Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA694387
`ESTTA Tracking number:
`09/08/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91223193
`Defendant
`Barn Light Electric Company, LLC
`ALEJANDRO J. FERNANDEZ, ASHLEY G. KESSLE
`FELDMAN GALE, P.A.
`2 S BISCAYNE BLVD
`MIAMI, FL 33131-1806
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`Trademarks@FeldmanGale.com
`Motion to Suspend for Civil Action
`Alejandro J. Fernandez
`Trademarks@FeldmanGale.com
`/Alejandro J. Fernandez/
`09/08/2015
`Motion to Suspend - 91223193 (09.08.15).pdf(273148 bytes )
`Exhibit 1 - Complaint.pdf(3732263 bytes )
`Exhibit 2 - Answer.pdf(5545801 bytes )
`Hi-Lite Mfg. Co. v. Barn Light Electric - TTAB Proceeding No. 91223193 - NO-
`TICE OF OPP.pdf(2066079 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Serial No. 86/476,717
`Opposition No. 91223193
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`__________________________________________
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`HI-LITE MANUFACTURING CO, INC.
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`Petitioner
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`Barn Light Electric Company, LLC
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`Applicant
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`__________________________________________)
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`v.
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`APPLICANT’S MOTION TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF
`CIVIL ACTION AND MEMORANDUM IN SUPPORT
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`Applicant, Barn Light Electric Company, LLC (“Applicant”) by and through the
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`undersigned counsel, hereby moves for suspension of these proceedings pursuant to 37 C.F.R. §
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`2.117(a) and T.B.M.P. § 510.02(a). Applicant and Petitioner are currently parties to a civil
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`action pending before the United States District Court for the Middle District of Florida, Barn
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`Light Electric Co. v. Barnlight Originals, Inc. et. al, Case No, 8:14-cv-01955-MSS-AEP (the
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`“Civil Action”). Applicant respectfully submits that suspension of this proceeding is warranted
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`because the Civil Action will likely bear on at least some of the issues presented in this
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`proceeding.
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`BACKGROUND
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`On August 14, 2014, Applicant filed the Civil Action against Hi-Lite Manufacturing, Inc.
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`(“Petitioner”) for trademark infringement, among other claims. At issue in the Complaint are
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`Page 1 of 4
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`Applicant’s registrations for its BARN LIGHT ELECTRIC COMPANY family of trademarks,
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`including: (1) U.S. Trademark Registration No. 3,748,277 on the principal register for the BARN
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`LIGHT ELECTRIC design mark; (2) U.S. Trademark Registration No. 4,722,667 on the
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`principal register for the BARN LIGHT ELECTRIC word mark; and (3) U.S. Trademark
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`Registration No. 3,723,964 on the supplemental register for the BARN LIGHT ELECTRIC
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`COMPANY word mark. A copy of the original Complaint is attached hereto as Exhibit 1. On
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`October 10, 2014, Petitioner filed an Answer in which it denied Applicant’s claims. A copy of
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`the original Answer is attached hereto as Exhibit 2. Petitioner also asserted a counterclaim
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`against Applicant for trademark infringement, among other claims. Ex. 2 at 28-47.
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`On August 7, 2015, Petitioner filed a Notice of Opposition against Applicant for
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`Application Serial. No. 86/476,717 and alleged that it would be damaged by the registration of
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`the same. Notice of Opposition 91223132, at 1. Petitioner bases those claims on its ownership
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`of U.S. Trademark Registration No. 4,637,932 for a design mark that “features a depiction of a
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`barn light.” Id. at 2.
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`ARGUMENT
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`The Board has the power to suspend proceedings in favor of a pending civil action
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`pursuant to Trademark Rule 2.117(a), which provides:
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`Whenever it shall come to the attention of the Trademark Trial and Appeal Board
`that a party or parties to a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspending until termination of the civil action or the other Board
`proceeding.
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`37 C.F.R. § 2.117(a). Similarly, the Trademark Trial and Appeal Board Manual of Procedure
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`provides that, “[o]rdinarily, the Board will suspend proceedings in the case before it if the final
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`determination of the other proceedings may have a bearing on the issues before the Board.”
