Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA236843
`ESTTA Tracking number:
`09/15/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92049264
`Plaintiff
`AW Computer Holdings LLC
`Rod S. Berman
`Jeffer Mangels Butler & Marmaro LLP
`1900 Avenue of the Stars, Seventh Floor
`Los Angeles, CA 90067
`UNITED STATES
`trademarkdocket@jmbm.com
`Other Motions/Papers
`Jessica C. Bromall
`trademarkdocket@jmbm.com
`/jessica c. bromall/
`09/15/2008
`Motion for Reconsideration.pdf ( 9 pages )(100987 bytes )
`Exhibit A.pdf ( 18 pages )(430323 bytes )
`Exhibit B.pdf ( 22 pages )(599304 bytes )
`Exhibit C.pdf ( 7 pages )(2719314 bytes )
`Exhibit D.pdf ( 3 pages )(67835 bytes )
`Exhibit E.pdf ( 8 pages )(253624 bytes )
`Exhibit F.pdf ( 113 pages )(3498229 bytes )
`Exhibit G.pdf ( 10 pages )(20547 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`AW COMPUTER HOLDINGS LLC,
`
`Cancellation No. 92/049,264
`
`Petitioner,
`
`Reg. Nos. 761,883; 1,432,069; and 2,924,744
`
`V.
`
`Marks: SLIP ‘N SLIDE; YELLOW SLIDE
`
`DESIGN, and YELLOW/BLUE SLIDE
`
`WI-IAM-O, INC.,
`
`DESIGN
`
`Respondent.
`
`
`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board _C
`PO. Box 1451
`
`Alexandria, VA 22313-1451
`
`MOTION FOR RECONSIDERATION OF BOARD'S ORDER
`
`SUSPENDING PROCEEDINGS OR, IN THE ALTERNATIVE,
`
`MOTION TO RESUME PROCEEDINGS
`
`I.
`
`INTRODUCTION
`
`Pursuant to Trademark Rules 2.117(a) and 2.127, Petitioner AW Computer Holdings,
`
`LLC ("Petitioner") hereby moves the Board to reconsider its Order dated August 14, 2008,
`
`suspending proceedings in the instant matter pending disposition of two civil actions. In the
`
`alternative, Petitioner moves the Board for an order to resume proceedings in the instant matter,
`
`at least with respect to U.S. Reg. No. 761,883 for SLIP 'N SLIDE (the SLIP 'N SLIDE
`
`Registration“).
`
`Petitioner is a company that is in the process of entering the water toy industry, primarily
`
`as a marketer, seller, and distributor of slip ‘n slides. In the instant cancellation proceeding,
`
`Petitioner seeks cancellation of three unrelated registrations — the SLIP ‘N SLIDE Registration,
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`56l352Dv1
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`on the grounds that the term "slip ‘n slide" is generic, as well as two other registrations involving
`
`unrelated marks — each on distinct and independent grounds. Two of these registrations are
`
`involved in currently pending civil actions. The SLIP ‘N SLIDE Registration, however, is in no
`
`way involved in or affected by any civil action currently pending between the parties.
`
`On August 14, 2008, the Board issued an Order (the "Suspension Order") suspending
`
`proceedings in this cancellation action — with respect to all three registrations — pending final
`
`disposition of the identified civil actions. As a result of the Board's Suspension Order, Petitioner
`
`is precluded from pursuing cancellation of Respondent's registration for the generic term "slip '11
`
`slide" until after final disposition of two civil actions that neither involve, nor have any bearing
`
`on, the SLIP ‘N SLIDE Registration. This result is improper under Trademark Rule 2.1117(a),
`
`contrary to the strong public interest in speedy cancellation of registrations for generic terms, and
`
`manifestly unfair.
`
`Accordingly, Petitioner respectfully requests that the Board reconsider its Suspension
`
`Order, at least with respect to the SLIP ‘N SLIDE Registration, and issue an order resuming
`
`proceedings with respect to the SLIP ‘N SLIDE Registration.
`
`]I.
`
`FACTUAL BACKGROUND
`
`A.
