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
`ESTTA220745
`ESTTA Tracking number:
`06/26/2008
`
`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
`Response to Board Order/Inquiry
`Jessica C. Bromall
`trademarkdocket@jmbm.com
`/jessica c. bromall/
`06/26/2008
`Response to Board's Order date June 11, 2008.pdf ( 5 pages )(193267 bytes )
`Exhibit A.pdf ( 17 pages )(429327 bytes )
`Exhibit B.pdf ( 21 pages )(598574 bytes )
`Exhibit C.pdf ( 9 pages )(180722 bytes )
`Exhibit D.pdf ( 17 pages )(448861 bytes )
`Exhibit E.pdf ( 111 pages )(3447374 bytes )
`Exhibit E #112.pdf ( 1 page )(19636 bytes )
`Exhibit F.pdf ( 26 pages )(230821 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 and BLUE SLIDE
`
`WI-IAM—O, INC.,
`
`DESIGN
`
`Respondent.
`
`
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. BOX 1451
`
`Alexandria, VA 22313-1451
`
`RESPONSE TO BOARD'S ORDER DATED JUNE 11 2008
`
`In its Order dated June 11, 2008, the Board directed petitioner AW Computer Holdings
`
`LLC to provide: 1) a copy of the pleadings, notice of appeal, and statement of the current status
`
`of Civil Action No. CVO6—1382 RSWL (CWX); 2) a copy of the pleadings and statement of the
`
`current status of Civil Action No. CV08-01281 PSG (Ex)‘; and 3) a brief explanation of the
`
`relationship between the foregoing civil actions. Petitioner hereby submits its response.
`
`1.
`
`SLB Toys USA, Inc. V. Wham-O, Inc., et al, United States District
`Court for the Central District of California, Civil Action No. CV06-
`
`1382 RSWL ]CWX[
`
`On or about October 1 1, 2007, the jury in the above—referenced action (the "First Action")
`
`rendered a verdict in favor of respondent Wham—O, Inc. ("Respondent") and against SLB.
`
`1 Petitioner notes that this case was, at some point, transferred to the judge Who handled the Case No. CV06—1382
`RSWL (CWX) and that the case number was changed to reflect this transfer to CVO6—1382 RSWL (CWX).
`
`5475980v1
`
`

`
`Thereafter, on or about December 5, 2007, judgment was entered in the First Action in favor of
`
`Respondent and against SLB.
`
`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. The appeal in this matter is
`
`currently pending. The parties have received a briefing schedule, but have not yet received a
`
`hearing date. The opening brief is currently scheduled to be filed on or before August 18, 2008.
`
`Attached hereto as Exhibit A is a copy of the Complaint filed by SLB. Attached hereto
`
`as Exhibit B is a copy of Respondent's Answer to the Complaint and Counterclaim and attached
`
`hereto as Exhibit C is a copy of SLB's response to Respondent's Counterclaim. Attached hereto
`
`as Exhibit D is a copy of the Notice of Appeal filed by Petitioner and SLB.
`
`2.
`
`Wham-O, Inc. v. AW Computer Holdings LLC, et 111., United States
`District Court for the Central District of California, Civil Action No.
`CV08—01281 RSWL §CWX)
`
`The operative pleading in the above—referenced civil action (the "Second Action") is the
`
`Second Amended Complaint filed by Respondent on April 21, 2008 (the "SAC"), against
`
`Manley Toys, Ltd, Izzy Holdings, LLC, Aquawood, LLC, AW Computer Holdings, LLC, Brian
`
`Dubinsky, Samson Chan, Lisa Liu, Wal-Mart Stores, Inc., Target Corp., Toys "R" Us, Inc., and
`
`KMART Corporation.
`
`AW Computer Holdings, LLC ("Petitioner") has not yet filed its Answer to the SAC in
`
`the Second Action. However, only one cause of action in the SAC - the seventh cause of action -
`
`is alleged against Petitioner and, on or about May 16, 2008, Petitioner, together with defendant
`
`Aquawood, LLC, filed a Motion to Dismiss the Seventh Claim for Relief in the Second
`
`Amended Complaint Based Upon (A) Lack of Subject Matter Jurisdiction Under Rule 12(b)(l)
`
`and (B) The Failure to State a Claim Upon Which Relief Can be Granted Under Rule l2(b)(6),
`
`5475980v1
`
`

