Case 1:15-cv-03150-TCB Document 1 Filed 09/09/15 Page 1 of 18

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
)
)
)
Plaintiff, )
)
)
v.
)
)
INGERSOLL RAND COMPANY,
)
Defendant. )
RHEEM MANUFACTURING
COMPANY,

CIVIL ACTION FILE

NO.

COMPLAINT
Plaintiff Rheem Manufacturing Company (Rheem) files this Complaint
against Defendant Ingersoll Rand Company (Ingersoll Rand), and shows the
Court as follows:
INTRODUCTION
1.

This is an action for federal and common law trademark infringement,

false designation of origin, and unfair competition, arising out of Ingersoll Rands
infringement of Rheems stylized EcoNet and spiral circle design trademark
depicted below, by adopting and using a very similar stylized EcoWise and
spiral circle design trademark depicted below, to identify and promote identical
and similar products and services.

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2.

Ingersoll Rands use of a confusingly similar trademark to identify

and promote the same and similar goods and services to those provided by Rheem,
which are marketed and sold to the same classes of customers in the same markets
and trade channels using similar methods of sale and promotion, is likely to
confuse, deceive, and mislead the public as to the source and origin of Ingersoll
Rands goods or Rheems goods and/or as to the sponsorship or approval of
Ingersoll Rands goods or services by Rheem or Rheems goods and services by
Ingersoll Rand.
3.

This Complaint asserts claims for infringement of Rheems federally

registered trademark in violation of Section 32 of the Trademark Act of 1946, 15

U.S.C. 1114 (Count I); for false designation of origin in violation of Section
43(a) of the Trademark Act of 1946, 15 U.S.C. 1125(a) (Count II); for violation
of the Georgia Uniform Deceptive Trade Practices Act, O.C.G.A. 10-1-370 et
seq. (Count III); and for trademark infringement under the common law of Georgia

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Count IV).

Rheem seeks preliminary injunctive relief, as well as permanent

injunctive and monetary relief.

PARTIES, JURISDICTION AND VENUE
4.

Rheem is a corporation organized and existing under the laws of the

State of Delaware, with its principal place of business at 1100 Abernathy Road,
N.E., Suite 1400, Atlanta, Georgia, 30328.
5.

Ingersoll Rand is a corporation organized and existing under the laws

of the State of New Jersey, which is registered to do business in the State of

Georgia. Ingersoll Rand may be served through its registered agent, Corporation
Process Systems, at its registered address, 2180 Satellite Boulevard, Duluth,
Georgia, 30097.
6.

This Court has jurisdiction under 15 U.S.C. 1121(a) and 28 U.S.C.

1331 and 1338(a) and (b), and has supplemental jurisdiction over the state
statutory and common law claims under 28 U.S.C. 1338(b) and 1367(a).
Venue is proper in this district under 28 U.S.C. 1391.

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FACTS COMMON TO ALL COUNTS

A.

Rheem And Its Stylized EcoNetand DesignTrademark

7.

Rheem was established in the 1920s, and has grown to become one of

the countrys largest providers of residential and commercial heating, cooling, and
water heating products, systems and solutions.
8.

Rheem designs, manufactures and distributes residential and

commercial heating, ventilating, and air conditioning products and systems, water
heating products and systems, pool and spa heating products and systems, and
related products, controls, systems and solutions.
9.

Rheem markets and sells its heating, cooling, and water heating

products, systems and solutions throughout the United States and internationally.
10.

Rheem sells its products directly to home owners and commercial

property owners, and also through wholesalers, retailers, distributers, and

contractors.
11.

In or around October 2013, Rheem adopted and began using in

commerce the distinctive, stylized EcoNet and spiral circle design trademark
depicted below (the ECONET and Design Mark).

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12.

Since at least October 2013, Rheem has continuously and exclusively

used its ECONET and Design Mark in connection with and to identify the source
and origin of its products consisting of an integrated system for controlling heating,
cooling, and water heating equipment in a home or commercial or industrial
building, and various products, services, and controls associated with such a
system.

Attached hereto as Exhibit A are pages from Rheems website

providing information about its ECONET products and systems.

13.

Rheem also uses its ECONET and Design Mark on and in connection

with heating, cooling, and water heating products and controls that it markets and
sells for use as part of Rheem ECONET integrated systems. Attached hereto as
Exhibit B are photographs and promotional materials illustrating Rheems uses
of the ECONET and Design Mark in connection with its products.
14.

Rheem uses its ECONET and Design Mark to market, promote and

sell its heating, air-conditioning, and water heating products, systems, and
solutions to customers throughout the United States and beyond.
15.

