Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA922733
`
`Filing date:
`
`09/18/2018
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`92067906
`
`Defendant
`Enso LLC
`
`COLEMAN W WATSON
`WATSON LLP
`189 S ORANGE AVE STE 810
`ORLANDO, FL 32801
`UNITED STATES
`coleman@watsonllp.com, leia@watsonllp.com, ronika@watsonllp.com, court-
`ney@watsonllp.com, stephanie@watsonllp.com, docketing@watsonllp.com
`407-377-6634
`
`Other Motions/Papers
`
`Coleman W. Watson, Esq.
`
`coleman@watsonllp.com, docketing@watsonllp.com, leia@watsonllp.com,
`stephanie@watsonllp.com
`
`Signature
`
`Date
`
`/Coleman W. Watson/
`
`09/18/2018
`
`Attachments
`
`Filing.pdf(5575476 bytes )
`
`

`

`Leia V. Leitner, Esq.
`1eia@watsonllp.com
`Coleman W. Watson, Esq.
`coleman@watson11p.com
`WATSON LLP
`
`189 S. Orange Avenue, Suite 810
`Orlando, FL 32801
`Telephone: 407.377.6634
`Facsimile: 407.377.6688
`
`Attorneys for Enso LLC
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration Nos.: 440485, 4139466
`
`For the mark: ENSO
`
`Registered: August 2, 2010, September 2, 2009
`
`§
`
`§ §
`
`§ Cancellation No.: 92067906
`§
`§ NOTICE OF FILING COPY OF
`§
`PLEADINGS IN THE CIVIL ACTION
`
`§ §
`
`§ § § § § §
`
`ENSO RINGS, LLC,
`
`Petitioner,
`
`vs.
`
`ENSO LLC,
`
`Respondent.
`
`
`\OOO\IO\#0319
`407.377.6634NN[\J)—|r—ID—‘)—Ir—tDdy—dp—A>—A’—NF—‘O\D00\1O’\U!AU)N’-‘O
`
`
`
`
`
`Telephone:
`
`
`
`
`
`
`
`
`
`WATSONLLP189S.OrangeAvenue,Suite810Orlando,FL32801
`
`Notice is hereby given that Respondent, ENSO LLC, files a copy of pleadings in the ciVi
`
`action between the parties, in the case styled: Enso LLC v. Enso Rings, LLC, 8: 1 8-CV-00839-
`
`ISM-MAP. The pleadings are attached hereto as Composite Exhibit “A” and are listed as
`
`follows:
`
`1.
`
`Verified Complaint, Doc. 1.
`
`[\J U)
`
`24
`
`25
`
`26
`
`27
`
`28
`
`NOTICE OF FILING COPY OF PLEADINGS IN THE CIVIL ACTION - 1
`
`Proceeding No.: 92067906
`
`

`

`
`
`
`
`WATSONLLP189S.OrangeAvenue,Suite810
`
`DATED on September 18, 2018
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`15
`
`1 6
`
`17
`
`Orlando,FL32801
`
`
`
`Telephone:407.377.6634
`
`Respectfully submitted,
`
`WATSON LLP
`
`/s/ Leia Leitner
`Coleman W. Watson, Esq.
`Florida Bar. No. 0087288
`California Bar No. 266015
`Georgia Bar No. 317133
`New York Bar Reg. No. 4850004
`Email: c.oleman@watsonllpcom
`docketing@watsonllpcom
`Leia V. Leitner, Esq.
`Florida Bar No. 0105621
`Email: leia@watsonllp.com
`Ronika J. Carter, Esq.
`Florida Bar No. 0122358
`Email: ronika@watsonllp.com
`
`WATSON LLP
`189 S. Orange Avenue
`Suite 810
`Orlando, FL 32801
`Telephone: 407.377.6634
`Facsimile: 407.377.6688
`
`Attorneysfor Enso LLC
`
`18 W
`
`I HEREBY CERTIFY that on September 18, 2018, I filed the foregoing document
`electronically with the Trademark Trial and Appeal Board by using the Electronic System for
`Trademark Trials and Appeals, which will send an electronic notice of filing to counsel of recor
`in this proceeding, and I have further served a copy of the foregoing document via email and
`first—class mail, postage prepaid, to the following counsel of record:
`
`Perry S. Clegg
`Kunzler, PC
`50 W. Broadway, Suite 1000
`Salt Lake City, UT 84101
`pclegg@kunzerlaw.com
`Attorney for Enso Rings LLC
`
`/s/ Leia V. Leitner
`Leia V. Leitner, Esq.
`
`19
`
`20
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`NOTICE OF FILING COPY OF PLEADINGS IN THE CIVIL ACTION - 2
`
`Proceeding No.: 92067906
`
`

