Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA872238
`
`Filing date:
`
`01/19/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92063873
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`ESR Performance Corp.
`
`DAVID F TAMAROFF
`LIPSCOMB & PARTNERS PLLC
`25 SE 2ND AVENUE, 8TH FLOOR
`MIAMI, FL 33131
`UNITED STATES
`Email: dt@lipscombpartners.com
`
`Motion to Suspend for Civil Action
`
`David F. Tamaroff, Esq.
`
`dt@lipscombpartners.com, david@tamarofflaw.com, foster@tdfoster.com
`
`/s/ David Tamaroff
`
`01/19/2018
`
`Attachments
`
`Mot to Suspend.pdf(2114076 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petitioner,
`
`
`
`JVMAX, INC.,
`
`
`
`vs.
`
`ESR PERFORMANCE CORP.,
`
`
`
`
`
`Respondent.
`
`
`Cancellation No. 92063873
`
`
`
`
`Mark:
`
`Registration No. 4,954,143
`
`MOTION TO SUSPEND
`PENDING RESOLUTION OF RELATED FEDERAL COURT PROCEEDINGS
`
`
`
`1.
`
`Respondent, ESR Performance Corp., pursuant to 37 CFR § 2.117, that this
`
`cancellation proceeding be suspended immediately for all purposes pending the resolution of an
`
`action filed in the United States Distrcit Court for the Sourthern District of Florida, captioned
`
`ESR Performance Corp. v. JVMAX, Inc., 1:18-cv-20247. A copy of the Complaint, filed January
`
`19, 2018, is attached hereto.
`
`2.
`
`This federal district court action seeks a judgment against Petitioner, JVMAX,
`
`Inc., for trademark infringement, pursuant to 15 U.S.C. § 1114, and unfair competition, pursuant
`
`to 15 U.S.C. § 1125(a), in connection with the same trademark registration, reg. no. 4,954,143
`
`(the “’143 Trademark”) at issue in this cancellation proceeding.
`
`3.
`
`Accordingly, the ‘143 Trademark’s validity will be litigated and determined in the
`
`district court litigation.
`
`4.
`
`Under TBMP § 510.02(a), suspension is appropriate where a civil action is
`
`pending that involves issues in common with those in a proceeding before the Board. See, e.g.,
`
`General Motors Corp. v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933 (TTAB 1992) (granting
`
`

`

`motion to suspend cancellation proceeding where determination in co-pending distrct court
`
`action would be dispositive of the issues before the Board). Indeed, “the Board will suspend
`
`proceedings in the case before it if the final determination of the other proceeding may have
`
`bearing on the issues before the Board.” TBMP § 510.02(a).
`
`5.
`
`The ’143 Trademark’s validity will necessarily be litigated and determined in the
`
`District Court Action. Accordingly, a determination in the District Court Action will be
`
`dispositive of the issues before the Board.
`
`
`
`WHEREFORE, Respondent respectfully requests that the instant proceeding be
`
`suspended immediately pending disposition of the District Court Action.
`
`Dated: January 19, 2018.
`
`
`
`
`
`Respectfully submitted,
`
`
`/s/ David Tamaroff
`David F. Tamaroff, Esq.
`Fla. Bar No. 92084
`Email: dt@lipscombpartners.com
`LIPSCOMB & PARTNERS, PLLC
`25 S.E. 2nd Avenue, 8th Floor
`Miami, Florida 33131
`Tel: (786) 431-2228
`Fax: (786) 431-2229
`Counsel for Respondent
`
`and
`
`Thomas D. Foster, Esq.
`California Bar No. 213414
`Email: foster@tdfoster.com
`TDFOSTER – INTELLECTUAL PROPERTY LAW
`11622 El Camino Real, Suite 100
`San Diego, California 92130
`Tel: (858) 922-2170
`Fax: (888) 757-3817
`Counsel for Respondent
`
`
`
`
`
`
`
`

`

`CERTIFICATE OF ELECTRONIC FILING
`
`I HEREBY CERTIFY that, on January 19, 2018, a true and correct copy of the foregoing
`document was electronically filed with Trademark Trial and Appeal Board, U.S. Patent and
`Trademark Office, via the ESTTA system.
`
`Dated: January 19, 2018.
`
`
`
`
`By:
`
`
`
` /s/ David Tamaroff
`David F. Tamaroff, Esq.
