Case3:l2-cv-O2585—JCS Document5 Fi3edO5/21/12 Pagel ofl
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`% A0120 Rev. 2/99
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`1'0;
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`Mai] stop 3
`Director of the U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
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`In Compliance with 35 § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court Northern District California
`on the
`I] Patents or
`1/ Trademarks:
`
`CV 12-02585 JCS
`PLAINTIFF
`TIFFANY (NJ)LLC
`
`5/18/2012
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`'
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`450 Golden Gate Avenue 16"‘ Floor San Francisco CA 94102
`DEFENDANT
`HOLLYWOOD TOO LLC, ET AL
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`DATE OF PATENT
`\ ' 0'21 5”‘
`I 807 381
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`HOLDER OF PATENT OR TRADEMARK
`***see attach complaint***
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`In the above——entitled case, the following patent(s) have been included:
`DATE INCLUDED
`INCLUDED BY
`
`D Amendment
`DATE OF PATENT
`PATENT OR
`OR TRADEMARK
`TRADEMARK NO.
`--
`
`[I Answer
`
`1] Cross Bill
`, . .
`HOLDER OF PA I ENT OR TRADEMARK
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`I] Other Pleading
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`_——— I
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`n the aboVe——entitlcd case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`Richard W. Wiekjng
`
`Gina Agustine—Rivas
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`May 21, 2012
`
`(BY) DEPUTY CLERK
`
`DATE
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`Copy 1—Upon initiation of action. mail this copy to Commissioner Copy 3—Upon termination of action, mail this copy to Commissioner
`Copy 2—Upon filing document adding patent(s), mail this copy to Commissioner Copy 4——Case file copy
`
`

`

`KENNETH E. KELLER (SBN 71450) kkeller
`:EG1NA,L
`, ANNE E.KEARNS(SBN 183336)akearns@ld<srr.c
`KRIEG, KELLER, SLOAN, REILLEY & ROMAN L ‘Pi L E
`555 Montgomery Street, 17"‘ Floor
`MM
`6,‘
`San Francisco, California 94111
`’
`’
`1 C5 2012
`Telephone:
`(415)249-8330
`F,.,,,_,,, W _W_wW
`Facsimile:
`(415) 249-8333
`cm 11
`t')15T‘Hil1§T"E3:3L}i2‘izifl
`-W M
`ruanmmaanra Dicrnim or DALI! ~ 59,;
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`Attorneys for Plaintiff Tiffany (NJ), LLC
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`THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`COMPLAINT FOR DAMAGES AND
`INJUNCTIVE RELIEF
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`V
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`TIFFANY (NI), LLC,
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`a Delaware limited liability company,
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`Plaintiff,
`
`.,v.
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`HOLLYWOOD TOO, LLC, a California
`limited liability company, and KATY
`CHAN a/k/a KATY CHEN, an individual,
`individually and jointly, d/b/a
`HOLLYWOOD T00, and FU MEI
`QING, an individual, d/b/a MJ BEAUTY
`COLLECTION, and DOES 1-10,
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`Defendants.
`
`L Ca 2 5 8 ?
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`.
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`‘
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`Q,
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`Plaintiff, Tiffany (NJ), LLC, a Delaware limited liability company (“Tiffany”) hereby sues
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`Defendants, Hollywood Too, LLC, a California limited liability company (“Hollywood Too”), and
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`Katy Chan a/k/a Katy Chen, an individual (“Chan”), individually and jointly d/b/a Hollywood T00,
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`and Fu Mei Qing, an individual (“Qing”), d/b/a MJ Beauty Collection, and Does 1 — 10 (collectively
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`“Defendants”) and alleges as follows:
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`JURISDICTION AND VENUE
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`1.
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`This is an action pursuant
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`to (i) 15 U,S.C. §§ 1114, 1116, 1121 and 1l25(a).
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`Accordingly, this Court has jurisdiction under 28 U.S.C. §§ 1331, 1332 and 1338. Venue is proper
`
`l
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`in this Court pursuant 28 U.S.C. § 1391 since the named Defendants conduct business in this
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`Judicial District.
