Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA610545
`ESTTA Tracking number:
`06/18/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056396
`Plaintiff
`The East India Company Limited
`DOUGLAS N MASTERS
`LOEB & LOEB LLP
`321 N CLARK STREET, SUITE 2300
`CHICAGO, IL 60654
`UNITED STATES
`dmasters@loeb.com
`Motion to Suspend for Civil Action
`Douglas N. Masters
`chdocket@loeb.com, dmasters@loeb.com, rasmith@loeb.com, ngos-
`selin@loeb.com
`/Douglas N. Masters/
`06/18/2014
`East India suspension.pdf(682554 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: Mark: EAST INDIA, Registration No.: 4,080,628, Registration Date: January 3, 2012; Mark: EAST INDIA TRADING COMPANY,
`Registration No.: 3,599,216, Registration Date: March 31, 2009; and Mark: EAST INDIA CORPORATION, Registration No.: 2,962,984,
`Registration Date: June 21, 2005
`
`Cancellation No. 92056396
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`) ) ) ) ) ) )
`
`The East India Company Ltd.,
`Opposer,
`
`v.
`
`K. Hansotia & Co.
`
`Registrant.
`
`Commissioner of Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`MOTION TO SUSPEND PROCEEDING
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`Pursuant to 37 CFR § 2.117 and TBMP §510.02, Opposer, The East India
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`Company Ltd. (“Opposer”) hereby moves for suspension of this proceeding on the
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`following grounds:
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`1.
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`Registrant has filed a civil action in the Southern District of Florida,
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`captioned 14-cv-61379-JIC; and
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`2.
`
`The pending civil action in federal district court involves issues in
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`common with those in this cancellation proceeding and the final determination of the
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`civil action may have a bearing on the issues before the Board. A copy of the
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`complaint filed by Registrant is attached hereto as Exhibit “A”.
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`Accordingly, Opposer requests that
`
`the Board suspend this cancellation
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`proceeding pending the disposition of the pending civil action in the Southern District
`
`of Florida.
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`CH112206.1
`218001-10002
`
`1
`
`

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`Dated: June 18, 2014
`
`By:
`
`LOEB & LOEB LLP
`
`/s/ Douglas N. Masters
`Douglas N. Masters
`Regan A. Smith
`LOEB & LOEB LLP
`321 N. Clark, Suite 2300
`Chicago, IL 60654
`Tel: (312) 464-3100
`Fax: (312) 464-3111
`Email: chdocket@loeb.com,
`dmasters@loeb.com,
`rasmith@loeb.com
`
`Attorneys for Opposer
`The East India Company Ltd
`
`CH112206.1
`218001-10002
`
`2
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`

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`CERTIFICATE OF SERVICE
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`I, Noreen Gosselin, hereby certify that a copy of
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`this MOTION TO SUSPEND
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`PROCEEDING has been served upon:
`
`DEBRA D FAULK
`GRAYROBINSON PA
`401 E JACKSON STREET , SUITE 2700
`TAMPA, FL 33602
`
`via first class mail, postage prepaid, on this 18th day of June, 2014.
`
`/s/ Noreen Gosselin
`
`CH112206.1
`218001-10002
`
`3
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`

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`EXHIBIT A
`EXHIBIT A
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 1 of 14
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`
`CASE NO: __________________
`
`K. HANSOTIA & CO. INC.,
`a Florida corporation,
`
`Plaintiff,
`
`
`
`
`
`
`v.
`
`THE EAST INDIA COMPANY, LTD,
`A United Kingdom limited company,
`
`Defendant.
`
`/
`
`COMPLAINT
`
`INJUNCTIVE RELIEF SOUGHT
`JURY TRIAL REQUESTED
`
`
`
`
`
`
`
`
`Plaintiff, K. HANSOTIA & CO. INC., a Florida corporation, sues the Defendant, THE
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`EAST INDIA COMPANY, LTD, a United Kingdom limited company, and states:
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`PARTIES
`
`1.
