Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA759215
`
`Filing date:
`
`07/19/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91228375
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Prometheus Brands, LLC
`
`ROBERT T. MALDONADO
`COOPER & DUNHAM LLP
`30 ROCKEFELLER PLAZA FLOOR 20
`NEW YORK, NY 10112
`
`RMaldon-
`ado@cooperdunham.com;ebernstein@cooperdunham.com;tm@cooperdunham
`.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Motion to Suspend for Civil Action
`
`Robert T. Maldonado
`
`rmaldonado@cooperdunham.com, earaj@cooperdunham.com,
`lalos@cooperdunham.com
`
`Signature
`
`Date
`
`/Robert T. Maldonado/
`
`07/19/2016
`
`Attachments
`
`Motion to Suspend BALLOON BONANZA HD.pdf(2901548 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
` Opposition No. 91228375
`
`
`
` Mark: BALLOON BONANZA HD
`
`
`
`) ) ) ) ) ) ) ) ) )
`
`
`Tinnus Enterprises, LLC,
`
`
`
` Opposer,
`
`
`v.
`
`Prometheus Brands, LLC,
`
` Applicant.
`
`
`
`
`
`
`
`
`
`APPLICANT PROMETHEUS BRANDS, LLC’S MOTION TO SUSPEND PENDING
`DISPOSITION OF A FEDERAL DISTRICT COURT PROCEEDING
`
`Applicant Prometheus Brands, LLC (“Applicant”) hereby moves to suspend the above-
`
`identified opposition pending final disposition of a related federal district court proceeding.
`
`I. ARGUMENT
`
`It is well-settled that when there is a pending civil action “which may have a bearing on
`
`the case [before the Board], the proceedings before the Board may be suspended until termination
`
`of the civil action.” 37 C.F.R. § 2.117(a). “Ordinarily, the Board will suspend proceedings in the
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`case before it if the final determination of the other proceeding may have a bearing on the issues
`
`before the Board.” TBMP § 510.02(a). Indeed, a final determination in a civil action for trademark
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`infringement “will directly affect the resolution of the issue of likelihood of confusion . . . involved
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`in the proceeding before the Trademark Trial and Appeal Board.” The Other Telephone Co. v.
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`Conn. Nat’l Telephone Co., Inc., 181 U.S.P.Q. 125 (TTAB 1974).
`
`Here, Opposer Tinnus Enterprises, LLC (“Opposer”) filed a Notice of Opposition,
`
`opposing registration of Applicant’s BALLOON BONANZA HD mark on the grounds that there
`
` 1
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`
`
`

`
`is a likelihood of confusion between Applicant’s BALLOON BONANZA HD mark and Opposer’s
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`BUNCH O BALLOONS mark under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). (Dkt.
`
`No. 1, ¶ 27.) Prior thereto, on January 27, 2015, Opposer’s exclusive licensee, Zuru Ltd., filed a
`
`civil action in the District Court for the District of New Jersey (“the New Jersey Action”) alleging
`
`that the use of a similar mark, BALLOON BONANZA, by Telebrands Corps., Applicant’s
`
`exclusive licensee, infringed the BUNCH O BALLOONS mark. (Exhibit 1.)
`
`37 C.F.R. § 2.117(a) sets forth, “whenever it shall come to the attention of the Trademark
`
`Trial and Appeal Board that a party or parties to a pending case are engaged in a civil action . . .
`
`which may have a bearing on the case, proceedings before the Board may be suspended until
`
`termination of the civil action.” (emphasis added.) Here, the trademark opposed by Zuru
`
`(Opposer’s exclusive licensee) in this opposition proceeding (BALLOON BONANZA HD) is
`
`similar to the trademark that is the subject of the New Jersey Action (BALLOON BONANZA).
`
`In the New Jersey Action, Telebrands asserts affirmative defenses that Opposer’s BUNCH O
`
`BALLOONS mark is invalid and that there is no likelihood of confusion with its BALLOON
`
`BONANZA mark. Telebrands has also counterclaimed for cancellation of Opposer’s BUNCH O
`
`BALLOONS trademark registration, which forms the sole basis of the instant Opposition. (Exhibit
`
`2).
