complaint keep a breast foundation v rhode island novelty

8/3/2019 Complaint Keep a Breast Foundation v Rhode Island Novelty

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Case 3:11-cv-02936-H-WMC Document 1 Filed 12/16/11 Page 1 of 19


2/60Complaint; Demand for Jury Trial - 2

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2. This is an action in law and in equity for trademark infringement, dilution, injury

to business reputation, unfair competition, and deceptive trade practices arising under the

Trademark Act of 1946, 15 U.S.C. 1051 et seq. (1994) (Lanham Act); the California anti-

dilution statute, Business and Professions Code 14247 et seq.; the California unfair business

practices statute, Business and Professions Code 17200 et seq., and the common law.

3. Defendants have offered products for sale that bear confusingly similar imitations

of the Plaintiffs registered I (HEART) BOOBIES! and HEART & BREASTS trademarks.

Because Plaintiffs registered KEEP A BREAST Trademark is prominently displayed with its I

(HEART) BOOBIES! logo, the Defendants conduct has infringed and diluted the KEEP A

BREAST Trademark. Defendants products are not manufactured by, or under license by,

Plaintiff. Defendants are not connected or affiliated with, or authorized by, Plaintiff in any way.

Defendants merchandise is likely to cause confusion and to deceive consumers and the public

regarding its source and dilutes and tarnishes the distinctive quality of Plaintiffs trademarks.

4. The goodwill and reputation for quality associated with the KEEP A BREAST,

HEART & BREASTS, and I (HEART) BOOBIES! trademarks (collectively hereinafter

referred to as KAB Trademarks) are being threatened by Defendants actions. Defendants have

used confusingly similar and identical marks (the Infringing Marks) to the KAB Trademarks,

to sell competing goods to many of the same consumers served by Plaintiff. Unless Defendants

are enjoined from using the Infringing Marks, such use will cause consumer confusion and will

cause irreparable harm to Plaintiff.

5. Furthermore, in addition to adopting confusingly similar trademarks, the

Defendants have adopted the overall look and feel of products being sold bearing KAB

Trademarks. This was, upon information and belief, done to confuse the consuming public into

believing that the products being marketed and/or sold by the Defendants were actually

associated with the KAB Trademarks and/or with the Plaintiff.

6. This action seeks injunctive relief, damages, the imposition of a constructive trust

and other appropriate relief arising from Defendants willful and wrongful acts of trademark

infringement, trademark dilution, and unfair competition, among other claims.




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PARTIES

7. Plaintiff is, and at all relevant times was, a non-profit corporation organized and

existing under the law of California with its principal place of business in Carlsbad, California.

Plaintiff is the owner of the KAB Trademarks for use in connection with apparel products,

accessories, silicone bracelets, and education services, among other products and services.

8. On information and belief, Rhode Island Novelty, Inc. (RINCO) is a Rhode

Island Corporation with offices located in Cumberland, Rhode Island.

9. The true names and capacities, whether individual, corporate, associate, or

otherwise, of Defendant Does 1 through 25 inclusive (DOES), are at this time unknown to

Plaintiff, who therefore identifies such Defendants by said fictitious names. Plaintiff is informed

and believes and thereon alleges that said fictitiously named Defendants, and each of them, are

responsible for the events and happenings herein referred to, and negligently, recklessly, and/or

intentionally proximately caused the injuries and damages alleged herein to Plaintiff.

10. Plaintiff is informed and believes and thereon alleges that at all times relevant

hereto, that when referred to in the collective sense Defendants, that each Defendant was the

agent, affiliate, officer, director, manager, principal, alter-ego, and/or employee of the remaining

Defendants and was at all times acting within the scope of such agency, affiliation, alter-ego

relationship, and/or employment. Plaintiff is informed and believes and thereon alleges that at all

relevant times, each Defendant actively participated in or subsequently ratified or adopted, or

both, each and all of the acts or conduct alleged, with full knowledge of all the facts and

circumstances including, but not limited to, full knowledge of each and all of the violations of

Plaintiffs rights and the damages to Plaintiff caused thereby.

JURISDICTION

11. This action arises under the Lanham Act, 15 U.S.C. 1051, et seq.

12. This Court has subject matter jurisdiction pursuant to 15 U.S.C. 1121; and 28

U.S.C. 1331, 1338, and 1367.

13. Personal jurisdiction over the Defendants is based on the Defendants regular,

systematic, and continuous transaction of business in this jurisdiction, and/or intentionally




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infringing the Plaintiffs rights, thereby causing foreseeable injury, in this jurisdiction. KAB is

informed and believes, and on that basis alleges that Defendants have actively marketed and

advertised their products in California, including without limitation, attending trade shows in San

Diego, and Defendants maintain plans to attend trade shows in San Diego in the future. KAB is

informed and believes, and on that basis alleges, that Defendants have transacted and continue to

transact substantial sales in California and have extensive California-based clientele.

14. Plaintiffs causes of action against Defendants arise directly out of Defendants

intentional infringement and commercial activities in the Southern District of California.

VENUE

15. Venue is proper in this court under 28 U.S.C. 1391(b) because the wrongful

conduct complained of herein occurred within this judicial district in that Defendants

purposefully engaged in and directed activities at this forum, including willfully infringing

Plaintiffs trademark with knowledge that Plaintiffs principal place of business is in Southern

California.

16. Defendants regularly market, advertise, sell, and ship competitive products to

consumers and businesses in the Southern District of California.

