Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA858912
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`Filing date:
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`11/16/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91224855
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Defendant
`Anthony Tellez III
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`GLEN L NUTTALL
`KLEIN O'NEILL & SINGH LLP
`16755 VON KARMAN AVE, SUITE 275
`IRVINE, CA 92606
`UNITED STATES
`
`Other Motions/Papers
`
`Charlie C. Lyu
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`clyu@bakerlaw.com, llabella@bakerlaw.com, jlesser@bakerlaw.com, bhipdock-
`et@bakerlaw.com
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`Signature
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`Date
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`/Charlie C. Lyu/
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`11/16/2017
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`Attachments
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`2017-11-16-TELLES-Notification of Civil Action.pdf(4864623 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`AOP Ventures, Inc.
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`Opposer,
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`Opposition No.: 91224855
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`v.
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`Anthony Tellez III,
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`
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`Applicant.
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`
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`NOTIFICATION OF CIVIL ACTION
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`Applicant, Anthony Tellez III (“Tellez” or “Applicant”), hereby notifies the Board of
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`a second pending civil action, One Hit Wonder, Inc. v. AOP Ventures, Inc., Case No. 3:17-cv-
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`02105-M in the United States District Court for the Northern District of Texas (“Texas
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`Action”), “which may have a bearing on the case.” See 37 C.F.R. § 2.117(a). A copy of the
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`as-filed Complaint in the Texas Action is attached hereto as Exhibit A.
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`I. The California Action
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`This opposition is currently suspended pending the civil action AOP Ventures, Inc. v.
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`Steam Distribution, LLC, Case No. 5:15-CV-01586 VAP (KKx) in the United States District
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`Court for the Central District of California (“California Action”). That case is currently
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`ongoing.
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`For context, Applicant provides the Board with a brief background of the California
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`Action as follows:
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`On August 5, 2015, Opposer, AOP Ventures, Inc. (“AOP” or “Opposer”), filed an
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`action against Steam Distribution, LLC, One Hit Wonder, Inc. (“OHW”), Havz, LLC, and
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`

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`Anthony Tellez III (collectively, “Defendants”) alleging infringement of Opposer’s alleged
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`common law trademark for THE MILKMAN, used in connection with the sales of electronic
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`cigarette liquid, and having an alleged priority date of January 2015.
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`In an attempt to improve its priority date, Opposer allegedly acquired rights to Deus
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`Juice, LLC’s allegedly earlier common law rights in another MILKMAN trademark for e-
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`cigarette liquid that pre-dated Opposer’s asserted priority date, having an alleged priority date
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`of October 2014.
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`Similarly, on October 5, 2016, Defendant OHW acquired common law rights in
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`another MILKMAN trademark owned by third party, Good Vapes, Inc. (“Good Vapes”). See
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`Ex. A, Compl. [Dkt. 1], at Exs. A and B. The next day, October 6, 2016, OHW notified the
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`California court of the Good Vapes acquisition through a Notice of Material Change of Facts.
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`Id. at Ex. C, Notice of Material Change of Facts [CA Dkt. 99].
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`The California court, however, failed to consider – or even mention – OHW’s
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`acquisition of Good Vapes’ MILKMAN trademark rights and issued partial summary
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`judgment against Defendants, including Applicant, just five days later, on October 11, 2016.
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`See id. at Ex. D, Summ. J. Order [CA Dkt. 104].
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`On November 8, 2016, OHW filed a Motion for Reconsideration of the California
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`court’s Summary Judgment Order. See id. at Ex. E, Mot. For Recons. [CA Dkt. 130] at 6-9
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`and Decl. of Eric Freeman [CA Dkt. 130-3]. In opposition, Opposer AOP argued “the proper
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`path to be followed…will be for [OHW] to file a new action seeking a declaration of the
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`rights belatedly acquired from Good Vapes.” See AOP Ventures, Inc. v. Steam
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`Distribution, LLC, Case No. 5:15-cv-01586 VAP (KKx), Plaintiff’s Opposition to Defendants’
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`2
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`

