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Nationwides claims arise under the patent laws of the United States, Title 35,
United States Code, the Lanham Act, Title 15, United States Code, and Florida statutory and
common law.
PARTIES
1.
Weldon is a Florida corporation with its principal place of business at 4914 Joanne
This Court has jurisdiction over this action under 28 U.S.C. 1331, 1338 and
4.
1367.
1391(c).
5.
This Court has personal jurisdiction over Weldon. Weldon has submitted to
personal jurisdiction in this Court because, inter alia, it resides and is transacting business in this
judicial district.
FACTUAL BACKGROUND
I.
Nationwides Business:
6.
For over twenty (20) years, Nationwide has been a leading designer and
manufacturer of quality hardware and components for the building materials industry.
Nationwides products include fencing and railing hardware, window and door components, storm
and screen door products, and custom design and manufacturing services. Nationwides products
range from simple components to high tech solutions and involve a wide range of materials,
including steel, aluminum, stainless steel, brass, plastics and die castings.
7.
II.
Weldons Business:
8.
Weldon markets itself as the industry leader for hardware in chain link, vinyl,
wood, aluminum, and steel ornamental fencing hardware and as a one stop source for all
hardware needs in the fencing industry.
III.
Market Competition:
10.
Nationwide and Weldon are competitors in the fencing hardware industry. The
competition between Nationwide and Weldon is further enhanced by their geographic proximity,
with both entities headquartered in Tampa, Florida.
IV.
Weldon publishes a number of catalogs for its products, which are available to the
public and accessible on its website, including a chain link fencing catalog. In its catalogs and
other marketing materials, Weldon advertises a number of gate hinges, including Weldon Part Nos.
WI-RGH-500, WI-RGH-501, WI-RGH-505 and WI-1022-16, as having patent pending status.
12.
The patent pending designation of these products in the Weldon catalogs and
marketing materials dates back to at least 2009, as evidenced by the representative samples of
Weldons catalogs and marketing materials attached hereto as Composite Exhibit A and
incorporated herein by reference. Similar designations appear in Weldons 2013 Chain Link
Hardware Catalog, excerpts of which are attached hereto as Exhibit B and incorporated herein
by reference. Upon information and belief, these marketing materials, or similar marketing
materials, continue to be used by Weldon.
13.
Upon information and belief, any patent application that would have supported a
patent pending designation of these products in 2009 would have been concluded before 2015.
14.
Upon information and belief, Weldon marks certain products, specifically the
Weldon Part No. WI-60** series hinges, with Patent D624388. Photographs of a representative
Weldon Part No. WI-60** series hinge with the marking Patent D624388 are attached hereto as
Composite Exhibit C and incorporated herein by reference.
A representative sample of
Weldons marketing materials related to the Weldon Part No. WI-60** series hinges is attached
hereto as Exhibit D and incorporated herein by reference.
15.
The designs of the Weldon Part No. WI-60** series hinges marked Patent
D624388 differ substantially from the design of the product identified in the schematics for U.S.
Patent No. D624388 (388 Patent) on file with the Unites States Patent and Trademark Office.
A true and correct copy of the 388 Patent is attached hereto as Exhibit E and incorporated herein
by reference.
16.
requesting that it substantiate the patent pending designation of its gate hinges, including
Weldon Part Nos. WI-RGH-500, WI-RGH-501, WI-RGH-505 and WI-1022-16, and the marking
of the Weldon Part No. WI-60** series hinges with Patent D624388 or, alternatively, cease and
desist using the patent pending designation and the Patent D624388 marking. To date,
Weldon has not provided such substantiation and, upon information and belief, continues to use
the false marking in connection with the marketing and sale of its products.
V.
Weldons Infringement:
17.
Nationwide holds an exclusive license to use U.S. Patent No. 5,715,574 (the 574
Patent), pursuant to a Patent License Agreement with Delair Group, LLC dated January 1, 2012
(the License Agreement). The License Agreement also provides that Nationwide has the
exclusive right to enforce the 574 Patent and pursue any potential infringement at its sole
discretion.
