ESTTA Tracking number:
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`ESTTA1378907
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`Filing date:
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`08/22/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91290466
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`Party
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`Correspondence
`address
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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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`Plaintiff
`Michael Salcedo
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`MARK J. INGBER ESQ.
`THE INGBER LAW FIRM
`30 WEST MT. PLEASANT AVENUE
`STE 203
`LIVINGSTON, NJ 07039
`UNITED STATES
`Primary email: ingber.lawfirm@gmail.com
`Secondary email(s): ingber.lawfirm@gmail.com, INGBER.LAW@VERIZON.NET
`973-921-0080
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`Motion to Suspend for Civil Action
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`Mark J. Ingber
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`ingber.lawfirm@gmail.com
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`/Mark J. Ingber/
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`08/22/2024
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`Motion to suspend TTAB proceeding due to pending civil litigation FIN
`AL.pdf(108182 bytes )
`Exhibit A-Filed Complaint 24-cv-05947.pdf(1173291 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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` Michael Salcedo
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`Opposer,
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`Opposition No. 91290466
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`v.
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` Xiamen Desifu Commercial Trading Co.,
`Ltd.
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`Applicant.
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`OPPOSER’S MOTION TO SUSPEND OPPOSITION PROCEEDING
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`Opposer, Michael Salcedo. ("Opposer"), hereby moves for the suspension of the above-
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`captioned proceeding pursuant to TBMP §510.02.
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`O n F e b r u a r y 1 4 , 2 0 2 4 , Opposer filed the above captioned Notice of Opposition
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`with the Trademark Trial and Appeal Board (the "Board") against Applicant's, Xiamen Desifu
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`Commercial Trading Co., Ltd. ("Applicant") ALPHABET LORE, Serial No. 97670685 (the
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`"Challenged Application"), citing: (1) priority and likelihood of confusion, pursuant to Section
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`2(d) of the Lanham Act, 15 U.S.C. § 1052(d), ( 2 ) A p p l i c a n t n o t b e i n g t h e r i g h t f u l o w n e r
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`o f t h e A L P H A B E T L O R E m a r k f o r t h e i d e n t i f i e d g o o d s , a n d ( 3 ) u n f a i r
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`a s s o c i a t i o n p u r s u a n t t o 1 5 U S C 1 0 5 2 .
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`On August 6, 2024, Opposer filed a federal litigation lawsuit against Applicant and its
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`principal Zaiquan Liu in the Southern District of New York, 1:24-cv-05947 (the "Federal
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`Litigation") regarding (in part) the registrability and use of the mark in the Challenged Application,
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`asserting the grounds cited in the Notice of Opposition, as well as other grounds, including
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`copyright infringement. In light of the now pending Federal Litigation, Opposer
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`submits this motion for suspension of this Opposition proceeding pursuant to TBMP §
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`510.02(a). The filed complaint in the Federal Litigation action is attached as Exhibit A.
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`I.
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`PENDING FEDERAL LITIGATION BETWEEN OPPOSER AND
`APPLICANT
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`Pursuant to TBMP § 510.02, the TTAB may suspend a proceeding if a pending civil
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`action may have a bearing on the instant proceeding. Opposer filed the Federal Litigation
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`against the Applicant on August 6, 2024, in connection with inter alia the Challenged
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`Application and multiple legal issues presented in the instant matter (e.g., priority, likelihood
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`of confusion, ownership unfair association, and Opposer's prior rights.1 As the outcome of the
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`civil action filed by Opposer may have a bearing on this opposition proceeding, Opposer
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`respectfully requests that the Board suspend this proceeding.
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`Opposer will notify the Board in writing when a decision on the merits has been finally
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`determined in the civil proceeding, and will also provide the Board with a copy of the decision
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`in the civil litigation, pursuant to TBMP § 510.02(b), so that Opposition No. 91290466 may
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`be dismissed by the Board, or alternatively, resumed.
