Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA836477
`
`Filing date:
`
`07/31/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91235167
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Viet Phu, Inc.
`
`REBECCA LIEBOWITZ
`VENABLE LLP
`PO BOX 34385
`WASHINGTON, DC 20043
`UNITED STATES
`Email: trademarkdocket@venable.com, rliebowitz@venable.com
`
`Motion to Dismiss - Rule 12(b)
`
`Rebecca Liebowitz
`
`rliebowitz@venable.com, trademarkdocket@venable.com
`
`/Rebecca Liebowitz/
`
`07/31/2017
`
`Red Boat Motion To Dismiss - Pleading.pdf(69071 bytes )
`Red Boat Motion To Dismiss - Exhibit A.pdf(734593 bytes )
`Red Boat Motion To Dismiss - Exhibit B.pdf(1601473 bytes )
`Red Boat Motion To Dismiss - Exhibit C.pdf(30106 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`____________________________________
`
`Opposition No. 91235167
`Application Serial No. 87/179976
`
`)
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`Anhing Corporation
`
`Opposer,
`
`vs.
`
`Viet Phu, Inc.
`
`)
`Applicant.
`____________________________________)
`
`APPLICANT’S MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM
`
`Applicant, Viet Phu Inc., respectfully moves to dismiss the pending Opposition for
`
`failure to state a claim upon which relief may be granted, pursuant to Rule 12(b) of the Federal
`
`Rules of Procedure and TBMP § 503.
`
`This motion is supported by the accompanying Memorandum.
`
`Date: July 31, 2017
`
`Respectfully submitted,
`
`_______________________
`Rebecca A. Liebowitz
`VENABLE LLP
`PO Box 34385
`Washington, DC 20043-9998
`Telephone: (202) 344-4976
`
`Attorneys for Applicant
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`____________________________________
`
`Opposition No. 91235167
`Application Serial No. 87/179976
`
`)
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`Anhing Corporation
`
`Opposer,
`
`vs.
`
`Viet Phu, Inc.
`
`)
`Applicant.
`____________________________________)
`
`APPLICANT’S MEMORANDUM IN SUPPORT OF MOTION TO DISMISS FOR
`FAILURE TO STATE A CLAIM
`
`Applicant, Viet Phu, Inc. (“Applicant”), respectfully submits this memorandum in
`
`support of its motion to dismiss for failure to state a claim, pursuant to Rule 12(b) of the Federal
`
`Rules of Procedure and TBMP § 503. Specifically, the Opposer fails to state a claim because (1)
`
`there is issue preclusion and (2) Opposer cannot be harmed and therefore lacks standing.
`
`INTRODUCTION
`
`Opposer is barred by issue preclusion, as well as lack of standing, from bringing this
`
`opposition proceeding. On June 17, 2013, Opposer filed a complaint in the Central District of
`
`California against Applicant alleging, among other things, that Applicant’s use of
`
`

`

`for various food products infringed Opposer’s trademark rights in its
`
`and
`
`trademarks. On September 18, 2014, the Central District of California issued
`
`its Judgment Regarding the Jury Verdict finding no likelihood of confusion between the marks.
`
`Opposer appealed four issues to the Ninth Circuit, each of which were rejected on November 4,
`
`2016. Opposer did not seek further review, and the decision that there is no likelihood of
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`confusion between the marks is final.
`
`The Court’s decision in the prior litigation is conclusive as to Opposer’s ability to
`
`oppose the same mark based on likelihood of confusion and, therefore, Opposer is barred from
`
`bringing this opposition. Moreover, because a Court has already ruled that the marks are not
`
`confusingly similar, Opposer cannot have a reasonable good faith belief it will be damaged by
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`the registration of this mark and, accordingly, Opposer lacks standing to oppose.
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`Based on the foregoing, Opposer’s Opposition should be dismissed with prejudice.
`
`BACKGROUND
`
`The following facts are drawn from the Notice of Opposition filed in this proceeding,
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`records on file with the United States Patent and Trademark Office, and filings/orders from the
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`Central District of California case (attached as Exhibits as referenced below).
`
`

