Complaint Details - Knobbe Medical

Case: 1:12-cv-02038 Document #: 1 Filed: 03/21/12 Page 1 of 11 PageID #:1
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
GUARDIAN HOME HEALTH CARE
LLC,
v.
Plaintiff,
GUARDIAN HOME HEALTH CARE
AGENCY, INC.,
Defendant.
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Case No.:
JURY TRIAL DEMANDED
COMPLAINT FOR SERVICE MARK INFRINGEMENT AND OTHER RELIEF
Plaintiff Guardian Home Health Care LLC (“Guardian”) by and through its undersigned
counsel, for its Complaint for Service Mark Infringement and Other Relief against Defendant
Guardian Home Health Care Agency, Inc., (“Defendant”), states as follows:
NATURE OF ACTION
1. This action arises from Defendant’s unauthorized and unlawful use of Guardian’s
common law service mark rights.
2. Guardian seeks injunctive and monetary relief against Defendant for the following
wrongful acts:
a. service mark infringement, unfair competition, and false designation of origin in
violation of 15 U.S.C. §§ 1051, et seq; and
b. deceptive trade and business practices, trademark infringement, trademark
dilution, and unfair competition under Illinois Statutes and common law.

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THE PARTIES
3. Plaintiff Guardian is an Illinois limited liability company with a principal place of
business located at 181 Waukegan Road, Suite 301, Northfield, Illinois 60093.
4. Defendant Guardian Home Health Care Agency, Inc. is an Illinois corporation
with a principal place of business located at 7251 West Fitch Avenue, Chicago, Illinois 60631.
JURISDICTION AND VENUE
5. This Court has jurisdiction over the subject matter of this claim pursuant to 28
U.S.C. §§ 1331, 1338(a), and 1367.
6. Personal jurisdiction exists over Defendant in this District and Division as
Defendant is an Illinois corporation with its principal place of business in this State.
7. Venue is proper in this District and Division pursuant to 28 U.S.C. § 1391(b) as
Defendant is an Illinois corporation with its principal place of business in this District and
Division.
FACTS COMMON TO ALL COUNTS
A. Guardian’s Common Law Mark
8. Since at least 2005, Guardian has been providing home healthcare services,
including skilled nursing, physical therapy, occupational therapy, speech therapy, medical social
worker, and home health aide services, in and around the Chicago metropolitan area.
9. Since at least 2005, Guardian has used the mark “Guardian Home Health” as a
service mark for its skilled nursing, physical therapy, occupational therapy, speech therapy,
medical social worker, and home health aide services.
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10. As a result of Guardian’s extensive marketing and advertising of these services,
they have become highly successful. Patients, physicians, and hospitals associate the mark
“Guardian Home Health” with Guardian’s home healthcare services.
B. Defendant’s Infringing Activities
11. In 2009, Guardian first became aware of competing home healthcare services
being offered by Defendant under the name “Guardian Home Health Care Agency, Inc.”
12. Notwithstanding the Guardian’s longstanding use of its service mark for its home
health care services, Defendant nevertheless chose a confusingly similar name and has offered
those services for sale to residents of Illinois and otherwise. The services offered by Defendant
appear to be identical to those offered by Guardian.
13. Defendant, in fact, had actual knowledge of Guardian’s mark no later than 2009.
14. Despite actual knowledge of Guardian’s mark, Defendant has continued to use the
confusing name. Over the past two years, Defendant’s confusing name has caused numerous
instances of actual confusion wherein patients and/or physicians believed they were conducting
business with Guardian, but they were in fact conducting business with Defendant.
15. Guardian made Defendant aware of the existence of its mark and of the instances
of actual confusion. Guardian sent Defendant an initial cease and desist letter on December 12,
2011, requesting that Defendant stop using Guardian’s mark. Guardian sent a second letter on
February 1, 2012, warning Defendant of the present suit if Defendant refused to stop using
Guardian’s mark. Defendant ignored both of Guardian’s letters.
