The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
GLOBALTAP, LLC, )
)
Plaintiff, )
)
vs. ) No. 1:18-cv-05383
)
PETERSEN MANUFACTURING )
CO. INC., CHRIS PETERSEN, MIKE ) Hon. Judge Charles
SIEMER, W.W. GRAINGER, INC., ) Charles Norgle
ZORO TOOLS, INC., PARK )
N’POOOL, INC., NEOBITS, INC., )
AND CAREFORDE SAFETY, INC. )
)
Defendants. )
Plaintiff’s Motion for Entry of Default Judgment against Defendant,
Park n’ Pool, Inc.
Plaintiff, GlobalTap, LLC, through its undersigned counsel, Patterson
Law Firm, LLC, and for its Motion for Entry of Default Judgment against
Defendant, Park n’ Pool, Inc., pursuant to Federal Rules of Civil
Procedure 55(a) and 55(b)(2), states as follows:
Facts
1. Plaintiff filed its Verified Complaint on August 8, 2018, asserting
claims against several defendants. (Dkt. # 1.)
2. As set forth in Plaintiff’s Verified Complaint, Plaintiff possesses
two design patents related to the design of free-standing outdoor water
bottle filling stations: D634,394 S (“’394 Patent”) and D646,348 S (“’348
Patent”). (Dkt. # 1 at ¶¶ 23-28.)
3. Plaintiff also owns two registered service marks, identified as the
Water Drop Mark (Registration No. 4,775,089) and the Word Mark
(Registration No. 4,920,350) in Plaintiff’s Complaint. (Dkt. # 1 at ¶¶ 29-
31.)
4. Count II of Plaintiff’s Verified Complaint asserts against Park n’
Pool, among others, infringement of the ‘394 Patent. Count IV of
Plaintiff’s Verified Complaint asserts against Park n’ Pool and Careforde,
among others, infringement of the ‘348 Patent. (Dkt. # 1 at Counts II and
IV.)
5. Count VI of Plaintiff’s Verified Complaint asserts against Park n’
Pool, among others, several Lanham Act violations. Specifically, Park n’
Pool has used and continues to use Plaintiff’s Word Mark and Water
Drop Mark on products sold in the United States, without license,
consent, or other authorization, and in relation to the marketing,
promotion, or advertising of the infringing products, including, but not
limited to, promoting the products as genuine GlobalTap products and
including the Word Mark and Water Drop Mark on the products,
manuals, and marketing materials. (Dkt. # 1 at ¶ 118.)
6. This unauthorized use of the Word Mark and Water Drop Mark is
likely to confuse consumers because it is used in conjunction with
GlobalTap’s patented designs, as well as other designs developed by
GlobalTap. (Dkt. # 1 at ¶ 119.)
7. Park n’ Pool’s use of Plaintiff’s Word Mark and Water Drop Mark
in conjunction with GlobalTap’s designs amounts to counterfeiting, in
that each of these Defendants is selling identical or substantially
indistinguishable products under the GlobalTap name and including the
Word Mark and Water Drop Mark without Plaintiff’s license, consent, or
authorization. (Dkt. # 1 at ¶ 120.)
8. Park n’ Pool acted and is acting willfully in disregard of Plaintiff’s
rights. (Dkt. # 1 at ¶ 120.)
9. Park n’ Pool was served with a Summons and the Verified
Complaint in this matter on October 8, 2018. See Affidavit of Peter
Evans, attached hereto as Exhibit A at ¶ 5.
10.As reflected in the Court’s docket, it has not appeared or filed a
responsive pleading. See Exhibit A at ¶ 7.
Analysis
11.This Court properly has jurisdiction over the claims raised
against Park n’ Pool pursuant to 28 U.S.C. §§ 1331 and 1338(a), which
grants the district courts “original jurisdiction of any civil action arising
under any Act of Congress relating to patents . . . and trademarks.”
