SOHMER Trademark Infringement Complaint No. 2
SOHMER Trademark Infringement Complaint No. 2
SOHMER Trademark Infringement Complaint No. 2
Defendant.
COMPLAINT
their undersigned counsel, hereby complain against Defendant BURGETT, INC. as follows:
PARTIES
4. This action arises under the federal Lanham Act, 15 U.S.C. §1051 et seq., the
Illinois Deceptive Trade Practices Act, 815 ILCS 510/1 et seq., and the common law of Illinois.
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6. This Court has subject matter jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C.
7. This Court has personal jurisdiction over Burgett by virtue of its purposeful entry
into this forum in association with an agreement between Burgett and Richards involving the
assignment of certain trademark rights owned by Burgett to Richards, which agreement was
negotiated primarily in Illinois and provided for jurisdiction within Illinois, and by virtue of its
inducement of infringing sales which it knew or had reason to know would occur in Illinois.
Moreover, on information and belief Burgett transacts business in the State of Illinois and
maintains overall contacts with the State of Illinois, all commensurate with the United States and
Illinois Constitutions, so as to submit itself to the jurisdiction and process of this Court.
8. Persis is engaged in the sale and distribution of pianos. In June 2001, Persis
adopted and began using the SOHMER trademark in interstate commerce in association with the
sale of pianos. Persis has marketed, promoted, distributed and sold pianos under the SOHMER
10. Since 2001, Persis has developed substantial and valuable goodwill in its
SOHMER trademark through advertising, industry recognition, and a history of providing high
quality products under that mark. As a result, Persis has developed widespread recognition and
secondary meaning in its SOHMER trademark throughout the United States, all of which has
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11. On February 15, 2001, Richards filed United States Trademark Application No.
76/210,248 for the mark SOHMER for use in association with pianos (“the ‘248 Application”)
with the United States Patent and Trademark Office (“USPTO”). Richards assigned the ‘248
Application to Persis on or about October 8, 2002. As a result, Persis is now the owner of all
right, title and interest in and to the SOHMER trademark for pianos in the United States.
12. In 1996, Burgett acquired certain assets of the bankrupt Mason & Hamlin
Corporation, including three United States Trademark Registrations for trademarks which
a. U.S. Reg. No. 119,130 for the mark SOHMER & CO., in stylized script, for
pianos;
b. U.S. Reg. No. 137,464 for the mark SOHMER and Design, for pianos; and
c. U.S. Reg. No. 1,786,687 for the mark SOHMER, for musical instruments,
namely, pianos.
The aforementioned three trademark registrations are referred to below as the “Burgett
Registrations.” A fourth United States Trademark Registration for a mark including the
designation SOHMER, U.S. Reg. No. 85,691 for the mark SOHMER, in stylized script, for
13. At the time that Burgett acquired the Burgett Registrations from the Mason &
Hamlin Corporation, the Mason & Hamlin Corporation had not manufactured, sold or distributed
14. At the time that Burgett acquired the Burgett Registrations from the Mason &
Hamlin Corporation, on information and belief Burgett did not have a bona fide intent to resume
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any use of the SOHMER trademark in commerce in association with the manufacture, sale or
distribution of pianos.
15. Burgett did not use the SOHMER trademark in commerce in association with the
manufacture, sale or distribution of pianos between 1996 and 2003, nor did Burgett sell or offer
to sell in commerce any associated goods or services, such as piano repair services and piano
16. In 1999, Burgett authorized the destruction of the five valuable original Sohmer
plate patterns used by its predecessors to manufacture cast iron piano plates, which are an
17. Burgett failed to renew the Burgett Registrations in a timely manner, and by May,
2001 each of those registrations had been canceled by the United States Patent and Trademark
Office for failure to renew them. Burgett does not currently own any active federal registrations
18. As a result of Burgett’s and its predecessors’ substantial period of non-use of the
SOHMER trademark in association with pianos, coupled with Burgett’s intent not to resume use
of the SOHMER trademark, Burgett abandoned any rights in the SOHMER trademark that it
19. In August 2000, an article appeared in the publication Music Trades stating that
Burgett was discontinuing its KNABE and GEORGE STECK piano brands. In approximately
late 2000, Richards contacted Burgett to discuss the possibility of purchasing the KNABE
trademark from Burgett. Burgett informed Richards that it had agreed to sell the KNABE
trademark to another party, but that the GEORGE STECK and SOHMER trademarks were
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sell Richards all of Burgett’s rights in and to the GEORGE STECK trademark, including several
federal registrations and all of the goodwill associated therewith, for a total of $100,000.
