By Miles Moore, Senior Washington Reporter
SPOKANE, Wash. (Feb. 2, 2016) — A judge in the U.S. District Court for the Western District of Washington has granted the request of two off-the-road tire makers for mediation in a long-standing product counterfeiting case.
Judge Lonny R. Suko issued an order Feb. 1 designating James R. Cole as mediator in the ongoing case brought by OTR Wheel Engineering Inc. in April 2014 against West Worldwide Services Inc.
In its suit, OTR Wheel accused West of counterfeiting and wrongfully infringing OTR's federally registered tread design and trademark for its Outrigger OTR tires.
OTR Wheel designed the Outrigger specifically for use on aerial work platforms (AWPs) such as those manufactured by Genie Industries, a subsidiary of Texas Corp., OTR Wheel said in its complaint.
OTR Wheel's Outrigger HF3 off-road tire
The registered Outrigger design (referred to as the “Trade Dress” in the complaint) consists of alternating interlaced lug bars formed from the sidewalls to the center bar of the tire at an angle to the sidewalls, OTR said.
“This distinctive Trade Dress is a source identifier, signifying OTR as a source of the tires to OTR's customers, including Genie,” the company said.
In October 2012, according to OTR Wheel, a manager at OTR's facility in Moses Lake, Wash., saw and obtained photographs of West tires on a third-party freight truck that bore the Outrigger design and Trade Dress. The manager discovered the West tires were samples ordered for testing by Genie, one of OTR's biggest customers, OTR Wheel said.
OTR Wheel Engineering advertises its Outrigger HBR Tire 18-625 on the company's website, describing it as “the second tire ever designed by OTR Wheel Engineering's engineering team. The HBR (High Bead Ratio) version of the tire is a patented OTR innovation to change the aspect ratio of the tire, which has many benefits. The HBR versions of the Outrigger tire design have a shortened sidewall while maintaining a standard tire OD (Outside Diameter).”
Among other things, OTR sought a jury trial, a permanent injunction against West from manufacturing tires using the Outrigger design, damages, lost profits, post-judgment interest and attorneys' fees.
More than 380 orders, motions and other documents have since been filed in the case, according to its listing on PACER, the search engine for documents from federal courts.
The case number is 2:14-cv-00085.
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