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
`ESTTA341090
`ESTTA Tracking number:
`04/06/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052262
`Defendant
`Zoje Holding Group Company, Ltd.
`ZOJE HOLDING GROUP COMPANY, LTD.
`DAMAIYU DEVELOPMENT ZONE, YUHUAN
`ZHEJIANG,
`CHINA
`bgross@becker-poliakoff.com
`Motion to Suspend for Civil Action
`Ruben Alcoba, Esq.
`alcoba@miamipatents.com
`/ruben alcoba/
`04/06/2010
`motiontosuspendcancellation.pdf ( 2 pages )(187840 bytes )
`complaint1.pdf ( 19 pages )(80183 bytes )
`civil cover sheet.pdf ( 1 page )(44766 bytes )
`exhibit a.pdf ( 2 pages )(36462 bytes )
`exhibit b.pdf ( 7 pages )(1315012 bytes )
`exhibit c.pdf ( 12 pages )(595960 bytes )
`exhibit d.pdf ( 2 pages )(211124 bytes )
`exhibit e.pdf ( 6 pages )(1192421 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`FW SUPPLY, LLC,
`
`Mark: SUNELI
`
`Petitioner,
`
`V.
`
`Reg. No.: 3179859
`
`Cancellation No.: 92052262
`
`ZOJE HOLDING GROUP COMPANY, LTD.
`
`Registrant.
`
`/
`
`REGISTRANT, ZOJE HOLDING GROUP COMPANY, LTD’S MOTION TO SUSPEND
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`COMES NOW, Registrant, ZOJE HOLDING GROUP COMPANY, LTD., and pursuant
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`to TBMP §5l0, and CFR §2.1l7, hereby files its Motion to Suspend, and as for grounds, states
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`as follows:
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`1. Registrant has filed a Complaint and Motion for Preliminary Injunction against
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`Petitioner. The case is pending in the Southern District of Florida. The case number is
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`1 0-2043 3 -CIV—Sietz/Sullivan.
`
`2. Upon request from the Board, Registrant will provide a copy of the voluminous
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`documents filed, including Petitioner’s Motion to Dismiss and Response to Motion for
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`Preliminary Injunction.
`
`3. Specifically relevant to this proceeding are Petitioner/Defendant’s defenses asserted in
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`the pending federal litigation which mirror those alleged in the Petition for Cancellation.
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`4. As specifically noted in §5l0.02(a) of the TMBP, ordinarily, the Board will suspend
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`proceedings in the case before it if the final determination of the other proceeding will
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`have a bearing on the issues before the Board.
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`

`
`WHEREFORE, Registrant respectfully requests that the Board enter an Order suspending
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`proceedings pending the outcome and final determination in the Southern District of Florida.
`
`21/9/3”/0
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`Date
`
`Alcoba & Associates, P.A.
`
`3399 NW 72 Avenue, Suite 211
`
`Miami, Florida 33122
`Tel. 305.362.8118
`
`Facsimile. 305.436.7429
`
`Email: alcoba@miamipatents.com
`
`ATTORNEY FOR REGISTRANT: ZOJSE HOLDING GROUP COMPANY, LTD.
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing Notice of Appearance for
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`Registrant has been served on Petitioner by mailing same, first class, postage prepaid, to the
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`office of Petitioner’s attorney: Ira Cohen, Silver, Garvett & Henkel, P.A. 18001 Old Cutler Road,
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`Suite 600, Miami, Florida 33157, on this 6th‘day of April, 2010.
`By:
`4%
`RubemA’lcol:£1, Esp/.
`
`

`
`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 1 of 19
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`ZOJE HOLDING GROUP COMPANY, LTD.
`a Chinese corporation,
`
`
`
`
`
`
`CASE NO.:
`
`
`
`Plaintiff,
`
`
`
`v.