12.This Court properly has jurisdiction over Park n’ Pool pursuant to
Federal Rule of Civil Procedure 4 and 735 ILCS 5/2-209(a), because Park
n’ Pool has transacted business in Illinois by virtue of its advertising and
sales of products, including products marketed as GlobalTap products,
to individuals and entities located in Illinois. See uBID, Inc. v. GoDaddy
Grp., Inc., 623 F.3d 421, 423-24 (7th Cir. 2010).
13.Pursuant to Rule 55(a), “when a party against whom a judgment
for affirmative relief is sought has failed to plead or otherwise defend,
and that failure is shown by affidavit or otherwise, the clerk must enter
the party’s default.” Fed. R. Civ. P. 55(a). As set forth above, Park n’ Pool
was served on October 8, 2018. Pursuant to Rule 12(a)(1)(A)(i), Defendant
was to answer or otherwise plead within 21 days. Park n’ Pool has not
appeared or filed any responsive pleading. Accordingly, Plaintiff requests
for entry of default against Park n’ Pool.
14.Pursuant to Rule 55(b)(2), the Court may enter a default
judgment against the defaulting parties, which establishes as a matter of
law that the defaulting defendants are liable on each claim asserted
against them. United States v. Di Mucci, 879 F.2d 1488, 1497 (7th Cir.
1989). In addressing a motion for entry of default judgment, the Court
must take as true the factual allegations of the complaint. Black v. Lane,
22 F.3d 1395, 1399 (7th Cir. 1994).
15.Plaintiff has alleged that it possesses two valid, protected marks;
Park n’ Pool is not authorized to use the marks; and their use of the
marks is likely to cause confusion among consumers, which is sufficient
to establish a claim under the Lanham Act. Bliss Salon Day Spa v. Bliss
World, LLC, 268 F.3d 494, 496-97 (7th Cir. 2001).
16.Park n’ Pool’s infringement is apparent from its website, which
markets the counterfeit products to the public. See Exhibits E to
Plaintiff’s Verified Complaint (Dkt. # 1.) As of December 10, 2018, Park n’
Pool continued to list for sale on its website three product models
identified as GlobalTap products and including the Word Mark and
Water Drop Mark. See https://www.parknpool.com/search‐
v1610.php?search=water+bottle+filling+station&Search1=find (accessed on Dec. 10,
2018). It does so despite knowledge of Plaintiff’s claims.
17.Because Park n’ Pool has failed to defend itself in this action,
Plaintiff requests an entry of default judgment against it and requests an
award of statutory damages as authorized under 15 U.S.C. § 1117(c) for
its willful infringement and counterfeiting of Plaintiff’s Word Mark and
Water Drop Mark, as well as permanent injunctive relief as authorized
under 15 U.S.C. § 1116.
Damages
18.Under 15 U.S.C. § 1117(c), in cases involving counterfeit marks, a
plaintiff may elect to receive “not less than $1,000 or more than
$200,000 per counterfeit mark per type of goods or services sold, offered
for sale, or distributed, as the court considers just.” 15 U.S.C. §
1117(c)(1). If the counterfeiting is willful, statutory damages may be
awarded of up to “$2,000,000 per counterfeit mark per type of goods or
services sold, offered for sale, or distributed, as the court considers just.”
15 U.S.C. § 1117(c)(2).
19. Because information regarding Park n’ Pool’s sales and profits is
unavailable due to their failure to appear, statutory damages are
appropriate here. Lorillard Tobacco Co. v. S&M Cent. Serv. Corp., No. 03-
c-4986, 2004 U.S. Dist. LEXIS 22563, *9 (N.D. Ill. Nov. 8, 2004).
Statutory damages may be awarded without an evidentiary hearing.
Lorillard Tobacco Co. v. Montrose Wholesale Candies & Sundries, Inc.,
No. 03 c 5311, 2008 U.S. Dist. LEXIS 31761, *11 (N.D. Ill. Apr. 17,
2008). Further, courts have found defaulting defendants to have willfully
counterfeited the plaintiff’s marks based on the allegations in the
complaint. Deckers Outdoor Corp. v. Doe, No. 11 c 10, 2011 U.S. Dist.
LEXIS 119448, *13-15 (N.D. Ill. Oct. 14, 2011).
