Case 2:10-cv-00524-JBF -TEM Document 1 Filed 10/19/10 Page 1 of 13

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF VIRGINIA
(Norfolk Division)

DELAWARE CAPITAL FORMATION, INC.,

FILED
a Delaware corporation
OCT 1 9 2010
and

CLERK, US DISTRICT COURT

DOVER FLUID MANAGEMENT, INC.,
a Delaware corporation

Plaintiffs,

v. Civil Action No. J • '/#C / 5£ Y

KROBACH MANUFACTURING CORPORATION,
a California corporation

and

MARIO OTTINO, an Individual

Defendants.

COMPLAINT

Plaintiffs Delaware Capital Formation, Inc. (hereinafter "DCF") and Dover Fluid

Management, Inc. (hereinafter "DFM") (collectively referred to as "Plaintiffs"), by counsel, state

as follows for their Complaint against Defendants Krobach Manufacturing Corporation

(hereinafter "Krobach") and Mario Ottino (hereinafter "Ottino") (collectively referred to as

"Defendants")

I. NATURE OF THE ACTION

1. This is an action for trademark counterfeiting, trademark infringement, dilution of

trademark, and false designation of origin.

2. Counts I, II, III, and IV arise under the Trademark (Lanham) Act of 1946, as

amended, 15 U.S.C. §§ 1051, et seq. These counts present federal questions.

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3. Count V is for common law trademark infringement and arises under the common

law of Virginia.

n. THE PARTIES

4. DCF is a corporation organized and existing under the laws of the State of

Delaware, having its principal place of business at 501 Silverside Road, Suite 5, Wilmington,

Delaware 19809.

5. DFM is a corporation organized and existing under the laws of the State of

Delaware, having its principal place of business at 1100 W. 31st Street, Highland Oaks I, Suite

520, Downers Grove, Illinois 60515. DFM includes a division called Blackmer Pump

(hereinafter "DFM-Blackmer Pump Division") which at one time was a stand-alone entity

(hereinafter "Blackmer Pump"), and at another time a division of Dover Corporation.

DFM-Blackmer Pump Division is a manufacturer of pumps, compressors, parts therefor and

related products, including positive displacement pumps, centrifugal pumps, and compressors for

the transfer of liquid and gas products.

6. On information and belief Krobach is a corporation of the State of California,

having offices at 3504 Arden Road, Hayward, California 94545. Krobach sells and distributes at

least replacement parts for pumps, including duplicate replacement parts for DFM-Blackmer

Pump Division products.

7. Mr. Mario Ottino is believed to be a resident of the State of California, and

president and owner of Krobach.

III. JURISDICTION AND VENUE

8. Counts I, II, in, and IV arise under the Trademark Act of 1946 as amended

("Lanham Act"), 15 U.S.C. §§1051, et seq. This Court has jurisdiction over this matter under 15

U.S.C. §1121(a). This Court further has jurisdiction of Counts I, II, III, and IV under the
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provisions of 28 U.S.C. §1338(a). Jurisdiction of Count V arises under 28 U.S.C. §1338(b) and

the doctrine of pendent jurisdiction. This Court further has jurisdiction over this matter under 28

U.S.C. §1332 in that the parties are citizens of different states and the amount in controversy

exceeds $75,000, exclusive of interest and costs.

9. Krobach is doing business in, and is committing acts of counterfeiting and

infringement in, this state and district, and venue is proper under 28 U.S.C. §l391(b) and (c).

IV. PLAINTIFFS' BUSINESS AND GOODWILL

10. Blackmer Pump was incorporated in 1903, after Robert Blackmer had invented

the vane-type pump in 1899. In 1964, Blackmer Pump was acquired by Dover Corporation, and

in 1985 acquired by Plaintiff DFM (then known as Dover Resources, Inc.). For over 100 years,

Blackmer Pump ~ both as a stand-alone entity and as a division - has been continuously

engaged in manufacturing and selling pumps, compressors, parts for pumps and compressors,

and the like. Blackmer Pump has been selling pump and compressor items and parts and related

services with the trademark and service mark "BLACKMER" since 1903. As a result of this

long and continuous use, the trademark and service mark "BLACKMER" and versions of the

stylized trademark and service mark "BLACKMER" have become well-known in

DFM-Blackmer Pump Division's industry as a source designation for DFM-Blackmer Pump

Division's products and services.