`
`The Registrations at Issue
`
`In this action, Petitioner seeks cancellation of three independent trademark registrations
`
`owned by Respondent, each on distinct and independent grounds, as follows:
`
`U.S. Reg. No. 761,883 for SLIP ‘N SLIDE (the SLIP ‘N SLIDE Registration") on
`
`grounds that the term "slip 'n slide“ is generic;
`
`U.S. Reg. No. 1,432,069 for the YELLOW SLIDE Design (the "YELLOW
`
`SLIDE Registration") on the grounds of fraud on the Trademark Office, as well as
`
`functionality; and
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`0
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`o
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`56B520vI
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`0
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`U.S. Reg. No. 2,924,744 for the YELLOW/BLUE SLIDE Design (the
`
`"YELLOW/BLUE Registration") on the grounds that the "mark" is merely
`
`ornamental and/or descriptive and has not acquired secondary meaning.
`
`Petitioner could have filed three separate cancellation proceedings, one for each registration.
`
`In
`
`the interest ofjudicial economy, however, Petitioner filed only one proceeding in which it stated
`
`the separate and independent grounds for cancellation of each of the three registrations.
`
`B.
`
`The Civil Actions
`
`On August 14, 2008, the Board issued it's Suspension Order suspending proceedings in
`
`the Cancellation Action pending resolution the following civil actions:
`
`0
`
`SLB Toys USA, Inc. v. Wham—O, Inc., et al., United States District Court for the
`Central District of California, Civil Action No. LCV06—l382 RSWL (CWX),
`
`currently on appeal to the United States Court of Appeals for the Ninth Circuit
`
`(the "First Action"); and
`
`0
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`Wham—O, Inc. v. AW Computer Holdings LLC, et al., United States District
`
`Court for the Central District of California, Civil Action No. CV08-01281 RSWL
`
`(CWX) (the "Second Action").‘
`
`The SLIP 'N SLIDE Registration is not at issue or involved in either of the foregoing
`
`proceedings.
`
`1.
`
`The First Action
`
`In the First Action, Respondent alleged that SLB Toys USA, Inc. ("SLB") infringed its
`
`rights in both the YELLOW SLIDE Design mark and the YELLOW/BLUE SLIDE Design mark.
`
`E SLB's Complaint in the First Action and Respondent's Answer and Counterclaims in the
`
`First Action, attached hereto as Exhibits A and B, respectively. In turn, SLB alleged that the
`
`1 The First Action and the Second Action are collectively referred to herein as the "Civil Actions."
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`5IS23520vl
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`YELLOW SLIDE Registration had been abandoned and should be cancelled. Sg Q On or
`
`about October 11, 2007, the jury in the First Action rendered a verdict finding that, inter alia,
`
`that Respondent had not abandoned the YELLOW SLIDE Design mark, that SLB had infiinged
`
`the YELLOW SLIDE Design mark, and that Petitioner had not infringed the YELLOW/BLUE
`
`SLIDE Design mark. E Special Verdict Form from the First Action, attached hereto as Exhibit
`
`C. Thereafter, a judgment in the amount of $6,000,000 was entered in favor of Respondent and
`
`against SLB. E Judgment in the First.Action, attached hereto as Exhibit D.
`
`In or around November of 2007, Petitioner acquired from SLB certain assets, as well as
`
`the appellate rights in the First Action, and on March 5, 2008, Petitioner and SLB filed a Notice
`
`of Appeal of the judgment and orders entered in the First Action. Sg Notice of Appeal filed in
`
`First Action, attached hereto as Exhibit E. The appeal in this matter is currently pending.
`
`The First Action, including the appeal, does not involve any allegations regarding, claims
`
`of infringement of, or requests for cancellation of the SLIP ‘N SLIDE Registration.
`
`In fact, the
`
`First Action has no bearing whatsoever on the SLIP ‘N SLIDE Registration.
`
`2.
`
`The Second Action
`
`In the Second Action, Respondent alleged that Petitioner, among others, is the alter ego
`
`and/or successor in interest to SLB, and seeks to impose the judgment entered against SLB in the
`
`First Action against Petitioner on that basis. E Respondent's Second Amended and
`
`Supplemental Complaint in the Second Action, attached hereto as Exhibit F.
`
`In the Second
`
`Action, Respondent also alleges against certain defendants, not including Petitioner, have
`
`infringed its rights in the YELLOW SLIDE Design mark and the YELLOW/BLUE SLIDE
`
`Design mark. E Q Petitioner, who was named in only one cause of action in the Second
`
`Action, has now been dismissed fiom that proceeding. E Order re Motion to Dismiss, attached
`
`hereto as Exhibit G.
