throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA711068
`ESTTA Tracking number:
`11/25/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91223641
`Defendant
`Prometheus Brands, LLC
`ROBERT T MALDONADO
`COOPER & DUNHAM LLP
`30 ROCKEFELLER PLZ, 20TH FLOOR
`NEW YORK, NY 10112-0077
`UNITED STATES
`pmurray@cooperdunham.com, tm@cooperdunham.com, ear-
`aj@cooperdunham.com, rmaldonado@cooperdunham.com
`Reply in Support of Motion
`Elana B. Araj
`earaj@cooperdunham.com, rmaldonado@cooperdunham.com, ebern-
`stein@cooperdunham.com
`/Elana B. Araj/
`11/25/2015
`Reply ISO Motion to Suspend_FINAL.pdf(2212633 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91223641
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`Application Serial No.
`86/568356
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`____________________________________
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`Tinnus Enterprises, LLC
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`Opposer,
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`Prometheus Brands, LLC.
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`Applicant.
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`APPLICANT PROMETHEUS BRANDS, LLC’S REPLY IN SUPPORT OF ITS
`MOTION TO SUSPEND PENDING DISPOSITION OF
`A FEDERAL DISTRICT COURT PROCEEDING
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`Applicant Prometheus Brands, LLC (“Applicant”) submits this reply in support of its
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`motion to suspend the above-identified opposition proceeding pending final disposition of a
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`federal district court proceeding. (Dkt. No. 4.)
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`37 C.F.R. § 2.117(a) sets forth, “whenever it shall come to the attention of the Trademark
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`Trial and Appeal Board that a party or parties to a pending case are engaged in a civil action . . .
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`which may have a bearing on the case, proceedings before the Board may be suspended until
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`termination of the civil action.” As set forth in Applicant’s opening brief, there is a pending civil
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`action in the District Court for the District of New Jersey involving the BALLOON BONANZA
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`mark, which may have bearing on this case: Zuru Ltd v. Telebrands Corp., Civil Action No.
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`2:15-cv-00548-CCC-MF (D.N.J.) (“the New Jersey Action”). In its opposition, Opposer
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`contends that Applicant’s motion to suspend should be denied simply because neither Opposer
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`nor Applicant are parties to the New Jersey Action. (Dkt. No. 7.) However, Opposer ignores the
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`important facts that the plaintiff in the New Jersey Action purports to be Opposer’s exclusive
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`1
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`licensee; the defendant in the New Jersey Action is Applicant’s exclusive licensee; and the same
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`mark is at issue in this proceeding as in the New Jersey Action. A final determination in the
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`New Jersey Action will have a direct bearing on the issue of likelihood of confusion in this
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`proceeding. Both the New Jersey Action and this proceeding involve the same real parties of
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`interest. For that reason alone, Applicant’s motion to suspend should be granted.
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`In addition, Opposer’s contention about different parties is no longer true. At the time
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`Applicant filed its opening brief, the New Jersey Action included a claim of trademark
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`infringement based on Applicant’s exclusive licensee, Telebrands Corp.’s use of the BALLOON
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`BONANZA mark. Additionally, at that time, Telebrands’ motion for leave to amend its
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`counterclaims, which sought to add Opposer as a party, was pending before the Court. (Dkt. No.
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`4, n. 1.) Since then, the Court granted Telebrands’ motion to amend, and Telebrands filed its
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`amended counterclaims adding Opposer as a party. (Exhibit 1). Accordingly, Opposer is now a
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`party to the New Jersey Action.
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`For all of the foregoing reasons, Applicant respectfully requests that the Board suspend
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`this proceeding pursuant to 37 C.F.R. § 2.117(a).
