Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`PO. Box 1450
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court son-X P O Box 61010 Housman the following D Patents or
`U Trademarks:
`
`
`
`
`
`“'5' °'STR’C§5H193‘i5 0 Box 61010 Houston, TX 77208
`DEFENDANT
` PLAINTIFF
`LeToumeau Technologies Drilling Systems
`
`Oilfield Electric Marine Inc
`
`
`
`
`
`PATENT OR
`TRADEMARK N0
`
`DATE OF PATENT
`HOLDER OF PATENT OR TRADEMARK
`OR TRADEMARK
`— Copy of Complaint mailed to Trademark Office
`
`
`
`
`
`
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`C] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`I] Answer
`
`D Cross Bill
`
`D Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`In the above-—-entitled case. the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`CLERK
`
`
`
`David J. Bradley, Acting Clerk
`
`(BY) DEPUTY CLERK
`Mary Mapps
`
`
`
`DATE
`
`
`
`1/13/2010
`
`
`
`Copy I-—Upon initiation of action, mail this copy to Director Copy 3——Upon termination of action. mail this copy to Director
`Copy 2——Upon filing document adding patent(s), mail this copy to Director Copy 4——Case file copy
`
`

`
`Case 4:10-cv-00109 Document 1
`
`Filed in TXSD on 01/12/10 Page 1 of9
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVIS ION
`
`CIVIL ACTION No.
`JURY TRIAL REQUESTED
`
`
`
`§ § § § §
`
`3
`
`§ §
`
`LETOURNEAU TECHNOLOGIES
`
`DRILLING SYSTEMS, INC.,
`
`Plaintiff,
`
`v.
`
`OILFIELD ELECTRIC MARINE INC,
`
`Defendant.
`
`COMPLAINT
`
`Plaintiff LeTourneau Technologies Drilling Systems, Inc. (“LeToumeau”) complains
`
`against Defendant Oilfield Electric Marine Inc (“Oilfield Electric Marine”), as follows:
`
`PRELIMINARY STATEMENT
`
`1.
`
`This is an action to reinstate U.S. Registration No. 3,008,509 for the mark OEM
`
`in accordance with Section 21 (b) of the Lanham Act. Specifically, the OEM registration was
`
`wrongly cancelled by the United States Trademark Trial and Appeal Board (“TTAB") in a
`
`default judgment issued in a cancellation proceeding initiated by Oilfield Electric Marine. This
`
`is also an action for trademark infringement of LeToumeau’s OEM mark. Upon information and
`
`belief, ioilfield Electric Marine is using the OEM mark and such use is unlawful and without
`
`authorization. Such tortious conduct constitutes, among other things, (1) false designation of
`
`origin under § 43(a) of the Lanham Act; (2) injury to business reputation under § 16.29 of the
`
`Texas Business and Commerce Code; and (3) unfair competition and unjust enrichment under
`
`Texas Common Law.
`
`
`
`

`
`Case 4:10-cv-00109 Document 1
`
`Filed in TXSD on 01/12/10 Page 2 of 9
`
`THE PARTI§§
`
`2.
`
`Plaintiff LeTourneau is a Texas corporation having its principal place of business
`
`at 6401 W. Sam Houston Parkway North, Houston, Texas 77041.
`
`3.
`
`Upon information and belief, Defendant Oilfield Electric Marine is a Texas
`
`corporation having an address at PO. Box 1359, Cypress, Texas 77410-1359. Oilfield Electric
`
`Marine may be served by sewing its registered agent for service of process at 11 1 1 1 Mccracken
`
`Circle, Unit C, Cypress, Texas 77429 Attn: Kevin R. Williams.
`
`JUg!§QICTIQN AND VENUE
`
`4.
`
`This action arises under the Lanharn Act, 15 U.S.C. § 1114, et seq. Consequently,
`
`subject matter jurisdiction exists under 28 U.S.C. § 1331.
`
`S.
`
`This Court has personal jurisdiction over Oilfield Electric Marine because Oilfield
`
`Electric Marine has minimum contacts with this forum. Upon information and belief, this Court
`
`has general jurisdiction over Oilfield Electric Marine due to its continuous and systematic
`
`activities within this forum. In addition, this Court has specific jurisdiction over Oilfield Electric
`
`Marine because this action arises from, and is directly related to, Oilfield Electric Marine’s
`
`actions purposefully directed to this forum. This Court’s exercise ofjurisdiction over Oilfield
`
`Electric Marine will not violate due process because, inter alia, Oilfield Electric Marine has
`
`sufficient contacts with this forum, and maintenance of this action will not offend traditional
`
`notions of fair play and substantial justice.
`
`6.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § l39l(b), because
`
`defendant Oilfield Electric Marine resides in the district.
`
`

