San Jamar Inc. v. D.W.L. Int'l Trading - Complaint

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF WISCONSIN
SAN JAMAR, INC.
)
)
Plaintiff,
)
)
v.
)
)
D.W.L. INTERNATIONAL TRADING,
)
INC.
)
DBA WINCO/ D.W.L. INDUSTRIES CO. )
Defendant.
)
____________________________________)
Civil Action No.
COMPLAINT
Plaintiff San Jamar, Inc. (hereinafter San Jamar) for its Complaint against defendant
D.W.L. International Trading, Inc. d/b/a Winco / D.W.L. Industries Co. (hereinafter Winco),
alleges as follows:
JURISDICTION AND VENUE
1.
This is an action for patent infringement pursuant to United States Patent Laws,
35 U.S.C. 271, et seq.; trademark infringement pursuant to Lanham Act,15 U.S.C. 1114 et
seq.; and unfair competition pursuant to the Lanham Act, 15 U.S.C. 1125 et seq. and Wisconsin
Common Law.
2.
This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
1331, 1332 and 1338, and pursuant to the supplemental jurisdiction of this Court under 28
U.S.C. 1367(a). This Court has personal jurisdiction over Winco under 28 U.S.C. 1400(a)
and because Winco has committed the acts complained of herein within this judicial district.
Venue is proper in this judicial district under 28 U.S.C. 1391 and/or 1400(a).
{00999182.DOC / }
Case 2:16-cv-01142-WED Filed 08/25/16 Page 1 of 17 Document 1
PARTIES
3.
San Jamar is a corporation organized and existing under the laws of the State of
Wisconsin with its principal place of business located at 555 Koopman Lane, Elkhorn,
Wisconsin 53121.
4.
Winco is a corporation existing under the laws of the New York, having its
principal place of business at 65 Industrial Road, Lodi, New Jersey 07644.

FACTUAL BACKGROUND
5.
San Jamar is a worldwide leader in providing solutions for the food service and
facility operations industries. Particularly, San Jamar designs and manufactures solutions for use
in bar, kitchen, washroom and counter service applications. Additional information about San
Jamar can be found at http://www.sanjamar.com.
6.
Upon information and belief, Winco is a manufacturer and distributor of products
for the food service industry. Additional information about Winco can be found at
http://www.wincous.com.
7.
San Jamar has used the distinctive mark, SAF-T-GRIP, since at least as early as
2008 to identify and distinguish the cutting boards it provides to customers from goods provided
by others.
8.
San Jamar uses the, SAF-T-GRIP mark in advertising in the United States by,
among other things, placing the mark on product labeling, advertising at trade shows, using it on
its web site and in product catalogs and brochures. As a result of these and other advertising and
promotional activities using the, SAF-T-GRIP mark, has come to signify a source of quality
cutting boards provided by San Jamar.
{00999182.DOC / }
9.
In connection with its business, San Jamar is the owner of numerous Federal
trademark registrations. One of San Jamars registrations, trademark Reg. No. 3,370,868 (the
868 registration) is for the SAF-T-GRIP mark for cutting boards. A copy of the 868
registration is attached hereto as Exhibit 1.
10.
San Jamars 868 registration is incontestable under 15 U.S.C. 1065.
11.
Winco, upon information and belief, has begun manufacturing and offering
cutting boards for sale under the mark STAYGRIP.

12.
Shown below is an image of a cutting board offered for sale by Winco under the
STAYGRIP mark.
13.
Wincos use of the infringing STAYGRIP mark in the manner described above,
in this District and throughout the United States, is intended to and is likely to cause confusion in
{00999182.DOC / }
the marketplace in that actual and prospective customers are likely to believe that Wincos
cutting boards are associated with, connected to, approved or endorsed by San Jamar.
14.
Upon information and belief, Winco was aware of San Jamars SAF-T-GRIP
trademark and San Jamars use of the mark in connection with cutting boards, and chose to use
the STAYGRIP mark in an effort to induce San Jamars customers to associate San Jamars
goodwill with Winco.
15.
Wincos actions constitute deliberate attempts to trade on San Jamars goodwill
and/or pass itself off as San Jamar.