16. As such, Defendant’s actions were and are willfully in violation of Guardian’s
trademark and intellectual property rights and are intended to trade on the reputation and
goodwill that Guardian has generated over the past several years.
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17. Defendant’s actions are intended to deceive consumers as to the source and
quality of its infringing services they have continued to offer for sale to the public.
18. Defendant’s unauthorized use of Guardian’s mark is likely to mislead, deceive,
and confuse the relevant purchasing public and trade. It is probable that consumers have
mistakenly believed and will continue to believe that: (1) Defendant’s services are genuine
Guardian services; (2) Defendant’s services are endorsed or authorized by Guardian; and/or (3)
Guardian has licensed its intellectual property to Defendant, all to the detriment of Guardian and
the purchasing public.
19. As a result of Defendant’s infringement of Guardian’s mark and other wrongful
acts, Guardian has and will continue to suffer significant damages and irreparable injury.
20. Guardian has no adequate remedy at law because Defendant’s acts will continue
to cause damage and irreparable injury to Guardian unless enjoined by this Court. Guardian
cannot, at this point, ascertain the exact amount of damages caused by Defendant’s wrongful
conduct.
FIRST CAUSE OF ACTION
FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN
(15 U.S.C. § 1125)
21. Guardian realleges and incorporates by reference the allegations set forth in
paragraphs 1 through 19 as if fully set forth herein.
22. Guardian’s mark “Guardian Home Health” is a protectable service mark in that it
is arbitrary or highly suggestive and is therefore inherently distinctive. Additionally, as a result
of Guardian’s significant use of this mark, it has acquired distinctiveness and secondary
meaning.
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23. Defendant’s unauthorized use of the “Guardian Home Health” name, which is
confusingly similar to Gaurdian’s protectable mark, is likely to cause confusion, deception, and
mistake by creating the false and misleading impression that Defendant’s services are offered or
distributed by Guardian, or are associated or connected with Guardian in violation of 15 U.S.C. §
1125.
24. Defendant had actual notice prior to its adoption and use of the infringing
“Guardian Home Health Care Agency” name in conjunction with its home healthcare services.
25. Defendant’s actions have caused, and unless enjoined by this Court, will continue
to cause, serious and irreparable injury and damage to Guardian, for which Guardian has no
adequate remedy at law.
26. Defendant’s aforementioned actions constitute willful and intentional to infringe
of Guardian’s rights in Guardian’s mark and to trade on the goodwill associated with Guardian’s
mark. Thus, a finding of an exceptional case within the meaning of 15 U.S.C. § 1117 is
warranted.
27. Defendant’s actions demonstrate an intentional, willful, and malicious intent to
trade on the goodwill associated with Guardian’s mark thus entitling Guardian to injunctive
relief and to recover Defendant’s profits, actual damages, enhanced profits and damages, costs,
and attorneys’ fees pursuant to 15 U.S.C. §§ 1114, 1116, and 1117.
SECOND CAUSE OF ACTION
SERVICE MARK INFRINGEMENT UNDER ILLINOIS COMMON LAW
28. Guardian realleges and incorporates by reference the allegations set forth in
paragraphs 1 through 26 as if fully set forth herein.
29. Guardian’s mark “Guardian Home Health” is a protectable service mark in that it
is arbitrary or highly suggestive and is therefore inherently distinctive. Additionally, as a result
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of Guardian’s significant use of this mark, it has acquired distinctiveness and secondary
meaning.
30. Defendant’s unauthorized use of the “Guardian Home Health” name, which is
confusingly similar to Guardian’s mark, is likely to cause confusion, deception, and mistake by
creating the false and misleading impression that Defendant’s services are manufactured or
distributed by Guardian, or are associated or connected with Guardian.
31. Defendant’s aforementioned actions constitute willful and intentional
infringement of Guardian’s rights in Guardian’s mark in violation of Illinois common law.
