0:17-cv-00482-MGL Date Filed 02/17/17 Entry Number 1 Page 1 of 9

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF SOUTH CAROLINA
ROCK HILL DIVISION

FAB FOURS, INC. Civil Action No.: 0:17-cv-00482-MGL

Plaintiff,

v. COMPLAINT
(Jury Trial Demanded)
PRESTIGE OFF ROADS LLC,

Defendant.

Fab Fours, Inc. ("Fab Fours") brings this civil action against Prestige Off Roads LLC

("Prestige") for design patent and trademark infringement.

THE PARTIES

1. Fab Fours is a Texas corporation, located and doing business at 2213 Industrial

Park Road, Lancaster, South Carolina 29720. Fab Fours designs, makes, installs and distributes

automobile accessories.

2. Upon information and belief, defendant Prestige is a limited liability company

organized and existing under the laws of Texas, with a principal place of business at 41205 IH-10

West Bldg:E, Boerne, Texas 78006.

JURISDICTION AND VENUE

3. This is an action for design patent infringement, trademark infringement and unfair

competition arising under 35 U.S.C. 271 & 281 and 15 U.S.C. 1114 & 1125(a). The

Court has federal question jurisdiction under 28 U.S.C. 1331 and 1338 and 15 U.S.C. 1121

4. This Court has personal jurisdiction over defendant Prestige at least because, on

information and belief, Prestige has sufficient contacts with this jurisdiction, and has purposely

availed itself of the privilege of conducting activities in this jurisdiction by advertising, selling,

offering for sale, supplying, and/or causing to be supplied products infringing Fab Fours design

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patents and trademark.

5. Venue is proper in this District under 28 U.S.C. 1391 at least because (1) Prestige is

subject to personal jurisdiction in this District and (2) a substantial part of the events giving rise to

the claims occurred in this District.

FACTUAL BACKGROUND

6. Fab Fours is an industry-leading steel bumper and accessory manufacturer dedicated

to providing innovation and design in all its products. In 2005 Fab Fours recognized that trucks

and jeeps were becoming luxury vehicles and the consumers who purchased them wanted premium

aftermarket parts to customize them with. Fab Fours set out to develop steel products that fit with

the changes in the truck and jeep market. This new market wanted aftermarket steel products that

matched the unique lines of these vehicles.

7. Since 2005 Fab Fours has developed a strong reputation for the quality and unique

design of its aftermarket truck products.

8. In 2015, Gregory Neal Higgs, the CEO / Owner of Fab Fours, began developing a

highly distinctive new design for a combination grill and bumper.

9. Fab Fours named the new design the GRUMPER and filed U.S. Trademark

Application 86/591,830 on April 9, 2015 for GRUMPER for "motor vehicle grills; motor vehicle

bumpers." The mark was registered on June 7, 2016 as U.S. Trademark Registration No. 4,974,598

(Exhibit A hereto).

10. Sales of the GRUMPER began about March 1, 2016 and the new design quickly

attracted strong demand and interest among custom truck enthusiasts.

11. Fab Fours filed two design patent applications for some of the distinctive aspects of

the GRUMPER design. Those applications issued as design patents on December 27, 2016. U.S.

Design Patent D775,014 (Exhibit B hereto) covers the overall appearance of the GRUMPER, and

U.S. Design Patent D775,015 (Exhibit C hereto) covers the distinctive appearance of the design

for the GRUMPER headlight opening (collectively, the "Design Patents").

12. Defendant Prestige was organized on September 29, 2015 and, on information and

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belief, began operations in late 2015. Prestige specializes in the installation of custom packages

for Jeep Wranglers.

13. In 2016, defendants began offering for sale a bumper-grill combination that they called

the "Grumper" that was substantially similar to Fab Fours' design.

14. On November 28, 2016, counsel for Fab Fours sent a cease and desist letter to Prestige

based on the GRUMPER mark and mentioning the pending design patents.

15. No response was received, but Prestige changed the name of its product to the

GRUMPLER.
16. On January 19, 2017, after the issuance of the Design Patents, a further cease and

desist letter was sent to Prestige by Fed Ex and signed for, advising Prestige of the issuance of the

Design Patents. Again, no response was received.