`
`The New Jersey Action is currently pending. Accordingly, a final determination in the
`
`New Jersey Action regarding Opposer’s BUNCH O BALLOONS trademark registration and use
`
`will have a direct bearing on the issues in this opposition proceeding, including the validity of the
`
`Opposer’s registration and likelihood of confusion. Therefore, in the interest of judicial economy
`
` 2
`
`
`
`

`
`and in accordance with Board practice and precedent, Applicant respectfully requests that the
`
`Board grant its Motion to Suspend.1
`
`Date: July 19, 2016
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`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
`
`
`Respectfully submitted,
`
`Prometheus Brands, LLC
`
` /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
`
`
`
`
`
`
`
`
`
`1 Applicant respectfully refers the Board to Opposition No. 91223641, a proceeding initiated by Tinnus
`Enterprises, LLC, owner of the BUNCH O BALLOONS mark, against Prometheus Brands, LLC’s
`application for the mark BALLOON BONANZA. (Dkt. No. 1.) After reviewing arguments similar to
`those presented herein, the Board suspended the opposition proceeding pending the final disposition of
`The New Jersey Action. (Dkt. No. 13.)
`
` 3
`
`
`
`

`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 1 of 13 PageID: 1
`
`UNITED STATES DISTRICT COURT FOR THE
`DISTRICT OF NEW JERSEY
`
`
`_______________________________________
`
`
`)
`ZURU LTD.
`)
`
`
`)
`
`Plaintiff,
`)
`
`
`)
`v.
`
`)
`
`
`)
`
`TELEBRANDS CORP.
`)
`79 Two Bridges Road
`)
`Fairfield, NJ 07004
`)
`
`
`)
`SERVE:
`)
`
`Barbara M. Pizzolato, R/A
`)
`
`80 Main Street
`)
`
`West Orange, NJ 07052
`)
`
`
`)
`
`Defendant.
`)
`_______________________________________)
`
`
`
`
`
`
`
`
`
`Civ. Action No. _____________
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`COMPLAINT
`
`Plaintiff ZURU Ltd. (ZURU), by counsel, in support of this Complaint against Defendant
`
`Telebrands Corp. for trademark infringement, copyright infringement, and unfair competition
`
`related to the marketing of its Balloon Bonanza product, states as follows:
`
`PARTIES
`
`1.
`
`Plaintiff ZURU is one of the fastest growing toy companies in the world. Its
`
`primary place of business is in Guangzhou, China. ZURU owns the intellectual property rights
`
`related to the Bunch O Balloons product that was initially invented by Josh Malone (“Malone”),
`
`the founder of Tinnus Enterprises, LLC (“Tinnus”).
`
`2.
`
`Defendant Telebrands is a New Jersey corporation having its principal place of
`
`business at 79 Two Bridges Road, Fairfield, New Jersey. Telebrands markets a product under the
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 2 of 13 PageID: 2
`
`name Balloon Bonanza, the promotion and marketing of which misappropriates the intellectual
`
`property related to the Bunch O Balloons product with advertising that is confusing and
`
`misleading to consumers.
`
`JURISDICTION AND VENUE
`
`3.
`
`The Court has original subject matter jurisdiction over this action pursuant to
`
`28 U.S.C. §§ 1331, 1332, and 1338(a), as well as supplemental jurisdiction pursuant to 28 U.S.C.
`
`§ 1367.
`
`4.
`
`Venue over ZURU’s claims is proper in this district and division pursuant to
`
`28 U.S.C. §§ 1391 and 1400 because Defendant maintains its principal place of business in this
`
`judicial district and also because Defendant advertises and sells the Balloon Bonanza product
`
`here and a substantial part of the events or omissions giving rise to the claim occurred in this
`
`jurisdiction.
`
`FACTS COMMON TO ALL COUNTS
`
`5.
`
`In or around 2013, Josh Malone, a father of eight and an inventor living in Texas,
`
`finalized his designs for a revolutionary toy product that allows someone to fill as many as 100
`
`water balloons in approximately 60 seconds. The device is a hose attachment whose other end is
`
`fitted with 37 balloons. When the hose is turned on, the balloons automatically fill and tie
`
`themselves before shaking free of the hose attachment assembly.
`
`6.
`
`7.
`
`On February 16, 2014, the product was debuted at the New York Toy Fair.