Rheems ECONET and Design Mark has been the subject of hundreds

of thousands of dollars in advertising, marketing, and promotional expenditures,

and Rheem has sold tens of millions of dollars of goods and services offered in
connection its ECONET and Design Mark.

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16.

Rheem owns a United States trademark registration for the ECONET

and Design Mark (Registration No. 4,764,749), for use in connection with furnaces
and water heaters featuring technology allowing them to communicate via a
network. (See Exhibit C.) In addition, Rheem owns a pending U.S. trademark
application for registration of the ECONET and Design Mark for use in connection
with air handlers, heat pumps, heating installations, air conditioners, heating
boilers, pool and spa water heaters, and pool and spa heat pumps, all featuring
technology allowing them to communicate via a network.

(See Serial No.

86,527,492, attached hereto as Exhibit D.)

17.

Rheem is the owner of all rights, title and interest in the ECONET and

Design Mark, which uniquely identifies the source and origin of its goods and
services offered in connection with the Mark.
B.

Ingersoll Rands Use of Its Infringing Stylized Ecowise and Design

Mark
18.

Ingersoll Rand is a competing provider of heating, ventilation, and air

conditioning products, systems, and solutions for residential, commercial and

industrial properties, which it markets and sells under the TRANE brand.
19.

Ingersoll Rand also manufactures and distributes heating, ventilation

and air conditioning systems and temperature control units for trucks, trailers,
buses, and rail cars, and other products, services, systems, and solutions.
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20.

Ingersoll Rand markets and sells its products throughout the United

States and internationally.

21.

Ingersoll Rand markets and sells its heating, ventilation, and air

conditioning products, systems, and solutions directly to home owners and

commercial property owners, and also through wholesalers, retailers, distributers,
and contractors.
22.

On January 26, 2015, Ingersoll Rand issued a press release in which it

announced the introduction of a new EcoWise portfolio of heating, ventilating,

and air conditioning and industrial refrigeration products that are designed to lower
environmental impact and promote energy efficiency, and announced that its first
products to earn the EcoWise endorsement were certain Trane air conditioning
products.
23.

Ingersoll Rand has adopted and is using in commerce a stylized

EcoWise and spiral circle design trademark (the ECOWISE and Design
Mark), depicted below.

24.

Rheems ECONET and Design Mark and Ingersoll Rands ECOWISE

and Design Mark are very similar in appearance and create a virtually identical
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commercial impression. The word portions of both marks consist of similar words
starting with Eco and followed by an additional short phrase and displayed in the
same format: in a combined word with capital letters for the E in the Eco
phrase and for the initial letter in the second phrase (Net or Wise). In addition,
both marks include similar spiral circle designs next to the word portion of the
marks, with the spirals including similar shades of blue and green.

25.

In addition, the ECONET and Design Mark and ECOWISE and

Design Mark are used or intended to be use on and in connection with identical or
very similar goods and services offered by the parties under those marks heating,
cooling, and water heating products, systems, solutions, and controls.
26.

The similarity of the goods on which Rheems ECONET and Design

mark and Ingersoll Rands ECOWISE and Design Mark are used are illustrated by
the parties federal trademark registrations and applications for the respective
marks. Rheem has obtained a U.S. trademark registration for the ECONET and
Design Mark in International Class 11 and U.S. Classes 13, 21, 23, 31 and 34 for
furnaces and water heaters, and has a pending application for the Mark in the same
classes for air handlers, heat pumps, heating insulation, air conditioners, heating
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boilers, and pool and spa water heaters and heat pumps. Ingersoll Rand has a later
filed, pending intent-to-use U.S. trademark application seeking to register its
ECOWISE and Design Mark (Serial No. 86,612,974, see Exhibit E hereto) in the
identical international class and U.S. classes, for identical or very similar products
including air conditioners, chillers, heating and ventilation systems and equipment,
heaters, fans, HVAC systems, water heaters, air handlers, refrigeration units, and
temperature control units.
27.

Ingersoll Rands ECOWISE products and systems are sold to the

same classes of customers, in the same markets, through the same trade channels,
and using similar methods of sale and promotion, as are Rheems ECONET
products and systems.
28.

Ingersoll Rands use of the ECOWISE and Design Mark which is

very similar to Rheems ECONET and Design Mark, to market and sell identical
or virtually identical products marketed and sold to the same classes of customers
in the same markets and trade channels and using similar methods of sale and
promotion, is likely to confuse, mislead, or deceive the public as to the source and
origin of Ingersoll Rands products or of Rheems products; the affiliation,
connection or association of Ingersoll Rand with Rheem or vice-versa; and/or the

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origin, sponsorship or approval of Ingersoll Rands goods by Rheem or of Rheems

goods by Ingersoll Rand.
29.