16.
Upon information and belief, actual confusion between San Jamars cutting board
offered under the SAF-T-GRIP mark, and Wincos cutting board offered under the
STAYGRIP mark has occurred among customers.
17.
In connection with its business, San Jamar is the owner of numerous United States
patents. One of San Jamars patents is United States Patent No. D563,180 (the 180 patent),
entitled Cutting Board, issued by the United Stated Patent & Trademark Office on March 4,
2008, attached hereto as Exhibit 2.
18.
San Jamars 180 patent discloses and claims the ornamental design of a cutting
19.
Shown below is Fig. 10 from San Jamars 180 patent.
board.
{00999182.DOC / }
20.
Upon information and belief, Winco has been manufacturing, using, selling,
offering for sale, and/or importing into the United States, including the Eastern District of
Wisconsin, cutting boards that infringe San Jamars 180 patent.
21.
Shown below is an image taken from Wincos promotional material, of the
cutting board offered for sale under the STAYGRIP mark, which upon information and belief
infringes San Jamars 180 patent.
{00999182.DOC / }
22.
Shown below is an image of a cutting board offered for sale by San Jamar under
the SAF-T-GRIP mark.
23.
Shown below is an illustration of various cutting board offered for sale by Winco
under the STAYGRIP mark. Additional infringing examples of Wincos cutting boards can
be found at is website:
http://www.wincous.com/Search.asp?Keyword=cutting%20board&BigClassName=&SmallClass
Name=&page=2 .
{00999182.DOC / }
24.
Winco has engaged in a pattern of conduct designed to capitalize on San Jamars
goodwill and intellectual property rights by, among other things, using a trademark confusingly
similar to San Jamars SAF-T-GRIP mark, selling cutting boards that have an ornamental
appearance that is very similar to those sold by San Jamar, and mimicking the thickness, shape,
size, colors and surface appearance of San Jamars cutting boards. As a result, Winco has
unfairly competed with San Jamar.
25.
By reason of Wincos conduct, San Jamars has and will continue to suffer
damage to its business, reputation, and goodwill, as well as the loss of sales and profits it would
have made but for the action of Winco. Unless restrained and enjoined, Winco will continue to
do the acts complained of herein, all to San Jamars irreparable harm. San Jamars remedy at law
is not adequate to compensate it for the injuries San Jamar has incurred and will incur.
COUNT 1
Infringement of U.S. Patent D563,180
(Violation of 35 U.S.C. 271)
26.
{00999182.DOC / }
Paragraphs 1-25 above, inclusive, are incorporated herein by reference.
27.
United States Patent No. D563,180 (the 180 patent), entitled Cutting Board,
was issued by the United Stated Patent & Trademark Office on March 4, 2008. A true and
correct copy of the 180 patent is attached hereto as Exhibit 2.
28.
San Jamar is the assignee of the 180 patent, with the full rights to enforce the
180 patent and sue for damages by reason of infringement of the 180 patent.
29.
San Jamar has properly marked its cutting boards with 180 patent number.
30.
Upon information and belief, Winco has infringed and continues to infringe the
180 patent. These infringing acts include, but are not limited to, the manufacture, use, sale,
importation and/or offer for sale of a cutting board claimed in the 180 patent.
31.
Winco is liable for infringement of the 180 patent pursuant to 35 U.S.C. 271.
32.
Wincos acts of infringement have caused damage to San Jamar, and San Jamar is
entitled to recover from Wincos wrongful acts, in an amount subject to proof at trial, pursuant to
35 U.S.C. 284.
33.
Wincos infringement of the 180 patent will continue to harm San Jamar, causing
irreparable harm, for which there is no adequate remedy at law, unless Winco is enjoined by this
Court.
34.
Upon information and belief, Wincos infringement of the 180 patent was done
with knowledge of the 180 patent and was willful and deliberate, justifying the assessment of
treble damages pursuant to 35 U.S.C. 284; and this is an exceptional case, justifying the
