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Case 1:12-cv-00137-EJF Document 2 Filed 07/02/12 Page 1 of 11

Randall B. Bateman (USB 6482) C. Todd Kinard (USB 12575) Sarah W. Matthews (USB 13295) BATEMAN IP LAW GROUP, P.C. 257 East 200 South, Suite 750 P.O. Box 1319 Salt Lake City, Utah 84110 Tel: (801) 533-0320/Fax: (801) 533-0323 Email: mail@batemanip.com, rbb@batemanip.com, psc@batemanip.com Attorneys for Plaintiffs, The Dennis D. Spiers and Diane Spiers Partnership, Dennis D. Spiers and Diane Spiers

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH, NORTHERN DIVISION

THE DENNIS SPIERS AND DIANE SPIERS PARTNERSHIP, a Utah partnership, DENNIS SPIERS, and Individual and DIANE SPIERS, and Individual, Plaintiffs, vs. PERMATEX, INC., A Delaware Corporation; GORDIAN PROJECT, LLC, a California Limited Liability Company; DAS DISTRIBUTORS, Inc., a Pennsylvania Corporation; SEMI SERVICE, Inc. a Utah Corporation; GREAT DANE OF UTAH, a Utah Corporation; UTILITY TRAILER SALES, Inc., a Utah Corporation; and IMPERIAL SUPPLIES, LLC, a Delaware Limited Liability Company; and DOES 1 through 5, Defendants.

COMPLAINT AND JURY DEMAND

Case No. 1:12-cv-00137-EJF Judge Evelyn J. Furse

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COMPLAINT AND JURY DEMAND COMES NOW, The Dennis Spiers and Diane Spiers Partnership and Dennis and Diane Spiers, collectively Plaintiffs, and hereby complains against Defendants and each of them as follows:

PARTIES 1. Plaintiff, The Dennis D. Spiers and Diane Spiers Partnership is a Utah Partnership

having a place of business in Weber County, Utah. 2. 3. 4. Plaintiff Dennis Spiers is an individual residing in Weber County, Utah. Plaintiff Diane Spiers is an individual residing in Weber County, Utah. On information and belief, Defendant Permatex, Inc. (Permatex) is a Delaware

Corporation having a place of business in Hartford, Connecticut. 5. On information and belief, Gordian Project, LLC (Gordian) is a California

Limited Liability company having a business address in Riverside, California. 6. On information and belief, Defendant Das Distributors (Das), Inc. is a

Pennsylvania Corporation having a place of business in Palmyra, Pennsylvania. 7. On information and belief, Defendant Semi Service, Inc. (Semi Service) is a

Utah Corporation having a place of business in Salt Lake City, Utah. 8. On information and belief, Defendant Great Dane of Utah, Inc. (Great Dane) is

a Utah Corporation having a place of business in Salt Lake City, Utah.

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9.

On information and belief, Defendant Utility Trailer Sales of Utah, Inc. (Utility

Trailer Sales) is a Utah Corporation having a place of business in Salt Lake City, Utah. 10. On information and belief, Defendant Imperial Supplies, LLC (Imperial) is a

Delaware limited liability company having a place of business in Green Bay, Wisconsin.

JURISDICTION AND VENUE 11. This Court has subject matter jurisdiction over this claim pursuant to the Lanham

Act, 15 U.S.C. 1051 et seq. The Court has jurisdiction pursuant to 28 U.S.C. 1338 and jurisdiction over the state claims pursuant to 28 U.S.C. 1367. 12. Venue is proper in this district under 28 U.S.C. 1391, and 1400(a), because the

actions herein alleged took place within this jurisdiction and/or because all Defendants are either found in this District or are otherwise subject to personal jurisdiction in this District.

GENERAL ALLEGATIONS 13. Plaintiff, The Dennis D. Spiers and Diane Spiers Partnership is the owner of U.S.

Trademark Registration No. 3286355 for the trademark SLIK-PAK for pre-measured lubricants. Plaintiffs Dennis D. Spiers and Diane Spiers collectively own the partnership. (The Plaintiffs are collectively referred to herein as SPIERS.) 14. 2000. SPIERS used the mark SLIK-PAK in conjunction with their goods from 1990 to

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15.