`

`1.
`
`On June 17, 2013, Opposer filed a complaint in the Central District of California
`
`(“California Action”) against Applicant alleging Applicant’s use of
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`for “Asian food
`
`products,” as well as “fish sauce” specifically, infringed Opposer’s trademark rights in its
`
`and
`
`trademarks used in connection with various Asian food products, as well
`
`as fish sauce specifically. See ¶23 – 24 and ¶43-51 of the complaint filed in the California
`
`Action (“Complaint”) (attached hereto as Exhibit B).
`
`2.
`
`In the Complaint, Opposer claimed ownership of, and claimed infringement of,
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`various trademarks including US Registration Number 1266472(for the mark
`
`) and US
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`Serial Number 85/335154 (for the mark
`
`)(which has since issued as Registration
`
`Number 4366660)(“Opposer’s Marks”). See ¶24 of the Complaint.
`
`3.
`
`On September 18, 2014, the Central District of California issued its Judgment
`
`Regarding Jury Verdict finding no likelihood of confusion between the marks
`
`(“Judgment”)(attached hereto as Exhibit C).
`
`4.
`
`On September 22, 2016, Applicant filed an application to register the following
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`mark:
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`(“Applicant’s Mark”) Serial No. 87/179976 (“Applicant’s Application”), pursuant to
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`Section 1(a) of the Lanham Act, based on Applicant’s use of the mark in commerce since
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`February 3, 2011, for goods identified as: “Fish sauce; salt” in International Class 30.
`
`

`

`5.
`
`On June 20, 2017, Opposer commenced this opposition proceeding
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`(“Opposition”)(attached hereto as Exhibit C).
`
`6.
`
`In the Opposition, Opposer claims Applicant’s Mark is confusingly similar to
`
`Opposer’s Marks. See ¶6 of the Opposition.
`
`7.
`
`In the Opposition, Opposer claims it will be damaged by the registration of
`
`Applicant’s Mark because the marks are confusingly similar under Section 2(d) of the
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`Trademark Act, 15 U.S.C. §1052(d) to Opposer’s Marks. See ¶7 of the Opposition.
`
`STANDARD OF REVIEW
`
`As clearly stated in §503.02 of the Trademark Trial and Appeals Board Manual of
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`Procedure, “A motion to dismiss for failure to state a claim upon which relief can be granted is a
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`test solely of the legal sufficiency of a complaint. In order to withstand such a motion, a
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`complaint need only allege such facts as would, if proved, establish that the plaintiff is entitled to
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`the relief sought, that is, that (1) the plaintiff has standing to maintain the proceeding, and (2) a
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`valid ground exists for denying the registration sought (in the case of an opposition), or for
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`canceling the subject registration (in the case of a cancellation proceeding). To survive a motion
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`to dismiss, a complaint must "state a claim to relief that is plausible on its face."”
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`

`

`ARGUMENTS
`
`A.
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`Issue Preclusion
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`In the present case, the Notice of Opposition does not, and cannot, “state a claim to relief
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`that is plausible on its face.” The Opposer has already brought the same claim and a court has
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`already concluded in Applicant’s favor. Accordingly, the claim to relief sought in the
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`Opposition is not plausible on its face.
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`It is a well settled principle that issue preclusion bars the re-litigation of the same issue in
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`a second action. B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d
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`2045, 2051 (2015). “The application of issue preclusion requires: (1) identity of an issue in the
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`current and a prior proceeding; (2) actual litigation of that issue in the prior proceeding; (3) that
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`determination of the issue was necessary in entering judgment in the prior proceeding; and (4)
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`that the party with the burden of proof on that issue in the second proceeding had a full and fair
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`opportunity to litigate the issue in the prior proceeding.” See NH Beach Pizza LLC v. Cristy’s
`
`Pizza Inc., 119 USPQ2d 1861, 1864 (TTAB 2016) (citing Montana v. United States, 440 U.S.
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`147, 153-54 (1979)).
`
`The trademark at issue in this Opposition is the exact same mark depicted at paragraph
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`17 of Opposer’s Complaint. It is the exact same mark about which the jury returned a verdict in
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`favor of Applicant. And it is the exact same mark about which Opposer is precluded from
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`challenging. B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1305–06, 191 L. Ed.
`
`2d 222 (2015) (“When a district court, as part of its judgment, decides an issue that overlaps with
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`part of the TTAB’s analysis, the TTAB gives preclusive effect to the court’s judgment. … [and]
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`the same likelihood-of-confusion standard applies both to registration and infringement.”).
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`