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`Page 2 of 4
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`T.B.M.P § 512.02(a) (emphasis added). The Board routinely exercises this power “in the interest
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`of judicial economy and consistent with [its] inherent authority to regulate its own proceedings to
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`avoid duplicating the effort of the court and the possibility of reaching an inconsistent
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`conclusion.” Soc’y of Mex. Am. Eng’rs & Scientists, Inc. v. GVR Pub. Relations Agency, Inc.,
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`Opp. No. 91121723, 2002 WL 31488947, at *4 (T.T.A.B Nov. 6, 2002).
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`Suspension is particularly appropriate where, as here, the two proceedings involve the
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`same parties and share overlapping issues. The determination of the issues by the District Court
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`in the Civil Action will likely be dispositive of the issues involved in this proceeding. Applicant
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`therefore respectfully requests suspension of this proceeding pending determination of the Civil
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`Action pursuant to Trademark Rule 2.117.
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`CONCLUSION
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`For the foregoing reasons, Applicant respectfully submits that this proceeding be
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`suspended pending disposition of the Civil Action.
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`Respectfully Submitted,
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`By: /Alejandro J. Fernandez/
`Alejandro J. Fernandez
`Ashley G. Kessler
`FELDMAN GALE, P.A.
`One Biscayne Tower, 30th Floor
`2 South Biscayne Blvd.
`Miami, Florida 33131-4332
`Tel. (305) 358-5001
`Fax: (305) 358-3309
`Email: Trademarks@FeldmanGale.com
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`Attorneys for Applicant:
`Barn Light Electric Company, LLC
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`Page 3 of 4
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`Dated: September 8, 2015
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of the foregoing MOTION TO SUSPEND
`PROCEEDINGS PENDING DISPOSITION OF CIVIL ACTION AND MEMORANDUM
`IN SUPPORT was served on counsel for Petitioner, this 8th day of September 2015, by sending
`the same via email and FedEx overnight delivery service to:
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`Debra D. Faulk
`Michael J. Colitz
`GrayRobinson PA
`401 East Jackson Street, Suite 2700
`Tampa, Florida 33602
`ptotpa@gray-robinson.com
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`By: /Alejandro J. Fernandez/
` Alejandro J. Fernandez
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`Dated: September 8, 2015
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`Page 4 of 4
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`EXHIBIT 1
`EXHIBIT 1
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 1 of 26 PageID 1
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`RECEIVED
`Docket Dept.
`3:10 pm, Aug 25, 2014
`by amartinez
`Feldman Gale, P.A.
`DOCKETED
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
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`CASE NO.: ______________________
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`BARN LIGHT ELECTRIC COMPANY, LLC,
`a Florida limited liability company,
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`Plaintiff,
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`v.
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`BARNLIGHT ORIGINALS, INC.,
`a Nevada corporation; and
`HI-LITE MANUFACTURING COMPLANY, INC.,
`a California corporation,
`JEFFREY L. OHAI, an individual California resident,
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`
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`Defendants.
`___________________________________/
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`COMPLAINT
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`
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`Plaintiff, Barn Light Electric Co., LLC, (“Barn Light Electric”), sues Defendants
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`Barnlight Originals, Inc. (“BLO”), Hi-Lite Manufacturing Co., Inc. (“Hi-Lite”) and Jeffrey L.
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`Ohai (collectively, the “Defendants”) and alleges:
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`INTRODUCTION
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`1.
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`This is an action for trademark infringement and unfair competition in violation of
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`the laws of the United States and the State of Florida. Barn Light Electric seeks a permanent
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`injunction, damages, including Defendants’ profits, trebled under the law, punitive damages, and
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`other relief more fully described herein.
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`2.
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`In 2008, Bryan Scott founded Barn Light Electric in his backyard barn. The
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`initial focus of the business was identifying and meticulously restoring vintage light fixtures to
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`their former beauty. Mr. Scott spent countless hours refining his techniques until ultimately he
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`was able to design and manufacture original, vintage-inspired goods that have not been available
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`since the early to mid 1900s.
