Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA831788
`07/07/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding.
`
`91234932
`
`Defendant
`iTaste Co., Ltd. Shanghai, China
`
`Plaintiff
`Juicero, Inc.
`
`No
`
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, iTaste
`Co., Ltd. Shanghai, China hereby requests suspension of this proceeding pending a final determination of the
`civil action. Trademark Rule 2.117.
`iTaste Co., Ltd. Shanghai, China has secured the express consent of all other parties to this proceeding for
`the suspension and resetting of dates requested herein.
`iTaste Co., Ltd. Shanghai, China has provided an email address herewith for itself and for the opposing party
`so that any order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`of record by Email on this date.
`Respectfully submitted,
`/Jedediah Wakefield/
`Jedediah Wakefield
`jwakefield@fenwick.com, dwalls-stewart@fenwick.com
`drwtrademarks@wolfgreenfield.com, sgstrademarks@wolfgreenfield.com, jlwtrade-
`marks@wolfgreenfield.com
`07/07/2017
`
`

`

`IN THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of
`Trademark Application No. 87/179,253
`Mark: JUISIR
`Filed: September 21, 2016
`
`
`Juicero, Inc.,
`
`
`
`
`
`Opposer,
`
`
`)
`)
`
`) Opposition No. 91234932
`
`)
`
`)
`
`v.
`)
`
`
`iTaste Co., Ltd., )
`
`
` )
`
`
`)
`
`
`)
`
`
`
`
`Applicant.
`
`
`CONSENT MOTION TO SUSPEND
`PENDING OUTCOME OF CIVIL ACTION
`
`Applicant, iTaste Co., Ltd. (“Applicant”) hereby moves to suspend the above-captioned
`
`opposition proceeding pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a) pending
`
`termination of a civil proceeding (the “Civil Action”) that may be dispositive of the opposition.
`
`The Civil Action was brought by Juicero, Inc. (“Opposer”) against Applicant in the United States
`
`District Court for the Northern District of California, Case No. 5:17-cv-01921-BLF. A copy of
`
`the Amended Complaint filed in the Civil Action is attached hereto as Exhibit 1.
`
`ARGUMENT
`
`Opposer has filed an opposition against Applicant’s U.S. Application Serial No.
`
`87/179,253 for the JUISIR mark claiming first use rights in the JUISIR mark predating
`
`Applicant’s rights. The pending Civil Action involves issues of fact and law that are common to
`
`the opposition proceeding because the Civil Action includes claims based on Opposer’s claims
`
`for trademark infringement under the Lanham Act and common law trademark infringement
`
`based on the JUISIR mark. Accordingly, suspension of the opposition proceeding is proper, as
`
`

`

`the Board has indicated that “[o]rdinarily, the Board will suspend proceedings in the 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), 37 C.F.R. § 2.117. The trial court’s findings of fact and law
`
`regarding alleged trademark infringement of Opposer’s JUICERO mark by Applicant, an issue at
`
`the foundation of Opposer’s opposition, will likely be binding on the Trademark Trial and
`
`Appeal Board, and may be dispositive of the matters at issue herein. See Arcadia Grp. Brands
`
`Ltd., 99 U.S.P.Q.2d 1134 (T.T.A.B. Jan. 6, 2011) (stating that “[i]t is the policy of the Board to
`
`suspend proceedings when the parties are involved in a civil action which may be dispositive of
`
`or have a bearing on the Board case” and that “the federal court determination of a trademark
`
`issue normally has a binding effect in subsequent proceedings before the Board involving the
`
`same parties and issue”).
`
`Suspension is proper where, as here, most if not all of the issues in the opposition
`
`proceeding will be decided by the district court. The test for suspension is not whether all of the
`
`issues raised in the parallel proceeding will dispose of the issues raised in the opposition
`
`proceeding, but whether final determination of the issues will have a bearing on the issues before
`
`the Board. See The Other Tel. Co., 181 U.S.P.Q. 125 (T.T.A.B. Feb. 11, 1974) (“The only
`
`question for determination . . . is whether the outcome of the civil action will have a bearing on
`
`the issues involved in the opposition proceeding.”); Argo & Co. v. Carpetsheen Manufacturing,
`
`Inc., 187 USPQ 366, 367 (T.T.A.B. 1995) (suspension granted for opposition because state court
`
`litigation which would decide applicant’s ownership of mark “may have a bearing on the
`
`question of applicant’s right of registration”); Whopper-Burger, Inc. v. Burger King, Inc., 171
`
`USPQ 805, 807 (T.T.A.B. 1971) (suspension granted in cancellation proceeding where complaint
`
`Mark: JUISIR
`Opposition No.: 91234932
`
`2
`
`

`

`sought to enjoin defendant from using mark and requested cancellation of the mark). This is the
`
`case here, as the federal court litigation may have a bearing on Applicant’s right of registration.
