throbber
ESTTA Tracking number:
`
`ESTTA1350133
`
`Filing date:
`
`04/03/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91290290
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Plaintiff
`Scrub Daddy, Inc.
`
`MICHAEL TIER
`GERBEN PERROTT, PLLC
`1050 CONNECTICUT AVE NW STE 500
`WASHINGTON, DC 20036
`UNITED STATES
`Primary email: mtier@gerbenlawfirm.com
`Secondary email(s): kkent@gerbenlawfirm.com, eperrott@gerbenlawfirm.com,
`sedbrooke@gerbenlawfirm.com
`No phone number provided
`
`Motion to Suspend for Civil Action
`
`Michael Tier
`
`mtier@gerbenlawfirm.com, kkent@gerbenlawfirm.com, eper-
`rott@gerbenlawfirm.com, sedbrooke@gerbenlawfirm.com
`
`/Michael Tier/
`
`04/03/2024
`
`Attachments
`
`SCRUB MOJI - Motion to Suspend w Exhibit.pdf(2017658 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Scrub Daddy,Inc.
`
`Opposer,
`
`v.
`Smilyeez LLC
`
`Applicant.
`
`!
`:
`:
`
`Opposition No.: 91290290
`Mark: SCRUB MOJI
`Application Serial No: 98/036,420
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDINGIN VIEW OF
`PENDING CIVIL ACTION PURSUANT TO 37 C.F.R.2.117
`
`Opposer Scrub Daddy, Inc. (“Opposer”) hereby moves for suspension of these proceedings
`
`pursuant to 37 C.F.R. § 2.117(a).
`
`In support of this Motion, Opposer submits herewith Exhibit A,
`
`which is a copy of a Complaint filed on January 17, 2024 by Opposer. See Civil Action No. 8:24:cv-
`
`00165-PJM (formerly assigned Civil Action No. 1:24-cv-00165-RDB)
`
`(“Civil Action”) against
`
`Applicant Smilyeez LLC (“Applicant”). The Civil Action is pending in the District Court of
`
`Maryland.
`
`In the Complaint, Opposer alleges federal trademark infringement under 15 U.S.C. 1114,
`
`trade dress infringement, unfair competition, as well as other common law and state claims.
`
`In
`
`circumstances such as these, the Board will typically suspend the TTAB proceeding if the final
`
`determination of the district court proceeding may have a bearing on the issues before the Board.
`
`TBMP§ 510.02(a). A decision by a district court may be binding on the Board.
`
`In contrast, a
`
`determination by the Board as to a defendant’s right to obtain a registration would not be binding or
`
`res judicata in respect to the proceedings pending before the District Court. Whopper-Burger, Inc. v.
`
`Burger King Corp., 171 USPQ 805, 807 (TTAB 1971). Thus, the Civil Action does not have to be
`
`

`

`dispositive of the Board proceeding to warrant suspension. It need only have a bearing on the issues
`
`the Board is considering. Trademark Rule 2.117(a). See, e.g., Mew Orleans Louisiana Saints LLC».
`
`Who Dat?Inc., 99 USPQ2d 1550, 1552 (TTAB 2011).
`
`The Civil Action has a direct bearing on the issues before the Board in this Opposition. In the
`
`Civil Action, the Opposer (as plaintiff) pleads trademark infringement, trade dress infringement,
`
`unfair competition, and other violations of the Lanham Act, as well as common law andstate law
`
`violations. The determination of whether consumersarelikely to be confused by the co-existence of
`
`Applicant’s SCRUB MOJI mark and Opposer’s SCRUB DADDYmarkis at the heart of the Board’s
`
`analysis. Further, Opposer seeks injunctive relief in addition to damages, attorneys’ fees, and costs.
`
`If the district court permanently enjoins Applicant from further use of the SCRUB MOJI mark,
`
`Applicant cannotbe entitled to registration with the United States Patent and Trademark Office.
`
`The district court will consider broader issues beyond the narrow scope of the Opposition.
`
`The Opposition is limited to the contents of the application filed by Applicant, which included a
`
`narrow identification for “cleaning sponges” in International Class 21. The Civil Action will
`
`consider Applicant’s use of the SCRUB MOJI marksin all other contexts. See Goya Foods Inc. ».
`
`Tropicana Products Inc., 846 F.2d 848 (2d Cir. 1988) (doctrine of primary jurisdiction might be
`
`applicable if a district court action involved only the issue of registrability, but would not be applicable
`
`where court action concerns infringement where the interest in prompt adjudication far outweighs
`
`the value of having the views of the USPTO).
`
`CONCLUSION
`
`Because the pending Civil Action involves questions of whether the Applicant’s use of
`
`SCRUB MOJIis likely to damage Opposer’s SCRUB DADDY mark,the results of the Civil Action
`
`will likely be dispositive of, or will at least have bearing on, this proceeding. Opposer, therefore,
`
`