`

`ase 8:18-cv-00839-JSM-MAP Document 1 Filed 04/09/18 Page 1 of 13 PagelD
`
`Composite Exhibit A
`
`V
`
`“I,
`c-
`, L
`,
`‘._-
`'7 ‘1 --
`=1
`
`,
`
`'
`
`Coleman W. Watson. Esq.
`coleman@watsonllp.com
`Leia V. Leitner, Esq.
`leia@watsonllp.com
`WATSON LLP
`189 S. Orange Avenue, Suite 810
`Orlando, FL 32801
`Telephone: 407.377.6634
`Facsimile: 407.377.6688
`
`Attorneysfor Plainli'lf E1150 LLC
`
`IQ
`
`DJ
`
`\l0‘U-
`
`.
`
`
`
`‘lclcphnnc:4073776634
`
`
`
`UNITED STATES DISTRICT COURT
`
`MIDDLE DISTRICT OF FLORIDA
`
`TAMPA DIVISION
`
`ENSO LLC,
`
`Plaintiff,
`
`vs.
`
`Case No.: gitg~w-8gctft.—'3om
`
`ENSO RINGS LLC‘
`
`VERIFIED COMPLAINT
`
`Defendant.
`
`INJUNCTIVE RELIEF DEMANDED
`
`
`
`JURY TRIAL DEMANDED
`
`PlaintiffiENSO LLC, sues Defendant, ENSO RINGS LLC, and alleges as follows:
`
`NATURE OF THE ACTION
`
`'J”41' \_I
`
`1.
`
`This is an action for infringement ot‘Plaintift’s federally-registered trademark
`
`ENSO under Section 32(I) ofthe Lanham Act, l5 U.S.C. § l l 14(l), for unfair competition and
`
`false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1 125(a). and for
`
`substantial and related claims of trademark infringement under the common law of the State of
`
`Florida, all arising from Defendant’s unauthorized use of the ENSO mark in connection with the
`
`manufacture, distribution, marketing, advertising, promotion. offering for sale, and/or sale of
`
`Defendant’s goods bearing the ENSO mark.
`
`2.
`
`Plaintitl‘seeks both injunctive and monetary relief.
`
`VERIFIED COMPLAINT—l
`
`1.32301
`
`
`
`
`
`\\\ISIN‘.IIl'13‘)StOrangeAvenue.SuiteSH)
`
`
`
`
`

`

`ase 8:18—cv-00839-JSM-MAP Document 1 Filed 04/09/18 Page 2 of 13 PagelD 2
`
`OOQOvaAb-IN
`NNNl—DD—lb—lh—‘HI—‘i—‘HD—lh—I
`
`Orlando,FL32801
`
`
`
`Telephone:407.377.6634
`
`PARTIES
`
`3.
`
`Plaintiff, ENSO LLC (“Enso”), is a Nevada limited liability company with one
`
`member, who is suijuris and is an adult citizen of the State of Florida. Enso is in the business 0
`
`selling goods bearing the ENSO mark that consist of shoes, hats, gear, socks, bags, and apparel
`
`that promote active lifestyles.
`
`4.
`
`Defendant, ENSO RINGS LLC (“Enso Rings”), is a Utah limited liability
`
`company and the citizenship of its members is unknown. Enso Rings is in the business of
`
`selling goods bearing the ENSO mark that consist of silicone wedding rings that are targeted to
`
`consumers who are interested in active lifestyles.
`
`SUBJECT MATTER JURISDICTION ‘
`
`5.
`
`This court has subj ect matter jurisdiction over this action, pursuant to 15 U.S.C. §
`
`1121, 28 U.S.C. §§ 1331, 1338(a), because this action involves a violation of the Lanham Act.
`
`6.
`
`The court has supplemental jurisdiction over the state law claims in this action,
`
`pursuant to 28 U.S.C. § 113 67, because the state law claims are so related to the federal claims
`
`that they form part of the same case or controversy.
`
`PERSONAL JURISDICTION
`
`7.
`
`The court has in personam jurisdiction over Enso Rings because Enso Rings
`
`maintains continuous and systematic contacts with the State of Florida by selling goods in this
`
`state that bear the ENSO mark.
`
`VENUE
`
`8.
`
`Venue is proper in this district, pursuant to 28 U.S.C. § 1391(1)), because a
`
`substantial part of the events or omissions giving rise to this action occurred in Sarasota County,
`
`Florida, given that Enso Rings sales goods bearing the ENSO mark at, inter alia, Coffrin
`
`Jewelers, located in Sarasota, Florida.
`
`9.
`
`As an alternative basis, venue is proper in this district because Enso Rings is
`
`subject to in personam jurisdiction in this district.
`
`10.
`
`Venue is proper in the Tampa Division of this district based on the local rules of
`
`this court because the cause(s) of action accrued in Sarasota, Florida.
`
`VERIFIED COMPLAINT-2
`
`
`
`
`
`WATSONLLPl89S.OrangeAvenue,Suite810
`
`

`

`pun
`
`OOOOQG‘xllxafi-LAN
`
`
`
`Avmruc.SuiteSE41!
`WATSONLL?
`
`au
`
`53‘v
`V.
`‘3V:m
`
`ase 8:18—cv-00839-JSM-MAP Document 1 Filed 04/09/18 Page 3 of 13 PagelD
`
`FACTUAL ALLEGATIONS
`
`1i.
`
`Enso is a tbr»protit business. Enso owns and operates the website domain
`
`https://enso.onlinc/. Enso was founded on the principles ol‘promoting active lifestyles and
`
`spiritual well-being and its focus is to provide conaumers with premium performance apparel
`
`and accessories.
`
`l2.
`
`Enso is primarily engaged in the manufacture, distribution, sale, advertising, and
`
`promotion in interstate commerce ofproducts and goods relating to athletic, fitness, lifestyle,
`
`active, casual, wellness and sports markets.
`
`E1230 ’5 Trmlmmirks
`
`13.
`
`On August 2, 2010, Enso filed a trademark application to register its ENSO
`
`(word) mark (hereinafter the “El mark”) with the United States Patent 85 Trademark Office
`
`(“USPTO”) under the serial number 85098201. The El mark sought protection in international
`
`classes 018, 025, 028, 032, 035, and 041. Attached as Exhibit 1 is a true and correct copy ofthe
`
`registration certificate and maintenance records for the El maria, which the USPTO registered on
`
`the Principal Register under Registration No. 4400485.
`
`14.
`M
`
`ii).
`
`Enso is the solo owner ol’ the El mark.
`
`The El (word) mark appears on the Principal Register and on some of Enso’s
`
`products as follows:
`
`ENSO
`
`‘16;
`
`On September 2, 2009, Enso fiied a trademark application to register its ENSO
`
`(design) mark (hereinafter the “B2. mark”) with the USPTO tinder serial number 778i 8961. The
`
`E2 mark; sought protection in international classes 009, 018, 025, 028, 035 and 041.
`
`l 7.
`
`Enso is the sole owner of the E2 mark.
`
`18.
`
`On March 26, 2017, 131150 filed its Combined Declaration oi” Use and
`
`lnconteetability under Sections 8 6‘: i5 for the E2 mark, which has been accepted and
`
`acknowledged by the USPTO for consideration to become incontestable within the meaning of
`
`VERIFIED COM PLAINTG
`
`