18.
The 574 Patent was issued on February 10, 1998 and is entitled Adjustable Self-
Closing Hinge Assembly. A true and correct copy of the 574 Patent is attached hereto as Exhibit
F and incorporated herein by reference.
19.
Upon information and belief, Weldon is, without authority, manufacturing, offering
to sell, and selling Weldon Part No. WI-122-BK, which infringes on the 574 Patent. An excerpt
from Weldons Ornamental Hardware Catalog that includes Weldon Part No. WI-122-BK is
attached hereto as Exhibit G and incorporated herein by reference.
20.
requesting that it cease and desist from infringing on the 574 Patent. In response, Weldon did not
contest that its product utilized the 574 Patent. To date, however, Weldon has not established any
right to use the 574 Patent and, upon information and belief, continues to use the 574 Patent
without authorization.
21.
All conditions precedent to the relief sought herein have occurred or have been
action and is obligated to pay its attorneys a reasonable fee for their services.
COUNT I
(False Marking 35 U.S.C. 292)
23.
24.
25.
Weldons designations in its marketing materials that Weldon Part Nos. WI-RGH-
500, WI-RGH-501, WI-RGH-505, and WI-1022-16 have patent pending status are false.
26.
Weldons markings of the Weldon Part No. WI-60** series hinges with the Patent
Upon information and belief, Weldon Part Nos. WI-RGH-500, WI-RGH-501, WI-
28.
Upon information and belief, the Weldon Part No. WI-60** series hinges do not
utilize the design subject of the 388 Patent and those designs are not otherwise patented.
29.
The false patent pending designations and the Patent D624388 markings were
As a result of Weldons false marking of its products, Nationwide has suffered and
continues to suffer irreparable harm, for which there is no adequate remedy at law, damages and
competitive injury.
WHEREFORE, Plaintiff, Nationwide Industries, Inc., respectfully requests that this Court
grant permanent injunctive relief and damages against Defendant, Weldon Industries, Inc., award
Plaintiff its reasonable attorneys fees and costs incurred in this action, and grant such further relief
as the Court deems appropriate.
COUNT II
(Violation of the Lanham Act 15 U.S.C. 1125(a))
31.
32.
This is a claim for false advertising under the Lanham Act, 15 U.S.C. 1125(a).
33.
Weldons designations in its marketing materials that Weldon Part Nos. WI-RGH-
500, WI-RGH-501, WI-RGH-505, and WI-1022-16 have patent pending status are false and
misleading.
34.
Weldons markings of the Weldon Part No. WI-60** series hinges with the Patent
D624388 designation, which are also included in Weldons marketing materials, are false and
misleading.
35.
Weldons false and misleading conduct associated with the marketing of its
products has actually deceived customers or has had the tendency to deceive a substantial portion
of the targeted audience.
36.
Weldons false and misleading conduct associated with the marketing of its
and the Weldon Part No. WI-60** series hinges have traveled and are travelling in interstate
commerce.
38.
As a result of Weldons false and misleading conduct, Nationwide has suffered and
continues to suffer irreparable harm, for which there is no adequate remedy at law, damages and
competitive injury.
WHEREFORE, Plaintiff, Nationwide Industries, Inc., respectfully requests that this Court
grant injunctive relief and damages against Defendant, Weldon Industries, Inc., award Plaintiff its
reasonable attorneys fees and costs incurred in this action, and grant such further relief as the
Court deems appropriate.
COUNT III
(Misleading Advertising - Fla. Stat. 817.41.)
39.
40.
This is a claim for misleading advertising under Fla. Stat. 817.41 (2014)
41.
Weldons designations in its marketing materials that Weldon Part Nos. WI-RGH-
500, WI-RGH-501, WI-RGH-505, and WI-1022-16 have patent pending status are
misrepresentations of material facts.