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`Dated: November 25, 2015
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`Respectfully submitted,
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`Prometheus Brands, LLC
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`______
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`/Robert T. Maldonado/
`Peter D. Murray
`Robert T. Maldonado
`Elana B. Araj
`COOPER & DUNHAM LLP
`30 Rockefeller Plaza
`New York, NY 10112
`Tel.: (212) 278-0400
`Fax: (212) 391-0525
`rmaldonado@cooperdunham.com
`Attorneys for Applicant
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`2
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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that a true and correct copy of APPLICANT PROMETHEUS
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`BRANDS, LLC’S REPLY IN SUPPORT OF ITS MOTION TO SUSPEND PENDING
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`DISPOSITION OF A FEDERAL DISTRICT COURT PROCEEDING was served by first
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`class mail, postage prepaid, on November 25, 2015, on the following counsel of record:
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`David Ludwig
`Dunlap Bennett & Ludwig PLLC
`211 Church Street SE
`Leesburg, VA 20175
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`Counsel for Opposer
`Tinnus Enterprises, LLC
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`/s/Elana B. Araj________________
`Elana B. Araj
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`3
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`EXHIBIT 1
`EXHIBIT 1
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`

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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 1 of 52 PageID: 2625
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`ZURU LTD.,
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`Plaintiff,
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`v.
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`TELEBRANDS CORP.,
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`Defendant.
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`----------------------------------------------------------
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`TELEBRANDS CORP.,
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`Civil Action No. 15-CV-00548-CCC-MF
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`Hon. Claire C. Cecchi, U.S.D.J.
`Hon. Mark Falk, U.S.M.J.
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`
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`Electronically Filed
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`Counter-Plaintiff,
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`v.
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`ZURU LTD., ZURU INC., ZURU TOYS
`INC. aka and/or dba ZURU TOYS LTD.
`TINNUS ENTERPRISES, LLC and
`TINNUS TECHNOLOGY, LLC,
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`Counter-Defendants.
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`DEFENDANT TELEBRANDS CORP.’S ANSWER TO COUNTS II, III, AND V
`AND SECOND AMENDED COUNTERCLAIMS
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`Defendant Telebrands Corp. (“Telebrands”), by and through its attorneys, hereby answers
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`Counts II, III and V of the Complaint of Plaintiff ZURU Ltd. (“Zuru”). Counts I and IV are the
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`subject of a pending motion to dismiss (Dkt. No. 47). Telebrands responds to the allegations as
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`1
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`follows:
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`3413830-1
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`

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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 2 of 52 PageID: 2626
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`AS TO THE ALLEGATIONS CONCERNING THE PARTIES
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`1.
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`Telebrands is without sufficient knowledge or information to form a belief as to the
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`truth of the allegations contained in Paragraph 1 of the Complaint, and therefore denies those
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`allegations.
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`2.
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`Telebrands admits that it is a New Jersey Corporation having a principal place of
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`business at 79 Two Bridges Road, Fairfield, New Jersey. Telebrands also admits that it markets a
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`product under the name Balloon Bonanza, but denies the remaining allegations contained in
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`Paragraph 2 of the Complaint.
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`AS TO THE ALLEGATIONS CONCERNING JURISDICTION AND VENUE
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`3.
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`4.
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`Telebrands admits the allegations contained in Paragraph 3 of the Complaint.
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`Telebrands admits the allegations contained in Paragraph 4 of the Complaint.
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`AS TO THE ALLEGATIONS CONCERNING FACTS COMMON TO ALL COUNTS
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`5.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 5 of the Complaint, and therefore denies those allegations.
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`6.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 6 of the Complaint, and therefore denies those allegations.
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`7.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 7 of the Complaint, and therefore denies those allegations.
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`8.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 8 of the Complaint, and therefore denies those allegations.
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`9.
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`Telebrands denies the allegations contained in Paragraph 9 of the Complaint.
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`3413830-1
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`2
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`

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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 3 of 52 PageID: 2627
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`10.
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`The allegations contained in Paragraph 10 of the Complaint are subject to a Motion
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`to Strike filed concurrently herewith. Telebrands reserves the right to amend its Answer should
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`the Motion to Strike be denied.
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`11.
