Thermo King Corporation v. A.G.A. Distribution Specialists - Complaint

CASE 0:22-cv-00276 Doc.
1 Filed 01/31/22 Page 1 of 32
UNITED STATES DISTRICT COURT

FOR DISTRICT OF MINNESOTA
THERMO KING )
CORPORATION, )
a Delaware Corporation, )
)
Plaintiff, )
)
v. )
)
A.G.A. DISTRIBUTION )
SPECIALISTS, INC., )
d/b/a “Thermo By Products” )
an Oregon Corporation, )
)
Defendant )
COMPLAINT
Plaintiff Thermo King Corporation (“Plaintiff” or “Thermo King”), for its Complaint
against Defendant A.G.A. Distribution Specialists, Inc., d/b/a “Thermo By Products”
(“Defendant” OR “TBP”), alleges and avers as follows:
THE PARTIES
1. Thermo King is a corporation organized and existing under the laws of the State
of Delaware with its principal place of business at 314 West 90th Street, Minneapolis, Minnesota
55420.
2. Upon information and belief, Defendant is a corporation organized and existing
under the laws of the State of Oregon, with its principal place of business located at 7710 NE
17th Ave, Portland, Oregon 97211.
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CASE 0:22-cv-00276 Doc. 1 Filed 01/31/22 Page 2 of 32
JURISDICTION AND VENUE
3. Through this Complaint, Plaintiff asserts claims against Defendant that arise, inter
alia, under the Patent Laws of the United States, 35 U.S.C. § 101, et seq., and under the Lanham
Act of 1946, as amended, 15 U.S.C. § 1051, et seq., and the statues and common laws of the
State of Minnesota.
4. The Court has original subject matter jurisdiction over Plaintiff’s federal claims
pursuant to 28 U.S.C. §§ 1331, 1332, 1338(a), 15 U.S.C. § 1121 and 28 U.S.C. § 1367.
5. The Court has personal jurisdiction over Defendant in that Defendant has sold,
and are selling, their products to customers throughout the State of Minnesota.
6. Venue is proper in the United States District Court for the District of Minnesota
pursuant to 28 U.S.C. § 1391(b)(2) as a substantial part of the events giving rise to the claims
herein occurred in this judicial district. Venue is also proper under 28 U.S.C. § 1391(b)(3), as
Defendant does business in the District of Minnesota, and is subject to personal jurisdiction in
this judicial district.
BACKGROUND FACTS
7. Since 1938, Thermo King has designed, built and sold refrigeration and heating
units and parts for trucks, trailers, shipboard containers and railway cars and air conditioning for
buses, trains and urban mass transit worldwide.
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8. Thermo King owns the following United States Trademark Registrations
(collectively, the “Thermo King Marks”):
Mark Reg. No. Reg. Date Goods/Services

THERMO KING 522,496 Mar. 21, 1950 “SELF-CONTAINED
TEMPERATURE
CONTROL
REFRIGERATION
UNITS…”
THERMO KING 800,606 Dec. 21, 1965 “AIR
CONDITIONING FOR
PASSENGER
AND/OR DRIVER
COMFORT IN
BUSSES, TRUCK
CABS,
AUTOMOBILES,
AND THE LIKE”
TK (And Design) 811,277 Jul. 19, 1966 “AIR
CONDITIONING FOR
PASSENGER
COMFORT IN
AUTOMOBILES…”
“PRODUCT
PROTECTION IN
THE FORM OF SELF-
CONTAINED
TEMPERATURE
CONTROL UNITS…”
TK (And Design) 980,159 Mar. 5, 1974 “MAINTENANCE,
OVERHAUL AND
REPAIR OF
TRANSPORT
REFRIGERATION
AND AIR
CONDITIONING
EQUIPMENT”
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THERMO KING 982,686 Apr. 23, 1974 “MAINTENANCE,

OVERHAUL AND
REPAIR OF
TRANSPORT
REFRIGERATION
AND AIR
CONDITIONING
EQUIPMENT”
TK THERMO KING (And 2,301,438 Dec. 21, 1999 “retail outlets featuring
Design) transport refrigeration
and air conditioning
equipment”
“maintenance, overhaul
and repair of transport
refrigeration and air
conditioning
equipment”
TK THERMO KING (And 2,330,732 Mar. 21, 2000 “Refrigerator
Design) compressors”
“Computer software,
namely, programs for
use in controlling the
operation of mobile
transport refrigeration
systems…”
“Self-contained
temperature control
refrigeration units and
control panels…”
THERMO KING 4,812,079 Sept. 15, 2015 “auxiliary power units,
namely, an engine used
to power an air
conditioning unit and a
heating unit…”
“auxiliary power units

