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COMPLAINT
Plaintiff, Haag Engineering Co. (“Haag”), for its complaint against Advanced-
follows:
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The Parties
1. Haag is a corporation organized and existing under the laws of the State of
Texas with a principal place of business at 1410 Lakeside Parkway, Suite 100, Flower
organized and existing under the laws of the State of Wisconsin with a principal place of
measuring apparatuses and includes multiple grounds for relief including copyright
infringement, trade dress infringement, unfair competition and false designation of origin,
misappropriation, and unjust enrichment. This complaint arises under the U.S. Copyright Act
17 U.S.C. § 101, et seq. (“the Copyright Act”); the Texas Business & Commerce Code; the
Trademark Act of 1946, 15 U.S.C. § 1051, et seq. (“the Lanham Act”); federal common law;
5. This Court has subject matter jurisdiction over this action pursuant to at least
15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331, 1338(a) & (b), and 1367(a).
6. This Court has personal jurisdiction over Gard because, inter alia, Gard is
purposefully and intentionally availing itself of the privileges of doing business in the State of
Texas, including in this District. Among other things, (i) Gard has advertised, marketed,
promoted, offered for sale, sold, distributed, manufactured, and/or imported, and continues to
advertise, market, promote, offer for sale, sell, distribute, manufacture, and/or import,
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infringing products to customers and/or potential customers, including in this District, at least
Inc.’s principal website, www.amazon.com, (ii) from February 2015 to May 2018 Newgard
was a Haag Certified Inspector availing himself of education services and certification offered
by Haag, and based in this District, under The Haag Certified Roof Inspector (Commercial or
Residential) Program, (iii) On or about May 2018, Gard contacted Haag in this District and
Gard ordered fifty (50) Haag Shingle Gauges from Haag in this District, (iv) Gard’s tortious
acts giving rise to this lawsuit and harm to Haag have occurred and are occurring in the State
of Texas, including in this District, (v) on information and belief, Gard acted with knowledge
that their unauthorized use of Haag’s rights would cause harm to Haag in the State of Texas
and in this District, and (vi) Gard’s customers and/or potential customers reside in the State of
Venue is also appropriate in this district pursuant to 28 U.S.C. § 1400(a) because this case
throughout the world in the fields of civil, structural, architectural, electrical, mechanical
specializes in materials testing. Another Haag affiliate for education allows its engineers to
share their scientifically-based approach to damage assessment through its publications and
tools, and seminars. Haag also provides its customers with the most critical phase after a
loss—the onsite damage assessment. Haag services the legal industry, the insurance industry,
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Haag Certified Roof Inspector (Commercial or Residential) Programs that assist inspectors
to accurately inspect roofs for damage, and correctly evaluate that damage. Haag expert
“Haag Certified” lends credibility to findings, and helps its clients support their conclusions.
10. Haag was started in 1924 and Haag’s growth results directly from its long-
standing commitment to quality while expanding technical knowledge and services. Haag is
created the Haag Shingle Gauge, which measures the thickness of a shingle and based on
analyses made by Haag, correlates that thickness to a warranty level. For more than fifteen
(15) years, the Haag Shingle Gauge has been the industry leader and the unique product
configuration has become distinctive in the industry and synonymous with Haag.
also created the Haag Panel and Membrane Gauge, which estimate the thickness of steel and
aluminum panels (inclusive of protective coatings) and single-ply membranes. For more than
four (4) years, the Haag Panel and Membrane Gauge has been the industry leader and the
unique product configuration has become distinctive in the industry and synonymous with
Haag.
13. The designs of the Haag Shingle Gauge and Haag Panel and Membrane Gauge
are distinctive and non-functional and identify to consumers that the origin of the Haag
Shingle Gauge and Haag Panel and Membrane Gauge is Haag. As a result of at least Haag’s
continuous and exclusive use of the Haag Shingle Gauge and Haag Panel and Membrane
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Gauge, Haag’s marketing, advertising, and sales of the Haag Shingle Gauge and Haag Panel
and Membrane Gauge, and the highly valuable goodwill and substantial secondary meaning
acquired as a result, Haag owns trade dress rights in the designs and appearances of the Haag
Shingle Gauge and Haag Panel and Membrane Gauge, which consumers have come to
14. Exemplary images of the Haag Shingle Gauge are shown below:
15. Haag has trade dress rights in the overall look, design, and appearance of the
Haag Shingle Gauge, which includes the design and appearance of a configuration of a
having an upper end tapered to form a U-shape and a lower end intersected by a slot
extending upwards toward the upper end for sliding or inserting a shingle in the Haag Shingle
Gauge; the design and appearance of the upper end of the tool having a small round hole of
the Haag Shingle Gauge; and the relationship of these features to each other and to other
features.
