Southern Illinois Storm Shelters, Inc. v. 4semo.com, Inc.
Filing
265
FINDINGS OF FACT AND CONCLUSIONS OF LAW after bench trial and DENYING 259 MOTION for Attorney Fees 4SEMO's Combined Renewed Motion for Assessment of Costs and Attorneys' Fees Against Defendants' Counsel for the Improper Filing and Ma intenance of Defendants' Original Unfounded Claims and Memorandum filed by 4semo.com, Inc. The Court enters judgment in favor of 4SEMO.com, Inc. and against Southern Illinois Storm Shelters on counts I, III, V, VIII, and X of 4SEMO.com Inc.'s Second Amended Counterclaim. All other counts are dismissed. The Clerk is DIRECTED to enter judgment accordingly. Signed by Judge David R. Herndon on 2/2/2018. (csd)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF ILLINOIS
4SEMO.COM, INC.,
Plaintiff,
No. 3:13-cv-00297 DRH/SCW
v.
SOUTHERN ILLINOIS STORM
SHELTERS, INC., et al.
Defendants.
MEMORANDUM AND ORDER
HERNDON, District Judge:
The above-style action was tried before the Court during the week of July 31,
2017. At the conclusion of the evidence, the Court granted the request of the
parties to submit their closing arguments in writing. Following the submission of
such closing remarks, the case was taken under submission on September 8,
2017. On September 26, 2017 the Court announced a decision generally and
1
directed Plaintiff to submitted a proposed order for the Court’s consideration.
Plaintiff complied with that order on October 17, 2017.
Now, having considered the evidence, the credibility of the witnesses and the
written closing arguments of counsel, the Court hereby FINDS, RULES, and
ADJUDGES as follows:
I.
RULINGS ON OBJECTIONS TAKEN WITH THE CASE
During the trial of this action, Plaintiff lodged objections to certain
testimony, deposition submissions, and other evidence, which the Court indicated
it would consider when reviewing the evidence. Having now had the opportunity
to do so, all such objections are expressly overruled. The matters to which the
objections pertained have been considered and have been given the weight the
Court believes such evidence is due, if any.
II.
BACKGROUND
The instant action was commenced on or about March 22, 2013, when the
Now-Defendants filed a Complaint against 4SEMO.Com, Inc. (“4SEMO”), one of
their dealers, in the name of Southern Illinois Storm Shelters, Inc. (“SISS”). That
Complaint alleged 4SEMO had infringed a purported “Life Saver Storm Shelters”
trademark the Defendants claimed they owned through SISS and also raised
related claims. 4SEMO answered and counterclaimed, asserting that the “Life
Saver Storm Shelters” mark in issue was actually its mark, and also asserting
claims for a breach of its dealer contract and other claims discussed in more
detail below.
2
The Complaint and Counterclaim were each thereafter amended by their
respective claimants, 4SEMO’s Counterclaims being amended twice. On February
20, 2015 this Court struck the damage claims that had been asserted in the name
of SISS. On August 11, 2015, this Court dismissed counts 3 through 7 of the
Defendants’ SISS claims in their entirety. On August 26, 2015, this Court granted
defensive summary judgment in favor of 4SEMO on Counts 1 and 2 of the SISS
claims. Those rulings fully adjudicated the claims that had been raised by the
Now-Defendants in their initial and amended Complaints.
The case then continued forward solely on 4SEMO’s counterclaims, with
the parties re-aligned by the Court such that 4SEMO became denominated
Plaintiff
and Robert Ingoldsby, SISS and Ingoldsby Excavating, Inc. became
denominated as Defendants.1
At the outset of trial, 4SEMO notified the Court and opposing counsel that it
would not be submitting Counts II, IV, VI, VII, XI or XII of its Second Amended
Counterclaim.
The case thus proceeded solely on 4SEMO’s claims alleging
Trademark Infringement under the Lanham Act (Count I), False Endorsement
and Unfair Competition under the Lanham Act (Count III), violations of the Illinois
Uniform Deceptive Practices Act (Count V), Breach of Contract (Count VIII),
Common law Unjust Enrichment (Count IX) and Civil conspiracy (Count X)
III.
CREDIBILITY OF THE WITNESSES
1
The parties were referred to as so realigned throughout the trial of this action, and are referred to as realigned in
this Order and Judgment. 4SEMO is thus referred to herein as the Plaintiff, and Robert Ingoldsby, SISS and
Ingoldsby Excavating, Inc. are referred to as the Defendants.
3
In large part, the resolution of the matters raised at trial turns on the
credibility of the witnesses presented. Having had the opportunity to hear live
testimony and to observe the demeanor of the witnesses, to review the testimony
of nonparty witnesses submitted by deposition, and having considered all other
evidence of record, the Court finds the testimony of Ray Fielack on material
matters to be highly credible and believable, and finds material portions of the
testimony of Scott Ingoldsby and Robert Ingoldsby to lack such credibility.
The Court’s determination as to credibility is based on the observation and
perception of the witnesses who testified at trial, including Mr. Fielack and the
Ingoldsbys.
However, the Court also notes that the deposition testimony of
nonparty Taylor corroborated Mr. Fielack’s testimony, although he had not
worked for 4SEMO for over ten years. The Court assessed virtually no credibility
to Mr. Moss’s testimony but finds that his testimony neither helped nor hindered
the case for 4SEMO. Mr. Moss, admits in his testimony that his departure from
4SEMO.com, Inc., was not on the best of terms.
In addition, the Court found the Ingoldsbys’ claimed inability to recall
important details of, or claimed non-involvement with, certain matters suspect,
especially in light of their ability to claim certitude with respect to other matters
when helpful to their cause. In addition, at one point Defendant Robert Ingoldsby
testified, that a Dealer Agreement between the parties was terminated in 2012
when it appeared that testimony would help the Defendants. He testified to the
2012 date, however, despite the fact that the termination attempt was made by
4
written letter dated in 2013, and the parties had already stipulated pre-trial to the
2013 termination date.
The
Defendants
also
contended
they
did
not
buy
the
dormant,
nonoperational, Grone Company (discussed in more detail below) in an attempt
to retroactively acquire superior rights to a name similar to 4SEMO’s trademarks
that were here in issue.
However, the documents of record reflect that the
acquisition was the sole, though erroneous, basis asserted for the Defendants
opposition to 4SEMO’s registration application before the United States Patent
and Trademark Office (“USPTO”) and was also the basis for the Defendants’
initial and amended Complaints before this Court. The record is also devoid of
any business justification for spending money for a non-operational company in
Missouri, when Defendants had already been selling shelters directly into
Missouri under the SISS name and had set up separate purported companies for
all other aspects of their operations from scratch, rather than purchasing existing
entities, let alone nonoperational ones.
Similarly, throughout the trial, all evidence indicated that the Defendants
first purchased brochures using 4SEMO’s Life Saver Storm Shelters trademark
and Greek Cross logo from 4SEMO in February of 2006. Defendants themselves
introduced a copy of one of the brochures they obtained at that time, which bore
the copyright date of 2005, as Defendants’ Exhibit 39.
Yet, despite this
overwhelming evidence and despite their own Defendants’ Exhibit 39, Scott
Ingoldsby then testified he believed that Defendants Exhibit 40 (which did not
5
have the Greek Cross Logo) was a copy of the first brochure purchased from
4SEMO by Defendants in February 2006, rather than Defendants’ Exhibit 39, and
attempted to claim that brochures containing the Greek Cross logo were not
purchased by the Defendants from 4SEMO until 2008 or 2009. He did so without
noticing that Exhibit 40 itself indicated on its face that it was actually a print out
of an Oklahoma website, printed in 2013.
Finally, the Defendants also proffered the deposition testimony of a former
dealer, Sydney Neubert, prompting 4SEMO to submit cross-designations from the
Neubert deposition that constituted cross examination of Mr. Neubert.
Upon
review of the Neubert deposition testimony the Court also found the testimony of
Mr. Neubert and the testimony of Scott Ingoldsby pertaining to the Neubert
testimony to lack credibility.
IV.
FINDINGS OF FACT
The Court finds the following facts to have been established at trial2:
1.
4SEMO is a Missouri corporation, in good standing, which at all
times relevant hereto, has operated, sold products and services, and advertised
throughout the Southeast Missouri region and in parts of Illinois and Arkansas,
and has operated a website which reaches a national audience.
2
For clarity of presentation, this Order and Judgment presents matters deemed to be findings of fact separate from
those deemed to be conclusions of law. However, the distinction is not always easily made and to the extent any
matter labeled a finding of fact is more properly considered a conclusion of law, it should be considered a
conclusion of law. It should be noted that the Court relied on all matters listed in Findings of Fact to arrive at the
conclusions and decisions in this matter.
6
2.
Defendant Robert Ingoldsby and his brother Scott have been engaged
in the business of manufacturing and selling storm shelters, together, since 1998.
3.
Storm shelters are below or above ground bunkers which are used to
protect people or property from severe weather such as tornadoes, into which
people go to get out of the storm.
4.
The Ingoldsby brothers utilized no purported entity structures to
conduct their storm shelter operations until the year 2000, and admit that, at
least up to that point, they considered the business to be that of Defendant Robert
Ingoldsby individually.
5.
Defendant Southern Illinois Storm Shelters, Inc. (“SISS”) was
established by Robert Ingoldsby in the year 2000, and Defendant Ingoldsby
Excavating, Inc. (“Ingoldsby Excavating”) was established in 2008.
6.
Defendant Robert Ingoldsby controls and was the person who was
responsible for, and made, the decisions for and under the name of Southern
Illinois Storm Shelters, Inc.
7.