`

`1.
`
`Identity of an Issue in the Current and a Prior Proceeding
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`In the Opposition, Opposer has alleged Applicant’s Mark is confusingly similar to, and
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`likely to cause confusion with, Opposer’s Marks. In the Complaint, Opposer alleged the
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`mark
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`(which is identical to Applicant’s Mark), for “Asian food products,” was confusingly similar to
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`Opposer’s Marks. See ¶47 of the Complaint. Both of the marks relied upon by Opposer in the
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`Complaint are relied upon by the Opposer in the Opposition.
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`Accordingly, the issue raised in the Opposition is identical to that which was raised in the
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`Complaint and, therefore, the first factor for issue preclusion is satisfied.
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`2.
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`Actual Litigation of that Issue
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`The issue of likelihood of confusion was fully litigated in the Central District of
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`California and the jury reached a verdict finding there was no likelihood of confusion. See
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`Judgment. Specifically, Opposer’s claim that Applicant’s Mark for Asian food products
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`(including fish sauce), infringed its rights in Opposer’s Marks for various Asian food products
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`(including fish sauce) was found by a jury to lack merit. Specifically, the jury returned a verdict
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`“finding no likelihood of confusion between Anhing’s asserted marks and Viet Phu’s mark.” See
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`Judgment. The determination was not limited to the context of a specific product; the jury
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`determined the marks in and of themselves are inherently not confusingly similar. In fact, even
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`if the allegations of the Complaint are interpreted such that Opposer was only challenging
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`Applicant’s use of fish sauce (and not “Asian food products” as listed in the Complaint), a
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`product Opposer specifically alleged rights in, the jury did not find a likelihood of confusion.
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`That is to say, after a full jury trial, it was ruled that the marks are not confusingly similar even
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`when used on identical products.
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`

`

`Accordingly, there is no doubt there was actual litigation of the only issue raised in the
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`Opposition and, therefore, the second factor for issue preclusion is satisfied.
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`3.
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`Determination of the Issue was Necessary
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`Insomuch as the issue of whether a likelihood of confusion existed was fully litigated in
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`the California Action, there is no question that determination of the issue was necessary in
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`entering judgment in the prior proceeding and, therefore, the third factor for issue preclusion is
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`satisfied. See ¶5 of Koff Affidavit attached hereto as Exhibit A.
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`4.
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`Full and Fair Opportunity to Litigate
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`The California Action was fully litigated and a jury trial held. Moreover, although there
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`is currently an appeal pending before the Ninth Circuit, the only issue on appeal is with respect
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`to whether Opposer owes Applicant attorneys’ fees for its conduct qualifying the case as
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`exceptional. There is no pending issue on appeal relevant to whether Opposer, who is the party
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`with the burden of proving a likelihood of confusion, had the full and fair opportunity to litigate
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`that issue in the California Action. See ¶5 -6 of Exhibit A.
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`The only issue is whether Opposer, the party with the burden of proving a likelihood of
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`confusion, had a full and fair opportunity to litigate the issue of likelihood of confusion. They did.
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`Accordingly, the fourth factor for issue preclusion is satisfied.
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`As the Supreme Court has determined, issue preclusion bars the re-litigation of the same
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`issue in a second action. B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 113
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`USPQ2d 2045, 2051 (2015). Opposer sued Applicant in federal court alleging Applicant’s Mark
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`was confusingly similar to Opposer’s Mark. After a full trial, a jury concluded the marks are not
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`confusingly similar. Notwithstanding this incontrovertible decision, Opposer has nonetheless
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`