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16. For the Haag Shingle Gauge, Haag holds U.S. Trademark Registration No.
4,159,249, on the Supplemental Register and registered on June 12, 2012 for trade dress in
17. For the Haag Shingle Gauge, Haag holds U.S. Trademark Registration No.
5,407,037, on the Principal Register and registered on February 20, 2018 for trade dress in
18. Haag, is the exclusive owner of the copyright protected text and technical
drawing entitled “Shingle Gauge,” which is a copyright related to the Haag Shingle Gauge.
Haag is the owner of all rights, title and interest in Shingle Gauge which is registered with the
19. Exemplary images of the Haag Panel and Membrane Gauge are shown below:
20. Haag has trade dress rights in the overall look, design, and appearance of the
Haag Panel and Membrane Gauge, which includes the design and appearance of a
configuration of a manually-operated panel and membrane gauge hand tool comprising a body
having an upper edge intersected by slots for sliding or inserting a panel or membrane; the
design and appearance of the body including a lower curved end intersected by slots for
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sliding or inserting a panel or membrane; and the relationship of these features to each other
21. For the Haag Panel and Membrane Gauge, Haag holds U.S. Trademark
Application Serial No. 87/911,491, filed on May 8, 2018, for trade dress in measuring
apparatus, namely, steel and aluminum panel and membrane gauges. Please see Exhibit D.
22. Haag, is the exclusive owner of the copyright protected text and technical
drawing entitled “Panel and Membrane Gauge,” which is a copyright related to the Haag
Panel and Membrane Gauge. Haag is the owner of all rights, title and interest in Panel and
Membrane Gauge, which is registered with the U.S. Copyright Office as Registration TX 8-
and sales of shingle gauge and panel and membrane gauge products bearing Haag’s trade
dress and the publicity and attention that has been paid to Haag’s trade dress, Haag’s trade
dress in its Haag Shingle Gauge and its Haag Panel and Membrane Gauge each have acquired
valuable goodwill and substantial secondary meaning in the marketplace, as consumers have
24. Haag also has used the trademark “4/09” throughout the United States and the
State of Texas in connection with its shingle gauge. Haag has used this trademark throughout
the United States and the State of Texas, including with advertising and promoting the Haag
Shingle Gauge. Haag has sold nearly one hundred thousand (100,000) units of the Haag
Shingle Gauge bearing the “4/09” trademark throughout the United States in the last ten (10)
years.
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25. In view of Haag’s extensive and continuous use of the “4/09” mark consumers
have come to associate “4/09” as a source identifier of Haag, and Haag owns trademark rights
in the mark.
26. Gard has purposefully advertised, marketed, promoted, offered for sale, sold,
distributed, manufactured, and/or imported, and continues to advertise, market, promote, offer
for sale, sell, distribute, manufacture, and/or import products, that violate Haag’s rights,
including the rights protected by Haag's intellectual property. Gard’s infringing products are
intentionally confusingly, similar imitations of Haag’s products and are in the same size as
Haag’s products. Gard’s actions have all been without the authorization of Haag.
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shown below:
Exhibit F.
likelihood of confusion between Gard and its products on the one hand, and Haag and its
30. Haag used its trade dress, trademarks, and copyright-protected work
extensively and continuously before Gard began advertising, promoting, offering to sell,
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Haag’s trade dress and trademarks acquired secondary meaning in the United States and in the
State of Texas generally and in geographic areas in Texas before Gard commenced its
31. On or about May 2018, Haag learned of Gard’s infringing activities and on
May 10, 2018, Haag, through its counsel, sent a demand letter to Gard. Please see Exhibit G.
32. On or about June 2018, Gard, through its counsel, represented to Haag that the
33. On June 20, 2018, Gard, through its counsel, represented to Haag:
Thank you for outlining Haag’s demands to the possible recertification for Nik
Newgard. In the interest of clarity, the products identified in your May 10,
2018 letter were sold to customers by Advanced-Wholesale LLC d/b/a Gard
Inspecting and the now revoked certification with Haag was for Nik Newgard
individually.
We reviewed Haag’s proposal with our client, and it was carefully considered.
In view of the minimal sales made, it is not practical for Advanced-Wholesale
LLC to comply with Haag’s onerous proposed requirements for recertification
of Nick Newgard, and it will not be pursuing this avenue. As you know, the
products identified in the May 10 letter have been removed from all
websites and store fronts owned or controlled by our client, and it will not
resume such sales. Given the minimal sales actually made, these prompt
actions and commitment should be more than enough to resolve the matter.
Our client is disappointed that Haag took the aggressive actions it did as the
matter could have easily been resolved through informal email or telephone
communications.