`

`respectfully requests suspension of these proceedings pending determination of the Civil Action
`
`pursuant to Trademark Rule 2.117(a), 37 C.F.R. § 2.117(a).
`
`Dated: April 3, 2024
`
`Respectfully submitted,
`
`AL
`
`Michael J. Tier, Esq.
`Eric J. Perrott, Esq.
`Attorney for Opposer
`GerbenPerrott,
`PLLC
`1050 Connecticut Ave NW,Suite 500
`Washington, DC 20036
`PH:(202) 841-1291
`mtier@gerbenlawfirm.com
`eperrott@gerbenlawfirm.com
`
`

`

`CERTIFICATE OF SERVICE
`
`I herebycertify that true copies of the Motion to Suspend were sent through Electronic Mail on April
`3, 2024 to Applicant at the following address:
`
`sdfolley@gmail.com
`
`Respectfully submitted,
`
`AL
`
`Michael J. Tier, Esq.
`Eric J. Perrott, Esq.
`Attorney for Opposer
`GerbenPerrott,
`PLLC
`1050 Connecticut Ave NW,Suite 500
`Washington, DC 20036
`PH:(202) 841-1291
`mtier@gerbenlawfirm.com
`eperrott@gerbenlawfirm.com
`
`

`

`EXHIBIT A
`
`

`

`UNITED STATES DISTRICT COURT FOR THE DISTRICT
`OF MARYLAND
`
`Civil Action No.
`
`COMPLAINT
`
`Scrub Daddy, Inc.,
`1700 Suckle Hwy.
`Pennsauken, NJ 08110
`
`v.
`
`Smilyeez LLC
`4304 Parkland Court
`Rockville, Maryland, 20853
`
`Plaintiff,
`
`Defendant.
`
`Plaintiff, Scrub Daddy, Inc., by and through its attorneys, alleges as follows:
`
`NATURE OF ACTION
`
`1.
`
`This is an action for violation of Sections 32 and 43 (a) of the Lanham Act, 15
`
`U.S.C. §§ 1114, 1125; for violations of the common law of the State of Maryland arising from
`
`unfair competition; and trademark and service mark infringement and for violations of the Patent
`
`Act, 35 U.S.C. § 271.
`
`THE PARTIES
`
`2.
`
`Scrub Daddy, Inc. (“Scrub Daddy” or “Plaintiff”) is a corporation organized
`
`and existing under the laws of Pennsylvania.
`
`3.
`
`Upon information and belief, Smilyeez LLC (“Smilyeez” or “Defendant”), is a
`
`corporation organized under the laws of Maryland with a principal place of business listed as
`
`4304 Parkland Court, Rockville, Maryland, 20853.
`
`1
`
`

`

`
`
`
`
`JURISDICTION AND VENUE
`
`4.
`
`This Court has original jurisdiction over Plaintiff’s federal claims and the subject
`
`matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338(a) and (b), and 15 U.S.C. §§ 1121
`
`and 1225. In addition, this Court has supplemental jurisdiction over Plaintiff’s state law claims
`
`under 28 U.S.C. § 1367. Furthermore, upon information and belief, this Court also has diversity
`
`jurisdiction over this civil action, as diversity of citizenship exists amongst the parties and the
`
`matter in controversy exceeds the sum or value of seventy-five thousand dollars ($75,000.00).
`
`5.
`
`This Court has personal jurisdiction over Defendant because Defendant has
`
`transacted business, regularly does business, and supplies goods in the State of Maryland and in
`
`this District and should reasonably expect their acts to have legal consequences within the State of
`
`Maryland and this District. Additionally, as alleged herein, this civil action arises out of
`
`Defendant’s marketing, offering, and sale of Defendant’s goods in the State of Maryland and in
`
`this District.
`
`6.
`
`Venue is proper in this District under 28 U.S.C. § 1391 because a substantial
`
`part of the ongoing events giving rise to the claims occurred in this judicial district, and
`
`Defendant is subject to personal jurisdiction within this judicial district.
`
`BACKGROUND FACTS
`
`7.
`
`Scrub Daddy is a cleaning product company best known for its eponymous
`
`cleaning sponges in the shape of a smiley face.
`
`8.
`
`The company, originally named Innovative Manufacturing Services Inc., was
`
`founded by renowned entrepreneur and inventor Aaron C. Krause (“Krause”) in 2008 following
`
`the sale of his highly successful buffing pad company to 3M. Krause initially launched a
`
`grassroots marketing campaign by performing live product demonstrations at local retail stores
`
`and promoting the product on QVC.
`
`2
`
`