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`

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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 2 of 26 PageID 2
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`3.
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`Mr. Scott and his wife, Donna Scott, promoted Barn Light Electric’s vintage-
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`inspired products through an original website, www.barnlightelectric.com. This site was coupled
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`with a creative and winsome social media campaign, which gave Barn Light Electric a
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`substantial Internet presence. Over time, Barn Light Electric grew into a tremendously
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`successful lighting company dedicated to providing high-quality fixtures and home goods with a
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`strong emphasis on American craftsmanship.
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`4.
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`During its entire existence, Barn Light Electric has designed, manufactured and
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`sold light fixtures and other products under its BARN LIGHT ELECTRIC CO. family of
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`trademarks. Also, Barn Light Electric has long promoted itself as HOME OF “THE ORIGINAL
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`BARN LIGHT,” and has sold a highly popular family of light shades under the mark THE
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`ORIGINAL. By virtue of years of extensively using and promoting its trademarks, Barn Light
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`Electric established enormous goodwill in its marks.
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`5.
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`For years, Barn Light Electric purchased certain light fixture components and
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`light fixtures from Hi-Lite. Barn Light Electric’s annual purchases from Hi-Lite eventually
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`reached well over one million dollars, making Barn Light Electric one of Hi-Lite’s largest
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`purchasers.
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`6.
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`Unfortunately, Barn Light Electric’s constantly growing purchases from Hi-Lite
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`were not enough for Hi-Lite. Hi-Lite’s president and co-owner, Jeffrey L. Ohai, coveted
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`exclusivity and control over Barn Light Electric’s innovative products and lucrative customer
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`base. Notwithstanding the fact that Barn Light Electric was solely responsible for the inception
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`of these products, time and again, Defendant Ohai demanded that Barn Light Electric sell almost
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`exclusively Hi-Lite products. Essentially, Defendant Ohai tried to force Mr. Scott to abandon all
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`sales of Barn Light Electric’s non-porcelain products… or else.
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`7.
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`Mr. Scott rejected Defendant Ohai’s demands and refused to be bullied by his
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`threats.
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`2
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 3 of 26 PageID 3
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`8.
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` Although Barn Light Electric was one of Hi-Lite’s largest purchasers, on
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`September 4, 2012, Defendant Ohai terminated the relationship and Hi-Lite abruptly stopped
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`selling light fixtures and components to Barn Light Electric.
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`9.
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`Next, Defendant Ohai, through Hi-Lite, engaged in several bad faith acts with one
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`obvious purpose: misappropriate Barn Light Electric’s business. These acts included knocking
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`off Barn Light Electric’s products, copying its marketing strategy, illegally arrogating its
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`intellectual property. Within a matter of days, Defendant Ohai registered the domain name
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`www.barnlightoriginals.com (the “BLO domain name”). In a matter of weeks, Defendant Ohai
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`rushed to form BLO and complete a website operating under the BLO domain name, but derived
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`from Barn Light Electric’s website, www.barnlightelectric.com(the “BLO website”).
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`10.
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`Since then, Defendants Hi-Lite, BLO and Defendant Ohai, either alone or
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`collectively, have willfully engaged in various forms of unfair competition, including infringing
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`Barn Light Electric’s trademarks and otherwise capitalizing on its goodwill in the marketplace.
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`11.
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`12.
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`Defendants’ unlawful activities are causing actual consumer confusion.
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`Defendants’ willful infringement and unfair competition has harmed consumers
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`and irreparably damaged the goodwill associated with Barn Light Electric’s common law and
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`federally registered trademarks.
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`13.
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`Barn Light Electric respectfully requests that this Court enter a judgment of
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`infringement and unfair competition against Defendants, enter permanent injunctive relief, and
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`issue an award of damages, including Defendants’ profits, trebled under the law, punitive
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`damages, attorneys’ fees and costs associated with this action, and other just and proper relief.