`
`SUNELI, LLC, a Florida limited liability company,
`FW SUPPLY, LLC, a Florida limited liability company,
`FLORIDA PLUMBING, LLC, a Florida limited
`Liability company, ERIC DORMOY, an individual resident
`of Florida, and ANGEL MARTINEZ, an individual resident
`of Florida,
`Defendants.
`
`
`________________________________________________/
`
`COMPLAINT
`
`Plaintiff, ZOJE HOLDING GROUP COMPANY, LTD. (hereinafter “ZOJE”), by and
`
`through its undersigned counsel, sues Defendants, SUNELI, LLC., FW SUPPLY, LLC.,
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`FLORIDA PLUMBING, LLC., ERIC DORMOY, and ANGEL MARTINEZ, and as for
`
`grounds, alleges as follows:
`
`JURISDICTION AND VENUE
`
`1.
`
`This Court has jurisdiction over the federal trademark claims asserted in this action under
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`15 U.S.C. §1121, and 28 U.S.C. §1338. This Court has supplemental jurisdiction over the
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`common law unfair competition claim asserted herein pursuant to 28 U.S.C. §1367 because said
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`claim is so related to the federal claims that it forms part of the same case or controversy and
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`derives from a common nucleus of operative facts.
`
`2.
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`Defendants reside in, and do business in the Southern District of Florida and have
`
`committed the acts complained of herein in this District. Venue is proper in this District pursuant
`
`to 28 U.S.C. §1391.
`
`
`
`1
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 2 of 19
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`3.
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`Defendants are subject to the jurisdiction of this Court pursuant to and in accordance with
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`the laws of Florida and Rule 4 of the Federal Rules of Civil Procedure.
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`THE PARTIES
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`4.
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`Plaintiff, ZOJE is a Chinese company, and the owner of the trademark “SUNELI” for use
`
`on faucets, toilets, sinks, and bath vanities; and is the owner of U.S. Registration No.: 3,179,859.
`
`5.
`
`Upon information and belief, Defendant SUNELI, LLC, is a Florida business operating at
`
`3615 NW 115th Avenue, Doral, Florida, and is subject to the jurisdiction of this Court because it
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`is both domiciled in and conducts substantial business within this District.
`
`6.
`
`Upon information and belief, Defendant FW SUPPLY, LLC, is a Florida business
`
`operating at 3395 NW 79TH Avenue, Doral, Florida, and is subject to the jurisdiction of this
`
`Court because it is both domiciled in and conducts substantial business within this District.
`
`7.
`
`Upon information and belief, Defendant Florida Plumbing, LLC, is a Florida business
`
`with showrooms throughout this District, and is subject to the jurisdiction of this Court; and is
`
`domiciled in and conducts substantial business within this District.
`
`8.
`
`Upon information and belief, Defendant ERIC DORMOY is a resident of Miami-Dade
`
`County, operates a business in this District, and is otherwise subject to the jurisdiction of this
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`Court. DORMOY operates and controls SUNELI, LLC, and FW SUPPLY, LLC.
`
`9.
`
`Upon information and belief, Defendant, ANGEL MARTINEZ is a resident of Miami-
`
`Dade County, operates a business in this District, and is otherwise subject to the jurisdiction of
`
`this Court. MARTINEZ also operates and controls SUNELI, LLC and FW SUPPLY, LLC.
`
`FACTUAL ALLEGATIONS
`
`Plaintiff's Famous Products and Marks
`
`10. Plaintiff is the exclusive manufacturer of faucets, toilets, sinks, and bath vanities under
`
`
`
`2
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 3 of 19
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`the trademark “SUNELI” and at all times controls the distribution, sales, importation, and
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`manufacture of these goods for the United States. The goods made by ZOJE for the United
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`States market under the SUNELI trademark bear one or more of Plaintiff's trademarks further
`
`described in Exhibit “A.” The exhibit is a copy of a registration displayed in the public records of
`
`the United States Patent and Trademark Office. Plaintiff is the owner of US Reg. No. 3,179,859.
`
`ZOJE products are identified by the trade name and trademark SUNELI. Plaintiff affixes its
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`SUNELI mark to goods that it distributes in commerce.
