American Taxi Dispatch, Inc. v. American Cab Service, Inc. et al

Filing 1

COMPLAINT filed by American Taxi Dispatch, Inc.; Jury Demand. Filing fee $ 350, receipt number 0752-6417357. (Attachments: # 1 Exhibit, # 2 Exhibit)(Zayed, Adam)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
AMERICAN TAXI DISPATCH, INC.,

)
)
Plaintiff,
)
)
v.
)
)
AMERICAN CAB SERVICE, INC., an Illinois
)
Corporation, AHMAD LABABIDI, individually, )
and SUBURBAN TAXI, INC., an Illinois
)
Corporation,
)
)
Defendants. )
)

No. 11 CV 6796

JURY DEMAND

COMPLAINT
NOW COMES, Plaintiff, American Taxi Dispatch, Inc., an Illinois corporation,
(“American Taxi”), by and through its attorneys, Law Offices of Adam J. Zayed, P.C., and for its
Complaint against American Cab Service, Inc., Ahmad Lababidi, and Suburban Taxi, Inc.,
(“Defendants”) states as follows:
PARTIES
1.

Plaintiff, American Taxi, is an Illinois corporation, with its principal place of

business located in Mount Prospect, County of Cook, State of Illinois. American Taxi is
engaged in business as a taxi service servicing O’Hare International Airport, Midway Airport,
Chicago and over 200 Chicagoland communities, including but not limited to Oak Brook, Glen
Ellyn, Des Plaines, Naperville, Aurora, Schaumburg, and Evanston.
2.

Defendants, upon information and belief, are engaged in the operation of a taxi

business using a trade name strikingly similar to, and otherwise substantially identical to,
American Taxi’s trade name, likeness, appearance, and registered trademark “American Taxi.”

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3.

Defendants operate a taxi business that services areas and communities similar to

those areas and communities being serviced by American Taxi.
JURISDICTION
4.

The court has jurisdiction over the parties and this controversy, as this is a civil

action under the United States Trademark Act (15 U.S.C. § 1051 et seq.), jurisdiction being
conferred in accordance with 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a) and (b).
Jurisdiction for the Illinois state statutory claims is conferred in accordance with the principles of
supplemental jurisdiction pursuant to 28 U.S.C. §1367(a) in that state law claims form part of the
same controversy as the claims arise under the trademark laws of the United States.
5.

Venue is proper pursuant to 28 U.S.C. §1391.

6.

Defendants are and have been conducting continuous and systematic business by

operating a taxicab company within the State of Illinois and within the Northern District of
Illinois.
7.

Defendants are transacting business and have committed illegal acts hereinafter

complained of in the Northern District of Illinois.
FACTUAL ALLEGATIONS COMMON TO ALL COUNTS
8.

American Taxi was formed in 1975 and was incorporated March 1, 1977.

American Taxi has utilized the service mark “American Taxi” since December 1975. A true and
correct copy of American Taxi’s Articles of Incorporation and Articles of Amendment are
attached and incorporated herein as Exhibit “A.”
9.

American Taxi currently uses the service mark “American Taxi” on its vehicles,

its letterhead, website (www.americantaxi.com), business cards, rate sheets, and other

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promotional materials. Attached hereto and incorporated by reference are true and correct copies
of the following examples of American Taxi’s use of its service mark:
(a) American Taxi’s letterhead (Exhibit B);
(b) An American Taxi business card (Exhibit C);
(c) An American Taxi rate sheet (Exhibit D); and
(d) An American Taxi coupon (Exhibit E).
10. Since December 1975, American Taxi has operated continuously in and about the
Chicagoland area. In this regard, American Taxi has established considerable name recognition
and goodwill among taxi service customers in the Chicago area, including those areas serviced
by Defendant.
11.

In addition to the use of American Taxi’s mark, “American Taxi,” American Taxi

has adopted, implemented and used certain colors (white on a vehicle with a blue strip down
each side of car, red lettering), shapes, designs, presentation and overall appearance which are
distinctive to American Taxi and constitute trade dress.
12.

