SATA GMBH v. Phoenix - Complaint

Case 2:17-cv-02753 Document 1 Filed 10/31/17 Page 1 of 16
1 DICKINSON WRIGHT PLLC

STEVEN A. CALOIARO
2 Nevada Bar No. 12344
Email: scaloiaro@dickinsonwright.com
3 8363 West Sunset Road, Suite 200
Las Vegas, Nevada 89113-2210
4 Tel: (702) 550-4400
Fax: (844) 670-4009
5
Attorney for Plaintiff
6 SATA GmbH & Co. KG
7
IN THE UNITED STATES DISTRICT COURT
8 FOR THE DISTRICT OF NEVADA
9
SATA GmbH & Co. KG, a German
10 Corporation, CASE NO.:
11 Plaintiff, COMPLAINT
12 v. (JURY DEMAND)
13 PHOENIX AUTOMOTIVE
REFINISHING, a Foreign entity,
14
Defendant.
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Plaintiff SATA GmbH & Co. KG (SATA) hereby states its complaint against
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Defendant PHOENIX AUTOMOTIVE REFINISHING (Phoenix) as follows:
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INTRODUCTION
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SATA is a world leader in the production of paint spray guns, airbrushes, workplace
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safety and security equipment, and other related products. The 2017 SEMA trade show is
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currently underway at the Las Vegas Convention Center in Las Vegas, Nevada. Phoenix is
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making its once-yearly appearance in the U.S. to exhibit and offer for sale a paint spray gun that
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infringes SATA's federally registered trademarks and design patents.
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JURISDICTION AND VENUE
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1. This is an action for statutory trademark counterfeiting, trademark infringement,
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false designation of origin, and unfair competition in violation of the Lanham Act, 15 U.S.C.
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1 1051, et seq.; for common law trademark infringement and unfair competition; and for patent
2 infringement in violation of 35 U.S.C. 1, et seq.
3 2. This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C.
4 1119 and 1121, and pursuant to 28 U.S.C. 1331, 1338, and 1367, because this action
5 presents questions arising under the trademark and patent laws of the United States to which
6 Congress has granted exclusive subject matter jurisdiction to the federal courts. This Court has
7 supplemental jurisdiction over Plaintiffs common law claims.
8 3. This Court has personal jurisdiction over Phoenix based upon its infringing acts of
9 advertising, displaying, and offering for sale counterfeit goods bearing SATAs marks in Las
10 Vegas, Nevada, as well as a website that is accessible in the district.
11 4. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b), (c), (d),
12 and 1400(b) because the Phoenix does business in Nevada, has committed acts of infringement
13 in Nevada, and is subject to personal jurisdiction in Nevada.
14 THE PARTIES
15 5. SATA is a German corporation established in 1907 and organized under the laws
16 of Germany.
17 6. Upon information and belief, Phoenix is Chinese Company located at 2 Haoyun

18 Road, 311112 Hangzhou, China.
19 GENERAL ALLEGATIONS
20 Background on SATA
21 7. SATA is a leading manufacturer of paint spray guns, paint spray gun reservoirs,
22 and related equipment principally used to paint automobiles.
23 8. SATAs products are designed and manufactured in Germany and are sold to
24 distributors worldwide.
25 9. Over the past century, SATA has been a leader in the production of paint spray
26 guns, paint spray gun reservoirs, and related equipment. SATAs paint spray guns are highly
27 valued, well known for their quality, performance, and durability, and are used by professional
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1 car repair businesses, automobile manufacturers, yacht and boat builders, carpenters, painters,
2 airbrush/design creators, and hobbyists worldwide.
3 10. SATA offers a wide variety of paint spray guns, including handheld spray guns
4 and spray guns for automatic painting systems.
5 11. SATAs strong reputation and goodwill in the industry is further bolstered by its
6 strong commitment to aiding users of SATA products through free online, telephone, and in-
7 person training services, such as painting tips, forum discussions, useful measurement
8 calculators, video tutorials, and even an encyclopedia of terms.
9 12. Due to the quality of its products and its international reputation for technological
10 innovation, SATA has achieved extensive sales throughout the United States and the world. In
11 the United States, SATA annually produces and sells in excess of 100,000 paint spray guns and
12 paint spray gun reservoirs. Over the last five years, on average, SATA enjoyed annual sales in
13 the United States in excess of $15 million dollars. Internationally, SATA has annual sales in
14 excess of $80 million dollars.
15 13. SATA also has prominently and extensively advertised and promoted products
16 and services offered under the SATA Marks, throughout the United States and the world,
17 through such varied media as the internet, newspapers and magazines, and point-of-sale displays.
18 SATA also operates websites at the <sata.com> and <satausa.com> domain names. As a result,
19 SATA has developed substantial and valuable goodwill in the SATA Marks.
20 14. For many years, SATA has expended millions of dollars annually in advertising
21 and promoting and marketing the SATA Marks in the United States.
22 SATAs Trademark Rights

