URGENT U. P. Breaking News Bulletin – 3-6-18 – 3:52 p.m. ET
Kubota Tractor Corporation and its credit company file trademarks lawsuit against Michigan Sales & Equipment, Inc. and its Marquette owner Karen Larson
By Greg Peterson
U.P. Breaking News
Owner, News Director
906-273-2433
(Marquette, MI) – An international farm machine company has filed a lawsuit against a Marquette Township businesses for alleged trademark infringement and for allegedly using the company’s logos long after a deal between the companies expired.
The Japanese-owned Kubota Tractor Corporation and its finance division have filed a 17-page, six-count federal civil lawsuit against a farm machine dealer in Marquette Township. The suit was filed on March 1, 2018 at federal court in Marquette, MI. The suit was filed on behalf of Kubota by Rochester, Michigan attorneys Seth D. Gould and Daniel K. Beitz of the Wienner & Gould, P.C. law offices.
Count I: Breach of the Dealer Sales and Service Agreement (DSSA)
Count 2: Trademark and Service Mark Infringement
Count 3: Unfair Competition and False Designation Of Origin
Count 4: Trademark Dilution
Count 5: Common Law Conversion (KCC)
Count 6: Statutory Conversion (KCC)Download or read your own copy – as we paid for it:
2018 Tractor Federal Civil Lawsuit 3-1-18 (1) 17 pg. lawsuit
2018 Tractor Federal Civil Lawsuit Index for relief 3-1-18 (2)
2018 Tractor Federal Civil Lawsuit Exhibit A Trademarks, logos 3-1-18 (3)
2018 Tractor Federal Civil Lawsuit Exhibit C sales contract between parties 3-1-18 (4)
2018 Tractor Federal Civil Lawsuit Exhibit D Prior stipulated agreement between parties 3-1-18 (6)
2018 Tractor Federal Civil Lawsuit Exhibit C correspondence 3-1-18 (5)
2018 Tractor Federal Civil Lawsuit Exhibit E lawsuit by Donald B. Bacon 3-1-18 (7)
2018 Tractor Federal Civil Lawsuit Exhibit F sales contract 3-1-18 (8)
The company is asking a federal judge to issue a permanent injunction against Michigan Sales & Equipment, Inc. (MSE) and its owner Karen Larson – and prohibiting the company was using any form of Kubota trademarks.
The injunction would include theoretically include teeth – assuring that any trademark infringements would result in a severe penalty from the court.
“In recognition of the goodwill and distinctiveness inherent in KTC’s family of marks, the U.S. Patent and Trademark Office has issued to KTC numerous U.S. Trademarks and Service Mark Registration,” the lawsuit states.
Kubota Tractor Corporation (KTC) supplies tractors plus farm and utility equipment to more than 1,100 dealerships in North America. KTC “offers a full range of equipment repair and services to owners of KTC equipment across the United States and the world,” the lawsuit states.
While the two companies had a past agreement – a June 2016 proposed deal between the two companies fell through – and that “prohibits any former dealership’s use of Kubota trademarks after the DSSA terminates,” the lawsuit stats.
This case has been litigated in court – even in one of those – related but not related type cases – that Kobota is using to backup its claims that the matter is serious and not just innocent use of logos on sales manuals and bills.
“Defendants’ conduct is confusing Kubota customers, damaging such customers, harming Plaintiffs and the new Kubota dealer U.P. Kubota,” the civil lawsuit states.
Kubota cites a lawsuits “recently filed in the 25th Circuit Court for the County of Marquette” (Case No. 17-56206-CK) before Judge Karl Weber “by a Kubota customer” Donald B. Bacon of Gladstone “which alleges fraud and misrepresentation” against MSE.
“Defendants have performed defective work for Kubota customers and are falsely advising these customers that Kubota equipment is defective,” the lawsuit alleges. “Warranty repairs of Kubota equipment must only be performed at authorized Kubota dealerships by personnel trained to perform such repairs.”
“Defendants’ wrongful use of KTC’s famous trademarks and trade names is likely to dilute the distinctive nature of those marks and to tarnish their reputation,” the lawsuit alleges.
In fact, both companies have been squabbling over the trademark issues for several years – including agents of KCC inspecting the Marquette facilities in search of trademarks. It appears the Marquette company allegedly had KTC logos on everything from sales and service manuals to signs – something that may seem petty in Marquette but not to the Japanese tractor maker.
“After KTC terminated Defendants’ DSSA, a new Kubota dealership, U.P. Kubota, was opened and is operating at 4250 US Highway 41 West, Marquette,” the lawsuit states.
The fight even involved whether Larson was in control of a one-page website that advertises her company – but no longer has Kubota trademarks. (Read the lawsuit for all the background).
“On June 7, 2017, Ms. Larson advised KTC that she owned the Kubota Mark signs and sales/service manuals, and she refused to stop displaying these Kubota Marks,” the lawsuit states.