`

`9.
`
`In 2012, Scrub Daddy gained nationwide prominence when Krause appeared on
`
`the ABC reality show Shark Tank. Krause’s years of experience pitching the brand was apparent.
`
`Thanks in part to his larger-than-life personality, Scrub Daddy sold 42,000 sponges in less than
`
`7 minutes the day after the episode aired.
`
`10.
`
` By 2017, Scrub Daddy generated more revenue than any Shark Tank product to
`
`date and regularly has sales of its product which exceed $100 million per year around the world.
`
`It is widely considered to be the most successful business to appear on Shark Tank in its 14-year
`
`history and is a leader in the cleaning products industry.
`
`11.
`
`The Scrub Daddy brand was originally used to promote its cleaning sponges. It
`
`has since diversified its product line, which currently boasts more than 20 products in the
`
`cleaning products space, including dual-sided sponges, scouring pads, sink organizers, soap
`
`dispensers, household erasers, and dish wands.
`
`12.
`
`Scrub Daddy values its intellectual property and is committed to enforcing its
`
`intellectual property rights. It owns seven issued patents and an extensive trademark portfolio in
`
`the U.S. and abroad.
`
`13.
`
`Scrub Daddy advertises its goods under several federally registered trademarks,
`
`including the marks DADDY (Registration No. 5,365,748), SCRUB DADDY (Registration Nos.
`
`4,022,758 and 6,180,288), DISH DADDY (Registration No. 6,791,046), ERASER DADDY
`
`(Registration No. 5,042,910), ERASER DADDY 10X (Registration No. 6,043,763), DADDY
`
`CADDY (Registration No. 5,427,469), BBQ DADDY (Registration No. 6,739,793), SAD
`
`DADDY (Registration No. 6,772,854), BIG DADDY (Registration No. 4,886,992), MOP
`
`DADDY (Registration No. 7,055,746), SPONGE DADDY (Registration No. 4,721,566),
`
`SCOUR DADDY (Registration No. 5,302,323), SCREEN DADDY (Registration No.
`
`4,985,254), and SOAP DADDY (Registration No. 5,789,281) (collectively the “DADDY-
`
`3
`
`

`

`formative Marks”).
`
`14.
`
`Scrub Daddy has continuously used the DADDY-formative Marks in commerce
`
`since at least as early as 2007. Its significant investment in marketplace awareness has resulted
`
`in a family of distinctive DADDY-formative Marks successfully associated with its various
`
`household cleaning supplies. From the company’s inception, the DADDY-formative Marks have
`
`been associated with Krause and synonymous with the Scrub Daddy brand. Exhibit A.
`
`15.
`
`Scrub Daddy owns a federal trademark registration before the United States
`
`Patent and Trademark Office (“USPTO”) under Registration No 4,677,237 for the unique and
`
`distinctive shape of its sponge (the “Smile Face Sponge”).
`
`16.
`
`Scrub Daddy has continuously used the Smile Face Sponge in commerce since at
`
`least as early as 2011, entitling its mark to a presumption of incontestability. Its significant
`
`investment in marketplace awareness has resulted in widespread consumer recognition of its
`
`distinctive sponge shape. Since the adoption of this design shape, the Smile Face Sponge has
`
`been synonymous with the Scrub Daddy brand. Exhibit B.
`
`17.
`
`Scrub Daddy also incorporates its Smile Face Sponge as a design element in many
`
`of its marks (the “Smile Face Logo”).
`
`18.
`
`Scrub Daddy owns a federal trademark registration before the United States
`
`Patent and Trademark Office (“USPTO”) under Registration No 4,902,053 for its unique and
`
`distinctive Smile Face Logo (the “Smile Face Logo”).
`
`19.
`
`Scrub Daddy has continuously used the Smile Face Logo in commerce since at
`
`least as early as May 1, 2013, entitling its mark to a presumption of incontestability. Its
`
`significant investment in marketplace awareness has resulted in widespread consumer
`
`recognition of its distinctive design.
`
`20.
`
`Scrub Daddy owns a design patent for the ornamental design of its Smile Face
`
`4
`
`

