Case: 1:12-cv-05437 Document #: 1 Filed: 07/10/12 Page 1 of 26 PageID #:1

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

ROBERT BOSCH LLC, CIVIL ACTION NO. Plaintiff, v. ILLINOIS TOOL WORKS INC., Defendant. JURY TRIAL DEMANDED

COMPLAINT Plaintiff Robert Bosch LLC (Plaintiff or Bosch), through its attorneys, for its complaint against defendant Illinois Tool Works Inc. (Defendant or ITW), avers as follows: JURISDICTION AND VENUE 1. This action arises under the patent laws of the United States, Title 35 of the United

States Code (for example, 271, 281, 283, 284 and 285) as hereinafter more fully appears. This is also a civil action for trademark infringement and unfair competition arising under the trademark laws of the United States, 15 U.S.C. 1051, et seq. (the Lanham Act) and under the common law of the State of Illinois. 2. This Court has jurisdiction over the subject matter of the action pursuant to 28

U.S.C. 1331 and 1338, as well as 15 U.S.C. 1121 and 28 U.S.C. 1367(a). 3. Venue is proper in this District under 28 U.S.C. 1391(b) and (c).

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COUNT I Infringement of U.S. Patent No. 6,553,607 4. On April 29, 2003, United States Patent No. 6,553,607 (the 607 patent, attached

as Exhibit A) was duly and legally issued for an invention in a windshield wiper blade. Bosch is the owner of the 607 patent. 5. ITW has infringed and is still infringing the 607 patent directly and indirectly by

making, importing, offering for sale, using, and/or selling windshield wiper blades such as the Rain-X Fusion wiper blade (the Accused Product), and will continue to do so unless enjoined by this Court. 6. Bosch has no adequate remedy at law against ITWs infringement and, unless ITW

is enjoined from its infringement of the 607 patent, Bosch will suffer irreparable harm. 7. On information and belief, ITW has had knowledge of the 607 patent since at

least February 28, 2011, and knows or should have known that the Accused Product, when used with side lock (or P & H or slide pin) wiper arms, directly infringes the 607 patent. 8. On information and belief, ITW contributes to and induces infringement of the

607 patent by advertising the infringing use in its promotional materials, and by instructing purchasers to infringe by posting installation instructions and an installation video on its website and including installation instructions with the Accused Product that show how to install the same on a side lock wiper arm. Such infringement is and continues to be willful and deliberate. 9. On information and belief, ITW made and continues to make such advertisements

and provides instructions with the knowledge and intent that use of the Accused Product with a side lock wiper arm would infringe the 607 patent.

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10. 607 patent. 11.

The Accused Product forms a material component of the claimed invention of the

The Accused Product includes a separate adapter that is intended to be used with a

side lock wiper arm and is configured to do so. 12. The Accused Product with the associated side lock connector is not a staple

article or commodity of commerce and has no non-infringing uses. 13. As a result of ITWs acts of infringement, Bosch has suffered and will continue to

suffer damages in an amount to be proven at trial. 14. The acts of infringement set forth above have occurred with full knowledge of the

607 patent and have been willful and deliberate, making this case exceptional within the meaning of the United States patent laws. COUNT II Trademark Infringement and Unfair Competition (Federal) 15. 16. 1125(a). 17. As described in detail below, ITWs adoption and use of FUSION as a trademark Bosch incorporates paragraphs 1-14 above as if fully set forth at length. This cause of action arises under Section 43(a) of the Lanham Act, 15 U.S.C.

for ITWs wiper blade products is likely to cause confusion in the marketplace concerning the source of ITWs products and/or affiliation with Bosch.

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Bosch Has Priority 18. Bosch has been selling auto parts under the FUSION trademark since at least as

early as 2006. According to ITWs trademark application, ITW just introduced its FUSION product in March of this year. Thus, Bosch indisputably has prior rights in the FUSION mark. Boschs Mark Is a Strong Mark 19. Under the spectrum of trademarks, Boschs FUSION mark is considered an

inherently distinctive mark because it is an arbitrary mark, i.e., FUSION is an existing word but is applied arbitrarily in the context of a spark plug product. No showing of secondary meaning is required. Only fanciful marks are considered more distinctive than arbitrary marks. 20. Bosch has made substantially exclusive use of its FUSION mark in the auto parts