34. Despite the terms and conditions of the May 10, 2018 letter from Haag to
Gard, and despite Gard’s representations of June 10, 2018, Gard has purposefully resumed
and has advertised, marketed, promoted, offered for sale, sold, distributed, manufactured,
and/or imported, and continues to advertise, market, promote, offer for sale, sell, distribute,
manufacture, and/or import products, that violate Haag’s rights, including the rights
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protected by Haag’s intellectual property, including copyright, trade dress, and trademark.
Gard’s infringing products are confusingly similar imitations of Haag’s products and are in
the same size as Haag’s products. Gard’s infringing promotional materials are copies of
Haag’s copyright-protected work. Gard’s actions have all been without the authorization of
Haag.
35. As discussed above and as set forth in the counts below, Gard’s actions are
unfair and unlawful. Gard’s actions have caused Haag to hire the undersigned counsel to
prosecute its infringement claims and agreed to pay counsel a reasonable fee for services
rendered. Gard is required to pay for Haag’s attorney’s fees and costs of court as a result of
Count I:
Copyright Infringement under 17 U.S.C. § 501, et seq.
36. Haag realleges and incorporates the allegations set forth in paragraphs 1
37. Based on the activities described above, including, for example, copying,
Haag’s registered copyright—and in doing so to help advertise, promote, offer for sale, sell,
Copyright Panel and Membrane Gauge, which is registered with the U.S. Copyright Office as
38. On information and belief, Gard’s use of Haag’s copyright and/or colorable
imitations thereof has been intentional, willful, and malicious. Gard’s bad faith is evidenced
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at least by the similarity of the infringing products to Haag’s copyright and by Gard’s
continuing disregard for Haag’s rights, despite Gard’s representations to the contrary.
39. Gard’s unlawful use of Haag’s registered copyright has diminished the value of
the original work by diluting the market and destroying the distinctiveness of the original
40. Haag is entitled to recover from Gard the damages Haag has sustained as a
result of these wrongful acts. Haag is further entitled to recover from Gard any gains, profits,
41. Haag is entitled to recover from Gard statutory damages for each of these past
and/or continuing willful violations of Haag’s Registered Work. Haag is further entitled to
Count II:
Trade Dress Infringement under § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)
42. Haag realleges and incorporates the allegations set forth in paragraphs 1
43. Based on the activities described above, including, for example, Gard using
Haag’s federally registered trademarks, including at least the trademarks protected by the ’249
Registration and the ’037 Registration, including through counterfeits, reproductions, copies,
and/or colorable imitations thereof, in connection with advertising, promoting, offering for
sale, selling, distributing, manufacturing, and/or importing the infringing products, Gard has
infringed Haag’s registered trademarks under § 32(1) of the Lanham Act, 15 U.S.C.
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reproductions, copies, and/or colorable imitations thereof, has caused and, unless enjoined,
will continue to cause substantial and irreparable injury to Haag for which Haag has no
adequate remedy at law, including at least substantial and irreparable injury to the goodwill
and reputation for quality associated with Haag’s registered trademarks, Haag’s products, and
Haag.
through counterfeits, reproductions, copies, and/or colorable imitations thereof, has been
intentional, willful, and malicious. Gard’s bad faith is evidenced at least by its unlawful use
of Haag’s Trademarks in an effort to sell the infringing products, and by Gard’s continuing
46. Haag is entitled to injunctive relief, and Haag is entitled to recover at least
Gard’s profits, Haag’s actual damages, enhanced damages, costs, and reasonable attorney fees
Count III:
Trade Dress Infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
47. Haag realleges and incorporates the allegations set forth in paragraphs 1
manufacture, and/or importing of the infringing products violate § 43(a) of the Lanham Act,
15 U.S.C. § 1125(a), by infringing Haag’s trade dress. Gard’s use of Haag’s trade dress
and/or colorable imitations thereof is likely to cause confusion, mistake, or deception as to the
affiliation, connection, and/or association of Gard with Haag and as to the origin, sponsorship,
and/or approval of the infringing products, at least by creating the false and misleading
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impression that the infringing products are manufactured by, authorized by, or otherwise
49. Haag’s trade dress is entitled to protection under the Lanham Act. Haag’s
trade dress includes unique, distinctive, and non-functional designs. Haag has extensively and
continuously promoted and used its trade dress in the United States. Through that extensive
and continuous use, Haag’s trade dress has become a well-known indicator of the origin and
quality of Haag’s products. Haag’s trade dress has also acquired substantial secondary
meaning in the marketplace. Moreover, Haag’s trade dress acquired this secondary meaning
before Gard commenced its unlawful use of Haag’s trade dress in connection with the
infringing products.