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`PARTIES, JURISDICTION, AND VENUE
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`14.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338 (a)
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`and (b), and 15 U.S.C. § 1121 involving allegations involving the Lanham Act, and jurisdiction
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`over the Florida law claims under 28 U.S.C. §§ 1367 and 1338(b).
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`3
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 4 of 26 PageID 4
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`15.
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`Venue is proper in this District pursuant to 28 U.S.C. § 1391(c) because
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`Defendants advertise and sell their infringing products within this district.
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`16.
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`Plaintiff Barn Light Electric is a limited liability company organized and existing
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`under the laws of Florida with its principal place of business in the Middle District of Florida.
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`17.
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`Upon information and belief, BLO is a corporation organized and existing under
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`the laws of Nevada, with its principal place of business in Nevada. The exercise of personal
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`jurisdiction over BLO is proper pursuant to, inter alia, Florida’s long-arm statute, section 48.193
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`(1) and (2), Florida Statutes (2000). BLO is subject to this Court’s jurisdiction at least by:
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`maintaining a fully-interactive, commercial web store (www.barnlightoriginals.com) that
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`promotes, sells and offers for sale products under the infringing mark BARNLIGHT
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`ORIGINALS to consumers in this judicial district; engaging in unlawful business transactions
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`with consumers in this judicial district; shipping products under the infringing trademarks to
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`consumers in this judicial district; engaging in other acts of unfair competition described herein
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`that harm local consumers and Barn Light Electric in this judicial district; and receiving revenue
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`from Florida residents.
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`18.
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`Upon information and belief, Hi-Lite is a corporation organized and existing
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`under the laws of California, with its principal place of business in California. The exercise of
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`personal jurisdiction over Hi-Lite is proper pursuant to, inter alia, Florida’s long-arm statute,
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`section 48.193 (1) and (2), Florida Statutes (2000). Hi-Lite is subject to this Court’s jurisdiction
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`at least by: maintaining numerous Florida sales representatives that promote and sell Hi-Lite
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`products throughout Florida, including in this judicial district; engaging in extensive business
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`transactions with Barn Light Electric and others throughout Florida, including in this judicial
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`district; shipping products, including products sold under the infringing trademark BARNLIGHT
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`ORIGINALS, directly to Florida residents; engaging in other acts of unfair competition
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`4
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`

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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 5 of 26 PageID 5
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`
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`described herein that harm consumers and Barn Light Electric in this judicial district; and
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`receiving revenue from Florida residents.
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`19.
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`Upon information and belief, Defendant Jeffrey L. Ohai is a resident of
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`California. The exercise of personal jurisdiction over Jeffrey L. Ohai is proper pursuant to, inter
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`alia, Florida’s long-arm statute, section 48.193 (1) and (2), Florida Statutes (2000). Jeffrey L.
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`Ohai is subject to this Court’s jurisdiction at least by: directing and controlling the activities of
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`trademark infringement and unfair competition committed by BLO; directing and controlling the
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`activities of trademark infringement and unfair competition committed by Hi-Lite; and
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`registering, operating, directing and controlling the domain name and fully interactive
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`commercial website at www.barnlightoriginals.com, which targets Florida residents.
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`BARN LIGHT ELECTRIC COMPANY
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`20.
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`Since its inception, Barn Light Electric has been a pioneer in the manufacture,
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`distribution and sale in interstate commerce of high-quality, vintage-inspired lighting and other
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`home products.
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`21.
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`Like many successful businesses, Barn Light Electric had somewhat meager
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`beginnings. Barn Light Electric has its origins in a barn behind founder Mr. Scott’s home. In
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`that barn, Mr. Scott dedicated years to avidly hand-restoring and rebuilding beautiful, American-
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`crafted light fixtures. Eventually, that experience inspired Mr. Scott to coin the term BARN
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`LIGHT and adopt the trademark: BARN LIGHT ELECTRIC.
