Persis Int'l, Inc. v. Burgett, Inc., No. 09 C 7451, Slip Op. (N.D. Ill. Sep. 26, 2011) (Guzman, J.).
Judge Guzman granted in part plaintiffs' (collectively "Persis") motion to dismiss defendant Burgett's counterclaim in this Lanham Act case involving the SOHMER mark. The Court dismissed Burgett's cancellation proceeding because it was based upon the submission of an allegedly fraudulent document in a separate trademark proceeding.
The Court dismissed two declaratory judgment claims related to a separate mark because they were unrelated to the case and were duplicative of claims in another ongoing case. The Court also dismissed a declaratory judgment claim regarding the SOHMER mark as duplicative of the existing claims and answer.
The Court allowed Burgett's trademark infringement claim because it alleged that it owned the mark and the relevant tire and even if it later assigned the mark, its right to pursue past damages did not necessarily flow with the assignment. The Court also allowed Burgett's unfair competition claim. Illinois unfair competition is not preempted by the Lanham Act, although it can be proven with the same or similar facts.