Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA908027
`
`Filing date:
`
`07/09/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91241137
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Shenzhen Kinwong Electronic Co., Ltd.
`
`JACQUELINE V BROUSSEAU
`GREENBERG TRAURIG LLP
`77 WEST WACKER DRIVE SUITE 3100
`CHICAGO, IL 60601
`UNITED STATES
`Email: chiipmail@gtlaw.com, brousseauj@gtlaw.com, wadykas@gtlaw.com
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Answer
`
`Steven J. Wadyka, Jr.
`
`chiipmail@gtlaw.com, brousseauj@gtlaw.com
`
`/Steven J. Wadyka, Jr./
`
`07/09/2018
`
`Answer to Notice of Opposition No. 91241137.pdf(163127 bytes )
`Exhibit A - Manufacturers Agreement.pdf(2493871 bytes )
`Exhibit B - Settlement Agreement and Limited Releases.pdf(3615473 bytes )
`Exhibit C- Trademark Application for KINWONG.pdf(76017 bytes )
`Exhibit D- Trademark Registration Certificate.pdf(146870 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 79/212,641
`
`
`KINWONG, LLC,
`
`
`
`
`
`
`
`OPPOSITION NO. 91241137
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposer/Counterclaim Defendant,
`
`v.
`
`SHENZHEN KINWONG
`ELECTRONIC CO., LTD.
`
`
`
`
`
`
`
`
`
`
`Applicant/Counterclaimant.
`
`
`
`
`
`
`
`
`
`
`ANSWER TO NOTICE OF OPPOSITION
`
`
`
`Applicant Shenzhen Kinwong Electronic Co., Ltd. (“Applicant”), by its undersigned
`
`attorneys, answers Opposer Kinwong, LLC’s (“Opposer”) Notice of Opposition as follows:
`
`Since at least as early as December 11, 2014 (and long before the filing date, Feb.
`1.
`14, 2017, of the subject 66(a) based foreign application), Opposer has offered premium single
`sided, double-sided and multi-layer rigid printed circuit boards for electronic products, electronic
`controls and other industrial applications under the distinctive mark KINWONG. See Exhibit A.
`
`Answer:
`
`Applicant admits that it filed the subject application on February 14, 2017.
`
`Applicant is without knowledge or information sufficient to form a belief as to the truth of the
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`remaining allegations set forth in Paragraph 1 of the Notice of Opposition, and therefore, denies
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`those allegations.
`
`Since that time, Opposer has offered for sale quality circuit boards under the
`2.
`KINWONG trademark name in compliance industry standards and certifying authorities such as
`but not limited to IPC, the Association Connecting Electronic; LEED, an internationally
`recognized green building program; UL (the global independent safety science company
`safeguarding people, products and places) and the Auto Industry PPAP (Production Part
`Approval Process) for product quality in the auto parts production that includes circuit boards,
`promoting the KINWONG trademark of Opposer. Id.
`
`
`

`

`Answer:
`
`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 2 of the Notice of Opposition, and therefore, denies
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`those allegations.
`
`Opposer owns Federal Registration No. 4,736,271 for the mark “KINWONG”
`3.
`which is in full force. See Exhibit B.
`
`Answer:
`
`Applicant admits that Opposer is the listed owner of Federal Registration No.
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`4,736,271 for the mark “KINWONG” in connection with “circuit boards” in International Class
`
`9, but denies that Federal Registration No. 4,736,271 is in full force or that Opposer has any
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`lawful claim or rights to ownership of the mark that is the subject of Federal Registration No.
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`4,736,271.
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`Long before the application date of the subject mark, Opposer has actively
`4.
`promoted its goods via a website www.kinwongllc.com and other on-line and print media.
`
`Answer:
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations set forth in Paragraph 4 of the Notice of Opposition, and therefore, denies
`
`those allegations.
`
`Opposer has spent a considerable amount of resources on brand development and
`5.
`promotion of the mark KINWONG.
`
`Answer:
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations set forth in Paragraph 5 of the Notice of Opposition, and therefore, denies
`
`those allegations.
`
`Opposer is widely known among the circuit board industry manufacturers and
`6.
`retailers as the only authorized owner and manufacturer of KINWONG circuit boards.
`
`Answer:
`
`Applicant denies the allegations set forth in Paragraph 6 of the Notice of
`
`Opposition.
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`Applicant is a Chinese based company manufacturing and selling circuit boards in
`7.
`China and has intentionally filed before the United States Patent and Trademark Office, the exact
`
`