11. As a result of DFM-Blackmer Pump Division's reputation for such products and

services, and its advertising and promotional activities, substantial goodwill has accumulated in

DFM-Blackmer Pump Division's business, which has inured to the benefit of the Plaintiffs. This

goodwill is contained in the trademark and service mark "BLACKMER," which is arbitrary and

inherently distinctive.
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12. Blackmer Pump and DFM-Blackmer Pump Division throughout the years have

used the term "BLACKMER" as a trademark and service mark in advertising and in source

identification in interstate commerce for pumps, compressors, parts for pumps and compressors,

and related items and services, and have marketed such goods and related services to a wide

range of companies and other entities in a manner and to such an extent as to create an

association of the term "BLACKMER" with Blackmer Pump/DFM-Blackmer Pump Division's

products and services.

13. As a result of established business and longstanding relationships with customers

and in the market place, and advertising and promotion of their products, the "BLACKMER"

trademark and service mark has acquired a secondary and distinctive meaning to the Plaintiffs'

customers in Virginia and other states, namely, that the products and services offered under the

designation "BLACKMER" are manufactured by and originate with the Plaintiffs.

14. As a result of Blackmer Pump's and DFM-Blackmer Pump Division's extensive

use of the "BLACKMER" trademark and service mark and its longstanding business and

relationship with its customers, in addition to advertising and promotional activities, the

"BLACKMER" trademark and service mark has become famous.

15. Plaintiff DFM, of which Blackmer Pump is a division, has assigned the right, title,

interest, and goodwill of the "BLACKMER" mark to Plaintiff DCF. Plaintiff DFM is the

exclusive licensee of the registered "BLACKMER" trademark and service mark worldwide.

16. Plaintiff DCF owns U.S. Trademark Registration No. 734,878, registered July 24,

1962, for the mark "BLACKMER" for pumps, fluid motors, control equipment for pumps and

fluid motors, liquid proportioning equipment and liquid metering equipment. A copy of

Registration No. 734,878, which has become incontestable, is attached as Exhibit A.

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17. DFM-Blackmer Pump Division and Blackmer Pump have been using arbitrary

and distinctive part numbers for years. As a result of this long and continuous use, the part

number trademarks have become well-known in DFM-Blackmer Pump Division's industry as a

source designation for DFM-Blackmer Pump Division's products. The part numbers have been

used as trademarks in advertising and in source identification in interstate commerce for pumps,

compressors, parts for pumps and compressors, and related items, and Plaintiffs have marketed

such goods to a wide range of companies and entities in a manner and to such an extent as to

create an association of its part numbers with DFM-Blackmer Pump Division's products.

18. As a result of its established business and longstanding relationships with

customers and in the market place, and its advertising and promotion of its products, DFM's part

number trademarks have acquired a secondary and distinctive meaning to its customers in

Virginia and other states, namely, that the products offered under the part number designations

are manufactured by and originate with the Plaintiffs.

V. DEFENDANTS' BUSINESS AND ACTIVITIES

19. On information and belief, Mario Ottino is President and sole owner of Krobach.

20. On information and belief, Krobach was incorporated in California in 1959.

Krobach does business in replacement parts for pumps, among other things, and competes

directly with DFM-Blackmer Pump Division.

21. Krobach has sold multiple parts, namely duplicate replacement parts for pumps,

bearing the Blackmer name. Such use of the Blackmer name is, at least in part, a direct use with

existing legitimate products originally manufactured by and sold by Blackmer Pump. The

stylized lettering of the Blackmer name used on the Krobach parts is identical to that of original

DFM-Blackmer Pump Division parts. Krobach has also used part numbers identical or

substantially similar to DFM-Blackmer Pump Division's distinctive part numbers.