Pursuant to that agreement, in 2001 Richards presented Burgett with a check in the amount of
$33,500 as an initial deposit towards the purchase of Burgett’s rights in the GEORGE STECK
21. Subsequent to their initial agreement in 2001, Richards and Burgett continued to
negotiate regarding the other terms of Burgett’s sale of the GEORGE STECK trademark to
Richards. However, Burgett ultimately refused to complete the agreed-upon sale or return the
$33,500 deposit to Richards, and informed Richards that it would not return that deposit unless
Richards withdrew his ‘248 Application for the SOHMER trademark—notwithstanding the fact
that Richards had never discussed, much less agreed, to any such condition. Burgett never
completed the assignment of the GEORGE STECK trademark to Richards or returned the
deposit to Richards. On information and belief, Burgett has retained ownership of the GEORGE
STECK trademark and has granted an exclusive license to use that trademark to a third party.
22. In addition, Burgett offered to sell Richards all of Burgett’s rights in and to the
SOHMER trademark, including the Burgett Registrations and all of the goodwill associated
therewith. Pursuant to those discussions, Richards made an initial offer to purchase Burgett’s
investigation, Richards confirmed that Burgett had not used the SOHMER trademark in
commerce since it had acquired the Burgett Registrations from the Mason & Hamlin
Corporation, had authorized the destruction of the original Sohmer piano plate patterns, and had
failed to renew several of the Burgett Registrations which had subsequently expired. In view of
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those facts, Richards informed Burgett of his belief that Burgett had abandoned any rights in the
SOHMER trademark which it may have acquired from the Mason & Hamlin Corporation, and
23. On February 23, 2001, eight days after Richards’ filing of the ‘248 Application,
Burgett filed United States Trademark Application No. 76/214,968 (“the ‘968 Application”) for
the mark SOHMER for use in association with pianos, on an intent-to-use basis. On information
and belief, as of the filing of its trademark application, Burgett had no bona fide intent to use the
24. In June 2001, Burgett’s ‘968 Application was initially rejected by the USPTO on
the bases that (i) a likelihood of confusion existed with regard to Richards’ prior ‘248
Application, and (ii) the SOHMER mark was primarily merely a surname and therefore not
overcome the rejection of its ‘968 Application by submitting evidence of its ownership of the
expired Burgett Registrations as a basis for showing acquired distinctiveness, but the USPTO
maintained its surname rejection. Over the course of two and one-half (2 ½) years, Burgett
dated May 5, 2003 (“the 1st Burgett Declaration”), which failed to show any use of the
SOHMER trademark in commerce, but the USPTO continued to maintain its surname rejection.
25. In approximately 2002, Burgett entered into a license agreement with Samick
Music Corporation (“Samick”), a California corporation engaged in the manufacture and sale of
pianos and other musical instruments, whereby Burgett purported to license its non-existent
rights in the SOHMER trademark to Samick, for use by Samick in association with the
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manufacture, sale and distribution of pianos, in return for which Samick would provide
compensation to Burgett.