23 15. SATA owns approximately ninety-two (92) United States trademark registrations
24 for a variety of trademarks used in connection with SATAs products (hereinafter the SATA
25 Marks). The trademarks at issue in this case are:
26 U.S. Trademark Registration No. 2,770,801 (incontestable), a design mark for a

27 green band of color extended around the circumference of a paint spray gun air
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1 cap ring, the green band being narrower than the air cap ring, covering "paint
2 spray guns"; and
3 U.S. Trademark Registration No. 2,793,583, (incontestable), a design mark for a
4 band of [any] color extended around the circumference of a paint spray gun air
5 cap ring, the color band being narrower than the air cap ring and of a color that
6 contrasts with the air cap ring, covering paint spray guns; and
7 U.S. Trademark Registration No. 3,072,417, (incontestable), a design mark for a
8 band of red color extending around the circumference of a paint reservoir for a
9 paint spray gun, the band of red color extends around the circumference of the
10 paint reservoir directly under the screw cap and has a width of approximately 5-
11 20 mm, covering "PAINT SPRAY GUNS AND PARTS THEREOF";
12 U.S. Trademark Registration No. 3,153, 260, (incontestable), a design mark for
13 Green Platelet.
14 True and correct copies of the marks at issue are attached hereto as Exhibit A.
15 16. Through a long period of usage by SATA, the SATA Marks are well-known and
16 famous to customers and potential customers. The SATA Marks serve as an indicator of the
17 origin and source of the goods sold and provided by SATA.
18 17. The SATA Marks are arbitrary and inherently distinctive.

19 SATAs Patent Rights
20 18. In addition to its federal trademark registrations, SATA also possesses substantial
21 patent rights including, without limitation, seventy-nine (79) patents (both utility and design)
22 registered with the United States Patent and Trademark Office. In this case, there are two design
23 patents at issue: U.S. D459,432 and U.S. D459,433 (hereinafter the SATA Patents). Attached
24 hereto as Exhibit B are true and correct copies of the SATA Patents.
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1 U.S. D459,432 (432 Patent)

2 Claim: The ornamental design for a spray gun head ring, as shown and described.
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13 Relevant Description
Those portions of the structures shown in the drawings in form of broken lines represent
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parts of the gun other than the spray head ring. The specific shape of these parts does not limit
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the present design. Diagonal hatching in the figures represents any shade of green coloration.
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Open areas adjacent the diagonal hatching signify surface finish(es) that is/are colored or
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uncolored, including metallic finish, such as chrome, nickel or any other silvery, metallic finish.
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for a contrasting color spray gun head ring; and
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U.S. D459,433 (433 Patent)
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Claim: The ornamental design for a spray gun head ring, as shown and described.
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Relevant Description
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1 Those portions of the structures shown in the drawings in form of broken lines represent
2 parts of the gun other than the spray head ring. The specific shape of these parts does not limit
3 the present design. Solid black shading represents color contrast in the sense that the area(s)
4 so shaded, which may be of any "color", for example red, blue or black, is/are in color contrast
5 with adjacent areas of the design. Open areas adjacent the solid black shading signify surface
6 finish(es) that is/are colored or uncolored, including metallic finish, such as chrome, nickel or
7 any other silvery, metallic finish.
8 The 2017 SEMA Trade Show

9 19. The SEMA trade show is one of the largest annual trade shows canvassing the
10 $477 billion automotive aftermarket industry. Manufacturers and suppliers who attend SEMA
11 represent everything from air conditioning to computer systems, to paint/coating body repair,
12 hand tools, and similarly situated companies. Exhibitors at SEMA generate business (i.e., buy
13 and sell products) and develop and maintain business relationships with key customers and
14 suppliers.
15 20. Typically, exhibitors will take orders and then ship them from their home
16 countries.
17 21. SEMA is currently being held between Tuesday, October 31, 2017, and Friday,
18 November 3, 2015, at the Las Vegas Convention Center in Las Vegas, Nevada, and features
19 thousands of exhibitors and exhibitor booths.