Defendant Robert Ingoldsby controls and was the person responsible
for, and made the decisions that were made for and under the name of Ingoldsby
Excavating.
8.
Robert Ingoldsby, SISS and Ingoldsby Excavating all operate out of
the same location, using the same phone numbers, same quick books software
and computers, and cell phones, and use the same personnel.
represented in this action by the same lawyers.
7
They were all
9.
Ingoldsby Excavating was only established in 2008 for sales tax
reasons.
10.
Defendant Robert Ingoldsby entrusted most or all of the face-to-face
dealings between the Defendants and 4SEMO that are the subject of the instant
dispute to his brother Scott Ingoldsby and Scott Ingoldsby had full authority to
act on behalf of all Defendants.
11.
Scott Ingoldsby operated at all times relevant to this action
simultaneously under both the SISS and Ingoldsby Excavating company names,
but never tracked what time he spent for which company. He merely knew in his
own head which company he was working for on any particular task.
12.
At all times relevant hereto, each of the actions of Scott Ingoldsby
were taken for, on behalf of, and as the actions of Defendants SISS, Robert
Ingoldsby, and Ingoldsby Excavating if in fact, the Defendants were or are
separate entities.
13.
Scott Ingoldsby never distinguished between companies or even
talked in terms of company, when dealing with 4SEMO.
14.
Even after this case was in litigation, Defendants ran at least one
advertisement claiming to be both the manufacturer of storm shelters, and the
company which consumers should call to purchase shelters for installation in
Southern Illinois, without distinguishing between separate companies.
15.
The record is devoid of any corporate formation documents, articles
of incorporation, bylaws, operating agreements, board resolutions, or any other
8
evidence of corporate activity in general, and importantly, is even devoid of any
corporate resolutions, authorizations, or agreements concerning any of the
Defendants’ dealings with 4SEMO or relating to the use of the LifeSavers Storm
Shelters trademark here in issue.
16.
The only intercompany document is a purported dealer agreement
between Ingoldsby Excavating and SISS.
17.
In 2005, 4SEMO was in the business of home renovation and
remodeling, among other things.
18.
In the course of that business, in 2004, 4SEMO bought a storm
shelter manufactured by Defendants from a dealership owned and operated by
Michelle Masters and Barry Aycock, husband and wife. (hereafter referred to as
the “Aycocks”).
19.
4SEMO purchased the Aycocks shelter at the request of one of its
customers for whom 4SEMO was doing remodeling work, and resold it to that
customer as part of its remodeling work for the customer.
20.
As a result of that experience, 4SEMO believed there was a market
for the sale and installation of storm shelters, and spoke with the Aycocks about a
plan pursuant to which 4SEMO would add the sale and installation of shelters to
its products, product lines and services, and would purchase any storm shelters
it sold through the Aycocks’ dealership.
9
21.
The Aycocks agreed to support that approach and provided 4SEMO
with some literature on the storm shelters they carried, which referred to the
storm shelters using the Southern Illinois Storm Shelters name.
22.
4SEMO added storm shelters to its business plan and began
marketing storm shelter sales and installation services as an additional
product/service line.
23.
In marketing storm shelters during this period, 4SEMO initially
utilized the marketing materials received from the Aycocks.
24.
4SEMO then created its own brochures which used the initials
S.I.S.S. to refer to the Defendants as manufacturers, Plaintiff’s Trial Exhibit 10, to
avoid the use of the “Southern Illinois” moniker; 4SEMO did so because it
believed the use of the Illinois reference might be confusing with respect to
attempted sales in Missouri and Arkansas and because of its own Missouri
location.
25.
Shortly after 4SEMO began its storm shelter marketing efforts, the
Aycocks approached 4SEMO and asked if 4SEMO would be interested in simply
taking over the storm shelter dealership and becoming a direct dealer of the
Defendants’ storm shelters.
26.
4SEMO checked the Defendants’ website to determine what other
dealers would be in 4SEMO’s vicinity if they were to acquire the dealership and go
forward.
10
27.
4SEMO agreed to take over the storm shelter dealership from the
Aycocks and the Aycocks informed the Defendants of their and 4SEMO’s desire to
transfer the Aycocks’ dealership to 4SEMO.
28.
The Defendants agreed to enlist 4SEMO as a dealer of its storm
shelters in place of the Aycocks, so long as the Aycocks formally agreed to the
change.
29.
In order to release their dealership rights to 4SEMO, the Aycocks
merely requested that 4SEMO purchase the two storm shelters which the Aycocks
had in inventory (the “Existing Inventory Shelters”) and 4SEMO agreed to do so.
30.
The Aycocks and 4SEMO agreed on the terms on which the Aycocks
would release their dealership rights to 4SEMO in mid to late April of 2005; When
they reached that understanding the Aycocks agreed that 4SEMO could take
possession of the two Existing Inventory Shelters immediately, to use as display
shelters, while the parties worked out formal agreements.
31.
At that time, in light of 4SEMO’s movement towards becoming a
direct dealer of storm shelters, 4SEMO’s president Ray Fielack decided it would
be beneficial for 4SEMO to have its own trademark to identify it as the source of
storm shelters it sold, to avoid any confusion from the Southern Illinois Storm
Shelters name, and to generate and embody good will for 4SEMO.
32.
Mr. Fielack, informed the rest of the 4SEMO staff of the company’s
impending acquisition of the storm shelter dealership and his desire to develop a
trademark for 4SEMO to use in connection with its retail sale and installation of
11
storm shelters, and initiated a brainstorming session among the staff to come up
with an appropriate mark.
33.
As a result of those discussions, Mr. Fielack ultimately selected a
name that he himself had come up with, LifeSaver Storm Shelters, to be used by
4SEMO as its mark in conjunction with its retail sales and installations of storm
shelters
34.
Mr. Fielack and a 4SEMO employee, Ross Taylor, then came up with
an associated logo mark, comprised of a Greek Cross with the Life Saver Storm
Shelters phrase imbedded in its horizontal arms.
35.
At the time Mr. Fielack came up with the Life Saver Storm Shelters
name and caused 4SEMO to adopt the Life Saver Storm Shelters name and
related logo as trademarks of 4SEMO,
Mr. Fielack had never heard of the name
being used in conjunction with storm shelters before, had never seen the name
used in that context before, had never heard of any person or company that used
it in connection with storm shelters before, and had never seen it used on any
marketing materials or other document relating to storm shelters before.
36.
The Defendants’ marketing materials that were received by Plaintiff
from the Aycocks in early 2005 did not include or reference a Life Saver name or
mark
37.
When Mr. Fielack checked the Defendants’ website when he was
thinking of causing 4SEMO to acquire the dealership from Michelle and Barry
12
Aycock, there was no reference to Life Saver Storm Shelters in any manner or for
any purpose on the Defendants’ website.
38.
When Mr. Fielack suggested the Life Saver mark to 4SEMO staff,
nobody indicated they had heard or seen it before.
39.
No one suggested the Life Saver Storm Shelters name to Mr. Fielack.
40.
Mr. Fielack came up with the Life Saver Storm Shelters mark on his
own, as a result of his own marketing ideas and though processes.
41.
4SEMO checked the federal trademark office to see if anyone had
registered a similar trademark and no one had done so.
42.
4SEMO did a general internet search to see if anyone was using a
similar name in connection with storm shelters and found no indication that
anyone was doing so.
43.
Neither Scott Ingoldsby nor any other representative of Defendant
ever mentioned the Life Saver name prior to learning of 4SEMO’s adoption of the
mark and seeing 4SEMO’s use of it.
When Defendants later first learned of
4SEMO’s adoption of the Life Saver Storm Shelters mark, they did not indicate to
4SEMO that the Life Saver Storm Shelters mark or any similar mark had been
used before by themselves, or anyone else, or that they had heard of the use of the
mark or had ever seen it used before.
44.
The Defendants acknowledge they did not conceive the Life Saver
Storm Shelters mark or the Greek Cross logo with the name imbedded in it.
13
45.
4SEMO took possession of the Existing Inventory Shelters from the
Aycocks and constructed a raised viewing deck to use with them, in mid to late
April 2005.
46.
The Existing Inventory Shelters, and the other shelters 4SEMO
would thereafter sell, were and are designed so that the entrances are at ground
level once the shelters are sunk into the ground.
47.
Before installation of the shelters, while a shelter is sitting on the
ground rather than being sunk into it, the shelter’s opening is substantially above
ground level and a person cannot get into them or look into them.
48.
The viewing deck constructed by 4SEMO was constructed to allow
potential purchasers to look into an uninstalled shelter so as to view the interior
of the shelter; It was constructed such that the deck height was just above the top
of the storm shelters being displayed while they were sitting on the ground; The
shelters were nosed up against the deck, so that persons standing on the deck
could look down into them and see the inside.
49.
The shelters were not enclosed within the deck, but merely nosed up
against it, and the exterior of the shelters were still visible.
50.
4SEMO used a stencil to paint its Life Saver Storm Shelters
trademark, its related Greek Cross logo, and its phone number onto the Initial
Inventory Shelters when they obtained them from the Aycocks in April 2005.
51.
4SEMO used its viewing deck in connection with the Existing
Inventory Shelters beginning in April of 2005, and nosed them against the deck
14
such that the Life Saver Storm Shelters name and Logo (and 4SEMO’s phone
number) painted on the Existing Inventory Shelters remained visible to the public.
52.
4SEMO also placed signage on the viewing deck which utilized the
Life Saver Storm Shelters mark and the Greek Cross logo mark to reference the
shelters that could be purchased from 4SEMO.
53.
The signage was fastened to the road side of the deck, and had the
name and the Greek Cross logo visible to passersby.
