Shashi v. Tsipilates

7/28/2019 Shashi v. Tsipilates

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UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF FLORIDA

CASE NO.

SHASHI, LLC,a Florida )

limited liability company, ))

Plaintiff, ))

vs. ))

TSIPILATES, LLC, a Florida )limited liability company, )

))

Defendant. )___________________________________)

COMPLAINT

Plaintiff, Shashi, LLC (Plaintiff), hereby files it

Complaint against Defendant, Tsipilates, LLC (Defendant) and

alleges as follows:

JURISDICTION AND VENUE

1.

This is an action for injunctive and other relief under

the patent laws of the United States, 35 U.S.C. 101, et seq., for

design patent infringement. This is also an action for injunctive

and other relief under the Federal Trademark Act, 15 U.S.C. 1051,

et seq. (Lanham Act), particularly 15 U.S.C. 1114 and 1125(a),

for trade dress infringement, trademark infringement, false

designation of origin, false description or representation, and

unfair competition. Plaintiff also asserts claims in accordance

with common law rights, Fla. Stat. 495.161, for trade dress

infringement, trademark infringement and unfair competition and for

violations of the Florida Deceptive and Unfair Trade Practices Act,


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Fla. Stat. 501. 201, et seq.

2. This Court has jurisdiction over this action pursuant to28 U.S.C. 1331, 1338(a) and 1338(b). This Court also has

jurisdiction pursuant to 15 U.S.C. 1121 and the doctrine of

supplemental jurisdiction, as set forth in 28 U.S.C. 1367.

3. Venue is proper under 28 U.S.C. 1391(b) and 1391(c) inthat Defendant resides in the Southern District of Florida and/or

the wrongful acts committed by Defendant occurred in and originated

from the Southern District of Florida, and a substantial part of

the events or omissions giving rise to the claim occurred therein,

or a substantial part of the property that is the subject of the

action is situated therein.

4. Upon information and belief, jurisdiction is proper inthat:

a. Defendant has operated, conducted, engaged in, or

carried on a business venture in this State, and the

Southern District of Florida, from which this action

arises, within the meaning of Fla. Stat. 48.193(1)(a);

or

b. Defendant has committed tortious acts within this

State, and the Southern District of Florida, includingthe infringement set forth herein, within the meaning of

Fla. Stat. 48.193(1)(b); or

c. Defendant has engaged in substantial and not isolated


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activity within this state, and the Southern District of

Florida, within the meaning of Fla. Stat. 48.193(2).

THE PARTIES

5. Plaintiff is a limited liability corporation organizedand existing under the laws of the State of Florida, and having an

address at 6926 Royal Orchid Circle, Delray Beach, Florida 33446.

6. Upon information and belief, Defendant is a limitedliability company organized and existing under the laws of Florida

with an address of 571 Stonemont Drive, Weston, Florida 33326.

FACTUAL BACKGROUND

7. Since approximately November, 2010, Plaintiff has been inthe business of designing, causing to be manufactured, marketing,

promoting, offering for sale, distributing and selling fitness

apparel, namely a proprietary line of fitness socks that are

particularly suited for use during Pilates, yoga, and barre

workouts sold under the registered trademark SHASHI.

8. The SHASHI socks have a unique mesh top panel and anovel arrangement of slip-resistant grip dots on the bottom of the

sock.

9. Plaintiff has invested considerable time, creativeeffort, and resources to create its exclusive and innovative socks,

and develop goodwill in the SHASHI mark.

PLAINTIFFS PATENT AND TRADE DRESS RIGHTS

10. Plaintiff is the owner of U.S. Design Patent No. D664,349


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(the 349 Patent) which was duly and lawfully issued on or about

July 31, 2012, for the ornamental design for its innovative sock,

as shown and described therein (the patented design). See Exhibit

A hereto.