`

`same mark KINWONG for the parts and components that make up a circuit board such as
`International Nice classes: 6 for screws of metal, foundry molds of metal, sign boards,
`nonluminous and non-mechanical, of metal goods, etc. and. class 42 – technical research in the
`file for integrated circuits, semi-conductors and printed circuit and circuit boards, etc.
`
`Answer:
`
`Applicant admits that it is a Chinese based company that manufactures and sells
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`circuit boards, and has filed an application for the mark “KINWONG” for “Technical research in
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`the field of integrated circuits, semi-conductors, printed circuits and printed circuit boards;
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`scientific research and development for others; engineering drawing services; material testing;
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`physics research; mechanical research” under International Class 42 and “Screws of metal;
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`foundry molds of metal; signboards, non-luminous and non-mechanical, of metal; gold solder;
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`works of art of common metal” under International Class 6. Applicant otherwise denies the
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`allegations set forth in Paragraph 7 of the Notice of Opposition.
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`Upon information and belief, Applicant filed in International Classes 6 and 42
`8.
`because it would have been rejected if they have filed for the same class 9 goods as Opposer,
`circuit boards.
`
`Answer:
`
` Applicant denies the allegations set forth in Paragraph 8 of the Notice of
`
`Opposition.
`
`Upon information and belief, Applicant really intends not to sell the parts or the
`9.
`technical research for the circuit boards in the United States but the actual printed circuit boards
`(single sided, double-sided, and multi-layer rigid printed circuit boards for electronic products,
`electronic controls and other industrial applications).
`
`Answer:
`
` Applicant denies the allegations set forth in Paragraph 9 of the Notice of
`
`Opposition.
`
`Opposer will be harmed if the Application matures to registration since there is a
`10.
`strong likelihood of confusion between Applicant’s applied-for-mark and Opposer’s mark
`KINWONG since the Applicant’s goods and services would be sold in the same channels of
`trade and to the same sophisticated customers as Opposers, which will confuse source in
`detriment of Opposer prior rights.
`
`
`

`

`Answer:
`
` Applicant denies the allegations set forth in Paragraph 10 of the Notice of
`
`Opposition and states that any likelihood of confusion is created by Opposer as the junior user of
`
`the KINWONG mark.
`
`The application must be refused registration based upon a likelihood of confusion
`11.
`with Opposer’s long-standing rights in the mark KINWONG as used in connection with circuit
`boards.
`
`Answer:
`
` Applicant denies the allegations set forth in Paragraph 11 of the Notice of
`
`Opposition and states that any likelihood of confusion is created by Opposer as the junior user of
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`the KINWONG mark.
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`12.
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`The marks are visually confusingly similar.
`
`Answer:
`
`Applicant admits the allegations set forth in Paragraph 12 of the Notice of
`
`Opposition.
`
`13.
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`The marks are legal equivalents of each other.
`
`Answer:
`
`Applicant admits that Applicant’s Mark and Opposer’s alleged trademark are
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`standard character marks comprised of a 7 letter word with the letters “KINWONG.”
`
`14.
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`The channels of trade are identical.
`
`Answer:
`
`Applicant admits the allegations set forth in Paragraph 14 of the Notice of
`
`Opposition.
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`15.
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`The goods offered under the marks are intentionally or nearly identical to
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`Opposer’s goods.
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`Answer:
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in Paragraph 15 of the Notice of Opposition, and therefore,
`
`denies those allegations.
`
`16.
`
`The conditions under which and buyers to whom the goods are sold are identical.
`
`

