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
`ESTTA308081
`ESTTA Tracking number:
`09/24/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051386
`Defendant
`Jay-Y Enterprise Co., Inc.
`Jay-Y Enterprise Co., Inc.
`632 New York Drive
`Pomona, CA 91768
`UNITED STATES
`Motion to Suspend for Civil Action
`Constance R. Lindman
`crlindman@overhauser.com
`/Constance R. Lindman/
`09/24/2009
`Motion-to-Suspend-for-Civil-Action-9-24-09.pdf ( 2 pages )(22976 bytes )
`036-Second-Amended-Complaint-6-16-09.pdf ( 25 pages )(767271 bytes )
`038-Defendant's-Answer-to-Amended-Complaint-and-Counterclaim-6-17-09.pdf
`( 5 pages )(45195 bytes )
`040-Plaintiff's-Answer-to-Defendants-Amended-Counterclaim-6-19-09.pdf ( 5
`pages )(44396 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Cancellation No.:
`
`92051386
`
`Registration No.:
`
`
`Mark:
`
`
`
`3,418,299
`
`LOCS
`
`
`
`)
`
`
`Time Plaza, Inc.,
`)
`
`
`
`
`
` )
`
`
`Petitioner
`
`)
`
`
`
`
`
`)
`
`versus
`
`
`
`
` )
`Jay-Y Enterprise Co., Inc., )
`
`
`
`
`
`)
`Registrant )
`____________________________
`)
`
`
`
`MOTION TO SUSPEND FOR CIVIL ACTION
`
`Registrant Jay-Y Enterprise Co., Inc. (“Registrant”) moves the Board to suspend this
`
`
`
`proceeding pursuant to TBMP §510.02(a). The parties hereto are engaged in a civil action in the
`
`Federal District Court for Central District of California which may have a bearing on this
`
`proceeding. Registrant’s complaint in the federal court action alleges that Petitioner is infringing
`
`Registrant’s rights in the mark LOCS, US Reg. No. 3,418,299 – the same registration that is the
`
`subject of this proceeding. Petitioner has filed a counterclaim in the federal court action asking
`
`the court to cancel the registration. The decision in the federal action will often be binding upon
`
`the Board, while the decision of the Board is not binding upon the federal court. For this reason,
`
`and in the interest of judicial economy, this proceeding should be suspending pending the
`
`outcome of the federal court action.
`
`Copies of the following relevant documents in Case No. CV08-07600 FMC(RZx)
`
`pending in the Central District of California are attached:
`
`‚ Second Amended Complaint for Trademark Infringement, Patent Infringement, and
`Related Claims
`
`Page 1 of 2
`
`

`
`‚ Defendants’ Answer to the Second Amended Complaint and Counterclaim to Cancel
`Trademark
`
`‚ Plaintiff’s Answer to Defendants’ Amended Counterclaim
`
`
`
`
`
`
`Respectfully Submitted,
`
`By:___s/Constance R. Lindman
`Constance R. Lindman
`Overhauser & Lindman, LLC
`740 W. Green Meadows Drive, Suite 300
`Greenfield, IN 46140
`(317) 891-1500
`Fax: (866) 283-8549
`crlindman@overhauser.com
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`
`
` I
`
` hereby certify that a true copy of the foregoing MOTION TO SUSPEND FOR CIVIL ACTION
`was served by email this 24th day of September, 2009 on Jen-Feng Lee, WorldEsquire Law Firm,
`80 S. Lake Avenue, Suite 708, Pasadena, CA 91101
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`s/Constance R. Lindman______
`Constance R. Lindman, Esq.
`
`Page 2 of 2
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 1 of 25
`
`Gregg A. Rapoport (State Bar No. 136941)
`Business Legal Partners, Attorneys at Law, Law Corp.
`135 W. Green Street, Suite 100
`Pasadena, CA 91105
`Tel. 626-356-8080 or 626-585-0155
`Fax. 626-585-0355
`
`Paul Overhauser (Admitted pro hac vice)
`Overhauser Law Offices, LLC
`737 Green Meadows Dr., Ste. 300
`Greenfield, IN 46140
`Tel. 317-891-1500
`Fax. 866-283-8549
`
`Attorneys for Plaintiff
`JAY-Y ENTERPRISE CO., INC.
