
`foregoing OPPOSER’S MOTION TO SUSPEND PROCEEDING PENDING
`the
`TERMINATION OF CIVIL ACTION BETWEEN THE PARTIES on
`
`Gary Peterson
`211 N. Robinson Ave., Suite, 450 South
`Two Leadership Square
`Oklahoma City, Oklahoma 73102
`ypetersoncom
`
`by filing the foregoing by way of the TTAB’s ESTTA online filing system, by electronic mail,
`and by First Class Mail, postage prepaid to the above address.
`
`Andrew L. Goldstein
`
`Andrew L. Goldstein
`
`1288357vl/25349-0001
`
`

`

`The civil cover sheet and the information contained herein neither re lace nor sufpplement the filing and service of pleadings or other pa ers as required b
`law, except as provided by local rules ofcourt. This form isrequired or the use 0 t e Clerk of Court for the purpose of initiating the CIVII ocket sheet.
`(SE
`INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`
`CIVIL COVER SHEET
`
`(a) ‘PLAINTIFFS
`
`L.C. INDUSTRIES, INC.
`
`DEFENDANTS
`
`MAHCO, INC.,
`
`(b) County of Residence ofFirst Listed Piaintitr Cook Counyz, IL
`(EXCEPT IN U.S. PLAINTIFF CASES)
`‘.
`‘r
`=
`
`County ofResidence ofFirst Listed Defendant
`(IN u.s. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF Tl-IE
`LAND INVOLVED.
`
`NOTE:
`
`
`
`(C) Attomey’s (Firm Name, Address, and Telephone Number)
`Freeborn & Peters
`311 S. Wacker Drive, Suite 3000, Chicago, IL 60603
`3 12-3 60-6000
`
`
`AHONWYS (If KHOWTI)
`
`$95
`
`
`III. CITIZENSHIP or PRINCIPAL PARTIES(Piare an “x” in One Box for rrarnrrrr
`(For Diversity Cases Only)
`'
`and One Box for Defendant)
`DEF
`DEF
`PTF
`PTF
`Citizen ofThis State El I E! I
`Incorporated or Principal Place I3 4 El 4
`of Business In This State
`
`Citizen ofAnother State I: 2 D2 Incorporated and Principal Place El 5 El 5
`of Business In Another State
`
`Cl:(z;:lir SCl:)I:_l|f1I' ofa El 3 B3 Foreign Nation
`
`[:1 6 E] 6
`
`IV. NATURE OF SUIT
`
`CONTRACT
`
`l:I4oo State Reapportionment
`PERSONAL INJURY
`I:I6l0 Agriculture
`|:|422 Appeal 28 usc 158
`PERSONAL INJURY
`[:1 I 10 Insurance
`
`[I410 Antitrust
`[:]362 Personal Injruy—
`|j62o other Food & Drug
`|:|3io Airplane
`[:1 120 Marine
`
`
`[3430 Banks and Banking
`Med. Malpractice
`D625 Drug Related Seizure D423 Withdrawal
`[:|31‘5 Airplane Product
`D130 Miller Act
`450 Commerce/ICC Rates/etc.
`D365 Personal Injury——
`of Property 21 USC 881
`28 USC I57
`Liability
`C] 140 Negotiable Instrument
`460 Deportation
`Product Liability
`|:l63o Liquor Laws
`El 150 Recovery ofOverpayment B320 Assault, Libel &
`E1470 Racketeer Influenced and
`D368 Asbestos Personal
`I:I640 RR. & Truck
`& Enforcement of Judgment
`Slander
`corrupt organizations
`Injury Product
`|:|650 Airline Regs.
`El 15] Medicare Act
`E1330 Federal Employers’
`Cl4so Consumer Credit
`Liability
`[1660 Occupational
`1:] 152 Recovery ofDefaulted
`Liability
`E]490Cable/Satellite TV
`PERSONAL PROPERTY El
`Safety/Health
`D Student Loans (excl. vet.)
`|:l34o Marine
`D 810 Selective Service
`D370 Other Fraud
`690 Other
`I53 Recovery of Overpayment D345 Marine Product
`E] 850 Security/Commodity/Exch.
`[:]37l Truth in Lending
`of Veteran’s Benefits
`Liability
`E] 875 Customer Challenge
`SOCIAL SECURITY
`LABOR