COUNT I - DESIGN PATENT D775,014 INFRINGEMENT

17. Fab Fours hereby adopts and re-alleges the allegations of Paragraphs 1 to 16 above.

18. Fab Fours is the sole owner of U.S. Design Patent D775,014 (the 014 patent).

19. Prestige has been selling and, on information and belief, continues to sell bumper-

grills of a design substantially the same as that in Design Patent D775,014, as reflected below.

Design Patent D775,014

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Fab Fours Grumper

Prestige

20. On information and belief, Prestige has infringed and is continuing to infringe the 014

patent by making, using, offering to sell, selling and/or importing into the United States bumpers

and grills covered by the claims of the 014 patent. On information and belief, Prestige will

continue to infringe the 014 patent, causing Fab Fours irreparable injury, unless enjoined by this

Court.

21. Prestige knows of the 014 patent, and is infringing the 014 patent willfully and

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deliberately, thereby rendering this case exceptional under the United States patent laws.

COUNT II - DESIGN PATENT D775,015 INFRINGEMENT

22. Fab Fours hereby adopts and re-alleges the allegations of Paragraphs 1 to 16 above.

23. Fab Fours is the sole owner of U.S. Design Patent D775,015 (the 015 patent).

24. The design of the Prestige headlight cowling is substantially the same as that in Design

Patent D775,015, as reflected below.

Design Patent D775,015

Fab Fours

Prestige

25. On information and belief, Prestige has infringed and is continuing to infringe the 015

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patent by making, using, offering to sell, selling and/or importing into the United States bumpers

and grills covered by the claims of the 015 patent. On information and belief, Prestige will

continue to infringe the 015 patent, causing Fab Fours irreparable injury, unless enjoined by this

Court.

26. Prestige knows of the 015 patent, and is therefore infringing the 015 patent willfully

and deliberately, thereby rendering this case exceptional under the United States patent laws.

COUNT III - TRADEMARK INFRINGEMENT PURSUANT

TO 32 OF THE LANHAM ACT (15 U.S.C. 1114)

27. Fab Fours hereby adopts and re-alleges the allegations of Paragraphs 1 to 16 above.

28. Fab Fours is the sole owner of U.S. Trademark Registration No. 4,974,598 for

GRUMPER (the GRUMPER registration).

29. Prestige has been promoting, advertising, selling, offering for sale and distributing

bumper/grill products under the names GRUMPER and GRUMPLER, which is an infringement

of Fab Fours rights under the GRUMPER registration under 32 of the Lanham Act, 15 U.S.C.

1114.

30. Prestiges infringing activities are likely to cause confusion, mistake, and deception

among members of consuming public as to the origin, affiliation, sponsorship, and quality of

Prestige's infringing products.

31. Prestiges unlawful actions have caused and are continuing to cause unquantifiable

damages and irreparable harm to Fab Fours and are unjustly enriching Prestige at Fab Fours

expense. Fab Fours will continue to suffer irreparable injury due to Prestiges above-described

activities if Prestige is not preliminarily and permanently enjoined.

32. Prestiges continuing infringing activity demonstrates willful and bad faith intent to

create confusion, deception, and mistake in the minds of Prestiges consumers and others.

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COUNT IV- FALSE DESIGNATION OF ORIGIN

PURSUANT TO 43(a) OF THE LANHAM ACT (15 U.S.C. 1125(a))

33. Fab Fours hereby adopts and re-alleges the allegations of Paragraphs 1 to 16 above.

34. Prestige has been promoting, advertising, selling, offering for sale and distributing

bumper/grill products under the names GRUMPER and GRUMPLER, which is likely to cause

confusion, mistake, and deception among members of consuming public as to the origin,

affiliation, sponsorship, and quality of Prestige's infringing products.

35. Prestiges above-described actions are in violation of Section 43(a) of the Lanham

Act, 15 U.S.C. 1125(a).

36. Fab Fours has no adequate remedy at law, and has sustained injury and damage caused

by Prestiges conduct. Absent an entry of an injunction by this Court, Fab Fours will continue to

suffer irreparable injury to its goodwill and business reputation, as well as monetary damages.

37. Prestiges continuing infringing activity demonstrates willful and bad faith intent to

create confusion, deception, and mistake in the minds Prestiges consumers and potential

consumers.