industry nationwide since at least as early as 2006. Bosch is unaware of any other auto parts being sold under a FUSION mark. ITWs introduction of a second FUSION mark into the auto parts market, after years of Boschs exclusive use of FUSION, will lead to confusion in the marketplace. 21. Bosch's FUSION mark has acquired strength through extensive promotion. Bosch

has spent millions of dollars on advertising its FUSION products on a nationwide basis. Bosch has advertised its FUSION products in print, catalogs, and other media including industry magazines, point of sale promotions and signage, web campaigns, and in-store flyers (e.g., Walmart circulars, AutoZone circulars). Boschs FUSION products have generated millions of dollars in sales throughout the United States for Bosch. The significant advertising expenditures and sales of FUSION products demonstrate the strength of the FUSION mark and its recognition among auto parts consumers.

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22.

Because Boschs mark is strong, it is accorded a wider scope of protection, which

is not limited to identical goods. A strong mark will be protected against infringements arising out of use in connection with non-competing but related goods. The Marks Are Identical 23. ITWs FUSION mark is identical to Boschs FUSION mark in terms of

appearance, sound, and meaning. 24. ITW uses its FUSION mark in association with Rain-X but Rain-X signifies

an entire line of wiper and windshield cleaning fluid products dating back to 1972. In addition to the FUSION wiper product, the Rain-X line has included the WEATHERBEATER and LATITUDE wiper products. 25. FUSION is presented separately on the packaging from Rain-X and in a

different font and background. In fact, the FUSION font is closely similar to the font used by Bosch for its FUSION product, with similar shading around the letters. The Products Are Automobile Parts 26. Bosch and ITW use their FUSION marks for auto parts for the Do-It-Yourself

car owner namely, spark plugs and wiper blades, respectively. While not identical products, in analyzing the similarity of products, the question is whether the products are the kind the public attributes to a single source. Here, Bosch also sells wiper blade products. Thus, wiper blades and spark plugs are associated with a single source Bosch. 27. Bosch and ITW are direct competitors in the auto parts marketplace. They

participate in the same trade shows and sell their products to the same retail chains. Wiper blades

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are the type of product that Bosch customers would expect to associate with Bosch. Bosch sells wiper blades in direct competition with ITW. For example, at Walmart stores, the Bosch and ITW wiper products are sold side-by-side. 28. Accordingly, there is a reasonable basis for consumers to presume an affiliation

between Bosch and ITWs FUSION wiper blades. Both companies carry similar lines of products. Where companies compete, customers are more likely to believe that two similarly-named product types come from the same source. The Products Are Sold in Close Proximity and in the Same Stores 29. The FUSION products at issue in the case are sold in the same stores and in the

same sections of those stores. For example, both Boschs and ITWs FUSION products are found in Walmart automotive sections, often on the same aisle. The channels of trade are unified. 30. In addition, there is a relationship in the use, promotion, distribution and sales

between the goods of the parties, e.g., Bosch customers purchase wiper blades and ITW customers purchase spark plugs. 31. Bosch and ITW are direct competitors in the auto parts market generally, and in

wiper blades specifically. They exhibit at the same trade shows, such as AAPEX and SEMA. They sell their products into the same channels of distribution and routinely come in contact with one another in the business world. Consumers Are Not Likely to Exercise Care in Purchasing the FUSION Products 32. The type of low-cost purchase in this case a $5 spark plug or a $10 wiper blade

constitutes an impulse-type purchase where purchasers will not exercise a great deal of care in the

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purchasing decision and are thus more likely to make a mistake or draw incorrect conclusions about sponsorship or affiliation. Evidence of Actual Confusion 33. ITWs use of FUSION only recently commenced in March of this year; thus,

investigation into instances of actual confusion has just begun. Given the similarities described herein, Bosch expects that, while not required for a finding of likelihood of confusion, discovery will nonetheless reveal actual confusion in the marketplace as to source of the FUSION products and/or affiliation with Bosch. ITW Is Intentionally Infringing Upon Boschs Rights 34. Given that Bosch and ITW are direct competitors, ITW was undoubtedly aware of

Boschs FUSION product. ITW nevertheless selected the identical name for a wiper product designed to directly compete with Boschs wiper blade products. 35. ITW is attempting to trade on Boschs goodwill and/or to mislead the public into

believing that its wiper blades are in some way affiliated with Bosch. Bosch is an industry leader in the wiper blade market. By associating itself with Bosch, ITW gains instant credibility. ITW did not act in good faith in the selection of an identical mark for a related product. 36. Furthermore, after Bosch provided ITW with notice of Boschs objection to ITWs

use of the FUSION mark, ITW refused to cease or even phase-out use of the FUSION mark. ITWs decision to continue using the mark after it learned of Boschs opposition to such usage constitutes bad faith.