`D380 Other Personal
`D160 Stockholders’ Suits
`D350 Motor'Vehicle
`12 USC 3410
`.
`Property Damage
`[__-I190 Other Contract
`D355 Motor Vehicle
`El331 _Agricultuial Acts
`D7” :1:”‘'’°’ S“"“d“’d5
`[3195 contract Product Liability
`Product Liability
`[I335Property Damage
`Egg;‘L3u9n5gfi2923)
`
`[:|s92 Economic Stabiliution Act
`[1195 Franchise
`[1360 Other Personal Inj.
`Product Liability
`Elm wmmgm Relmns D 863 DIWC/DIWW (405(g»
`
`
`EI893 Environmental Matters
`E1864 SSID Title XVI
`
`
`[3894 Energy Allocation Act
`CIVIL RIGHTS
`PRISONER PETITION D730 Labor/M t Re
`"in D865 RSI (405( )
`
`D895 Freedom ofInfonnation Act
`P0
`g )
`.
`D
`.
`.
`gm '
`g
`.
`D
`
`900
`31 fl:
`I:I44l Voting
`510 Motions to Vacate
`& Disclosure Act
`210 Land Condemnation
`|:i442 Employment
`Sentence
`|:|740 Railway LaborAct
`FEDERAL TAX SUITS El
`Awe .° 9°
`Eizzo Foreclosure
`Determination Under
`.
`_
`.
`E1230 Rent Lease & Ejectment D443 Houslngl
`Habeas Corpus.
`D870 Taxes (U S Plainfifl.
`E ual Access ‘0 Justice
`|:]79o Other Labor Litigation
`[1240 Torts to Land
`Accommodations
`l:ls3o General
`D f Am-1
`D950 C”
`.
`.
`31.
`f
`6
`3
`65
`[3245 Tort Product Liability
`|:|444 Welfare
`E1535 Death Penalty
`"'
`° °“
`‘)
`S‘t’;‘t‘“;‘:"t‘|’l't‘
`"V °
`D791 Empl. Ret. Inc.
`B290 All Other Real Property D445 ADA———Employrnent D540 Mandamus & Other
`D871 IRS_Thl.l_d Pam,
`D 890 other Smmory Actions
`Secuflty Act
`26 USC 7609
`|:|44o ADA—Other
`Ijsso Civil Rights
`
`
`[[440 Other civil Rights
`Clsss Prison Condition
`
`
`
`OTHER STATUTES
`
`
`
`FORFEITURE/PENALTY
`
`BANKRUPTCY
`
`
`
`
`
`
`
`
`
`
`PROPERTY RIGHTS
`Elm C0
`.
`ts
`830 MPYT9‘
`@840Tmztmmk
`
`
`
`
`
`
`
`II. BASIS OF
`
`Ell U.S. Govemment
`Plaintiff
`
`El 2 U.S. Government
`Defendant
`
`I (Place an “X” in One Box Only)
`
`_
`V.
`IE3 Federal Question
`‘
`(US. Government Not a Party)
`
`I:I4 Diversity
`(Indicate Citizenship of Parties
`in Item III)
`
`Place an “X” in One Box Onl
`TORTS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`V‘ ORIGIN-‘
`inal
`g
`"
`
`D1 Ori
`
`(PLACE AN “X” IN ONE BOX ONLY)
`
`I:]2 Removed from
`
`[:I3
`
`Remanded fiom
`llate Court
`
`.
`
`D
`
`Trartisferged tjrom D
`4 Reinstated or D5 “'0 Fr
`Reo erred
`(specify)
`
`'5t"°t
`
`6 Multidistrict
`Liti ation
`
`7
`
`D M gstfrrotm
`33” 3°
`Judgmen‘
`
`
`
`Ap
`Ju
`
`I to District
`
`(FOI nature Of
`and writg VII.
`suit 422 and 423, enter the case number and judge for any associated
`bankruptcy matter perviously adjudicated by a judge of this Court. Use a
`separate attachment ifnecessary)
`
`
`
`
`
`
`
`
`VI.
`
`Statute under
`(Enter
`a briefstatemcnt ofcau5e_)
`v
`Lanham Act (15 U.S.C. § 1051 et. Seq.) -‘ trademark
`infringement, unfair competition and trademark dilution
`
`you arg
`
`VIII. REQUESTED IN
`COMPLAINT:
`
`]:|CHECK IF THIS IS A CLASS ACTION
`UNDER F.R_C.P. 23
`
`DEMAND $
`
`CHECK YES only ifdemanded in com laint:
`JURY DEMAND:
`IEIYCS
`N0
`
`[X This use
`
`E]is not airefiling of a previously dismissed action.
`
`
`
`DATE
`
`J-{-07
`
`I:Iis a refiling of case number
`
`, previously dismissed by Judge
`SIGNATURE OF ATTORNEY OF RECORD
`
`I
`
`.:
`
`,
`
`gzofl
`
`
`
`

