Case: 1:21-cv-02123 Document #: 1 Filed: 04/20/21 Page 1 of 12 PageID #:1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`THE UNITED STATES OF AMERICA,
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`Plaintiff,
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`v.
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`No. 21-2123
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`Judge
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`GLOBAL OCCUPATIONAL SAFETY AND
`HEALTH ACADEMY, LLC,
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`Defendant.
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`COMPLAINT
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`Now comes plaintiff, the United States of America (United States), and for its complaint
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`
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`against defendant, Global Occupational Safety and Health Academy, LLC (Global OSHA)
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`alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`The United States seeks injunctive relief based on defendant’s violations of the
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`Lanham Act and, in particular, its unauthorized use of the registered trademarks, names, logo,
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`trade dress, and other materials of United States Department of Labor’s Occupational Safety and
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`Health Administration (OSHA). The United States further seeks a determination that, if Global
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`OSHA’s pending trademark application obtains registration, Global OSHA has no right to such
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`registration and that it be cancelled. The United States further seeks Global OSHA’s profits, any
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`damages incurred by OSHA, and the costs of the action, including its reasonable attorney fees.
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`JURISDICTION AND VENUE
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`2.
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`This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121 and 28
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`U.S.C. §§ 1331, 1338.
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`3.
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`Venue is proper pursuant to 28 U.S.C. § 1391.
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`THE PARTIES
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`4.
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`Plaintiff, the United States of America, is acting on behalf of the Department of
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`Labor, OSHA.
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`5.
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`Upon information and belief, defendant, Global OSHA, is a corporation organized
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`under the laws of Illinois with a principal place of business located at 1900 E. Golf Road, Suite
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`950, Schaumburg, Illinois 60173.
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`OSHA AND ITS TRADEMARKS
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`6.
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`The names “Occupational Safety and Health Administration” and “OSHA” have
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`been uniquely associated with the United States Department of Labor since the 1970s,
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`established under the Occupational Safety and Health Act. See generally 29 U.S.C §§ 651-78.
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`7.
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`Over the last 50 years OSHA has dramatically improved workplace safety and
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`health. Fatality and injury rates have dropped significantly. Although accurate statistics were
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`not kept at the time, it is estimated that in 1970 around 14,000 workers were killed on the job.
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`That number fell to approximately 5,333 in 2019. Over the same period, U.S. employment has
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`almost doubled and now includes over 150 million workers. Since the passage of the
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`Occupational Safety and Health Act, the rate of reported serious workplace injuries and illnesses
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`has declined from 11 per 100 workers in 1972 to 3.5 per 100 workers in 2019. OSHA safety and
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`health standards, including those for trenching, machine guarding, asbestos, benzene, lead, and
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`bloodborne pathogens have prevented countless work-related injuries, illnesses, and deaths.
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`8.
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`OSHA is a recognized national authority on occupational safety and health issues.
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`OSHA’s success is a result of its enforcement efforts along with its outreach, compliance
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`assistance, and voluntary training programs. In 1971, OSHA initiated the Outreach Training
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`2
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`Program, a voluntary program that trains workers in the identification and control of workplace
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`hazards through 10- and 30-hour training courses. This program trains over one million workers
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`annually. The training addresses hazards workers may encounter at their jobsite and emphasizes
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`hazard identification, avoidance, control, and prevention. OSHA’s Outreach Training Program
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`has become the recognized “standard” of worker hazard awareness training. Numerous
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`employers and labor organizations provide this training to their workers and members to enhance
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`their knowledge of workplace hazards and control. Additionally, at least ten states and
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`municipalities have established laws or regulations requiring workers to complete the OSHA
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`Outreach Training 10-hour course before entering and working on a job site.
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`9.
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`Also in 1971, OSHA established the OSHA Training Institute (OTI). During the
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`1980s, the number of requests for training from private sector and other federal agency personnel
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`increased substantially and the demand eventually exceeded the OTI’s capacity. In 1992, to
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`address the increased demand for high quality training, OSHA created the OTI Education Center
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`Program to expand OTI course delivery to employers and workers covering an array of
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`occupational safety and health topics and issues. The OTI Education Center Program started
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`with four institutions. Over the past 25 years, OSHA’s OTI Education Center Program has
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`grown to 26 centers consisting of 37 member organizations nationwide, with at least one
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`operating in every OSHA regional jurisdiction. In Fiscal Year (FY) 2019, a record number of
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`over 60,000 students were trained through OSHA’s OTI Education Center Program.
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`10.
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`In 1978, OSHA established its discretionary training grant program that evolved
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`into the nationwide Susan Harwood Training Grant Program in 1997. OSHA annually awards
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`over $10 million in occupational safety and health training grants to non-profit organizations to
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`train hard-to-reach and at-risk workers in high-hazard jobs and industries. Training materials
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`3
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`developed and funded by these grants are posted to OSHA’s public website for use by
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`employers, worker advocacy groups, labor organizations, and workers.