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`5623520V1
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`The Second Action does not involve any allegations regarding, claims of infringement of,
`
`or requests for cancellation of the SLIP ‘N SLIDE Registration.
`
`In fact, the Second Action has
`
`no bearing whatsoever on the SLIP ‘N SLIDE Registration.
`
`C.
`
`The Board's Suspension Order
`
`In its Suspension Order, the Board states that after reviewing the pleadings and other
`
`relevant documents from the Civil Actions, the Civil Actions "involve the same parties and
`
`issues in common with the instant cancellation proceeding." E Suspension Order, at 3. Based
`
`thereon, the Board concludes that the Civil Action may "have a bearing on the Board
`
`proceeding" and, pursuant to Trademark Rule 2.1l7(a), ordered all proceedings herein suspended
`
`pending final disposition of the Civil Actions. See Q at 4.
`
`D1.
`
`ARGUMENT
`
`The Suspension Order is improper under Trademark Rule 2.111”/(a), contrary to the
`
`strong public interest in speedy cancellation of registrations for generic terms, and manifestly
`
`unfair. Accordingly, Petitioner request that the Board issue an order to resume proceedings with
`
`respect to the SLIP ‘N SLIDE Registration.
`
`A.
`
`Trademark Rule 2.1l7(a) Does Not Support Suspension of Proceedings on
`the SLIP ‘N SLIDE Registration
`
`The Trademark Rules provide that suspension of proceedings is appropriate where the
`
`"parties to a pending case are engaged in a civil action or another Board proceeding which may
`
`have a bearing on the case." Trademark Rule 2.117(a).
`
`As noted above, the instant proceeding involves petitions to cancel three separate
`
`registrations on three independent grounds: thelYELLOW SLIDE Registration for fraud on the
`
`Trademark Office and functionality, the YELLOW/BLUE Registration because it is merely
`
`ornamental and/or descriptive, and the SLIP ‘N SLIDE Registration because it is generic. __Only
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`5623520vl
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`the First Action involves the same parties as the instant cancellation proceeding. Similarly, only
`
`the First Action involves the YELLOW/BLUE Registration. Petitioner does not dispute that the
`
`First Action involves both the YELLOW SLIDE Registration and the YELLOW/BLUE
`
`Registration. Petitioner allows that it is conceivable that the Civil Actions could have a bearing
`
`on the outcome of the petitions to cancel the YELLOW SLIDE Registration and the
`
`YELLOW/BLUE Registration.
`
`Neither of the Civil Actions, however, can have any bearing on the petition to cancel the
`
`SLIP ‘N SLIDE Registration. A review of the relevant documents from the Civil Actions
`
`demonstrates that the SLIP "N SLIDE Registration is simply not involved in either Civil Action.
`
`Further, the petition to cancel the SLIP ‘N SLIDE Registration does not share any "issues in
`
`common" with either of the Civil Actions — both of which involve allegations of infringement of
`
`different marks, neither of which puts at issue the term "slip 'n slide" or any variation or
`
`component thereof.
`
`Because the Civil Actions identified by the Board can have no bearing on the petition to
`
`cancel the SLIP ‘N SLIDE Registration, suspension of the proceedings herein with respect to the
`
`SLIP ‘N SLIDE Registration is not warranted by Trademark Rule 2.11"/(a).
`
`B.
`
`Suspension of Proceedings on the SLIP ‘N SLIDE Registration is Contrary to
`the Strong Public Policy Favoring Speedy Cancellation of Registrations for
`Generic Terms
`
`The public has a strong interest in cancelling registrations of generic terms. See, eg,
`
`Kaiser Aluminum & Chemical Cogooration v. American Meter Company, 153 U.S.P.Q. 419,
`
`420-21 (T.T.A.B. 1967); Southwire Company v. Kaiser Aluminum & Chemical Corporation,
`
`196 U.S.P.Q. S66, S73 (T.T.A.B. 1977) (it is in the "public interest to .
`
`.
`
`. cancel those
`
`registrations where the registered marks have, since the time of registration, become terms of art
`
`or common description"). To allow registrations for generic terms to continue to exist on the
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`5623520v1
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`register "would grant the owner of the mark a monopoly, since a competitor could not describe
`
`his goods as what they are." See CBS Pub. Corp. V. St. Regis Publications,_Inc., 531 F.2d 11, 13
`
`(2d Cir. 1975). The foregoing succinctly describes the situation Petitioner faces.