`
`11. SUNELI is an arbitrary and fanciful trademark that is entitled to the highest level of
`
`protection afforded by law. The SUNELI trademark is associated with the Plaintiff in the minds
`
`of consumers, the public and the trade.
`
`12.
`
`Plaintiff, ZOJE has used the SUNELI trademark for several years on and in connection
`
`with its faucets, sinks, toilets, and bath vanities, and has done so long prior to any use made by
`
`the Defendants. The SUNELI trademark identifies Plaintiff as the source of the goods, which are
`
`high quality products.
`
`13. Based on Plaintiff's extensive sales and market penetration, Plaintiff’s products have
`
`gained a wide popularity. The SUNELI trademark has acquired a secondary meaning so that any
`
`product and advertisement bearing such a mark is immediately associated by consumers, the
`
`public and the trade as being a product of the Plaintiff.
`
`14.
`
`Plaintiff has gone to great lengths to protect its name.
`
`15.
`
`Plaintiff’s SUNELI trademark registration is valid and is in full force and effect as of the
`
`time of the filing of this complaint.
`
`16. Plaintiff has its products tested by IAPMO, the renowned leader in the industry of
`
`plumbing supplies. Plaintiff has its products tested by IAPMO in order to achieve goodwill in
`
`
`
`3
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 4 of 19
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`the minds of consumers that purchase their products. ZOJE’s goods are of the highest quality
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`and meet the strict testing standards of the industry.
`
`17. Note, not all goods in the industry meet IAPMO standards. IAPMO is a product
`
`certification body that tests and inspects samples taken from Plaintiff’s stock to ensure that
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`Plaintiff’s products comply with applicable government codes and standards, and IAPMO
`
`standards. Plaintiff pays a substantial cost to have its products tested so that they are able to
`
`market their products to consumers as being products that meet IAPMO standards. IAPMO
`
`certification informs consumers that the products having the IAPMO certifications are of a
`
`certain quality and that they meet a certain standard.
`
`Defendants' Counterfeiting and Infringing Activities
`
`18. Upon information and belief, long after Plaintiff’s adoption and use of the SUNELI
`
`trademark on its products and after Plaintiff's federal registration of the SUNELI trademark,
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`Defendants began selling, offering for sale, distributing, promoting and advertising faucets,
`
`sinks, toilets, and bath vanities, amongst other products, under the SUNELI trademark.
`
`19. Since in or around 2005, Defendants were selling SUNELI branded products that were
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`purchased directly from Plaintiff.
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`20. Defendants have in the past, exclusively sold millions of dollars worth of Plaintiff’s
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`authorized and legitimate SUNELI products, products having been manufactured or originating
`
`from the Plaintiff.
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`21. Upon information and belief, in or around the middle of 2009, the Defendants began
`
`importing, making or having made, selling, and otherwise offering to the consumer public
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`products not manufactured or originating from the Plaintiff, yet bearing the SUNELI trademark.
`
`22. Upon information and belief, Defendants have been selling, offering for sale, distributing,
`
`
`
`4
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 5 of 19
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`promoting and advertising counterfeit products bearing the Plaintiff’s registered trademark
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`SUNELI.
`
`23. Attached as Exhibit “B” is a composite exhibit of some invoices for Defendants to a
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`factory in China for the manufacture of counterfeit products bearing the Plaintiff’s trademark
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`SUNELI. The goods ordered and imported by Defendants bearing the SUNELI trademark are
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`not products that originate from or are manufactured by the Plaintiff, therefore they are
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`counterfeit products.
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`24. Evidence of payment from Defendants to a Chinese manufacturer for Defendants’
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`counterfeit goods is attached as composite Exhibit “C.”
`
`25. Furthermore, Defendants are not only selling counterfeit goods having the SUNELI
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`trademark, they are also brazenly affixing the IAPMO or the CUPC certification mark on the
`
`goods, thereby further misleading the consuming public into believing that the counterfeit goods
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`have been tested and have met the IAPMO standards.