`

`Answer:
`
`Applicant admits the allegations set forth in Paragraph 16.
`
`There are no other similar marks in commerce for use in connection with circuit
`17.
`boards and circuit board related products.
`
`Answer:
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations set forth in Paragraph 17 of the Notice of Opposition, and therefore,
`
`denies those allegations.
`
`18.
`mark.
`
`
`Answer:
`
`Applicant does not have Opposer’s consent to use or apply for registration of the
`
`Applicant denies the allegations set forth in Paragraph 18 of the Notice of
`
`Opposition insofar as Applicant, as the owner of senior rights in and to the KINWONG mark for
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`use in connection with circuit boards and related products, does not require Opposer’s consent to
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`use or apply for registration of Applicant’s Mark.
`
`The mark should be refused registration on the basis of fraud on the trademark
`19.
`office as it was filed under 66(a) basis to avoid providing specimen of use confirming exact
`goods on Opposer behind intended applied for mark of Applicant under Serial 79/212,641.
`
`Answer:
`
`Applicant denies the allegations set forth in Paragraph 19 of the Notice of
`
`Opposition.
`
`Applicant knew or should have known at the time of application that it did not
`20.
`have any rights to the applied-for-mark as Opposer has prior rights. As such, the mark was
`applied for in bad faith.
`
`Answer:
`
`Applicant denies the allegations set forth in Paragraph 20 of the Notice of
`
`Opposition.
`
`Opposer has contacted Applicant directly regarding the fraudulent trademark
`21.
`application, but Applicant has failed to withdraw the application. This evidences further bad
`faith on part of Applicant.
`
`Answer:
`
`Applicant admits that Applicant received a letter from Opposer dated March 7,
`
`2018, but otherwise denies the allegations set forth in Paragraph 21 of the Notice of Opposition.
`
`

`

`The mark should be refused registration on the basis that a false association may
`22.
`exist between Opposer and Applicant.
`
`Answer:
`
`Applicant denies the allegations set forth in Paragraph 22 of the Notice of
`
`Opposition.
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`AFFIRMATIVE DEFENSES
`
`
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`As and for separate affirmative defenses, Applicant alleges the defenses set forth below.
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`Applicant reserves the right to amend these, raise additional affirmative defenses, or file
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`additional counterclaims besides the one asserted below based on information obtained in and
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`through discovery.
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`1. The Notice of Opposition fails to state a claim upon which relief can be granted.
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`2. Opposer is not the owner of the KINWONG trademark in association with circuit
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`boards or related products or otherwise.
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`3. Applicant has priority of use of the KINWONG mark in United States commerce on or
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`in connection with circuit boards and related products dating back to as early as 2005, which is
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`long before Opposer’s alleged first use in commerce of the KINWONG mark in connection with
`
`circuit boards.
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`4. Applicant has been using its mark and developing consumer recognition and goodwill
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`since at least 2005, such use being open, notorious and known to Opposer, and such knowledge,
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`in turn, being known to Applicant. During this time, Opposer failed to take any action to assert
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`the claims on which it bases this Opposition, on which inaction Applicant has relied to its
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`detriment. Opposer’s claims are thus barred by the doctrines and equitable defenses of laches,
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`waiver, acquiescense and estoppel.
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`5. As a result of Applicant’s long-standing and continuous use of Applicant’s mark since
`
`at least as early as 2005, Applicant’s mark has developed significant goodwill and consumer
`
`

