Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA908692
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`Filing date:
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`07/11/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91241137
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`Party
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`Correspondence
`Address
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`Defendant
`Shenzhen Kinwong Electronic Co., Ltd.
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`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
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Motion to Suspend for Civil Action
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`Steven J. Wadyka, Jr.
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`wadykas@gtlaw.com, brousseauj@gtlaw.com, chiipmail@gtlaw.com
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`/Steven J. Wadyka, Jr./
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`07/11/2018
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`Motion to Suspend.pdf(126114 bytes )
`Exhibit A.pdf(3201410 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application Serial No. 79/212,641
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`KINWONG, LLC,
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`OPPOSITION NO. 91241137
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`Opposer/Counterclaim Defendant,
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`v.
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`SHENZHEN KINWONG
`ELECTRONIC CO., LTD.
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`Applicant/Counterclaimant.
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`APPLICANT’S MOTION TO SUSPEND PROCEEDING
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`PENDING OUTCOME OF CIVIL ACTION
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`Applicant Shenzhen Kinwong Electronic Co., Ltd. (“Applicant”), pursuant to 37 C.F.R. §
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`2.117 and T.B.M.P. § 510.02(a), hereby moves the Trademark Trial and Appeal Board (the
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`“Board”) to suspend Opposition No. 91241137, filed by Opposer Kinwong, LLC’s (“Opposer”),
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`pending the outcome of the civil action pending between the same parties involving the same
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`mark, Shenzhen Kinwong Electronic Co., Ltd., et al, v. Rishi Kukreja and Kinwong, LLC,, Case
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`No. 0:18-cv-61550-KMW (S.D. Fla., filed July 9, 2018) (the “Civil Action”). A copy of the
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`Complaint is attached hereto as Exhibit A.
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`The Trademark Rules provide that:
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`[w]henever it shall come to the attention of the Trademark Trial and Appeal
`Board that a party or parties to a pending case are engaged in a civil action .
`. . which may have a bearing on the case, proceedings before the Board may
`be suspended until termination of the civil action . . .
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`37 C.F.R. § 2.117. See also T.B.M.P. § 510.02(a).
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`Here, the present Opposition proceeding involves Applicant’s application for the mark
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`KINWONG (the “Mark”), which Opposer has opposed the registration of under the Trademark
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`MIA 186614182v3
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`Act of 1946, 15 U.S.C. §1051 et seq. (the “Trademark Act”), alleging the Mark is likely to be
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`confused pursuant to Trademark Act Section 2(d) with Opposer’s U.S. Trademark Registration
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`No. 4,736,271 for the mark “KINWONG.” 15 U.S.C. §1052(d), and that registration should be
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`refused on the grounds of false association and fraud on the USPTO. In addition, Applicant has
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`asserted a Counterclaim against Opposer seeking cancellation of Opposer’s registration for the
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`KINWONG mark on the grounds of priority of use and fraud on the USPTO.
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`The Civil Action was filed by Applicant and its wholly-owned subsidiary, Kinwong
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`Electronic (Hong Kong) Limited, against Opposer and its sole member and founder, Rishi
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`Kukreja, in the U.S. District Court for the Southern District of Florida on July 9, 2018. The
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`Complaint contains five (5) counts: false designation of origin and unfair competition under
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`Section 43(a) of the Lanham Act (Count I); cancellation of Opposer’s U.S. Trademark
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`Registration No. 4,736,271 on the grounds of priority of use (Count II) and fraud on the USPTO
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`(Count III); trademark infringement and unfair competition under the common law of State of
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`Florida (Count IV); and liability against Kukreja under the Florida corporate alter ego doctrine
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`(Count V). The Civil Action remains pending and is in the initial pleading phase.
