Case: 4:12-cv-01184-AGF Doc.

#: 1 Filed: 07/02/12 Page: 1 of 9 PageID #: 1

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MISSOURI EASTERN DIVISION

Hansens Tree, Lawn, and Landscaping Services, Inc. Plaintiff, v. Ciarra Holdings, LP and Priefert Mfg. Co., Inc. Defendants.

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Case No.

JURY TRIAL DEMANDED

COMPLAINT COMES NOW Plaintiff Hansens Tree, Lawn, and Landscaping Services, Inc. (Plaintiff), and for its complaint against Defendants Ciarra Holdings, LP (Ciarra) and Priefert Mfg. Co., Inc. (Priefert) (collectively referred to as Defendants), states to the Court as follows: INTRODUCTION 1. Plaintiff is a Missouri corporation that has being using the federally registered

trademark LIMB-A-NATOR for over a decade in connection with gardening, landscaping, tree trimming, and tree removal services. 2. Defendant Ciarra is a Nevada limited partnership that is the owner of the federally

registered trademarks LIMBINATOR and LIMBINATOR SAWS, and based upon information and belief, is currently manufacturing and selling a variety of saws under the LIMBINATOR and LIMBINATOR SAWS trademarks.

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3.

Defendant Priefert is a Texas corporation that sells saws under the trademarks

LIMBINATOR and LIMBINATOR SAWS at its website www.Priefert.com. Upon information and belief, Priefert is the manufacturer of the saws sold under the LIMBINATOR and LIMBINATOR SAWS trademarks. 4. This complaint arises out of Defendants unauthorized and infringing use of the

LIMBINATOR and LIMBINATOR SAWS trademarks in connection with Defendants saws. 5. This complaint seeks injunctive relief and monetary damages as a remedy for

Defendants infringement of the LIMB-A-NATOR trademark owned by Plaintiff. THE PARTIES 6. Plaintiff is a Missouri corporation located and doing business at 104 Hansen Ct.,

OFallon, Missouri 63366. 7. Defendant Ciarra is a Nevada limited partnership located and doing business at

1015 Waterwood Parkway, Suite H-1, Edmond, Oklahoma 73034. 8. Defendant Priefert is a Texas corporation located and doing business at P.O. Box

1540, Mount Pleasant, Texas 75456. JURISDICTION AND VENUE 9. The Court has subject matter jurisdiction over this cause of action pursuant to 28

U.S.C. 1331 (federal question), 1338(a) and (b) (act of Congress relating to trademark and unfair competition), 1367(a) (supplemental jurisdiction), and 15 U.S.C. 1051 et. seq. (Lanham Act). 10. Venue is proper in the district pursuant to 28 U.S.C. 1391(b)(2) and (b)(3)

because a substantial part of the events giving rise to the claims of this action occurred in this

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judicial district and because Defendants are subject to the Courts personal jurisdiction due to the substantial business they conduct in this state and judicial district. FACTUAL BACKGROUND 11. Since at least as early as 2001, Plaintiff has been continuously using the

trademark LIMB-A-NATOR in interstate commerce in connection with a variety of gardening and landscaping services, including removing, trimming, and mulching trees and tree limbs. 12. As a result of the substantial and continuous use by Plaintiff of its LIMB-A-

NATOR trademark in connection with its gardening, landscaping, tree trimming, and tree removal services, the general purchasing public had come to associate the LIMB-A-NATOR trademark exclusively with Plaintiff and its services. As such, the LIMB-A-NATOR trademark is extremely valuable to Plaintiff and has developed a substantial amount of goodwill and recognition among the general consuming public. 13. The LIMB-A-NATOR trademark has been used, and continues to be used, by the

general consuming public to identify the source of Plaintiffs gardening, landscaping, tree trimming, and tree removal services, and to distinguish such services from those offered by its competitors. 14. Plaintiff is the owner of all right, title, and interest in and to the LIMB-A-NATOR

trademark as used in connection with gardening, landscaping, tree trimming, and tree removal services. 15. Plaintiff is the owner of an incontestable federal trademark registration for LIMB-

A-NATOR (Reg. No. 2,850,301). This registration was issued by the United States Patent and Trademark Office on June 8, 2004.

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16.

Defendants themselves, or through authorized licensees, are currently using the

trademarks LIMBINATOR and LIMBINATOR SAWS in connection with the manufacture and sale of saws used primarily to cut down trees and remove tree limbs. 17. Defendant Ciarra is the owner of a federal trademark registration for

LIMBINATOR (Reg. No. 3,824,889) for chain saws; power-operated saws; saw machines; wood sawing machines. This registration lists Defendant Ciarras first use date as November 5, 2008. 18. Defendant Ciarra is the owner of a federal trademark registration for

LIMBINATOR SAWS (Reg. No. 4,040,915) for power tools, namely, tractor and front loader mounted, hydraulically operated, tree cutting and trimming saws; replacement parts for chain saws, namely, bars and chains, chains for chain saws, and hydraulic power units. This registration lists Defendant Ciarras first use date as November 5, 2008. 19. Plaintiffs first use and registration in of its LIMB-A-NATOR trademark

significantly predates Defendants first use of the LIMBINATOR and LIMBINATOR SAWS trademarks. 20. Defendants LIMBINATOR and LIMBINATOR SAWS trademarks are

confusingly similar in appearance, sound, meaning, and commercial impression to Plaintiffs LIMB-A-NATOR trademark. 21. The gardening, landscaping, tree trimming, and tree removal services offered

under Plaintiffs LIMB-A-NATOR trademark are strongly related to the wood-cutting saws with which Defendants LIMBINATOR and LIMBINATOR SAWS trademarks are used.