for vehicles...”
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Thermo King’s PRECEDENT® Mark
9. In addition to the Thermo King Marks, Thermo King also owns United States
Trademark Registration 4,373,351 for the mark PRECEDENT (the “‘351 Registration”).
10. The ‘351 Registration was issued July 23, 2013 and relates to goods such as
“[r]efrigerator units and refrigerating apparatuses for mobile temperature control; Self-contained
temperature control refrigeration units adapted for connection to industrial enclosures such as
transport vehicles, and the like; said units being adapted to control the temperature of the air
within such enclosures.” A copy of the Registration Certificate for the ‘351 Registration is
attached hereto as Exhibit A.
11. The ‘351 Registration is valid and incontestable.
12. Thermo King sells hundreds of millions of dollars’ worth of refrigeration systems
and parts under the PRECEDENT mark each year in the United States.
13. Thermo King has expended and continues to spend millions of dollars annually to
advertise and promote the PRECEDENT mark and Thermo King-branded goods.
14. The PRECEDENT mark is distinctive and had become famous long prior to the
acts of Defendant complained of herein as a result of Thermo King’s long and continuous use of
the PRECEDENT mark; its substantial sales, advertising and promotional activities under that
mark; and Thermo King’s substantial presence in the marketplace.
15. The PRECEDENT mark is well and favorably known and represents the source
and origin of Thermo King’s goods and services sold in association therewith.
16. Thermo King sells its high quality refrigeration systems and parts under the
PRECEDENT mark in the United States through authorized Thermo King dealers.
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17. The strength of the PRECEDENT mark is one of Plaintiff’s most valuable
corporate assets.
Thermo King’s PRECEDENT® Line
18. One of Thermo King’s most popular and best-selling lines of refrigeration units is
the PRECEDENT® Line (the “Precedent Line”).
19. The Precedent Line was first introduced in 2012, as the ‘next generation’ of
refrigerated trucking that would meet and exceed then-current regulatory standards of the
Environmental Protection Agency (“EPA”).
20. The Precedent Line includes the “S-600” – a refrigeration unit that attaches to the
trailer portion of a semi-tractor trailer truck and operates to keep the contents of the trailer at a
uniform temperature. Images of the PRECEDENT® “S-600”, as well as a PRECEDENT® unit
attached to a semi-tractor trailer truck are shown below.
The PRECEDENT® “S-600”
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21. All of the models within the Precedent Line include specific features which make
them unique, and which result in consumers associating the Precedent Line exclusively with
Thermo King.
The PRECEDENT® Trade Dress
22. Since their introduction in 2012, all the products within the Precedent Line have
always had: (1) grille covers that are substantially rectangular with three curved crossing
members, (2) a center panel disposed between the grille covers, and (3) a curved “U” design that
is partially formed by substantially rectangular doors disposed below the center panel (the
“Precedent Trade Dress”).
23. The Precedent Trade Dress is purely aesthetic and non-functional.
24. Since the Precedent Line was introduced in 2012, Thermo King as actively
marketed and promoted the unique features of the Precedent Trade Dress to customers, through
‘look for’ advertising and otherwise.
25. The Precedent Line has been a hugely successful product line for Thermo King,
due in large part to the unique and eye-catching design embodied by the Precedent Trade Dress.
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26. The Precedent Trade Dress has acquired distinctiveness and secondary meaning
through over eight (8) years of continuous and exclusive use by Thermo King with customers
and potential customers.
27. The Precedent Trade Dress does not confer any functional benefits to the
associated refrigeration unit that cannot be achieved through alternative designs which do not
include the purely aesthetic features of the Precedent Trade Dress.
28. In 2019, Thermo King applied for trade dress protection for the specific design of
the grille covers of the Precedent Line. Thermo King was ultimately granted U.S. Trademark
Registration No. 6,285,785 for “a three-dimensional configuration of a self-contained
temperature control unit” for use with goods such as “[s]elf-contained temperature control units
specially adapted for use with industrial enclosures on transport trailers for the refrigerated or
heated storage and delivery of cargo” on March 19, 2021 (the “’785 Registration”). The
Drawing from the ‘785 Registration is shown below.
29. The ‘785 Registration is valid and subsisting, and claims use of the mark since at
least as early as March 1, 2013.
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30. In 2019, Thermo King applied for trade dress protection for the specific “U
Design” of the Precedent Line. Thermo King was ultimately granted U.S. Trademark
Registration No. 6,285,815 for a “U-design identified in solid lines on the drawing of the three
dimensional "THERMO KING" unit, which originates from the side vents of the "THERMO
KING" unit and traverses across the unit doors and the placement of the "THERMO KING TK"
mark and logo on the front center of the three dimensional "THERMO KING" unit” as used in
connection with goods such as “[s]elf-contained temperature control units specially adapted for
use with industrial enclosures on transport trailers for the refrigerated or heated storage and
delivery of cargo” on March 9, 2021 (the “’815 Registration”). The Drawing from the ‘815
Registration is shown below.
31. The ‘815 Registration is valid and subsisting, and claims use of the mark since at
least as early as March 1, 2013.
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The PRECEDENT® Design Patent
32. In 2012, prior to the Precedent Line being introduced publicly, Thermo King
applied for design patent protection for the grille cover design. Thermo King was ultimately
granted U.S. Des. Pat. No. D687,135 for “Cover For A Transport Temperature Control Unit” on
July 30, 2013 (the “’135 Patent”). Figures 1 and 2 from the ‘135 Patent are reproduced below.
33. The ‘135 Patent is valid and subsisting.
34. The ‘135 Patent is strong evidence that the grille cover design is not functional,
and is entirely aesthetic.
35. The ‘135 Patent is also strong evidence that Thermo King has used the grille
cover design continuously and exclusively for at least the last seven (7) years, since the ‘135
Patent issued (on July 30, 2013).
Thermo King’s Distribution Model
36. Thermo King distributes its products through a network of authorized dealers.
37. Authorized dealers within North America all execute a “Dealer Agreement” that
prohibits dealer from ‘wholesaling’ products.
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38. Section VI (D) (“Obligations Of Dealer”) of the Dealer Agreement states, in
pertinent part:
Dealer shall not directly or indirectly establish any new dealer or

agent not approved and trained by Thermo King via the
mechanism of selling Products to any entity in quantities that
would create or maintain a wholesale inventory of Products.
39. Section VI (H) (“Miscellaneous”) of the Dealer Agreement states:
Dealer agrees that it shall not:
(iii) Disclose information of a proprietary nature, such as

purchase prices for Products, technical information and
Thermo King business plans, received in the course of
performance under this Agreement, to any competitor or
any affiliate of any competitor or use such information for
any purpose other than as set forth herein.
(v) Make any sale of Products outside the country or nation