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`11.
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`OSHA is also internationally recognized as a leading authority in occupational
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`safety and health. At the request of other government and international organizations, OSHA has
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`provided information and training to foster and advance occupational safety and health
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`worldwide. In conjunction with the Department of Labor’s Bureau of International Labor
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`Affairs, OSHA has provided delegates from international governmental agencies and
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`organizations information on OSHA’s enforcement and compliance assistance efforts. This
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`information supported the establishment of occupational safety and health enforcement and
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`training programs for government inspectors and citizens. Such international cooperation
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`included meetings with South Korea, Jamaica, and Indonesia delegations. OSHA also provided
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`occupational safety and health training to international government representatives, including a
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`multi-week training program for Iraq’s and India’s occupational safety and health inspectors. In
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`2018, the Institution of Occupational Safety and Health (IOSH), based in the United Kingdom,
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`invited OSHA to speak at their Caribbean Safety and Health Conference in Trinidad. OSHA
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`attended the conference and provided a presentation on OSHA’s Outreach Training Program and
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`how other governments can develop and implement a similar national occupational safety and
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`health hazard awareness training program for their citizens.
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`12.
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`OSHA’s global cooperation extends into its enforcement and standards setting
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`initiatives. OSHA promulgated a revision to its Hazard Communication Standards to align it
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`with the United Nations’ Global Harmonized System of Classification and Labeling of
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`Chemicals. This aligns the United States’ chemical labeling hazard information systems with
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`other international jurisdictions to provide a common and coherent approach to classifying
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`4
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`chemicals and communicating hazard information on labels and safety data sheets. This revision
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`also helps reduce trade barriers and results in productivity improvements for American
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`businesses that regularly handle, store, and use hazardous chemicals while providing cost savings
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`for American businesses that periodically update safety data sheets and labels for chemicals
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`covered under the hazard communication standard.
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`13.
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`OSHA is recognized as a national and international authority on occupational
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`safety and health. OSHA’s public website was visited over 48 million times in FY 2020 with
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`over 123 million pages viewed. Additionally in FY 2020, OSHA videos on YouTube received
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`over 1.1 million views. In March 2021, OSHA’s Twitter account had a following of over
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`25,000.
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`14.
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`As a result of the extensive use by OSHA of the names “Occupational Safety and
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`Health Administration,” “OSHA,” and its distinctive logo, as well as media attention and
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`publicity, the names and logo have acquired incalculable fame, goodwill and value, and are
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`recognized throughout the United States as being uniquely and unmistakably associated with the
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`Department of Labor and OSHA.
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`15.
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`OSHA is the owner of federal trademark registrations covering services provided
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`to the public in the field of health and safety, namely, OSHA (Reg. No. 3305165) and OSHA
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`Training Institute Education Centers (Reg. No. 5356959) (OSHA Trademarks). True and correct
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`copies of Registration Nos. 3305165 and 5356959 have been attached to this Complaint as
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`Exhibits A & B.
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`16.
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`The OSHA Trademarks incorporate a distinct stylized version of the term
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`“OSHA.”
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`5
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`17.
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`The services associated with the OSHA Trademarks are “providing health
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`information to employers,” “providing safety information to employers; investigation services
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`related to the enforcement of health and safety standards in the workplace” and “training
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`services, namely, providing occupational safety and health training to public and private sector
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`workers, supervisors, and employers.” See Ex. A, Ex. B.
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`18.
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`OSHA’s continuous use of OSHA (Reg. No. 3305165), since 2002, and OSHA
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`Training Institute Education Centers (Reg. No. 5356959), since 2013, have afforded the marks
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`“incontestable” status, a designation established in the Lanham Act and bestowed by the United
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`States Patent and Trademark Office (USPTO). See 15 U.S.C. § 1065.
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`19.
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`As a result, OSHA’s registrations constitute conclusive evidence of: the validity
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`of the registered marks, the validity of the registrations, OSHA’s ownership of the marks, and
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`OSHA’s exclusive right to use the registered marks in commerce. See 15 U.S.C. § 1115(b).
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`DEFENDANT’S WRONGFUL CONDUCT
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`20.
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`Global OSHA identifies itself with its name, acronym, and abbreviation that is
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`confusingly similar to the official OSHA designation.
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`21.
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`Global OSHA’s logo is a stylized version of the term “OSHA” and shares similar
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`design elements with OSHA’s trademark. A true and correct copy of Global OSHA’s trademark
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`application has been attached to this Complaint as Exhibit C.
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`22.