50. Gard’s use of Haag’s trade dress and/or colorable imitations thereof has caused
and, unless enjoined, will continue to cause substantial and irreparable injury to Haag for
which Haag has no adequate remedy at law, including at least substantial and irreparable
injury to the goodwill and reputation for quality associated with Haag’s trade dress, Haag’s
51. On information and belief, Gard’s use of Haag’s trade dress and/or colorable
imitations thereof has been intentional, willful, and malicious. Gard’s bad faith is evidenced
at least by the similarity of the infringing products to Haag’s trade dress and by Gard’s
continuing disregard for Haag’s rights, despite Gard’s representations to the contrary.
52. Haag is entitled to injunctive relief, and Haag is entitled to recover at least
Gard’s profits, Haag’s actual damages, enhanced damages, costs, and reasonable attorney fees
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Count IV:
Trademark Infringement in Violation of 15 U.S.C. § 1125(a)
53. Haag realleges and incorporates the allegations set forth in paragraphs 1
54. Based on the activities described above, including, for example, Gard’s use of
imitations thereof, Gard violates § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Gard’s use
connection, and/or association of Gard with Haag and as to the origin, sponsorship, and/or
approval of the infringing products, at least by creating the false and misleading impression
that the infringing products are manufactured by, authorized by, or otherwise associated with
Haag.
55. Haag’s trademarks are entitled to protection under the Lanham Act. Haag’s
trademark is inherently distinctive. Haag has extensively and continuously promoted and
used its trademarks in the United States. Through that extensive and continuous use, Haag’s
trademark has become a well-known indicator of the origin and quality of Haag’s products.
Haag’s trademark has also acquired substantial secondary meaning in the marketplace.
Moreover, Haag’s trademark acquired this secondary meaning before Gard commenced their
copies, and/or colorable imitations thereof has caused and, unless enjoined, will continue to
cause substantial and irreparable injury to Haag for which Haag has no adequate remedy at
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law, including at least substantial and irreparable injury to the goodwill and reputation for
57. On information and belief, Gard’s use of Haag’s trademark, including through
counterfeits, reproductions, copies, and/or colorable imitations thereof, has been intentional,
willful, and malicious. Gard’s bad faith is evidenced at least by Gard’s unlawful use of
Haag’s Trademarks to sell the Accused Products and infringing products and by Gard’s
continuing disregard for Haag’s rights, despite Gard’s representations to the contrary.
58. Haag is entitled to injunctive relief, and Haag is entitled to recover at least
Gard’s profits, Haag’s actual damages, enhanced damages, costs, and reasonable attorney fees
Count V:
Unfair Competition and False Designation of Origin
under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
59. Haag realleges and incorporates the allegations set forth in paragraphs 1
with Haag, violate § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and constitute unfair
competition and false designation of origin, at least because Gard has obtained an unfair
advantage as compared to Haag through Gard’s use of Haag’s trade dress and trademark and
because such use is likely to cause consumer confusion as to the origin, sponsorship, and/or
affiliation of Gard’s infringing products, at least by creating the false and misleading
impression that its infringing products are manufactured by, authorized by, or otherwise
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with Haag, violate § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and constitute unfair
competition and false and/or misleading advertising, at least because Gard has obtained an
unfair advantage as compared to Haag through Gard’s use of Haag’s trade dress and
trademark and because such use is likely to mislead consumers, at least by creating the false
and misleading impression that its infringing measuring apparatus products are based on
analyses that correlates that thickness to a warranty level, when on information and belief,
62. Haag’s trade dress and trademark are entitled to protection under the Lanham
Act. Haag’s trade dress includes unique, distinctive, and non-functional designs. Haag has
extensively and continuously promoted and used its trade dress and trademark in the United
States. Through that extensive and continuous use, Haag’s trade dress and trademark has
become a well-known indicator of the origin and quality of Haag’s products. Haag’s trade
dress and trademark has also acquired substantial secondary meaning in the marketplace.
Moreover, Haag’s trade dress and trademark acquired this secondary meaning before Gard
commenced its unlawful use of Haag’s trade dress in connection with the infringing products.
63. Gard’s use of Haag’s trade dress and trademark and/or colorable imitations
thereof has caused and, unless enjoined, will continue to cause substantial and irreparable
injury to Haag for which Haag has no adequate remedy at law, including at least substantial
and irreparable injury to the goodwill and reputation for quality associated with Haag’s trade
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64. On information and belief, Gard’s use of Haag’s trade dress and trademark
and/or colorable imitations thereof has been intentional, willful, and malicious. Gard’s bad
faith is evidenced at least by the similarity of the infringing products to Haag’s trade dress and
by Gard’s continuing disregard for Haag’s rights, despite Gard’s representations to the
contrary.