`

`Sponge under United States Design Patent Number D690,892 (the “D’892 Patent”).
`
`21.
`
`Scrub Daddy commonly uses bubble lettering and the distinctive and bold color
`
`combinations of yellow and blue on its product packaging. This color scheme unmistakably
`
`points to Scrub Daddy, as it is applied to every single product in Scrub Daddy’s product family.
`
`Exhibit C.
`
`Scrub Daddy’s Creation and Use of its DADDY-formative Marks, the Smile Face Sponge, and
`the Smile Face Logo
`
`22.
`
`Scrub Daddy has offered its cleaning supply products since at least as early as 2007.
`
`It was among the first companies to use a highly engineered polymer foam sponge that is firm
`
`when cold, soft when hot, and features a smile face design.
`
`23.
`
`Scrub Daddy began using the DADDY-formative Marks since at least as early as
`
`2007 when it adopted the SCRUB DADDY mark. The distinctive and dominant word “DADDY”
`
`was adopted due to Krause’s role as a father and the household dishwasher.
`
`24.
`
`Scrub Daddy began using the Smile Face Sponge since at least as early as 2011.
`
`The distinctive design shape was adopted as an eye-grabbing feature to distinguish it from
`
`traditional rectangular sponges.
`
`25.
`
`In addition to the symbolic emphasis of the term “DADDY” in the DADDY-
`
`formative Marks, Scrub Daddy frequently emphasizes the term “DADDY” throughout its
`
`advertising, blogs, and media coverage highlighting its products. Exhibit A.
`
`26.
`
`Scrub Daddy advertises its goods to consumers through its website, its various
`
`social media pages, its blog, and through extensive media coverage by national publications and
`
`television programs. Scrub Daddy has invested millions of dollars to date in building brand
`
`awareness and reaching consumers.
`
`27.
`
`Because of its extensive advertising and symbolic emphasis on the term,
`
`5
`
`

`

`“DADDY” has become a conceptually strong mark in the cleaning products space.
`
`28.
`
`Scrub Daddy’s consistent messaging and strategic use of social media and data
`
`analytics have resulted in impressive growth. The publication GrowthScribe reported that Scrub
`
`Daddy boasts well over $100 million in annual sales and has witnessed a substantial growth rate
`
`of approximately 120% annually in recent years. Exhibit D.
`
`29.
`
`Scrub Daddy has further protected its brand investment by registering its
`
`DADDY-formative Marks with the USPTO for use in association with cleaning products. The
`
`registration certificates are attached as Exhibit E. At least five of the DADDY-formative Marks
`
`have been used exclusively and continuously for over five years and have become incontestable.
`
`30.
`
`Scrub Daddy has further protected its brand investment by registering its
`
`distinctive Smile Face Logo with the USPTO for use in association with cleaning products. The
`
`registration certificate is attached as Exhibit F. The Smile Face Logo has been used exclusively
`
`and continuously for over five years and has become incontestable.
`
`31.
`
`Scrub Daddy has further protected its brand investment by registering its Smile
`
`Face Sponge trade dress with the USPTO for use in association with sponges. The registration
`
`certificate is attached as Exhibit G. The Smile Face Sponge has been used exclusively and
`
`
`
`continuously for over five years and has become incontestable.
`
`Scrub Daddy’s Asserted Design Patent
`
`32.
`
`The USPTO duly and legally issued the D’892 Patent, entitled Dishwashing and
`
`scrubbing tool, on October 1, 2013, and names Krause as the inventor. Attached as Exhibit H
`
`is a true and correct copy of the D’892 Patent.
`
`33.
`
`The D’892 patent claims the ornamental design as shown and described in the
`
`patent, including the front top right perspective, front elevational, top plan, left side elevational,
`
`and bottom plan view of a “dishwashing and scrubbing tool.”
`6
`
`