`
`1 2 3 4 5 6 7 8 9
`
`
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No. CV08-07600 FMC(RZx)
`
`SECOND AMENDED
`COMPLAINT FOR
`TRADEMARK INFRINGEMENT,
`PATENT INFRINGEMENT, AND
`RELATED CLAIMS
`
`
`
`DEMAND FOR JURY TRIAL
`
`JAY-Y ENTERPRISE CO., INC.,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`TIME PLAZA, INC., AAB
`ENTERPRISE, INC., TRIO BROTHERS
`TRADING USA, INC., SOUTH BAY
`TRADING, INC., SA TRADING, INC.,
`WWW.SUNSHARKEYEWEAR.COM,
`MICHAEL QIN, and DOES 1-10,
`
`
`
`
`Defendants.
`
`
`
`
`
`
`
`Plaintiff JAY-Y ENTERPRISE CO., INC. brings this Complaint against
`
`Defendants TIME PLAZA, INC., AAB ENTERPRISE, INC., TRIO BROTHERS
`
`TRADING USA, INC., SOUTH BAY TRADING, INC., SA TRADING, INC.,
`
`WWW.SUNSHARKEYEWEAR.COM, and MICHAEL QIN (collectively,
`
`“Defendants”), to halt Defendants’ ongoing infringement of Plaintiff's valuable
`
`trademark and patent rights. In support of its Complaint, Plaintiff alleges:
`
`-1-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 2 of 25
`
`
`
`Parties, Jurisdiction and Venue
`
`1.
`
`Plaintiff is a California corporation with its principal place of business
`
`within this district, located at 632 New York Dr., Pomona, California 91768.
`
`Plaintiff is primarily in the business of designing, developing, marketing,
`
`distributing and selling sunglasses.
`2.
`
`On information and belief, Defendant TIME PLAZA, INC. (“Time
`
`Plaza”) is a California corporation with its principal place of business within this
`
`district, located at 9329 Klingerman Street, South El Monte, California 91733.
`3.
`
`On information and belief, Defendant AAB ENTERPRISE CO., INC.
`
`(“AAB Enterprise”) is a California corporation with its principal place of business
`
`within this district, located at 350 S. Los Angeles St., Los Angeles, CA 90013.
`4.
`
`On information and belief, Defendant TRIO BROTHERS TRADING
`
`USA, INC. (“Trio Brothers Trading”) is a now-dissolved California corporation
`
`with its principal place of business within this district, located at 605 S Milliken
`
`Avenue Suite E, Ontario, California 91761. Trio Brothers Trading was operating
`
`at all times relevant herein and, on information and belief, was dissolved by
`
`affirmative action of the corporation pursuant to a Certificate of Dissolution dated
`
`June 19, 2008 in an attempt to shield itself and its shareholders from liability for its
`
`wrongful conduct. On information and belief, at all times relevant herein, the
`
`Chief Executive Officer, Secretary, Chief Financial Officer, sole director, and
`
`registered agent of Trio Brothers Trading was defendant Michael Qin.
`5.
`
`This Complaint is brought against Trio Brothers Trading pursuant to
`
`Cal. Corp. Code section 2011which authorizes this court to enforce causes of
`
`action against a dissolved corporation, whether arising before or after the
`
`dissolution of the corporation, to the extent of its undistributed assets, including,
`
`without limitation, insurance assets held by the corporation that may be available
`
`to satisfy claims. This Complaint is further brought against the unidentified
`-2-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 3 of 25
`
`shareholders of Trio Brothers Trading, sued in the corporate name pursuant to Cal.
`
`Corp. Code section 2011(a)(3), and as DOES 1-10.
`6.
`
`On information and belief, Defendant SOUTH BAY TRADING INC.
`
`(“South Bay Trading”) is a California corporation with its principal place of
`
`business within this district, located at the same address as Trio Brothers Trading,
`
`namely, 605 S Milliken Avenue Suite E, Ontario, California 91761. On
`
`information and belief, at all times relevant herein, the Chief Executive Officer,
`
`Secretary, Chief Financial Officer, sole director, and registered agent of South Bay
`
`Trading is defendant Michael Qin.
`7.
`
`On information and belief, Defendant SA TRADING, INC. (“SA
`
`Trading”) is a California corporation with its principal place of business within this
`
`district, located at 1523 Big Sur Lane, West Covina, California 91791. On
`
`information and belief, at all times relevant herein, the Chief Executive Officer,
`
`Secretary, Chief Financial Officer, sole director, and registered agent of SA
`
`Trading is defendant Michael Qin. On information and belief, SA Trading
`
`imported sunglasses from China in late June 2008, shortly after Trio Brothers
`
`Trading was dissolved.