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`Courts and the Board have consistently held that suspension of a TTAB inter partes
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`proceeding is appropriate where a civil action in federal district court involves issues in common
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`with those in the TTAB proceeding. See Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d
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`848, 6 U.S.P.Q.2d 1950 (2d Cir. 1988); General Motors Corp. v. Cadillac Club Fashions Inc.,
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`22 U.S.P.Q.2d 1933 (T.T.A.B. 1992); Tokaido v. Honda Associates Inc., 179 U.S.P.Q. 861, 862
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`(T.T.A.B. 1973) (despite the fact that Trademark Office proceeding was filed first, “it is deemed
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`to be the better policy to suspend proceedings herein until the civil suit has been finally
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`concluded.”).
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`MIA 186614182v3
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`Here, not only are Applicant and Opposer currently litigating over the same mark before
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`the Board and in federal district court, but there also are issues in common between the present
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`Opposition proceeding and the Civil Action such that disposition of those issues in the Civil
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`Action will have a direct bearing on the Opposition proceeding. Those issues include (1)
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`whether Applicant or Opposer has senior rights and/or priority of use in the KINWONG mark;
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`(2) whether the use of the KINWONG mark by either Applicant or Opposer creates a likelihood
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`of confusion; and (3) whether Opposer is entitled to maintain its registration for the KINWONG
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`mark, upon which it bases the present Opposition proceeding. If, for example, the federal district
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`court were to find that Applicant is the owner of prior rights in the KINWONG mark and that
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`Opposer’s use of that same mark creates a likelihood of confusion among the relevant consuming
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`public, such a finding would directly impact the Board’s consideration of the present Opposition
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`proceeding.
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`Thus, as shown, both Applicant and Opposer are parties to the Civil Action, and the
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`outcome of the Civil Action is likely to have a direct bearing on the present TTAB proceeding.
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`Applicant therefore respectfully asserts that suspension is appropriate in this case and asks that
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`the Board, in its discretion, issue an order suspending the present Opposition proceeding pending
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`the outcome of the Civil Action.
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`On July 9, 2018, Applicant’s counsel sought Opposer’s consent to this Motion but has not
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`received a response indicating whether Opposer consents to the suspension of proceedings
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`requested herein.
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`MIA 186614182v3
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`CONCLUSION
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`For all the foregoing reasons, Applicant respectfully requests that the Board suspend this
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`proceeding pending final disposition of the Civil Action.
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`Dated: July 11, 2018
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`Respectfully submitted,
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`/s/ Steven J. Wadyka Jr.
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`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., Suite 1000
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`Washington, D.C. 20037
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` 202.331.3105
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`Jacqueline V. Brousseau
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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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` 312.456.8400
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`Counsel for Applicant/Counterclaimant
`Shenzhen Kinwong Electronic Co., Ltd.
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`MIA 186614182v3
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`CERTIFICATE OF SERVICE
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`I certify that I caused a true and correct copy of the foregoing APPLICANT’S
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`MOTION TO SUSPEND PROCEEDING PENDING OUTCOME OF CIVIL ACTION to
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`be served via electronic mail to the addresses indicated on this 11th day of 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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`MIA 186614182v3
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`EXHIBIT A
`EXHIBIT A
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`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 1 of 21
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`CASE NO.: ______________________
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`
`
`
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`SHENZHEN KINWONG ELECTRONIC
`CO., LTD., a Chinese Limited Company,
`and KINWONG ELECTRONIC (HONG
`KONG) LIMITED, a Hong Kong Limited
`Company,
`Plaintiffs,
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`v.
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`RISHI KUKREJA, an Individual, and
`KINWONG, LLC, a Florida Limited
`Liability Company,
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`Defendants.
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`/
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`COMPLAINT
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`Plaintiffs Shenzhen Kinwong Electronic Co., Ltd. (“Shenzhen Kinwong”) and Kinwong
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`Electronic (Hong Kong) Limited (“Kinwong HK”) (collectively, “Plaintiffs”), for their
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`Complaint against Defendants Rishi Kukreja (“Kukreja”) and Kinwong, LLC (“U.S. Kinwong”)
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`(collectively, “Defendants”) state as follows:
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`NATURE OF THE CASE
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`1.