20 22. The 2016 SEMA trade show drew nearly 75,000 domestic and international
21 buyers, and approximately 160,000 attendees.
22 Discovery of Infringement
23 23. On Tuesday, October 31, 2017, SATA representatives attended the SEMA trade
24 show.
25 24. While at the show, SATA representatives observed Phoenix advertising and
26 offering for sale paint spray guns, paint spray gun reservoirs, and related products at SEMA
27 Booth No. 16826.
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1 25. At its booth Phoenix had several pieces of marketing material including large
2 brochures and product posters.
3 26. The large color brochure identifies Phoenixs products by name, picture, and
4 product number.
5 27. The brochure was advertising, offering for sale, and selling Phoenixs 414.172
6 LVMP GRAVITY SPRAY GUN, (Infringing Product). The Infringing Product infringes upon
7 each of SATAs Marks and Patents.
8 28. SATA took photographs of the Infringing Product being advertised in a Catalog.
9 True and accurate copies of the photographs are attached hereto as Exhibit C.
10 29. SATA also discovered that Phoenix operates a website at
11 http://phoenixrefinish.com/index.html. The website contains an advertisement for the Infringing
12 Product which is seen below.
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15 30. PHOENIX maintains a website located at http://Phoenix.com/.

16 31. The website includes the Infringing Product.
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25 32. A true and accurate screenshot of the Infringing Product is attached hereto as
26 Exhibit D.
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1 33. PHOENIX is a foreign company that outside of online sales does not appear to
2 have a known or regular presence in the United States. Once SEMA is over (this Thursday),
3 PHOENIX will leave the United States, presumably with orders for the Infringing Product that
4 infringe SATAs trademarks and design patents, and will continue to sell the Infringing Product
5 from its business location in China to customers located all over the world including the United
6 States.
7 34. One of SATAs major business challenges and a significant threat to its market is
8 the manufacture and sale of infringing and copyright products from China.
9 COUNT I - TRADEMARK COUNTERFEITING - 15 U.S.C. 1114

10 35. SATA hereby realleges and incorporates by reference each and every allegation
11 set forth in the preceding paragraphs.
12 36. Phoenix has used spurious designations that are identical with, or substantially
13 indistinguishable from, the SATA Marks on identical goods.
14 37. Phoenix has intentionally used these spurious designations, knowing they are
15 counterfeit, in connection with the advertisement, promotion, sale, offering for sale and
16 distribution of the Infringing Product.
17 38. Phoenixs use of the SATA Marks to advertise, promote, offer for sale, distribute
18 and sell the Infringing Product bearing infringing trademarks was at all times and is currently
19 without SATAs authorization, license, or consent.

20 39. Phoenixs unauthorized use of the SATA Marks on and in connection with
21 Phoenixs advertisement, promotion, sale, offering for sale, and distribution of the Infringing
22 Product constitutes a use of the SATA Marks in commerce.
23 40. Phoenixs unauthorized use of the SATA Marks is likely to: (a) cause confusion,
24 mistake and deception; (b) cause the public to believe that the Phoenixs Infringing Product is
25 legitimate, and/or that the Infringing Product is authorized by, sponsored by, or approved by
26 SATA, or that Phoenix is affiliated with, connected to, associated with, or in some way related to
27 SATA; (c) result in Phoenix unfairly benefiting from SATAs advertising and promotion; and (d)
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1 result in Phoenix unfairly profiting from SATAs reputation and trademarks all to the substantial
2 and irreparable injury of the public, SATA, the SATA Marks, and the substantial goodwill they
3 represent.
4 41. Phoenixs acts constitute willful trademark counterfeiting in violation of Section