`
`
`
`In addition to guiding the Board on issues common to both proceedings, the district
`
`court’s resolution of the dispute would decide other issues not before the Board. For example,
`
`the Civil Action involves claims of trademark infringement, patent infringement, trade dress
`
`infringement, false designation of origin, and unfair competition, among other claims, and seeks
`
`injunctive relief and monetary damages. Accordingly, the opposition proceeding cannot dispose
`
`of all the issues before the district court, while the district court proceedings may dispose of
`
`most, if not all, of the issues involved in the opposition proceeding.
`
`Further, if both proceedings move forward simultaneously, two separate tribunals would
`
`be caused to go to the expense and effort of dealing with issues that could be better resolved in
`
`one—the district court—because of its more comprehensive jurisdiction to consider all of the
`
`issues.
`
`CONCLUSION
`
`The interests of judicial economy and judicial consistency, reflected in well established
`
`law and practice, require that the Board suspend the present opposition proceeding until
`
`termination of the civil litigation. Accordingly, Applicant respectfully urges the Board to enter
`
`an order to that effect. If this request is denied, Applicant requests in the alternative that the
`
`Board set a new schedule for the discovery conference and the discovery and testimony periods.
`
`Counsel for Opposer was contacted prior to filing of this Motion, and consents to the
`
`request for suspension. A certificate of service accompanies this Motion.
`
`Mark: JUISIR
`Opposition No.: 91234932
`
`
`
`3
`
`

`

`
`
`Dated: July 7, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Jedediah Wakefield/
`
`Jedediah Wakefield
`Attorney for Applicant
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone:
`415.875.2300
`Facsimile:
`415.281.1350
` Email: jwakefield@fenwick.com
`
`Mark: JUISIR
`Opposition No.: 91234932
`
`4
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on July 7, 2017, a true and complete
`
`copy of the accompanying MOTION TO SUSPEND PENDING OUTCOME OF CIVIL
`
`ACTION was served by email upon the following:
`
`Stephanie G. Stella
`Wolf Greenfield & Sacks PC
`600 Atlantic Avenue
`Federal Reserve Plaza
`Boston, MA 02210
`drwtrademarks@wolfgreenfield.com, sgstrademarks@wolfgreenfield.com,
`jlwtrademarks@wolfgreenfield.com
`
`
`Dated: July 7, 2017
`
`FENWICK & WEST LLP
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone:
`415.875.2300
`Facsimile:
`415.281.1350
`
`
`
`Email: jwakefield@fenwick.com
`
`
`
`
`
`/Jedediah Wakefield/
`By:
` Jedediah Wakefield
`
`Attorneys for Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mark: JUISIR
`Opposition No.: 91234932
`
`5
`
`

`

`
`
`
`
`
`Exhibit 1
`Exhibit 1
`
`
`
`
`
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 1 of 29
`
`
`
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`Kevin P.B. Johnson (Bar No. 177129)
`kevinjohnson@quinnemanuel.com
`Brett Arnold (Bar No. 266740)
`brettarnold@quinnemanuel.com
`Margaret Shyr (Bar No. 300253)
`margaretshyr@quinnemanuel.com
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, California 94065-2139
`Telephone:
`(650) 801-5000
`Facsimile:
`(650) 801-5100
`
`Joseph Milowic III (pro hac vice forthcoming)
`josephmilowic@quinnemanuel.com
`51 Madison Ave., 22nd Floor
`New York, NY 10010
`Telephone:
`(212) 849-7000
`Facsimile:
`(212) 849-7100
`
`
`Attorneys for Juicero Inc.
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`JUICERO, INC., a Delaware corporation,
`
`
`Plaintiff,
`
`
`
`vs.
`
`
`iTASTE CO., LTD., a/k/a iTaste Co., Ltd.