`

`ase 8:18—cv-00839-JSM-MAP Document 1 Filed 04/09/18 Page 4 of 13 PagelD
`
`Section 15 of the Lanham Act, 15 U.S.C. § 1065. Attached as Exhibit 2 is a true and correct
`
`copy of the registration certificate and maintenance records for the E2 mark, which the USPTO
`
`registered on the Principal Register under Registration No. 4139466.
`
`19.
`
`The E2 (design) mark appears on the Principal Register and on some of Enso’s
`
`products as follows:
`
`tENSKS
`
`20.
`
`Enso has used the El and E2 Marks in commerce throughout the United States
`
`continuously since September 1, 2009 in connection with the manufacture, distribution,
`
`provision, offering for sale, sale, marketing, advertising and promotion of a number of shoes,
`
`hats, gear, socks, bags, and apparel that promote active lifestyles. Attached hereto as Exhibit 3
`
`are photographs of representative samples of materials showing Enso’s use of the ENSO Mark
`
`in connection with these goods.
`
`21.
`
`Enso’s E1 and E2 Marks are distinctive to both the consuming public and Enso’s
`
`trade.
`
`22.
`
`Enso has expended substantial time, money, and resources marketing, advertising,
`
`and promoting its goods sold under the ENSO Mark. From 2009 to 2017 alone, Enso has
`
`expended in excess of seventy thousand dollars ($70,000.00) on marketing, advertising, and
`
`promotion of a portion of goods sold under the ENSO Mark.
`
`23.
`
`Enso, through its licensees and authon'zed distributors, distributes and sells a
`
`number of goods under the ENSO Mark using the following websites:
`
`0
`
`-
`
`-
`
`http://enso.online
`
`http://ensofitness
`
`hmzl/ensofitnesscom
`
`VERIFIED COMPLAINT—4
`
`
`
`
`
`WATSONLLP189S.OrangeAvenue,Suite810Orlando,FL32801
`
`
`
`
`
`Telephone:407.377.6634
`
`

`

`ase 8:18-cv—00839—JSM—MAP Document 1 Filed 04/09/18 Page 5 of 13 PageID 5
`
`ooofloxmkwm—
`b—lI—II—II—nn—n#WNI—O
`
`._.. LII
`
`MNNNNNi—‘i—‘b—lh—L
`
`Orlando,FL32801
`
`
`
`Telephone:407.377.6634
`
`o
`
`0
`
`o
`
`o
`
`o
`
`https://runcircles.shop
`
`https://shop.skyou.com/collections/enso
`
`https://wanelo.co/ensofitness
`
`https://www.aliveshoes.com/enso-llc
`
`https://modalyst.co/explore/ensol
`
`24.
`
`Enso offers and sells its apparel and accessories under its ENSO Mark to the
`
`consuming public in interstate commerce.
`
`25.
`
`The goods ENSO offers under the ENSO Mark are of high quality performance
`
`and lifestyle apparel and accessories, which are targeted to consumers interested in active and
`
`health-conscious lifestyles.
`
`26.
`
`As a result of Enso's expenditures and efforts, the ENSO Mark has come to
`
`signify high quality goods designated by the ENSO Mark, and has acquired incalculable
`
`distinction, reputation, and goodwill belonging exclusively to Enso.
`
`27.
`
`Enso has scrupulously and successfillly enforced and protected its ENSO Mark
`
`against past infringements, including, Concentric Designs, LLC in 2014, andW
`
`in 2017.
`
`Enso Rings
`
`28.
`
`Upon information and belief, Enso Rings manufactures and sells accessories,
`
`including, but not limited to, jewelry, namely silicone wedding rings, to consumers interested in
`
`active lifestyles in interstate commerce.
`
`29.
`
`Enso Rings owns and operates the website domainWW. Enso
`
`Rings advertises its silicone rings under the ENSO mark on its website as the perfect ring
`
`alternative for all activities and jobs (is. firemen, military, medical field, etc.), traveling in all
`
`types of adventures, and active lifestyles that protect the ring while you exercise, hike, bike,
`
`swim, etc.
`
`1 Currently, there are 123 online stores that list Enso’s apparel and some of the goods under the ENSO mark for sale
`to the consuming public.
`
`VERIFIED COMPLAINT-5
`
`
`
`
`
`WATSONLLP189S.OrangeAvenue,Suite810
`
`