FACTUAL BACKGROUND

17. Plaintiff, The Keep a Breast Foundation, Inc., (KAB) is a well-recognized non-

profit foundation organized in 2004 to raise breast cancer awareness and to promote its detection,

prevention, and treatment. KABs mission is to help eradicate breast cancer by exposing young

people to methods of prevention, early detection and support. Through art events, educational

programs and fundraising efforts, [KAB] seeks to increase breast cancer awareness among young

people so they are better equipped to make choices and develop habits that will benefit their

long-term health and well-being.Keep a Breast Mission Statement; available at

http://www.keep-a-breast.org/about/.

18. KABs story began more than ten years ago when Shaney Jo Darden and Mona

Mukherjea-Gehrig were deeply affected by a young friends breast cancer diagnosis. Ms.

Darden and Ms. Mukherjea-Geherig recognized a need to increase breast cancer awareness




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among a generation that, due to its youth, had generally been ignored by traditional breast cancer

awareness and prevention campaigns. Accordingly, they created KAB as a youth-based, breast

cancer prevention, education and support organization.

19. KAB disseminates breast cancer-related educational materials through channels

frequently used by mainstream media in an effort to increase awareness among young people.

These distribution channels include popular music festivals, art events, and popular retailers. The

critical component of the KABs success is its ability to create and disseminate programming

that resonates with young people.

20. KABs I LOVE BOOBIES! campaign has become its most successful to date.

KAB launched a line of I LOVE BOOBIES! and I (HEART) BOOBIES! - branded apparel

and accessories in order to provide youths with a tool to engage in positive communication about

breast cancer by removing the taboo. Every consumer of a product branded with the I LOVE

BOOBIES! and I (HEART) BOOBIES! trademarks becomes an individual ambassador for

KAB by raising awareness for the cause and further eroding the stigma traditionally associated

with breast cancer. KABs silicone bracelets have become the single most successful item KAB

sells (see below).

21. In recognition of its ground-breaking approach in the fight against breast cancer,

KAB and its Executive Director, Shaney Jo Darden, have been honored with numerous awards.

These awards include the MySpace Impact Award for Health and Safety, TNT networks

Dramatic Difference Award, the Yoplait Champion Award, and the 2011 SIMA (Surf Industry

Manufacturers Association) Humanitarian of the Year Award.




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22. KAB owns federal trademark registrations for KEEP A BREAST (Reg. No.

3148275); the HEART & BREASTS design (Reg. No. 3870574); the I (HEART) BOOBIES!

stylized trademarks (Reg. Nos. 4034885, 3940877, 3940876, 3940875, ); and additional

applications for I LOVE BOOBIES, HEART & BREASTS, and I (HEART) BOOBIES! stylized

designs (collectively referred to as KAB Trademarks). Exhibit A is as detailed summary of the

KAB Trademarks.

23. The United States Patent and Trademark Office (USPTO) registered the KEEP

A BREAST Trademark on September 26, 2006 for use with educational services, namely,

conducting seminars, art exhibitions, and workshops in the field of breast cancer awareness,

causes, research and treatment; and entertainment services namely, live musical performances by

a musical band. A true and correct copy of the Certificate of Registration for the KEEP A

BREAST trademark is attached hereto as Exhibit B.

24. The USPTO registered the HEART & BREASTS Trademark on November 2,

2010 for use with educational services, namely, conducting seminars, art exhibitions, and

workshops in the field of breast cancer awareness, causes, research and treatment; and

entertainment services, namely, live musical performances to promote breast cancer awareness,

causes, research and treatment. A true and correct copy of the Certificate of Registration for the

HEART & BREASTS trademark is attached hereto as Exhibit C.

25. The USPTO registered the I (HEART) BOOBIES! Trademark on October 4,

2011 for use with Bracelets. A true and correct copy of the Certificate of Registration for the I

(HEART) BOOBIES! trademark is attached hereto as Exhibit D.

26. The USPTO registered the I (HEART) BOOBIES! Trademark on January 18,

2011 for use with License plate frames. A true and correct copy of the Certificate of

Registration for the I (HEART) BOOBIES! trademark is attached hereto as Exhibit E.

27. The USPTO registered the I (HEART) BOOBIES! Trademark on April 5, 2011

for use with Educational services, namely, conducting seminars, art exhibitions, and workshops

in the field of breast cancer awareness, causes, research and treatment; and entertainment

services, namely, live musical performances to promote breast cancer awareness, causes,




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research and treatment. A true and correct copy of the Certificate of Registration for the I

(HEART) BOOBIES! trademark is attached hereto as Exhibit F.

28. The USPTO registered the I (HEART) BOOBIES! Trademark on April 5, 2011

for use with Charitable fundraising services. A true and correct copy of the Certificate of

Registration for the I (HEART) BOOBIES! trademark is attached hereto as Exhibit G.

29. The USPTO registered the I (HEART) BOOBIES! Trademark on December 13,

2011 for use with Belts; Socks. A true and correct copy of the Certificate of Registration for

the I (HEART) BOOBIES! trademark is attached hereto as Exhibit H.

30. The USPTO has issued notices of allowance (NOAs) for several of Plaintiffs I

(HEART) BOOBIES! and HEART & BREASTS applications. Being the final phase in the

registration process, once the Plaintiff supplies the USPTO with formal statements affirming use

in commerce, the applications will mature to registration. The NOAs are attached hereto as

Exhibit I.

31. Goods bearing the KAB Trademarks are sold at retail locations throughout the

United States as well as through Plaintiffs web site. Advertisements displaying KAB

Trademarks have appeared on popular television and cable channels, in popular national

newspapers and magazines, and in a wide variety of alternative forms of media including without

limitation websites, blogs, and social networking platforms.