of its PAR [Primary Area of Responsibility] without first
receiving written authorization from Thermo King.
40. Thermo King takes this obligation of its dealers very seriously, as it does not want
unauthorized or untrained third parties servicing its products, or selling products they have not
been trained to sell.
Defendant Thermo By Products
41. TBP, according to its website (https://www.thermobyproducts.com/) is a
“company specializing in aftermarket parts for the repair of Thermo King, Carrier, and other
products within the Transport Refrigeration industry.”
42. TBP sells both Original Equipment Manufacturer (OEM) parts from companies
like Thermo King and Carrier, and non-OEM replacement parts.
43. TBP is not an authorized dealer of Thermo King.
44. TBP sells several replacement parts for the Precedent Line, including products
with the following product numbers: (1) TB-37-98-9116 (DOOR TOP CENTER), (2) TB-37-98-
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9117 (GRILLE ROADSIDE), (3) TB-37-98-9118 (GRILLE CURBSIDE), (4) TB-37-98-9120
(DOOR ROADSIDE CENTER), (5) TB-37-98-9121 (DOOR CURBSIDE CENTER), (6) TB-
37-98-9120 (KIT DOOR ROADSIDE CENTER WITH HARDWARE), (7) TB-37-98-9121
(KIT DOOR CURBSIDE CENTER WITH HARDWARE), (8) TB-37-98-9122 (DOOR
ROADSIDE OUTER), (9) TB-37-98-9122 (KIT PANEL ROADSIDE WITH HARDWARE),
(10) TB-37-98-9123 (DOOR CURBSIDE OUTER), (11) TB-37-98-9123 (KIT PANEL
CURBSIDE WITH HARDWARE), (12) TB-37-98-9640 (DOOR ROADSIDE CENTER
AFTER 3/17), (13) TB-37-98-9641 (DOOR CURBSIDE CENTER AFTER 3/17), (14) TB-37-
98-9642 (Roadside Panel Door - Units built after Feb 2017), and (15) TB-37-98-9643 (DOOR
CURBSIDE PANEL AFTER 2/17) (collectively, the “Infringing Products”).
45. TBP also resells some Thermo King OEM replacement parts for the Precedent
Line, including products with the following product numbers: (1) TB-TK-98-9117 (OEM Grille
Outside Cover Roadside), (2) TB-TK-98-9118 (OEM Grille Curbside Outside Cover), (3) TB-
TK-98-9119 (OEM Grille Insert Curbside), and (4) TB-TK-98-9171 (OEM Grille Insert
Roadside) (collectively, the “TK OEM Products”).
46. TBP is not a dealer of Thermo King parts, and is not authorized to sell the TK
OEM Products.
47. Upon information and belief, TBP purchases the TK OEM Products from one or
more authorized dealers of authentic Thermo King products, in violation of the Dealer
Agreement.
48. Upon information and belief, TBP knows that its purchases of the TK OEM
Products from one or more authorized dealers of authentic Thermo King products violate the
respective authorized dealer’s Dealer Agreement with Thermo King.
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DEFENDANT’S INFRINGEMENT
49. In 2017, in response to communications from Thermo King’s counsel (Daniel
Lano), TBP’s counsel (Mark W. Eves) sent a letter in which TBP agreed to remove a page from
its website that included a copied page from the Thermo King website with Thermo King
trademarks and logos (the “2017 Letter”). A copy of that letter is attached hereto as Exhibit B.
50. In the 2017 Letter, TBP’s counsel noted that TBP was “embarrassed” that it had
included such a page on its website, and noted that “[i]f, in the future, you find any other
unauthorized use of the Thermo King logo, please advise us.”
51. Then, in early 2021, Thermo King found out that TBP was selling aftermarket
(non-OEM) parts for the Precedent Line on its website using Thermo King’s trademarks, and in
violation of Thermo King’s trade dress rights. Thermo King’s counsel (John T. D. Bathke) sent
a letter to TBP’s counsel (Mark W. Eves) detailing such infringing acts. A copy of that letter is
attached hereto as Exhibit C.
52. Discussions between counsel for the parties continued for months thereafter.
Ultimately, TBP refused to stop selling aftermarket replacement parts for the Precedent Line, or
further respond to Thermo King. In a June 24, 2021 letter from TBP’s counsel (Thomas J.
Romano), TBP stated that it “will no longer respond voluntarily to further correspondence from
Thermo King.” A copy of that letter is attached hereto as Exhibit D.
53. TBP is presently selling various products that violate Thermo King’s long-
standing rights in its registered trademark PRECEDENT. An exemplary listing from TBP’s
website is shown below – it utilizes the mark “PRECEDENT” in connection with the sale of an
aftermarket grille cover for the Precedent Line. To be clear, this product is not an authentic
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Thermo King product; it is a knock-off product made to look like the authentic Precedent Line
grille cover.
54. The ‘351 Registration for the mark PRECEDENT covers goods such as
“[r]efrigerator units and refrigerating apparatuses for mobile temperature control; Self-contained
temperature control refrigeration units adapted for connection to industrial enclosures such as
transport vehicles, and the like; said units being adapted to control the temperature of the air
within such enclosures.”
55. TBP’s use of the mark PRECEDENT in connection with non-authentic
aftermarket parts will cause consumers to believe that such parts are authentic Thermo King
parts, and/or that TBP’s goods are endorsed, sponsored by or associated with Thermo King.
56. TBP’s infringement is further exacerbated by TBP’s use of the Precedent Trade
Dress in connection with the sale of aftermarket replacement parts for the Precedent Line.
57. TBP’s infringing acts also violate Thermo King’s rights in the ‘785 Registration,
the ‘815 Registration, and the ‘135 Patent.
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58. Upon information and belief, TBP had knowledge that the Precedent Line was
subject to protection under various intellectual property rights prior to introducing one or more of
the Infringing Products.
COUNT I
(Trademark Infringement Under Section 32 Of The Lanham Act)
59. Thermo King hereby restates and incorporates the allegations of foregoing
Paragraphs 1-58.
60. Thermo King owns all right, title and interest in and to the ‘351 Registration for
the mark PRECEDENT.
61. Thermo King owns all right, title and interest in and to the ‘785 Registration and
the ‘815 Registration, covering aspects of the Precedent Trade Dress.
62. TBP is improperly and willfully infringing the ‘351, ‘785 and ‘815 Registrations
in interstate commerce through the advertising, promotion, sale and distribution of the Infringing
Products.
63. The Infringing Products are counterfeit copies of Thermo King’s authentic
Precedent Line products.
64. TBP’s use in interstate commerce of the mark PRECEDENT in connection with
the advertising and sale of the Infringing Products is likely to cause confusion or deception of
consumers as to the source, origin, or sponsorship in violation of Section 32 of the Lanham Act
(15 U.S.C. § 1114). Particularly, customers are likely to purchase TBP’s counterfeit Infringing
Products believing them to be those of Thermo King, thereby resulting in a loss of goodwill and
sales to Thermo King.
65. Additionally, TBP’s use in interstate commerce of the product designs that are
virtually identical to the product configurations described in the ‘785 and ‘815 Registrations is
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likely to cause confusion or deception of consumers as to the source, origin, or sponsorship in
violation of Section 32 of the Lanham Act (15 U.S.C. § 1114). Particularly, customers are likely