`
`In late July 2014, Malone, through his company Tinnus Enterprises, launched a
`
`Kickstarter campaign to fund the manufacture and launch of this product, which was branded as
`
`“Bunch O Balloons.” In less than 12 hours, the project was fully funded to its initial $10,000
`
`
`
`2
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 3 of 13 PageID: 3
`
`goal, and within five days, the project had received over $500,000 in startup funding. To date,
`
`that funding has reached nearly $1,000,000.
`
`8.
`
` In the months following this remarkable fundraising campaign, the Bunch O
`
`Balloons invention was featured in numerous nationwide media spots: from the Today Show and
`
`Good Morning America, to Time, People, and Sports Illustrated magazines, and on websites
`
`such as The Huffington Post, Gizmodo, and ARS Technica, amongst others.
`
`9.
`
`Following this nationwide publicity, Telebrands began a concerted effort to
`
`appropriate intellectual property related to the Bunch O Balloons product in an effort to confuse
`
`customers into believing that its Balloon Bonanza product was the same or related to Plaintiff’s
`
`innovative Bunch O Balloons product. As discussed more fully below, among other things, these
`
`efforts included the appropriation of copyrighted drawings of the Bunch O Balloons product and
`
`the use of a confusingly similar product name and product configuration.
`
`10.
`
`This is not the first time Telebrands has been accused of misappropriating the
`
`intellectual property of others. Since 1983, it has been sued more than 50 times for trademark,
`
`trade dress infringement, copyright infringement, and patent infringement. Indeed, many of these
`
`lawsuits involve the same pattern of intellectual property misappropriation and unfair
`
`competition that is alleged herein.
`
`11.
`
`Similarly, this is not the first time Telebrands has been accused of violating
`
`consumer protection laws, the latest being a suit by the New Jersey Attorney General and state
`
`Division of Consumer Affairs initiated in August 2014 and alleging both new violations of the
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`state’s consumer protection laws, as well as violations of a 2001 Consent Judgment that resolved
`
`prior litigation with the state for other Consumer Fraud Act violations. Commenting on this
`
`recent lawsuit, Acting New Jersey Attorney General John J. Hoffman said “As demonstrated by
`
`
`
`3
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 4 of 13 PageID: 4
`
`its alleged actions, Telebrands cannot be trusted to do right by its customers or to even honor its
`
`own 2001 pledge to follow our consumer protection laws.”
`
`12.
`
`Acting Director of the New Jersey Division of Consumer Affairs, Steve Lee,
`
`summarized this recent lawsuit, saying, “This action against Telebrands alleges that consumers
`
`were repeatedly pressured through gimmickry, misrepresentations, and high-pressure sales
`
`tactics to buy products they didn't want . . . . What's just as unconscionable is that when
`
`consumers attempted to return unwanted products and obtain refunds, they allegedly couldn't
`
`reach actual customer service representatives and were subjected to return policies that differed
`
`from what was represented in ads and on the company's web site.”
`
`13.
`
`From 2012 through July 2014, the New Jersey Division of Consumer Affairs has
`
`received, either directly or indirectly, 340 consumer complaints regarding Telebrands’ business
`
`practices.
`
`14.
`
`If a consumer falsely or confusingly associated Telebrands’ Balloon Bonanza
`
`product with ZURU’s Bunch O Balloons product, Telebrands’ negative reputation with the
`
`consuming public would irreparably harm ZURU’s business reputation.
`
`Telebrands’ Acts of Infringement and Unfair Competition
`
`15.
`
`ZURU is the exclusive licensee of federal and common law rights in the product
`
`configuration trade dress of the Bunch O Balloons product.
`
`16.
`
`Prior to the launch of the Kickstarter campaign, Tinnus invested significant time
`
`and effort in the unique product configuration of the Bunch O Balloons product. Through the
`
`Kickstarter campaign and associated product sales, as well as the subsequent vast nationwide
`
`television and print media attention, the public has come to associate the unique product
`
`
`
`4
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 5 of 13 PageID: 5
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`configuration of the Bunch O Balloons product with Tinnus Enterprises (to which ZURU holds
`
`an assignment of rights and goodwill).
`
`17.
`
`Almost immediately after the Bunch O Balloons product began receiving media
`
`attention, Telebrands began its scheme to palm the product off as its own.
`
`18.