`
`26. The IAPMO markings used by the Defendants on their goods have not been authorized
`
`by IAPMO. Defendants are using the IAPMO markings authorized to Plaintiff. The IAPMO
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`markings placed on Defendants’ counterfeit goods is another brazen act of fraud on the
`
`consuming public, intending to induce them into believing that these counterfeit goods have met
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`IAPMO standards.
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`27. On September 21, 2009, Plaintiff notified Defendants that they were forbidden from
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`using its SUNELI mark and Plaintiff’s IAPMO or CUPC certification on any goods. Defendants
`
`refused to cease and desist from further use of the marks. Upon information and belief,
`
`Defendants continued and still continue to order and sell goods bearing the counterfeit SUNELI
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`marks from other manufacturers. A true and correct copy of Plaintiff’s correspondence is
`
`
`
`5
`
`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 6 of 19
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`attached as Exhibit “D.”
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`28. Upon information and belief, Defendants are using the Plaintiff’s SUNELI trademark on
`
`catalogs, invoices, as a corporate designation, and on its counterfeit goods.
`
`29. Brian Shen, only a part owner of Suneli, LLC, has taken every measure available to him
`
`to force the cessation of Defendants’ infringing and counterfeiting activities, to no avail.
`
`30. Mr. Shen, as a part owner, has access to the warehouse where Defendants store the
`
`counterfeit SUNELI goods, has taken pictures of the infringing goods, and has produced certain
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`documents supporting Plaintiff’s claims, including invoices, money transfers, and shipping
`
`documents. A representative sample of a transaction is attached as Exhibit E. The exhibit
`
`contains a purchase order to a factory that is not Plaintiff, a photo of the box that contains the
`
`P.O. number taken in Defendants’ warehouse, and the payment of a commission to Defendants’
`
`salesperson for the sale of the counterfeit product.
`
`31. Mr. Shen has personal knowledge of Defendants’ infringing activities.
`
`32. Upon information and belief, Defendants’ activities of ordering the manufacture of,
`
`importing, and selling counterfeit products bearing the SUNELI trademark is not an isolated
`
`incident, but rather part of an ongoing effort to cause a likelihood of confusion, for Defendants’
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`counterfeit products bearing the Plaintiff’s SUNELI trademark have been placed in the Florida
`
`marketplace through both wholesalers, Suneli, LLC, FW Supply, LLC, and Florida Plumbing,
`
`LLC, which displays and sells the infringing goods from its showroom(s) in Florida.
`
`33. Upon information and belief, Defendants have an ongoing business relationship amongst
`
`each other regarding the sale of counterfeit products having the Plaintiff’s SUNELI trademark in
`
`Florida.
`
`34. Defendants, having been placed on notice by Plaintiff, continue to sell, offer, distribute,
`
`
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`6
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 7 of 19
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`promote and advertise counterfeit products bearing Plaintiff’s trademark with actual knowledge
`
`that such activities are illegal.
`
`35. The acts of Defendants are calculated to confuse and to deceive the public and are
`
`performed with full knowledge of Plaintiff's rights.
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`36. Defendants are not now associated, affiliated or connected with, or endorsed or
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`sanctioned by, Plaintiff.
`
`37.
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`Plaintiff has never authorized or consented in any way to the use by Defendants of the
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`Plaintiff’s SUNELI trademark where the goods bearing the SUNELI trademark are manufactured
`
`by or originate from any other entity other than Plaintiff.
`
`38.
`
`The use by Defendants of Plaintiff’s trademark and/or copies thereof on Defendants'
`
`products is likely to cause consumers, the public and the trade to erroneously believe that the
`
`goods sold by Defendants emanate or originate from Plaintiff, or that said items are authorized,
`
`sponsored, or approved by Plaintiff, even though they are not. This confusion causes irreparable
`
`harm to Plaintiff and dilutes the distinctive quality of the Plaintiff’s trademarks.
