Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1256379
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`Filing date:
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`12/23/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`92081050
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Opulent Treasures, Inc.
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`OPULENT TREASURES, INC.
`129 LOMITA STREET
`EL SEGUNDO, CA 90245
`UNITED STATES
`Primary email: carol@opulenttreasures.com
`No phone number provided
`
`Motion to Suspend for Civil Action
`
`Antonio Devora
`
`antonio@devoralaw.com
`
`/s/ Antonio Devora
`
`12/23/2022
`
`Motion to Suspend.pdf(45338 bytes )
`Exhibit A Original Complaint.pdf(832476 bytes )
`Exhibit B Second Amended Complaint.pdf(732634 bytes )
`Exhibit C YaYa First Amended Answer to SAC and Counterclaim.pdf(287010
`bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cancellation No.: 92081050
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`Registration No.: 5912235
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`§
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`§ §
`
`
`§
`§
`§
`§
`§
`§
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`
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`§ §
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`Petitioner,
`
`Respondent.
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`YA YA CREATIONS, INC.
`
`
`
`vs.
`
`OPULENT TREASURES, INC.
`
`
`
`
`
`
`
`
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`
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`
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`RESPONDENT’S MOTION TO SUSPEND
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`Pursuant to Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 510 and
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`37 C.F.R. § 2.117, Respondent Opulent Treasures, Inc. (“Opulent”) files this Motion to Suspend
`
`to request the Board suspend all proceedings in Cancellation No. 92081050 until final
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`determination of Opulent Treasures, Inc. v. Ya Ya Creations, Inc., Civ. No. 2:22-cv-02616-SSS-
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`JC, United States District Court for the Central District of California (“Civil Action”).
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`I.
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`INTRODUCTION AND FACTUAL BACKGROUND
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`Opulent filed its Complaint against Petitioner in the Eastern District of Texas on August
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`17, 2021, alleging claims for trade dress infringement under 15 U.S.C. § 1114(a) of U.S.
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`Registration No. 5,912,235 (“’235 Mark”), trade dress infringement under 15 U.S.C. § 1125(a),
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`common law trade dress infringement, trade dress dilution under 15 U.S.C. § 1125(c), trade dress
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`dilution under TEX. BUS. & COM. CODE § 16.103, unfair competition under 15 U.S.C. § 1125(a),
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`common law unfair competition, unjust enrichment, and common law misappropriation. See
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`Exhibit A. After the Civil Action was transferred to the Central District of California, Opulent
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`filed its Second Amended Complaint on April 29, 2022, which is the operative complaint in the
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`Civil Action, alleging the same causes of action. See Exhibit B.
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`RESPONDENT’S MOTION TO SUSPEND
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` PAGE 1
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`

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`Petitioner filed its First Amended Answer to the Second Amended Complaint and
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`Counterclaim on May 13, 2022, which is Petitioner’s live pleading in the Civil Action. See Exhibit
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`C. In its “Affirmative Defenses,” Petitioner asserts that “[a]ll of Plaintiff’s alleged trademarks
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`including, without limitation, U.S. Trademark Reg. No. 5,912,235, are invalid as lacking
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`secondary meaning.” Id. at 10.
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`Similarly, in its only counterclaim for damages under 15 U.S.C. § 1120, Petitioner alleges
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`that Opulent’s application for registration and the declarations submitted in support of its
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`contention for acquired secondary meaning in the ’235 Registration were inaccurate , and therefore
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`the ’235 Registration should be cancelled because it has not acquired secondary meaning. See
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`Exhibit C at 12-16; see also Petition for Cancellation, , 1 TTABVUE at 2-4. Finally, in its Prayer
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`for Relief, Petitioner requests cancellation of the ’235 Registration under 15 U.S.C. § 1119. See
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`id. at 16. Petitioner’s basis for lack of secondary meaning in the ’235 Registration is the same here
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`as in the Civil Action. Accordingly, these proceedings should be suspended.