11. Plaintiffs unique patented design and appearance in andof the SHASHI socks is recognizable as the style and work and

trade dress of Plaintiff. Plaintiffs trade dress consists of an

overall look or commercial impression resulting from the arbitrary

selection and combination of certain non-functional features,

namely a sock that: (1) covers the toe, sides and bottom of the

foot; (2) has an ankle length; (3) has a cut-out disposed along the

top of the sock or foot along which a mesh panel which is secured

that rises slightly onto the ankle; (4) has a non-slip pattern

along the bottom surface or sole of the sock; and (5) has a logo

element on the upper elastic potion of the sock (all collectively

hereafter Plaintiffs Product Trade Dress). Examples of

Plaintiffs Product Trade Dress are shown in Exhibit B.

12. Plaintiff also has acquired trade dress rights in and toits distinctive packaging of its SHASHI socks which consists of an

overall look or commercial impression resulting from the arbitrary

selection and combination of certain non-functional features,namely: (1) a see-thru mesh bag; (2) with a decorative horizontal

ribbon in the upper portion of the bag; and (3) a header card

attached to the top of the mesh bag (all collectively hereafter


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Plaintiffs Packaging Trade Dress). Examples of Plaintiffs

Packaging Trade Dress are shown in Exhibit C.

13. Prior to the acts of Defendant complained of herein,Plaintiff adopted and used in commerce its distinctive Product and

Packaging Trade Dress for its SHASHI socks. Such use has been

continuous since its inception.

14. Since prior to the infringing acts of Defendantcomplained of herein, Plaintiff has achieved significant commercial

success and substantial sales, advertising, and promotion of its

socks utilizing Plaintiffs Product and Packaging Trade Dress,

throughout the State of Florida and the United States, including

the Southern District of Florida.

15. By virtue of their unique style and continuous andwidespread use, and since prior to the infringing acts of Defendant

complained of herein, Plaintiffs Product and Packaging Trade Dress

has developed a secondary meaning and significance, and have been

readily recognizable by the public and the trade as identifying

Plaintiff as the exclusive source and distinguishing Plaintiffs

goods and packaging from the goods and packaging of others.

PLAINTIFFS TRADEMARK RIGHTS

16.Since long prior to the acts of Defendant complained of

herein, Plaintiff adopted and used the inherently distinctive

designation and trademark SHASHI for use in connection with socks

(Plaintiffs SHASHI Mark).


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17. Since its adoption, Plaintiff has continuously used itsSHASHI Mark in interstate commerce for and in connection with such

goods and has not abandoned this mark.

18. Plaintiff has obtained U.S. Trademark Registration No.4,256,950 for its SHASHI Mark for use in connection with socks

in International Class 025 (Plaintiffs SHASHI Registration).

See Exhibit D hereto.

19. Since long prior to the acts of Defendant complained ofherein, Plaintiff has expended much money, time, and effort in

advertising, promoting, and marketing the goods sold under the

SHASHI Mark.

20. Since long prior to the acts of Defendant complained ofherein, the Plaintiffs SHASHI Mark has been readily recognizable

by the public as associated exclusively with Plaintiff and has

achieved a secondary meaning to the consuming public.

21. The Plaintiffs SHASHI Mark has been in continuous usein U.S. commerce since its adoption and first use in the U.S.

commerce.

DEFENDANTS INFRINGING ACTIVITY

22. Defendant was a regular customer of Plaintiff, who hadpurchased hundreds of pairs of SHASHI socks from Plaintiff

embodying the patented design, Plaintiffs Product Trade Dress, and

Plaintiffs Packaging Trade Dress, at both the retail and wholesale

level from December, 2010 through February, 2013.


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23. After it began purchasing SHASHI socks from Plaintiff,upon information and belief, Defendant began manufacturing,

marketing, and selling competing and infringing socks under the

infringing mark SOXSI designed for the Pilates, yoga, and barre

industry.

24. Upon and information, Defendant began selling itsinfringing SOXSI socks in March, 2013 - one month after it

suddenly stopped purchasing SHASHI socks from Plaintiff.

25. Defendant is well aware and, since long prior to the actsof Defendant complained of herein, has been well aware of the

goodwill represented and symbolized by Plaintiffs Product and

Packaging Trade Dress and SHASHI Mark and that Plaintiffs Product

and Packaging Trade Dress and SHASHI Mark are widely recognized

and relied upon by the public and the trade as identifying

Plaintiff and its goods and distinguishing said goods from the

goods of others.