On March 5, 2015, Rheem sent a letter to Ingersoll Rand expressing

its concern that Ingersoll Rands adoption and use of its confusingly similar
ECOWISE and Design Mark would lead to consumer confusion, and asking
Ingersoll Rand to cease and desist from its use of the ECOWISE and Design Mark.
(A true and correct copy of this letter is attached hereto as Exhibit F.)
30.

On June 22, 2015, Ingersoll Rand responded to Rheems letter, but

refused to modify of cease using its ECOWISE and Design Mark. (A true and
correct copy of this letter is attached hereto as Exhibit G.)
31.

On July 16, 2015, Rheem sent a more detailed letter to Ingersoll Rand

explaining why use of its ECOWISE and Design Mark would infringe Rheems
ECONET and Design Mark, and again requesting that Ingersoll Rand cease and
desist from using its ECOWISE and Design Mark in its current form including the
spiral circle design. (A true and correct copy of this letter is attached hereto as
Exhibit H.)
32.

As of the filing of this Complaint, Ingersoll Rand has failed and

refused to cease and desist from use of its ECOWISE and Design Mark.

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COUNT I
FEDERAL TRADEMARK INFRINGEMENT
33.

Rheem incorporates herein and realleges, as if fully set forth in this

paragraph, the allegations in Paragraphs 1-32 above, inclusive, as if fully set forth
herein.
34.

The aforesaid actions of Ingersoll Rand in adopting and using the

ECOWISE and Design Mark to market and sell products that are identical or
similar to products marketed and sold by Rheem under its ECONET and Design
Mark, to the same classes of customers in the same markets and trade channels
using similar methods of sale and promotion, is likely to cause confusion, or to
cause a mistake, or to deceive, and thus constitutes infringement of Rheems
federally registered ECONET and Design Mark, in violation of Section 32(1)(a) of
the Lanham Act, 15 U.S.C. 1114(1)(a).
35.

Unless preliminarily and permanently enjoined, Ingersoll Rands

conduct will cause Rheem irreparable harm for which there exists no adequate
remedy at law.
36.

Rheem is entitled to recover from Ingersoll Rand all damages it has

and may later sustain due to Ingersoll Rands improper conduct, and Ingersoll
Rands profits from its improper conduct, in an amount to be proved at trial and to
be trebled, pursuant to 15 U.S.C. 1117.
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37.

The actions of Ingersoll Rand have been willful and deliberate and

amount to exceptional circumstances, justifying an award of attorneys fees to

Rheem pursuant to 15 U.S.C. 1117.
COUNT II
FALSE DESIGNATION OF ORIGIN
38.

Rheem incorporates herein and realleges, as if fully set forth in this

paragraph, the allegations in Paragraphs 1-32 above, inclusive, as if fully set forth
herein.
39.

The aforesaid actions of Ingersoll Rand in adopting and using the

infringing ECOWISE and Design Mark to identify, promote, and sell its goods and
services is likely to cause confusion, mistake or deception as the source and origin
of Ingersoll Rands products and/or of Rheems products; the affiliation,
connection, or association of Ingersoll Rand with Rheem or vice-versa; and/or the
origin, sponsorship and approval of Ingersoll Rands goods by Rheem or of
Rheems goods by Ingersoll Rand.
40.

Unless preliminarily and permanently enjoined, Ingersoll Rands

conduct will cause Rheem irreparable harm for which there exists no adequate
remedy at law.
41.

Rheem is entitled to recover from Ingersoll Rand all damages it has

and may later sustain due to Ingersoll Rands improper conduct, and Ingersoll
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Rands profits from its improper conduct, in an amount to be proved at trial and to
be trebled, pursuant to 15 U.S.C. 1117.
42.

The actions of Ingersoll Rand have been willful and deliberate and

amount to exceptional circumstances, justifying an award of attorneys fees to

Rheem pursuant to 15 U.S.C. 1117.
COUNT III
VIOLATION OF THE GEORGIA DECEPTIVE TRADE PRACTICES ACT
43.

Rheem incorporates herein and realleges, as if fully set forth in this

paragraph, the allegations in Paragraphs 1-32 above, inclusive, as if fully set forth
herein.
44.

By reason of the foregoing, Ingersoll Rand has engaged in acts which

have caused and will continue to cause a likelihood of confusion or

misunderstanding as to the source, sponsorship, approval, or certification of goods
or services.
45.

By reason of the foregoing, Ingersoll Rand has engaged in acts which

have caused and will continue to cause a likelihood of confusion or

misunderstanding as to the affiliation, connection or association with or
certification of Ingersoll Rand and its goods and services by Rheem or of Rheem
and its goods and services by Ingersoll Rand.