`

`U.S. DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS
`‘
`'
`'
`ATTORNEY APPEARANCE FORM
`
`NOTE: In order to appear before this Court an attorney must either be a member in good
`Standing of this Court’s general bar or be granted leave to appear pro hac vice as provided for
`by Local Rules 83._ 12 through 83.14.
`
`
`In the Matter of
`
`Case Number:
`
`L.C. INDUSTRIES; INC., an Illinois Corporation
`MAHCO, INC., an Arkansas corporation
`
`E @
`
`
`
`AN
`
`IS HEREBY FILED BY THE UNDERSIGNED AS ATTORNEY FOR:
`MAGISTRATE JUBGE msmuw
`
`
`
` N.
`' e"br print)"
`Andrew L.'Goldstein
`
` T - _ ance form is filed electronically)
`
`
`
`
`
`
`FIRM
`
`Freebom & Peters
`
`STREET ADDRESS y
`'
`311 S. Waclcer Drive, Suite 3000
`CITY/STATE/ZIP
`
`Chicago, IL 60606
`
`=
`
`ID NUMBER (SEE ITEM 3 IN INSTRUCTIONS)
`
`TELEPHONE NUMBER
`
`6187568
`
`312-360-6438
`
`
`
`
`
`
`
`
`
`
`
`
`
`" ARE YOU ACTING AS LEAD COUNSEL IN THIS CASE?
`
`YES|:| No
`
`ARE YOU ACTING AS LOCAL COUNSEL IN THIS CASE?
`
`YESE] No
`
`ARE You A MEMBER OF THIS CoURT’S TRIAL BAR?
`
`YES]: NO
`
`
`
`
`
`
`IF THIS CASE _R_E_ACHES TRIAL, WILL YOU ACT AS THE TRIAL ATTORNEY? YESl:] No
`
`CASE, CHECK THE BOX BELOW THAT DESCRIBES YOUR STATUS.
`IF THIS IS A
`APPOINTED COUNSEL |:]
` RETAINED CouNSEL|:]
`
`
`
`

`

`U.s. DISTRICT COURT FOR THE-NORTHERN DISTRICT OF ILLINOIS
`
`A
`
`ATTORNEY APPEARANCE FORM
`
`NOTE: In order to appear before this Court an attorney must either be a member in good
`standing of this‘ COurt’s general bar or be granted leave to appear pro hac vice as provided for
`by Local Rules 83.12 through 83.14.
`
`In the Matternof
`A
`I
`Case Number:
`
`L.C. INDUSTRIES, INC., an Illinois Corporation
`
`'
`
`v.MAHCO, INC., an Arkansas corporation
`@ § E
`0 1
`AN APPEARANCE IS HEREBY FILED BY THE UNDERSIGNED AS ATTORNEY FOR:
`REC§i‘§“ii{f’:L:¢‘!I%ril"S"i°s""°‘
`JEUDEE FILIP
`
`QFEB 05 mg, '-
`
`_ NANIE (Type or print)
`David L. Ter'Molen
`
`MAGISTRATE JEEBEE EEEIEE
`
`SIGNATURE (Uselelectronic signature if the appearance form is filed electronically)
`1
`/7%/C,‘
`
`FIRM
`
`Freebom & Peters
`
`STREET ADDRESS '
`
`'
`
`4 \
`
`311 S. Wacker Drive, Suite 3000
`
`CITY/STATE/ZIP
`
`Chicago, IL 60606 I
`
`ID NUMBER (SEE ITEM 3 IN INSTRUCTIONS)
`6270715
`
`TELEPHONE NUMBER
`312-360-6432
`
`ARE YOU ACTING AS LEAD COUNSEL IN THIS CASE?
`
`ARE YOU ACTING AS LOCAL COUNSEL IN THIS CASE?
`
`ARE YOU A MEMBER OF THIS COURT’S TRIAL BAR?
`
`EaDD
`
`F,
`
`EH
`
`NOE]
`
`IF THIS CASE REACHES TRIAL, wILL YOU ACT AS THE TRIAL ATTORNEY? YES]: NO
`
`IF THIS IS A
`
`CASE, CHECK THE BOX BELOW THAT DESCRIBES YOUR STATUS.
`
`'
`
`RETAINED COUNSELE]
`
`APPOINTED COUNSEL C]
`
`

`

`U.S. DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS
`I
`ATTORNEY APPEARANCE FORM
`I
`
`NOTE: In order to appear before this Court an attorney must either be a member in good
`standing of this Court’S general bar or be granted leave to appear pro hac vice as provided for
`by Local Rules 83.12 through 83.14.
`
`In the Matter of
`
`f
`
`Case Number:
`
`L.C. INIJUSTRIES, INC., an Illinois Corporation
`
`I
`V
`MAHCO, INC., an Arkansas corporation
`
`07 C O 6 9 5
`
`AN
`
`
`
`'
`
`t"
`
`IS HEREBY FILED BY THE UNDERSIGNED AS ATTORNEY FOR:
`Industries. Inc.
`MAGISTRATE JUDGE SHIISII
`
`FEBOSZWI
`
`’yhe appearance form is filed electronically)‘—\
`
`ID NUMBER (SEE ITEM 3 IN INSTRUCTIONS)
`
`TELEPHONE NUMBER
`
`1294873
`
`3 12-360-6503
`
`ARE YOU ACTING AS LEAD COUNSEL IN THIS CASE?
`
`YES NO
`
`. ARE You ACTING AS LOCAL COUNSEL IN THIS CASE?
`
`NO
`
`ARE YOU A MEMBER OF THIS COURT’S TRIAL BAR?
`
`YES
`
`NO]:
`
`IF THIS CASE R_EACH_ES TRIAL, WILL YOU ACT AS THE TRIAL ATTORNEY? YES NOE]
`
`IF THIS IS A
`
`CASE, CHECK THE BOX BELOW THAT DESCRIBES YOUR STATUS.
`
`RETAINED COuNSEL|:|
`
`APPOINTED COuNSEL|___|
`
`