42.
Weldons markings of the Weldon Part No. WI-60** series hinges with the Patent
D624388 designation, which are also included in Weldons marketing materials, are
misrepresentations of material fact.
43.
Weldon knew or should have known, and knows or should know, of the falsity of
these representations.
44.
Weldon intended and intends that the misrepresentations induce consumers to rely
on them.
45.
to suffer irreparable harm, for which there is no adequate remedy at law, damages and competitive
injury.
WHEREFORE, Plaintiff, Nationwide Industries, Inc., respectfully requests that this Court
grant injunctive relief and damages against Defendant, Weldon Industries, Inc., award Plaintiff its
reasonable attorneys fees and costs incurred in this action, and grant such further relief as the
Court deems appropriate.
COUNT IV
(Deceptive and Unfair Trade Practices - Fla. Stat. 501.201, et seq.)
46.
47.
This is a claim for violation of Floridas Deceptive and Unfair Trade Practices Act
Weldons designations in its marketing materials that Weldon Part Nos. WI-RGH-
500, WI-RGH-501, WI-RGH-505, and WI-1022-16 have patent pending status and markings of
the Weldon Part No. WI-60** series hinges with the Patent D624388 designation, which are
also included in Weldons marketing materials, constitute unfair and deceptive trade practices.
49.
suffered and continues to suffer irreparable harm, for which there is no adequate remedy at law,
damages and competitive injury.
WHEREFORE, Plaintiff, Nationwide Industries, Inc., respectfully requests that this Court
grant injunctive relief and damages against Defendant, Weldon Industries, Inc., award Plaintiff its
reasonable attorneys fees and costs incurred in this action, and grant such further relief as the
Court deems appropriate.
COUNT V
(Unfair Competition)
50.
51.
This is a claim for unfair competition under the Lanham Act, 15 U.S.C. 1125(a)
Weldon Part Nos. WI-RGH-500, WI-RGH-501, WI-RGH-505, and WI-1022-16 have patent
pending status and markings of the Weldon Part No. WI-60** series hinges with the D624388
designation, which are also included in Weldons marketing materials, constitute deceptive and/or
fraudulent conduct, resulting in a likelihood of consumer confusion.
53.
irreparable harm, for which there is no adequate remedy at law, damages and competitive injury.
WHEREFORE, Plaintiff, Nationwide Industries, Inc., respectfully requests that this Court
grant injunctive relief and damages against Defendant, Weldon Industries, Inc., award Plaintiff its
reasonable attorneys fees and costs incurred in this action, and grant such further relief as the
Court deems appropriate.
COUNT VI
(Patent Infringement 35 U.S.C. 281)
55.
56.
57.
The 574 Patent, entitled Adjustable Self-Closing Hinging Assembly, was duly
and legally issued to Frederick R. Schall by the United States Patent and Trademark Office on
February 10, 1998, and subsequently assigned to Delair Group, LLC.
58.
exclusive license to use and enforce the 574 Patent, including the exclusive right to pursue any
potential infringement of the 574 Patent.
59.
Upon information and belief, Weldon is, without authority, manufacturing, offering
to sell, and selling Weldon Part No. WI-122-BK, which infringes on the 574 Patent.
60.
and continues to suffer irreparable harm, for which there is no adequate remedy at law, and
damages.
WHEREFORE, Plaintiff, Nationwide Industries, Inc., respectfully requests that this Court
grant injunctive relief and damages against Defendant, Weldon Industries, Inc., award Plaintiff its
reasonable attorneys fees and costs incurred in this action, and grant such further relief as the
Court deems appropriate.
JURY TRIAL DEMAND
Plaintiff demands trial by jury on all issues so triable.
10
s/ Paul D. Watson
Paul D. Watson
Florida Bar No. 957224
pwatson@sbwlegal.com
J. Carlton Mitchell
Florida Bar No. 495875
cmitchell@sbwlegal.com
SIVYER BARLOW & WATSON, P.A.
