Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA893253
`
`Filing date:
`
`04/30/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067945
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Neal Technologies, Inc.
`
`Richard L. Schwartz
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 COMMERCE STREET, SUITE 3500
`FORT WORTH, TX 76102
`UNITED STATES
`Email: tgwynne@whitakerchalk.com, rschwartz@whitakerchalk.com
`
`Other Motions/Papers
`
`Richard L. Schwartz
`
`rschwartz@whitakerchalk.com, tgwynne@whitakerchalk.com
`
`/RichardLSchwartz26611.0039/
`
`04/30/2018
`
`NTI v UMI Cancellation Response to Request .pdf(157057 bytes )
`Exhibit A No 33.pdf(507415 bytes )
`Exhibit B No 55.pdf(130413 bytes )
`Exhibit C No 56.pdf(130720 bytes )
`Exhibit D No 57.pdf(157225 bytes )
`Exhibit E No 60.pdf(300064 bytes )
`Exhibit F No 184.pdf(122870 bytes )
`Exhibit G No 202.pdf(412120 bytes )
`Exhibit H Hearing Transcript Excerpts.pdf(155296 bytes )
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`UNIQUE MOTORSPORTS, INC.
`
`Petitioner,
`
`v.
`
`Cancellation No.: 92067945
`
`Registration Nos.: 5220129
`NEAL TECHNOLOGIES, INC. (cid:9) and 5130772
`
`Respondent.
`
`RESPONSE TO REQUEST
`
`In response to the TTAB's April 19, 2018 request to file a copy of the complaint and answer
`
`filed in the District Court, Respondent tenders herewith the last active party pleadings (without
`
`extensive pleading exhibits) as follows:
`
`DOC
`NO. (cid:9)
`DESCRIPTION (cid:9)
`33 NTI's First Amended Complaint (cid:9)
`
`EXHIBIT
`A
`
`55 UMI's Fourth Amended Answer to NTI's First Amended Complaint, Fifth (cid:9)B
`Amended Counterclaims
`
`56 Dustin Helm's Third Amended Answer to NTI's First Amended Complaint,
`Second Amended Counterclaims
`
`57 Nathan Hall's Fourth Amended Answer to NTI's First Amended Complaint,
`Second Amended Counterclaims
`
`60 NTI's Answer to UMI's Fifth Amended Counterclaims and Dustin Helm's and
`Nathan Hall's Second Amended Counterclaims
`
`NTI= Respondent Neal Technologies, Inc. and UMI= Petitioner Unique Motorsports, Inc.
`
`After a 4-day jury trial during August 1-4, 2016, on January 20, 2017, the District Court
`
`entered its "Final Judgment and Permanent Injunction" (Dkt. 184, hereafter "Final Judgment"),
`
`attached hereto as Exhibit F. In this lawsuit, Petitioner/Defendant Unique Motorsports, Inc. and
`
`the two named individual Defendants challenged the validity of Respondent/Plaintiff Neal
`
`Technologies, Inc. U.S. Registration Nos. 4,235,578 for BulletProofDiesel.com and 4,262,825 for
`
`1
`
`

`

`BulletProofDiesel.com and Design, by counterclaim. In its Final Judgment, the Court ordered that
`
`Defendants "shall TAKE NOTHING of and from their counterclaims against Plaintiff Neal
`
`Technologies, Inc."
`
`Further, it should be noted that this cancellation proceeding is based upon two of
`
`Respondent's "Bullet Proof' U.S. Registrations, namely Registration No. 5,130,772 and No.
`
`5,220,129, both of which issued AFTER the District Court's Final Judgment and Permanent
`
`Injunction. Shortly after the entry of the Court's Final Judgment, on February 3, 2017 Petitioner
`
`Unique Motorsports, Inc. filed for Chapter 11 Bankruptcy Protection. That bankruptcy resulted in
`
`a plan confirmation on September 27, 2017 that became effective on October 12, 2017.
`
`Petitioner/Defendant Unique Motorsports, Inc. filed no appeal from the District Court's Final
`
`Judgment.