`

`U.S. DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS
`ATTORNEY APPEARANCE FORM
`
`NOTE: In order to appear before this Court an attorney must either be a member in good
`standing of this Court’s general bar or be granted leave to appear pro hac vice as provided for
`by Local Rules 83.12 through 83.14.
`
`In the Matterof
`
`A
`
`Case Number:
`
`L.C. INDUSTRIES, INC., an Illinois Corporation
`
`V—
`MAHCO, INC., an Arkansas corporation
`
`
`0 .?
`
`C 0 S 9 5
`
`AN APPEARANCE IS HEREBY FILED BY THE UNDERSIGNED AS ATTORNEY FOR:
`
`" 1" F“!
`Plaintiff, L.Cfi%t:p7es,-Inc.“
`
`FEB o 5 2007. "I
`
`MAGISTRATE JUBGE BEEWIWS
`JUDGE “UP
`
`~
`U-S-SW5‘ "~ -
`NAME (Type or.
`Jennifer Fi l ' L L
`Ifthe app .. nce form is filed electronically)
`1-
`5 4-
`&z2_
`" M
`
`_
`
`I
`
`Fr - : rn & Peters
`
`STREET ADDRESS
`
`31 l .S. Wacker Drive, Suite 3000
`
`CITY/STATE/ZIP
`Chicago, IL 60606
`
`ID NUMBER (SEE ITEM 3 IN INSTRUCTIONS)
`
`TELEPHONE NUMBER
`
`l294873
`
`‘
`
`3 12-3 60-6585
`
`'
`
`ARE YOU ACTING As LEAD COUNSEL IN THIS CASE?
`
`YEs|:| _
`
`NO
`
`ARE YOU ACTING As LOCAL COUNSEL IN THIS CASE?
`
`YES [3 No
`
`ARE YOU A MEMBER OF THIS COURT’S TRIAL BAR?
`
`-YES
`
`NO
`
`IF THIS CASE REACHES TRIAL, WILL YOU ACT AS THE TRIAL ATTORNEY? YES|:l NO '
`
`IF THIS IS A CRIMINAL CASE, CHECK THE BOX BELOW THAT DESCRIBES YOUR STATUS.
`
`- RETAINED COuNSELl:]
`
`APPOINTED COuNSELI:|
`
`

`

`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`
`RE?“
`
`MECI-x:
`¢‘iEFlK, u...
`
`
`
`)
`)
`
`3 )
`
`) )
`
`) ) )
`
`L.C. INDUSTRIES, INC.,
`an Illinois corporation,
`
`Plaintiff,
`
`V.
`
`MAHCO, INC.,
`an Arkansas corporation
`
`Defendant.
`
`’ MAGISTRATE mar nsmow‘
`
`NOTICE OF CLAIMS INVOLVING TRADEMARKS
`
`Pursuant to Local Rule 3.4, Plaintiff L.C. Industries, Inc. (“L.C. Industries”) hereby
`
`provides notice that it has filed a Complaint with claims involving certain registered trademarks.
`
`NAMES AND ADDRESSES OF LITIGANTS
`
`1.
`
`Plaintiff L.C. Industries is an Illinois corporation with a principal office located at
`
`401 N. Western Avenue, Chicago, Illinois, 60612.
`
`2.
`
`Defendant Mahco is an Arkansas corporation with its principal offices located at
`
`1202 Melissa Drive, Bentonville, Arkansas, 72712.
`
`TRADEMARKS
`
`3.
`
`Plaintiff L.C. Industries has duly thirteen (13) trademarks registered with the
`
`United States Patent and Trademark Office upon which the action is brought:
`
`A.
`
`LEWIS N. CLARK (Reg. No. 1744354,
`
`issued January 5, 1993) for
`
`calculators, steam irons, clothes steamers and electrical converters; hand—held
`
`electric hair dyers and immersion heaters; electrical clocks;
`
`