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`Motion for Reconsideration, Dkt. No. 146-2, at 11 attached hereto as Exhibit B (emphasis
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`added).
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`On December 27, 2016, the California court issued its Order on Reconsideration and
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`“decline[d] to hold that it erred in refusing to consider the Notice of Material Change of Facts
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`[involving the Good Vapes rights] before issuing its Summary Judgment Order.” Ex. A at Ex.
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`F, Order on Recons. [CA Dkt. 174]. Thus, to date, the California court has refused to consider
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`the Good Vapes MILKMAN trademark rights on its merits, and Applicant intends to appeal
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`any decision from the California court based on their failure to consider the Good Vapes
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`rights.
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`II. The Texas Action
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`Per Opposer’s suggested “proper path,” on August 9, 2017, OHW filed a Complaint
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`against Opposer AOP and Deus Juice, LLC in the Texas Action. Among other things, the
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`Complaint in the Texas Action seeks declaratory judgment that OHW is the owner of
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`trademark rights in the mark MILKMAN, on the basis of the acquired Good Vapes rights and
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`as successor in interest to priority rights in the MILKMAN mark, and alleges that Opposer
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`infringes OHW’s trademark rights. Ex. A at ¶¶ 47-66.
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`On October 16, 2017, Opposer filed a Motion to Dismiss and/or Stay the Texas
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`Action, to which OHW opposed on November 6, 2017.
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`Presently, the parties are completing briefing on Opposer’s Motion to Dismiss and/or
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`Stay, and awaiting the Texas court’s decision on the same.
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`The Texas Action is currently ongoing and may have a bearing on the instant
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`opposition involving ownership of rights and priority in the MILKMAN trademark in
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`connection with electronic cigarette liquid. See 37 C.F.R. § 2.117(a).
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`3
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`

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`Date: November 16, 2017
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`Respectfully submitted,
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`
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`BAKER & HOSTETLER LLP
`
`
`By:
`
`
`/Charlie C. Lyu /
`
`Charlie C. Lyu
`clyu@bakerlaw.com
`Jacqueline M. Lesser
`jlesser@bakerlaw.com
`2929 Arch Street
`Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.564.3580
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`Facsimile: 215.568.3439
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`
`
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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on November 16, 2017, I served a true and correct copy of the
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`
`
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`foregoing to be served by email upon Opposer’s attorney of record identified below:
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`Konrad Gatien
`Keats Gatien LLP
`120 S. El Camino Dr, Suite 207
`Beverly Hills, CA 90212
`kg@keatsgatien.com, uspto@keatsgatien.com
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`
`
`
`
`
`
`
`
`
`
` /Charlie C. Lyu/
`Charlie C. Lyu
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`EXHIBIT A
`EXHIBIT A
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`

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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 1 of 14 PageID 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`Plaintiff,
`
`
`ONE HIT WONDER, INC.,
`
`
`
`v.
`
`AOP VENTURES, INC., DEUS JUICE,
`LLC,
`
`
`
`Defendants.
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`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`C.A. NO.: 3:17-CV-2105
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`JURY TRIAL DEMANDED
`
`COMPLAINT
`
`
`
`Plaintiff ONE HIT WONDER, INC., (“Plaintiff”), by and through its undersigned
`
`attorneys, hereby complains of Defendants AOP VENTURES, INC. and DEUS JUICE LLC
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`(collectively, “Defendants”) as follows:
`
`I.
`
`NATURE OF THE ACTION
`
`1.
`
`This action for declaratory relief, injunctive relief, and damages arises out of
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`Defendants’ willful infringement of Plaintiff’s valuable trademark rights in the mark
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`“MILKMAN” in connection with electronic cigarette liquids (“e-liquids”). Despite being well
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`aware of Plaintiff’s senior trademark rights in the MILKMAN mark, Defendants have
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`aggressively promoted, sold, and licensed e-liquids bearing the “MILKMAN” and the
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`confusingly-similar “THE MILKMAN” marks (collectively, the “Infringing Marks”). Plaintiff
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`supplied Defendants documentary evidence demonstrating that Plaintiff’s trademark rights in the
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`MILKMAN mark accrued well before Defendants began using the Infringing Marks, but
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`Defendants’ infringing activities continued. As a result of Defendants’ willful misconduct,
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`Plaintiff has suffered and will continue to suffer irreparable harm and damages unless stopped by
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`an order of this Court.
`
`