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22. DFM-Blackmer Pump Division has demanded that Defendant Krobach cease and

desist using Plaintiffs' famous trademark and service mark "BLACKMER" as a trademark or

service mark, and has demanded that Defendant Krobach cease and desist counterfeiting the

trademark and service mark "BLACKMER." DFM-Blackmer Pump Division has also

demanded that Krobach cease and desist using DFM-Blackmer Pump Division's part number

trademarks. The Defendants have refused to comply with these demands.

23. The use of the "BLACKMER" trademark and service mark by Krobach is a

counterfeit trademark usage and is likely to cause confusion, mistake, or misunderstanding

among, or to deceive DFM-Blackmer Pump Division's customers and prospective customers as

to whether products or services offered by Krobach are in some way associated with, or

sponsored by or approved by the Plaintiffs, thereby causing a loss of goodwill and dilution of

trade identity as well as dilution of the distinctive quality of the mark "BLACKMER."

24. Krobach's use of part numbers which are identical to or substantially similar to

DFM-Blackmer Pump Division's part number trademarks is likely to cause confusion, mistake

or misunderstanding among, or to deceive DFM-Blackmer Pump Division's customers and

prospective customers as to whether products and services offered by Krobach are in some way

associated with, or sponsored by or approved by Plaintiffs, thereby causing a loss of goodwill

and dilution of trade identity as well as dilution of the distinctive quality of the part number

trademarks.

25. On information and belief, the Defendants are continuing to sell and offer to sell,

in this and other districts, parts using the name "BLACKMER," and using the Plaintiffs'

proprietary part numbers, or colorable imitations thereof. A photograph of an original DFM-

Blackmer Pump Division part sitting next to a Krobach counterfeit part bearing the

"BLACKMER" trademark is attached as Exhibit B.

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26. Defendants' use of "BLACKMER" and part numbers identical to or substantially

similar to DFM-Blackmer Pump Division's part numbers is a direct and willful violation of the

Plaintiffs' trademark and service mark rights, both under the Lanham Act and under the common

law of the State of Virginia. Such damage to the Plaintiffs is irreparable, and the Plaintiffs have

no adequate remedy at law for such damage. Such damage will continue unless and until

enjoined by this Court.

VI. CAUSES OF ACTION

COUNT I
(Federal Trademark Counterfeiting in violation of 15 U.S.C. §1114(l)(a))

27. The Plaintiffs reallege the allegations of Paragraphs 1 through 26.

28. Defendants' use of the distinctive trademark "BLACKMER" in a style identical

to that of DFM-Blackmer Pump Division in connection with the sale, offering for sale, and

distribution of duplicate replacement parts for DFM-Blackmer Pump Division's pumps

constitutes trademark counterfeiting under 15 U.S.C. §1114(l)(a).

29. The Plaintiffs' customers and potential customers and the public have been, and

are likely to continue to be, confused and deceived by Defendants' counterfeit use of the

registered "BLACKMER" trademark into believing that the products and services offered by

Defendants originate with, are sponsored by or associated with, or approved or licensed by the

Plaintiffs.

30. The Plaintiffs have been and continue to be irreparably damaged by the

unauthorized counterfeit use by Defendants of the "BLACKMER" registered trademark for such

products in such industries.

31. The conduct of the Defendants has irreparably damaged the Plaintiffs and will,

unless restrained, further impair, if not destroy, the value of the Plaintiffs' name, trademark,

reputation, and goodwill, as well as diminish the distinctiveness of their distinctive trademark

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and service mark, and dilute the goodwill and distinctiveness of their famous trademark and

service mark. The Plaintiffs have no adequate remedy at law.

COUNT II
(Federal Trademark Infringement in violation of 15 U.S.C. §1114(l)(a))

32. The Plaintiffs reallege the allegations of Paragraphs 1 through 31.

33. Defendants' use of the distinctive trademark "BLACKMER" in connection with

the sale, offering for sale, distribution and advertising of products identical or closely related to

DFM-Blackmer Pump Division's products, in DFM-Blackmer Pump Division's markets,

constitutes trademark infringement under 15 U.S.C. §1114(l)(a).