26. Notwithstanding Defendants knowledge of PlaintiffsProduct and Packaging Trade Dress, SHASHI Mark, and/or the 349

Patent, and indeed by reason of such knowledge, Defendant has

engaged in, and it is believed will continue to engage in a

deliberate and willful scheme to trade upon and to misappropriatefor itself the vast goodwill represented and symbolized by the

Plaintiffs Product and Packaging Trade Dress and SHASHI Mark and

to infringe upon and utilize the design shown in the 349 Patent,


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all without Plaintiffs consent thereof.

27. The acts of Defendant complained of herein constitutewillful and intentional infringement of Plaintiffs Product and

Packaging Trade Dress and SHASHI Mark and rights in and to the

349 Patent, and are in total disregard of Plaintiffs rights, and

were commenced and it is believed will continue in spite of the

Defendants knowledge that its use of the infringing design was and

is in direct contravention of Plaintiffs rights.

28. Upon information and belief, subsequent to the issuanceof the 349 Patent, and the original sales of goods by or on behalf

of Plaintiff embodying Plaintiffs patented design, Defendant

commenced and has continued making, importing, using, selling,

and/or offering for sale, within the Southern District of Florida

and elsewhere, unauthorized socks utilizing and embodying the

patented design described and claimed in the 349 Patent (the

Infringing Socks). Sample photographs of the Infringing Socks are

attached as Composite Exhibit E.

29. These Infringing Socks further incorporate a copy orcolorable imitation of Plaintiffs Product Trade Dress.

30. In addition, Defendant is selling, advertising and/oroffering for sale, within the Southern District of Florida andelsewhere, competing socks under the infringing SOXSI mark (the

Infringing Mark).

31. Upon information and belief, subsequent to the original


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sales of goods by or on behalf of Plaintiff of its SHASHI socks in

packaging embodying Plaintiffs Packaging Trade Dress, Defendant

commenced and has continued using, selling, and/or offering for

sale, within the Southern District of Florida and elsewhere,

unauthorized socks utilizing Plaintiffs Packaging Trade Dress (the

Infringing Packaging). A photograph of the Infringing Packaging

is attached as Exhibit F.

32. Defendants unauthorized sales of the Infringing Socksutilizing the Infringing Mark and Infringing Packaging and related

marketing activities commenced long after substantial and sales in

commerce of authorized goods by Plaintiff embodying Plaintiffs

patented design, Plaintiffs Product and Packaging Trade Dress, and

Plaintiffs SHASHI Mark and subsequent to the acquisition of

rights and secondary meaning in Plaintiffs Product and Packaging

Trade Dress and Plaintiffs SHASHI Mark accruing to Plaintiff.

33. Defendants aforesaid use of the Infringing Socks,Infringing Packaging and Infringing Mark is designed and is

calculated and is likely to cause confusion, to cause mistake, and

to deceive customers and prospective customers as to the origin or

sponsorship of Defendants goods and to falsely cause the consuming

public to believe that Defendants goods are the goods of

Plaintiff, or are sponsored, licensed, authorized, or approved by

Plaintiff, all to the detriment of Plaintiff, the trade, and the

public.


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34. Defendant has and continues to market and sell theInfringing Socks utilizing the Infringing Mark and Infringing

Packaging to the Pilates, yoga and barre industry, including

directly to Plaintiffs customers.

35. Specifically, Defendant has directly solicitedPlaintiffs authorized retailers that are listed on Plaintiffs

website and has sent them unsolicited, complementary pairs of its

Infringing Socks utilizing the Infringing Mark and Infringing

Packaging. Attached as Exhibit G is an example of a postcard

advertising the Infringing Socks that Defendant sent to one of

Plaintiffs authorized retailers along with a complementary pair of

Infringing Socks.

