Free Complaint - District Court of Delaware - Delaware

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 1 of 12

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE EXXONMOBIL OIL CORPORATION, Plaintiff, v. HYUNDAI MOBIS, CO., LTD., MOBIS AMERICA, INC., MOBIS PARTS AMERICA, LLC, MOBIS PARTS DETROIT, LLC, and MOBIS ALABAMA, LLC, Defendants. § § § § § § § § § § § §

CIVIL ACTION NO.________

COMPLAINT FOR TRADEMARK AND SERVICE MARK INFRINGEMENT, DILUTION, UNFAIR COMPETITION, AND UNJUST ENRICHMENT For its complaint, ExxonMobil Oil Corporation, appearing through the undersigned counsel, alleges as follows based on present knowledge, information and belief: PARTIES 1. ExxonMobil Oil Corporation ("Mobil") is a New York corporation having its

principal place of business at 5959 Las Colinas Boulevard, Irving, TX 75039. 2. Defendant Hyundai Mobis, Co. Ltd. ("Hyundai Mobis") is a Korean corporation

with a business address of 140-2, Gye-Dong, Jongro-Gu, Seoul, Republic of Korea. 3. Defendant Mobis America, Inc. ("Mobis America") is a Delaware corporation

with a business address 2821 Eastern Blvd., Suite 100, Montgomery, AL 36109. 4. Defendant Mobis Parts America, LLC ("Mobis Parts") is a Delaware limited

liability company with a business address 10805 NW 100th Street, Suite 11, Miami, FL 33131. 5. Defendant Mobis Parts Detroit, LLC ("Mobis Detroit") is a Delaware limited

liability company with a business address 32000 Northwestern Hwy., Suite 260, Farmington Hills, MI 48334.

RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 2 of 12

6.

Defendant Mobis Alabama, LLC ("Mobis Alabama") is a Delaware limited

liability company with a business address 2821 Eastern Blvd., Suite 100, Montgomery, AL 36109. 7. On information and belief Mobis America, Mobis Parts, Mobis Detroit, and

Mobis Alabama are all owned and controlled by Hyundai Mobis, and Hyundai Mobis caused each of these other defendants to be formed in the state of Delaware. The defendants are hereinafter collectively referred to as "Mobis" or "Defendants." NATURE OF ACTION AND JURISDICTION 8. This is an action for trademark and service mark infringement, dilution, unfair

competition, and unjust enrichment under the Trademark Act of 1946, as amended, 15 U.S.C. § 1051 et seq. ("Lanham Act"), and the laws of the State of Delaware. 9. This Court has jurisdiction over this action under 15 U.S.C. § 1121 and 28 U.S.C.

§§ 1331 and 1338, and supplemental jurisdiction over Mobil's claims under Delaware law under 28 U.S.C. § 1367(a). 10. The matter in controversy in this action exceeds the sum of $75,000, exclusive of

interest and costs, and is between citizens of different states. Therefore, this Court also has jurisdiction over this action under 28 U.S.C. § 1332. FACTS A. Mobil and Its Marks 11. Mobil, along with its predecessors and affiliates, has for many years been a

leading source of petroleum and chemical products and services, including automotive products and services, worldwide. In the United States alone, Mobil sells millions of gallons of fuels, lubricants, and specialty petroleum products per day under its famous mark MOBIL. The mark MOBIL is prominently displayed at thousands of gasoline stations nationwide. 2
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 3 of 12

12.

Since at least the 1930s, Mobil, its affiliated companies, and its independent

dealers and distributors have used the mark MOBIL in connection with retail gasoline service stations. 13. Since at least the 1960s, Mobil has presented its mark MOBIL in a distinctive

logo (the "MOBIL logo"), with blue lettering for all letters except the "o," which is presented in red, usually set against a white background as follows:

14.

Mobil has also long used other marks that include the mark MOBIL in connection

with its business. For example, Mobil's famous MOBIL TRAVEL GUIDE has been a leading guide for motorists and other consumers for more than forty years, and features the MOBIL logo. Another example is Mobil's MOBIL 1 motor oil, the world's leading synthetic motor oil. 15. The mark MOBIL, the MOBIL logo, and the other marks including MOBIL

(collectively the "MOBIL Marks") are inherently distinctive, serving to identify and indicate the source of Mobil's goods and services to the consuming public, and to distinguish its goods and services from those of others. 16. Additionally, as a result of Mobil's extensive usage and promotion of the MOBIL