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`1 Opposer contends that the Federal Litigation will be dispositive of the Board case and all disputes between the parties,
` including Opposer’s trademark and copyright infringement claims, which this forum cannot decide.
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`II.
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`CONCLUSION
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`In view of the foregoing, Applicant moves that Opposition No. 91290466 be
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`suspended, pending outcome of the civil litigation cited herein.
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`Dated: August 21, 2024
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`THE INGBER LAW FIRM
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` By: /Mark J. Ingber/
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` Mark J. Ingber
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` 30 West Pleasant Avenue
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` Suite 203
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` Livingston, NJ 07039
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` (9730 921-0080
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` ingber.lawfirm@gmail.com
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` Attorneys for Opposer
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` Michael Salcedo
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 1 of 25
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`MICHAEL SALCEDO
`Plaintiff,
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`v.
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`Case No.
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`
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`XIAMEN DESIFU COMMERCIAL & TRADING
`CO., LTD. AND ZAIQUAN LIU,
`Defendants.
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`JURY TRIAL DEMANDED
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`Mark J. Ingber, Esq.
`THE INGBER LAW FIRM
`30 West Mt. Pleasant Avenue
`Livingston, New Jersey 07039
`Tel: (973) 921-0080
`ingber.lawfirm@gmail.com
`Attorney for Michael Salcedo
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`THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`COMPLAINT
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`Plaintiff Michael Salcedo ("Plaintiff'' or "Salcedo") by and through his attorneys, for
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`his Complaint against Defendants Xiamen Desifu Commercial & Trading Co., Ltd.
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`("Xiamen Desifu") and Zaiquan Liu ("Liu") (collectively, "Defendants"), alleges as
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`follows:
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`NATURE OF ACTION
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`This is a civil action against Defendants for copyright and trademark infringement,
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`false designation of origin, false advertising, and unfair competition, all arising from
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`Defendants' wrongful actions in connection with the sale of children toys under
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`Plaintiff’s ALPHABET LORE mark and copyrighted designs in violation of Salcedo's
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`1
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`1.
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`2.
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 2 of 25
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`intellectual property rights. Defendants' acts have injured Salcedo, and unless
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`restrained will continue to cause such damage and harm.
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`3.
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`Defendants in this action have engaged in blatant and willful copyright and trademark
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`infringement through the copying of Salcedo's ALPHABET LORE trademark and
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`copyrighted designs. A representative comparison is set forth below:
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`SALCEDO’S Authentical, Original ALPHABET LORE mark and design:
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`DEFENDANTS’ Infringing ALPHABET LORE product:
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`2
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 3 of 25
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`PARTIES
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`4.
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`Salcedo is a resident of Texas with his principal place of business at 851 Greenside Drive,
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`Richardson, Texas 75080.
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`5.
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`On information and belief, Xiamen Desifu is a Chinese company with a principal place
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`of business at No.111 Xinmin Town, Wutu Road, Tong'an District, Xiamen City, Fujian
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`Province, China 361100.
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`6.
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`On information and belief, Zaiquan Liu is an individual residing at No.111 Xinmin
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`Town, Wutu Road, Tong'an District, Xiamen City, Fujian Province, China 361100.
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`7.
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`On information and belief, Defendant Zaiquan Liu is the CEO of Defendant Xiamen Desifu
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`and, is its’ sole owner, operator, alter ego, and/or proprietor.
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`8.
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`If Defendant Xiamen Desifu is a legal entity separate from Defendant Liu, Defendant Liu
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`has authorized, assisted, conspired with, or otherwise cooperated with and/or directed
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`Defendant Xiamen Desifu in the acts complained of herein.
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`9.
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`Plaintiff is further informed and believes that Defendant Liu exercises such domain and
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`control over Defendant Xiamen Desifu, with respect to the activities complained of herein,
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`that Defendant Xiamen Desifu had no separate will of its own and such control by
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`Defendant Liu was used to commit the wrongs against Plaintiff complained of herein.
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`Jurisdiction and Venue
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`10.