`

`34.
`
`Scrub Daddy is the assignee of the entire right, title, and interest in the D’892
`
`Patent.
`
`35.
`
`Scrub Daddy holds an exclusive license under the D’892 Patent, including the
`
`right to sublicense, make, have made, use, develop, have developed, offer for sale, and sell and
`
`import products covered by the D’892 Patent and the right to assert, and defend, and maintain,
`
`and enforce the D’892 Patent.
`
`
`Smilyeez’s Unlawful Infringing Use of the DADDY-Formative Marks, the Smile Face Logo,
`and the Smile Face Sponge
`
`
`
`36.
`
`Smilyeez is a company that sells cleaning products and home improvement
`
`products.
`
`37.
`
`Smilyeez has chosen to adopt the marks (1) DADDY HANDLE in connection with
`
`a dish wand; and (2) SCRUB MOJI in connection with cleaning sponges (collectively, the
`
`“Infringing Goods”).
`
`38.
`
`Smilyeez has chosen to employ a smile face in its logo with ridged outer edges
`
`that are highly similar to Scrub Daddy’s Smile Face Logo.
`
`39.
`
`Smilyeez has chosen to employ a blue and yellow color scheme in its logo that is
`
`highly similar to Scrub Daddy’s blue and yellow color scheme.
`
`40.
`
`Smilyeez has chosen to (1) adopt the use of a round, smile face scrubbing sponge
`
`that purports to have the same qualities and materials as the Smile Face Sponge; (2) uses lettering
`
`and color scheme on its advertising and marketing materials which closely resembles Scrub
`
`Daddy’s advertising and marketing materials; and (3) uses photos of the Smile Face Sponge in
`
`its advertising and marketing materials (collectively, the “Infringing Trade Dress”).
`
`41.
`
`Smilyeez purposefully seeks to blur the lines of distinction between the two
`
`7
`
`

`

`brands by adopting the Infringing Trade Dress.
`
`Scrub Daddy
`
`Smilyeez
`
`
`
`
`
`
`
`8
`
`

`

`Case 1:24-cv-00165-RDB Document1 Filed 01/17/24 Page 9 of 23
`
`Scrub Dadd
`Scrub Daddy
`
`
` Smityer;
`Smilyeez
`
`Fits the Smilyeez Original Soap DispensingHan:
`
`9
`
`

`

`Scrub Daddy
`
`Smilyeez
`
`
`
`42.
`
`Smilyeez has chosen to use the SCRUB MOJI mark as the name the Infringing
`
`Trade Dress.
`
`10
`
`

`

`43.
`
`Smilyeez’s DADDY HANDLE dish wand was developed and marketed to be used
`
`in connection with the Smile Face Sponge. Literally, the name Smilyeez was adopted to denote
`
`the dish wand’s ease of use for operating with the Smile Face Sponge. Exhibit I.
`
`44.
`
`Further, Smilyeez’s use of the DADDY HANDLE and SCRUB MOJI marks in
`
`association with its Infringing Goods necessitates this action because its conduct is misleading
`
`and confusing to consumers and has caused and will continue to cause serious irreparable harm
`
`to Scrub Daddy.
`
`45.
`
` Smilyeez registered the domain smilyeez.com on or about April 9, 2020. Upon
`
`information and belief, Smilyeez knew of Scrub Daddy’s preexisting rights prior to launching its
`
`website.
`
`46.
`
`Smilyeez contacted Scrub Daddy to become an official Scrub Daddy distributor
`
`on or about January 14, 2022.
`
`47.
`
`48.
`
`Scrub Daddy rejected that offer.
`
`Smilyeez began offering for sale products entitled “Daddy Handle Soap
`
`Dispensing Handle For the Scrub Daddy Sponge” at least as early as October 16, 2021. Exhibit
`
`J.
`
`49.
`
`Smilyeez filed an application for registration of the DADDY HANDLE mark
`
`before the USPTO (Ser. No. 97/751,301) on or about January 12, 2023. This application is
`
`granted a federal priority date of January 12, 2023. Exhibit K.
`
`50.
`
`Scrub Daddy sent a demand letter to Smileyeez regarding its unauthorized use of
`
`the DADDY HANDLE mark and confusingly similar product packaging on or about March 12,
`
`2023.
`
`51.
`
`Smilyeez refused to cease its unauthorized use of the mark DADDY HANDLE or
`
`change the confusingly similar product packaging (“Smilyeez’s Response”) on or about March
`
`11
`
`