`
`On January 20, 2018, Respondent/Plaintiff Neal Technologies, Inc. filed its Motion to Hold
`
`Petitioner/Defendant Unique Motorsports, Inc. in contempt of the Permanent Injunction. As a
`
`result, the District Court issued a Show Cause Order (Dkt. 202) on February 26, 2018 (Exhibit G)
`
`for Defendant Unique Motorsports, Inc. and its attorneys to show cause at a hearing set for April
`
`6, 2018 why they should not be held in contempt.
`
`On April 6, 2018, a hearing was held on the Show Cause Order. At that hearing,
`
`Petitioner/Defendant Unique Motorsports, Inc. represented to the Court that Unique Motorsports,
`
`Inc. has "recently ceased doing business" (see attached Exhibit H, selected pages from the
`
`transcript of the Show Cause Hearing, at 22:5-25 — 23:1-8).
`
`REQUEST
`
`Respondent Neal Technologies, Inc. requests that in view of Petitioner Unique
`
`Motorsports, Inc.'s professed cessation of doing business, that this cancellation proceeding be
`
`2
`
`

`

`suspended. If the Petitioner, who alleges that it will be damaged as a result of the Respondent's
`
`registration [15 U.S.C. §1064; 37 C.F.R. §2.111(b)], ceases to exist - - then there is no "person"
`
`or entity [37 C.F.R. §2.2(b)] that can be damaged by Respondent's registrations.
`
`As such, Respondent Neal Technologies, Inc. asks that this cancellation proceeding be
`
`suspended or seeks further relief from the TTAB as it deems appropriate under the circumstances
`
`of this matter.
`
`Richard L. Schwartz
`Texas Bar No. 17869500
`rschwartz(d'whitals:crchalk.com
`Lead Counsel in Charge
`
`Thomas F. Harkins, Jr.
`Texas Bar No. 09000990
`tharkinsrliwhitakerchalk.com
`WHITAKER CHALK SWINDLE
`& SCHWARTZ PLLC
`301 Commerce Street, Suite 3500
`Fort Worth, Texas 76102
`Phone: (817) 878-0500
`Fax: (817) 878-0501
`
`ATTORNEYS FOR RESPONDENT
`NEAL TECHNOLOGIES, INC.
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing document was served Lir
`Petitioner Unique Motorsports, Inc. via electronic ail service upon Dustin Helms, on this (cid:9)
`day of April, 2018.
`
`Richard L. Schwartz
`
`3
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 1 of 16 PageID #: 494
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
`
`
`NEAL TECHNOLOGIES, INC.
`
`
`Plaintiff,
`
`
`VS.
`
`
`UNIQUE MOTORSPORTS, INC.,
`DUSTIN HELMS, and NATHAN HALL,
`
`
`Defendants.
`
`
`
`
`
`§
`§
`§
`§
`§ Civil Action No. 4:15-cv-385-RC-CMC
`§
`
`
`§ JURY TRIAL DEMANDED
`§
`§
`§
`§
`
`
`
`
`
`NTI’S FIRST AMENDED COMPLAINT
`
`Plaintiff Neal Technologies, Inc. (“NTI”) files this First Amended Complaint against
`
`Defendants Unique Motorsports, Inc. (“UMI”), Dustin Helms (“Helms”), and Nathan Hall (“Hall”)
`
`(collectively, the “Defendants”).
`
`Nature of Action
`
`
`
`1.
`
`This is an action under the Lanham Act, 15 U.S.C. § 1051, et seq., and Texas law
`
`for trademark infringement, unfair competition, and false advertising.
`
`Parties
`
`
`
`2.
`
`NTI is a corporation organized and existing under the laws of the State of Arizona
`
`with its principal place of business in Mesa, Arizona.
`
`
`
`3.
`
`UMI is a corporation organized and existing under the laws of the State of Texas,
`
`with its principal place of business located at 500 East Business 121, Lewisville, Denton County,
`
`Texas 75057. UMI may be served with process by serving its registered agent, Dustin Helms, at
`
`500 East Business 121, Lewisville, Denton County, Texas 75057. UMI has appeared and
`
`answered.
`
`
`
`1
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 2 of 16 PageID #: 495
`
`
`
`4.
`
`Dustin Helms is an individual who is a citizen of the State of Texas and an owner
`
`and officer of UMI. Helms may be served with process at his principal place of business Unique
`
`Motorsports Inc., 500 East Business 121, Lewisville, Denton County, Texas 75057.