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`This Court has original jurisdiction over the subject matter of this action pursuant to 28
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`U.S.C. §§ 1331 and 1338(a) and (b). This Court has jurisdiction over the claims in this
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`action that arise under the laws of the State of New York pursuant to 28 U.S.C. § 1367(a),
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`because the state law claims are so related to the federal claims that they form part of the
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`same case or controversy and derive from a common nucleus of operative facts.
`3
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 4 of 25
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`11.
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`Personal jurisdiction over Defendants is proper in this District because Defendants have
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`committed acts of trademark and copyright infringement and unfair competition in this
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`District. Additionally, upon information and belief, Defendants transact business in
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`and have engaged in other conduct within the State of New York such that they have
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`sufficient contacts with this District and State. Defendants purposefully avail
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`themselves of the privileges and benefits of conducting business in the State of New
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`York, a substantial part of the events or omissions giving rise to the claims against
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`Defendants occurred in New York and also involved Liu, and the exercise of
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`jurisdiction over both Defendants comports with traditional notions of fair play and
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`substantial justice.
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`12. Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may properly
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`exercise personal jurisdiction over Defendants since the Defendants directly target
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`consumers in the United States, including New York, through at least the fully interactive
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`commercial Internet stores operating under the Defendants’ Online Marketplace Accounts
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`identified as the “Defendant Internet Store(s).”
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`13.
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`Joinder of Defendants Xiamen Desifu and L i u is a l s o proper under Fed. R. Civ.
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`P. 20(a)(2) in that the claims set forth herein arise out of the same series of transactions,
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`occurrences, or series of transactions or occurrences, and because the same questions
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`of law are common to each of the Defendants.
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`FACTS
`(Plaintiff’s Business)
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`Since at least as early as February 1, 2022, Plaintiff has been a leading provider of
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`entertainment services that provides children animated and online video games related to
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`4
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`14.
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 5 of 25
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`the alphabet under the ALPHABET LORE mark and copyrighted designs.
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`Salcedo’s advertising and marketing has been extraordinarily successful as Plaintiff’s
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`15.
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`ALPHABET LORE animated series on YouTube has received, to date, in excess of 559
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`million
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`views
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`and
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`1.64
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`million
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`subscribers.
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`See
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`https://www.youtube.com/watch?v=wPMum9Slz7M.
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`16.
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`Salcedo is also the owner of U.S. copyright registration PA 2-382-244 issued November 30,
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`2022 for the ALPHABET LORE animated alphabet and toys characters which have been
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`used and licensed for use on many products worldwide. The striking designs and life-like
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`portrayals of the animated and toy characters are widely acclaimed. Salcedo is the official
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`source of ALPHABET LORE goods in the United States. (“the Copyrighted Work").
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`17.
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`The Copyright Act, 17 U.S.C. § 101, et seq., gives Salcedo sole and exclusive rights to
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`the Copyrighted Work. The unauthorized duplication of all or part of the Copyrighted
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`Work constitutes copyright infringement under U.S. federal law.
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`The Copyright-in-Suit
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`18.
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`PA 2-382-244 was duly and legally issued to Salcedo on November 30, 2022 for by the
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`U.S. Copyright Office for the ALPHABET LORE performing work which was first
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`published on February 1, 2022.
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`19.
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`All rights, title, and interest in the ALPHABET LORE copyright registration are in the
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`name of Michael Salcedo, who is the sole owner.
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`20.
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`This registration gives Salcedo the exclusive rights to reproduce, adapt, publish,
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`display, and create derivative works for the Copyrighted Work.
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`21.
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`Salcedo has expended substantial time, money, and other resources in developing,
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`advertising, and otherwise promoting the Copyrighted Work. As a result, products bearing
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 6 of 25
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`his Copyrighted Work are widely recognized and exclusively associated by consumers, the
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`public, and the trade as being products sourced from Salcedo. Salcedo’s promotional
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`efforts include — by way of example, but not limitation — substantial print media, a
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`website,
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`social media
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`sites,
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`and
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`point
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`of
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`sale materials.