From October 1, 2000 to December 31, 2010, Defendant Permatex was a licensee

of the SLIK-PAK mark. For a portion of that time, Permatex was a non-exclusive licensee. Permatexs right to produce product under the SLIK-PAK mark terminated December 31, 2010. 16. Despite Permatex not having a license to use the SLIK-PAK mark, Permatex has

continued to market its product as SLIK-PAK. A copy of a page of Permatexs website is attached hereto as Exhibit A. 17. Since its license to use SLIK-PAK ended, Permatex has continued to use the URL

www.slik-pak.com, which is redirected to Permatexs website. 18. Defendant, Gordian Project, LLC advertises SLIK-PAK product on its website,

but the product it actually delivers is Permatexs product. A copy of Gordian Projects website, outdoorpros.com, is attached hereto as Exhibit B. 19. Defendant Das Distributors, Inc. advertises SLIK-PAK product on its website, but

the product it actually delivers is Permatexs product. A copy of Das Distributors website is attached hereto as Exhibit C. 20. PAK. 21. SLIK-PAK. 22. Utility Trailer Sales of Utah offers Permatexs product, but holds the product out Great Dane of Utah offers Permatexs product, but holds the product out as being Semi Service offers Permatexs product, but holds the product out as being SLIK-

as being SLIK-PAK.

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23.

Imperial Supplies advertises premeasured lubricant under the mark SLIK-PARK,

but the product delivered is actually Permatex product. A copy of Imperial Supplies website is attached hereto as Exhibit D. FIRST CLAIM FOR RELIEF (Unfair Competition under the Lanham Act, 15 U.S.C. 1125(a)) 24. SPIERS incorporate and reallege paragraphs 1 through 23 of this Complaint, as

though fully set forth herein, and further alleges: 25. 26. SPIERS own a U.S. Trademark Registration for the mark SLIK-PAK. SPIERS also own common-law rights trademark in the mark SLIK-PAK dating

back to 1990. 27. PAK. 28. Defendants use of the mark SLIK-PAK to sell their premeasured lubricant is Defendants are passing off products manufactured by Permatex as being SLIK-

without authorization. 29. Defendants actions create a likelihood of confusion among the public as to the

affiliation of Defendants product and SPIERS. 30. By reason of the foregoing, SPIERS assert a claim against Defendants for

injunctive relief and monetary damages for unfair competition pursuant to 15 U.S.C. 1125(a). 31. By reason of the foregoing, SPIERS assert that the present case is exceptional and

entitles SPIERS to treble damages and attorneys fees.

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SECOND CLAIM FOR RELIEF: (Unfair practices Under the Utah Unfair Practices Act, Utah Code Ann. 13-5-1, et seq.) 32. SPIERS incorporate and reallege paragraphs 1-31 of this Complaint, as if the

same were fully set forth herein, and further alleges: 33. Defendants actions constitute unfair methods of competition in commerce or

trade because they offend public policy, they are immoral, unethical, oppressive, and/or unscrupulous; and/or they cause substantial injury to consumers. 34. Defendants use photographs of product licensed by Plaintiffs to sell product

which is unlicensed by Plaintiffs. 35. Defendants tortious actions have caused, and continue to cause damage to

SPIERs goodwill and value in its SLIK-PAK trademark in an amount to be determined at trial. 36. On information and belief, Defendants actions were done knowingly, willfully,

with actual malice, and in bad faith, so as to justify the assessment of increased, exemplary and punitive damages against Defendants, in an amount to be determined at the time of trial. 37. SPIERS is entitled to recover three times the amount of actual damages sustained,

or $2,000, whichever is greater, plus court costs. 38. Defendants tortious actions have caused, and unless enjoined by this Court will

cause in the future, irreparable damage, loss, and injury to SPIERS for which SPIERS have no adequate remedy at law. 39. 40. SPIERS are entitled to injunctive relief under Utah Code Ann. 13-5-14. By reason of the foregoing, SPIERS asserts a claim against the Defendants for

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violation of the Utah Unfair Practices Act.

THIRD CLAIM FOR RELIEF: (Unfair Competition under the Utah Unfair Competition Act, Utah Code Ann. 13-5(a)-101, et seq.) 41. SPIERS incorporate and reallege paragraphs 1-40 of this Complaint, as if the

same were fully set forth herein, and further allege: 42. Defendants actions constitute an intentional business act and practice that is

unlawful, unfair, and fraudulent, and has led to a material diminution in value of SPIERSs intellectual property. 43. 44. Defendants actions constitute an infringement of SPIERSs trademarks. Pursuant to Utah Code Ann. 13-5a-103, SPIERS are entitled to actual damages,

costs and attorney fees, and punitive damages. 45. By reason of the foregoing, SPIERS assert a claim against the Defendants for

violation of the Utah Unfair Competition Act. FOURTH CLAIM FOR RELIEF: (Registration and Protection of Trademark and Service Marks Act: Cybersquatting 70-3a-309 et seq.) 46. SPIERS incorporate and reallege paragraphs 1-45 of this Complaint, as if the

same were fully set forth herein, and further allege: 47. Permatex has continued to use the URL slik-pak.com since Permatexs license

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ended, and continues to redirect the URL to Permatexs website. 48. On information and belief, Permatexs continued use of the domain name is in

bad faith and with an intent to profit off the good will developed in SPIERSs trademark. 49. By reason of the foregoing, SPIERS assert a claim against Permatex for violation

of the Utah Registration and Protection of Trademarks and Service Marks Act.