`
`THE PARTIES
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`2.
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`Tiffany is a Delaware limited liability company, with its principal place of business in
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`the United States located at 15 Sylvan Way, Parsippany, NJ 07054. Tiffany has been engaged in the
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`business of manufacturing and distributing throughout the world,
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`including within this Judicial
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`District, high quality luxury goods under multiple world famous common law and Federally
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`registered trademarks including those identified in Paragraph 7 below. Tiffany regularly enforces its
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`intellectual property rights and authorized that this action be brought in its name.
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`3.
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`Hollywood Too, upon information and belief, is a limited liability company under the
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`laws of the State of California with its principal place of business within this Judicial District at 805
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`Grant Avenue, San Francisco, California 94108. Chan is an individual who, upon information and
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`belief resides within this Judicial District and conducts business within this Judicial District at 805
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`Grant Avenue, San Francisco, California 94108. Qing is an individual who, upon information and
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`belief resides within this Judicial District and conducts business within this Judicial District at 1035
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`Grant Avenue, San Francisco, California 94133. Upon information and belief, Chan is the moving i
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`and conscious force behind the operation of Hollywood Too. Upon information and belief, Qing is
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`l
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`the moving and conscious force behind the operation of MJ Beauty Collection. All Defendants are
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`subject to personal jurisdiction by this Court.
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`4.
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`Upon information and belief, Hollywood Too, Chan, and Qing are directly engaging
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`in the sale of counterfeit and infringing products within this Judicial District as alleged herein, and
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`Chan uses the aliases “Hollywood T00” and “Katy Chen” and Qing uses the alias “MJ Beauty
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`Supply” in connection with the operation offtheir counterfeiting business. Upon information and
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`belief, due to the identical nature of the counterfeit goods at issue, the Defendants may share a
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`common supplier for the counterfeit Tiffany branded goods they offer for sale and sell as detailed
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`herein.
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`Defendant Does 1-5 are, upon information and belief, individuals who reside and/or
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`2
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`conduct substantial business within this Judicial District.
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`Further, Does 1-5 are directly and
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`personally contributing, inducing and engaging in the sale of counterfeit products as alleged herein 1
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`as partners or suppliers to the named Defendant. Tiffany is presently unaware of the true names of
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`Does 1-5. Tiffany will amend this Complaint upon discovery of the identities of such fictitious
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`Defendants.
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`6.
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`Defendants Does 6-10 are business entities which, upon information and belief, reside
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`and\or conduct business within this Judicial District. Moreover, Does 6-10 are, upon information
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`and belief, directly engaging in the sale of counterfeit products as alleged herein as partners or
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`suppliers to the named Defendant. Tiffany is presently unaware of the true names of Docs 6-10.
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`Tiffany will amend this Complaint upon discovery of the identities of such fictitious Defendants.
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`COMMON FACTUAL ALLEGATIONS
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`7.
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`Tiffany is the owner and/or exclusive licensee of the following United States Federal
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`Trademark Registrations:
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`Registration No.
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`Registration Date
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`0,023,573
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`September 5, 1893
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`0,133,063
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`July 6, 1920
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`TIFFANY & CO.
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`1,228,189
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`February 22, 1983
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`TIFFANY
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`T & CO.
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`:" .\
`‘.‘
`:3’
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`1,228,409
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`1,669,365
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`February 22, 1983
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`December 24, 1991
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`1,804,353
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`November 16, 1993
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`&"‘-/2/‘-4’4\
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`1,807,381
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`November 30, 1993
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`(collectively the “Tiffany Marks”) which are registered in International Class 14, and are used in
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`connection with the manufacture and distribution of, among other things, high quality jewelry,
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`including bracelets, necklaces, earrings and rings.
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`8.
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`The Tiffany Marks have been used in interstate commerce to identify and distinguish
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`Tiffany’s high quality jewelry, such as bracelets, necklaces, earrings and rings, and other goods for
`3
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`an extended period of time.