`
`Respondent is the owner of a registration for the generic term "slip 'n slide." Petitioner,
`
`also in the toy industry and in the process of becoming a distributor of "slip 'n slides," is
`
`precluded by Respondent's registration of "slip ‘n slide" from describing its proposed goods as
`
`what they are. Instead, if Petitioner Wants to describe and market its "slip 'n slide" products, it
`
`must employ an "elaborate and possibly confusing paraphrase" to do so, e.g. flexible plastic
`
`Water slides for recreational use. See Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83
`
`F.3d 169, 171 (7th Cir. 1996). Using this description is both confusing and inefficient, and as a
`
`result, as long as Respondent owns the SLIP 'N SLIDE Registration, it has an unfair competitive
`
`advantage over Petitioner, as well as other competitors. E Q
`
`Although neither of the Civil Actions have any bearing on the petition to cancel the SLIP
`
`'N SLIDE Registration, the Board's Suspension Order delays the determination of Whether that
`
`registration should be cancelled for genericness until the unrelated Civil Actions are resolved.
`
`Final disposition of the Civil Actions could take years.
`
`In which case, by its Suspension Order,
`
`the Board could be extending protection for a generic mark by years.
`
`This result is contrary to the public interest in favor of speedy cancellation of
`
`registrations for generic marks. Proceedings on the SLIP ‘N SLIDE Registration should proceed.
`
`C.
`
`The Board's Order is Unfair
`
`As noted above, Petitioner could have filed three separate cancellation proceedings, one
`
`for each registration it sought to cancel. Petitioner, however, mindful ofjudicial economy,
`
`brought all of its petitions to cancel in a single proceeding. Petitioner is now being punished for
`
`this decision.
`
`SSBSZOVI
`
`

`
`The only reason that proceedings on the petition to cancel the SLIP ‘N SLIDE
`
`Registration have been suspended is because the Civil Actions share issues in common with the
`
`petitions to cancel the YELLOW SLIDE Registration and the YELLOW/BLUE Registration.
`
`Had Petitioner simply filed its petition to cancel the SLIP ‘N SLIDE Registration as a separate
`
`action, proceedings on that action would not have been suspended because, as noted above, no
`
`civil action currently pending between the parties has any bearing on the petition to cancel the
`
`SLIP ‘N SLIDE Registration.
`
`Additionally, the marks that are the subject of each of the three registrations involved are
`
`different and the grounds for cancellation are different for each registration. As a result, there
`
`are no issues in common between the petition to cancel the SLIP ‘N SLIDE Registration and the
`
`petitions to cancel the YELLOW SLIDE Registration and the YELLOW/BLUE Registration.
`
`Therefore, no inefficiency or duplication of effort, on the part of either the Board or the parties,
`
`will result if the petition to cancel the SLIP ‘N SLIDE Registration is allowed to proceeding.
`
`IV.
`
`CONCLUSION
`
`For all the foregoing reasons, Petitioner respectfully requests that the Board reconsider its
`
`Suspension Order, or in the alternative, that the Board issue an order to resume proceedings in
`
`the instant matter with respect to the SLIP ‘N SLIDE Registration.
`
`Respectfiilly submitted,
`
`Dated: September 15, 2008
`
`By:
`
`erman, Esq.
`Rod S
`Brian W. Kasell, Esq.
`Jessica C. Bromall, Esq.
`JEFFER MANGELS BUTLER & MARMARO, LLP
`
`1900 Avenue of the Stars, Seventh Floor
`
`Los Angeles, California 90067
`(310) 203-8080
`Attorneys for Petitioner AW COMPUTER
`HOLDINGS LLC
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`5623520vl
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`CERTIFICATE OF SERVICE
`
`I hereby certify that one (1) copy of this document is being deposited with the
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`United States Postal Service as First Class Mail, postage affixed, in an envelope addressed to:
`
`Beth M. Goldman
`
`Heller Ehrman LLP
`
`333 Bush Street
`
`San Francisco CA 94104-2878
`
`Date: September 15, 2008
`Jessica C. Bromall
`
`Jeffer, Mangels, Butler & Marmaro LLP
`1900 Avenue of the Stars, Seventh Floor
`Los Angeles, CA 90067
`Phone: (310) 203-8080
`Fax: (310) 203-0567
`Www.jmbm.com
`
`562'_3520vl
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`EXHIBIT A
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`

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`M25.
