In a case charging infringement that has both sides claiming falsehoods and knock-offs, Icon Health & Fitness has sued newcomer to the United States from Mexico, Lime Pro Equipment, for infringement of trademarks as well as trade dress infringement.
The case, filed in the U.S. District Court, Utah, charges Lime Pro (www.limeproequipment.com) of producing and selling equipment that has copied NordicTrack’s look and feel, as well as using fonts and designs that are intended to confuse the customer. Since the products are now advertised for sale in the United States via eBay (click here to see that eBay store), Icon is also charging trade dress infringement.
“They’re faking our product,” Icon attorney Larry Laycock told SNEWS®. “This is a knock-off company.”
The complaint filed July 9, 2008, specifies infringement of the company’s trademarked “One Touch” treadmill control, trade dress infringement, unfair competition and breach of contract. The filing requests a jury trial and a preliminary injunction against Lime Pro, as well as Lime Pro’s profits and reimbursement for damages against Icon.
“When the level of deception and the level of infringement is such as it is here,” said Laycock, “it makes for an interesting discussion.”
In various twists raised which will be left for the court to ponder in the next few months:
- Defendant Isaac Calderon, president of Lime Pro, used to work for Icon as its distributor in Mexico, and co-defendant Mahonry Sanchez was a sales manager for Icon, according to Calderon and court statements. Calderon told SNEWS that Sanchez does not work for Lime Pro but only for their second company, Vento, which sells motorcycles.
- The photo of the Lime Pro office in San Diego, Calif., shows an impressive glass-paned, multi-story building with a one-story tall Lime Pro sign that does not really exist on the building. (See photos, right: Top photo is from website; bottom photo was taken of the building as it looks.)
- Calderon told SNEWS he has not sold anything in the United States although he has an eBay story, adding that his company put up the four feedbacks (three positive and one negative “to build the store.”)
- Icon is also suing Lime Pro and Calderon in Mexican courts for infringement, although Calderon told SNEWS the case is being “closed,” but would only add as explanation that courts in Mexico operate differently. Laycock said the case is proceeding.
- A logo for the Better Business Bureau reserved for use by members is on the eBay Lime Pro store although per BBB records Lime Pro is not a member. Records do show Vento has been a member since March 2006. The BBB record states Vento has been in business since May 2004 although the Vento website (www.vento.com) calls it a 10-year-old company and its registration with California as a Limited Liability Corp. shows a June 2003 date.
“Lime Pro USA doesn’t even exist,” Calderon told SNEWS in a call. Later, he said in a follow-up email that the case by Icon was against a “phantom company.”
Calderon told SNEWS that the product on which Icon is charging infringement “doesn’t even belong to them,” adding that “their (Icon’s) product is a knock-off of our product.”
Eric Watterson, director of international business for Icon, said in a court statement, “As a result of his work with Icon, Calderon had access to Icon’s confidential information and was able to gain strategic knowledge regarding Icon products….It is my opinion that Calderon now is intentionally confusing customers to make them think that the Lime Pro products are associated with or sponsored by Icon.”
He stated that it was discovered that Calderon “as early as 2005” while still employed as Icon’s distributor began selling products in Mexico marketed with a “Nordika” or “NordicTrain” brand. Watterson said Calderon was let go in about June 2005 after there was, per Icon, no response to a cease-and-desist letter sent to him by Icon. Watterson stated that two Icon sales managers, Sanchez and Mike Morrill, began to work with Calderon after they were also let go at Icon and after Calderon’s work with Icon ended.
Calderon said his company has product distributed in 18 countries and began in the United States about eight months ago. According to the eBay store page, Lime Pro has been a member since March 12, 2008, with its first alleged sale in April 2008 based on customer responses. (Click here to see the feedback page)
In the follow-up email, Calderon told SNEWS that “a lot of information I provide you is not accurate.”
“People love this kind of stories with a bunch of lies on it Icon is helping me put the Lime Pro name in all the media and in front of customers for free (sic),” he wrote.
Vento North America also lists an address on its website identical to the Lime Pro address of 6190 Cornerstone Court. Both list the same telephone number.
When asked about the building’s signage, Calderon told SNEWS his office is in that building but “it’s not the whole building.”
“There is a sign, but it’s not as big as that,” he said, referring to the one on the website.
When asked if that didn’t seem misleading to consumers he said, “I’m not selling buildings.
“It’s not a matter of it being there or not there,” he said. “It’s just an image. It’s irrelevant.
“People can think whatever they want. I’m not a big company,” he said. “I’m not telling that with putting a picture on a website.”
U.S. Patent and Trademark Office records show that Calderon did apply for a trademark on the name “Nordika Endurance Life” in February 2006 but the application was considered “abandoned” in January 2007. The trademark for the name Lime Pro belongs to Calderon, per USPTO records.
An opposition to the request for a preliminary injunction by Icon was due Aug. 1 to the court; Lime Pro has requested an extension to Aug. 15.
An answer to Icon’s complaint is due to the court on Aug. 6.