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`See
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`https://www.youtube.com/watch?v=wPMum9Slz7M
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`The Trademark-in-Suit
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`22.
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`Since at least as early as February 1, 2022, Salcedo has used the ALPHABET LORE
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`mark to market his goods and services.
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`23.
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`The ALPHABET LORE mark has been used by Salcedo in connection with the promotion
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`of an extensive licensing program on a wide variety of videos, toys, games and other
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`merchandise
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`relating
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`to
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`and
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`promoting
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`the ALPHABET LORE mark:
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`https://epicdrops.com/collections/alphabet-lore;
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`https://www.tiktok.com/discover/alphabet-lore-phatmojo;
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`https://www.patreon.com/posts/official-94442576,
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`24.
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`As a result, the ALPHABET LORE mark has become known throughout the world as
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`identifying Salcedo’s mark and his products and services.
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`25.
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`The ALPHABET LORE mark and the goodwill accompanying it are exclusive, extensive
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`and valuable commercial assets of Salcedo.
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`26.
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`Salcedo is the owner of pending U.S. trademark applications for the ALPHABET LORE
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`mark which are filed under U.S. Federal Trademark Serial Nos. 97726365, 97898424,
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`98284817 in connection with a myriad of children’s toys; entertainment media production
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`services for the Internet; Animation production services.
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 7 of 25
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`27.
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` Salcedo’s ALPHABET LORE mark and the goodwill accompanying it are exclusive,
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`extensive and valuable commercial assets of Plaintiff.
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`28.
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` Since prior to any lawful date which may be claimed by Defendants, Salcedo has been, and
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`is now engaged in the sale of Plaintiff’s goods and services in connection with his
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`ALPHABET LORE mark in interstate commerce.
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`29.
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` The use by Salcedo of the ALPHABET LORE mark for plaintiff's goods and services is
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`long prior to any date which is or may be unlawfully claimed by Defendants, and Salcedo
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`has priority.
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`30. By virtue of Salcedo's longstanding and continuous use of the ALPHABET LORE
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`mark in U.S. Commerce in association with a wide variety of videos, toys, games and
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`other merchandise relating to and promoting the ALPHABET LORE mark, consumers
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`have come to associate the ALPHABET LORE mark with Salcedo's goods and
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`services. As a result, Salcedo is entitled to broad common law trademark rights in the
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`ALPHABET LORE mark.
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`Defendants’ Infringing Acts
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`31. Notwithstanding Salcedo's well-known and prior-established rights in the Copyrighted
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`Work and in his ALPHABET LORE mark, Salcedo recently discovered that
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`Defendants have been using Salcedo's Copyrighted Work in conjunction with his
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`ALPHABET LORE mark in connection with the sale and distribution of plush toys on
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`the Amazon marketplace.
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`32.
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`In addition, Salcedo discovered that on November 9, 2022, Defendant Xiamen Desifu filed
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`U.S. App. No. 97670685 to register Salcedo’s identical ALPHABET LORE mark in the
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`United States in connection with Bathtub toys; Board games; Chess games; Christmas tree
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 8 of 25
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`decorations; Dice games; Dog toys; Electronic learning toys; Infant toys; Plush toys; PVC
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`toy figures; Stacking toys; Stuffed and plush toys; Stuffed toys; Swimming belts; Toy
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`airplanes; Toy cars; Toy masks. The infringing application claims an alleged date of first
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`use in commerce on May 11, 2022.
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`33. Additionally, the alleged specimen of use that Defendants submitted with their infringing
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`U.S. App. Ser. No. 97670685, fraudulently uses Salcedo’s identical copyrighted image and
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`mark in violation of his U.S. Federal Copyright Registration No. PA 2 382-244 and
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`ALPHABET LORE mark, and
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`in conjunction with competing goods/services.