`

`
` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 2 of 14 PageID 2
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`II.
`
`JURISDICTION AND VENUE
`
`2.
`
`This action arises under the federal trademark and unfair competition statute (the
`
`“Lanham Act”), 15 U.S.C. § 1051 et seq., and under the laws of the State of Texas. This Court
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`has subject matter jurisdiction over the Defendants pursuant to 15 U.S.C. § 1121 and 28 U.S.C.
`
`§§ 1331, 1338 and 1367.
`
`3.
`
`Defendants advertise, distribute, offer for sale and sell e-liquids bearing the
`
`Infringing Marks in this judicial district. Venue is proper in this judicial district pursuant to 28
`
`U.S.C. § 1391, because a substantial part of the acts or omissions giving rise to the claims
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`occurred in this judicial district.
`
`III. THE PARTIES
`
`4.
`
`Plaintiff ONE HIT WONDER, INC. (“Plaintiff”) is a California corporation
`
`having a place of business at 3671 Walnut Ave., Chino, CA 91710.
`
`5.
`
`On information and belief, Defendant AOP VENTURES, INC. is a Delaware
`
`corporation having a place of business at 2540 Corporate Pl., Suite B103, Monterey Park, CA
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`91754.
`
`6.
`
`On information and belief, Defendant DEUS JUICE LLC is a Michigan limited
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`liability company, having a place of business at 209 W. Michigan Ave., Paw Paw, Michigan
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`49079.
`
`IV. NOTICE OF RELATED CASE
`
`7.
`
`Pursuant to Local Rule 3.3, notice is hereby provided of another case related to
`
`this case: AOP Ventures, Inc. v. Steam Distribution, LLC, Case No. 5:15-cv-01586-VAP-KK, in
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`the United States District Court of the Central District of California, before the Honorable
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`William D. Keller. The California case is currently pending.
`
`2
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`

`

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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 3 of 14 PageID 3
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`V.
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`ALLEGATIONS COMMON TO ALL CLAIMS FOR RELIEF
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`Plaintiff’s “MILKMAN” Mark and Good Vapes
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`8.
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`Good Vapes, LLC (“Good Vapes”), a Texas company, operates brick and mortar
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`retail stores
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`in
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`the state of Texas,
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`including
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`in Dallas, Texas, and websites at
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`www.goodvapes.com and shop.goodvapes.com.
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`9.
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`On its websites and at its brick and mortar retail locations, Good Vapes promotes,
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`sells, and offers for sale goods relating to vaping, including electronic cigarette liquids (“e-
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`liquids”).
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`10.
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`Good Vapes markets and sells several flavors of e-liquids, including a strawberry-
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`milk flavored e-liquid, marketed and sold under the brand name MILKMAN.
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`11.
`
`Good Vapes began selling e-liquid bearing the mark MILKMAN on or around
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`April 2014.
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`12.
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`Good Vapes has used the MILKMAN mark in commerce continuously since
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`April 2014, through nationwide sales of MILKMAN e-liquid online and in multiple retail outlets
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`throughout Texas.
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`13.
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`Good Vapes established the www.goodvapes.com and shop.goodvapes.com
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`websites in order to market and sell its products, including all of its e-liquids, throughout the
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`U.S.
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`14.
`
`Good Vapes has promoted and offered for sale its MILKMAN-branded e-liquid
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`for sale online on the www.goodvapes.com and shop.goodvapes.com websites continuously
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`since May 2014.
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`15.
`
`Through its continued use of the MILKMAN mark, Good Vapes acquired
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`goodwill associated with the MILKMAN mark, and developed legally protectable trademark
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`rights in the MILKMAN mark over the rights of subsequent users of the MILKMAN mark.
`
`3
`
`