32. Notwithstanding Plaintiffs established rights both in the registered and pending

KAB Trademarks, Defendants adopted and used the confusingly similar Infringing Marks.

33. On information and belief, Plaintiff hereon alleges that at least prior to October

12, 2011, Defendants were promoting, advertising, offering for sale and selling silicone bracelets

bearing the slogan, I (HEART) BOOBIES. These products were promoted on the Defendants

web site.

34. On information and belief, Plaintiff hereon alleges that at least prior to October 7,

2011, Defendants were promoting and advertising its goods and services using a design

confusingly similar to Plaintiffs I (HEART) BOOBIES! trademark.

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35. On October 7, 2011, via its general information e-mail, a member of the public

contacted Plaintiff, alerting KAB that RINCO was selling bracelets bearing Plaintiffs trademark.

36. On October 12, 2011, counsel for KAB, Gary Sirota, initiated a telephone call to

Defendants. Mr. Sirota spoke with a Jim Connor, of RINCO, and informed him that RINCOs

activities; specifically, its sale of silicone bracelets bearing the confusing I (HEART) BOOBIES

logo, infringed the KAB Trademarks. Mr. Sirota demanded that RINCO immediately cease its

illegal activities, including making any reference to the Infringing Marks on RINCOs website.

Mr. Sirota further required that RINCO provide an accounting such that the parties could resolve

the infringement violations without resort to judicial intervention. During this same phone call,

Mr. Connor agreed on behalf of RINCO, to immediately cease any infringing activities, delete

any reference to the Infringing Marks on the RINCO website, to provide Mr. Sirota with an

accounting reflecting infringing goods sold and those remaining in inventory, and to provide Mr.

Sirota with information identifying the foreign manufacturer of the infringing goods. Mr.

Connor also expressed RINCOs potential interest in procuring a license from KAB. That same

day, Mr. Sirota sent two e-mails to Mr. Connor to confirm the contents of the foregoing

conversation.

37. KAB is informed and believes, and on that basis alleges that at some point

between October 12, 2011 and October 24, 2011, RINCO deleted its online listing for goods

bearing the Infringing Marks. However despite committing to cease and desist from further

infringement, during this time period, RINCO continued to fulfill orders made for goods bea ring

the Infringing Marks.

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38. On October 14, 2011, Michelle Wenner, KABs CFO, placed an order with

RINCO for silicone bracelets bearing the Infringing Marks. On or about October 24, 2011, Ms.

Wenner received a package of twenty-four (24) bracelets bearing the Infringing Marks from

RINCO (see below).

39. On October 24, 2011, Mr. Sirota again contacted RINCO, informing Mr. Connor

via e-mail that KAB was in possession of evidence proving RINCO continued to sell infringing

goods (Ms. Wenners purchase), and demanding the accounting to which Mr. Connor had

previously committed.

40. On October 25, 2011, Mr. Connor replied on behalf of RINCO, claiming that he

had not received Mr. Sirotas confirming emails of October 12, 2011, and explained that Ms.

Wenners purchase of goods bearing the Infringing Marks could have been the result of a lag in

the system between removing the goods online and physical fulfillment. Mr. Connor noted that

more information would be provided the following day.

41. On October 26, 2011, Mr. Connor informed Mr. Sirota that RINCO had 720 units

on order. Mr. Connor did not provide any additional details regarding RINCOs accounting or

continued plans to abandon use of the Infringing Marks.

42. On October 27, 2011, Mr. Sirota informed Mr. Connor that the figure of 720 units

on order was insufficient to provide a proper accounting. This is because RINCOs infringing

product was packaged in a canister with twenty-four (24) bracelets each. Mr. Connors

statement of 720 units on order did not state whether it referred to 720 bracelets or 720

canisters (17,280 total). Accordingly, Mr. Connors statement did not provide Plaintiff with the




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accounting necessary to understand the extent of RINCOs infringement. Mr. Sirota requested a

more detailed accounting, and informed Mr. Connor that RINCOs failure to do so would compel

Plaintiff to file suit.

43. On or about October 29, 2011, Plaintiff was made aware that RINCOs infringing

goods were being resold at the Louisiana State Fair, in Shreveport, Louisiana.

44. On October 31, 2011, Mr. Sirota notified Mr. Connor that RINCOs infringing

goods continued to be discovered in the marketplace. Mr. Sirota provided Mr. Connor with a

picture of RINCOs products on sale at the Louisiana State Fair. Mr. Sirota again informed

RINCO that its failure to adequately respond and address Plaintiffs injuries would compel

Plaintiff to file suit.

45. Since Mr. Connors October 27, 2011 e-mail, RINCO has not provided KAB or

its counsel any additional information regarding an accounting, or its efforts to redress Plaintiffs

injuries.

46. On information and belief, Plaintiff thereon alleges that despite Defendants

repeated commitments to cease the sale of any infringing products, Defendants continued to sell

infringing merchandise.

47. On information and belief, these activities and sales have caused actual confusion

in the marketplace.

48. On information and belief, Defendants have realized substantial profits from the

sale of the products bearing the Infringing Marks.

FIRST CAUSE OF ACTION

FEDERAL TRADEMARK INFRINGEMENT (15 U.S.C. 1114)

AS AGAINST ALL DEFENDANTS

49. Plaintiff re-alleges the paragraphs set forth above and incorporates them here by

reference.

50. Plaintiff is the owner of the KAB Trademarks.

51. Plaintiffs KAB Trademarks have, through continuous and substantial use

throughout the United States and elsewhere, become synonymous and associated with the KEEP




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A BREAST brand and Plaintiff. Those unregistered KAB Trademarks have developed secondary

meaning over time, are valuable, and are the source of substantial goodwill in the marketplace.