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`filed an Opposition asserting the exact same claims. Because issue preclusion applies, Applicant
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`respectfully requests that this proceeding be dismissed with prejudice.
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`B.
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`Lack of Standing
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`In order to have standing, a party must have a “real interest in the proceeding, and a
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`reasonable basis for its belief that it would suffer some kind of damage if the mark is registered.”
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`See TBMP § 309.03(b); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
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`USPQ2d 1058, 1062 (Fed. Cir. 2014) (quotation omitted), cert. denied, 135 S. Ct. 1401 (2015).
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`In the present case, Opposer does not, and cannot, have a “reasonable basis for its belief that it
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`would suffer some kind of damage if the mark is registered.” Specifically, a jury has already
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`determined the marks at issue are not confusingly similar. Insomuch as the marks have already
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`been determined not to be confusingly similar, Opposer cannot reasonably believe it would be
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`damaged by the registration of the mark. Accordingly, Opposer lacks standing.
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`Opposer has attempted to establish damage by alleging it will be damaged by registration
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`of Applicant’s Mark “in that the mark so resembles the Opposer’s marks, in which Opposer
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`owns common law rights, as to be likely, when used on or in connection with the goods
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`identified in Applicant’s Application, to cause confusion, or to cause mistake, or to deceive
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`within the meaning of Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).” See ¶7 of the
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`Opposition.
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`However, a Federal Court has already determined Applicant’s Mark is not confusingly
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`similar to Opposer’s Marks and Opposer’s allegation of common law rights in the same mark
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`does not change that determination.
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`Opposer cannot have a reasonable basis for its belief that it would suffer some kind of
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`damage if Applicant’s Mark were registered because there has already been a determination that
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`

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`the marks are not confusingly similar. There is no reasonable basis for this belief and,
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`accordingly, Opposer lacks standing to bring this Opposition.
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`In conclusion, Opposer does not, and cannot, allege facts in a Notice of Opposition that,
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`if proven, would establish that Opposer has standing to maintain this Opposition.
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`WHEREFORE, for the reasons stated above, Opposer’s Notice of Opposition should be
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`dismissed with prejudice.
`
`Respectfully submitted,
`
`Date: July 31, 2017
`
`_________________________________________
`Rebecca A. Liebowitz
`VENABLE LLP
`PO Box 34385
`Washington, DC 20043-9998
`Telephone: (202) 344-4976
`
`Attorneys for Applicant
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that a true copy of the foregoing APPLICANT’S MOTION TO
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`DISMISS FOR FAILURE TO STATE A CLAIM was served upon counsel for Opposer by e-
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`mail, this 31st day of July 2017, upon:
`
`ROBERT S LAWRENCE
`FINLAYSON TOFFER ROOSEVELT & LILLY
`15615 ALTON PKWY STE 250
`IRVINE, CA 92618
`UNITED STATES
`RLAWRENCE@FTRLFIRM.COM
`
`___________________________
`
`

`

`Opposition No. 91235167
`Application Serial No. 87/179976
`
`____________________________________
`
`)
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`) )
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`) )
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`)
`)
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`) )
`
`Anhing Corporation
`
`Opposer,
`
`vs.
`
`Viet Phu, Inc.
`
`)
`Applicant.
`____________________________________)
`
`EXHIBIT A
`
`Submitted by Viet Phu, Inc. in support of its Motion to Dismiss
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91235167
`Application Serial No. 87/179976
`
`)
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`Anhing Corporation
`
`Opposer,
`
`vs.
`
`Viet Phu, Inc.
`
`Applicant.
`
`
`DECLARATION OF ALEXANDER KOFF
`
`1, Alexander Koff, state and declare:
`
`1.
`
`I am a Partner at Venable LLP and I have personal knowledge of the facts
`
`set forth below and if called upon could competently testify thereto.
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`2.
`
`3.
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`I submit this declaration in support of Viet Phu, Inc.
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`A true and accurate copy of the complaint in the Central District of
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`California, is attached as Applicant's Exhibit B.
`
`4.
`
`A true and accurate copy of the Judgment Regarding Jury Verdict issued
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`in the litigation filed in the Central District of California is attached as Applicant's
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`Exhibit C.
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`5 .
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`I confirm the issue of likelihood of confusion was fully litigated in the
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`Central District of California and the jury reached a verdict finding there was no
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`likelihood of confusion.
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`6.
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`I confirm the pending appeal to the Ninth Circuit concerns whether
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`Opposer owes Applicant attorneys’ fees because its conduct qualifies the case as
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`

`

`exceptional, and there is no pending appeal regarding the issue of likelihood of
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`confusion.
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`The signatory being warned that willful false statements and the like are
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`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such
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`willful false statements and the like may jeopardize the validity of the application or
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`submission or any registration resulting therefrom, declares that all statements made of
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`his/her own knowledge are true and that all statements made on information and belief
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`are believed to be true.
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`Done this 31St day of July 2017.
`
` Alexander Koff
`
`

