ETS Express v. Kaiser Group - Complaint

8/13/2019 ETS Express v. Kaiser Group - Complaint

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COMPLAINT FOR DECLARATORY JUDGMENT RE PATENT, TRADEMARK AND TRADE DRESS

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Marvin H. Kleinberg (State Bar No. 24,953)

[email protected]

Michael Hurey (State Bar No. 139,550)

Email: [email protected]

Bradford E. Mattes (State Bar No. 159,004)

[email protected]

KLEINBERG & LERNER, LLP

1875 Century Park East, Suite 1150

Los Angeles, California 90067-2501

Telephone: 310- 557-1511

Facsimile: 310- 557-1540

Attorneys for Plaintiff, ETS EXPRESS, INC.

UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA-WESTERN DIVISION

COMES NOW the Plaintiff, ETS EXPRESS, INC. ("ETS") and for its Complaint

against the Defendant states as follows:

Nature of the Complaint

1. This is an action at law and in equity for a declaratory judgment holding thatplaintiff has not infringed U.S. Design Patent Number D693,176 S. (" '176 patent")

assigned to Defendant KAISER GROUP INCORPORATED ("KAISER") and has not

ETS EXPRESS, INC., a California

corporation

Plaintiff,

v.

KAISER GROUP INCORPORATED, a

Minnesota corporation

Defendant

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Case No.:

COMPLAINT FOR DECLARATORY

JUDGMENT RE PATENT, TRADEMARK

AND TRADE DRESS

DEMAND FOR JURY TRIAL

Case 2:14-cv-00398 Document 1 Filed 01/17/14 Page 1 of 8 Page ID #:1


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infringed KAISER'S VINO2GO trade mark, Reg; No.4,299,343 nor KAISER'S

VINO2GO trade dress or, in the alternative that the '176 patent is invalid and that Reg.

No. 4,299,343 should be cancelled under the provisions of 15 U.S.C. 1064 (Lanham Act

14.

Parties, Jurisdiction, and Venue

2. Plaintiff ETS Express, Inc. is a California Corporation having a principal

place of business at 420 South Lombard Street, Oxnard, California 93030.

3. Upon information and belief, Defendant KAISER GROUP INCORPORATED. is

a Minnesota Corporation with an address of 5021 Vernon Avenue, #243, Edina, MN

55436.

4. Pursuant to 28 U.S.C. 2201 and 2202, this Court may declare the rights

and other legal relationships of the parties and may order such other relief as may be

necessary. This Court has subject matter jurisdiction of the design patent declaratory

relief claims under 28 U.S.C. 1331 and under 28 U.S.C. 1338, in that, this case arises

under the Patent Laws of the United States, 35 U.S.C. l et seq.

5. This Court also has subject matter jurisdiction of the trade mark and trade

dress declaratory relief actions under 28 U.S.C. 1331 and under 28 U.S.C. 1338, in

that, this case also arises under the Trademark Laws of the United States 15 U.S.C.

1121(a).

6. Antonio Papageorgiou, counsel for Defendant KAISER, sent a letter dated

January 8, 2013 to Plaintiff's president alleging infringement of Design Patent No.

D693,176 S, trade mark VINO2GO, Reg. No. 4,299,343 and of Defendant's alleged

VINO2GO trade dress as a violation of Defendant's rights under Lanham Act 32 (15

U.S.C. 1114). That letter demanded, among other things, that "ETS ... cease and desistfrom offering for sale or selling all unauthorized versions of tumblers featuring a wine

glass within a clear container (hereinafter "Unauthorized Tumblers"), including without

limitation the Infringing Products;" The letter further demanded that ETS recall all



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Unauthorized Tumblers and Infringing Products "without waiver or prejudice of Kaiser

Group rights, claims and remedies...". A copy of that letter is attached as Exhibit 1.

7. When a reply was sent to the January 8 letter, Defendant's lawyer's response

included the statement: "...we consider all offers to sell the accused tumbler at the

tradeshow acts of willful infringement."

8. An actual case and controversy exists between ETS and Defendant KAISER

as a result of Defendant's accusations of patent, trade mark and trade dress infringement.

9. Defendant KAISER is subject to the personal jurisdiction of this Court

because KAISER has offered products for sale and/or sold products in the Central

District of California. This court also has personal jurisdiction over Defendant by virtue

of the fact that, upon information and belief, Defendant regularly solicits business and/or

derives substantial revenue from goods used or consumed in this state.

10. Upon information and belief, venue is proper under 28 U.S.C. 1391(b)

because acts giving rise to the claims asserted herein occurred in the Central District of

California.

Facts

11. Plaintiff markets and sells a line of double-wall drinkware under the

"VINI" mark. Plaintiff's VINI drinkware is offered and sold to the promotional

products market rather than the general consumer market. The interior shape of

Plaintiff's VINI drinkware is distinctive in that it has the overall shape of a pointed

bullet. This differs from the interior shape of Defendant's asserted patent and trade dress

that has the appearance of a wine glass and has round, curved walls. The interior shape

of Plaintiff's VINI drinkware also lacks any stem and instead has a substantial open

space between the apex of the pointed bullet and the base of the exterior container. Theasserted '176 patent has an integral stem that extends almost to the base of the exterior

container to simulate the long stem of a traditional glass wine glass. Moreover, the

exterior shape of Plaintiff's VINI drinkware has a distinctive slightly curved cylindrical



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shape with a substantially planar base while the exterior shape of the asserted '176 patent

is frusto-conical and has a base with a slight dome shape.