36. Defendant commenced its infringing activities describedherein without the consent of Plaintiff, in deliberate, knowing,

and wanton disregard of the rights of Plaintiff and to Plaintiffs

irreparable damage, unless restrained by this Court.

COUNT I DESIGN PATENT INFRINGEMENT

37. Plaintiff incorporates herein each and every allegationset forth in Paragraphs 1 through 36 as if fully set forth herein.

38. Defendants aforesaid acts, including the unauthorizedmanufacture, import, use, sales, and/or offering for sale of goods

embodying the design shown in the 349 Patent, constitute

infringement of and/or inducement to infringe the 349 Patent,

directly and/or under the doctrine of equivalents.


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39. Defendants aforesaid acts have deprived Plaintiff ofsales that Plaintiff otherwise would have made.

40. Defendants aforesaid acts have caused and will causegreat and irreparable injury to Plaintiff, and unless said acts are

restrained by this Court, they will be continued and Plaintiff will

continue to suffer great and irreparable injury.

41. Plaintiff has no adequate remedy at law.COUNT II - FALSE DESIGNATION, DESCRIPTION, AND REPRESENTATION

UNDER THE LANHAM ACT, 15 U.S.C. 1125(a)- PRODUCT TRADE DRESS


43. Subsequent to Plaintiffs establishment of its rights inPlaintiffs Product Trade Dress, Defendant intentionally commenced

to use in commerce, and upon information and belief, will continue

to use in commerce the Infringing Socks which are a reproduction,

copy, and colorable imitation of the Plaintiffs Product Trade

Dress, despite Plaintiffs prior use thereof and the public

recognition thereof, constituting use in commerce of a word, term,

name, symbol, or device, or combination thereof, or a false

designation of origin, false or misleading description of fact, or

a false or misleading representation of fact that is likely to

cause confusion, or to cause mistake, or to deceive as to

affiliation, connection, or association with Plaintiff, or origin,

sponsorship, or approval of Defendants goods by Plaintiff.


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44. Defendants aforesaid acts constitute unfair competition,false designation of origin, and/or false description or

representation in violation of 43(a) of the Lanham Act, 15 U.S.C.

1125(a).

45. Defendants aforesaid acts have harmed Plaintiffsreputation, severely damaged Plaintiffs goodwill, and upon

information and belief, have diverted sales from Plaintiff.

46. Defendants aforesaid acts have caused and will continueto cause great and irreparable injury to Plaintiff, and unless said

acts are restrained by this Court, they will be continued and

Plaintiff will continue to suffer great and irreparable injury.

47. Plaintiff has no adequate remedy at law.COUNT III - FALSE DESIGNATION, DESCRIPTION, AND REPRESENTATION

UNDER THE LANHAM ACT, 15 U.S.C. 1125(a)- PACKAGING TRADE DRESS


49. Subsequent to Plaintiffs establishment of its rights inPlaintiffs Packaging Trade Dress, Defendant intentionally

commenced to use in commerce, and upon information and belief, will

continue to use in commerce the Infringing Packaging for its

Infringing Socks which is a reproduction, copy, and colorable

imitation of the Plaintiffs Packaging Trade Dress, despite

Plaintiffs prior use thereof and the public recognition thereof,

constituting use in commerce of a word, term, name, symbol, or


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device, or combination thereof, or a false designation of origin,

false or misleading description of fact, or a false or misleading

representation of fact that is likely to cause confusion, or to

cause mistake, or to deceive as to affiliation, connection, or

association with Plaintiff, or origin, sponsorship, or approval of

Defendants goods by Plaintiff.

50. Defendants aforesaid acts constitute unfair competition,false designation of origin, and/or false description or

representation in violation of 43(a) of the Lanham Act, 15 U.S.C.

1125(a).

51. Defendants aforesaid acts have harmed Plaintiffsreputation, severely damaged Plaintiffs goodwill, and upon

information and belief, have diverted sales from Plaintiff.