54.
4SEMO also began using the Life Saver Storm Shelters mark and
related Greek Cross logo mark in brochures it created and printed in-house in
April of 2005, after acquiring the Initial Inventory Shelters.
55.
Plaintiffs Exhibit 8 is a brochure created by 4SEMO as revised in late
May of 2005. In the brochure, 4SEMO utilized the Life Saver Storm Shelters
name and Greek Cross logo, claimed trademark rights and also claimed to use
Life Saver Storm Shelters as a d/b/a of the company.
56.
Plaintiffs Exhibit 8 was a revised version of the brochure using the
marks originally created by 4SEMO in April of 2005; the original version had the
same general content as Plaintiff’s Exhibit 8.
57.
In the course of the April 2005 discussions with the Aycocks and
Defendants regarding 4SEMO’s takeover of the Aycocks’ dealership, 4SEMO
learned that the smaller of the two Existing Inventory Shelters it was purchasing
from the Aycocks was actually a discontinued model, and the Defendants agreed
15
that, the Defendants would swap out the discontinued shelter for the newer
version of the same size model.
58.
On May 5, 2005, the Defendants and 4SEMO formally signed and
entered into the Dealer Agreement with Defendants pursuant to which 4SEMO
became a direct dealer of storm shelters manufactured by Defendants; a true and
accurate copy of the agreement between the parties is reflected in trial exhibits
Plaintiffs Exhibit 3 and Defendants Exhibit 25. (The “Dealer Agreement.”)
59.
On May 19, 2005, 4SEMO and the Aycocks formally signed and
entered into their agreement pursuant to which the Aycocks released any rights
under their prior Dealer Agreement with Defendants to 4SEMO; on that date
4SEMO also paid the Aycocks for the Initial Inventory Shelters which were
already in 4SEMO’s possession.
A true and accurate copy of the agreement
between 4SEMO and the Aycocks is also a part of Plaintiff’s Exhibit 3.
60.
Following the signing of the Dealer Agreement with Defendants,
4SEMO continued actively marketing the sale of storm shelters using its Life
Saver Storm Shelters mark and Greek Cross logo mark; 4SEMO applied the
marks to the storm shelters themselves by stenciling the name, logo and its phone
number onto shelters it sold, used the name and logo in advertising, including
yellow pages advertising, used them in its brochures and at its facility, and used
them in use and care manuals and installation manuals for the shelters it
provided to purchasers of the shelters it sold.
16
61.
In early May 2005, shortly after 4SEMO and the Defendants signed
the Dealer Agreement, Scott Ingoldsby visited 4SEMO’s facilities on behalf of
Defendants to exchange a newer version shelter for the smaller of the Existing
Inventory Shelters, as 4SEMO and the Defendants had previously agreed.
62.
When he did so, Ray Fielack, 4SEMO’s president and principal,
showed Scott Ingoldsby the Life Saver Storm Shelters and Greek Cross logo
marks 4SEMO had adopted and the brochures that they had created using them;
4SEMO also explained to Scott Ingoldsby, how 4SEMO was marketing and selling
the storm shelters it sold, including those purchased from SISS, under its
trademarks and pursuant to a business, marketing and advertising plan.
63.
At that time Scott Ingoldsby saw 4SEMO’s Life Saver Storm Shelters
mark and the Greek Cross Logo stenciled onto the Initial Inventory Storm
Shelters and saw 4SEMO’s Life Saver Storm Shelters signage on 4SEMO’s viewing
deck.
64.
4SEMO then turned the smaller of the Existing Inventory Shelters
(with its Life Saver Storm Shelters mark and logo stenciled on it) over to Scott
Ingoldsby for transport to the Defendants, and accepted the newer, more valuable
model of shelter which Scott Ingoldsby had brought with him to 4SEMO.
65.
The smaller Existing Inventory Shelter was then transported from
4SEMO’s Missouri location to the Defendants in Illinois.
66.
4SEMO stenciled its Life Saver Storm Shelters mark and the Greek
Cross logo on the new shelter it obtained from Defendants (the “Exchange
17
Shelter”), and placed the Exchange Shelter in 4SEMO’s viewing deck alongside the
remaining Initial Inventory Shelter, so that potential customers could view the
shelters, and continued marketing the sale of storm shelters under its Life Saver
Storm Shelters name and Greek Cross logo.
67.
In November of 2005, two individuals named Mr. and Mrs. Corum
visited the 4SEMO facility, viewed the remaining Initial Inventory Shelter and the
Exchange Shelter, the Life Saver Storm Shelters signage and 4SEMO’s brochures
which utilized the Life Saver Storm Shelters mark and the Greek Cross Logo
mark and purchased the remaining Initial Inventory Shelter from 4SEMO. The
Corums paid for the shelter at that time, but set up delivery of the shelter for a
future date.
68.
In December 2005, 4SEMO transported the stenciled Existing
Inventory Shelter the couple had purchased to them, and caused the same to be
installed with the assistance of Scott Ingoldsby for the Defendants.
69.
4SEMO continued to consistently market and sell storm shelters
under and using its Life Saver Storm Shelters trademark and Greek Cross logo,
and has consistently used its marks in connection with its sales and installations
ever since.
70.
4SEMO has made regular and consistent sales of storm shelters
since May of 2005, and has installed the same, and each of those regular and
consistent sales and installations were made under and in conjunction with
4SEMO’s use of the Life Saver Storm Shelters mark.
18
71.
4SEMO has been using the Life Saver Storm Shelters name and
Greek Cross logo as its trademarks consistently and systematically since midApril of 2005, used them in conjunction with the exchange of the Initial Inventory
Shelter with Defendants in May of 2005, with the November 2005 arms-length
storm shelter sale noted above, and with every storm shelter sale and installation
since.
72.
4SEMO has continuously used its Life Saver Storm Shelters
trademark to reflect it as the retail source of the storm shelters it has sold and
installed, despite two changes of storm shelter manufacturers/suppliers.
73.
4SEMO has continued to utilize the LifeSaver Storm Shelters mark
in all advertising materials, brochures, care manuals, and by painting it via stencil
or decal sticker on all storm shelters it sells, regardless of manufacturer.
74.
In February 2006, Defendants, acting through Scott Ingoldsby,
requested permission for Defendants to use 4SEMO’s Life Saver Storm Shelters
trademark and Greek Cross logo mark in conjunction with retail sales and
installations of storm shelters by Defendants in Southern Illinois.
75.
The request was made for and on behalf of all Defendants by Scott
Ingoldsby, and was not made on behalf of any particular Defendant, and no
company names were used.
76.
Defendants only requested the right to use 4SEMO’s Life Saver
Storm Shelters mark and related logo for this limited use.
19
77.
After some consideration, 4SEMO agreed that Defendants could use
4SEMO’s Life Saver Storm Shelters trademark and Greek Cross logo mark in
conjunction with retail sales and installations of storm shelters by Defendants in
Southern
Illinois,
provided
that
they
were
storm
shelters
Defendants
manufactured, that they were installed in the manner with which 4SEMO was
familiar, and that 4SEMO approved and controlled the printing of all marketing
materials containing its mark which Defendants would use in such fashion.
These were the only rights to use 4SEMO’s Life Saver Storm Shelters mark and
Greek Cross logo mark that were granted to Defendants.
78.
The Court specifically finds that the testimony of Ray Fielack and the
former 4SEMO employees that such a limited use agreement was all that was
requested and all that was granted is credible, and that the attempts of the
Defendants to characterize the agreement as something other than this limited use
agreement are not credible.
The Court also specifically finds the Defendants’
contention that the agreement was solely for the rights to use the Greek Cross
logo and not for the Life Saver Storm Shelters name itself is not credible and not
believable.
79.
Notwithstanding the limited purposes for which 4SEMO granted
Defendants the right to use the Life Saver Storm Shelters name and Greek Cross
logo,
from the outset of Defendants’ acquisition of brochures containing those
marks from 4SEMO in February 2006 and continuing up through the trial of this
cause, the Defendants used the Plaintiff’s trademarks in ways beyond the limited
20
use that was authorized, including the use of the same in connection with the
marketing and sale of their shelters to dealers nationwide for resale, and in
connection with direct sales and installations outside of Southern Illinois.
80.
The Defendants also advertised and/or marketed its products using
the Life Saver Storm Shelters mark in numerous forums and publications,
including newspapers and trade shows across various states.
81.
Defendants
registered
and
used
the
domain
name
for
www.lifesaverstormshelters.com.
82.
In addition to its own direct misuse of the Marks and advertising
brochures and its own sale of products and services under the Marks, the
Defendants also intentionally induced dealers and distributors of storm shelters
across the country to utilize 4SEMO’s Life Saver Storm Shelters of Greek Cross
logo marks and to sell goods and services thereunder.
83.
Defendants also supplied, and continue to supply, products to
dealers and distributors with the specific intent that they sell the same and
related services under the Life Saver Storm Shelters mark.
84.
All of Defendants’ sales and installations of storm shelters have been
made under and in conjunction with 4SEMO’s Life Saver Storm Shelters mark
since February 6, 2006.
85.
4SEMO was unaware of the Defendants’ use of the Life Saver Storm
Shelters mark and Greek Cross logo in ways and for purposes other than the
21
Defendants’ retail sale and installation of storm shelters in Southern Illinois until
2011 and did not consent to or authorize any such use.
86.
The actions taken by Defendants of which 4SEMO were aware prior
to 2011 did not appear inconsistent with the limited use agreement, and did not
put 4SEMO on notice of the Defendants unauthorized uses.
87.