American Taxi has built its name recognition and good will through the

expenditure, since its inception, of millions of dollars in advertising, customer service and
quality assurance. More specifically over the course of the last two (2) years American Taxi has
expended $353,898.00 in advertising. American Taxi is widely recognized as one of the premier
taxi services in the Chicagoland area.
13.

American Taxi currently has approximately 750 taxis in its fleet.

14.

American Taxi has also built its name recognition and good will in the

Chicagoland area by participating in community programs such as the Taste of Wilmette &

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Business Showcase, the Lincolnwood Chamber of Commerce Business Expo, and the Northwest
Suburban Council of the Boy Scouts of America Food Drive.
15.

American Taxi owns a valid and subsisting federal trademark registration issued

for “American Taxi” by the United States Patent and Trademark Office, as identified by
registration number 3,058,900. A true and correct copy of American Taxi’s Certificate of
Registration is attached hereto and incorporated herein as Exhibit “F.”
16.

American Taxi owns a valid and subsisting federal trademark registration issued

for the logo, design, scheme, colors and presentation of the American Taxi logo “American Taxi
Dispatch, Inc.” by the United States Patent and Trademark Office, as identified by registration
number 3,116,379. A true and correct copy of American Taxi’s Certificate of Registration is
attached hereto and incorporated herein as Exhibit “G.”
17.

Trademark Registration Numbers 3,058,900 and 3,116,379 remain in full force

and effect.
18.

American Taxi’s right to use the mark “American Taxi” and its logo are exclusive

to American Taxi and the certificate of registrations thereof constitute “conclusive evidence” of
“the validity of the registered mark, of the registrant’s ownership of the marks and of the
registrant’s exclusive right to use the marks in connection with the goods or services specified in
the registration.” 15 U.S.C. §1115.
19.

American Taxi’s certificate of registration for Reg. No. 3,058,900 and 3,116,379

are “prima facie evidence of the validity of the registered marks and of the registration of the
marks, of the registrant’s ownership of the marks, and of the registrant’s exclusive right to use of
the marks in connection with the goods or services specified in the registration.” 15 U.S.C.
§1115.

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20.

As a result of American Taxi’s investment of its efforts, money, skill and other

sources, American Taxi’s marks are widely recognized as indicating American Taxi’s goods and
services, and have become well recognized in the United States.
DEFENDANTS’ INFRINGING ACTS
21.

Defendants operate a taxicab business under the name “American Cab” The use

of this name infringes upon American Taxi’s registered marks. The use of the term “American
Cab” is strikingly similar and virtually identical to American Taxi’s mark with similar fonts,
colors and presentation, which obscures any distinguishing features between American Taxi’s
mark “American Taxi” and the names being used by Defendants. Moreover, Defendants are
using and displaying colors, shape, design, markings, presentation, and lettering virtually
identical to the features of American Taxi’s mark.

Attached hereto and incorporated by

reference as Exhibit “H” is a true and correct copy Defendants’ advertisements on kiosks at
O’Hare international airport and website advertisements.
22.

Defendants are not affiliated with or otherwise associated with American Taxi.

23.

Defendants are not authorized to use, in any facet, American Taxi’s name and

trade dress.
24.

Defendants’ use of American Taxi name and trade dress is deceptive, misleading,

and identical to American Taxi’s corporate name, registered service marks and trade dress.
25.

Defendants’ use of the name “American Flat Rate” and overall appearance of

American Taxi’s trade dress will in all likelihood dilute American Taxi’s respected and
prominent trade name in the Chicagoland area that American Taxi has created and developed by
expending a substantial amount of money and effort in advertising, customer service, and quality
assurance.

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COUNT I
(Federal Trademark Infringement (15 U.S.C.§ 1114))
1-25. American Taxi repeats and realleges paragraphs 1 through 25, inclusive above, as
paragraphs 1 through 25, inclusive, of Count I.
26.