`
`Case 4:10—cv-00109 Document 1
`‘I
`
`Filed in TXSD on 01/12/10 Page 3 of 9
`
`7.
`
`Venue is also proper in this judicial district pursuant to 28 U.S.C. § l39l(b),
`
`because a substantial part of the events or omissions giving rise to this claim occurred, and a
`
`substantial part of the property at issue is situated, in this judicial district.
`
`EA§[ QAQ BAQKGROUND
`
`;
`
`8.
`LeToumeau is a Texas corporation in the business of providing oilfic1d—related
`goods/services. A predecessor in interest to LeToumeau, Rowan Electric, lnc., registered the
`
`mark OEM on the Principal Register, U.S. Registration No. 3,008,509, in connection with
`
`“electrical distribution and control systems for AC and DC motors used in the oil and gas,
`
`marine boat and barge, mining, dredging and petrochemical industries; namely, switchgear,
`
`variable frequency drives, SCR-DC motor controllers, AC motor starters, unit substations, AC
`
`motors, control rooms and enclosures" in International Class 009, “custom fabrication services
`
`namely, fabrication of AC and DC motors and associated controllers, starters, and drives” in
`
`International Class 040 and “engineering and design of AC and DC motors and associated
`
`controllers, starters, and drives” in International Class 042. LeTourneau continues to use the
`
`OEM mark on the goods/services listed in the Registration.
`
`9.
`
`On July 6, 2009, Oilfield Electric Marine initiated a cancellation proceeding
`
`before the TTAB seeking cancellation of LeToumeau’s OEM mark on the basis of abandonment.
`
`10.
`
`Oilfield Electric Marine is a Texas corporation that was formed on October 15,
`
`2008. The Director and registered agent for Oilfield Electric Marine is Kevin R. Williams (“ML
`
`Williams"). Mr. Williams was employed by LeTourneau and was the President of Rowan
`
`Electric, lnc., the entity that registered the OEM mark.
`
`

`
`Case 4:10-cv-00109 Document 1
`
`Filed in TXSD on 01/12/10 Page 4 of 9
`
`._.......g_...___.__
`
`ll.
`
`Mr. Williams’ employment with LeToumeau’s predecessor in interest was
`
`terminated on April 29, 2005. During the course of his employment, Mr. Williams officed at
`
`LeTourneau’s current location at 6401 W. Sam Houston Parkway North, Houston, Texas 77041.
`
`12.
`
`In the Petition for Cancellation filed by Oilfield Electric Marine, the address
`
`provided for Rowan Electric, Inc. was an old address on Pinemont (“Pinernont Address”) and is
`
`no longer current. Mr. Williams was well aware that the old address was not current.
`
`Specifically, Mr. Williams moved to the current address from the old Pinernont Address which
`
`was actually owned by Mr. Williams and his parents.
`
`13.
`
`LeTourneau never received the Petition for Cancellation since Oilfield Electric
`
`Marine did not provide the TTAB with LeTourneau's current address. On September 2, 2009,
`
`the 'l'I‘AB issued a Notice of Default Judgment that was mailed to the Pinemont Address then
`
`returned as “unde1iverable". On November 12, 2009, the TTAB cancelled the OEM registration.
`
`14.
`
`Upon information and belief, and according to pending application to register the
`
`OEM mark, Oilfield Electric Marine is using and intends to use the OEM mark on the same
`
`oilfield-related goods as offered by Le'l‘oumeau. Such use is unlawful and unauthorized by
`
`LeTourneau.
`
`COUNT I
`
`WRONGFUL CANCELLATION OF TRADEMARK REGISTRATION
`
`15.
`
`16.
`
`17.
`
`The foregoing Paragraphs are incorporated herein by reference.
`
`This count arises under § 2l(b) of the Lanham Act, 15 U.S.C. § l70l(b).
`
`Oilfield Electric Marine’s intentional failure to provide the TTAB with a current
`
`address for LeToumeau to the best of Oilfield Electric Marine’s knowledge, as required by 37
`
`C.F.R. 2.1 l2(a), resulted in the TFAB wrongly cancelling LeToumeau's registration for the
`
`OEM mark by default judgment.
`
`