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`39. By using Plaintiff’s SUNELI trademark on Defendants' counterfeit goods, Defendants are
`
`trading on the goodwill and reputation of Plaintiff and creating the false impression that
`
`Defendants' goods are Plaintiff's legitimate products.
`
`40. Defendants have been unjustly enriched by illegally using and misappropriating
`
`Plaintiff's intellectual property for Defendants' own financial gain. Furthermore, Defendants have
`
`unfairly benefitted and profited from Plaintiff's outstanding reputation of having high quality
`
`products and Plaintiff’s significant advertising and promotion of its authorized products bearing
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`the SUNELI trademark.
`
` 41. Defendants have disparaged Plaintiff, its SUNELI trademark, and Plaintiff’s SUNELI
`
`
`
`7
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 8 of 19
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`products by creating a false association with Plaintiff’s genuine trademarked goods.
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`42. Defendants have misappropriated Plaintiff's CUPC and IAPMO certification and are
`
`placing goods in commerce that may be sub-standard, have not been tested, and do not warrant
`
`the right to bear Plaintiff’s certifications. Such uses of the certifications are intended to deceive
`
`consumers.
`
` 43. Plaintiff has no control over the nature and quality of the infringing and counterfeit
`
`products sold by Defendants bearing the Plaintiff’s SUNELI trademark.
`
`44. Among other things, Defendants' manufacture, distribution, sale, offers of sale,
`
`promotion and advertisement of their products has and will reflect adversely on the Plaintiff for
`
`consumers might believe that they are the source or origin of the counterfeit products; hamper
`
`continuing efforts by Plaintiff to protect its outstanding reputation for high quality, originality
`
`and distinctive goods; and tarnish the goodwill and demand for genuine Plaintiff SUNELI
`
`products.
`
`45. Defendants have acted with reckless disregard for Plaintiff's rights and/or were willfully
`
`blind in connection with their unlawful activities. Alternatively, Defendants intentionally
`
`engaged in their counterfeiting and infringing activities. Therefore, this case constitutes an
`
`exceptional case under 15 U.S.C. §1117(a) and/or a case of intentional counterfeiting under 15
`
`U.S.C §1117(b).
`
`46.
`
`Plaintiff has suffered irreparable harm and damages as a result of the acts of Defendants
`
`in an amount thus far not yet determined. The injuries and damages sustained by Plaintiff have
`
`been directly and proximately caused by the Defendants' wrongful advertisement, promotion,
`
`manufacture, distribution, sale and offers of sale of their goods bearing infringements and/or
`
`counterfeits of the Plaintiff’s SUNELI trademark.
`
`
`
`8
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 9 of 19
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`47.
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`Plaintiff has no adequate remedy at law.
`
`48. Defendants' wrongful acts will continue unless enjoined by the Court. Accordingly,
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`Defendants must be restrained and enjoined from any further counterfeiting or infringement of
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`the Plaintiff’s SUNELI trademark.
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`FIRST CLAIM FOR RELIEF
`
`(Trademark Counterfeiting)
`
`49.
`
`Plaintiff hereby incorporates by reference the allegations set forth above in paragraphs 1
`
`through 48.
`
`50. Defendants have used spurious designations that are identical with, or substantially
`
`indistinguishable from, the SUNELI trademark on goods covered by federal registration of
`
`Plaintiff’s SUNELI trademark.
`
`51. Defendants have used these spurious designations knowing they are counterfeit in
`
`connection with the manufacture, advertisement, promotion, sale, offering for sale and
`
`distribution of goods.
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`52. Defendants' use of the SUNELI trademark to advertise, manufacture, promote, offer for
`
`sale, distribute and sell counterfeit products having the SUNELI trademark was and is without
`
`the consent of Plaintiff.
`
`53. Defendants' unauthorized use of and affixation of the SUNELI trademark on and in
`
`connection with Defendants' advertisement, promotion, manufacture, sale, offering for sale and
`
`distribution of faucets, toilets, sinks, and bath vanities constitutes Defendants' use of the
`
`SUNELI trademark in commerce.