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`This is an action for false designation of origin and unfair competition
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`under the Lanham Act, 15 U.S.C. § 1051 et seq.; for cancellation of a U.S. trademark
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`registration under 15 U.S.C. § 1119; for trademark infringement and unfair competition under
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`the common law of State of Florida; and for liability under the Florida corporate alter ego
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`doctrine, all arising out of Defendants’ willful and unlawful actions whereby they seek to
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`“hijack,” capitalize on, and benefit from the substantial goodwill and reputation that Plaintiffs
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`

`

`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 2 of 21
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`have built over a decade in their KINWONG mark. Plaintiffs seek equitable and monetary
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`relief to remedy the substantial harm they have sustained as a result of Defendants’ unlawful
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`acts.
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`JURISDICTION AND VENUE
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`2.
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`This Court has subject matter jurisdiction over this Complaint by virtue of
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`Title 28 U.S.C. §§1331, 1332 and 1338, and under its supplemental jurisdiction of 28 U.S.C.
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`§1367, the Counts of which concern acts of trademark infringement and unfair competition
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`under the Lanham Act, 15 U.S.C. §1125(a); cancellation of a federal trademark registration
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`under 15 U.S.C. § 1119; trademark infringement and unfair competition under the common law
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`of Florida; and liability under Florida’s corporate alter ego doctrine. Moreover, the parties are
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`citizens of different states so as to also satisfy the requirements for diversity of citizenship. The
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`amount in controversy in the present case exceeds the sum of $75,000.00, exclusive of interest
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`and costs, as Kukreja recently stated in a sworn declaration that U.S. Kinwong’s “total revenues
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`from around the world for goods sold under the KINWONG mark for the five years from 2010
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`to 2015 are around US$$30-50 million per year.”
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`3.
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`The Court has supplemental jurisdiction over the claims arising under the
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`laws of the State of Florida, pursuant to 28 U.S.C. § 1367(a), because the state law claims are so
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`related to the federal subject-matter claims that they form part of the same case or controversy
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`and derive from a common nucleus of operative fact.
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`4. Venue is proper in this District under 28 U.S.C. § 1391.
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`2
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`

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`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 3 of 21
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`THE PARTIES
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`5.
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`Plaintiff Shenzhen Kinwong Electronic Co., Ltd. (“Shenzhen Kinwong”)
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`is a Chinese Limited Company, having a principal place of business at Tiegang Village, Xixiang
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`Town, Bao’An District, Shenzhen Guangdong Province, China.
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`6.
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`Plaintiff Kinwong Electronic (Hong Kong) Limited (“Kinwong HK”) is a
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`Hong Kong Limited Company having a principal place of business in the Hong Kong Special
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`Administrative Region of the People’s Republic of China. Kinwong HK is a wholly-owned
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`subsidiary of Shenzhen Kinwong and licensee of the KINWONG mark.
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`7.
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`Defendant Kinwong, LLC (“U.S. Kinwong”) is a Florida Limited Liability
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`Company, having a principal place of business at 3131 SW 42nd Street, Fort Lauderdale, Florida
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`33312. U.S. Kinwong’s sole member is Defendant Rishi Kukreja (“Kukreja”).
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`8.
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`Kukreja is an individual and citizen of the State of Florida, who, upon
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`information and belief, resides in Sunny Isles, Florida.
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`9.
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`This Court has personal jurisdiction over Defendants by virtue of, among
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`other bases, their transacting of business in the State of Florida, their engagement in tortious acts
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`within the State of Florida and elsewhere, and their overall contacts with the State of Florida; all
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`commensurate with the United States and Florida Constitutions, so as to submit themselves to
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`the jurisdiction and process of this Court.