20. Plaintiff, here, requests the Court award a high statutory
damages amount. The Court “enjoys wide discretion” in determining a
statutory damages award, and may consider factors such as the difficulty
in proving actual damages, the circumstances of the infringement, and
whether the damages will serve as an effective deterrent. Chi-Boy Music
v. Charlie Club, 930 F.2d 1224, 1229 (7th Cir. 1991). A high damages
award is also proper when the infringing activity has expansive reach,
such as when the counterfeit products are marketed online. Coach, Inc.
v. Ocean Point Gifts, No. 12-cv-2254,2010 U.S. Dist. LEXIS 59003, *15-
16 (D.N.J. Jun. 14, 2010) and Burberry Ltd. v. Designers Imports, Inc.,
No. 07 Civ. 3997, 2010 U.S. Dist. LEXIS 3605, *28-29 (S.D.N.Y. Jan. 19,
2010). Further, Park n’ Pool’s infringement is willful, as evidenced by its
continued use of the Water Drop Mark and Word Mark on its website
months after this suit was filed.
21.Any statutory damages awarded must also serve as a sufficient
deterrent to ensure that the guilty party will not continue to infringe and
sell counterfeit goods. Sands, Taylor & Wood v. Quaker Oats Co., 34 F.3d
1340, 1348 (7th Cir. 1994).
22.Accordingly, for Park n’ Pool’s willful counterfeiting and
unauthorized use of Plaintiff’s Word Mark and Water Drop Mark, Plaintiff
requests a statutory damages award of $200,000 per mark, as permitted
by 15 U.S.C. § 1117(c), or a total of $400,000, as well as permanent
injunctive relief.
WHEREFORE, Plaintiff, GlobalTap, LLC, respectfully requests this
Honorable Court enter default and default judgment against Defendant,
Park n’ Pool, Inc., award statutory damages in the amount of $400,000
pursuant to 15 U.S.C. § 1117(c), and grant Plaintiff permanent injunctive
relief prohibiting defendant from selling counterfeit GlobalTap products,
and grant such other relief as the Court deems proper under the
circumstances.
Dated: 12/10/2018 Respectfully submitted,
/s/Peter J. Evans
Kristi L. Browne
Peter J. Evans
Patterson Law Firm, LLC
200 W. Monroe Street
Suite 2025
Chicago, Illinois 60606
Tel.: 312-223-1699
Fax: 312-223-8549
kbrowne@pattersonlawfirm.com
pevans@pattersonlawfirm.com
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
GLOBALTAP, LLC, )
)
Plaintiff, )
)
vs. ) No. 1:18-cv-05383
)
PETERSEN MANUFACTURING )
CO. INC., CHRIS PETERSEN, MIKE ) Hon. Judge Charles
SIEMER, W.W. GRAINGER, INC., ) Charles Norgle
ZORO TOOLS, INC., PARK )
N’POOOL, INC., NEOBITS, INC., )
AND CAREFORDE SAFETY, INC. )
)
Defendants. )
Affidavit of Peter J. Evans
I, Peter J. Evans, hereby state and aver to the following facts under
penalty of perjury:
1. My name is Peter J. Evans. I am over the age of eighteen and, if
called to testify, could competently testify to each of the facts set forth
herein.
2. I am an attorney with the Patterson Law Firm, LLC, which
represents Plaintiff, GlobalTap, LLC in this matter.
3. On or about August 8, 2018, Plaintiff filed its Verified Complaint
in this case, asserting certain claims against, among others, Defendant,
Park n’ Pool, Inc.
4. Summons was issued to Park n’ Pool, Inc. on the same day.
EXHIBIT A
5. Park n’ Pool, Inc. was served with the Summons and Verified
Complaint on October 8, 2018 at 1:50pm by leaving a copy of same with
Brenda Fonner, President. See Affidavit of Service, attached hereto as
Exhibit 1.
6. As of December 10, 2018, Park n’ Pool, Inc. has not appeared or
filed any responsive pleading in this matter.
7. I have received no correspondence from Park n’ Pool, Inc., or from
anyone acting on their behalf.