`8.
`
`On information and belief, Defendant
`
`WWW.SUNSHARKEYEWEAR.COM (“Sun Shark Eyewear”) is an
`
`unincorporated business operating within this district, located at the same address
`
`as Trio Brothers and South Bay Trading, namely, 605 S Milliken Avenue Suite E,
`
`Ontario, California 91761. The www.sunsharkeyewear.com domain name is
`
`registered to both Trio Brothers Trading and Defendant Michael Qin. The Sun
`
`Shark Eyewear web site home page prominently bears the word “Trio” above a
`
`drawing of sunglasses and states in smaller type at the bottom of the page
`
`“powered by: Trio Eyewear.”
`9.
`
`On information and belief, Defendant MICHAEL QIN is an
`
`individual residing within this district and doing business within this district at 605
`-3-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 4 of 25
`
`S Milliken Avenue Suite E, Ontario, California 91761 and at 1523 Big Sur Lane,
`
`West Covina, California 91791.
`10. On information and belief, Sun Shark Eyewear was owned and
`
`operated by Trio Brothers Trading until Trio Brothers Trading was dissolved. On
`
`information and belief, Sun Shark Eyewear is now owned and operated by one or
`
`more of the following: Michael Qin, South Bay Trading, or SA Trading.
`11. On information and belief, the business that Trio Brothers Trading
`
`engaged in prior to its dissolution is now being carried on by one or more of the
`
`following successor entities or individuals: South Bay Trading, SA Trading, Sun
`
`Shark Eyewear and Michael Qin. On information and belief, Trio Brothers
`
`Trading, South Bay Trading, SA Trading, and Sun Shark Eyewear are all alter egos
`
`of Michael Qin and of one another.
`12. On information and belief each of the defendants Trio Brothers
`
`Trading, South Bay Trading, SA Trading, Sun Shark Eyewear and Michael Qin
`
`(collectively referred to herein as “Qin Defendants”) have acted and are acting in
`
`concert with each other to directly commit or to assist each other to commit the
`
`wrongful activities alleged herein.
`13. On information and belief, there has existed a unity of interest and
`
`ownership between and among the Qin Defendants such that any individuality and
`
`separateness between and among the Qin Defendants has ceased, and such that
`
`each is the alter ego of the others; in that:
`
`
`
`
`
`A.
`
`Each of the Qin Defendants has at certain relevant times
`
`completely controlled, led, dominated, managed and operated each of the other Qin
`
`Defendants, and has intermingled his, her or its own assets with those of the other
`
`Qin Defendants to suit his, her or its convenience.
`
`
`
`
`
`B.
`
`Each of the Qin Defendants has used assets of each of the other
`
`Qin Defendants for his, her or its own use, and has caused or will cause the assets
`
`-4-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 5 of 25
`
`of each of the other Qin Defendants to be transferred to him, her or it without
`
`adequate consideration.
`
`
`
`
`
`C.
`
`Each of the Qin Defendants is, and at all times herein
`
`mentioned was, a mere shell, instrumentality, and conduit through which the other
`
`Qin Defendants each has carried on its businesses, exercising complete control and
`
`dominance of the Qin Defendants to such an extent that any individuality or
`
`separateness of the defendants does not, and at all times herein mentioned did not,
`
`exist.
`
`
`
`
`
`D.
`
`Each of the Qin Defendants is, and at certain relevant times
`
`was, a mere shell and sham without sufficient capital or assets, or that its
`
`capitalization was trifling, compared with the business to be done and the risks of
`
`loss attendant thereto.
`
`
`
`
`
`E.
`
`Each of the Qin Defendants was intended, and was used by
`
`each of the other Qin Defendants as a device to avoid the imposition of liability,
`
`and for the purpose of substituting a financially insolvent company in his, her, or
`
`its place.
`
`
`
`
`
`F.
`
`Adherence to the fiction of the separate existence of each of the
`
`Qin Defendants as a distinct entity would permit an abuse of the corporate
`
`privilege and would sanction fraud and promote injustice in that certain of the Qin
`
`Defendants have distributed or will distribute a substantial portion of their assets to
`
`certain other Qin Defendants without adequate consideration, all for the purpose of
`
`avoiding and preventing attachment and execution by creditors of each of the Qin
`
`Defendants, including Plaintiff, thereby rendering each of the Qin Defendants
`
`insolvent and unable to meet its obligations.