`

`recognition nationally. Applicant’s mark has become a valuable asset of Applicant and a
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`necessary part of Applicant’s business.
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`6. Opposer has unclean hands. Opposer adopted and applied for registration of the
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`KINWONG mark for “circuit boards” in Class 9 with full knowledge of Applicant’s prior use of
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`and rights in the KINWONG mark. Opposer’s affiliated company, Circuitronix LLC, whose sole
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`member, Rishi Kukreja, is the same individual who founded and is the sole member of Opposer,
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`distributed and sold KINWONG-branded circuit boards and related products in the United States
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`for nearly ten (10) years pursuant to contracts with Applicant’s affiliated companies. After a
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`dispute arose between the parties to the contracts, Opposer’s founder and sole member
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`established a limited liability company in Florida called “Kinwong, LLC” without the
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`knowledge, permission, or consent of Applicant. Opposer’s application for and registration of
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`the KINWONG mark for “circuit boards,” upon which Opposer bases its Notice of Opposition, is
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`therefore fraudulent and in bad faith.
`
`COUNTERCLAIM AGAINST OPPOSER FOR
`CANCELLATION OF U.S. TRADEMARK REGISTRATION NO. 4,736,271
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`Shenzhen Kinwong Electronic Co., Ltd. (“Shenzhen Kinwong” or “Counterclaimant”),
`
`
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`by way of its Counterclaim against Kinwong, LLC (“U.S. Kinwong”) for cancellation of U.S.
`
`Trademark Registration No. 4,736,271 for the KINWONG mark, hereby alleges as follows:
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`1. Counterclaimant manufactures, distributes, markets, promotes, offers for sale and sells
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`high-density multi-layer printed circuit boards and flexible printed circuit boards, and other
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`related products (“Circuit Board Products”) for the global market, including the United States,
`
`under the trademark KINWONG.
`
`2. Counterclaimant has used the KINWONG trademark in United States commerce since
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`at least as early as 2008, and most likely as early as 2005, in association with the Circuit Board
`
`

`

`Products, and has manufactured, marketed, promoted, distributed and sold its Circuit Board
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`Products under the KINWONG trademark continuously since that date. Specifically,
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`Counterclaimant and/or its licensed wholly-owned subsidiary, Kinwong Electronic (Hong Kong)
`
`Limited (“Kinwong HK”), have shipped the Circuit Board Products in boxes, crates, and
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`packaging bearing the KINWONG trademark from China or Hong Kong to the United States for
`
`distribution and sale to end-customers located in the United States. As a result, Counterclaimant
`
`is the owner of common law rights in and to the KINWONG trademark in the United States for
`
`the Circuit Board Products.
`
`3. Throughout this time frame, Counterclaimant has developed substantial and valuable
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`goodwill in the KINWONG trademark through advertising, marketing, promotional activities,
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`extensive industry support, superior customer support, and a long history of providing high
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`quality products. As a result, Counterclaimant has developed widespread recognition and
`
`secondary meaning among the trade and consuming public in the KINWONG throughout the
`
`United States and the world.
`
`4. In or about 2002, Rishi Kukreja formed a Florida limited liability company called
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`Circuitronix, LLC (“CTX”).
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`5. On information and belief, at all times relevant hereto, Kukreja was and is the sole
`
`owner of CTX.
`
`6. CTX was, and continues to be, engaged in the marketing and distribution of printed
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`circuit boards for a variety of applications, including automotive, industrial, lighting, and
`
`security systems.
`
`7. On May 5, 2005, Kukreja’s company, CTX, entered into an exclusive Manufacturer’s
`
`Agreement with Kinwong HK’s predecessor, Capital Profit Development Ltd. (“Capital Profit”),
`
`