5 32 of the Lanham Act, 15 U.S.C. 1114.
6 42. By reason of the foregoing, Phoenix is liable to SATA for: (a) statutory damages
7 in the amount of up to $2,000,000 for each mark counterfeited as provided by 15 U.S.C.
8 1117(c) of the Lanham Act, or, at SATAs election, an amount representing three (3) times
9 SATAs damages and/or Phoenixs illicit profits; and (b) reasonable attorneys fees, investigative
10 fees, and pre-judgment interest pursuant to 15 U.S.C. 1117.
11 43. SATA is also entitled to temporary, preliminary, and permanent injunctive relief
12 pursuant to 15 U.S.C. 1116(d).
13 COUNT II - TRADEMARK INFRINGEMENT - 15 U.S.C. 1114

16 45. Without SATAs authorization, license, or consent, Phoenix has knowingly used
17 and continues to use in commerce the SATA Marks in connection with the manufacturing,
18 adverting, promoting, importing into, and selling in the United States the Infringing Product.
19 Phoenix has used the SATA Marks with the knowledge of, and the intent to call to mind and
20 create a likelihood of confusion with regard to, and/or trade off SATAs fame and the registered
21 SATA Marks.
22 46. Phoenixs use of the SATA Marks is likely to: (A) confuse, mislead, or deceive
23 customers, purchasers, and members of the general public as to the origin, source, sponsorship,
24 or affiliation of Phoenix and SATA and/or the Infringing Product and SATAs products; and (B)
25 is likely to cause such people to believe in error that the Infringing Product have been authorized,
26 sponsored, approved, endorsed, or licensed by SATA or that the Infringing Product is in some
27 way affiliated with SATA.
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1 47. SATA has no control over the Phoenixs use of the SATA Marks and cannot
2 control the fact that the Phoenix is using the SATA Marks to create the Infringing Product.
3 Therefore, SATAs reputation and goodwill has been and continues to be damaged and the
4 value of the SATA Marks jeopardized by Phoenixs continued use of the SATA Marks and
5 colorable imitations thereof. Because of the likelihood of confusion between the Infringing
6 Product and the SATA Marks, any defects, objections, or faults found with the Infringing
7 Product will negatively reflect upon and injure the exceptional reputation that SATA has
8 established for the products and services it offers in connection with the SATA Marks. As such,
9 Phoenix is liable to SATA for infringement of the SATA Marks pursuant to 15 U.S.C. 1114.
10 48. Phoenixs acts alleged above have caused, and if not enjoined will continue to
11 cause, irreparable and continuing harm to SATAs trademarks, business, reputation, and
12 goodwill. SATA has no adequate remedy at law as monetary damages are inadequate to
13 compensate SATA for the injuries caused by Phoenix to its trademarks, business, reputation, and
14 goodwill.
15 49. As a direct and proximate result of Phoenixs conduct, SATA has suffered and
16 continues to suffer damages to its valuable SATA Marks, and other damages in an amount to be
17 proven at trial.
18 50. Phoenixs infringement of SATAs registered trademarks is deliberate, willful,

19 fraudulent and without any extenuating circumstances, and constitutes a knowing use of the
20 SATA Marks, and an exceptional case within the meaning of 15 U.S.C. 1117(b).
21 51. SATA is entitled to temporary, preliminary, and permanent injunctive relief, as

22 well as an award of Phoenixs profits, actual damages, enhanced profits and damages, costs, and
23 reasonable attorneys fees pursuant to 15 U.S.C. 1114, 1116, and 1117.
24 COUNT III - FALSE DESIGNATION OF ORIGIN/UNFAIR COMPETITION - 15