`
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that, on January 19, 2018, a true and correct copy of the foregoing
`document was served on all parties or their counsel of record indicated on the Service List below
`via email or some other authorize manner.
`
`
`Service List
`
`
`William R. Brees, Esq.
`Email: w.brees@maxeyiplaw.com
`Brittany J. Maxey, Esq.
`Email: b.maxey@maxeyiplaw.com
`MAXEY LAW OFFICES, PLLC
`100 Second Avenue South, Suite 401 North
`St. Petersburg, Florida 33701
`Tel: (727) 230-4949
`Fax: (727) 230-4827
`Email: lpg@maxeyiplaw.com
`Counsel for Petitioner
`
`Dated: January 19, 2018.
`
`
`
`
`By:
`
`
`
` /s/ David Tamaroff
`David F. Tamaroff, Esq.
`
`
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 1 of 13
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`Case No. 1:18-cv-20247
`
`
`
`
`Plaintiff,
`
`
`ESR PERFORMANCE CORP.,
`
`
`
`vs.
`
`JVMAX, INC.,
`
`
`
`
`
`Defendant.
`
`COMPLAINT AND DEMAND FOR JURY TRIAL
`
`
`
`
`Plaintiff, ESR Performance Corp. (“Plaintiff” or “ESR”) a/k/a VMS Racing, sues
`
`Defendant, JVMAX, Inc. (“Defendant” or “JVMAX”), and alleges as follows:
`
`INTRODUCTION
`
`1.
`
`This is an action for trademark infringement (“Count I”), pursuant to Section 32
`
`of the Lanham Act, 15 U.S.C. § 1114, and unfair competition (“Count II”), pursuant to Section
`
`43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`2.
`
`ESR owns the trademark that is the subject of United States trademark registration
`
`no. 4,954,143 (the “’143 Registration,” attached hereto as Exhibit A), which issued May 10,
`
`2016 on the principal register of the United States Patent and Trademark Office (“USPTO”).
`
`3.
`
`The trademark that is the subject of the ’143 Registration (the “ESR Trademark”)
`
`“consists of a three-dimensional configuration of an auto-mobile antenna that is shaped like a
`
`bullet cartridge.” See Exhibit A, the ’143 Registration.
`
`
`
`
`
`1
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 2 of 13
`
`THE PARTIES
`
`4.
`
`ESR is a corporation organized and existing under the laws of the State of Florida,
`
`with its principal place of business located in Miami-Dade County, Florida.
`
`5.
`
`JVMAX is a corporation organized and existing under the laws of the State of
`
`Florida with its principal place of business located in Seminole County, Florida.
`
`JURISDICTION
`
`6.
`
`Pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338, this Court has
`
`subject matter jurisdiction over this action because it involves substantial claims arising under
`
`the Lanham Act.
`
`7.
`
`This Court has personal jurisdiction over JVMAX because it is a corporation
`
`organized and existing under the laws of the State of Florida and has its principal place of
`
`business in the State of Florida. Moreover, JVMAX has conducted and does conduct business
`
`within the State of Florida. JVMAX, directly and/or through authorized agents, offers for sale,
`
`sells, and advertises its products in the United States, the State of Florida, and the Southern
`
`District of Florida. JVMAX, directly and/or through its authorized agents, has committed the
`
`torts of trademark infringement and unfair competition within the State of Florida and, more
`
`particularly, within the Southern District of Florida. JVMAX is engaged in substantial and not
`
`isolated activity within the State of Florida.
`
`8.
`
`Pursuant to 28 U.S.C. § 1391,Venue is proper in the Southern District of Florida
`
`because: (a) a substantial part of the events or omissions giving rise to the claims occurred in this
`
`district, and/or (ii) Defendant is subject to the Court’s personal jurisdiction.
`
`
`
`
`
`2
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 3 of 13
`
`GENERAL ALLEGATIONS
`
`9.
`
`ESR is engaged in the business of, amongst other things, selling original and third
`
`party aftermarket automotive equipment.
`
`10.
`
`Plaintiff commenced using the ESR Trademark in interstate commerce at least as
`
`early as November 3, 2010.
`
`11.
`
`On or about April 23, 2015, Plaintiff applied to register the ESR Trademark with
`
`the USPTO on the Principal Register, U.S. Application Serial No. 86-608,054.
`
`12.