32. Defendant’s actions have caused, and unless enjoined by this Court, will continue
to cause, serious and irreparable injury and damage to Guardian, for which Guardian has no
adequate remedy at law.
33. Defendant had actual notice of Guardian’s mark prior to its adoption and use of
the infringing “Guardian Home Health Care Agency” name in conjunction with its home
healthcare services.
34. Defendant’s actions demonstrate an intentional, willful, and malicious intent to
trade on the goodwill associated with Guardian’s mark thus entitling Guardian to injunctive
relief and to recover Defendant’s profits, actual damages, enhanced profits and damages, costs,
and attorneys’ fees.
THIRD CAUSE OF ACTION
UNFAIR COMPETITION UNDER ILLINOIS COMMON LAW
35. Guardian realleges and incorporates by reference the allegations set forth in
paragraphs 1 through 33 as if fully set forth herein.
36. Guardian’s mark “Guardian Home Health” is a protectable service mark in that it
is arbitrary or highly suggestive and is therefore inherently distinctive. Additionally, as a result
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of Guardian’s significant use of this mark, it has acquired distinctiveness and secondary
meaning.
37. Defendant’s unauthorized use of Guardian’s mark falsely suggests that its services
are connected with, sponsored by, affiliated with, or related to Guardian and constitutes unfair
competition under Illinois common law.
38. Due to the unfair nature of Defendant’s actions, Defendant has caused, and unless
enjoined by this Court, will continue to cause, serious and irreparable injury and damage to
Guardian, for which Guardian has no adequate remedy at law.
39. Defendant had actual notice prior to its adoption and use of the infringing
“Guardian Home Health Care Agency” name in conjunction with its home healthcare services.
40. Defendant’s actions demonstrate an intentional, willful, and malicious intent to
trade on the goodwill associated with Guardian’s mark thus entitling Guardian to injunctive
relief and to recover Defendant’s profits, actual damages, enhanced profits and damages, costs,
and attorneys’ fees.
FOURTH CAUSE OF ACTION
DECEPTIVE TRADE PRACTICES UNDER ILLINOIS LAW
(815 ILCS § 510/1)
41. Guardian realleges and incorporates by reference the allegations set forth in
paragraphs 1 through 39 as if fully set forth herein.
42. Guardian’s mark “Guardian Home Health” is a protectable service mark in that it
is arbitrary or highly suggestive and is therefore inherently distinctive. Additionally, as a result
of Guardian’s
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43. Defendant’s unauthorized use of Guardian’s mark falsely suggests that its services
are connected with, sponsored by, affiliated with, or related to Guardian and constitutes a
deceptive trade practice under 815 ILCS §§ 510/1, et seq.
44. Due to the unfair nature of Defendant’s actions, Defendant has caused, and unless
enjoined by this Court, will continue to cause, serious and irreparable injury and damage to
Guardian, for which Guardian has no adequate remedy at law.
45. Defendant had actual notice prior to its adoption and use of the infringing
“Guardian Home Health Care Agency” name in conjunction with its home healthcare services..
46. Defendant’s actions demonstrate an intentional, willful, and malicious intent to
trade on the goodwill associated with Guardian’s mark thus entitling Guardian to injunctive
relief and to recover Defendant’s profits, actual damages, enhanced profits and damages, costs,
and attorneys’ fees.
PRAYER FOR RELIEF
WHEREFORE, for all of the foregoing reasons, Guardian prays for judgment as follows:
a. For judgment in favor of Guardian and against Defendant, on Counts 1 through 4
of Guardian’ Complaint;
b. That Defendant’s actions constitute service mark infringement, unfair
competition, false designation of origin, and deceptive trade practices under
federal and Illinois Statutes and common law;
c. That Defendant, and all of its agents, servants, employees, representatives, and all
others in active concert or participation with them, either directly or indirectly, be
preliminary and permanently enjoined from:
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i. using the “Guardian Home Health” mark or any other mark, logo,
name or designation that creates a likelihood of confusion, mistake, or
deception with respect to Guardian’s mark, including, but not limited to
“Guardian Home Health Care Agency”;
ii.