`
`54. Defendants' unauthorized use of the SUNELI trademarks, as set forth above, is likely to:
`
`(a) cause confusion, mistake and deception; (b) cause the public to believe that Defendants'
`
`
`
`9
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 10 of 19
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`products are the same as Plaintiff’s products and/or that Defendants are authorized, sponsored or
`
`approved by Plaintiff or that Defendants are affiliated, connected or associated with or in some
`
`way related to Plaintiff; and (c) result in Defendants unfairly benefitting from Plaintiff's
`
`advertising and promotion and profiting from the reputation of Plaintiff and its SUNELI
`
`trademark all to the substantial and irreparable injury of the public, Plaintiff and Plaintiff's
`
`SUNELI trademark and the substantial goodwill represented thereby.
`
`55. Defendants' acts as aforesaid constitute trademark counterfeiting in violation of Section
`
`32 of the Lanham Act, 15 U.S.C. §1114.
`
`56. By reason of the foregoing, each of the Defendants is liable to Plaintiff for: (a) statutory
`
`damages in the amount of up to $1,000,000 for each mark counterfeited as provided by 15
`
`U.S.C. §1117(c) of the Lanham Act, or, at Plaintiff's election, an amount representing three (3)
`
`times Plaintiff's damage and/or Defendants' illicit profits; and (b) reasonable attorney's fees,
`
`investigative fees and pre-judgment interest pursuant to 15 U.S.C. §1117(a) and (b).
`
`SECOND CLAIM FOR RELIEF
`
`(Trademark Infringement)
`
`57.
`
`Plaintiff hereby incorporates by reference the allegations set forth above in paragraphs 1
`
`through 48.
`
`58. Based on Plaintiff's extensive use of the SUNELI trademark, its extensive sales and the
`
`wide popularity of SUNELI products, the SUNELI trademark has acquired a secondary meaning
`
`so that any product and advertisement bearing such trademarks is immediately associated by
`
`purchasers and the public as being a product authorized, sponsored, affiliated or associated with
`
`Plaintiff.
`
`59. Defendants' activities constitute Defendants' use in commerce of the Plaintiff’s SUNELI
`
`
`
`10
`
`

`
`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 11 of 19
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`trademark. Defendants use the SUNELI trademark in connection with the Defendants'
`
`manufacture, sale, offer of sale, distribution, promotion and advertisement of their goods bearing
`
`infringements and/or counterfeits of the Plaintiff’s SUNELI trademark.
`
`60. Defendants have used the SUNELI trademark, knowing that the trademark is the
`
`exclusive property of the Plaintiff, in connection with Defendants' sale, offers for sale,
`
`distribution, promotion and advertisement of their goods.
`
`61. Defendants' activities create a false and misleading impression that Defendants are
`
`sanctioned, assigned or authorized by Plaintiff to use the SUNELI trademark to manufacture,
`
`advertise, distribute, sell, or offer for sale products bearing the SUNELI trademark when
`
`Defendants are not so authorized.
`
`62. Defendants engage in the aforementioned activity with the intent to confuse and deceive
`
`the public into believing that Defendants and the products they manufacture and sell are in some
`
`way sponsored, affiliated or associated with Plaintiff, when in fact they are not.
`
`63. Defendants' use of one or more SUNELI trademark has been without the consent of the
`
`Plaintiff, is likely to cause confusion and mistake in the minds of the public and, in particular,
`
`tends to and does falsely create the impression that the goods advertised, promoted, distributed
`
`and sold by the Defendants are warranted, authorized, sponsored or approved by Plaintiff when,
`
`in fact, they are not.
`
`64. Defendants' unauthorized use of the SUNELI trademark has resulted in Defendants
`
`unfairly benefitting from Plaintiff's advertising and promotion, and has allowed them to profit
`
`from the reputation of the Plaintiff and the SUNELI trademark, thereby causing substantial and
`
`irreparable injury to the public, Plaintiff and the SUNELI trademark and the substantial goodwill
`
`represented thereby.