`
`The design of the Balloon Bonanza product is substantially similar (indeed,
`
`virtually identical) to, and likely to be confused with the well known and distinctive product
`
`configuration trade dress of ZURU’s Bunch O Balloons product.
`
`19.
`
`ZURU is also the exclusive licensee of federal and common law rights in the
`
`BUNCH O BALLOONS trademark, which is used in connection with the Bunch O Balloons
`
`product.
`
`20.
`
`ZURU’s BUNCH O BALLONS mark has been heavily advertised and promoted
`
`in connection with its goods and has garnered national and international recognition among the
`
`consuming public.
`
`21.
`
`Telebrands is marketing a virtually identical product in the identical marketplace
`
`under the mark BALLOON BONANZA.
`
`22.
`
`BUNCH O BALLOONS and BALLOON BONANZA are both compound words
`
`or terms, as both marks feature the term BALLOON, which describes or suggests features of
`
`the product, coupled with another term commonly used to signify a large amount of
`
`something—BUNCH or BONANZA. 1
`
`23.
`
`The use of alliteration with the multiple and repetitive “b” sounds are identical in
`
`BUNCH O BALLOONS and BALLOON BONANZA.
`
`
`1 See http://www.merriam-webster.com/dictionary/bonanza (defining “bonanza” as “a very large
`amount”).
`
`
`
`5
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 6 of 13 PageID: 6
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`24.
`
`Given the substantial similarities between the sound, meanings, and commercial
`
`impressions of the BUNCH O BALLOONS and BALLOON BONANZA marks, in addition to
`
`the identical or substantially similar nature of the goods and marketing channels of the parties,
`
`there is a likelihood of consumer confusion between these two marks, which falsely suggests a
`
`relationship of sponsorship, approval, or affiliation between the parties.
`
`25.
`
`ZURU is also the owner by assignment of U.S. Copyright Registration No. VA 1-
`
`935-444 protecting a work of visual arts containing photographs of the Bunch O Balloons
`
`product.
`
`26.
`
`The aforementioned copyright registration contains the following pictorial work:
`
`27.
`
`Telebrands’ buyballonbonanza.com website and associated marketing videos on
`
`that site, which are also broadcast on television and on YouTube, prominently feature multiple
`
`images that are substantially similar to the copyrighted image above, for example:
`
`
`
`
`
`28.
`
`Based on the widespread publicity of the Bunch O Balloons product, Telebrands
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`is presumed to have had access to the copyrighted images of the Bunch O Balloons product, and
`
`the product images reproduced on Telebrands’ website and publicly displayed in its TV
`
`commercial are substantially similar to the copyrighted work.
`
`
`
`6
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 7 of 13 PageID: 7
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`COUNT I
`Trade Dress Infringement (15 U.S.C. § 1125(a))
`
`29.
`
`Plaintiff re-alleges paragraphs 1-28 of this Complaint as if fully set forth herein.
`
`30.
`
`By making and marketing a product with an appearance virtually identical to the
`
`distinctive product configuration trade dress of ZURU’s Bunch O Balloons product in a manner
`
`which creates a likelihood of confusion among prospective purchasers, Telebrands is inducing
`
`purchasers and others to believe, contrary to fact, that the goods or services sold by Telebrands
`
`are rendered, sponsored, or otherwise approved by, or connected with ZURU, which acts of
`
`Telebrands have damaged and impaired that part of ZURU’s goodwill symbolized by the
`
`distinctive product configuration trade dress of its Bunch O Balloons product to ZURU’s
`
`immediate and irreparable damage.
`
`31.
`
`Telebrands’ use of a confusingly similar product configuration trade dress has
`
`resulted in a false designation of origin and a false and misleading representation within the
`
`meaning of Section 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125(a).
`
`32.
`
`Telebrands’ use of a confusingly similar product configuration trade dress
`
`constitutes unfair competition entitling ZURU to remedies pursuant to 15 U.S.C. §§ 1116 –
`
`1118.
`
`33.
`
`Telebrands’ acts of false designation of origin, false representation and false
`
`advertising have caused ZURU irreparable injury, loss of reputation and pecuniary damages.
`
`Unless enjoined by this court, Telebrands will continue the acts of unfair competition
`
`complained of herein to ZURU’s immediate and irreparable damage.