34. The Plaintiffs' customers and potential customers and the public have been, and

are likely to continue to be, confused and deceived by Defendants' use of the "BLACKMER"

trademark into believing that the services and products offered by Defendants originate with, are

sponsored by or associated with, or approved or licensed by the Plaintiffs.

35. The Plaintiffs have been and continue to be irreparably damaged by the

unauthorized use by Defendants of the "BLACKMER" trademark for such products in such

industries.

36. The conduct of Defendants as herein averred has irreparably damaged the

Plaintiffs and will, unless restrained, further impair, if not destroy, the value of the Plaintiffs'

name, trademarks, reputation, and goodwill, as well as diminish the distinctiveness of their

distinctive trademark and service mark. The Plaintiffs have no adequate remedy at law.

COUNT m
(Federal Trademark Dilution in violation of 15 U.S.C. §1125(c))

37. The Plaintiffs reallege the allegations of Paragraphs 1 through 36.

38. Defendants' use of the trademark, trade styling, and service mark "BLACKMER"

in the aforementioned activities in Virginia and other states constitutes a use in interstate

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commerce and results in dilution of the famous "BLACKMER" trademark, and therefore is a

violation of 15 U.S.C. §1125(c).

39. Defendants' use of the mark and trade styling of "BLACKMER" began after the

"BLACKMER" mark had become famous in the pump, compressor, and related parts and

service industry.

40. The conduct of Defendants as averred above has irreparably damaged and diluted

the distinctive quality of the Plaintiffs' "BLACKMER" mark and will, unless restrained, further

impair, if not destroy, the value of the Plaintiffs' trademark, service mark, reputation, and

goodwill. The Plaintiffs have no adequate remedy at law.

COUNT IV
(False Designation in violation of 15 U.S.C. §1125(a))

41. The Plaintiffs reallege the allegations of Paragraphs 1 through 40.

42. Defendants' use of the trademark, trade styling, and service mark "BLACKMER"

and the aforementioned activities in Virginia and other states constitutes a use in interstate

commerce and is a violation of §43(a) of the Lanham Act (15 U.S.C. §1125(a)). Defendants' use

of the trademark, trade styling, and service mark "BLACKMER" is with full knowledge of the

Plaintiffs' prior rights to use the "BLACKMER" trademark and service mark exclusively for

their products and services. Defendants' use of the "BLACKMER" mark is in direct competition

with DFM-Blackmer Pump Division and in the same or overlapping industries and trade areas,

and as such, constitutes use with knowledge of the likelihood of confusion or mistake as to the

source of goods and/or services provided under the respective designations of the parties, and as

such, constitutes use with knowledge of the falsity of source designation.

43. Defendants' use of the Plaintiffs' part number trademarks, and the

aforementioned activities in Virginia and other states, constitutes a use in interstate commerce

and is a violation of §43(a) of the Lanham Act (15 U.S.C. §1125(a)). Defendants' use of the part

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number trademarks is with full knowledge of the Plaintiffs' prior rights to use such part number

trademarks exclusively for their products and services. Defendants' use of the part number

trademarks is in direct competition with DFM-Blackmer Pump Division, at least in part, and in

the same or overlapping industries of trade areas, and as such, constitutes use with knowledge of

the likelihood of confusion or mistake as to the source of goods and/or services provided under

the respective designations of the parties, and as such, constitutes use with knowledge of the

falsity of source designation.

44. The Plaintiffs and the public have been, and are likely to continue to be,

irreparably damaged by Defendants' use of said false designations, description, and

representation in that the public is likely to be confused, misled, or deceived into believing that

Defendants' services or products are endorsed, sponsored by or associated with, or are approved

by the Plaintiffs or that Defendants are affiliated in some way with the Plaintiffs.