`
`2008 11:48PM
`
`H
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`_ H
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`N0 5486
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`l
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`Alex M. Wein arten Bar No. 204410)
`%1AG\lK3/R WEI EAR EN LLP
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`1601 Cloverfield Blvd., Second Floor, South Tower
`?3'2‘2r*s%%4°4
`FaIcsl)mll)g:
`I3l0l 496-0422
`uw@lc1gen»vez'ngarten. com
`
`e
`
`e:
`
`-
`
`Al.'l'.OIT1E8'S for Plaintiff
`SLB T YS USA, INC.
`
`1
`SLB TOYS USA, INC., a New York
`Corporation,
`
`,
`l
`l
`E
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT or CALIFORNIA ‘
`as CV06-1"382RSb°L G‘)/V
`Case No.
`
`1"=“1
`E3
`
`'1-,--,',_?s
`;s::.‘
`
`,:E:
`at
`ca
`
`Plaintiff‘,
`
`COMPLAINT FOR
`
`_
`
`6
`7
`8
`9
`10
`1 1
`
`12
`
`17
`13
`
`19
`
`20
`21
`22
`23
`
`
`
`
`
`1. Trademark Infringement (Section
`43(a of Lanham Act);
`v.
`13
`2. Tra e Dress Infringement (Section
`43(a of Lanham Act ;
`14 WHAM:O, INC., a Delaware.
`3. Tra emark Infringement under
`co‘1}%orat1on, CORNERSTONE
`Common Law;
`15
`O
`RSEAS INVESTMENTS LTD. a
`Hon Kon entitg CHARTERHOUSE 4. Breach of Confidential and
`GRCIUP, INC. a
`elaware co oration;
`Fiducia Relationship;
`TRAXI, LLC, a New York en ity; and
`5. Unfair
`om etition;
`DOES 1~l0, inclusive,
`6. Declaratory elief ____#__________—~r
`Defendants.
`'
`'
`
`
`
`PlaintiffSLB Toys, Inc. (“SLB”) alleges as follows:
`JURISDICTION AND VENUE
`This is a civil action arising under the United Sates Trademark Act of
`1.
`1946, as amended, 15 U.S.C. §§ 1051, etseq. (the “Lanham Act”), for infringement in
`violation of Section 43(a) ofthe Lanham Act, 15 U.S.C. § 1125(a), and for related
`rights under the statutory or common law of the State of California.
`
`2.
`
`This Court has subject matter jurisdiction ofthis action pursuant to 15
`
`U.S.C. § 1121 and23 U.S.C. §§ 1331, 1:133,2201,and22112,as1:involvesTenn.
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`-1-
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`COMPLAINT
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`

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`Jun. 25.
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`2008 ll:49PM
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`No.6486
`
`P.2
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`arising under the Lanham Act. This Court has supplemental subject matter
`
`jurisdiction over all other claims pursuant to 28 U.S.C. § 1367, because they are so
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`related that they form part of the same case or controversy.
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`3.
`
`This Court has personal jurisdiction over the Defendants in that they are
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`doing business in the State of California and are committing the acts hereinafter
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`alleged in this State.
`
`,\
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`4.
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`Venue in this Court is proper pursuant to 28 U.S.C. § 1391, in that the
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`parties are located in or transact their affairs in this district and because a substantial
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`part of the events or omissions giving rise to the claims occurred in this district.
`I
`PARTIES
`
`5.
`
`Plaintiff SLB is a corporation organized and existing under the laws of
`
`the State of New York, with its principal place of business located in Los Angeles
`
`County, California. SLB does business as Toy Quest, a toy company which promotes,
`
`advertises and sells toys to retailers throughout the United States.
`
`6.
`
`SLB is informed and believes and based thereon alleges that defendant
`
`Wham-O, Inc. (“Wham-O”) is a Delaware corporation, with its principal place of
`
`business located in Emeryville, California. Wham-O is a toy company which
`
`promotes, advertises and sells products that compete with the products and services of
`
`SLB.
`
`g
`
`7.