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`The allegations contained in Paragraph 11 of the Complaint are subject to a Motion
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`to Strike filed concurrently herewith. Telebrands reserves the right to amend its Answer should
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`the Motion to Strike be denied.
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`12.
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`The allegations contained in Paragraph 12 of the Complaint are subject to a Motion
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`to Strike filed concurrently herewith. Telebrands reserves the right to amend its Answer should
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`the Motion to Strike be denied.
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`13.
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`The allegations contained in Paragraph 13 of the Complaint are subject to a Motion
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`to Strike filed concurrently herewith. Telebrands reserves the right to amend its Answer should
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`the Motion to Strike be denied.
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`14.
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`Telebrands denies the allegations contained in Paragraph 14 of the Complaint.
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`AS TO THE ALLEGATIONS CONCERNING TELEBRANDS’ ACTS OF
`INFRINGEMENT AND UNFAIR COMPETITION
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` Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`15.
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`allegations contained in Paragraph 15 of the Complaint, and therefore denies those allegations.
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`16.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 16 of the Complaint, and therefore denies those allegations.
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`17.
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`18.
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`19.
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`Telebrands denies the allegations contained in Paragraph 17 of the Complaint.
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`Telebrands denies the allegations contained in Paragraph 18 of the Complaint.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 19 of the Complaint, and therefore denies those allegations.
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`3413830-1
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`3
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 4 of 52 PageID: 2628
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`20.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 20 of the Complaint, and therefore denies those allegations.
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`21.
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`22.
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`Telebrands denies the allegations contained in Paragraph 21 of the Complaint.
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`Telebrands admits that BUNCH O BALLOONS and BALLOON BONANZA are
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`both compound words and admits that both marks feature the term BALLOON. Telebrands denies
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`the remaining the allegations contained in Paragraph 22 of the Complaint.
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`23.
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`24.
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`25.
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`Telebrands denies the allegations contained in Paragraph 23 of the Complaint.
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`Telebrands denies the allegations contained in Paragraph 24 of the Complaint.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 25 of the Complaint, and therefore denies those allegations.
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`26.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`allegations contained in Paragraph 26 of the Complaint, and therefore denies those allegations.
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`27.
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`28.
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`29.
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`30.
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`Telebrands denies the allegations contained in Paragraph 27 of the Complaint.
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`Telebrands denies the allegations contained in Paragraph 28 of the Complaint.
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`AS TO THE ALLEGATIONS CONCERNING COUNT II
`TRADEMARK INFRINGEMENT (15 U.S.C. § 1125(a))
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`No response is requires to Paragraph 34 of the Complaint.
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`Telebrands admits that it has used and is using the BALLOON BONANZA mark,
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`but denies the remaining allegations contained in Paragraph 35 of the Complaint.
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`31.
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`32.
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`33.
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`Telebrands denies the allegations contained in Paragraph 36 of the Complaint.
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`Telebrands denies the allegations contained in Paragraph 37 of the Complaint.
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`Telebrands denies the allegations contained in Paragraph 38 of the Complaint.
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`AS TO THE ALLEGATIONS CONCERNING COUNT III
`COMMON LAW TRADEMARK INFRINGEMENT
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`3413830-1
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`4
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 5 of 52 PageID: 2629
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`34.
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`35.
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`No response is required to Paragraph 39 of the Complaint.
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`Telebrands admits that it has used and is using the BALLOON BONANZA mark,
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`but denies the remaining allegations contained in Paragraph 40 of the Complaint.
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`36.
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`Telebrands denies the allegations contained in Paragraph 41 of the Complaint.
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`AS TO THE ALLEGATIONS CONCERNING COUNT V
`COPYRIGHT INFRINGEMENT (17 U.S.C. § 501)
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`No response is required to Paragraph 45 of the Complaint.
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`Telebrands is without sufficient knowledge to form a belief as to the truth of the
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`37.
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`38.
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`allegations contained in Paragraph 46 of the Complaint, and therefore denies those allegations.
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`39.
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`40.
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`41.
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`42.
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`43.
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`44.