`

`23, 2023. The USPTO refused registration of the DADDY HANDLE mark on the grounds of a
`
`likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. §1052(d) with several
`
`DADDY-formative Marks on or about October 10, 2023.
`
`52.
`
`Despite Scrub Daddy’s objection to the use and registration of the mark and the
`
`USPTO’s rejection of its application, Smilyeez continues to use the mark DADDY HANDLE.
`
`53.
`
`Smilyeez filed an application for registration of the SCRUB MOJI mark before
`
`the USPTO (Ser. No. 98/036,420) on or about June 9, 2023 (the “SCRUB MOJI mark”). This
`
`application is granted a federal priority date of June 9, 2023. Exhibit L.
`
`54.
`
`Scrub Daddy has requested a 90-day extension of time to file a Notice of
`
`Opposition against the SCRUB MOJI trademark with the Trademark Trial and Appeal Board.
`
`55.
`
`Despite Scrub Daddy’s numerous efforts to dissuade Smilyeez from adopting
`
`confusingly similar marks and resolve these issues amicably, Smilyeez has only become more
`
`brazen in its attempts to blur the lines of distinction between the two brands by recently adopting
`
`the SCRUB MOJI mark in connection with the Infringing Trade Dress.
`
`
`
`Smilyeez’s Deceptive Marketing and Promotion of the Infringing Goods\
`
`56.
`
`The deceptive marketing and promotion of the Infringing Goods and Infringing
`
`Trade Dress has led consumers to believe that the goods are being offered by or are associated
`
`with Scrub Daddy.
`
`57.
`
`The DADDY HANDLE mark is designed and marketed to not only work with the
`
`Smile Face Sponge but also to take advantage of Scrub Daddy’s goodwill in the marketplace and
`
`to mislead consumers into believing that the DADDY HANDLE mark is affiliated with Scrub
`
`Daddy or originates from Scrub Daddy. Examples of misleading statements and omissions
`
`contained in advertisements promoting the DADDY HANDLE are depicted in Exhibit M for
`
`DADDY HANDLE.
`
`12
`
`

`

`58.
`
`Scrub Daddy has already suffered loss in revenue that correlates with Smilyeez’s
`
`Infringing Goods and Infringing Trade Dress. It is highly probable this confusion will continue
`
`to Scrub Daddy’s financial detriment and to the detriment of the consumers who use and benefit
`
`from its goods.
`
`59.
`
`Smilyeez’s adoption of the DADDY HANDLE mark, the SCRUB MOJI mark,
`
`and the Infringing Trade Dress exemplifies exceptional willful conduct, as it had a legal duty to
`
`avoid infringing the existing rights of Scrub Daddy and to avoid confusion in market channels
`
`where Scrub Daddy has labored to successfully cultivate consumer goodwill and awareness for
`
`its DADDY-formative Marks and Smile Face Trade Dress among consumers.
`
`60.
`
`As a company that attempted to partner with Scrub Daddy, Smilyeez would have
`
`conducted due diligence clearance searches and been aware of Scrub Daddy’s preexisting
`
`trademark rights.
`
`61.
`
`Smilyeez has and continues to make, use, sell, and offer for sale a SCRUB MOJI
`
`Sponge in the United States. As shown below, the Infringing Smile Face Sponge is virtually
`
`identical to the design claimed in the D’892 Patent.
`
`
`
`D’892
`
`SCRUB MOJI Sponge
`
`
`
`
`
`13
`
`

`

`
`
`62.
`
`An ordinary observer or purchaser would find the overall design of the D’892
`
`Patent and SCRUB MOJI Sponge substantially similar and mistakenly purchase the SCRUB
`
`MOJI Sponge. For example, the SCRUB MOJI Sponge is round and features a smile and eyes
`
`that are substantially similar to design claimed in the D’892 Patent.
`
`63.
`
`Upon information and belief, Smilyeez has known of the existence of the D’892
`
`Patent and sponge because it had actual notice of the rights associated with product shape dating
`
`back to the March 12, 2023 cease and desist letter.
`
`64.
`
`As a result of Defendant's infringing activities, Plaintiff has lost sales and suffered
`
`actual damages.
`
`FIRST CAUSE OF ACTION
`(Registered Trademark Infringement)
`
`65.
`
`Plaintiff repeats and incorporates by reference each of the averments contained in
`
`paragraphs 1 through 64 of this complaint with the same force and effect.
`
`66.
`
`Plaintiff owns all rights, title, and interest in the DADDY-formative Marks, which
`
`it has used continuously in U.S. commerce since at least as early as 2007.
`
`67.
`
`Plaintiff has never authorized Defendant to market and/or offer goods or goods
`
`bearing the DADDY-formative Marks or confusingly similar marks.
`
`14
`
`