8. As of December 10, 2018, Park n’ Pool continued to advertise
counterfeit GlobalTap products on its website.
FURTHER AFFIANT SAYETH NAUGHT.
TK
Date: December 10, 2018 C
Peter J. Evans
QJINE BBs? □□□ REDS SE BBR BAER LZR BR Be eS ee BN
ILLINOIS EASTERN DIVISION
GlobalTap, LLC,
Plaintiff(s), Case No.: 1:18 CV 5383
vs.
AFFIDAVIT OF SERVICE
Petersen Manufacturing Co. Inc., et al, 77 0 ie
Defendant(s). kts
KATHRYN F. KINZIE , being first duly sworn on oath, deposes and states the
following:
I am over the age of 18 and not a party to this action. I am an agent of ATG LegalServe, Inc.,
Illinois Department of Financial and Professional Regulation number 117.001494. I attempted
service of the within Summons in a Civil Case; Verified Complaint to Park n' Pool, Inc. ,
located at 50 Park Pl., Lexington, VA24450 resulting in the following:
[ x AUTHORIZED SERVICE: By leaving a copy of the Summons in a Civil Case;
Verified Complaint with:
NAME _ BRENDA FONNER
TITLE __ PRESIDENT _ __an individual of the
company willing and able to accept on behalf of the entity/respondent/witness on:
the__8 day of OCTOBER ,2018 1:50 PM
[| NON-SERVICE for the following reasons with the DATE and TIME of each attempt
listed along with a description of the attempt (attach a separate sheet if needed):
I
ff
A @
A description of person with whom the documents were left is as follows:
Sex:_F_ Race:_WHITE Approx. Age:45_ Height5'7" Weight:150__— Hair: BROWN
Noticeable
Features/Notes__ BROWN EYES, GLASSES _
The undersigned verifies that the statements set forth in this Affidavit of Service are true and correct.
et 4 ye: . . —_,
Signed and sworn to before me on .7 \cek J 3 rare)
this 9 _ day of OCTOBER t
18. KATHRYN F,. KINZIE
oi ) (Print Name)
□ US
ep pPACoH
S505 S206
CARRINGTO □
NOTARY PuBLiC CHT Tey Finn
Commonwealth of Virginia
My Comming’: #7269698
ion j
Apres 12/81/2038 EXHIBIT 1
United States District Court
Northern District of Illinois - CM/ECF LIVE, Ver 6.2.2 (Chicago)
CIVIL DOCKET FOR CASE #: 1:18-cv-05383
GlobalTap, LLC v. Petersen Manufacturing Co. Inc. et al Date Filed: 08/08/2018
Assigned to: Honorable Charles R. Norgle, Sr Jury Demand: Plaintiff
Cause: 35:271 Patent Infringement Nature of Suit: 830 Patent
Jurisdiction: Federal Question
Plaintiff
GlobalTap, LLC represented by Peter Joseph Evans
Patterson Law Firm LLC
200 W. Monroe
Suite 2025
Chicago, IL 60606
(312) 223-1699
Email: pevans@pattersonlawfirm.com
ATTORNEY TO BE NOTICED
Kristi L. Browne
Patterson Law Firm PC
200 W. Monroe
2025
Chicago, IL 60606
(312) 223-1699
Email: kbrowne@pattersonlawfirm.com
ATTORNEY TO BE NOTICED
V.
