Friday, March 29, 2013, 10:00 AM
By Kirk Watkins
Whitestone Marketing Group, LLC ("Whitestone"), sued ProGraphics Communications, LLC ("ProGraphics"), for federal and common law trademark infringement, false designation of origin and misrepresentation in commerce, false advertising, unfair competition, dilution, and misappropriation.
Whitestone creates marketing campaigns for independent retail outlets based on commonality of products from a single supplier. The marketing program is an automated, multi-channel, direct approach without requiring input from local store owners. Whitestone named its marketing program “Smart Campaign,” which is registered at U.S. Trademark Reg. No. 3,701,066 and provides three discrete levels of service – Silver, Gold, and Platinum.
The complaint asserts that ProGraphics, a commercial printer, sought Whitestone’s services in or about May 2012, to develop a direct marking program for a manufacturer of picture frames to individual stores. The customer allegedly decided to test the program for its 2,700 individual stores after seeing a Whitestone PowerPoint presentation made by ProGraphics. Whitestone alleges that it was to provide the direct marketing consultation services for the customer, and that ProGraphics announced the arrangement in a Press Release on May 1, 2012.
According to the complaint, the program held the prospects of millions of dollars of revenues to ProGraphics for its printing services and to Whitestone for the marketing services. Whitestone alleges that certain ProGraphics employees sought to increase ProGraphics’ revenues at the expense of Whitestone by offering additional marketing services outside the Whitestone discrete levels of service and persisted in this effort after Whitestone objected. The complaint alleges these employees described the provided marketing services originating with Whitestone, while secretly supplying them from other companies without Whitestone’s involvement. Whitestone alleges diversion of further services to ProGraphics and the companies enlisted, as well as unauthorized sharing of Whitestone’s confidential information.
Whitestone seeks an injunction against ProGraphics’ use of the SMART CAMPAIGN® mark, and requests destruction of ProGraphics’ advertising materials. Damages, including lost profits, treble damages, punitive damages, and reasonable attorney’s fees are also sought.