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`FACTS RELEVANT TO ALL COUNTS
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`A. Plaintiffs and Their KINWONG Trademark
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`10.
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`Plaintiffs manufacture, distribute, market, promote, offer for sale and sell
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`high-density multi-layer printed circuit boards and flexible printed circuit boards, and other
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`3
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`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 4 of 21
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`related products (“Circuit Board Products”) for the global market, including the United States,
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`under the trademark KINWONG.
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`11.
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`Plaintiffs have used the KINWONG trademark in United States commerce
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`since at least as early as 2008, and most likely as early as 2005, in association with the Circuit
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`Board Products, and have manufactured, marketed, promoted, distributed and sold their Circuit
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`Board Products under the KINWONG trademark continuously and without interruption since
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`that date. Specifically, Plaintiffs 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
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`distribution and sale to end-customers located in the United States. As a result, Plaintiffs are the
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`owners of common law rights in and to the KINWONG trademark in the United States for the
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`Circuit Board Products.
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`12.
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`Throughout this time frame, Plaintiffs have developed substantial and
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`valuable goodwill in the KINWONG trademark through advertising, marketing, promotional
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`activities, extensive industry support, superior customer support, and a long history of providing
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`high quality products. As a result, Plaintiffs have developed widespread recognition and
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`secondary meaning among the trade and consuming public in the KINWONG trademark within
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`the State of Florida, as well as throughout the United States and the world.
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`B. The 2005 Manufacturer’s Agreement
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`13.
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`In or about 2002, Defendant Kukreja formed a Florida limited liability
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`company called Circuitronix, LLC (“CTX”).
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`14.
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`On information and belief, at all times relevant hereto, Kukreja was and is
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`the sole owner of CTX.
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`4
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`

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`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 5 of 21
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`15.
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`CTX was, and continues to be, engaged in the marketing and distribution
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`of printed circuit boards for a variety of applications, including automotive, industrial, lighting,
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`and security systems.
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`16.
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`On May 5, 2005, Kukreja’s company, CTX, entered into an exclusive
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`Manufacturer’s Agreement with Kinwong HK’s predecessor, Capital Profit Development Ltd.
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`(“Capital Profit”), for the sale, marketing, manufacturing and distribution of printed circuit
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`boards and related products. See Manufacturer’s Agreement (attached hereto as Exhibit A).
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`Kinwong HK subsequently assumed all rights and obligations under the Manufacturer’s
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`Agreement with CTX. All references to Kinwong HK herein shall include Capital Profit as its
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`predecessor.
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`17.
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`Pursuant to the Manufacturer’s Agreement, Kukreja’s company, CTX,
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`agreed to perform global sales and marketing for Kinwong HK on an exclusive basis for specific
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`customers, or customers otherwise introduced to Kinwong HK by CTX. See Exhibit A, at ¶1.
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`18.
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`In addition, pursuant to the Manufacturer’s Agreement, Kukreja’s
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`company, CTX, agreed that it “shall conduct all of its business in its own name maintaining
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`independent sales staffs / offices in the territory, bearing all established and incidental office cost
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`related thereto.” Id. at ¶ 1 (emphasis added).
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`19.
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`In return, Kinwong HK agreed to manufacture its Circuit Board Products
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`for Kukreja’s company, CTX, for distribution and sale in the United States to the exclusive
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`customers identified by CTX. See id. Kinwong HK did so under a license from Shenzhen
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`Kinwong to manufacture and sell products using Shenzhen Kinwong’s globally-recognized
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`brand and trademark “KINWONG.”
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`5
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`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 6 of 21
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`20.
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`From 2005 through and including 2010, pursuant to the Manufacturer’s
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`Agreement, Kukreja’s company, CTX, marketed, distributed, and sold Kinwong HK’s Circuit
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`Board Products to customers in the United States under Shenzhen Kinwong’s globally-
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`recognized brand and trademark “KINWONG.”
