This case was last updated from U.S. District Courts on 01/10/2022 at 07:59:27 (UTC).

Direct Supply Inc v. Park Supply of America Inc

Case Summary

On November 11, 2021, Direct Supply, Inc. (“Plaintiff”), represented by Michael R. Laing of Perkins Coie LLP, filed an intellectual property lawsuit against Park Supply of America, Inc. (“Defendant”), seeking injunctive relief, damages, pre-judgment and post-judgment interests, costs, and other reliefs for alleged trademark infringement, alleged false designation of origin, and alleged cyberpiracy by the Defendant. This case was filed in the United States District Court in the Eastern District of Wisconsin.

 

This is a civil action for alleged trademark infringement, false designation of origin, and cyberpiracy under the Lanham Act, 15 U.S.C. §§ 1114 and 1125 et seq. (“Lanham Act”), and for deceptive trade practices, trademark infringement, and unfair competition under the laws of Wisconsin arising from Park’s use of DIY DIRECT SUPPLY in a manner which infringes Direct Supply’s prior rights in its DIRECT SUPPLY trademarks.

 

In the complaint, the Plaintiff alleged that “Direct Supply uses and owns the DIRECT SUPPLY Marks in connection with its online retail store services along with a broad array of goods and other services, including plumbing, HVAC equipment, hardware, electrical and lighting equipment, appliance parts, and janitorial products.”

 

The Plaintiff also alleged that “Park’s use of the DIY DIRECT SUPPLY Marks is likely to cause confusion and mistake and to deceive consumers and others as to the origin, sponsorship, or affiliation of the parties’ products and services. Consumers observing Park’s products and services in the marketplace are likely to believe that those services are sponsored by, associated with, or otherwise affiliated with Direct Supply when they are not. Park’s use of the DIY DIRECT SUPPLY Marks constitutes trademark infringement in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).”

 

Further, the Plaintiff alleged that “In addition, Direct Supply is being and will continue to be irreparably injured by losing control of its brand’s reputation. Park’s unauthorized use of the DIY DIRECT SUPPLY Marks causes Direct Supply to be associated with goods and services over which it has no control. That involuntary association will injure Direct Supply, especially if customers are dissatisfied with Park’s goods or services for any reason and consequently have a less favorable opinion of Direct Supply.”

 

There are nine claims for relief laid down by the Plaintiff. The first claim for relief is for alleged trademark infringement pursuant to (15 U.S.C. § 1114(1)). The second claim for relief is for alleged false designation of origin. The third claim for relief is for alleged violation of the anti-cyber squatting consumer protection act. The fourth claim for relief is for alleged trademark infringement under WIS. stat. § 132 et. seq. The fifth claim for relief is for alleged violation of the Wisconsin deceptive trade practices act. The sixth claim for relief is for alleged common law trademark infringement. The seventh claim for relief is for alleged common law unfair competition. The eighth claim for relief is for alleged cancellation of U.S. trademark registration no. 6,180,249. The ninth claim for relief is for alleged failure to file a certificate of an assumed name in violation of Minn. stat. ann. § 333.01 et seq.

 

In the prayer for relief, the Plaintiff has requested the Court to pass a judgment against the Defendant along with permanent injunctive relief and an accounting to Direct Supply of all income including damages of $10,000 pursuant to Wis. Stat. § 132.03. Further, the Plaintiff requested the Court to direct the United States Patent and Trademark Office to cancel U.S. Registration No. 6,180,249, an order that alleged violation of trademark and other claims was wilful by the Defendant, and grant costs of litigation including prejudgment and post-judgment interest, incurred in connection with this action, along with further relief to which Direct Supply may be entitled.

 

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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    2:21-CV-01300

  • Filing Date:

    11/11/2021

  • Case Status:

    Pending - Other Pending

  • Case Type:

    Intellectual Property - Trademark

Judge Details

Presiding Judge

Lynn Adelman

 

Party Details

Plaintiff

Direct Supply Inc

Defendant

Park Supply of America Inc

Attorney/Law Firm Details

Plaintiff Attorney

Michael R Laing

Attorney at Perkins Coie LLP

33 E Main St - Ste 201

Madison, WI 53703

Defendant Attorneys

Austen Zuege

Attorney at Westman Champlin & Koehler PA

121 S 8Th St - Ste 1100

Minneapolis, MN 55402

Laura M Konkel

Attorney at Michael Best & Friedrich LLP

1 S Pinckney St - Ste 700Po Box 1806

Madison, WI 53701-1806

Shane A Brunner

Attorney at Michael Best & Friedrich LLP

1 S Pinckney St - Ste 700Po Box 1806

Madison, WI 53701-1806

 

Court Documents

16 #1

Proposed Agreed Order

16 #16

Main Document

#15

(#15) NOTICE of Appearance by Austen Zuege on behalf of Park Supply of America Inc. Attorney(s) appearing: Austen Zuege (Zuege, Austen)

#14

RESTRICTED

#13

(#13) DISCLOSURE Statement by Park Supply of America Inc. (Brunner, Shane)

12 #3

Exhibit 3 - Oct. 7, 2021 letter

12 #2

Exhibit 2 - Sept. 2, 2021 letter

12 #1

Exhibit 1 - Aug. 25, 2021 letter

12 #12

Main Document

#10

(#10) MOTION to Dismiss Defendant's Motion for Partial Dismissal by Park Supply of America Inc. (Brunner, Shane)