`
`SLB is informed and believes and based thereon alleges that defendant
`
`Cornerstone Overseas Investments Ltd. (“Cornerstone”) is a Hong Kong entity which
`
`has at all relevant times conducted business in California. Cornerstone recently
`
`purchased Wham-O from defendant Charterhouse Group, Inc. and, on information and
`
`belief, provides manufacturing facilities and other services or assistance to Wham-O
`
`in connection with the manufacture and distribution of its toys.
`
`8.
`
`SLB is informed and believes and based thereon alleges that defendant
`
`Charterhouse Group, Inc. (“Charterhouse”) is a Delaware corporation, with its
`
`-2-
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`COMPLAINT
`
`

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`Jun. 25.
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`2008 ll:50PM
`
`No.6486
`
`P.3
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`principal place of business located in New York, which has at all relevant times
`
`conducted business in California. Charterhouse is a private investment group or
`equity fund which recently sold its interest in Wham-O to Cornerstone in or about
`
`January of 2006.
`
`9.
`
`SLB is informed and believes and based thereon alleges that defendant
`
`Traxi, LLC (“Traxi”) is a New York entity, with its principal place of business located
`
`in New York, which has at all relevant times conducted business in California. Traxi
`
`promotes itself as a special situation advisory or consulting firm and represented
`
`Wham-O and Charterhouse in connection with the sale of‘Whahm—O and related
`negotiations.
`
`10.
`
`SLB is unaware of the names and true capacities of defendants, whether
`
`individual, corporate or otherwise, named herein as DOES 1 through 10, inclusive,
`
`and therefore sues them by their fictitious names. SLB will seek leave to amend this
`
`complaint when their true names and capacities are ascertained. SLB is informed and
`
`believes, and based thereon alleges that said defendants and DOES 1 through 10,
`
`inclusive, are in some manner responsible for the wrongs alleged herein, and that at all
`
`times referenced each was the agent and servant of the other defendants and was
`
`acting within the course and scope of said agency and employment.
`
`GENERAL ALLEGATIONS
`
`11.
`
`SLB is an innovative and dynamic toy company located in Los Angeles
`
`County, California with product lines in multiple categories including preschool,
`
`plush, plastic, wood, inflatables, water and pool toys, battery-operated, radio control,
`
`plug and play, musical instruments, and youth electronics. SLB has over thirty years
`
`of experience in the toy industry and has achieved considerable success including top
`
`selling toy products such as Teknc The Robotic Dog (awarded Toy of the Year). SLB
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`has been honored with awards such as Vendor of the Year by Toys ‘R Us and has
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`earned the right to include its products with McDonald’s Happy Meals. SLB has
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`-3-
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`COMPLAINT
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`Jun.25.
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`2008 1l:50PM
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`NEL6486
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`P.
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`4
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`fostered an excellent reputation among its peers and customers and relies on this
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`reputation in its business.
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`12.
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`SLB currently markets a line of popular water slide toys that are known
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`as the Banzai Falls water slides. These water slide toys include the Banzai Falls
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`Quick Set Water Slide, the Banzai Falls In-Ground Pool Slide, the Banzai Falls Mega
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`Racer, and the Banzai Falls Criss Cross (collectively the Banzai Falls Water Slides).
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`True and correct photographs of the Banzai Falls Quick Set Water Slide, the Banzai
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`Falls In—Graund Pool Slide, the Banzai Falls Mega Racer, and the Banzai Falls Criss
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`I Cross are attached hereto as Exhibits A, :13, C and D, respectively‘, and are
`E
`incorporated herein by this reference.
`0
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`13.
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`In or about March 2003, SLB began marketing Banzai Falls Quick Set
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`Water Slide to the toy trade. The product, which was designed and developed by and
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`is an original creation of SLB, is a puncture proof, rapidly inflating water slide that
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`' children (and adults for that matter) can use in their own back yards. A blower motor,
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`included with the product, keeps the inflatable water slide continuously inflated and
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`the water comes from an average garden hose. The material used also allows the slide
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`to be used dry.
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`14.
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`Retailers such as Toys ‘R Us and Wal~Mart were immediately interested
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`in the Banzai Falls Quick Set Water Slide and SLB began production in earnest
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`shortly after its initial presentation. Shipment of the Banzai Falls Quick Set Water
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`; Slide to the United States from production facilities in China began in or around
`i December 2003 for sale in the 2004 Sununer season. The Banzai Falls Quick Set '
`Water Slide was an instant success and quickly became a popular toy product
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`‘
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`receiving an award as one of the top ten toys for 2004.
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`15.