26. At all relevant times during the negotiations between Burgett and Samick leading
up to the execution of the aforementioned license agreement, Burgett was fully aware that Persis
was using the SOHMER trademark in commerce in association with the sale of pianos, that
Persis possessed superior rights in and to the SOHMER trademark, and that Burgett had no valid
27. On July 19-21, 2002 Persis exhibited and offered for sale its SOHMER pianos at
the Summer NAMM Show in Nashville, Tennessee, the leading international music product
trade show which was attended by music industry executives from throughout the United States
and the world. Persis’s SOHMER pianos were also listed in the NAMM Show directory which
28. In 2002, Samick began promoting its intention to use the SOHMER trademark,
and the confusingly similar SOHMER & CO. trademark, in the United States in association with
the sale of pianos. In early 2003, Samick began advertising and selling pianos bearing the
SOHMER and SOHMER & CO. trademarks in the United States, including through an Internet
29. Samick’s use of the SOHMER and SOHMER & CO. trademarks in interstate
commerce in association with the advertising and sale of pianos constitutes an infringement of
Persis’s superior rights in the SOHMER trademark, developed through Persis’s use of the
SOHMER trademark in interstate commerce in association with the sale of pianos since June
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30. At all relevant times, Burgett’s representing to Samick that it had valid and
enforceable rights in and to the SOHMER trademark, negotiating and entering into the purported
license agreement with Samick, accepting royalty payments from Samick under the purported
license agreement, and holding itself out to Samick and the world as the rightful owner of the
31. At all relevant times, Burgett’s inducement of Samick’s acts of infringement and
unfair competition was willful and intentional, in bad faith, and in conscious and deliberate
32. On January 9, 2004 Persis sent cease and desist letters to both Samick and
Burgett, advising Samick and Burgett that Persis possessed superior rights to use the SOHMER
trademark in association with the sale of pianos, and demanding that Samick and Burgett cease
their unauthorized use of the SOHMER trademark. Copies of those cease and desist letters are
33. On February 5, 2004, Burgett submitted another sworn declaration signed by its
President, Gary Burgett (“the 2nd Burgett Declaration”), to the USPTO in association with its
prosecution of the ‘968 Application. In that declaration, Gary Burgett falsely swore under oath
that Burgett and its related companies had engaged in the substantially exclusive and continuous
use of the SOHMER trademark in commerce in association with the sale of pianos for at least
five years prior to that date. A copy of the 2nd Burgett Declaration is attached as Exhibit 2
hereto.
34. Gary Burgett knew that the aforementioned statement in the 2nd Burgett
Declaration was false, inasmuch as Burgett had never used the SOHMER trademark in
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commerce in association with the sale of pianos, and its purported licensee Samick had not used
the SOHMER trademark in commerce in association with the sale of pianos prior to 2003.
Further, Burgett submitted the 2nd Burgett Declaration to the USPTO with the intent to deceive
the USPTO into issuing Burgett a federal trademark registration for the SOHMER mark.
35. Relying solely on the 2nd Burgett Declaration, the USPTO withdrew its surname
refusal and approved Burgett’s ‘928 Application for publication on the Principal Register. As
such, the aforementioned false statement was material to the USPTO’s allowance of the ‘928
Application. Without the USPTO’s allowance of the ‘928 Application, Persis’s own ‘248
Application would have proceeded to registration. A copy of the TTAB’s August 19, 2008
Order, finding that the approval of the ‘928 Application for publication was based solely on
36. On October 19, 2004, Persis filed Opposition Proceeding No. 91162715 (the
“Opposition Proceeding”) with the USPTO Trademark Trial and Appeal Board (TTAB), seeking
the dismissal of Burgett’s ‘928 Application due to Burgett’s commission of fraud upon the
USPTO in association with the filing of the 2nd Burgett Declaration. The Opposition
Proceeding remains pending before the TTAB, but has been suspended as a result of Samick’s
filing of a motion to suspend proceedings, which was granted by the TTAB on April 20, 2009, in
37. Burgett has engaged in a pattern of abusive, dilatory and bad-faith tactics during
the course of the Opposition Proceeding, including but not limited to its refusal to respond to
Persis’s discovery requests in good faith, its knowing submission of false information in
submissions to the TTAB and responses to discovery requests, and its repeated attempts to
interfere with Persis’s efforts to depose Gary Burgett during Persis’s testimony period.
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38. On information and belief, on or about March 17, 2009 Burgett executed an
assignment of all of its purported rights in and to the SOHMER trademark to Samick. However,
because Burgett had no rights in and to the SOHMER trademark to convey to Samick, the
purported assignment was void ab initio. Additionally, the TTAB has kept both Burgett and
purported assignment.
COUNT I
39. Plaintiffs repeat and reallege the allegations contained in the foregoing paragraphs
1-38.