401 East Jackson St., Suite 2225
Tampa, Florida 33602
Telephone: (813) 221-4242
Facsimile: (813) 227-8598
Attorneys for Nationwide Technologies, Inc.
11
HIN.GES
Wl-RGH-500
RES IDENTIAL SPRING HINGE:
1 1/2"
x 1 J/8''
2 1/2"
SELF CLOSING
HEAVY DUTY ALUMINIM DIE CAST
HOUS ING
ADJUSTABLE .HEAVY DUTY
STAINLESS STEEL SPRING AND PIN
MAINTENANCE FREE
PATENT PENDING
WE IGH T : 31b ea.
BOX QTY: 12
Wl-RGH-501
COMMERCIA L , RES IDENTIAL SPRING HINGE:
2 1/2"
1 5/8"
SELF CLOSING
HEAVY DUTY ALUMINIM DIE CAST
HOUSING
ADJUSTABLE. HEAVY DUTY
STAINLESS STEEL SPRING ANO PIN
MAINTENANCE FREE
PATE N T PEND ING
WEIGHT: Jib ea.
B OX QTY: 12
Wl-RGH-505
COMMERCIAL , RES IDENTIAL SPRING HINGE:
2"
x 2"
SELF CLOSING
HEAVY DUTY ALUMINIM DIE CAST
HOUSING
ADJUSTABLE, HEAVY DUTY
STAINLESS STEEL SPRING ANO PIN
MAINTENANCE FREE
PATENT PENDING
WE IGHT: Jib ea.
BOX QTY: 12
Wl-1022-16
J"
x 1 5/8"
SELF CLOSING
HEAVY DUTY ALUM INIM D IE CAST
HOUSING
ADJUSTABLE. HEAVY DUTY
STAINLESS STEEL SPRING ANO PIN
MAINTENANCE FREE
PATENT PENDING
WEIGHT: J .21b ea.
BOX QTY: 12
8 .1
Weldon Industries
Custom Hardware
Manufacturing
Office-813-248-9800 ,
Fax-813-248-9900
CHAIN
PRODUCTS
I.,,J!VI{
CATAL,OG
TABLE OF CONTENTS:
A.
8.
C.
D.
E.
Cantilever Products
Hinges
Latches
Internal Track Slide Gate
Systems
Brackets & Misc.
REV'D: 1/7/2009
Quality Products
Dependable
Service
Short Lead Times
Custom Designs
COMPETITIVE
PRICING
EXHIBIT "B''
Wl-RGH-500-BK
( Pjterii P.en<lin~"'\
~.
..
_}
12 Pcs@ 36 Lbs
- Self Closing
- Heavy Duty Aluminum Die Cast Housing
Maintenance Free
/.
>i\
mm!
12 Pcs@ 39 Lbs
1."J Jfiirri"1!fr
Wl-ISPH
W ELDON
Ph (813) 248-9800
EXHIBIT "D''
Id
WELDCN
INDUSTRIES
PARTS.~
DF'F'ICE B13.24B.9SDD
F'AX B13.24B.99DD
www.wiaEM.CCM .
V I NYL GATE
.'
OUR PRODUCTS U 9E PASSIVATED 304 STAINLESS STEEL UVSTABLETGIC POLY POWDER
Wl-6000-N-SS
SELF CLOS ING ADJUSTABLE:
SHORT TO SHORT
CASE QTY
12 PAIRS
WEIGHT/CASE
281bs
Wl-6010-N-SS
SELF CLOSING ADJUSTABLE
SHORT TO LONG
CASE QTY
12 PAIRS
WEIGHT/CASE
281bs
EXHIBIT ''E"
m)
(54)
(IO)
Eland
(45)
SPRING HINGE
(75)
lnvcn lOr:
(73)
Tem1.