52. Plaintiffs KAB Trademarks have become, through widespread and favorable

public acceptance and recognition, an asset of substantial value, associated with quality products

and the trademark owners goodwill. The consuming public recognizes the KAB Trademarks

and associates them with Plaintiff.

53. The registered KAB Trademarks are valid and inherently distinctive and have

developed secondary meaning as applied to goods and services that bear the said marks.

54. The unregistered KAB Trademarks are inherently distinctive, have developed

secondary meaning and will likely mature to valid registrations as applied to goods and services

that bear the said marks.

55. Notwithstanding the Plaintiffs established rights in the KAB Trademarks,

Defendants adopted and used the confusingly similar Infringing Marksnamely I (HEART)

BOOBIESin interstate commerce in connection with the sale and offering for sale of silicone

bracelets together with marks confusingly similar to those owned by Plaintiff.

56. Plaintiffs use of the KAB Trademarks has priority of use over the Defendants

use of the Infringing Marks.

57. Defendants products are sold to similar consumers as those to whom Plaintiff

sells products bearing the KAB Trademarks.

58. Without consent, Defendants have used the Infringing Marks, together with marks

identical and confusingly similar to KAB Trademarks, in connection with the sale, offering for

sale, distribution or advertising of its goods.

59. Defendants have engaged in their infringing activity despite having constructive

notice of federal registration rights under 15 U.S.C. 1072 and, upon information and belief,

despite having actual knowledge of the Plaintiffs Trademarks.

60. Defendants actions have likely led and are likely to lead the public to conclude,

incorrectly, that its goods originate with or are authorized by Plaintiff, which will damage

Plaintiff and the public.




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61. Upon information and belief, Defendants have advertised and offered its goods

for sale using the Infringing Marks with the intention of misleading, deceiving, or confusing

consumers as to the origin of its goods and of trading on the Plaintiffs reputation and goodwill.

62. Plaintiff has expressly and repeatedly requested that Defendants cease and desist

from the infringing conduct but Defendants have failed to comply.

63. Defendants unauthorized use of the Infringing Marks in interstate commerce as

described above constitutes trademark infringement under 15 U.S.C. 1114(a) and is likely to

cause consumer confusion, mistake, or deception.

64. As a direct and proximate result of Defendants trademark infringement, Plaintiff

has suffered, and will continue to suffer, loss of income, revenues, and goodwill. Furthermore,

Defendants have unfairly acquired, and will continue to unfairly acquire income, profits, and

goodwill.

65. Defendants acts of infringement will cause further irreparable injury to Plaintiff

if Defendants are not restrained by this Court from further violation of Plaintiffs rights. Plaintiff

has no adequate remedy at law.

SECOND CAUSE OF ACTION

FEDERAL TRADEMARK DILUTION (15 U.S.C 1125(c))



reference.

67. As its second ground for relief, Plaintiff hereby alleges that Defendants have

violated Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c).

68. Plaintiffs KAB Trademarks have become distinctive and famous as a result of

many years of nationwide use and promotion by Plaintiff.

69. Defendants first use of the Infringing Marks occurred many years after the KAB

Trademarks had become famous.

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70. Defendants unauthorized use of the Infringing Marks in interstate commerce in

the sale, advertising and promotion of its goods dilutes the distinctiveness, strength and value of

the KAB Trademarks.

71. Defendants unauthorized use of Infringing Marks, as alleged herein, with

knowledge of Plaintiffs famous KAB Trademarks constitutes willful intent to cause dilution of

the famous marks in violation of Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c).

72. Without injunctive relief, Plaintiff has no means by which to control the

continuing dilution of its trademarks distinctiveness. Plaintiff has been and will continue to

suffer irreparable injury for which no adequate remedy exists at law.

THIRD CAUSE OF ACTION

UNFAIR COMPETITION UNDER THE LANHAM ACT (15 U.S.C. 1125(a))



reference.

74. Defendants unauthorized marketing and sale of products in interstate commerce

using the Infringing Marks and marks confusingly similar to the KAB Trademarks, together with

other product design elements, constitutes a use of a false designation of origin or false

representation that wrongfully and falsely designates Defendants products as originating from or

connected with Plaintiff, and constitutes the use of false descriptions or representations in

interstate commerce.

75. Defendants actions constitute federal unfair competition and violate 15 U.S.C.

1125(a).

76. As a direct and proximate result of Defendants unfair competition, Plaintiff has

suffered and will continue to suffer loss of income, profits, and goodwill meanwhile Defendants

have and will continue to unfairly acquire income, profits, and goodwill.

77. Defendants acts of unfair competition will cause further irreparable injury to

Plaintiff if Defendants are not restrained by this Court from further violation of Plaintiffs rights.

Plaintiff has no adequate remedy at law.




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FOURTH CAUSE OF ACTION

TRADEMARK DILUTION UNDER CALIFORNIA LAW



reference.

79. Plaintiff hereby alleges Defendants have violated Californias anti-dilution law

under California Business & Professions Code 14247 et seq.

80. Plaintiffs KAB Trademarks have become distinctive and famous as a result of

many years of continuous and widespread use in California as a designation of the source of

Plaintiffs goods and services. Association arising from the similarity between Defendants

Infringing Marks and Plaintiffs famous KAB Trademarks is likely to impair the distinctiveness

and harm the reputation of the KAB Trademarks.

81. Defendants first use of the Infringing Marks in California occurred many years

after the KAB Trademarks had become famous in California.

82. Defendants unauthorized use of the Infringing Marks in California in the sale,

advertising, and promotion of their goods dilutes the distinctiveness, strength and value of the

KAB Trademarks.