`
`and to Strike Portions of the Prayer Under Rule 12(f). Motions to dismiss the SAC have also
`
`been filed by defendants Chan and Liu, defendant Dubinsky, and defendant Izzy Holdings, LLC.
`
`Defendants Manley Toys, Ltd., Toys "R" Us, Inc., Target Corp., and KMART
`
`Corporation, have each filed their Answer to the SAC, as well as Counterclaim(s) against Wham-
`
`0, Inc. KMART Corporation has also filed a Cross—Claim against Manley Toys, Ltd. Manley
`
`Toys, Ltd. has also filed a First Amended Counterclaim against Respondent. Respondent has
`
`filed its answer to the counterclaim filed by Toys "R" Us, Inc., but has not yet filed an answer or
`
`other document in response to the other counterclaims.
`
`Additionally, Manley Toys, Ltd. has filed a Motion for Preliminary Injunction against
`
`Wham-O, Inc. and Target Corp. has also filed a Motion for Summaiy Judgment to Dismiss the
`
`SAC against Target Corp.
`Manley Toys, Ltd.'s Motion for Preliminary Injunction, as well as each ofthe above-
`
`referenced motions to dismiss, are currently set to be heard on July 1, 2008.
`
`The Board has requested copies ofthe pleadings in the Second Action. Accordingly,
`
`Petitioner attaches hereto, as Exhibit E, the SAC filed by Respondent. Additionally, although
`
`not technically a pleading, Petitioner attaches hereto as Exhibit F, Petitioner's Motion to Dismiss
`
`the SAC.
`
`Because so many of the pleadings and other documents filed in this matter were filed by
`
`entities and individuals who are not involved in the matter currently pending before the Board,
`
`Applicant has not submitted copies of any other pleadings or documents filed by those parties.
`
`Should the Board determine that it would like copies of any or all of those pleadings and
`
`documents, Petitioner will obtain copies thereof and provide them to the Board.
`
`5475 980v]
`
`

`
`3.
`
`Relationship Between the Civil Actions
`
`As noted above, judgment was entered against SLB in the First Action. Respondent was
`
`also awarded attomeys' fees in the First Action. Wham-O alleges generally in the Second Action
`
`that certain defendants therein, including Petitioner, are alter egos of and/or successors in interest
`
`to SLB and seeks to impose on them the judgment against SLB on that basis. Wham-O has also
`
`brought claims against certain defendants, not including Petitioner, for, among other things,
`
`infringement and dilution of the Yellow Slide Design and Yellow and Blue Slide Design.
`
`4.
`
`Additional Cases
`
`The Board also asked Petitioner to identify any other proceedings to which Respondent
`
`and Petitioner are parties or which involve the marks at issue in the instant cancellation
`
`proceeding. Respondent has amended its complaint in Alameda County Superior Court Case
`
`
`No. RG 07329828, Wham—O Inc. V. Sefchick et al, to name Petitioner as a party, but as of
`
`today's date, has not yet served Petitioner with a copy of the summons and complaint. Petitioner
`
`is unaware of any proceedings, other than those previously identified, to which both Petitioner
`
`and Respondent are parties or which involve any of the registrations at issue in the instant
`
`proceeding.
`
`Respectfully submitted,
`
`By:
`
`
`’
` Dated: June 26, 2008
`Rod S.1man, Esq.
`Brian . 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
`
`5475980vI
`
`