`
`
`
`7
`
`
`
`

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`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 8 of 13 PageID: 8
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`COUNT II
`Trademark Infringement (15 U.S.C. § 1125(a))
`
`34.
`
`Plaintiff re-alleges paragraphs 1-33 of this Complaint as if fully set forth herein.
`
`35.
`
`Telebrands has used and is using the BALLOON BONANZA mark, which is
`
`confusingly similar to ZURU’s BUNCH O BALLOONS mark, in connection with the
`
`advertising and sale of goods that are nearly identical to those of ZURU, in a manner which
`
`creates a likelihood of confusion among prospective purchasers, thereby inducing purchasers and
`
`others to believe, contrary to fact, that the goods or services sold by Telebrands are rendered,
`
`sponsored, or otherwise approved by, or connected with ZURU, which acts of Telebrands have
`
`damaged and impaired that part of ZURU’s goodwill symbolized by its BUNCH O BALLOONS
`
`mark to ZURU’s immediate and irreparable damage.
`
`36.
`
`Telebrands’ use of a confusingly similar mark has resulted in a false designation
`
`of origin and a false and misleading representation within the meaning of Section 43(a) of the
`
`Trademark Act of 1946, 15 U.S.C. § 1125(a).
`
`37.
`
`Telebrands’ use of the BALLOON BONANZA mark constitutes unfair
`
`competition entitling ZURU to remedies pursuant to 15 U.S.C. §§ 1116 – 1118.
`
`38.
`
`Telebrands’ acts of false designation of origin, false representation and false
`
`advertising have caused ZURU irreparable injury, loss of reputation and pecuniary damages.
`
`Unless enjoined by this court, Telebrands will continue the acts of unfair competition
`
`complained of herein to ZURU’s immediate and irreparable damage.
`
`
`
`8
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`

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`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 9 of 13 PageID: 9
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`COUNT III
`Common Law Trademark Infringement
`
`39.
`
`Plaintiff re-alleges paragraphs 1-38 of this Complaint as if fully set forth herein.
`
`40.
`
`Telebrands has used and is using the BALLOON BONANZA mark, which is
`
`confusingly similar to ZURU’s BUNCH O BALLOONS mark, in connection with the
`
`advertising and sale of goods that are nearly identical to those of ZURU, in a manner which
`
`creates a likelihood of confusion among prospective purchasers, thereby inducing purchasers and
`
`others to believe, contrary to fact, that the goods or services sold by Telebrands are rendered,
`
`sponsored, or otherwise approved by, or connected with ZURU, which acts of Telebrands have
`
`damaged and impaired that part of ZURU’s goodwill symbolized by its BUNCH O BALLOONS
`
`mark to ZURU’s immediate and irreparable damage.
`
`41.
`
`Telebrands’ acts of false designation of origin, false representation and false
`
`advertising have caused ZURU irreparable injury, loss of reputation and pecuniary damages.
`
`Unless enjoined by this court, Telebrands will continue the acts of unfair competition
`
`complained of herein to ZURU’s immediate and irreparable damage.
`
`COUNT IV
`New Jersey Consumer Fraud Act (N.J. Stat. Ann. § 56:8-2)
`
`42.
`
`Plaintiff re-alleges paragraphs 1-41 of this Complaint as if fully set forth herein.
`
`43.
`
`The acts of Telebrands discussed herein—including but not limited to intellectual
`
`property misappropriation, and consumer deception as to the source of goods, sponsorship,
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`approval, and/or affiliation—constitute unconscionable, deceptive, and unlawful commercial
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`practices pursuant to N.J. Stat. Ann. § 56:8-2.
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`44.
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`Telebrands’ acts in violation of the New Jersey Consumer Fraud Act have caused
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`ZURU irreparable injury, loss of reputation and pecuniary damages. Unless enjoined by this
`
`
`
`9
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`

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`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 10 of 13 PageID: 10
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`court, Telebrands will continue the acts of unfair competition complained of herein to ZURU’s
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`immediate and irreparable damage.
`
`COUNT V
`Copyright Infringement (17 U.S.C. § 501)
`
`45.
`
`Plaintiff re-alleges paragraphs 1-44 of this Complaint as if fully set forth herein.
`
`46.
`
`ZURU is the owner by assignment of U.S. Copyright Registration No. VA 1-935-
`
`444 protecting a work of visual arts containing photographs of the Bunch O Balloons product.