Defendants’ use of the marks in excess of their authorized manner
was knowing and intentional; before 4SEMO even discovered the Defendants’
unauthorized use of its marks, Robert Ingoldsby, on behalf of himself and the
company Defendants, discussed with Scott Ingoldsby that Defendants would offer
to purchase the Life Saver Storm Shelters name and logo from 4SEMO if and
when 4SEMO discovered the improper use and complained.
88.
In or around late 2011, 4SEMO wanted to update its marketing
materials and brochures; when 4SEMO’s graphic designer went to work on the
project, she did a quick internet search for “LifeSavers Storm Shelters” to locate
4SEMO’s website and was surprised to see search engine returns for several
websites all around the country, which indicated several SISS independent
dealers and distributors were using the 4SEMO Life Saver Storm Shelters mark.
89.
The graphics designer contacted 4SEMO’s president, Ray Fielack,
and alerted him of what she had found; Ray Fielack ran a confirming internet
search, and then immediately contacted Defendants’ representative, Scott
Ingoldsby.
22
90.
The notification from its graphic designer in 2011 was the first notice
that 4SEMO received of the Defendants’ unauthorized use of the Life Saver Storm
Shelters and Greek Cross logo marks.
91.
In response to the call from Ray Fielack demanding the cessation of
the improper use, Scott Ingoldsby, on behalf of Defendants, did not dispute the
contention of unauthorized use, but rather admitted the widespread unauthorized
use, saying that he was supposed to have talked to 4SEMO previously, and made
the proposal to buy the rights to the name and the logo and related materials that
he had already discussed with Robert Ingoldsby.
92.
The agreement pursuant to which the Defendants would purchase the
rights to the marks and related materials was refined over the next few days.
93.
In the course of those discussions, Scott Ingoldsby indicated the
Defendants wanted to purchase a registered mark and requested that 4SEMO
register the Life Saver Storm Shelters trademark and Logo prior to the sale, and
4SEMO accordingly took steps to do so.
94.
The agreement the parties reached in 2011 was that 4SEMO would
not pursue any claims against Defendants for their unauthorized use of 4SEMO’s
Life Saver Storm Shelters and Greek Cross logo marks, Defendants would buy
the rights to the Life Saver Storm Shelters and Greek Cross logo marks and the
associated website artwork, brochure templates, and other marketing materials
from 4SEMO effective as of that date, that the parties would determine how the
purchase price for those rights would be determined and paid,
23
and that Mr.
Fielack or 4SEMO would work with the Defendants on a national rollout
marketing campaign for the Defendants’ utilizing the marks, including the offering
of stencils and new brochures to all of Defendants’ dealers.
95.
The parties then acted under the agreement, with periodic
discussions on methods of pricing the rights acquisition price, and Ray Fielack
working with Scott Ingoldsby to produce a nationwide stencil campaign, for use in
connection with the true national roll out as agreed.
96.
Any and all consent of 4SEMO to the continued use of the Life Saver
trademarks by the Defendants after the Defendants’ 2011 agreement to purchase
the rights from 4SEMO was based on the understanding that Defendants had
agreed to pay for the rights and was contingent on the parties’ agreement being
completed.
97.
In the months that followed, Defendants continued to represent to
4SEMO that the agreement was in place, continued to negotiate the price to be
paid, and Scott Ingoldsby worked with Ray Fielack on the stencil and brochure
design work for the national marketing campaign that 4SEMO was to do under
the parties’ agreement.
98.
At some point prior to July 19, 2012, however, the Defendants,
through their attorney, learned that an uninvolved and non-operational Missouri
company had used a phrase similar to 4SEMO’s Life Saver Storm Shelters
trademark, (the name “Life-Saver Storm Shelters,” with a hyphen), as its company
24
name back in 2002. The Defendants also learned that, although out of business,
that entity had not been formally dissolved.
99.
That company, Life-Saver Storm Shelters, LLC (with a hyphen), had
originally been formed by an individual named John Grone in 2002. The
company and Mr. Grone are hereafter referred to, together, the “Grone Company.”
100. Erroneously thinking that acquiring the inactive Grone Company
would somehow excuse their unauthorized use of 4SEMO’s Life Saver Storm
Shelters mark and obviate the need to pay 4SEMO to acquire the rights the
Defendants had agreed to buy, the Defendants decided they would not honor the
agreement to purchase the marks from 4SEMO, and would instead purchase the
dormant, nonoperational Grone Company and hold the same as a wholly owned
subsidiary of the Defendants’ purported SISS entity.
101. On July 19, 2012, Defendants told 4SEMO, via a text from Scott
Ingoldsby to Ray Fielack, that Defendants were thinking of backing out of, and not
completing, their agreement with 4SEMO to buy the Life Saver Storm Shelters
mark and associated materials, but did not disclose their intent to purchase the
Grone Company.
102. In an ensuing phone call, 4SEMO reminded Scott Ingoldsby that if
Defendants did not close their purchase agreement, the Defendants’ use of the Life
Saver Storm Shelters mark would be unauthorized; After a heated exchange in
which Scott Ingoldsby stated that the Defendants would then stop selling shelters
to 4SEMO so it would have nothing to sell under its marks, the parties calmed
25
and Scott Ingoldsby indicated he would have further discussions with Robert
Ingoldsby and get back to 4SEMO with the Defendants’ decision.
103. Scott Ingoldsby did not get back to 4SEMO, but during the first or
second week of August, 2012 Robert Ingoldsby confirmed the Defendants
withdrawal from their Marks purchase agreement in a conversation with Ray
Fielack at Defendants’ facility.
104. Following the Defendants’ withdrawal from their agreement to buy
the marks from 4SEMO, the Defendants filed an objection to 4SEMO’s trademark
application and filed a competing registration application. Those filings were the
first time that 4SEMO became aware of
any claim that there had been a name
similar to 4SEMO’s Life Saver Storm Shelters mark used in connection with
storm shelters prior to 4SEMO’s adoption of the mark.
105. Even in those 2012 USPTO filings, however, the Defendants never
claimed that 4SEMO knew of any such prior “use” when 4SEMO independently
created and adopted its Life Saver Storm Shelters mark and corresponding Greek
Cross logo, or that the Defendants had ever mentioned such a prior company to
4SEMO.
106. The Defendants also removed 4SEMO from their website listing of
authorized dealers, refused to fill existing orders for 4SEMO, refused to take
additional listings from 4SEMO, and began routing potential and actual
purchasers from 4SEMO’s contractual dealership territory to other dealers, or
selling and installing shelters in 4SEMO’s territory themselves, either directly or
26
through the “reanimated” Grone Company subsidiary they had bought from John
Grone’s widow.
107. Defendants also continued to use 4SEMO’s Life Saver Storm Shelters
mark in conjunction with all sales and installations of storm shelters, at both
wholesale and retail, and in fact expanded their use of, and investment in, the
mark.
108. Despite cutting off all business ties and refusing to sell or deliver
product to 4SEMO, Defendants did not attempt to terminate the Dealer
Agreement until a year later, in July of 2013, when Defendants’ counsel sent a
letter of termination to counsel for 4SEMO.
109. The Defendants never offered or attempted to repurchase the three
shelters 4SEMO had in its possession and used as display shelters at an
“agreeable price” when they claimed to terminate the Dealer Agreement with
4SEMO.
110. Defendants never took any steps to attempt to determine what a fair
price to repurchase the shelters from 4SEMO would be.
111. Notwithstanding the Dealer Agreement which provided 4SEMO with
exclusive rights to install shelters manufactured by Defendants in identified
territories, between the date the agreement was signed and the date Defendants’
purported to terminate it, twenty-five storm shelters were sold and installed in the
exclusive territories granted to 4SEMO in that Dealer Agreement by either
27
Defendants, a wholly owned subsidiary of Defendants, or by another dealer of
Defendants, due to the acts and facilitation of Defendants.
112. Scott Ingoldsby acknowledged at trial that, as a practical matter, no
dealer of Defendants’ storm shelters would or will install a shelter that they didn’t
or don’t also sell to the purchasing customer.
113. If Defendants had informed storm shelter dealers and customers that
any storm shelters purchased in the territories granted to 4SEMO during the
4SEMO dealership contract period had to be installed by 4SEMO, 4SEMO would
have received the associated shelter sale business and revenue, as well as any
revenue related to the installation of the shelters.
114. The amount of profit 4SEMO would have made from the sales and
installations of the 25 storm shelters that were installed within the exclusive
territories granted by Defendants to 4SEMO by others during the contract period
was calculated by Plaintiff’s expert, Mark Hoffman, a Certified Public Accountant
licensed in Missouri from the records of the Defendants themselves.
115. The Court finds Mr. Hoffman to be credible and his analytical
approach to be sound.
116. The amount of profit 4SEMO would have made from the sales and
installations of the 25 storm shelters that were installed within the exclusive
territories granted by Defendants to 4SEMO by others during the contract period
was $26,940.00
28
117. Defendants used 4SEMO’s Life Saver Storm Shelters Mark on or in
connection with its sales and installations of each storm shelter sold and installed
since February of 2006, both at wholesale and retail and without regard to
customer or purpose.
118. The Defendants use of 4SEMO’s Life Saver Storm Shelters mark and
Greek Cross logo mark has engendered actual confusion in the market place.
a.
After 4SEMO began selling storm shelters manufactured by
Atlas, a different manufacturer of storm shelters, a confused potential
4SEMO customer came to the Defendants facilities in an attempt to
purchase an Atlas manufactured shelter, due to the Defendants’ continued
use of 4SEMO’s Life Save Storm Shelter mark.
b.