`

`
`
`Anhing Corporation
`
`Opposer,
`
`Vict Phu, Inc.
`
`Applicant.
`
`pvvvvvvvvvv
`
`VS.
`
`Opposition No. 91235167
`Application Serial No. 87/179976
`
`EXHIBIT B
`
`
`
`Submitted by Viet Phu, Inc. in support of its Motion to Dismiss
`
`
`
`

`

`
`ase 2:13—cv-O4348-PLA Document 1 Filed 06/17/13 Page 1 of 20 Page ID #17
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`1
`
`2
`
`JEFFREY A. KOBULNICK ~ Bar No. 228299
`MARK D. BRUTZKUS - Bar No. 128102
`JOSEPH ROTHBERG — Bar No. 2863 63
`EZRA BRUTZKUS GUBNER LLP
`3 21650 Oxnard Street, Suite 500
`Woodland Hills, CA 91367
`4 Telephone:
`(818 827-9000
`Facsnnile:
`8) 27—9099
`5 E-rna11:
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`7 Attorneys for Plaintiff, Anhing Corporation
`
`8
`
`9
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`10
`11 ANHING CORPORATION, a
`California corporation,
`
`12
`
`13
`
`14
`
`Plaintiff,
`
`v.
`
`
`C Liam). 4 3 a DLA‘
`
`COMPLAINT FOR:
`
`(1) TRADEMARK INFRINGEMENT
`(15. U.S.C. § 1114);
`
`15
`
`VIET PHU, INC, a California
`co oration; AN N CUONG CO.,
`LT . a Foreign Corporation; and
`15 DOES 1-10 ,
`
`17
`
`Defendants.
`
`(2) UNFAIR COMPETITION AND
`FALSE DESIGNATION OF
`ORIGIN (15. U.S.C. § 1125(3));
`
`(3) FEDERAL TRADEMARK
`DILUTION (15 U.S.C. § 1125 (c));
`
`(4) COMMON LAW TRADEMARK
`INFRINGEMENT;
`
`
`
`DEMAND FOR JURY TRIAL
`
`(5) CALIFORNIA TRADEMARK
`DILUTION (Cal. Bus. & Prof.
`§ 14335);
`
`(6) UNFAIR COMPETITION (Cal.
`Bus. & Prof. § 17200)
`
`25 ///
`
`26 ///
`
`27 ///
`
`28 ///
`
`1
`
`COMPLAINT
`
`

`

`ase 2:13—cv—O4348-P_l__A Document 1 Filed 06/17/13 Page 2 of 20 Page ID #:8
`
`Plaintiff Anhing Corporation (“Anhing” or “Plaintiff”), by and for its
`
`Complaint against Defendants Viet Phu, Inc., An N Cuong Co., Ltd. and DOES 1
`
`through 100, inclusive, (collectively, “Defendants”) alleges to the Court as follows:
`
`JURISDICTION AND VENUE
`
`1.
`
`a This Court has original jurisdiction over this action pursuant to 28 U.S.C.
`
`§§ 1331 and 1338(a) and (b), because this action arises under the laws of the United
`
`States — namely, the Lanham Act. This Court has supplemental jurisdiction pursuant
`
`to 28 U.S.C. § 1367(a) of the related state law claims that are factually interdependent
`
`with the federal law claims, and that arise from the same case or controversy.
`
`2.
`
`This Court also has original jurisdiction pursuant to 28 U.S.C. § 1332 as
`
`
`
`16 Ltd. in that it operates, conducts, engages in, or carries on a business or business
`
`17 venture Within this state or has an office or agency Within this state.
`
`18
`
`20
`
`19 because Defendant Viet Phu, Inc. has significant contacts with this judicial district.
`
`5.
`
`Venue is proper in this District pursuant to 28 U.S.C. § l391(b)(l)
`
`6.
`
`Venue is also proper in this District pursuant to 28 U.S.C. § l39l(b)(2)
`
`21 because a substantial part of the facts giving rise to the acts or omissions alleged
`
`22 herein took place in this District.
`
`23
`
`25
`
`26
`
`7.
`
`Venue is also proper in this District pursuant to 28 U.S.C. § l39l(c)
`
`24 because Defendant Viet Phu, Inc. is a corporation subject to personal jurisdiction in
`
`this District.
`
`8.
`
`Venue is also proper in this District pursuant to 28 U.S.C. § 1391(c)(3)
`
`27 because Defendant An N Cuong Co., Ltd. is a foreign corporation subject to personal
`
`28
`
`jurisdiction in this District.
`
`2
`
`COMPLAINT
`
`10
`
`12
`
`13
`
`14
`
`15
`
`11 Plaintiff and all Defendants are citizens of different states and the amount in
`
`controversy exceeds $75,000.
`
`3.
`
`This Court has personal jurisdiction over Defendant Viet Phu, Inc. in that
`
`they are incorporated in and do business in the State of California.
`
`4.
`
`This Court has personal jurisdiction over Defendant An N Cuong Co.,
`
`
`
`
`
`