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`The use of OSHA in Global OSHA’s name falsely implies sponsorship by, and
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`association with the Department of Labor, OSHA.
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`23.
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`Global OSHA’s trademark application identifies its services as “consulting in the
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`field of workplace safety.” See id. Global OSHA’s services are similar to services provided by
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`OSHA.
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`6
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`24.
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`Global OSHA’s use of a similar logo and representation of similar services to that
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`of OSHA causes a likelihood of confusion as to the source of the services. As evidenced by
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`Exhibit D, actual confusion has occurred.
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`25.
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`On December 10, 2018, the USPTO initially refused Global OSHA’s application
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`for federal trademark registration of the Global OSHA logo. The USPTO initially refused to
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`register Global OSHA’s logo because it concluded that the logo falsely suggested a connection
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`with the United States Government. See 15 U.S.C. § 1052(a). A true and correct copy of the
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`USPTO’s non-final determination has been attached to this Complaint as Exhibit E.
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`26.
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`On December 20, 2018, OSHA sent a Cease and Desist Letter to Global OSHA.
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`A true and correct copy of OSHA’s Cease and Desist Letter has been attached to this Complaint
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`as Exhibit F.
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`27.
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`On May 30, 2019, OSHA sent a Second Cease and Desist Letter to Global OSHA.
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`A true and correct copy of OSHA’s Second Cease and Desist Letter has been attached to this
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`Complaint as Exhibit G.
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`28.
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`On June 19, 2019, the USPTO issued its final refusal of Global OSHA’s
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`application for federal trademark registration of the Global OSHA logo. The USPTO refused to
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`register Global OSHA’s logo because it concluded that the logo falsely suggested a connection
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`with the United States Government. See 15 U.S.C. § 1052(a). A true and correct copy of the
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`USPTO’s final determination has been attached to this Complaint as Exhibit H.
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`29.
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`On December 19, 2019, Global OSHA appealed the USPTO’s decision to the
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`Trademark Trial and Appeal Board (TTAB).
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`7
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`30.
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`On December 8, 2020, the TTAB issued its ruling and reversed the examiner’s
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`determination. A true and correct copy of the TTAB’s decision has been attached to this
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`Complaint as Exhibit I.
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`31.
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`32.
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`33.
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`The TTAB found that Global OSHA is not connected with OSHA. See Ex. I at 5.
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`Global OSHA is not connected with OSHA.
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`The TTAB found that when OSHA is used as part of the Global OSHA mark, in
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`connection with Global OSHA’s services, “prospective purchasers would presume a connection”
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`between Global OSHA and OSHA. Id. at 6.
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`34.
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`A connection between Global OSHA and OSHA would be presumed by
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`consumers.
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`35.
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`The TTAB found that the Global OSHA logo “is a close approximation of”
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`OSHA. Id. at 7.
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`36.
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`37.
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`The Global OSHA logo is the same as, or a close approximation of OSHA.
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`The TTAB held that on the limited record before it, given “large number of third-
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`party registrations [descriptively] using the term ‘OSHA’” the Global OSHA logo did not
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`uniquely and unmistakably point to OSHA. Id. at 15.
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`38.
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`However, the Global OSHA logo does uniquely and unmistakably point to
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`OSHA.
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`39.
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`On March 30, 2021, Global OSHA’s trademark was published for opposition in
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`the Trademark Official Gazette.
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`FIRST CLAIM FOR RELIEF
`Trademark Infringement of Registered Marks
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`Plaintiff re-alleges and incorporates the allegations stated in Paragraphs 1-39
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`40.
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`above.
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`8
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`41.
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`Plaintiff is the owner of registered trademarks, Reg. No. 3305165 and Reg. No.
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`5356959.
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`42.
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`Global OSHA’s intentional unauthorized use of a confusingly similar designation
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`and trade dress is likely to cause confusion, or to cause mistake, or to deceive the public to the
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`public’s damage and to the damage of OSHA. Global OSHA’s use of OSHA’s registered marks
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`and trade dress in interstate commerce in connection with the promotion of Global OSHA’s
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`services, without the consent of OSHA, constitutes trademark infringement of OSHA’s
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`registered marks in accordance with 15 U.S.C. § 1114(1)(a).
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`SECOND CLAIM FOR RELIEF
`Common Law Trademark Infringement
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`43.
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`Plaintiff re-alleges and incorporates the allegations stated in Paragraphs 1-42
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`above.
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`44.
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`Global OSHA’s intentional unauthorized use of a confusingly similar designation
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`and trade dress is likely to cause confusion, or to cause mistake, or to deceive the public to the
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`public’s damage and to the damage of OSHA. Global OSHA’s use of OSHA’s mark and trade
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`dress in interstate commerce in connection with the promotion of Global OSHA’s services,
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`without the consent of OSHA, constitutes infringement of OSHA’s preexisting rights acquired in
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`good faith at common law in accordance with 15 U.S.C. § 1125(a)(1)(A).
