IN THE UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF MISSOURI

SOUTHERN DIVISION
PACELINE PRODUCTS, INC.,

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Jury Trial Demanded
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Plaintiff,
vs.
W STERNOFF LLC, d/b/a BODYGLIDE,
Serve registered agent:
DWTR&J CORP.
12901 Third Ave. Ste. 2200
Seattle, WA 98101
Defendant.

COMPLAINT FOR TRADE DRESS INFRINGEMENT,

UNFAIR COMPETITION, AND DECEPTIVE MARKETING PRACTICES
COMES NOW plaintiff Paceline Products, Inc., and for its Verified Complaint
against defendant W Sternoff LLC, d/b/a Body Glide, states and alleges:
PARTIES
1.

Plaintiff Paceline Products, Inc. (Paceline) is a Missouri corporation in

good standing, operating from its principal place of business in the State of Missouri.
2.

Defendant W Sternoff LLC, d/b/a Body Glide (Body Glide) is a

Washington limited liability company.

3.

Body Glide may be served through its Registered Agent:

DWTR&J Corp.
12901 Third Ave. Ste. 2200
Seattle, WA 98101

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JURISDICTION AND VENUE

4.

This action for trade dress infringement, unfair competition, and deceptive

marketing arises under the Trademark Act of 1946 (the Lanham Act or the Act), 15
U.S.C. 1051 et. seq., and the Common Law of the State of Missouri.
5.

This Court has original federal-question jurisdiction, in that:

(a)

this cases arises under the laws of the United States, for which

jurisdiction is provided in 28 U.S.C. 1331;

(b)

this case arises under the Lanham Act, for which jurisdiction is

provided without regard to the amount in controversy or to diversity in 15

U.S.C. 1121(a); and
(c)

this

case

arises

under

an[]

Act

of Congress

relating

to . . . trademarks, and related state-law claims, for which jurisdiction is provided

in 28 U.S.C. 1338(a)(b).
6.

This Court has supplemental jurisdiction over state-law claims under

28 U.S.C. 1367.
7.

This Court also has diversity jurisdiction under 28 U.S.C. 1332, in that

there is complete diversity of citizenship between the parties and the amount of
controversy exceeds the sum or value of $75,000.00, exclusive of costs.
8.

Venue is proper in this Court under 28 U.S.C. 1391, in that this Court

has personal jurisdiction over Defendant, and a substantial part of the events giving rise
to the claims asserted in this action arose in the Western District of Missouri.

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COUNT I:
TRADE DRESS INFRINGEMENT UNDER
SECTION 43(A) OF THE LANHAM ACT, 15 U.S.C. 1125(A)(1)
9.

Plaintiff herein incorporates by reference all of the allegations set forth

above in paragraphs 1 through 8 of this Verified Complaint.

Plaintiffs Products
10.

Paceline Products, Inc., has designed, manufactured, and distributed

numerous products for cyclists and other athletes since approximately 1993.
11.

Pacelines product lines include the Chamois Buttr product line, which

includes such products as Chamois Buttr Original, Chamois Buttr Eurostyle, and
Chamois Buttr Her (the Chamois Buttr Products).
12.

The Chamois Buttr Products are non-greasy skin lubricants developed to

improve riding comfort for cyclists and motorcyclists.

13.

The product packaging used for Chamois Buttr Products employ a

distinctive purple-and-yellow color scheme.

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14.

The purple-and-yellow color scheme of the Chamois Buttr Products is

inherently distinctive, in that it is an arbitrary or fanciful combination of elements that

serves to identify Paceline as the particular source of the Chamois Buttr Products.
15.

The purple-and-yellow color scheme of the Chamois Buttr Products has

also acquired secondary meaning, and is closely associated with, and an indication of, the
source of origin of the Chamois Buttr Products.
16.

The purple-and-yellow color scheme used in Chamois Buttr Products is

not functional, and serves only to identify individual products as belonging to Pacelines
Chamois Buttr product line.
Defendants Product
17.

Defendant Body Glide manufactures and sells a variety of skin products

marketed under its Glide brand, including its Original Anti-Blister, Anti-Chafing Balm,
Skin Protection Balm for Her, Skin Glide Balm, and Foot Glide Blister Resister
Balm.
18.

For each of the products listed in the previous paragraph, Defendant uses

packaging with white lettering against a respective solid-colored background.

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19.

Defendant also manufactures and sells a product marketed as Chamois

Glide Balm (Chamois Glide).

20.

Defendants Chamois Glide is marketed especially to cyclists.

21.

Unlike its other Glide products, Defendants Chamois Glide does not use

white lettering on its packaging.

22.

Instead, the packaging of Defendants Chamois Glide has been altered

to feature a purple-and-yellow color scheme.

23.

The purple-and-yellow color scheme used by Defendant for Chamois

Glide imitates the purple-and-yellow color scheme of the Chamois Buttr Products, and
is confusingly similar.
24.

By using a purple-and-yellow color scheme for Chamois Glide, Defendant

hasin connection with a good or container for goodsused symbols, false designations
of origin, or false or misleading representations of fact, which are likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of Chamois Glide with one or more Chamois Buttr Products.

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25.