`
`
`
`5.
`
`Nathan Hall is an individual who is a citizen of the State of Texas and, upon
`
`information and belief, an owner of UMI. Hall may be served with process at his principal place
`
`of business Unique Motorsports Inc., 500 East Business 121, Lewisville, Denton County, Texas
`
`75057.
`
`Jurisdiction and Venue
`
`
`
`6.
`
`This Court has jurisdiction over the subject matter of this action pursuant to 15
`
`U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338, and 1367.
`
`
`
`7.
`
`This Court has personal jurisdiction over UMI because UMI is a Texas corporation,
`
`has its principal place of business in Texas, and transacts business in Texas. This Court has
`
`personal jurisdiction over Helms and Hall because they are Texas citizens and conduct business in
`
`Texas.
`
`
`
`8.
`
`Venue is proper in this district under 28 U.S.C. § 1391(b) and (c) because UMI
`
`resides within the Eastern District of Texas and because a substantial part of the events or
`
`omissions giving rise to this complaint occurred within the Eastern District of Texas.
`
`Factual Allegations
`
`NTI and Its Marks
`
`
`
`9.
`
`NTI is an Arizona-based manufacturer and worldwide seller of aftermarket diesel
`
`truck parts and related services, including upgraded oil coolers for Ford Power Stroke® engines
`
`known as BulletProof EGR Coolers. Since at least as early as 2008, and long before UMI adopted
`
`and began using its infringing designations, NTI has marketed such goods and services under the
`
`
`
`2
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 3 of 16 PageID #: 496
`
`inherently distinctive “BULLETPROOF”, “BULLET PROOF”, and “BULLET PROOF DIESEL”
`
`trademarks.
`
`
`
`10.
`
`In addition, since at least as early as June 1, 2009, NTI has continuously used in
`
`commerce the BulletProofDiesel.com mark. NTI obtained U.S. Registration No. 4,235,578 on
`
`November 6, 2012. A copy of this Registration is attached hereto as Exhibit A.
`
`
`
`11.
`
`Similarly, and again since at least as early as June 1, 2009, NTI has continuously
`
`used in commerce the BulletProofDiesel.com and Design mark. NTI obtained U.S. Registration
`
`4,262,825 on December 25, 2012:
`
`
`
`A copy of this Registration is attached hereto as Exhibit B. NTI has been using the BULLET
`
`PROOF DIESEL word mark for at least six years, resulting in NTI’s common law priority
`
`ownership of that word mark.
`
`
`
`12.
`
`Collectively, the marks alleged above in Paragraphs 9, 10, and 11 are referred to
`
`herein as the “BulletProof Marks.”
`
`
`
`13.
`
`NTI has invested hundreds of thousands of dollars in advertising, marketing, and
`
`promoting its goods and services under the BulletProof Marks.
`
`
`
`14.
`
`These marketing and promotional efforts
`
`include operating a website,
`
`www.bulletproofdiesel.com, developed and owned by NTI, an active Facebook page, and
`
`
`
`3
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 4 of 16 PageID #: 497
`
`continuous and extensive nationwide advertisements in most of the leading truck magazines (such
`
`as Diesel Power, Off Road, Diesel World, Four Wheeler, 8-Lug, and Truckin).
`
`
`
`15.
`
`To further advertise, market, and promote its BulletProof Marks, NTI has spent
`
`considerable sums to sponsor racing teams competing in both the Score International Racing
`
`Series, which has events in Mexico and California, the Lucas Oil Off Road Racing Series, which
`
`has events in California, Arizona, Utah, and Nevada. Events from both racing series are broadcast
`
`nationally on the CBS Sports Network. NTI has also sponsored events held by the National Hot
`
`Rod Diesel Association in Ennis, Texas
`
`
`
`16.
`
`NTI has also been the subject of numerous national magazine articles that have
`
`prominently featured the BulletProof Marks, including Off-Road, Diesel Power, Diesel Tech,
`
`Diesel World, RV, and Four Wheeler.
`
`
`
`17.