`
`Plaintiff, K. HANSOTIA & CO. INC., (“K. Hansotia”) is a corporation duly
`
`organized under the laws of the State of Florida with its principal place of business at 6600
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`Hiatus Road, Tamarac, Florida 33321.
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`2.
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`Defendant, THE EAST INDIA COMPANY, LTD ( “East India” or “Defendant”), is
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`a corporation duly organized under the laws of the United Kingdom with a principal place of
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`business at 7-8 Conduit Street, London W1S2XF, United Kingdom.
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`3.
`
`By its own admission, Defendant is engaged in the business of marketing goods in
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`competition with K. Hansotia, throughout the United States, including in this jurisdiction.
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`- 1 -
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 2 of 14
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`JURISDICTION AND VENUE
`
`4.
`
`This Court has subject-matter jurisdiction under the provisions of 15 U.S.C.
`
`§ 1121, 28 U.S.C. §§ 1331 and 1338(a).
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`5.
`
`This Court has supplemental jurisdiction over the related state law claims under
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`28 U.S.C. §1367(a).
`
`6.
`
`This Court has personal jurisdiction over Defendant pursuant to Fla. Stat. §
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`48.193 in that Defendant is doing business in the State of Florida.
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`7.
`
`8.
`
`Venue is appropriate in this jurisdiction pursuant to 28 U.S.C. §§ 1391(b) and (c).
`
`NATURE OF ACTION
`
`This is an action for trademark infringement in violation of Section 32 of the
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`Lanham Act, 15 U.S.C. § 1114; unfair competition in violation of Section 43 of the Lanham Act,
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`15 U.S.C. § 1125(a); false advertising in violation of Section 43 of the Lanham Act, 15 U.S.C. §
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`1125(a); trademark dilution in violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125(c);
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`trademark infringement and unfair competition in violation of the common law of the State of
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`Florida; trademark dilution in violation of Fla. Stat. § 495.151 and related causes of action,
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`arising from the use by Defendant of the THE EAST INDIA COMPANY and EAST INDIA
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`COMPANY NEW GUINEA word marks in violation of K. Hansotia’s rights in the federally
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`registered marks EAST INDIA®, EAST INDIA TRADING COMPANY®, and EAST INDIA
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`CORPORATION® arising under federal trademark law.
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`BACKGROUND
`
`9.
`
`K. Hansotia is in the business of manufacturing and distributing luxury cigars,
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`premium tobacco products, smoker’s accessories, jewelry, leather, imitation leather and canvas
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`- 2 -
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 3 of 14
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`goods, clothing, and uses a family of trademarks to identify its products and services throughout
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`the United States.
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`10.
`
`Specifically, the relevant family of trademarks registered in the Unite Sates Patent
`
`and Trademark Office (“USPTO”) include:
`
`MARK
`
`
`EAST INDIA
`
`USPTO
`REG. NO.
`
`4,080,628
`
`
`EAST INDIA TRADING
`COMPANY
`
`
`EAST INDIA
`CORPORATION
`
`
`3,599,216
`
`
`2,962,984
`
`GOODS
`
`FIRST USE DATE
`
`
`Jewelry, watches, and clocks; tie-clips and
`tie-pins.
`
`Leather, leather and imitations of leather;
`goods made of leather, imitation leather
`and canvas, namely, backpacks, rucksacks,
`tote bags, carry-all bags, tool bags sold
`empty, garment bags for travel, wallets,
`key cases and wallets.
`
`Clothing, namely, shirts, coats, jackets,
`hats, suits, bathing suits, sweaters,
`sweatshirts, and neckwear.
`
`
`Cigars
`
`
`Tobacco, cigarettes, cigars; articles for
`smokers not of precious metal, namely,
`cigarette lighters, cigarette cases, cigar
`cases, cigarette holders, and cigar holders
`
`
`
`October 8, 2010
`
`
`February 4, 2008
`
`
`February 24, 2004
`
`
`11.
`
`Each USPTO registration is currently valid, subsisting and in full force and effect,
`
`and is registered on the Principal Trademark Register of the USPTO. The aforementioned
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`trademarks are hereafter referred to as “the EAST INDIA Marks.” True and accurate records
`
`from the USPTO’s TDR database reflecting the Certificates of Registration referenced above are
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`attached as Exhibit A.