`
`ELECTRONIC FILING CERTIFICATE
`
`I hereby certify that this paper (along with any paper referred to as being attached
`
`or enclosed) is being submitted electronically through the Electronic System for Trademark
`
`Trials and Appeal ("ESTTA") on the date shown below:
`
` Date: W
`
`Bromall
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that one (1) copy of this document is being deposited with the
`
`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:
`
`(9 I W 0
`
`Jeffer, Mangels, Butler & Marmaro llp
`1900 Avenue of the Stars, Seventh Floor
`
`Los Angeles, CA 90067
`Phone: (310) 203-8080
`Fax: (310) 203-0567
`WvvW.jmbm.com
`
`5475980v1
`
`

`
`M25.
`
`2008 11:48PM
`
`H
`
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`N0 5486
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`
`Alex M. Wein arten Bar No. 204410)
`%1AG\lK3/R WEI EAR EN LLP
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`e:
`
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`
`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.
`
`-1-
`
`COMPLAINT
`
`

`
`Jun. 25.
`
`2008 ll:49PM
`
`No.6486
`
`P.2
`
`.1
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`27
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`28
`
`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
`
`related that they form part of the same case or controversy.
`
`3.
`
`This Court has personal jurisdiction over the Defendants in that they are
`
`doing business in the State of California and are committing the acts hereinafter
`
`alleged in this State.
`
`,\
`
`4.
`
`Venue in this Court is proper pursuant to 28 U.S.C. § 1391, in that the
`
`parties are located in or transact their affairs in this district and because a substantial
`
`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-
`
`COMPLAINT
`
`

`
`Jun. 25.
`
`2008 ll:50PM
`
`No.6486
`
`P.3
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`|__|
`
`
`
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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
`
`has been honored with awards such as Vendor of the Year by Toys ‘R Us and has
`
`earned the right to include its products with McDonald’s Happy Meals. SLB has
`
`-3-
`
`COMPLAINT
`
`

`
`Jun.25.
`
`2008 1l:50PM
`
`NEL6486
`
`P.
`
`4
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`fostered an excellent reputation among its peers and customers and relies on this
`
`reputation in its business.
`
`12.
`
`SLB currently markets a line of popular water slide toys that are known
`
`as the Banzai Falls water slides. These water slide toys include the Banzai Falls
`
`Quick Set Water Slide, the Banzai Falls In-Ground Pool Slide, the Banzai Falls Mega
`
`Racer, and the Banzai Falls Criss Cross (collectively the Banzai Falls Water Slides).
`
`True and correct photographs of the Banzai Falls Quick Set Water Slide, the Banzai
`
`Falls In—Graund Pool Slide, the Banzai Falls Mega Racer, and the Banzai Falls Criss
`
`I Cross are attached hereto as Exhibits A, :13, C and D, respectively‘, and are
`E
`incorporated herein by this reference.
`0
`
`13.
`
`In or about March 2003, SLB began marketing Banzai Falls Quick Set
`
`Water Slide to the toy trade. The product, which was designed and developed by and
`
`is an original creation of SLB, is a puncture proof, rapidly inflating water slide that
`
`' children (and adults for that matter) can use in their own back yards. A blower motor,
`
`included with the product, keeps the inflatable water slide continuously inflated and
`
`the water comes from an average garden hose. The material used also allows the slide
`
`to be used dry.
`
`14.
`
`Retailers such as Toys ‘R Us and Wal~Mart were immediately interested
`
`in the Banzai Falls Quick Set Water Slide and SLB began production in earnest
`
`shortly after its initial presentation. Shipment of the Banzai Falls Quick Set Water
`
`; 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
`
`‘
`
`receiving an award as one of the top ten toys for 2004.
`
`15.
`
`SLB continued to market and sell the Banzai Falls Quick Set Water Slide
`
`in 2005, and it has been nominated for Toy of the Year for 2006. In addition, in 2005,
`
`SLB undertook to build upon the success of the Banzai Falls Quick Set Water Slide
`
`-4-
`COMPLAINT
`
`