`
`On or about May 10, 2016, the USPTO issued the ’143 Registration for the ESR
`
`Trademark on the Principal Register. See Exhibit A, the ’142 Registration.
`
`13.
`
`Plaintiff is the owner of all rights in and to the ESR Trademark.
`
`14.
`
`The ESR Trademark is used in connection with ESR’s manufacture and
`
`distribution of high quality goods, specifically automobile antennas.
`
`15.
`
`Plaintiff has used the ESR Trademark in interstate commerce to identify and
`
`distinguish ESR’s high quality goods for an extended period of time.
`
`16.
`
`The ESR Trademark is a symbol of ESR’s quality, reputation, and goodwill, and
`
`has never been abandoned.
`
`17.
`
`ESR has extensively used, advertised, and promoted the ESR Trademark in the
`
`United States in association with automobile antennas.
`
`18.
`
`As a result of ESR’s efforts, members of the consuming public readily identify
`
`merchandise bearing or sold under the ESR Trademark, as being high quality, originating from,
`
`sponsored, and/or approved by ESR.
`
`19.
`
`Accordingly, the ESR Trademark has acquired secondary meaning as an identifier
`
`of ESR in connection with automobile antennas.
`
`3
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 4 of 13
`
`20.
`
`Due to the target market, extensive advertising of, and length and breadth of
`
`distribution of Plaintiff’s products containing the ESR Trademark, the ESR Trademark has
`
`gained commercial strength in the minds of the relevant consuming public.
`
`21.
`
`ESR carefully monitors and polices the use of the ESR Trademark.
`
`22.
`
`ESR has never assigned or licensed the ESR Trademark to JVMAX or otherwise
`
`authorized JVMAX’s use of the ESR Trademark, or a reproduction, counterfeit, copy, or
`
`colorable imitation thereof.
`
`23.
`
`ESR has never consented to or authorized JVMAX’s sale, offering for sale,
`
`distribution, promotion, and/or advertising of goods or services bearing the ESR Trademark, or a
`
`reproduction, counterfeit, copy, or colorable imitation thereof.
`
`24.
`
`On or about June 24, 2015, JVMAX attempted to purchase a product comprising
`
`of the ESR Trademark from Plaintiff so that it could be examined and copied.
`
`25.
`
`Shortly
`
`thereafter, JVMAX began
`
`importing, selling, offering for sale,
`
`distributing, promoting and/or advertising products comprising three-dimensional auto-mobile
`
`antennas that are shaped like a bullet cartridge (the “Infringing Products”).
`
`26.
`
`Indeed, the JVMAX’s Infringing Products are shaped just like the ESR
`
`Trademark, or, at minimum, a reproduction, counterfeit, copy, or colorable imitation thereof.
`
`27.
`
`JVMAX has and continues to sell offer for sale, distribute, promote and/or
`
`advertise the Infringing Products through a numerous outlets, including, but not necessarily
`
`limited to: (a) its online store (http://antennax.com); (b) third party internet marketplace website
`
`operators and/or administrators, including, but not limited to, Amazon and Ebay; and (c) third
`
`party retailers.
`
`4
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 5 of 13
`
`28.
`
`Both parties target their advertising and marketing to the same or similar
`
`consumers.
`
`29.
`
`Both parties distribute their products nationally through the same or similar
`
`channels of distribution.
`
`30.
`
`JVMAX’s intentional copying of the ESR Trademark makes it clear that JVMAX
`
`intended to trade off of ESR’s good will and intended to create confusion among consumers
`
`about the source and origin of the parties’ goods.
`
`31.
`
`JVMAX’s use of the Infringing Products and ESR Trademark, or a reproduction,
`
`counterfeit, copy, or colorable imitation thereof, is likely to cause some consumers to believe
`
`JVMAX’s Infringing Products come from ESR.
`
`32.
`
`JVMAX’s use of the Infringing Products and ESR Trademark, or a reproduction,
`
`counterfeit, copy, or colorable imitation thereof, is likely to cause some consumers to believe, at
`
`least some of, ESR’s products come from JVMAX.
`
`33.
`
`JVMAX’s use of the Infringing Products and ESR Trademark, or a reproduction,
`
`counterfeit, copy, or colorable imitation thereof, is likely to cause initial interest confusion.
`
`34.
