Wheel Pros Fires Shots at Alleged Counterfeiter
The designers of aftermarket wheels are truly artists, and there are few things as stunning as a perfectly designed wheel. Unfortunately, artists that don’t protect their intellectual property become philanthropists, whether they know it or not. However, artists that do protect their IP greatly increase the chances of financial success. Simple facts!
Speaking of financial success — are you familiar with Wheel Pros Rockstar, Rockstar II, Rockstar III, Monster, and Monster II wheels? I suspect you are.
Well, earlier this month Wheel Pros took action to avoid becoming philanthropists and filed suit against Phoenix Tires & Wheels Outlet (a trade name of Wholesale Custom Tires and Wheels LLC), retailers, and the manufacturer of alleged counterfeit wheels.
What ammo did they have to unleash on the alleged counterfeiters? How about the shock-and-awe associated with 22 patents and 5 registered trademarks! That size of arsenal does not just happen without any planning, and is not the type of thing you can decide to do only after a product line is a commercial success.
The patents involved in the lawsuit include U.S. Patent Nos. D558,115, D701,481, D709,018, D709,020, D711,808, D712,333, D730,260, D733,026, D736,137, D742,293, D747,253, D786,167, D786,168, D792,831, D794,533, D794,534, D801,903, D805,456, D811,980, D811,981, D812,540, and D812,541; and the trademarks include Registration Nos. 4611509, 5001689, 4513500, 4919483, and 4947750.
From the looks of the photos contained in the complaint, someone is about to learn an expensive lesson regarding intellectual property (while paying off a portion of a litigator’s vacation house).
The complaint explains:
WHEEL PROS’ TRADEMARKS AND PATENTS ARE UNIQUE AND INHERENTLY DISTINCTIVE
24. The patents-in-suit and trademarks-in-suit referred to above are arbitrary, fanciful and inherently distinctive. The various trademarks-in-suit and patents-in-suit are unique and unusual and no other manufacturer uses them, individually or collectively, to denote the source in the automotive industry as does Wheel Pros.
25. In addition to the inherent distinctiveness of Wheel Pros’ trademarks-in-suit and patents-in-suit, such trademarks and patents have been marketed so extensively, and have been so favorably received by the public that such trademarks have achieved tremendous consumer recognition in the marketplace.
26. Wheel Pros’ sales success came after expending great amounts of time, effort, and money in the promotion and advertisement of its goods under its trademarks and patents. This promotional effort includes extensive internet, social media, and print media advertisements, promotion of products by Wheel Pros personnel, suppliers, dealers, and other promotional events and activities, sponsorships, and the like.
27. The widespread recognition and popularity of Wheel Pros Rockstar, Rockstar II, Rockstar III, Monster, and Monster II wheels have been unwavering. Wheel Pros popularized these brands through extensive advertising and promotion so that consumers would recognize the unique trade dresses, appearances and trademarks of
these wheels.
28. As a result of the widespread and continuous use and promotion of the trademarks and patents described above, such trademarks and patents are well known throughout the United States and have become widely known and recognized as identifying Wheel Pros as the source of a variety of products including, without
limitation, the Rockstar, Rockstar II, Rockstar III, Monster and Monster II wheels and as distinguishing the source of these goods from those of others. These trademarks and patents have come to and now do represent and symbolize the enviable reputation and very valuable goodwill of Wheel Pros among advertisers, consumers and retail establishments.
29. The Rockstar, Rockstar II, Rockstar III, Monster, and Monster II design, trademarks and trade dresses today are almost universally recognizable within the wheel industry and have one of the most stable and loyal customer bases in the industry.
30. The aforementioned trademarks and patents represent and symbolize one of the highest quality and most durable wheels in the industry.
31. The trademarks and trade dresses referred to above are primarily nonfunctional and are used for product identification purposes. The Rockstar, Rockstar II, Rockstar III, Monster and Monster II design trademarks are non-functional.
Looks like Wheel Pros is light years ahead of most in the industry when it comes to protecting their designs. Where do you stand? If you are investing in developing your own designs and aren’t protecting them, at least be honest with yourself and admit you are running a non-profit and are a philanthropist (but not in a good way – you are giving to your competition rather than the needy).
Dave Dawsey – The Aftermarket Equipment Patent Attorney
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