`Shanghai, China and Shanghai iTaste
`Electronics Technology Co., Ltd., d/b/a Juisir;
`FROOTHIE USA LLC, a Delaware limited
`liability company; and
`XIUXING “LEO” CHEN, an individual,
`
`
`Defendants.
`
`
`
`
` CASE NO. 5:17-cv-1921-BLF
`
`JUICERO, INC.’S AMENDED
`COMPLAINT FOR PATENT
`INFRINGEMENT, TRADE DRESS
`INFRINGEMENT, TRADEMARK
`INFRINGEMENT, UNFAIR
`COMPETITION, AND UNJUST
`ENRICHMENT
`
`
`DEMAND FOR JURY TRIAL
`
`Juicero, Inc. (“Juicero”) complains against iTaste Co., Ltd. also known as iTaste Co., Ltd.
`
`Shanghai, China, and Shanghai iTaste Electronics Technology Co., Ltd., d/b/a Juisir (“iTaste”);
`
`Froothie USA LLC (“Froothie”); and Xiuxing “Leo” Chen (“Chen”) as follows:
`
`INTRODUCTION
`
`1.
`
`Juicero is revolutionizing the home juicing industry. Founded in 2013 by Doug
`
`Evans, Juicero began with a vision to increase access to instant, healthy, and fresh plant-based
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
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`13
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`14
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`15
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`16
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`21
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`22
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`23
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`24
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`25
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`26
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`27
`
`28
`
`
`
`Case No. 5:17-cv-1921-BLF
`
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 2 of 29
`
`
`
`nutrients. Through its innovative, cutting-edge product, the Juicero Press, Juicero is changing how
`
`people access fresh-squeezed, nutrient-dense juice in there own homes.
`
`2.
`
`From its modest beginnings in Doug Evans’ apartment, Juicero now operates its
`
`own warehouse and office facilities in San Francisco, California.
`
`3.
`
`Juicero’s innovations in cold-press juicing have given rise to various intellectual
`
`property rights, including utility patent, trademark, and trade dress protection, with pending design
`
`patent applications as well. The Juicero Press has received substantial media coverage and praise.
`
`4.
`
`Defendants iTaste and Leo Chen have just recently promoted and announced the
`
`imminent release of their own cold-press juicer. But instead of developing their own juicing
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`product, Defendants chose to copy Juicero’s innovative technology and recognizable design,
`
`11
`
`seeking to trade on Juicero’s commercial recognition and goodwill and to freeride on Juicero’s
`
`12
`
`investment in research, development, and marketing. Froothie has partnered with iTaste and Chen
`
`13
`
`to import and sell the infringing device in the United States.
`
`14
`
`5.
`
`By this action, Juicero seeks to put an end to Defendants’ unlawful conduct and to
`
`15
`
`stop and reverse the harm that Juicero has and will have suffered.
`
`16
`
`17
`
`6.
`
`Juicero, Inc. is a Delaware corporation with its principal place of business at 2001
`
`THE PARTIES
`
`18
`
`Bryant Street, San Francisco, California.
`
`19
`
`20
`
`21
`
`7.
`
`On information and belief, iTaste is a Chinese limited company, located at Suite
`
`201, Block 20, No. 1188 Huyi Road, Nanxiang County, Jiading District, Shanghai (上海市嘉定区
`
`南翔镇沪宜公路1188号20幢201室). On information and belief, iTaste Co., Ltd. is also known as
`
`22
`
`iTaste Co., Ltd. Shanghai, China and Shanghai iTaste Electronics Technology Co., Ltd. On
`
`23
`
`information and belief, the PRC uniform social credit code for iTaste is 91310114590435978E.
`
`24
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`25
`
`On information and belief, the Chinese company name is 上海爱味电子科技有限公司.
`
`8.
`
`On information and belief, Froothie USA LLC, is a Delaware limited liability
`
`26
`
`company, located at 1679 S. Dupont Hwy, Suite 100, Dover, Delaware 19901-5164.
`
`27
`
`9.