`
`In addition, NTI has built a successful network of over 150 preferred BULLET
`
`PROOF DIESEL parts installers across the United States and Canada, further enhancing NTI’s
`
`brand recognition and consumer loyalty. One such authorized installer is NTX Diesel, located in
`
`Lewisville, Texas, less than 5 miles away from UMI’s place of business.
`
`UMI
`
`
`
`18.
`
`Upon information and belief, UMI customizes, repairs, modifies, and sells cars and
`
`trucks, including rebuilding and retrofitting engines. UMI markets itself as having a “specialty ...
`
`in 6.0 [Ford] Powerstroke diesel performance.”
`
`
`
`19.
`
`In that regard, UMI has at relevant times marketed itself on its Google+ page,
`
`https://plus.google.com/100103624505240262292/about, as being “the leaders in Bulletproof
`
`F250s and F350s” and has stated that “We Bullet Proof more than 250 trucks a year, more than
`
`
`
`4
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 5 of 16 PageID #: 498
`
`any other shop in the country.” A screenshot of UMI’s Google+ page as of June 5, 2015 is attached
`
`hereto as Exhibit C.
`
`
`
`20.
`
`On the homepage of its website, www.unique-motorsports.com/home/, UMI has at
`
`relevant times boasted that “Unlike most of our competition who does bulletproof packages, our
`
`Earthquake Packages include some very unique and specific differences that the majority of our
`
`competition just does not have.” Elsewhere on UMI’s website, UMI has boasted “Unlike the
`
`“bulletproof package” you may have heard about before, our packages offer a variety of
`
`differences that we believe will make your truck last longer and perform better.” Screenshots of
`
`UMI’s homepage of its website and its “Ford Powerstroke Diesel Performance” page as of June 5,
`
`2015 are attached hereto as Exhibits D and E respectively.
`
`
`
`21.
`
`UMI also advertises certain Ford Power Stroke® diesel performance packages on
`
`its website identified as “Earthquake Packages.” For the Stage 3, 4, and 5 “Earthquake Packages”
`
`for Powerstroke 6.0L 2003-2007 diesel engines, UMI offers the option of selecting either an “EGR
`
`Delete or Bulletproof EGR.”1
`
`
`
`22.
`
`Finally, UMI maintains an active Twitter account: https://twitter.com/umotorsport.
`
`In one tweet, UMI stated “Were about to take a customers 6.0 powerstroke to the next level! Stay
`
`tuned #builtpowerstroke #bulletproof #fastdiesel.” A screenshot of UMI’s Twitter feed as of June
`
`5, 2015 is attached hereto as Exhibit F.
`
`
`
`23.
`
`Notwithstanding these numerous references to NTI’s BulletProof Marks, upon
`
`information and belief, UMI does not sell or install NTI’s BulletProof aftermarket diesel parts, and
`
`NTI has never granted UMI the right to use the BulletProof Marks in any manner.
`
`
`1 See Ex. E at pp. 2-3.
`
`
`
`5
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 6 of 16 PageID #: 499
`
`
`
`24.
`
`The terms BULLETPROOF, Bulletproof, bulletproof, and Bullet Proof, as used in
`
`UMI’s marketing, advertising, and promotional materials, including its website, are referred to
`
`herein as the “Infringing Designation.”
`
`
`
`25.
`
`Although not affiliated with or endorsed by NTI in any manner, UMI has refused
`
`to permanently discontinue its unauthorized use of the Infringing Designation.
`
`NTI Notifies and Demands UMI Cease and Desist
`
`
`
`26.
`
`On or about February 4, 2015, counsel for NTI sent a cease and desist letter to
`
`UMI’s owner and registered agent, Dustin Helms, notifying UMI that it was infringing on NTI’s
`
`Marks and that such infringing must cease.
`
`
`
`27.
`
`On February 9, 2015, Helms responded to the cease and desist letter by email and
`
`stated “We will comply with your cease and desist. We will need 2 weeks to change everything
`
`over and we will no longer use the BULLETPROOF term to describe our builds. Please let me
`
`know if this is acceptable.”
`
`
`
`28.
`
`On February 26, 2015, “Bulletproof” remained on UMI’s website and counsel for
`
`NTI emailed Helms again asking him to remove them. He included a printout of UMI’s website
`
`highlighting the remaining uses of Bulletproof. On the same day, Helms emailed counsel for NTI
`
`and informed him that he would “forward this to our attorney to get his thoughts . . . and get back
`
`to you on this.”