`

`for the sale, marketing, manufacturing and distribution of printed circuit boards and related
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`products. See Manufacturer’s Agreement (attached hereto as Exhibit A). Kinwong HK
`
`subsequently assumed all rights and obligations under the Manufacturer’s Agreement with CTX.
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`All references to Kinwong HK herein shall include Capital Profit as its predecessor.
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`8. Pursuant to the Manufacturer’s Agreement, Kukreja’s company, CTX, agreed to perform
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`global sales and marketing for Kinwong HK on an exclusive basis for specific customers, or
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`customers otherwise introduced to Kinwong HK by CTX. See Exhibit A, at ¶1.
`
`9. In addition, pursuant to the Manufacturer’s Agreement, Kukreja’s company, CTX, agreed
`
`that it “shall conduct all of its business in its own name maintaining independent sales staffs /
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`offices in the territory, bearing all established and incidental office cost related thereto.” Id. at ¶
`
`1 (emphasis added).
`
`10. In return, Kinwong HK agreed to manufacture its Circuit Board Products for Kukreja’s
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`company, CTX, for distribution and sale in the United States to the exclusive customers
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`identified by CTX. See id. Kinwong HK did so under a license from Shenzhen Kinwong to
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`manufacture and sell products using Shenzhen Kinwong’s globally recognized brand and
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`trademark “KINWONG.”
`
`11. From 2005 through and including 2010, pursuant to the Manufacturer’s Agreement,
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`Kukreja’s company, CTX, marketed, distributed, and sold Kinwong HK’s Circuit Board
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`Products to customers in the United States under Shenzhen Kinwong’s globally-recognized
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`brand and trademark “KINWONG.”
`
`12. On or about June 1, 2010, following a dispute, Kukreja’s company, CTX, and Kinwong
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`HK’s predecessor, Kinwong Group, Ltd. (“KGL”), entered into a Settlement Agreement and
`
`Limited Releases (the “Settlement Agreement”), which reflected their agreement on pricing,
`
`

`

`quality standards, payment terms, and other commercial terms. The Settlement Agreement
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`replaced and superseded the Manufacturer’s Agreement, except to the extent the documents did
`
`not conflict, in which case CTX and Kinwong HK agreed that the Manufacturer’s Agreement
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`was to remain in full force and effect. See Settlement Agreement (attached hereto as Exhibit B).
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`Kinwong HK subsequently assumed all rights and obligations under the Settlement Agreement
`
`with CTX. All references to Kinwong HK herein shall include KGL as its predecessor.
`
`13. Subsequent to the entry into the Settlement Agreement by Kukreja’s company, CTX, and
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`Kinwong HK, and continuing up to and including April 2018, Kinwong HK continued to ship
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`the Circuit Board Products to Kukreja’s company, CTX, in boxes, crates, and packaging bearing
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`the KINWONG trademark for distribution and sale to customers in the United States.
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`14. On or about January 19, 2013, unbeknownst to Counterclaimant or Kinwong HK, and
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`with full knowledge of Counterclaimant’s prior rights in and to the KINWONG trademark,
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`CTX’s founder and sole owner, Kukreja, formed a Florida limited liability company named
`
`“Kinwong LLC” (“U.S. Kinwong”).
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`15. At all times relevant hereto, Kukreja has been and is the sole member of U.S. Kinwong.
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`16. At all times relevant hereto, U.S. Kinwong has maintained its principal place of business
`
`and operated from the same address as CTX in Fort Lauderdale, Florida.
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`17. Kukreja formed U.S. Kinwong for the purpose of engaging in the same line of business
`
`as CTX, namely, the distribution and sale, in the United States and elsewhere, of printed circuit
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`boards and related products for a variety of applications, including automotive, lighting, and
`
`security systems.
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`18. On information and belief, Kukreja intentionally chose to name his new company
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`“Kinwong, LLC” to trade off the goodwill of Counterclaimant’s KINWONG trade name as well
`
`