83. Defendants unauthorized use of the Infringing Marks, as alleged herein, with

knowledge of Plaintiffs famous KAB Trademarks constitutes willful intent to cause dilution of

the famous marks in violation of California Business and Professions Code 14247 et seq.

84. Without injunctive relief, Plaintiff has no means by which to control the

continuing dilution of its trademarks distinctiveness. Plaintiff has been and will continue to

suffer irreparable injury for which no adequate remedy exists at law.

FIFTH CAUSE OF ACTION

CALIFORNIA UNFAIR COMPETITION VIOLATIONS



reference.




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86. Upon information and belief, Plaintiffs allege that the wrongful acts of the

Defendants and each of them constitute unfair competition under state law, including without

limitation, California Business & Professions Code 17200 et seq.

87. Upon information and belief, Plaintiff alleges that Defendants intentional acts of

trademark infringement are unlawful, deceptive, and/or unfair business acts and/or practices that

constitute unfair competition under California state law.

88. Defendants acts are likely to deceive the public in that it misleads the public into

thinking that there is an affiliation between Plaintiff and the Defendants, and/or that Plaintiff

endorses the Defendants products and/or business practices.

89. As a direct, proximate, and foreseeable result of Defendants wrongful conduct, as

alleged above, numerous members of the public purchased products without realizing that

products bearing the Infringing Marks were not affiliated with Plaintiff.

90. Plaintiff is entitled to relief, including full restitution and/or disgorgement of all

revenues, earnings, profits, compensation, and benefits that may have been obtained by

Defendants as a result of such business acts or practices.

91. Plaintiff is informed and believes and thereon alleges that Defendants improper

and unlawful acts as alleged herein constitute unfair, deceptive, untrue, and misleading

advertising.

92. By reason of the conduct alleged herein, Defendants are guilty of malice,

oppression, and willful disregard of the rights of Plaintiff.

93. Defendants unlawful, unfair, deceptive, and fraudulent business practices and

unfair, deceptive, untrue, and misleading advertising constitute despicable, outrageous,

oppressive, and malicious conduct under California Civil Code 3294 and justify an award of

exemplary and punitive damages against Defendants.

94. As a direct and proximate cause of Defendants wrongful conduct, Plaintiff has

sustained and will sustain injury to its business and property in an amount not yet precisely

ascertainable, but which includes the loss of sales, diminution in value of its trademarks, and loss

of reputation and goodwill.




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SIXTH CAUSE OF ACTION

UNJUST ENRICHMENT



reference.

96. By engaging in the conduct described in this Complaint, Defendants have been

unjustly enriched by their sale of apparel and accessories bearing marks identical to, or

confusingly similar with, Plaintiffs KAB Trademarks, inducing consumers to purchase

Defendants products.

97. As a proximate result of Defendants unlawful, fraudulent, and unfair conduct,

Defendants have obtained revenues by which they became unjustly enriched at Plaintiffs

expense. Under the circumstances alleged herein, it would be unfair and inequitable for

Defendants to retain any income, profits or goodwill they have unjustly obtained at the expense

of Plaintiff.

98. Accordingly, Plaintiff seeks an order establishing Defendants as constructive

trustees of the profits that served to unjustly enrich them, together with interest during the period

which Defendants have retained such funds, and requiring Defendants to disgorge those funds to

Plaintiff.

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REQUEST FOR RELIEF

WHEREFORE, Plaintiff requests this court:

1. Enter judgment in favor of Plaintiff on all causes of action;

2. Permanently enjoin and restrain Defendants and their officers, agents,

representatives, employees, attorneys, successors, assigns, affiliates and any persons in active

concert or participation with any of them, from infringing the KAB Trademarks, including the I

LOVE BOOBIES logo; the I (HEART) BOOBIES! Trademark; and the HEART &

BRESTS Trademark;

3. Order Defendants to file with the Court and serve on Plaintiff, within thirty days

after issuance, an injunction a report in writing and under oath setting forth in detail the manner

and form in which Defendants have complied with the injunction, pursuant to 15 U.S.C. 1116;

4. Order Defendants to account to Plaintiff for, and disgorge to Plaintiff, all profits

they have derived as a result of the unlawful acts complained of above;

5. Award Plaintiff actual damages sustained by Defendants trademark infringement

trebled under 15 U.S.C. 1117, in an amount to be proved at trial;

6. Find this case to be exceptional and award Plaintiff its attorneys fees pursuant to

15 U.S.C. 1117;

7. Award Plaintiff additional actual damages and Defendants profits in an amount

to be proven at time of trial;

8. Award Plaintiff additional punitive damages as authorized by law;

9. Award Plaintiff costs and prejudgment interest on all damages;

10. Award Plaintiff its attorneys fees;

11. Award Plaintiff such other and further relief as the court deems appropriate; and

///

///

///

///

///




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12. Order that Defendants are jointly and severally liable for all damages awarded.

Dated: December 16, 2011 COAST LAW GROUP, LLP

By: s/ David A. Peck DAVID A. PECK, ESQ.Attorneys for PlaintiffTHE KEEP A BREAST FOUNDATIONEmail: [email protected]




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DEMAND FOR JURY TRIAL

Plaintiff, The Keep a Breast Foundation hereby demands trial of this matter by jury.

Dated: December 16, 2011 COAST LAW GROUP, LLP

By: s/ David A. Peck

DAVID A. PECK, ESQ.Attorneys for PlaintiffTHE KEEP A BREAST FOUNDATIONEmail: [email protected]



20/60Exhibit A - 1

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Exhibit A

Detailed Summary of the KAB Trademarks.