`14. Plaintiff is ignorant of the true names and capacities of the Defendants
`
`sued herein as Does 1 to 10, and therefore sue these Defendants by their fictitious
`
`names. On information and belief, DOES 1-10 (the “Trio Shareholders”) are the
`
`individuals or entities that owned the shares of Trio Brothers Trading at the time of
`-5-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 6 of 25
`
`its dissolution and/or are managing agents of Trio Brothers Trading with direct
`
`involvement in the conduct alleged. Plaintiffs will amend this Complaint to allege
`
`the true names and capacities of Does 1 to 10 when ascertained.
`15. This Complaint is brought against the Trio Shareholders pursuant to
`
`Cal. Corp. Code section 2011, which provides in pertinent part that, if assets of a
`
`dissolved corporation have been distributed to the shareholders, a cause of action
`
`against the corporation arising either before or after the dissolution may be
`
`enforced against the shareholders to the extent of their pro rata share of the claim
`
`or to the extent of the corporate assets distributed to them on dissolution,
`
`whichever is less.
`16. On information and belief, at all times relevant herein, each Defendant
`
`was the agent, servant, employee, principal, successor, alter ego, and/or partner of
`
`each other Defendant, acting within the course and scope of such capacities and
`
`with the permission and consent of each other in doing the acts and engaging in the
`
`conduct alleged herein. Wherever in this pleading reference is made to any act of a
`
`Defendant, such allegation shall be deemed to mean the acts of the Defendants
`
`named in that particular cause of action, and each of them, acting individually,
`
`jointly and severally.
`17. This Complaint arises under the Lanham Act, 15 U.S.C. § 1051, et.
`
`seq., the United States Patent Act, 35 U.S.C. § 1, et. seq., California Business and
`
`Professions Code Sections 14200 et. seq., and under the common law. This Court
`
`has jurisdiction over Plaintiff's federal claims pursuant to 15 U.S.C. § 1121 and 28
`
`U.S.C. §§ 1331 and 1338(a). Jurisdiction over Plaintiff's state law claims and
`
`common law unfair competition claim lies under 28 U.S.C. §§ 1338(b) and
`
`1367(a).
`18. Venue is proper under 28 U.S.C. § 1391(b).
`
`
`
`
`
`-6-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 7 of 25
`
`
`Plaintiff’s Trademark and Patent Rights
`19. Plaintiff first adopted and began using the LOCS mark no later than
`
`September 1, 2005. Plaintiff has used the LOCS mark as a trademark in
`
`connection with sunglasses continuously since then.
`20. Plaintiff applied for United States Trademark Registration No.
`
`3,418,299 for the LOCS mark on January 26, 2006. United States Trademark
`
`Registration No. 3,418,299 for the LOCS mark issued to Plaintiff on April 29,
`
`2008. A copy of this registration is attached as Exhibit A.
`21. Plaintiff is the owner of United States Patent Registration No.
`
`D545,348 for a sunglasses design. A copy of this registration is attached as
`
`Exhibit B.
`
`Defendant Time Plaza’s Wrongful Conduct
`22. On information and belief, Defendant Time Plaza began using the
`
`LOCS mark in connection with sunglasses on February 1, 2007, seventeen (17)
`
`months after Plaintiff began selling sunglasses bearing the LOCS mark and more
`
`than a year after Plaintiff applied for United States Trademark Registration No.
`
`3,418,299 for the LOCS mark. Defendant Time Plaza is not, and never has been,
`
`authorized by Plaintiff to use the LOCS mark.
`23. On information and belief, Defendant Time Plaza applied for
`
`California State Trademark Registration No. 0112431 for the LOCS mark for “sun-
`
`glasses and eye-glasses” on February 27, 2007. A copy of this registration is
`
`attached as Exhibit C.
`24. On information and belief, Defendant Time Plaza had actual
`
`knowledge of Plaintiff's use of the LOCS mark in connection with sunglasses at the
`
`time Defendant adopted and began using the LOCS mark.
`25. On information and belief, Defendant Time Plaza applied for and
`
`registered California State Trademark Registration No. 0112431 for the LOCS
`
`mark in violation of the Model State Trademark Law as adopted in California.