`
`
`
`29.
`
`On May 1, 2015, after having received nothing further from UMI, counsel for NTI
`
`emailed Helms and again asked him to remove all remaining references to BULLETPROOF from
`
`UMI’s website.
`
`
`
`6
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 7 of 16 PageID #: 500
`
`
`
`30.
`
`On May 5, 2015, Helms responded that “We have changed our terminology on our
`
`packages and we have also re worded all of our advertisement. Please tell me how we are not
`
`complying. We are calling our package the Earthquake package now . . . .”
`
`
`
`31.
`
`On May 5, 2015, counsel for NTI referred Helms and NTI to the February 26th
`
`attachment and stated that “All of that highlighted language must be removed.” On May 6, Helms
`
`replied “Ok please give me a few days to look through this.”
`
`
`
`32.
`
`On May 18, 2015, nearly two weeks later, counsel for NTI emailed Helms and
`
`informed him he had “ample time to investigate and respond to our cease and desist demands. If
`
`we do not hear from you by the end of the week, our client intends to file a suit for trademark
`
`infringement, false advertising, and unfair competition against you and your business. To avoid
`
`such an outcome, please remove all remaining BULLETPROOF references from your website by
`
`Friday.”
`
`
`
`33.
`
`On May 22, 2015, Helms responded that “My internet is down till probably
`
`wednesday but we will attempt to make changes when we’re back online.”
`
`
`
`34.
`
`A copy of the correspondence referred to in Paragraphs 26 through 33 is attached
`
`hereto as Exhibit G.
`
`
`
`35.
`
`NTI demanded that UMI cease using the Infringing Designation and the
`
`BulletProof Marks, but UMI failed and refused to permanently cease such use.
`
`Helms and Hall Actively
`and Knowingly Caused the Infringement
`
`On information and belief, at all relevant times Helms and Hall were, and are
`
`
`
`36.
`
`currently, the owners, officer, and operators of UMI. Helms and Hall have personally directed,
`
`controlled, ratified, participated in, and were the moving force behind UMI’s infringing activity
`
`described above.
`
`
`
`7
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 8 of 16 PageID #: 501
`
`
`
`37.
`
`For example, Helms and Hall designed UMI’s website to tout UMI as “The leaders
`
`in Bulletproof Diesels” and offered diesel packages that included a “Bulletproof EGR.” Helms
`
`and Hall also commissioned window stickers and signage for their store location that repeated this
`
`slogan:
`
`
`
`
`
`38.
`
`Helms and Hall also personally advertised and sold numerous diesel trucks as
`
`“BulletProof” or containing a “Bulletproof” package despite the fact that Helms and Hall knew
`
`that many, if not all, did not have NTI’s after-market diesel products installed in them. Helms and
`
`Hall personally corresponded with potential and actual buyers of these deceptively-described
`
`“BullletProof” diesel trucks and told those buyers UMI was selling NTI’s products.
`
`
`
`39.
`
`Helms and Hall also personally maintained Twitter and Facebook accounts on
`
`behalf of UMI that routinely touted their “Bulletproof” services and trucks despite the fact UMI
`
`never installed NTI’s after-market diesel products known by that mark.
`
`
`Count 1
`
`Federal Trademark Infringement
`In Violation of Lanham Act § 32 (15 U.S.C. § 1114(1))
`
`NTI repeats and reasserts all allegations contained in Paragraphs 1 through 39
`
`
`
`40.
`
`above as if they were stated in full herein.
`
`
`
`8
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 9 of 16 PageID #: 502
`
`
`
`
`
`
`
`41.
`
`This is a claim by NTI for infringement of its trademarks.
`
`42.
`
`The BulletProof Marks are in full force and effect and have never been abandoned.
`
`43.
`
`The BulletProof Marks are inherently distinctive or, alternatively, have acquired
`
`distinctiveness through extensive promotion and advertising.
`
`
`
`44.
`
`The BulletProof Marks are owned by NTI and are widely used by NTI throughout
`
`the United States.
`
`
`
`45.
