Case 1:12-cv-11309-FDS Document 1 Filed 07/18/12 Page 1 of 10

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS

CAST GROUP OF COMPANIES, INC., Plaintiff,

V.

Civil Action No.:

CAST C. ADOLPH & RST DISTRIBUTION GMBH, Defendant.

COMPLAINT AND JURY DEMAND

Plaintiff CAST GROUP OF COMPANIES, INC., by its undersigned attorneys, by way of Complaint herein, alleges as follows:

PARTIES 1. Plaintiff CAST GROUP OF COMPANIES, INC. (hereinafter "CAST"), is a Canadian corporation having a principal place of business at 35 Ripley Avenue, Unit 1 Toronto, Ontario,

2. Defendant CAST C. ADOLPH & RST DISTRIBUTION GMBH (hereinafter "C. ADOLPH") is, on information and belief, a German limited liability company having a principal place of business at Kabeler StraBe 54a, 58099 Hagen, Germany.

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JURISDICTION AND VENUE 3. This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1338(a) and the doctrine of supplemental jurisdiction as codified in Title 28 U.S.C. 1367.

4. Venue is proper in this Court pursuant to 28 U.S.C. 1391(c)(3).

5. On information and belief, Defendant C. ADOLPH markets and sells products and services under the infringing mark CAST to businesses and individuals located in the Commonwealth of Massachusetts, and is doing business within this judicial district. Furthermore, on information and belief, C. ADOLPH offers and sells its products and services in the United States, including to Massachusetts residents, via its website at <www.castinfo.de > and via its distributors in this country. On information and belief, residents of Massachusetts may purchase said products and services in the Commonwealth by telephone, via sales representatives, and over the internet. As a result of these activities, C. ADOLPH has purposefully directed its activities to residents of the Commonwealth, causing tortuous injury within the Commonwealth, and the claims for relief stated herein arise out of activities and harm suffered within the Commonwealth, so that the exercise of jurisdiction is reasonable. Therefore, this Court has general and specific personal jurisdiction over Defendant C. ADOLPH under the U.S. Constitution and the Massachusetts Long Arm Statute, Massachusetts General Laws. Ch. 223A, 3.

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COUNT I - FEDERAL TRADEMARK AND SERVICE MARK INFFRINGEMENT UNDER 15 U.S.C. 6 1114 6. From a date long prior to the actions of Defendant C. ADOLPH complained of herein, Plaintiff CAST has been engaged in the marketing and sale of computer software and related goods and services in the field of entertainment and event lighting. In connection therewith, Plaintiff CAST has extensively used the mark and name CAST, and variations thereof, in the advertising, promotion, and sale of its products and services. The CAST name and marks are prominently displayed on the goods themselves; on promotional and advertising materials for the goods and services; at Plaintiffs website at <www.cast-sofi.com >; and at trade shows and promotional events. As a result of Plaintiff CAST s sales and promotional efforts, the name CAST and the CAST marks have achieved substantial recognition and renown among relevant consumers, and the mark and name CAST has become a well-known source indicator for Plaintiff CAST s products and services.

6.

Plaintiff CAST is the owner of the following United States Trademark and

Service Mark Registrations:

Mark CAST LIGHTING

Registration No. 2,790,436

Issue Date 12/09/2003

Services Design for others and consultation for the entertainment and lighting industry

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2,822,230

03/16/2004

cast

group

Licensing of computer software; business management consulting; consulting services relating to design, selection, implementation and use of computer software Computer accessories, namely, interface devices for receiving and sending lighting control data from lighting equipment to computers; mounting racks for interface devices for receiving and sending lighting control data from lighting equipment to computers; computer software, namely, computer software to enter, manipulate and output lighting data in lighting equipment; computer software for computer aided design for the entertainment industry; computer software for lighting effect visualizations. Training in use of computer software, namely, lighting system operating software

CAST SOFTWARE

3,891,850

12/21/2010

Notwithstanding Plaintiff CASTs extensive promotion and use of the mark and name CAST for its products and services, and notwithstanding CASTs ownership of the aboveidentified registrations, and notwithstanding Defendants knowledge of CASTs ownership and use of the CAST mark and name for goods and services in the field of event and entertainment lighting, Defendant C. ADOLPH has commenced use of the identical mark "CAST" in rd

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connection with identical or closely-related goods and services in the identical field or closelyrelated fields of commerce. The goods and services of C. ADOLPH are offered to the same classes of customers through the same channels of trade as the goods and services offered by Plaintiff under its CAST mark and name.

9.

In view of the use by C. ADOLPH of a mark identical to Plaintiffs mark and

name CAST, the identity, or close relatedness, of the goods and services of the parties, and the overlap in channels of trade and classes of consumers, customers and potential customers are bound to be confused as to the source of the involved goods and services: they will mistakenly believe that Defendants goods and services emanate from, or are licensed or approved by, Plaintiff CAST. Any dissatisfaction with the goods or services of C. ADOLPH offered under the infringing CAST mark will reflect upon and irreparably damage the reputation and goodwill of Plaintiff as embodied in its CAST mark and name.

10.

On information and belief, selection, adoption and use of the mark CAST was

undertaken by C. ADOLPH with full knowledge of Plaintiffs prior use of, and rights in and to, the CAST mark and name, and with the willful intention to palm off Defendants goods and services as those of plaintiff and/or to cause confusion as to the source of the parties goods and services.

11.