awarding of attorneys fees and costs pursuant to 35 U.S.C. 285.
{00999182.DOC / }
COUNT 2
Federal Trademark Infringement
(Violation of Lanham Act 32) (15 U.S.C. 1114)
35.
Paragraphs 1-34 above, inclusive, are hereby incorporated herein by reference and
San Jamar asserts that Winco is liable to San Jamar for trademark infringement under 32 of the
Lanham Act, 15 U.S.C. 1114.
36.
Upon information and belief, Winco has knowingly and willfully infringed San
Jamars registered SAF-T-GRIP mark with an intent to deceive the consuming public by using,
without permission or authority, in commerce, its confusingly similar STAYGRIP mark in
connection with the design, sale, offering for sale, distribution, and advertising of cutting boards.
Such use is likely to cause confusion, mistake, or deception as to the source or origin of Wincos
goods.
37. San Jamars reputation and goodwill have been and are likely to continue to be
damaged by reason of the deception and confusion associated with Wincos use of an infringing
mark.
38. The aforementioned acts relating to the use of Wincos infringing mark were and are
willful and intentional and have caused and are likely to continue to cause San Jamar to suffer
pecuniary damage and irreparable injury.
39. Wincos activities are in violation of 15 U.S.C. 1114.
40. San Jamar has no adequate remedy at law and is entitled to a preliminary and a
permanent injunction enjoining the Winco from further violation of San Jamars trademark
rights.
{00999182.DOC / }
COUNT 3
Unfair Competition
(Violation of Lanham Act 43(a) (15 U.S.C. 1125(a)))
41.
Paragraphs 1-40 above, inclusive, are hereby incorporated herein by reference and
San Jamar asserts that Winco is liable to San Jamar for unfair competition under 43(a) of the
Lanham Act, 15 U.S.C. 1125(a).
42.
San Jamar is the owner of trademark rights in the mark SAF-T-GRIP for cutting
43.
San Jamar has used the SAF-T-GRIP mark in the United States since at least as
boards.
early as 2008 to identify its cutting boards in extensive advertising and promotional activities.
Plaintiff has expended significant sums of money and organizational resources to build
recognition of its SAF-T-GRIP marks. The SAF-T-GRIP marks have come to represent the
high quality cutting boards provided by San Jamar.
44.
Winco is now impermissibly using the STAYGRIP mark on its cutting board to
trade on and benefit from the goodwill that San Jamar has established in San Jamars SAF-TGRIP mark.
45.
San Jamars SAF-T-GRIP cutting boards have been offered with three corner
integrated anti-slip grips, each of which includes three raised arcuate lines, and one corner
integrated anti-slip grip having an integrated hook open to a long edge of the cutting board, in the
United States since at least as early as 2008.
46.
Wincos STAYGRIP cutting boards are offered for sale in the United States
with three corner integrated anti-slip grips, each of which includes three raised arcuate lines, and
one corner integrated anti-slip grip having an integrated hook open to a long edge of the cutting
board.
{00999182.DOC / }
10
47.
San Jamars SAF-T-GRIP cutting boards have been offered with raised text
elements extending along a short edge of the cutting board, opposite the integrated hook, in the
48.
Wincos STAYGRIP cutting boards are offered for sale in the United States
with raised text elements extending along a short edge of the cutting board, opposite the
integrated hook, in the United States since at least as early as 2008.
49.
San Jamars SAF-T-GRIP cutting boards have been offered with corner
integrated anti-slip grips in the colors: red, brown, yellow, blue, green, gray, and purple, in the
50.
Winco has recently introduced its STAYGRIP cutting boards with corner
integrated anti-slip grips in the colors: red, brown, yellow, blue, green, gray, and purple in the
United States.
51.
San Jamars SAF-T-GRIP cutting boards have been offered in at least the
available sizes: 12 x 18 x , 15 x 20 x , and 18 x 24 x , in the United States since at

