floyd's 99 v. chavalo 77 - floyd's barbershop trademark complaint.pdf
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Joshua P. Kweller (SBN 254834)
Email: [email protected]
MOYE WHITE LLP
16 Market Square, 6th Floor
1400 16th
Street
Denver, CO 80202
Telephone: 303.292-2900
Facsimile: 303.292-4510
Attorney for Plaintiff Floyd’s 99 Holdings, LLC
UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA
FLOYD’S 99 HOLDINGS, LLC, a
Colorado limited liability company
Plaintiff,
v.
CHAVALO 77 INC.,
Defendant.
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Case No. ______________________
COMPLAINT FOR:
Trademark infringement, false
designation of origin and unfair
competition
COMPLAINT
Plaintiff, Floyd’s 99 Holdings, LLC, through its attorneys, Moye White
LLP, for its Complaint against Defendant Chavalo 77 Inc. (“Defendant”), states as
follows:
INTRODUCTION AND NATURE OF THE ACTION
1. This is an action under the trademark laws of the United States and
the common law for infringement, false designation of origin and unfair
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competition. Plaintiff seeks, among other things, an injunction enjoining
Defendant and those acting in concert with it from wrongful and unlawful use of
Plaintiff’s trademarks.
PARTIES, JURISDICTION AND VENUE
2. Plaintiff is a Colorado limited liability company with its principal
place of business at 5340 S. Quebec, Suite 205N, Greenwood Village, Colorado
80111.
3. Defendant is a California corporation with its principal place of
business located at 7219 Atlantic Ave., Cudahy, California 90201.
4. This Court has original subject matter jurisdiction over this action
pursuant to 28 U.S.C. § 1338(a) & (b). Additionally, this Court has supplemental
jurisdiction over Plaintiff’s common law and state statutory claims pursuant to
28 U.S.C. § 1367(a).
5. Venue is proper in this Court under 28 U.S.C. § 1391(b)(1) & (2) and
(c) as Defendant resides within this judicial district, and because a substantial part
of the events or omissions giving rise to the relief sought herein occurred in this
district.
FACTS
6. Plaintiff commenced operations as a barbershop in or about 2001, and
provides services in several states, including California.
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7. Since its founding, Plaintiff has created, employed, and marketed its
services under various distinctive trademarks and trade dress at great expense.
8. Plaintiff’s trademarks and trade dress have become readily recognized
by consumers and associated with Plaintiff, and comprise an extremely valuable
asset of Plaintiff’s business.
9. Among the trademarks adopted by Plaintiff are a distinctive logo first
used by Plaintiff as early as June 2006:
10. Plaintiff has also created, developed, and employed in its business a
highly distinctive interior design, featuring a “Poster Wall,” by which Plaintiff has
come to be recognized by consumers. Plaintiff’s interior design is a federally
registered and incontestable United States Trademark, Reg. No. 3467850. A copy
of Plaintiff’s U.S. Trademark registration is attached hereto as Exhibit A.
11. Defendant was incorporated in California on March 10, 2014.
12. In or about July 2014, Plaintiff became aware that Defendant had
opened and was operating a barbershop at 7219 Atlantic Ave., Cudahy, California
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90201, only miles from Plaintiff’s existing Los Angeles locations in Encino,
Hermosa Beach, Venice, Melrose, Santa Monica, Mar Vista, Studio City, and
Burbank.
13. As shown in the side-by-side comparison photographs below, the
interior and exterior signage used by Defendant constituted wholesale
misappropriation of Plaintiff’s trademarks and trade dress:
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14. By letter dated July 25, 2014, Plaintiff made a formal demand upon
Defendant to cease and desist infringement of its trademark and trade dress. See
Exhibit B, Letter to Defendant.
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15. Apparently in response to Plaintiff’s demand, Defendant changed its
interior signage, but persisted in infringing Plaintiff’s exterior signage and interior
design.
16. Plaintiff made a second demand upon Defendant regarding the
continuing infringement of its trademarks and trade dress by letter dated October
17, 2014. See Exhibit C, Second Letter to Defendant.