Defendant C. ADOLPHs actions constitute infringement of Plaintiff CASTs

federally-registered marks, identified above, in violation of 15 U.S.C. Section 1114.

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12. enjoined.

Plaintiff will suffer irreparable harm unless the Defendants unlawful conduct is

COUNT II FEDERAL UNFAIR COMPETITION UNDER 15 U.S.C. 1125(a)

13.

Plaintiff CAST repeats and re-alleges the allegations of paragraphs 1-12, above.

14.

Defendant C. ADOLPHs actions constitute false designation of origin which are

likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of C. ADOPH with Plaintiff CAST, or as to the origin, sponsorship, or approval of C. ADOLPHs goods and services, in violation of 15 U.S.C. Section 1125(a).

COUNT III - CANCELLATION OF U.S. REGISTRATION 3,643,794 UNDER 15 U.S.C. 1119

15.

Plaintiff CAST repeats and re-alleges the allegations of paragraphs 1-12, above.

16.

Defendant C. ADOLPH is the owner of United States Service Mark Registration

No. 3,643,794 for the mark CAST for the following services. - Wholesale and retail store services featuring technical equipment for use in lighting and stage building, particularly for theater, studios, exhibition stands, and public events. (International class 35). - Consultation regarding lighting and fog effects for others; design of light and fog special effects for others; set design in the nature of technical and technological consultation in the field of stage construction and setup; design of 6

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lighting installations and fogging machines for others; services of an engineer, namely, technical services related to construction projects; set design for theatrical enterprises; arrangement of scenes, theaters and venues, namely, technical planning, conducting, and supervision of projects in the nature of stage construction and stage setup. (International class 42).

17.

In securing said United States Service Mark Registration, C. ADOLPHs alleged

a bonajide intent to use the mark in the United States.

18.

To the extent that C. ADOLPH uses or will use the mark CAST for the services

recited in said registration, such use is likely to cause confusion, mistake, or deception as to the source of its services, in violation of 15 U.S. C. Section 1052(d), in that consumers will believe that the recited services emanate from, or are sponsored or approved by Plaintiff CAST, when that is not the case.

19.

On December 20, 2011, Plaintiff CAST filed a petition for cancellation of United

States Service Mark Registration No. 3,643,794 with the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, on the ground of likelihood of confusion with Plaintiffs CAST marks, in violation of 15 U.S. C. Section 1052(d). Said cancellation proceeding is currently pending, and has been accorded Cancellation No. 92054997.

20.

Plaintiff CASTs continued and lawful use of its CAST name and marks in

connection with the promotion and sale of its products and services will be impaired by the continued existence of Registration No. 3,643,794.

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21.

Pursuant to 15 U.S.C. Section 1119, this court may order the cancellation of said

registration and may direct the United States Patent Trademark Office to make appropriate entry upon its records to reflect said cancellation.

COUNT IV - DILUTION UNDER M.G.L. c. 11 OH 22. Plaintiff repeats and re-alleges the allegations contained in paragraphs 1-21, above.

23. The actions of Defendant C. ADOLPH are likely to injure the plaintiffs business reputation and/or dilute the distinctive quality of the plaintiffs CAST name and marks, in violation of Massachusetts General Laws. Ch. 11 OH, 13.

24. Unless enjoined, these acts will cause irreparable injury and damage to the Plaintiff for which there exists no adequate remedy at law.

COUNT V - COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

25.

Plaintiff repeats and re-alleges the allegations of paragraphs 1-24 above.

26.

The aforesaid actions of Defendant C. ADOLPH have damaged and are damaging

Plaintiff CAST, in violation of the common law of trademark infringement and unfair competition.

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********

WHEREFORE, Plaintiff CAST GROUP OF COMPANIES, INC. prays for judgment against Defendant CAST C. ADOLPH & RST DISTRIBUTION GMBH as follows: A. That Defendant C. ADOLPH be permanently enjoined from using the mark and name

CAST, and any confusingly similar variation thereof.

B.

That the court direct the U.S. Patent and Trademark Office to cancel U.S. Service Mark

Registration No. 3,643,794.

C.

That Defendant C. ADOLPH be required pursuant to 15 U.S.C. 1118 to deliver up for

destruction any and all materials that include the mark or name CAST.

D.

That Defendant C. ADOLPH be directed to file with this court and to serve upon

Plaintiff CAST within thirty days of service of the permanent injunction requested herein, a report in writing under oath, setting forth in detail the manner and form in which Defendant has complied therewith.

E.

That Defendant C. ADOLPH pay over to Plaintiff its profits from the sale of goods and

services under the infringing mark.

F.

That Defendant C. ADOLPH pay to Plaintiff such damages as Plaintiff has incurred by

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reason of the actions complained of herein.

G.

That the Court treble the amount of said damages in light of the willfulness of

Defendant C. ADOLPHs conduct.

H.

That Plaintiff CAST recover its costs in this action, as well as its reasonable attorney

fees and expenses.

I.

That this Court grant such other order and further relief as it deems just and proper.

JURY DEMAND Plaintiff CAST demands a trial by jury on all counts so triable.

CAST Group of Companies, Inc.

/John L. Welch! John L. Welch, BBO No. 522,040 Ann Lamport Hammitte, BBO NO. 553,263 Lando & Anastasi, LLP One Main Street, Eleventh Floor Cambridge, MA 02142 617/395-7000 jwelchlalaw.com ahammitte@lalaw.com

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