IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS ) ) ) ) ) ) ) ) ) ) ) ) COMPLAINT

JAB DISTRIBUTORS, LLC, Plaintiff, v. US HOSPITALITY SUPPLY, LLC, Defendant.

Civil Action No.:

TRIAL BY JURY DEMANDED

Plaintiff JAB Distributors, LLC (hereinafter Plaintiff or JAB), files this complaint against Defendant US Hospitality Supply, LLC (hereinafter USHS or Defendant), and alleges as follows: THE PARTIES 1. Plaintiff JAB is a limited liability company organized under the laws of

Illinois and having its principal place of business at 1500 South Wolf Road, Wheeling, Illinois 60090. 2. On information and belief, Defendant USHS is a New Jersey limited

liability company having its principal place of business at 45 Dupont Avenue, Seaside Heights, New Jersey 08751. JURISDICTION AND VENUE 3. Subject matter jurisdiction is conferred on the Court by 28 U.S.C. 1331

and 1338 for patent infringement claims arising under Title 35 of the United States Code and for trademark infringement and unfair competition claims arising under Title 15 of

the United States Code (the Lanham Act). The Court has supplemental jurisdiction over the state law claims pursuant to 28 U.S.C. 1338 and 1367. 4. 1400(b). 5. Defendant has engaged in business activities and infringing activities Venue is proper in this Court under 28 U.S.C. 1391(b) and (c) and

within this judicial district sufficient to vest this Court with personal jurisdiction over Defendant. FACTUAL BACKGROUND 6. On June 30, 2009, United States Letter Patent No. 7,552,489 (the 489

patent), entitled Mattress Encasement For Preventing Bed Bug Escapement Via A Zipper Opening, was duly and legally issued by the United States Patent and Trademark Office. On August 25, 2009, the United States Patent and Trademark Office (USPTO) issued a Certificate of Correction for the 489 patent. A copy of the 489 patent and the Certificate of Correction are attached hereto as Exhibit A. On January 13, 2010, a request for ex parte reexamination of the 489 patent was filed with the USPTO, and, on August 3, 2010, the USPTO issued an Ex Parte Reexamination Certificate confirming the patentability of all of the original claims of the 489 patent without any amendments to the claims. A copy of the Ex Parte Reexamination Certificate for the 489 patent is attached hereto as Exhibit B. 7. On September 10, 2013, United States Letter Patent No. 8,528,134 (the

134 patent), entitled Method Of Preventing Bed Bugs From Escaping A Mattress Encasement Via A Zipper Opening, was duly and legally issued by the United States Patent and Trademark Office. A copy of the 134 patent is attached hereto as Exhibit C.

8.

JAB is the assignee and owner of the entire right, title and interest in and

to the 489 patent and the 134 patent, including the right to assert all causes of action arising under the 489 patent and 134 patent and the right to any remedy for infringement of the 489 patent and 134 patent. 9. Pursuant to 35 U.S.C. 282, each of the 489 patent and 134 patent,

including every claim therein, is presumed valid. 10. JAB makes, sells, and offers for sale mattress encasement products JAB markets the

incorporating the inventions of the 489 patent and 134 patent.

patented mattress encasement products under its registered trademark, PROTECT-ABED. 11. JAB has been using its PROTECT-A-BED mark in commerce in

connection with the sale of its mattress encasement products since at least as early as September 30, 2000. 12. On September 23, 2002, JAB filed United States Trademark Application

Serial No. 76453268 for registration of the mark PROTECT-A-BED, as shown in Exhibit D. JAB has been using the PROTECT-A-BED mark in interstate commerce since at least September 30, 2000, on and in connection with mattress protectors in the nature of mattress covers; pillow protectors in the nature of pillow cases; quilt protectors in the nature of quilt covers. The application issued as U.S. Trademark Registration No. 2741608 on July 29, 2003, a copy of which is attached hereto in Exhibit D. 13. On September 27, 2002, JAB filed United States Trademark Application

Serial No. 76457166 for registration of the mark PROTECT-A-BED and Design, as shown in Exhibit E. JAB has been using the PROTECT-A-BED and Design mark in

interstate commerce since at least September 30, 2000, on and in connection with mattress protectors in the nature of mattress covers; pillow protectors in the nature of pillow cases; quilt protectors in the nature of quilt covers. The application issued as U.S. Trademark Registration No. 2741659 on July 29, 2003, a copy of which is attached hereto in Exhibit E. 14. On March 14, 2008, JAB filed United States Trademark Application Serial