53. Plaintiff has no adequate remedy at law.COUNT IV

FEDERAL TRADEMARK INFRINGEMENT, 15 U.S.C. 1114(1)


55. With full knowledge and awareness of Plaintiff'sownership and prior use of Plaintiffs SHASHI Mark and


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Registration, Defendant has willfully used, is using, and will

continue to use the Infringing Mark on identical or highly related

goods for which Plaintiffs SHASHI Registration issued, in a

manner that is likely to cause confusion, reverse confusion, or to

cause mistake, or to deceive.

56. Defendants acts constitute infringement, use of aconfusingly similar mark, and use of a spurious mark which is

identical with, or substantially indistinguishable from,

Plaintiffs SHASHI Mark, in violation of and pursuant to 15 U.S.C.

1114.

57. Defendants acts have harmed Plaintiffs reputation,severely damaged Plaintiffs goodwill, and upon information and

belief, have and will continue to divert sales from Plaintiff, and

create the impression that Plaintiff is an infringer when in fact

Defendant is the infringer.

58. Defendants aforesaid acts have caused and will causegreat and irreparable injury to Plaintiff, and unless said acts are



59. Plaintiff has no adequate remedy at law.COUNT V - UNFAIR COMPETITION/COMMON LAW TRADE

DRESS INFRINGEMENT OF PRODUCT TRADE DRESS



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61. Defendants aforesaid acts constitute infringement,misappropriation, and misuse of Plaintiffs Product Trade Dress,

unfair competition, palming-off and passing-off against Plaintiff,

and unjust enrichment of Defendant, all in violation of Plaintiffs

rights at common law and under the law of the State of Florida in

accordance with Fla. Stat. 495.161.


belief, have diverted sales from Plaintiff.




64. Plaintiff has no adequate remedy at law.COUNT VI - UNFAIR COMPETITION/COMMON LAW TRADE

DRESS INFRINGEMENT OF PACKAGING TRADE DRESS


66. Defendants aforesaid acts constitute infringement,misappropriation, and misuse of Plaintiffs Packaging Trade Dress,

unfair competition, palming-off and passing-off against Plaintiff,

and unjust enrichment of Defendant, all in violation of Plaintiffs

rights at common law and under the law of the State of Florida in

accordance with Fla. Stat. 495.161.


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belief, have diverted sales from Plaintiff.




69. Plaintiff has no adequate remedy at law.COUNT VII

COMMON LAW TRADEMARK INFRINGEMENT

70. Plaintiff incorporates herein each and every allegationset forth in Paragraphs 1 through 36, as if fully set forth herein.

71. Defendants aforesaid acts constitute falsedesignation(s) of origin, false or misleading description(s) of

fact, or false or misleading representation(s) of fact, which are

likely to cause confusion, or to cause mistake, or to deceive as to

affiliation, connection, or association with Plaintiff, or origin,

sponsorship, or approval of Defendants goods by Plaintiff.

72. Defendants aforesaid acts have caused and will continueto cause substantial and irreparable injury to Plaintiff unless

such acts are restrained by this Court.

73. Plaintiff has no adequate remedy at law.


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COUNT VIII- VIOLATION OF FLORIDA DECEPTIVE AND UNFAIR TRADE

PRACTICES (FLA. STAT. 501.201, ET SEQ.)

74. Plaintiff incorporates herein each and every allegationset forth in Paragraphs 1 through 36, as if fully set forth herein.

75. Defendants aforesaid acts constitute unfair methods ofcompetition, unconscionable acts or practices and unfair or

deceptive acts or practices in the conduct of trade in commerce in

violation of the Florida Deceptive and Unfair Trade Practices, Fla.

Stat. 501.201, et seq.

76. Defendants aforesaid acts have caused and will continueto cause great and irreparable injury to Plaintiff, and unless



WHEREFORE, Plaintiff prays:

A. That this Court will adjudge that the `349 Patent is

valid, enforceable, and has been infringed as a direct and

proximate result of the acts and/or inducement of Defendant as set

forth herein, in violation of Plaintiffs rights under 35 U.S.C.

101, et seq.

B. That Plaintiffs Product and Packaging Trade Dress has

been infringed as a direct and proximate result of the acts of

Defendant as set forth herein, in violation of Plaintiff's rights

under the Lanham Act, 15 U.S.C. 1051 et seq., and the common law

and under the law of the State of Florida in accordance with Fla.