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`45.
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`Telebrands denies the allegations contained in Paragraph 47 of the Complaint.
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`Telebrands denies the allegations contained in Paragraph 48 of the Complaint.
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`Telebrands denies the allegations contained in Paragraph 49 of the Complaint.
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`Telebrands denies the allegations contained in Paragraph 50 of the Complaint.
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`AFFIRMATIVE DEFENSES
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`FIRST AFFIRMATIVE DEFENSE
`(Failure to State a Claim for Relief)
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`Zuru has failed to state a claim upon which relief may be granted.
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`SECOND AFFIRMATIVE DEFENSE
`(Invalidity or Unenforceability of Copyright)
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`Zuru’s copyright is invalid and/or unenforceable.
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`THIRD AFFIRMATIVE DEFENSE
`(Invalidity or Unenforceability of Trademark)
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`Zuru’s BUNCH O BALLOONS mark is invalid and/or unenforceable.
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`FOURTH AFFIRMATIVE DEFENSE
`(Fair Use)
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`3413830-1
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`5
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 6 of 52 PageID: 2630
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`46.
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`Zuru’s claims are barred by the doctrine of fair use.
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`FIFTH AFFIRMATIVE DEFENSE
`(Non-Infringement)
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`Zuru’s claims are barred because Telebrands has not infringed any valid copyright
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`47.
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`of Zuru because Telebrands did not copy any alleged copyrighted works of Zuru, and because
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`there is no substantial similarity between Telebrands’ accused product and any protectable
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`elements of Zuru’s registration.
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`48.
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`Zuru’s claims are barred because Telebrands has not infringed any valid trademark
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`of Zuru because Telebrands’ mark, BALLOON BONANZA is not likely to cause confusion with
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`Zuru’s BUNCH O BALLOONS mark.
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`SIXTH AFFIRMATIVE DEFENSE
`(No Damage)
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`Zuru has suffered no damages as a result of any alleged trademark and copyright
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`SEVENTH AFFIRMATIVE DEFENSE
`(No Notice)
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`Zuru has failed to meet the notice requirements under 17 U.S.C. §401, et seq.
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`EIGHTH AFFIRMATIVE DEFENSE
`(Unclean Hands)
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`Zuru’s claims are barred by the doctrine of unclean hands, at least because Zuru has
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`49.
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`infringement.
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`50.
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`51.
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`asserted frivolous claims without any basis, has falsely asserted patent rights to its product, and has
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`improperly used this litigation as a sales tactic.
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`NINTH AFFIRMATIVE DEFENSE
`(Impertinent Allegations)
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`3413830-1
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`6
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 7 of 52 PageID: 2631
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`52.
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`Zuru’s Complaint contains immaterial, impertinent, and scandalous matter which
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`should be stricken pursuant to Fed.R.Civ.P. 12(e), including, without limitation, paragraphs 10-13.
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`ADDITIONAL DEFENSES
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`Telebrands reserves the right to supplement or amend its answer, including through the
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`addition of further affirmative defenses, based upon the course of discovery and proceedings in
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`this action.
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`SECOND AMENDED COUNTERCLAIMS
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`Without waiver of any of its rights, including the right to seek dismissal of this action,
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`Defendant/Counterclaim Plaintiff Telebrands Corp. (“Telebrands”) by and through its counsel,
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`alleges the following additional claims against Plaintiff/Counterclaim Defendants Zuru Ltd., Zuru
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`Inc., Zuru Toys, Inc. aka and/or dba Zuru Toys Ltd. (collectively, “Zuru”) and Tinnus Enterprises,
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`LLC and Tinnus Technology, LLC (collectively, “Tinnus”) as follows:
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`PARTIES
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`1.
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`Counterclaim plaintiff Telebrands is a corporation organized and existing under the
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`laws of the State of New Jersey, having a place of business at 79 Two Bridges Road, Fairfield,
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`New Jersey 07004.
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`2.