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`45.
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`Global OSHA’s use of OSHA’s marks and trade dress is willful and in deliberate
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`and conscious disregard of OSHA’s rights in and to OSHA’s marks and trade dress. Global
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`OSHA’s acts of common law trademark infringement have caused irreparable injury to OSHA
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`and will result in further irreparable injury to OSHA unless Global OSHA is restrained by this
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`Court from further violations of OSHA’s rights. The United States therefore asks this Court to
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`enjoin Global OSHA from its acts of common law trademark infringement.
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`9
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`THIRD CLAIM FOR RELIEF
`Dilution in Violation of Federal Anti-Dilution Statue
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`Plaintiff re-alleges and incorporates the allegations stated in Paragraphs 1-45
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`46.
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`above.
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`47.
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`The OSHA mark is strong and distinctive, and has long been used in connection
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`with the services provided by the Department of Labor, OSHA.
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`48.
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`The OSHA mark is recognized by the public as a designation of source for the
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`services of OSHA and is therefore a famous mark.
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`49.
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`The incorporation of Global OSHA commenced after the OSHA mark achieved
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`“incontestable” status.
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`50.
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`Global OSHA has made use of “Global OSHA” as a mark in connection with its
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`services in interstate commerce. Global OSHA’s use of “Global OSHA” as a mark creates a
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`likelihood of association with the Department of Labor, OSHA due to its similarity. Global
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`OSHA’s acts are in violation of the Lanham Act, 15 U.S.C. § 1125(c) in that they are likely to
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`cause dilution by tarnishment, thereby harming the reputation of OSHA’s famous mark
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`“OSHA,” and causing irreparable injury and damage to OSHA.
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`51.
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`Global OSHA intended to create an association with OSHA’s famous mark and to
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`trade on the recognition of OSHA’s famous mark.
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`PRAYER FOR RELIEF
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`WHEREFORE, the United States prays that this Court enter judgment in its favor and
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`grant the following relief:
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`A.
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`An injunction enjoining Global OSHA and its officers, directors, employees,
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`subsidiaries, affiliates, agencies, and/or instrumentalities from using any mark, trade name or
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`source identifier, which is confusingly similar to “OSHA” and variations thereof;
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`B.
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`An injunction enjoining Global OSHA and its officers, directors, employees,
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`subsidiaries, affiliates, agencies, and/or instrumentalities from using any mark, trade name or
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`source identifier, which is confusingly similar to “OSHA Training Institute Education Centers”
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`and variations thereof;
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`C.
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`An injunction enjoining Global OSHA and its officers, directors, employees,
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`subsidiaries, affiliates, agencies, and/or instrumentalities from pursuing federal registration of
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`any mark, trade name or source identifier, which is confusingly similar to “OSHA” and
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`variations thereof;
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`D.
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`That all products, brochures, advertisements, and promotional materials in
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`possession of Global OSHA bearing the OSHA name, or any word, term, name, symbol, device,
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`combination thereof, designation, description, or representation that is found in violation of the
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`Lanham Act, shall be delivered up by the defendant and destroyed;
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`E.
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`That pursuant to 15 U.S.C. § 1116, defendant file and serve a report under oath
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`within thirty (30) days of the issuance of injunctive relief indicating the manner in which it has
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`complied with any injunctive relief ordered by the Court;
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`F.
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`That, if Global OSHA’s pending trademark application obtains registration, the
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`Court issue an order pursuant to 15 U.S.C. § 1119 canceling such registration;
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`G.
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`H.
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`I.
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`That the United States be awarded Global OSHA’s profits.
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`That the United States be awarded any damages resulting from the infringement.
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`That the United States be awarded its costs, including reasonable attorney fees in
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`prosecuting this action; and
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`J.
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`Any such other and further relief that the Court deems proper and just.
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`Of Counsel:
`SCOTT D. BOLDEN
`Deputy Director
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`Dated: April 20, 2021
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`Respectfully submitted:
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`JOHN R. LAUSCH, JR.
`United States Attorney for the
`Northern District of Illinois
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`BRIAN BOYNTON
`Acting Assistant Attorney General
`
`GARY L. HAUSKEN
`Director
`
`
`s/ Jenna Munnelly
`JENNA MUNNELLY
`Trial Attorney
`Commercial Litigation Branch
`Civil Division
`Department of Justice
`Washington, DC 20530
`Email: jenna.e.munnelly@usdoj.gov
`Telephone:
`(202) 616-1061
`Facsimile:
`(202) 307-0345
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