`
`12.
`
`K. Hansotia currently sells a variety of tobacco and ancillary items in the United
`
`States, all of which are associated with the EAST INDIA Marks.
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`- 3 -
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 4 of 14
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`13.
`
`K. Hansotia has invested a significant amount of time and money into advertising
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`and developing the EAST INDIA Marks over the course of many years.
`
`14.
`
`Prior to the acts complained herein, those in the tobacco industry and the public in
`
`general, have come to recognize that the EAST INDIA Marks designate products manufactured
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`by K. Hansotia.
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`15.
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`K. Hansotia has continuously used the EAST INDIA Marks in interstate
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`commerce since as early as February 24, 2004, in connection with manufacturing and
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`distributing tobacco and related products and has utilized the proper trademark notice with the
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`use of the ® symbol.
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`16.
`
`Due to the proper and consistent use of the EAST INDIA Marks, the EAST
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`INDIA Marks have become a strong source-identifier of K. Hansotia’s products.
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`17.
`
`As a result of the foregoing, consumers throughout the United States have come
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`to associate the EAST INDIA Marks with both K. Hansotia and its tobacco and ancillary
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`products.
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`EAST INDIA’S ACTIONS
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`18.
`
`Defendant has applied for federal registration for
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`the following marks
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`(collectively, the “Infringing Marks”):
`
`MARK
`
`SER. NO.
`
`GOODS
`
`
`THE EAST
`INDIA
`COMPANY
`
`
`85/115,746
`
`
`Precious metals and their alloys, namely, gold, silver, bronze, platinum, rhodium
`and palladium; goods in precious metals or coated therewith, not included in other
`classes, namely, brooches, badges, boxes, trinket boxes, jewelry boxes, jewelry
`cases, watch cases, chains, watch chains, charms, tie clips, tie pins, coins,
`commemorative coins, cufflinks, decorative pins, earrings, figurines, ingots,
`thread, key rings, lockets, medallions, medals, watch bands, watch straps, rings,
`stands for clocks, stopwatches, sundials, table clocks, thimbles, tiaras; jewelry,
`precious stones; horological and chronometric instruments.
`
`Stationery; printed matter, namely magazines, books, brochures and periodicals,
`relating to The East India Company, its history and its products, cookery books,
`food and wine books, calendars; photographs; printed instructional and teaching
`
`- 4 -
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 5 of 14
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`material relating to The East India Company, its history and its products;
`packaging, namely, bags of paper or card, gift bags of paper or card; gift boxes of
`paper or card; gift wrapping paper; plastic goodie bags; plastic general purpose
`bags; blister cards
`
`Leather and imitations of leather; leather bags, hand bags, purses, wallets, attaché
`cases, garment bags for travelling, canvas shopping bags and reusable shopping
`bags, briefcases, furniture coverings of leather, cases and boxes of leather for
`packaging; trunks and travelling bags; luggage tags; umbrellas, parasols, walking
`sticks; saddlery
`
`Furniture; mirrors, picture frames; curtain accessories namely, hooks, rods, rails,
`tracks, poles, runners, tie-backs in the nature of non-textile curtain holders and
`rollers; goods (not included in other classes) of wood, cork, reed, cane, wicker,
`horn, bone, ivory, shell, amber, mother of pearl or plastic namely, beds, bed
`heads, bed fittings, mirrors, cabinets, tables, dining tables, centre tables, coffee
`tables, occasional tables, chairs, dining chairs, sofas of all materials, doors for