14 Yenn
(21)
(22)
Piled:
(51)
(52)
(58)
(56)
References C ited
4,381 ,SSO A
5,199.2 18 A
0396,626 S
D443,196 .S
7,240.400 02
0~4 8,044 S
L-
US D624,388 S
**
( 0
Patent No.:
Date of Patent:
OIBER PUBLICATIONS
Oare: Hnrdwa.rc TTAdc Cab log 2003, D&D Technologies (USA) Inc.,
Hua1 i.1121nn B~eh. CA, p. 21, "TmClosc(R) &!If-Closing, MuJlj.
Adj~t Hinge".
cited by ex;iminer
Cw\IM
DESCRIPTION
FIG. 1 is a side symmetriclll leJI and righl view of a spring
hinge showing our new design;
FJG. 2 is a rear eud view thereof;
FIG. 3 is a froot end view tbereof;
rJG. 4 is a bottom view tbett.-of; ru1d,
FIG. Sis a top view thereof.
l Claim, S Druwlng Sheets
..
U.S. Patent
US D624~388 S
Sheet I of 5
_)
111
11
U.S. Patent
US D624,388 S
Sheet 2 of 5
I .
01 ,,
/ 1111
_ _J
l --
FIG. 2
U.S. Patent
Shecc 3 of 5
o-
-=-o
l'_' -
~I }
FIG. 3
U.S. Patent
VS D624,388 S
Sheet 4 ofS
0
11111
0
I
0
11
'I
1111 111
U.S. Patent
~
111
US D624,388 S
Sbccc 5 of 5
''I \--~------....-(/
I
11' l
I ' 1/
I
/
11111111
0 '1/1'
II
""'""'-.,----,.-'>-"-/
-( 0
I
I
I 1/
(!)
Ll
BllSENOER
Mark C. Weldon
Weldon Industries, Inc.
4914 Joanne Kearney Boulevard
Roi#
~1m1~11111m11m111i1111111111i1~11 111m1111u111u~~
4410.2
lrM>i<o#
PO#
Otpt#
TAMPA, FL 33619
TRl(f
IJiill
34 MCFA
33619
Fl.OS
TPA
https://www.fedex.com/shipping/html/en/PrintlFrame.html
4/10/20 15
EXHIBIT "F''
111111111111111
US005715574A
451
[54)
[75)
Inventor:
[73]
[21]
[22]
Filed:
Int. Cl.
[58]
References Cited
U.S. PATENI' DOCUMENTS
29,212
6/1860
3,978,551
9/ 1976
4,073,038 2/1978
4,817,242 4/1989
5,572,768 11/1996
5,584,100 12/1996
19
'8
. , ""'-lo
I
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r' ,
3-,,_
I
I
I
'
IJ ~
,.fa
f'.
'
'
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I-,,_
,
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!
6
.I
'
0
19
1a
18 .
'
' -J
10
'
l,_ .J
"f"i ~
~ i ~I "
!
2-,,_
17
18n
5,715,574
ABSTRACT
(57)
(51]
(52]
(56]
Patent Number:
Date of Patent:
[111
r191
~!
7
!
' '
l .j
13
'
U.S. Patent
Sheet 1of3
5,715,574
17
18
19
18
~1a
FIG. 1
t.\_ 7
0
19
L!
'--,
FIG. 2
16
15
'
r - 1----- --
i- --1,:-:;r--.l.-.1 ______ -
la
15
00.
19
----~(------~-~--,
- - :--- - -----~
-~
--- ------------
L-------------------
- - - - - 1 - T ________ J
\
'l
16
~
?'
.....
13
11
FIG. 3
10
13
.....
r:n
er
~
4
13
12
~
N
~
(M
FIG . 4
....VI
"
....fJl
VI
"
U.S. Patent
5,715,574
Sheet 3 of 3
13
1, 1a
9, 12
FIG. Sa
l
13
21
9, 12
FIG. Sb
5.715,574
ASSEMBLY
BACKGROUND OF THE INVENTION
10
20
5.715,574
"
5,715,574
EXHIBIT "G"
Triad Finials
ti
;.part Number,,.~:
RSUMAJ
.--i
~;~.:.