`
`
`
`11
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 12 of 19
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`65. Defendants' acts constitute trademark infringement in violation of Section 32 of the
`
`Lanham Act, 15 U.S.C. §1114.
`
`66. By reason of the foregoing, each of the Defendants is liable to Plaintiff for: (a) an amount
`
`representing three (3) times Plaintiff's damage and/or Defendants' illicit profits; and (b)
`
`reasonable attorney's fees, investigative fees and pre-judgment interest pursuant to 15 U.S.C.
`
`§1117.
`
`THIRD CLAIM FOR RELIEF
`
`(False Designation of Origin)
`
`67.
`
`Plaintiff hereby incorporates by reference the allegations set forth above in paragraphs 1
`
`through 48.
`
`68.
`
`In connection with Defendants' advertisement, manufacture, distribution, sales and offers
`
`of sales of their goods, Defendants have used in commerce, and continue to use in commerce, the
`
`SUNELI trademark.
`
`69.
`
`In connection with Defendants' advertisement, promotion, distribution, sales and offers of
`
`sales of their goods, Defendants have affixed, applied and used false designations of origin and
`
`false and misleading descriptions and representations, including the SUNELI trademark, which
`
`tend falsely to describe the origin, sponsorship, association or approval by Plaintiff of the goods
`
`Defendants sell.
`
`70. Defendants have used the SUNELI trademark with full knowledge of the falsity of such
`
`designations of origin, descriptions and representations, all to the detriment of Plaintiff.
`
`71.
`
` Defendants' use of the SUNELI trademark on the Defendants' goods constitutes false
`
`descriptions and representations tending falsely to describe or represent the Defendants and the
`
`Defendants' products as being authorized, sponsored, affiliated or associated with the Plaintiff.
`
`
`
`12
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`

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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 13 of 19
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`72. Defendants have used the SUNELI trademark on their Website and goods with the
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`express intent to cause confusion and mistake, to deceive and mislead the public, to trade upon
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`the reputation of the Plaintiff and to improperly appropriate to themselves the valuable trademark
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`rights of the Plaintiff.
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`73. Defendants' acts constitute the use in commerce of false designations of origin and false
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`and/or misleading descriptions or representations, tending to falsely or misleadingly describe
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`and/or represent the Defendants' products as those of the Plaintiff in violation of Section 43(a) of
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`the Lanham Act, 15 U.S.C. §1125(a).
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`74. By reason of the foregoing, each of the Defendants is liable to the Plaintiff for: (a) an
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`amount representing three (3) times the Plaintiff's damage and/or the Defendants' illicit profits;
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`and (b) reasonable attorney's fees, investigative fees and pre-judgment interest pursuant to 15
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`U.S.C. §1117.
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`FOURTH CLAIM FOR RELIEF
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`(Common Law Unfair Competition)
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`75.
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`Plaintiff hereby incorporates by reference the allegations set forth above in paragraphs 1
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`through 48.
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`76.
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`This is a claim against the Defendants for unfair competition under the laws of the State
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`of Florida.
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`77.
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`Plaintiff has built up valuable goodwill in its SUNELI trademark and the distinctive
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`appearance of faucets, basins, sinks, cabinets and other products.
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`78. Defendants' use of the SUNELI trademark is likely to and does permit the Defendants to
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`palm off their goods as those of the Plaintiff, all to the detriment of the Plaintiff and to the unjust
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`enrichment of the Defendants.
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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 14 of 19
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`79. Defendants, upon information and belief, with full knowledge of the notoriety of the
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`SUNELI trademark, intended to and did trade on the goodwill associated with the Plaintiff’s
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`SUNELI trademark and have misled and will continue to mislead the public into assuming a
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`connection between Plaintiff and Defendants' goods by Defendants' advertisement, manufacture,
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`promotion, distribution, sales and offers for sale of products which bear copies of the SUNELI
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`trademark.