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`9.
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`The Tiffany Marks have never been assigned or licensed to any of the Defendants in
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`this matter.
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`10.
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`The Tiffany Marks are symbols of Tiffany’s quality, reputation and goodwill and
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`have never been abandoned.
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`11.
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`Further, Tiffany has expended substantial time, money and other resources
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`developing, advertising and otherwise promoting the Tiffany Marks. The Tiffany Marks qualify as
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`famous marks as that term is used in 15 U.S.C. §1 125(c)(1).
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`12.
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`Tiffany has extensively used, advertised and promoted the Tiffany Marks in the
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`United States in association with the sale of high quality jewelry, such as bracelets, necklaces,
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`earrings and rings, and other goods and has carefully monitored and policed the use of the Tiffany
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`Marks.
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`13.
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`As a result of Tiffany’s efforts, members of the consuming public readily identify
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`merchandise bearing the Tiffany Marks, as being high quality merchandise sponsored and approved
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`‘ by Tiffany.
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`14.
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`Accordingly, the Tiffany Marks have achieved secondary meaning as identifiers of
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`high quality jewelry, such as bracelets, necklaces, earrings and rings, and other goods.
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`15.
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`Upon information and belief, at all times relevant hereto, the Defendants in this action
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`had full knowledge of Tiffany’s ownership of the Tiffany Marks, including its exclusive right to use
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`and license such intellectual property and the goodwill associated therewith.
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`16.
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`Tiffany has discovered the Defendants are promoting and otherwise advertising,
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`distributing, selling and/or offering for sale counterfeit products, including at least jewelry, such as
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`bracelets, necklaces, earrings and rings bearing trademarks which are exact copies of the Tiffany
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`Marks (the “Counterfeit Goods”). Specifically, upon information and belief, the Defendants are
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`using the Tiffany Marks in the same stylized fashion, for different quality goods.
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`17.
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`Upon information and belief, the Defendants’ Counterfeit Goods are of a quality
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`substantially different than that of Tiffany’s genuine goods. Despite the nature of their Counterfeit
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`Goods and the knowledge they are without authority to do so, the Defendants, upon information and
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`belief, are actively using, promoting and otherwise advertising, distributing, selling and/or offering
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`for sale substantial quantities of their Counterfeit Goods with the knowledge that such goods will be
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`mistaken for the genuine high quality products offered for sale by Tiffany. The net effect of the
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`‘ Defendants’ actions will be to result in the confusion of consumers who will believe the Defendants’
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`Counterfeit Goods are genuine goods originating from and approved by Tiffany.
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`18.
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`The Defendants advertise their Counterfeit Goods for sale to the consuming public.
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`In so advertising these products, the Defendants use the Tiffany Marks.
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`Indeed, the Defendants
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`herein misappropriated Tiffany’s advertising ideas and entire style of doing business with regard to
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`the advertisement and sale of Tiffany’s genuine products. Upon information and belief, the
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`misappropriation of Tiffany’s advertising ideas in the form of the Tiffany Marks has occurred, in
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`part, in the course of Defendants’ advertising activities and has been the proximate cause of damage
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`to Tiffany.
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`19.
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`Upon information and belief, the Defendants are conducting their counterfeiting and
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`infringing activities at least within this Judicial District and elsewhere throughout the United States.
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`As a result, the Defendants are defrauding Tiffany and the consuming public for the Defendants’
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`% own benefit. Defendants’ infringement and disparagement of Tiffany does not simply amount to the
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`3 wrong description of their goods or the failure of the goods to conform to the advertised quality or
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`performance.
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`20.
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`The Defendants’ use of the Tiffany Marks, including the promotion and advertising,
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`reproduction, distribution, sale and offering for sale of their Counterfeit Goods, is without Tiffany’s
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`consent or authorization.
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`21.