PRAYER FOR RELIEF

WHEREFORE, Fab Fours demands judgment on all Counts of this Complaint and an

award of equitable relief, and monetary relief against Prestige as follows:

A. Adjudge and decree that Prestige has directly or indirectly infringed one or more

claims of each of the Design Patents;

B. Preliminarily and permanently enjoin Prestige, its officers, agents, servants,

employees, attorneys, and those persons in active concert or participation with them who receive

actual notice of the order by personal service or otherwise, from continuing to infringe the Design

Patents;

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C. Order Prestige to pay damages sustained by Fab Fours by reason of Prestige's

infringement of the Design Patents, together with interest and costs;

D. Adjudge and decree that Prestige's infringement of the Design Patents has been and

is willful and deliberate, and award Fab Fours increased damages pursuant to 35 U.S.C. 284;

E. Preliminarily and permanently enjoin Prestige and any related organizations,

subsidiaries, companies, including parents, officers, directors, agents, owners, employees,

representatives and attorneys and all others acting under, or in concert with them, or with any of

them from:

a. Using the GRUMPER mark or any other mark confusingly similar to the

GRUMPER mark (including GRUMPLER) upon or in connection with Prestiges goods and

services;

b. Claiming or implying endorsement by Fab Fours of Prestiges goods and

services or in any way inducing consumers into a mistaken belief that the goods and services of

Prestige are from, affiliated with or endorsed by Fab Fours; and

c. Unfairly competing with Fab Fours in any manner whatsoever.

F. Order Prestige and its related organizations, subsidiaries, companies, including

parents, agents, employees, representatives, and all others acting under its direction or control or

in concert with them, or any of them, to remove any reference to GRUMPER or GRUMPLER

online and to deliver up for destruction all advertising materials, promotional materials, flyers,

signs, and any and all other materials that bear either mark.

G. Order Prestige to pay damages sustained by Fab Fours by reason of Prestige's

trademark infringement and unfair competition, together with interest and costs.

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H. Trebling the amount of such award on account of Prestiges willful, intentional and

bad faith conduct.

I. Awarding Fab Fours pre-judgment interest on the judgment amount.

J. Awarding Fab Fours its reasonable attorneys' fees and costs associated with

bringing this action.

K. Awarding Fab Fours such other and further relief as the Court may deem just and

proper.

Dated this 17th day of February 2017.

Respectfully submitted,

/s/ Paul D. Harrill

Paul D. Harrill
USDC Bar. No. 5534
PHarrill@mcnair.net
MCNAIR LAW FIRM, P.A.
1221 Main St., Suite 1800 (29201)
P.O. Box 11390 (29211)
Columbia, South Carolina
Tel. (803) 799-9800
Fax. (803) 753-3278

William J. Utermohlen
(pro hac vice to be filed)
wutermohlen@oliff.com
OLIFF PLC
277 South Washington St. Suite 500
Alexandria, VA 22314
Tel. 703-836-6400
Fax 703-836-2787

Attorneys for Plaintiff

1394427v1

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Exhibit A

U.S. Trademark Registration No. 4,974,598

0:17-cv-00482-MGL Date Filed 02/17/17 Entry Number 1-1 Page 2 of 2

GRUMPER
Reg. No. 4,974,598 FAB FOURS INC. CI EXAS CORPORATION)
1312 CAMP CREEK ROAD .
Registered June 7, 2016 LANCASTER, sc 29720

Int. CI.: 12 FOR: MOTOR VEHICLE GRILLS; MOTOR VEHICLE BUMPERS, IN CLASS 12 (U.S. CLS.
19, 21, 23, 31, 35 AND 44).

TRADEMARK FIRST USE 3-1-2016, IN COMMERCE 3-1-2016.

PRINCIPAL REGISTER THE MARK CONSISTS OP S1ANDARD CHARACTERS WITHOUT CLAIM JO ANY PAR
TICULAR FONT, STYLE, SIZE, OR COLOR.

SN 86-591,830, TILED 4-9-2015.

PAUL MORENO, EXAMINING ATTORNEY

TU'c^ * 2^-

Director of the United States

Patent and Trademark Office
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