`furniture, sideboards, bookcases, dining cabinets, ornaments, bottle racks;
`cushions; plastic boxes for gift wrapping
`
`Household and kitchen utensils namely serving dishes, serving forks, serving
`spoons, serving tongs, spoons, spatulas, cups, mugs, saucers, plates, basins;
`baskets for domestic use not, not of metal; bowls; vegetable and fruit mashers,
`straining spoons, spaghetti spoons, ladles, whisks, utensil racks, garlic presses,
`graters, , butter curlers, pastry brushes, corkscrews, sieves, zesters, non-electric
`juicers, ice cream scoops, and cutting boards; containers for household use;
`bakeware, namely baking trays, oven trays, roasting pans; cookware, namely
`saucepans, frying pans, milk pans, saute pans, skillets, stockpots; casseroles;
`thalis, namely metal serving trays; meal trays; tea sets; tea strainers; tea infusers;
`bone china, glassware, porcelain and earthenware, namely candle rings and candle
`sticks (not of precious metal); ceramic bowls, plates, mugs, cups, saucers, vases,
`pots and tissue box covers for household purposes; chamber pots; china
`ornaments; figurines of porcelain, terracotta or glass; flower pots and flower pot
`covers; glass receptacles, bowls and jars; jugs and pitchers; knobs of porcelain;
`menu card holders; napkin holders and rings (not of precious metal); pepper mills
`and pots; salt cellars and shakers; earthenware saucepans; stew-pans; tea caddies;
`tea services and tea pots; vases; dishes; works of art of porcelain, terracotta or
`glass; picnic baskets sold empty; pottery bowls, cups, mugs, saucers, vases and
`pots; glass cooking pots, cups and mugs (not of precious metal); drinking vessels;
`decanters; dishes, butter dishes and dish covers; soap dishes; door handles of
`porcelain; decorative plates and bowls
`
`Textiles and textile goods not included in other classes, namely, bed covers, bed
`linen, bed spreads, bed blankets, woolen blankets, silk blankets, baby blankets,
`blanket throws, cashmere blankets, children's blankets, pet blankets and travelling
`blankets, throws, quilts, eiderdowns, mattress covers, table covers, table linen and
`napkins of textile, textile serviettes, table mats; table runners, bath linen, towels
`and face towels, handkerchiefs of textile; bath mats; cotton fabrics denim fabrics,
`knitted fabrics, upholstery fabrics, non-woven textile fabrics; crepe, damask and
`silk; silk fabrics for printing patterns; printed calico cloth; linen cloth; textile wall
`hangings; tapestry wall hangings; curtains; drapes; unfitted fabric covers for
`furniture; blinds of textile; cushion covers; textile pelmets; curtain tie-backs in the
`nature of textile curtain holders
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`Clothing, namely, coats, raincoats, belts, waistcoats, blouses and pullovers,
`jackets, trousers, skirts, dresses, suits, shirts and chemises, t-shirts, sweaters,
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`- 5 -
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 6 of 14
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`underwear; hosiery, socks and stockings, gloves, ties, scarves; headgear, namely,
`hats, caps and headscarves; footwear, namely, boots, shoes and slippers
`
`Carpets, rugs, mats and matting, linoleum for covering existing floors; floor
`runners; non-textile wall hangings
`
`Jellies, jams, marmalade, compotes; edible oils and fats; Bombay mix, namely, a
`variable mixture of spicy dried ingredients, which may include fried lentils,
`peanuts, chickpea flour noodles, corn, vegetable oil, chickpeas, flaked rice, fried
`onion and curry leaves; dried and cooked fruits and vegetables; vegetable pastes,
`fish pastes; meat, game and poultry pates; fruits in tins, jars and bottles, namely
`cherries, pineapple, fruit salads, apricots, pears, peaches, grapefruit, prunes,
`plums; dried figs; mincemeat; soups; dairy products excluding ice cream, ice milk
`and yogurt; eggs; milk; milk products excluding ice cream, ice milk and yogurt;
`fruit preserves, vegetable preserves; pickles; cheese; quark; cream; yoghurt;
`butter; flavoured butter; brandy butter; pickled onions; cranberry sauce; soup and
`preparations for making soup; unflavoured and unsweetened gelatin; prepared and
`prepackaged meals of meat and fish. gift food hampers containing meat, fish,
`poultry and game, meat extracts, conserves, compotes, fruit conserves, caviar,
`pate, partridge, grouse, pheasant, chicken, curried liver, curried mutton, curried
`chicken, fish pastes, hams, tongues, bacon, meat in tins, glasses and terrines, beef