`
`NTI intends to reserve and maintain its rights with respect to the BulletProof Marks
`
`and to continue to use its BulletProof Marks in connection with the sale of aftermarket diesel truck
`
`parts and related goods and services, including goods and services that directly compete with those
`
`offered, marketed, and sold by UMI under the Infringing Designation.
`
`
`
`46.
`
`By virtue of the goodwill and reputation for quality associated with the BulletProof
`
`Marks and NTI’s extensive efforts at promoting, advertising, and utilizing the BulletProof Marks,
`
`the BulletProof Marks have developed a secondary meaning and significance in the minds of those
`
`in the market for aftermarket diesel truck parts and related goods and services. The goods and
`
`services provided under the BulletProof Marks are immediately identified by the purchasing public
`
`with NTI (or as emanating from a single source).
`
`
`
`47.
`
`The Defendants’ unauthorized use of the BulletProof Marks and Infringing
`
`Designation in order to sell its own aftermarket diesel performance packages for Ford Power
`
`Stroke® diesel trucks, as alleged herein, reproduces, counterfeits, copies, colorably imitates, and
`
`constitutes infringement of NTI’s BulletProof Marks and is likely to cause confusion and mistake
`
`in the minds of the purchasing public as to the source of the goods and services in violation of 15
`
`U.S.C. § 1141(1).
`
`
`
`9
`
`

`

`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 10 of 16 PageID #: 503
`
`
`
`48.
`
`The actions of Defendants complained of herein constitute willful and intentional
`
`infringement of the BulletProof Marks in total disregard of NTI’s proprietary rights. Those actions
`
`were commenced and have continued in spite of the Defendants’ knowledge that the use of any of
`
`the BulletProof Marks, or any reproduction, counterfeit, copy, or colorable imitation thereof, was
`
`and is in direct contravention of NTI’s rights.
`
`
`
`49.
`
`The Defendants’ unauthorized use of the BulletProof Marks is greatly and
`
`irreparably damaging to NTI in the form of: (i) loss of income, sales revenue and profits; (ii)
`
`interference with NTI’s ability to exploit its rights; (iii) confusion in the marketplace as to the duly
`
`authorized source of the goods and services provided in connection with the BulletProof Marks;
`
`and (iv) impairment of the goodwill NTI has in its BulletProof Marks. If not enjoined, NTI will
`
`suffer irreparable damage to its rights in the BulletProof Marks and its business, reputation, and
`
`goodwill.
`
`
`
`
`
`50.
`
`NTI has no adequate remedy at law.
`
`51.
`
`NTI is entitled to permanent injunctive relief against the Defendants under 15
`
`U.S.C. § 1116.
`
`
`
`52.
`
`NTI is entitled to recover from the Defendants their profits, all damages that NTI
`
`has sustained from the Defendants’ infringement, prejudgment interest, and the costs associated
`
`with this action under 15 U.S.C. § 1117.
`
`
`
`53.
`
`The Defendants’ conduct renders this an exceptional case. Accordingly, NTI is
`
`also entitled to recover from the Defendants treble damages and reasonable attorney’s fees under
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`15 U.S.C. § 1117.
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`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 11 of 16 PageID #: 504
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`Count 2
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`Unfair Competition, False Designation of Origin, and False Descriptions
`In Violation of Lanham Act § 43(a) (15 U.S.C. § 1125(a))
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`NTI repeats and reasserts all allegations contained in Paragraphs 1 through 53
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`54.
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`above as if they were stated in full herein.
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`55.
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`The BulletProof Marks are each individually distinctive, because they have been
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`used throughout the United States and are well known to the trade and to those in the market for
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`aftermarket diesel truck parts and related goods and services.
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`56.
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`Those in the market for aftermarket diesel truck parts and related goods and services
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`associate and identify the BulletProof Marks with NTI and/or the goods and services NTI provides
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`(or associates them with a single source), including the manufacturing and sale of Bullet Proof
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`EGR coolers designed specifically for Ford Power Stroke® diesel trucks.
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`57.
