Case 3:12-cv-00119-RLY-WGH Document 1 Filed 08/10/12 Page 1 of 13 PageID #: 1

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF INDIANA EVANSVILLE DIVISION

POCKET CITY CONSTRUCTION & DEVELOPMENT COMPANY, INC., Plaintiff, vs. RICK SEPULVEDA, DR. ROOF, INC. AND JOSH MCINTYRE, Defendants.

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JURY TRIAL DEMANDED

Cause No. 3:12-cv-119

_____________________________________________________________________ COMPLAINT ______________________________________________________________________ Plaintiff Pocket City Construction & Development Company, Inc. (Pocket City), for its Complaint against Rick Sepulveda an individual (Sepulveda), Dr. Roof, Inc., a corporation formed in the Commonwealth of Kentucky and Josh McIntyire an individual alleges as follows: Jurisdiction and Venue 1. This Complaint is an action for trademark infringement, dilution and

false designation of origin, and unfair competition brought pursuant to Sections 32(i) and 43(a) of the Lanham Act, 15 U.S.C. 1114(1) and 1125(a), and the common law of the State of Indiana. 2. This Court has subject matter jurisdiction over this action upon the

following grounds: a. 28 U.S.C. 1331, this being a civil action arising under the laws

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of the United States: b. 28 U.S.C. 1337(a), this being a civil action arising under an Act

of Congress regulating commerce; or protecting trade and commerce against restraints and monopolies; c. 28 U.S.C. 1338(a), this being a civil action arising under the

trademark laws of the United States, namely, the Lanham Act, 15 U.S.C. 1051 et seq.; d. 28 U.S.C. 1338(b), this being a civil action asserting a claim of

unfair competition joined with a substantial and related claim under the trademark laws; and e. 28 U.S.C. 1367(a), this being a civil action including claims that

are so related to claims that are within the original jurisdiction of this Court that they form part of the same case or controversy under Article III of the United States Constitution. 3. 1391(b). 4. This Court has personal jurisdiction over Defendants arising out of their Venue is proper in this Court under the provisions of 28 U.S.C.

acts of infringement in this judicial district. Products and services provided by Defendants, as further identified herein below, have been and are being sold within the state of Indiana and in this judicial district. The Parties 5. Plaintiff, Pocket City Construction & Development Company, Inc., is an

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Indiana corporation having a principal place of business located at 951 South Rotherwood Avenue, Evansville, Indiana 47714. 6. Defendant, Rick Sepulveda is an individual residing at 7818 Eustis

Court, Cincinnati, Ohio 45236. 7. Defendant, Dr. Roof, Inc., a corporation formed in the Commonwealth of

Kentucky, 318 E. 4th Street, Newport, Kentucky 41071. 8. Defendant, Josh McIntyre, an individual located at 318 E. 4th Street,

Newport, Kentucky 41071. A. Plaintiff and Its Mark FACTS 9. Plaintiff, Pocket City Construction & Development Company, Inc.

(Pocket City) is a corporation organized and existing under the laws of the state of Indiana, with its principal place of business at 951 South Rotherwood Avenue, Evansville, Indiana 47714. 10. Plaintiff is the authorized licensing representative of The Ballast

Revocable Living Trust (Ballast), the owner of the federal trademark registration for the mark, DR. ROOF, used in association with commercial and residential roof repair services under U.S. Reg. No. 1,578,137. 11. Plaintiff has been commercially using the DR. ROOF mark in the United

States since at least as early as 1989. Plaintiff has used its trademark in connection with commercial and residential roof repair services. 12. United States Trademark Registration No. 1,578,137 was filed on May