least as early as 200\8.
52.
Wincos recently introduced STAYGRIP cutting boards have been offered in
the available sizes: 9 x 12 x , 12 x 18 x , 15 x 20 x , and 18 x 24 x .

53.
Upon information and belief, Wincos STAYGRIP cutting boards are offered
for sale and sold with literature including the false statement: Patented built-in hanging hook for
hygienic storage, made in violation of 35 U.S.C. 292(a).
54.
Upon information and belief, the aforementioned acts relating to the Wincos use
of the infringing mark, three corner integrated anti-slip grips, one corner anti-slip grip having an
integrated hook, location of text elements, colors of the integrated anti-slip grips, cutting board
{00999182.DOC / }
11
sizes, use of co-polymer, use of textured surface, and/or false patent marking constitute unfair
competition and are done with an attempt to confuse the consuming public and pass off Wincos
products as those of San Jamar in a manner that is willful and intentional. Such unlawful acts
have caused and are likely to continue to cause San Jamar to suffer pecuniary damage and
irreparable injury.
55.
Wincos use of the STAYGRIP mark, three corner integrated anti-slip grips,
one corner integrated anti-slip grip having an integrated hook, location of text elements, colors of
the integrated anti-slip grips, cutting board sizes, use of co-polymer, use of textured surface,
and/or false patent marking constitutes a violation of 43(a) of the Lanham Act, 15 U.S.C.
1125(a) for which San Jamar has no adequate remedy at law and for which San Jamar is entitled
to a permanent injunction enjoining Winco from further violation of San Jamars rights.
56.
The actions by Winco are willful and with malice.
57.
San Jamar has no adequate remedy at law and is entitled to a preliminary and a
permanent injunction enjoining Winco from further violation of San Jamars rights.
COUNT 4
Unfair Competition under Wisconsin Common Law
58.
Paragraphs 1-57 above, inclusive, are hereby incorporated herein by reference.
59.
Upon information and belief, Winco has knowingly and willfully engaged in
unfair competition by mimicking San Jamars cutting board design, name, and overall
appearance with an intent to deceive the consuming public in connection with the sale, offering
for sale, distribution, and advertising of Wincos cutting board. Such use is likely to cause
confusion, mistake, or deception as to the source or origin of Wincos cutting board.
60.
San Jamar has been and continues to be harmed by Wincos unfairly competitive
acts in violation of Wisconsin common law and unless such conduct is enjoined, will continue to
{00999182.DOC / }
12
suffer irreparable harm that cannot be adequately calculated or compensated solely by money
damages.
61.
San Jamars reputation and goodwill have been and are likely to continue to be
damaged by reason of the deception and confusion associated with Wincos use of Wincos
infringing trade dress.
62.
The actions by Winco are willful and with malice, oppression and fraud.
63.
San Jamar has no adequate remedy at law and is entitled to a preliminary and a
permanent injunction enjoining Winco from further violation of San Jamars rights.
PRAYER FOR RELIEF
WHEREFORE, San Jamar hereby prays for judgment as follows:
1.
That the 180 patent has been infringed by Winco, either literally or under the
doctrine of equivalents;
2.
That Winco has infringed San Jamars registered SAF-T-GRIP mark in
violation of 15 U.S.C. 1114;

3.
That Winco has unfairly competed with San Jamar in violation of
15 U.S.C. 1125(a) and Wisconsin common law;

4.
That Winco has falsely designated the origin of its goods and/or illegally passed
off itself in violation of 15 U.S.C. 1125(a);

5.
That the Court grant a permanent injunction enjoining and restraining Winco, its
officers, agents, servants, affiliates, employees, attorneys and representatives and all those in
privity or acting in concert with Winco and each and all of them from directly or indirectly using
SAF-T-GRIP or any other mark, word or name (including STAYGRIP) which is likely to
cause confusion, mistake, or deceive the public as follows:
{00999182.DOC / }
13
(a)
Using SAF-T-GRIP or STAYGRIP any other name or mark
confusingly similar thereto alone or in combination with other words, names,

styles, titles or marks in connection with cutting boards;
(b)
Holding itself out as the owner of, or otherwise authorized to use SAF-T-
GRIP or STAYGRIP in connection with advertising, promotion, sale, or

offering for sale of cutting boards;
(c)
Performing any actions or using any words, names, styles, titles or marks
which are likely to cause confusion, to cause a mistake or to deceive, or to

otherwise mislead the trade or public into believing that San Jamar and Winco are
one and the same or in some way connected, or that San Jamar is a sponsor of
Winco, or that Winco is in some manner affiliated or associated with or under the
supervision or control of San Jamar, or that the goods and services of Winco
originate with San Jamar or are connected, conducted or offered with the
approval, consent or authorization or under the supervision of San Jamar or are
likely in any way to lead the trade or the public to associate Winco with San
Jamar;
(d)
Using words, names, styles, titles or marks which create a likelihood of
injury to the business reputation of San Jamar or a likelihood of confusion with

San Jamars name and the SAF-T-GRIP mark; and
(e)
Using any trade practices whatsoever, including those complained of in
this Complaint, which tend to unfairly compete with or injure San Jamars
business and the goodwill associated with San Jamars business; and
{00999182.DOC / }
14
(f)
assisting, aiding, or abetting any other person or business entity in
engaging in or performing any of the activities referred to in the above