`

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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 4 of 14 PageID 4
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`16.
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`On or around October 5, 2016, Plaintiff acquired all of Good Vapes’ right, title
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`and interest in and to the MILKMAN mark. As such, as successor to Good Vapes’ rights and
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`interests of in the MILKMAN mark, Plaintiff owns trademark rights to the MILKMAN mark
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`having a first use priority dating to at least as early as April 2014. Attached hereto as Exhibit A is
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`a true and correct copy of the trademark assignment agreement from Good Vapes to Plaintiff.
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`17.
`
`Good Vapes continues to sell e-liquid bearing the MILKMAN mark under license
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`from Plaintiff, and Good Vapes’ continued use of the MILKMAN mark inures to the benefit of
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`Plaintiff. Attached hereto as Exhibit B is a true and correct copy of Plaintiff’s purchase and
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`license agreement with Good Vapes (with confidential financial information redacted).
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`AOP’s “THE MILKMAN” Mark and Deus Juice, LLC
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`18.
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`On information and belief, on or around October 9, 2014, Deus Juice, LLC
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`(“Deus Juice”) sold e-liquid bearing the mark “MILKMAN”.
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`19.
`
`On information and belief, Defendant AOP Ventures, Inc. began selling e-liquids
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`bearing the mark “THE MILKMAN” no earlier than January 2015. Defendant did not perform a
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`trademark clearance search before beginning to use the mark THE MILKMAN.
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`20.
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`On or around June 10, 2016, Defendant acquired Deus Juice’s rights in the
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`MILKMAN mark, and asserts that it has priority in the Infringing Marks based on Deus Juice’s
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`use of the MILKMAN mark on or around October 9, 2014.
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`21.
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`On information and belief, Defendant has no evidence to support a claim of
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`priority in the Infringing Marks prior to October 9, 2014.
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`22.
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`Plaintiff’s trademark rights in the MILKMAN mark are senior to any trademark
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`rights Defendant may have in the Infringing Marks, as Plaintiff’s predecessor-in-interest Good
`
`4
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`

`

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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 5 of 14 PageID 5
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`Vapes was already using the MILKMAN mark in commerce at the time AOP’s predecessor-in-
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`interest, Deus Juice, adopted the mark MILKMAN.
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`23.
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`On information and belief, Deus Juice also continues to sell e-liquid juice bearing
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`the MILKMAN mark.
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`The California Litigation and Defendant’s Notice of Good Vapes
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`24.
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`On October 5, 2015, Defendant AOP filed a lawsuit against Plaintiff in the United
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`States District Court for the Central District of California, Case No. 5:15-cv-01586 (the
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`“California Case”) alleging infringement of AOP’s alleged trademark rights in the THE
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`MILKMAN and MILKMAN marks.
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`25.
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`On September 2, 2016, Defendant AOP filed a motion for summary judgment
`
`seeking judgment against Plaintiff for trademark infringement in the California Case. AOP
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`Ventures, Inc., v. Steam Distribution, LLC et al., Plaintiff’s Motion for Summary Judgement,
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`Dkt. No. 56, Case No. 5:15-cv-01586. Plaintiff filed its opposition on September 12, 2016, and
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`Defendant AOP filed its reply on September 20, 2016. Dkt. Nos. 75 and 91.
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`26.
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`On October 6, 2016, the day after Plaintiff acquired all of Good Vapes’ rights,
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`title, interest, and good will in and to the MILKMAN mark, Plaintiff filed documents in the
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`California Case notifying the California Court of the acquisition. See Notice of Material Change
`
`of Facts to the Court, Dkt. No. 99, attached hereto as Exhibit C.
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`27.
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`That same day, October 6, 2016, the California Court heard Defendant AOP’s
`
`Motion for Summary Judgment on Plaintiff’s trademark Counterclaims. At the hearing, the court
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`specifically declined to consider as facts Plaintiff’s acquisition of Good Vapes’ trademark rights
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`in and to the MILKMAN mark.
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`5
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`