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`The Defendants’ conduct in the advertising, sale, and offering for sale of
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`aftermarket diesel trucks, truck parts, and related goods and services under the Infringing
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`Designation, and the Defendants’ use of the BulletProof Marks, constitutes false designation of
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`origin or sponsorship of UMI’s goods and services and tends falsely to represent that UMI’s goods
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`and services originate from NTI (or from the same source that markets and sells goods and services
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`under the BulletProof Marks) or that such goods and services of UMI have been sponsored,
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`approved, or licensed by NTI or are in some way affiliated or connected with NTI, all in violation
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`of 15 U.S.C. § 1125(a).
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`58.
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`By way of example, the Defendants list the “Bulletproof EGR” as an option in its
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`Earthquake Packages 3, 4, and 5 even though, upon information and belief, UMI does not sell or
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`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 12 of 16 PageID #: 505
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`install NTI Bullet Proof EGR coolers.2 In addition, the Defendants claim on UMI’s website that
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`“Unlike the ‘bulletproof package’ you may have heard about before, our packages offer a variety
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`of differences that we believe will make your truck last longer and perform better.”3 By this
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`statement, the Defendants are claiming that UMI’s diesel performance package is a “bulletproof
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`package.” These are false or misleading statements of fact that deceive or are likely to deceive
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`potential customers in a material way that are likely to influence the consumer’s purchasing
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`decision.
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`59.
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`The Defendants have also engaged in false comparative advertising by claiming
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`that its Earthquake Packages “will make your truck last longer and perform better” than other
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`“bulletproof packages.”4 This is a false or misleading statement of fact about UMI’s product which
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`has deceived or has the capacity to deceive a substantial segment of potential consumers and is
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`material, in that it is likely to influence the consumer’s purchasing decision. The Defendants are
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`claiming that UMI’s diesel performance packages will make potential consumers’ trucks last
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`longer and perform better than trucks containing NTI’s after-market diesel performance
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`BulletProof products without any substantiation.
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`60.
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`The Defendants’ actions were done willfully in full knowledge of the falsity of such
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`designations of origin and such descriptions or representations and of the statements of fact and
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`with express intent to cause confusion, mislead, and deceive the purchasing public.
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`61.
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`62.
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`The Defendants’ unlawful acts constitute commercial use in interstate commerce.
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`The Defendants’ unauthorized use of the BulletProof Marks is greatly and
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`irreparably damaging to NTI in the form of: (i) loss of income, sales revenue, and profits;
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`2 See Ex. E at pp. 2-3.
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`3 See id. at p. 1.
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`4 See id.
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`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 13 of 16 PageID #: 506
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`(ii) interference with NTI’s ability to exploit its rights; (iii) confusion in the marketplace as to the
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`duly authorized source of the goods and services provided in conjunction with the BulletProof
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`Marks; and (iv) impairment of the goodwill NTI has in its BulletProof Marks. If not enjoined,
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`NTI will continue to suffer irreparable injury to its rights in the BulletProof Marks and to its
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`business, reputation and goodwill.
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`63.
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`NTI has no adequate remedy at law.
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`64.
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`NTI is entitled to permanent injunctive relief against the Defendants under 15
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`U.S.C. § 1116.
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`65.
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`NTI is entitled to recover from the Defendants, and Defendants are jointly and
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`severally liable to NTI for Defendants’ profits, all damages that NTI has sustained from the
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`Defendants’ infringement, prejudgment interest, and the costs associated with this action under 15
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`U.S.C. § 1117.
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`66.
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`The Defendants’ conduct renders this an exceptional case. Accordingly, NTI is
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`also entitled to recover from the Defendants treble damages and reasonable attorney’s fees under
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`15 U.S.C. § 1117.
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` Count 3
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`Trademark Infringement and Unfair Competition Under Texas Common Law
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`67.
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`NTI repeats and reasserts all allegations contained in Paragraphs 1 through 66
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`above as if they were stated in full herein.
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`68.
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`NTI is, and at all times mentioned in this Complaint has been, engaged in the
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`business of manufacturing and selling aftermarket diesel truck parts and related services, including
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`upgraded oil coolers for Ford Power Stroke® engines known as BulletProof EGR Coolers. NTI
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`owns the registered BulletProof Marks identified herein.
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`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 14 of 16 PageID #: 507
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`69.