subparagraphs (a)-(e), or effecting any assignments or transfers, forming new
entities or associations or utilizing any other device for the purpose of
circumventing or otherwise avoiding the prohibitions set forth in subparagraphs
(a)-(e).
6.
That the Court grant a permanent injunction enjoining and restraining Winco, its
officers, agents, servants, affiliates, employees, attorneys and representatives and all those in
privity or acting in concert with Winco and each and all of them from directly or indirectly:
(a)
making, using selling importing, and/or offering for sale any apparatus
that directly and/or indirectly infringes the 180 patent, either literally or under the doctrine of
equivalents; and
(b)
assisting, aiding, or abetting any other person or business entity in
engaging in or performing any of the activities referred to in the above subparagraph (a), or
effecting any assignments or transfers, forming new entities or associations or utilizing any other
device for the purpose of circumventing or otherwise avoiding the prohibitions set forth in
subparagraph (a).
7.
That pursuant to 15 U.S.C. 1118, the Court order that all products, labels, signs,
prints, advertisements, brochures, letterhead, services, and all other items bearing the term
STAYGRIP or any similar combination of words, terms, names or symbols that are the subject
matter of this action, and all means of making the same, be delivered to San Jamar immediately
for destruction;
{00999182.DOC / }
15
8. That Winco be required to pay San Jamar damages for the injuries sustained by
Winco as a consequence of the acts complained of in this Complaint and order that San Jamar
recover its damages arising out of the violation of 15 U.S.C. 1114, 15 U.S.C. 1125, 35 U.S.C.
271 and Wisconsin common law;
9. That Winco be required to account and pay over to San Jamar any and all revenues
and/or profits derived by Winco attributable to the conduct complained of herein;
10. That San Jamar be awarded treble damages for Wincos willful and wanton violation
of San Jamars rights;
11. That Winco be required to pay to San Jamar all of its litigation expenses including
reasonable attorneys fees and costs for this action; and
12.
{00999182.DOC / }
Such other and further relief as the Court deems just and proper.
16
Jury Demand
Plaintiff San Jamar demands that this matter be tried before a jury.
s/Adam L. Brookman___________
Adam L. Brookman
Kyle M. Costello
BOYLE FREDRICKSON, S.C.
840 North Plankinton Avenue
Milwaukee, WI 53203
Telephone:
414-225-9755
Facsimile: 414-225-9753
E-mail: abrookman@boylefred.com
E-mail: kmc@boylefred.com
Attorneys for Plaintiff
San Jamar, Inc.
{00999182.DOC / }
17
Case 2:16-cv-01142-WED Filed 08/25/16 Page 1 of 1 Document 1-1
Ex. 1
US00D 563180S
(12) United States Design Patent do Patent No.:

Young et al.
(54) CUTTING BOARD
Paul Omdoll, Waukesha, WI (US);

Jayson Pearl, Shorewood, WI (US)
-
(73) Assignee: ** Group, Inc., Elkhorn, WI

(**) Term:
::: Mar. 4, 2008
D543,423 S + 5/2007 Benson ........................ D7/698

D549,531 S + 8/2007 Kishbaugh et al. .......... D7/698
(75) Inventors: Michael Young, Mukwonago, WI (US);
US D563,180 S
(45) Date of Patent:
# ,,;
cited by examiner
Primary ExaminerCaron D. Veynar
Assistant ExaminerRicky Pham
(74) Attorney, Agent, or FirmBoyle Fredrickson, S.C.
(57)
14 Years
CLAIM
The ornamental design of a cutting board, substantially as
(22) Filed:
Apr. 19, 2006
(51) LOC (8) CI.
DESCRIPTION
FIG. 1 is a perspective view of one embodiment of a cutting
(21) Appl. No.: 29/258,300
shown and described.
07-04
(52) U.S. Cl. ..........................................
D7/698
(58) Field of Classification Search ................. D7/360,
board in accordance with the new design;

FIG. 2 is a front view of the cutting board of FIG. 1;
,. ,:j,s :
FIG. 3 is a rear view of the cutting board of FIG. 1;
99/446, 449; 131/329; 144/144.51; 269/1315,

269/289 R, 291, 297, 298, 302.1, 289 MR,
- .-
269/315; 294,172. 451/.461
See application file for complete search history.

(56)
References Cited
|U.S. PATENT DOCUMENTS
FIG. 4 is a left side view of the cutting board of FIG. 1;

FIG. 5 is a right side view of the cutting board of FIG. 1;
FIG. 6 is a top view of the cutting board of FIG. 1;
FIG. 7 is a bottom view of the cutting board of FIG. 1;