65. Haag is entitled to injunctive relief, and Haag is also entitled to recover at least
Gard’s profits, Haag’s actual damages, enhanced damages, costs, and reasonable attorney fees
Count VI:
Common Law Trade Dress Infringement
66. Haag realleges and incorporates the allegations set forth in paragraphs 1
with Haag, constitute common law trade dress infringement, at least because Gard’s use of
Haag’s trade dress and/or colorable imitations thereof is likely to cause consumer confusion
as to the origin, sponsorship, and/or affiliation of its infringing products, at least by creating
the false and misleading impression that its infringing products are manufactured by,
68. Haag’s trade dress is entitled to protection under the common law. Haag’s
trade dress includes unique, distinctive, and non-functional designs. Haag has extensively and
continuously promoted and used its trade dress in the United States and the State of Texas.
Through that extensive and continuous use, Haag’s trade dress has become a well-known
indicator of the origin and quality of Haag’s products. Haag’s trade dress has also acquired
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substantial secondary meaning in the marketplace. Moreover, Haag’s trade dress acquired
this a secondary meaning before Gard commenced its unlawful use of Haag’s trade dress in
69. Gard’s use of Haag’s trade dress and/or colorable imitations thereof has caused
and, unless enjoined, will continue to cause substantial and irreparable injury to Haag for
which Haag has no adequate remedy at law, including at least substantial and irreparable
injury to the goodwill and reputation for quality associated with Haag’s trade dress, Haag’s
70. On information and belief, Gard’s use of Haag’s trade dress and/or colorable
imitations thereof has been intentional, willful, and malicious. Gard’s bad faith is evidenced
at least by the similarity of its infringing products to Haag’s trade dress and Gard’s continuing
71. Haag is entitled to injunctive relief, and Haag is also entitled to recover at least
Haag’s damages, Gard’s profits, punitive damages, costs, and reasonable attorney fees.
Count VII:
Common Law Trademark Infringement
72. Haag realleges and incorporates the allegations set forth in paragraphs 1
73. Gard’s activities described above, including, for example, Gard’s use of
imitations thereof, in direct competition with Haag, constitute common law trademark
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at least by creating the false and misleading impression that the infringing products are
74. Haag’s trademarks are entitled to protection under the common law. Haag has
extensively and continuously promoted and used its trademarks in the United States and the
State of Texas. Through that extensive and continuous use, Haag’s trademarks have become
well-known indicators of the origin and quality of Haag’s products. Haag’s trademarks have
trademarks acquired this secondary meaning before Gard commenced their unlawful use of
reproductions, copies, and/or colorable imitations thereof has caused and, unless enjoined,
will continue to cause substantial and irreparable injury to Haag for which Haag has no
adequate remedy at law, including at least substantial and irreparable injury to the goodwill
and reputation for quality associated with Haag’s trademarks, Haag’s products, and Haag.
76. On information and belief, Gard’s use of Haag’s trademarks, including through
counterfeits, reproductions, copies, and/or colorable imitations thereof has been intentional,
willful, and malicious. Gard’s bad faith is evidenced at least by Gard’s unlawful use of Haag’s
trademarks to sell the infringing products and by Gard’s continuing disregard for Haag’s
rights.
77. Haag is entitled to injunctive relief, and Haag is also entitled to recover at least
Haag’s damages, Gard’s profits, punitive damages, costs, and reasonable attorney fees.
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Count VIII:
Common Law Unfair Competition
78. Haag realleges and incorporates the allegations set forth in paragraphs 1
with Haag, constitute common law unfair competition, at least by palming off/passing off of
Gard’s goods, by simulating Haag’s trade dress and trademarks in an intentional and
calculated manner that is likely to cause consumer confusion as to origin, sponsorship, and/or
affiliation of Gard’s infringing products, at least by creating the false and misleading
impression that its infringing products are manufactured by, authorized by, or otherwise
associated with Haag. Gard has also interfered with Haag’s business.