No. 77422220 for registration of the mark PROTECT-A-BED PLUSH, as shown in Exhibit F. JAB has been using the PROTECT-A-BED PLUSH mark in interstate

commerce since at least September 1, 2008, on and in connection with mattress covers. The application issued as U.S. Trademark Registration No. 3617210 on May 5, 2009, a copy of which is attached hereto in Exhibit F. 15. On July 8, 2011, JAB filed United States Trademark Application Serial

No. 85366100 for registration of the mark PROTECT-A-BED and Design, as shown in Exhibit G. JAB has been using the PROTECT-A-BED and Design mark in interstate commerce since at least February 1, 2007, on and in connection with mattress covers mattress pads; pillow covers. The application issued as U.S. Trademark Registration No. 4102175 on February 21, 2012, a copy of which is attached hereto in Exhibit G. 16. On July 28, 2011, JAB filed United States Trademark Application Serial

No. 85383020 for registration of the mark PROTECT-A-BED and Design, as shown in Exhibit H. JAB has been using the PROTECT-A-BED and Design mark in interstate commerce since at least January 1, 2010, on and in connection with mattress covers mattress pads; pillow covers. The application issued as U.S. Trademark Registration No. 4121296 on April 3, 2012, a copy of which is attached hereto in Exhibit H.

17.

U.S. Registration Nos. 2741608, 2741659, 3617210, 4102175, and

4121296 (collectively JABs PROTECT-A-BED Marks) are valid, subsisting, uncancelled, and unrevoked. Further, U.S. Registration Nos. 2741608 and 2741659 have achieved incontestable status. 18. Upon information and belief, USHS has been selling mattress, box spring,

and pillow encasement products under the mark SAVE-A-BED. COUNT I INFRINGEMENT OF THE 489 PATENT BY USHS 19. JAB specifically incorporates and realleges the allegations asserted in each

of the preceding paragraphs as if fully set forth herein. 20. USHS has been and is now infringing the 489 patent by making, using,

selling, offering for sale, and/or importing into the United States, including in this district, one or more products covered by at least one claim of the 489 patent, including, but not necessarily limited to, SAVE-A-BED. 21. On information and belief, and after a reasonable opportunity for further

investigation or discovery, it is likely that the evidence will show that USHSs acts of infringement have been made with full knowledge of the 489 patent. Such acts

constitute willful and deliberate infringement, entitling JAB to enhanced damages and attorneys fees. Moreover, on information and belief, USHSs continued infringement will be willful. 22. As a consequence of USHSs infringement, JAB has been irreparably

damaged, to an extent not yet determined, and will continue to be irreparably damaged by such acts in the future unless USHS is enjoined by this Court from committing further acts of infringement.

23.

JAB is entitled to recover damages adequate to compensate for USHSs

infringement, which in no event can be less than a reasonable royalty. COUNT II INFRINGEMENT OF THE 134 PATENT BY USHS 24. JAB specifically incorporates and realleges the allegations asserted in each

of the preceding paragraphs as if fully set forth herein. 25. USHS has been and is now infringing the 134 patent by making, using,

selling, offering for sale, and/or importing into the United States, including in this district, one or more products covered by at least one claim of the 134 patent, including, but not necessarily limited to, SAVE-A-BED. 26. On information and belief, and after a reasonable opportunity for further

investigation or discovery, it is likely that the evidence will show that USHSs acts of infringement have been made with full knowledge of the 134 patent. Such acts

constitute willful and deliberate infringement, entitling JAB to enhanced damages and attorneys fees. Moreover, on information and belief, USHSs continued infringement will be willful. 27. As a consequence of USHSs infringement, JAB has been irreparably

damaged, to an extent not yet determined, and will continue to be irreparably damaged by such acts in the future unless USHS is enjoined by this Court from committing further acts of infringement. 28. JAB is entitled to recover damages adequate to compensate for USHSs

infringement, which in no event can be less than a reasonable royalty.

COUNT III TRADEMARK INFRINGEMENT UNDER 15 U.S.C. 1114 29. JAB specifically incorporates and realleges the allegations asserted in each

of the preceding paragraphs as if fully set forth herein. 30. JABs U.S. Trademark Registration Nos. 2741608, 2741659, 3617210,

4102175, and 4121296 for the PROTECT-A-BED mark are valid, subsisting, uncancelled and unrevoked. 31. USHSs mark SAVE-A-BED so closely resembles JABs PROTECT-A-