U.S.C. 1125
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52. SATA hereby realleges and incorporates by reference each and every allegation
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set forth in the preceding paragraphs.
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1 53. Phoenixs use, promotion, offers to sell, sale, and/or importation of the Infringing
2 Product violates Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). The SATA Marks are
3 federally registered, and are entitled to protection under both federal and common law. The
4 SATA Marks have distinctive appearances with unique and non-functional designs. SATA has
5 extensively and continuously promoted and used the SATA Marks for many decades in the
6 United States and worldwide. Through that extensive and continuous use, the SATA Marks have
7 become well-known indicators of the origin and quality of SATAs products and have acquired
8 substantial secondary meaning in the marketplace.
9 54. Phoenixs use of colorable imitations of the SATA Marks constitutes a false
10 designation of origin that is likely to cause consumer confusion, mistake, or deception as to the
11 origin, sponsorship, or approval of the Infringing Product by creating the false and misleading
12 impression that the Infringing Product are manufactured by, authorized by, or otherwise
13 associated with SATA.
14 55. Phoenixs use of colorable imitations of the SATA Marks has caused, and unless
15 enjoined, will continue to cause substantial and irreparable injury to SATA for which SATA has
16 no adequate remedy at law, including at least substantial and irreparable injury to the goodwill
17 and reputation for quality associated with the SATA Marks.
18 56. On information and belief, Phoenixs use of colorable imitations of the SATA
19 Marks has been intentional and willful. Phoenixs bad faith is evidenced at least by Phoenixs
20 use of marks identical to the SATA Marks on the Infringing Product. SATA is entitled to
21 injunctive relief, and SATA is also entitled to recover Phoenixs profits, actual damages,
22 enhanced profits and damages, costs, and reasonable attorneys fees pursuant to 15 U.S.C.
23 1125(a), 1116, and 1117.
24 COUNT IV COMMON LAW TRADEMARK INFRINGEMENT

& UNFAIR COMPETITION
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57. SATA hereby realleges and incorporates by reference each and every allegation
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set forth in the preceding paragraphs.
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1 58. SATA was the first to use the SATA Marks. As a result of SATAs continuous
2 promotion and sales of products bearing the SATA Marks, the SATA Marks have become
3 widely known and SATA has been identified in the public mind as the manufacturer of the
4 products to which the SATA Marks are applied.
5 59. As a result of the experience, care, and service of SATA in producing the
6 products to which the SATA Marks are applied, these products have become widely known and
7 have acquired a worldwide reputation for quality, styling, and utility. Moreover, the SATA
8 Marks have come to symbolize SATAs reputation for quality and excellence. The SATA Marks
9 have also acquired secondary meaning in the marketplace, and are non-functional.
10 60. Phoenix, with knowledge of and with intentional disregard of SATA rights,
11 continues to advertise, promote, and sell products using the SATA Marks, or colorable and
12 confusing imitations thereof. Phoenixs acts are likely to cause, have caused, and will continue
13 to cause confusion as to the source and/or sponsorship of SATAs products and services.
14 61. Phoenixs acts alleged herein and specifically, without limitation, Phoenixs use,
15 manufacture, promotion, offers to sell, selling, and/or importing into the United States products
16 that are confusingly similar to products bearing the SATA Marks, infringes SATA exclusive
17 trademark rights in violation of the common law.
18 62. Phoenixs acts alleged above have caused, and if not enjoined will continue to
19 cause, irreparable and continuing harm to SATAs trademarks, business, reputation, and
20 goodwill. SATA has no adequate remedy at law because monetary damages are inadequate to
21 compensate SATA for the injuries caused by Phoenix to its trademarks, business, reputation, and
22 goodwill.
23 63. On information and belief, Phoenixs use of colorable imitations of the SATA
24 Marks has been intentional and willful. Phoenixs bad faith is evidenced at least by Phoenixs
25 use of marks identical to the SATA Marks on the Infringing Product. SATA is entitled to
26 injunctive relief, and SATA is also entitled to recover Phoenixs profits, actual damages, punitive
27 damages, costs, and reasonable attorneys fees.
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1 Design Patent Infringement - 35 U.S.C. 171 and 289

4 65. Without SATA's authorization, license, or consent, Phoenix has and is continuing
5 to make, use, offer to sell, sell, and/or import into the United States its Infringing Product, which
6 infringe SATA's design patents USD 459,432 and USD 459,433.
7 66. Phoenix infringes on the SATA Design Patents, USD 459,432 and USD 459,433
8 because, inter alia, in the eye of an ordinary observer, giving such attention as a purchaser
9 usually gives, the design of paint spray guns and packaging claimed and disclosed in SATA
10 Design patents are substantially the same as the Phoenixs Infringing Product. The resemblance
11 is as such that an ordinary observer, would likely purchase the Phoenixs Infringing Product,
12 believing it to be SATAs products.
13 67. Phoenixs acts of infringement of the SATA Design Patents were undertaken
14 without authority, permission, or license from SATA. Phoenixs activities violate 35 U.S.C.
15 271.
16 68. SATA has been and continues to be irreparably harmed by Phoenixs past and
17 ongoing infringement of SATA's design patents.
18 69. Phoenixs infringement of SATA's design patents has caused SATA to suffer
19 damages in an amount to be determined at trial.
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1 PRAYER FOR RELIEF