doing any other act or thing likely to induce or that induces the
mistaken belief that Defendant is in any way affiliated, connected, or
associated with Guardian;
iii.
licensing or authorizing others to use Guardian’s mark or any other
confusingly similar mark, including, but not limited to“Guardian Home
Health Care Agency”;
iv.
injuring Guardian’s business reputation and the goodwill
associated with Guardian’s mark, and from otherwise unfairly competing
with Guardian in any manner whatsoever;
v. continuing or filing any applications with the USPTO for any
mark, including, but not limited to “Guardian Home Health Care Agency”
that is confusingly similar to Guardian’s mark; and
vi.
passing off its products and services as those of Guardian.
d. That Defendant be ordered to recall all products and indicia of services bearing
Guardian’s mark or any other mark that is likely to be confused with Guardian’s
mark, including, but not limited to “Guardian Home Health Care Agency,” which
have been shipped by Defendant or under Defendant’s authority, to any customer
including, but not limited to, any wholesaler, distributor, consignor, marketer,
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retailer, and also to deliver to each said customer a copy of this Court’s Order as it
relates to said injunctive relief against Defendant;
e. That, pursuant to 15 U.S.C. § 1118, Defendant be required to deliver to Guardian
for destruction (or in the case of webpage text and images, destruction without
delivery to the Guardian) all signs, products, labels, packages, advertisements,
promotions, vehicles, placards, and all other matter in the custody or under the
control of Defendant that bear Guardian’s mark name or any other mark that is
likely to be confused with Guardian’s mark, including, but not limited to
“Guardian Home Health Care Agency.”
f. That Defendant be required to immediately remove all uses of and references to
Guardian’s mark or any other mark that is likely to be confused with Guardian’s
mark, including, but not limited to “Guardian Home Health Care Agency,” from
any website, vehicle signage, building, or other physical or virtual thing over
which Defendant has control;
g. For damages in favor of Guardian and against Defendant, sufficient to
compensate Guardian for the economic and non-economic damages sustained as a
result of Defendant’s actions as alleged herein including, but not limited to (1) all
profits received by Defendant from sales and revenues of any kind made as a
result of its actions, trebled and (2) all damages sustained by Guardian as a result
of Defendant’s actions, trebled;
h. That Defendant conduct corrective advertising and further compensate Guardian
for the advertising and other expenditures necessary to dispel any public
confusion caused by Defendant’s unlawful acts;
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i. That pursuant to 15 U.S.C. § 1116, Defendant be directed to file with the Court
and serve on Guardian within thirty (30) days after issuance of an injunction, a
report in writing and under oath setting forth in detail the manner and form in
which Defendant has complied with the judgment and order;
j. That because of Defendant’s deliberate and willful infringing actions, this Court
award to Guardian punitive damages and all reasonable attorneys’ fees, costs, and
disbursements incurred by it as a result of this action, pursuant to 15 U.S.C. §
1117, 815 ILCS § 510/3, or otherwise;
k. That Defendant be ordered to pay Guardian prejudgment interest on all monetary
awards;
l. That Defendant be ordered to pay the costs of this suit; and
m. For such other and further relief as the Court deems just and proper.
DEMAND FOR JURY TRIAL
Guardian hereby demands a jury trial on all issues so triable.
Respectfully submitted,
POLSINELLI SHUGHART PC
Dated: March 21, 2012 By: /s/ John A. Leja
JOHN A. LEJA (IL #6256269)
161 N. Clark Street
Suite 4200
Chicago, IL 60601
Phone: (312) 819-1900
Facsimile: (312) 819-1910
E-Mail: jleja@polsinelli.com
ATTORNEYS FOR PLAINTIFF
GUARDIAN HOME HEALTH CARE LLC
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