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`Further, the Defendants are engaging in the above—described illegal counterfeiting and
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`infringing activities knowingly and intentionally or with reckless disregard or willful blindness to
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`Tiffany’s rights for the purpose of trading on the goodwill and reputation of Tiffany. If the
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`Defendants’ intentional counterfeiting and infringing activities are not preliminarily and permanently
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`enjoined by this Court, Tiffany and the consuming public will continue to be damaged.
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`22.
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`The Defendants’ above identified infringing activities are likely to cause confusion,
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`deception and mistake in the minds of consumers, the public and the trade. Moreover, the
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`Defendants’ wrongful conduct is likely to create a false impression and deceive customers, the
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`public and the trade into believing there is a connection or association between Tiffany’s genuine
`1 goods and the Defendants’ Counterfeit Goods.’ ‘
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`23.
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`24.
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`Tiffany has no adequate remedy at law.
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`Tiffany is suffering irreparable injury and has suffered substantial damages as a result
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`of the Defendants’ counterfeiting and infringing activities.
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`25.
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`The injuries and damages sustained by Tiffany have been directly and proximately
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`caused by the Defendants’ wrongful reproduction, use, advertisement, promotion, offering to sell,
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`and sale of their Counterfeit Goods.
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`26.
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`Tiffany has retained the undersigned counsel to represent them in this matter and is
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`obligated to pay said counsel a reasonable fee for such representation.
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`COUNT I - TRADEMARK COUNTERFEITING AND INFRINGEMENT
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`27.
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`Tiffany hereby adopts and re—alleges the allegations set forth in Paragraphs 1 through
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`26 above.
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`28.
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`This is an action for trademark counterfeiting and infringement against the
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`Defendants based on their promotion, advertisement, distribution, sale and/or offering for sale of the
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`Counterfeit Goods bearing the Tiffany Marks.
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`29.
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`Specifically, Defendants are promoting and otherwise advertising, selling, offering
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`for sale and distributing counterfeit and infringing jewelry, such as bracelets, necklaces, earrings and
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`rings bearing the Tiffany Marks. The Defendants are continuously infringing and inducing others to
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`infringe the Tiffany Marks by using them to advertise, promote and sell counterfeit jewelry, such as
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`bracelets, necklaces, earrings and rings.
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`30.
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`Defendants’ counterfeiting and infringing activities are likely to cause and actually
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`are causing confusion, mistake and deception among members of the trade and the general
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`consuming public as to the origin and quality of Defendants’ Counterfeit Goods bearing the Tiffany
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Marks.
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`31.
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`The Defendants’ unlawful actions have caused and are continuing to cause
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`unquantifiable damages to Tiffany.
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`32.
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`Defendants’ above—described illegal actions constitute counterfeiting and
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`infringement of the Tiffany Marks in violation of Tiffany's rights under § 32 of the Lanham Act, 15
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`U.S.C. § 1114.
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`33.
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`Tiffany has suffered and will continue to suffer irreparable injury due to the above
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`described activities of the Defendants if the Defendants are not preliminarily and permanently
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`enjoined.
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`COUNT II - FALSE DESIGNATION OF ORIGIN
`PURSUANT TO § 431a) OF THE LANHAM ACT
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`34.
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`Tiffany hereby adopts and re—alleges the allegations set forth in Paragraphs 1 through
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`26 above.
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`35.
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`The Defendants’ Counterfeit Goods bearing and sold under the Tiffany Marks have
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`been widely advertised and distributed throughout the United States.
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`36.
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`The Defendants’ Counterfeit Goods bearing and sold under the Tiffany Marks are
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`virtually identical in appearance to each of Tiffany’s respective genuine goods. However, the
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`Counterfeit Goods are different and likely inferior in quality. Accordingly, the Defendants’
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`activities are likely to cause confusion in the trade and among the general public as to at least the
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`origin or sponsorship of the Counterfeit Goods-;
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`37.
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`The Defendants, upon information and belief, have used in connection with their sale
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`of Counterfeit Goods, false designations of origins and false descriptions and representations,
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`including words or other symbols and trade dress which tend to falsely describe or represent such
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`goods and have caused such goods to enter into commerce with full knowledge of the falsity of such
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`designations of origin and such descriptions and representations, all to the detriment of Tiffany.