`extracts, preserved, dried, cooked and frozen fruits, vegetables, meats and fish,
`dry and boiled fruit, fruits in tins and bottles, cherries, pineapple, fruit salads,
`apricots, pears, peaches, grapefruit, prunes, plums, figs, jellies, jams, marmalade,
`mincemeat, soups, dairy products, eggs, milk, milk products, dairy products,
`edible oils and fats, preserves, fruit preserves, vegetable preserves, pickles,
`cheese, quark, cream, yoghurt, butter, flavoured butter, brandy butter, pickled
`onions, apple sauce cranberry sauce, soup and preparations for making soup,
`gelatine, ready cooked meals of meat and fish, sold as a unit
`
`Coffee, coffee substitutes; coffee essences and coffee extracts, mixture of coffee
`and chicory; chicory and chicory mixtures, all for use as substitutes for coffee; tea,
`tea bags, scented teas and flavoured teas; herbal teas; cocoa, hot chocolate; sugar,
`rice, tapioca, sago; flour, processed cereals made from wheat, oats, barley, rusk,
`durum and rice; breads; spiced bread, pastry; sweets (candy); vinegars,
`vinaigrettes, sauces, namely hot sauces, ketchups; pepper; spices; mustard; honey
`mustard; honey; treacle; biscuits; cakes; pastry; puddings; chocolates; flavoured
`chocolates; petit fours; pancakes; fruits sauces excluding cranberry sauce and
`apple sauce; salad sauces and dressings; poppadoms; chutney; relish; salts, herb
`salts; curry powder; gift food hampers containing coffee, coffee substitutes, coffee
`essences and coffee extracts, mixture of coffee and chicory, chicory and chicory
`mixtures, all for use as substitutes for coffee, tea, tea bags, scented teas and
`flavoured teas, herbal teas; cocoa, hot chocolate, sugar, rice, tapioca, sago, flour,
`and preparations made from flour or cereals, breads, spiced bread, pastry and
`confectionery, vinegars, vinaigrettes, sauces, pepper, condiments, spices, mustard,
`honey mustard, honey, treacle, biscuits, cakes, pastry, puddings, chocolates,
`flavoured chocolates, petit fours, pancakes, fruits sauces, salad sauces and
`dressings, poppadoms, chutney, relish, salts, herb salts, curry powder, sold as a
`unit
`
`Beers, ales and porters; sweet cider; syrups and concentrates for making
`beverages; non-alcoholic fruit cordials; mineral and aerated waters; soft drinks;
`fruit and vegetable drinks and fruit and vegetable juices; gift drinks hampers
`containing beers, ales and porters, sweet cider, syrups and concentrates for making
`beverages, non-alcoholic fruit cordials, mineral and aerated waters, soft drinks,
`fruit and vegetable drinks and fruit and vegetable juices
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`- 6 -
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 7 of 14
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`beverages except beers; wines, spirits and liqueurs; hard cider; sherry; port wine;
`champagne; gift drinks hampers containing alcoholic beverages except beers,
`wines, spirits and liqueurs, hard cider, sherry, port wine, champagne, sold as a unit
`
`Financial affairs, namely financial management, hire purchase financing, credit
`and loan services, department store payment protection services, all relating to
`store account card purchases made on-line, by mail order or in a retail store,
`banking services, financial investment brokerage services, commodity brokerage
`services charge card and credit card services, money exchange services, debt
`factoring services, housing agency services, arrangement of installment loans,
`insurance brokerage, insurance underwriting, issuing of travelers cheques, lease
`purchase financing, lending against security, financing of loans, providing finance
`for credit sales, savings bank services, financial valuation of personal property,
`safe deposit services, cheque encashment services, provision of cash dispensing
`facilities, saving scheme services, leasing of real estate, building leasing,
`mortgage banking, mortgage lending, securities brokerage, securities deposit
`services, management of securities portfolio, safe deposit box services, insurance
`brokerage services, insurance agencies, financial and investment consultancy and
`analysis services, money transmission services, cheque clearing services, payment
`of administration services, debit card services, cheque book services, recording,
`counting and billing services for financial transactions, real estate agencies,
`electronic funds transfer, issuing of travelers cheques; real estate consultation; real
`estate agency services; real estate management; real estate appraisal; real estate