Similarly, 4SEMO has and does receive periodic inquiries,
both by phone and in person visits, from potential customers about the
Defendants’ manufactured shelters on an ongoing basis, rather than for
those models from other manufacturers that are actually sold by 4SEMO,
due to Defendants continued use of 4SEMO’s Life Saver Storm Shelters
mark.
119. The Defendants are likely to continue using the Life Saver Storm
Shelters Mark post trial and on an ongoing basis, and to continue to urge and
purport to authorize to do so, unless prevented from doing so.
29
120. The widespread use of the 4SEMO marks by Defendants and the
Defendants’ active encouragement of its dealers nationwide to also use 4SEMO’s
Life Saver mark, has damaged and is damaging 4SEMO, and will continue to so.
121. The Defendants did not take any actions or act any differently than
they would have acted if 4SEMO would have asserted its claims against them
sooner than they were actually asserted. They have conducted business as usual.
122. The revenues the Defendants gained from sales made in conjunction
with an unauthorized use of 4SEMO’s Life Saver Storm Shelters mark were also
calculated by Plaintiff’s expert, Mark Hoffman, from the records of the Defendants
themselves.
Mr. Hoffman possesses several other accounting certifications,
besides his CPA, and has extensive experience in determining trademark
damages.
123. The Court finds Mr. Hoffman to be credible and his analytical
approach to be sound.
124. Not including sales and installations made by Defendants in
Southern Illinois, from February 2006 until December 31, 2011, the Defendants
earned $6,104,992.00 from sales and installations made in conjunction with their
use of the Life Saves Storm Shelters marks (i.e. the Defendants earned
$6,104,992.00 from their use of the Life Saves Storm Shelters mark and/or Greek
Cross logo mark in manners other than those that had been agreed to by
4SEMO), which they characterized as revenue earned by SISS.
30
125. From January 2012 until July 1, 2017 (the month of trial),
Defendants earned an additional $11,266,011.000 from their sales and
installations made in conjunction with their use of 4SEMO’s Life Saver
Trademark, of which they characterized $10,388,770.00 as additional revenue of
SISS and $877,241.00 of which they characterized as revenue of Ingoldsby
Excavating.
126. As of the first day of July, 2017, the Defendants had thus earned a
total of $17,371,003.00 in revenue from (a) their use of 4SEMO’s Life Saver
Storm Shelters Mark between February 6, 2006 and December 31, 2011 and (b)
their continued use of the 4SEMO Life Saver Storm Shelters mark after January
1, 2012.
127. Of the $17,371,003.00 in revenue so earned by the Defendants,
$11,266,011 was earned between January 1, 2012 and July 1, 2017.
128. The Defendants did not submit any evidence of costs or other offsets
to reduce or offset against the revenue numbers at trial.
129. Defendant Robert Ingoldsby was and is the President of both SISS
and Ingoldsby Excavating and, to the extent the same were validly operating as
separate entities, made the decision for himself and each of those companies that
they would use Plaintiff 4SEMO’s LifeSaver Storm Shelters mark in all manners
in which it was used, and to keep using it in such manners up through trial.
130. If and to the extent they were separate entities and/or operations,
SISS sold product to Ingoldsby Excavating knowing that it would be sold and
31
installed under 4SEMO’s Life Saver Mark, and encouraging and inducing the
sales under the mark by Ingoldsby Excavating.
V.
CONCLUSIONS OF LAW
The Court has made the following conclusions of law:3
1.
This Court has original subject matter jurisdiction over this action
pursuant to the Lanham Act, 15 U.S.C. §1051, et seq., 28 U.S.C. §1331 and 28
U.S.C. §1338(a)(b), and has supplemental jurisdiction over 4SEMO’s state law
and common law claims under 28 U.S.C. §1367.
2.
Venue is proper in the Southern District of Illinois pursuant to 28
U.S.C. §1391, 28 U.S.C. §1367 and 15 U.S.C. §1121.
3.
Upon the filing of the Defendants’ initial Complaint in this cause, the
United States Patent and Trademark Office stayed its review of 4SEMO’s pending
trademark registration application, to await the results of this case; this matter
thus involves unregistered marks.
4.
The Lanham Act protects unregistered marks to the same extent as
registered. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct.
2753, 120 L.Ed.2d 615 (1992).
5.
The Lanham Act protects words, names, symbols, or devices that a
person or company uses in connection with goods or services, in commerce, "to
identify and distinguish [its] goods, including a unique product, from those
3
As noted above, for clarity of presentation, this Memorandum and Order presents matters deemed to be findings
of fact separate from those deemed to be conclusions of law. However, the distinction is not always easily made and
to the extent any matter set forth below as a conclusion of law is more properly considered a finding of fact, it
should be considered a finding of fact. It should be noted that the Court relied on all matters listed in Findings of
Fact to arrive at the conclusions and decisions in this matter.
32
manufactured or sold by others and to indicate the source of the goods." 15
U.S.C. §1125(a)(1), 1127.
6.
4SEMO established its ownership of the phrase Life Saver Storm
Shelters (the “Name Mark”) and the Greek Cross logo with the Name Mark
imbedded in its horizontal arm (the “Logo Mark”) by appropriation and use of
that phrase and logo to identify and distinguish 4SEMO’s goods and services from
those of its competitors. The Name Mark and Logo Mark. (Hereafter the Name
Mark and Logo Mark may be referred to, together, at times as “the Marks”).
7.
The painting of the Name Mark and Logo Mark on the Existing
Inventory Shelters and the use of the Marks on 4SEMO’s viewing deck signage,
and the dates of brochures and other advertising materials beginning in April
2005, may qualify as use of the Marks in Commerce, but in any event 4SEMO
first used the Name Mark and Logo Mark in commerce at least as early as May
2005 when the smaller Existing Inventory Shelter, with the Name Mark and Logo
Mark painted upon it (along with 4SEMO’s phone number) was exchanged for a
shelter of higher value and transported from 4SEMO’s Missouri location to the
Defendants’ Illinois location in early May of 2005. The exchange and transfer was
a bona fide transaction and was not made simply to reserve a right to the Marks.
15 U.S.C. §1127.
8.
Further, 4SEMO’s bona fide sale of the larger, remaining, Existing
Inventory Shelter in November of 2005 to the Corums’ was also the result of, and
an example of, the use of the Marks in commerce.
33
9.
4SEMO has consistently and regularly used the Marks in commerce
in conjunction with its sales and installations of storm shelters ever since.
10.
The Marks are each a valid trademark that is, and has been at all
times relevant to this action, entitled to protection under 15 U.S.C. §1125 as an
unregistered trademark.
11.
The agreement reached between 4SEMO and the Defendants in
February of 2006 for the Defendants’ limited use of the Marks constituted a
trademark licensing agreement.
12.
Defendants’ rights to the Life Saver Storm Shelters trademark and
associated Greek Cross logo trademark came solely from, and were limited to,
their agreement with 4SEMO.
13.
The Defendants’ use outside the scope of the permitted use allowed
under their agreement with 4SEMO was infringement, as was their continued use
after any permission to use the Marks was withdrawn. See Segal v. Geisha NYC
LLC, 517 F.3d 501, 506 (7th Cir. 2008); Franchised Stores of New York, Inc. v.
Winter, 394 F.2d 664, 668 (2d Cir. 1968); see also Masters v. UHS of Delaware,
631 F.3d 464, 473 (8th Cir. 2011); Brennans Inc. v. Dickie Brennan & Co. Inc.,
376 F.3d 356, 365 (5th Cir. 2008); Watec Co., LTD. v. Liu, 403 F.3d 645, 649
(9th Cir. 2005); McCarthy on Trademarks and Unfair Competition § 25:30 (4th
ed.).
14.
The evidence establishes that Defendants’ use of the Marks in
commerce has caused actual confusion and is likely to cause confusion, mistake
34
or deception as to the source of the products bearing or sold in conjunction with
the Marks.
15.
In any event, where, as here, the alleged infringer is using the
identical language as the claimed trademark owner, confusion is presumed and
need not be separately established. Processed Plastic Co. v. Warner Commc'ns,
Inc., 675 F.2d 852, 857 (7th Cir. 1982).
16.
In addition, Defendants allegation in paragraph 10 of their Amended
Complaint that the use of the identical Life Saver Storm Shelters mark by Plaintiff
4SEMO and Defendants is likely to mislead, deceive, and confuse consumers is a
judicial admission of such confusion, binding on Defendants. SOO Line Railroad
Company v. St. Louis Southwestern Railway Company, 125 F.3d. 481 (7th Cir.
1997).
17.
The Defendants use of the Marks in commerce on or in connection
with its goods or services was also the use of the Marks in a manner that has
deceived or is likely to deceive as to the affiliation, connection, or association of
the Defendants with 4SEMO and as to 4SEMO’s sponsorship, or approval of the
Defendants and their other dealers’ goods, services, and commercial activities in
violation of 15 U.S.C. §1125(a)(1).
18.
The unauthorized use by the Defendants of 4SEMO’s Name Mark and
Logo Mark has caused and/or is likely to cause confusion, mistake or deception
as to the origin, sponsorship or association with the Marks. Consumers are likely
to believe that the Defendants’ products or services are licensed by, sponsored by,
35
originated with or associated with 4SEMO and the unauthorized use of the Marks
falsely represents the Defendants as being connected with the ownership of the
Marks.
19.
The Defendants have also intentionally, willfully, knowingly and
wrongfully advertised, distributed and promoted the Marks without the consent,
express or implied, permission, or authorization of the 4SEMO and as such, have
misrepresented the nature and relationship between 4SEMO and the Defendants
and the Defendants products and/or services.
20.
Further, the Defendants have failed to properly credit 4SEMO as the
true creator of and origin of the Marks, and have intentionally refused to identify
4SEMO as the true creator of the Marks.