`

`B.
`
`LEWIS N. CLARK TRAVEL ACCESSORIES & Design (Reg. No.
`
`2104997,
`
`issued October 14, 1997) for shoulder straps and pads for use on
`
`luggage and traveling bags; garment bags with hooks; mark and fabric shopping
`
`bags; change purses; shoe bags for travel; tote bags; passport/money pouches; and
`
`luggage identification tags;
`
`
`
`C.
`
`LEWIS N. CLARK TRAVEL ACCESSORIES & Design (Reg. No.
`
`2111895, issued November 11, 1997) for plastic and fabric items of clothing for
`
`travel, namely, raincoats, rain ponchos and eye masks for use as sleepwear; and,
`
`money belts;
`
`
`
`D.
`
`LEWIS N. CLARK (Reg. No. 2437063,
`
`issued March 20, 2001) for
`
`bungie cords;
`
`E.
`
`LEWIS N. CLARK (Reg. No. 2437068,
`
`issued March 20, 2001) for
`
`wristbands for motion sickness;
`
`F.
`
`LEWIS N. CLARK (Reg. No. 2440882, issued April 3, 2001) for looks,
`
`namely, metal pad locks, locks with keys, combination locks and cable locks;
`
`G.
`
`LEWIS N. CLARK (Reg. No. 2440884, issued April 3, 2001) for pillows;
`
`

`

`H.
`
`LEWIS N. CLARK (Reg. No. 2438517, issued 2438517) for luggage,
`
`namely, brief cases, duffle bags, back packs, security wallets, shaving bags sold
`
`empty, fanny packs, travel wallets, convertible shoulder bags, tie cases, travel
`
`packs, toiletry cases sold empty and luggage accessories, namely, carrier bags
`
`designed to transport shirts, straps for luggage and backpacks.
`
`I.
`
`LEWIS N. CLARK (Reg. No. 2660360, issued December 10, 2002) for
`
`spot remover; laundry soap; laundry kits comprising of laundry soap, clotheslines,
`
`clothespins, and clothesline holders, all sold as a unit therewith;
`
`J.
`
`LEWIS N. CLARK (Reg. No. 2716219, issued May 13, 2003) for tents
`
`and accessories therefore, namely, poles, stakes and stake hammers, all sold as a
`
`unit;
`
`screen houses in the nature of tents, canvas canopies; clotheslines,
`
`clothesline kits consisting of clotheslines, clothespins and clothesline holders, all
`
`sold as a unit; bungle stretch cords; all purpose web and fabric straps for handling
`
`loads and carrying bundles;
`
`K.
`
`LEWIS N. CLARK (Reg. No. 2782356, issued November 11, 2003) for
`
`hand—operated camping tools, namely, knife sheaths, axe sheaths, scissors, saws,
`
`machetes and axes;
`
`L.
`
`LEWIS N. CLARK (Reg. No. 2917630, issued January 11, 2005) for neck
`
`rests, pillows and hangers for clothes; and
`
`M.
`
`LEWIS N. CLARK (Reg. No. 2919246, issued January 18, 2005) for
`
`portable coolers; portable ice chests for food and beverages; and soft sided,
`
`thermal insulated containers for food and beverage.
`
`

`

`Respectfully Submitted,
`
`L.C. INDUSTRIES, INC.,
`
`Dated: February 5, 2007 By:
`
`One of Its Attorneys
`
`Leland W. Hutchinson, Jr.
`Andrew L. Goldstein
`
`Jennifer L. Fitzgerald
`David L. Ter Molen
`
`FREEBORN & PETERS
`
`311 S. Wacker Drive, Suite 3000
`Chicago, Illinois 60606
`(312) 360-6000
`
`#1279895
`
`

`

`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`
`0 5 20071
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`
`COMPLAINT
`
`L.C. INDUSTRIES, INC.,
`an Illinois corporation,
`
`Plaintiff,
`
`V.
`
`MAHCO, INC.,
`an Arkansas corporation
`
`Defendant.
`
`This is an action by Plaintiff L.C. Industries, Inc. (“L.C. Industries”) to recover damages
`
`arising from infringement of L.C. Industries’ trademarks by defendant Mahco, ‘Inc. (“Mahco”)
`
`and to enjoin Macho’s future infringement.
`
`THE PARTIES
`
`1.
`
`Plaintiff L.C. Industries is an Illinois corporation with a principal office located at
`
`401 N. Western Avenue, Chicago, Illinois. L.C. Industries is engaged in the business of
`
`producing and marketing products nationwide and internationally for traditional travel, adventure
`
`travel, and outdoor activities, as well as everyday use.
`
`2.
`
`Defendant Mahco is an Arkansas corporation with its principal offices located at
`
`1202 Melissa Drive, Bentonville, Arkansas.
`
`JURISDICTION AND VENUE
`
`3.
`
`Jurisdiction is proper in this Court pursuant to 28 U.S.C. §§ 1331, 1338, 1367(a),
`
`and 15 U.S.C. § 1121, because this case involves federal questions under the Lanham Act, 15
`
`U.S.C. §§ 1114(1)(a), 1125(a), (c) and (d). Jurisdiction is further proper pursuantto 28 U.S.C.
`
`