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`C. The 2010 Settlement Agreement
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`21.
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` On or about June 1, 2010, following a dispute, Kukreja’s company, CTX,
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`and Kinwong HK’s predecessor, Kinwong Group, Ltd. (“KGL”), entered into a Settlement
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`Agreement and Limited Releases (the “Settlement Agreement”), which reflected their agreement
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`on pricing, quality standards, payment terms, and other commercial terms. The Settlement
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`Agreement replaced and superseded the Manufacturer’s Agreement, except to the extent the
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`documents did not conflict, in which case CTX and Kinwong HK agreed that the Manufacturer’s
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`Agreement was to remain in full force and effect. See Settlement Agreement (attached hereto as
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`Exhibit B). Kinwong HK subsequently assumed all rights and obligations under the Settlement
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`Agreement with CTX. All references to Kinwong HK herein shall include KGL as its
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`predecessor.
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`22.
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`Subsequent to the entry into the Settlement Agreement by Kukreja’s
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`company, CTX, and Kinwong HK, and continuing up to and including April 2018, Kinwong HK
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`continued to ship the Circuit Board Products to Kukreja’s company, CTX, in boxes, crates, and
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`packaging bearing the KINWONG trademark for distribution and sale to customers in the United
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`States.
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`D. Defendants’ Infringing and Unlawful Acts
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`23.
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`On or about January 19, 2013, unbeknownst to Plaintiffs and with full
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`knowledge of Plaintiffs’ prior rights in and to the KINWONG trademark, CTX’s founder and
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`6
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`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 7 of 21
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`sole owner, Kukreja, formed a Florida limited liability company named “Kinwong, LLC” (“U.S.
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`Kinwong”).
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`24.
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`At all times relevant hereto, Kukreja has been and is the sole member of
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`U.S. Kinwong.
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`25.
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`At all times relevant hereto, U.S. Kinwong has maintained its principal
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`place of business and operated from the same address as CTX in Fort Lauderdale, Florida.
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`26.
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`Kukreja formed U.S. Kinwong for the purpose of engaging in the same
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`line of business as CTX, namely, the distribution and sale, in the United States and elsewhere, of
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`printed circuit boards and related products for a variety of applications, including automotive,
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`lighting, and security systems.
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`27.
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`On information and belief, Kukreja intentionally chose to name his new
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`company “Kinwong, LLC” to trade off the goodwill of Plaintiffs’ KINWONG trade name as
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`well as the KINWONG trademark that was widely associated by the trade and consuming public
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`with Plaintiffs and the printed circuit boards and related products that Kukreja’s other company,
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`CTX, sold in the United States pursuant to its contracts with Kinwong HK.
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`28. Without permission or authorization from Plaintiffs, U.S. Kinwong has
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`used and continues to use the KINWONG trademark in connection with the distribution and sale
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`of printed circuit boards and related products, both within the State of Florida and throughout the
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`United States.
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`29.
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`Upon information and belief, without permission or authorization from
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`Plaintiffs, U.S. Kinwong has sold and is continuing to sell printed circuit boards and related
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`products under the KINWONG trademark to the same customers to whom CTX previously
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`7
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`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 8 of 21
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`supplied printed circuit boards manufactured by Kinwong HK and long associated with Plaintiffs
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`and their KINWONG trademark.
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`30.
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`Further, without Plaintiffs’ permission, authorization, consent, or
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`knowledge, and with full knowledge of Plaintiffs’ prior rights in and to the KINWONG
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`trademark, Kukreja applied for the KINWONG trademark with the United States Patent and
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`Trademark Office (“USPTO”) for “circuit boards” in Class 9. Kukreja applied for the mark in
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`his individual capacity “DBA KINWONG, LLC.” See Application Serial No. 86/170,773
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`(attached hereto as Exhibit C).
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`31.