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37.

Finally, ITWs copying of Boschs name is part of a pattern and practice of

imitating Boschs products. For example, ITW uses the identical pillow case packaging for its wiper blades that Bosch uses for its Marathon wiper blades, which are sold side-by-side at Walmart stores. Consumer Confusion Is Likely 38. A balancing of the trademark infringement factors listed above leads to the

conclusion that consumers are likely to be confused Boschs mark is strong, ITW adopted the identical mark, the goods are related, the channels of distribution are the same, the purchasers are the same, the purchasers are not likely to exercise a high degree of care, and ITW has acted with knowledge of Boschs rights. 39. The use of the mark FUSION in connection with ITWs sale of its automotive

parts constitutes trademark infringement and unfair competition with Bosch in violation of Section 43(a) of the Lanham Act because such use is likely to cause confusion, mistake, and deception as to the origin of goods sold in connection with that mark and is likely to mislead consumers and potential consumers into believing that such goods are affiliated with, or are sponsored, authorized, approved, or sanctioned by Bosch, or that goods sold in connection with Boschs FUSION mark are affiliated with, or are sponsored, authorized, approved, or sanctioned by ITW. 40. The use of the mark FUSION in connection with ITWs sale of its automotive

parts also constitutes a false representation and false designation of origin in violation of Section 43(a) of the Lanham Act in that such use tends to describe or represent that goods sold in

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connection with the name are affiliated with, or are sponsored, authorized, approved, or sanctioned by Bosch. 41. Bosch is injured by this infringement and unfair competition in many ways,

including lost sales and damage to reputation. ITW also improperly benefits from this false association. For example, a customer familiar with Boschs FUSION spark plugs would be more inclined to try a FUSION wiper blade, if he believes it comes from the same source. A customer unsatisfied with ITWs FUSION wiper blade is unlikely to purchase Boschs FUSION spark plugs. Similarly, if unsatisfied consumers associate the ITW FUSION wiper blade with a

misperceived line of Bosch FUSION products, Boschs business reputation is damaged. 42. ITWs acts of infringement and unfair competition, unless enjoined by this Court,

will continue to cause Bosch to sustain irreparable damage, loss and injury, for which Bosch has no adequate remedy at law. 43. ITW has engaged and continues to engage in the above activity knowingly,

willfully, and in bad faith, so as to justify the assessment of treble damages against it in an amount to be determined at the time of trial, along with Boschs reasonable attorneys fees and the costs of this action. COUNT III Trademark Infringement and Unfair Competition (Common Law) 44. 45. Bosch incorporates paragraphs 1-43 above as if fully set forth at length. ITWs conduct described above constitutes trademark infringement and unfair

competition under the common law of the State of Illinois.

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46.

The aforesaid acts by ITW, unless enjoined by this Court, will continue to cause

Bosch to sustain irreparable damage, loss and injury, for which Bosch has no adequate remedy at law. COUNT IV Cancellation of Federal Trademark Registration 47. 48. Bosch incorporates paragraphs 1-46 above as if fully set forth at length. Notwithstanding Boschs prior rights in the FUSION mark, ITW (through its

holding company, ITW CCIP Holdings LLC) filed a U.S. trademark application on July 13, 2011 to register the mark RAIN-X FUSION (App. Serial No. 85370474). Because U.S. Patent and Trademark Office (USPTO) examiners review only live applications and registrations in the USPTO database and not common law uses, and because Bosch did not have a live application or registration for its FUSION mark, there was not a basis for the examiner to refuse ITWs application based on Boschs prior rights; thus, the mark was approved for publication. The mark was published without Boschs knowledge. 49. ITW filed a statement of use on May 24, 2012, alleging a first use of the mark in

commerce on March 1, 2012. The statement of use was accepted by the USPTO on July 3, 2012, and the mark is currently being processed for registration. 50. For all of the reasons described above, there is a likelihood of confusion between

the marks; thus, when it issues, ITWs registration should be cancelled under Section 37 of the Lanham Act, 15 U.S.C. 1119. 51. Upon information and belief, ITW knew of Boschs use of FUSION in connection

with its products and falsely represented to the USPTO that no other person, firm, corporation,