`

`gusto
`OGQCi‘Lfl
`
`—|O—i4;!»
`
`i—d‘u—o—‘w—d
`
`KGOONRCNW
`
`
`
`WATSONLL?i8")S.()nmecAvenue.SuiteSlit
`
`(iriaticio,Fl.
`
`323m'i‘ciepltonc:40?.3??.6634
`
`,. ase 8:18-cv-00839—JSM-MAP Document 1 Filed 04/09/18 Page 6 of 13 PagelD
`
`30‘ Without Enso’s authorization, and upon information and beliefi beginning after
`
`Enso acquired protectabie exclusive rights in its ENSO Mark, Enso Rings adopted and began
`
`using a mark identicai to the ENSO Mark (the “luli‘inging Mark”) in interstate commerce.
`
`3 l.
`
`The infringing Mark adopted and used by Enso Rings is identical to the ENSO
`
`Mark, which appears in commerce as ibilows:
`
`Mormonism
`
`fENSG
`
`Became Enllghtenetm
`
`32.
`
`Upon information and belief, Enso Rings has been engaged in the manufacture,
`
`distribution, provision, advertising, promotion, oii‘eriug for sale, and sole of goods using the
`
`'ln‘ii'ingiug Mark throughout the United States. Attached hereto as Exhibit 4 are true and correct
`
`photographic depictions and representative of accessories showing iinso Riugs’ use oi’the
`
`infringing Mark.
`
`33.
`
`The goods Enso Rings has mattttfacttti'ecl., distributed, provided, marketed,
`
`advertised, pron'loted, offered for sale, and sold under the infringing Mark on its website are
`
`targeted to cousumere who have an interest in the promotion of heaith and fitness that is the
`
`same or similar to Enso’s target consumer.
`
`34.
`
`Upon infomnation and belief, Enso Rings has manufactured, distributed, provided,
`
`marketed, advertised, promoted, offered for sale, and sold its goods under the infringing Mark
`
`using the following websites:
`
`.
`
`
`
`htt)szfx’ensorinus.com/about-us/
`
`
`
`' WWWflIUflZOlLCOITl
`
`4'
`
`lunged/WWW.facebook.com/iEnsoRiues/
`
`VERWIED CUb'iPLAlNT—(x
`
`

`

`ase 8:18—cv—00839-JSM—MAP Document 1 Filed 04/09/18 Page 7 of 13 PageID
`
`0
`
`httgs://www.youtubecom/channel/UCiBOdfZ9s4JYgst6T1R0 Bg
`
`35.
`
`Enso Rings occasionally posts on social media simply as “Enso” instead of “Enso
`
`Rings” in connection with its marketing, advertising, and promoting of its goods under the
`
`Infringing Mark on at least one of the above—listed websites.
`
`36.
`
`Enso Rings has also promoted its goods through the TV Show, “Shark Tank.”
`
`37.
`
`Enso Rings has marketed, advertised, and promoted its goods under the Infringin
`
`Mark through Enso Ring’s marketing, advertising, and promotional channels and media in the
`
`same or similar channels and media as Enso.
`
`38.
`
`Enso Rings offers and sells its goods under the ENSO Mark to consumers who
`
`have an interest in the promotion of health and fitness that is the same or similar to the
`
`consumers as Enso.
`
`Enso Rings’ TrademarkAppIication
`
`39.
`
`On March 2, 2016, Enso Rings filed for registration of the identical word mark
`
`“Enso,” with the USPTO, under serial number 86926521. Enso Rings’ purported registration
`
`seeks protection of Enso in international class 014. As initially filed, Enso Rings identified its
`
`purported mark with the following identification:
`
`Jewelry; rings made in whole or significant part of silicone;
`jewelry for outdoor and Sporting use; presentation boxes for
`jewelry
`
`40.
`
`On June 21, 2016, the USPTO responded to Enso Rings’ trademark application
`
`with an Office Action indicating that its registration of the applied-for mark was refused because
`
`of likelihood of confusion with Enso‘s ENSO mark in US. Registration No. 4400485. The
`
`USPTO requested that Enso Rings submit a substitute specimen or amend the filing basis.
`
`41.
`
`On November 09, 2016, Enso Rings responded by refuting the USPTO’s rejection
`
`of its trademark application on the basis that: (i) there is precedent with the USPTO to grant
`
`similar marks for disparate goods and services; (ii) there is little likelihood of public confusion;
`
`and (iii) it appeared that Enso was no longer using the ENSO mark.
`
`Orlando,FL32801
`
`
`
`Telephone:407.377.6634
`
`\OOO\IO‘\
`
`
`
`NNNNNNND—iHh—lh—ih—lh—II—II—‘D—‘p—I
`
`VERIFIED COMPLAINT-7
`
`
`
`
`
`WATSONLLP189S.OrangeAvenue,Suite810
`
`