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`(https://tsdr.uspto.gov/documentviewer?caseId=sn97670685&docId=SPE2022111211515
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`8&linkId=4#docIndex=3&page=1)
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`34. Defendant Zaiquan Liu has also fraudulently secured an infringing U.S. Copyright Reg. No.
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`PA0002408703, issued on April 5, 2023 under the identical title Alphabet Lore.
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`35. On September 11, 2023, Salcedo, through its undersigned counsel, sent a Cease-and-Desist
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`Letter to Defendants’ U.S. trademark counsel at the time, Jianyin Liu, Esq., demanding that
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`Defendant “immediately file with the U.S. Trademark Office a Notice of Express
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`Abandonment with prejudice pursuant to 37 C.F.R. § 2.68 of the pending trademark
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`application, US App. No. 97670685; and cease and desist from:
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`• Any further use of the “ALPHABET LORE” mark or any other names similar thereto in
`sound, appearance or meaning; and that you take steps to terminate any present usage of the
`infringing Mark;
`• Cease and TAKE DOWN all sales, advertising (including without limitation, those indicated
`on their Amazon webpage, and any advertising on social media such as, Facebook, Twitter,
`YouTube, Instagram, and Pinterest), promotions offering for sale of goods under the
`“ALPHABET LORE” mark (or any colorable variation thereof);
`• Immediately inform us that your client will in no way make further unauthorized use of the
`ALPHABET LORE mark; and
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 9 of 25
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`• Provide an accounting of your client’s sales of this infringing merchandise, as well as the
`names, addresses and telephone numbers of the manufacturer(s) and/or supplier(s) of such
`merchandise, and any other information regarding your client’s unauthorized use of the Mark.
`• Cease all sales, advertising (including without limitation, those indicated on Amazon, Temu
`or any advertising on social media such as, Facebook, Twitter, YouTube, Instagram, and
`Pinterest), promotions offering for sale of goods under the Mark (or any colorable variation
`thereof);
`Immediately inform us that your client will in no way make further unauthorized use of the
`Mark; and
`• Provide an accounting of your client’s sales of this infringing merchandise, as well as the
`names, addresses and telephone numbers of the manufacturer(s) and/or supplier(s) of such
`merchandise, and any other information regarding your client’s unauthorized use of the Mark.
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`•
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`36. Defendants failed to respond to the Cease-and-Desist letter and subsequently, Salcedo
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`obtained DMCA Take Downs of all of Defendants’ known, infringing Amazon market
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`pages.
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`37. On January 23, 2024, Defendants’ pending ALPHABET LORE U.S. App. No. 97670685
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`was cited in Plaintiff’s ALPHABET LORE U.S. Ser. No. 97898424 as a potential 2(d)
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`prior filed application.
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`38. On February 28, 2024, Defendants’ pending ALPHABET LORE U.S. App. No. 97670685
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`was approved for publication by the USPTO.
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`39.
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` If Defendants’ pending ALPHABET LORE U.S. App. No. 97670685 matures into a
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`registration, the same will be cited as a 2(d) obstruction to Plaintiff’s ALPHABET LORE
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`U.S. Ser. No. 97898424 Application.
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`40. On March 21, 2024, Plaintiff filed Opposition No. 91290466 against Defendant’s pending
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`U.S. App. No. 97670685 requesting that Plaintiff’s application be denied, and that this
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`Opposition be sustained.
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`41. On June 27, 2024, the following attorney filed a Power of Attorney Notice of Appearance
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`on behalf of Defendant Xiamen Desifu in Opposition No. 91290466:
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 10 of 25
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`JASON L DEFRANCESCO, Esq.
`DEFRANCESCOLAW
`110 DUNGANNON. BLVD., STE 101
`WILMINGTON, NC 28403
`UNITED STATES
`jasond@defrancesco.law, ipoffice@defrancesco.law
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`42.
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`Pursuant to FRCP 4(h)(1)(B), Jason L. DeFrancesco, Esq., is authorized by appointment or
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`by law to receive service of process on behalf of Defendants.
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`43.