Defendants’ use of the name “American Cab” is confusingly similar to the

registered mark “American Taxi” and logo “American Taxi Dispatch, Inc.”
27.

Defendants’ aforesaid acts are likely to cause confusion, mistake or deception as

to the source of the parties’ services. Specifically, Defendants’ use of American Taxi’s mark is
causing and will continue to cause the consuming public to mistakenly believe that Defendants’
services are legitimately connected with, sponsored by or approved by American Taxi.
28.

Defendants’ aforesaid acts constitute trademark infringement in violation of

Section 32 of the Lanham Act, 15, U.S.C. §1114, and the common law of Illinois.
29.

Defendants have willfully and deliberately infringed and sought to appropriate the

goodwill associated with the registered “American Taxi” mark and logo of American Taxi by
advertising and transacting business in interstate commerce taxicab services which compete with
American Taxi’s services.
30.

Defendants’ acts and actions are likely to cause confusion, mistake and deception

as to the source, origin or sponsorship of Defendants’ taxi services.
31.

Defendants’ aforesaid acts are greatly and irreparably damaging to American Taxi

and will continue to damage American Taxi until enjoined by this Court, wherefore American
Taxi is without adequate remedy at law.
32.

American Taxi requests a trial by jury.

WHEREFORE, Plaintiff, American Taxi Dispatch, Inc., prays that the Court enter judgment in
its favor and against Defendants as follows:
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A. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from operating under or using, in any facet, the name “American Taxi” or
any similar name;
B. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from using, adopting, and displaying American Taxi’s colors, designs,
shapes, patterns, and lettering similar to the trade dress of American Taxi;
C. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from maintaining or listing their business telephone number under the
name “American Taxi,” or any similar name;
D. Awarding American Taxi all profits derived from and all damages suffered by
American Taxi by reason of Defendants’ wrongful acts, or in the alternative, such
statutory damages as may be allowed under the Federal Trademark Act;
E. Awarding American Taxi an increase in the award of damages up to three times the
amount found for deliberate and willful trademark infringement and unfair
competition by Defendants pursuant to 15 U.S.C. §117(a);
F. Awarding American Taxi its costs and reasonable attorneys’ fees incurred as a result
of Defendants’ actions; and
G. Granting such further relief as this Court deems just and proper.

COUNT II
(Federal Trademark Act of 1946, 15 U.S.C. 1051, et seq.)
1-25. American Taxi repeats and realleges paragraphs 1 through 25, inclusive, of Count
I as paragraphs 1 through 25, inclusive, of Count II, as if fully set forth.
26.

At all times herein there was in full force and effect in the federal statute known

as the Federal Trademark Act of 1946, 15 U.S.C. 1051, et seq. (the “Lanham Act”).
27.

The Defendants violated the Lanham Act in one or more of the following ways:
a.

falsely advertised by using a business name strikingly similar to American
Taxi so as to cause confusion as to the source of the services being
provided;

b.

falsely advertised by using a business name strikingly similar to American
Taxi so as to cause confusion, misunderstanding or to deceive the public
as to the source or sponsorship of Defendants’ services;
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c.
d.

falsely stated and inferred that the designations of the services advertised
were those of American Taxi or that American Taxi was affiliated with
Defendants;

e.

falsely stated and inferred that the designation of the services advertised
were approved, sponsored or affiliated with American Taxi’s operation;

f.

caused likelihood of confusion or of misunderstanding as to source,
sponsorship, or approval of Defendants’ service;

g.

caused likelihood of confusion or of misunderstanding as to Defendants’
affiliation, connection, or association with American Taxi; and

h.

28.

passed off Defendants’ services as those of American Taxi;

using, adopting, displaying colors, designs, shapes, patterns, presentation
and overall appearance of American Taxi trade dress.

Defendants’ acts did deceive or had the tendency to deceive consumers seeking

American Taxi and American Taxi’s services.
29.

Defendants’ deception was material in that it was likely to influence, and did

influence those seeking American Taxi’s services to use Defendants’ taxi service under the guise
or belief that the services were those of American Taxi or affiliated with American Taxi.
30.