`

`§ 1332(a) because there is diversity between the parties and the matter in controversy exceeds
`
`$75,000, exclusive of interests and costs.
`
`4.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ l391(b) and (c).
`
`Defendant transacts business within this judicial district, including the sale of infringing products
`
`that are the subject of this action.
`
`FACTS COMMON To ALL CLAIMS
`
`I.
`
`,
`
`L.C. Industries and the LEWIS N. CLARK Trademarks
`
`5.
`
`L.C. Industries manufactures and markets a wide array of products for traditional
`
`travel, adventure travel and outdoor activities, as well as everyday use, with such products sold
`
`within different product lines. One such product line is sold under the trademark LEWIS N.
`
`CLARK (the “LEWIS N. CLARK product line’’).
`
`6.
`
`L.C. Industries adopted and began use of the LEWIS N. CLARK trademark in
`
`1991 and has, since then, continually used the LEWIS N. CLARK trademark in connection with
`
`the LEWIS N. CLARK product line.
`
`7.
`
`The LEWIS N. CLARK product line includes: (a) luggage, namely, briefcases,
`
`duffle bags, back packs, shaving bags, tie cases, travel packs, and toiletry cases; (b) luggage
`
`accessories, namely, carrier bags designed to transport shirts, and straps for luggage and
`
`backpack;
`
`(c)
`
`travel “convenience” items such as sewing kits, electrical outlet adapters,
`
`toothbrush holders, and inflatable hangers; ((1) travel “security” items such as locks and hidden
`
`wallets; and (e) organizers, bags and carriers for automobiles.
`
`8.
`
`With regard to the LEWIS N. CLARK product line, L.C. Industries has duly and
`
`properly registered numerous trademarks in the United States Patent and Trademark Office on
`
`the Principal Register, including:
`
`

`

`A.
`
`LEWIS N. CLARK (Reg. No. 1744354,
`
`issued January 5, 1993) for
`
`calculators, steam irons, clothes steamers and electrical converters; hand-held
`
`electric hair dyers and immersion heaters; electrical clocks;
`
`B.
`
`LEWIS N. CLARK TRAVEL ACCESSORIES & Design (Reg. No.
`
`2104997,
`
`issued October 14, 1997) for shoulder straps and pads for use on
`
`luggage and traveling bags; garment bags with hooks; mark and fabric shopping
`
`bags; change purses; shoe bags for travel; tote bags; passport/money pouches; and
`
`luggage identification tags;
`
`
`
`C.
`
`LEWIS N. CLARK TRAVEL ACCESSORIES & Design (Reg. No.
`
`2111895, issued November 11, 1997) for plastic and fabric items of clothing for
`
`travel, namely,
`
`raincoats, rain ponchos and eye masks for use as sleepwear, and,
`
`money belts;
`
`
`
`D.
`
`LEWIS N. CLARK (Reg. No. 2437063,
`
`issued March 20, 2001) for
`
`bungie cords;
`
`E.
`
`LEWIS N. CLARK (Reg. No. 2437068,
`
`issued March 20, 2001) for
`
`wristbands for motion sickness;
`
`

`

`F.
`
`LEWIS N. CLARK (Reg. No. 2440882, issued April 3, 2001) for locks,
`
`namely, metal pad locks, locks with keys, combination locks and cable locks;
`
`G.
`
`H.
`
`LEWIS N. CLARK (Reg. No. 2440884, issued April 3, 2001) for pillows;
`
`LEWIS N. CLARK (Reg. No. 2438517, issued 2438517) for luggage,
`
`namely, brief cases, duffle bags, back packs, security wallets, shaving bags sold
`
`empty, fanny packs, travel wallets, convertible shoulder bags, tie cases, travel
`
`packs, toiletry cases sold empty and luggage accessories, namely, carrier bags
`
`designed to transport shirts, straps for luggage and backpacks.
`
`I.
`
`LEWIS N. CLARK (Reg. No. 2660360, issued December 10, 2002) for
`
`spot remover; laundry soap; laundry kits comprising of laundry soap, clotheslines,
`
`clothespins, and clothesline holders, all sold as a unit therewith;
`
`J.
`
`LEWIS N. CLARK (Reg. No. 2716219, issued May 13, 2003) for tents
`
`and accessories therefore, namely, poles, stakes and stake hammers, all sold as a
`
`unit;
`
`screen houses in the nature of tents, canvas canopies; clotheslines,
`
`clothesline kits consisting of clotheslines, clothespins and clothesline holders, all
`
`sold as a unit; bungle stretch cords; all purpose web and fabric straps for handling
`
`loads and carrying bundles;
`
`K.
`
`LEWIS N. CLARK (Reg. No. 2782356, issued November 11, 2003) for
`
`hand-operated camping tools, namely, knife sheaths, axe sheaths, scissors, saws,
`
`machetes and axes;
`
`L.
`
`LEWIS N. CLARK (Reg. No. 2917630, issued January 11, 2005) for neck
`
`rests, pillows and hangers for clothes; and
`
`