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`Recently, Plaintiff discovered that Defendants’ infringing "ALPHABET LORE " plush toy
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`products have returned to the Amazon Marketplace and that Defendants are selling,
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`shipping and delivering to customers throughout the U.S., including into the geographic
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`area of the Southern District of New York under their brand GeniusCells.
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` Below are listed representative sample of links of Defendants’ infringing alphabet letter characters which
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`are confusingly similar to Plaintiff’s Copyrighted Work and are all sold under the ALPHABET LORE mark
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`and/or a similar mark likely to cause confusion with Plaintiff’s ALPHABET LORE mark:
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` A
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` - Amazon.com: GeniusCells Alphabet Plush Toy B Letter Blocks Toys Activity Party | Show
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`Name with Letter | Early Development Learning Educational Toy for Toddler Baby Birthday Gift
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`for Kids : Toys & Games
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`B - Amazon.com: GeniusCells Alphabet Plush Toy B Letter Blocks Toys Activity Party | Show
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`Name with Letter | Early Development Learning Educational Toy for Toddler Baby Birthday Gift
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`for Kids : Toys & Games
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`C - Amazon.com: GeniusCells Alphabet Plush Toy C Letter Blocks Toys Activity Party | Show
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`Name with Letter | Early Development Learning Educational Toy for Toddler Baby Birthday Gift
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`for Kids : Toys & Games
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`10
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 11 of 25
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`D - Amazon.com: GeniusCells Alphabet Plush Toy D Letter Blocks Toys Activity Party | Show
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`Name with Letter | Early Development Learning Educational Toy for Toddler Baby Birthday Gift
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`for Kids : Toys & Games
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`F - Amazon.com: GeniusCells Alphabet Plush Toy F Letter Blocks Toys Activity Party | Show
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`Name with Letter | Early Development Learning Educational Toy for Toddler Baby Birthday Gift
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`for Kids : Toys & Games
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`G - Amazon.com: GeniusCells Alphabet Plush Toy G Letter Blocks Toys Activity Party | Show
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`Name with Letter | Early Development Learning Educational Toy for Toddler Baby Birthday Gift
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`for Kids : Toys & Games
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`U - Amazon.com: GeniusCells Alphabet Plush Toy U Letter Blocks Toys Activity Party | Show
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`Name with Letter | Early Development Learning Educational Toy for Toddler Baby Birthday Gift
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`for Kids : Toys & Games
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`V - Amazon.com: GeniusCells Alphabet Plush Toy V Letter Blocks Toys Activity Party | Show
`Name with Letter | Early Development Learning Educational Toy for Toddler Baby Birthday Gift
`for Kids : Toys & Games
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`44. On information and belief, Defendants sell their ALPHABET PLUSH toys under the
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`name ALPHABET LORE through GeniusCells, a company they own.
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`Case 1:24-cv-05947-AKH Document1
`Filed 08/06/24
`Page 12 of 25
`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 12 of 25
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 13 of 25
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 14 of 25
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`45. ALPHABET PLUSH is confusingly similar to Salcedo's ALPHABET LORE mark and
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`is designed to mislead consumers.
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`46. Defendants sell infringing alphabet letter characters which are confusingly similar to
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`Plaintiff’s Copyrighted Work and are all sold under the ALPHABET LORE mark and/or a
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`similar mark likely to cause confusion with Plaintiff’s ALPHABET LORE mark including
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`the designs below:
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`47.
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`The above designs used by Defendants to sell their infringing ALPHABET LORE
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`products are confusingly similar to Salcedo's Copyrighted Work sold under the
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`ALPHABET LORE mark as sold by Plaintiff below:
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 15 of 25
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`48.
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`Upon information and belief, Defendants are selling, shipping and delivering their
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`infringing ALPHABET LORE products in interstate commerce to customers throughout
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`the U.S., including into the geographic area of the Southern District of New York.
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`49. Upon information and belief, Defendants conduct business throughout the United States,
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`including throughout New York and within this Judicial District, through the operation of
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`a fully interactive commercial website and/or online marketplace operating under the
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`Defendants’ Amazon Internet Stores.