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Stat. 495.161.

C. That this Court will adjudge that Plaintiffs SHASHI

Mark and Registration has been infringed as a direct and proximate

result of the acts of Defendant as set forth in this Complaint, in

violation of Plaintiffs rights under the Lanham Act, 15 U.S.C.

1051 et seq., and the common law.

D. That this Court will adjudge that Defendant has competed

unfairly with Plaintiff as set forth in this Complaint, in

violation of Plaintiffs rights under the Lanham Act, 15 U.S.C.

1125(a), and the common law.

E. That Defendant, and all officers, directors, agents,

servants, employees, attorneys, successors, and assigns, and all

persons in active concert or participation therewith, be

permanently enjoined and restrained from further infringing

manufacture, use, sale, offer for sale and import of the Infringing

Socks, and all other infringements of the 349 Patent.

F. That Defendant, and all officers, directors, agents,

servants, employees, attorneys, successors, and assigns, and all

persons in active concert or participation therewith, be

permanently enjoined and restrained from further infringing

manufacture, use, sale, offer for sale and import of the InfringingSocks and Infringing Packaging, and all other designs and packaging

likely to be confused with or infringe Plaintiffs Product and

Packaging Trade Dress described herein.


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G. That Defendant be required to deliver up for destruction

all Infringing Socks, Infringing Packaging and other written or

printed material in the possession or control of Defendant which

embody or bear the Infringing Socks and/or Infringing Packaging,

and all plates, molds, matrices, and other means from making the

aforesaid items.

H. That Defendant be directed to file with this Court and to

serve upon Plaintiff within ten (10) days after service of the

injunction issued in this action, a written report, under oath,

setting forth in detail the manner of compliance with the above.

I. That Plaintiff recover damages adequate to compensate for

the Defendants patent infringement, but in no event less than a

reasonable royalty for the use made of the patented design by

Defendant, and in addition to the amount of actual damages found,

such sums shall be in an amount three (3) times the amount of the

actual damages found.

J. That in addition thereto, Plaintiff have and recover the

profits of Defendant derived from the use of the infringing designs

under the 349 Patent.

K. That Plaintiff recover the Defendants profits and the

damages of Plaintiff arising from Defendants acts of trade dress

infringement, trademark infringement and unfair competition, and

that the Court, pursuant to 35 of the Lanham Act, 15 U.S.C. 1117,

enter judgment, and that said sums be treble as authorized pursuant


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to 15 U.S.C. 1117(b).

L. That Plaintiff have and recover, pursuant to the laws of

the State of Florida, and common law, in addition to its actual

damages, punitive damages in an amount which the Court deems just

and proper.

M. That Plaintiff have and recover both pre-judgment and

post-judgment interest on each and every damage award.

N. That Plaintiff have and recover its reasonable attorney

fees incurred in this action, pursuant to 35 of the Lanham Act, 15

U.S.C. 1117, 35 U.S.C. 285, and Florida Statutes 501.2105, and

as otherwise authorized.

O. That Plaintiff have and recover its taxable costs and

disbursements herein, pursuant to 35 of the Lanham Act, 15 U.S.C.

1117, and as otherwise authorized.

P. That Plaintiff have and recover such further relief as

the Court may deem just and proper.

JURY DEMAND

Plaintiff demands a trial by jury as to all issues triable of

right by a jury.

Respectfully submitted,

Dated: June 12, 2013 By:s/Meredith Frank MendezMiami, Florida John Cyril Malloy, IIIFlorida Bar No. 964,[email protected] Frank MendezFlorida Bar No. 502,[email protected]
mailto:[email protected]:[email protected]:[email protected]:[email protected]


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MALLOY & MALLOY, P.L.

2800 S.W. Third AvenueMiami, Florida 33129

Telephone (305) 858-8000Facsimile (305) 858-0008

Attorneys for Plaintiff,

Shashi, LLC

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Shashi v. Tsipilates

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