Defendant
Petersen Manufacturing Co. Inc. represented by Peter D. Sullivan
Hinshaw & Culbertson LLP
151 N. Franklin Street
Suite 2500
Chicago, IL 60606
(312) 704-3102
Email: psullivan@hinshawlaw.com
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Mark K. Suri
Hinshaw & Culbertson LLP
151 N. Franklin Street
(312) 704-3000
Email: msuri@hinshawlaw.com
ATTORNEY TO BE NOTICED
Terrence Patrick McAvoy
Hinshaw & Culbertson LLP
151 N. Franklin Street
Suite 2500
Chicago, IL 60606
(312) 704-3000
Email: tmcavoy@hinshawlaw.com
ATTORNEY TO BE NOTICED
Defendant
Chris Petersen represented by Peter D. Sullivan
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Mark K. Suri
(See above for address)
ATTORNEY TO BE NOTICED
Terrence Patrick McAvoy
(See above for address)
ATTORNEY TO BE NOTICED
Defendant
Mike Siemer represented by Peter D. Sullivan
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Mark K. Suri
(See above for address)
ATTORNEY TO BE NOTICED
Terrence Patrick McAvoy
(See above for address)
ATTORNEY TO BE NOTICED
Defendant
W.W. Grainger, Inc. represented by James J. Lukas , Jr
Greenberg Traurig, LLP
77 West Wacker Drive
Suite 3100
Chicago, IL 60601
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Defendant
Zoro Tools, Inc. represented by James J. Lukas , Jr
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Defendant
Park n' Pool, Inc.
Defendant
Neobits, Inc.
Defendant
Careforde Safety, Inc.
Counter Claimant
Chris Petersen represented by Peter D. Sullivan
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Mark K. Suri
(See above for address)
ATTORNEY TO BE NOTICED
Terrence Patrick McAvoy
(See above for address)
ATTORNEY TO BE NOTICED
Counter Claimant
Petersen Manufacturing Co. Inc. represented by Peter D. Sullivan
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Mark K. Suri
(See above for address)
ATTORNEY TO BE NOTICED
Terrence Patrick McAvoy
(See above for address)
ATTORNEY TO BE NOTICED
Counter Claimant
Mike Siemer represented by Peter D. Sullivan
(See above for address)
LEAD ATTORNEY
ATTORNEY TO BE NOTICED
Mark K. Suri
(See above for address)
ATTORNEY TO BE NOTICED
Terrence Patrick McAvoy
(See above for address)
ATTORNEY TO BE NOTICED
V.
Counter Defendant
GlobalTap, LLC represented by Peter Joseph Evans
(See above for address)
ATTORNEY TO BE NOTICED
Kristi L. Browne
(See above for address)
ATTORNEY TO BE NOTICED
10/12/2018 24 | MINUTE entry before the Honorable Charles R. Norgle:Status hearing held on
10/12/2018. Agreed Written Status Report is due on 12/5/2018. Mailed notice
(ewf, ) (Entered: 10/12/2018)
10/09/2018 23 | STIPULATION of Dismissal of Defendant NeoBits, Inc., with prejudice
(Attachments: # 1 Notice of Filing)(Evans, Peter) (Entered: 10/09/2018)
10/08/2018 22 | ANSWER to counterclaim and affirmative defenses by GlobalTap, LLC
(Attachments: # 1 Notice of Filing Notice of Filing)(Evans, Peter) (Entered:
10/08/2018)
09/20/2018 21 | MINUTE entry before the Honorable Charles R. Norgle: Joint Motion for a Stay
of the Case as to Defendants W. W. Grainger, Inc. and Zoro Tools, Inc. 18 is
granted. The parties are not required to appear before the court on Friday,
September 21, 2018 Mailed notice (ewf, ) (Entered: 09/20/2018)
09/17/2018 20 | ANSWER to Complaint and Affirmative Defenses, COUNTERCLAIM filed by
Chris Petersen, Petersen Manufacturing Co. Inc., Mike Siemer against
GlobalTap, LLC . by Chris Petersen, Petersen Manufacturing Co. Inc., Mike
Siemer(Sullivan, Peter) (Entered: 09/17/2018)