`
`Case 4:10—cv-00109 Document 1
`
`Filed in TXSD on 01/12/10 Page 5 of 9
`
`18.
`
`Oilfield Electric Marine's wrongful cancellation of LeTourneau‘s OEM
`
`registration as set forth above has caused, and unless the registration is reinstated, will continue
`
`to cause LeToumeau serious and irreparable damage and injury.
`
`COUNT II
`
`FALSE DESIGNATION OF ORIGIN UNDER § 43(a) OF THE LANHAM ACT
`
`19.
`
`The foregoing paragraphs are incorporated herein by reference.
`
`20.
`
`This count arises under § 43(3) of the Lanham Act, 15 U.S.C. § 1125(3).
`
`21.
`
`Oilfield Electric Marine’s unauthorized and unlawful acts as set forth above
`
`constitute a false designation of origin as to goods/services made available by Oilfield Electric
`
`Marine and a false and misleading representation of fact in violation of § 43(a) of the Lanham
`
`Act, 15 U.S.C. § ll25(a).
`
`22.
`
`Oilfield Electric Marine‘s unauthorized and unlawful acts as set forth above are
`
`likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or
`
`association of Oilfield Electric Marine’s goods/services with those goods/services offered by
`
`LeTourneau.
`
`23.
`
`24.
`
`25.
`
`CQUNI III
`
`INJURY TO BUSINESS REPUTATION AND
`DILUTION OF TRADEMARK UNDER TEXAS LAW
`
`The foregoing paragraphs are incorporated herein by reference.
`
`This count arises under § 1629 of the Texas Business and Commerce Code.
`
`Oilfield Electric Marine’s unauthorized and unlawful acts as set forth above have
`
`caused, and unless restrained by the Court, will continue to cause serious and irreparable injury
`
`and damage to the business reputation of LeTourneau.
`
`

`
`Case 4:10—cv—O0109 Document 1
`
`Filed in TXSD on 01/12/10 Page 6 of 9
`
`COUNT IV
`
`COMMON LAW UNFAIR COMPETITION AND UNJUST ENRICHMENT
`
`26.
`
`The foregoing paragraphs are incorporated herein by reference.
`
`27.
`
`This count arises under Texas common law.
`
`28.
`
`Oilfield Electric Marine’s unauthorized and unlawful acts as set forth above
`
`constitute violations of the common law of the State of Texas with respect to unfair competition
`
`and unjust enrichment.
`
`29.
`
`More particularly, and as set forth above, Oilfield Electric Marine, upon
`
`information and belief, has been selling, offering for sale, advertising and marketing oilfield-
`
`related goods/services using the OEM mark without pennission, authority or license from
`
`LeTourneau, in a manner likely to cause confusion or mistake, or to deceive the purchasing
`
`public into thinking they are genuine products/services emanating from LeTourneau. In fact,
`
`said goods/services do not originate from, are not sponsored by, and do not have the approval of
`
`any person or entity which has the right to use or reproduce LeToumeau’s OEM trademark.
`
`30.
`
`Oilfield Electric Marine’s willful use of the OEM mark will likely create
`
`confusion for customers buying with ordinary care. Such actions on the part of Oilfield Electric
`
`Marine are likely to cause mistake and confusion in the minds of the purchasing public and to
`
`deceive, all to LeToumeau’s serious and irreparable damage and injury.
`
`31.
`
`Oilfield Electric Marine‘s unauthorized and unlawful acts as set forth above, upon
`
`information and belief, have caused and, if allowed to continue, will continue to cause, sales of
`
`LeTourneau’s products/services to be lost and/or diverted to Oilfield Electric Marine.
`
`32.
`
`Oilfield Electric Marine’s unauthorized and unlawful acts as set forth above have
`
`enabled Oilfield Electric Marine to trade unlawfully upon the established goodwill and
`
`reputation of LeTourneau.
`
`