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`In support of his application for federal registration of the KINWONG
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`mark, Kukreja willfully, intentionally, and falsely represented to the USPTO that “no other
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`person, firm, corporation, or association has the right to use the mark in commerce, either in the
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`identical form thereof or in such near resemblance thereto as to be likely, when used on or in
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`connection with the goods/services of such other person, to cause confusion, or to cause mistake,
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`or to deceive.”
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`32.
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`Subsequent to filing his application for the KINWONG mark, Kukreja
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`advised the USPTO that when his application for the KINWONG mark matured into a
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`registration, the registration should be issued in the name of “Kinwong, LLC” rather than to
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`Kukreja in his individual capacity.
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`33.
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`On May 12, 2015, the USPTO, reasonably relying upon Kukreja’s false
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`and fraudulent representations, issued U.S. Registration No. 4,736,271 in the name of “Kinwong,
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`LLC” for the KINWONG mark for “circuit boards” in Class 9. See U.S. Trademark Registration
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`No. 4,736,271 (attached hereto as Exhibit D) (hereinafter, the “ ‘271 Registration”).
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`8
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`Case 0:18-cv-61550-KMW Document 1 Entered on FLSD Docket 07/09/2018 Page 9 of 21
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`34.
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`Subsequent to obtaining the ‘271 Registration for the KINWONG mark,
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`Defendants, without any legitimate basis or justification, and notwithstanding Kukreja’s
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`knowledge of and direct involvement in CTX’s distribution of KINWONG-branded printed
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`circuit boards on behalf of Kinwong HK over a period of ten (10) years, have attempted to
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`interfere with Plaintiffs’ lawful use of their KINWONG mark, including but not limited to
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`demanding that Plaintiffs cease and desist from using their KINWONG mark and filing a
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`proceeding before the U.S. Trademark Trial and Appeal Board (“TTAB”) to oppose Shenzhen
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`Kinwong’s application to register the KINWONG mark.
`
`35.
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`All conditions precedent to the filing of this action have occurred or have
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`been waived or excused.
`
`36.
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`As a result of the wrongful conduct by Defendants alleged herein,
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`Plaintiffs have been forced to engage the law firm of Greenberg Traurig, P.A. to enforce their
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`rights in connection with the trademark at issue. Plaintiffs are obligated to pay this law firm
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`reasonable attorneys’ fees and costs in connection with these legal services.
`
`
`COUNT I
`FALSE DESIGNATION OF ORIGIN AND FEDERAL UNFAIR COMPETITION
`(Against Both Defendants)
`
`Plaintiffs repeat and reallege each and every allegation contained in
`
`37.
`
`paragraphs 1 through 36, as if fully set forth herein.
`
`38.
`
`This Count arises under an action for damages and injunctive relief
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`pursuant to a violation of the federal laws on false designation of origin and unfair competition,
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`namely, the Lanham Act, 15 U.S.C. § 1125(a).
`
`39.
`
`Plaintiffs have sold substantial quantities of the Circuit Board Products
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`under the KINWONG trademark over a period of at least ten (10) years. The KINWONG
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`trademark has become impressed upon the minds of the trade and consuming public as
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`identifying the goods of Plaintiffs, and as indicating the source of origin of the Circuit Board
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`Products as coming from Plaintiffs.
`
`40.
`
`Plaintiffs have built a large and valuable business in their use of the
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`KINWONG trademark, and the goodwill associated with Plaintiffs, and Plaintiffs alone, is of
`
`great value to Plaintiffs.
`
`41.
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`As a result of Plaintiffs’ long, widespread, continuous and exclusive use of
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`the KINWONG mark in United States commerce, the KINWONG mark has developed and
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`acquired distinctiveness and secondary meaning in the minds of the trade and the consuming
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`public in the field of circuit boards and related products, and has come to indicate to the trade
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`and the consuming public that the Circuit Board Products bearing the KINWONG mark originate
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`from Plaintiffs. Moreover, Plaintiffs have continuously and without interruption, used the
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`KINWONG mark in United States commerce for more than five (5) years, thereby giving rise to
`
`a presumption of distinctiveness and secondary meaning under federal law.