FIG. 8 is a perspective view of a second embodiment of a
cutting board in accordance with the new design;
3,089,464 A * 5/1963 Mendels ...................... 40,352
1,438,157 A * 12/1922 Bukachek et al. ............ 33/430
FIG. 9 is- a front view

of the cutting
board of FIG. 8:
FIG. 10 is a rear view of the cutting board of FIG. 8:
4,203,231
A : ;1/1981
:
Note ................... ;
D258,036 S
Sabin .......................... D7/698
FIG. 11 is- a left

side- view
of the cutting
board of FIG. 8:
-
538; so; A
.... 144/144.51
FIG. 12 is a right side view of the cutting board of FIG. 8:
5,386,654 A * 2/1995 Kroenke ...................... 38/141
FIG. 13 is a top view of the cutting board of FIG. 8; and,
D507,463 S +
iio); in - - - - - - -
7/2005 Brookman et al. .......... D7/698
6,932,336 B1* 8/2005 Nudo ...................... ...
FIG. 14 is a bottom view of the cutting board of FIG. 8.
D512,281 S + 12/2005 Omdoll et al. ............... D7/698
D519,016 S ^ 4/2006 Nudo ........................... D8/71
1 Claim, 14 Drawing Sheets
Ex. 2
U.S. Patent
Mar. 4, 2008
Sheet 1 of 14
US D563,180 S
U.S. Patent
Mar. 4, 2008
Sheet 2 of 14
US D563,180 S
Q-4)
Fig. 2
U.S. Patent
Mar. 4, 2008
Sheet 3 of 14
US D563,180 S
c
---
(3)
GN]
E->
.
U.S. Patent
Mar. 4, 2008
Sheet 4 of 14
US D563,180 S
Fig. 4
U.S. Patent
Mar. 4, 2008
Sheet 5 of 14
US D563,180 S
Fig. 5
U.S. Patent
Mar. 4, 2008
Sheet 6 of 14
US D563,180 S
Fig. 6
U.S. Patent
Mar. 4, 2008
Sheet 7 of 14
US D563,180 S
Fig. 7
U.S. Patent
Mar. 4, 2008
Sheet 8 of 14
US D563,180 S
U.S. Patent
US D563,180 S
Mar. 4, 2008
Fig. 9
U.S. Patent
Mar. 4, 2008
Sheet 11 of 14
US D563,180 S
U.S. Patent
Mar. 4, 2008
Sheet 12 of 14
US D563,180 S
U.S. Patent
Mar. 4, 2008
Sheet 13 of 14
US D563,180 S
Fig. I 3
U.S. Patent
Mar. 4, 2008
Sheet 14 of 14
US D563,180 S
Fig. 14
CIVIL COVER SHEET
JS 44 (Rev. 11/15)
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.)
Place an X in the appropriate box (required):
Green Bay Division
Milwaukee Division
I. (a) PLAINTIFFS
DEFENDANTS
San Jamar, Inc.
(b)
D.W.L. International Trading, Inc.

D/B/A WINCO/D.W.L. Industries Co.
County of Residence of First Listed Plaintiff Walworth
County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES)
(IN U.S. PLAINTIFF CASES ONLY)

IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
NOTE:
(c) Attorneys (Firm Name, Address, and Telephone Number)

Adam L. Brookman, Kyle M. Costello
Boyle Fredrickson, S.C., 840 N. Plankinton Ave., Milwaukee, WI 53203
414-225-8755
II. BASIS OF JURISDICTION (Place an X in One Box Only)
1
U.S. Government
Plaintiff
3 Federal Question
(U.S. Government Not a Party)
U.S. Government
Defendant
4 Diversity
(Indicate Citizenship of Parties in Item III)
IV. NATURE OF SUIT

CONTRACT
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
REAL PROPERTY
210 Land Condemnation
220 Foreclosure
230 Rent Lease & Ejectment
240 Torts to Land
245 Tort Product Liability
290 All Other Real Property
Attorneys (If Known)
III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff

(For Diversity Cases Only)
PTF
Citizen of This State
1
(Place an X in One Box Only)

TORTS
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
DEF
1
Citizen of Another State
Incorporated and Principal Place

of Business In Another State
Citizen or Subject of a
Foreign Country
Foreign Nation
FORFEITURE/PENALTY
PERSONAL INJURY
365 Personal Injury Product Liability
367 Health Care/
Pharmaceutical
Personal Injury
Product Liability
368 Asbestos Personal
Injury Product
Liability
PERSONAL PROPERTY
370 Other Fraud
371 Truth in Lending
380 Other Personal
Property Damage
385 Property Damage
Product Liability
PRISONER PETITIONS
Habeas Corpus:
463 Alien Detainee
510 Motions to Vacate
Sentence
530 General
535 Death Penalty
Other:
540 Mandamus & Other
550 Civil Rights
555 Prison Condition
560 Civil Detainee Conditions of
Confinement
and One Box for Defendant)