2 WHEREFORE, SATA respectfully prays for:
3 A. Judgment that Phoenix has: (i) willfully engaged in trademark counterfeiting in
4 violation of 15 U.S.C. 1114; (ii) willfully infringed the SATA Marks in violation of 15 U.S.C.
5 1114; (iii) willfully used false designations of origin and/or engaged in unfair competition in
6 violation of 15 U.S.C. 1125(a); (iv) willfully violated SATAs common law rights in the SATA
7 Marks; and (v) willfully infringed the SATA Patents in violation of 35 U.S.C. 171 and 289;
8 B. A temporary, preliminary, and permanent injunction against further

9 counterfeiting, infringement, false designation of origin, and unfair competition directed against
10
the SATA Marks, by Phoenix, its agents, servants, employees, attorneys, and all others in active
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concert or participation with any of them;
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C. A finding that this is an exceptional case within the meaning of 15 U.S.C.
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1117(a);
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D. An award of damages adequate to compensate SATA for the trademark
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infringements that have occurred pursuant to 15 U.S.C. 1117(a), which amount shall include
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Phoenixs profits, SATAs damages, and the costs of the action;
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E. At SATAs election, either: (1) an award of damages adequate to compensate
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19 SATA for the intentional acts of trademark counterfeiting that have occurred, pursuant to 15
20 U.S.C. 1117(b), which amount shall include three times of Phoenixs profits or SATAs
21 damages (whichever is greater), together with reasonable attorneys fees; or (2) statutory
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damages in the amount of: (i) not less than $1,000 or more than $200,000 per counterfeit mark
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per type of goods or services sold, offered for sale, or distributed, as the Court considers just; or
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(ii) if the Court finds that the use of the counterfeit mark was willful, not more than $2,000,000
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per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the
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27 Court considers just;
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1 F. An award of damages adequate to compensate SATA for the patent infringements

2 that have occurred pursuant to 35 U.S.C. 284, or an award of Phoenixs profits from its
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infringements pursuant to 35 U.S.C. 289, whichever is greater, together with prejudgment
4
interest and costs; and
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G. Such other and further relief as this Court deems just and proper.
6
DATED this 31st day of October 2017.
7
8 DICKINSON WRIGHT PLLC
9
/s/ Steven A. Caloiaro
10 STEVEN A. CALOIARO
Nevada Bar No. 12344
11
Email: scaloiaro@dickinsonwright.com
12 8363 West Sunset Road, Suite 200
Las Vegas, Nevada 89113-2210
13 Tel: (702) 550-4400
Fax: (844) 670-4009
14
Attorneys for Plaintiff
15
SATA GmbH & Co. KG
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1 EXHIBIT TABLE
2
Exhibit Description Page(s)1
3 A True and correct copies of SATA U.S. Trademark 4
Registration Certificates
4 B True and correct copies of the SATA U.S. Patents 14
C True and correct copy of the Infringing Product advertised 2
5 in Defendants Catalog
6 D True and correct copy of Infringing Product on Defendants 2
Website
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Exhibit page counts are exclusive of exhibit slip sheets.
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Case 2:17-cv-02753 Document 1-1 Filed 10/31/17 Page 1 of 5
JS 44 (Rev. 06/17) CIVIL COVER SHEET
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

SATA GmbH & Co. KG, a German corporation, PHOENIX AUTOMOTIVE REFINISHING, a Chinese company,
(b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Steven A. Caloiaro, Dickinson Wright PLLC, 100 W. Liberty St., Ste. 940 Unknown
Reno, NV 89501; Tel.: (775) 343-7500; E-mail:
scaloiaro@dickinsonwright.com
II. BASIS OF JURISDICTION (Place an X in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4 4
of Business In This State
2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
Citizen or Subject of a 3 3 Foreign Nation 6 6