Defendants’ acts and actions did cause false statements to enter interstate

commerce.
31.

Plaintiff has been harmed and injured as a result of the acts and actions of

Defendants.
32.

The actions of the Defendants in violating the Lanham Act were willful and

wanton warranting the award of exemplary damages and attorney’s fees.
33.

American Taxi requests a trial by jury.

WHEREFORE, Plaintiff, American Taxi Dispatch, Inc., prays that the Court enter judgment in
its favor and against Defendants as follows:
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A. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from operating under or using, in any facet, the name “American Taxi” or
any similar name;
B. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from using, adopting, and displaying American Taxi’s colors, designs,
shapes, patterns, and lettering similar to the trade dress of American Taxi;
C. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from maintaining or listing its business telephone number under the name
“American Taxi,” or any similar name;
D. Awarding American Taxi all profits derived from and all damages suffered by
American Taxi by reason of Defendants’ wrongful acts, or in the alternative, such
statutory damages as may be allowed under the Federal Trademark Act;
E. Awarding American Taxi an increase in the award of damages up to three times the
amount found for deliberate and willful trademark infringement and unfair
competition by Defendants pursuant to 15 U.S.C. §117(a);
F. Awarding American Taxi its costs and reasonable attorneys’ fees incurred as a result
of Defendants’ actions; and
G. Granting such further relief as this Court deems just and proper.
COUNT III
(Uniform Deceptive Trade Practices Act, 815 ILCS 510/1, et seq.)
1-25. American Taxi repeats and realleges paragraphs 1 through 25, inclusive above, as
paragraphs 1 through 25, inclusive, of Count I.
26.

At all times herein there was in full force and effect a statute in the State of

Illinois known as the Uniform Deceptive Trade Practices Act, 815 ILCS 510/1, et seq. (the
“Deceptive Trade Practices Act”).
27.

Defendants have violated the Deceptive Trade Practices Act in one or more of the

following ways:
a.

using and operating under a business name strikingly similar to American
Taxi’s name;

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b.

28.

using, adopting, displaying colors, designs, shapes, patterns, presentation
and overall appearance of American Taxi trade dress.

In doing so, Defendants have: (1) passed off their services as American Taxi’s;

(2) caused likelihood of confusion or of misunderstanding as to source, sponsorship, approval or
certification of Defendants’ services;

and (3) caused likelihood of confusion or of

misunderstanding as to Defendants’ affiliation, connection or association with or certification by
American Taxi.
29.

American Taxi has been and will continue to be irreparably harmed by

Defendants’ continued and ongoing violations of the Deceptive Trade Practices Act, in that the
Defendants are misappropriating and continue to misappropriate American Taxi’s name and the
good will associated with its name, and more specifically its misappropriation of American
Taxi’s name and trade dress while Defendants operate in the exact territory in which American
Taxi operates its business.
30.

Further, American Taxi has been and will continue to be irreparably harmed by

Defendants’ continuing and ongoing violations of the Deceptive Trade Practices Act, in that the
distinctive quality of American Taxi’s mark is being diluted and American Taxi’s reputation is
being harmed by the confusion caused by Defendants’ use of the name “American Taxi” or any
similar name because Defendants are a significantly smaller operation. Customers who hire
Defendants’ taxis, believing them to be American Taxi’s taxis, will be led to believe that
American Taxi, rather than Defendants, have provided service below the level that customers
have come to expect from American Taxi.
31.

American Taxi has no adequate legal remedy for the loss of business, confusion

and misunderstanding on the part of its customers, and harm to its reputation, that will continue

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to result from Defendants’ continuing and ongoing violations of the Deceptive Trade Practices
Act.
32.

