Griot's Garage, Inc. v. Carroll Shelby International, Inc. et al

Filing 1

COMPLAINT Complaint for Trademark Infringement, False Designation of Origin, False or Misleading Representations of Fact and Unfair Competition against defendant(s) Carroll Shelby International, Inc., Carroll Shelby Licensing, Inc. (Receipt # 0981-2718901), filed by Griot's Garage, Inc.. (Attachments: # 1 Civil Cover Sheet, # 2 Report on Patents and Trademarks (AO Form120))(Dunwoody, Stuart)

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT TACOMA

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GRIOT’S GARAGE, INC, a Washington
corporation,

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Plaintiff,
v.
CARROLL SHELBY INTERNATIONAL,
INC., a Nevada corporation, and CARROLL
SHELBY LICENSING, INC., a California
corporation,

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Defendants.

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No.
COMPLAINT FOR TRADEMARK
INFRINGEMENT, FALSE
DESIGNATION OF ORIGIN, FALSE
OR MISLEADING
REPRESENTATIONS OF FACT
AND UNFAIR COMPETITION
JURY DEMAND

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Plaintiff Griot’s, Inc. (“Griot’s Garage”), alleges as follows for its Complaint
against Defendants Carroll Shelby International, Inc. and Carroll Shelby Licensing, Inc.:
PARTIES

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1.

Griot’s Garage, Inc. is a Washington corporation with its principal place of

business in Tacoma, Washington.

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Davis Wright Tremaine LLP

COMPLAINT FOR TRADEMARK INFRINGEMENT – 1
DWT 19027114v2 0037404-000015

L AW O F FI CE S
Suite 2200  1201 Third Avenue
Seattle, Washington 98101-3045

[phone]  Fax: [phone]

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2.

Upon information and belief, Carroll Shelby International, Inc. (“Carroll

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Shelby International”) is a Nevada corporation with its principal place of business in

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Gardena, California.

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3.

Upon information and belief, Carroll Shelby Licensing, Inc. (“Carroll

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Shelby Licensing”), is a California corporation with its principal place of business in

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Gardena, California. Upon information and belief, Carroll Shelby Licensing, Inc., is a

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wholly owned subsidiary of Carroll Shelby International, Inc.

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JURISDICTION AND VENUE
4.

This action arises under 15 U.S.C. § 1051 et seq. for violations of the

Lanham Act, and under the laws of the State of Washington.
5.

This Court has subject matter jurisdiction over this action pursuant to

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15 U.S.C. §§ 1121 and 1338(a) because it arises under federal trademark law, 15 U.S.C.

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§ 1117 et seq. Plaintiff also asserts claims under Washington law, which are so related to

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the federal question claims that they are part of the same case and controversy, and

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therefore fall within the scope of this Court’s supplemental jurisdiction under 28 U.S.C.

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§§ 1338(b) and 1367. Jurisdiction is also proper under 28 U.S.C. § 1332 because this

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action is between citizens of different states and the matter in controversy exceeds

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$75,000, exclusive of interest and costs.

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6.

Upon information and belief, Carroll Shelby International and Carroll

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Shelby Licensing do business in this judicial district where they have committed acts of

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trademark infringement, false designation of origin, false or misleading representations of

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fact, and unfair competition.

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7.

Venue is proper in this district under 28 U.S.C. § 1391.
Davis Wright Tremaine LLP

COMPLAINT FOR TRADEMARK INFRINGEMENT – 2
DWT 19027114v2 0037404-000015

L AW O F FI CE S
Suite 2200  1201 Third Avenue
Seattle, Washington 98101-3045

[phone]  Fax: [phone]

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PLAINTIFF TRADEMARK RIGHTS
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Griot’s Garage is a catalog, online, and retail store seller of high-quality car

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care products and is recognized throughout the country. Griot’s Garage has used SPEED

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SHINE as a trademark for car care products since at least as early as 1998. Griot’s

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Garage’s SPEED SHINE spray and wipe auto cleaner is the company’s number-one selling

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product and is well known to car care experts and enthusiasts throughout the nation.