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`22. Many of the lights Mr. Scott restored—commonly known in the lighting industry
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`as “RLM Lights”—were used in warehouses, factories and other structures dating from the
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`1930s to the 1950s. He especially enjoyed restoring such light fixtures because of the high-
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`quality craftsmanship that went into their manufacture.
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`5
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 6 of 26 PageID 6
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`23.
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`Together, Mr. and Mrs. Scott would search antique stores, attend estate sales, and
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`even search abandoned buildings looking for vintage light fixtures to restore. After restoring
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`them, Mr. Scott sold many of the light fixtures and kept others for his personal use.
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`24.
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`Eventually, Mr. Scott’s experience and passion for restoring antique light fixtures
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`led him to start designing and hand-crafting new light fixtures. In doing so, he researched and
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`implemented techniques and materials from a bygone era, when light fixtures were made to last
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`for generations.
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`25. Mr. Scott used highest-quality, commercial grade materials in Barn Light
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`Electric’s light fixtures.
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`26.
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`Eventually, the demand for Barn Light Electric’s light fixtures swelled to the
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`point where it constituted a sustainable business that required full time attention.
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`27.
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`Accordingly, in 2008, the Scotts left their professional careers to manage Barn
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`Light Electric full time.
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`28.
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`The aesthetic beauty and craftsmanship associated with Barn Light Electric’s
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`current products is self-evident, as illustrated below in Figure 1 (Barn Light Electric’s Ivanhoe®
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`Sky Chief Warehouse porcelain pendant light); Figure 2 (Ivanhoe® Seaside Radial Wave
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`Reflector porcelain pendant light); and Figure 3 (Dean Clear Schoolhouse stem mount light).
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`FIGURE 1
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`6
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 7 of 26 PageID 7
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`FIGURE 2
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`FIGURE 3
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`29.
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`In addition, Barn Light Electric has also manufactured, distributed and sold
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`various vintage-inspired home goods, as well as restored antiques. For example, Figure 3 above
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`illustrates porcelain enamel nesting bowls made by Barn Light Electric.
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`7
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`

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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 8 of 26 PageID 8
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`BARN LIGHT ELECTRIC’S MARKETING EFFORTS
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`30.
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`Barn Light Electric has experienced stunning growth and success from its earliest
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`days. Such growth and success were especially remarkable considering it was during one of the
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`darkest recessionary periods in United States history and in a competitive, hard-hit industry.
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`31.
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`Barn Light Electric’s success is not simply a matter of the craftsmanship,
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`creativity and hard work, much of its success is a direct result of Barn Light Electric’s brilliant
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`marketing to its consumers.
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`32.
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`Barn Light Electric has invested millions of dollars and countless hours engaging,
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`inspiring, educating and charming its customers.
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`33.
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`Barn Light Electric created and
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`is always
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`improving on
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`its website,
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`www.barnlightelectric.com. A few minutes spent there reveals a great deal about Barn Light
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`Electric and the exceptional quality of its products. It also beckons users to stroll through
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`countless design ideas that incorporate Barn Light Electric’s products.
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`34.
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`Barn Light Electric also invests time in marketing its products through a plethora
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`of social networking websites.
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` These
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`include,
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`for example,
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`Instagram, Pinterest,
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`www.houzz.com and Facebook. At such sites, Barn Light Electric inspires consumers with new
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`ways to incorporate Barn Light Electric’s products into their homes. Barn Light Electric also
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`uses such websites to educate consumers who may have questions about specific projects.
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`35.
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`These efforts have led to a substantial following on Barn Light Electric’s social
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`media sites.
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`36.
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`Barn Light Electric enjoys a following in the thousands and innumerable “likes.”
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`Such followers and “likes” are authentic. Barn Light Electric has never paid for fake followers
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`or surreptitiously inflated its “likes.”
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`37.
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`Over the years, Barn Light Electric’s all-American success story has garnered
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`significant amounts of national media attention in virtually every form of modern media,
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`8
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 9 of 26 PageID 9
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`
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`including television, radio, print and Internet. See Exhibit 1 (a listing of national media sources
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`that have used BARN LIGHT ELECTRIC as a source identifier for Barn Light Electric’s goods
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`and services).