`

`68.
`
`Defendant began its infringing use of Plaintiff’s mark at least as early as October
`
`16, 2021 when it adopted the DADDY HANDLE mark.
`
`69.
`
`Defendant continued its infringing use of Plaintiff’s mark at least as early as June
`
`9, 2023 when it adopted the SCRUB MOJI mark.
`
`70.
`
`Upon information and belief, Defendant’s actions are willful and intentional with
`
`full knowledge of Plaintiff’s prior rights in the DADDY-formative Marks.
`
`71.
`
`Defendant’s unauthorized use in commerce of the DADDY HANDLE mark and
`
`SCRUB MOJI mark infringes on Plaintiff’s rights in the DADDY-formative Marks and violates
`
`15 U.S.C. § 1114 because it renders Defendant’s goods confusingly similar to Plaintiff’s
`
`DADDY-formative Marks and creates the erroneous impression in consumers’ minds that
`
`Plaintiff’s goods are approved, sponsored, endorsed, developed, or are licensed by, or are in some
`
`way affiliated with Defendant.
`
`72.
`
`Defendant’s actions have caused actual confusion and will likely continue to lead
`
`consumers to incorrectly conclude that Plaintiff’s goods originate from or somehow have become
`
`connected with Defendant, damaging both Plaintiff and the public.
`
`73.
`
`As a result of Defendant’s trademark infringement, Plaintiff has suffered and will
`
`continue to suffer damages, including loss of income, profits, and goodwill.
`
`74.
`
`All of Defendant’s aforementioned acts are “exceptional”, and Plaintiff is entitled
`
`to treble damages and attorney’s fees under 15 U.S.C. § 1117.
`
`75.
`
`Defendant’s acts have caused irreparable damage and injury to Plaintiff and will
`
`continue to cause irreparable injury to Plaintiff unless Defendant is enjoined from further
`
`infringing upon Plaintiff’s registered trademark.
`
`76.
`
`Plaintiff has no adequate remedy at law and is suffering irreparable harm and
`
`damages as a result of the wrongful acts of Defendant in an amount to be determined at trial.
`
`15
`
`

`

`SECOND CAUSE OF ACTION
`(Maryland Common Law Unfair Competition)
`
`77.
`
`Plaintiff repeats and incorporates herein by reference each one of the averments
`
`contained in paragraphs 1 through 76 of this complaint with the same force and effect.
`
`78.
`
`Defendant’s infringing use of the DADDY HANDLE mark and SCRUB MOJI
`
`marks in connection with its goods constitutes unfair competition. Defendant’s use of the marks
`
`is deceptive and misleading and is likely to cause further consumer confusion.
`
`79.
`
`Defendant has offered for sale and sold goods in association with trademarks and
`
`trade dress that are confusingly similar to Scrub Daddy’s marks and trade dress.
`
`80.
`
`Defendant’s conduct willfully disregards Plaintiff’s valuable intellectual property
`
`rights in its DADDY-formative Marks, Smile Face Logo, and Smile Face Sponge.
`
`81.
`
`Defendant’s acts have caused irreparable damage and injury to Plaintiff and will
`
`continue to cause irreparable injury to Plaintiff unless Defendant is enjoined from further
`
`infringing upon Plaintiff’s trademarks.
`
`82.
`
`Plaintiff has no adequate remedy at law and is suffering irreparable harm and
`
`damages as a result of the wrongful acts of Defendant in an amount to be determined at trial.
`
`THIRD CAUSE OF ACTION
`(Common Law Trademark Infringement)
`
`83.
`
`Plaintiff repeats and incorporates herein by reference each of the averments
`
`contained in paragraphs 1 through 82 of this complaint with the same force and effect.
`
`84.
`
`Plaintiff first used the DADDY-formative Marks in commerce at least as early as
`
`2007 prior to Defendant’s adoption of its DADDY HANDLE and SCRUB MOJI marks.
`
`85.
`
`Plaintiff has invested considerable time, effort, and money in the DADDY-
`
`formative Marks over the past 16 years, resulting in established goodwill and reputation amongst
`
`16
`
`