Marks, the marks have become distinctive to designate Mobil and its products and services, and are well-known and widely recognized by consumers. Mobil has developed great and valuable goodwill in the MOBIL Marks. Consumers know and respect these marks as symbols of Mobil's commitment to quality, value, and convenience. 17. In addition to its extensive common-law rights, Mobil owns numerous trademark

registrations for its MOBIL Marks, including the following examples in the United States:

3
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 4 of 12

MARK MOBIL MOBIL

REG. NO. 337,002 363,312

REG. DATE July 28, 1936 Dec. 20, 1938

GOODS/SERVICES Lubricating oils and greases (Class 4). Lubricating oils and greases, and for petroleum fuel distillates, in the nature of gasoline, diesel-engine fuel, furnace oils and the like (Class 4). Antifreeze and coolants; automatic transmission fluid (Class 1); circulating oil; engine oil; gasoline; greases, lubricating oil; machinery oil; metal processing oil; motor oil; penetrating oil (Class 4).

1,015,027 [lined for the colors red ("o") and blue (remaining letters)] MOBIL MOBIL 1,020,511 1,046,513 1,049,824 [lined for the colors red ("o") and blue (remaining letters)] 1,053,493

July 8, 1975

Travel guides, travel maps and Sep. 16, 1975 periodicals-namely, house organs issued quarterly and monthly (Class 16). Automotive service station services Aug. 17, 1976 (Class 37). Oct. 5, 1976 Automotive service station services including car wash services and emergency road services (Class 37).

Nov. 30, 1976 Synthesized engine lubricant (Class 4).

[lined for the colors red ("o") and blue (remaining letters)] MOBIL TRAVEL GUIDE

1,491,099

June 7, 1988

Annually published books containing quality ratings of lodgings and restaurants (Class 16). High performance oil filters for motors and engines (Class 7).

2,133,386

Jan. 27, 1998

[lined for the colors red ("o") and blue (remaining letters)]

4
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 5 of 12

Each of these registrations is valid, subsisting, and in full force and effect. Copies of these registrations are attached as Exhibit A. 18. MOBIL stations are among the most widespread and recognizable gasoline

stations in the United States. There are thousands of MOBIL branded gasoline retail service stations in the United States, with billions of dollars in sales per year. 19. Over the years, Mobil and its predecessors have invested considerable effort and

resources promoting the MOBIL Marks and stations and spent many millions of dollars advertising them. 20. 21. The MOBIL Marks are famous. Since at least as early as 1996, Mobil's famous marks MOBIL, MOBIL 1, and the

MOBIL logo have been used on engine oil filters. B. Defendants and Their Unauthorized Activities 22. Long after Mobil had used and registered its MOBIL Marks and those marks had

become famous, Mobis began using the mark MOBIS in the United States. 23. Mobis operates various automotive businesses under the mark MOBIS and

variations of that mark, including MOBIS AMERICA, MOBIS PARTS AMERICA, MOBIS PARTS DETROIT, and MOBIS ALABAMA. Mobis uses the mark MOBIS in connection with the manufacture and sale in commerce of automobile parts and assemblies. 24. On October 25, 2000, Hyundai Mobis, through its predecessor, filed an application to

register the mark MOBIS under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051. Based on this application, Registrant obtained Registration No. 2698373 (the "Registration"), issued on March 18, 2003, for the mark MOBIS. As amended, the Registration covers "structural parts for automobiles, trucks, sport utility vehicles, vans, and buses; automobile accessories, namely, luggage carriers for automobiles, automobile anti-theft alarms, and automobile sunshades and window sun-blinds," in 5
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 6 of 12

International Class 12. Mobil has filed Cancellation No. 92046493 in the United States Patent and Trademark Office ("USPTO") to cancel this registration. 25. On December 3, 2003, Hyundai Mobis, thorough its predecessor, filed

Application Serial No. 76/563,034 in the USPTO to register the mark MOBIS for numerous automotive and related goods. Those goods include "engine oil filters for mechanical purposes"; "spark plugs for automobile motors"; "mechanical engine parts for land vehicles"; "leak and filling level detectors and electronic detectors for analyzing system performance and testing integrity of structural parts for automobiles"; "electric lamps and lighting components and instruments and parts for motor vehicles"; and "structural parts for automobiles" in International Classes 7, 9, 11, and 12, to name just a few. Mobil timely opposed this application in the USPTO (Opposition No. 91173265). 26. Mobis consistently presents its mark MOBIS with the "o" set off from the rest of

the mark in the color red, like the famous MOBIL logo. On www.mobisusa.com, a web site that on information and belief is owned and controlled by Hyundai Mobis or another related company, Mobis even presents its mark MOBIS in the identical color scheme as the MOBIL logo, i.e, presenting the mark with blue lettering for all letters except the "o," which is set off in red, all against a white background, as follows:

27.