to purchase TBP’s counterfeit Infringing Products believing them to be those of Thermo King,
thereby resulting in a loss of goodwill and sales to Thermo King.
66. TBP’s conduct constitutes trademark infringement, and/or induces or contributes
to acts of trademark infringement, in violation of Section 32 of the Lanham Act, 15 U.S.C. §
1114.
67. As a direct and proximate result of TBP’s conduct, Thermo King has been, and is
likely to be, substantially injured in its business including harm to its goodwill and reputation
and the loss of revenues and profits.
68. Thermo King has no adequate remedy at law, and unless enjoined by this Court,
TBP will continue to engage in such acts of trademark infringement, to the irreparable damage
and injury of Thermo King.
69. Upon information and belief, TBP has engaged in the above-referenced acts of
trademark infringement with full knowledge of Thermo King’s exclusive rights in one or more of
the ‘351, ‘785 and ‘815 Registrations, and TBP continues in such acts of intentional
infringement, thus making this case exceptional and entitling Thermo King to an award of treble
its actual damages, plus attorneys’ fees in bringing and maintaining this action.
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COUNT II
(Unfair Competition By False Designation Of Origin
Under Section 43(a) Of The Lanham Act)
Paragraphs 1-69.
71. The mark PRECEDENT as shown in the ‘351 Registration operates as an
indicator of source and/or origin, and has acquired distinctiveness via secondary meaning.
72. The trade dress shown in the ‘785 and ‘815 Registrations operates as an indicator
of source and/or origin, and has acquired distinctiveness via secondary meaning.
73. The Precedent Trade Dress operates as an indicator of source and/or origin, and
has acquired distinctiveness via secondary meaning.
74. The ‘351 Registration for the mark PRECEDENT is valid and subsisting and, the
mark PRECEDENT has been in continuous and exclusive use throughout the United States, by
Thermo King, since at least as early as December 2021.
75. The mark PRECEDENT is distinctive in the minds of the relevant purchasers of
Thermo King’s goods and services as being associated exclusively with Thermo King.
76. The ‘785 Registration for the grille cover trade dress is valid and subsisting and,
the mark has been in continuous and exclusive use throughout the United States, by Thermo
King, since at least as early as March 1, 2013.
77. The mark shown in the ‘785 Registration is distinctive in the minds of the relevant
purchasers of Thermo King’s goods and services as being associated exclusively with Thermo
King.
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78. The ‘815 Registration for the U-design trade dress is valid and subsisting and, the
mark has been in continuous and exclusive use throughout the United States, by Thermo King,
since at least as early as March 1, 2013.
79. The mark shown in the ‘815 Registration is distinctive in the minds of the relevant
purchasers of Thermo King’s goods and services as being associated exclusively with Thermo
King.
80. The Precedent Trade Dress operates as an indicator of source and/or origin, and
has acquired distinctiveness via secondary meaning.
81. The Precedent Trade Dress has been in continuous and exclusive use throughout
the United States, by Thermo King, since at least as early as 2012.
82. The Precedent Trade Dress is non-functional and distinctive in the minds of the
relevant purchasers of Thermo King’s goods and services as being associated exclusively with
Thermo King.
83. TBP, through their use of the marks shown in the ‘351, ‘785 and ‘815
Registrations, has without authorization, in connection with their goods and/or services in
commerce, made or contributed to the making of false designations of origin, false or misleading
descriptions of fact, and/or false or misleading representations of fact, which are likely to cause
confusion, mistake, or to deceive as to the affiliation, connection or association of TBP with
Thermo King, and/or as to the origin, sponsorship or approval of TBP’s goods and/or services, in
violation of Section 43(a)(1)(A) of the Lanham Act (15 U.S.C. § 1125(a)(1)(A)).
84. TBP, through their use, display and copying of the Precedent Trade Dress, has
without authorization, in connection with their goods and/or services in commerce, made or
contributed to the making of false designations of origin, false or misleading descriptions of fact,
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and/or false or misleading representations of fact, which are likely to cause confusion, mistake,
or to deceive as to the affiliation, connection or association of TBP with Thermo King, and/or as
to the origin, sponsorship or approval of TBP’s goods and/or services, in violation of Section
43(a)(1)(A) of the Lanham Act (15 U.S.C. § 1125(a)(1)(A)).
85. Consumers are likely to purchase the Infringing Products believing that TBP is
affiliated, connected or associated with Thermo King, resulting in a loss of goodwill to Thermo
King.
86. TBP’s acts as set forth herein constitute unfair competition, and/or induce or
contribute to acts of unfair competition.
87. TBP’s unfair acts have been committed in bad faith and with the intent to cause
confusion, mistake and/or to deceive.
89. Thermo King has no adequate remedy at law because the marks shown in the
‘351, ‘785 and ‘815 Registrations, and the Precedent Trade Dress are unique and represent to the
public Thermo King’s identity, reputation, and goodwill, such that damages alone cannot fully
compensate Thermo King for TBP’s misconduct.
90. Unless enjoined by this Court, TBP and those acting in concert with them will
continue to infringe Thermo King’s intellectual property rights in the marks shown in the ‘351,
‘785 and ‘815 Registrations and in the Precedent Trade Dress, to Thermo King’s irreparable
injury. This threat of future injury to Thermo King’s business identity, goodwill, and reputation
requires injunctive relief to prevent TBP’s continued use of the marks shown in the ‘351, ‘785
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and ‘815 Registrations and in the Precedent Trade Dress and/or marks and product
configurations confusingly similar thereto, and to ameliorate and mitigate Thermo King’s
injuries.
unfair competition with knowledge of Thermo King’s exclusive rights in the marks shown in the
‘351, ‘785 and ‘815 Registrations and in the Precedent Trade Dress, and TBP will continue in
such acts unless enjoined by this Court.
COUNT III
(Design Patent Infringement)
Paragraphs 1-91.
93. The ‘135 Patent claims a non-functional ornamental design, specifically a “Cover
For A Transport Temperature Control Unit”.
94. Several of the Infringing Products sold by Defendant infringe the ‘135 Patent.
95. Specifically, the following Infringing Products include the aesthetic and non-
functional features of the ‘135 Patent: (a) TB-37-98-9117 (GRILLE ROADSIDE), and (b) TB-
37-98-9118 (GRILLE CURBSIDE) (the “Accused Designs”).
96. In the eye of an ordinary observer, giving such attention as a purchaser usually
gives, the non-functional ornamental design for a grille cover claimed in the ‘135 Patent and
Defendant’s Accused Designs are substantially the same, with resemblance such as to deceive an
ordinary observer, inducing him or her to purchase the Infringing Products supposing them to be