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46.

Ingersoll Rands conduct constitutes unfair competition and unfair and

deceptive trade practices in violation of Georgia law, including the Georgia

Uniform Deceptive Trade Practices Act, O.C.G.A. 10-1-370, et seq.
47.

Ingersoll Rands actions have caused, and unless preliminarily and

permanently enjoined by the Court, will continue to cause irreparable harm to

Rheem and to its business for which there is no adequate remedy at law.
48.

Rheem is entitled to recover attorneys fees and costs based on

Ingersoll Rands unfair competition and unfair and deceptive trade practices.
COUNT IV
COMMON LAW TRADE MARK INFRINGEMENT
49.

Rheem incorporates herein and realleges, as if fully set forth in this

paragraph, the allegations in Paragraphs 1-32 above, inclusive, as if fully set forth
herein.
50.

Rheem has the prior and exclusive common law rights to use the

ECONET and Design Mark to identify its heating, cooling, and water heating
products, systems, and services in the United States.
51.

Ingersoll Rands use of its infringing ECOWISE and Design Mark for

the same and similar products is likely to cause confusion, mistake or deception,
and therefore infringes Rheems ECONET and Design Mark in violation of the
common law of Georgia.
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52.

Ingersoll Rands actions have caused and, unless preliminarily and

permanently enjoined by the Court, will continue to cause irreparable harm to

Rheem and its business for which there is no adequate remedy at law.
53.

Rheem is entitled to recover from Ingersoll Rand all damages

sustained due to Ingersoll Rands improper conduct, in an amount to be proved at

trial.
WHEREFORE, Rheem prays:
1.

That the Court award judgment to Rheem on all counts of the

Complaint;
2.

That Ingersoll Rand, and its officers, agents, employees, and those

persons or entities in active concert or participation with it, be preliminarily and

permanently enjoined and restrained from using the ECOWISE and Design Mark,
or any other copy, reproduction, or variant thereof which is a colorable imitation of
or otherwise likely to be mistaken for or confused with Rheems ECONET or
Design Mark, on or in connection with Ingersoll Rands goods and or services.
3.

That Ingersoll Rand be ordered to recall all products bearing the

ECOWISE and Design mark which have been shipped by or on behalf of Ingersoll
Rand to any customer including, but not limited to, any wholesaler, distributer,

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retailer, consigner, marketer, or contractor, and also deliver to each such customer
a copy of this Courts order as it relates to said injunctive relief.
4.

That Ingersoll Rand be ordered to deliver up for impoundment and for

destruction all marketing, advertising, and promotional materials, packaging,

labels, tags, and other materials including or bearing the ECOWISE and Design
Mark in the possession, custody or control of Ingersoll Rand;
5.

That Ingersoll Rand be required to file with the Court and to serve on

Rheem, within thirty (30) days after service of the Courts order for injunctive
relief as herein prayed, a written report under oath setting forth in detail the manner
and form in which Ingersoll Rand has complied with the Courts order;
6.

That Rheem have a judgment against Ingersoll Rand for any and all

profits derived by Ingersoll Rand and all damages sustained by Rheem by reason
of the acts hereinabove complained of, and that the damages be trebled pursuant to
15 U.S.C. 1117;
7.

That Rheem have a judgment against Ingersoll Rand for all damages

sustained by Rheem by reason of the infringement of its common law trademark

rights;
8.

That Rheem have judgment against Ingersoll Rand for its reasonable

costs and attorneys fees;

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9.

That the Court grant such other, further and different relief as it deems

just and equitable; and

10.

That this action be tried before a jury.

Respectfully submitted, this 9th day of September 2015.

NELSON MULLINS RILEY &

SCARBOROUGH LLP

/s/Mark S. VanderBroek
Mark S. VanderBroek
Georgia Bar No. 724440
Atlantic Station / 201 17th Street, NW / Suite 1700
Atlanta, GA 30363
(404) 322-6000 (phone)
(404) 322-6050 (facsimile)
E-Mail: mark.vanderbroek@nelsonmullins.com

Mark C. Dukes
South Carolina Bar No. 012977
1320 Main Street / 17th Floor
Columbia, SC 29201
(803) 799-2000 (phone)
(803) 256-7500 (facsimile)
E-Mail: mark.dukes@nelsonmullins.com
Pro Hac Vice admission pending
Attorneys for Plaintiff Rheem Manufacturing
Company
~#4826-4648-2982~

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CERTIFICATION OF COMPLIANCE WITH LR 5.1

Counsel for Plaintiff certifies that this document was prepared with Times
New Roman 14 point font.

/s/Mark S. VanderBroek
Mark S. VanderBroek

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