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`II. LEGAL STANDARD
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`Under 37 C.F.R. § 2.117(a), whenever it shall come to the attention of the Trademark Trial
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`and Appeal Board that a civil action, another Board proceeding, or an expungement or
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`reexamination proceeding may affect a pending case, proceedings before the Board may be
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`suspended until termination of the civil action, the other Board proceeding, or the expungement or
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`reexamination proceeding. A civil action or proceeding is not considered to have been terminated
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`until an order or ruling that ends litigation has been rendered and noticed and the time for any
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`appeal or other further review has expired with no further review sought. Id.; see also TMBP §
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`510.
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`RESPONDENT’S MOTION TO SUSPEND
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`“It is the policy of the Board to suspend proceedings when the parties are involved in a
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`civil action which may be dispositive of or have a bearing on the Board case.” Abercrombie &
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`Fitch Trading Co., No. 91240590, 2020 WL 553712, at *1 (TTAB Jan. 31, 2020); see also New
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`Orleans La. Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (civil action need
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`not be dispositive of Board proceeding, but only needs to have a bearing on issues before the
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`Board).
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`III. ARGUMENT
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`First, these proceedings should be suspended because the Civil Action is likely dispositive
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`of the Board proceedings as these issues to be determined by the Board here are identical or at
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`least much like those that the Court will decide in the Civil Action. See Exhibit C; see also Petition
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`for Cancellation, 1 TTABVUE. In both the Civil Action and in the Petition for Cancellation,
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`Petitioner seeks the same remedy—cancellation of the ’235 Registration—for the same reason —
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`that the trade dress allegedly lacks secondary meaning and registration was granted because
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`Opulent allegedly submitted inaccurate declarations to the examining attorney during prosecution
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`of the application for the ’235 Registration. See Exhibit C at 10, 16 (“[a]ll of Plaintiff’s alleged
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`trademarks including, without limitation, U.S. Trademark Reg. No. 5,912,235, are invalid as
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`lacking secondary meaning.”; see also Petition for Cancellation, 1 TTABVUE at 1, 3 (“The mark
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`is not inherently distinctive and has not acquired distinctiveness…the product configuration in
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`Registration No. 5,912,235 has not acquired secondary meaning.”). Thus, resolution of these
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`issues in the Civil Action a will be dispositive in this proceeding.
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`Second, letting the issues be resolved by the Civil Action first promotes judicial efficiency
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`because there are more causes of action, including infringement, and the decision in the Civil
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`Action will bind the Board. See 15 U.S.C. § 1119; see also B & B Hardware, Inc. v. Hargis Indus.,
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`Inc., 575 U.S. 138, 152 (2015) (“When a district court, as part of its judgment, decides an issue
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`that overlaps with part of the TTAB's analysis, the TTAB gives preclusive effect to the court's
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`judgment.”).1 Further, Petitioner admits that the Civil Action “is ongoing and has not been
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`resolved.” Petition for Cancellation, 1 TTABVUE at 3. Therefore, for the sake of judicial
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`efficiency the Board should suspend in favor of the Civil Action.
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`Finally, suspending these proceedings will avoid inconsistent rulings between the Board
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`and the Court in the Civil Action, especially given the preclusive effect of the district court’s
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`rulings. See 15 U.S.C. § 1119; see also B & B Hardware, 575 U.S. at 47 (“Once a court has
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`decided an issue, it is ‘forever settled as between the parties,’ thereby ‘protect[ing]’ against ‘the
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`expense and vexation attending multiple lawsuits, conserv[ing] judicial resources, and foster[ing]
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`reliance on judicial action by minimizing the possibility of inconsistent verdicts,’”).
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`IV. CONCLUSION
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`For the foregoing reasons, Respondent respectfully requests the Board to grant this motion
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`and suspend all the proceedings in Cancellation No. 92081050 until termination of the Civil
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`Action.
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`Dated: December 23, 2022
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`Respectfully Submitted,
`
`/s/ Antonio Devora
`Antonio Devora
`Texas State Bar No. 24074133
`
`
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`
`
`1 See also Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 854 (2d Cir. 1988) (“Presumably, awaiting the
`PTO's registration decision would allow the District Court to enlist the PTO's reasoning and even its results in support
`of its own conclusions, assuming the registration decision rested on grounds relevant to the infringement claim. But
`the outcome of the PTO registration proceeding would not affect the legal standard applied in the infringement claim
`or the scope of the required fact-finding. The District Court would still independently have to determine the validity
`and priority of the marks and the likelihood of consumer confusion as to the source of the goods[.]”); see also Mother’s
`Rest. Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 1569-73 (Fed. Cir. 1983) (“we hold that the TTAB properly gave
`preclusive effect to the Texas court's findings of fact; and because the Texas court made findings on the issues that
`are dispositive of the petition for cancellation, we also hold that the TTAB correctly granted Mama's motion for
`summary judgment on that petition.”); see also Midland Cooperatives, Inc. v. Midland Int’l Corp., 421 F.2d 754, 758-
`59 (CCPA 1970) (“It is the essence of res judicata that an end should be put to litigation—that when the parties have
`previously litigated a cause, they are barred from litigating the matter anew in a separate action.”).
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`RESPONDENT’S MOTION TO SUSPEND
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` PAGE 4
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`antonio@devoralaw.com
`Devora Law, PLLC
`4760 Preston Road, Suite 244-363
`Frisco, Texas 75034
`Telephone: 214.506.3409
`
`ATTORNEY FOR RESPONDENT
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`
`
`
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`CERTIFICATE OF FILING
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`I hereby certify that this RESPONDENT’S MOTION TO SUSPEND is being filed with
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`the Trademark Trial and Appeal Board via ESTTA on December 23, 2022.
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`
`
`
`
`
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`/s/ Antonio Devora
`Antonio Devora
`
`
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing RESPONDENT’S MOTION
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`TO SUSPEND has been served on the below counsel for Petitioner Ya Ya Creations, Inc. by
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`forwarding said copy on December 23, 2022, via email to:
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`Marc Karish
`marc.karish@kb-ip.com
`Karish & Bjorgum, PC
`119 E. Union Street, Ste. B,
`Pasadena, California 91103
`Tel. 213-785-8070
`Fax. 213-995-5010
`
`Eric A. Bjorgum
`eric.bjorgum@kb-ip.com
`Karish & Bjorgum, PC
`119 E. Union Street, Ste. B,
`Pasadena, California 91103
`Tel. 213-785-8070
`Fax. 213-995-5010
`
` /s/ Antonio S. Devora
`Antonio S. Devora
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`RESPONDENT’S MOTION TO SUSPEND
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`EXHIBIT A
`EXHIBIT A
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`Case 2:21-cv-00313 Document 1 Filed 08/17/21 Page 1 of 34 PageID #: 1
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`
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`
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`
`
`
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`Plaintiff,
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`
`
`v.
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`
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`Civil Action No.:
`JURY TRIAL DEMANDED
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`
`
`
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`
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`OPULENT TREASURES, INC.,
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`
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`YA YA CREATIONS, INC.
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`
`
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`
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`Defendant.
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`COMPLAINT
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`Plaintiff Opulent Treasures, Inc. (“Opulent” or “Plaintiff”) files this Complaint for
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`damages and injunctive relief against Defendant Ya Ya Creations, Inc. (“Ya Ya”).
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`NATURE OF THE ACTION
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`1.
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`This is a civil action for trade dress infringement, trade dress dilution, false
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`designation of origin, unfair competition, unjust enrichment, and request for injunctive relief
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`arising out of Defendant’s unauthorized and infringing use of Opulent’s trade dress for cake stands
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`and other décor items. As described more fully below, upon information and belief, Defendant has
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`knowingly, willfully, or intentionally infringed Opulent’s trade dress, damaged Opulent’s business
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`reputation, and subjected Opulent to unfair competition, lost profits, and other monetary damages.
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`The infringement is ongoing, causing Opulent to suffer irreparable harm.
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`2.
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`Opulent sues under the Lanham Act, including 15 U.S.C. §§ 1114(1) and 1125(a)
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`and (c) et seq.(Infringement, False Designation of Origin, Unfair Competition and Dilution); 15
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`U.S.C. § 1116 (Injunctive Relief), 15 U.S.C § 1117 (Attorney’s Fees and Treble Damages), 15
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`U.S.C. § 1118, the Texas Business and Commerce Code § 16 et seq., and common law.
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`
`
`1
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`

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`Case 2:21-cv-00313 Document 1 Filed 08/17/21 Page 2 of 34 PageID #: 2
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`PARTIES
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`3.
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`Opulent is a corporation organized and existing under the laws of the state of
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`California, with its principal place of business in El Segundo, California. It sells its products
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`through its website www.opulentreasures.com as well as through other e-commerce platforms
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`including Amazon.com, Wayfair.com, WalMart.com, and eBay.com. It also sells its products to
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`leading retail stores such as TJX Corp., including its affiliates Home Goods, TJ Maxx, Marshalls,
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`Winners, Home Sense Canada and TK Maxx Europe. Opulent is and has been marketing and
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`selling Opulent’s Designs1 in Texas and throughout the United States in interstate commerce
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`continuously.
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`4.
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`On information and belief, Defendant Ya Ya is a California corporation with its
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`principal place of business at 13155 Railroad Ave., City of Industry, California 91746.
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`5.
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`On information and belief, Defendant Ya Ya operates affiliated websites
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`www.efavormart.com and www.tableclothsfactory.com.
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`6.
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`Defendant is the manufacturer, seller, or distributor of cake stands and other décor
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`items which are infringing on Opulent’s Designs.
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`7.
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`Defendant sells its infringing products in Texas and throughout the United States.
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`JURISDICTION AND VENUE
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`8.
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`This Court has subject-matter jurisdiction over all aspects of this action under 15
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`U.S.C. § 1051 et seq. (“Lanham Act”) and 28 U.S.C. §§ 1331, 1337, and 1338.
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`9.
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`This Court has pendent jurisdiction over the Texas statutory and common law
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`claims pursuant to 28 U.S.C. § 1367 because the claims are so related to the other claims in the
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`1 Opulent’s Designs mean federally and common law protected trade dresses which Defendant infringes.
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`2
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`

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`Case 2:21-cv-00313 Document 1 Filed 08/17/21 Page 3 of 34 PageID #: 3
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`action over which the Court has original jurisdiction that they form part of the same case or
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`controversy.
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`10.
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`This Court has personal jurisdiction over Defendant through Defendant transacting,
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`doing, and soliciting business in this District, because a substantial part of the relevant events
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`occurred in this District, and because Defendant has infringed, contributed to the infringement of,
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`or actively induced others to infringe Opulent’s Designs in this District. Defendant continues to
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`infringe, contributes to the infringement of, or actively induces others to infringe Opulent’s
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`Designs in this District. Defendant has purposefully availed itself of the privilege of doing business
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`in this District and directed its conduct into this District because Defendant conduct continuous
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`and systematic business in this District, placed infringing products in the stream of commerce
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`directed to residents of this District, derived commercial benefits from the sale of infringing
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`products and caused injuries to Opulent within the Eastern District of Texas. Defendant operates
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`websites accessible by Internet users in this District and offer its services and products to residents
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`of Texas and this judicial District. The infringing products that Defendant advertises and offers,
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`and make available to purchasers through its websites, are able to be ordered by and shipped to
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`purchasers in Texas. Because the Defendant voluntarily engaged in tortious acts in Texas and made
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`purposeful contacts with Texas, the exercise of jurisdiction will not offend traditional notions of
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`fair play and substantial justice.
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`11.
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`Venue is proper under 28 U.S.C. §§ 1391(b)-(c) and 1400(a) because Defendant
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`transact business in this District, a substantial part of the events or omissions giving rise to the
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`claims alleged occurred in this judicial district, Opulent has been injured in this judicial District,
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`and, under 28 U.S.C. § 1400(b), Defendant committed acts of infringement in this judicial District.
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`3
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`

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`Case 2:21-cv-00313 Document 1 Filed 08/17/21 Page 4 of 34 PageID #: 4
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`FACTS SUPPORTING CLAIMS
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`A. The Opulent Brand and Opulent Trade Dress
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`12.
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`Since 1995, Opulent has been engaged in the design, distribution, marketing,
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`offering for sale, and sale of elegantly and uniquely crafted entertainment and home décor pieces,
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`including, but not limited to, chandelier dessert stands, candelabras, and lamps. In creating its
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`products, Opulent has always sought to add charm, elegance, and stunning beauty to each
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`customer’s special occasions and celebrations.
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`13.
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`Opulent is the creator of the “Chandelier Cake Stand,” “Chandelier Cupcake
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`Holder,” “Chandelier Candle Holder” and many other distinct trade dresses, all protected under
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`federal or common trademark law (collectively “Opulent’s Trade Dress”). These products did not
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`exist before Opulent introduced them to the marketplace.
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`14.
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`Since its founding, the popularity of Opulent’s Trade Dress has steadily grown
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`throughout the United States. Its unique decorative pieces are coveted by wedding and event
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`planners as well as individual consumers looking to bring a sophisticated look to their events,
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`gatherings, and homes.
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`15.
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`In recent years, Opulent’s commitment to quality and beauty has helped propel the
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`Opulent Treasures® brand to an overwhelming level of popularity among consumers. After more
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`than twenty years of business, Opulent’s loyal customer base spans not only across the United
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`States, but the entire globe.
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`16.
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`In fact, just through the trend-ideas sharing website, www.Pinterest.com, Opulent’s
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`“pins” have engaged with nearly thirty million individuals. Additionally, Opulent has received
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`unsolicited media attention several times from outlets including Romantic Homes, Buzzfeed,
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`Prime Living, C Magazine, U.S. Weekly, among others. Opulent’s products have also been
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`4
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`

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`Case 2:21-cv-00313 Document 1 Filed 08/17/21 Page 5 of 34 PageID #: 5
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`featured on multiple television networks, including QVC, Bravo, Nickelodeon, HGTV, as well as
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`on programs such as the Today Show, The Real Housewives, Keeping Up with The Kardashians,
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`and Vanderpump Rules.
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`17.
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`At first serving specialty stores, boutiques, and event planners, Opulent has grown
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`into a multi-million-dollar business, shipping up to 40,000 pieces per month, and experiencing
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`sales around $3 million per year via TJX Corp., including its affiliates Home Goods, TJ Maxx,
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`and Marshalls.
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`18.
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`Opulent’s products are distributed and sold to consumers through authorized
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`retailers throughout the United States, including Texas, at point-of-sale on the Internet (e-
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`commerce platforms such as Wayfair, Houzz, Amazon, and QVC), and through its own website
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`www.opulenttreasures.com.
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`19.
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`Opulent has also been enrolled on the Amazon Brand Registry since June 2017 to
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`identify its registrations and trademark rights.
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`20.
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`Opulent has acquired trade dress rights under the Lanham Act, as well as under
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`state statutory and common law, in the overall look, design, arrangement, and appearance of its
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`cake stands and other décor items.
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`21.
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`In connection with some of its best-selling products, Opulent has used a variety of
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`legally protected trademarks on and in connection with the advertisement and sale of its products,
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`including, but not limited to, those detailed in this Complaint.
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`22.
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`Opulent owns trademarks for Opulent’s dessert table, tiered dessert stand, and
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`candelabra which are registered in the U.S. Trademark Office (Reg. Nos. 5,912,235; 4,729,340;
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`4,729,341; and 4,733,374) (collectively, “Opulent’s 3D Marks”).
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`5
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`

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`Case 2:21-cv-00313 Document 1 Filed 08/17/21 Page 6 of 34 PageID #: 6
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`23.
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` Opulent also owns a literary mark for OPULENT TREASURES® (Reg. No.
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`4,381,949).
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`24.
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` Opulent’s 3D Marks are identified and described below in Table 1, below. The
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`designs depicted below consist of non-functional design elements, are not essential to the use or
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`purpose of the products, do not affect their cost or quality, and are not the reason the products
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`work. Moreover, the ornamental aspects of the arrangement and combination of the features are
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`arbitrary and non-functional.
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`REG. NUMBER
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`TRADEMARK
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`REG. DATE
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`FIRST USE IN
`COMMERCE
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`GOODS
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`5,912,235
`(Principal Reg.)
`
`
`4,729,340
`(Supplemental
`Reg.)
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`4,729,341
`(Supplemental
`Reg.)
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`April 28, 2015 August 2006
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`April 28, 2015 August 2006
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`April 28, 2015 August 2006
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`
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`
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`
`
`IC 021:
`Dessert
`serving trays,
`tiered serving
`trays for
`domestic
`purposes;
`tiered tray
`serving
`platters
`
`IC 021:
`Dessert
`serving trays,
`tiered serving
`trays for
`domestic
`purposes;
`tiered tray
`serving
`platters
`
`IC 020:
`Tables,
`Display
`tables, tables
`for displaying
`desserts
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`6
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`

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`Case 2:21-cv-00313 Document 1 Filed 08/17/21 Page 7 of 34 PageID #: 7
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`4,733,374
`(Supplemental
`Reg.)
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`
`
`
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`May 5, 2015
`
`August 2006
`
`IC 021:
`Candle
`holders; Non-
`electric
`candelabras
`
`
`
`
`
`25.
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`Opulent is the exclusive licensee of Opulent’s Designs and Opulent’s 3D Marks.
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`The key to Opulent’s success is the high quality and reputation of its products, which are closely
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`associated by the public with Opulent’s Designs. Opulent has used Opulent’s Designs continuously
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`as the main identifier of its elegant and distinct décor pieces.
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`26.
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`Opulent has extensively and continuously promoted and used its trade dress designs
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`for years in the United States and in Texas, and as explained in more detail below, has acquired
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`trade dress rights in its famous designs. In connection with marketing and selling Opulent’s
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`Designs, Plaintiff has extensively used, displayed, and advertised the non-functional features of
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`the Opulent’s Designs that comprise the trade dresses of said designs. In the minds of the public,
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`the primary significance of these non-functional and distinctive features is to identify the source
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`of the product, and Opulent Designs have acquired secondary meaning. The distinctive and non-
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`functional features also identify that the product is reliable and of the high quality associated with
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`Opulent.
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`27.
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`Opulent’s products, depicted in Table 2 below, are Opulent’s most recognizable
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`trade dresses. For example, one of the most iconic is “Chandelier Cake Stand,” federally protected
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`by U.S. Reg. No. 5,912,235. Said Chandelier Cake Stand consists of a decorative display table
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`embodying these features: ornate paneling surrounding the circumference of the tabletop; beads
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`and crystals encircling the table and dangling from the ornate paneling; and a multi-grooved fluted
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`base. The ornate paneling with or without jewels that is part of Opulent’s chandelier design is what
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`makes Opulent’s trade dress recognizable to consumers. Customer’s associate this distinctive
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`design with Opulent’s recognized quality.
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`Chandelier Round Cake Stand
`Reg No. 5,912,235
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`Chandelier Candle Holder
`Reg No. 4,733,374
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`Chandelier Square Cake Stand
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`Chandelier Cupcake Stand
`Reg No. 4,729,340
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`28.
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`Additionally, Opulent’s Designs have become famous and a well-known indicator
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`of the origin and quality of Opulent’s décor products. As explained above, Opulent has used,
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`promoted, marketed, and made significant sales of its designs.
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`29.
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`Attached as Exhibit A is a copy of the Certificates of Registration for Opulent’s 3D
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`Marks and OPULENT TREASURES® literary mark along with a current printout of the electronic
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`status page for these registrations downloaded from the USPTO database at http://tsdr.uspto.gov.
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`30.
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`Opulent is an applicant in two applications pending on the USPTO’s Principal
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`Register for Opulent’s Chandelier Cupcake Stand and Chandelier Candle Holder, Serial Nos.
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`90830532 and 90839684, respectively.
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`31.
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`According to 15 U.S.C. §§ 1115(a) and 1057(b), Opulent’s U.S. Reg. No. 5,912,235
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`is prima facie evidence of the validity of the Opulent’s trade dress in Opulent’s Chandelier Cake
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`Stand.
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`32.
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`According to 15 U.S.C. §§ 1115(a) and 1057(b), Opulent’s Chandelier Cake Stand
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`registration is prima facie evidence of Opulent’s ownership of the Opulent trade dress.
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`33.
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`According to 15 U.S.C. §§ 1115(a) and 1057(b), Opulent Chandelier Cake Stand
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`registrations is prima facie evidence of Opulent’s exclusive right to use the Opulent trade dress in
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`the United States commerce.
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`34.
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`Together with the rights granted by Opulent’s 3D Marks, Plaintiff has strong
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`common law rights in its trade dresses (the Opulent’s Designs depicted in Illustration 1) through
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`its extensive use and promotion of them in commerce. Opulent is and has been marketing and
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`selling the Opulent’s Designs in Texas and in this District at hundreds of brick-and-mortar
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`locations in Texas and across the United States such as TJ Maxx, Home Goods, Marshalls, and
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`through e-commerce distributors. Opulent has also been diligent in protecting and enforcing
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`Opulent’s Designs.
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`35.
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`Opulent’s Designs serve as a unique source identifier for Opulent’s products.
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`Opulent prominently uses and displays its federally registered OPULENT TREASURES® Mark
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`on its décor pieces including product packaging, point-of-sale displays, and on Plaintiff’s
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`advertising, promotional materials, and website (including social media).
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`36.
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`Opulent has invested time, effort, and hundreds of thousands of dollars in marketing
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`to build the fame, reputation, and goodwill of Opulent’s Designs.
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`37.
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`Opulent’s Designs are distinctive designations of the source of origin of its
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`products.
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`38.
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`Opulent’s Designs are uniquely associated with Plaintiff and its high-quality goods.
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`These trade dresses are assets of incalculable value as symbols of Opulent, its quality of goods and
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`its goodwill. These trade dresses have acquired secondary meaning and have become famous in
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`the United States, in Texas, and in this District.
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`39.
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`Opulent’s Designs are well-known and were well-known before Defendant’s
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`infringement began.
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`40.
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`As a result of Opulent’s extensive advertising and promotional efforts and its
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`continuous use, Opulent’s Designs are distinctive and widely recognized by the relevant
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`consuming public of Texas and the United States as a designation of source of the involved goods.
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`As a result, Opulent owns federal, common law, and statutory trade dress rights in ornamental
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`design and appearances of all Opulent’s Designs.
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`DEFENDANT’S INFRINGEMENT OF OPULENT’S DESIGNS
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`41.
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`Defendant has purposefully offered for sale, sold, distributed, imported and/or re-
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`sold, advertised, marketed, or promoted, and continue to offer for sale, sells, distributes, imports
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`and/or
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`re-sells, advertises, markets, or promotes household products known as:
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`CHDLR_045_GOLD;
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`CHDLR_046_GOLD;
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`CHDLR_CAKE02_GOLD;
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`and
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`CHDLR_CAKE01_GOLD; (“the Accused Products”)2 that are confusingly similar to, and dilute,
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`Opulent’s Designs. Defendant uses Opulent’s Designs in commerce without Opulent’s
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`authorization. Furthermore, in an unsophisticated manner, Defendant has combined elements from
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`several of Opulent’s Designs or arranged Opulent’s Designs in new a configuration to conceal
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`flagrant infringement.
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`42.
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`The confusing similarity between the Opulent Designs (right) and Accused
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`Products (left) is shown, for example, in Illustration 1 below:
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`ACCUSED PRODUCTS
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`OPULENT’S DESIGNS
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`CHDLR_045_GOLD, CHDLR_045_SILV,
`CHDLR_045_054
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`Reg No.: 5,912,235
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`2 Product numbers for known color variations of the Accused Products are listed within Illustration 1.
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`ACCUSED PRODUCTS
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`OPULENT’S DESIGNS
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`CHDLR_046_GOLD, CHDLR_046_SILV,
`CHDLR_046_054
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`CHDLR_CAKE02_GOLD,
`CHDLR_CAKE02_SILV,
`CHDLR_CAKE02_054,
`CHDLR_CAKE02_WHT
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`ACCUSED PRODUCTS
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`OPULENT’S DESIGNS
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`CHDLR_CAKE01_GOLD,
`CHDLR_CAKE01_054,
`CHDLR_CAKE01_WHT
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`43.
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`According to its website(s), Defendant supplies home décor and wholesale party
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`supplies for events. Upon information and belief, Defendant, or its affiliates, imports and/or re-
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`sells the Accused Products into the United States and distributes them to retail stores across the
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`country, including to stores in the Eastern District of Texas. At such stores, the Accused Products
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`are advertised, promoted, offered for sale, and sold. Upon information and belief, customers have
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`bought the Accused Products from one or more stores to which Defendant directly or through the
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`third party distributes the Accused Products.
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`44.
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`The Accused Products also are advertised, promoted, offered for sale, sold, and
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`transported to customers across the United States, including throughout the Eastern District of
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`Texas, through the websites www.Efavormart.com and www.Tableclothsfactory.com that
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`Defendant operates. Upon information and belief, Defendant has done business with customers in,
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`and with residents of, this judicial district through its websites. For example, upon information and
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`belief, customers in this judicial district have purchased the Accused Products from
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`www.Efavormart.com and www.Tableclothsfactory.com and have had the Accused Products
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`shipped
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`to
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`this
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`judicial
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`district.
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`Furthermore,
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`www.Efavormart.com
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`and
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`www.Tableclothsfactory.com are highly interactive. For instance, the websites allow online
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`customers to create and store an online profile, purchase products (e.g., the Accused Products),
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`input personal information (e.g., name, address, and phone number), input credit card information
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`to pay for products, and chat with the Defendant’s Customer Support Center. Under the authority
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`of Defendant, the Accused Products are advertised, promoted, offered for sale, sold, and
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`transported to customers across the United States, including throughout the Eastern District of
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`Texas,
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`through
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`third-party websites
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`such
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`as www.amazon.com, www.ebay.com,
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`www.wayfair.com, www.sears.com, www.kmart.com, www.walmart.com, www.pinterest.com,
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`www.facebook.com, www.linkedin.com, www.instagram.com, www.youtube.com,
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`and
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`www.etsy.com which are also interactive websites.
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`45.
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`Defendant is not licensed to use Opulent’s Designs and have no other affiliation
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`with Opulent. Defendant is also a direct competitor with Opulent in the selling of home décor
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`pieces.
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`46.
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`Defendant’s intentional conduct is likely to cause confusion, to cause mistake, or
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`to deceive the public and the trade by causing consumers to believe that Defendant’s products
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`originate with, or relate to, Opulent’s goods, or are licensed by, sponsored or approved by,
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`connected with, or associated with Opulent.
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`47.
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`Before filing its Complaint, Opulent informed Defendant that Defendant was
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`infringing Opulent’s trademark rights and demanded that Defendant stops using Opulent Designs.
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`48.
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`Defendant refused to comply with Opulent’s demand and continued their infringing
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`activities by distributing, selling, and promoting their Accused Products. Thus, Defendant’s
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`continued use of Opulent’s Designs constitute intentional and willful infringement of Opulent’s
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`Designs.
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`49.
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`Defendant’s use of Opulent’s Designs has caused, and will continue to cause, harm
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`to Plaintiff.
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`50.
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`As discussed below, through these activities related to the Accused Products,
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`Defendant infringes Opulent’s trade dress rights, engages in unfair competition against Opulent,
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`is unjustly enriched at Opulent’s expense, and engages in misappropriation.
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`COUNT I
`(Federal Trademark Infringement Under § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1))
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`All of t