Case 3:11-cv-02936-H-WMC Document 1-2 Filed 12/16/11 Page 1 of 41


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Keep a Breast Trademark Portfolio

Summary of Trademark PortfolioMark Owner: Keep a Breast Foundation, Inc.

Registered Marks

Mark SerialNumber

Goods and Services Date Filed Status Reg. No.

HEART & BREASTS

85002400

Educational services, namely, conductingseminars, art exhibitions, and workshops in

the field of breast cancer awareness,causes, research and treatment; and

entertainment services, namely, live musicalperformances to promote breast cancer

awareness, causes, research andtreatment.

March 30, 2010Registered

November 2,2010

3870574

KEEP A BREAST 78712642



entertainment services namely, live musicalperformances by a musical band.

September 14,2005

RegisteredSeptember26, 2006

3148275

I (HEART) BOOBIES!

85108728 License plate frames. August 16, 2010Registered

April 5, 20113940877

I (HEART) BOOBIES!

85255611 Bracelets March 2, 2011RegisteredOctober 4,

20114034885

I (HEART) BOOBIES!

85108717 Charitable fundraising services. August 16, 2010Registered

April 5, 20113940875



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I (HEART) BOOBIES!

85108727



entertainment services, namely, live musicalperformances to promote breast cancer

awareness, causes, research andtreatment.

August 16, 2010Registered

April 5, 20113940876

I (HEART) BOOBIES!

885975287 Belts, Socks August 16, 2010RegisteredDecember13, 2011

4072063



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Allowed Marks

Mark SerialNumber


I (HEART) BOOBIES!

85108721 Backpacks; Purses; Tote bags August 16, 2010

Published forOppositionJanuary 18,

2011Notice of

AllowanceIssued March

15, 2011

N/A

I (HEART) BOOBIES!

85108718

(Based on Use in Commerce) Publications,namely, brochures, booklets, and teaching

materials in the field of breast cancerawareness and prevention; Stickers; (Based

on Intent to Use) Blank journals; Erasers;Magazines featuring breast cancerawareness and prevention; Pencils;

Personal organizers.

August 16, 2010


2011Notice of


15, 2011

N/A

I (HEART) BOOBIES!

85101058 Sunglasses August 5, 2010


2011Notice of


15, 2011

N/A



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HEART & BREASTS

85002398

(Based on Use in Commerce) Footwear;Hats; Hooded sweat shirts; T-shirts; Tanktops; (Based on Intent to Use) Beanies;Belts; Caps; Coats; Dresses; Gloves;

Jackets; Jerseys; Pajamas; Pants; Scarves;Shirts; Shorts; Skirts; Socks; Sun visors;

Sweat pants; Sweaters; Swimsuits;Underwear; Wraps; Wristbands.

March 30, 2010

Published forOppositionAugust 17,

2010Notice of

AllowanceIssued

October 12,2010

N/A

HEART & BREASTS

85002395

(Based on Use in Commerce) Tote bags;(Based on Intent to Use) All purpose sportbags; Backpacks; Book bags; Handbags;

Luggage; Purses; Wallets.

March 30, 2010


2010Notice of

AllowanceIssued

October 12,2010

N/A

HEART & BREASTS

85002391

(Based on Use in Commerce) Bracelets;Necklaces; (Based on Intent to Use)

Earrings; Jewelry, namely, anklets; Rings;Watches.

March 30, 2010


2010Notice of

AllowanceIssued

October 12,

2010

N/A



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KEEP A BREAST 77769453

Based on Use in Commerce) Bracelets;Earrings; Necklaces (Based on Intent toUse) Jewelry, namely, anklets; Rings;

Watches.

(Based on Use in Commerce) Book bags;Purses; Wallets (Based on Intent to Use) All

purpose sport bags; Backpacks; Handbags;Luggage.

(Based on Use in Commerce) Beanies;Caps; Dresses; Footwear; Hats; Hooded

sweat shirts; Scarves; T-shirts; Tank tops;Wristbands (Based on Intent to Use) Belts;Coats; Gloves; Jackets; Jerseys; Pajamas;

Pants; Shirts; Shorts; Skirts; Socks; Sunvisors; Sweat pants; Sweaters; Swimsuits;

Underwear; Wraps.

June 26, 2009

Published forOppositionNovember

17, 2009Notice of

AllowanceIssued

February 9,2010

N/A

I (HEART)BOOBIES!

85108764

(Based on Use in Commerce) Hats; Hoodedsweat shirts; T-shirts; (Based on Intent toUse) Bandanas; Bras; Jackets; Scarves;

Shoes; Sweatbands; Underwear.

August 16, 2010

Published forOpposition

February 15,2011

Notice of

AllowanceIssued April

12, 2011

N/A



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I (HEART) BOOBIES

85108752(Based on Use in Commerce) Bracelets;

Key chains as jewelry; Necklaces; (Basedon Intent to Use) Watches

August 16, 2010

PublishedJanuary 18,

2011Notice of


15, 2011

N/A



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Pending Marks

Mark SerialNumber


I LOVE BOOBIES 85212335Bandanas; Belts; Bras; Hats; Hooded

sweatshirts; Jackets; Scarves; Shoes; Socks;Sweatbands; T-shirts; Underwear.

January 6,2011

UnderExamination

N/A

I LOVE BOOBIES 85212317 BraceletsJanuary 6,

2011Under

Examination N/A



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Exhibit B

USPTO Registration Certificate

KEEP A BREAST

International Class 41



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Exhibit C


HEART & BREASTS




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Exhibit D


I (HEART) BOOBIES!




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Exhibit E


I (HEART) BOOBIES!