`
`Jun. 25. 20081l:51PM
`
`No.6486
`
`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-
`
`Graanci Peel Slide was released at the beginning of 2005 for the 2005 Summer
`
`seaS0n,..,n-tad the Banzai Falls Mega Racer and the Banzai Falls Criss Cross were
`
`released at the end of 2005 in preparation for the 2006 Summer season. These slides,
`
`like the Banzai Falls Quick Set Water Slide, also share the fanciful and ornamental
`
`design of the Banzai Falls arch over the top of the slide in which a Vertical stitching or
`
`seam pattern is used to create the appearance of multiple vertical tubes comprising the
`
`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
`
`tubes that run along side the slide, with two top tubes of equal size and a bottom tube
`
`that is thicker, and a center triangle shape beneath the arch with the top of the triangle
`
`squared off with horizontal line and a logo in the center of the triangle (the “Banzai
`
`Falls Side Panel Mark”). Ibid.
`
`16.
`
`The Banzai Falls Quick Sei Water Slide, Banzai Falls In-Ground Peal
`
`Slide, the Banzai Falls Mega Racer, and Banzai Falls Criss Crass additionally share
`
`the unique features comprising a common, non-functional trade dress which include
`
`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
`
`(collectively the “SLB Trade Dress”). Other elements comprising the SLB Trade
`
`Dress include:
`
`(a)
`
`Climbing wall in the back to reach top of slide with the look of
`
`horizontal tubes created by two seams;
`
`(b)
`
`Arch over the top of the slide with the Banzai Falls Arch Mark and
`
`containing the water nozzle for spraying onto the slide;
`
`(c)
`
`Steep slide starts under the arch;
`
`-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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`Side of slide with the Banzai Falls Side Panel Mark that is
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`primarily blue in color;
`
`(e)
`
`Orientation of water spray from top of the arch;
`
`(f) Waterbags attached to the slide under the triangle;-
`
`(g)
`
`Yellow blower motor and tube for inflating the slide.
`
`In addition, the Banzai Falls Quick Set Water Slide, the Banzai Falls Mega Racer and
`
`the Banzai Falls Criss Cross each include a splash pool for landing at the end of the
`
`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
`
`Falls In-Ground Pool Slide and the Banzai Falls Criss Cross is yellow.
`
`17.
`
`SLB has spent millions of dollars promoting its Banzai Falls Water
`
`Slides, primarily through production and airing of advertising for the Banzai Falls
`
`Quick Set Water Slide on network television featuring the unique features forming the
`
`Banzai Falls Arch Mark, the Banzai Falls Side Panel Mark and the SLB Trade Dress
`
`for its Banzai Falls Water Slides. SLB has developed a reputation as the leader in the
`
`toy industry for inflatable water slides through such advertising and the success its
`
`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
`
`such advertising and the success of SLB’s sales of the Banzai Falls Water Slides with
`
`a particular source, particularly SLB. Likewise, the SLB Trade Dress is also
`
`inherently distinctive and further is associated and has acquired secondary meaning
`
`through such advertising and the success of SLB’s sales of the Banzai Falls Water
`
`Slides with a particular source, particularly SLB.
`
`18. Meanwhile, in or about October 2005, SLB entered into confidential
`
`discussions with Charterhouse, Traxi and Wham-O in connection with a possible
`
`merger or acquisition by SLB involving Wham-O. Charterhouse was looking to sell
`
`-5-
`
`COMPLAINT
`
`