`
`On information and belief, Xiuxing “Leo” Chen, also known as 陈秀星, is a
`
`28
`
`resident of Shanghai, China and Singapore and works at Suite 201, Block 20, No. 1188 Huyi
`
`
`
`Case No. 5:17-cv-1921-BLF
`-2-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 3 of 29
`
`
`
`Road, Nanxiang County, Jiading District, Shanghai (上海市嘉定区南翔镇沪宜公路1188号20幢
`
`201室). Chen is the co-founder and CEO of iTaste. iTaste and Chen do business and hold
`
`themselves out to consumers under the name Juisir; they are referred to collectively in this
`
`complaint as “Defendants” and “iTaste”.
`
`JURISDICTION AND VENUE
`
`10.
`
`This Court has subject matter jurisdiction under 15 U.S.C. §§ 1114, 1125, and 28
`
`U.S.C. §§ 1331, 1332, 1338(a), and 1338(b).
`
`11.
`
`This Court has supplemental jurisdiction over the state law claims under 28 U.S.C.
`
`§ 1367, in that the facts underlying the state law claims are so related to the federal patent,
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`trademark, and trade dress claims that they form part of the same case or controversy under Article
`
`11
`
`III of the United States Constitution.
`
`12
`
`12.
`
`Defendants are subject to personal jurisdiction in this Court because, inter alia, and
`
`13
`
`upon information and belief, Defendants directly and through agents regularly solicit and transact
`
`14
`
`business in the Northern District of California and elsewhere in the state of California, including
`
`15
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`through their own websites (http://www.juisir.com/ and https://www.froothie.com/); KickStarter
`
`16
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`and Indiegogo (https://www.kickstarter.com/projects/1793272089/juisir-juicing-without-the-
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`17
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`cleaning and https://www.indiegogo.com/projects/juisir-zero-cleaning-maximum-juice#/);
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`Facebook (https://www.facebook.com/juisir and https://www.facebook.com/FroothieUSA/);
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`19
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`YouTube (e.g., https://www.youtube.com/channel/UC5opz401fI7QqJKf1sTUoxQ and https://
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`www.youtube.com/watch?v=drBWXtZIoC8); Twitter (https://twitter.com/Juisirlife); and
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`Instagram (https://www.instagram.com/juisirlife/ and https://www.instagram.com/froothie/).
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`22
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`13.
`
`In particular, Defendants have committed and continue to commit acts of
`
`23
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`infringement in violation of 35 U.S.C. § 271, 15 U.S.C. § 1114, and 15 U.S.C. § 1125, and have
`
`24
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`offered for sale, sold, marketed, used, and/or imported infringing products in the State of
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`California, including in this District. Defendants’ acts cause injury to Juicero, including within
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`this District.
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`14.
`
`Venue is proper in this District under the provisions of 28 U.S.C. §§ 1391(b)-(c)
`
`28
`
`and 28 U.S.C. § 1400(b), because (i) a substantial part of the events or omissions giving rise to the
`
`
`
`Case No. 5:17-cv-1921-BLF
`-3-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 4 of 29
`
`
`
`claims occurred in this judicial district, (ii) Defendants are subject to this Court’s personal
`
`jurisdiction with respect to this action, and/or (iii) Defendants are not residents of the United
`
`States.
`
`INTRADISTRICT ASSIGNMENT
`
`15.
`
`Because this action is an Intellectual Property Action within the meaning of Civil
`
`Local Rule 3-2(c), the action is to be assigned on a district-wide basis.
`
`FACTS COMMON TO ALL CLAIMS
`
`Juicero’s Innovation and Industry Recognition
`
`16.
`
`Juicero is a recognized leader in the home juicing industry. Through its significant
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`1 2 3 4 5 6 7 8 9
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`10
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`investment in research and development over the past four years, Juicero has developed
`
`11
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`innovative, cutting-edge technologies that have changed the home juicing landscape.
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`12
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`17.
`
`Doug Evans, the founder and original CEO of Juicero, built the initial Juicero
`
`13
`
`Press prototypes in his kitchen. After his mother died of cancer and his father of heart disease,
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`14
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`Evans set out on a mission to understand healthy nutrition and to devote his life and career to
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`enhancing people’s access to organic, plant-based nutrients. Doug collaborated with Paul Katz
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`and developed a first design and prototype that they began testing in the summer of 2014. It took
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`until the fall of 2015 to entirely revise the design based on their learnings. The Juicero Press (also
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`known simply as “the Juicero”) is the culmination of that work. After devoting over three years to
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`the project, and developing twelve prototypes, Evans, along with Paul Katz, invented the
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`technology at the heart of the Juicero.