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11, 1989 and granted Ballast registration on January 16, 1990, for the mark DR. ROOF in connection with commercial and residential roof repair services. 13. Plaintiff has expended a substantial amount of money and effort in

advertising and promoting its DR. ROOF mark. Plaintiff and its DR. ROOF mark are well known to the relevant consuming public, and consumers have come to know, rely upon and recognize the DR. ROOF mark as identifying Plaintiffs commercial and residential roof repair services. As a result of Plaintiffs substantial promotion, advertising, publicity and public relations activities the DR. ROOF mark has acquired substantial goodwill and is an extremely valuable commercial asset. 14. Plaintiffs DR. ROOF mark is distinctive and is inherently distinctive,

serving to identify and indicate the source of Plaintiffs services to the consuming public, and to distinguish Plaintiffs products and services from those of others. 15. Plaintiff also has common law rights in the DR. ROOF mark in Indiana

and throughout the United States. B. The Defendants Unlawful Conduct 16. Defendants, with constructive and, upon information and belief, actual

knowledge of Plaintiffs DR. ROOF mark, began providing commercial and residential roof repair services and advertising, promoting, and selling and offering such services under the name DR. ROOF. Examples of Defendants use of the DR. ROOF mark are attached as Exhibit A. As shown on Exhibit A, Defendants use of the DR. ROOF mark is substantially similar if not identical to Plaintiffs use. 17. Defendants, with constructive and, upon information and belief, actual

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knowledge of Plaintiffs DR. ROOF mark, uses the DR. ROOF mark in its web address www.drroof.us. 18. Defendants sell and offer for sale under the DR. ROOF mark

commercial and residential roof repair services in Indiana and interstate commerce. Defendants also promote their commercial and residential roof repair services inter alia via a web site located at www.drroof.us. 19. Plaintiff notified Defendants as early as May 1, 2012, regarding Plaintiffs

DR. ROOF mark including trademark registration number 1,578,137, for DR. ROOF in connection with commercial and residential roof repair services that are nearly identical if not identical with those services being offered by Defendants. Plaintiff requested that Defendants cease and desist use of an infringing name and trademark. 20. As a result of this correspondence, Defendants have had actual notice

of Plaintiffs superior rights in the DR. ROOF mark. Since receiving such notice, Defendants have failed or otherwise refused to cease use of their infringing DR. ROOF mark. 21. Defendants are aware of the vast and valuable goodwill and reputation

represented and symbolized by Plaintiffs DR. ROOF mark. Defendants are also aware that Plaintiffs consumers and potential consumers rely upon Plaintiffs DR. ROOF mark as distinguishing Plaintiffs products and services from the products and services of others. 22. Defendants continued use of the DR. ROOF mark is without the

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permission, consent, or authority of Plaintiff. 23. Defendants, with constructive and, upon information and belief, actual

knowledge of Plaintiffs DR. ROOF mark, continues to use the DR. ROOF mark in its web address www.drroof.us. C. Effect of Defendants Conduct on Plaintiff and the Consuming Public 24. Defendants DR. ROOF mark is not only confusingly similar, but is

virtually identical to Plaintiffs DR. ROOF mark. Defendants DR. ROOF mark is used on the same or similar types of goods and services as those on which Plaintiffs DR. ROOF mark is used. 25. Defendants provide commercial and residential roof repair services that

compete directly with Plaintiffs products and services. 26. Plaintiff operates in the same geographic area now served by

Defendants. Defendants provide commercial and residential roof repair services that are closely related and overlapping with the commercial and residential roof repair services offered by Plaintiff. 27. Defendants products and services advertised, promoted, offered for

sale, or sold under the DR. ROOF mark and derivatives of that mark are offered and/or promoted in the same channels of trade as Plaintiffs products and services under Plaintiffs DR. ROOF mark. Plaintiff promotes its products and services over the internet at web sites such as www.doctorroofusa.com. 28. Defendants continued use of the DR. ROOF mark and derivatives of

that mark on its advertising and promotional materials and on its signage, is likely to