`
`JVMAX’s use of the Infringing Products and ESR Trademark, or a reproduction,
`
`counterfeit, copy, or colorable imitation thereof, is likely to cause post sale confusion.
`
`35.
`
`ESR has suffered monetary damages as a result of JVMAX’s use of the Infringing
`
`Products and ESR Trademark.
`
`36.
`
`JVMAX has generated significant profit from its sales of Infringing Products.
`
`MISCELLANEOUS
`
`37.
`
`All conditions precedent to brining this action have occurred or been waived.
`
`5
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 6 of 13
`
`38.
`
`ESR has retained counsel for the purpose of this litigation and is obligated to pay
`
`said counsel a reasonable fee for its services.
`
`COUNT I
`TRADEMARK INFRINGEMENT
`PURSUANT TO § 32 OF THE LANHAM ACT (15 U.S.C. § 1114)
`
`39.
`
`ESR re-alleges and incorporates by reference the allegations of paragraphs 1-38
`
`inclusive, as though fully set forth herein.
`
`40.
`
`Plaintiff owns all rights in and to the ESR Trademark, which is valid and
`
`registered on the Principal Register of the USPTO. See Exhibit A, the ‘143 Registration.
`
`41.
`
`JVMAX has and is selling, offering for sale, distributing, promoting and/or
`
`advertising Infringing Products (goods) bearing the ESR Trademark, or a reproduction,
`
`counterfeit, copy, or colorable imitation thereof.
`
`42.
`
`JVMAX’s sale, offering for sale, distribution, promotion, and/or advertising of
`
`Infringing Products bearing the ESR Trademark, or a reproduction, counterfeit, copy, or
`
`colorable imitation thereof, is likely to cause confusion, mistake, and/or deceive members of the
`
`trade and/or the general consuming public as to the origin and/or quality of JVMAX’s Infringing
`
`Products.
`
`43.
`
`JVMAX has and is using the ESR Trademark, or a reproduction, counterfeit,
`
`copy, or colorable imitation thereof, in application with labels, signs, prints, packages, wrappers,
`
`receptacles, and/or advertisements that are intended to be used in connection with the sale,
`
`offering for sale, distribution, promotion, and/or advertising of the Infringing Products.
`
`44.
`
`JVMAX’s use of the ESR Trademark, or a reproduction, counterfeit, copy, or
`
`colorable imitation thereof, in application with labels, signs, prints, packages, wrappers,
`
`receptacles, and/or advertisements that are intended to be used in connection with the sale,
`
`6
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 7 of 13
`
`offering for sale, distribution, promotion, and/or advertising of the Infringing Products is likely
`
`to cause confusion, mistake, and/or deceive members of the trade and/or the general consuming
`
`public as to the origin and/or quality of JVMAX’s Infringing Products.
`
`45.
`
`ESR did not authorize JVMAX’s wrongful actions as described above.
`
`46.
`
`JVMAX’s wrongful actions as described above are an infringement of ESR’s
`
`trademark rights in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`47.
`
`After a reasonable opportunity for further investigation or discovery evidence will
`
`likely show that JVMAMX’s infringing activities were and are committed with knowledge that
`
`they have caused and are causing confusion, mistake, and/or deception among members of the
`
`trade and/or the general consuming public as to the origin and/or quality of JVMAX’s Infringing
`
`Products.
`
`48.
`
`After a reasonable opportunity for further investigation or discovery evidence will
`
`likely show that JVMAX’s infringing activities and use of the ESR Trademark, or a
`
`reproduction, counterfeit, copy, or colorable imitation thereof, was and is done with knowledge
`
`of ESR’s prior rights thereto, and with the intention to trade upon the goodwill and reputation
`
`appurtenant to the ESR Trademark.
`
`49.
`
`As a direct and proximate result of JVMAX’s wrongful conduct, ESR has
`
`suffered substantial monetary damages and additional loss, including, but not limited to, damage
`
`to its business reputation and goodwill, for which ESR has no adequate remedy at law.
`
`50.
`
`ESR is entitled to recover damages it has suffered which include its losses and all
`
`profits JVMAX has made in connection with its wrongful conduct, pursuant to 15 U.S.C. § 1117.
`
`51. WHEREFORE, ESR demands judgment on Count I of this Complaint and an
`
`award of equitable relief and monetary relief against JVMAX as follows:
`
`7
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 8 of 13
`
`A.