`
`Jun. 25.
`
`2008 ll:52PM
`
`No.6486
`
`P.7
`
`|—n
`
`@'-‘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
`
`those discussions, SLB disclosed in confidence its product line for 2006 to
`
`Charterhouse and Traxi, both of which weretalso acting on behalf of Wham—O, and the
`
`information so disclosed in confidence included SLB’s plans for release of the Banzai
`
`Falls Criss Cross as the next generation or extension of its Banzai Falls Water Slides
`
`for the 2006 season. Charterhouse, Traxi and Wham—O, and each of them, knew and
`
`understood that SLB had disclosed this information to them in confidence, that the
`
`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
`
`information for any other purpose, including for the purpose of creating, producing or
`
`selling a competing product or otherwise for use in competition with SLB.
`
`0
`
`19. On or about January 19. 2006, Wham-O announced that Cornerstone had
`
`acquired the company from Charterhouse. As a result of the transaction, according to
`
`the press release, Wham-O’s management, Vendors and customers will benefit from
`
`Cornerstone’s size, financial stability and operational assistance, including the
`
`production, manufacture or distribution of Wham-O products through Cornerstone’s
`
`facilities in China or elsewhere. The press release also confirmed that Wham—O had
`
`been advised in the transaction by Traxi.
`
`20.
`
`In late February 2006, SLB received a letter from Wham-O’s legal
`
`counsel purporting to accuse SLB of infringing upon Wham-O’s trademarks with
`
`respect to its water toy products. Through correspondence with Wham—O’s legal
`
`counsel, SLB learned that Wham—O had undertaken to release its own Version of the
`
`Banzai Falls Criss Cross in 2006, a Virtual l<nock~off which Wham—O calls the Super
`
`Splash Tunnel Slide. A true and correct copy of the Wham—O Super Splash Tunnel
`
`Slide, as depicted in communications received from its counsel, is attached hereto as
`
`Exhibit E and is incorporated herein by this reference.
`
`-7-
`COMPLAINT
`
`

