Académique Documents
Professionnel Documents
Culture Documents
)
CARDINAL MOTORS, INC, )
) Case No.____________
Plaintiff, )
)
v. ) COMPLAINT
)
H&H SPORTS PROTECTION USA INC., ) DEMAND FOR JURY TRIAL
)
)
Defendant. )
----------------------------------------------------- )
This is an action for design patent and trade dress in which Cardinal
PARTIES
under the laws of the State of New York and operating from offices located in
Saugerties, New York”. Cardinal is the owner of all rights, title, and interest in
and has standing to sue for infringement of United States Patent No. D661,027
(the “‘027 Patent”), which is entitled “HELMET” (Exhibit A). Plaintiff Cardinal is
in the business of designing for sale and licensing motorcycle helmets with
Case 7:20-cv-07899 Document 1 Filed 09/24/20 Page 2 of 22
distinctive designs, and is further the owner of trade dress rights in the
2. Upon information and belief, Defendant H&H Sports Protection USA Inc.
Blvd 2nd Floor, Pasadena CA, 91105 and manufactures and sells motorcycle
rights of Cardinal by, inter alia, making, using, selling, or importing to the United
States and/or exporting from the United States motorcycle helmets that infringe
one or more claims of the ‘027 Patent and its distinctive trade dress appearance.
made available for purchase by Defendant and interfere with and constitute
infringement of Cardinal’s trade dress and Cardinal’s patent rights under the
existence of a federal question arising under the Patent Act of 1952, more
particularly for patent infringement arising under the Acts of Congress relating
to patents, 35 U.S.C. §§ 271; 281-285. This court has jurisdiction under 28 U.S.C.
New York.
7. This is also an action for trade dress infringement. The Court has
jurisdiction of the federal trade dress claims under Section 43(a) of the
Trademark Act of 1946, 15 U.S.C. §§ 1121 and 1125(a), and the Judicial Code, 28
U.S.C. § 1331(a), and of the Lanham Act §§ 1332 and 1338 (a) in that this case
arises under the trademark laws of the United States, 15 U.S.C. § 1051 et seq., as
herein under the provisions of 28 U.S.C. § 1338(b) in that said claims are joined
with a substantial and related claim under the trademark laws of the United
States, 15 U.S.C. § 1051 et seq. and/or the patent laws of the United States 35
9. The Court has jurisdiction over related claims arising under the law of the
State of New York under the provisions of 28 U.S.C. § 1338(b) in that said claims
are joined with a substantial and related claim under the trademark laws of the
United States, 15 U.S.C. § 1051 et seq. and/or the patent laws of the United States
helmet design. That application matured into the ‘027 Patent on May 29, 2012.
Chad Hodge has assigned all rights in and related to the ‘027 Patent to Cardinal.
In or around early 2013, Plaintiff Cardinal collaborated with Bell Sports, Inc.
(“Bell Helmets”) to release the Bullitt helmet (“The Bullitt”), which embodies the
patented design of the ‘027 Patent, and whose appearance and design is licensed
to Bell Helmets. The Bullitt is notable for its distinctive styling with a large eye
port, a distinctive silhouette and relatively thin chin bar. While The Bullitt allows
for personal stylization, mainly in terms of color, the various versions of The
Bullitt exhibit the distinctive substance of the design which has come to be
12. The Bullitt motorcycle helmet, designed by Cardinal, with its distinctive
trade dress has been known in the field for many years. Chad Hodge is a
prominent name in the motorcycle helmet design community and his name is
13. Hodge’s work has been featured in such prominent magazines as Bloomberg,
Fuel Magazine, Playboy, New York Magazine, and Maxim, among others. The
14. The Bullitt Helmet has been a very successful product and has been sold
since 2013.
15. The distinction and popularity of Plaintiff Cardinal’s design for the Bullitt
by the popularity of The Bullitt over social media. The Instagram page for The
Bullitt has over 50,000 followers. Also on Instagram, the hashtag for the Bell
Bullitt has been tagged in more than 30,000 posts. Even misspellings or variations
16. Plaintiff, long prior to the acts complained of herein, has been and is now
States by virtue of the ongoing sales of a wide and diverse line of products, and
other related products, including the above helmets having the design illustrated
17. The sculptural and graphic design of The Bullitt (hereinafter, the “Trade
Dress”), namely its sculptural configuration and/or its graphic and tonal finish
design features, is a protectable trade dress under §43(a) of the Lanham Act, by
virtue of extensive sales, publicity and online presence. The Trade Dress has
Case 7:20-cv-07899 Document 1 Filed 09/24/20 Page 6 of 22
Plaintiff Cardinal’s motorcycle helmet design for The Bullitt. Plaintiffs derive
18. For years Plaintiff has exclusively licensed the patented design of The
Bullitt helmet with its associated trade dress to Bell Helmets. Due to long and
promoting the helmet and its distinctive trade dress appearance, the Trade Dress
has come to be associated with goods that originate with Cardinal as designer
and licensor.
Defendant’s Activities
19. Defendant has introduced for sale and marketed a so-called Torc T-1
helmet (the “HSP Copy”), which infringes upon Cardinal’s patent, trade dress,
20. Cardinal’s original The Bullitt and the HSP Copy are illustrated in the
As indicated on the image above, both helmets use rivets 1 visible from the
outside to secure the inside chinstraps. Both also have a metallic reflective
borderline 2 on the bottom and a metallic reflective borderline 3 near the forward
opening. Both helmets use large decorative roundhead slotted screws with
overall form factor reinforces the apparent objective of Defendant to make the
21. As illustrated in the images below, the size of the front openings of both
helmets measure almost identically in the vertical and horizontal directions. The
original and copied helmets approximately have a width of 21cm and a height of
Both helmets also feature prominently a decorative leather overlay on top of the
front opening.