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`The Defendants, without NTI’s consent, are using, or have used, a reproduction,
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`counterfeit, copy, or colorable imitation of NTI’s BulletProof Marks in connection with selling,
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`offering for sale, or advertising of goods and services, namely its own aftermarket diesel
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`performance packages for Ford Power Stroke® diesel trucks.
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`70.
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`The Defendants’ use of NTI’s BulletProof Marks and/or the Infringing Designation
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`is likely to deceive or cause confusion or mistake as to the source or origin of UMI’s goods or
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`services. As alleged in more detail above, the Defendants’ acts constitute federal trademark
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`infringement under Section 32 of the Lanham Act. These acts also constitute trademark
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`infringement and unfair competition under Texas common law.
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`71.
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`Unless the Defendants are enjoined from the acts complained of, NTI will suffer
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`irreparable harm, for which NTI has no adequate remedy at law and for which NTI is entitled to
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`injunctive relief.
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`72.
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`NTI is entitled to recover from the Defendants, jointly and severally, NTI’s lost
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`profits resulting from the Defendants’ infringement.
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`Jury Demand
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`NTI demands a trial by jury on all issues so triable.
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`Prayer for Relief
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`WHEREFORE, NTI respectfully requests that the Court:
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`A.
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`Permanently enjoin the Defendants from continuing to use the BulletProof Marks
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`(or any derivation of colorable imitation thereof), or any of them, including the Infringing
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`Designation, in conjunction with the sale of aftermarket diesel truck parts and related goods and
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`services;
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`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 15 of 16 PageID #: 508
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`B.
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`Compel the Defendants to destroy all marketing and promotional materials
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`displaying, or to remove therefrom all references to, the Infringing Designations or any other term
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`or mark confusingly similar to BulletProof Marks, or any of them;
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`C.
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`Enter a judgment against the Defendants, jointly and severally, awarding NTI
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`compensatory and treble damages associated with the Defendants’ past use and infringement of
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`the BulletProof Marks, including but not limited to three times the Defendants’ profits, and three
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`times the damages sustained by NTI as the result of the Defendants’ conduct;
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`D.
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`Award NTI its costs incurred herein, prejudgment interest, and attorney’s fees; and
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`E.
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`Award such further and/or alternative relief this Court deems proper.
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`Respectfully submitted,
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`
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`/s/ Scott A. Fredricks
`Scott A. Fredricks
`Texas State Bar No. 24012657
`sfredricks@canteyhanger.com
`Philip A. Vickers
`Texas State Bar No. 24051699
`pvickers@canteyhanger.com
`CANTEY HANGER LLP
`Cantey Hanger Plaza
`600 West 6th Street, Suite 300
`Fort Worth, Texas 76102
`Telephone: (817) 877-2800
`Fax: (817) 877-2807
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`ATTORNEYS FOR PLAINTIFF
`NEAL TECHNOLOGIES, INC.
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`Case 4:15-cv-00385-RC-CMC Document 33 Filed 12/10/15 Page 16 of 16 PageID #: 509
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`Certificate of Service
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`I certify that on December 10, 2015 the foregoing document was served on counsel
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`for Defendant/Counter-Claimant via the Court’s ECF system.
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`/s/ Scott A. Fredricks
`Scott A. Fredricks
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`EXHIBIT B
`EXHIBIT B
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`Case 4:15-cv-00385-RC-CMC Document 55 Filed 02/04/16 Page 1 of 31 PageID #: 2117
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`NEAL TECHNOLOGIES, INC.,
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`Plaintiff and Counter-Defendant,
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`v.
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`UNIQUE MOTORSPORTS INC.,
`DUSTIN HELMS, and NATHAN HALL,
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`Defendants and Counter-Plaintiffs.
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`Civil Action No. 4:15-cv-00385-RC-CMC
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`JURY TRIAL DEMANDED
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`UNIQUE MOTORSPORTS INC.’S FOURTH AMENDED ANSWER
`[TO NTI’S FIRST AMENDED COMPLAINT],
`FIFTH AMENDED COUNTERCLAIMS, AND JURY DEMAND
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`Pursuant to the Federal Rules of Civil Procedure and all other applicable rules and law,
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`Defendant and Counter-Plaintiff Unique Motorsports Inc. (“UMI”), in response to the First
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`Amended Complaint [dkt