`
`Entry of temporary, preliminary, and permanent injunctions pursuant to 15 U.S.C.
`
`§ 1116 and Federal Rule of Civil Procedure 65 enjoining JVMAX, its agents, representatives,
`
`servants, employees, and all those acting in concert or participation therewith, from: (i)
`
`manufacturing or causing to be manufactured, importing, advertising or promoting, distributing,
`
`selling or offering to sell its products bearing the ESR Trademark, or a reproduction, counterfeit,
`
`copy, or colorable imitation thereof; (ii) infringing Plaintiff’s exclusive rights to the ESR
`
`Trademark; (iii) using the ESR Trademark, or a reproduction, counterfeit, copy, or colorable
`
`imitation thereof, in connection with the sale of its goods; (iv) affixing, applying, annexing or
`
`using in connection with the sale of any goods, a false description or representation, including
`
`words or other symbols tending to falsely describe or represent JVMAX’s goods as being those
`
`of ESR or in any way endorsed by ESR and from offering such goods in commerce; and (vi)
`
`otherwise unfairly competing with ESR;
`
`B.
`
`Entry of an Order requiring all internet marketplace website operators and/or
`
`administrators, including, but not limited to, Amazon and Ebay, permanently remove any and all
`
`listings associated images of goods bearing JVMAX’s counterfeits and/or infringements of the
`
`ESR Trademark from their e-commerce stores;
`
`C.
`
`Entry of an Order requiring JVMAX to account to and pay ESR for all profits and
`
`damages resulting from JVMAX’s counterfeiting and/or infringement of the ESR Trademark
`
`and/or its unfairly competitive activities and that the award to ESR be trebled, as provided for
`
`under 15 U.S.C. § 1117(a)-(b); or, at ESR’s election, that ESR be awarded statutory damages
`
`from JVMAX in the amount of two million dollars ($2,000,000.00) per counterfeit trademark
`
`used or type of goods sold, offered for sale, and/or distributed, as provided for under 15 U.S.C. §
`
`1117(c)(2);
`
`8
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 9 of 13
`
`D.
`
`Entry of an Order deeming this action to be an exceptional case and awarding
`
`ESR’s costs and reasonable attorneys’ fees and investigative frees associated with brining this
`
`action, pursuant to 15 U.S.C. § 1117(a);
`
`E.
`
`Entry of an Order that, upon ESR’s request, any financial institutions, payment
`
`processors, banks, escrow services, money transmitters, or marketplace platforms, including, but
`
`not limited to, Amazon, Ebay, and Paypal, identify and restrain all funds, up to and including the
`
`total amount of judgment, in all financial accounts and/or sub-accounts used in connection with
`
`JVMAX, its seller IDs, or other aliases JVMAX presently uses or may use in the future, as well
`
`as any other related accounts of the same customer(s) and any other accounts which transfer
`
`funds into the same financial institution account(s), to be surrendered to ESR in partial
`
`satisfaction of the monetary judgment entered herein;
`
`F.
`
`Entry of an award of pre-judgment interest on the judgment amount, pursuant to
`
`26 U.S.C. § 6621(a)(2); and
`
`G.
`
`Entry of an Order for any further relief as the Court may deem just and proper.
`
`COUNT II
`UNFAIR COMPETITION
`PURSUANT TO THE LANHAM ACT (15 U.S.C. § 1125)
`
`52.
`
`ESR re-alleges and incorporates by reference the allegations of paragraphs 1-38
`
`inclusive, as though fully set forth herein.
`
`53.
`
`Plaintiff owns all rights in and to the ESR Trademark, which is valid and
`
`registered on the Principal Register of the USPTO. See Exhibit A, the ‘143 Registration.
`
`54.
`
`Defendant’s sale, offering for sale, distribution, promotion, and/or advertising of
`
`Infringing Products bearing the ESR Trademark, or a reproduction, counterfeit, copy, or
`
`colorable imitation thereof, is likely to confuse, mislead, or deceive consumers, the public, and
`
`9
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 10 of 13
`
`the trade as to the origin and/or source of Infringing Products, and/or is likely to cause such
`
`parties to believe in error that the Infringing Products have been originated, sourced, authorized,
`
`sponsored, approved, endorsed, or licensed from ESR, or that JVMAX is in some way affiliated
`
`with ESR.
`
`55.