the design claimed in the ‘135 Patent.
97. On information and belief, the Defendant, without authority, has directly
infringed and continue to directly infringe the ‘135 Patent, under 35 U.S.C. § 271(a), at least by
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manufacturing, importing, distributing, selling, offering for sale, and/or using within the United
States the Accused Designs.
98. TBP’s acts as set forth herein constitute design patent infringement, and/or induce
or contribute to acts of design patent infringement.
99. As a result of the Defendant’s infringement of the ‘135 Patent, Plaintiff has
suffered and will continue to suffer damages.
100. Plaintiff is entitled to recover damages adequate to compensate them for such
infringement, but in no event less than a reasonable royalty, as permitted under 35 U.S.C. § 284,
as well as all remedies for design patent infringement permitted under 35 U.S.C. § 289.
101. Defendant’s infringement of the ‘135 Patent is willful, making this an exceptional
case and entitling Plaintiff to enhanced damages and attorneys’ fees.
102. On information and belief, the Defendant knowingly and willfully infringed the
‘135 Patent by manufacturing, importing, using, selling, and offering to sell the Infringing
Products including the Accused Designs.
103. Despite the Defendant’s knowledge of their imminent and actual infringement of
the ‘135 Patent, the Defendant has continued to manufacture, import, use, sell, and offer to sell
the Infringing Products including the Accused Designs.
104. Plaintiff has been irreparably harmed by Defendant’s infringement of the ‘135
Patent and will continue to be harmed unless the Defendant’s infringing conduct is restrained and
enjoined by order of this Court.
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COUNT IV
(Minnesota Common Law Unfair Competition)
Paragraphs 1-104.
106. Thermo King owns and enjoys common law trademark rights in the marks shown
in the ‘351, ‘785 and ‘815 Registrations and in the Precedent Trade Dress in the State of
Minnesota, and throughout the United States.
107. The marks shown in the ‘351, ‘785 and ‘815 Registrations and in the Precedent
Trade Dress operate as indicators of source and/or origin, particularly when used in interstate
commerce. Moreover, the marks shown in the ‘351, ‘785 and ‘815 Registrations and in the
Precedent Trade Dress have acquired distinctiveness via secondary meaning.
108. TBP, through their use, display and copying of the marks shown in the ‘351, ‘785
and ‘815 Registrations and in the Precedent Trade Dress has without authorization, in connection
with their goods and/or services in commerce, made or contributed to the making of false
designations of origin, false or misleading descriptions of fact, and/or false or misleading
representations of fact, which are likely to cause confusion, mistake, or to deceive as to the
affiliation, connection or association of TBP with Thermo King, and/or as to the origin,
sponsorship or approval of TBP’s goods and services in violation of the common law of the State
of Minnesota.
109. Consumers are likely to purchase the Infringing Products believing that TBP is
affiliated, connected or associated with Thermo King, resulting in a loss of goodwill to Thermo
King.
110. TBP’s acts as set forth herein constitute unfair competition, and/or induce or
contribute to acts of unfair competition.
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111. TBP’s unfair acts have been committed in bad faith and with the intent to cause
confusion, mistake and/or to deceive.
113. Upon information and belief, TBP’s acts of unfair competition are, and have been,
oppressive, fraudulent and malicious, thus entitling Thermo King to punitive damages.
114. Thermo King has no adequate remedy at law because the marks shown in the
‘351, ‘785 and ‘815 Registrations and in the Precedent Trade Dress are unique and represent to
the public Thermo King’s identity, reputation, and goodwill, such that damages alone cannot
fully compensate Thermo King for TBP’s misconduct.
115. Unless enjoined by this Court, TBP and those acting in concert with them will
continue to infringe Thermo King’s intellectual property rights in the marks shown in the ‘351,
‘785 and ‘815 Registrations and in the Precedent Trade Dress, to Thermo King’s irreparable
injury. This threat of future injury to Thermo King’s business identity, goodwill, and reputation
requires injunctive relief to prevent TBP’s continued use of the marks shown in the ‘351, ‘785
and ‘815 Registrations and in the Precedent Trade Dress, and/or product configurations
confusingly similar thereto, and to ameliorate and mitigate Thermo King’s injuries.
unfair competition with knowledge of Thermo King’s exclusive intellectual property rights in the
marks shown in the ‘351, ‘785 and ‘815 Registrations and in the Precedent Trade Dress, and
TBP will continue in such acts unless enjoined by this Court.
- 23 -
39579609.1
COUNT V
(Minnesota Deceptive Trade Practices [Minnesota Statute § 325D.44])
Paragraphs 1-116.
118. TBP’s actions referenced above constitute deceptive trade practices under
Minnesota Statute § 325D.44.
119. Thermo King is entitled to injunctive relief prohibiting TBP from selling, offering
for sale, distributing, or advertising the Infringing Products, which are confusingly similar in
visual appearance to Thermo King’s Precedent Line products, and which are marketed using
Thermo King’s trademark PRECEDENT.
120. TBP has willfully intended to trade on the recognition, and harm, the reputation of
Thermo King’s rights in the visual appearance of the Precedent Line products, and on Thermo
King’s trademarks in the term PRECEDENT.
121. As a result of TBP’s deceptive trade practices, Thermo King has suffered and
continues to suffer actual injury to the economic value of the Precedent Line products.
COUNT VI
(Tortious Interference With Contract)
Paragraphs 1-121.
123. Thermo King has a valid and binding Dealer Agreement with one or more dealers
of authorized and genuine Thermo King products (the “Dealers”).
124. TBP had knowledge of the existence of at least one Dealer Agreement with at
least one Dealer.
- 24 -
39579609.1
125. Upon information and belief, TBP had knowledge of the specific terms of at least
one Dealer Agreement with at least one Dealer, including but not limited to specific terms that
prohibit wholesaling to third parties.
126. With knowledge of the Dealer Agreement terms, TBP intentionally procured a
breach of the Dealer Agreement by at least one Dealer, by requesting that the Dealer sell original
and authentic Thermo King products to TBP for resale.
127. TBP has tortiously interfered with at least one Dealer Agreement, and that
tortious interference is ongoing and continuing.
128. TBP’s tortious interference has at all times been, and continues to be, intentional
and unjustified.
129. By virtue of the above-referenced acts of TBP, Thermo King is entitled to
injunctive relief enjoining TBP from facilitating breach of any and all Dealer Agreement with
which it has tortuously interfered.
130. As a direct and proximate result of TBP’s tortious interference with one or more
Dealer Agreements, Thermo King has suffered harm and is entitled to damages in an amount to
be determined at trial.
COUNT VII
(Unjust Enrichment)
Paragraphs 1-130.
132. Thermo King invested substantial time, labor and money in the design and