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`38.
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`Barn Light Electric’s unique products, marketing investments, and nationwide
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`media have led to a wellspring of goodwill in the BARNLIGHT ELECTRIC trademarks.
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`THE BARN LIGHT ELECTRIC MARKS
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`39.
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`Since at least 2008, Barn Light Electric has continuously used in commerce the
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`marks BARN LIGHT ELECTRIC, BARN LIGHT ELECTRIC COMPANY, BARN LIGHT
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`ELECTRIC CO., HOME OF “THE ORIGINAL BARN LIGHT.” Barn Light Electric has also
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`long used the mark THE ORIGINAL in connection with certain light fixtures. Together, the
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`marks identified herein are referred to as “the BARN LIGHT ELECTRIC marks” to identify the
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`source and quality of its goods and services.
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`40.
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`By virtue of years of extensively using and promoting the BARN LIGHT
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`ELECTRIC marks, Barn Light Electric has established enormous goodwill in these marks. The
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`BARN LIGHT ELECTRIC marks are well-known and uniquely associated with Barn Light
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`Electric in the minds of consumers throughout the United States.
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`41.
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`Accordingly, the BARN LIGHT ELECTRIC marks are entitled to common law
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`trademark protection.
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`42.
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`In addition to its exclusive common law rights in the BARN LIGHT ELECTRIC
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`marks developed through many years of use and promotion, Barn Light Electric owns U.S.
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`Trademark Reg. No. 3,748,277 on the principal register for the mark depicted in Figure 4 and
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`covering the online marketing and sale of “a variety of goods, namely, lights, lighting fixtures
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`and ceiling fans.” A true and correct copy of the ’277 registration is provided as Exhibit 2.
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`9
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 10 of 26 PageID 10
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`FIGURE 4
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`43.
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`Barn Light Electric also owns U.S. Trademark Reg. No. 3,723,964 on the
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`supplemental register for the mark BARN LIGHT ELECTRIC COMPANY, covering the online
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`marketing and sale of “a variety of goods, namely, lights, lighting fixtures and ceiling fans.” A
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`true and correct copy of the ’964 registration is provided as Exhibit 3.
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`44.
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`In a matter of months, the BARN LIGHT ELECTRIC COMPANY mark will be
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`eligible for transfer to the principal register based on being listed on the supplemental register for
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`five (5) years.
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`45.
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`At that time, Barn Light Electric’s marks will also be eligible to become
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`incontestable.
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`46.
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`The BARN LIGHT ELECTRIC marks, when used in connection with Barn Light
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`Electric’s products and services, are distinctive and, through Barn Light Electric’s extensive
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`sales, advertising and promotional efforts, have acquired secondary meaning.
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`47.
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`As a result of Barn Light Electric’s activities, the BARN LIGHT ELECTRIC
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`marks have become valuable assets of Barn Light Electric, represent enormous goodwill of the
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`company, and identify and distinguish Barn Light Electric’s goods and services from those of
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`others.
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`10
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 11 of 26 PageID 11
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`HI-LITE, OHAI AND BLO
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`48.
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`For years, Barn Light Electric purchased various components for its light fixtures
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`from Hi-Lite. Barn Light Electric purchased from Hi-Lite, as opposed to some other source,
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`specifically because Hi-Lite manufactured its components in the United States.
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`49.
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`Over the course of their relationship, Barn Light Electric also began specifying
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`and purchasing light fixtures from Hi-Lite.
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`50.
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`Eventually, Barn Light Electric was purchasing well over one million dollars in
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`components and light fixtures from Hi-Lite. Upon information and belief, this made Barn Light
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`Electric one of Hi-Lite’s top buyers.
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`51.