`
`ESR did not authorize JVMAX’s wrongful actions as described above.
`
`56.
`
`JVMAX’s wrongful actions as described above constitute unfair competition,
`
`false designation of origin, and trademark infringement, in violation of Section 43(a) of the
`
`Lanham Act, 15 U.S.C. § 1125(a).
`
`57.
`
`After a reasonable opportunity for further investigation or discovery, evidence
`
`will likely show that JVMAX’s wrongful actions as described above were and are committed
`
`with knowledge that they would likely cause confusion, mistake, and/or deception among
`
`members of the trade and/or the general consuming public as to the origin and/or quality of the
`
`Infringing Products, and/or likely cause such parties to believe in error that the Infringing
`
`Products have been originated, sourced, authorized, sponsored, approved, endorsed, or licensed
`
`from ESR, or that JVMAX is in some way affiliated with ESR.
`
`58.
`
`After a reasonable opportunity for further investigation or discovery, evidence
`
`will likely show that JVMAX’s wrongful actions as described above, were and are committed
`
`with knowledge of ESR’s prior rights to the ESR Trademark, and with the intention to trade
`
`upon the goodwill and reputation appurtenant to the ESR Trademark.
`
`59.
`
`As a direct and proximate result of JVMAX’s wrongful conduct, ESR has
`
`suffered substantial monetary damages and additional loss, including, but not limited to, damage
`
`to its business reputation and goodwill, for which ESR has no adequate remedy at law.
`
`10
`
`

`

`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 11 of 13
`
`60.
`
`ESR is entitled to recover damages it has suffered which include its losses and all
`
`profits JVMAX has made in connection with its wrongful conduct, pursuant to 15 U.S.C. § 1117.
`
`61. WHEREFORE, ESR demands judgment on Count II of this Complaint and an
`
`award of equitable relief and monetary relief against JVMAX as follows:
`
`A.
`
`Entry of temporary, preliminary, and permanent injunctions pursuant to 15 U.S.C.
`
`§ 1116 and Federal Rule of Civil Procedure 65 enjoining JVMAX, its agents, representatives,
`
`servants, employees, and all those acting in concert or participation therewith, from: (i)
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`manufacturing or causing to be manufactured, importing, advertising or promoting, distributing,
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`selling or offering to sell its products bearing the ESR Trademark, or a reproduction, counterfeit,
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`copy, or colorable imitation thereof; (ii) infringing Plaintiff’s exclusive rights to the ESR
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`Trademark; (iii) using the ESR Trademark, or a reproduction, counterfeit, copy, or colorable
`
`imitation thereof, in connection with the sale of its goods; (iv) affixing, applying, annexing or
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`using in connection with the sale of any goods, a false description or representation, including
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`words or other symbols tending to falsely describe or represent JVMAX’s goods as being those
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`of ESR or in any way endorsed by ESR and from offering such goods in commerce; and (vi)
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`otherwise unfairly competing with ESR;
`
`B.
`
`Entry of an Order requiring all internet marketplace website operators and/or
`
`administrators, including, but not limited to, Amazon and Ebay, permanently remove any and all
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`listings associated images of goods bearing JVMAX’s counterfeits and/or infringements of the
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`ESR Trademark from their e-commerce stores;
`
`C.
`
`Entry of an Order requiring JVMAX to account to and pay ESR for all profits and
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`damages resulting from JVMAX’s false designation of origin, infringement of the ESR
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`11
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`Case 1:18-cv-20247-XXXX Document 1 Entered on FLSD Docket 01/19/2018 Page 12 of 13
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`Trademark and/or its unfairly competitive activities and that the award to ESR be trebled, as
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`provided for under 15 U.S.C. § 1117(a);
`
`D.
`
`Entry of an Order deeming this action to be an exceptional case and awarding
`
`ESR’s costs and reasonable attorneys’ fees and investigative frees associated with brining this
`
`action, pursuant to 15 U.S.C. § 1117(a);
`
`E.
`
`Entry of an Order that, upon ESR’s request, any financial institutions, payment
`
`processors, banks, escrow services, money transmitters, or marketplace platforms, including, but
`
`not limited to, Amazon, Ebay, and Paypal, identify and restrain all funds, up to and including the
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`total amount of judgment, in all financial accounts and/or sub-accounts used in connection with
`
`JVMAX, its seller IDs, or other aliases JVMAX presently uses or may use in the future, as well
`
`as any other related accounts of the same customer(s) and any other accounts which transfer
`
`funds into the same financial institution account(s), to be surrendered to ESR in partial
`
`satisfaction of the monetary judgment entered herein;
`
`F.