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diminish the goodwill associated with Plaintiffs DR. ROOF mark. 29. Defendants products and services under the DR. ROOF mark and

derivatives of that mark are being provided and/or promoted, and are likely to continue being provided and/or promoted, throughout the same geographic markets as Plaintiffs products and services. 30. Defendants derive and will continue to derive substantial revenue from

its products and services provided under the DR. ROOF mark and derivatives of that mark. 31. Defendants unauthorized use of the DR. ROOF mark and derivatives of

that mark is likely to cause confusion or mistake or to deceive consumers into believing that Defendants unauthorized products and services advertised, promoted, and offered under the DR. ROOF mark and derivatives of that mark are sponsored, licensed or authorized by, or affiliated, connected or otherwise associated with Plaintiff or that Plaintiffs products and services offered under the Plaintiffs DR. ROOF mark are sponsored, licensed or authorized by, or affiliated, connected or otherwise associated with Defendants. 32. Defendants continued use of the DR. ROOF mark and derivatives of

that mark is with full knowledge of the prior ownership of Plaintiffs DR. ROOF mark and Plaintiffs rights to use and control the use of such mark. 33. Defendants have acted and continue to act without regard to Plaintiffs

property rights and goodwill. 34. As a result of Defendants unauthorized use of the DR. ROOF mark and

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derivatives of that mark, Defendants are being unjustly enriched at Plaintiffs expense, and Plaintiff is being damaged. 35. Defendants unauthorized use of the DR. ROOF mark and derivatives of

that mark in association with its products and services have significantly injured Plaintiffs interest. Specifically, Defendants (a) have traded upon and threatens to further trade upon the significant and valuable goodwill in Plaintiffs DR. ROOF mark; (b) is likely to cause public confusion as to the source, sponsorship or affiliation of Defendants products or services; (c) has damaged and threatens to further damage Plaintiffs significant and valuable goodwill in Plaintiffs DR. ROOF mark; (d) has injured and threatens to further injure Plaintiffs right to use Plaintiffs DR. ROOF mark as the exclusive indicia of origin of Plaintiffs commercial and residential roof repair services in Indiana and throughout the United States; and (e) has lessened the capacity of Plaintiffs DR. ROOF mark to indicate that its products and services are sponsored by Plaintiff. 36. Unless these infringing acts by Defendants are restrained by this Court,

they will cause irreparable injury to Plaintiff and to the public, for which there is no adequate remedy at law. D. Willful Nature of Defendants Infringement and Unfair Competition 37. Defendants acts of infringement and unfair competition complained of

herein have been malicious, fraudulent, deliberate, willful, intentional, and in bad faith, with full knowledge and conscious disregard of Plaintiffs rights. In view of the egregious nature of Defendants actions, this is an exceptional case within the

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meaning of Section 35(a) of the Lanham Act, 15 U.S.C. Section 1117(a). COUNT I: FEDERAL TRADEMARK INFRINGEMENT 38. Plaintiff repeats the allegations of paragraphs 1-37 of this Complaint as

if fully set forth herein. 39. The acts of Defendants complained of herein are likely to cause

confusion, mistake or deception as to origin, sponsorship or approval and therefore constitute federal trademark infringement in violation of 15 U.S.C. Section 1114(1). By reason of Defendants bad faith and willful infringement, Plaintiff is entitled to recover actual damages, treble damages, an accounting for Defendants profits, attorneys fees, and the cost of this litigation pursuant to 15 U.S.C. Section 1117 and injunctive relief pursuant to 15 U.S.C. 1116. COUNT II: FEDERAL UNFAIR COMPETITION 40. Plaintiff repeats the allegations of paragraphs 1-39 of this Complaint as

if fully set forth herein. 41. The acts of Defendants complained of herein constitute unfair

competition and violation of Section 33(a) of the Lanham Act, 15 U.S.C. Section 1125(a). Plaintiff is entitled to recover actual and treble damages, attorneys fees, and the cost of this litigation pursuant to 15 U.S.C. Section 1117 and injunctive relief pursuant to U.S.C. Section 1116. COUNT III: TRADEMARK DECEPTIVE CONSUMER SALES ACTIVITIES UNDER IND. CODE SECTIONS 24-5-0.5 ET SEQ. 42. Plaintiff repeats the allegations of paragraphs 1-41 of this Complaint as

if fully set forth herein. 9

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43.