production of the Precedent Line, including the Precedent marks and trade dress.
- 25 -
39579609.1
133. TBP has wrongfully misappropriated the PRECEDENT mark and the unique
features of the Precedent Trade Dress, and has profited from and received certain other benefits
as a result of such wrongful misappropriation.
134. TBP has been unjustly enriched at Thermo King’s expense.
135. It would be inequitable to allow TBP to retain the profits and other benefits it
acquired through its wrongful actions.
136. Accordingly, Thermo King is entitled to restitution in the amount of TBP’s unjust
enrichment.
- 26 -
39579609.1
PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for judgment against Defendant, as well as its employees and/or
agents, as follows:
A. Entry of a judgment that:
1. TBP has infringed Thermo King’s federal trademark rights in the ‘351,
785 and ‘835 Registrations;
2. TBP’s sale of the Infringing Products constitutes unfair competition under
Section 43(a) of the Lanham Act;
3. TBP has infringed Thermo King’s common law trademark rights in the
marks shown in the ‘351, ‘785 and ‘815 Registrations, and in the Precedent Trade Dress;
4. TBP has infringed the ‘135 Patent through the sale of the Infringing
Products;
5. TBP’s sale of the Infringing Products constitutes common law unfair
competition;
6. TBP’s sale of the Infringing Products violates Minnesota Statute §
325D.44;
7. TBP has tortuously interfered with one or more of Thermo King’s Dealer
Agreements;
8. TBP has been unjustly enriched by the sale of the Infringing Products.
B. Entry of judgment that TBP’s acts of trademark infringement, unfair competition and
design patent infringement detailed herein have been, and continue to be, willful and deliberate.
- 27 -
39579609.1
C. Entry of preliminarily and permanent injunctions enjoining TBP, its agents, servants
and employees, and those people in active concert or participation with it from:
1. using, infringing, contributing to, or inducing infringement of the Thermo
King’s registered and common law trademarks, service marks and trade dress, including
but not limited to the ‘351, ‘785 and ‘815 Registrations, and the Precedent Trade Dress;
2. using any false designation, description or representation regarding the
source or sponsorship of its goods and/or services, or stating or implying that TBP or its
agents are connected with the goods and/or services of Thermo King, thereby damaging
Thermo King’s goodwill and reputation;
3. causing a likelihood of confusion or misunderstanding as to the source or
sponsorship of TBP’s business and/or TBP’s goods or services, including but not limited
to causing a likelihood of confusion or misunderstanding as to TBP’s affiliation,
connection or association with Thermo King or any of Thermo King’s goods and/or
services; and
4. otherwise infringing Thermo King’s common law and registered
trademarks and service marks, or otherwise unfairly competing with Thermo King.
D. Entry of judgment requiring TBP to offer up for destruction all articles, displays,
advertisements, labels, signs, prints, packages, packaging, wrappers, receptacles, brochures,
catalogs, plates, molds, uniforms, and logo items in its possession or control (including but not
limited to all products and marketing materials associated with the Infringing Products) which
display a mark product which is identical to, or confusingly similar with, Thermo King’s marks
and protected product configuration trade dress, as provided by Section 36 of the Lanham Act
(15 U.S.C. § 1118).
- 28 -
39579609.1
E. Entry of judgment requiring TBP to file with the Court and to serve upon Thermo
King’s counsel within thirty (30) days after entry of any injunction or order issued herein, a
written report, under oath, setting forth in detail the manner in which it has complied with such
injunction or order pursuant to Section 34 of the Lanham Act (15 U.S.C. §1116(a)).
F. Entry of judgment:
1. awarding Thermo King such actual damages as it has sustained by reason
of TBP’s acts of trademark infringement in violation of Section 32 of the Lanham Act
(15 U.S.C. §1114) (including, but not limited to, a disgorgement of TBP’s profits,
Thermo King’s lost profits, and the costs of this action);
2. awarding treble damages for such trademark infringement;
3. awarding Thermo King its attorney’s fees in bringing and maintaining this
action, which should be deemed exceptional, for such trademark infringement; and
4. requiring TBP to account to Thermo King for any and all profits derived
by it from sales of the Infringing Products, and to compensate Thermo King for all
damages sustained by reason of such trademark infringement and the other acts
complained of herein; all pursuant to Section 35 of the Lanham Act (15 U.S.C.
§1117).
G. Entry of judgment:
1. awarding Thermo King such actual damages as it has sustained by reason
of TBP’s acts of unfair competition in violation of Section 43(a)(1)(A) of the Lanham
Act (15 U.S.C. §1125(a)(1)(A)) (including, but not limited to, a disgorgement of TBP’s
profits, Thermo King’s lost profits, and the costs of this action);
- 29 -
39579609.1
2. awarding Thermo King treble its actual damages or such acts of unfair
competition;
3. awarding Thermo King its attorney’s fees in bringing and maintaining this
action, which should be deemed exceptional, for such acts of unfair competition; and
4. requiring TBP to account to Thermo King for any and all profits derived
by it from sales of the Infringing Products, and to compensate Thermo King for all
damages sustained by reason of such acts of unfair competition and the other acts
complained of herein; all pursuant to Section 35 of the Lanham Act (15 U.S.C. §1117).
H. Entry of judgment ordering TBP to compensate Thermo King for the advertising or
other expenses necessary to dispel any confusion caused by TBP’s trademark infringement,
unfair competition and other unlawful acts (including but not limited to the costs of an
appropriate corrective advertising campaign), pursuant to Section 35 of the Lanham Act (15
U.S.C. §1117).
I. Entry of judgment permanently enjoining and restraining Defendant, their officers,
agents, employees, and all other persons in active concert or participation with Defendant, from
further infringement of the ‘135 Patent, and awarding all available damages for design patent
infringement pursuant to the Patent Act, 35 U.S.C. §101 et seq.
J. Entry of judgment awarding Thermo King such damages as it has sustained by reason
of TBP’s acts of common law unfair competition, including but not limited to compensatory
damages, attorneys’ fees, costs and/or punitive damages.
K. Entry of judgment awarding Thermo King such damages as it has sustained by reason
of TBP’s deceptive trade practices pursuant to Minnesota Statute § 325D.44, and awarding
Thermo King damages in amount to be determined at trial;
- 30 -
39579609.1
L. Entry of judgment temporarily and permanently enjoining TBP from facilitating
breach of Thermo King’s Dealer Agreements, and awarding Thermo King damages in an amount
to be determined at trial.
M. Entry of judgment awarding Thermo King the amount of TBP’s unjust enrichment.
N. Affording Thermo King such further and other relief as this Court may deem just and
proper.
- 31 -
39579609.1
JURY DEMAND
Plaintiff hereby requests and demands trial by jury on all claims so triable.
Dated: January 31, 2022