PTF
DEF
Incorporated or Principal Place
4
4
of Business In This State
625 Drug Related Seizure

of Property 21 USC 881
690 Other
BANKRUPTCY
422 Appeal 28 USC 158
423 Withdrawal
28 USC 157
PROPERTY RIGHTS
820 Copyrights
830 Patent
840 Trademark
LABOR
710 Fair Labor Standards
Act
720 Labor/Management
Relations
740 Railway Labor Act
751 Family and Medical
Leave Act
790 Other Labor Litigation
791 Employee Retirement
Income Security Act
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

870 Taxes (U.S. Plaintiff
or Defendant)
871 IRSThird Party
26 USC 7609
IMMIGRATION
462 Naturalization Application
465 Other Immigration
Actions
OTHER STATUTES
375 False Claims Act
376 Qui Tam (31 USC
3729 (a))
400 State Reapportionment
410 Antitrust
430 Banks and Banking
450 Commerce
460 Deportation
470 Racketeer Influenced and
Corrupt Organizations
480 Consumer Credit
490 Cable/Sat TV
850 Securities/Commodities/
Exchange
890 Other Statutory Actions
891 Agricultural Acts
893 Environmental Matters
895 Freedom of Information
Act
896 Arbitration
899 Administrative Procedure
Act/Review or Appeal of
Agency Decision
950 Constitutionality of
State Statutes
V. ORIGIN (Place an X in One Box Only)

1 Original
Proceeding
2 Removed from
State Court
3 Remanded from
Appellate Court
Reinstated or
Reopened
5 Transferred from
Another District
6 Multidistrict
Litigation
(specify)
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
VI. CAUSE OF
ACTION
35 USC 271 et seq., 15 USC 1114 et seq., and 15 USC 1125 et seq.
Brief description of cause:
Patent Infringement, Trademark Infringement, Unfair Competition
VII. REQUESTED IN
COMPLAINT:
VIII. RELATED CASE(S)
IF ANY
DATE
CHECK IF THIS IS A CLASS ACTION

UNDER RULE 23, F.R.Cv.P.
(See instructions):
DEMAND $
JUDGE
CHECK YES only if demanded in complaint:

JURY DEMAND:
Yes
DOCKET NUMBER
SIGNATURE OF ATTORNEY OF RECORD
s/Adam L. Brookman
08/25/2016

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No
AO 440 (Rev. 12/09) Summons in a Civil Action
UNITED STATES DISTRICT COURT

for the
Eastern District
__________
DistrictofofWisconsin
__________
SAN JAMAR, INC.
Plaintiff
v.
D.W.L. International Trading, Inc.
Defendant
)
)
)
)
)
)
)
Civil Action No.
SUMMONS IN A CIVIL ACTION

To: (Defendants name and address)
D.W.L. INTERNATIONAL TRADING, INC.

DBA WINCO/ D.W.L. INDUSTRIES CO.
65 Industrial Road
Lodi, New Jersey 07644
A lawsuit has been filed against you.

Within 21 days after service of this summons on you (not counting the day you received it) or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiffs attorney,
whose name and address are:
Adam L. Brookman
Kyle M. Costello
BOYLE FREDRICKSON, S.C.
840 North Plankinton Avenue
Milwaukee, WI 53203
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
JON W. SANFILIPPO
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
AO 440 (Rev. 12/09) Summons in a Civil Action (Page 2)
Civil Action No.

PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
This summons for (name of individual and title, if any)
was received by me on (date)
I personally served the summons on the individual at (place)

on (date)
; or
I left the summons at the individuals residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date)
, and mailed a copy to the individuals last known address; or
I served the summons on (name of individual)
, who is
designated by law to accept service of process on behalf of (name of organization)

on (date)
; or
I returned the summons unexecuted because
; or
Other (specify):
.
My fees are $
for travel and $
for services, for a total of $
0.00
I declare under penalty of perjury that this information is true.
Date:
Servers signature
Printed name and title
Servers address
Additional information regarding attempted service, etc:
Print
Case 2:16-cv-01142-WED
Filed 08/25/16 Page 2 of 2 Document 1-4 Reset
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San Jamar Inc. v. D.W.L. Int&#39;l Trading - Complaint

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San Jamar Inc. v. D.W.L. Int&#39;l Trading - Complaint

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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF WISCONSIN

SAN JAMAR, INC.

Civil Action No.