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Griot’s Garage customers and the public have come to rely upon and look for the

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trademarks SPEED SHINE to identify products originating from Griot’s Garage. As a

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consequence, Griot’s Garage name and SPEED SHINE® have come to symbolize valuable

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goodwill and reputation.
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Griot’s Garage is the owner of two United States trademark registrations for

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the mark SPEED SHINE: U.S. Trademark Registration No. 2,250,463, issued June 1,

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1999, for the mark SPEED SHINE, for liquid polish and protectant for leather or vinyl

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goods, and U.S. Trademark Registration No. 3,564,216, issued January 20, 2009, for the

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mark SPEED SHINE, for preparations for cleaning, protecting and preserving vehicle

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surfaces; all-purpose cleaners (the “SPEED SHINE Trademarks”). These registrations are

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prima facie evidence that the SPEED SHINE Trademarks are distinctive, that Griot’s

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Garage owns those trademarks, and that the registrations are valid and subsisting. In

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addition, U.S. Trademark Registration No. 2,250,463 is incontestable. True and correct

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copies of the registrations are attached as Exhibit A.

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DEFENDANTS’ UNLAWFUL CONDUCT
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Carroll Shelby International and Carol Shelby Licensing (collectively, the

“Carol Shelby Defendants”) have recently introduced a product called Speed Shine, that is
Davis Wright Tremaine LLP

COMPLAINT FOR TRADEMARK INFRINGEMENT – 3
DWT 19027114v2 0037404-000015

L AW O F FI CE S
Suite 2200  1201 Third Avenue
Seattle, Washington 98101-3045

[phone]  Fax: [phone]

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described as “a new spray detailer designed to keep your car looking brilliant between

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washing and waxing.”

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11.

The Carol Shelby Defendants advertise and offer the Speed Shine product

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for sale on their websites, including http://www.carrollshelbymerchandise.com and

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http://shelbyautocare.com/home.asp.

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12.

The Carol Shelby Defendants have appropriated Griot’s Garage SPEED

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SHINE Trademarks as the exact product name for a product that is a directly competitive

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product, as shown below:

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Use by the Carol Shelby Defendants of Griot’s Garage’s SPEED SHINE

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trademarks will inevitably cause confusion with the products that Griot’s Garage sells

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under its SPEED SHINE Trademarks.

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14.

Customers and the public are likely, upon seeing advertising by the Carol

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Shelby Defendants of their Speed Shine product, to believe that Griot’s Garage is the

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source of or affiliated with Carol Shelby or Carol Shelby’s Speed Shine product.

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15.

The Carol Shelby Defendants’ unlawful use of the Griot’s Garage SPEED

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SHINE Trademarks, and others confusingly similar, substantially injures Griot’s Garage

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and the goodwill associated with the SPEED SHINE Trademarks.
Davis Wright Tremaine LLP

COMPLAINT FOR TRADEMARK INFRINGEMENT – 4
DWT 19027114v2 0037404-000015

L AW O F FI CE S
Suite 2200  1201 Third Avenue
Seattle, Washington 98101-3045

[phone]  Fax: [phone]

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16.

Upon information and belief, the Carol Shelby Defendants were aware of

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Griot’s Garage SPEED SHINE Trademarks and therefore the Carol Shelby Defendants’

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infringement of the SPEED SHINE Trademarks has been willful and in bad faith.

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Monetary damages cannot fully compensate Griot’s Garage because the

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SPEED SHINE Trademarks are unique and represent Griot’s Garage products and

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reputation to the public. Unless enjoined by this Court, The Carol Shelby Defendants will

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continue to cause confusion among customers and the public, thereby causing irreparable

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damage and injury to Griot’s Garage.

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COUNT 1: TRADEMARK INFRINGEMENT
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Griot’s Garage incorporates the allegations of Paragraphs 1-17 as if fully set

forth herein.
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The actions of the Carol Shelby Defendants described herein constitute

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infringement of the Griot’s Garage Trademarks, in violation of the Lanham Act, 15 U.S.C.

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§§ 1114 through 1118.

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COUNT 2: FALSE DESIGNATION OF ORIGIN
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Griot’s Garage incorporates the allegations of Paragraphs 1-19 as if fully set

forth herein.
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The actions of the Carol Shelby Defendants described herein constitute

false designation of origin in violation of 15 U.S.C. § 1125(a).

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COUNT 3: FALSE OR MISLEADING REPRESENTATION OF FACT

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22.

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Griot’s Garage incorporates the allegations of Paragraphs 1-21 as if fully set

forth herein.

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Davis Wright Tremaine LLP

COMPLAINT FOR TRADEMARK INFRINGEMENT – 5
DWT 19027114v2 0037404-000015

L AW O F FI CE S
Suite 2200  1201 Third Avenue
Seattle, Washington 98101-3045

[phone]  Fax: [phone]

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23.