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`SLB continued to market and sell the Banzai Falls Quick Set Water Slide
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`in 2005, and it has been nominated for Toy of the Year for 2006. In addition, in 2005,
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`SLB undertook to build upon the success of the Banzai Falls Quick Set Water Slide
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`-4-
`COMPLAINT
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`Jun. 25. 20081l:51PM
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`No.6486
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`P.5
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`and extend the product line to include the Banzai Falls In«Graund Peal Slide, the
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`Banzai Falls Mega Racer, and the Banzai Falls Criss Cross. The Banzai Falls In-
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`Graanci Peel Slide was released at the beginning of 2005 for the 2005 Summer
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`seaS0n,..,n-tad the Banzai Falls Mega Racer and the Banzai Falls Criss Cross were
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`released at the end of 2005 in preparation for the 2006 Summer season. These slides,
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`like the Banzai Falls Quick Set Water Slide, also share the fanciful and ornamental
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`design of the Banzai Falls arch over the top of the slide in which a Vertical stitching or
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`seam pattern is used to create the appearance of multiple vertical tubes comprising the
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`hereto. All of these
`arch (the ‘f,Banzai Falls Arch Mark”). See Exhibits A through
`slides also share the fanciful and ornamental design ofthe Banzai Falls side panels in
`which the stitching or seam pattern is used to create the appearance of three horizontal
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`tubes that run along side the slide, with two top tubes of equal size and a bottom tube
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`that is thicker, and a center triangle shape beneath the arch with the top of the triangle
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`squared off with horizontal line and a logo in the center of the triangle (the “Banzai
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`Falls Side Panel Mark”). Ibid.
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`16.
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`The Banzai Falls Quick Sei Water Slide, Banzai Falls In-Ground Peal
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`Slide, the Banzai Falls Mega Racer, and Banzai Falls Criss Crass additionally share
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`the unique features comprising a common, non-functional trade dress which include
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`the silhouette, shape, profile, size, configuration and dimension, as well as placement
`of elements such as the Banzai Falls Arch Mark and the Banzai Falls Side Panel Mark
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`(collectively the “SLB Trade Dress”). Other elements comprising the SLB Trade
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`Dress include:
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`(a)
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`Climbing wall in the back to reach top of slide with the look of
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`horizontal tubes created by two seams;
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`(b)
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`Arch over the top of the slide with the Banzai Falls Arch Mark and
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`containing the water nozzle for spraying onto the slide;
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`(c)
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`Steep slide starts under the arch;
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`-5-
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`COMPLAINT
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`1 2 3 4 5 6 7 8 9
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`ll
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`Jun. 25. 20081l:51PM
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`No.6486
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`P.6
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`p—|
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`;'~J.’.'.'-'I'$1O'--JG‘~.LJ'I-I‘-‘-'-..t..‘I[*~.l|
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`Side of slide with the Banzai Falls Side Panel Mark that is
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`primarily blue in color;
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`(e)
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`Orientation of water spray from top of the arch;
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`(f) Waterbags attached to the slide under the triangle;-
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`(g)
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`Yellow blower motor and tube for inflating the slide.
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`In addition, the Banzai Falls Quick Set Water Slide, the Banzai Falls Mega Racer and
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`the Banzai Falls Criss Cross each include a splash pool for landing at the end of the
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`slide with a. horizontal seam depicting horizontal tubes above the floor of the pool and
`an indentation in the top two rails on side of splash pool for exit about halfway
`forward in splash pool. Also, the color of the vertical slide for each of the Banzai
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`Falls In-Ground Pool Slide and the Banzai Falls Criss Cross is yellow.
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`17.
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`SLB has spent millions of dollars promoting its Banzai Falls Water
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`Slides, primarily through production and airing of advertising for the Banzai Falls
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`Quick Set Water Slide on network television featuring the unique features forming the
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`Banzai Falls Arch Mark, the Banzai Falls Side Panel Mark and the SLB Trade Dress
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`for its Banzai Falls Water Slides. SLB has developed a reputation as the leader in the
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`toy industry for inflatable water slides through such advertising and the success its
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`sales of the Banzai Falls Water Slides. The Banzai Falls Arch Mark and the Banzai
`Falls Side Panel Mark are inherently distinctive and are further associated through
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`such advertising and the success of SLB’s sales of the Banzai Falls Water Slides with
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`a particular source, particularly SLB. Likewise, the SLB Trade Dress is also
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`inherently distinctive and further is associated and has acquired secondary meaning
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`through such advertising and the success of SLB’s sales of the Banzai Falls Water
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`Slides with a particular source, particularly SLB.