`brokerage; renting of apartments and of flats
`
`Construction of buildings; repair and maintenance of buildings; repair,
`maintenance and installation of electrical appliances, furniture, heating and
`kitchen apparatus and of office machines and apparatus; repair of furs, clothing,
`clocks and watches, electrical appliances, film projectors, heating apparatus,
`furniture, shoes, upholstery and of office machines and apparatus; restoration of
`furniture; renovation of clothes; cabinet making; painting and wallpapering
`
`Travel arrangement; travel agency services, namely, making reservations and
`bookings for transportation; coach tour services; rental of coaches; escorting of
`travelers; delivery of goods and of furniture by road; temperature controlled
`garment storage; delivery of parcels; arranging for the delivery of goods overseas;
`transportation and delivery by road; warehousing of goods and parcels; junk, trash
`and debris removal services; transportation of persons and goods by air;
`transportation of persons and goods by land vehicles, including railway and by sea
`and inland waterways; information services relating to air travel, air transport,
`timetables, fares, schedules, connecting transport and tourist information;
`provision and arrangement of holidays and tours; travel agency services; agency
`services for arranging travel; services for the arranging of the transportation of
`travelers and for the warehousing of goods relating thereto; services for the
`booking of travel; agency services for the arranging of transportation of goods;
`packaging and storage of goods; consultancy and advisory services relating to the
`aforesaid
`
`Education and entertainment, namely, conducting classes, seminars, exhibitions
`and lectures in the field of the history, including history of The East India
`Company, food and drink, fashion, health and wellbeing; Organization of
`exhibitions for cultural or educational purposes; arranging exhibitions relating to
`history, including history of The East India Company, food and drink, fashion,
`health and wellbeing, all of the foregoing for educational or cultural purposes;
`publication of texts, books, magazines and other printed matter; book rental;
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`- 7 -
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 8 of 14
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`lending library services; writing of articles for periodicals other than for
`advertising or publicity; gaming services in the nature of casino gaming; sporting
`and cultural activities, namely organizing sporting and cultural community events;
`organisation of competitions covering entertainment, lifestyle, music, sports,
`news, current affairs, business, finance, trade, technology, science, nature,
`industry, transport, art, history, travel, culture, film, games and gaming and
`navigation; arranging for ticket reservations for shows and other entertainment
`events; providing a website featuring entertainment information; conducting
`informal on-line programs in the fields of history, including history of The East
`India Company, food and drink, fashion, health and wellbeing, and printable
`materials distributed therewith; night clubs
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`Services for providing food and drink; restaurant services; bar services; catering
`services; tea room services; providing temporary accommodation
`
`
`Medals made of precious metals and their alloys; precious metals and their alloys;
`Precious metals and their alloys and goods in precious metals or coated therewith,
`namely, jewelry and precious stones, tie pins, tiaras, cufflinks, shirt pins, shirt
`studs and ear studs; jewellery, precious stones; watches; clocks; horological and
`chronometric instruments
`
`
`EAST INDIA
`COMPANY
`NEW GUINEA
`
`
`85/422,390
`
`
`Defendant’s registration applications are attached hereto as Exhibit B.
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`19.
`
`The USPTO issued Office Actions refusing these registrations under 15 U.S.C.
`
`§ 1052(d), due to likelihood of confusion with the EAST INDIA Marks, specifically the EAST
`
`INDIA® mark (Reg. No. 4,080,628). The Office Actions are attached hereto as Exhibit C.
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`20.
`
`Defendant has been marketing and selling goods in the United States in
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`competition with K. Hansotia under the Infringing Marks.