`
`42.
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`Kukreja and the company that he solely owns and controls, U.S. Kinwong,
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`have used, and are continuing to use, the KINWONG trademark in interstate commerce in
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`connection with the manufacture, distribution, sale, and advertising of closely-related and/or
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`competing goods, namely, circuit boards and related products, throughout the United States and
`
`the world, including in Florida.
`
`43.
`
`Upon information and belief, Kukreja and the company that he solely
`
`owns and controls, U.S. Kinwong, adopted and/or continue to use the KINWONG trademark
`
`having full knowledge of Plaintiffs’ prior rights in and to that mark. Defendants’ unauthorized
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`adoption and/or continued use of the KINWONG trademark constitutes blatant, intentional,
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`willful and wanton trademark infringement and unfair competition.
`
`44.
`
`Through their unauthorized use of the KINWONG trademark, Kukreja and
`
`the company that he solely owns and controls, U.S. Kinwong, have caused, and continue to
`
`cause, a likelihood of confusion, mistake, and/or deception as to the affiliation, connection, or
`
`association of Defendants’ purported KINWONG products with Plaintiffs. Furthermore, use of
`
`the KINWONG trademark by Defendants is likely to cause confusion, mistake, and/or deception
`
`as to the origin, sponsorship or approval of Defendants’ goods by Plaintiffs.
`
`45.
`
`Defendants’ acts constitute false designation of origin and unfair
`
`competition in violation of the Lanham Act, 15 U.S.C. § 1125(a).
`
`46.
`
`As a direct and proximate result of Defendants’ unlawful acts, Plaintiffs
`
`have sustained, and will continue to sustain damages unless Defendants are enjoined by this
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`Court.
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`WHEREFORE, Plaintiffs respectfully request that the Court enter judgment against
`
`Defendants and each of them, as follows:
`
`(a)
`
`Under 15 U.S.C. § 1116, Defendants and their agents, representatives, servants,
`
`employees, attorneys, officers, directors, shareholders, licensees, affiliates, joint venturers,
`
`parents, subsidiaries, related corporations, and others in privity and acting in concert with them
`
`be preliminarily and permanently enjoined from:
`
`(i) Using the KINWONG mark and any other mark containing or consisting,
`
`in whole or in part, of the name “KINWONG,” and any other mark confusingly similar to or
`
`colorable imitation of the KINWONG mark, including, in the advertising, distribution, offering
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`for sale, and/or sale of products or services that may reasonably be encompassed by the
`
`KINWONG mark or which may constitute a natural zone of expansion for Plaintiffs;
`
`(ii) Using any service mark, trademark, trade name, trade dress, word, domain
`
`name, number, abbreviation, design, color, arrangement, collocation, or any combination thereof,
`
`which would imitate, resemble, or suggest the KINWONG mark;
`
`(iii) Otherwise infringing the KINWONG mark;
`
`(iv) Unfairly competing with Plaintiffs or otherwise injuring their business
`
`reputation or goodwill in any manner;
`
`(v) Publishing any telephone, directory, Internet listing, or website, including
`
`www.kinwongllc.com, using the KINWONG mark and any other mark containing the name
`
`“KINWONG” and any other mark confusingly similar to or colorable imitation of the
`
`KINWONG mark, in the advertising, distribution, offering for sale, and/or sale of goods or
`
`services that may reasonably be encompassed by the KINWONG mark, or which may constitute
`
`a natural zone of expansion for Plaintiffs;
`
