CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 1 of 10

UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA
__________________________________________
)
ROCKLER COMPANIES, INC.,
)
)
Civil No.
Plaintiff,
)
)
v.
)
COMPLAINT
)
FRANKLIN INTERNATIONAL, INC.,
)
)
JURY TRIAL REQUESTED
Defendant.
)
__________________________________________)
Plaintiff, Rockler Companies, Inc. (Rockler), for its Complaint against defendant
Franklin International, Inc. (Franklin) states and alleges as follows:
PARTIES
1.

Plaintiff Rockler is a Minnesota Corporation having a place of business at 4365

Willow Drive, Medina, Minnesota 55340.

2.

Defendant Franklin is an Ohio Corporation having a place of business at 2020

Bruck Street, Columbus, Ohio 43207. Franklin makes and sells a variety of adhesives and
polymers throughout the United States, including through several dealers in Minnesota. Franklin
sells its products under the brand name Titebond.
JURISDICTION AND VENUE
3.

This is an action for patent infringement under 35 U.S.C. 271, and unfair

competition under 15 U.S.C. 1125(a).

4.

This Court has subject matter jurisdiction under 28 U.S.C. 1331 and 1338(a).

5.

This Court has personal jurisdiction over Franklin because it conducts business in

the State of Minnesota.

6.

Venue lies in this Court pursuant to 28 U.S.C. 1391.

1

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 2 of 10

PRELIMINARY ALLEGATIONS
7.

Rockler is a leader in woodworking and hardware retail industry, with a

nationwide chain of stores and global sales via its catalogs and internet website. Rockler is a
dealer of Franklin products and sells Franklin products in Minnesota.
8.

Rockler is an innovator in woodworking and hardware products, having received

over 40 United States Patents.

9.

In or about early 2012, Rockler developed a distinctive glue brush with silicone

bristles (the Rockler glue brush), for which Rockler was subsequently granted U.S. Design
Patent No. D738,628 (the 628 Patent) on September 15, 2015. Attached hereto as Exhibit A is
a true and correct copy of the 628 Patent.
10.

In April 2012, representatives of Rockler met with representatives of Franklin and

discussed Rocklers interest in granting Franklin distribution rights for the Rockler glue brush.
11.

As part of Rocklers discussions with Franklin, Rockler provided Franklin with

Rockler glue brush samples (as shown below) for Franklins use in conducting market testing.

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 3 of 10

12.

In the course of the aforementioned discussions, Rockler notified Franklin that

Rockler was seeking patent protection for the Rockler glue brush.
13.

Franklin subsequently decided it would not distribute the Rockler glue brush.

14.

On December 1, 2015, United States Design Patent No. D744, 241, entitled Glue

Brush Head (hereinafter the 241 Patent) was duly and legally issued. A true and correct
copy of the 241 Patent is attached hereto as Exhibit B.
15.

Rockler is the exclusive owner by assignment of the 241 Patent and the 628

16.

Rocker, markets, and sells products that are made under the 241 Patent and the

Patent.

628 Patent.
COUNT I FOR INFRINGEMENT OF U.S. PATENT NO. D744,241
17.

In August 2016, Franklin was an Exhibitor at the International Woodworking Fair

(IWF) in Atlanta Georgia, where Franklin displayed several of its products, including a glue
brush under the name Titebrush.
18.

Representatives of Rockler were also in attendance at the 2016 IWF. At or about

the time of the 2016 IWF, Rockler learned for the first time about Franklins Titebrush product.
19.

Rockler subsequently learned that Franklins Titebrush product was being offered

for sale by several retail sources, including but not limited to the following:
a.

McFaddens

(https://mcfaddens.com/p-136099-titebond-titebrush-siliconed-glue-brush-16330.aspx);
b.

Woodcraft

(http://www.woodcraft.com/product/162165/titebond-titebrush.aspx);

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 4 of 10

c.

Tower Hobbies

(http://www3.towerhobbies.com/cgi-bin/WTI0001P?I=LXGBMG&P=8);
d.

National Concrete Accessories

(http://www.nca.ca/product/titebond-titebrush-72878);
e.

ebay

(http://www.ebay.com.au/itm/NEW-Titebond-Titebond-Titebrush-Siliconed-Glue-Brush16330-/391450492479);
f.

Advantage Hobby

(http://www.advantagehobby.com/312404/TIT16330/16330-Titebond-TitebrushSiliconed-Glue-Brush/?gclid=Cj0KEQjwvIO_BRDt27qG3YX0w4wBEiQAsGu3edMSmYb2AyqBNxW_dwxlE_Ul2XXl4B0mJL-IUqxRZ4aAsWD8P8HAQ);
g.