`
`47.
`
`Through the acts alleged above, Telebrands has violated ZURU’s exclusive rights
`
`to reproduce, publicly display, and create derivative works based on the copyrighted work.
`
`48.
`
`The photos and depictions of the Balloon Bonanza product are substantially
`
`similar to the copyrighted work of visual arts, and Telebrands is presumed to have had access to
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`copyrighted photos and other images of the Bunch O Balloons product due to the widespread
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`media attention that the product received.
`
`49.
`
`ZURU is entitled to damages from Telebrands in an amount to be proven at trial,
`
`including profits attributable to the infringement not taken into account in computing actual
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`damages under 17 U.S.C. § 504(b). ZURU is also entitled to statutory damages under 17 U.S.C.
`
`§ 504(c) based on Telebrands’ infringements after the date of copyright registration.
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`50.
`
`Telebrands’ infringement of ZURU’s exclusive rights has also caused ZURU
`
`irreparable injury. Unless restrained and enjoined, Telebrands will continue to commit such acts.
`
`ZURU’s remedies at law are not adequate to compensate it for these inflicted and threatened
`
`injuries, entitling it to remedies, including injunctive relief as provided by 17 U.S.C. § 502, and
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`an order impounding or destroying any and all infringing materials pursuant to 17 U.S.C. § 503.
`
`
`
`10
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`
`

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`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 11 of 13 PageID: 11
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`PRAYER FOR RELIEF
`
`WHEREFORE, ZURU requests that judgment be entered against Telebrands as follows:
`
`1.
`
`For a preliminary and permanent injunction restraining Defendant, its officers,
`
`agents, and employees, and those in active concert and participation with any of them, from the
`
`following:
`
`a.
`
`Copying, distributing, publicly displaying, or creating derivative works
`
`from ZURU’s copyrighted images in any way, including for any business purpose, except as
`
`allowed by express license from ZURU;
`
`b.
`
`Using or authorizing others to use or claiming rights in the BALLOON
`
`BONANZA name and mark or any other designation that is confusingly similar to BUNCH O
`
`BALLOONS in the advertising or sale of any related goods or services;
`
`c.
`
`Using or authorizing others to use in any manner any trademark,
`
`trademark, trade name, trade dress, words, numbers, abbreviations, designs, colors,
`
`arrangements, collocations, or any combinations thereof which would imitate, resemble or
`
`suggest the BUNCH O BALLOONS mark or the distinctive product configuration trade dress of
`
`the Bunch O Balloons product;
`
`d.
`
`Unfairly competing with ZURU, diluting the distinctiveness of ZURU’s
`
`marks or trade dress, and otherwise injuring ZURU’s business reputation in any manner.
`
`2.
`
`For an order pursuant to 17 U.S.C. § 503 directing Telebrands to deliver up for
`
`destruction any and all infringing materials in its possession or under its control that resemble
`
`ZURU’s copyrighted works.
`
`3.
`
`For an order pursuant to 15 U.S.C. § 1118 directing Telebrands to deliver up for
`
`destruction all advertisements, labels, signs, prints, packages, wrappers, receptacles, product
`
`11
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 12 of 13 PageID: 12
`
`configurations, and all other materials in its possession or under its control that resemble or
`
`suggest the BUNCH O BALLOONS mark or the distinctive product configuration trade dress of
`
`the Bunch O Balloons product, or any other reproduction, counterfeit, copy or colorable
`
`imitation of ZURU’s trademarks, trade names, or trade dress, and all plates, molds, matrices, and
`
`other means of making or duplicating the same.
`
`4.
`
`For an order pursuant to 17 U.S.C. § 504(b) ordering Telebrands to account and
`
`pay to ZURU damages in an amount to be proven at trial, including profits attributable to the
`
`infringement not taken into account in computing actual damages under. ZURU is also entitled
`
`to statutory damages under 17 U.S.C. § 504(c) based on Telebrands’ infringements after the date
`
`of copyright registration.
`
`5.
`
`For an order pursuant to 15 U.S.C. § 1117 and New Jersey common law ordering
`
`Telebrands to account and pay to ZURU damages in an amount sufficient to fairly compensate
`
`Plaintiffs for the injury it has sustained plus all profits which are attributable to the infringing
`
`sale of goods or services under the names and marks complained of herein.
