Richmond v. National Inst. of Certified Estate Planners, No. 06 C 1032, 2006 WL 2375454 (N. D. Ill. Aug. 15, 2006) (Manning, J.).
This is a trademark action regarding defendants’ use of the term "certified estate planner" ("CEP"). In addition to trademark claims, plaintiff also brought claims for civil conspiracy, conversion and trespass to chattel. Plaintiff alleged that defendants’ use of the CEP mark constituted conversion and trespass to chattel. Plaintiff also alleged that the individual defendants engaged in civil conspiracy by taking the CEP mark for the benefit of NICEP and for their own individual uses.
Judge Manning dismissed the conversion and trespass claims, noting that Illinois conversion and trespass claims typically require that the chattel exist independently (e.g., a television signal or a car), as opposed to a trademark which is solely a creation of federal statute. The Court further noted that the conversion and trespass claims were "just a different and unnecessary restatement of [plaintiff’s] federal trademark infringement claims," citing McCarthy on Trademarks. Call a trademark infringement claim whatever you want, but the Court is still going to resolve it as a trademark infringement claim.
The Court dismissed the civil conspiracy claim for lack of personal jurisdiction based upon the fiduciary shield doctrine (courts have no personal jurisdiction over a non-resident corporate official where the official’s only contacts with Illinois come in the official’s corporate capacity).