Vortex Hobbies

(https://vortexhobbies.com/titebond-titebond-titebrush-siliconed-glue-brush-tit16330-p172624.html?gclid=Cj0KEQjwvIO_BRDt27qG3YX0w4wBEiQAsGu3eTgGRA6zQqsQKsBFG
kmUqg1ZWvNLg8KNjER7L2lF7caAsYv8P8HAQ&pk_campaign=GoogleShopping&osCsid=0
a3c04698cbdabfd7f37fee9b95d314f);
h.

Stewart McDonalds

(http://www.stewmac.com/Luthier_Tools/Tools_by_Job/Tools_for_Gluing/Titebond_Tit
ebrush.html); and
i.

Lowes

(http://www.lowes.com/pd/Titebond-Paint-Multi-Tool/999990786).

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 5 of 10

20.

Rockler acquired a Titebrush glue brush. Front and side views of the head of the

Titebrush glue brush being made and sold by Franklin and corresponding Figures 2 and 6 of the
241 Patent are shown below:

21.

Viewed as a whole, the head of the Titebrush glue brush is indistinguishable from

the glue brush head design of the 241 Patent.

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 6 of 10

22.

Franklin has been and is directly infringing Rocklers 241 Patent by its

unauthorized making, using, offering to sell, selling, and/or importing a glue brush with a glue
brush head design covered by the 241 Patent.
23.

On information and belief, Franklins infringement has been with knowledge of

Rocklers 628 Patent and 241 Patent.

24.

Franklin has been and is actively inducing others to infringe and/or contributing to

the infringement of the 241 Patent by its unauthorized making, using, offering to sell, selling
and/or importing a glue brush having a glue brush head design covered by the 241 Patent.
25.

On information and belief, Franklins infringement of the 241 Patent has been

and continues to be willful.

26.

Rockler has suffered and will continue to suffer monetary damages as a result of

Franklins infringement of the 241 Patent in an amount to be determined at trial.

27.

Rockler has suffered and will continue to suffer irreparable harm by Franklins

infringement of the 241 Patent unless Franklin is enjoined from infringing the 241 Patent.
COUNT II FOR INFRINGEMENT OF U.S. PATENT NO. D738,628 PATENT
28.

Rockler incorporates by reference the allegations of paragraphs 1-27.

29.

On its website, and through retailers, Franklin has promoted and offered for sale

and continues to promote and offer for sale a version of a Titebrush glue brush that is
indistinguishable from a glue brush design covered by Rocklers 628 Patent. Attached hereto as
Exhibit C is a true and correct copy of Franklins Titebrush glue brush web page
(http://www.titebond.com/product.aspx?id=1891334d-3c09-4d6a-94e8-6852db6dc963).
Attached hereto as Exhibit D is a true and correct copy of a Lowes web page for the Titebrush
glue brush (http://www.lowes.com/pd/Titebond-Paint-Multi-Tool/999990786).

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 7 of 10

30.

Franklin has directly infringed Rocklers 628 Patent by its unauthorized making,

using, offering to sell, selling, and/or importing a glue brush with a design covered by the 628
Patent.
31.

On information and belief, Franklins infringement of the 628 Patent was willful.

32.

Rockler has suffered and will continue to suffer monetary damages as a result of

Franklins infringement of the 628 Patent in an amount to be determined at trial.

33.

Rockler has suffered and will continue to suffer irreparable harm by Franklins

infringement of the 628 Patent unless Franklin is enjoined from infringing the 628 Patent.
COUNT III FOR UNFAIR COMPETITION UNDER SECTION 43(a) OF THE LANHAM
ACT (15 U.S.C. 1125(a))
34.

Rockler incorporates by reference the allegations of paragraphs 1-33.

35.

Rockler has been promoting and selling the Rockler glue brush since 2012.

36.

The appearance of the Rockler glue brush is recognized by consumers as

distinctive of a glue brush available exclusively from Rockler.

37.

The ornamental design of the Rockler glue brush is the subject of the 241 Patent

and the 628 Patent.

38.

Franklin and its retailers have sold and are selling a Titebrush glue brush as

shown below:

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 8 of 10

39.

As shown in Complaint Exhibits C and D, Franklin is unfairly competing with

Rockler by promoting and advertising the Titebrush glue brush shown in paragraph 38 using a
photograph (shown below) of a version of the Titebrush glue brush.

40.

The version of the Titebrush glue brush shown in Exhibits C and D is

indistinguishable from Rocklers protected distinctive design covered by the 241 Patent and
628 Patent so as to cause likely confusion as to the source, sponsorship, or association of
Franklins Titebrush glue brush with Rockler.
41.

On information and belief, Franklins unfair competition was willful.

42.

Rockler has suffered and will continue to suffer monetary damages as a result of

Franklins unfair competition in an amount to be determined at trial.

43.

Rockler has suffered and will continue to suffer irreparable harm by Franklins

unfair competition unless Franklin is enjoined from its unfair competition.