`

`ase 8:18-cv—OO839-JSM-MAP Document 1 Filed 04/09/18 Page 8 of 13 PageID 8
`
`42.
`
`On December 5, 2016, the USPTO reviewed Enso Rings’ response and submitted
`
`an Office Action indicating that the trademark examining attorney maintained and continued
`
`refusal, pursuant to Trademark Act Section 2(d) Refusal — Likelihood of Confusion with respect
`
`to Reg. No. 4400485.
`
`43.
`
`On June 7, 2017, Enso Rings filed a Notice of Revive Application with the
`
`USPTO for serial number 86926521, and its application is currently pending with the USPTO.
`
`44.
`
`On or about February 14, 2018, Enso Rings filed a Petition for Cancellation of the
`
`ENSO mark under Registration Nos. 4400485 and 4139466 with the USPTO.
`
`Enso Rings’ Unlawful Activities
`
`45.
`
`Enso Rings’ infringing acts as alleged herein have caused and are likely to
`
`continue to cause confusion, mistake, and deception among the relevant consuming public as to
`
`the source or origin of the Enso’s goods and have, and are likely to deceive, the relevant
`consuming public into believing, mistakenly, that Enso Ring’s goods originate from, are
`
`associated or affiliated with, or otherwise authorized by Enso.
`
`46.
`
`Enso Rings’ infringing acts as alleged herein have already resulted in actual
`
`confusion on multiple occasions, including, but not limited to, an online retailer who listed Enso
`
`Rings’ goods with the Infringing Mark on www.amazon.com under the impression that Enso
`
`Rings had permission to sell under Enso’s Mark, and another instance where a customer
`
`confused Enso with Enso Rings and contacted Enso to complain that Enso Rings’ kiosk was not
`
`staffed and needed help.
`
`47.
`
`Upon information and belief, Enso Rings’ acts are willful with the deliberate
`
`intent to trade on the goodwill of Enso’s Mark, cause confusion and deception in the
`
`marketplace, and divert potential sales of Enso’s goods to Enso Rings.
`
`48.
`
`Enso Rings’ acts are causing, and unless restrained, will continue to cause damag
`
`and immediate irreparable harm to Enso and to its valuable reputation and goodwill with the
`
`consuming public for which Enso has no adequate remedy at law.
`
`49.
`
`Enso Rings knows or has reason to know of its infringing use of Enso’s mark.
`
`
`
`Telephone:407.377.6634
`
`\ioxmhww
`
`ggg8§8-oomqo~msw-oem
`NNNp—dp—np—dv—nb—di—ir—lh—r—‘r—I
`
`VERIFIED COMPLAD‘IT-S
`
`
`
`
`
`WA1SONLLP189S.OrangeAvenue,Suite810Orlando,FL32801
`
`

`

`ase 8:18—cv-00839—JSM-MAP Document 1 Filed 04/09/18 Page 9 of 13 PagelD
`
`50.
`
`All general and statutory conditions precedent to this action have either occurred
`
`or been waived by operation of law.
`
`51.
`
`Enso retained the law finn of Watson LLP and its obligated to pay such firm
`
`reasonable attomeys’ fees for its services. Enso may recover its attomeys’ fees and costs from
`
`Enso Rings, pursuant to 15 U.S.C. § 1117, because this is an exceptional case within the
`
`meaning of the Lanham Act and case law interpreting same.
`
`Trademark Unfair Competition 15 U.S.C. § 1125 (a)
`
`COUNT I
`
`
`
`Telephone:407.377.6634
`
`NNNy—nHy—Iydvdp—xy—Ir—nu—ah
`
`52.
`
`Enso re-alleges the allegations contained in paragraphs 1 through 50 as though
`
`fiilly set forth herein.
`
`53.
`
`Enso Ring’s unauthorized use in commerce of the ENSO Mark as alleged herein
`
`is likely to deceive consumers as to the origin, source, sponsorship, or affiliation of Enso Rings’
`
`goods, and is likely to cause consumers to believe, contrary to fact, that Enso Rings’ goods are
`
`sold, authorized, endorsed, or sponsored by Enso, or that Enso Rings is in some way affiliated
`
`with or sponsored by Enso.
`
`54.
`
`Enso Rings’ unauthorized use in commerce of the ENSO Mark as alleged herein
`
`constitutes use of a false designation of origin and misleading description and representation of
`
`fact.
`
`55.
`
`Upon information and belief, Enso Rings’ conduct as alleged herein is willful and
`
`is intended to and is likely to cause confusion, mistake, or deception as to the affiliation,
`
`connection, or association of the Enso Rings with Enso.
`
`56.
`
`Enso Rings’ conduct as alleged herein constitutes unfair competition in violation
`
`of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`57.
`
`Enso Rings’ conduct as alleged herein is causing immediate and irreparable harm
`
`and injury to Enso, and to its goodwill and reputation, and will continue to both damage Plaintif
`
`and confuse the public unless enjoined by this court.
`
`58.
`
`Enso has no adequate remedy at law.
`
`NNOO\I
`
`VERIFIED COMPLAINT-9
`
`
`
`
`
`WATSONLLP189S.OrangeAvenue.Suite810Orlando,FL32801
`
`

`

`ase 8:18-cv—OO839-JSM-MAP Document 1 Filed 04/09/18 Page 10 of 13 PageID 0
`
`LAN
`
`\OOQQONMA
`
`
`
`Telephone:407.377.6634
`
`59.
`
`Enso is entitled to, among other relief, injunctive relief and an award of actual
`
`damages, Enso Rings’ profits, enhanced damages and profits, reasonable attorneys’ fees, and
`
`costs of the action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1 116, 1117,
`
`together with prejudgment and post—judgment interest.
`
`WHEREFORE, Plaintiff, ENSO LLC, demands judgment against Defendant, ENSO
`
`RINGS LLC, and respectfully requests that the court (i) grant injunctive relief and declaratory
`
`relief; (ii) award damages in the form of defendant’s profits, pursuant to 15 U.S.C. § 1 117; (iii)
`
`award Enso its reasonable attorneys’ fees and costs; and (iv) any such further relief available at
`
`equity and law.
`
`may;
`Direct Federal Trademark Infringement
`
`60.
`
`61.
`
`Enso repeats and realleges paragraphs 1 through 50, as if fully set forth herein.
`
`Enso Rings’ unauthorized use in commerce of the ENSO Mark as alleged herein
`
`is likely to deceive consumers as to the origin, source, sponsorship, or affiliation of Enso Rings’
`
`goods, and is likely to cause consumers to believe, contrary to fact, that Enso Rings’ goods are
`
`sold, authorized, endorsed, or sponsored by Enso, or that Enso Rings is in some way affiliated
`
`with or sponsored by Enso. Enso Rings’ conduct, therefore, constitutes trademark infringement
`
`in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
`
`62.
`
`Upon information and belief, Enso Rings has committed the foregoing acts of
`
`infringement with full knowledge of Enso’s prior rights in the ENSO Mark and with the willful
`
`intent to cause confiision and trade on Enso's goodwill.
`
`63.
`
`Enso Rings’ conduct is causing immediate and irreparable harm and injury to
`
`Enso, and to its goodwill and reputation, and will continue to both damage Enso and confuse the
`
`public unless enjoined by this court.
`
`64.
`
`65.
`
`Enso has no adequate remedy at law.
`
`Enso is entitled to, among other relief, injunctive relief and an award of actual
`
`damages, Enso Rings’ profits, enhanced damages and profits, reasonable attorneys‘ fees, and
`
`\lEYxiX-‘ED COMPLAINT~10
`
`
`
`
`
`WATSONLLP189S.OrangeAvenue.Suite810Orlando,FL32801
`
`