The actions of the Carol Shelby Defendants described herein constitute

false or misleading representations of fact in violation of 15 U.S.C. § 1125(a).
COUNT 4: THE WASHINGTON CONSUMER PROTECTION ACT/
UNFAIR COMPETITION

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24.

Griot’s Garage incorporates the allegations of Paragraphs 1-23 as if fully set

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forth herein.
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25.

The actions of the Carol Shelby Defendants described herein affect and will

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be injurious to the public interest, constitute unfair and deceptive acts or practices and
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unfair methods of competition in the conduct of trade or commerce in violation of
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RCW 19.86.020 that have harmed Griot’s Garage in its business and property. Griot’s
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Garage is entitled to recover damages, treble damages, and attorneys’ fees pursuant to
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RCW 19.86.090.
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COUNT 5: UNFAIR COMPETITION
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26.

Griot’s Garage incorporates the allegations of Paragraphs 1-25 as if fully set

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forth herein.
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27.

The Carol Shelby Defendants’ conduct described herein further constitutes

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unfair competition in violation of the common law.
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PRAYER FOR RELIEF
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WHEREFORE, Griot’s Garage prays for the following relief:
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A.

Entry of temporary and permanent injunctions against the Carol Shelby

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Defendants and their servants, agents, employees, successors and assigns, and all persons
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acting in concert with them, enjoining them from using in any manner SPEED SHINE or
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any other trademark confusingly similar thereto, including but not limited to as email
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addresses, domain names, corporate names, trade names, trademarks, or service marks;
Davis Wright Tremaine LLP

COMPLAINT FOR TRADEMARK INFRINGEMENT – 6
DWT 19027114v2 0037404-000015

L AW O F FI CE S
Suite 2200  1201 Third Avenue
Seattle, Washington 98101-3045

[phone]  Fax: [phone]

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B.

Requiring the Carol Shelby Defendants to deliver to Griot’s Garage for

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destruction all goods, signs, advertisements, literature, business forms, cards, labels,

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packages, wrappers, pamphlets, brochures, receptacles, and any other written or printed

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material in their possession or under their control which contain any or all of the SPEED

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SHINE Trademarks;

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C.

Requiring the Carol Shelby Defendants to provide timely confirmation to

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Griot’s Garage and the Court concerning its compliance with the injunction and order of

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destruction;

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D.

Awarding compensatory damages sustained by Griot’s Garage, together

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with disgorgement of all profits generated by Defendants as a result of the acts complained

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of herein pursuant to federal and state law, to be trebled in accordance with 15 U.S.C.

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§ 1117 and RCW 19.86;

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E.

Awarding Griot’s Garage its attorneys’ fees pursuant to 15 U.S.C. § 1117

and other applicable federal and state laws;
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Awarding Griot’s Garage punitive damages for the Carol Shelby

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Defendants’ willful and egregious deception of consumers and infringement of Griot’s

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Garage rights in violation of both statutory and common law; and

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G.

Awarding Griot’s Garage interest, costs, and such other and further relief as

the Court may deem just and equitable.

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Davis Wright Tremaine LLP

COMPLAINT FOR TRADEMARK INFRINGEMENT – 7
DWT 19027114v2 0037404-000015

L AW O F FI CE S
Suite 2200  1201 Third Avenue
Seattle, Washington 98101-3045

[phone]  Fax: [phone]

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JURY DEMAND

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Griot’s Garage demands a trial by jury of all issues so triable.

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DATED this 21st day of February, 2012.

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Davis Wright Tremaine LLP
Attorneys for Plaintiff Griot’s Garage, Inc.

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By s/Stuart R. Dunwoody
Stuart R. Dunwoody, WSBA #13948

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By s/Sarah K. Duran____________________
Sarah K. Duran, WSBA #38954

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1201 Third Avenue, Suite 2200
Seattle, WA 98101-3045
Tel: [phone]
Fax: [phone]
Email: [e-mail]
Email: [e-mail]

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Davis Wright Tremaine LLP

COMPLAINT FOR TRADEMARK INFRINGEMENT – 8
DWT 19027114v2 0037404-000015

L AW O F FI CE S
Suite 2200  1201 Third Avenue
Seattle, Washington 98101-3045

[phone]  Fax: [phone]

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