`

`as the KINWONG trademark that was widely associated by the trade and consuming public with
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`Counterclaimant and the printed circuit boards and related products that Kukreja’s other
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`company, CTX, sold in the United States pursuant to its contracts with Kinwong HK.
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`19. Without permission or authorization from Counterclaimant, U.S. Kinwong has used and
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`continues to use the KINWONG trademark in connection with the distribution and sale of
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`printed circuit boards and related products throughout the United States.
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`20. Upon
`
`information and belief, without permission or authorization
`
`from
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`Counterclaimant, U.S. Kinwong has sold and is continuing to sell printed circuit boards and
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`related products under the KINWONG trademark to the same customers to whom CTX
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`previously supplied printed circuit boards manufactured by Kinwong HK and long associated
`
`with Counterclaimant and its KINWONG trademark.
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`21. Further, without Counterclaimant’s permission, authorization, consent, or knowledge,
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`and with full knowledge of Counterclaimant’s prior rights in and to the KINWONG trademark,
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`Kukreja applied for the KINWONG trademark with the United States Patent and Trademark
`
`Office (“USPTO”) for “circuit boards” in Class 9. Kukreja applied for the mark in his individual
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`capacity “DBA KINWONG, LLC.” See Application Serial No. 86/170,773 (attached hereto as
`
`Exhibit C).
`
`22. In support of his application for federal registration of the KINWONG mark, Kukreja
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`willfully, intentionally, and falsely represented to the USPTO that “no other person, firm,
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`corporation, or association has the right to use the mark in commerce, either in the identical form
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`thereof or in such near resemblance thereto as to be likely, when used on or in connection with
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`the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.”
`
`

`

`23. Subsequent to filing his application for the KINWONG mark, Kukreja advised the
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`USPTO that when his application for the KINWONG mark matured into a registration, the
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`registration should be issued in the name of “Kinwong, LLC” rather than to Kukreja in his
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`individual capacity.
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`24. On May 12, 2015, the USPTO, reasonably relying upon Kukreja’s false and fraudulent
`
`representations, issued U.S. Registration No. 4,736,271 in the name of “Kinwong, LLC” for the
`
`KINWONG mark for “circuit boards” in Class 9. See U.S. Trademark Registration No.
`
`4,736,271 (attached hereto as Exhibit D) (hereinafter, the “ ‘271 Registration”).
`
`25. Subsequent to obtaining the ‘271 Registration for the KINWONG mark, Opposer and
`
`Kukreja, without any legitimate basis or justification, and notwithstanding Kukreja’s knowledge
`
`of and direct involvement in CTX’s distribution of KINWONG-branded printed circuit boards on
`
`behalf of Kinwong HK over a period of ten (10) years, have attempted to interfere with
`
`Counterclaimant’s lawful use of its KINWONG mark, including but not limited to demanding
`
`that Counterclaimant cease and desist from using its KINWONG mark and filing a proceeding
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`before the U.S. Trademark Trial and Appeal Board (“TTAB”) to oppose Shenzhen Kinwong’s
`
`application to register the KINWONG mark.
`
`26. Since at least as early as 2008, and most likely as early as 2005, Counterclaimant has
`
`been the owner of all right, title and interest in and to the KINWONG trademark for circuit
`
`boards and related goods, based on Counterclaimant’s use of the trademark in United States
`
`commerce as early as 2008.
`
`27. U.S. Kinwong is not, and has never been, entitled to federal registration of the
`
`KINWONG mark for circuit boards in Class 9, as its alleged first use of the KINWONG mark in
`
`commerce is long after Counterclaimant’s first use of that mark in commerce.
`
`