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`50. Defendants created numerous Internet Stores and designed them to appear to be selling
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`genuine Plaintiff’s ALPHABET LORE products, while in fact selling inferior imitations.
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`Defendants’ Internet Stores share unique identifiers, such as design elements and
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`similarities of the infringing ALPHABET LORE products offered for sale, establishing a
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`logical relationship between them and suggesting that Defendants’ illegal operations arise
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`out of the same transaction, occurrence, or series of transactions or occurrences.
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`51. Upon information and belief, Defendants facilitated sales by designing the Defendants’
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`Internet Store so that it appears to unknowing consumers to be Plaintiff’s authorized online
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`retailers, outlet stores, or wholesalers selling genuine ALPHABET LORE products. The
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`Defendants’ Internet Store looks sophisticated and accepts payment in U.S. dollars via
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`credit cards and PayPal. Defendants’ Internet Store often include images and design
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`elements that make it very difficult for consumers to distinguish such infringing sites from
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`an authorized Plaintiff website.
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`52.
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` Upon information and belief, Defendants deceive unknowing consumers by using the
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`Plaintiff’s Copyrighted Work sold under the ALPHABET LORE mark without
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`authorization on Defendants’ infringing products. Additionally, upon information and
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 16 of 25
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`belief, Defendants use other unauthorized search engine optimization (SEO) tactics and
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`social media spamming so that the Defendants’ Internet Stores listings show up at or near
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`the top of relevant search results and misdirect consumers searching for Plaintiff’s genuine
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`products.
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`53. Defendants target the United States, including New York, and has offered to sell and, on
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`information and belief, has sold and continues to sell infringing products to consumers
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`within the United States, including New York and this Judicial District.
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`54.
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`In light of the nearly identical marks and the related goods, consumer confusion is
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`highly likely.
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`55.
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`COUNT I
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`(Copyright Infringement)
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`Plaintiff repeats, realleges, and incorporates by reference, as if fully set forth herein,
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`the allegations of the preceding paragraphs, as set forth above.
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`56.
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`Plaintiff is the owner of the Copyrighted Work, which include certain copyright
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`protected motion picture, pictorial or graphic works.
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`57. At all times relevant hereto, Plaintiff has been and still is the owner and proprietor
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`of all right, title, and interest in and to the Copyrighted Work.
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`58.
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`The Plaintiff’s Copyrighted Work contains creative material wholly original to Salcedo
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`and is copyrightable subject matter under the copyright laws of the United States.
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`59. Defendants have infringed and continue to infringe Plaintiff's registered U.S.
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`Copyright by reproducing, adapting, publishing, and displaying the Copyrighted Work,
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`in whole or part, and creating derivatives of Plaintiff’s Copyrighted Work through the
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`sales of their infringing ALPHABET LORE products, including but not limited to plush
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 17 of 25
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`toys. Such copying, distributing, altering, and/or displaying of the Plaintiff ‘s
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`Copyrighted Work was done by the Defendants without the consent, approval, or
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`license of Plaintiff.
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`60.
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`As set forth above, Defendants have also fraudulently taken Plaintiff’s Copyrighted
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`Work and presented it as a specimen of use filed with the U.S. Trademark Office in
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`connection with their infringing ALPHABET LORE, U.S. App. Ser. No. 97670685.
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`61. As set forth above, Defendant Zaiquan Liu has also fraudulently secured an infringing U.S.
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`Copyright Reg. No. PA0002408703, issued on April 5, 2023 under the identical title
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`Alphabet Lore.
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`62.
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`The foregoing actions of the Defendants have been knowing, deliberate, willful, and in
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`utter disregard of Plaintiff's rights.
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`63.
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`The above acts by the Defendants violate Salcedo's exclusive rights under § 106 of
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`the Copyright Act, 17 U.S.C. § 106, and constitute willful infringement of Plaintiff’s
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`copyrights under§ 501 of the Copyright Act, 17 U.S.C. § 501.