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`38.
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`Specifically, the Defendants have authorized an infringing use of the Tiffany Marks,
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`i
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`in the Defendants’ advertisement and promotion of their counterfeit and infringing jewelry, such as
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`bracelets, necklaces, earrings and rings. The Defendants, have misrepresented to members of the
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`7 consuming public that the Counterfeit Goods being advertised and sold by them are genuine, non-
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`infringing products.
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`39.
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`The Defendants’ above-described actions are in violation of Section 43(a) of the
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`Lanham Act, 15 U.S.C. §1l25(a).
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`40.
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`Tiffany has sustained injury and damage caused by Defendants’ conduct, and absent
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`an entry of an injunction by this Court, Tiffany will continue to suffer irreparable injury to their
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`goodwill and business reputation as well as monetary damages.
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`PRAYER FOR RELIEF
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`41. WHEREFORE, Tiffany demands judgment jointly and severally against the
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`Defendants as follows:
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`a.
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`The Court enter a preliminary and permanent injunction enjoining Defendants,
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`their agents, representatives, servants, employees, and all those acting in concert or participation
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`1
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`therewith, from manufacturing or causing to be manufactured, importing, advertising or promoting,
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`distributing, selling or offering to sell their Counterfeit Goods; from infringing, counterfeiting, or
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`diluting the Tiffany Marks; from using the Tiffany Marks, or any mark or trade dress similar thereto,
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`in connection with the sale of any unauthorized goods; from using any logo, trade name or
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`trademark or trade dress which may be calculated to falsely advertise the services or products of the
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`Defendants as being sponsored by, authorized by, endorsed by, or in any way associated with
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`Tiffany; from falsely representing themselves as being connected with Tiffany, through sponsorship
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`or association, or engaging in any act which is likely to falsely cause members of the trade and/or of
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`the purchasing public to believe any goods or services of the Defendants, or in any way endorsed by,
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`approved by, and/or associated with Tiffany; from using any reproduction, counterfeit, copy, or
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`colorable imitation of the Tiffany Marks in connection with the publicity, promotion, sale, or
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`advertising of any goods sold by the Defendants, including, without limitation, jewelry, such as
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`bracelets, necklaces, earrings and rings, and other goods; from affixing, applying, annexing or using
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`in connection with the sale of any goods, a false description or representation, including words or
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`3 other symbols tending to falsely describe or represent Defendants’ goods as being those of Tiffany,
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`COMPLAINT FOR DAMAGES AND INIUNCTIVE RELIEF
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`or in any way endorsed by Tiffany and from offering such goods in commerce; and from otherwise
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`unfairly competing with Tiffany.
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`b.
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`The Defendants be required to account to and pay Tiffany for all profits and
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`damages resulting from Defendants’ trademarlgxinfringing and counterfeiting activities and that the
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`award to Tiffany be trebled, as provided for under 15 U.S.C. §11l7, or, at Tiffany’s election with
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`,
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`respect to Count I, that Tiffany be awarded statutory damages from each Defendants in the amount
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`2 of two million dollars ($2,000,000.00) per each counterfeit Tiffany Mark used and product sold, as
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`provided by 15 U.S.C. §ll17(c)(2) of the Lanham Act.
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`e.
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`d.
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`Tiffany be awarded pre-judgment interest on its respective judgment.
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`Tiffany be awarded its costs and reasonable attorneys’ fees and investigators’
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`fees associated with bringing this action.
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`e.
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`Tiffany be awarded such other and further relief as the Court may deem just
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`and proper.
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`Dated: May _/_, 2012
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`KRIEG, KELLER, SLOAN, REILLEY & ROMAN LLP
`4
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`By: W
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`NNE E. KEARNS
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`Attorneys for Plaintiff Tiffany (NJ), LLC
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`9
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`COMPLAINT FOR DAMAGES AND INIUNCTIVE RELIEF
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