`

`x Case 2:13-cv-O4348—P‘11A Documentl Filed 06/17/13 PageBOfZO PagelD#:9
`
`THE PARTIES
`
`9.
`
`Plaintiff is a California corporation, organized and operating under the
`
`laws of the State of California, having its principal place of business at 418 North
`
`Avenue 19, Los Angeles, California 90031.
`
`10. Upon information and belief, Defendant Viet Phu, Inc. (“Viet Phu”) is a
`
`California corporation with a business address at 2213 N. Park Victoria Drive,
`
`Milpitas, California 95035.
`
`11. Upon information and belief, Defendant An N Cuong Co., Ltd. (“An N
`
`Cuong”) is a foreign corporation doing business in the State of California with a
`business address at SO 8 Phan, NHUNGKPI Duong, Dong Phu Quoc, Kien Giang
`
`Vietnam, Kien Giang, VN.
`
`12.
`
`Upon information and belief, Defendants, at all times pertinent hereto,
`
`have directed ongoing and substantial commercial activities in the County of Los
`
`Angeles, including Without limitation the Central District of .California.
`
`1 3.
`
`Plaintiff is ignorant of the true names of capacities of the defendants sued
`
`herein as DOES 1 through 100, inclusive, and therefore sues these defendants by such
`
`fictitious names. Plaintiff will seek to amend this Complaint to allege such names and
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`capacities as soon as they are ascertained. Plaintiff is informed and believes, and on ‘
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`that basis alleges, that each of the fictitiously-named defendants is in some manner
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`responsible, liable and/or obligated to Plaintiff in connection with the acts alleged
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`herein.
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`Plaintiff is informed and believes, and thereon alleges, that at all times
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`mentioned, each of the Defendants was the agent, servant, representative, employee,
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`partner and/or controlling person of the other defendants named herein, and in doing
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`the things herein alleged were acting as agents for each other.
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`NATURE OF THE ACTION
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`15. Anhing has long been a manufacturer and distributor of a wide variety of
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`foods, oils, seasonings and spices in the Asian foods market. In connection therewith,
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`COMPLAINT
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`ase 2:13-cv-O4348—PLA Document 1 Filed 06/17/13 Page 4 of 20 Page ID #:10
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`Anhing is the owner of all rights in and to a family of highly distinctive trademarks
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`which consist of or include a well-known and distinctive design logo of an Asian style
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`sailing boat, more commonly known as a junk ship (the “Anhing Logo”). Anhing
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`uses its Anhing Logo both alone and with the term CARAVELLE, another of
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`Anhing’s well-known marks, in the forms shown immediately below (collectively, the
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`“Anhing Marks”).
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`Iii
`1 I I’
`I :1
`.— h
`k m w ®
`% b”)
`M.
`CARAVELLE
`CARAVELLE
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`16. Anhing has used its Anhing Marks in interstate commerce for over 30
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`years in connection with a variety of food products sold throughout the United States.
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`Anhing owns federal trademark registrations for its Anhng Marks, several of which
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`are incontestable, as set forth in more detail below. Moreover, while Anhing’s
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`registrations for the Anhing Marks are not limited to a particular color, Anhing has
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`used its Anhing Marks primarily in the color red since 1980, and therefore has
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`established further rights to use of its marks in that color, as shown above.
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`17.
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`Upon information and belief, Viet Phu, is using an almost identical mark
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`in connection with the distribution and sale of the same types of products as Anhing,
`including but not limited to fish sauce, in the United States. Viet Phu’s mark (“RED
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`BOAT & Design”) is shown immediately below.
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`asas
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`ED
`BOAT
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`COMPLAINT
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`ase 2:13—cv—O4'348-PL‘A Document 1 Filed 06/17/13 Page 5 of 20 Page ID #211
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`18. Upon information and belief, on April 29, 2011 Viet Phu filed an
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`application with the US. Patent and Trademark Office (“USPTO”), Serial No.
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`85/308,962, to register the RED BOAT & Design Mark shown above in connection
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`with fish sauce, claiming first use of that mark in commerce on February 3, 2011.
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`According to available USPTO records, Viet Phu subsequently abandoned that
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`application on July 4, 2012.
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`19. Viet Phu has been put on notice of Anhing’s rights to the Anhing Marks.
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`Notwithstanding, and although Viet Phu abandoned its trademark application, it