Defendants have violated and infringed Plaintiffs trademark rights in the

DR. ROOF mark, and has engaged in unlawful, unfair and/or fraudulent business practices and unfair, deceptive, untrue and misleading advertising in violation of the law of Indiana. COUNT IV: UNFAIR COMPETITION UNDER THE COMMON LAW OF INDIANA 44. Plaintiff repeats the allegations of paragraphs 1-43 of this Complaint as

if fully set forth herein. 45. By engaging in the foregoing acts, Defendants have knowingly engaged

in unlawful passing off and competed unfairly with Plaintiff in violation of the common law of unfair competition in the state of Indiana. 46. Plaintiff is entitled to recover actual and punitive damages for

Defendants unfair competition. PRAYER FOR RELIEF WHEREFORE, Plaintiff prays that: (a) Defendants, themselves and all, agents, servants, employees, attorneys, and all those persons in active concert or participation with any of them, be permanently enjoined from using the DR. ROOF mark, and any other mark that is confusingly similar to the DR. ROOF mark; (b) Defendants be ordered to transfer ownership of the domain name www.drroof.us, as well as any other domain name that incorporates the DR. ROOF mark or any other mark that is confusingly similar to the DR. ROOF mark, to Plaintiff; (c) Defendants, themselves and all agents, servants, employees, attorneys,

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and all those persons in active concert or participation with any of them, be required to modify all signage, advertising and promotional material to eliminate the DR. ROOF mark, and any other mark that is confusingly similar to the DR. ROOF mark; (e) Defendants, themselves as well as all agents, servants, employees, attorneys, and all those persons in active concert or participation with any of them, be required to deliver to the Court for destruction, or show proof of destruction of, any and all labels, signs, prints, packages, wrappers, receptacles, and advertisements, and any other materials in Defendants possession or control that use the DR. ROOF mark, and any other mark that is confusingly similar to the DR. ROOF mark; (f) Defendants, themselves as well as all agents, servants, employees, attorneys, and all other persons in active concert or participation with any of them, be required to take all reasonably available steps to remove the DR. ROOF mark, and any other mark that is confusingly similar to the DR. ROOF mark, as a designator of Defendants services from any listing in any business directory, yellow pages, internet directory and any other listing service; (g) Defendants be ordered to file with this Court and to serve upon Plaintiff within thirty (30) days after the entry and service on Defendants of an injunction, a report in writing and under oath setting forth in detail the manner and form in which Defendants have complied with the injunction; (h) Plaintiff recover all damages it sustained as a result of Defendants infringement and unfair competition, and that said damages be trebled;

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(i) An accounting be directed to determine Defendants profits resulting from Defendants activities complained of herein, and that such profits be paid over to Plaintiff, increased as the Court finds to be just under the circumstances of this case; (j) Statutory damages as provided for in 15 U.S.C. Section 1117(d); (k) Defendants and all others acting in concert with it be directed to pay punitive damages as permitted by law to deter Defendants and all others similarly situated from like unlawful conduct in the future due to Defendants unfair competition; (l) Plaintiff recover its reasonable attorneys fees; (m) Plaintiff recover its costs of this action and prejudgment and postjudgment interest; and (n) Plaintiff recover such other and further relief as the Court may deem just and appropriate. JURY DEMAND Under Fed. R. Civ. P. 38(b), Plaintiff hereby demands a trial by jury for all issues triable as of right by a jury. Respectfully submitted, TERRELL, BAUGH, SALMON & BORN, LLP

By:

/s/ Gary K. Price___________________ Gary K. Price #15051-82 700 South Green River Road, Suite 2000 Evansville, IN 47715 Telephone: (812) 479-8721 Fax: (812) 474-6059 E-mail: gprice@tbsblaw.com 12

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ATTORNEYS FOR POCKET CITY CONSTRUCTION & DEVELOPMENT COMPANY, INC.

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