Similarly, a specimen that Hyundai Mobis submitted to the USPTO showing its

use of the mark MOBIS in the United States featured the mark MOBIS using the same red, white, and blue colors as the MOBIL logo, i.e, presenting the mark with white lettering for all letters except the "o," which is set off in red, all against a blue background, as follows:

6
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 7 of 12

28.

Mobis' mark MOBIS is confusingly similar to Mobil's MOBIL Marks. The marks

are identical except for the final letter, and the goods and services offered under the mark MOBIS (and for which Mobis has applied to register that mark) are similar or related to the automotive products and services Mobil offers under its MOBIL Marks. Additionally, Mobil's MOBIL Marks are of sufficient fame and reputation among consumers that when the mark MOBIS is used in connection with Mobis' goods and services, a connection with Mobil would be presumed by consumers. This is especially true when Mobis uses the mark MOBIS with a red "o" as in the MOBIL logo. 29. Mobil has not authorized Mobis to use the MOBIL Marks or any mark

confusingly similar to the MOBIL marks. 30. Mobis has set out on a deliberate course of conduct to deceive consumers into

believing that its products and services are connected or affiliated with Mobil, to trade on 7
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 8 of 12

Mobil's enormous goodwill, and to injure Mobil. Mobis seeks to accomplish these goals by intentionally imitating the distinctive MOBIL mark and logo and using in commerce such a confusingly similar trademark. C. Effect of Mobis' Activities on Mobil and the Consuming Public 31. Mobis' unauthorized use of the mark MOBIS is likely to cause confusion, to

cause mistake, and to deceive customers and potential customers of the parties, at least as to some affiliation, connection or association of Mobis or its business with Mobil, or as to the origin, sponsorship, or approval of the goods and services offered by Mobis. 32. Mobis' unauthorized use of its confusingly similar mark MOBIS falsely indicates

to purchasers that Mobis, its business, or its goods or services originate with Mobil, or are affiliated, connected, or associated with Mobil, or are sponsored, endorsed, or approved by Mobil, or are in some manner related to Mobil and its goods or services. 33. Mobis' unauthorized use of its confusingly similar mark MOBIS falsely

designates the origin of Mobis' goods or services, and falsely or misleadingly describes and represents facts with respect to Mobis and its goods or services. 34. Mobis' unauthorized use of its confusingly similar mark MOBIS enables it to

trade on and receive the benefit and goodwill built up at great labor and expense over many years by Mobil, and to gain acceptance for its MOBIS business, goods, and services not solely on their own merits, but on the reputation and goodwill of Mobil and its marks, goods, and services. 35. Mobis' unauthorized use of its confusingly similar mark MOBIS enables it to

palm off its goods and services on the unsuspecting public as those of Mobil. 36. Mobis' unauthorized use of its confusingly similar mark MOBIS removes from

Mobil the ability to control the nature and quality of goods and services provided under the 8
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 9 of 12

MOBIL mark, and places the valuable reputation and goodwill of Mobil in the hands of Mobis, over whom Mobil has no control. 37. Mobis' unauthorized use of its confusingly similar mark MOBIS is likely to cause

dilution of Mobil's famous MOBIL Marks. 38. Unless these acts of unfair competition by Mobis are restrained by this Court,

they will continue, and will continue to cause irreparable injury to Mobil and to the public, for which there is no adequate remedy at law. D. Willful Nature of Mobis' Activities 39. Mobis' acts of infringement, dilution, and unfair competition complained of

herein have been malicious, fraudulent, deliberate, willful, intentional, and in bad faith, with full knowledge and conscious disregard of Mobil's rights. In view of the egregious nature of Mobis' use of its mark MOBIS, this is an exceptional case within the meaning of Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a). COUNT I: INFRINGEMENT OF REGISTERED MARKS 40. 41. Mobil repeats the allegations above as if fully set forth herein. The acts of Mobis complained of herein constitute infringement of Mobil's

registered MOBIL Marks in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114. COUNT II: FEDERAL TRADEMARK DILUTION 42. 43. Mobil repeats the allegations above as if fully set forth herein. The acts of Mobis complained of herein constitute dilution of Mobil's famous

MOBIL Mark in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). 44. dilution. 9
RLF1-3131913-1