`
`Entry of an award of pre-judgment interest on the judgment amount, pursuant to
`
`26 U.S.C. § 6621(a)(2); and
`
`G.
`
`Entry of an Order for any further relief as the Court may deem just and proper.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff hereby demands a trial by jury on all issues so triable.
`
`
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`Dated: January 19, 2018.
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`Respectfully submitted,
`
`
`
`/s/ David F. Tamaroff
`By:
`David F. Tamaroff, Esq.
`Fla. Bar No. 92084
`Email: dt@lipscombpartners.com
`LIPSCOMB & PARTNERS, PLLC
`25 SE 2nd Avenue, 8th Floor
`Miami, Florida 33131-1506
`Telephone: (783) 431-2228
`Facsimile: (786) 431-2229
`Counsel for Plaintiff, ESR Performance
`Corp.
`
`
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`Case 1:18-cv-20247-XXXX Document 1-2 Entered on FLSD Docket 01/19/2018 Page 1 of 2
`CIVIL COVER SHEET
`JS 44 (Rev. 0(cid:27)/16)
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet.
`(SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`I. (a) PLAINTIFFS
`ESR PERFORMANCE CORP.
`
`DEFENDANTS
`JVMAX, INC.
`
`(b) County of Residence of First Listed Plaintiff
`
`Miami-Dade Cnty., Fla.
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Lipscomb & Partners, PLLC - David F. Tamaroff, Esq.
`25 SE 2nd Ave, 8th Floor, Miami, FL 33131
`Tel: (786) 431-2228 / Fax: (786) 431-2229
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`(cid:117) 1 U.S. Government
`(cid:117) 3 Federal Question
`Plaintiff
`(U.S. Government Not a Party)
`
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`NOTE:
`
` Attorneys (If Known)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`and One Box for Defendant)
`(For Diversity Cases Only)
`PTF DEF
`PTF
` DEF
`(cid:117) 1
`(cid:117) 1
`(cid:117) 4
`(cid:117) 4
`
`Citizen of This State
`
`Incorporated or Principal Place
` of Business In This State
`
`(cid:117) 2 U.S. Government
`Defendant
`
`(cid:117) 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`(cid:117) 2
`
`(cid:117) 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`Citizen or Subject of a
` Foreign Country
`
`(cid:117) 3
`
`(cid:117) 3
`
`Foreign Nation
`
`(cid:117) 5
`
`(cid:117) 5
`
`(cid:117) 6
`
`(cid:117) 6
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)(cid:3)
`CONTRACT
`TORTS
` PERSONAL INJURY
`PERSONAL INJURY
`(cid:117) 110 Insurance
`(cid:117) 120 Marine
`(cid:117) 310 Airplane
`(cid:117) 365 Personal Injury -
`(cid:117) 130 Miller Act
`(cid:117) 315 Airplane Product
` Product Liability
`(cid:117) 140 Negotiable Instrument
` Liability
`(cid:117) 367 Health Care/
`(cid:117) 150 Recovery of Overpayment (cid:117) 320 Assault, Libel &
` Pharmaceutical
` & Enforcement of Judgment
` Slander
` Personal Injury
`(cid:117) 151 Medicare Act
`(cid:117) 330 Federal Employers’
` Product Liability
`(cid:117) 152 Recovery of Defaulted
` Liability
`(cid:117) 368 Asbestos Personal
` Student Loans
`(cid:117) 340 Marine
` Injury Product
` (Excludes Veterans)
`(cid:117) 345 Marine Product
` Liability
`LABOR
` PERSONAL PROPERTY (cid:117) 710 Fair Labor Standards
`(cid:117) 153 Recovery of Overpayment
` Liability
` of Veteran’s Benefits