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`18.
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`In 2016, Juicero released its cold-press juicer to the public. The Juicero features a
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`sleek, minimalist, and iconic design, and under the hood it boasts a revolutionary cold-press that
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`delivers thousands of pounds of force to extract high-nutrient juice from fresh produce provided in
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`the Juicero Produce Pack without generating either heat or a mess, with no cleanup of the juice
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`machine required, all on the kitchen counter. The design of the Juicero was meant to create a
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`beautiful, optimistic, and playful appearance that was luxurious yet approachable, while the
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`product’s interior contained innovative technology that would be game changing for the home
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`juicing industry.
`
`
`
`Case No. 5:17-cv-1921-BLF
`-4-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 5 of 29
`
`
`
`19. The innovative technology and stunning design of the Juicero were quickly
`
`
`
`
`
`recognized. It was named a Gold Winner at the 2016 San Francisco Design Awards, which
`
`described it as a “beautiful countertop juicer,” “the first accessible at-home cold-pressed juicing
`
`system,” and “a compact, beautiful, and easy-to-use device that requires zero cleanup after use.”1
`
`It received the Editor’s Choice Award at the 2016 Hotel Experience trade show, which praised it
`
`for creating “the first ever professional-quality, countertop cold-press juicer,” able to “press[]
`
`plant-based organic Produce Packs that are delivered 100% fresh in minutes, at the touch of a
`
`button, eliminating all the typical prep and cleanup.”2 It earned an honorable mention in the
`
`Health category at the 2016 Innovation by Design Awards issued by Fast Company.3 And an
`
`Innovation Award in 2017 from the National Association of College and University Food Service.
`
`20. Modern juicers look much different than the Juicero. They have large reservoirs
`
`for storing juice, elevated bowls for holding produce, jutting spigots, and lots of knobs, switches,
`
`buttons, handles, and parts that have to be removed and washed after each use.
`
`
`
`1 https://design100.com/SFO16/entry_details.asp?ID=15391.
`
`2 http://www.thehotelexperience.com/HX2016/Public/ShowPressRelease.aspx?PRID=24.
`
`3 https://www.fastcodesign.com/product/the-juicero-press-and-packs.
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`
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`Case No. 5:17-cv-1921-BLF
`-5-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 6 of 29
`
`Omega NC800
`
`Breville 800 JEXL
`
`
`
`
`
`
`Kuvings NS-950 Silent
`
`Nutri-Stahl Juicer Machine
`
`
`
`
`
`
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`
`
`
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`21.
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`Modern juicers work much differently as well. Unlike other juicers, the Juicero
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`accepts pouches of fresh produce that are pressed inside the machine to extract nutrient-rich juice.
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`There are no blades, grinders, spigots, or other parts that require disassembly or cleaning after
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`each use. Due to the unique design of the Juicero Press, which utilizes produce-filled packs,
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`neither the produce or juice ever comes in contact with the device.
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`Case No. 5:17-cv-1921-BLF
`-6-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 7 of 29
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`22.
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`Juicero and its investors have devoted considerable time and resources in
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`designing and developing the innovative Juicero Press and bringing it to market.
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`23.
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`The Juicero has also been advertised and featured extensively throughout the
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`United States, including through Juicero’s own social media and advertising, as well as feature
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`stories in national publications such as The New York Times, Vogue, InStyle, Wired, goop,
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`BusinessInsider, TechCrunch, and mbg (mindbodygreen). The vast majority of the advertisements
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`and articles about the Juicero Press focus on its unique technological solution and its distinctive
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`design, noting for instance that “[o]ther makers of high-end countertop juicers and blenders for
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`home use, like Kuvings, Cuisinart or Vita-Mix Corp., aren’t offering these types of devices yet.”4
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`Goop.com called Juicero the “Coolest Invention of 2016.”5 Vogue touted it as the “Completely
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`Mess-Proof Juicer That Will Change Your Life.”6 Wired said it was “an attractive gadget” that
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`was “a clever reinvention of an appliance that hasn’t changed much, despite the popularity of what
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`it makes.”7 And mindbodygreen.com called it the “New Juicer That Makes The Best Green Juice
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`
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`4 https://techcrunch.com/2016/03/31/investors-pour-70-million-into-juicero-a-smart-kitchen-
`appliance-maker/.