21.
By so doing, the Defendants are causing mistake, confusion and
deception as to the true origin of products and the originality of products, and
have falsely and deceptively advertised and promoted products.
22.
The Defendants’ unauthorized use of 4SEMO’s Life Saver Storm
Shelters and Greek Cross logo marks violated, and is violating, 11 U.S.C. §1125.
23.
Pursuant to 15 U.S.C. §1117, 4SEMO is entitled, subject to the
provisions of sections 1111 and 1114 of that title and principles of equity, to an
award of (1) Defendants’ profits, (2) any damages sustained by 4SEMO and (3)
the costs of the action.
In assessing profits, 4SEMO was required to prove
Defendants’ sales only; Defendants were required to prove all elements of cost or
deduction claimed. If this Court finds that the amount of the recovery based on
36
profits is either inadequate or excessive the Court may in its discretion enter
judgment for such sum as the Court shall find to be just, according to the
circumstances of the case. Such sum in either of the above circumstances shall
constitute compensation and not a penalty. The Court in exceptional cases may
award reasonable attorney fees to the prevailing party.
24.
Defendants’ use of the Marks has irreparably damaged 4SEMO and
will continue to damage 4SEMO irreparably unless enjoined by this Court, as a
result of which 4SEMO is without an adequate remedy at law.
25.
4SEMO met its burden of proof and established that Defendants
earned $17,371,003.00 in revenue from sales and installations of storm shelters
made in conjunction with the unauthorized use of the Marks, of which
$16,493,762.00 was characterized by Defendants as revenues earned by SISS and
$877,241.00 of which was characterized by Defendants as revenue of Ingoldsby
Excavating.
26.
Defendants came forward with no evidence of costs or other offsets
or reductions that Defendants incurred in conjunction with such sales, under the
names of SISS, Ingoldsby Excavating or otherwise and affirmatively represented
prior to trial that they were waiving their right to do so. By adoption of the
Magistrate Judge’s Report and Recommendation, Doc. 222, the Defendants were
prohibited from opposing Plaintiff’s evidence relating to its damages for
infringement.
37
27.
Accordingly, as a matter of law, the $17,371,003.00 of revenues
earned by the Defendants from violations of section 15 U.S.C. §1125 are
considered the profits they obtained. 15 U.S.C. §1117.
28.
The Defendants’ use of the Marks in manners beyond the authorized
limited use granted by 4SEMO and the continued use of the Marks after even that
limited use grant terminated was willful, egregious and intentional.
29.
Further, the Court notes that the vast amount of the revenue received
by Defendants from sales in conjunction with their unauthorized use of the
Marks, $11,266,011 of the $17,371,003.00 of such total revenue, was received
after the Defendants were confronted by 4SEMO and after the Defendants agreed
to buy the Marks from 4SEMO, only to withdraw from and refuse to follow
through on that Agreement.
30.
An award to 4SEMO of the profits earned by Defendants in violation
of 15 U.S.C. §1125 would be adequate under the facts and circumstances of this
case. Even though the Court makes conclusions about the amount of damages to
be awarded as to the different counts at issue, the Court does not intend for
Plaintiff to be awarded more than $17,397,943.00.
The further intent of the
Court in concluding damages as to the different counts is that should any of the
counts be overturned or reversed on appeal it is those damages which will be
declared null and void with the surviving counts standing on their own but
without duplicating the damages awarded. Nullification of the breach of contract
claim would result in a reduction of the total amount awarded by $26,940.00
38
31.
Defendants’ have acted in bad faith, intentionally, willfully and
maliciously, have refused to cease the infringing activity, and have caused 4SEMO
unnecessary trouble and expense.
32.
This case is not deemed exceptional and 4SEMO’s request for an
award of attorneys’ fees shall not be allowed. 15 U.S.C. §1117. Plaintiff’s motion
for attorney fees, Doc. 259, is expressly denied as the Court concludes that this
case does meet the requirement of exceptional nor are sanctions appropriate due
to any actions or omissions on the part of the defendants.
33.
The actions of each of the Defendants, and of Scott Ingoldsby, were
taken as agent of each of the Defendants, and constituted acts of each Defendant.
34.
If and to the extent they were operating as validly separate entities,
SISS, Robert Ingoldsby, and Ingoldsby Excavating combined for the purpose of
accomplishing the unlawful purpose of using the trademarks of 4SEMO without
authorization, and one or more of the conspirators committed an overt tortious or
unlawful act in furtherance of that concerted action.
The Defendants thus
engaged in a Civil Conspiracy as defined by law, rendering them each liable for the
actions of the others taken in furtherance of such combination and for such
purpose." Fritz v. Johnston, 209 Ill. 2d 302, 317807 N.E.2d 461, 282 Ill. Dec.
837 (2004), citing Adcock v. Brakegate, Ltd., 164 Ill. 2d 54, 62-63, 645 N.E.2d
888, 206 Ill. Dec. 636 (1994),
39
35.
To the extent they are separate entities, SISS is contributorily and
vicariously liable for the improper use of the Life Saver Storm Shelters mark by
Ingoldsby Excavating.
36.
Robert Ingoldsby is and was the corporate officer who was and is the
moving, active conscious force behind SISS and Ingoldsby Excavating’s uses of
4SEMO’s Life Saver Storm Shelters marks and is thus individually jointly and
severally liable with SISS and Ingoldsby Excavating for those companies’ liability
under the Lanham Act (Counts I and III of 4SEMO’s Second Amended
Counterclaim). Dangler v. Imperial Mach. Co., 11 F.2d 945, 947 (7th Cir. 1926).
37.
All Defendants are jointly and severally liable for the unauthorized
uses of the Marks taken in the name of, or which lead to revenues booked by
Defendants as having been received by, SISS.
38.
All Defendants are jointly and severally liable for the unauthorized
uses of the Marks taken in the name of, or which lead to revenues booked by
Defendants as having been received by, Ingoldsby Excavating.
39.
The factual allegations forming the basis for 4SEMO’s Lanham Act
claims and UDTPA claims are the same and, accordingly, the legal inquiry is the
same under both statutes. Claims for unfair competition and deceptive business
practices brought under Illinois statutes are to be resolved according to the
principles set forth under the Lanham Act. Web Printing Controls Co. v. Oxy-Dry
Corp., 906 F.2d 1202, 1206 n.5 (7th Cir. 1990)
40
40.
The Defendants have passed, and are passing, off goods or services
as those of another, in a manner which causes likelihood of confusion or of
misunderstanding as to the source, sponsorship, approval, or certification of
goods and causes likelihood of confusion or of misunderstanding as to affiliation,
connection, or association with or certification by another, in violation of the
UDTPA 815 Ill. Comp. Stat. §510/2, et seq.
41.
The unauthorized use of 4SEMO’s Marks by Defendants on products,
on advertisements, on the internet and in connection with services identical
and/or similar to those provided by 4SEMO causes a likelihood of confusion and
deceives the public into believing that 4SEMO has authorized the use of such
Marks by the Defendants.
42.
The unauthorized use of 4SEMO’s Marks, as stated herein, on
products, on advertisements, on the internet and in connection with services
identical and/or similar to those provided by 4SEMO causes a likelihood of
confusion and deceives the public into believing that 4SEMO has authorized the
use of such Marks by the Defendants.
43.
4SEMO has been and is being damaged by such violations and has
no adequate remedy at law and the Defendants’ unlawful and willful conduct will
continue to damage 4SEMO unless enjoined by this Court.
44.
The Defendants receipt of revenues from the unauthorized use of the
Marks constitutes a voluntarily acceptance of a benefit that would be inequitable
41
for the defendant to retain without compensating the plaintiff. Cleary v. Philip
Morris Inc., 656 F.3d 511, 516 (7th Cir. 2011).
45.
The Defendants’ actions in benefitting from their wrongful use of the
Marks were taken in the course of and arose out of their business, and were
committed in and out of their principal places of business in Illinois.
46.
It would be unfair and unjust under the totality of the circumstances
for the Defendants to retain and enjoy the benefits of their unauthorized use of
4SEMO’s Marks.
47.
4SEMO has no remedy at law to secure redress for the unauthorized
and uncompensated use of its ideas, plan and materials, and it would be unjust
for Defendants to retain the enrichment gained from their improper use of such
materials without compensating 4SEMO.
48.
The Dealer Agreement between Defendants and 4SEMO was a valid
and enforceable contract, was substantially performed by 4SEMO, was breached
by the Defendants installation and facilitation of the installation by others of
storm shelters within the territories for which Defendants had granted 4SEMO
exclusive installation rights, and Defendants’ breach caused 4SEMO damages.
Reger Dev., LLC v. Nat'l City Bank, 592 F.3d 759, 764 (7th Cir. 2010).
49.
If Defendants had honored their obligation to provide 4SEMO with
its exclusive right to install shelters manufactured by Defendants in the territories
granted to 4SEMO under the Dealer Agreement, 4SEMO would have also gained
the related sales of the shelters to be installed.
42
50.
The loss of those sales is a direct and proximate result of Defendants’
breach of their obligations under the Dealer Agreement, and the Defendants’’
breach proximately caused 4SEMO to lose profits totaling $26,940.00.
51.
The Defendants asserted no affirmative defenses to 4SEMO’s breach
of contract claim at trial, and there is no evidence of any such affirmative defense.
52.
Although the Defendants’ asserted at trial that they had “several
defenses, including laches and prior use” to 4SEMO’s trademark related claims,
their affirmative defenses as plead in their response to 4SEMO’s Second Amended
Counterclaim did not include any claim of prior use.
53.