REQUEST FOR JURY TRIAL
44.

Rockler requests a trial by jury on all issues so triable.

PRAYER FOR RELIEF

WHEREFORE, Rockler respectfully requests the Court to enter judgment in its favor
and against Franklin as follows:
A.

That Franklin has infringed the 241 Patent;

B.

That Franklin has infringed the 628 Patent;

8

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 9 of 10

C.

That Franklin has violated Section 43(a) of the Lanham Act by its unfair

competition;
D.

That Franklin and its subsidiaries, parents, officers, directors, agents, servants,

employees, affiliates, attorneys, and all other persons in active concert or participation with
Franklin be enjoined from making, using, selling, offering to sell, and importing products
covered by the 241 Patent and the 628 Patent, and from inducing and/or contributing to the
infringement of the 241 Patent and the 628 Patent;
E.

That Franklin and its subsidiaries, parents, officers, directors, agents, servants,

employees, affiliates, attorneys, and all other persons in active concert or participation with
Franklin be enjoined from unfairly competing with Rockler by using Rocklers glue brush design
to promote Franklins products;
F.

Awarding Rockler its lost profits and/or a reasonable royalty in an amount to be

proved at trial pursuant to 35 U.S.C. 284, including pre-judgment and post-judgment interest;
G.

That Franklins infringement has been willful and awarding enhanced damages

pursuant to 35 U.S.C. 284;

H.

Awarding Rockler Franklins profits in an amount to be proved at trial pursuant to

35 U.S.C. 289, including pre-judgment and post-judgment interest;

I.

Awarding Rockler its actual damages and/or Franklins profits pursuant to 15

U.S.C. 1117 for Franklins unfair competition;

J.

Finding Franklins unfair competition was willful and awarding enhanced

damages to Rockler;

CASE 0:16-cv-03374 Document 1 Filed 10/05/16 Page 10 of 10

K.

That this action is an exceptional case and awarding Rockler its costs,

disbursements and attorneys fees in this action pursuant to 35 U.S.C. 285 and/or 15 U.S.C.
1117; and
L.

Awarding Plaintiff such other relief as the Court may deem just and equitable.
DICKE, BILLIG & CZAJA, PLLC

Dated: October 5, 2016

By: s/John M. Weyrauch

John M. Weyrauch (221,879)
Paul P. Kempf (239,215)
Peter R. Forrest (193,082)
100 South Fifth Street, Suite 2250
Minneapolis, MN 55402
Telephone: (612) 767-2511
Facsimile: (612) 573-2005
ATTORNEYS FOR PLAINTIFF

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EXHIBIT A

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COMPLAINT
EXHIBIT A

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COMPLAINT
EXHIBIT A

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COMPLAINT
EXHIBIT A

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EXHIBIT B

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COMPLAINT
EXHIBIT B

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COMPLAINT
EXHIBIT B

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COMPLAINT
EXHIBIT B

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EXHIBIT C

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COMPLAINT
EXHIBIT C

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EXHIBIT D

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COMPLAINT
EXHIBIT D

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CIVIL COVER SHEET

JS 44 (Rev. 0/16)

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. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

I. (a) PLAINTIFFS

DEFENDANTS

ROCKLER COMPANIES, INC.

FRANKLIN INTERNATIONAL, INC.

(b) County of Residence of First Listed Plaintiff

HENNEPIN

County of Residence of First Listed Defendant

(EXCEPT IN U.S. PLAINTIFF CASES)

NOTE:

(c) Attorneys (Firm Name, Address, and Telephone Number)

(IN U.S. PLAINTIFF CASES ONLY)

IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.

Attorneys (If Known)

John M. Weyrauch, Paul P. Kempf, Peter R. Forrest

Dicke, Billig & Czaja, PLLC, 100 South Fifth St., Suite 2250, Minneapolis,
Mn 55402, (612) 573-2000

II. BASIS OF JURISDICTION (Place an X in One Box Only)

u 1

U.S. Government
Plaintiff

u 3

Federal Question
(U.S. Government Not a Party)

u 2

U.S. Government
Defendant

u 4

Diversity
(Indicate Citizenship of Parties in Item III)

III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff

(For Diversity Cases Only)
PTF
Citizen of This State
u 1

DEF
u 1

and One Box for Defendant)