`

`Case 8:18-cv-00839—JSM-MAP Document 1 Filed 04/09/18 Page 11 of 13 PagelD 11
`
`costs of the action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116, 1 117,
`
`together with prejudgment and post-judgment interest.
`
`WHEREFORE, Plaintiff, ENSO LLC, demands judgment against Defendant, ENSO
`
`RINGS LLC, and respectfiilly requests that the court (i) grant injunctive relief and declaratory
`
`relief; (ii) award damages in the form of defendant’s profits, pursuant to 15 U.S.C. § 1117; (iii)
`
`award Enso its reasonable attomeys’ fees and costs; and (iv) any such further relief available at
`
`equity and law.
`
`—tu—A.—‘-—-MN—'O
`
`
`
`Avenue.Suite8It)
`
`:407.377.6634
`
`
`
`COUNT [II
`
`Common Law Trademark Infringement
`
`66.
`
`Enso re-alleges the allegations contained in paragraphs 1 through 50, and
`
`paragraphs 60 through 64, as though fully set forth herein.
`
`67.
`
`Enso has used the ENSO Mark in interstate and intrastate commerce since 2009.
`
`68.
`
`Enso has continuously used the ENSO Mark in conjunction with intrastate
`
`commerce since 2009.
`
`69.
`
`Both Enso and Enso Rings target health-conscious consumers that promote active
`
`lifestyles who are seeking performance apparel and accessories for sport—related activities.
`
`These consumers look for the same ideals and principles when searching for products and goods
`
`that both Enso and Enso Rings provides.
`
`WHEREFORE, Plaintiff, ENSO LLC, demands judgment against Defendant, ENSO
`
`RINGS LLC, and respectfully requests that the court (i) grant injunctive relief and declaratory
`
`relief; (ii) award damages in the form of defendant’s profits, pursuant to 15 U.S.C. § 11 17; (iii)
`
`award Enso its reasonable attorneys’ fees and costs; and (iv) any such further relief available at
`
`equity and law.
`
`DATEDonApril‘
`
`a
`
`,2018.
`
`VERIFIED COMPLAINT-l 1
`
`Respectfully submitted,
`
`WATSON LLP
`
`b
`
`

`

` ‘l‘clmhmfic:
`4&137161334
`
`
`
`
`
`
`
`Case8:18-cv—00839—JSM-MAPDocumlamgmfiilgd04/09/18Page12of13PagelD12
`
`I'd
`
`be!
`
`Cuicmzm “A Watson, Esq.
`Fiorida Bar. NO. 0087288
`Caiil‘m‘nia Bar Nu. 266015
`Gem‘gia Bat“ Na. 3 ‘1 7133
`New Vux‘k Bar Reg. NO. 4850994
`Email: cokmanféifzwatsanflpfimn
`
`(inciginnfawalsenll
`.wm
`Leia V. Lcimm‘, Esq.
`Fiorida Bar N0. 0105621
`
`Email: MAW
`Rmfika J. Carter, Esq.
`Flurida' Bar Na. 0122358
`
`
`Ema“: mnikafmmtsonfl mom
`WA'I‘EfiN LLP
`
`189 S. Grange AVIS-flue
`311316 8 H)
`{)rkmdo, FL 32801
`Tcitiplmng: 4137377.!6634
`Facsimile: 407.3??6688
`Aia’mvmmfin‘ Plaintiff Emu LLC
`
`‘V ERIHEB COMPLMN'IK i 3
`
`

`

`Case 8:18-cv-00839—JSM-MAP Document 1 Filed 04/09/18 Page 13 of 13 PagelD 13
`
`CAT!
`
`STATE OF FLORIDA
`
`COUNTY OF C LLIER
`
`I, the undersigned, am the Plaintiff, ENSO LLC, in this action. As such, I have personal
`
`knowledge of the facts set forth in the Verified Complaint.
`
`1 have reviewed the allegations of
`
`facts set forth in the Verified Complaint under penalty ofperjury under the laws of the United
`
`States ofAmerica and the State of Florida and hereby verify that said facts are true, correct, and
`
`aecmate to the best of my knowledge.
`
`Dated this 5th day of April, 2018.
`
`ENSO LLC
`
`By: Thomas O’Riordan
`Its: Founder
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`n— N
`
`1895.0mgehm8uitexlommnrrqumsnem fl
`
`Sganusassasatzzu
`
`WATSONLU’
`
`NW
`
`VERIFIED COMPLAINT-l3
`
`