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`continued to use, and indeed still uses, the RED BOAT & Design Mark in connection
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`20.
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`Plaintiff brings this action for trademark infringement, trademark
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`12 dilution, unfair competition and related offenses arising from Defendants’ unlawful
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`13 use of a confusingly similar variant of Plaintiff’s Anhing Marks.
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`1
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`BACKGROUND FACTS
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`A.
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`Anhing’s Background, Intellectual Property and Products
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`21. Anhing was founded in 1980 in Los Angeles by Henry Ly, a hard-
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`working man who came to the United States from Vietnam with little money. The
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`company was founded over three decades ago in Los Angeles to provide a one—service
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`19 center for all Asian grocery markets in North America. Since then, Anhing, which has
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`20 always remained and still is a family owned business, has become very successful.
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`21 Anhing has solidified working relations with over 200 suppliers in thirty countries
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`throughout Southeast Asia and South America, and has full control over its channel of
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`23 distribution. Anhing has also developed one of the most extensive marketing
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`24 networks throughout North America, and its sales force network extends fiom the
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`island of Guam in the South Pacific to the Florida Panhandle. Currently, Anhing’s
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`annual revenue exceeds $40 million. Anhing’s success has been in large part due to
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`the strength of its brands, including its Anhing Marks.
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`COMPLAINT
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`ase 2:13—cv—O4348—PLA Document 1 Filed 06/17/13 Page 6 of 20 Page ID #:12
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`22.
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`By October 1980, Anhing had adopted the Anhing Marks as its primary
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`marks for a variety of quality food products, including but not limited to fish sauce
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`and various other cooking sauces. As indicated above, Anhing also began using its
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`Anhing Marks in the color red by that time.
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`23.
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`Over the course of more than three decades, both the scope and reach of
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`Plaintiff’ s food products have enjoyed tremendous growth. The Anhing Marks are not
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`only still used with all of the above-referenced products, but with many others as well,
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`including for example canned soups, broths, meat, and seafood; medicated oil, rice
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`and beans, seasonings and spices; pickled, preserved and dried products; confections;
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`dessert mix; beverages; cosmetic and household products; frozen meats, seafood,
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`fruits and vegetables. Anhing’s food products bearing the Anhing Marks are sold in
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`stores across all fifty United States and online to countless numbers of consumers
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`each year Via various websites owned by Plaintiff, as well as numerous other third
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`party websites including for example AMAZON.COM, ORIENTALSUPER__MART.COM,
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`PHILAMFOODCOM, KIMSASIANMARKETCOM and HKFOODMARKETCOM.
`24. Anhing owns a number offederal trademark registrations for its Anhing
`Marks (both alone, and with the term CARAVELLE) with the USPTO, including the
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`following:
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`a.
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`US. Registration No. 1,266,472 for the Anhing Logo, registered
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`February 7, 1984, for use by Anhing in connection with “fish maw
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`and salted turnip,” in International Class 29, and “rice, rice paper,
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`rice flake, rice stick, rice vermicelli, dried chills as seasoning
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`spices, tapioca, candies, fish sauce, prawn cracker and coffee,” in
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`Class 30;
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`b.
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`U.S. Registration No. 4,185,936 for the Anhing Logo with “A
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`CARAVELLE”, registered August 7, 2012, for use by Anhing in
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`connection with“‘duck eggs; eggs; processed eggs,” in Class 29;
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`/ / /
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`COMPLAINT
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`ase 2:13—cv-O4348~PLA Document 1 Filed 06/17/13 Page 7 of 20 Page ID #:13
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`U.S. Registration No. 3,400,490 for the Anhing Logo, registered
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`March 25, 2008, for use by Anhing in connection with “coffee,