`
`Case 4:10-cv-00109 Document 1
`
`Filed in TXSD on 01/12/10 Page 7 of 9
`
`33.
`
`Oilfield Electric Marine is thereby unjustly enriching itself at the expense of, and
`
`to the damage and injury of, LeToumeau and, unless enjoined by this Court, will further impair,
`
`the value of Le'l‘ourneau’s business reputation and goodwill.
`
` EI
`
`WHEREFORE, PLAINTIFF PRAYS:
`
`A.
`
`That it be declared, held and adjudged that the OEM registration be reinstated and
`
`the Director of the United States Patent and Trademark Office be authorized to reinstate the
`
`registration;
`
`B.
`
`That it be declared, held, and adjudged that Oilfield Electric Marine is liable for
`
`false designation of origin under the federal Lanham Act, that Oilfield Electric Marine is liable
`
`for injuring LeToumeau’s business reputation under the Federal Lanham Act, Texas Statutes
`
`and Texas common law, and that Oilfield Electric Marine is liable for unfair competition and
`
`unjust enrichment under Texas common law;
`
`C.
`
`That Oilfield Electric Marine, all of its officers, if any,
`
`its agents, servants,
`
`employees, attorneys and all persons in active concert or participation therewith, who receive
`
`notice of the order of this Court be preliminarily and permanently enjoined and restrained:
`
`(i)
`
`from further violation of any of the exclusive rights of LeToumeau in the
`
`OEM mark by, inter alia, the use of such mark or any colorable imitation thereof,
`
`including without
`
`limitation such use on oilfield—related goods/services and other
`
`goods/services specified in LeTourneau’s registration of the OEM mark andlor any
`
`advertising or marketing materials therefore;
`
`(ii)
`
`from otherwise infringing the OEM mark in any manner whatsoever; and
`
`

`
`Case 4:10-cv-00109 Document 1
`
`Filed in TXSD on 01/12/10 Page 8 of 9
`
`(iii)
`
`from engaging in any acts or activities directly or indirectly calculated to
`
`trade upon or injure the reputation or the goodwill of LeToumeau or in any manner to
`
`cause confusion in the mind of the public by appropriating the OEM mark.
`
`D.
`
`That an accounting and judgment be rendered in favor of LeTourneau and against
`
`Oilfield Electric Marine for”.
`
`(i)
`
`all profits received by Oilfield Electric Marine from the sale of
`
`goods/services bearing or promoted by the OEM mark on account of Oilfield Electric
`
`Marine’s violation of l 5 U.S.C. § 1125;
`
`(ii)
`
`all damages suffered by Le'I‘oumeau as a result of Oilfield Electric
`
`Marine’s violation of 15 U.S.C. § I125, including treble damages for, inter alia, Oilfield
`
`Electric Marine’s willful behavior, and exemplary damages;
`
`(iii)
`
`all damages suffered by LeToumeau as a result of Oilfield Electric
`
`Marine’s violation of Texas’ unfair competition law and Oilfield Electric Marine’s unjust
`
`enrichment; and
`
`(iv)
`
`any and all other damages suffered by LeTourneau as a result of Oilfield
`
`Electric Marine’s infiingement ofthe OEM mark.
`
`E.
`
`That LeTourneau receive its costs in this action,
`
`including an award of its
`
`reasonable attorney fees as provided by 15 U.S.C. § l1l7(a) and/or any other applicable
`
`law;
`
`F.
`
`That the Court award Le'I‘oumeau pre-judgment and post—judgment interest as
`
`may be allowed by law; and
`
`G.
`
`That the Court allow LeToumeau such other relief, legal or equitable, to which it
`
`may be entitled.
`
`