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or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive. For the reasons described above, ITWs sworn statement in its application was knowingly false and was material to registrability. Accordingly, the mark also should be cancelled for fraud on the USPTO. PRAYER FOR RELIEF WHEREFORE, Bosch demands the following relief: A. A judgment in favor of Bosch that ITW has infringed, directly and indirectly by

way of inducement and/or contributory infringement, the 607 patent; B. A permanent injunction, enjoining ITW and its officers, directors, agents, servants,

employees, affiliates, divisions, branches, subsidiaries, parents, and all others acting in concert or privity with any of them from infringing, inducing the infringement of, or contributing to the infringement of the aforementioned patent; C. A permanent injunction, enjoining ITW and its officers, directors, agents, servants,

employees, affiliates, divisions, branches, subsidiaries, parents, and all others acting in concert or privity with any of them from using the FUSION mark, or any other reproduction, counterfeit, copy, colorable imitation, or confusingly similar variation of thereof, as any portion of a trademark that is to be used in the connection with the sale or provision of any good or service; or engaging in acts that constitute infringement, unfair competition, false representation, or false designation of origin, under the trademark laws of the United States and which would damage or

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injure Bosch; or inducing, encouraging, instigating, aiding, abetting, or contributing to any of the aforesaid acts; D. That, in accordance with 15 U.S.C. 1118, ITW be ordered to deliver up for

destruction as the Court shall direct, any and all goods, labels, signs, prints, packages, wrappers, receptacles, and advertisements (and the like) in its possession or under its custody or control that use the FUSION name, including but not limited to any unsold wiper products; E. That, in accordance with 15 U.S.C. 1116, ITW be directed to file with the Court

and serve on Bosch, no later than thirty days after receiving service of the Order, a report in writing and under oath setting forth in detail the manner and form in which it has complied with the Order; F. An award to Bosch of the damages to which it is entitled under at least 35 U.S.C.

284 for ITWs past infringement and any continuing or future infringement, including both compensatory damages and treble damages for willful infringement; G. That, in accordance with 15 U.S.C. 1117(a), ITW be ordered to: (1) Account for and pay over to Bosch an amount equal to three times all of

the gains, profits, savings, and advantages realized by ITW as a result of its trademark infringement and unfair competition; (2) Pay over to Bosch an amount equal to three times the amount of damages

sustained by Bosch as a result of ITWs unlawful activities, said amount to be determined by this Court; (3) Reimburse Bosch for the costs of this action; and - 12 -

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(4)

Reimburse Bosch for any reasonable attorney fees incurred as a result of

ITWs unlawful activities, including all attorney fees incurred during this action; H. Cancellation of ITWs federal trademark registration for the mark RAIN-X

FUSION, and that ITW be ordered not to make any filings with the U.S. Patent and Trademark Office for marks that incorporate FUSION; I. A judgment and order requiring ITW to pay the costs of this action (including all

disbursements), as well as attorneys fees as provided by 35 U.S.C. 285; J. and K. Such other further relief in law or equity to which Bosch may be justly entitled. An award to Bosch of pre-judgment and post-judgment interest on its damages;

Bosch demands a jury trial. Dated: July 10, 2012 Respectfully submitted,

OF COUNSEL : Mark A. Hannemann Jeffrey S. Ginsberg KENYON & KENYON LLP One Broadway New York, NY 10004 Tel.: (212) 425-7200 Fax.: (212) 425-5288 Susan A. Smith Andrew D. Kasnevich KENYON & KENYON LLP 1500 K Street, NW Washington, DC 20005-1257 Tel.: (202) 220-4200 Fax.: (202) 220-4201

By : /s/ William P. Oberhardt William P. Oberhardt WILLIAM P. OBERHARDT, LLC 70 West Madison St., Suite 2100 Chicago, IL 60602 Tel.: (312) 251-1100 Fax: (312) 251-1175 Atty. Reg. No. 3122407 Attorneys for Plaintiff Robert Bosch LLC

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Exhibit A

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