In a complaint filed in the Atlanta Division of the Northern District of Georgia on November 28, 2012, Clark Equipment Company d/b/a Bobcat Company (”Bobcat Company”) against Nighthawk Machinery, LLC (“Nighthawk”) seeking to recover from Nighthawk for infringement of its DURACORE trademark.

For a history of the Clark – the Bobcat Company – see our preceding blog entry.  We could not resist reposting the link to a Bobcat square dance routine performed long ago on the Captain Kangaroo Show and recently on Extreme Makeover – Home Edition:  http://www.youtube.com/watch?v=B4lKbqsW7HE.

Clark asserts ownership of the DURACORE trademark, for which it filed U.S. trademark application Serial No. 85/393,236, on August 9, 2011 (“the ‘236 Application”).   In the ‘236 Application, Bobcat Company seeks registration for the DURACORE mark for 3 classes of goods.  For one class (“motors and engines for land vehicles”), Bobcat Company claims rights based on a first use date of January 2008.  For the other two classes (generally described as “motors and engines not for land vehicles” and as control valves), Bobcat Company seeks registration on an “intent-to-use” basis.^[1]

Nighthawk filed an application for the DURA-CORE mark, asserting initial use of the DURA-CORE mark “at least as early as 12/15/11” (after Bobcat Company filed its ‘236 Application in August 2011) for “tire and wheel assemblies comprising of solid rubber tires mounted on wheels for skid steer loaders and other construction machinery.”  According to the complaint, both companies use their marks to market and sell parts for skid-steer loaders.  The USPTO issued a conditional refusal to register Nighthawk’s DURA-CORE mark, citing the ‘236 Application and noting that the filing date of that application preceded that of Nighthawk’s application.  The USPTO then suspended all further action on Nighthawk’s application “until the [‘236 Application] is either registered or abandoned.”

Despite the registration refusal by the USPTO, according to the complaint, Nighthawk has persisted in use of its similarly spelled, defined, and sounding mark.  Bobcat Company alleges that it “complained about Nighthawk’s unauthorized use of the DURACORE mark and demanded that Nighthawk cease use of the DURA-CORE mark.”

The complaint alleges three claims: (1) trademark infringement, false designation of origin, and unfair competition pursuant to § 43(a) of the Lanham Act (15 U.S.C. § 1125(a)(1)(A)); (2) unfair competition comprising false and misleading representations of fact pursuant to 15 U.S.C. § 1125(a)(1)(B); and (3) common law trademark infringement, unfair competition, and misappropriation.  For relief, Bobcat Company prays for a permanent injunction, destruction of Nighthawk’s DURA-CORE inventory and packaging, revision or destruction of marketing materials, payment of profits after an accounting, compensatory and punitive damages, and costs and attorney fees. 

The case is Clark Equipment Company v. Nighthawk Machinery, LLC, No. 1:12-cv-4128, filed 11/19/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, and has been assigned to U.S. District Judge Charles A. Pannell, Jr.

_{[1] A district court provided the following excellent summary of general principles concerning “intent-to-use” trademark applications:}

_{Tuccillo's application was an “intent-to-use” (“ITU”) application because he had not yet actually used the mark in commerce.  Federal trademark law allows an individual to file such an application if he “has a bona fide intention, under circumstances showing the good faith of such person, to use [the] trademark in commerce.”  15 U.S.C. § 1051(b).  If no party successfully opposes an ITU application in a USPTO proceeding, the applicant will be issued a “notice of allowance.”  Id. § 1063(b)(2).  Before the mark will actually register, however, the individual filing an ITU application must make actual use of the mark in commerce.  Id. § 1051(c).  Generally, the applicant has six months after receiving the notice of allowance to use the mark in commerce and file a “statement of use” with the USPTO, although the applicant may receive an extension of time for various reasons.  Id. § 1051(d); 37 C.F.R. § 2.89.  After the mark registers, the registrant will be treated as though he began using the mark  on the date he filed the ITU application (the “constructive use” date); if the registrant had not filed an ITU application and simply registered the trademark after using it in commerce, the registrant would only have nationwide rights to enforce the mark against others as of the date of registration (the “constructive notice” date). 15 U.S.C. §§ 1057(c), 1072.}

Geisha LLC v. Tuccillo, No. 05 C 5529, 2009 U.S. Dist. LEXIS 20300, at *4-*5 (S.D.N.Y. Mar. 13, 2009).