`

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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 6 of 14 PageID 6
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`28.
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`On October 11, 2016, the California Court granted Defendant AOP’s motion for
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`summary judgment as to AOP’s claims for trademark infringement, false designation of origin,
`
`and unfair competition. See Order Granting in Part and Denying in Part Plaintiff’s Motion for
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`Summary Judgment, Dkt. No. 104, at 30, a true and correct copy of which is attached hereto as
`
`Exhibit D.
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`29.
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`In its Order, the California Court also enjoined Plaintiff from “marketing,
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`advertising, distributing, offering to sell, or selling any product, packaging, or any other item that
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`was named or labeled with the marks MILK MAN, MILKMAN, THE MILK MAN, or THE
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`MILKMAN, or otherwise using said marks in commerce. Id.
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`30.
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`On November 9, 2016, Plaintiff filed a Motion for Reconsideration of the Court’s
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`Summary Judgment Order in view of Plaintiff’s acquisition of prior rights in the MILKMAN
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`mark. See Dkt. Nos. 129 and 130, a true and correct copy of which are attached hereto as Exhibit
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`E1. As part of its motion, Plaintiff filed, in the California case, and served AOP’s counsel a
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`sworn and notarized declaration from Erin Freeman, an owner of Good Vapes (the “Good Vapes
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`Declaration”), attesting that Good Vapes had been selling MILKMAN-branded e-liquid
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`continuously since April 2014, and had been promoting and offering its MILKMAN-branded e-
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`liquid for sale online continuously since May 2014.
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`31.
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`The exhibits to the Good Vapes Declaration include sales records that show that
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`sales by Good Vapes of MILKMAN-branded e-liquid were established, and continued before
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`Defendants sold any products bearing the Infringing Marks.
`
`
`1 Plaintiff’s Motion for Reconsideration and certain exhibits to the Declaration of Erin Freeman, attached at Exhibit
`E, were filed under seal. Plaintiff will provide an unredacted copy and all exhibits to the Declaration of Erin
`Freeman to the Court for in camera review upon request.
`
`6
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`

`

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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 7 of 14 PageID 7
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`32.
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`The exhibits to the Good Vapes Declaration include web pages to show that Good
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`Vapes’ MILKMAN-branded e-liquid was promoted and offered for sale nationwide before
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`Defendants sold any products bearing the Infringing Marks.
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`33.
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`The exhibits to the Good Vapes Declaration include Instagram web pages to show
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`advertisements of MILKMAN-branded e-liquid using nationwide social media before
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`Defendants sold any products bearing the Infringing Marks.
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`34.
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`The exhibits to the Good Vapes Declaration include sales records to show that the
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`number of retail outlets selling Good Vapes’ MILKMAN-branded e-liquid increased between the
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`date MILKMAN-branded e-liquid was first sold and the date Defendants first sold products
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`bearing the Infringing Marks.
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`35.
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`On December 27, 2016, the California Court issued an order granting summary
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`adjudication as to Defendant AOP’s claims for trademark infringement, false designation of
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`origin, and unfair competition relating to Plaintiff’s use of the MILK MAN mark. See Dkt. No.
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`174, a true and correct copy of which is attached hereto as Exhibit F. However, the California
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`Court did not consider the facts contained in Good Vapes’ Declaration in rendering its decision.
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`In its order on reconsideration, the California Court maintained its injunction enjoining Plaintiff
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`from “marketing, advertising, distributing, offering to sell, or selling any product, packaging, or
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`any other item that was named or labeled with the marks MILK MAN, MILKMAN, THE MILK
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`MAN, or THE MILKMAN, or otherwise using said marks in commerce.” See id. at 7.
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`36.
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`On June 13, 2017, the court in the California case ruled that all evidence
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`concerning the Good Vapes and Deus Juice agreements will be excluded at trial.
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`37.
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`Given that Good Vapes’ use of the MILKMAN mark is senior to any alleged use
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`by Defendants, Plaintiff does not believe that the California Court’s injunction applies to Good
`
`7
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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 8 of 14 PageID 8
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`Vapes’ sales. Indeed, despite being aware of Good Vapes’ continued sales post-injunction,
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`Defendant has not sent a cease and desist letter to Good Vapes. On August 7, 2017, Plaintiff
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`asked Defendant AOP for their position on whether Good Vapes’ sales of MILKMAN product
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`(under license from Plaintiff), violate the California Court’s injunction. As of this filing,
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`Defendant AOP has not responded.
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`38. Meanwhile, Defendants have refused to cease sale of goods bearing the
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`MILKMAN rights despite Plaintiff’s prior rights in the mark.
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`39.
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`A justiciable controversy exists as to the priority and extent of Plaintiff’s and
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`Defendants’ trademark rights in and to the Infringing Marks and the MILKMAN mark,
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`respectively.
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`Plaintiff is Harmed by Defendants’ Willful Use of the Infringing Marks
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`40.
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`Despite being in possession of sworn evidence that Plaintiff’s rights in the
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`MILKMAN mark are senior to any trademark rights Defendants may have in the Infringing
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`Marks, Defendants have made an informed decision to ignore Plaintiff’s rights in the
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`MILKMAN mark, and continue to use its Infringing Marks in commerce.
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`41.
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`Defendants are currently using the Infringing Marks in commercial advertising,
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`promotion, licensing, and sale of e-liquids.
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`42.
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`Because of Defendants’ advertising, promotion, licensing, and sale of e-liquids
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`under the Infringing Marks, a consumer in the marketplace is likely to be confused as to the
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`source or origin of e-liquids bearing the MILKMAN or THE MILKMAN marks, and/or
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`Defendants’ affiliation with Plaintiff.
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`43.
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`Defendants’ use of the Infringing Marks has damaged Plaintiff and Plaintiff’s
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`licensee Good Vapes.
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`8
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`