#9

(#9) NOTICE of Appearance by Shane A Brunner on behalf of Park Supply of America Inc. Attorney(s) appearing: Shane A. Brunner (Brunner, Shane)

#8

(#8) NOTICE of Appearance by Laura M Konkel on behalf of Park Supply of America Inc. Attorney(s) appearing: Laura M. Konkel (Konkel, Laura)

#7

RESTRICTED

#6

(#6) SUMMONS Returned Executed by Direct Supply Inc. Park Supply of America Inc served on 11/22/2021. (Laing, Michael)

#5

(#5) Report to the Commissioner of Patents and Trademarks (Laing, Michael)

#4

(#4) DISCLOSURE Statement by Direct Supply Inc. (Laing, Michael)

#3

(#3) NOTICE of Appearance by Michael R Laing on behalf of Direct Supply Inc. Attorney(s) appearing: Michael R. Laing (Laing, Michael)

#2

(#2) REQUEST for Issuance of Summons by Direct Supply Inc (Laing, Michael)

12 More Documents Available
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Docket Entries

  • 12/29/2021
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  • DocketText Only Order signed by Judge Lynn Adelman on 12/29/21 granting #16 Stipulated Motion for Extension of Time for Plaintiff to Respond to Motion to Dismiss. Direct Supply, Inc., may file its response to Park Supply of America, Inc.'s motion to dismiss on or before January 24, 2022. (cc: all counsel)(jad)

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  • 12/22/2021
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  • Docket(#16) Stipulated MOTION for Extension of Time for Plaintiff to respond to Motion to Dismiss by Direct Supply Inc. (Attachments: #1 Proposed Agreed Order)(Laing, Michael)

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  • 12/22/2021
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  • Docket(#15) NOTICE of Appearance by Austen Zuege on behalf of Park Supply of America Inc. Attorney(s) appearing: Austen Zuege (Zuege, Austen)

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  • 12/17/2021
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  • Docket(#14) Magistrate Judge Jurisdiction Form filed by Park Supply of America Inc. (NOTICE: Pursuant to Fed.R.Civ.P. 73 this document is not viewable by the judge.) (Brunner, Shane)

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  • 12/13/2021
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  • Docket(#13) DISCLOSURE Statement by Park Supply of America Inc. (Brunner, Shane)

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  • 12/13/2021
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  • Docket(#12) DECLARATION of Austen Zuege In Support of Defendant's Motion for Partial Dismissal (Attachments: #1 Exhibit 1 - Aug. 25, 2021 letter, #2 Exhibit 2 - Sept. 2, 2021 letter, #3 Exhibit 3 - Oct. 7, 2021 letter)(Brunner, Shane)

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  • 12/13/2021
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  • Docket(#11) BRIEF in Support filed by Park Supply of America Inc re #10 MOTION to Dismiss Defendant's Motion for Partial Dismissal . (Brunner, Shane)

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  • 12/13/2021
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  • Docket(#10) MOTION to Dismiss Defendant's Motion for Partial Dismissal by Park Supply of America Inc. (Brunner, Shane)

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  • 12/13/2021
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  • Docket(#9) NOTICE of Appearance by Shane A Brunner on behalf of Park Supply of America Inc. Attorney(s) appearing: Shane A. Brunner (Brunner, Shane)

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  • 12/13/2021
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  • Docket(#8) NOTICE of Appearance by Laura M Konkel on behalf of Park Supply of America Inc. Attorney(s) appearing: Laura M. Konkel (Konkel, Laura)

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  • 12/03/2021
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  • Docket(#7) Magistrate Judge Jurisdiction Form filed by Direct Supply Inc. (NOTICE: Pursuant to Fed.R.Civ.P. 73 this document is not viewable by the judge.) (Laing, Michael)

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  • 12/03/2021
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  • Docket(#6) SUMMONS Returned Executed by Direct Supply Inc. Park Supply of America Inc served on 11/22/2021. (Laing, Michael)

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  • 11/11/2021
  • DocketNOTICE Regarding assignment of this matter to Judge Lynn Adelman; Consent/refusal forms for Magistrate Judge Dries to be filed within 21 days; the consent/refusal form is available #here. Pursuant to Civil Local Rule 7.1 a disclosure statement is to be filed upon the first filing of any paper and should be filed now if not already filed. (cmb) (Entered: 11/12/2021)

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  • 11/11/2021
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  • Docket(#5) Report to the Commissioner of Patents and Trademarks (Laing, Michael)

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  • 11/11/2021
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  • Docket(#4) DISCLOSURE Statement by Direct Supply Inc. (Laing, Michael)

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  • 11/11/2021
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  • Docket(#3) NOTICE of Appearance by Michael R Laing on behalf of Direct Supply Inc. Attorney(s) appearing: Michael R. Laing (Laing, Michael)

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  • 11/11/2021
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  • Docket(#2) REQUEST for Issuance of Summons by Direct Supply Inc (Laing, Michael)

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  • 11/11/2021
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  • Docket(#1) COMPLAINT with Jury Demand; against Park Supply of America Inc by Direct Supply Inc. ( Filing Fee PAID $402 receipt number AWIEDC-3971072) (Attachments: #1 Civil Cover Sheet)(Laing, Michael)

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