with Haag, constitute common law unfair competition, at least by palming off/passing off of
Gard’s goods, by simulating Haag’s trade dress and trademarks in an intentional and
calculated manner that is likely to cause consumer confusion as to origin, sponsorship, and/or
affiliation of Gard’s infringing measuring apparatus products, at least by creating the false and
misleading impression that its infringing measuring apparatus products are based on analyses
that correlates that thickness to a warranty level, when on information and belief, Gard’s
81. Haag’s trade dress and trademark are entitled to protection under the common
law. Haag’s trade dress includes unique, distinctive, and non-functional designs. Haag has
extensively and continuously promoted and used Haag’s trade dress and trademark for years
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in the United States and the State of Texas. Through that extensive and continuous use,
Haag’s trade dress and trademark have become wellknown indicators of the origin and
quality of Haag’s products. Haag’s trade dress and trademark have also acquired substantial
secondary meaning in the marketplace. Moreover, Haag’s trade dress and trademark acquired
this secondary meaning before Gard commenced its unlawful use of Haag’s trade dress and
82. Gard’s use of Haag’s trade dress and trademark and/or colorable imitations
thereof has caused and, unless enjoined, will continue to cause substantial and irreparable
injury to Haag for which Haag has no adequate remedy at law, including at least substantial
and irreparable injury to the goodwill and reputation for quality associated with Haag’s trade
83. On information and belief, Gard’s use of Haag’s trade dress and/or colorable
imitations thereof has been intentional, willful, and malicious. Gard’s bad faith is evidenced
at least by the similarity of its infringing products to Haag’s trade dress and Gard’s continuing
84. Haag is entitled to injunctive relief, and Haag is also entitled to recover at least
Haag’s damages, Gard’s profits, punitive damages, costs, and reasonable attorney fees.
Count IX:
Common Law Misappropriation
85. Haag realleges and incorporates the allegations set forth in paragraphs 1
manufacture, and/or importing of the infringing products, in direct competition with Haag,
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87. Haag created the products covered by Haag’s trade dress and trademark
through extensive time, labor, effort, skill, and money. Gard has wrongfully used Haag’s
trade dress and trademark and/or colorable imitations thereof in competition with Haag and
gained a special advantage because Gard was not burdened with the expenses incurred by
Haag. Gard has commercially damaged Haag, at least by causing consumer confusion as to
origin, sponsorship, and/or affiliation of Gard’s infringing products, by creating the false and
misleading impression that their infringing products are manufactured by, authorized by, or
otherwise associated with Haag, and by taking away sales that Haag would have made.
88. Haag’s trade dress and trademark are entitled to protection under the common
law. Haag’s trade dress includes unique, distinctive, and non-functional designs. Haag has
extensively and continuously promoted and used Haag’s trade dress and trademark for years
in the United States and the State of Texas. Through that extensive and continuous use,
Haag’s trade dress and trademark have become well-known indicators of the origin and
quality of Haag’s products. Haag’s trade dress and trademark have also acquired substantial
secondary meaning in the marketplace. Moreover, Haag’s trade dress and trademark acquired
this secondary meaning before Gard commenced its unlawful use of Haag’s trade dress in
89. Gard’s use of Haag’s trade dress and trademark and/or colorable imitations
thereof has caused and, unless enjoined, will continue to cause substantial and irreparable
commercial injury to Haag for which Haag has no adequate remedy at law, including at least
substantial and irreparable injury to the goodwill and reputation for quality associated with
Haag’s trade dress and trademark, Haag’s products, and Haag. Moreover, as a result of its
misappropriation, Gard has profited and, unless such conduct is enjoined by this Court, will
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continue to profit by misappropriating the time, effort, and money that Haag invested in
establishing the reputation and goodwill associated with Haag’s trade dress, Haag’s
90. Gard’s misappropriation of Haag’s trade dress and trademark and/or colorable
imitations thereof has been intentional, willful, and malicious. Gard’s bad faith is evidenced
at least by the similarity of its infringing products to Haag's trade dress and trademark
and Gard’s continuing disregard for Haag’s rights, despite Gard’s representations to the
contrary.
91. Haag is entitled to injunctive relief, and Haag is also entitled to recover at least
Haag’s damages, Gard’s profits, punitive damages, costs, and reasonable attorney fees.
Count X:
Unjust Enrichment
92. Haag realleges and incorporates the allegations set forth in paragraphs 1
manufacture, and/or importing of its infringing products, in direct competition with Haag,
constitute unjust enrichment, at least because Gard has wrongfully obtained benefits at Haag’s
expense. Gard has also, inter alia, operated with an undue advantage.
94. Haag created the products covered by Haag’s trade dress, trademark and
copyright through extensive time, labor, effort, skill, and money. Gard has wrongfully used
and is wrongfully using Haag’s trade dress, Haag’s trademark, Haag’s copyright, and/or
colorable imitations thereof, in competition with Haag, and has gained and is gaining a
wrongful benefit by undue advantage through such use. Gard has not been burdened with the
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expenses incurred by Haag, yet Gard is obtaining the resulting benefits for its own business
and products.