45. The conduct of Defendants as averred above has irreparably damaged the

Plaintiffs and will, unless restrained, further impair, if not destroy, the value of the Plaintiffs'

trademarks, service marks, reputation, and goodwill. The Plaintiffs have no adequate remedy at

law.

COUNT V
(Common Law Trademark Infringement)

46. The Plaintiffs reallege the allegations of Paragraphs 1 through 45.

47. By virtue of prior use of their trademark, trade styling, and service mark

"BLACKMER" and of the distinctive nature of the mark, in connection with DFM-Blackmer

Pump Division's products and services, the Plaintiffs have acquired exclusive rights to that name

and mark under the common law for their products and services throughout Virginia and

elsewhere. In addition, by virtue of their prior use of their part number trademarks, and of the

distinctive nature of those trademarks, in connection with DFM-Blackmer Pump Division's

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products and services, the Plaintiffs have acquired exclusive rights to use those part number

trademarks under the common law for their products and services throughout Virginia and

elsewhere.

48. Defendants' use of the trademark and service mark "BLACKMER," and use of

the part number trademarks in providing products and services in Virginia related to those of

DFM-Blackmer Pump Division, and in industries in which DFM-Blackmer Pump Division uses

the Plaintiffs' marks, constitutes infringement of the Plaintiffs' common law rights in their

trademarks and service marks.

49. As a result of Defendants' aforesaid activities, the Plaintiffs have and continue to

suffer monetary damages and irreparable harm.

50. The Plaintiffs have no adequate remedy at law.

Vn. PRAYER FOR RELIEF

WHEREFORE, the Plaintiffs pray:

A. That Defendants and each of Krobach's subsidiaries, affiliates, and its officers,

directors, agents, servants, employees, and all other persons in privity with it, be preliminarily

enjoined and restrained and thereafter permanently enjoined and restrained from (i) directly or

indirectly using in any matter in connection with products or services the designation

"BLACKMER" or any other mark, phrase or designation similar to, or being a colorable

imitation of, Plaintiffs' trademark and service mark "BLACKMER" which is likely to cause

confusion or mistake or to deceive; and (ii) directly or indirectly using in any manner in

connection with products or services, DFM-Blackmer Pump Division part numbers or any other

mark, phrase or designation similar to, or being a colorable imitation of, a DFM-Blackmer Pump

Division part number, which is likely to cause confusion or mistake or to deceive; and (iii)

continuing any and all acts of unfair competition or deceptive trade practices as alleged herein.

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B. For an order from this Court providing for the seizure of goods and products

having or bearing the counterfeit "BLACKMER" mark, whether or not in either of Defendants'

possession, and all records, documenting the manufacture, sale, or receipt of things involved in

such counterfeiting.

C. For an order from this Court requiring that the Defendants deliver up and destroy

all labels, signs, prints, cartons, brochures, advertising material, and documents in their

possession which bear the designation "BLACKMER" and/or DFM-Blackmer Pump Division

part numbers.

D. That Defendants be required to account and pay over to Plaintiffs the gains,

profits, and advantages derived from their violation of §43(a) of the Lanham Act (15 U.S.C.

§1125), and/or 15 U.S.C. §1114(l)(a), and/or the common law of Virginia, and in addition, the

damages which Plaintiffs have sustained by reason thereof together with interest from the date of

accrual thereof.

E. That Defendants' activities as set forth above be adjudged to have been willful,

and Plaintiffs' damages be trebled.

F. That Plaintiffs be awarded costs of this action and reasonable attorney's fees.

G. Granting Plaintiffs such other and further relief as this Court deems just and

proper.

A jury trial is demanded.

Dated: October 13,2010.

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Javid J. Sdyenig (VSBJ^l 102)

GAVIN LAW OFFICES; PLC
A PROFESSIONAL LIMITED
LIABILITY COMPANY
2500 Gaskins Road, Suite B
Richmond, VA 23238
Phone: (804) 658-1376
Facsimile: (804) 784-4423
Email: dsensenig@gavinlawofFices.com
Attorneys for Plaintiffs

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