`
`6.
`
`For an order pursuant to N.J. Stat. Ann. ordering Telebrands to account and pay to
`
`ZURU damages in an amount sufficient to fairly compensate Plaintiffs for the injury it has
`
`sustained, plus punitive treble damages.
`
`7.
`
`For an order pursuant to 15 U.S.C. § 1117, 17 U.S.C. § 505, and N.J. Stat. Ann.
`
`§ 56:8-19 ordering Telebrands to pay to ZURU the costs of this action and ZURU’s attorney
`
`fees.
`
`JURY DEMAND
`
`
`
`Pursuant to Fed. R. Civ. P. 38 (b), Plaintiffs hereby demand trial by jury on all issues so
`
`triable.
`
`
`
`12
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 1 Filed 01/27/15 Page 13 of 13 PageID: 13
`
`Respectfully submitted,
`
`ZURU Ltd.
`By Counsel
`
`_s/ Susan C. Cassell ____________________
`Susan C. Cassell (N.J. Bar No. 006831985)
`Law Office of Susan C. Cassell
`419 Lucille Court
`Ridgewood, NJ 07450
`Phone: 201-445-3894
`Fax: 201-445-3894
`cassell.susan@gmail.com
`
`Daniel Finnegan (Dist. N.J. admission pending)
`Thomas M. Dunlap (pro hac vice pending)
`David Ludwig (pro hac vice pending)
`Dunlap Bennett & Ludwig PLLC
`1717 Pennsylvania Avenue, NW
`Suite 1025
`Washington, DC 20006
`(202) 316-8558
`(202) 318-0242 (fax)
`dfinnegan@dbllawyers.com
`tdunlap@dbllawyers.com
`dludwig@dbllawyers.com
`
`Cortland C. Putbrese (pro hac vice pending)
`Dunlap Bennett & Ludwig PLLC
`2307 East Broad Street, Suite 301
`Richmond, VA 23223
`(703) 777-7319
`(703) 777-3656 (fax)
`cputbrese@dbllawyers.com
`
`Counsel for the Plaintiff
`
`13
`
`

`
`
`
`EXHIBIT 2
`EXHIBIT 2
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 174 Filed 12/11/15 Page 1 of 53 PageID: 2786
`
`Liza M. Walsh
`Hector D. Ruiz
`Katelyn O’Reilly
`CONNELL FOLEY LLP
`One Newark Center
`1085 Raymond Boulevard, 19th Floor
`Newark, New Jersey 07102
`Tel.: (973) 757-1100
`Fax: (973) 757-1090
`
`Attorneys for Defendant/Counterclaim Plaintiff
`Telebrands Corp.
`
`Robert T. Maldonado (admitted pro hac vice)
`Tonia A. Sayour
`Elana Araj (admitted pro hac vice) COOPER
`& DUNHAM LLP
`30 Rockefeller Plaza
`New York, New York 10112
`Tel.: (212) 278-0400
`Fax: (212) 391-0525
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`ZURU LTD.,
`
`Plaintiff,
`
`v.
`
`TELEBRANDS CORP.,
`
`Civil Action No. 15-CV-00548-CCC-MF
`
`Hon. Claire C. Cecchi, U.S.D.J.
`Hon. Mark Falk, U.S.M.J.
`
`Electronically Filed
`
`) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )
`
`Defendant.
`----------------------------------------------------------
`
`TELEBRANDS CORP.,
`
`Counter-Plaintiff,
`
`v.
`
`ZURU LTD., ZURU INC., ZURU TOYS
`INC. aka and/or dba ZURU TOYS LTD.
`TINNUS ENTERPRISES, LLC and
`TINNUS TECHNOLOGY, LLC,
`
`Counter-Defendants.
`
`DEFENDANT TELEBRANDS CORP.’S ANSWER TO COUNTS II, III, AND V
`AND SECOND AMENDED COUNTERCLAIMS
`
`3436883-1
`
`1
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 174 Filed 12/11/15 Page 2 of 53 PageID: 2787
`
`
`Defendant Telebrands Corp. (“Telebrands”), by and through its attorneys, hereby answers
`
`Counts II, III and V of the Complaint of Plaintiff ZURU Ltd. (“Zuru”). Counts I and IV are the
`
`subject of a pending motion to dismiss (Dkt. No. 47). Telebrands responds to the allegations as
`
`follows:
`
`AS TO THE ALLEGATIONS CONCERNING THE PARTIES
`
`1.