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Exhibit F


I (HEART) BOOBIES!




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Exhibit G


I (HEART) BOOBIES!




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Exhibit H


I (HEART) BOOBIES!




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Exhibit I

USPTO Notices of Allowance (NOAs)



43/60

From: [email protected]

Sent: Tuesday, March 15, 2011 00:10 AM

To: [email protected]

Subject: Trademark Serial Number 85108721: Official USPTO Notice of Allowance

NOTICE OF ALLOWANCE (NOA)

ISSUE DATE: Mar 15, 2011

Serial Number: 85-108,721Mark: I BOOBIES!(STYLIZED/DESIGN)Attorney Reference Number:

No opposition was filed for this published application. The issue date of this NOA establishes the due date for thefiling of a Statement of Use (SOU) or a Request for Extension of Time to file a Statement of Use (Extension Request).WARNING: An SOU that meets all legal requirements must be filed before a registration certificate can issue. Please

read below for important information regarding the applicant's pending six (6) month deadline.

SIX (6)-MONTH DEADLINE: Applicant has six (6) MONTHS from the NOA issue date to file either:

- An SOU, if the applicant is using the mark in commerce (required even if the applicant was using the mark at the time of

filing the application, if use basis was not specified originally); OR

- An Extension Request, if the applicant is not yet using the mark in commerce. If an Extension Request is filed, a newrequest must be filed every six (6) months until the SOU is filed. The applicant may file a total of five (5) extensionrequests. WARNING: An SOU may not be filed more than thirty-six (36) months from when the NOA issued. The deadline

for filing is always calculated from the issue date of the NOA.

How to file SOU and/or Extension Request:Use the Trademark Electronic Application System (TEAS). Do NOT reply to this e-mail, as e-mailed filings will NOT beprocessed. Both the SOU and Extension Request have many legal requirements, including fees and verified statements;therefore, please use the USPTO forms available online at http://www.uspto.gov/teas/index.html (under the "INTENT-TO-USE(ITU) FORMS" category) to avoid the possible omission of required information. If you have questions about this notice, please

contact the Trademark Assistance Center at 1-800-786-9199.

For information on how to (1) divide an application; (2) delete goods/services (or entire class) with a Section 1(b) basis; or (3)

change filing basis, see http://www.uspto.gov/trademarks/basics/MoreInfo_SOU_EXT.jsp.

FAILURE TO FILE A REQUIRED DOCUMENT OUTLINED ABOVE DURING THE APPROPRIATE TIME PERIOD WILL

RESULT IN THE ABANDONMENT OF THIS APPLICATION.

REVIEW APPLICATION INFORMATION FOR ACCURACY

If you believe this NOA should not have issued or correction of the information shown below is needed, you must submit arequest to the Intent-to-Use Unit. Please use the "Post-Publication Amendment" form under the "POST-PUBLICATION/POST



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NOTICE OF ALLOWANCE (NOA) FORMS" category, available at http://www.uspto.gov/teas/index.html. Do NOT reply to this

e-mail, as e-mailed filings will NOT be processed.

Serial Number: 85-108,721

Mark: I BOOBIES!(STYLIZED/DESIGN)

Attorney Reference Number:

Owner: The Keep A Breast Foundation2251 Las Palmas Dr.

Carlsbad , CALIFORNIA 92011

Correspondence Address: VICTORIA NEWLANDLAW OFFICES OF VICTORIA NEWLAND, APC3460 MARRON RD STE 103-356OCEANSIDE, CA 92056-4675

This application has the following bases, but not necessarily for all listed goods/services:

Section 1(a): NO Section 1(b): YES Section 44(e): NO

GOODS/SERVICES BY INTERNATIONAL CLASS

018 - Backpacks; Purses; Tote bags -- FIRST USE DATE: NONE; -- USE IN COMMERCE DATE: NONE

ALL OF THE GOODS/SERVICES IN EACH CLASS ARE LISTED.

Fraudulent statements may result in registration being cancelled: Applicants must ensure that statements made in filings

to the USPTO are accurate, as inaccuracies may result in the cancellation of any issued trademark registration. The lack of abona fide intention to use the mark with ALL goods and/or services listed in an application or the lack of actual use on all goods

and/or services for which use is claimed could jeopardize the validity of the registration, possibly resulting in its cancellation.

Additional information: For information on filing and maintenance requirements for U.S. trademark applications andregistrations and required fees, please consult the USPTO website at www.uspto.gov or call the Trademark Assistance Center

at 1-800-786-9199.

Checking status: To check the status of an application, go to http://tarr.uspto.gov. Please check the status of any application

at least every three (3) months after the application filing date.



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Section 1(a): YES Section 1(b): YES Section 44(e): NO


016 - (Based on Use in Commerce) Publications, namely, brochures, booklets, and teaching materials in the field of breastcancer awareness and prevention; Stickers; (Based on Intent to Use) Blank journals; Erasers; Magazines featuringbreast cancer awareness and prevention; Pencils; Personal organizers -- FIRST USE DATE: 06-30-2007 -- USE IN

COMMERCE DATE: 06-30-2007


Fraudulent statements may result in registration being cancelled: Applicants must ensure that statements made in filingsto the USPTO are accurate, as inaccuracies may result in the cancellation of any issued trademark registration. The lack of abona fide intention to use the mark with ALL goods and/or services listed in an application or the lack of actual use on all goods



at 1-800-786-9199.