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`Hi-Lite, however, wanted more. Defendant Ohai repeatedly demanded that Barn
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`Light Electric: (i) sell only Hi-Lite products on Barn Light Electric’s own website, except for
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`those Barn Light Electric light fixtures that Hi-Lite was not equipped to manufacture, i.e.,
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`porcelain enamel products; (ii) stop purchasing parts from other manufacturers; (iii) stop
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`manufacturing parts at Barn Light Electric (the original manufacturing site); and (iv) stop selling
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`a lower cost line of light fixtures that it sold to customers that could not afford the high-end
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`fixtures (comprised primarily of Barn Light Electric’s products).
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`52.
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`Defendant Ohai coupled his unreasonable demands with intimidation and the
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`threat that Hi-Lite would stop selling products to Barn Light Electric altogether.
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`53. Mr. Scott rejected Defendant Ohai’s demands for exclusivity.
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`OHAI, HI-LITE AND BLO ENGAGE IN TRADEMARK INFRINGEMENT AND
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`UNFAIR COMPETITION
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`54.
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`On information and belief, as a result of Mr. Scott’s refusal to sell exclusively Hi-
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`Lite products, Defendant Ohai devised a scheme to sell Hi-Lite light fixtures by trading off of the
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`goodwill that Barn Light Electric had established in the BARN LIGHT ELECTRIC marks.
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`11
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 12 of 26 PageID 12
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`55.
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`On September 11, 2012, Defendant Ohai, registered
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`the domain name
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`www.barnlightoriginals.com. Exhibit 4.
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`56.
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`Defendant Ohai subsequently concealed his identity as the registrant of the BLO
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`domain name. Exhibit 5.
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`57. Within about two months, Defendant Ohai had formed BLO. Under Defendant
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`Ohai’s direction and control, BLO created and exploits www.barnlightoriginals.com as a fully
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`operative and interactive commercial storefront to sell Hi-Lite light fixtures.
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`58.
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`BLO sells products manufactured by Hi-Lite and ships to consumers nationwide,
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`including consumers residing in this judicial district.
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`59.
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`Defendants, under the direction and control of Defendant Ohai, promote and sell
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`Hi-Lite lighting fixtures using the marks BARNLIGHT ORIGINALS and BARNLIGHT
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`ORIGINALS INC., as well as the website at www.barnlightoriginals.com.
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`60.
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`At the time Defendants began operating their online retail operation, Defendants
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`knew of Barn Light Electric’s exclusive rights to the BARN LIGHT ELECTRIC marks,
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`including, inter alia, Barn Light Electric’s use of the HOME OF “THE ORIGINAL BARN
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`LIGHT” mark.
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`61.
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`Defendants selected the BARNLIGHT ORIGINALS marks with the intent of
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`causing consumer confusion, and thereby enabling Defendants to profit from the goodwill Barn
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`Light Electric had established in the BARN LIGHT ELECTRIC marks.
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`62.
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`To make matters worse, Defendants also adopted specific product trademarks that
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`are confusingly similar to those used by Barn Light Electric.
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`63.
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`Defendants’ infringement of Barn Light Electric’s trademark THE ORIGINAL is
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`particularly transparent.
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`64.
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`Defendants seized on THE AUTHENTIC, which has exactly the same meaning
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`and connation as THE ORIGINAL. They did so in connection with a light fixture that is
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`12
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 13 of 26 PageID 13
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`
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`essentially identical in all material respects to the light fixture sold by Barn Light Electric as
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`THE ORIGINAL.
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`65.
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`This is best shown in comparing THE ORIGINAL and THE AUTHENTIC
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`warehouse lights, which are in nearly all material aspects identical. Compare Figure 5 and
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`Figure 6.
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`
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`FIGURE 5: THE ORIGINAL
` by Barn Light
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`Electric
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`
`
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`FIGURE 6: THE AUTHENTIC
`
` by BLO
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`
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`66.
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`Further confirming Defendants’ intent to cause consumer confusion, Defendants
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`copied Barn Light Electric’s marketing description:
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`Barn Light Electric: “The Original™ barn light is one of our best selling
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`gooseneck lights!” A true and correct copy of Barn Light Electric’s web page for
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`THE ORIGINAL™ warehouse light is attached as Exhibit 6.