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`21. Upon information and belief, Defendant is knowingly and intentionally using the
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`Infringing Marks in an effort to confuse the public into believing that K. Hansotia is
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`manufacturing the products being marketed and sold by Defendant or are affiliated with K.
`
`Hansotia’s products.
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`22.
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`Defendant’s use of the Infringing Marks in connection with its products that are
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`similar and/or identical to those manufactured and distributed by K. Hansotia and directed to the
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`same types of consumers, inevitably will cause confusion among the public such that the public
`
`- 8 -
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`

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`Case 0:14-cv-61379-JIC Document 1 Entered on FLSD Docket 06/13/2014 Page 9 of 14
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`will believe that Defendant’s products are affiliated with, sponsored and/or approved by K.
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`Hansotia.
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`23. Defendant began using the Infringing Marks, without K. Hansotia’s permission,
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`with full knowledge of K. Hansotia’s ownership of the EAST INDIA Marks, and with the
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`intention of trading upon the goodwill established by K. Hansotia therein.
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`24. Defendant continues to use the Infringing Marks without K. Hansotia’s
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`permission, and with full knowledge of K. Hansotia’s ownership of the EAST INDIA Marks.
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`25.
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`The Infringing Marks and the EAST INDIA Marks convey substantially the
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`same commercial impression.
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`26. Defendant’s use of the Infringing Marks to solicit customers is likely to cause
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`confusion, mistake or deception as to the source or origin of Defendant’s products, in that the
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`public is likely to believe that Defendant’s products are provided by, sponsored by, approved
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`by, licensed by, affiliated with, or in some way legitimately connected with K. Hansotia, or
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`indeed are K. Hansotia’s products, all to K. Hansotia’s irreparable harm, and this use infringes
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`upon the intellectual property rights of K. Hansotia.
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`27. Upon information and belief, Defendant adopted the Infringing Marks in a
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`deliberate attempt to confuse consumers and trade on the name, goodwill and reputation of K.
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`Hansotia.
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`28.
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`Accordingly, Defendant’s use of the Infringing Marks constitutes a clear violation
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`of K. Hansotia’s federal trademark rights under the Lanham Act and common law rights in the
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`EAST INDIA Marks.
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`29. Defendant’s infringing and violative conduct was undertaken intentionally,
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`willfully and with wanton disregard of K. Hansotia’s rights.
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`30.
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`By using confusingly similar marks, Defendant is subjecting the reputation and
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`goodwill of K. Hansotia to irreparable injury and harm.
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`COUNT I
`Infringement of a Federally Registered Trademark
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`K. Hansotia realleges all of the allegations set forth hereinabove.
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`This is a suit for trademark infringement and arises under the trademark laws of
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`31.
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`32.
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`the United States, namely, Title 15 of the United States Code and more particularly, 15 U.S.C.
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`§§1114-18, inclusive.
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`33. Defendant is using the Infringing Marks in connection with the sale, offering for
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`sale, distribution or advertising of products in a manner likely to cause confusion or mistake,
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`or to cause mistake or to deceive, customers as to the affiliation, connection, or association of
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`Defendant with K. Hansotia, or as to the origin, sponsorship or approval of Defendant’s
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`products.
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`34. Defendant’s conduct has created and will create confusion among the members
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`of the relevant consuming public and will cause irreparable harm and monetary damages to K.
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`Hansotia. K. Hansotia has been damaged by Defendant’s infringement of its registered mark.
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`Unless this Court restrains Defendant from further infringing conduct, K. Hansotia will
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`continue to suffer irreparable harm, for which it has no adequate remedy at law.
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`35.
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`Defendant’s unauthorized use, advertising, marketing, and sale of products using
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`the Infringing Marks, as alleged herein, is likely to deceive, mislead, and confuse the relevant
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`public. Defendant’s actions constitute trademark infringement in violation of Section 32(a) of the
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`Lanham Act, 15 U.S.C. § 1114.
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`36. K. Hansotia has been damaged by Defendant’s use of the Infringing Marks due
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`to the confusing similarity with the EAST INDIA Marks.
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`
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`37.
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`38.