Further, and in any event, there was no evidence at trial of any prior
use of a phrase similar to, or identical to, 4SEMO’s Name Mark or Logo Mark by
the Defendants. Any and all use of a phrase similar to or identical to the Name
Mark by the Defendants prior to 4SEMO’s independent adoption of the Name
Mark and Logo mark was the use of a phrase coined by the Grone Company,
being used by or with permission of the Grone Company. To the extent there was
any such use, that use inured to the benefit of the Grone Company and did not
legally constitute use by Defendants.
54.
Moreover, the use of phrase similar to the Name Mark prior to
4SEMO’s independent and separate adoption of the Name Mark by or for the
benefit of the Grone Company did not constitute “prior use” of a trademark, or
any other use, of a type sufficient to constitute a defense to the assertion of
trademark rights in the Name Mark or Logo mark by 4SEMO as a matter of law.
43
Zazu Designs v. L'Oreal, S.A., 979 F.2d 499, 503 (7th Cir. 1992) (Stating “use’
meant the sales to the public of a product with the mark attached). 2 McCarthy
on Trademarks §16:9.
55.
Further, due to the fact that the evidence establishes no use of any
name similar to the Name Mark by or with the permission of the Grone Company
at any time between 2005 and 2012, any trademark rights of the Grone Company
derived from any use prior to that time would have been abandoned as a matter
of law. 15 U.S.C. §1127.
56.
Finally,
and
determinatively
in
any
event,
upon
Defendants’
agreement with 4SEMO to use 4SEMO’s Life Saver Storm Shelters trademark and
associated Greek Cross logo trademark in February of 2006, any claim of
Defendants to any independent rights to those trademarks were lost and merged
into the license. Y.M.C.A. v. Flint Y.M.C.A., 229 U.S.P.Q. 32, 35-36 (E.D. Mich.
1985). 3 McCarthy on Trademarks and Unfair Competition §18:47 (4th ed.)
(“Under the merger rule, if: (1) party Alpha uses the mark and later becomes a
licensee of Beta under the same mark; and (2) the Alpha-Beta license ends; then
(3) Alpha cannot rely upon its prior independent use as a defense against an
infringement claim brought against it by Beta. Alpha's prior trademark rights
were “merged” with that of Beta and inured to the benefit of Beta”). While the 7th
Circuit has not made any express statements on this merger theory, it has been
upheld in the 3rd (United States Jaycees v. Philadelphia Jaycees, 639 F.2d
134, 143 (3d Cir. 1981)), 4th (Grand Lodge Improved B.P.O.E. of the World v.
44
Eureka Lodge No. 5, 114 F.2d 46, 47 (4th Cir. 1940)), and 9th Circuits (U.S.
Jaycees v. San Francisco Jr. Chamber of Commerce, 513 F.2d 1226 (9th Cir.
1975)).
57.
Defendants’ claim of a Laches defense was also not established at
trial. To prevail on the affirmative defense of laches, Defendants would have had
to prove three things: (1) that Plaintiff had actual or constructive notice of
Defendant's use of Lifesaver Storm Shelters (beyond the limited permission); (2)
that Plaintiff showed an unreasonable lack of diligence in taking action as to
Defendant's use of Lifesaver Storm Shelters; and (3) that Defendant would be
prejudiced by allowing Plaintiff to assert its rights at this time. Chattanoga Mfg.,
Inc. v. Nike, Inc., 301 F.3d 789, 792-93 (7th Cir. 2002); Sara Lee Corp. v.
Kayser-Roth Corp., 81 F.3d 455 (4th Cir. N.C. 1996).
58.
Further, the estoppel-by-laches defense arises only where the plaintiff
has unreasonably delayed its pursuit of a remedy. See Brittingham v. Jenkins,
914 F.2d 447, 456 (4th Cir. Md. 1990).
59.
In addition, attempts to resolve a dispute without resorting to a court
do not constitute unreasonable delay for determining the applicability of the
doctrine of laches." Hot Wax, Inc. v. Turtle Wax, Inc., 191 F.3d 813, 823 (7th Cir.
1999).
60.
The evidence at trial indicates that 4SEMO did not wait an
impermissible amount of time under all the circumstances before asserting its
claims.
Moreover, the Defendants expressly testified that they did not change
45
their position in any way due to any delay by 4SEMO before filing its claims, and
they would not have acted differently in any manner if the claims had been
asserted sooner.
61.
Defendants did not assert or litigate any other affirmative defenses
during the trial of this action and, accordingly, they were waived.
To the extent
they were not waived, however, they also were not established as a matter of law.
62.
Defendants’ response to 4SEMO’s Second Amended Counterclaim
asserts a conclusory defense of Waiver or Unclean Hands. However, "waiver is an
intentional relinquishment of a known right," in Anderson v. Catholic Bishop of
Chicago, 759 F.3d 645, 651 (7th Cir. 2014), and 4SEMO never acted affirmatively
to indicate that it did not own the Marks or would not enforce its rights. The
mere fact that 4SEMO did not discover that the Defendants had undertaken their
scheme until 2011 is insufficient.
63.
Defendants also asserted a vague defense of “Estoppel” without
explanation in their written pleadings. Estoppel requires proof that a trademark
owner was aware of the infringing conduct and yet acted in a way that induced the
infringer to reasonably rely upon such action to his detriment.
Saverslak v.
Davis-Cleaver Produce Co., 606 F.2d 208, 213 (7th Cir. 1979). To assert
equitable estoppel, a defendant must show that (1) plaintiff's misleading
communication, with plaintiff's knowledge of the true facts, prompted the
defendant to infer that the plaintiff would not enforce its rights against the
defendant; (2) the defendant relied on that conduct; and (3) the defendant would
46
be prejudiced if the plaintiff were allowed to bring suit. Kennedy v. United States,
965 F.2d 413, 417 (7th Cir. 1992) See In re Larson, 862 F.2d 112, 115 (7th Cir.
1988) (quoting United States v. Asmar, 827 F.2d 907, 912 (3rd Cir, 1987).
64.
To the extent the estoppel defense was intended to be based on any
perceived delay by 4SEMO in bringing 4SEMO’s claims, the evidence does not
support such a claim. To the extent Defendants’ defense was intended to address
their apparent contention that 4SEMO is estopped from asserting the Defendants
acted improperly by using the Marks from 2011 until August of 2012, during the
time period in which 4SEMO was acting in reliance on the Defendants’ agreement
to purchase the Marks from 4SEMO which the Defendants later disavowed, the
Defense also fails.
65.
The agreement regarding the Defendants’ purchase of the Marks from
4SEMO demonstrated that the Defendant understood the trademarks belonged to
the Plaintiff. The fact that 4SEMO did not object to Defendants’ use of the Marks
in reliance on that agreement, does not provide a defense for the Defendants upon
their failure to honor that agreement. Rather, it is evidence of the willful and
knowing nature of their continued infringement a good or service. Gorenstein
Enterprises, Inc. v. Quality Care-USA, Inc., 874 F.2d 431, 435 (7th Cir. 1989)
66.
The Defendants’ had also claimed “acquiescence” in their written
pleadings. "Unlike laches, acquiescence implies active consent to an infringing
use of the marks and requires a defendant to establish that (1) the senior user
actively represented it would not assert a right or a claim; (2) the delay between
47
the active representation and assertion of the right or claim was not excusable;
and (3) the delay caused the defendant undue prejudice." Hyson USA, Inc. v.
Hyson 2U, Ltd., 821 F.3d 935, 941 (7th Cir. 2016) (Quoting SunAmerica Corp. v.
Sun Life Assur. Co. of Canada, 77 F.2d 1325, 1334 (11th Cir. 1996)). Again, the
evidence does not establish any legally effective consent, let alone “active consent,”
was given by 4SEMO to the Defendants.
67.
Defendants’ also did not pursue their statute of limitations defenses
at trial – with good reason.
The evidence established that 4SEMO was unaware
of the conduct complained of until 2011.
4SEMO’s claims were on file as of May
29, 2013, makings it claims well within all applicable statutes of limitation.
FINAL CONCLUSION
VI.
Accordingly, upon consideration of the evidence, argument of counsel, all
matters of record and in light of the findings of fact and conclusions of law set
forth above, the Court hereby ORDERS as follows:
1.
The Court finds in favor of 4SEMO.Com, Inc., and against Robert
Ingoldsby, Southern Illinois Storm Shelters, Inc. and Ingoldsby Excavating, Inc.,
jointly and severally, and awards Plaintiff permanent injunctive relief and total
monetary damages of $17,397,943.00, as follows:
a.
Monetary Damages:
i. Damages on Counts I and III of 4SEMO.Com, Inc.’s
Second Amended Counterclaim in the amount of
Seventeen
Million, Three Hundred and Seventy-One Thousand and Three
48
Dollars ($17,371,003.00), an amount equal to the profits earned
by Defendants from their wrongful use of 4SEMO’s Life Saver
Storm Shelters mark,
is adjudged against Robert Ingoldsby,
Southern Illinois Storm Shelters, Inc. and Ingoldsby Excavating,
Inc., jointly and severally, and in favor of 4EMO.Com, Inc. ;
ii. Damages on Count V of 4SEMO.Com, Inc.’s Second
Amended Counterclaim in the amount of Seventeen Million
Three Hundred Seventy One thousand and Three Dollars
($17,371,003.00.), being equal to the enrichment received by the
Defendants that it would be unjust for them to retain,
is
adjudged against Robert Ingoldsby, Southern Illinois Storm
Shelters, Inc. and Ingoldsby Excavating, Inc., jointly and
severally, and in favor of 4EMO.Com, Inc. ;
iii. Damages on Count VIII of 4SEMO.Com, Inc.’s Second
Amended Counterclaim in the amount of Twenty-six thousand
nine hundred and forty dollars ($26,940.00), being the losses
suffered by 4SEMO.Com, Inc. as a proximate result of
Defendants breach of their Dealer Agreement with 4SEMO.Com,
Inc.,
is entered against Robert Ingoldsby, Southern Illinois
Storm Shelters, Inc. and Ingoldsby Excavating, Inc., jointly and
severally, and in favor of 4EMO.Com, Inc.;
49
iv. Damages on Count X of 4SEMO.Com, Inc.’s Second
Amended Counterclaim in the amount of Seventeen Million
Three Hundred Seventy One thousand and Three Dollars
($17,371,003.00), representing the total amounts awarded to
4SEMO.Com, Inc. for the wrongful acts taken by and pursuant
to the Defendants’ Civil Conspiracy.
b.