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`Upon information and belief, counterclaim defendant Zuru Ltd. is a Chinese
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`corporation that has a place of business at Room 1202 12/F, Energy Plaza, 92 Granville Rd, TST
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`East, Kowloon, Hong Kong. Upon information and belief, Zuru Ltd. is doing business throughout
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`the United States and within the State of New Jersey, and within this Judicial District.
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`3.
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`Upon information and belief, counterclaim defendant Zuru Inc. is a Chinese
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`corporation that has a place of business at 1122 Capstan Drive, Forked River, New Jersey 08731.
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`3413830-1
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 8 of 52 PageID: 2632
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`Upon information and belief, Zuru Inc. is doing business throughout the United States and within
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`the State of New Jersey, and within this Judicial District.
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`4.
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`Upon information and belief, counterclaim defendant Zuru Toys Inc. aka and/or dba
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`Zuru Toys Ltd. (“Zuru Toys”) is a Chinese corporation that has a place of business at No 136,
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`Xindu Rd, Xinhua Industrial Area, Huadu District, Guangzhou, China. Upon information and
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`belief, Zuru Toys is doing business throughout the United States and within the State of New
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`Jersey, and within this Judicial District.
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`5.
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`Upon information and belief, counterclaim defendant Tinnus Enterprises, LLC
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`(“Tinnus Enterprises”) is a Texas limited liability company owned by Joshua Malone, and has a
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`place of business at 3429 18th Street, Plano, Texas. Upon information and belief, Tinnus
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`Enterprises is doing and has done business throughout the United States and within the State of
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`New Jersey, and within this Judicial District.
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`6.
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`Upon information and belief, counterclaim defendant Tinnus Technology, LLC
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`(“Tinnus Technology”) is a Texas limited liability company owned by Joshua Malone, and has a
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`place of business at 3429 18th Street, Plano, Texas. Upon information and belief, Tinnus
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`Technology is doing and has done business throughout the United States and within the State of
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`New Jersey, and within this Judicial District.
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`NATURE OF CLAIMS, JURISDICTION AND VENUE
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`7.
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`These
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`counterclaims
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`arise
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`under
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`the Declaratory
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`Judgment Act,
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`28 U.S.C. §§ 2201 and 2202, et seq., the Trademark and Unfair Competition Laws of the United
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`States (15 U.S.C. § 1051 et seq.), the Copyright Laws of the United States (17 U.S.C. § 101 et
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`seq.) and the statutory and common law of the State of New Jersey (N.J.S.A. § 56:4-1 et seq.).
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`3413830-1
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`8
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 9 of 52 PageID: 2633
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`8.
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`Jurisdiction of this Court is founded upon 15 U.S.C. § 1121, 28 U.S.C. §§ 1331,
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`1332(a)(1) and 1338(a) and (b), and the supplemental jurisdiction of this Court under 28 U.S.C. §
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`1367. The amount in controversy exceeds the sum or value of $75,000, exclusive of interest and
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`costs, and there is complete diversity of citizenship between the parties.
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`9.
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`Venue is proper within this Judicial District under 28 U.S.C. Sections 1391(b) and
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`(c), and 1400(b).
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`10.
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`Zuru Ltd. has consented to the jurisdiction of this Court by commencing its action
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`in this Judicial District as set forth in Zuru’s Complaint. The other Zuru entities are aliens doing
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`business within this jurisdiction, and therefore are subject to the jurisdiction of this Court.
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`11.
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`In addition to the facts stated above, Tinnus has committed tortious acts within this
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`Judicial District causing harm in this Judicial District, including, without limitation, sending letters
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`to customers of Telebrands located in this Judicial District, thereby subjecting itself to the
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`jurisdiction of this Court. In addition, upon information and belief, Tinnus is an indispensable
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`party, and therefore is subject to the jurisdiction of this Court according to the terms of its license
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`agreement with Zuru.
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`FACTS COMMON TO ALL CLAIMS FOR RELIEF
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`12.