Foreign Country
IV. NATURE OF SUIT (Place an X in One Box Only) Click here for: Nature of Suit Code Descriptions.
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure 422 Appeal 28 USC 158 375 False Claims Act
120 Marine 310 Airplane 365 Personal Injury - of Property 21 USC 881 423 Withdrawal 376 Qui Tam (31 USC
130 Miller Act 315 Airplane Product Product Liability 690 Other 28 USC 157 3729(a))
140 Negotiable Instrument Liability 367 Health Care/ 400 State Reapportionment
150 Recovery of Overpayment 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS 410 Antitrust
& Enforcement of Judgment Slander Personal Injury 820 Copyrights 430 Banks and Banking
151 Medicare Act 330 Federal Employers Product Liability 830 Patent 450 Commerce
152 Recovery of Defaulted Liability 368 Asbestos Personal 835 Patent - Abbreviated 460 Deportation
Student Loans 340 Marine Injury Product New Drug Application 470 Racketeer Influenced and
(Excludes Veterans) 345 Marine Product Liability 840 Trademark Corrupt Organizations
153 Recovery of Overpayment Liability PERSONAL PROPERTY LABOR SOCIAL SECURITY 480 Consumer Credit
of Veterans Benefits 350 Motor Vehicle 370 Other Fraud 710 Fair Labor Standards 861 HIA (1395ff) 490 Cable/Sat TV
160 Stockholders Suits 355 Motor Vehicle 371 Truth in Lending Act 862 Black Lung (923) 850 Securities/Commodities/
190 Other Contract Product Liability 380 Other Personal 720 Labor/Management 863 DIWC/DIWW (405(g)) Exchange
195 Contract Product Liability 360 Other Personal Property Damage Relations 864 SSID Title XVI 890 Other Statutory Actions
196 Franchise Injury 385 Property Damage 740 Railway Labor Act 865 RSI (405(g)) 891 Agricultural Acts
362 Personal Injury - Product Liability 751 Family and Medical 893 Environmental Matters
Medical Malpractice Leave Act 895 Freedom of Information
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 790 Other Labor Litigation FEDERAL TAX SUITS Act
210 Land Condemnation 440 Other Civil Rights Habeas Corpus: 791 Employee Retirement 870 Taxes (U.S. Plaintiff 896 Arbitration
220 Foreclosure 441 Voting 463 Alien Detainee Income Security Act or Defendant) 899 Administrative Procedure
230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 871 IRSThird Party Act/Review or Appeal of
240 Torts to Land 443 Housing/ Sentence 26 USC 7609 Agency Decision
245 Tort Product Liability Accommodations 530 General 950 Constitutionality of
290 All Other Real Property 445 Amer. w/Disabilities - 535 Death Penalty IMMIGRATION State Statutes
Employment Other: 462 Naturalization Application
446 Amer. w/Disabilities - 540 Mandamus & Other 465 Other Immigration
Other 550 Civil Rights Actions
448 Education 555 Prison Condition
560 Civil Detainee -
Conditions of
Confinement
V. ORIGIN (Place an X in One Box Only)
1 Original 2 Removed from 3 Remanded from 4 Reinstated or 5 Transferred from 6 Multidistrict 8 Multidistrict
Proceeding State Court Appellate Court Reopened Another District Litigation - Litigation -
(specify) Transfer Direct File
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
15 U.S.C. Section 1051 and 35 U.S.C. Section 1
VI. CAUSE OF ACTION Brief description of cause:
Trademark and Patent Infringement
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. JURY DEMAND: Yes No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
10/31/2017 /s/ Steven A. Caloiaro
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE
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JS 44 Reverse (Rev. 06/17) Case 2:17-cv-02753 Document 1-5 Filed 10/31/17 Page 2 of 2
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading 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. Consequently, a civil cover sheet is submitted to the Clerk of
Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
then the official, giving both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".
II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
precedence, and box 1 or 2 should be marked.
Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
cases.)
III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
section for each principal party.
IV. Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
that is most applicable. Click here for: Nature of Suit Code Descriptions.
V. Origin. Place an "X" in one of the seven boxes.