SAUL EWING ARNSTEIN & LEHR LLP
By: s/ Courtland C. Merrill/
COURTLAND C. MERRILL, ESQ.

MN Bar No. 311984
33 South Sixth Street
Suite 4750
Minneapolis, MN 55402
Tel: (612) 225-2943
courtland.merrill@saul.com
DARIUS C. GAMBINO, ESQ.

PA Bar. No. 83496
Motion for Admission Pro Hac Vice to be
Filed
1500 Market Street, 38th Floor
Philadelphia, Pennsylvania 19102
Tel: (215) 972-7173
darius.gambino@saul.com
Attorneys for Plaintiff

Thermo King Corporation
- 32 -
39579609.1
CASE 0:22-cv-00276 Doc. 1-1 Filed 01/31/22 Page 1 of 3
EXHIBIT A
EXHIBIT B
EXHIBIT C
John Bathke
jbathke@iphorgan.com
Intellectual Property Lawyers
January 20, 2021
Mark W. Eves, PC VIA EMAIL & COURIER

Attorney at Law mwevespc@gmail.com
3236 S.W. Kelly Ave., Suite 200
Portland, OR 97239
Re: Thermo By Products ASE Supply

Unauthorized Use of Thermo King Corporations Intellectual Property
(Our ref: TTK 07986 US)
Dear Mr. Eves:
We represent Thermo King Corporation in intellectual property matters worldwide. Your client
Thermo by Products ASE Supply (“Thermo by Products”) is again infringing our client’s rights, and
consumers are likely to be confused. We therefore request that Thermo by Product immediately
cease and desist its infringing use of Thermo King’s trademarks and trade dress in connection with
the sale of its reefer parts.
As you know, Thermo King uses its THERMO KING trademark in connection with the sale of self-
contained temperature control units and parts both in the U.S. and abroad. It has used this mark
since as early as 1938, and consumers readily associate our client’s mark with the quality products
our client provides. In fact, as a result of its extensive use, our client’s mark has acquired a high level
of fame and recognition worldwide. Even the design of our client’s products have acquired brand
recognition, especially Thermo King’s PRECEDENT unit.
Most likely, this is why Thermo by Products is using our client’s trademarks and trade dress in
connection with the sale of reefer parts: to confuse consumers into believing that it is associated with
our client with the intention of capitalizing off or our client’s goodwill. We thought this matter was
resolved in 2017 when we first contacted your client. Obviously, we were mistaken.
Currently, you client is prominently using THERMO KING to sell reefer parts on its website and in its
catalogue. Some of these parts appear to be aftermarket parts, those labelled TB; others, however,
appear to be genuine, those labelled TB-TK parts. Both TB and TB-TK parts appear side by side and
even some of the TB “aftermarket” parts being sold contain our client’s logo and appear to be
genuine parts. Also, for its sale of replacement doors for PRECEDENT unit, Thermo by Product
went so far as to use our client’s U-shaped design for which our client enjoys trade dress protection.
These infringing activities must stop. At this time, we presume that your client wishes to avoid any
further conflict. Our client also desires to resolve this matter amicably and without delay.
Accordingly, Thermo King requests your client’s immediate cooperation in the discontinuance of its
current use and display of THERMO KING in connection with the sale of reefer parts.
Your client’s prompt compliance with our client’s request will greatly assist in achieving an amicable
and speedy resolution to this matter. We therefore look forward to your response. Please do not
hesitate to contact the undersigned with any questions.
Kind Regards,
John T. D. Bathke
John T. D. Bathke
JTDB/ekt
IpHorgan Ltd. 195 Arlington Heights Road, Suite 125 Buffalo Grove, IL 60089-1768 (847) 808-5500 Fax (847) 808-7238/7245 iphorgan.com
EXHIBIT D
June 24, 2021 Kolitch Romano LLP

520 SW Yamhill St., Ste. 200
Portland, Oregon 97204
1.503.994.1650 | kolitchromano.com
VIA EMAIL clay@iphorgan.com
Christopher Lay
IP Horgan Ltd.
195 Arlington Heights Road, Suite 125
Buffalo Grove, IL 60089-1768
Re: Thermo King Products;

KR Ref. – TBP223
Subject to FRE 408 – Settlement Communication
Dear Mr. Lay:
Our firm represents ASE Supply, Inc./Thermo By Products (ASE) in intellectual property matters.
Mr. Eves continues to represent ASE, as well. Please direct any future correspondence to both
of our attention. As an initial matter, our client takes intellectual property rights seriously. In this
connection, we have carefully reviewed the prior correspondence in this matter, and all
allegations, and this letter is ASE’s response to Thermo King.
As previously indicated, our client believes it is selling genuine Thermo King products, and not
counterfeit goods. Given that Thermo King has provided no evidence to contrary, this should be
the end of any demand by your client with respect to our client.
However, it appears what Thermo King is now really asking for is a favor, but a favor veiled as a
threat and demand. ASE has no contract with Thermo King, and is unaware of the terms of any
contract that Thermo King may have with any of its dealers/distributors. Accordingly, there is no
possible colorable cause of action that Thermo King can credibly bring against ASE, based on
breach of contract or otherwise.
To the extent Thermo King believes its dealers/distributors are acting impermissibly, that is a legal
matter that does not involve our client. If Thermo King has agreements with its distributors, then
it can enforce those agreements against its dealers/distributors. Therefore, we are likewise
flummoxed as to why Thermo King continues to make demands and threats against our client.
Your letter mentions that our client “acknowledged” the “illegality” of sales by distributors. Our
client made no such admission, and it seems oddly desperate to draw that inference.
Finally, your letter references “standard business practice,” but we find Thermo King’s handling
of this matter to be outside of standard business practice. If your client wanted cooperation from
ASE, then you could have approached it without threats and demands, as most rational
businesses do when approaching an innocent third party. Instead, Thermo King’s overall
approach to date has made our client unwilling to cooperate voluntarily with your client, under the
current circumstances. If Thermo King would like cooperation, then Thermo King should provide
Kolitch Romano LLP Intellectual Property Attorneys

Christopher Lay
IP Horgan Ltd.
June 24, 2021
KR Ref. – TBP223
a mutually beneficial reason for ASE to do so. Otherwise, our client will no longer respond
voluntarily to further correspondence from Thermo King.
ASE reserves all rights.
Sincerely,
Thomas J. Romano
Email: tj@kolitchromano.com
Intellectual Property Attorney | Licensed Patent Attorney
TJR:cg
Kolitch Romano LLP 2 of 2 Intellectual Property Attorneys