40. At the time that Burgett entered into the purported license agreement with Samick
in November 2001, Burgett and/or its predecessors in interest had abandoned any rights it may
have acquired in the SOHMER trademark through its lengthy period of non-use of that mark
with no bona fide intent to resume use, and had actual and constructive notice of Persis’s
41. By representing to Samick that it had valid and enforceable rights in and to the
SOHMER trademark, negotiating and entering into the purported license agreement with
Samick, accepting royalty payments from Samick under the purported license agreement, and
holding itself out to Samick and the world as the rightful owner of the SOHMER trademark,
Burgett intentionally induced Samick to infringe Persis’s rights in the SOHMER trademark.
42. By virtue of such conduct, Burgett is contributorily liable for Samick’s acts of
trademark infringement and unfair competition under federal and common law arising out of
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Samick’s use of the SOHMER and SOHMER & CO. trademarks in association with the offer for
infringement, its litigation misconduct before the TTAB during the course of the Opposition
Proceeding, and its fraudulent conduct during the course of its efforts to register the SOHMER
trademark at the USPTO, this action constitutes an exceptional case under 15 U.S.C. §1117(a).
44. The acts complained of hereinabove have caused irreparable harm, damage and
45. Burgett’s acts were in bad faith, in conscious and deliberate disregard of Persis’s
rights, and were performed with the intention of depriving Persis of its rights. Accordingly,
Burgett’s conduct merits, and Persis seeks, an award of punitive damages in an amount sufficient
COUNT II
Unfair Competition under Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a)
46. Plaintiffs repeat and reallege the allegations contained in the foregoing paragraphs
1-45.
47. By submitting the 2nd Burgett Declaration to the USPTO, in which Gary Burgett
falsely swore under oath that Burgett and its related companies had engaged in the substantially
exclusive and continuous use of the SOHMER trademark in commerce in association with the
fact in commerce.
48. Further, by representing to Samick that it had valid and enforceable rights in and
to the SOHMER trademark, negotiating and entering into the purported license agreement with
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Samick, accepting royalty payments from Samick under the purported license agreement, and
continuing to hold itself out to Samick and the world as the rightful owner of the SOHMER
trademark through at least March 2009, Burgett knowingly made a false or misleading
49. These false descriptions and representations of fact misrepresented the nature,
to the marketplace that Burgett had the superior right to use the SOHMER trademark in
commerce in association with the sale of pianos and had been exclusively using the SOHMER
51. By reason of and as a direct result of the above identified acts of unfair
competition, Burgett has caused Persis substantial and irreparable harm, the full extent of which
is currently unknown.
52. The acts complained of hereinabove have caused irreparable harm, damage and
COUNT III
53. Plaintiffs repeat and reallege the allegations contained in the foregoing paragraphs
1-52.
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55. By reason of and as a direct result of the above identified acts of unfair
competition, Burgett has caused Persis substantial and irreparable harm, the full extent of which
is currently unknown.
56. The acts complained of hereinabove have caused irreparable harm, damage and
57. Burgett’s acts were in bad faith, in conscious and deliberate disregard of Persis’s
rights, and were performed with the intention of depriving Persis of its rights. Accordingly,
Burgett’s conduct merits, and Persis seeks, an award of punitive damages in an amount sufficient
COUNT IV
58. Plaintiffs repeat and reallege the allegations contained in the foregoing paragraphs
1-57.
59. Burgett’s trademark application and willful false statements made in the
prosecution thereof, together with Burgett’s willful false statements to Samick and others
60. By engaging in these deceptive trade practices and encouraging Samick to use the
SOHMER trademark despite Burgett’s knowledge that Persis had rightfully adopted that mark
after Burgett’s abandonment thereof, Burgett has directed these deceptive trade practices to the
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market generally, thereby directly implicating the consumer protection concerns invoked by the
61. Such conduct by Burgett has violated and continues to violate the Illinois
62. The acts complained of hereinabove have caused irreparable harm, damage and
63. Burgett’s acts were in bad faith, in conscious and deliberate disregard of Persis’s
rights, and were performed with the intention of depriving Persis of its rights. Accordingly,
Burgett’s conduct merits, and Persis seeks, an award of punitive damages in an amount sufficient
COUNT V
Unjust Enrichment
64. Plaintiffs repeat and reallege the allegations contained in the foregoing paragraphs
1-63.