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Section 1(a): NO Section 1(b): YES Section 44(e): NO


009 - sunglasses -- FIRST USE DATE: NONE; -- USE IN COMMERCE DATE: NONE


Fraudulent statements may result in registration being cancelled: Applicants must ensure that statements made in filings

to the USPTO are accurate, as inaccuracies may result in the cancellation of any issued trademark registration. The lack of abona fide intention to use the mark with ALL goods and/or services listed in an application or the lack of actual use on all goods



at 1-800-786-9199.





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Sent: Tuesday, October 12, 2010 00:10 AM




ISSUE DATE: Oct 12, 2010

Serial Number: 85-002,398Mark: Miscellaneous DesignAttorney Reference Number:


















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Mark: Miscellaneous Design


Owner: Keep A Breast Foundation2251 Las Palmas Dr.






025 - (Based on Use in Commerce) Footwear; Hats; Hooded sweat shirts; T-shirts; Tank tops; (Based on Intent to Use)Beanies; Belts; Caps; Coats; Dresses; Gloves; Jackets; Jerseys; Pajamas; Pants; Scarves; Shirts; Shorts; Skirts;Socks; Sun visors; Sweat pants; Sweaters; Swimsuits; Underwear; Wraps; Wristbands -- FIRST USE DATE: 06-30-

2008 -- USE IN COMMERCE DATE: 06-30-2008





at 1-800-786-9199.





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018 - (Based on Use in Commerce) Tote bags; (Based on Intent to Use) All purpose sport bags; Backpacks; Book bags;

Handbags; Luggage; Purses; Wallets -- FIRST USE DATE: 06-30-2008 -- USE IN COMMERCE DATE: 06-30-2008





at 1-800-786-9199.





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014 - (Based on Use in Commerce) Bracelets; Necklaces; (Based on Intent to Use) Earrings; Jewelry, namely, anklets;

Rings; Watches -- FIRST USE DATE: 06-30-2008 -- USE IN COMMERCE DATE: 06-30-2008





at 1-800-786-9199.





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U.S. Patent and Trademark Office (USPTO)

NOTICE OF ALLOWANCENOTE: If any data on this notice is incorrect, please fax a request for correction to the Intent to Use Unit at 571-273-9550. Please

include the serial number of your application on ALL correspondence with the USPTO.

ISSUE DATE: Feb 9, 2010

VICTORIA NEWLANDLAW OFFICES OF VICTORIA NEWLAND, APC3460 MARRON RDSTE 103-356OCEANSIDE, CA 92056-4675

** IMPORTANT INFORMATION: 6 MONTH DEADLINE **

You filed the trademark application identified below based upon a bona fide intention to use the mark in commerce. Youmust use the mark in commerce and file a Statement of Use (a.k.a. Allegation of Use) before the USPTO will register themark. You have six (6) MONTHS from the ISSUE DATE of this Notice of Allowance (NOA) to file either a Statement ofUse, or if you are not yet using the mark in commerce, a Request for Extension of Time to File a Statement of Use("Extension Request"). If you file an extension request, you must continue to file a new request every six monthscalculated from the issue date of the NOA until the Statement of Use is filed. Applicant may file a total of five (5) extensionrequests. FAILURE TO FILE A REQUIRED DOCUMENT DURING THE APPROPRIATE TIME PERIOD WILL RESULT IN

THE ABANDONMENT OF YOUR APPLICATION.Please note that both the "Statement of Use " and

"Extension Request" have many legal requirements including fees. Therefore, we encourage use of

the USPTO forms, available online at http://www.uspto.gov/teas/index.html (under "INTENT-TO-USE (ITU) FORMS"), to avoid the possible omission of important information. Please note that the

Trademark Electronic Application System (TEAS) provides line-by-line help instructions for

completing the Extension Request or Statement of Use forms online. If you do not have access to the

Internet, you may call 1-800-786-9199 to request the printed form(s).

** Registration Subject to Cancellation for Fraudulent Statements **

Ensure that statements made in filings to the USPTO are accurate, as inaccuracies may result in the

cancellation of your trademark registration. The lack of a bona fide intention to use the mark with all

goods and/or services included in an application or the lack of use on all goods and/or services for

which you claimed use could jeopardize the validity of your registration, possibly resulting in itscancellation.

The following information should be reviewed for accuracy:

SERIAL NUMBER: 77/769453



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MARK: KEEP A BREAST (STANDARD CHARACTER MARK)

OWNER: Keep A Breast Foundation, The2251 Las Palmas Drive





014 - (Based on Use in Commerce) Bracelets; Earrings; Necklaces (Based on Intent to Use) Jewelry, namely, anklets;

Rings; Watches -- FIRST USE DATE: 02-28-2008; -- USE IN COMMERCE DATE: 02-28-2008

018 - (Based on Use in Commerce) Book bags; Purses; Wallets (Based on Intent to Use) All purpose sport bags;

Backpacks; Handbags; Luggage -- FIRST USE DATE: 06-30-2006; -- USE IN COMMERCE DATE: 06-30-2006

025 - (Based on Use in Commerce) Beanies; Caps; Dresses; Footwear; Hats; Hooded sweat shirts; Scarves; T-shirts;Tank tops; Wristbands (Based on Intent to Use) Belts; Coats; Gloves; Jackets; Jerseys; Pajamas; Pants; Shirts;

Shorts; Skirts; Socks; Sun visors; Sweat pants; Sweaters; Swimsuits; Underwear; Wraps -- FIRST USE DATE: 10-31-2001; -- USE IN COMMERCE DATE: 10-31-2001

ALL OF THE GOODS/SERVICES IN EACH CLASS ARE LISTED

ADDITIONAL INFORMATION MAY BE PRESENT IN THE USPTO RECORDS


8/3/2019

complaint keep a breast foundation v rhode island novelty

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