`

`28. U.S. Kinwong knew at the time of application that it did not have any rights to the
`
`KINWONG trademark and that Counterclaimant had such rights as the prior user of the
`
`KINWONG mark in United States commerce. As such, the mark was applied for in bad faith.
`
`29. Opposer’s use and registration of the KINWONG mark is likely to be confused with
`
`Counterclaimant’s prior and long-standing rights in the KINWONG mark as used in connection
`
`with circuit boards and related products. As a result, U.S. Trademark Registration No. 4,736,271
`
`should be cancelled under Section 2(d) of the Trademark Act.
`
`30. Further, U.S. Kinwong and its sole member, Kukreja, committed fraud in its application
`
`for and procurement of U.S. Trademark Registration No. 4,736,271, and the said registration
`
`should be cancelled on the basis of fraud on the U.S. Trademark and Patent Office.
`
`WHEREFORE, Counterclaimant respectfully requests that U.S. Registration No. 4,736,271
`
`be cancelled.
`
`Dated: July 9, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Steven J. Wadyka Jr.
`
`
`
`
`
`
`Steven J. Wadyka, Jr.
`
`
`
`
`
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`wadykas@gtlaw.com
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`GREENBERG TRAURIG, LLP.
`
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`2101 L Street N.W.
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`Washington, D.C. 20037
`
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` 202.331.3105
`
`Jacqueline V. Brousseau
`
`
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`
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`brousseauj@gtlaw.com
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`GREENBERG TRAURIG, LLP.
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`77 West Wacker Drive, Suite 3100
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`Chicago, Illinois 60601
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`Counsel for Applicant/Counterclaimant
`Shenzhen Kinwong Electronic Co., Ltd.
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`CERTIFICATE OF SERVICE
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`I certify that I caused a true and correct copy of the foregoing ANSWER TO NOTICE
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`OF OPPOSITION to be served via electronic mail to the addresses indicated on this 9th day of
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`July, 2018.
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`Frank Herrera (fherrera@hnewmedia.com; c.cassi@hnewmedia.com)
`Giselle Ruiz-Arthur (g.ruiz-arthur@hnewmedia.com)
`Gustavo Sardina (g.sardina@hnewmedia.com; k.noyes@hnewmedia.com)
`H NEW MEDIA LAW
`809 NORTH DIXIE HIGHWAY SUITE 202
`WEST PALM BEACH, FL 33401
`UNITED STATES
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`/s/ Jacqueline V. Brousseau
`Jacqueline V. Brousseau
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`EXHIBIT A
`EXHIBIT A
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`Manufacturer's Agreement
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`Agreement made this 4th day of May, 2005 by and between circuitronix, lie , a Florida
`limited liability company having its principal place of business at 201 South Biscayne
`Blvd; Suite 2856; Miami; Fl 33131 ("circuitronix"), and Capital Profit Development Ltd.
`(Manufacturer) having its principal place of business at Rm 502, 5/f, Block B, Veristrong
`Industrial Center, 36 Au Pui Wan Street, Fo Tan, HongKong
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`WHEREAS, MANUFACTURER, and/or its affiliates, is engaged in the manufacture ofPrinted
`Circuit Boards.
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`WHEREAS, MANUFACTURER desires using circuitronix to help to develop demand for and
`Bare Printed Circuit Boards subject to the terms and conditions as set forth in this Agreement.
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`NOW THEREFORE, in consideration of the mutual covenants and promises contained herein,
`and other consideration, the receipt and adequacy of which is hereby acknowledged by the parties,
`circuitronix and MANUFACTURER agree as follows:
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`1. MANUFACTURER grants circuitronix the exclusive right to promote and sell its products to
`all customers/accounts introduced by circuitronix. Such customers/accounts are identified by
`circuitronix on Exhibit "1" attached to this Agreement or will be identified at such time as
`circuitronix requests a price quotation from the Manufacturer. Such customers/accounts are
`identified by circuitronix on Exhibit "1" attached to this Agreement or will be identified at such
`time as circuitronix provides Manufacturer with the name , city and state of the identified
`customer in writing .. Once Manufacturer confirms that the identified customer poses no conflict
`of interest with the Manufacturer. Circuitronix would be allowed to handle the account
`exclusively for a period of 12 (twelve) months. If during the 12(twelve) months Circuitronix
`fails to receive a Purchase Order from the identified customer, Manufacturer is allowed to
`pursue this customer independently. On the other hand should circuitronix succeed in receiving a
`Purchase Order from the identified customer
`the account would be handled exclusively by