Original Proceedings. (1) Cases which originate in the United States district courts.
Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
When the petition for removal is granted, check this box.
Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
date.
Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
multidistrict litigation transfers.
Multidistrict Litigation Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C.
Section 1407.
Multidistrict Litigation Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket.
PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to
changes in statue.
VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
numbers and the corresponding judge names for such cases.
Date and Attorney Signature. Date and sign the civil cover sheet.
AO 440 (Rev. 06/12) Summons in a Civil Action
UNITED STATES DISTRICT COURT

for the
District
__________ of Nevada
District of __________
SATA GmbH & CO. KG, a German )

corporation, )
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
PHOENIX AUTOMOTIVE REFINISHING, )
a Chinese company, )
)
)
Defendant(s) )
SUMMONS IN A CIVIL ACTION
To: (Defendants name and address) PHOENIX AUTOMOTIVE REFINISHING, 5F, No. 4 Building, Qiannianzhou Plaza,
2 Haoyun Road 31111, 2 Hangzhou, China
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:
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.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
AO 440 (Rev. 06/12) 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:
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SATA GMBH v. Phoenix - Complaint

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Case 2:17-cv-02753 Document 1 Filed 10/31/17 Page 1 of 16

1 DICKINSON WRIGHT PLLC

2 infringement in violation of 35 U.S.C. 1, et seq.

7 supplemental jurisdiction over Plaintiffs common law claims.

13 in Nevada, and is subject to personal jurisdiction in Nevada.

17 6. Upon information and belief, Phoenix is Chinese Company located at 2 Haoyun

2 airbrush/design creators, and hobbyists worldwide.

8 calculators, video tutorials, and even an encyclopedia of terms.

14 excess of $80 million dollars.

22 SATAs Trademark Rights

25 Marks). The trademarks at issue in this case are:

26 U.S. Trademark Registration No. 2,770,801 (incontestable), a design mark for a

17 origin and source of the goods sold and provided by SATA.

18 17. The SATA Marks are arbitrary and inherently distinctive.

1 U.S. D459,432 (432 Patent)

7 any other silvery, metallic finish.

8 The 2017 SEMA Trade Show

19 thousands of exhibitors and exhibitor booths.

7 each of SATAs Marks and Patents.

12 Product which is seen below.

15 30. PHOENIX maintains a website located at http://Phoenix.com/.

9 COUNT I - TRADEMARK COUNTERFEITING - 15 U.S.C. 1114

16 distribution of the Infringing Product.

19 without SATAs authorization, license, or consent.

22 Product constitutes a use of the SATA Marks in commerce.

4 41. Phoenixs acts constitute willful trademark counterfeiting in violation of Section

13 COUNT II - TRADEMARK INFRINGEMENT - 15 U.S.C. 1114

18 50. Phoenixs infringement of SATAs registered trademarks is deliberate, willful,

21 51. SATA is entitled to temporary, preliminary, and permanent injunctive relief, as

23 reasonable attorneys fees pursuant to 15 U.S.C. 1114, 1116, and 1117.

24 COUNT III - FALSE DESIGNATION OF ORIGIN/UNFAIR COMPETITION - 15

8 substantial secondary meaning in the marketplace.

13 associated with SATA.

17 and reputation for quality associated with the SATA Marks.

23 1125(a), 1116, and 1117.

24 COUNT IV COMMON LAW TRADEMARK INFRINGEMENT

4 products to which the SATA Marks are applied.

17 trademark rights in violation of the common law.

1 Design Patent Infringement - 35 U.S.C. 171 and 289

6 infringe SATA's design patents USD 459,432 and USD 459,433.

12 believing it to be SATAs products.

1 PRAYER FOR RELIEF

8 B. A temporary, preliminary, and permanent injunction against further

1 F. An award of damages adequate to compensate SATA for the patent infringements

8 DICKINSON WRIGHT PLLC

I. (a) PLAINTIFFS DEFENDANTS

Citizen or Subject of a 3 3 Foreign Nation 6 6

RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE

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V. Origin. Place an "X" in one of the seven boxes.

AO 440 (Rev. 06/12) Summons in a Civil Action

UNITED STATES DISTRICT COURT

SATA GmbH & CO. KG, a German )

SUMMONS IN A CIVIL ACTION

A lawsuit has been filed against you.

AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

This summons for (name of individual and title, if any)

I personally served the summons on the individual at (place)

I served the summons on (name of individual) , who is

I returned the summons unexecuted because ; or

I declare under penalty of perjury that this information is true.

Printed name and title