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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 9 of 14 PageID 9
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`44.
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`Defendants’ use of their Infringing Marks has damaged the value and
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`effectiveness of Plaintiff’s MILKMAN mark, and the goodwill associated therewith.
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`45.
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`If Defendants are not enjoined from using their Infringing Marks, Plaintiffs will
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`be irreparably harmed because the value and effectiveness of Plaintiff’s MILKMAN mark, and
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`the goodwill associated therewith, will be permanently damaged.
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`46.
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`Defendants intend to continue promoting, licensing, and selling e-liquids bearing
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`the Infringing Marks, and will continue doing so unless enjoined by this Court.
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`VI.
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`FIRST CLAIM FOR RELIEF
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`Declaratory Relief Under 28 U.S.C. §§ 2201, 2202
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`47.
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`Plaintiff hereby realleges and incorporates herein by reference the allegations
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`contained in Paragraphs 1 through 46 of this Complaint.
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`48.
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`Plaintiff is the owner of trademark rights in the mark MILKMAN through
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`Plaintiff’s assignment agreement with Good Vapes.
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`49.
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`Defendant AOP asserts that it is the owner of trademark rights in the mark
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`MILKMAN through AOP’s assignment agreement with Deus Juice and that Plaintiff infringes
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`Defendant AOP’s alleged MILKMAN mark.
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`50.
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`At this time, an actual case or controversy exists between the parties as to the
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`ownership and priority of use of the MILKMAN mark, based on the parties’ respective
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`assignment agreements with Deus Juice and Good Vapes.
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`51.
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`Accordingly, Plaintiff desires a judicial determination and declaration that
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`Defendants’ Infringing Marks are invalid and unenforceable, thus, Plaintiff and its licensee Good
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`Vapes do not infringe any trademark rights of Defendants.
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`VII. SECOND CLAIM FOR RELIEF
`
`9
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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 10 of 14 PageID 10
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`False Designation of Origin Under 15 U.S.C. §1125(a)
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`52.
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`Plaintiff hereby realleges and incorporates herein by reference the allegations
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`contained in Paragraphs 1 through 51 of this Complaint.
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`53.
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`Plaintiff is the owner of trademark rights in the mark MILKMAN.
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`54.
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`Despite being in possession of sworn and notarized evidence demonstrating
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`Plaintiff’s senior trademark rights in the MILKMAN mark, Defendants affirmatively decided to
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`continue using the Infringing Marks in commercial advertisement, promotion, licensing, and
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`sales, and continues to use the Infringing Marks in advertisement, promotion and sales.
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`55.
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`Plaintiff has not granted Defendants permission to use the MILKMAN mark.
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`56.
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`Defendants’ use of the Infringing Marks in connection with their e-liquids is
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`likely to cause confusion with Plaintiff’s rights in and to the MILKMAN mark.
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`57.
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`Defendant AOP admits that the marks THE MILKMAN and MILKMAN in
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`connection with e-liquids are confusingly similar.
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`58.
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`By continuing to use the Infringing Marks despite their knowledge of Plaintiff’s
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`senior trademark rights in the MILKMAN mark, Defendants have willfully violated 15 U.S.C.
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`§1125(a).
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`59.
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`Defendants’ use of the Infringing Marks in commerce has caused damages to
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`Plaintiff in an amount to be proven at trial.
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`60.
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`Defendants’ use of the Infringing Marks in commerce is irreparably injuring