12. Plaintiff has adopted and has been using since 2004 a family of marks in

which "2GO" is an integral element. These marks include "H2GO", "T2GO",

"CUP2GO", "H2GO OMEGA" and "h2go bfree". Because of the prior use of its

family of "2GO" marks, Plaintiff believes that the continued registration of the

"VINO2GO" mark is likely to cause confusion, deception and mistake in the

marketplace.

13. A recent search on the internet has revealed that the term "VINO2GO" is

being used extensively to advertise and sell drinkware substantially in accordance with

the '176 patent from various sources, none of them being the Defendant. To the extent

that the term is used to identify the product, it has become generic.

14. Moreover, at least two organizations, "Thermo Steel" and "The Product

Farm", claim to manufacture "VINO2GO". As a result there is confusion as to the

source of the "VINO2GO wine sippy cup".

FIRST CLAIM FOR RELIEF

[Declaratory Judgment, under 28 U.S.C. 2201 and 2202

of No Patent Infringement Against Defendant]

15. The preceding paragraphs are incorporated herein by reference.

16. A copy of the '176 patent is attached hereto as Exhibit 2.

17. A picture of Plaintiffs accused VINI" wine tumbler is attached hereto as

Exhibit 3.

18. As is plainly evident, Plaintiff's VINI wine tumbler does not, in any way,

infringe the design of the KAISER '176 patent. Defendant, however, has alleged thatPlaintiffs VINI wine tumbler does infringe the 176 patent. Accordingly, a justiciable

controversy exists between the parties.



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SECOND CLAIM FOR RELIEF

[Declaratory Judgment under 28 U.S.C. 2201 and 2202

of Invalidity and Unenforceability of Asserted Trade Mark Against Defendant]


20. A copy of Defendant's trademark registration is attached as Exhibit 4.

21. A search of the internet reveals that at amazon.com, alone, at least 10

different merchants are offering a "Vino2Go ...insulated wine tumbler set". There are at

least thirteen other offerings of "Vino2Go" "insulated wine tumblers", each with a

plurality of vendors. In addition, several web sites offer the "Vino2Go wine sippy cup"

including "www.thevino2go.com", "www.silkletter.com/Vino2Go",

"www.funslurp.com", "www.giftedgrape.com", "www.givesimple.com/WineSippy Cup",

"www.store.theproductfarm,com/Vino2Go" and "kegworks.com/Vino2Go".

22. Because of the widespread offering by many sources of a product identified

as the "Vino2Go wine sippy cup", the term has become the generic identifier of the

product and therefore the registration of "VINO2GO" is cancellable at any time under

15 U.S.C. 1064 (3) which provides:

"A petition to cancel a registration of a mark ...may...be filed...

(3) At any time if the registered mark becomes the generic name for the goods... for

which it is registered, ... or if the registered mark is used by or with the permission of the

registrant so as to misrepresent the source of the goods....on or in connection with which

the mark is used...."

23. Alternatively, because of the plethora of sources advertising "Vino2Go wine

sippy cups", the source of the goods is being actively misrepresented to the confusion of

the public.THIRD CLAIM FOR RELIEF

[Declaratory Judgment under 28 U.S.C. 2201 and 2202

of No Infringement of Asserted Trade Dress Against Defendant]




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25. A picture of a VINO2GO wine sippy cup, which, it is presumed, embodies

the KAISER TRADE DRESS, is attached as Exhibit 5.

26. Plaintiff's VINI" wine tumbler does not, in any way infringe any rights

that Defendant KAISER may have in its so-called "VINO2GO TRADE DRESS" which

has only been in use since May of 2012, a period much too short for KAISER to have

acquired any enforceable trade dress rights. The VINO2GO TRADE DRESS is not

inherently distinctive.

27 Defendant KAISER cannot claim any trade dress rights to the frusto-conical

shape of the VINO2GO wine sippy cup exterior or the wine glass shape of the interior as

they are functional.

28. The "double-wall" feature of the claimed trade dress is functional and, as

such, cannot be appropriated by KAISER either under the Patent Laws or the Trade Mark

Laws of the United States.

29. The frusto-conical shape of the VINO2GO wine sippy cup exterior is a

common geometric shape and cannot be appropriated by KAISER under either the Patent

Laws or the Trade Mark Laws of the United States.

PRAYER FOR RELIEF

WHEREFORE, PLAINTIFF ETS EXPRESS PRAYS for judgment against

Defendant KAISER as follows:

1. A declaration that ETS EXPRESS has not in any manner infringed, and isnot currently infringing, Defendant KAISER's '176 patent;

2. A declaration that ETS EXPRESS has not in any manner infringed, and isnot currently infringing, Trademark Reg. No. 4,299,343.

3. A declaration that ETS EXPRESS has not in any manner infringed, and isnot currently infringing any alleged Trade Dress of Defendant KAISER, including, but

not limited to, the alleged KAISER VINO2GO Trade Dress.;

4. Cancellation of Reg. No. 4,299,343 pursuant to 15 U.S.C. 1054.



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EXHIBIT 1

Case 2:14-cv-00398 Document 1-1 Filed 01/17/14 Page 1 of 3 Page ID #:9


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EXHIBIT 2



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EXHIBIT 3



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EXHIBIT 5



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Documents

ETS Express v. Kaiser Group - Complaint