`-7-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 8 of 25
`
`
`26. On information and belief, Defendant Time Plaza procured California
`
`State Trademark Registration No. 0112431 for the LOCS mark by declaring that to
`
`its “best knowledge and belief no other person firm, corporation, union or
`
`association has the right to use said mark in this state, either in identical form or in
`
`such near resemblance thereto as might be calculated to deceive or confuse”
`
`knowing such that declaration was false and fraudulent.
`27. Defendant Time Plaza’s use of the LOCS mark in connection with
`
`sunglasses is likely to cause confusion or mistake or to deceive the consuming
`
`public into believing that Defendant Time Plaza is affiliated, connected, sponsored,
`
`approved, or otherwise associated with Plaintiff.
`28. On information and belief, Defendant Time Plaza began selling
`
`sunglasses that fall within the scope of Plaintiff’s United States Patent Registration
`
`No. D545,348 after Plaintiff obtained United States Patent Registration No.
`
`D545,348. Defendant Time Plaza is not, and never has been, authorized by
`
`Plaintiff to sell sunglasses that fall within the scope of United States Patent
`
`Registration No. D545,348.
`29. Plaintiff requested in several letters and conversations since April
`
`2008 that Defendant Time Plaza cease using the LOCS mark, assign California
`
`State Trademark Registration No. 0112431 to Plaintiff, and cease selling
`
`sunglasses that fall within the scope of Plaintiff’s United States Patent Registration
`
`No. D545,348. Defendant Time Plaza has refused to comply with Plaintiff's
`
`requests.
`
`Defendant AAB Enterprise’s Wrongful Conduct
`30. On information and belief, on or around March 16, 2009 Defendant
`
`AAB Enterprise attempted to import twenty-one-thousand sunglasses bearing the
`
`LOCS mark. In May, 2009 Plaintiff received the notice that such shipment was
`
`seized by U.S. Customs and Border Protection.
`
`-8-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 9 of 25
`
`
`31. On information and belief, Defendant AAB Enterprise intended to
`
`distribute and sell, either at retail or wholesale, the sunglasses seized in March
`
`2009 bearing the LOCS mark. On information and belief Defendant AAB
`
`Enterprise has imported, distributed and sold in the past, and unless enjoined will
`
`continue to import, distribute and sell, sunglasses bearing the LOCS mark.
`
`Defendant AAB Enterprise is not, and never has been, authorized by Plaintiff to
`
`use the LOCS mark.
`32. On information and belief, Defendant AAB Enterprise had actual and
`
`constructive knowledge of Plaintiff's use and registration of the LOCS mark in
`
`connection with sunglasses at the time Defendant AAB Enterprise began
`
`importing, distributing and selling sunglasses bearing the LOCS mark.
`33. Defendant AAB Enterprise’s use of the LOCS mark in connection
`
`with sunglasses is likely to cause confusion or mistake or to deceive the consuming
`
`public into believing that Defendant AAB Enterprise is affiliated, connected,
`
`sponsored, approved, or otherwise associated with Plaintiff.
`
`The Qin Defendants’ Wrongful Conduct
`34. On information and belief, the Qin Defendants began using the LOCS
`
`mark in connection with sunglasses after Plaintiff began selling sunglasses bearing
`
`the LOCS mark. The Qin Defendants are not, and never have been, authorized by
`
`Plaintiff to use the LOCS mark.
`35. On information and belief, the Qin Defendants had actual knowledge
`
`of Plaintiff's use of the LOCS mark in connection with sunglasses at the time the
`
`Qin Defendants adopted and began using the LOCS mark.
`36. The Qin Defendants’ use of the LOCS mark in connection with
`
`sunglasses is likely to cause confusion or mistake or to deceive the consuming
`
`public into believing that the Qin Defendants are affiliated, connected, sponsored,
`
`approved, or otherwise associated with Plaintiff.
`
`-9-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 10 of 25
`
`
`37. On information and belief, the Qin Defendants began selling
`
`sunglasses that fall within the scope of Plaintiff’s United States Patent Registration
`
`No. D545,348 after Plaintiff obtained United States Patent Registration No.
`
`D545,348. The Qin Defendants are not, and never have been, authorized by
`
`Plaintiff to sell sunglasses that fall within the scope of United States Patent
`
`Registration No. D545,348.
`38. Plaintiff requested in several letters and conversations since April
`
`2008 that Defendant Trio Brothers Trading cease using the LOCS mark and cease
`
`selling sunglasses that fall within the scope of Plaintiff’s United States Patent
`
`Registration No. D545,348. Defendant Trio Brothers Trading has refused to
`
`comply with Plaintiff's requests.