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`Telebrands is a direct marketing company and is engaged in the business of
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`marketing and selling a wide variety of consumer products in this Judicial District and elsewhere
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`through direct response advertising, catalogue, mail order, and Internet sales, and through national
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`retail stores.
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`13.
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`For over thirty years, Telebrands has been a developer and marketer of consumer
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`products. Telebrands is widely known through the retail industry for the manner in which it
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`effectively drives retail sales through its nationwide advertising programs. For many years,
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`3413830-1
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 10 of 52 PageID: 2634
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`Telebrands has cultivated relationships with a wide variety of wholesalers, marketers, distributors,
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`sellers, and retailers including, for example, large retail chain stores, catalogues, and Internet sales
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`websites.
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`14.
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`Telebrands markets a product that fills multiple water balloons at the same time
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`under
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`the mark BALLOON BONANZA on
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`its website, http://buyballoonbonanza.com/.
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`Telebrands has invested in the manufacture and marketing of this product, and has created an
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`infomercial that first aired on television in December 2014, and has been shown on Telebrands’
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`website.
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`15.
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`The infomercial for Telebrands’ BALLOON BONANZA product is protected by
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`U.S. Copyright Registration No. PA 1-942-537, which issued on May 20, 2015.
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`16.
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`The BALLOON BONANZA infomercial represents a wholly original work of
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`authorship fixed in a tangible medium of expression and is copyrightable subject matter under the
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`Copyright Law of the United States. U.S. Copyright Registration No. PA 1-942-537 duly issued
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`for the BALLOON BONANZA infomercial and is valid and subsisting. A copy of the Certificate
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`of Registration is attached as Exhibit A. Telebrands is the owner of this U.S. Copyright
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`Registration, and has duly marked the infomercial with a copyright notice.
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`17.
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`The BALLOON BONANZA infomercial has a unique, non-functional and
`
`distinctive trade dress. The distinctive BALLOON BONANZA infomercial is characterized, at
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`least in part, by (a) a group of children throwing water balloons in a wide open grassy field,
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`wearing clothing that is predominantly blue, pink and red; (b) the product name appearing in the
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`center of the screen in predominantly blue color; (c) exclamatory phrases popping out of the screen
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`with exclamation points and a starburst behind them; (d) a single child holding the product out in
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`front of himself and into the screen for an up close view; (e) a close up view of a child’s shirt and
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 11 of 52 PageID: 2635
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`forearms showing the product being connected to a garden hose, followed by a close-up shot of a
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`hand only turning on a water spigot; (f) a black and white scene showing the traditional problems
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`with filling water balloons, approximately one third of the way into the infomercial; (g)
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`immediately following the black-and-white scene, an animation showing water filling the tubes
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`and then filling the balloons, beginning with a close-up shot of the tubes filling with water, then a
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`wide shot of all of the balloons filling up with water, then a close-up shot of the rubber bands, and
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`then a close-up shot of the balloons sliding off the tubes; (h) scenes showing the children’s father
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`and then the mother, in blonde hair and a red dress, as the target or potential target of water
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`balloons; (i) a scene showing the product in a young boy’s back pocket; (j) the URL for the
`
`product website in a rectangular orange box in the bottom center of the screen; (k) a special offer
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`screen showing one unit of product, then two units and then three units, at a 60 degree angle from
`
`horizontal, with the description of the offer on the right side of the screen superimposed on a
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`circular object; (l) a screen showing nine bins of filled water balloons in a 3x3 grid superimposed
`
`with exclamatory phrases and starbursts and the URL of the product website in a rectangular
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`orange box in the bottom center of the screen and (m) a closing scene with a blue background and
`
`predominantly orange coloring. (“BALLOON BONANZA Infomercial Trade Dress”). The
`
`arrangement, sequencing and combination of these elements is arbitrary, fanciful, distinctive and
`
`non-functional, and constitutes a valid trade dress. Telebrands possesses exclusive rights to this
`
`BALLOON BONANZA Infomercial Trade Dress, which represents substantial goodwill of
`
`Telebrands throughout the United States, including in this Judicial District.