FIFTH CLAIM FOR RELIEF (Unjust Enrichment) 50. SPIERS incorporate and reallege paragraphs 1 through 49 of this Complaint, as

though fully set forth herein, and further allege: 51. SPIERS have expended considerable time and resources developing and

promoting its SLIK-PAK trademark. 52. Defendants were aware of the benefit of using SPIERSs trademark and sought to

appropriate the time and resources expended by SPIERS without the authorization or consent of SPIERS. 53. By using the SLIK-PAK trademark without compensation to SPIERS, Defendants

have been unjustly enriched. 54. By reason of the forgoing, SPIERS make a claim against each Defendant for

Unjust Enrichment.

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SEVENTH CLAIM FOR RELIEF (Civil Conspiracy) 55. SPIERS incorporate and reallege paragraphs 1 through 54 of this Complaint, as

though fully set forth herein, and further alleges: 56. On information and belief, two or more of the Defendants did combine, and by

concerted action have sought to infringe SPIERSs trademarks and to mislead the public into believing that the product being sold was actually authorized SLIK-PAK product. 57. SPIERS are entitled to a judgment against each Defendant found to have

participated in the civil conspiracy alleged above for the entire amount of the damages SPIERS are sustained as a result thereof. 58. By reason of the forgoing, SPIERS make a claim against each Defendant for Civil

Conspiracy.

PRAYER FOR RELIEF WHEREFORE, SPIERS pray for judgment against Defendants: A. Enjoining each Defendant, and all other persons participating or acting in concert

with them from representing that they sell SLIK-PAK lubricant; B. Enjoining Defendants, and all other persons participating or acting in concert with

them, from passing off their product as SLIK-PARK lubricant; C. Enjoining Defendants, and all other persons participating or acting in concert with

them, from infringing SPIERSs trademarks;

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D.

Ordering each Defendant to prepare an accounting of all proceeds generated by

the development and use of the infringing trademarks; E. Ordering each Defendant to conduct corrective advertising to advise the public

that their respective companies are not affiliated, connected or associated with SPIERS and that all product sold by them since January 1, 2011 has not been SLIK-PAK lubricant; F. Awarding SPIERS their damages and any profits of Defendants and its costs of

the action pursuant to 15 U.S.C. 1117(a); G. Awarding SPIERS treble their damages and defendants profits pursuant to 15

U.S.C. 1117(b); H. Finding that this is an exceptional case and an award of SPIERSs attorneys fees

pursuant to 15 U.S.C. 1117(a); I. Awarding SPIERS three times their damages and in an amount not less than

$2,000 for violation of the Utah Unfair Practices Act, Utah Code Ann. 13-5-14; J. Awarding injunctive relief and court costs pursuant to the Utah Unfair Practices

Act, Utah Code Ann. 13-5-14; K. Awarding SPIERSs actual damages for violation of the Utah Unfair Competition

Act, Utah Code Ann. 13-5(a)-103; L. Awarding SPIERSs costs and attorneys fees pursuant to the Utah Unfair

Competition Act, Utah Code Ann. 13-5(a)-103; M. Awarding SPIERS punitive damages pursuant to the Utah Unfair Competition

Act, Utah Code Ann. 13-5(a)-103;

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N. O.

For an order requiring Permatex to forfeit the slik-pak.com domain name; For an award of cost, attorneys fees and statutory damages, and all other

remedies available for cybersquatting pursuant to Utah Code 70-3a-402; P. Finding that all defendants are jointly and severally liable for any judgment

entered herein due to their civil conspiracy; and Q. Awarding SPIERS such other and further relief as is just and equitable.

SPIERS seek a jury trial on all matters so triable. DATED this 2nd day of July, 2012. BATEMAN IP LAW GROUP /s/Randall B. Bateman Randall B. Bateman C. Todd Kinard Sarah W. Matthews Attorneys for Plaintiffs

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