`
`Plaintiff’s Harm from Defendants’ Wrongful Conduct
`39. As a result of the aforesaid acts of Defendant Time Plaza and the Qin
`
`Defendants, Plaintiff has suffered and continues to suffer substantial damages and
`
`irreparable injury.
`40. Plaintiff has no adequate remedy at law and, unless Defendant Time
`
`Plaza and the Qin Defendants are restrained and enjoined by this Court, said acts
`
`will continue to cause damage and irreparable injury to Plaintiff and to its goodwill
`
`and business reputation.
`41. Plaintiff cannot ascertain the precise amount of its damages at this
`
`time.
`
`FIRST CLAIM FOR RELIEF
`FEDERAL TRADEMARK INFRINGEMENT
`IN VIOLATION OF § 32 OF THE LANHAM ACT
`(Against All Defendants)
`42. Plaintiff repeats and realleges Paragraphs 1 to 41.
`43. Defendants’ activities, as alleged above, constitute intentional and
`
`willful infringement of Plaintiff's rights in and to its federally registered LOCS
`
`mark, in violation of Lanham Act § 32, 15 U.S.C. § 1114.
`-10-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 11 of 25
`
`
`SECOND CLAIM FOR RELIEF
`FALSE DESIGNATION OF ORIGIN
`IN VIOLATION OF § 43(a) OF THE LANHAM ACT
`(Against All Defendants)
`44. Plaintiff repeats and realleges Paragraphs 1 to 41.
`45. Defendants’ activities, as alleged above, constitute unfair competition
`
`and false designation of origin in violation of Lanham Act § 43(a), 15 U.S.C.
`
`§ 1125(a).
`
`THIRD CLAIM FOR RELIEF
`IMPROPER REGISTRATION
`IN VIOLATION OF MODEL STATE TRADEMARK LAW
`(Against Defendant Time Plaza, Inc.)
`46. Plaintiff repeats and realleges Paragraphs 1 to 41.
`47. Defendant Time Plaza improperly and fraudulently obtained
`
`California State Trademark Registration No. 0112431 in violation of Article 2
`
`Section 14205(f) of the Model State Trademark Law, as adopted in California (Bus
`
`& Prof. Code § 14205(f)).
`48. Based on the foregoing, Defendant is liable to pay all damages
`
`sustained as a consequence of the filing or registration, pursuant to Section 14240
`
`of the Model State Trademark Law, as adopted in California (Bus & Prof. Code
`
`§ 14240).
`49. Based on the foregoing, Plaintiff is entitled to an order canceling
`
`Defendant’s registration, pursuant to Section 14254 of the Model State Trademark
`
`Law, as adopted in California (Bus & Prof. Code § 14254).
`FOURTH CLAIM FOR RELIEF
`COMMON LAW UNFAIR COMPETITION
`(Against All Defendants)
`50. Plaintiff repeats and realleges Paragraphs 1 to 41.
`51. Defendant Time Plaza’s and the Qin Defendants’ activities, as alleged
`
`above, constitute unfair competition in violation of the common law.
`
`-11-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 12 of 25
`
`
`52. Based on the foregoing, Plaintiff is entitled to an order enjoining
`
`Defendants from continuing to commit the wrongful conduct alleged.
`FIFTH CLAIM FOR RELIEF
`PATENT INFRINGEMENT
`IN VIOLATION OF § 271 OF THE U.S. PATENT ACT
`(Against All Defendants except AAB Enterprise, Inc.)
`53. Plaintiff repeats and realleges Paragraphs 1 to 36.
`54. Defendant Time Plaza’s and the Qin Defendants’ activities, as alleged
`
`above, constitute patent infringement in violation of the United States Patent Act,
`
`35 U.S.C. § 271.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff respectfully requests that the Court enter an Order:
`
`(A) Enjoining Defendant Time Plaza, Defendant AAB Enterprise
`
`and the Qin Defendants and each of their servants, employees, agents,
`
`representatives, affiliates and all persons acting on behalf or at the direction
`
`of, or in concert or participation with, each of them from:
`
`(i) Using any trademark, service mark, or trade name
`
`incorporating the LOCS mark, or which is confusingly similar to the
`
`LOCS mark;
`
`(ii) Representing in any manner that any of Defendants’
`
`goods or services are affiliated, connected, sponsored, approved or
`
`otherwise associated with Plaintiff, or vice versa; and
`
`(iii) Taking any other action likely to cause confusion,
`
`mistake or deception as to the source or origin of Defendants’ goods
`
`or services or of Plaintiff's goods or services.