`(cid:117) 350 Motor Vehicle
`(cid:117) 370 Other Fraud
` Act
`(cid:117) 720 Labor/Management
`(cid:117) 160 Stockholders’ Suits
`(cid:117) 355 Motor Vehicle
`(cid:117) 371 Truth in Lending
`(cid:117) 190 Other Contract
` Product Liability
`(cid:117) 380 Other Personal
` Relations
`(cid:117) 195 Contract Product Liability (cid:117) 360 Other Personal
`Property Damage
`(cid:117) 740 Railway Labor Act
`(cid:117) 196 Franchise
` Injury
`(cid:117) 385 Property Damage
`(cid:117) 751 Family and Medical
`(cid:117) 362 Personal Injury -
` Product Liability
` Leave Act
` Medical Malpractice
`(cid:117) 790 Other Labor Litigation
` PRISONER PETITIONS (cid:117) 791 Employee Retirement
` CIVIL RIGHTS
`(cid:117) 440 Other Civil Rights
` Income Security Act
`Habeas Corpus:
`(cid:117) 441 Voting
`(cid:117) 463 Alien Detainee
`(cid:117) 442 Employment
`(cid:117) 510 Motions to Vacate
`(cid:117) 443 Housing/
` Sentence
` Accommodations
`(cid:117) 530 General
`(cid:117) 445 Amer. w/Disabilities - (cid:117) 535 Death Penalty
` Employment
`Other:
`(cid:117) 446 Amer. w/Disabilities - (cid:117) 540 Mandamus & Other
` Other
`(cid:117) 550 Civil Rights
`(cid:117) 448 Education
`(cid:117) 555 Prison Condition
`(cid:117) 560 Civil Detainee -
` Conditions of
` Confinement
`
`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:38)(cid:79)(cid:76)(cid:70)(cid:78)(cid:3)(cid:75)(cid:72)(cid:85)(cid:72)(cid:3)(cid:73)(cid:82)(cid:85)(cid:29)(cid:3)(cid:49)(cid:68)(cid:87)(cid:88)(cid:85)(cid:72)(cid:3)(cid:82)(cid:73)(cid:3)(cid:54)(cid:88)(cid:76)(cid:87)(cid:3)(cid:38)(cid:82)(cid:71)(cid:72)(cid:3)(cid:39)(cid:72)(cid:86)(cid:70)(cid:85)(cid:76)(cid:83)(cid:87)(cid:76)(cid:82)(cid:81)(cid:86)(cid:17)
`FORFEITURE/PENALTY
`BANKRUPTCY
`OTHER STATUTES
`(cid:117) 625 Drug Related Seizure
`(cid:117) 422 Appeal 28 USC 158
`(cid:117) 375 False Claims Act
` of Property 21 USC 881 (cid:117) 423 Withdrawal
`(cid:117) 376 Qui Tam (31 USC
`(cid:117) 690 Other
` 28 USC 157
` 3729(a))
`(cid:117) 400 State Reapportionment
`(cid:117) 410 Antitrust
`(cid:117) 430 Banks and Banking
`(cid:117) 450 Commerce
`(cid:117) 460 Deportation
`(cid:117) 470 Racketeer Influenced and
` Corrupt Organizations
`(cid:117) 480 Consumer Credit
`(cid:117) 490 Cable/Sat TV
`(cid:117) 850 Securities/Commodities/
` Exchange
`(cid:117) 890 Other Statutory Actions
`(cid:117) 891 Agricultural Acts
`(cid:117) 893 Environmental Matters
`(cid:117) 895 Freedom of Information
` Act
`(cid:117) 896 Arbitration
`(cid:117) 899 Administrative Procedure
` Act/Review or Appeal of
` Agency Decision
`(cid:117) 950 Constitutionality of
` State Statutes
`
`PROPERTY RIGHTS
`(cid:117) 820 Copyrights
`(cid:117) 830 Patent
`(cid:117) 840 Trademark
`
`SOCIAL SECURITY
`(cid:117) 861 HIA (1395ff)
`(cid:117) 862 Black Lung (923)
`(cid:117) 863 DIWC/DIWW (405(g))
`(cid:117) 864 SSID Title XVI
`(cid:117) 865 RSI (405(g))
`
`FEDERAL TAX SUITS
`(cid:117) 870 Taxes (U.S. Plaintiff
` or Defendant)
`(cid:117) 871 IRS—Third Party
` 26 USC 7609
`
` REAL PROPERTY
`(cid:117) 210 Land Condemnation
`(cid:117) 220 Foreclosure
`(cid:117) 230 Rent Lease & Ejectment
`(cid:117) 240 Torts to Land
`(cid:117) 245 Tort Product Liability
`(cid:117