`
`Jun. 25.
`
`2008 ll:53PM
`
`No.6486
`
`P.8
`
`21.
`
`Incredibly, in its letter, Wham-O’s legal counsel claimed that SLB had
`
`misappropriated Wham-O’s design for the Super Splash Tunnel Slide. To the
`
`contrary, however, it is apparent, at least to anyone with knowledge of the underlying
`
`facts, that
`
`made its-assertion as a preemptive strike in an attempt to conceal
`
`that the fact that Wham-O, Charterhouse, Traxi and now Cornerstone, have engaged in
`
`an unlawful conspiracy in which they purposefiilly conspired with each other and gave
`
`substantial assistance and encouragement to one another to wrongfully violate the
`
`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
`
`the flagrant breach of confidence, the Wham—O Super Splash Tunnel Slide wrongfully
`
`uses and infringes upon the Banzai Falls Arch Mark and the Banzai Falls Side Panel
`
`Mark, and each of them, as well as the SLB Trade Dress. Compare Exhibits A-D and
`
`Exhibit E. The Wham-O Super Splash Tunnel Slide uses virtually the same stitching
`
`pattern comprising the Banzai Falls Arch Mark and the Banzai Falls Side Panel Mark,
`
`and the appearance and dimensions the Wham-O Super Splash Tunnel Slide are
`
`virtually the same in all material respects to the SLB Trade Dress, including height,
`
`length and slope ofthe slide, size of splash pool, orientation of water spray, use of
`
`yellow blower motor and hose, blue coloring of side panels, and use and location of
`
`water bags. Ibid.
`
`22. Wham—O and its co-conspirators and/or aiders and abettors, including
`
`Charterhouse, Traxi and Cornerstone, purposefully conspired with each other andlor
`
`gave substantial assistance and encouragement to one another to wrongfully produce,
`
`market and sell Wham-O Super Splash Tunnel Slide, and to deceive consumers as to
`
`its purported association with SLB and to trade off its goodwill from the success of its
`
`Banzai Falls Water Slides, all for the purpose of profiting or enriching themselves at
`
`the expense of SLB. Among other things, while Wham-O and Cornerstone gain or
`
`-3-
`
`COMPLAINT
`
`
`
`''-DG0----.IOHU143-Lill“\-J
`
`(10
`
`ll
`
`12
`
`l3
`
`l4
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Jun. 25.
`
`2008 1l:53PM
`
`No.6486
`
`P.9
`
`stand to gain from the illegal and illicit profits resulting from sales of the Wham-O
`
`Super Splash Tunnel Slide, Charterhouse and Traxi profit or stand to profit from their
`
`realization of the sale of Wham—O and use of its release of “new” products like the
`
`Wham-O Super Splash Tunnel Slide to facilitate the sale of the company.
`
`_._,,.u;;--‘PP.-.
`
`..
`
`FIRST CLAIM FOR RELIEF
`[TRADEMARK INFRINGEMENT IN VIOLATION OF SECTION 431:1] OF
`THE LANHAM ACT]
`
`23.
`
`SLB repeats and realleges the allegations in paragraphs 1 through 22 as
`
`though set forth fully herein.
`
`g
`
`_
`
`24.
`
`Defendants are wrongfully using and/or aiding and abetting or
`
`contributing to the use of the Banzai Falls Arch Mark and the Banzai Falls Side Panel
`
`Mark, and each of them, in connection with, without limitation, the manufacture,
`
`importation, sale, offering for sale, distribution and/or dissemination of the Wharn-O
`
`Super Splash Tunnel Slide, in order to capitalize on the good name, notoriety,
`
`reputation and goodwill of SLB with respect to its Banzai Falls Water Slides.
`
`25.
`
`Defendants’ acts as alleged above are unlawful and constitute
`
`infringement and/or aiding and abetting or contributory infringement by, among other
`
`things, creating and/or permitting or assisting others to misrepresent the nature,
`
`characteristics, qualities, or origin of Defendants’ goods, services, activities or
`
`information and/or to unlawfully compete in a manner which is likely to cause
`
`confusion, or cause mistake, or deceive customers as to the affiliation, connection, or
`
`association between Defendants and SLB, or as to the origin, sponsorship, or approval
`
`by SLB of Defendants’ goods, services and/or activities, in violation of the Lanham
`
`Act, 15 U.S.C. §l125(a).
`
`Defendants’ conduct has caused and, if not enjoined, will continue to
`26.
`cause irreparable harm to one or more of the Banzai Falls Arch Mark and the Banzai
`
`Falls Side Panel Mark, as well as to SLB’s good name, reputation and goodwill, in a
`
`-9-
`
`COMPLAINT
`
`’sDOG'--.IlO\*JI-l>'lJJ-[NJ
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`15
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`23
`
`

`
`Jun. 25.
`
`2008 ll:54PM
`
`No.6486
`
`P.
`
`10
`
`manner that cannot be calculated or compensated in money damages. SLB has no
`
`adequate remedy at law.
`
`27.
`
`As a result of the foregoing, SLB has been injured, and Defendants have
`
`received and/or, if not enjoined, will receive illic,it..profits and wrongful gains.
`
`28.
`
`Defendants’ conduct is willful, deliberate and malicious, so as to entitle
`
`, SLB to treble or exemplary damages in an amount according to proof at trial.
`
`
`TRADE DRESS INFRINGEMENT IN VIOLATION OF SECTION 43 a OF
`
`SECOND CLAIM FOR RELIEF
`
`THE LANI-IAM ACT]
`
`29.
`
`SLB repeats and realleges the allegations in paragraphs 1 through 28 as
`
`though set forth fully herein.
`
`30. Defendants have adopted and continue to make use of a non-functional
`
`trade dress on the Wham-O Super Splash Tmmel Slide that is confusingly similar to
`
`the SLB Trade Dress.
`
`31.
`
`Defendants’ acts as alleged above constitute infringement and/or aiding
`
`and abetting or contributory infringement of the SLB Trade Dress and are likely to
`
`3 cause confusion, or cause mistake, or deceive customers as to the affiliation,
`
`connection, or association between Defendants and SLB, or as to the origin,
`
`,
`
`.
`
`sponsorship, or approval by SLB of Defendants’ goods, services and/or activities, in
`
`violation of the Lanham Act, 15 U.S.C. §l l25(a).
`
`32.
`
`By reason of Defendants’ acts as alleged herein, SLB has suffered, is
`
`suffering, and will continue to suffer irreparable harm and, unless Defendants are
`
`restrained from continuing their wrongful acts, the harm to SLB will increase. SLB
`
`has no adequate remedy at law.
`
`33.
`
`As a result of the foregoing, SLB has been injured, and Defendants have
`
`received and/or, if not enjoined, will receive illicit profits and wrongful gains.
`
`-10-
`
`COMPLAINT
`
`KDDO--JO\.'LJ1-1::-1.rJ[\J
`
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`IN) OO
`
`