`

`M.
`
`LEWIS N. CLARK (Reg. No. 2919246, issued January 18, 2005) for
`
`portable coolers; portable ice chests for food and beverages; and soft sided,
`
`thermal insulated containers for food and beverage.
`
`These trademark registrations are attached hereto as Group Exhibit A.
`
`9.
`
`The above-listed trademarks are all associated with the LEWIS N. CLARK
`
`product line, and such products are sold under these trademarks throughout the United States and
`
`internationally through luggage stores, department stores, specialty stores, large retailers such as
`
`Wal-Mart, and various other retail outlets.
`
`10.
`
`L.C. Industries has expended considerable amounts of time, effort and expense to
`
`promote its LEWIS N. CLARK product line and trademarks throughout the United States.
`
`In
`
`addition, the LEWIS N. CLARK product line has established a reputation for excellence in the
`
`industry and among consumers. Accordingly, L.C. Industries has developed a valuable amount
`
`of goodwill with respect to the LEWIS N. CLARK product line and trademarks.
`
`II.
`
`Mahco’s Willful Infringement of the LEWIS N. CLARK Trademarks
`
`11.
`
`Mahco is engaged in the advertising, marketing, selling and distribution of
`
`products that infiinge L.C. Industries’ LEWIS N. CLARK trademarks or otherwise are likely to
`
`confuse or to mislead consumers.
`
`12.
`
`Mahco has been and continues to use the mark LEWIS & CLARK OUTDOORS
`
`THE EXPEDITION CONTINUES on: (1) folding furniture, including folding tables and folding
`
`chairs; (2) waterproof “adventure” bags and “adventure” dry bags; (3) hunting and shooting
`
`apparel; and (4) camp slippers. These products are distributed through sporting goods retailers
`
`and wholesale clubs such as Sam’s Club.
`
`

`

`13.
`
`Mahco has filed several applications to register the mark LEWIS & CLARK
`
`OUTDOORS THE EXPEDITION CONTINUES (and related design) with the United States
`
`Patent and Trademark Office. Such registrations include Application Serial Nos. 76/620,199 for
`
`backpacks, duffle bags and luggage, which is the subject of Opposition No. 91171309 between
`
`the parties that is currently pending before the United States Trademark Trial and Appeal Board
`
`(the “Opposition”).
`
`14.
`
`The primary element of Mahco’s mark is “LEWIS & CLARK.” The image below
`
`is from Mahco’s application with the United States Patent and Trademark Office and is the same
`
`mark being used by Mahco to market, sell and promote the product categories listed in Paragraph
`
`12 above. The words “LEWIS & CLARK” are centered and in a larger font then the remainder,
`
`with the words “Outdoors The Expedition Continues” being secondary, background elements.
`
` ," '
`
`uI.=2'i.~r_1i‘.1t-::'~'
`rlkfllffilflll =9“
`
`15.
`
`The products sold by Mahco under the mark LEWIS & CLARK OUTDOORS
`
`THE EXPEDITION CONTINUES are marketed and sold in the same charmels of trade as the
`
`LEWIS N. CLARK product line.
`
`16.
`
`The products sold by Mahco under the mark LEWIS & CLARK OUTDOORS
`
`THE EXPEDITION CONTINUES are sold to the same general consumers as the LEWIS N.
`
`CLARK product line.
`
`17.
`
`Mahco is fully aware of the LEWIS N. CLARK product line and the associated
`
`LEWIS N. CLARK trademarks, and that such marks are currently in use.
`
`In the Opposition,
`
`

`

`Mahco admitted that it first became aware of L.C. Industries use and/or registration of the
`
`LEWIS N. CLARK trademarks on or about March 20, 2006. However, on information and
`
`belief, Mahco was aware of Mahco’s use and/or registration of the LEWIS N. CLARK
`
`trademarks at least as early as January 2005.
`
`18.
`
`The similarity between Mahco’s mark LEWIS & CLARK OUTDOORS THE
`
`EXPEDITION CONTINUES and L.C. Industries’ LEWIS N. CLARK trademarks is so great as
`
`to be likely to cause confusion, mistake or deception as to the source or origin of Mahco’s
`
`products and promotions in that the public and others are likely to believe that Mahco’s products
`
`and promotions are owned by, promoted by, sponsored by, approved by, licensed by, affiliated
`
`with, or in some other way connected with L.C. Industries and its LEWIS N. CLARK product
`
`line.
`
`19.
`
`There have been several instances of actual confusion between products sold by
`
`Mahco under the mark LEWIS & CLARK OUTDOORS THE EXPEDITION CONTINUES and
`
`products sold by L.C. Industries under the LEWIS N. CLARK trademarks, including several
`
`persons who believed that Mahco products sold at Sam’s Club were part of L.C. Industries’
`
`LEWIS N. CLARK product line.
`
`20.
`
`Mahco’s use of the aforementioned mark infringes upon and violates the rights of
`
`L.C. Industries in its well known LEWIS N. CLARK trademarks, and has damaged and is
`
`continuing to cause irreparable injury to L.C. Industries’ business, reputation and goodwill.
`
`21.
`
`Despite requests to cease its infringement, Mahco has refused to stop, manifesting
`
`its bad faith intent to continue its unlawful activities. Unless enjoined, Mahco will continue: (a)
`
`engaging in deceptive practices and competing unfairly; (b) confixsing, misleading and deceiving
`
`the public and diverting L.C. Industries’ customers or potential customers interested in the
`
`