`
`18.
`
`Telebrands also has presented the BALLOON BONANZA product to retailers to
`
`generate interest and sales in anticipation of the 2015 Summer selling season. Retailers have
`
`expressed great interest in the product. The BALLOON BONANZA product is a seasonal product
`
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 12 of 52 PageID: 2636
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`for most parts of the United States, as it is intended for use in connection with warm weather,
`
`outdoor activities.
`
`19.
`
`On information and belief, Zuru and Tinnus market and sell a competitive product
`
`that fills multiple water balloons at the same time under the designation “Bunch O Balloons.” On
`
`information and belief, the “Bunch O Balloons” product was introduced to consumers in the
`
`United States at retail stores in the Spring of 2015.
`
`20.
`
`Tinnus owns U.S. Trademark Registration No. 4,709,630 for the mark BUNCH O
`
`BALLOONS, which registered on the Principal Register of the United States Patent and
`
`Trademark Office on March 24, 2015 (“Tinnus Trademark Registration”). In that trademark
`
`registration, Tinnus disclaimed exclusive rights to the word “Balloons.” Upon information and
`
`belief, Zuru has a license under the Tinnus Trademark Registration. A copy of the Trademark
`
`Registration Certificate is attached as Exhibit B.
`
`21.
`
`On information and belief, consumers can now order the “Bunch O Balloons”
`
`product online at http://bunchoballoons.com/?variant=789415091, but previously consumers could
`
`only pre-order the product.
`
`22.
`
`The “Bunch O Balloons” product is advertised and offered for sale on the website,
`
`www.bunchoballoons.com, which is owned by Tinnus Technology, and on the website,
`
`www.buybunchoballoons.com, which is owned by Anna Mowbray, Chief Operating Officer of
`
`Zuru.
`
`23.
`
`The “Bunch O Balloons” mark merely describes the characteristics of the product,
`
`which is a device for filling a bunch of balloons.
`
`24.
`
`On or about December 23, 2014, Telebrands received a cease and desist letter from
`
`Zuru. In that letter, Zuru alleged that it owned “substantial Intellectual Property for Bunch o
`
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 13 of 52 PageID: 2637
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`Balloons inclusive of Trademarks, Patents and Copyrights over multiple countries.” But the letter
`
`did not identify any trademark or copyright registration or any patent owned by Zuru.
`
`Nevertheless, Zuru demanded that Telebrands cease all advertising, marketing and sale of the
`
`BALLOON BONANZA product, and shut down its website. Zuru further demanded compliance
`
`with its demands by December 17, 2014, which was one week before the letter was received. A
`
`copy of Zuru’s cease and desist letter is attached as Exhibit C.
`
`25.
`
`Immediately upon receipt of the cease and desist letter, on or about December 23,
`
`2014, Telebrands’ outside counsel sent an email to Zuru acknowledging receipt of the letter and
`
`indicating that a response would be forthcoming.
`
`26.
`
`At or around the same time, Zuru’s Chief Operating Officer, Anna Mowbray, called
`
`Telebrands’ outsourced call center in India to complain about the advertising of the BALLOON
`
`BONANZA product on the Internet. During that phone call, Ms. Mowbray repeatedly stated that
`
`Zuru owned a patent on its “Bunch O Balloons” product. Ms. Mowbray also stated that Zuru
`
`owned a trade dress certificate for its “Bunch O Balloons” product.
`
`27.
`
`At the time that these statements were made, Zuru did not own a United States
`
`patent on the “Bunch O Balloons” product.
`
`28.
`
`On or about December 29, 2014, Telebrands requested an identification of the
`
`specific trademarks, patents and copyright allegedly owned by Zuru so that Telebrands could
`
`evaluate the allegation of infringement. A copy of the email requesting that information is
`
`attached as Exhibit D. Zuru never responded to that email, and never identified any intellectual
`
`property rights allegedly owned.
`
`29.