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`80. Defendants' unauthorized use of the Plaintiff’s SUNELI trademark has caused and is
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`likely to continue to cause damage to the Plaintiff by tarnishing the valuable reputation and
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`image associated with the Plaintiff and its goods. Defendants have palmed off their goods and
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`services as those of the Plaintiff by the Defendants' labeling and misrepresentations to the public,
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`members of which are likely to believe that the Defendants' products emanate from, or are
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`associated with, the Plaintiff.
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`81. Defendants' acts have or are likely to cause confusion and deception to the public as to
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`the source of the Defendants' goods. Defendants good falsely suggest a connection with the
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`Plaintiff.
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`82. Defendants' conduct constitutes unfair competition in violation of Florida law.
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`83. Defendants have acted willfully and maliciously, thereby subjecting them to an award of
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`punitive damages under Florida law.
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`84. By reason of the foregoing, Defendants are liable to the Plaintiff for: (a) compensatory
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`damages and/or the Defendants' illicit profits; and (b) punitive damages in an amount sufficient
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`to punish the Defendants.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff respectfully requests that the Court order the following relief:
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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 15 of 19
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`I. That the Court enter an injunction ordering that the Defendants, their agents, servants,
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`employees, and all other persons in privity or acting in concert with them be enjoined and
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`restrained from:
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`(a) using any reproduction, counterfeit, copy, or colorable imitation of the SUNELI trademark to
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`identify any goods or the rendering of any services not authorized by the Plaintiff;
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`(b) engaging in any course of conduct likely to cause confusion, deception or mistake, or injure
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`Plaintiff's business reputation or dilute the distinctive quality of the SUNELI trademark;
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`(c) using a false description or representation including words or other symbols tending to falsely
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`describe or represent Defendants' unauthorized goods as being those of the Plaintiff or sponsored
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`by or associated with the Plaintiff and from offering such goods in commerce;
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`(d) further infringing the SUNELI trademark by manufacturing, producing, distributing,
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`circulating, selling, marketing, offering for sale, advertising, promoting, displaying or otherwise
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`disposing of any products not authorized by the Plaintiff bearing any simulation, reproduction,
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`counterfeit, copy or colorable imitation of the SUNELI trademark;
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`(e) using any simulation, reproduction, counterfeit, copy or colorable imitation of the SUNELI
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`trademark in connection with the promotion, advertisement, display, sale, offering for sale,
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`manufacture, production, circulation or distribution of any unauthorized products in such fashion
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`as to relate or connect, or tend to relate or connect, such products in any way to Plaintiff, or to
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`any goods sold, manufactured, sponsored or approved by, or connected with Plaintiff;
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`(f) making any statement or representation whatsoever, or using any false designation of origin
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`or false description, or performing any act, which can or is likely to lead the trade or public, or
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`individual members thereof, to believe that any products manufactured, distributed, sold or
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`offered for sale, or rented by the Defendants is in any manner associated or connected with the
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`15
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`Case 1:10-cv-20433-XXXX Document 1 Entered on FLSD Docket 02/10/2010 Page 16 of 19
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`Plaintiff, or is sold, manufactured, licensed, sponsored, approved or authorized by the Plaintiff;
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`(g) engaging in any conduct constituting an infringement of the SUNELI trademark, of the
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`Plaintiff's rights in, or to use or to exploit, said SUNELI trademarks, or constituting any dilution
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`of the Plaintiff's name, reputation or goodwill;
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`(h) using or continuing to use the SUNELI trademark or trade names or any variation thereof on
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`the Internet (either in the text of a website, as a domain name, or as a key word, search word,
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`metatag, or any part of the description of the site in any submission for registration of any
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`Internet site with a search engine or index) in connection with any goods or services not directly
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`authorized by the Plaintiff;
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`(i) secreting, destroying, altering, removing, or otherwise dealing with the unauthorized products
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`or any books or r