Case 7:20-cv-07899 Document 1 Filed 09/24/20 Page 8 of 22
22. The helmets also share the same visual elements when viewed from the
bottom of the helmet, as illustrated in the image below. For example, both
helmets have brown leather-like arc segments, metallic bottom trim and a brown
leather trim patch. Both helmets use substantially the same color of leather for
23. In addition, the chinstraps are rectangular nylon straps that terminate in a
24. As shown below, the internal cheek pads of Cardinal’s original The Bullitt,
with their combination of brown shiny leather and suede leather are again
copied by the HSP Copy with the objective of simulating The Bullitt and
confusing the consumer. The original and copied pads are both a jig saw puzzle
Both have leather on the edges that connects the diamond perforated pseudo-
25. The reverse of the internal lining pads, pictured below, are also
26. As illustrated below, the copying of the configuration and color plan of the
confuse consumers into believing that the HSP Copy is The Bullitt.
27. As illustrated below, the HSP Copy copies The Bullitt’s decorative leather
overlay on the back of the helmet (a design element that resonates with the
decorative leather overlay on the front of the helmet), again evidencing an intent
to confuse the consumer. The HSP copy also arbitrarily copies The Bullitt with
28. The neck cushion holders on both helmets are identical. The holders are
also both finished with mesh fabric and have leather on the bottom.
29. On June 26, 2019, Plaintiff’s counsel, on behalf of Plaintiff, sent a letter to
asserted Plaintiff’s rights over the infringed trade dress and over the ‘027 Patent.
COUNT ONE
DESIGN PATENT INFRINGEMENT
Case 7:20-cv-07899 Document 1 Filed 09/24/20 Page 14 of 22
30. As a cause of action and ground for relief, Plaintiff alleges and
this Count.
31. Plaintiff Cardinal is the owner of all rights under United States Design
helmet.
32. On May 29, 2012 the Design Patent (Exhibit A) was duly and legally issued
to Chad Hodge, and Hodge has assigned the Design Patent to Plaintiff Cardinal.
Plaintiff Cardinal is the owner of rights under the Design Patent, including the
33. Defendant has manufactured, used, sold, imported into the United States
and/or offered for sale in the United States products (including, without
limitation the HSP Copy) that (a) embody the decorative, sculptural and graphic
design of the helmet illustrated in the Design Patent, and (b) infringe the Design
34. Plaintiff Cardinal has never authorized Defendant at any time to make,
36. Defendant has had actual and/or constructive knowledge of the Design
Patent, and its infringement of the Design Patent has been, and continues to be,
COUNT TWO
37. As a cause of action and ground for relief, Plaintiff alleges and
this Count.
38. Upon information and belief, long after Plaintiff created and invested
of Plaintiff’s trade dress rights, Defendant adopted and used a design for its
Trade Dress. Defendant had the objective of mimicking the Trade Dress as a
means of unfairly taking advantage of and profiting from Plaintiff’s image and
and otherwise misappropriating the Trade Dress of The Bullitt for Defendant’s
39. Defendant has used and continues to use derivatives and/or colorable
Defendant has used and continues to use these infringing derivatives and/or
for sale and distribution, advertising and promotion of goods in a manner that is
41. Defendant’s acts of using the Trade Dress are a false description and
representation that said goods are made by, sponsored by and/or affiliated with
Plaintiff Cardinal. Said acts of using Cardinal’s Trade Dress are in violation of
15 U.S.C. § 1125 in that Defendant, inter alia, has used, in connection with
falsely describe or represent the same and has caused such goods to enter
into interstate commerce, and/or are in violation of §43 of the Lanham Act as
trade dress infringement and false designations of origin, together with the
other acts complained of herein, Plaintiff has sustained and will continue to
43. By reason of the acts of Defendant herein alleged, Plaintiff has been
Defendant has and will continue to deceive the public, and otherwise will cause
COUNT THREE
44. As a cause of action and ground for relief, Plaintiff alleges and
this Count.
the reputation of Cardinal’s licensed products, seeking to sow where one has not
goods, unfair competition and unfair trade practices under the statutory and
a. A judgment that the Trade Dress is valid at law, and that Defendant
officers, directors, agents, servants, employees, attorneys, and all others acting
under or through it, directly or indirectly, from using the Trade Dress and
directors, agents, servants, employees, attorneys, and all others acting under or
through it, directly or indirectly, from infringing the Design Patent of Plaintiff
Cardinal;
trade dress infringement, and unfair competition, with prejudgment interest, and
the complained of patent and trade dress infringement, and unfair competition,
and for Defendant to pay to Plaintiff the amount of such unjust enrichment and
counterfeit, copy or colorable imitation thereof, and all plates, molds, matrices,
electronic files and other means of making the same shall be delivered up and
destroyed;
sum above the amount found in actual damages, but not to exceed three times
k. Such other and further relief as this Court may deem just and
equitable.
Respectfully submitted,
83 East Avenue
Norwalk CT 06851
917 880-0811
Email: handal@HandalGlobal.com
Case 7:20-cv-07899 Document 1 Filed 09/24/20 Page 22 of 22
Exhibit A
Case 7:20-cv-07899 Document 1-1 Filed 09/24/20 Page 2 of 6
Case 7:20-cv-07899 Document 1-1 Filed 09/24/20 Page 3 of 6
Case 7:20-cv-07899 Document 1-1 Filed 09/24/20 Page 4 of 6
Case 7:20-cv-07899 Document 1-1 Filed 09/24/20 Page 5 of 6
Case 7:20-cv-07899 Document 1-1 Filed 09/24/20 Page 6 of 6