65. As set forth hereinabove, Burgett agreed to assign its rights in the GEORGE
66. By tendering payment to Burgett in the amount of $33,500 as a deposit toward the
purchase of Burgett’s rights in the GEORGE STECK trademark, Richards conferred a benefit on
Burgett.
67. Burgett appreciated at the time that it was presented with the aforementioned
check that the $33,500 was intended by Richards as a deposit toward the purchase of Burgett’s
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68. Burgett accepted and retained the $33,500 deposit from Richards, in accordance
with the agreement between Burgett and Richards, but subsequently refused to assign its rights in
the GEORGE STECK trademark to Richards in accordance with that agreement, or to return the
deposit to Richards.
69. In so doing, Burgett has retained money rightfully belonging to Richards against
the fundamental principles of justice or equity and good conscience, and has thereby been
unjustly enriched.
70. The acts complained of hereinabove have caused irreparable harm, damage and
COUNT VI
Promissory Estoppel
71. Plaintiffs repeat and reallege the allegations contained in the foregoing paragraphs
1-70.
72. As set forth hereinabove, Burgett unambiguously agreed to assign its rights in the
GEORGE STECK trademark to Richards in return for a payment by Richards in the amount of
$100,000.
73. Richards relied on Burgett’s agreement to assign its rights in the GEORGE
STECK trademark to Richards, by paying Burgett $33,500 as a deposit towards the purchase of
74. Richards’ reliance on Burgett’s agreement to assign its rights in the GEORGE
75. Richards relied on Burgett’s agreement to assign its rights in the GEORGE
STECK trademark to Richards to Richards’ detriment, in that Burgett refused to either complete
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the assignment of its rights to Richards or to return the deposit which Richards had paid to
Burgett, thereby depriving Richards of his money without the benefit of an assignment of
76. The acts complained of hereinabove have caused irreparable harm, damage and
WHEREFORE, Persis prays that this Court grant it the following relief:
and unfair competition in violation of 15 U.S.C. § 1125(a) and the common law of Illinois, and
that Burgett is contributorily liable for Samick’s acts of trademark infringement and unfair
competition;
directors, agents, servants, and employees, as well as any successors and/or assigns of Burgett
and all those acting in privity, concert or participation with Burgett, from:
(i) imitating, copying, duplicating or otherwise making any use of the SOHMER
of any product or material which bears any copy or colorable imitation of the
SOHMER trademark;
(iii) using any false designation of origin or false description which can or is likely to
lead the trade or public, or individual members thereof, to mistakenly believe that
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authorized by Persis;
the SOHMER trademark or of Persis’s rights in, or to use, or to exploit the same;
or
above.
C. A finding that Burgett has engaged in acts of unfair competition under Section
D. A finding that Burgett has engaged in acts of unfair competition under the
E. A finding that Burgett has engaged in acts in violation of the Illinois Deceptive
its discretion as just, including all of Persis’s actual damages and Burgett’s profits or gains of
any kind resulting from the actions complained of herein, said amount to be trebled, pursuant to
G. A finding that this is an exceptional case under 15 U.S.C. §1117(a), together with
an award to Persis of its attorneys’ fees and its costs and expenses of litigation, pursuant to 15
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disregard of Persis’s rights in an amount sufficient to punish Burgett and deter such conduct in
the future;
successors and assigns of and all those in privity or concert with Burgett who receive actual
notice of said order, to deliver up for destruction all infringing products and all promotional,
advertising and any other printed materials and items of any kind bearing the designations
SOHMER or SOHMER & CO. and/or any other mark that is confusingly similar to the
SOHMER trademark;
J. A finding that Burgett has been unjustly enriched at Richards’ expense, and that
Richards is entitled to a monetary award in an amount sufficient to comprise restitution for the
unjust enrichment enjoyed by Burgett, including prejudgment and postjudgment interest thereon,
together with Richards’ attorneys’ fees and costs and expenses of litigation;
K. A finding that Richards is entitled to a monetary award from Burgett under the
doctrine of promissory estoppel, in an amount to be fixed by the Court in its discretion as just,
including prejudgment and postjudgment interest thereon, together with Richards’ attorneys’ fees
L. Such other and further relief as the Court may deem just, proper and equitable
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JURY DEMAND
Plaintiffs respectfully demand a trial by jury for all of the counts of this Complaint.
Respectfully submitted,
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