`
`(B) Enjoining Defendant Time Plaza and the Qin Defendants and
`
`each of their servants, employees, agents, representatives, affiliates and all
`
`persons acting on behalf or at the direction of, or in concert or participation
`
`with, each of them from infringing United States Patent No. D545,348.
`-12-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 13 of 25
`
`
` (C) Directing Defendant Time Plaza, Defendant AAB Enterprise
`
`and each Qin Defendant to file with the Court and serve on Plaintiff within
`
`thirty days after entry and service on Defendant of such injunction a report
`
`in writing under oath setting forth in detail the manner and form in which
`
`Defendant has complied with the injunction;
`
`(D) Requiring Defendant Time Plaza, Defendant AAB Enterprise
`
`and the Qin Defendants to deliver up to Plaintiff for destruction all labels,
`
`signs, prints, business cards, forms, packages, wrappers and all advertising
`
`or promotional material in the possession, custody, or control of Defendants
`
`bearing the LOCS mark or any other name or mark which is confusingly
`
`similar to the LOCS mark, as well as all plates, molds, matrices, and other
`
`means of making the same;
`
`(E) Canceling California State Trademark Registration No.
`
`0112431;
`
`(F) Requiring Defendant Time Plaza and the Qin Defendants to
`
`deliver up to Plaintiff for destruction all products infringing United States
`
`Patent No. D545,348 and all advertising or promotional material for such
`
`products in the possession, custody, or control of Defendants, as well as all
`
`plates, molds, matrices, and other means of making the same;
`
`(G) Awarding Plaintiff compensatory damages for its losses and an
`
`accounting of Defendant Time Plaza’s, Defendant AAB Enterprise’s and the
`
`Qin Defendants’ profits from its acts of infringement and unfair competition,
`
`including interest thereon, and trebling such award of profits and damages
`
`because of the deliberateness and willfulness of Defendants’ acts;
`
`(H) Requiring Defendant Time Plaza, Defendant AAB Entprise and
`
`the Qin Defendants to pay Plaintiff's reasonable costs and attorneys' fees
`
`incurred in this action;
`
`-13-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 14 of 25
`
`
`(I) With respect to the dissolved corporation Trio Brothers
`
`Trading, enforcing the judgment of this Court to the extent of Trio Brothers
`
`Trading’s undistributed assets, including, without limitation, insurance
`
`assets held by Trio Brothers Trading that may be available to satisfy claims;
`
`(J) With respect to the dissolved corporation Trio Brothers
`
`Trading, enforcing the judgment of this Court against each of the Trio
`
`Shareholders to the extent of their pro rata share of the claim or to the extent
`
`of the corporate assets distributed to them on dissolution, whichever is less;
`
`and
`
`(K) Awarding Plaintiff such other and further relief as this Court
`
`deems just and proper.
`
`Respectfully Submitted,
`
`Dated: May 26, 2009
`
`
`OVERHAUSER LAW OFFICES, LLC
`
`By: _s/Paul B. Overhauser___________
`Paul B. Overhauser, Esq.
`
`Gregg A. Rapoport
`BUSINESS LEGAL PARTNERS,
`Attorneys at Law, Law Corp.
`
`Attorneys for Plaintiff
`JAY-Y ENTERPRISE CO., INC.
`
`
`
`-14-
`SECOND AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, PATENT INFRINGEMENT,
`AND RELATED CLAIMS; DEMAND FOR JURY TRIAL
`
`
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`
`Case 2:08-cv-07600-FMC-RZ Document 36 Filed 06/16/2009 Page 15 of 25
`
`
`DEMAND FOR JURY TRIAL
`Plaintiff hereby demands a jury trial.
`
`
`
`Dated: May 26, 2009
`
`
`OVERHAUSER LAW OFFICES, LLC
`
`By: _s/Paul B. Overhauser___________
`Paul B. Overhauser, Esq.
`
`Gregg A. Rapoport
`BUSINESS LEGAL PARTNERS,
`Attorneys at Law, Law Corp.
`
`Attorneys for Plaintiff
`JAY-Y ENTERPRISE CO., INC.
`
`
`
`