`
`0!
`
`Case 4:10-cv-00109 Document 1
`
`Filed in TXSD on 01/12/10 Page 9 of 9
`
`Plaintiff LeToumeau demands, in accordance with Federal Rule of Civil Procedure 38(b),
`
`J QEY DEMAND
`
`a trial by jury of all issues triable by a jury.
`
`Respectfully submitted,
`
`§L$_t§1m LB9__gmnLr‘ ________
`Steven R. Borgman
`Texas Bar No. 02670300
`
`sborgman@ve1aw.com
`W. Scott Brown
`Texas Bar No. 03177090
`
`sbrown@vclaw.com
`Phillina Lai
`Texas Bar No. 24055811
`
`p1ai@vela.com
`VINSON & ELKINS, L.L.P.
`1001 Fannin Street
`Suite 2500
`
`Houston, TX 77002-6760
`Phone: 713-758—2002
`Facsimile: 713-615~5758
`
`ATTORNEYS FOR PLAINTIFF
`LBTOURNEAU TECHNOLOGIES
`DRILLING SYSTEMS, INC.
`
`‘ by permission
`
`Date! Ll9.l;ELl.Z.2QJ_Q
`
`US 226426v.l
`
`

`
`V:
`
`Case 4:10-cv-00109 Document 1-1
`
`Filed in TXSD on 01/12/10 Page 1 of1
`
`usu (Rev. um)
`
`CIVIL COVER SHEET
`had bylaw. except as p:o_\~id:d
`The JS 44 civil covcr shect -nd Ilncmfotumion contained herein ncilhet
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`I&‘yeI::).|cvuiI‘r:°1:£;I"s:l:;::.;t. Rtglévlilguited mm in Scplembtr 1974. is Icquu-ed for
`use ofK Clarkof mm for the purpose ofmilming
`DEFENDANTS
`I. (8) PLAINTIFFS
`LETOURNEAU TECHNOLOGIES DRILLING SYSTEMS. INC.
`
`OILFIELD ELECTRIC MARINE INC
`
`(12) County ofRc9id:ncc uI'I"ils1I.isted Plaintiff Han'is
`(EXCEPT IN U S PLA]N'l1FF CASES)
`
`
`County of Residence of First Lined Defandant
`(INUS PLAINIIFFCASESONLY)
`NOTE IN LAND CONDEMNATION CASES. USE THE LOCATION OF THE
`LAND INVOLVED
`
`(c) Attorney's (Fm Name. Address. and mqabooe Number)
`Steven R. Bergman. 1001 Fannin, suite 2500, Houston. TX 77002
`
`Annmeys ('lfKm~m)
`John S. Egbert, 412 Main Street, Floor 7, Houston, TX 77002
`
`II. BASIS OF JURISDICTION (Plat: In "X" m one Bax only)
`
`3 l U 5 Government
`Plnmuff
`
`1! 3 Fedml Qucsuon
`(U S Govu-nmeulNoI u Pmy)
`
`32 US.Oovetnmun
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`
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`
`III. CITIZENSHIP OF PRINCIPAL PARTIES(Puc: sn“X"m On: Box fm Plunun‘
`(I-‘w Dnvu-suy (‘us only)
`and One Box for Defendant)
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`
`
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`D 450 Cummau
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`U 480 Cmmmrr Cred“
`3 152 Rawvu-y of Defaulted
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`
`
`CHECK YES only rfdcmanded :0 vornplunr
`may nuunm :1 Yes
`:1 No
`
`
`
`VI. CAUSE OF ACTION
`
`VI]. REQUESTED IN
`compuunq-,
`VIII. RELATED CASE(S)
`IF ANY
`
`Bricfdcscri (ion ofcuuw:
`
`
`
`Relnsta emem or trademark regustrauon
`0 CHECK u= nus IS A cuss ACTION
`DEMAND 3
`UNDER I-'.R.C.P. 23
`
`5°‘ ““"“““°"" moon
`
`DOCKET NUMBER
`
`DATE
`
`
`01/13/2010
`
`
`
`RECEIPT ii
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAO JUDGE