Injunctive Relief
i. Injunctive
relief
is
hereby
granted
in
favor
of
4SEMO.Com, Inc. on Counts I, III and V of the Second Amended
Counterclaim;
Robert Ingoldsby, Southern Illinois Storm
Shelters, Inc. and Ingoldsby Excavating, Inc., and all persons
acting by, through, at the encouragement of, or due to any
purported permission or authorization from all or any of them,
are hereby immediately permanently enjoined from using,
attempting to use, or assisting others in the use of
the Life
Saver Storm Shelters or Greek Cross logo Marks, or any
trademarks or service marks similar thereto, including but not
limited to any trademark, service mark, trade name or other
source identifier containing the words Life Saver, any visually or
phonetically similar words or marks or any variation thereof, in
any form or fashion, and are ordered to:
50
1. Immediately cease and desist from using the Life
Saver Storm Shelters mark or any trademarks or
service marks similar thereto, including but not
limited to any trademark, service mark, trade
name or other source identifier containing the
words Life Saver, any visually or phonetically
similar words or marks or any variation thereof,
as all or any part of any company name or domain
name,
2. Within ten days of the entry of the Judgment in
this case, destroy any and all brochures, booklets,
pamphlets, signs, business cards, and other
documents containing any use or references to the
Life Saver Storm Shelters or Greek Cross logo
Mark, or any trademarks or service marks similar
thereto,
including
but
not
limited
to
any
trademark, service mark, trade name or other
source identifier containing the words Life Saver,
any visually or phonetically similar words or
marks or any variation thereof
ii. Within ten days of the entry of the Judgment in this
case, withdraw any and all opposition to the 4SEMO trademark
51
application pertaining to the Life Saver Storm Shelters and
Greek Cross logo marks currently pending before the United
States Patent and Trademark Office;
iii. Within ten days of the entry of the Judgment in this
case, withdraw any and all applications seeking to register the
Life Saver Storm Shelters mark or any trademarks or service
marks similar thereto, including but not limited to any
trademark, service mark, trade name or other source identifier
containing the words Life Saver, any visually or phonetically
similar words or marks or any variation thereof which are
pending before the United States Patent and Trademark Office
or any other federal, state or local agency;
iv. within twenty-one days of the entry of the Judgment in
this case, remove and permanently discontinue and destroy (or
cause to be removed, discontinued and destroyed) all video,
audio, auditory, images and labels containing, using, or being
comprised of the Life Saver Storm Shelters or Greek Cross logo
Mark, or any trademarks or service marks similar thereto,
including but not limited to any trademark, service mark, trade
name or other source identifier containing the words Life Saver,
any visually or phonetically similar words or marks or any
variation thereof, in any form or fashion and any press release,
52
advertisement, television show, article or other form of
publication using or referencing the Life Saver Storm Shelters or
Greek Cross logo Mark, or any trademarks or service marks
similar thereto, including but not limited to any trademark,
service mark, trade name or other source identifier containing
the words Life Saver, any visually or phonetically similar words
or marks or any variation thereof, in any form or fashion,
v. within twenty-one days of the entry of the Judgment in
this case, remove all references to or uses of the Life Saver
Storm Shelters or Greek Cross logo Mark, or any trademarks or
service marks similar thereto, including but not limited to any
trademark, service mark, trade name or other source identifier
containing the words Life Saver, any visually or phonetically
similar words or marks or any variation thereof, from any and
all websites, Facebook pages or other social media pages owned,
operated, maintained or controlled by Defendants or any person
controlled by Defendants
vi. within twenty-one days of the entry of the Judgment in
this case, notify any and all persons to whom or which any
Defendants have given authorization to use, or whom or which
they have encouraged at any time to use, the Life Saver Storm
Shelters or Greek Cross logo Mark, or any trademarks or
53
service marks similar thereto, including but not limited to any
trademark, service mark, trade name or other source identifier
containing the words Life Saver, any visually or phonetically
similar words or marks or any variation thereof , or to whom or
which they have given any brochures, documents or other
materials using any such marks, that such persons may not use
such marks in any form or fashion, must cease any such use
immediately, and must comply with terms of this Order and
Judgment.
vii. Within twenty-one days of the entry of the Judgment in
this case, provide a detailed list of the names, addresses, phone
numbers, and email addresses of all persons whom or which
they have authorized or claimed to authorize to use
the Life
Saver Storm Shelters or Greek Cross logo Mark, or any
trademarks or service marks similar thereto, including but not
limited to any trademark, service mark, trade name or other
source identifier containing the words Life Saver, any visually or
phonetically similar words or marks or any variation thereof, at
any time within the three years immediately preceding the date
of this Order and Judgment to 4SEMO.Com, Inc., by delivering
such information to 4SEMO.Com, Inc.’s counsel of record in this
54
matter within fifteen days of the date of the entry of the
Judgment herein.;
viii. Within twenty-one days of the entry of the judgment in
this case, instruct any and all third parties to immediately cease
using any and all uses of, or references to, the Life Saver Storm
Shelters or Greek Cross logo Mark, or any trademarks or
service marks similar thereto, including but not limited to any
trademark, service mark, trade name or other source identifier
containing the words Life Saver, any visually or phonetically
similar words or marks or any variation thereof ,which associate
the same with Robert Ingoldsby, Southern Illinois Storm
Shelters, Inc. and Ingoldsby Excavating, Inc., or any product or
service sold or offered for sale by any of them;
ix. Within twenty-one days of the entry of the Judgment in
this case, instruct all Dealers, distributors or other persons who
have storm shelters manufactured by Defendants in their
possession to remove any stickers, nameplates or other
materials affixing the Life Saver Storm Shelters or Greek Cross
logo Mark, or any trademarks or service marks similar thereto,
including but not limited to any trademark, service mark, trade
name or other source identifier containing the words Life Saver,
any visually or phonetically similar words or marks or any
55
variation thereof
to any storm shelters or other products
purchased from Defendants that such Dealers have not yet
delivered to any of such Dealers’ customers;
x. Within twenty-one days of the entry of the Judgment in
this case, cancel any and all advertisements, including any
yellow pages’ advertisements, which utilize the Life Saver Storm
Shelters or Greek Cross logo Mark, or any trademarks or
service marks similar thereto, including but not limited to any
trademark, service mark, trade name or other source identifier
containing the words Life Saver, any visually or phonetically
similar words or marks or any variation thereof
c.
Costs and Attorney’s Fees
i. Contrary to the assertions and arguments of the Plaintiff,
this case is not exceptional within the meaning of 15 U.S.C.
§1117 nor are sanctions warranted. The motion for attorneys
fees (Doc. 259) is DENIED.
ii. The plaintiff is awarded costs in accordance with 28
U.S.C. §1920 and shall submit a bill of costs with supporting
documentation within 30 days of judgment.
d.
Dismissal of Withdrawn Counts
56
i. Counts II, IV, VI, VII, XI or XII of 4SEMO’s Second
Amended
Counterclaim,
which
were
not
submitted
by
4SEMO.Com at trial, are hereby dismissed.
2.
The Commissioner of the Trademark Office is hereby directed to:
a.
Take notice of the facts, conclusions of law and
judgments established by this Findings of Fact, Conclusions of Law
and Order and Judgment in conjunction with its determination of the
pending
trademark
application
of
4SEMO.Com,
Inc.
bearing
Application Number 85513614 and the opposition of Southern
Illinois Storm Shelters Inc. to such application, bearing filing date
10/10/2012 and ESTTA Tracking number ESTTA499340 and
b.
Take notice of the facts, conclusions of law and
judgments established by this Findings of Fact, Conclusions of Law
and Order and Judgment in conjunction with its determination of the
Trademark Application of Southern Illinois Storm Shelters, Inc.,
bearing Application Number 76712028;
3.
The Clerk of the Court is directed to
a.
enter judgment in accordance with the Court’s prior
rulings directed to the affirmative claims brought by Defendants in
the name of Southern Illinois Storm Shelters, Inc. in which the Court
granted 4SEMO’s Motions to Strike the Damages claims, to Dismiss
Counts 3 through 7, and for Summary Judgment on Counts 1 and 2,
57
as SISS as previously directed by the Court in this Court’s Orders of
February 20, 2015 [Doc.123], August 11, 2015 [Doc.149], and
August 26, 2015 [Doc. 150]
b.
enter judgment in accordance with this Memorandum
and Order for $17,397.943.00 and a permanent injunction, and
c.
provide a certified copy of these Findings of Fact,
Conclusions of Law and Order and Judgment to the Commissioner
of the US Patent and Trademark Office for consideration in
conjunction with Trademark Applications 85513614 and 76712028
SO ORDERED
Judge Herndon
2018.02.02
12:11:27 -06'00'
UNITED STATES DISTRICT JUDGE
58
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