`

`Case 8:18—cv-00839-JSM—MAP Document 1-1 Filed 04/09/18 Page 1 of 7 PagelD 14
`Trademark Status & Document Retrieval
`EMS—Lu
`
`4/6/2018
`
`
`
`
`TSDR now includes a Post Registration Maintenance Tab. When viewing a Registered mark, users will now find a new
`3rd tab providing Post Registration information next to the “Status" and "Document" tabs, below the search text box. The
`tab will not appear if the mark is not registered.
`
`
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`
`
`__________Back10 Search
`
`i
`
`Print
`
`§8_(6_ygag) Affidavit of Continued Use Due Dates:
`
`Earliest date §8 can be filed: Sep. 10, 2018
`Latest date §8 can be filed without paying additional fee: Sep. 10, 2019
`
`l I
`
`1
`
`Latest date §8 can be filed by paying an additional fee: Mar. 10, 2020
`
`hllpJ/tsdr.uspto.gov/#caseNumber=850982018.caseType=SERlAL_N0&searchType=stalusSearch
`
`1/2
`
`

`

`4/6/2018
`
`Case 8:18-cv-00839—JSM—MAP Document 1—1 Filed 04/09/18 Page 2 of 7 PageID 15
`Trademark Status & Document Retrieval
`
`http://tsdr.uspto.govl#caseNumber=85098201&caseType=SERlAL_NO&searchType=statusSearch
`
`2/2
`
`

`

`Case 8:18-cv-OO839—JSM—MAP Document 1-1 Filed 04/09/18 Page 3 Of 7 PageID 16
`
`(HOME gamma of gun,I‘ I
`whiten Hates 39mm ant: maximum 09mm
`th
`
`ENSO
`
`ENSO LLC (NEVADA LIMITED LIABILITY COMPANY), DBA ENSO,
`Reg. No. 4,400,485
`500 N RAINBOW BLVD. STE 300A
`.
`RegIstered Sep. 10, 2013 LAS VEGAS, NV 89107
`
`Int. C]s.: 18, 25, 28, 32,
`35, and 41
`
`TRADEMARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FOR: ALL PURPOSE SPORT BAGS; BACKPACKS, BOOK BAGS, SPORTS BAGS, BUM
`BAGS, WALLETS AND HANDBAGS; BAGS AND HOLDALLS FOR SPORTS CLOTHING;
`BAGS FOR SPORTS; DRY BAGS; DUFFEL BAGS; DUFFEL BAGS FOR TRAVEL; DUFFLE
`BAGS; FABRIC POUCHBS SOLD EMPTY THAT MAY BE USED TO HOLD ITEMS SUCH
`AS DENTAL RETAINERS AND SPORTS MOUTH GUARDS; GYM BAGS; HIKING BAGS;
`LEATHER AND IMITATION LEATHER BAGS; LEATHER AND IMITATION LEATHER
`SPORT BAGS AND GENERAL PURPOSE TROLLEY BAGS; LEATHER BAGS AND WAL-
`LETS; LEATHER BAGS, SUITCASES AND WALLETS; MILITARY DUFFLE BAGS, GAR-
`MENT BAGS FOR TRAVEL, TOTE BAGS, SHOULDER BAGS AND BACKPACKS;
`OVERNIGHT BAGS; SPORT BAGS; SPORTS BAGS; SPORTS PACKS, IN CLASS 18 (US.
`CLS. l, 2, 3, 22 AND 41)
`
`FIRST USE 9-1-2009; IN COMMERCE 3-13-2010.
`
`
`
`FOR: ATHLETIC APPAREL, NAMELY, SHIRTS, PANTS, JACKETS, FOOTWEAR, HATS
`AND CAPS,ATHLETIC UNIFORMS; ATHLETIC FOOTWEAR; BATHING SUITS; BATHING
`SUITS FOR MEN; BEACH FOOTWEAR; BOARD SHORTS; BODY SHIRTS; BOOTS FOR
`SPORT; BOWLING SHOES; BOXER SHORTS; BOXING SHOES; BOXING SHORTS; CANVAS
`SHOES; CLEATS FOR ATTACHMENT T0 SPORTS SHOES; CLOTHING FOR ATHLETIC
`USE, NAMELY, PADDED ELBOW COMPRESSION SLEEVES; CLOTHING FOR ATHLETIC
`USE, NAMELY, PADDED PANTS; CLOTHING FOR ATHLETIC USE, NAMELY, PADDED
`SHIRTS; CLOTHING FOR ATHLETIC USE, NAMELY, PADDED SHORTS; CLOTHING FOR
`WEAR IN JUDO PRACTICES; CLOTHING FOR WEAR IN WRESTLING GAMES; CLOTHING
`ITEMS, NAMELY, ADHESIVE POCKETS THAT MAY BE AFFIXED DIRECTLY TO THE
`BODY AS A DECORATIVE PIECE OF CLOTHING WITH UTILITY; CLOTHING ITEMS,
`NAMELY, ADHESIVE POCKETS THAT MAY BE AFFIXED DIRECTLY TO THE INSIDE
`OF CLOTHING FOR STORAGE AND SAFEKEEPING OF PERSONAL ITEMS; CLOTHING,
`NAMELY, KHAKIS; COATS OF DENIM; COMBATIVE SPORTS UNIFORMS; CYCLING
`SHOES; DANCE SHOES; DECK~SHOES; DENIM JACKETS; DENIMS; DRESS SHIRTS;
`
`%%% DRIVERS; DRY SUITS; FITTED SHOE OR BOOT COVERING TO PROTECT THE SHOES
`
`Mung Divan-Btu]:m Slam Pun! unifnduwk om
`
`0R BOOT FROM WATER OR OTHER DAMAGE; FLIP F LOPS; FOOTBALL SHOES; FOOT-
`WEAR; FOOTWEAR FOR MEN; FOOTWEAR FOR MEN AND WOMEN; FOOTWEAR FOR
`TRACK AND FIELD ATHLETICS; FOOTWEAR FOR WOMEN; FOOTWEAR N01" FOR
`
`