BED Marks in appearance, sound, connotation, and commercial impression that the sale and/or use in commerce of the mark SAVE-A-BED by USHS on its mattress, box spring, and pillow encasement products is likely to cause confusion, mistake, or deception and will injure and damage JAB and the goodwill and reputation symbolized by JABs PROTECT-A-BED Marks. 32. After a reasonable opportunity for further investigation or discovery, it is

likely that the evidence will show that USHSs infringing activities commenced, and have continued, despite USHSs knowledge of JABs rights in the registered PROTECTA-BED marks, and/or with USHSs knowledge that USHS does not have the right to use JABs PROTECT-A-BED Marks in commerce. 33. By the foregoing acts and otherwise, USHS will continue to infringe

JABs rights in its registered PROTECT-A-BED marks unless restrained by this Court. 34. As a result of USHSs trademark infringement, JAB has suffered and

continues to suffer irreparable injury, for which it has no adequate remedy at law.

COUNT IV UNFAIR COMPETITION, FALSE DESIGNATION OF ORIGIN, AND TRADEMARK INFRINGEMENT UNDER 15 U.S.C. 1125(a) 35. JAB specifically incorporates and realleges the allegations asserted in each

of the preceding paragraphs as if fully set forth herein. 36. 1125(a). 37. JABs PROTECT-A-BED Marks are inherently distinctive. In the This cause of action for trademark infringement arises under 15 U.S.C.

alternative, the marks have acquired secondary meaning. 38. JAB engages in interstate commerce and sells mattress, box spring, and

pillow encasement products under JABs PROTECT-A-BED Marks throughout the United States. 39. JABs PROTECT-A-BED Marks have been, and continue to be, known

throughout the United States as identifying and distinguishing JABs goods in the mattress, box spring, and pillow encasement market. 40. Defendant USHSs SAVE-A-BED mark so closely resembles JABs

PROTECT-A-BED Marks in appearance, sound, connotation, and commercial impression, that the sale and or use in commerce of the SAVE-A-BED mark on or in connection with USHS mattress, box spring, and pillow encasement products is likely to cause consumer confusion, reverse confusion, mistake, or deception as to the affiliation, connection, or association of USHS with JAB, or vice versa, and/or as to the origin, sponsorship, or approval of USHSs goods by JAB, or vice versa. This will injure and damage JAB and the goodwill and reputation symbolized by JABs PROTECT-A-BED Marks.

41.

After a reasonable opportunity for further investigation or discovery, it is

likely that the evidence will show that USHSs infringing activities commenced, and have continued, despite USHSs knowledge of JABs rights in and to its PROTECT-ABED marks and/or with USHSs knowledge that USHS does not have the right to use JABs PROTECT-A-BED Marks in commerce. 42. By the foregoing acts and otherwise, USHS will continue to infringe

JABs rights in its distinctive PROTECT-A-BED marks unless restrained by this Court. JAB has been, and continues to be, damaged by USHSs activities and conduct. USHS has profited thereby and, unless USHSs conduct is enjoined, JABs reputation, goodwill, and legal right to expand its goods and services will continue to suffer irreparable injury that cannot adequately be calculated or compensated by money damages. Accordingly, JAB seeks injunctive relief. 43. By intentionally using a mark that is identical or confusingly similar to

JABs PROTECT-A-BED Marks, USHS has caused irreparable harm to JABs reputation and goodwill and has damaged JAB. Accordingly, JAB is entitled to damages, including but not limited to an accounting of all of the profits that USHS has derived from its unlawful use of the SAVE-A-BED mark and an award of JABs actual damages (trebled), together with reasonable attorneys fees. COUNT V STATE COMMON LAW TRADEMARK INFRINGEMENT 44. JAB specifically incorporates and realleges the allegations asserted in each

of the preceding paragraphs as if fully set forth herein. 45. common law. This cause of action for trademark infringement arises under Illinois

46.

JABs PROTECT-A-BED Marks are inherently distinctive.

In the

alternative, the marks have acquired secondary meaning among relevant consumers in Illinois. 47. 46. JABs PROTECT-A-BED Marks have been and continue to be

known in Illinois and throughout the United States as identifying and distinguishing JABs goods in the mattress, box spring, and pillow encasement market. 48. Defendant USHSs SAVE-A-BED mark so closely resembles JABs