`
`Telebrands is without sufficient knowledge or information to form a belief as to the
`
`truth of the allegations contained in Paragraph 1 of the Complaint, and therefore denies those
`
`allegations.
`
`2.
`
`Telebrands admits that it is a New Jersey Corporation having a principal place of
`
`business at 79 Two Bridges Road, Fairfield, New Jersey. Telebrands also admits that it markets a
`
`product under the name Balloon Bonanza, but denies the remaining allegations contained in
`
`Paragraph 2 of the Complaint.
`
`AS TO THE ALLEGATIONS CONCERNING JURISDICTION AND VENUE
`
`3.
`
`4.
`
`Telebrands admits the allegations contained in Paragraph 3 of the Complaint.
`
`Telebrands admits the allegations contained in Paragraph 4 of the Complaint.
`
`AS TO THE ALLEGATIONS CONCERNING FACTS COMMON TO ALL COUNTS
`
`5.
`
`Telebrands is without sufficient knowledge to form a belief as to the truth of the
`
`allegations contained in Paragraph 5 of the Complaint, and therefore denies those allegations.
`
`6.
`
`Telebrands is without sufficient knowledge to form a belief as to the truth of the
`
`allegations contained in Paragraph 6 of the Complaint, and therefore denies those allegations.
`
`7.
`
`Telebrands is without sufficient knowledge to form a belief as to the truth of the
`
`allegations contained in Paragraph 7 of the Complaint, and therefore denies those allegations.
`
`3436883-1
`
`2
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 174 Filed 12/11/15 Page 3 of 53 PageID: 2788
`
`8.
`
`Telebrands is without sufficient knowledge to form a belief as to the truth of the
`
`allegations contained in Paragraph 8 of the Complaint, and therefore denies those allegations.
`
`9.
`
`Telebrands denies the allegations contained in Paragraph 9 of the Complaint.
`
`10.
`
`The allegations contained in Paragraph 10 of the Complaint are subject to a Motion
`
`to Strike filed concurrently herewith. Telebrands reserves the right to amend its Answer should
`
`the Motion to Strike be denied.
`
`11.
`
`The allegations contained in Paragraph 11 of the Complaint are subject to a Motion
`
`to Strike filed concurrently herewith. Telebrands reserves the right to amend its Answer should
`
`the Motion to Strike be denied.
`
`12.
`
`The allegations contained in Paragraph 12 of the Complaint are subject to a Motion
`
`to Strike filed concurrently herewith. Telebrands reserves the right to amend its Answer should
`
`the Motion to Strike be denied.
`
`13.
`
`The allegations contained in Paragraph 13 of the Complaint are subject to a Motion
`
`to Strike filed concurrently herewith. Telebrands reserves the right to amend its Answer should
`
`the Motion to Strike be denied.
`
`14.
`
`Telebrands denies the allegations contained in Paragraph 14 of the Complaint.
`
`AS TO THE ALLEGATIONS CONCERNING TELEBRANDS’ ACTS OF
`INFRINGEMENT AND UNFAIR COMPETITION
`
` Telebrands is without sufficient knowledge to form a belief as to the truth of the
`
`15.
`
`allegations contained in Paragraph 15 of the Complaint, and therefore denies those allegations.
`
`16.
`
`Telebrands is without sufficient knowledge to form a belief as to the truth of the
`
`allegations contained in Paragraph 16 of the Complaint, and therefore denies those allegations.
`
`17.
`
`Telebrands denies the allegations contained in Paragraph 17 of the Complaint.
`
`18.
`
`Telebrands denies the allegations contained in Paragraph 18 of the Complaint.
`
`3436883-1
`
`3
`
`

`
`Case 2:15-cv-00548-CCC-MF Document 174 Filed 12/11/15 Page 4 of 53 PageID: 2789
`
`19.
`
`Telebrands is without sufficient knowledge to form a belief as to the truth of the
`
`allegations contained in Paragraph 19 of the Complaint, and therefore denies those allegations.
`
`20.
`
`Telebrands is without sufficient knowledge to form a belief as to the truth of the
`
`allegations contained in Par