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`64. As a direct result of the acts of copyright infringement, Defendants have obtained direct
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`and indirect profits they would not otherwise have realized but for their infringement of the
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`Copyrighted Work products. Plaintiff is entitled to disgorgement of Defendants’ profits
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`directly and indirectly attributable to their infringement of Plaintiff’s products.
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`65. As a result of Defendants’ infringement of Plaintiff’s exclusive rights under copyrights,
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`Plaintiff is entitled to relief pursuant to 17 U.S.C. §504 and to his attorneys’ fees and costs
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`pursuant to 17 U.S.C. §505
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 18 of 25
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`66. As a direct and proximate result of the foregoing acts and conduct, Plaintiff has sustained
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`and will continue to sustain substantial, immediate, and irreparable injury, for which
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`there is no adequate remedy at law. Unless enjoined and restrained by this Court, the
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`Defendants will continue to infringe Plaintiff's rights in the Copyrighted Work.
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`Plaintiff is entitled to actual and/or statutory damages and injunctive relief under
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`Section 502 of the Copyright Act, 17 U.S.C. § 502.
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`COUNT II
`(False Designation of Origin Pursuant to Section 43(a) of the Lanham Act,
`15 U.S.C. § 1125(a)(1))
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`67.
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`Salcedo repeats, realleges, and incorporates by reference, as if fully set forth herein, the
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`allegations of the preceding paragraphs, as set forth above.
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`68.
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`The Alphabet Lore Mark is owned by Plaintiff and Plaintiff has continuously used it in
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`commerce for many years. Plaintiff has not authorized or consented to Defendants’ use of
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`the Alphabet Lore Mark or of any similar marks or names in connection with its products
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`or services.
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`69. Defendants’ actions, as alleged above, are likely to cause confusion, mistake or deception
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`as to the affiliation, connection or association of the Defendants with Plaintiff, or as to the
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`origin, sponsorship or approval of Defendants’ products or services by Alphabet Lore in
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`violation of Section (43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`70. As a direct and proximate result of Defendants foregoing acts, Defendants have been
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`unjustly enriched, and Plaintiff has suffered actual damages, including without limitation
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`lost profits, diversion of resources, costs for investigation and mitigation of harms caused
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`Case 1:24-cv-05947-AKH Document 1 Filed 08/06/24 Page 19 of 25
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`by Defendants’ wrongful conduct, loss of reputation and good will, and all other costs or
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`resolving consumer confusion.
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`71. Defendants’ acts have caused and will continue to cause irreparable and immediate injury
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`to Plaintiff for which Plaintiff has no adequate remedy at law. Unless Defendants are
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`restrained by this Court from continuing its unauthorized use of the ALPHABET LORE
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`mark, these injuries will continue to occur.
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`COUNT III
`(False Advertising Pursuant to Section 43(a) of the Lanham Act,
`15 U.S.C. § 1125(a)(1)(B))
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`72.
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`Salcedo repeats, realleges, and incorporates by reference, as if fully set forth herein, the
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`allegations of the preceding paragraphs, as set forth above.
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`73.
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`Plaintiff has used the ALPHABET LORE mark in New York and throughout the United
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`States on or in connection with the advertising, promotion, and sale of Plaintiff’s goods and
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`services at least as early as February 1, 2022.
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`74.
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`Plaintiff has used the ALPHABET LORE mark continuously in the United States since
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`February 1, 2022 to market and sell Plaintiff’s goods and services.
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`75. Defendants are illegally using Plaintiff’s ALPHABET LORE mark in connection with their
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`advertising, promotion, and sale of Defendants’ competing goods, including but not limited
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`to plush toys.
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`76. Defendants adopted and began using Plaintiff’s ALPHABET LORE mark after Plaintiff’s
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`first use of the ALPHABET LORE mark in the United States.
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`77. Defendants’ use of a mark identical to Plaintiff’s ALPHABET LORE mark for competing
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