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`5 http://goop.com/the-coolest-invention-of-2016-cold-pressed-juice-at-home-with-no-mess/.
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`6 http://www.vogue.com/article/juicero-cold-pressed-juice-home-juicer-no-mess.
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`7 https://www.wired.com/2016/05/juicero-yves-bhar/.
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`Case No. 5:17-cv-1921-BLF
`-7-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 8 of 29
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`
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`We’ve Ever Had.”8 As a result of this and other publicity, the Juicero Press has become uniquely
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`associated with Juicero in the minds of consumers.
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`Juicero’s Utility Patent
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`24.
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`On November 15, 2016, the USPTO issued U.S. Patent No. 9,493,298 titled
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`“Juicing Systems and Methods” (hereinafter the “’298 patent”). The patent names Doug Evans
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`and Paul Katz as inventors, and identifies Juicero as the assignee. A true and correct copy of the
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`’298 patent is attached hereto as Exhibit A.
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`25.
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`Juicero is the owner of all right, title, and interest in and to the ’298 patent with the
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`full and exclusive right to bring suit to enforce the patent, including the right to recover for past
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`infringement.
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`26.
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`Through the extensive and consistent advertising, promotion, and publicity of the
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`Juicero Trade Dress
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`13
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`Juicero Press, Juicero has obtained and holds trade dress protection in the design and appearance
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`14
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`of the device.
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`15
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`27.
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`The following non-functional elements of the design of the Juicero Press comprise
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`16
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`some of the product configuration trade dress at issue in this case (the “Juicero Trade Dress”):
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`• Symmetrical, upright juicer
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`• Flat front surface on upper portion of device
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`• Single button on front surface
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`• Teardrop or “chin” contour on front surface
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`• Sculpted cavity below front surface
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`• Smooth, rounded, minimalist sides and back
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`• Contour of body follows contour of front surface.
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`
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`8 http://www.mindbodygreen.com/0-24424/the-new-juicer-that-makes-the-best-green-juice-
`weve-ever-had.html.
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`Case No. 5:17-cv-1921-BLF
`-8-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 9 of 29
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`28.
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`These elements of the Juicero Trade Dress are distinctive and serve to identify
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`Juicero as the source of the Juicero Press. Juicero has made substantial sales in the United States
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`of products with the Juicero Trade Dress. Juicero has spent substantial money and resources to
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`advertise, market, and promote the Juicero Trade Dress through online and print media in the
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`United States. The Juicero has also received significant coverage in digital, broadcast, online, and
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`print media around the United States. As a result of continued and widespread commercial use
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`and success, as well as advertising, publicity, and promotion, the consuming public has come to
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`recognize the shape and design of the Juicero Trade Dress, which is nonfunctional and distinctive,
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`and to associate it with a single source, namely, Juicero.
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`Juicero Trademark
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`29.
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`30.
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`31.
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`Juicero is also the owner of federal registrations for the trademark JUICERO.
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`Juicero first applied to register the mark with the USPTO on May 16, 2013.
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`On August 9, 2016, the USPTO issued registration number 5,018,238 (the “’238
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`registration”) for use of JUICERO with, among other things, “Kitchen appliances, namely, electric
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`juice extractors, grinders, electric food processors, electric dispensers and fillers for dispensing
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`ground produce or juice into bottles or pouches or cartridges.” A true and correct copy of the ’238
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`registration is attached hereto as Exhibit B.
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`32.
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`On January 17, 2017, the USPTO issued registration number 5,124,576 (the “’576
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`19
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`registration”) for use of JUICERO in association with “Retail store services featuring juice,
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`juicing equipment, components for juicing equipment and produce for juicers; and online retail
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`store services featuring juice, juicing equipment, components for juicing equipment and produce
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`for juicers.” A true and correct copy of the ’576 registration is attached hereto as Exhibit C.
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`33.
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`Juicero’s use of JUICERO in commerce, including in connection with juicer
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`products and services, has been continuous since at least June 2016. Juicero has spent substantial
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`time and money advertising and promoting the JUICERO brand in the United States. Due in part
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`to these efforts, the JUICERO brand has come to be associated with Juicero’s products and
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`services and has acquired secondary meaning in the minds of U.S. consumers.