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`beverages made of coffee, coffee-based beverages containing milk,
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`tea, beverages made of tea, beverages made of tea from Thailand,
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`beverages made of ginseng tea, herbal tea,” in Class 30; and for
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`“fruit juices, namely, orange juice, coconut juice, guava juice and
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`tamarind juice; aloe vera drinks; herbal juices, namely juice made
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`from basil seeds,” in Class 32;
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`U.S. Registration No. 1,653,810 for the Anhing Logo, registered
`August 13, 1991, for use by Anhing in connection with “canned
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`fruit and canned vegetables,” in Class 29; and
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`U.S. Application No. 85335154 for the Anhing Logo with
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`“CARAVELLE”, filed on June 1, 2011, for use by Anhing in
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`connection with “Sesame oil, olive oil, seafood, canned seafood,
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`soups, broth, dried mushrooms, dried edible fungi, dried edible
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`seaweed, processed edible seeds, pork rinds, vegetable-based snack
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`foods, processed garlic, processed onions, dried vegetables,” in
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`Class 29, based on first use in commerce as of August, 1987; and
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`for “Candy, fruit jelly, flavored and sweetened gelatin desserts,
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`cookies, bakery goods, sauces, chili sauce, soy sauce, fish sauce,
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`curry sauce, chili oil, sweet and sour sauce, seasoning pastes,
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`gravy, spices, dried chili peppers, salt, sea salt for cooking,
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`pepper,” in Class 30, based on first use in commerce as early as
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`October, 1980.
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`Attached collectively hereto as Exhibit A are true and correct copies of Anhing’s
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`above-referenced Certificates of Registration and the TDSR record of the pending
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`application as downloaded from the USPTO website, www.uspto.gov.
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`/ / /
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`COMPLAINT
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`ase 2:13—cv—O4348-PLA Document 1 Filed 06/17/13 Page 8 of 20 Page ID #:14
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`25. All of Anhing’s above-referenced trademark registrations are valid and
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`subsisting and provide primafacie evidence of‘Anhing’s ownership of the Anhing
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`Marks and of its exclusive right to use the Anhing Marks in the United States for food
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`products. Registration Nos. 1,266,472, 3,400,490, and 1,653,810 are also
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`incontestable under Section 15 of the Lanham Act.
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`26.
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`The Anhing Marks are also registered in other countries, including China,
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`Vietnam, Thailand and Taiwan.
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`27.
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`The Anhing Marks are inherently distinctive.
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`28. Anhing has sold a variety of goods, including but not limited to fish
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`sauce, under its Anhing Marks continuously since at least October 1980. Annual sales
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`11 volumes of Anhing’s products sold under the Anhing Marks have exceeded nine (9)
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`12 million dollars. From 1980 to present, Anhing’s sales of its branded products have
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`exceeded $250,000,000.00. Anhing’s products are sold through 100 distributors and
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`700 retailers throughout the entire United States.
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`29. By Virtue of this use, the public has come to associate the distinctive
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`16 Anhing Marks with Anhing’s food products, consequently allowing Anhing to build a
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`17 valuable reputation in connection with its Anhing Marks. Anhing has expended
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`considerable time, effort and money in advertising and otherwise promoting its
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`19 products and encouraging the public and trade to recognize its Anhing Marks. As
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`such, Anhing has acquired extensive goodwill in and common law interest rights to
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`the Anhing Marks, and variations thereof, in connection with Asian food products,
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`including but not limited to fish sauce, other sauces, canned soups, broths, meat, and
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`seafood; medicated oil, rice and beans, seasonings and spices; pickled, preserved and
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`24 dried products; confections; dessert mix; beverages; cosmetic and household products;
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`frozen meats, seafood, fruits and vegetables.
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`30. As a result of the longstanding, continuo