Case 2:16-cv-01142-WED Filed 08/25/16 Page 1 of 17 Document 1

principal place of business at 65 Industrial Road, Lodi, New Jersey 07644.

Upon information and belief, Winco is a manufacturer and distributor of products

Case 2:16-cv-01142-WED Filed 08/25/16 Page 2 of 17 Document 1

San Jamars 868 registration is incontestable under 15 U.S.C. 1065.

cutting boards for sale under the mark STAYGRIP.

Case 2:16-cv-01142-WED Filed 08/25/16 Page 3 of 17 Document 1

Wincos actions constitute deliberate attempts to trade on San Jamars goodwill

and/or pass itself off as San Jamar.

Shown below is Fig. 10 from San Jamars 180 patent.

Case 2:16-cv-01142-WED Filed 08/25/16 Page 4 of 17 Document 1

Shown below is an image taken from Wincos promotional material, of the

Case 2:16-cv-01142-WED Filed 08/25/16 Page 5 of 17 Document 1

the SAF-T-GRIP mark.

Case 2:16-cv-01142-WED Filed 08/25/16 Page 6 of 17 Document 1

Winco has engaged in a pattern of conduct designed to capitalize on San Jamars

Paragraphs 1-25 above, inclusive, are incorporated herein by reference.

Case 2:16-cv-01142-WED Filed 08/25/16 Page 7 of 17 Document 1

Case 2:16-cv-01142-WED Filed 08/25/16 Page 8 of 17 Document 1

Case 2:16-cv-01142-WED Filed 08/25/16 Page 9 of 17 Document 1

Case 2:16-cv-01142-WED Filed 08/25/16 Page 10 of 17 Document 1

available sizes: 12 x 18 x , 15 x 20 x , and 18 x 24 x , in the United States since at

Wincos recently introduced STAYGRIP cutting boards have been offered in

the available sizes: 9 x 12 x , 12 x 18 x , 15 x 20 x , and 18 x 24 x .

Case 2:16-cv-01142-WED Filed 08/25/16 Page 11 of 17 Document 1

The actions by Winco are willful and with malice.

Paragraphs 1-57 above, inclusive, are hereby incorporated herein by reference.

Case 2:16-cv-01142-WED Filed 08/25/16 Page 12 of 17 Document 1

That Winco has infringed San Jamars registered SAF-T-GRIP mark in

violation of 15 U.S.C. 1114;

That Winco has unfairly competed with San Jamar in violation of

15 U.S.C. 1125(a) and Wisconsin common law;

off itself in violation of 15 U.S.C. 1125(a);

Case 2:16-cv-01142-WED Filed 08/25/16 Page 13 of 17 Document 1

Using SAF-T-GRIP or STAYGRIP any other name or mark

confusingly similar thereto alone or in combination with other words, names,

GRIP or STAYGRIP in connection with advertising, promotion, sale, or

which are likely to cause confusion, to cause a mistake or to deceive, or to

Using words, names, styles, titles or marks which create a likelihood of

injury to the business reputation of San Jamar or a likelihood of confusion with

Using any trade practices whatsoever, including those complained of in

Case 2:16-cv-01142-WED Filed 08/25/16 Page 14 of 17 Document 1

assisting, aiding, or abetting any other person or business entity in

engaging in or performing any of the activities referred to in the above

assisting, aiding, or abetting any other person or business entity in

Case 2:16-cv-01142-WED Filed 08/25/16 Page 15 of 17 Document 1

Case 2:16-cv-01142-WED Filed 08/25/16 Page 16 of 17 Document 1

Case 2:16-cv-01142-WED Filed 08/25/16 Page 17 of 17 Document 1

Case 2:16-cv-01142-WED Filed 08/25/16 Page 1 of 1 Document 1-1

(12) United States Design Patent do Patent No.:

(54) CUTTING BOARD

Paul Omdoll, Waukesha, WI (US);

(73) Assignee: ** Group, Inc., Elkhorn, WI

::: Mar. 4, 2008

D543,423 S + 5/2007 Benson ........................ D7/698

(75) Inventors: Michael Young, Mukwonago, WI (US);

(45) Date of Patent:

(74) Attorney, Agent, or FirmBoyle Fredrickson, S.C.

The ornamental design of a cutting board, substantially as

(21) Appl. No.: 29/258,300

San Jamar Inc. v. D.W.L. Int'l Trading - Complaint

San Jamar Inc. v. D.W.L. Int'l Trading - Complaint