PROTECT-A-BED Marks in appearance, sound, connotation, and commercial impression that the sale by USHS of goods bearing the SAVE-A-BED mark are likely to cause consumer confusion, mistake, or deception as to the affiliation, connection, or association of USHS with JAB, or vice versa, and/or as to the origin, sponsorship, or approval of USHSs goods by JAB, or vice versa. This will injure and damage JAB and the goodwill and reputation symbolized by JABs PROTECT-A-BED Marks. 49. USHSs use of the SAVE-A-BED mark for its goods on its website has

caused, and will continue to cause, confusion, reverse confusion, mistake, and deception among the mattress encasement market and general public as to the origin of the goods. 50. After a reasonable opportunity for further investigation or discovery, it is

likely that the evidence will show that USHSs infringing activities commenced, and have continued, despite USHSs knowledge of JABs rights in and to its PROTECT-ABED marks and/or with USHSs knowledge that USHS does not have the right to use JABs PROTECT-A-BED Marks in commerce. 51. By using a mark identical or confusingly similar to JABs PROTECT-A-

BED Marks and by selling, offering for sale, and/or distributing mattress, box spring, and

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pillow encasement products to the general public under such a mark for profit and without JABs authorization, USHS is depriving JAB of its exclusive right to control and benefit from its marks. 52. By the foregoing acts and otherwise, USHS will continue to infringe

JABs rights in its distinctive PROTECT-A-BED marks unless restrained by this Court. 53. JAB has been, and continues to be, damaged by USHSs activities and

conduct. USHS has profited thereby and, unless its conduct is enjoined, JABs reputation and goodwill will continue to suffer irreparable injury that cannot adequately be calculated or compensated by money damages. Accordingly, JAB seeks injunctive relief and monetary damages to compensate it for the harm. COUNT VI VIOLATION OF ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT 54. JAB specifically incorporates and realleges the allegations asserted in each

of the preceding paragraphs as if fully set forth herein. 55. This cause of action arises under the Illinois Uniform Deceptive Trade

Practices Act, 815 ILCS 510/1, et seq. 56. JABs PROTECT-A-BED Marks are inherently distinctive. In the

alternative, the marks have acquired secondary meaning. 57. JABs PROTECT-A-BED Marks have been, and continue to be, known in

Illinois and throughout the United States as identifying and distinguishing JABs goods in the mattress, box spring, and pillow encasement market. 58. USHSs unauthorized use of the SAVE-A-BED mark, which closely

resembles JABs PROTECT-A-BED Marks in appearance, sound, connotation, and commercial impression, is likely to cause confusion, reverse confusion, or

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misunderstanding as to the source, sponsorship, approval, or certification of USHSs goods, as to the affiliation, connection, or association of USHSs goods with JAB, or vice versa, and as to the certification of USHSs goods by JAB, or vice versa, in violation of 815 ILCS 510/2(a). 59. After a reasonable opportunity for further investigation or discovery, it is

likely that the evidence will show that USHSs deceptive trade practices commenced, and have continued, despite USHSs knowledge of JABs superior rights in and to its PROTECT-A-BED marks. 60. By the foregoing acts and otherwise, USHS will continue its deceptive

trade practices of infringing JABs rights in its PROTECT-A-BED marks unless restrained by this Court. 61. USHSs deceptive trade practices have caused and will continue to cause

irreparable injury and damage to JABs business, reputation, and goodwill. JAB has no adequate remedy at law to prevent this injury. COUNT VII VIOLATION OF ILLINOIS CONSUMER FRAUD AND DECEPTIVE BUSINESS PRACTICES ACT 62. JAB specifically incorporates and realleges the allegations asserted in each

of the preceding paragraphs as if fully set forth herein. 63. This cause of action arises under the Illinois Consumer Fraud and

Deceptive Business Practices Act, 815 ILCS 505/1, et seq. 64. JABs PROTECT-A-BED Marks are inherently distinctive. In the

alternative, the marks have acquired secondary meaning.

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65.

The PROTECT-A-BED marks have been, and continue to be, known in

Illinois and throughout the United States as identifying and distinguishing JABs goods in the mattress, box spring, and pillow encasement market. 66. USHSs unauthorized use of the SAVE-A-BED mark, which closely

resembles JABs PROTECT-A-BED Marks in appearance, sound, connotation, and commercial impression, is likely to cause confusion, reverse confusion, or misunderstanding as to the source, sponsorship, approval, association, or certification of USHSs goods in violation of 815 ILCS 505/2. 67. After a reasonable opportunity for further investigation or discovery, it is

likely that the evidence will show that USHSs deceptive business practices commenced, and have continued, despite USHSs knowledge of JABs superior rights in its PROTECT-A-BED marks. 68. By the foregoing acts and otherwise, USHS will continue its deceptive

business practices of infringing JABs rights in its PROTECT-A-BED marks unless restrained by this Court. 69. USHSs deceptive business practices have caused and will continue to

cause irreparable injury and damage to JABs business, reputation, and goodwill. JAB has no adequate remedy at law to prevent this injury. 70. As a direct and proximate result of USHSs acts, practices, and conduct,

JAB has been and will likely continue to be substantially injured and damaged. 71. USHSs acts, practices, and conduct have resulted in monetary damages to

JAB and gain of profit to USHS. Therefore, JAB is entitled to damages.