95. Haag’s trade dress and trademark are entitled to protection under the common
law. Haag’s trade dress includes unique, distinctive, and non-functional designs. Haag has
extensively and continuously promoted and used Haag’s trade dress and trademark for years
in the United States and the State of Texas. Through that extensive and continuous use,
Haag’s trade dress and trademark have become wellknown indicators of the origin and
quality of Haag’s products. Haag’s trade dress and trademark have also acquired substantial
secondary meaning in the marketplace. Moreover, Haag’s trade dress and trademark acquired
this secondary meaning before Gard commenced its unlawful use of Haag’s trade dress and
registered works has diminished the value of the original work by diluting the market and
destroying the distinctiveness of the original work and its identity as being Haag’s exclusive
property.
97. Gard’s use of Haag’s trade dress, Haag’s trademark, Haag’s copyright, and/or
colorable imitations thereof has caused and, unless enjoined, will continue to cause substantial
and irreparable commercial injury to Haag for which Haag has no adequate remedy at law,
including at least substantial and irreparable injury to the goodwill and reputation for quality
associated with Haag’s trade dress, Haag’s trademark, Haag’s copyright, Haag’s products, and
Haag. Haag accumulated this goodwill and reputation through extensive time, labor, effort,
skill, and investment. Gard has wrongfully obtained and are wrongfully obtaining a benefit at
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Haag's expense by taking undue advantage and free-riding on Haag’s efforts and investments,
98. Gard’s unjust enrichment at Haag’s expense has been intentional, willful, and
malicious. Gard’s bad faith is evidenced at least by the similarity of its infringing products to
Haag’s trade dress and Gard’s continuing disregard for Haag’s rights.
99. Haag is entitled to injunctive relief, and Haag is also entitled to recover at least
Gard’s profits.
Relief Sought
in violation of § 101, et seq. of Title 17 in the United States Code; (ii) infringed Haag’s trade
dress in violation of § 1114(1) of Title 15 in the United States Code; (iii) infringed Haag’s
trade dress in violation of § 1125(a) of Title 15 in the United States Code; (iv) infringed
Haag’s trademark in violation of § 1125(a) of Title 15 in the United States Code; (v) engaged
in the United States Code; (vi) violated Haag’s common law rights in Haag’s trade dress;
(vii) violated Haag’s common law rights in Haag’s trademark; (viii) engaged in common
law unfair competition; (ix) engaged in common law misappropriation; and (x) been
unjustly enriched at Haag’s expense, and that all of these wrongful activities by Gard were
willful;
trademark, Haag’s copyright, and further acts of unfair competition, misappropriation, and
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unjust enrichment by Gard, and each of its agents, employees, servants, attorneys, successors
and assigns, and all others in privity or acting in concert with any of them, including at least
infringing products, or any other products that use a copy, reproduction, or colorable imitation
of Haag’s copyright and Haag’s trade dress, pursuant to at least 15 U.S.C. § 1116 and Tex.
3. An Order directing Gard to recall all infringing products sold and/or distributed
4. An Order directing the destruction of (i) all infringing products, including all
recalled infringing products, (ii) any other products that use a copy, reproduction, or colorable
imitation of Haag’s copyright or Haag’s trade dress in Gard’s possession or control, (iii) all
plates, molds, and other means of making the infringing products in Gard’s possession,
custody, or control, and (iv) all advertising materials related to the infringing products in
U.S.C. § 1118;
5. An Order directing Gard to publish on its website and any website through
which it has advertised or otherwise conducted e-commerce a public notice providing proper
attribution of Haag's copyright and Haag’s trade dress to Haag, and to provide a copy of this
notice to all customers, distributors, and/or others from whom the infringing products are
recalled;
imitations thereof into the United States, and barring entry of the infringing products and/or
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colorable imitations thereof into any customhouse of the United States, pursuant to at least 15
U.S.C. § 1125(b);
prejudgment and post judgment interest, and reasonable attorney fees pursuant to at least 15
U.S.C. §§ 1114(1), 1125(a), 1125(c), 1116, and 1117; 17 U.S.C. §§ 504(b, c), 505, and 1203;
8. Such other and further relief as this Court deems just and proper.
By:
James Sowder
Texas Bar No. 18863900
Stephen J. Huschka
Texas Bar No. 24097861
Thompson, Coe, Cousins & Irons, L.L.P.
700 N. Pearl Street, Twenty-Fifth Floor
Dallas, Texas 75201-2832
Telephone: (214) 871-8267
Facsimile: (214) 871-8209
E-Mail: jsowder@thompsoncoe.com
Shuschka@thompsoncoe.com
Scott T. Griggs
Texas Bar No. 24032254
Griggs Bergen LLP
12900 Preston Road, Suite 204
Dallas, Texas 75230
Telephone: (214) 653-2400
Facsimile: (214) 653-2401
E-Mail: scott@griggslaw.com
Attorneys for Plaintiff Haag Engineering Co.