`

`consumers.
`
`86.
`
`Plaintiff’s DADDY HANDLE mark contains the distinctive “DADDY” in
`
`connection with its goods.
`
`87.
`
`Defendant’s s SCRUB MOJI mark used in association with confusingly similar
`
`trade dress and design that includes a product shaped like Plaintiff’s distinctive Smile Face
`
`Sponge, and Plaintiff’s Smile Face Logo creates the misleading commercial impression that
`
`Defendant is associated with or sponsored by Plaintiff.
`
`88.
`
`Defendant’s use of the DADDY HANDLE mark in connection with its Infringing
`
`Goods is confusingly similar to Plaintiff’s DADDY-formative Marks and goods.
`
`89.
`
`Defendant’s use of the SCRUB MOJI mark in connection with its Infringing
`
`Goods is confusingly similar to Plaintiff’s Smile Face Sponge and goods.
`
`90.
`
`Defendant was aware of Plaintiff’s DADDY-formative Marks at the time it
`
`adopted the DADDY HANDLE mark and SCRUB MOJI mark, and Defendant was aware that
`
`consumer confusion was probable as a result of its branding.
`
`91.
`
`Defendant was aware of Plaintiff’s Smile Face Sponge at the time it adopted the
`
`SCRUB MOJI Sponge, and Defendant was aware that consumer confusion was probable as a
`
`result of its branding efforts.
`
`92.
`
`Defendant’s use of the DADDY HANDLE mark, the SCRUB MOJI mark, and
`
`the SCRUB MOJI Sponge is without the permission, consent, or authorization of Plaintiff.
`
`93.
`
`Defendant’s acts have caused irreparable damage and injury to Plaintiff, which
`
`will likely continue unless Defendant is enjoined from further infringing upon Plaintiff’s
`
`trademarks.
`
`94.
`
`Plaintiff has no adequate remedy at law and is suffering irreparable harm and
`
`damages as a result of the wrongful acts of Defendant in an amount to be determined at trial.
`
`17
`
`

`

`
`
`FIFTH CAUSE OF ACTION
`(Federal Unfair Competition and False Designation of Origin)
`
`95.
`
`Plaintiff repeats and incorporates herein by reference each of the averments
`
`contained in paragraphs 1 through 94 of this complaint with the same force and effect.
`
`96.
`
`This cause of action is for unfair competition under the Lanham Act of the United
`
`States, including 15 U.S.C. §§ 1051 and 1125.
`
`97.
`
`Defendant has without consent or permission from Plaintiff, marketed products
`
`utilizing indicia likely to confuse persons in the marketplace into believing that its products are
`
`products of Plaintiff.
`
`Smilyeez’s Infringing Trade Dress
`
`
`98.
`
`Plaintiff’s Smile Face Sponge is distinctive, has been used throughout the United
`
`States and elsewhere, and is well known to distributors in the trade and relevant consumers.
`
`99.
`
`Prior to Defendant’s conduct that forms the basis for this Complaint, consumers
`
`had come to associate the distinctive feel and appearance of the Smile Face Sponge with
`
`Plaintiff’s products.
`
`100.
`
`Through its promotional efforts, business conduct, and continuous use of the
`
`Smile Face Sponge and its associated trade dress, Plaintiff has developed and maintained clients
`
`throughout the United States, including in Maryland. Through its widespread and favorable
`
`acceptance and recognition by the consuming public, the Smile Face Sponge has become an asset
`
`of substantial value as a symbol of Plaintiff, its high quality products, and its goodwill.
`
`101. Accordingly, Plaintiff has established valid and enforceable rights in the
`
`distinctive feel and appearance of the Smile Face Sponge.
`
`102.
`
`Plaintiff and Defendant offer their respective products to customers through the
`
`same trade channels throughout the United States.
`
`18
`
`

`

`103. Defendant is a direct competitor of Plaintiff.
`
`104. Despite Plaintiff’s preexisting valid and enforceable rights in the Smile Face
`
`Sponge, Defendant, without permission or approval, began using its Infringing Trade Dress on
`
`its website and via online retailers to offer and sell its products in the United States, including in
`
`Maryland.
`
`105. As such, Defendant, in connection with its activities, has improperly and
`
`unlawfully utilized the distinctive trade dress, trademark, and appearance design which Plaintiff
`
`has previously adopted and used, and which identify Plaintiff’s goods, thereby creating a
`
`likelihood of confusion in the minds of the purchasing public, as well as in the minds of those in
`
`the trade.
`
`106. This advertising, labeling, and statements are false and misleading in all material
`
`respects, done intentionally, wrongfully and without justification or privilege, resulting in the
`
`immediate and irreparable harm to the Plaintiff.
`
`107. Defendant is deliberately attempting to trade upon the goodwill previously
`
`acquired by Plaintiff as a result of Plaintiff’s diligent efforts.
`
`108. Unless such activities are enjoined, Defendant’s actions are likely to mislead and
`
`confuse the purchasing public and will cause the continued mistaken purchase and use of
`
`Defendant’s product in the incorre

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