Defendants willful intention to imitate Chamois Buttr Products

packaging is evident by the departure from the white-and-solid-color scheme used for
Defendants other Glide products, and adopting the purple-and-yellow color scheme for
Chamois Glide only.
26.

The purple-and-yellow color scheme used by Defendant for Chamois

Glide product is likely to cause confusion and mistake in the minds of the purchasing
public, and, in particular, falsely creates the impression that the Chamois Glide product
is authorized, sponsored, endorsed, licensed, or approved by Paceline, when in fact it is
not.
27.

The purple-and-yellow color scheme used by Defendant for Chamois

Glide has already caused actual confusion and mistake in the minds of the purchasing
public, as the packaging for Chamois Glide products was brought to the attention of
Paceline at a recent trade show, where others expressed confusion as to the existence of a
connection or affiliation with Chamois Glide.
28.

Defendants use of the purple-and-yellow color scheme was done

deliberately, willfully, and maliciously in an effort to capitalize on the good will

associated with Chamois Buttr Products.
29.

Paceline has demanded that Defendant cease and desist its infringement of

Pacelines trade dress, but Defendant refused and continues to refuse to comply.
30.

Defendants continued use of confusingly similar trade dress presents

significant risk to Pacelines sales, goodwill, and reputation with both the purchasing
public and persons in positions to influence purchasing decisions.

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31.

If Defendant is not immediately enjoined from continuing to use

confusingly similar trade dress, Paceline will suffer irreparable harm through lost sales,
lost benefits of its promotional materials, lost good will, and other injury to Pacelines
relations with present and prospective customers.
32.

Defendants use of infringing trade dress is ongoing, and will continue to

damage Paceline unless enjoined by this Court from so doing.

COUNT II:
MISSOURI COMMON-LAW CLAIMS OF
UNFAIR COMPETITION AND DECEPTIVE MARKETING
33.

Plaintiff herein incorporates by reference all of the allegations set forth

above in paragraphs 1 through 31 of this Verified Complaint.

34.

By packaging Chamois Glide in purple-and-yellow color scheme,

Defendant madein connection with the marketing of a gooda representation likely to

deceive or mislead prospective purchasers by causing the mistaken belief that Defendant
is Paceline; or that Defendant is the agent, affiliate, or associate of Paceline; or that the
Chamois Glide product is related to Chamois Buttr Products, or is otherwise produced,
sponsored, or approved by Paceline.
35.

Defendants representation was to the commercial detriment of Paceline,

in that it is likely to affect the conduct of a significant portion of prospective purchasers,

and there is a reasonable basis for believing that the representation has caused or is likely
to cause a diversion of trade from Paceline to Defendant, or harm to Pacelines reputation
or good will.
36.

The actions of Defendant described above, constitute an attempt to trade

upon the reputation and good will of Paceline and its Chamois Buttr Products.

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37.

Paceline has demanded that Defendant cease and desist its unfair

competition and deceptive marketing practices, but Defendant has refused and continues
to refuse to comply.
38.

If Defendant is not immediately enjoined from continuing its unfair

competition and deceptive marketing practices, Paceline will suffer irreparable harm
through lost sales, lost benefits of its promotional materials, lost good will, and other
injury to Pacelines relations with present and prospective customers.
39.

Defendants damage to Paceline is ongoing, and will continue to damage

Paceline unless enjoined by this Court from so doing.

WHEREFORE, Plaintiff Paceline Products, Inc. prays for judgment against
Defendant W Sternoff LLC, d/b/a Body Glide, and respectfully requests that this Court:
1.

Temporarily

restrain,

and

preliminarily

and

permanently enjoin

Defendant, its agents, servants, and employees from infringing Pacelines trade dress;
from further unfair competition; from falsely designating the origin of Defendants
product; and, specifically from continued use of a purple-and-yellow color scheme in of
packaging in connection with its Chamois Glide product;
2.

Require Defendant to deliver up for destruction or repackaging all existing

Chamois Glide products infringing on Pacelines trade dress;

3.

Require Defendant to account for all gains, profits and advantages derived

from its infringement, unfair competition, and deceptive marketing practices; and order
that all gains, profits, and advantages derived by Defendant from its acts of infringement
and other violations of law be deemed to be held in constructive trust for the benefit of
Plaintiff;

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4.

Grant to Paceline an award and recovery of Defendants profits, recovery

of damages sustained by Plaintiff, and the cost of this action, including attorney fees, as
provided by 15 U.S.C. 1117;
5.

Award punitive damages as may be determined to be just and equitable by

the Court;
6.

Grant to Plaintiff interest on all damages so awarded; and

7.

Grant to Plaintiff such further relief as the may be equitable and just.
DEMAND FOR JURY TRIAL

Demand for jury trial on all issues so triable is hereby made under FED. R. CIV. P.
38(b) and L.R. 38.1.

Respectfully Submitted,
LATHROP & GAGE LLP

By: /s/ Joshua B. Christensen

Joseph L. Johnson
#45456
jjohnson@lathropgage.com
Joshua B. Christensen
#63759
jchristensen@lathropgage.com
910 E. St. Louis, Suite 100
Springfield, Missouri 65806
Telephone:
417.886.2000
Fax:
417.886.912
Attorneys for Plaintiff

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