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`BarnLight Originals: “One of our most popular barn lighting fixtures at
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`Barnlight Originals™ is The Authentic Warehouse Shade.” A true and correct
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`copy of Barn Light Original’s web page for THE AUTHENTIC warehouse light
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`is attached as Exhibit 7.
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`67.
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`Ironically, Defendants’ use of THE AUTHENTIC highlights the Defendants’
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`utter lack of authenticity.
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`13
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 14 of 26 PageID 14
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`
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`OHAI, HI-LITE AND BLO’S OTHER UNFAIR COMPETITION TACTICS
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`68.
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`Defendants have systematically copied numerous aspects of Barn Light Electric’s
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`website and its design. Just like Barn Light Electric’s website, Defendants home page contains a
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`logo in the upper left corner with the words “BARN LIGHT” prominently displayed against a
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`rustic background. Both logos also include a picture of a vintage-inspired light fixture. Further,
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`just as with Barn Light Electric’s home page, Defendants placed a rotating carousel of multiple
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`photographs of vintage-inspired lighting and light fixtures immediately below the logo. Further
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`still, Defendants have placed a graphical text box with the words “Free Shipping” immediately to
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`the right of the logo.
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`69. Defendants went so far as to copy the copyright notice, as shown below.
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`Compare www.barnlightelectric.com and www.barnlightoriginals.com.
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`Barn Light Electric:
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`© 2004-2014 Barn Light Electric Co.® - A division of Barn
`
`Light USA™
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`Barn Light Originals:
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`© 2014 Barnlight Originals Inc. All rights reserved. A
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`division of Barnlight International™
`
`70.
`
`71.
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`Upon information and belief, there is no actual “Barnlight International.”
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`The copying by Defendants is particularly manifest in connection with the web
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`pages directed to specific products. Compare Figure 7 (Barn Light Electric Product Page for The
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`Original™ gooseneck light) and 8 (BLO Product page for The Authentic gooseneck light).
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`14
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 15 of 26 PageID 15
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`
`
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`FIGURE 7
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`
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`FIGURE 8
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`
`
`
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`72.
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`As shown in Figures 7 and 8, Defendants copied every material aspect of Barn
`
`Light Electric’s product page. From Barn Light Electric’s product name to the photographs and
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`carousel placement to Barn Light Electric’s unique colored informational buttons found on each
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`15
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 16 of 26 PageID 16
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`
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`product, and which identify qualities of the lighting fixture (e.g., wet/dry rating; origin of
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`product; certifications, etc.). See Figure 8.
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`73.
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`Defendants are further systematically stalking and supplanting Barn Light
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`Electric’s posts on various websites, including www.houzz.com.
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`74.
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`Additionally, upon information and belief, Defendants have improperly and
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`falsely inflated their followers and “likes” on one or more social media websites.
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`75.
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`Each of these actions is intended to confuse and mislead consumers about the
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`source, quality and origin of BLO’s products.
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`76.
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`Based on the foregoing, Defendants have traded on and damaged the goodwill
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`associated with the BARN LIGHT ELECTRIC marks.
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`BLO’S SHAM TRADEMARK REGISTRATIONS
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`77.
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`Based on its unlawful use of the mark BARNLIGHT ORIGINALS INC., BLO
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`applied for and received two trademark registrations.
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`78.
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`Again, BLO resorted to mimicking Barn Light Electric’s business activities by
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`filing two applications that mimic the Barn Light Electric registrations.
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`79.
`
`BLO’s U.S. Reg. No. 4,464,241 is for the standard character mark BARNLIGHT
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`ORIGINALS INC., and includes a disclaimer of the word “BARN LIGHT” and “INC.” The
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`’241 mark was registered on the supplemental register on January 7, 2014.
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`80.
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`BLO’s U.S. Reg. No. 4,489,514 is for the BLO logo as shown in Figure 9, below.
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`
`
`FIGURE 9
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`16
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`Case 8:14-cv-01955-MSS-AEP Document 1 Filed 08/14/14 Page 17 of 26 PageID 17
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`
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`81.
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`Both the ’241 registration a