17. A recent inspection of Defendant’s premises has revealed that
Defendant’s infringement of Plaintiff’s trademarks and trade dress continues
unabated.
FIRST CLAIM FOR RELIEF
(Lanham Act – Unfair Competition – False Designation Of Origin under 15
U.S.C. § 1125(a))
18. Plaintiff incorporates each and every allegation of this Complaint.
19. Plaintiff has expended considerable effort, skill, and capital promoting
its barbershop under its trademarks and trade dress commencing long before
Defendant was formed.
20. As a result, Plaintiff’s trademarks and trade dress have become
associated with Plaintiff’s services, and have acquired substantial goodwill with
consumers.
21. Upon information and belief, Defendant had actual knowledge of
Plaintiff, its trademarks and trade dress, before it opened for business, and willfully
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infringed the same.
22. Defendant had constructive notice of Plaintiff’s trademark registration
for the Poster Wall before opening for business.
23. Defendant’s acts, practices, and conduct constitute unfair competition,
false designation of origin, and false or misleading descriptions or representations
of fact in that they are likely to cause confusion or mistake, or deceive the public
into believing there is an affiliation, connection, or association between Defendant
with Plaintiff, or believing that Defendant’s services originate from, are sponsored
by, or approved of by Plaintiff, in violation of 15 U.S.C. § 1125(a).
24. As a direct and proximate result of Defendant’s infringement, Plaintiff
has and is likely to be substantially injured in its business, including its goodwill
and reputation, resulting in lost revenues and profits, and diminished goodwill.
25. Plaintiff has no adequate remedy at law because its trademarks and
trade dress represent to the public the identity, reputation, and goodwill of Plaintiff
such that damages alone cannot fully compensate Plaintiff for Defendant’s
misconduct.
26. Unless enjoined by the Court, Defendant and those acting in concert
with it will continue to use and infringe Plaintiff’s trademarks and trade dress to
the irreparable injury of Plaintiff. This threat of future injury to the business
identity, goodwill, and reputation of Plaintiff requires injunctive relief to prevent
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Defendant’s continued use of Plaintiff’s trademarks and trade dress, and to
ameliorate and mitigate injuries of Plaintiff.
27. Plaintiff is entitled to preliminary and permanent injunctions enjoining
Defendant from any future use of Plaintiff’s trademarks and trade dress.
28. Plaintiff is entitled to an accounting of Defendant’s earnings and
revenues for the time period in which it has used Plaintiff’s trademarks and trade
dress without authorization. Plaintiff is entitled to recover damages equal to
Defendant’s profits, all damages sustained by Plaintiff, and the costs of the action.
SECOND CLAIM FOR RELIEF
(Unfair Competition – Common Law)
29. Plaintiff incorporates each and every allegation of this Complaint.
30. Defendant’s actions, as set forth herein, constitute unfair competition
in that they have the natural and probable tendency to deceive so as to pass off the
business of one person as and for that of another.
31. Plaintiff is entitled to preliminary and permanent injunctive relief
against Defendant’s continued use of Plaintiff’s trademarks and trade dress in
connection with its barbershop.
32. Plaintiff is entitled to recover damages, and to receive other equitable
relief, as determined by the Court, including permanent injunctive relief.
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THIRD CLAIM FOR RELIEF
(Violation of the California Model State Trademark Law,
California Business and Professions Code Sections 14200 et seq.)
33. Plaintiff incorporates each and every allegation of this Complaint.
34. Defendant has used, without Plaintiff’s consent, Plaintiff’s trademarks
in a manner likely to mislead the public and cause confusion or mistake, or deceive
the public into believing there is an affiliation, connection, or association between
Defendant with Plaintiff, or believing that Defendant’s services originate from, are
sponsored by, or approved of by Plaintiff.
35. Defendant’s acts, practices, and conduct significantly impact the
public as actual or potential consumers of Plaintiff’s services.
36. Plaintiff has suffered injury to a legally protected interest as a result of
Defendant’s acts, practices, and conduct.