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PRAYER FOR RELIEF Wherefore, JAB prays for the following relief: A. Defendant; B. That this Court issue an injunction, permanently enjoining Defendant and Judgment that the 489 patent and 134 patent have been infringed by

its officers, agents, subsidiaries, affiliates, successors, employees, representatives, and assigns from further infringement of the 489 patent and 134 patent; C. That this Court ascertain and award JAB damages adequate to compensate

JAB for all acts of patent infringement by Defendant, but in no event less than a reasonable royalty; D. That the damages so ascertained be increased up to three times as provided

for in 35 U.S.C. 284; E. That this case be declared exceptional and that JAB be awarded its

attorneys fees under 35 U.S.C. 285; F. That JAB be granted pre-judgment and post-judgment interest on the

damages caused by reason of Defendants infringement of the 489 patent and 134 patent; G. H. A finding that Defendant has infringed JABs PROTECT-A-BED Marks; A finding that Defendant has violated the Illinois Uniform Deceptive

Trade Practices Act; I. A finding that Defendant has violated the Illinois Consumer Fraud and

Deceptive Business Practices Act;

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J.

An injunction permanently enjoining Defendant and its directors, officers,

agents, servants, employees and all other persons in active concert or privity or in participation with it, from: 1. directly or indirectly infringing or misappropriating JABs

PROTECT-A-BED Marks; 2. continuing to advertise, promote, sell or offer to sell any products

or services under a mark which infringes or misappropriates JABs PROTECT-A-BED Marks; and 3. assisting, inducing, or aiding or abetting any other person or entity

in engaging in any of the activities prohibited in subparagraphs (1) through (2) above. K. An injunction permanently enjoining Defendant and its directors, officers,

agents, servants, employees and all other persons in active concert or privity or in participation with it, from: 1. committing deceptive trade practices by selling its goods in

connection with the mark SAVE-A-BED and likely causing consumer confusion or misunderstanding as to the source, sponsorship, approval, or certification of Defendants goods and/or as to the affiliation, connection, or association with or certification by JAB; 2. continuing to advertise, promote, sell or offer to sell any products

under a mark which is likely to cause consumer confusion or misunderstanding as to the source, sponsorship, approval, or certification of Defendants goods and/or as to the affiliation, connection, or association with or certification by JAB; and 3. assisting, inducing, or aiding or abetting any other person or entity

in engaging in any of the activities prohibited in subparagraphs (1) through (2) above;

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L.

An order requiring the impounding and destruction of all labels, signs,

prints, packages, wrappers, receptacles, and advertisements in the possession of Defendant infringing Plaintiff JABs PROTECT-A-BED Marks and all means of making the same; M. An order requiring Defendant to file with the Court and serve on Plaintiff

JAB, within 30 days after service of the Courts order as herein prayed, a report (or other form of proof) in writing under oath setting forth in detail the manner and form in which Defendant has complied with the Courts injunction; N. A judgment entered for Plaintiff JAB and against Defendant for all

damages sustained by Plaintiff JAB and/or any applicable statutory damages for Defendants acts of trademark infringement, misappropriation, and deceptive trade practices, including Defendants profits, all damages sustained by Plaintiff JAB, JABs costs and attorneys fees for this action, and treble damages; O. An accounting from Defendant for all gains, profits, and advantages

derived from its acts of trademark infringement, unfair competition, deceptive trade practices, and/or other violations of the law as alleged herein; P. An order requiring that all gains, profits, and advantages derived by

Defendant from its acts of trademark infringement, unfair competition, deceptive trade practices, and/or other violations of the law as alleged herein, be deemed to be in constructive trust for the benefit of Plaintiff JAB; Q. R. and proper. That JAB be awarded its costs and expenses in this action; and That this Court grant JAB such other and further relief as it may deem just

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DEMAND FOR JURY TRIAL JAB hereby demands a trial by jury on all issues so triable.

Dated: February 11, 2014

Respectfully submitted,

/s/ Patrick J. Arnold Jr. Patrick J. Arnold Jr. Ronald A. DiCerbo David Z. Petty McAndrews, Held & Malloy, Ltd. 500 West Madison Street, 34th Floor Chicago, Illinois 60661 Phone: (312) 775-8000 Attorneys for Plaintiff, JAB DISTRIBUTORS, LLC

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