Mobis willfully intended to trade on Mobil's reputation and to cause such

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 10 of 12

COUNT III: VIOLATION OF LANHAM ACT SECTION 43(a) 45. 46. Mobil repeats the allegations above as if fully set forth herein. The acts of Mobis complained of herein constitute trademark infringement and

unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). COUNT IV: UNJUST ENRICHMENT 47. 48. Mobil repeats the allegations above as if fully set forth herein. The acts of Mobis complained of herein constitute unjust enrichment of Mobis at

Mobil's expense. COUNT V: TRADEMARK DILUTION UNDER DELAWARE LAW 49. 50. Mobil repeats the allegations above as if fully set forth herein. The acts of Mobis complained of herein constitute trademark dilution in violation

of the Delaware anti-dilution statute, 6 Del. C. § 3313. COUNT VI: UNFAIR COMPETITION UNDER DELAWARE COMMON LAW 51. 52. Mobil repeats the allegations above as if fully set forth herein. The acts of Mobis complained of herein constitute trademark infringement and

unfair competition in violation of the common law of Delaware. COUNT VII: CANCELLATION OF FEDERAL TRADEMARK REGISTRATION AND REFUSAL OF APPLICATION FOR REGISTRATION 53. 54. Mobil repeats the allegations above as if fully set forth herein. This Court has the power under 15 U.S.C. § 1119 to cancel Hyundai Mobis'

registration of the mark MOBIS and the power under 15 U.S.C. § 1119 and 28 U.S.C. § 2201 to determine Hyundai Mobis' right to registration of the mark MOBIS.

10
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 11 of 12

55.

Hyundai Mobis' mark MOBIS, the subject of Registration No. 2698373, so

resembles Mobil's MOBIL Marks as to be likely to cause confusion, or to cause mistake, or to deceive, and to cause dilution of its famous MOBIL Marks, individually and collectively. Registration should therefore be cancelled under 15 U.S.C. § 1064. 56. Hyundai Mobis' mark MOBIS, the subject of Application Serial No. 76/563,034,

so resembles Mobil's MOBIL Marks as to be likely to cause confusion, or to cause mistake, or to deceive, and to cause dilution of its famous MOBIL Marks, individually and collectively. Registration should therefore be refused under 15 U.S.C. § 1052.

WHEREFORE, Mobil requests that: a) Defendants, their officers, agents, servants, employees, attorneys, and all those persons in active concert or participation with them, be preliminarily and permanently enjoined from using the mark MOBIS and any other mark that is confusingly similar to any of the MOBIL Marks or any other mark owned by Mobil; b) Defendants be ordered to file with this Court and to serve upon Mobil, within 30 days after the entry and service on Defendants of an injunction, a report in writing and under oath setting forth in detail the manner and form in which Defendants have complied with the injunction; c) Mobil recover all damages it has sustained as a result of Mobis' infringement, dilution, and unfair competition, and that said damages be trebled;

11
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1

Filed 03/28/2007

Page 12 of 12

d)

An accounting be directed to determine Defendants' profits resulting from their activities, and that such profits be paid over to Mobil, increased as the Court finds to be just under the circumstances of this case;

e)

The Court determine that Hyundai Mobis is not entitled to registration of its mark MOBIS, and enter an Order pursuant to 15 U.S.C. § 1119, certified to the United States Patent and Trademark Office, directing that U.S. Registration No. 2698373 be cancelled with prejudice and that U.S. Application Serial No. 76/563,034 be refused with prejudice;

f) g)

Mobil recover its reasonable attorney fees; Mobil recover its costs of this action and prejudgment and post-judgment interest; and

h)

Mobil recover such other relief as the Court may deem appropriate.

Of Counsel: Louis T. Pirkey William G. Barber Stephen P. Meleen PIRKEY BARBER LLP 600 Congress Avenue, Suite 2120 Austin, Texas 78701 (512) 322-5200

_/s/ William J. Wade William J. Wade (#704) Gregory E. Stuhlman (4765) Richards, Layton & Finger, P.A. One Rodney Square Wilmington, Delaware 19801 (302) 651-7700 (302) 651-7701 (fax) Attorneys for ExxonMobil Oil Corporation

Dated: March 28, 2007

12
RLF1-3131913-1

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 1 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 2 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 3 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 4 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 5 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 6 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 7 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 8 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 9 of 10

Case 1:07-cv-00177-GMS

Document 1-2

Filed 03/28/2007

Page 10 of 10

Case 1:07-cv-00177-GMS

Document 1-3

Filed 03/28/2007

Page 1 of 2

Case 1:07-cv-00177-GMS

Document 1-3

Filed 03/28/2007

Page 2 of 2

Case 1:07-cv-00177-GMS

Document 1-4

Filed 03/28/2007

Page 1 of 1