37. Plaintiff has been injured as a result of Defendant’s acts, practices,
and conduct.
FOURTH CLAIM FOR RELIEF
(Misappropriation of Business Values and Goodwill)
38. Plaintiff incorporates each and every allegation of this Complaint.
39. Defendant’s unauthorized use of Plaintiff’s trademarks and trade
dress, as set forth above, constitutes misappropriation of Plaintiff’s valuable
goodwill, reputation, and business values.
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40. Plaintiff has expended substantial time, labor, skill, and money in
developing its trademarks and trade dress for barbershop services since as early as
2001.
41. As a result, Plaintiff’s trademarks and trade dress have developed
significant goodwill in the market and have come to represent the highest standards
of quality and service.
42. Defendant has misappropriated Plaintiff’s goodwill and is using that
goodwill for its direct benefit and profit.
43. Defendant’s misappropriation of Plaintiff’s trademarks and trade dress
and goodwill has wrongfully interfered with Plaintiff’s business.
44. Defendant has unfairly profited from its misappropriation of
Plaintiff’s goodwill and business values and has capitalized on their commercial
value, causing Plaintiff damages in an amount to be proven at trial.
45. Plaintiff is entitled to an accounting of Defendant’s earnings and
revenues and damages for Defendant’s unauthorized misappropriation of
Defendant’s goodwill and business values.
FIFTH CLAIM FOR RELIEF
(Unjust Enrichment)
46. Plaintiff incorporates each and every allegation of this Complaint.
47. Defendant knowingly used Plaintiff’s trademarks and trade dress
under circumstances which would make it unjust for Defendant to retain the
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benefit without paying Plaintiff.
48. Defendant has retained this benefit at the expense of Plaintiff.
49. Plaintiff is entitled to an accounting, the imposition of a constructive
trust, and disgorgement of Defendant’s profits.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for the following relief:
1. A preliminary and permanent injunction directing Defendant to
remove all infringing exterior and other signage and the Poster Wall;
2. An order requiring Defendant to promptly cease and desist all
advertising which uses any reproduction of the infringing trademarks and trade
dress, or any other confusingly similar designation, in all media including Internet
websites and social media, newspapers, magazines, flyers, coupons, promotions,
signs, telephone books, telephone directory assistance listings and mass mailings,
all at Defendant’s cost;
3. A preliminary and permanent injunction enjoining Defendant, its
directors, officers, agents, servants, employees and attorneys, and all others in
active concert or participation with them from:
a. Using the Plaintiff’s trademarks or trade dress, or any
trademark, service mark, logo, trade name, or trade dress that is confusingly
similar to Plaintiff’s;
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b. Otherwise infringing Plaintiff’s trademarks or trade dress;
c. Passing off any of its products or services as those of Plaintiff;
d. Causing a likelihood of confusion or misunderstanding as to the
source or sponsorship of its businesses, products or services; and
e. Causing a likelihood of confusion or misunderstanding as to its
affiliation, connection or association with Plaintiff or any of Plaintiff’s products or
services;
4. An order requiring Defendant to file with the Court and to serve upon
Plaintiff’s counsel within ten (10) days after entry of any injunction or order issued
herein, a written report, under oath, setting forth in detail the manner in which it
has complied with such injunction or order;
5. An accounting of Defendant’s revenue, earnings and profits for the
purpose of determining damages;
6. An order that Defendant account and pay over to Plaintiff all gains,
profits and advantages derived by it as a result of its infringement of Plaintiff’s
trademarks or trade dress and unfair competition, and misappropriation of
goodwill, business values, and unjust enrichment;
7. An award of the costs and expenses, including reasonable attorney’s
fees, incurred by Plaintiff in connection with this action as provided for by statute;
8. An award of prejudgment interest; and
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9. For such other and further relief as the Court deems just and
appropriate.
Respectfully submitted, this 5th day of May, 2016.
MOYE WHITE LLP
/s/ Joshua P. Kweller
Joshua P. Kweller (SBN 254834)
Attorneys for Plaintiff
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