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COUNT I TRADEMARK INFRINGEMENT UNDER 15 U.S.C. 1114 22. Plaintiff realleges and incorporates by reference the allegations set forth in the

preceding paragraphs as if fully set forth herein. 23. Defendants have violated 15 U.S.C. 1114 in that their use of the LIMBINATOR

and LIMBINATOR SAWS trademarks, in connection with the advertising and sale of saws, is likely to cause confusion, to cause mistake, or to deceive as to Plaintiffs prior use and registration of Plaintiffs LIMB-A-NATOR trademark in connection with gardening, landscaping, tree trimming, and tree removal services. 24. Defendants willful, wrongful, and infringing activities have caused, and will

continue to cause, damage and irreparable harm to Plaintiff, and are likely to continue unabated, thereby causing further damage and irreparable harm to Plaintiff and to the valuable goodwill symbolized by the LIMB-A-NATOR trademark, unless enjoined by this Court. 25. Plaintiff has no adequate remedy at law. COUNT II FALSE DESIGNATION OF ORIGIN UNDER 15 U.S.C. 1125(a) 26. Plaintiff realleges and incorporates by reference the allegations set forth in the

preceding paragraphs as if fully set forth herein. 27. Defendants have violated 15 U.S.C. 1125 in that their use of the LIMBINATOR

and LIMBINATOR SAWS trademarks, in connection with the advertising and sale of saws, is likely to cause confusion, to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with Plaintiff, as well as to the origin, sponsorship, or approval of such products by Plaintiff.

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28.

Defendants willful, wrongful, and infringing activities have caused, and will

continue to cause, damage and irreparable harm to Plaintiff, and are likely to continue unabated, thereby causing further damage and irreparable harm to Plaintiff and to the valuable goodwill symbolized by the LIMB-A-NATOR trademark, unless enjoined by this Court. 29. Plaintiff has no adequate remedy at law. COUNT III TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION UNDER MISSOURI LAW 30. Plaintiff realleges and incorporates by reference the allegations set forth in the

preceding paragraphs as if fully set forth herein. 31. Defendants willful, wrongful, and infringing activities as stated herein constitute

unfair competition and an infringement of Plaintiffs LIMB-A-NATOR trademark in violation of Missouri law. 32. Defendants willful, wrongful, and infringing activities have caused, and will

continue to cause, damage and irreparable harm to Plaintiff, and are likely to continue unabated, thereby causing further damage and irreparable harm to Plaintiff and to the valuable goodwill symbolized by the LIMB-A-NATOR trademark, unless enjoined by this Court. 33. Plaintiff has no adequate remedy at law. COUNT IV TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION UNDER COMMON LAW 34. Plaintiff realleges and incorporates by reference the allegations set forth in the

preceding paragraphs as if fully set forth herein.

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35.

Defendants willful, wrongful, and infringing activities as stated herein constitute

unfair competition and an infringement of Plaintiffs LIMB-A-NATOR trademark in violation of Missouri common law. 36. Defendants willful, wrongful, and infringing activities have caused, and will

continue to cause, damage and irreparable harm to Plaintiff, and are likely to continue unabated, thereby causing further damage and irreparable harm to Plaintiff and to the valuable goodwill symbolized by the LIMB-A-NATOR trademark, unless enjoined by this Court. 37. Plaintiff has no adequate remedy at law. PRAYER FOR RELIEF WHEREFORE, Plaintiff Hansens Tree, Lawn, and Landscaping Services, Inc. prays for Judgment against Defendants as follows: 1. That this Court issue a preliminary injunction enjoining Defendants, their

affiliates, licensees, agents, sales representative, servants, employees, associates, successors, assigns, and all persons acting under their control, from advertising and offering their saws under the LIMBINATOR or LIMBINATOR SAWS trademarks, and/or any other trademarks that are likely to cause confusion, to cause mistake, or to deceive; 2. That this Court issue a permanent injunction enjoining Defendants, their affiliates,

licensees, agents, sales representative, servants, employees, associates, successors, assigns, and all persons acting under their control, from advertising and offering their saws under the LIMBINATOR or LIMBINATOR SAWS trademarks, and/or any other trademarks that are likely to cause confusion, to cause mistake, or to deceive;

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3.

Order Defendants to account for and pay over to Plaintiff all gains, profits, and

other advantages derived from their acts of trademark infringement, false designation of origin, and unfair competition; 4. Order Defendants to compensate Plaintiff for such damages as Plaintiff has

sustained as a result of Defendants acts of trademark infringement, false designation of origin, and unfair competition; 5. As provided for in 15 U.S.C. 1117, award Plaintiff a sum above the amount

found as actual damages not exceeding three times such amount; 6. As provided for in 15 U.S.C. 1117, award Plaintiff its costs, expenses, and

reasonable attorneys fees incurred in connection with this suit due to Defendants willful, wrongful, and infringing acts of trademark infringement, false designation of origin, and unfair competition; 7. Order that Defendant Ciarras federal trademark registrations for LIMBINATOR

and LIMBINATOR SAWS (Reg. Nos. 3,824,889 and 4,040,915) be canceled in whole by the United States Patent and Trademark Office; and 8. proper. JURY DEMAND Plaintiff hereby demands trial by jury of all issues triable of right by a jury. Award to Plaintiff any such other and further relief that this Court deems just and

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Respectfully submitted, HANSENS TREE, LAWN, AND LANDSCAPING SERVICES, INC. By: /s/ Annette P. Heller Annette P. Heller (MO #26748) Heller & Associates 400 Chesterfield Center, Suite 400 Chesterfield, MO 63017 Tel: (314) 469-2610 Fax: (314) 469-4850 tmattorneyheller@aol.com Attorney for Plaintiff Hansens Tree, Lawn, and Landscaping Services, Inc. Dated: 7/2/2012