The actions of Defendants in violation of the Deceptive Business Practices Act

were willful and wanton. Accordingly, under Section 3 of the Deceptive Business Practices Act,
American Taxi is entitled to recover its costs and reasonable attorney’s fees.
WHEREFORE, Plaintiff, American Taxi Dispatch, Inc., prays that the Court enter
judgment in its favor and against Defendants as follows.
A. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from operating under or using, in any facet, the name “American Taxi” or
any similar name;
B. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from using, adopting, and displaying American Taxi’s colors, designs,
shapes, patterns, and lettering similar to the trade dress of American Taxi;
C. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from maintaining or listing its business telephone number under the name
“American Taxi,” or any similar name;
D. Awarding American Taxi all profits derived from and all damages suffered by
American Taxi by reason of Defendants’ wrongful acts;
E. Awarding American Taxi its costs and reasonable attorneys’ as a result of
Defendants’ violation of Illinois law; and
F. Granting such further relief as this Court deems just and proper.
COUNT IV
(Consumer Fraud and Deceptive Business Practices Act)
1-25. American Taxi repeats and realleges paragraphs 1 through 25, inclusive, of Count
I as paragraphs 1 through 25, inclusive, of Count V, as if fully set forth.
26.

At all times herein there was in full force and effect in the State of Illinois a

statute known as the Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/1, et
seq. (the “Consumer Fraud Act”).
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27.

The actions of Defendants, by way of their violation of the Deceptive Trade

Practices Act, constitute continuing and ongoing violations of the Consumer Fraud Act.
28.

Sections 10a(a) and (c) of the Consumer Fraud Act provide that any party injured

by virtue of any violation of the Consumer Fraud Act may maintain an action for damages and/or
injunctive relief.
29.

American Taxi has been and will continue to be irreparably harmed by

Defendants’ continued and ongoing violations of the Consumer Fraud Act, in that Defendants are
misappropriating and continue to misappropriate American Taxi’s name and the good will
associated with its name, and more specifically, its misappropriation of American Taxi’s name,
and Defendants operate in the exact territory in which American Taxi operates its business.
30.

Further, American Taxi has been and will continue to be irreparably harmed by

Defendants’ continuing and ongoing violations of the Consumer Fraud Act, in that the distinctive
quality of American Taxi’s mark is being diluted and American Taxi’s reputation is being
harmed by the confusion caused by Defendants’ use of the name “American Taxi” or any similar
name because Defendants are a significantly smaller operation. Customers who hire Defendants’
taxis, believing them to be American Taxi’s taxis, will be led to believe that American Taxi,
rather than Defendants, have provided service below the level that customers have come to
expect from American Taxi.
31.

American Taxi has no adequate legal remedy for the loss of business, confusion

and misunderstanding on the part of its customers, and harm to its reputation, that will continue
to result from Defendants’ continuing and ongoing violations of the Consumer Fraud Act.
32.

Defendants’ violations of the Consumer Fraud Act were willful and wanton,

warranting the imposition of exemplary damages.
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33.

Under Section 10a(c) of the Consumer Fraud Act, American Taxi is entitled to

recover its costs and reasonable attorneys’ fees.
34.

American Taxi requests a trial by jury.

WHEREFORE, Plaintiff, American Taxi Dispatch, Inc., prays that the Court enter judgment in
its favor and against Defendants as follows:
A. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from operating under or using, in any facet, the name “American Taxi” or
any similar name;
B. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from using, adopting, and displaying American Taxi’s colors, designs,
shapes, patterns, and lettering similar to the trade dress of American Taxi;
C. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants’ from maintaining or listing its business telephone number under the
name “American Taxi,” or any similar name;
D. Awarding American Taxi all profits derived from and all damages suffered by
American Taxi by reason of Defendants’ wrongful acts;
E. Awarding American Taxi exemplary damages to punish Defendants and deter future
conduct;
F. Awarding American Taxi its costs and reasonable attorneys’ as a result of
Defendants’ violation of Illinois law; and
G. Granting such further relief as this Court deems just and proper.
COUNT V
(Common Law Unfair Competition)
1-25.

American Taxi repeats and realleges paragraphs 1 through 25, inclusive, of Count

I, as paragraphs 1 through 25, inclusive, of Count VI, as if fully set forth.
26.