PTF
DEF
Incorporated or Principal Place
u 4
u 4
of Business In This State

Citizen of Another State

u 2

Incorporated and Principal Place

of Business In Another State

u 5

u 5

Citizen or Subject of a
Foreign Country

u 3

Foreign Nation

u 6

u 6

IV. NATURE OF SUIT (Place an X in One Box Only)

CONTRACT
u
u
u
u
u
u
u

u
u
u
u
u

TORTS

110 Insurance
120 Marine
130 Miller Act
140 Negotiable Instrument
150 Recovery of Overpayment
& Enforcement of Judgment
151 Medicare Act
152 Recovery of Defaulted
Student Loans
(Excludes Veterans)
153 Recovery of Overpayment
of Veterans Benefits
160 Stockholders Suits
190 Other Contract
195 Contract Product Liability
196 Franchise

u
u
u
u
u
u
u
u
u
u

u
u
u
u
u
u

REAL PROPERTY
210 Land Condemnation
220 Foreclosure
230 Rent Lease & Ejectment
240 Torts to Land
245 Tort Product Liability
290 All Other Real Property

u
u
u
u
u
u
u

PERSONAL INJURY
310 Airplane
315 Airplane Product
Liability
320 Assault, Libel &
Slander
330 Federal Employers
Liability
340 Marine
345 Marine Product
Liability
350 Motor Vehicle
355 Motor Vehicle
Product Liability
360 Other Personal
Injury
362 Personal Injury Medical Malpractice
CIVIL RIGHTS
440 Other Civil Rights
441 Voting
442 Employment
443 Housing/
Accommodations
445 Amer. w/Disabilities Employment
446 Amer. w/Disabilities Other
448 Education

FORFEITURE/PENALTY

PERSONAL INJURY
u 365 Personal Injury Product Liability
u 367 Health Care/
Pharmaceutical
Personal Injury
Product Liability
u 368 Asbestos Personal
Injury Product
Liability
PERSONAL PROPERTY
u 370 Other Fraud
u 371 Truth in Lending
u 380 Other Personal
Property Damage
u 385 Property Damage
Product Liability
PRISONER PETITIONS
Habeas Corpus:
u 463 Alien Detainee
u 510 Motions to Vacate
Sentence
u 530 General
u 535 Death Penalty
Other:
u 540 Mandamus & Other
u 550 Civil Rights
u 555 Prison Condition
u 560 Civil Detainee Conditions of
Confinement

u 625 Drug Related Seizure

of Property 21 USC 881
u 690 Other

BANKRUPTCY
u 422 Appeal 28 USC 158
u 423 Withdrawal
28 USC 157
PROPERTY RIGHTS
u 820 Copyrights
u 830 Patent
u 840 Trademark

LABOR
u 710 Fair Labor Standards
Act
u 720 Labor/Management
Relations
u 740 Railway Labor Act
u 751 Family and Medical
Leave Act
u 790 Other Labor Litigation
u 791 Employee Retirement
Income Security Act

u
u
u
u
u

SOCIAL SECURITY
861 HIA (1395ff)
862 Black Lung (923)
863 DIWC/DIWW (405(g))
864 SSID Title XVI
865 RSI (405(g))

FEDERAL TAX SUITS

u 870 Taxes (U.S. Plaintiff
or Defendant)
u 871 IRSThird Party
26 USC 7609

IMMIGRATION
u 462 Naturalization Application
u 465 Other Immigration
Actions

OTHER STATUTES
u 375 False Claims Act
u 376 Qui Tam (31 USC
3729(a))
u 400 State Reapportionment
u 410 Antitrust
u 430 Banks and Banking
u 450 Commerce
u 460 Deportation
u 470 Racketeer Influenced and
Corrupt Organizations
u 480 Consumer Credit
u 490 Cable/Sat TV
u 850 Securities/Commodities/
Exchange
u 890 Other Statutory Actions
u 891 Agricultural Acts
u 893 Environmental Matters
u 895 Freedom of Information
Act
u 896 Arbitration
u 899 Administrative Procedure
Act/Review or Appeal of
Agency Decision
u 950 Constitutionality of
State Statutes

V. ORIGIN (Place an X in One Box Only)

u 1 Original
Proceeding

u 2 Removed from
State Court

u 3

u 6 Multidistrict
Litigation Transfer
(specify)
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
Remanded from
Appellate Court

u 4 Reinstated or
Reopened

u 5 Transferred from
Another District

u 8 Multidistrict
Litigation Direct File

35 U.S.C. Section 271; 15 U.S.C. Section 1125(a)

VI. CAUSE OF ACTION Brief description of cause:

Patent Infringement; Unfair Competition

u CHECK IF THIS IS A CLASS ACTION

VII. REQUESTED IN
UNDER RULE 23, F.R.Cv.P.
COMPLAINT:
VIII. RELATED CASE(S)
(See instructions):
IF ANY
JUDGE
DATE

CHECK YES only if demanded in complaint:

u Yes
u No
JURY DEMAND:

DEMAND $

DOCKET NUMBER

SIGNATURE OF ATTORNEY OF RECORD

s/ John M. Weyrauch

10/05/2016
FOR OFFICE USE ONLY
RECEIPT #

AMOUNT

APPLYING IFP

JUDGE

MAG. JUDGE