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`
`Case No. 5:17-cv-1921-BLF
`-9-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 10 of 29
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`
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`iTaste’s Infringing Product
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`34.
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`iTaste has offered for sale, sold, used, and/or marketed in the United States, and/or
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`imported into the United States, its Juisir cold-press juicing product. The Juisir, shown below,
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`mimics and infringes Juicero’s intellectual property rights.
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`
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`35.
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`Instead of developing its own technology and product design, iTaste chose to copy
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`Juicero’s innovative product, including both the technological solution and the distinctive form.
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`36.
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`Numerous commenters have already recognized iTaste’s blatant copying:
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`•
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`•
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`In response to a Forbes article about the Juisir and its debut at CES 2017, one reader
`told the magazine that “[y]ou should at least mention the Juicero in your story since
`this machine looks like an almost direct clone of that product.”9
`
`In response to a TechCrunch article about the Juicero, a commenter cited the Juisir
`Kickstarter page and called it a “Chinese knock off being launched at the moment.”10
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`• An article by The Spoon called the Juisir the “first clone” of the Juicero, noting that
`“[r]ecently at CES, a Juicero clone by the name of Juisir was on display and, before
`long, the product showed up on Kickstarter. (Interesting story about the man behind
`Juisir, Leo Chen, a Chinese pharmaceutical heir who had a previous hit with his
`
`
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`9 https://www.forbes.com/sites/bensin/2017/01/16/why-the-heir-to-chinas-pharmaceutical-
`giant-left-his-job-to-make-a-cold-press-juice-machine/#6fa229df1cba.
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`10 https://techcrunch.com/2017/01/17/juicero/.
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`Case No. 5:17-cv-1921-BLF
`-10-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 11 of 29
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`
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`Nespresso clone for tea).”11
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`• Even a website advertising the Juisir noted its status as a fast-follower, saying the
`“JUISIR follows in the footsteps of the uber-convenient Juicero in making juicing
`close to effortless.”12
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`•
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`In response to an article on Core77.com about the Juisir, readers called it a “ripoff” of
`the Juicero, which they recognized as the “original”.13
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`• And in a Reddit.com post about the Juisir, commenters called it a “blatant rip off” of
`the Juicero and noted how it “looks and functions similar to Juicero.”14
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`37.
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`iTaste’s original webpage for the Juisir even copied the design of Juicero’s
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`webpage, down to the tagline:
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`• Juicero: “Make organic, cold-pressed juice at home every day, at the push of a button.”
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`•
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`iTaste: “Cold-pressed juice at home every day at the push of a button.”
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`38.
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`Defendants had innumerable design options for their product that would not
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`embody the same combination of elements as the ’298 patent or the Juicero Trade Dress.
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`Nevertheless, Defendants chose to infringe Juicero’s patent, trademark, and trade dress rights
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`through the design, configuration, and promotion of their Juisir product, and did so willfully to
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`trade upon the goodwill that Juicero has developed in connection with the Juicero Press.
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`Infringement of Juicero’s Utility Patent
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`39.
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`The Juisir product infringes the ’298 patent and thereby unlawfully provides
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`Defendants with unique functionality for their product that was the result of Juicero’s investment
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`and innovation
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`40.
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`For example, the Juisir product infringes at least claim 3 of the ’298 patent, as it
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`includes: (1) a region that receives juicer cartridges (called “juice packs,” “J-Packs,” or “juicing
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`bags”), with the cartridges having both an outlet and food matter inside; (2) a pressing element
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`11 http://thespoon.tech/juicero-drops-price-300-as-first-clone-comes-to-market/
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`12 https://www.gearhungry.com/juisir-cold-press-juicer/
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`13 http://www.core77.com/projects/59758/JUISIR%E2%80%94Juicing-Without-the-Mess
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`14 https://www.reddit.com/r/gadgets/comments/5pvcj9/juisir_gets_you_juicing_without_the_
`cleaning_in/
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`Case No. 5:17-cv-1921-BLF
`-11-
`
`JUICERO, INC.’S AMENDED COMPLAINT FOR PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT,
`TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND UNJUST ENRICHMENT
`
`
`
`

`

`Case 5:17-cv-01921-BLF Document 19 Filed 04/14/17 Page 12 of 29
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`
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`that applies pressure to the juicer cartridge to extract fluid from it without the fluid or food matter
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`touching the machine; and (3) a dis