`
`Jun. 25.
`
`2008 1l:54PM
`
`No.6486
`
`P. H
`
`34.
`
`Defendants’ conduct is willful, deliberate and malicious, so as to entitle
`
`SLB to treble or exemplary damages in an amount according to proof at trial.
`
`THIRD CLAIM FOR RELIEF
`LAW TRADEMARK INFRINGEMENT]
`
`35.
`
`SLB repeats and realleges the allegations in paragraphs 1 through 34 t as
`
`though set forth fully herein.
`
`36.
`
`The aforesaid acts of Defendants constitute infringement andlor aiding
`
`and abetting or contributory infringement under common law of one or more of the
`
`Banzai Falls Arch Mark and the Banzai Falls Side Panel Mark...
`
`37.
`By reason of Defendants’ acts as alleged herein, SLB has suffered, is
`suffering, and will continue to suffer irreparable harm and, unless Defendants are
`
`restrained from continuing their wrongful acts, the harm to SLB will increase. SLB
`
`has no adequate remedy at law.
`
`38. As a result of the foregoing, SLB has been injured, and Defendants have
`
`received and/or, if not enjoined, will receive illicit profits and wrongful gains.
`
`39.
`
`Defendants’ conduct as alleged herein is willful, deliberate and
`
`malicious, and constitutes fraud, oppression or malice, so as to entitle SLB to
`
`exemplary damages in an amount according to proof at trial.
`
`FOURTH CLAIM FOR RELIEF
`[QREACH OF CONFIDENTIAL AND FIDUCIARY RELATIONSHIP}
`
`40.
`
`SLB repeats and realleges the allegations in paragraphs 1 through 39 as
`
`though set forth fully herein.
`
`At all relevant times herein, there was a mutual understanding between
`41.
`SLB, on the one hand, and Wham-O, Charterhouse and Traxi, on the other, that the
`
`information disclosed in confidence to them, including SLB’s disclosure of its plans
`for release the Banzai‘ Falls Criss Cross, was to be used solely for purposes of
`
`I 2 3 4 5 6 7 3 9
`
`10
`
`ll
`
`[xJ-J—-i—i—«n—-r—-tr—-i—nn---C.7"'~.D'-'.2£I---.I'3‘~t'L.I"I-I:-1...»lJl‘~J
`
`I"-3 |—-
`
`I0Ix.)
`
`I‘-J DJ
`
`25
`
`[NJ0‘.
`
`-11-
`
`COMPLAINT
`
`

`
`Jun.25.
`
`2008 1l:55PM
`
`NCL6486
`
`P.
`
`ll
`
`evaluating a potential merger or acquisition of Wham-O by SLB, and SLB reposed
`
`trust and confidence in Wham-O, Charterhouse and Traxi that they would not use such
`
`information for any other purpose. Accordingly, a confidential or fiduciary
`
`relationship existed between SLB, on the one hand, and Wham—O, Charterhouse and
`
`-
`
`7
`
`Traxi, on the other, that they would not use inform