GET DIESEL wins jurisdictional battle for trademark infringement of DIESEL TEST

Chuck Diesel

Chuck Diesel

Are you Diesel?
Awards
1
  • Established
Unknown to many on here I have been kinda MIA from the boards since 2016/2017 because I have been tied up in TTAB (USPTO) proceedings against the DIESEL clothing company (they were trying to prevent me from using my "DIESEL" family of trademarks AND in federal court tied up in a jurisdictional battle from the defendants (Rev Labs) and their owners in California trying to dismiss the case for lack of jurisdiction (ie can Illinois call a non-resident to Illnois to answer and be responsible for harm caused by there actions that occured by there were domicile in another state).

The district judge dismissed my case way back in 2017 and denied my motion to amend his decision. On appeal the 7th circuit overturned the district court recently basically saying this case stays in Illinois. The moral of the story is you cannot evade jurisdiction for torts because you believe they took place by way of internet transactions and you never (physically) entered the state. Those of you involved in law Calder v. Jones, and Keeton v. Hustler governs these types of case and have recently (although they are from 1984 before the internet was even around) have been applied to jurisdictional contacts made online:
-------

Online Sales Enough For Supplement Suit In Ill., 7th Circ. Says

By Celeste Bott

Law360 (February 10, 2020, 8:36 PM EST) -- The Seventh Circuit on Monday revived a trademark lawsuit brought by the owner of a dietary supplement company, holding a competitor could be sued in Illinois over its internet sales of a similarly packaged supplement for athletes.

A three-judge panel ruled that Charles Curry, founder of a company called Get Diesel Nutrition, could pursue his infringement claims against Revolution Laboratories LLC over its use of the branded language "Diesel Test Red Series, All Natural Testosterone Booster" on similar products.

"We see no unfairness in subjecting Revolution to jurisdiction in Illinois," the court said. "Revolution is not physically present in the state. Nevertheless, it has structured its marketing so that it can easily serve the state's consumers — and it has done so by selling the allegedly confusing product in substantial quantity."

The Seventh Circuit drew similarities between this dispute and its 2010 ruling in Illinois v. Hemi Group, in which the court held that a New Mexico cigarette distributor that had sold hundreds of packages of cigarettes over the course of multiple years to an Illinois Department of Revenue agent through an interactive website was subject to personal jurisdiction in Illinois.

"Like Hemi, Revolution sells its products only online through its website and third-party websites. Revolution's interactive website for the sale of its products requires the customer to select a shipping address. Illinois is among the 'ship-to' options from which the customer must choose," the court said.

The roughly 767 Illinois residents who bought Revolution's Diesel Test product between October 2016 and June 2017 also received emails from Revolution thanking them, confirming their order and listing the Illinois shipping addresses, the court noted. So the company's efforts to establish commercial contacts in Illinois "fairly can be described as purposeful," the panel said.

The company can't "have its cake and eat it, too," the panel said, saying Revolution appears to want the benefit of a nationwide business model without the exposure.

A district judge dismissed the lawsuit in August 2017, saying Curry failed to allege that Revolution has contacts with Illinois beyond its online sales to justify the exercise of jurisdiction, such as an advertising campaign directed at the state.

But the Seventh Circuit said that while caution is warranted to make sure defendants aren't sued simply for operating a website accessible in the forum state, Revolution's 767 sales to Illinoisans is "solid evidence" it purposely exploited the Illinois market and distinguishes it from a defendant that merely operates a website.

Revolution began selling the supplement at issue in October 2016. Later that year, both Curry and Revolution's president Joshua Nussbaum filed trademark applications for their respective products. Curry filed suit the following year, after the U.S. Patent and Trademark Office suspended the processing of both applications, citing a likelihood of confusion between the marks, according to filings in the case.

Representatives for the parties could not be immediately reached for comment on Monday.

U.S. Circuit Judges Kenneth Ripple, Ilana Rovner and Amy Barrett sat on the panel for the Seventh Circuit.

Charles Curry represents himself.

Revolution is represented by Amy M. Gibson of Aronberg Goldgehn Davis & Garmisa.