09/17/2018 19 | NOTICE of Motion by James J. Lukas, Jr for presentment of motion to stay 18
before Honorable Charles R. Norgle Sr. on 9/21/2018 at 09:30 AM. (Lukas,
James) (Entered: 09/17/2018)
09/17/2018 18 | MOTION by Defendants W.W. Grainger, Inc., Zoro Tools, Inc. to stay /JOINT]
(Lukas, James) (Entered: 09/17/2018)
09/05/2018 17 | NOTICE by Peter Joseph Evans of Change of Address (Evans, Peter) (Entered:
09/05/2018)
09/05/2018 16 | NOTICE by Kristi L. Browne of Change of Address (Browne, Kristi) (Entered:
09/05/2018)
08/30/2018 15 | STIPULATION regarding motion for preliminary injunction, motion to expedite
7 (Sullivan, Peter) (Entered: 08/30/2018)
08/17/2018 14 | ATTORNEY Appearance for Defendants Chris Petersen, Petersen
Manufacturing Co. Inc., Mike Siemer by Mark K. Suri (Suri, Mark) (Entered:
08/17/2018)
08/17/2018 13 | ATTORNEY Appearance for Defendants Chris Petersen, Petersen
Manufacturing Co. Inc., Mike Siemer by Terrence Patrick McAvoy (McAvoy,
Terrence) (Entered: 08/17/2018)
08/17/2018 12 | ATTORNEY Appearance for Defendants Chris Petersen, Petersen
Manufacturing Co. Inc., Mike Siemer by Peter D. Sullivan (Sullivan, Peter)
(Entered: 08/17/2018)
08/17/2018 11 | MINUTE entry before the Honorable Charles R. Norgle: Motion hearing held on
8/17/2018. Motion for preliminary injunction and motion to expedite 7 are taken
under advisement. Counsel will submit an agreed order. A status hearing is set
for 10/12/2018 at 10:00 a.m. Mailed notice (ewf, ) (Entered: 08/17/2018)
08/17/2018 10 | ATTORNEY Appearance for Defendants W.W. Grainger, Inc., Zoro Tools, Inc.
by James J. Lukas, Jr (Lukas, James) (Entered: 08/17/2018)
08/09/2018 MAILED Patent report to Patent Trademark Office, Alexandria VA (ek, )
(Entered: 08/09/2018)
08/08/2018 NOTICE of Motion by Kristi L. Browne for presentment of motion for
preliminary injunction, motion to expedite 7 before Honorable Charles R.
Norgle Sr. on 8/17/2018 at 09:30 AM. (Browne, Kristi) (Entered: 08/08/2018)
08/08/2018 7 | MOTION by Plaintiff GlobalTap, LLC for preliminary injunction , MOTION by
Plaintiff GlobalTap, LLC to expedite discovery (Attachments: # 1 Exhibit A)
(Browne, Kristi) (Entered: 08/08/2018)
08/08/2018 SUMMONS Issued as to Defendants Careforde Safety, Inc., Neobits, Inc., Park
n' Pool, Inc., Chris Petersen, Petersen Manufacturing Co. Inc., Mike Siemer,
W.W. Grainger, Inc., Zoro Tools, Inc. (lw, ) (Entered: 08/08/2018)
08/08/2018 CASE ASSIGNED to the Honorable Charles R. Norgle, Sr. Designated as
Magistrate Judge the Honorable Michael T. Mason. (pj, ) (Entered: 08/08/2018)
08/08/2018 | 6 Notice of Claims by GlobalTap, LLC (Browne, Kristi) (Entered: 08/08/2018)
08/08/2018 5 | NOTIFICATION of Affiliates pursuant to Local Rule 3.2 by GlobalTap, LLC re
complaint, 1 (Browne, Kristi) (Entered: 08/08/2018)
08/08/2018 4
ATTORNEY Appearance for Plaintiff GlobalTap, LLC by Peter Joseph Evans
(Evans, Peter) (Entered: 08/08/2018)
08/08/2018 3 | ATTORNEY Appearance for Plaintiff GlobalTap, LLC by Kristi L. Browne
(Browne, Kristi) (Entered: 08/08/2018)
08/08/2018 CIVIL Cover Sheet (Browne, Kristi) (Entered: 08/08/2018)
08/08/2018 1 | COMPLAINT filed by GlobalTap, LLC; Jury Demand. Filing fee $ 400, receipt
number 0752-14794759. (Attachments: # 1 Exhibit A, #2 Exhibit B, # 3 Exhibit
C, #4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, #9
Exhibit I)(Browne, Kristi) (Entered: 08/08/2018)
PACER Service Center
SF cour aesefaeae |_|
Login: