throbber
ESTTA Tracking number:
`
`Filing date:
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`ESTTA1336688
`01/28/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding No.
`
`92083415
`
`Filing Party
`
`Other Party
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`Plaintiff
`ODP LLC
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`Defendant
`Alan Poudrier
`
`Pending Motion
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`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
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`Attachments
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`Motion to Suspend CANCELLATION.pdf(109291 bytes )
`Complaintmotion1.pdf(5967077 bytes )
`Complaintmotion2.pdf(3841656 bytes )
`Complaintmotion3.pdf(4048680 bytes )
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`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, ODP
`LLC hereby requests suspension of this proceeding pending a final determination of the civil action. Trade-
`mark Rule 2.117.
`ODP LLC has secured the express consent of all other parties to this proceeding for the suspension reques-
`ted herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/jmf/
`Jeffrey M Furr
`jeffmfurr@furrlawfirm.com
`01/28/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK
`TRIAL AND APPEAL BOARD
`
`Petitioner/Counterdefendant
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`Cancellation No. 92083415
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`
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`In the Matter of Registration Number 6745183
`For the mark EZ DOOR CART
`Date registered May 31, 2022
`
`
`ODP LLC
`95 JOHNSON ST.
`WATERBURY, CONNECTICUT UNITED STATES 06710
`
`
`
`
`
`vs.
`
`Alan Poudrier
`1103 Chip Lane
`Niceville, FLORIDA UNITED STATES 32578
`
`
`
`
`UNITED STATES PATENT AND
`TRADEMARK TRIAL AND APPEAL BOARD
`PO BOX 1451
`ALEXANDRIA VA 22313-1451
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`
`
`
`
`
`Respondents/Counterclaimants
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`CONSENTED MOTION TO SUSPEND CANCELLATION
`
`
`The Parties by and through its undersigned counsel and pursuant to 37
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`C.F.R. § 2.117(a), hereby moves the Trademark Trial and Appeal Board (the “Board”) to suspend the above-
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`captioned Cancellation pending resolution of a lawsuit captioned Rack Abilities, LLC., and Alan Poudrier v.
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`EZ 4x4, LLC., Brian L. Goldwitz, Tracy Forlini, Elecor Manufacturing, LLC, Case No. C3:23-cv-24645-
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`MCR-HTC, currently pending in the UNITED STATES DISTRICT COURT FOR THE NORTHERN
`
`DISTRICT OF FLORIDA PENSACOLA DIVISION (the “Civil Action”).
`
`The Parties respectfully asserts that the Board should suspend the Cancellation until the Civil Action
`
`is resolved because the Civil Action will have a bearing on, if not definitively resolve, many of the legal and
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`factual issues presented in this Cancellation. See generally TBMP § 510.02(a) (“To the extent that a civil
`
`

`

`action in a Federal district court involves issues in common with those in a proceeding before the Board, the
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`decision of the Federal district court is often binding upon the Board, while the decision of the Board is not
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`binding upon the court.”); Daimler Chrysler Corp. v. Maydak, 86 U.S.P.Q.2d 1945, 1950 (T.T.A.B. 2008).
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`Where this is the case, “[o]rdinarily, the Board will suspend proceedings in the case before it if the final
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`determination of the other proceeding will have a bearing on the issues before the Board.” TBMP § 510.02(a);
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`see also Gen. Motors Corp. v. Cadillac Club Fashions Inc., 22 U.S.P.Q.2d 1933, 1936-37 (T.T.A.B. 1992).
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`A copy of the First Amended Complaint in the Civil Action is attached as Exhibit A.
`
`
`Accordingly, in the interests of avoiding the burden associated with maintaining two parallel
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`proceedings involving the same factual and legal issues, the Parties respectfully requests suspension of the
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`Cancellation until resolution of the Civil Action.
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`
`
`Respectfully submitted,
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`____s/jmf/________________________
`Jeffrey M. Furr
`Attorney for Petitioner/Counterclaim Defendant
`2622 Debolt Road
`
`Utica, Ohio 43080
`JeffMFurr@FurrLawFirm.com
`740-817-2381 (telephone)
`
`
`
`ACCEL IP LAW, PLLC
`
`By: /s/ Stephen D. Milbrath
`Stephen D. Milbrath (FL # 239194)*
`121 S ORANGE AVENUE
`SUITE 1521
`ORLANDO, FL 32801
`407-492-0259
`Fax: 321-355-5200
`Smilbrath@acceliplaw.com
`
`
`
`
`
`
`
`CERTIFICATE OF FILING
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`
`
`
`
`
`
`
`
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`
`
`
`
`
`
`
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`
`
` I
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`
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` hereby certify that this answer is being electronically filed with the United States Patent and Trademark Trial
`and Appeal Board on the 28th day of January 2024.
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`
`
`
`
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`
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`__/jmf/__________________________________
`Jeffrey M. Furr, Esquire
`
`

`

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`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that this paper is being deposited on the 28th day of January 2024 electronically to:
`
`
`STEPHEN D MILBRATH
`ACCEL IP LAW PLLC
`121 S ORANGE AVE STE 1521
`ORLANDO, FL 32801
`UNITED STATES
`smilbrath@acceliplaw.com, legalassistant@acceliplaw.com
`Phone: 407-492-0259
`
`
`
`
`
`
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`
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`___/jmf/_____________________________________
`Jeffrey M. Furr, Esquire
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`

`

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`
`EXHIBIT A
`EXHIBIT A
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`
`
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`

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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 1 of 82
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`UNITED STATES DISTRICT COURT FOR
`THE NORTHERN DISTRICT OF FLORIDA PENSACOLADIVISION
`
`Rack Abilities, LLC., a Florida
`Limited Liability Corporation, and
`Alan Poudrier, a Natural Person,
`
`Case No.
`
`Plaintiffs,
`
`V.
`
`EZ 4x4, LLC., a Connecticut
`Limited Liability Company, Brian L.
`Goldwitz, a natural person, Tracy
`Forlini, a natural person, Elecor
`Manufacturing, LLC, a Connecticut
`Limited Liability Company,
`
`Defendants.
`
`
`
`Complaint for Damages,
`Declaratory and Injunctive
`Relief and Jury Trial
`
`Plaintiffs, Rack Abilities, LLC., a Florida Limited Liability Company
`
`(“Plaintiff’ or “RAL”) and Alan Poudrier (“Mr. Poudrier”), sue Defendants, EZ 4x4,
`
`LLC., a Connecticut Limited Liability Company (“EZ 4x4’) Brian L. Goldwitz,
`
`(“Mr. Goldwitz”), Tracy Forlini, and Elecor Manufacturing, LLC, (“Elecor”) and
`
`allege:
`
`Jurisdiction and Parties to the Action
`
`1. This is an action for declaratory and injunctive relief and for damages
`
`arising out of the breach ofa patent license agreement, acts ofpatent and
`
`trademark infringement, and unfair competition.
`
`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 2 of 82
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`2. The Court has original jurisdiction over this action and of the parties
`
`under 28 U.S.C. §1331, § 1338 (a) and (b), and 15 U.S.C. §§1114-17,
`
`and 35 U.S.C. §271.
`
`3. The Court has supplemental jurisdiction over the substantially related
`
`claim set forth in Count V.
`
`4. Because the declaratory judgment claim involves a federal question
`
`relating to patent infringement, the Court also hasjurisdiction to adjudge
`
`the controversy under 28 U.S.C. § 2201.
`
`5. Upon information and belief, Defendants control, solicit, and conduct
`
`business in this District and Division and distribute and cause to be
`
`distributed unlicensed and infringing goods within this District and
`
`Division.
`
`6. Venue lies in this District and Division because Defendants have
`
`committed acts of infringement here and because a forum selection
`
`clause set forth in the Patent License Agreement executed bythe parties
`
`operates as a waiver of any venuerights available to Defendants under
`
`28 U.S.C. §1400(b).
`
`Accel IP Law, PLLC
`
`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 3 of 82
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`7. Plaintiff Rack Abilities, LLC, is a Florda Limited Liability Company
`
`formed and organized by Alan Poudrier, an inventor, to license and
`
`commercially exploit Mr. Poudrier’s technology, and in particular, his
`
`technology directed to after market goods for Jeeps and their owners.
`
`8. Plaintiff Alan Poudrier is a resident of Niceville, Florida, within the
`
`Northern District of Florida.
`
`9. Defendant EZ 4x4, LLC is a Connecticut Limited Liability Company
`
`which maintains an office at 95 Johnson Street, Waterbury, CT, 06710.
`
`10. Defendant EZ 4X4, LLC is, upon information and belief, owned and
`
`controlled by Brian Lee Goldwitz and Tracy Forlini.
`
`11. Defendant EZ 4X4, LLC was at times material to this action also
`
`qualified to do business in the State of Florida and registered with the
`
`Secretary of State of Florida until about September 22, 2023, whereit
`
`maintained an office at 1006 N. Lincoln Ave, Tampa, Fl. 33607.
`
`12. Defendants Brian Lee Goldwitz (Mr. Goldwitz) is an individual andis
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`currently a resident of New Haven County,Ct.
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`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 4 of 82
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`13. Defendant Tracy Forlini is, upon information and belief, an owner and
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`managerof various companies in commonwith Mr. Goldwitz, including
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`EZ 4x4, LLC and Elecor Manufacturing, LLC.
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`14. Defendant Tracy Forlini is upon information andbelief a resident of
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`New Haven County, Ct.
`
`15. Defendant Elecor Manufacturing, LLC (“Elecor”) is a Connecticut
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`Limited Liability Company, whose address, like that of EZ 4x4, is 95
`
`Johnson Street, Waterbury, CT 06710.
`
`16. Upon information and belief, Elecor claims to be in the business of
`
`manufacturing sporting and athletic goods and imports articles
`
`manufactured in China.
`
`17. Upon information and belief, EZ 4X4is in the businessofselling Jeep®
`
`related after-market products under various brand names.
`
`18. Defendants are selling to customers in this District and Division or
`
`causing othersto sell articles covered by one or moreclaimsofthe patent
`
`in suit, namely United States Patent 11,654,947, and have sold and
`
`shipped and caused to be shippedarticles covered by that patent without
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`license or legal right, namely, the E-Z 4x4 “Folding Rolling Door Cart”
`
`Accel IP Law, PLLC
`
`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 5 of 82
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`identified on the packaging as being licensed under the aforementioned
`
`patent, together with a confusing claim that the sameis also the subject
`
`of patents pending “in the United States, Canada and China.” The
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`articles so sold to customers of Defendants in this District and Division
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`include infringing articles sold via Amazon.com by Defendants or their
`
`affiliates.
`
`The Patent and TrademarkIn Suit
`
`19. On May 23, 2023, the Patent Office issued US. Patent 11,654,947 BI
`
`to Mr. Poudrier, hereinafter called the ‘947 Patent. An authentic copy of
`
`‘947 Patent is attached as Exhibit A.
`
`20. The ‘947 Patentis a continuation in part of application No. 16/537,593
`
`filed on April 11, 2019, now US Patent 11,097,759, which is a
`
`continuation in part of application No. 16/125,672, filed on September
`
`8, 2018, now USPatent 10, 376, 045, which is a continuation in part of
`
`application No. 15/962,262, filed on April 25, 2018, which application
`
`was abandoned.
`
`21. The ‘947 Patent is directed to a versatile transport rack which rests on
`
`the ground surface or rolls on castors, and which enables the storage and
`
`Accel IP Law, PLLC
`
`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 6 of 82
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`movement of removable doors from a Jeep ® or other sport utility
`
`vehicle, thereby offering the driver of such a vehicle a lightweight
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`foldable door holder with wheels suitable for holding removable doors
`
`on Jeeps or similar sport utility vehicles.
`
`22. Mr. Poudrier adopted and used in commerceas early as May 24, 2021,
`
`the trademark EZ DOOR CARTin connection with his goods and
`
`services, and obtained United States Trademark Registration No. 6,745,
`
`183, a true copy ofsuch registration being attached hereto as Exhibit B.
`
`23. On or about April 16, 2021, while certain of his patent applications
`
`werestill in prosecution, Mr. Poudrier began offering his device for sale
`
`to consumers at a vendor booth in Daytona, Fl, at an event called the
`
`“Jeep Beach” event. Mr. Poudrier used the banner depicted in the
`
`following image, wherein he promoted the device initially as a “EZ as
`
`1-2-3:”
`
`Accel IP Law, PLLC
`
`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 7 of 82
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`Store Jeep Doors
`EZ as1-2-3
`
`IVE FREE
`
`a L
`
`24. Defendants were present at the same “Jeep Beach” event attended by
`
`Mr. Poudrier and purchased two of the foldable cart units Mr. Poudrier
`
`wasselling.
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`25. Upon information and belief, Goldwitz immediately sent one of the
`
`purchased units to China to obtain a reproduction ofthe unit, as he later
`
`boasted to Mr. Poudrier.
`
`26. While he was waiting for his Chinese copy, Goldwitz and various
`
`agents of Defendants, including Forlini, began promoting Defendants’
`
`intended knock-off product for sale to prospective customers using a
`
`Accel IP Law, PLLC
`
`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 8 of 82
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`photograph of the genuine Poudrier product and promoting that genuine
`
`productas if it were the Defendants’ product — thereby engaging in the
`
`“reverse passing off’ of the genuine article of Plaintiffs as that of
`
`Defendant. An example of this improper passing off is provided in the
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`advertisement by Defendants to the “Jeep Community” appearing on the
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`following images.
`
`f} (2) EZTRUNK | Facebook
`
`
`
`
`-)
`
`> G
`
`x
`
`i+
`
`https://www.facebook.com/keepyourjunkinthetrunk
`
`responsible for this Page.
`
`Q Search Facebook
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`
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`
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`18 Like
`EZTRUNK
`SY Like Reply«20w
`A major #TBT shout outto the Jeepthat...
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`EZTRUNK
`Daniel Maxwell A new folding door holderthat's
`837 Views-2 weeks ago
`on wheels! We're taking preorders at Jeep events
`across the country! @@—We're taking preordersat Jeep events
`
`Like-Reply-20w across the country!
`© Page Transparency
`See All
`Daniel Maxwell
`POSTED 5/10/2021
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`Facebookis showing information to help you
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`post content. Like-Reply-20w
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`EZTRUNK
`EZTRUNK a division of EZ4X4is
`:
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`Daniel Maxwell It's a preorderitem at the
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`a
`
`Accel IP Law, PLLC
`
`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 9 of 82
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`
`
`Dd Donna Evans
`
`
`JeepinTheCoast, Christain Pass, MS May 2021
`
`©@2
`
`2y
`
`Reply
`Like
`3 Donna Evans
`one
`oe
`
`Facebookpost, 6/13/2021
`
`EZTRUNK, displaying RackAbilities door cart
`(Reverse Passing Off) and taking Pre Orders
`for a FOLDING DOOR HOLDER
`
`:
`e@
`Like
`Reply
`oO
`
`
`27. After Poudrier discovered the reverse passing off of his genuinearticle,
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`Goldwitz approached Poudrier about taking a license to the ‘947 Patent,
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`having taken manyorders from prospective customers whothoughtthey
`
`were buying Plaintiff’s genuinearticle.
`
`28. Bythis time, Goldwitz had threatened Poudrier by saying that he would
`
`have his patents invalidated and that Poudrier should tell his patent
`
`lawyerthat “it doesn’t matter... I’ve already sentit to China,” or words
`
`to that effect.
`
`Accel IP Law, PLLC
`
`

`

`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 10 of 82
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`29. On or about May 20,after having already adopted EZ DOOR CARTas
`
`his intended trademark, Mr. Poudrier emailed Goldwitz to let him know
`
`of the intended trademark.
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`30. Defendants expressed no concerns or objections about the intended
`
`trademark application and made noclaim ofa conflict with any alleged
`
`or possible marks of his various companies.
`
`31. Thereafter Poudrier and Goldwitz began to discuss details of a patent
`
`license under Poudrier’s patents and pending applications.
`
`32. On July 14, 2021, Poudrier agreed to the Patent License Agreement
`
`attached hereto as Exhibit C. The Licensor under the Agreementis
`
`Poudrier’s wholly owned LLC, Rack Abilities, LLC. The only Licensee
`
`mentioned by namein the Agreement is Defendant Elecor.
`
`33. The Patent License Agreement granted to Elecor what is represented to
`
`be an exclusive license to “use, develop, and exploit” U.S. Patent
`
`10,981,588 and “patent application 16/537593”. The Agreement
`
`explicitly defines “Licensed Patent”to be the referenced and issued ‘588
`
`Patent and the referenced application “16/537591” and expressly
`
`provides that “no other patent, patent application, or any other
`
`10
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 11 of 82
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`intellectual property now ownedorhereafter acquired by LICENSORis
`
`part of or otherwise included in this Agreement.” Id, §1.7. By definition
`
`this Section of the Agreement excluded the ‘947 Patent, which did not
`
`issue until May 23, 2023.
`
`34. The only defendant expressly licensed in the Patent License Agreement
`
`is Defendant Elecor.
`
`35. The Patent License Agreement also grants Rack Abilities the right to
`
`make,use andsell 240 units of the Licensed Product “each yearthat this
`
`agreementis in effect.” Id., §2.1. And it obligates Elecor to provide Rack
`
`Abilities the units so licensed at wholesale and “within 31 calendar
`
`days.”
`
`36. The Patent License Agreement hasan effective date of July 14, 2021,
`
`with a term of one-year subject to automatic renewal “every year for an
`
`additional one-year term, up to the life of the last expiring patent that
`
`formsa part of this agreement.” Id., §3.1.
`
`37. The Patent License Agreementrequires, at §4.1, a minimum annualup-
`
`front royalty payment by the Licensee of $25,000. It also requires at §4.2
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`11
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 12 of 82
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`that the Licensee submit accurate royalty reports “after the end of each
`
`calendar quarter.”
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`38. Elecor as Licensee paid the $25,000 royalty in advance and Defendant
`
`then commenced sales of the Chinese copies to consumers under various
`
`brands as a “Door Holder” and more generally as a Folding Door Holder.
`
`39. Howeverit also cameto the attention of Plaintiffs that Defendant EZ
`
`4x4, which runs an e-commerce website, had begun to offer for sale Mr.
`
`Goldwitz’s Chinese copy as the “EZ Folding Door Cart,”as illustrated
`
`in the digital copy of the webpage EZTRUNK- Jlu, Jl, Jk, Jku, Tj, Jt,
`
`2007-2022, Jeep 4x4 Accessories, Attached as Exhibit D hereto.
`
`40. Because ofthe similarity of the Defendants’ “EZ Folding Door Cart”
`
`to Plaintiffs’
`
`trademark registration EZ DOOR CART, Plaintiffs
`
`complained that the trade name used by Defendants was too similar to
`
`Plaintiffs’ marks for essentially the same goodsand services Plaintiffs
`
`were using for their product line, which Plaintiffs were selling in
`
`accordance with §2.1 of the Patent License Agreement. Defendants
`
`howevercontinuedto use a deceptively similar namefor their device, as
`
`12
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 13 of 82
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`is shown in the photograph taken on October 17, 2023, just before the
`
`filing of this complaint, referred to above as Exhibit D.
`
`41. The Patent License Agreement does not confer any right to use the EZ
`
`DOOR CART mark to promote their licensed goods, a fact Defendants
`
`completely understood since they had negotiated with Plaintiffs the right
`
`of Plaintiffs to sell their own brand of patented articles to consumers.
`
`42. Defendants’ use of a deceptively similar mark to promote the sales of
`
`their similar goods, however, was only one of many problemsPlaintiffs
`
`encountered in doing business with Mr. Goldwitz and his companies or
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`their affiliates. The royalty reports such as Exhibit E, only reported sales
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`on the basis of what Defendants were paying to their Chineseaffiliate,
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`rather than their actual direct sales to consumers or their wholesale
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`transactions with dealers. Section 4.2 of the Patent License Agreement
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`specifies that Elecor will pay “five percent of the purchase orderprice
`
`of each unit ordered or obtained.” Butit also provides that the purchase
`
`orderprice “shall not be below that price as would be reached in an arm’s
`
`length transaction between two nonaffiliated parties.” This price, in
`
`other words, cannot be the low price paid to the Chinese affiliate but
`
`13
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`Case 3:23-cv-24645-MCR-HTC Documenti Filed 10/19/23 Page 14 of 82
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`must be the price two parties would negotiate for an arm’s length deal.
`
`Defendants failed and refused to pay or negotiate such a price, even
`
`though they claimed that the wholesale price to wholesalers — people
`
`whoare dealing at arm’s length — was $210 per unit. Defendants refused
`
`to pay 5% of sales at that arms-length price, even as their volume of
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`sales steadily increased to a number that would have exceeded the
`
`minimum annual royalty payment amount. This became unacceptable to
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`Plaintiffs as Defendants’ reported sales exceeded about $500,000.
`
`Breach of Insurance Coverage Requirement
`
`43. Even more important to Plaintiffs, as the volume of Defendants’ sales
`
`increased, is that Defendants failed to accurately report their approximate
`
`annual sales of the Licensed product to their liability insurer,
`
`thereby
`
`compromising the liability protection required by §9 of the Patent License
`
`Agreement. That section requires that the Licensee (andaffiliated parties)
`
`purchase and maintain in full force and effect an “occurrence” liability
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`insurance policy insuring against product liability claims made against
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`LICENSOR or LICENSEE including any claims associated with the
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`“design, manufacture, use, sale or maintenance of the Licensed Products”
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`14
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`Case 3:23-cv-24645-MCR-HTC Documenti Filed 10/19/23 Page 15 of 82
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`and it also requires that Defendants provide certificates of insurance proving
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`the existence of the necessary insurance and showing that Plaintiffs were co-
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`insureds underthe policy. Defendants did produce somecertificates, but they
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`failed to accurately report the true sales ofDefendants, a fact which imperiled
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`the availability of insurance coverage to Plaintiffs. This was important
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`because of defendants’ sales and promotion practices, which failed to inform
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`consumersofcertain risks associated with the device as sold by Defendants,
`
`such as primitive camping events or beach and other outdoor events that
`
`occur on unlevel and unimprovedterrain to appreciate the last point, it is
`
`necessary to add detail about the actual consumeruseofthe invention in real
`
`world conditions, where consumersdo not necessarily pay close attention to
`
`safety. Plaintiffs determined that a proper use decal should be suppliedto all
`
`consumersor users of the device because EZ4x4 andvarious representatives
`
`of the company and affiliated companies were not advising consumers of
`
`safety concerns that could be presentif the consumer used the moveablecart
`
`carelessly on un-level surfaces. Plaintiffs believed that it was necessary to
`
`warm consumers with a decal against careless use of the device, such as
`
`represented below:
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 16 of 82
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`
`
`
`
`Avoid actions that might cause the
`cart to tip. Casters are intended for
`hard,level surfaces.
`Place the doors on the cart as in
`
`steps 1, 2, and 3, keeping a slight
`
`gap below the doors hinges as seen
`
`in Figure 2.
`
`Secure the doors to the cart using
`the doors’ original hinge nuts.
`
`
`
`Figure 4: It was determined that the decal shown aboveshould be securedto all door
`carts.
`
`44. Defendants declined to provide the requested decals or to renew their
`
`liability insurance policy and correct their certificate of insurance to reflect
`
`their actual sales of in excess of $500,000 to consumers and wholesalers.
`
`45. Plaintiffs demanded, through counsel, that insurance certificates at the
`
`correct sales base be obtained, as is shown,as but oneillustration, in Exhibit
`
`H hereto.
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 17 of 82
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`46. Defendants declined to update the insurance certificate to a correct amount
`
`or changetheir policies as to warning consumers of hazards associated with
`
`loading conditions in the field or beach.
`
`47. Plaintiffs informed Defendants that the Patent License Agreement would
`
`not be renewed, and the agreement would be terminated if Defendants failed
`
`to address the above-mentioned concerns. In particular, Plaintiffs sent a
`
`demandletter dated September 30, 2022, a copy of which is attached hereto
`
`as Exhibit E, providing Defendants thirty days’ notice of Plaintiffs’ intent to
`
`terminate the Patent License Agreement if the necessary corrections to the
`
`certificate of insurance were not supplied and if Defendants did not cure the
`
`breaches in the Agreement, including the improper use of a confusingly
`
`similar trademark.
`
`48. Defendants refused to rectify the problems, however. Accordingly,
`
`Plaintiffs declared the agreement terminated in the letter attached here to as
`
`Exhibit F, and dated December 9, 2022. Indeed, Defendants continue even
`
`at
`
`the present
`
`time to market their infringing knockoff by promoting
`
`hazardous uses of the knockoff product on unimproved terrain,
`
`to the
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 18 of 82
`
`potential
`
`injury
`
`of Plaintiffs’
`
`brand,
`
`as
`
`shown
`
`below (from
`
`https://eztrunk.net):
`
`Q ezdxd - Search
`© https://eztrunk.net
`
`*
`
`ff E24xa/ EZTRUNK
`
`Wi
`
`This website uses cookies.
`
`"We use cookies to analyze website traffic
`and optimize your website experience. By
`accepting our use of cookies, your data will
`be aggregatedwith all other user data.
`
`49.Thereafter, a year after the Sept 2022 letter referenced above, Defendants
`
`tendered a new $25,000 license fee, ignoring the cancellation of the License
`
`Agreement. The tendered fee was by wire transfer and Plaintiffs immediately
`
`returned the wire, declining to renew any business relationship with
`
`Defendants. The license relationship between the parties
`
`therefore
`
`terminated as of Plaintiffs’ December 9, 2022, letter, Exhibit F above.
`
`50. Upon information and belief, subsequent to the cancellation of the Patent
`
`License Agreement Defendants have continued to import into the United
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 19 of 82
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`States and have sold and continue to sell devices covered by one or claims
`
`of the ‘947 Patent and whichare sold undera trade name confusingly similar
`
`to that EZ DOOR CART.
`
`51. All conditions precedent to the filing of this complaint have occurred or
`
`been waived or excused by law.
`
`CountI: Declaratory Judgment
`
`52. This Count I is claim for declaratory judgment to determine that the Patent
`
`License Agreement has been cancelled and terminated and is no longer in
`
`force and effect, and to grant such additional and supplementalrelief as may
`
`be appropriate, including a preliminary and permanentinjunction against any
`
`continuing acts of infringement.
`
`53. Plaintiffs hereby incorporate and reallege the allegations of paragraphs 1
`
`through 51 aboveasif fully set forth herein.
`
`54. Plaintiffs’ declaratory claim arises under federal law, namely the Patent Act,
`
`and Plaintiffs’ asserted rights to relief necessarily depend uponresolution of
`
`a substantial question of federal patent law, namely, whether the Patent
`
`License Agreement remainsin effect, or it is has been terminated or canceled.
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 20 of 82
`
`55. Plaintiffs, the patent ownerand the agent for the patent owner, contendthat
`
`the Patent License Agreement was lawfully terminated for material breach.
`
`56. Defendants Elecor and the remaining defendants, whoareaffiliates of the
`
`former licensee and whoarestill selling or offering for sale certain
`
`embodiments of the patented invention, contend that the Patent License
`
`Agreementwas not lawfully terminated andthat the license remainsin effect
`
`notwithstanding the termination notice andthe refusal of Plaintiffs to renew
`
`the license upon tender of advanceroyalties.
`
`57. Plaintiffs contend that Defendants breached the License Agreementand did
`
`so in a material way andthat proper notice of the intent to terminate the
`
`license wasgiven and that the Defendants did not cure the breach.
`
`58. Plaintiffs further contend that the Patent License Agreement was not
`
`renewed, and that Plaintiffs properly declined to renew the license once the
`
`license term concluded, particularly in light of the material breach of the
`
`same.
`
`59. Plaintiffs additionally contend that the license was breached in material
`
`respects not previously disclosed, including the failure to properly report and
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 21 of 82
`
`account for royalties due Plaintiff over and above the mandatory minimum
`
`royalty amounts previously paid.
`
`60. Plaintiffs further contend that Defendants are obligated to account for and
`
`to pay for sales made of devices covered by the patents and sold through the
`
`reverse passing off conduct described above,at a time before the license was
`
`signed, and which is an obligation expressly recognized in §4.1 (a) of the
`
`Patent License Agreement.
`
`61. There is accordingly a justiciable controversy involving concrete issues
`
`between Plaintiffs and Defendants that requires an adjudication of the Court.
`
`62. All necessary parties to the dispute are before the Court.
`
`63. Accordingly,
`
`the Court should assume jurisdiction of the controversy,
`
`decide the contested issues of law and fact framed above, and declare the
`
`rights and obligations of the parties and grant such additional relief as may
`
`be appropriate.
`
`WHEREFORE,Plaintiffs demand a declaratory judgment against Defendants
`
`Elecor, EZ and Brian L. Goldwitz and Tracy Forlini declaring the rights and
`
`obligations ofthe parties hereto, and with such supplemental relief as the Court shall
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 22 of 82
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`deem just and proper, finding in particular that the Patent License Agreementis no
`
`longer in effect and was properly terminated.
`
`Count I: Infringement of The ‘947 Patent
`
`64.This CountII is a claim under 35 U.S.C. §271 for patent infringement.
`
`65. Plaintiffs hereby incorporate and reallege the allegations of paragraphs1
`
`through 51 aboveasif fully set forth herein.
`
`66. Since the termination and nonrenewal of the Patent License Agreement,if
`
`not at times before, Defendants Elecor, Goldwitz, EZ and Forlini have
`
`infringed and caused to be infringed at least independent claim one of the
`
`‘947 Patent by importing into the United States and by selling and offering
`
`for sale devices which are covered by independent claim one of the ‘947
`
`Patent, namely the device of the kind sold in this District and Division as the
`
`“EZ Folding Rolling Door Cart” and promoted as a the EZ Folding Door
`
`Cart.
`
`67. Plaintiffs have examinedthe articles sold in this District and Division as the
`
`aforementioned EZ Folding Door Cart, as shipped by Defendants through
`
`an Amazonsale to a customer within this District and Division.
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 23 of 82
`
`68. A claim chart comparing the Defendants’ article against Claim I of the ‘947
`
`patent appears below:
`
`Patent Claim 1
`
`“A rack comprising
`
`Defendants’ EZ 4x4 “Door Cart”
`
`
`
`This “rolling door cart” comprises a
`rack having rails
`for holding and
`moving removable doors
`Therolling doorcart has a center frame;
`
`coextensive
`a pair of
`is
`There
`horizontally disposed center rails (each
`having a first upper surface and an
`opposingfirst lower surface);
`
`
`
`frame having a pair of
`A center
`horizontally
`disposed
`coextensive
`center rails each having a first upper
`surface and an opposing first
`lower
`surface, the center frame also having a
`pair of vertical rails, each vertical rail
`extending upwardly from a respective
`one centerrai
`
`The center frame has a pair of vertical
`rails,
`each vertical
`rail
`extending
`upwardly from a respective one center
`rail;
`a first outer frame having a pair of
`The rolling door cart has a pair of
`coextensive first outer rails having a
`coextensive first outer rails and having
`second lower surface, such that each
`a second upper surface and an opposing
`outerrail is attached to a respective one
`second lower surface, such that each
`first outer rail is attached to a respective
`centerrail;
`one centerrail via a pairoffirst pins that
`The device hasa pair pins each ofwhich
`each pass through a respective one of
`pass through a respective oneofthefirst
`the first outer
`rail and through a
`outer rail and through a respective one
`respective one center rail with the first
`outer frame pivoting with respect to the
`center rail with the first outer frame
`pivoting with respect to the center frame
`center frame aboutthe pair of first pins
`about the pair of first pins such that the
`such that the first outer frame is capable
`first outer frame is capable of rotating
`of rotating between a first unfolded
`
`position wherein the first outer rails and first unfolded position between a
`
`
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`Case 3:23-cv-24645-MCR-HTC Document1 Filed 10/19/23 Page 24 of 82
`
`

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