`

`Case 8:18-cv—00839-JSM-MAP Document 1—1 Filed 04/09/18 Page 4 Of 7 PagelD 17
`
`Reg. No. 4,400,485 SPORTS; GLOVES; GOLF SHOES;GOLF SHORTS; GYM SHORTS;GYM SUITS;GYMNASTIC
`SHOES; HANDBALL SHOES; HOCKEY SHOES; HOODED SWEAT SHIRTS; INFANTS'
`SHOES AND BOOTS; INSOLES FOR FOOTWEAR; JACKETS; JEANS; JERSEYS; JOGGING
`SUITS; JUDO SUITS; KARATE SUITS; LADIES' SUITS; LEATHER BELTS; LEATHER SHOES;
`LEISURE SHOES; LEISURE SUITS; LONG-SLEEVED SHIRTS; MARTIALARTS UNIFORMS;
`. MENS SUITS; MENS SUITS, WOMEN'S SUITS; MIXED MARTIAL ARTS SUITS; MOISTURE-
`WICKING SPORTS ERAS; MOISTURE-WICKING SPORTS PANTS; MOISTURE-WICKING
`SPORTS SHIRTS; MOTORCYCLE GLOVES; MOUNTAINEERING SHOES; NON-DISPOSABLE
`CLOTH TRAINING PANTS; OUTDOOR GLOVES; PADDED JACKETS; PADDING JACKETS;
`PANTIES, SHORTSAND BRIEFS; PARTS OF CLOTHING,NAMELY, GUSSETS FORTIGHTS,
`GUSSETS FOR STOCKINGS. GUSSETS FOR BATHING SUITS, GUSSETS FORUNDERWEAR,
`GUSSETS FOR LEOTARDS AND GUSSETS FOR FOOTLETS; PERSPIRATIONABSORBENT
`UNDERWEAR CLOTHING; PIQUE SHIRTS; RAIN SUITS; RASH GUARDS; RIDING GLOVES;
`RIDING SHOES; RUGBY SHOES; RUGBY SHORTS; RUNNING SHOES; SANDALS AND
`BEACH SHOES; SCIENTIFIC AND TECHNOLOGICAL APPAREL, NAMELY, SHIRTS,
`PANTS. JACKETS, FOOTWEAR, HATS AND CAPS, UNIFORMS; SHIRTS; SHIRTS AND
`SHORT-SLEEVED SHIRTS; SHOES; SHORT SETS; SHORT-SLEEVED OR LONG—SLEEVED
`T-SHIRTS; SHORT-SLEEVED SHIRTS; SHOULDER WRAPS; SKI AND SNOWBOARD
`SHOES AND PARTS THEREOF; SKIING SHOES; SNOW BOARDING SUITS; SOCCER
`SHOES; SOLES FOR FOOTWEAR; SPORT COATS; SPORT SHIRTS; SPORT STOCKINGS;
`SPORTS BRA; SPORTS BRAS; SPORTS JACKETS; SPORTS JERSEYS; SPORTS JERSEYS
`AND BREECHES FOR SPORTS; SPORTS OVERUNIFORMS; SPORTS PANTS; SPORTS
`SHIRTS; SPORTS SHIRTS WITH SHORT SLEEVES; SUITS; SWEAT SHIRTS; SWEAT SUITS;
`T~SHIRTS; TAP SHOES; TEE SHIRTS; TENNIS SHOES; THONGS; TOPS; TRACK AND
`FIELD SHOES;TRACKJACKETS;TRACKPANTS;TRACK SUITS;TRACKSUITS;TRAINING
`SHOES; TRAINING SUITS; TRAVEL CLOTHING CONTAINED INA PACKAGE COMPRISING
`REVERSIBLE JACKETS, PANTS, SKIRTS, TOPS AND A BELT OR SCARF; TRIATHLON
`CLOTHING, NAMELY, TRIATHLON TIGHTS, TRIATHLON SHORTS, TRIATHLON SING-
`LETS, TRIATHLON SHIRTS, TRIATHLON SUITS; UNDERARM CLOTHING SHIELDS;
`UNDERGARMENTS; UNDERWEAR, NAMELY, BOY SHORTS; VOLLEYBALL SHOES;
`WALKING SHORTS; WARM UP SUITS; WEARABLE GARMENTS AND CLOTHING,
`NAMELY, SHIRTS; WOMEN‘S SHOES; WORK SHOES AND BOOTS; WRAPS;YOGA SHIRTS,
`IN CLASS 25 (US. CLS. 22 AND 39).
`
`FIRST USE 9-1—2009; IN COMMERCE 3-13-2010.
`
`FOR: ARM BANDS FOR DESIGNATING TFAM MEMBER POSITIONS IN SPORTS ACTIV-
`ITIES; ARM GUARDS FOR ATHLETIC USE; ATHLETIC EQUIPMENT, NAMELY, GUARDS
`FOR THE HEAD, ELBOWS, K