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`Plaintiff, and such irreparable injury will continue unless Defendants are preliminarily and
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`permanently enjoined by this Court from further violation of Plaintiff’s rights, for which Plaintiff
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`has no adequate remedy at law.
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`VIII. THIRD CLAIM FOR RELIEF
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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 11 of 14 PageID 11
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`Common Law Trademark Infringement
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`61.
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`Plaintiff hereby realleges and incorporates herein by reference the allegations
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`contained in Paragraphs 1 through 60 of this Complaint.
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`62.
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`By virtue of the acts complained of herein, Defendants have caused a likelihood
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`of confusion among the purchasing public in this Judicial District and elsewhere, thereby
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`infringing Plaintiff’s trademark rights, in violation of the common law of the State of Texas.
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`63.
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`Plaintiff is being irreparably by Defendants’ infringing conduct, and will continue
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`to be irreparably harmed unless Defendants are preliminarily and permanently enjoined by this
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`Court from further violations of Plaintiff’s rights, for which Plaintiff has no adequate remedy at
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`law.
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`IX.
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`FOURTH CLAIM FOR RELIEF
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`Common Law Unfair Competition
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`64.
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`Plaintiff hereby realleges and incorporates herein by reference the allegations
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`contained in Paragraphs 1 through 63 of this Complaint.
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`65.
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`By virtue of its continued use of its Infringing Marks, Defendants have
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`misappropriated Plaintiff’s rights in its MILKMAN mark, thereby unfairly competing with
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`Plaintiff in violation of the common law of the State of Texas.
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`66.
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`Plaintiff is being irreparably injured by Defendants’ unfairly competitive conduct,
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`and will continue to be irreparably harmed unless Defendants are preliminarily and permanently
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`enjoined by this Court from further violations of Plaintiff’s rights, for which Plaintiff has no
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`adequate remedy at law.
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`PRAYER FOR RELIEF
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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 12 of 14 PageID 12
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`
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`WHEREFORE, Plaintiff prays that this Court enter judgment against Defendants as
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`follows:
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`1.
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`A judicial declaration that Defendants do not possess any trademark rights in the
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`MILKMAN mark and/or confusingly similar marks such as “THE MILKMAN” mark, and that
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`Plaintiff and its licensee Good Vapes do not infringe any trademark rights of Defendants;
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`2.
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`An order directing Defendants to cancel any pending applications or registrations
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`in the Infringing Marks;
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`3.
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`That Plaintiff be granted preliminary and permanent injunctive relief enjoining
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`Defendants and their respective officers, agents, servants, representatives, employees, and all
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`other persons acting in concert with Defendants from using the MILKMAN mark and any
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`variation of the MILKMAN mark in commerce, including the mark THE MILKMAN;
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`4.
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`That Defendants account for and disgorge any and all profits derived from sales
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`of products bearing the mark THE MILKMAN or any variation thereof, and also that Defendants
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`pay to Plaintiff any and all damages sustained by Plaintiff by virtue of Defendants’ acts
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`complained of herein;
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`5.
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`That Plaintiff be granted other economic and consequential damages in an amount
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`to be determined at trial;
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`6.
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`7.
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`That Plaintiff be granted an award of interest on all applicable damages;
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`That Plaintiff be granted punitive, enhanced, and exemplary damages for