Defendants are unfairly competing by using, displaying and operating under a

name substantially similar to American Taxi’s name, and using American Taxi’s trade dress.

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27.

American Taxi has been and will continue to be irreparably harmed by

Defendants’ continued used of “American Taxi” or any similar name and trade dress, in that
Defendants are misappropriating and continue to misappropriate American Taxi’s name and the
good will associated with its name, and more specifically its misappropriation of American
Taxi’s name and Defendants’ operation in the exact territory in which American Taxi operates its
business.
29.

American Taxi has no adequate legal remedy for the dilution, loss of business,

confusion, and misunderstanding on the part of its customers, and harm to its reputation that will
continue to result from Defendants’ continued use of “American Taxi” or similar name.
30.

The actions of Defendants as described above constitute actionable unfair

competition under the common law of the State of Illinois.
31.

American Taxi requests a trial by jury.

WHEREFORE, Plaintiff, American Taxi Dispatch, Inc., prays that the Court enter judgment in
its favor and against Defendants as follows:
A. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from operating under or using, in any facet, the name “American Taxi” or
any similar name;
B. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from using, adopting, and displaying American Taxi’s colors, designs,
shapes, patterns, and lettering similar to the trade dress of American Taxi;
C. Temporarily restraining and preliminarily and permanently enjoining and prohibiting
Defendants from maintaining or listing its business telephone number under the name
“American Taxi,” or any similar name;
D. Awarding American Taxi all profits derived from and all damages suffered by
American Taxi by reason of Defendants’ wrongful acts;
E. Awarding American Taxi its costs and reasonable attorneys’ as a result of
Defendants’ violation of Illinois law;

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F. Awarding American Taxi exemplary damages to punish Defendant’ and deter future
conduct; and
G. Granting such further relief as this Court deems just and proper.
COUNT VI
(Unjust Enrichment)
1-25. American Taxi repeats and realleges paragraphs 1-25, inclusive, of Count I as
paragraphs 1-25, inclusive, of Count VI, as if fully set forth herein.
26.

As a consequence of Defendants’ actions as described above, Defendants have

been unjustly enriched, in that they have received revenues as a consequence of the deception,
confusion and misunderstanding caused by the use of the names “American Taxi” and similar
names, and by deceiving customers into believing their taxi service is associated with American
Taxi.
27.

It would violate the fundamental principles of justice, equity and good conscience

to permit Defendants to retain the financial benefits of their actions.
28.

American Taxi does not know and cannot determine the extent of the revenues

wrongfully obtained by Defendants through their actions.
WHEREFORE, Plaintiff, American Taxi Dispatch, Inc., prays that the Court enter
judgment in its favor and against Defendants as follows:
A. Ordering and directing Defendants to provide a detailed accounting of all revenues
received as a consequence of operating, using and otherwise profiting from the use of
name “American Taxi” or any similar names;
B. Ordering and directing Defendants to provide a detailed accounting of all revenues
received as a consequence of operating, using and otherwise profiting from the use of
American Taxi’s trade dress;
C. Imposing a constructive trust for the benefit of American Taxi on all revenues
received by Defendants as a consequence of operating, using and otherwise profiting
from the use of the name “American Taxi” or any similar names;

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D. Imposing a constructive trust for the benefit of American Taxi on all revenues
received by Defendants as a consequence of operating, using and otherwise profiting
from the use of American Taxi’s trade dress;
E. Ordering and directing Defendants to pay over to American Taxi all revenues
received as a consequence of Defendants’ unlawful activities;
F. Awarding American Taxi its costs in this action; and
G. Granting such further relief as the Court deems just and proper.

Respectfully submitted,
By: /s/ Adam J. Zayed
Attorney for Plaintiff

Adam J. Zayed-6301240
Law Offices of Adam J. Zayed, P.C.
10 South LaSalle Street, Suite 3300
Chicago, Illinois 60603
Tel: [phone]
Fax: [phone]

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