The case is Curry v Rev Labs et al. number 17-2900, in the U.S. Court of Appeals for the Seventh Circuit.

--Editing by Daniel King.
 

Attachments

GQdaLEGEND

GQdaLEGEND

Well-known member
Awards
4
  • Established
  • First Up Vote
  • Best Answer
  • RockStar
damn 1.6mil in 6mos was their sales .. glad you handled it and happy that you won

was it the same product and they just renamed it to REV TEST now ?
 
Chuck Diesel

Chuck Diesel

Are you Diesel?
Awards
1
  • Established
damn 1.6mil in 6mos was their sales .. glad you handled it and happy that you won

was it the same product and they just renamed it to REV TEST now ?
Yep they sell it as Rev Test now since about 2018'ish. I only won jurisdiction at this point but that's a big step because they already admitted to tons of sales. Specifically they sold over 30,000 units nationwide and over 1,000 units to Illinois residents.

It was getting out of control, I was getting so many request for refunds from people thinking they purchased "real" Diesel Test.

I also want to let people know if someone is wronging you and you know for a fact they are in the wrong, you make lose months of sleep and a lot of money but do research and take whatever steps you need to do to protect your brand etc.
often people infringe on trademarks or lyrics to songs etc, then "play stupid." The government protects against "playing stupid" also which is called innocent misappropriation. As in you can't say "oh I didn't know." You have to perform some due diligence before selecting a mark for use in commerce.

I am going to post a pic of their fake stuff next to mine
 
GQdaLEGEND

GQdaLEGEND

Well-known member
Awards
4
  • Established
  • First Up Vote
  • Best Answer
  • RockStar
such a shame .. yeah i can see how pple would be pissed thinking that they should be getting your product instead they get 100mg of DAA, 200mg of trib and other garbage
 
Chuck Diesel

Chuck Diesel

Are you Diesel?
Awards
1
  • Established
such a shame .. yeah i can see how pple would be pissed thinking that they should be getting your product instead they get 100mg of DAA, 200mg of trib and other garbage
Thats the same thing I was explaining to a lawyer the other say (supplement manufactuing). I was like one of the main problems is 30,000 people go a bottle of $3.50 product.
 
Segansational

Segansational

Well-known member
Awards
3
  • Established
  • First Up Vote
  • RockStar
Glad to see you get what was due Chuck. I know you've been an OG in this game for decades, at least back since the BB.com days. Also neat to see your new labels. I remember logging NOS ETHER way back when, the brand has come a long way.
 
Chuck Diesel

Chuck Diesel

Are you Diesel?
Awards
1
  • Established
Congrats man, sometimes justice does prevail. Speaking of, I haven't used your stuff in like a decade. Time to get on that?
Why not bro. New PRs is always the goal at Get Diesel.
 
Chuck Diesel

Chuck Diesel

Are you Diesel?
Awards
1
  • Established
Glad to see you get what was due Chuck. I know you've been an OG in this game for decades, at least back since the BB.com days. Also neat to see your new labels. I remember logging NOS ETHER way back when, the brand has come a long way.
Thx bro. Yep. Been on bb.com since it was only out of Idaho back in 2002/2003.

May 2020 will be 18 years in this.
 
Aleksandar37

Aleksandar37

Well-known member
Awards
4
  • RockStar
  • Established
  • First Up Vote
  • Best Answer
Glad it worked out, but sorry you even had to deal with that. Happy to see another TW alumni doing well!
 
TommyTuffGuy

TommyTuffGuy

Well-known member
Awards
3
  • Established
  • First Up Vote
  • RockStar
I had no idea there was another actual DIESEL TEST out there from a different company lol. Wow. Glad you won, Diesel Test is your thing, and a good one at that.
 
thebigt

thebigt

Legend
Awards
5
  • Best Answer
  • Established
  • Legend!
  • RockStar
  • First Up Vote
congrats, Chuck...you are diesel test!!!
 
Rocket3015

Rocket3015

Legend
Awards
4
  • RockStar
  • Legend!
  • Established
  • First Up Vote
Chuck you are a fighter and a good honest business man and I am proud to call you a friend !!
 

Similar threads


Top