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JS 44 (Rev 02/19) Case 4:19-cv-00575 Document 1-1 FiledSHEET
CIVIL COVER 07/31/19 Page 1 of 1 PageID #: 29
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEEINSTRUCTIONS ON NEXTPAGE OF THIS FORM.)
(b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant
(EXCEPTIN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES,USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(C) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (IfKnown)
Thompson, Coe, Cousins & Irons, L.L.P., 700 N. Pearl Street, 25th Fl,
Dallas, TX 75201; 214-871-8267 II Griggs Bergen LLP, 12900 Preston
Rd, Ste 204, Dallas, Texas 75230; 214-653-2400
II. BASIS OF JURISDICTION (Place an "X"in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an "X" in One Boxfor Plaintiff
( For Diversity Cases Only) and One Boxfor Defendant)
0 1 U.S. Government 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 0 1 0 1 Incorporated or Principal Place 4 04
ofBusiness In This State
0 2 U.S. Government El 4 Diversity Citizen of Another State 0 2 0 2 Incorporated and Principal Place 0 5 X5
Defendant (Indicate Citizenship ofParties in Item III) of Business In Another State
0 110 Insurance PERSONAL INJURY PERSONAL INJURY 0 625 Drug Related Seizure 0 422 Appeal 28 USC 158 0 375 False Claims Act
0 120 Marine El 310 Airplane 0 365 Personal Injury - of Property 21 USC 881 0 423 Withdrawal El 376 Qui Tam (31 USC
0 130 Miller Act 0 315 Airplane Product Product Liability 0 690 Other 28 USC 157 3729(a))
0 140 Negotiable Instrument Liability 0 367 Health Care/ 0 400 State Reapportionment
El 150 Recovery of Overpayment 0 320 Assault, Libel & Pharmaceutical '' P OPER. ., MCI'S '0 410 Antitrust
& Enforcement of Judgment Slander Personal Injury 6 820 Copyrights 0 430 Banks and Banking
0 151 Medicare Act 0 330 Federal Employers' Product Liability 0 830 Patent El 450 Commerce
0 152 Recovery of Defaulted Liability El 368 Asbestos Personal 0 835 Patent - Abbreviated 0 460 Deportation
Student Loans 0 340 Marine Injury Product New Drug Application 0 470 Racketeer Influenced and
(Excludes Veterans) 0 345 Marine Product Liability 0 840 Trademark Corrupt Organizations
El 153 Recovery of Overpayment Liability PERSONAL PROPERTY 0 480 Consumer Credit
of Veteran's Benefits El 350 Motor Vehicle 0 370 Other Fraud 0 710 Fair Labor Standards 0 861 HIA (1395ff) El 485 Telephone Consumer
0 160 Stockholders' Suits 0 355 Motor Vehicle 0 371 Truth in Lending Act 0 862 Black Lung(923) Protection Act
0 190 Other Contract Product Liability 0 380 Other Personal 0 720 Labor/Management 0 863 DIWC/DIWW (405(g)) 0 490 Cable/Sat TV
0 195 Contract Product Liability El 360 Other Personal Property Damage Relations 0 864 SSID Title XVI 0 850 Securities/Commodities/
0 196 Franchise Injury 0 385 Property Damage 0 740 Railway Labor Act 0 865 RSI(405(g)) Exchange
0 362 Personal Injury - Product Liability 0 751 Family and Medical LI 890 Other Statutory Actions
Medical Malpractice Leave Act 0 891 Agricultural Acts
RIG • PRISONERF III 0 790 Other Labor Litigation FEDERAL TAX SUITS - CI 893 Environmental Matters
0 210 Land Condemnation 0 440 Other Civil Rights Habeas Corpus: 0 791 Employee Retirement 0 870 Taxes(U.S. Plaintiff 0 895 Freedom of Information
0 220 Foreclosure El 441 Voting 0 463 Alien Detainee Income Security Act or Defendant) Act
0 230 Rent Lease & Ejectment 0 442 Employment 0 510 Motions to Vacate 0 871 IRS--Third Party 0 896 Arbitration
0 240 Torts to Land 0 443 Housing/ Sentence 26 USC 7609 0 899 Administrative Procedure
0 245 Tort Product Liability Accommodations 0 530 General Act/Review or Appeal of
0 290 All Other Real Property 0 445 Amer w/Disabilities - 0 535 Death Penalty 1 IIGRATION € Agency Decision
Employment Other: 0 462 Naturalization Apphcation 0 950 Constitutionality of
El 446 Amer. w/Disabilities - 0 540 Mandamus & Other 0 465 Other Immigration State Statutes
Other 0 550 Civil Rights Actions
El 448 Education 0 555 Prison Condition
El 560 Civil Detainee -
Conditions of
Confinement