`

`LEWIS N. CLARK product line away from L.C. Industries; (c) blurring, tarnishing and/or
`
`disparaging the reputation built around the LEWIS N. CLARK product
`
`line and related
`
`trademarks; and (d) usurping the incalculable goodwill and value associated with L.C. Industries’
`
`trademarks, causing L.C. Industries significant, additional and irreparable harm.
`
`Federal Trademark Infringement (15 U.S.C. § 1ll4(1)(a))
`
`COUNT I -
`
`22.
`
`L.C. Industries realleges and incorporates by reference paragraphs 1 through 21 as
`
`though fully set forth herein.
`
`23.
`
`Mahco has, without consent or authorization from L.C. Industries, used and
`
`continue to use the mark LEWIS & CLARK OUTDOORS THE EXPEDITION CONTINUES
`
`which is confusingly similar to the LEWIS N. CLARK trademarks, in interstate commerce to
`
`sell, offer to sell, distribute and/or advertise products for traditional travel, adventure travel and
`
`outdoor activities, as well as everyday use.
`
`24.
`
`Mahco’s use of the mark LEWIS & CLARK OUTDOORS THE EXPEDITION
`
`CONTINUES has caused and is likely to cause confusion, mistake and deception to consumers
`
`as to the affiliation, connection, or association of Mahco with L.C. Industries, and as to the
`
`origin, sponsorship, or approval of Mahco’s goods, promotions or commercial activities by L.C.
`
`Industries.
`
`25.
`
`Mahco’s unauthorized acts constitute direct infringements of L.C. Industries’
`
`rights in the LEWIS N. CLARK trademark in violation of the Lanham Act, 15 U.S.C.
`
`§ 1l14(1)(a).
`
`26.
`
`Mahco’s aforementioned acts have been willful, intentional, in bad faith, and with
`
`full knowledge that L.C. Industries owns and has the exclusive right to use the LEWIS N.
`
`CLARK trademarks.
`
`

`

`27.
`
`As a direct and proximate result of the foregoing acts by Mahco, L.C. Industries
`
`has suffered, and continues to suffer, substantial damages not yet determinable,
`
`including
`
`irreparable injury for which there is no adequate remedy at law.
`
`COUNT II -
`
`False Designation of Origin, False Advertising
`and Unfair Competition (15 U.S.C. § 1l25(a))
`
`28.
`
`L.C. Industries realleges and incorporates by reference paragraphs 1 through 27 as
`
`though fully set forth herein.
`
`29.
`
`L.C. Industries owns, has the exclusive right to use, and actively uses the LEWIS
`
`N. CLARK trademarks.
`
`30.
`
`Mahco has, without consent or authorization from L.C. Industries, used and
`
`continues to use in interstate commerce the phrase “LEWIS & CLARK” in connection with its
`
`goods and promotions.
`
`31.
`
`Mahco’s use of a confusingly similar mark, whose primary element is “LEWIS &
`
`CLARK”, in connection with its advertisement and promotions of travel, adventure and outdoor
`
`products is likely to cause confusion and mistake, and is likely to deceive and has deceived the
`
`consuming public to believe that there is an affiliation, connection, or an association between
`
`Mahco and L.C. Industries, as well as confusion concerning the ownership, origin, sponsorship,
`
`or approval of Mahco’s solicitations, products and commercial activities by L.C. Industries.
`
`32.
`
`The conduct and acts of Mahco as set forth herein constitute false designation of
`
`origin, false advertising and unfair competition in violation of the Lanham Act, 15 U.S.C.
`
`§ 1125(a).
`
`33.
`
`Mahco’s aforementioned acts have been willful, intentional, in bad faith, and with
`
`full knowledge that L.C. Industries owns and has the exclusive right to use the LEWIS N.
`
`

`

`CLARK trademarks in connection with products for traditional travel, adventure travel, and
`
`outdoor activities, as well as everyday use, and related goods and services.
`
`34.
`
`As a direct and proximate result of the foregoing acts by Mahco, L.C. Industries
`
`has suffered, and continues to suffer, substantial damages not yet determinable,
`
`including
`
`irreparable injury for which there is no adequate remedy at law.
`
`COUNT III -
`
`Federal Trademark Dilution (15