“Despite KTC’s repeated demands that Defendants cease and desist from infringing KTC’s trademarks and trade names, Defendants have refused and failed to do so” the suit alleges, although conceding that Larson and MSE have taken down and are no longer using some of the trademarks. The suits also cites a tractor, rotary tiller, and snowblower purchased by Marvin W. Dawson – who it describes as a secured creditor.
Kubota Credit Corporation (KCC) is a California corporation, doing business in Michigan, and its principal place of business located in Grapevine, Texas.
KTC-parent Kubota Corporation (KBT) in located in Osaka, Japan.
Kubota is seeking a financial award, statutory damages and attorneys fees.
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Kubota Corporation introduced its first tractor to the United States in 1969 – a “sub-compact tractor” that found its niche. Formed in 1972, the Kubota Tractor Corporation (KTC) offers a wide-variety of products including lawn mowers, utility vehicles, construction equipment, agriculture tractors and hay equipment.
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URGENT U. P. Breaking News Bulletin – 8:43 a.m. ET – 3-6-18 – 3:45 p.m. ET – Trademark fight between as Marquette company and an international tractor and farming machine dealer based in Japan
United States District Court Western District of Michigan
Case No. 18-cv-00026Kubota Tractor Corporation, and Kubota Credit Corporation USA (Plaintiffs)
v.
Karen Larson
433 E. Ridge Street
Marquette, MIMichigan Sales & Equipment, Inc.
105 County Road 492
Marquette, MI
Claims for relief:
Permanent injunction be “issued enjoining Defendants and their officers, employees, agents, successors and assigns, and all those in active concert and participation with them, and each of them who receives notice directly or otherwise of such injunctions, from:
(1) displaying, imitating, copying, or making any unauthorized use of the Kubota Marks, or marks likely to cause confusion with them
(2) importing, manufacturing, producing, distributing, circulating, selling, offering for sale, advertising, promoting or displaying any service or product using any simulation, reproduction, counterfeit, copy, or colorable imitation of the Kubota Marks
(3) using any simulation, reproduction, counterfeit, copy or colorable imitation of the Kubota Marks in connection with the promotion, advertisement, display, sale, offer for sale, manufacture, production, circulation or distribution of any product or service
(4) using any false designation of origin or false description (including, without limitation, any letters, symbols, or designs constituting the Kubota Marks) or performing any act, which can, or is likely to, lead members of the trade or public to believe that any service or product manufactured, distributed or sold by Defendants are in any manner associated or connected with KTC or the Kubota Marks, or is sold, manufactured, licensed, sponsored, approved or authorized by KTC
(5) all of the above with the exception of nominative fair use of the Kubota Marks.
G. An Order permitting an authorized designee of KTC to remove any unauthorized display of the Kubota Marks, at Defendants’ expense
H. An Order directing that Defendants deliver for destruction all products, promotional and advertising materials, labels, tags, signs, prints, packages, videos or other materials in their possession or under their control, bearing or using unauthorized versions of the Kubota Marks or any simulation, reproduction, counterfeit, copy or colorable imitation thereof, and all plates, molds, matrices and other means of making the same
I. An Order directing such other relief as the Court may deem appropriate to prevent the trade and public from deriving the erroneous impression that any service or product manufactured, sold or otherwise circulated or promoted by Defendants are authorized by KTC or related in any way to KTC’s products and services
J. An Order directing the Defendants and their agents, employees, servants, attorneys, successors, and assigns, and all others in privity or acting in concert therewith, to file with this Court, and serve upon KTC’s counsel within thirty (30) days after entry of such judgment, a written report under oath, setting forth in detail the manner and form in which they have complied with such judgment
K. An award of KTC’s costs and disbursements incurred in this action, including KTC’s reasonable attorney’s fees
L. An award of KTC’s damages trebled or, alternatively, an award of Defendants’ wrongful profits trebled, whichever is greater, plus KTC’s costs and attorney’s fees
M. An award to KTC of its costs incurred in this action, including an award of reasonable attorney fees under 17 U.S.C. § 1114
N. As award to KTC of statutory damages.
O. An award of KTC’s damages arising out of Defendants’ acts
P. An award of KCC’s damages arising out of Defendants’ acts
Q. An award of KCC’s damages trebled plus attorneys’ fees and costs.
R. An award of interest, including pre-judgment interest on the foregoing sums
S. Such other and further relief as the Court may deem just and appropriate
Seth D. Gould (P45465) Daniel K. Beitz (P47451)
Wienner & Gould, P.C.
950 W. University Dr., Ste. 350
Rochester, MI 48307
sgould at wiennergould.com
dbeitz at wiennergould.com
https://www.kubotausa.com
https://www.facebook.com/kubotatractor
http://www.uptractors.com/
Upper Peninsula Breaking News by Greg Peterson 