_,.,.,.! ) Description'
Wl-ITF-740
Wl-ITF-740-BK
INUMAJ
Victorian Finials
.;r,;t:;,Descrlotlot.-~.~;:;. r.:.i-f~~
:P.art. Numbec: ...-.o f';:i?i:..i.
RSUVIC
5/B" Victorian Flnlal MUI Finish
RGUVIC
%" Victorian Finial Mill Finish
Call for Case Qty's/Welghls .:.
Estate Hinge - Aluminum
P.art Number::-..::
Wl-IH-AE
Wl-IH-AE-2.5
:..;.~;;.
~ Part Number.i::
"
Bl
Steel Plate
Wl-AIH-BK
Wl-AIH-2.5-BK
2 ~ Industrial Aluminum Hinge
Case Qty/Weight: 20 Pairs @ 35 Lbs
Commercial Aluminum Hinge
:f>art Numbec :f,?-'.\ll ri:,1,;;:;,fNi/'. ,:; ;;.. Descrlptlom:,:!/\;tf:~s .-.....
Wl-ELH-2
2 x 2" Commerclal Aluminum Hinge
Call for Case Cly's/Weights ..
..,.
i~1
Wl-AEH-1x2
1" x 2 Resldenllal Aluminum Hinge
'.. ,: :.:\:.:,; ::.,:
Call for Case Qly's/Welghts
Nylon Spring Hinge
l;P,art Number.;;r.~!!Ql?~"!~~'fil.~Wii!~;..;11 0escrlot1on ~~~'~h'.%'. "'
I Wl-1017-SN
I
Black Nylon Spring Hinge
I Case Qty/Weight: 100 Pcs @42 Lbs~.:;;, .
: .-
Wl-SCHN-VHA
,,,: ..
Wl-JH500-N
Black/Flange Size 5"(H)X3.25"(W)X1"(D)
Case Qly/Welght::12 PaJrs:@37. Ll~s~) ...:
:;,,.
. ....
~l
...
:~
0 Part:Numoer~~1~Ct~;~:ll':.~.Doscrl otlon}.i.l1l~~;{,i' ~*
Wl-JH501-N-BK
Black/Both Legs 1"X4.5"
Case Qty/Weight: 25P.CS @ 32 Lbs* ,~.
Self Closing Adjustable Hinge
Block Hinge
Wl-BH
Wl-BH-SA
Wl-JH500-BK
I
I
wt-JH500-BZ
Straight Leg 2" X 5"
Case Qty/Weight: 50 Palrs@33 Lbs
.<.
Wl-JH501 -BZ
"
I Wl-SBH-Bl-A I
Aluminum Block Hinge
I Case Cly/Weight: 16 Pcs @ 46 Lbs
'
Weldon Industries
Custom Hardware
Manufacturing
CHAIN LINK
HINGES
Office-813-248-9800 1 Fax-813-248-9900
Wl-RGH-500
1 1/2"
2 1/2"
x 1 3/8"
SELF CLOSING
MAINTENANCE FREE
PATENT PENDING
1 1/2"
Wl-RGH-501
COMMERCIAL, RESIDENTIAL SPRING
HINGE:
2 1/2"
x 1 5/8"
SELF CLOSING
MAINTENANCE FREE
PATENT PENDING
WEIGHT: 31b ea.
BOX QTY: 12
Wl-1022-16
COMMERCIAL, INDUSTRIAL
SPRING HINGE:
3" x 1 5/8"
SELF CLOSING
MAINTENANCE FREE
PATENT PENDING
WEIGHT: 3.21b ea.
BOX QTY: 12
B .1