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`COUNT II
`False Designation of Origin Under § 43(a) of the Lanham Act
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`K. Hansotia realleges all of the allegations set forth hereinabove.
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`The EAST INDIA Marks have become uniquely associated with and now identify
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`K. Hansotia’s products throughout Florida and the nation.
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`39.
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`K. Hansotia owns federal and common law trademark rights in the EAST INDIA
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`Marks.
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`40.
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`By the acts complained herein, Defendant intentionally engaged in conduct that
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`constitutes false designation of origin in violation of 15 U.S.C. § 1125(a).
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`41.
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`Defendant, in connection with the sale of products bearing the Infringing Marks,
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`which are confusingly similar to the EAST INDIA Marks, has intentionally held itself out to be
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`affiliated with K. Hansotia.
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`42.
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`Defendant’s use in interstate commerce of the Infringing Marks is a willful
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`attempt to trade upon K. Hansotia’s reputation and business goodwill and constitutes a false
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`designation of origin and/or false or misleading description of fact. All of this is likely to lead
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`the public into believing that this is some affiliation, connection or association between
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`Defendant and K. Hansotia when, in fact, no such affiliation or connection exists.
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`43.
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`K. Hansotia has been damaged by Defendant’s improper actions, as set forth
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`above, and will continue to be damaged by such actions unless they are so restrained.
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`COUNT III
`Florida Deceptive and Unfair Trade Practices
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`K. Hansotia realleges all of the allegations set forth hereinabove.
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`44.
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`45.
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`This Count arises under § 501.204, Florida Statutes (Consumer Protection;
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`Deceptive and Unfair Trade Practices).
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`46.
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`Defendant, without the consent of K. Hansotia, and after the EAST INDIA Marks
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`acquired fame, has adopted the Marks without K. Hansotia’s permission.
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`47.
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`Defendant’s improper actions, as set forth above, are an intentional attempt to
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`trade upon K. Hansotia’s reputation and business good-will and have caused or are likely to
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`cause dilution of the distinctive quality of the Marks.
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`48.
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`Defendant has engaged in deceptive acts and/or fraudulent conduct contrary to
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`honest practices in industrial and commercial matters. Defendant’s conduct was immoral,
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`unethical, oppressive, or unscrupulous, and/or substantially injurious to K. Hansotia.
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`49.
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`Defendant’s use of the Marks is a violation of § 501.204, Florida Statutes,
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`because the use of the Infringing Marks is an unfair or deceptive trade practice in the conduct of
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`trade or commerce.
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`50.
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`By his actions, Defendant has damaged K. Hansotia and been unjustly enriched.
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`PRAYER AS TO ALL COUNTS
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`WHEREFORE, K. Hansotia demands:
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`a.
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`That Defendant, its agents, servants, officers, servants, employees and affiliates,
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`and all those persons in active concert or participation with them, be preliminarily and thereafter
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`permanently enjoined and restrained from:
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`(1)
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`Using the marks THE EAST INDIA COMPANY, EAST INDIA
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`COMPANY NEW GUINEA, or any other mark confusingly similar to the EAST INDIA
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`Marks alone or in combination with other words, as a service mark, trademark, trade
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`name, component or otherwise, to market, promote advertise or identify Defendant’s
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`products.;
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`(2)
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`(3)
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`Otherwise infringing the EAST INDIA Marks;
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`Holding itself out as the owner of, or a company authorized to use, as part
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`of its name, the EAST INDIA Marks, or a name confusingly similar thereto as a
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`trademark, service mark, or trade name;
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`(4)
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`Doing any act or thing calculated or likely to cause confusion or mistake
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`in the minds of members of the public or the trade, or prospective purchasers of
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`Defendant’s products/services, as to the source, nature, composition, or quality of
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`products and/or services created, developed, produced, distributed, marketed, advertised,
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`promoted, sold, or offered for sale by Defendant;
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`(5)
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`Doing any act or thing calculated or likely to deceive members of the
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`public or trade, or prospective purchasers, into believing that there is some affiliation,
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`sponsorship, or connection between Defendant and K. Hansot