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`Defendants’ willful infringement of Plaintiff’s trademark rights in the MILKMAN mark;
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`8.
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`A final judgment declaring that Defendants have violated and willfully violated
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`the provisions of 15 U.S.C. §1125(a) by falsely designating the origin of Defendants’ products
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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 13 of 14 PageID 13
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`and unfairly competing with Plaintiff through the commercial advertising, promotion and sale of
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`Defendants’ e-liquids and associated products using the Infringing Marks;
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`9.
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`A final judgment that Defendants have unfairly competed with Plaintiff under the
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`common law of the State of Texas;
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`10.
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`That such damages and profits be trebled and awarded to Plaintiff, and that
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`Plaintiff be awarded its costs, attorneys’ fees and expenses in this suit under 15 U.S.C. § 1117 as
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`a result of Defendants’ willful, intentional, and deliberate acts in violation of the Lanham Act;
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`11.
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`That Plaintiff be granted such other and further relief as the Court deems just and
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`proper.
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`DATED: August 9, 2017
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`Respectfully submitted,
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`
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`By: /s/ Kody D. L. Kleber
`Kody D. L. Kleber
`Attorney-in-charge
`Texas Bar No. 24060098
`Baker & Hostetler LLP
`811 Main Street, Suite 1100
`Houston, Texas 77009-6111
`Tel: 713-646-1330
`Fax: 713-751-1717
`kkleber@bakerlaw.com
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`Attorneys for Plaintiff One Hit Wonder,
`Inc.
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` Case 3:17-cv-02105-M Document 1 Filed 08/09/17 Page 14 of 14 PageID 14
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`JURY DEMAND
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`Plaintiff hereby requests a trial by jury of the claims alleged in this Complaint.
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`DATED: August 9, 2017
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`Respectfully submitted,
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`
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`
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`By: /s/ Kody D. L. Kleber
`Kody D. L. Kleber
`Attorney-in-charge
`Texas Bar No. 24060098
`Baker & Hostetler LLP
`811 Main Street, Suite 1100
`Houston, Texas 77009-6111
`Tel: 713-646-1330
`Fax: 713-751-1717
`kkleber@bakerlaw.com
`
`Attorneys for Plaintiff One Hit Wonder,
`Inc.
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` Case 3:17-cv-02105-M Document 1-1 Filed 08/09/17 Page 1 of 1 PageID 15
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`A
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`STEAM 13566
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` Case 3:17-cv-02105-M Document 1-2 Filed 08/09/17 Page 1 of 8 PageID 16
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`TRADEMARK PURCHASE AND LICENSE AGREEMENT
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`This Agreement is made between Good Vapes, LLC, a Texas company having a principal
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`place of business at 10677 E. Northwest Hwy., Ste. 450, Dallas, TX 75238 (“Seller”), and One
`Hit Wonder, Inc., a California company having a principal place of business at 3671 Walnut
`Ave., Chino, CA 91710 (“Purchaser”). The Agreement is effective as of the date of the last
`signature hereto (“Effective Date”).
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`WHEREAS, Seller has adopted, used, is using, and owns trademark rights in the mark
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`MILKMAN (hereinafter “the Mark”) used in connection with electronic cigarette liquid (e-
`liquid);
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`WHEREAS, Seller has acquired goodwill associated with and symbolized by the Mark,
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`and has not abandoned the Mark; and
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`WHEREAS, Seller desires to sell and Purchaser desires to acquire all right, title and
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`interest in and to the Mark including all goodwill associated with and symbolized by the Mark.
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`NOW, THEREFORE, in consideration of the mutual promises and covenants herein, the
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`parties agree as follows:
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`1.
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`PAYMENT AND ASSIGNMENT
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`1.1.
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`In consideration for the sale of the Mark and related goodwill to Purchaser and the
`mutual promises set forth herein, Purchaser shall pay Seller
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` payable in immediately available funds as more fully described in
`Paragraphs 1.2 and 1.3 below:
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`1.2.
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` via wire transfer to an account of Seller’s
`designation immediately upon execution of this Agreement.
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`1.3.
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` within five (5) days of the
`An additional
`Effective Date. Within one (1) day of receipt of the additional sum described by this
`Paragraph, Seller shall assign all right, title and interest in and to the