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`18. Meanwhile, in or about October 2005, SLB entered into confidential
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`discussions with Charterhouse, Traxi and Wham-O in connection with a possible
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`merger or acquisition by SLB involving Wham-O. Charterhouse was looking to sell
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`-5-
`
`COMPLAINT
`
`

`
`Jun. 25.
`
`2008 ll:52PM
`
`No.6486
`
`P.7
`
`|—n
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`@'-‘G-DID‘--JO"«L4n-t-‘-‘nLuJE\J
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`all or a substantial part of its interest in Wham—O, and Traxi was advising
`Charterhouse and Wham—O in connection with a potential sale of Wham—O. As part of
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`those discussions, SLB disclosed in confidence its product line for 2006 to
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`Charterhouse and Traxi, both of which weretalso acting on behalf of Wham—O, and the
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`information so disclosed in confidence included SLB’s plans for release of the Banzai
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`Falls Criss Cross as the next generation or extension of its Banzai Falls Water Slides
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`for the 2006 season. Charterhouse, Traxi and Wham—O, and each of them, knew and
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`understood that SLB had disclosed this information to them in confidence, that the
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`information was not to be used for any reason other than for the purpose of evaluating
`a potential merger or acquisition of Wham-O by SLB and that they could not use this
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`information for any other purpose, including for the purpose of creating, producing or
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`selling a competing product or otherwise for use in competition with SLB.
`
`0
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`19. On or about January 19. 2006, Wham-O announced that Cornerstone had
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`acquired the company from Charterhouse. As a result of the transaction, according to
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`the press release, Wham-O’s management, Vendors and customers will benefit from
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`Cornerstone’s size, financial stability and operational assistance, including the
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`production, manufacture or distribution of Wham-O products through Cornerstone’s
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`facilities in China or elsewhere. The press release also confirmed that Wham—O had
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`been advised in the transaction by Traxi.
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`20.
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`In late February 2006, SLB received a letter from Wham-O’s legal
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`counsel purporting to accuse SLB of infringing upon Wham-O’s trademarks with
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`respect to its water toy products. Through correspondence with Wham—O’s legal
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`counsel, SLB learned that Wham—O had undertaken to release its own Version of the
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`Banzai Falls Criss Cross in 2006, a Virtual l<nock~off which Wham—O calls the Super
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`Splash Tunnel Slide. A true and correct copy of the Wham—O Super Splash Tunnel
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`Slide, as depicted in communications received from its counsel, is attached hereto as
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`Exhibit E and is incorporated herein by this reference.
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`-7-
`COMPLAINT
`
`

`
`Jun. 25.
`
`2008 ll:53PM
`
`No.6486
`
`P.8
`
`21.
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`Incredibly, in its letter, Wham-O’s legal counsel claimed that SLB had
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`misappropriated Wham-O’s design for the Super Splash Tunnel Slide. To the
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`contrary, however, it is apparent, at least to anyone with knowledge of the underlying
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`facts, that
`
`made its-assertion as a preemptive strike in an attempt to conceal
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`that the fact that Wham-O, Charterhouse, Traxi and now Cornerstone, have engaged in
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`an unlawful conspiracy in which they purposefiilly conspired with each other and gave
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`substantial assistance and encouragement to one another to wrongfully violate the
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`confidence in which SLB had disclosed its plans for the Banzai Falls Criss Cross and
`to unlawfully and unfairly compete with SLB in connection with the production and
`release ofthe Wham-O Super Splash Tunnel Slide. Among other things, in addition to
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`the flagrant breach of confidence, the Wham—O Super Splash Tunnel Slide wrongfully
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`uses and infringes upon the Banzai Falls Arch Mark and the Banzai Falls Side Panel
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`Mark, and each of them, as well as the SLB Trade Dress. Compare Exhibits A-D and
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`Exhibit E. The Wham-O Super Splash Tunnel Slide uses virtually the same stitching
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`pattern comprising the Banzai Falls Arch Mark and the Banzai Falls Side Panel Mark,
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`and the appearance and dimensions the Wham-O Super Splash Tunnel Slide are
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`virtua