`(vi) Using or registering any domain name which is confusingly similar to the
`
`KINWONG mark in advertising, distribution, offering for sale, and/or sale of a domain name
`
`registration, or any other goods or services that may reasonably be encompassed by the
`
`KINWONG mark, or which may constitute a natural zone of expansion for Plaintiffs;
`
`(b)
`
`Under 15 U.S.C. § 1118, Defendants be directed to deliver up for destruction all
`
`goods, advertisements, labels, signs, prints, boxes, crates, packages, wrappers, receptacles,
`
`computer memory, data, computer programs, software, or any other media, and all other
`
`materials in their possession or under their control bearing the KINWONG mark or any other
`
`mark containing the name “KINWONG” or any reproduction, counterfeit, copy or colorable
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`imitation of the KINWONG mark, and all plates, molds, matrices, and other means of making or
`
`duplicating the same;
`
`(c)
`
`Under 15 U.S.C. § 1117, Defendants account and pay to Plaintiffs damages in an
`
`amount sufficient to compensate them fairly for the injury they sustained, plus all profits that are
`
`attributable to Defendants’ sale of goods or services under or in connection with the KINWONG
`
`mark and/or the name, and further that the amount of the monetary award be trebled in view of
`
`the willful, intentional, and deliberate nature of Defendants’ unlawful conduct;
`
`(d)
`
`(e)
`
`Find this case to be exceptional pursuant to 15 U.S.C. §1117(a);
`
`Award Plaintiffs their attorneys’ fees and costs incurred in this action, pursuant to
`
`15 U.S.C. § 1117 and 28 U.S.C. § 1920; and
`
`Award Plaintiffs such further relief as this Court deems just, proper, and
`
`(f)
`
`equitable.
`
`
`COUNT II
`CANCELLATION OF U.S. TRADEMARK REGISTRATION NO. 4,736,271 –
`PRIORITY OF USE
`(Against U.S. Kinwong)
`
`Plaintiffs repeat and reallege each and every allegation contained in
`
`47.
`
`paragraphs 1 through 36, as if fully set forth herein.
`
`48.
`
`This Count arises under arises under an action for the cancellation of a
`
`federal trademark registration under 15 U.S.C. § 1119.
`
`49.
`
`Plaintiffs have been and are the owners of common law rights in and to the
`
`KINWONG trademark for circuit boards and related products by virtue of their use of the
`
`KINWONG mark in United States commerce since at least as early as 2008, and most likely as
`
`early as 2005, which is long before Defendants’ alleged first use of the mark in commerce on
`
`December 11, 2014.
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`50.
`KINWONG mark.
`
`Plaintiffs have priority of use over Defendants’ claim to rights in the
`
`51.
`
`Defendants’ use and registration of the KINWONG mark is likely to cause
`
`confusion among the trade and the consuming public as to the source, sponsorship, or affiliation
`
`of Defendants’ goods with Plaintiffs.
`
`52.
`
`Pursuant to 15 U.S.C. §1052(d), and by virtue of Plaintiffs’ prior use of
`
`the KINWONG mark in United States commerce on and in connection with the Circuit Board
`
`Products, Defendants are not, and have never been, entitled to federal registration of the
`
`KINWONG trademark for identical and/or related goods.
`
`53.
`
`This Court has the authority, pursuant to 15 U.S.C. § 1119, to order the
`
`cancellation of the ‘271 Registration.
`
`54.
`
`Plaintiffs have been and are continuing to be damaged by the continued
`
`registration of the ‘271 Registration, and said registration should be canceled.
`
`WHEREFORE, Plaintiffs respectfully request that the Court enter judgment against
`
`U.S. Kinwong, as follows:
`
`(a)
`
`Ordering the United States Patent and Trademark Office to cancel U.S.
`
`Trademark Registration No. 4,736,271 on the grounds of Plaintiffs’ priority of use of the
`
`KINWONG mark under 15 U.S.C. § 1064;
`
`(b)
`
`(c)
`
`Find this case to be exceptional pursuant to 15 U.S.C. § 1117(a);
`
`Award Plaintiffs their attorneys’ fees and costs incurred in this action, pursuant to
`
`15 U