`
`Instead of responding to Telebrands’ request for an identification of intellectual
`
`property rights allegedly owned by Zuru, on January 27, 2015, Zuru filed this action, asserting
`
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 14 of 52 PageID: 2638
`
`claims of copyright infringement, trade dress infringement, trademark infringement, and unfair
`
`competition. Zuru did not assert a claim of patent infringement.
`
`30.
`
`On information and belief, Zuru claims that it owns U.S. Copyright Registration
`
`No. VA 1-935-444 (“Zuru’s copyright”) by an alleged assignment from Tinnus. On information
`
`and belief, the alleged copyright assignment is invalid.
`
`31.
`
`On or about February 12, 2015, Zuru sent an inflammatory, tortious letter to
`
`customers of Telebrands, replete with statements denigrating Telebrands and strongly warning
`
`Telebrands’ customers not to purchase the BALLOON BONANZA product. A copy of one such
`
`letter is attached as Exhibit E. On information and belief, the tortious letter has been sent to at
`
`least the following retail customers of Telebrands: Bed, Bath & Beyond and Fred’s Inc.
`
`32.
`
`In its tortious letter, Zuru made the following statement: “The Balloon Bonanza
`
`item which may be offered to you by Telebrands breaches ZURU intellectual property including,
`
`Copyright, Trademark and Unfair Competition.” On information and belief, ZURU does not own
`
`a valid copyright or any trade dress rights in the product configuration of the “Bunch o Balloons”
`
`product. As a result, the foregoing statement made by Zuru to Telebrands’ customers is false and
`
`injurious.
`
`33.
`
`In its tortious letter, Zuru made the following statement: “ZURU has pending
`
`patents which will be granted within an anticipated 4 months.” (Emphasis added). On information
`
`and belief, at the time that this statement was made, ZURU had not received a notice of allowable
`
`claims from the U.S. Patent & Trademark Office for any patent application filed for the “Bunch O
`
`Balloons” product, and, thus, could not have known and did not know when or if a patent will be
`
`granted. As a result, the foregoing statement made by Zuru to Telebrands’ customers is false and
`
`injurious.
`
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`Case 2:15-cv-00548-CCC-MF Document 164 Filed 11/23/15 Page 15 of 52 PageID: 2639
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`34.
`
`In its tortious letter, Zuru made the following statement: “[w]e believe Balloon
`
`Bonanza to most certainly be in breach of [Zuru’s soon-to-be-issued patent]. We believe this so
`
`sincerely that, we have filed a complaint and have served this upon Telebrands in the New Jersey
`
`District court….” (emphasis in original). The complaint filed by Zuru contains no claim for patent
`
`infringement, and makes no reference to any issued or pending patent. As a result, the foregoing
`
`statement made by Zuru to Telebrands’ customers is false and injurious.
`
`35.
`
`In its tortious letter, Zuru made the following statement about Telebrands: “[T]hey
`
`sacrifice quality entirely and are prone to utilizing sub-par facilities to turn around products to hit
`
`the market as quickly as possible.” When Zuru made this statement, it did not know the identity of
`
`the factory that Telebrands would use to manufacture its BALLOON BONANZA product, and,
`
`thus, Zuru had not inspected the quality of the BALLOON BONANZA product or Telebrands’
`
`manufacturing facilities. The foregoing statement by Zuru is unsupported and was made by Zuru
`
`for the sole purpose of tortiously interfering with Telebrands’ business relationships with its
`
`customers.
`
`36.
`
`By filing a court action and sending its tortious letter to the buyers of Telebrands’
`
`customers and prospective customers, Zuru has misused the federal court system as a commercial
`
`hammer to induce customers to do business with it, and has invited Telebrands’ customers to do
`
`business with Zuru instead of Telebrands. In its tortious letter, Zuru invites Telebrands’ customers
`
`to “stand with us in this dispute.”
`
`37.
`
`Tinnus sent tortious letters to advertisers of Telebrands’ BALLOON BONANZA
`
`product, falsely accusing them of infringing intellectual

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