JS 44 (Rev. 04/21) CASE 0:22-cv-00276
CIVILDoc. 1-5 Filed
COVER SHEET 01/31/22 Page 1 of 1
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
THERMO KING CORPORATION A.G.A. DISTRIBUTION SPECIALISTS, INC.
(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) Courtland C. Merrill

Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Saul Ewing Arnstein & Lehr LLP, 33 South Sixth Street,

Suite, 4750, Minneapolis, MN - 612-225-2943
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
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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/ INTELLECTUAL 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
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(Excludes Veterans) 345 Marine Product Liability ✖ 840 Trademark Corrupt Organizations
153 Recovery of Overpayment Liability PERSONAL PROPERTY LABOR 880 Defend Trade Secrets 480 Consumer Credit
of Veteran’s Benefits 350 Motor Vehicle 370 Other Fraud 710 Fair Labor Standards Act of 2016 (15 USC 1681 or 1692)
160 Stockholders’ Suits 355 Motor Vehicle 371 Truth in Lending Act 485 Telephone Consumer
190 Other Contract Product Liability 380 Other Personal 720 Labor/Management SOCIAL SECURITY Protection Act
195 Contract Product Liability 360 Other Personal Property Damage Relations 861 HIA (1395ff) 490 Cable/Sat TV
196 Franchise Injury 385 Property Damage 740 Railway Labor Act 862 Black Lung (923) 850 Securities/Commodities/
362 Personal Injury - Product Liability 751 Family and Medical 863 DIWC/DIWW (405(g)) Exchange
Medical Malpractice Leave Act 864 SSID Title XVI 890 Other Statutory Actions
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 790 Other Labor Litigation 865 RSI (405(g)) 891 Agricultural Acts
210 Land Condemnation 440 Other Civil Rights Habeas Corpus: 791 Employee Retirement 893 Environmental Matters
220 Foreclosure 441 Voting 463 Alien Detainee Income Security Act FEDERAL TAX SUITS 895 Freedom of Information
230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 870 Taxes (U.S. Plaintiff Act
240 Torts to Land 443 Housing/ Sentence or Defendant) 896 Arbitration
245 Tort Product Liability Accommodations 530 General 871 IRS—Third Party 899 Administrative Procedure
290 All Other Real Property 445 Amer. w/Disabilities - 535 Death Penalty IMMIGRATION 26 USC 7609 Act/Review or Appeal of
Employment Other: 462 Naturalization Application Agency Decision
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Other 550 Civil Rights Actions State Statutes
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Conditions of
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✖ 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):
35 USC 1051 et seq
VI. CAUSE OF ACTION Brief description of cause:
Complaint for Trademark & Design 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
1/31/22 s/ Courtland C. Merrill
FOR OFFICE USE ONLY
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Thermo King Corporation v. A.G.A. Distribution Specialists - Complaint

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CASE 0:22-cv-00276 Doc.

1 Filed 01/31/22 Page 1 of 32

UNITED STATES DISTRICT COURT

against Defendant A.G.A. Distribution Specialists, Inc., d/b/a “Thermo By Products”

(“Defendant” OR “TBP”), alleges and avers as follows:

2. Upon information and belief, Defendant is a corporation organized and existing

17th Ave, Portland, Oregon 97211.

JURISDICTION AND VENUE

this judicial district.

buses, trains and urban mass transit worldwide.

8. Thermo King owns the following United States Trademark Registrations

(collectively, the “Thermo King Marks”):

Mark Reg. No. Reg. Date Goods/Services

THERMO KING 982,686 Apr. 23, 1974 “MAINTENANCE,

“auxiliary power units

Thermo King’s PRECEDENT® Mark

attached hereto as Exhibit A.

11. The ‘351 Registration is valid and incontestable.

mark; and Thermo King’s substantial presence in the marketplace.

Thermo King’s PRECEDENT® Line

the PRECEDENT® Line (the “Precedent Line”).

Environmental Protection Agency (“EPA”).

uniform temperature. Images of the PRECEDENT® “S-600”, as well as a PRECEDENT® unit

attached to a semi-tractor trailer truck are shown below.

The PRECEDENT® “S-600”

The PRECEDENT® Trade Dress

“Precedent Trade Dress”).

23. The Precedent Trade Dress is purely aesthetic and non-functional.

‘look for’ advertising and otherwise.

and potential customers.

include the purely aesthetic features of the Precedent Trade Dress.

Registration No. 6,285,785 for “a three-dimensional configuration of a self-contained

Drawing from the ‘785 Registration is shown below.

least as early as March 1, 2013.

Registration is shown below.

least as early as March 1, 2013.

The PRECEDENT® Design Patent

33. The ‘135 Patent is valid and subsisting.

and is entirely aesthetic.

Patent issued (on July 30, 2013).

Thermo King’s Distribution Model

prohibits dealer from ‘wholesaling’ products.

38. Section VI (D) (“Obligations Of Dealer”) of the Dealer Agreement states, in

Dealer shall not directly or indirectly establish any new dealer or

39. Section VI (H) (“Miscellaneous”) of the Dealer Agreement states:

Dealer agrees that it shall not:

(iii) Disclose information of a proprietary nature, such as

(v) Make any sale of Products outside the country or nation

been trained to sell.

Defendant Thermo By Products

41. TBP, according to its website (https://www.thermobyproducts.com/) is a

products within the Transport Refrigeration industry.”

like Thermo King and Carrier, and non-OEM replacement parts.

43. TBP is not an authorized dealer of Thermo King.

9117 (GRILLE ROADSIDE), (3) TB-37-98-9118 (GRILLE CURBSIDE), (4) TB-37-98-9120

37-98-9120 (KIT DOOR ROADSIDE CENTER WITH HARDWARE), (7) TB-37-98-9121

(KIT DOOR CURBSIDE CENTER WITH HARDWARE), (8) TB-37-98-9122 (DOOR

ROADSIDE OUTER), (9) TB-37-98-9122 (KIT PANEL ROADSIDE WITH HARDWARE),

(10) TB-37-98-9123 (DOOR CURBSIDE OUTER), (11) TB-37-98-9123 (KIT PANEL

CURBSIDE WITH HARDWARE), (12) TB-37-98-9640 (DOOR ROADSIDE CENTER

CURBSIDE PANEL AFTER 2/17) (collectively, the “Infringing Products”).

Roadside) (collectively, the “TK OEM Products”).

respective authorized dealer’s Dealer Agreement with Thermo King.

49. In 2017, in response to communications from Thermo King’s counsel (Daniel