`circuitronix for a period of two year from the date of the fast Purchase Order. Such
`customers/accounts shall be exclusively handled by circuitronix. circuitronix shall conduct all of
`its business in its own name maintaining independent sales staffs I offices in the territory, bearing
`all established and incidental office cost related thereto.
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`2. The term "Product" in this Agreement shall mean any Contract Manufacturing related work or
`services provided by MANUFACTURER or any associated entities.
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`3. The term "Territory" in this Agreement shall primarily mean the geographic regions of the
`United States of America ("USA"), Canada, Mexico and South America.
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`4. In so far as MANUFACTURER may directly sell its Product to certain of its customers within
`the Territory, MANUFACTURER covenants that it shall not directly or indirectly enter into any
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`\ ·
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`contract with the customers/accounts of circuitronix to promote and/or solicit orders for the sale 0
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`of Product. Further, should any customer/account of circuitronix have communication with
`MANUFACTURER or its affiliates with intent to enter into business, MANUFACTURER
`agrees to immediately refer said customer/account to circuitronix. Likewise, circuitronix agrees
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`to not interfere in any business relationship that MANUFACTURER may have with its
`customers.
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`5.
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`5.1 circuitronix will diligently solicit and promote sales of Product in consideration of the terms
`herein contained, and shall not offer any price quotations, accept any orders, or make any
`commitments on behalf of the MANUFACTURER, without prior approval. circuitronix shall
`also undertake responsibility for releasing a Purchase Order (PO) to MANUFACTURER, along
`with necessary specifications or drawings, etc., as may be required for providing full and clear
`inputs for manufacturing, packaging, and forwarding supplies
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`5.2 circuitronix will inform MANUFACTURER in writing about acceptance/rejection of
`Product, by customer/account and will release payment (in part or in full on accepted products)
`and instruct MANUFACTURER in writing for rework/cancellation, as the case may be.
`circuitronix agrees
`to document
`in writing reasons for any rejections and have
`the
`customer/account bear responsibility for improper use or handling of Products.
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`5.5 MANUFACTURER will be obliged to accept orders as per the pricing/payment/delivery
`terms agreed upon by the parties. Manufacturer has to provide Circuitronix a six month written
`notice in the event it plans to change any prices.
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`5.6 circuitronix agrees not to contact any of the Manufacturer's suppliers /vendors directly for a
`component requirement for a project which has been awarded to the Manufacturer unless :
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`a) Manufacturer is not able to meet their obligations vis-a-vis quality, service and delivery
`and circuitronix decides not to pursue the project further with Manufacturer.
`b) Manufacturer provides the mandatory six month notice for any price increase and it is
`found to be unacceptable to circuitronix.
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`6. MANUFACTURER acknowledges that circuitronix is expending substantial monies on
`advertising, marketing, technology, and in the development of potential customers/accounts.
`MANUFACTURER further agrees that the identity of circuitronix customers/accounts, the
`specifications of their orders and pricing thereof, are considered confidential and proprietary in
`nature, a valuable asset of circuitronix, and are deemed to be "Trade Secrets" of circuitronix.
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`6.1 MANUFACTURER agrees not to make any commercial use of confidential information
`and/or Trade Secrets of circuitronix regarding the customer's specifications or otherwise without
`obtaining prior written consent from circuitronix. MANUFACTURER recognizes that
`immediate and irreparable damage will result to circuitronix if MANUFACTURER breaches any
`｣ｯｮ､ｩｴｩｯｮｾ＠ of Section 6 of
`of
`the
`terms <!'10
`this Agreement, and accordingly,
`MANUFACTURER consents to the entry by any court of competent jurisdiction of an injunction
`in favor of circuitronix (without bond or other security being required) to restrain any such
`breach, in addition to any other remedies or claims which circuitronix may seek.
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`6.2 This section of the Agreement is considered by the parties to be an integral part of this
`Agreement, and shall survive for a period of 2 years from the date of termination of this
`Agreement.
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`7. Terms & Conditions.
`7.1 MANUFACTURER will confir