throbber
Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 1 of 12
`
`Case No.:
`
`
`JURY TRIAL DEMANDED
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`__________________________________________
`
`
`
`
`
`
`
`)
`TILE, INC.,
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`Plaintiff,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`v.
`
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`S&W DEALZ and TRENDS GOODS,
`
`)
`
`
`
`
`
`
`
`)
`
`Defendants.
`
`
`
`
`)
`__________________________________________)
`
`
`
`
`
`
`
`
`COMPLAINT FOR PERMANENT INJUNCTION AND DAMAGES
`
`
`
`Plaintiff Tile, Inc. (“Tile” or “Plaintiff”) by and through its undersigned counsel,
`
`complains of Defendants S&W Dealz and Trends Goods’ (together, “Defendants”) conduct and
`
`alleges upon information and belief as follows:
`
`NATURE OF THIS ACTION
`
`1.
`
`Plaintiff seeks injunctive relief and monetary damages for Defendants’ trademark
`
`infringement, unfair competition, and false advertising under the Lanham Act, 15 U.S.C. § 1051,
`
`et seq., as well as related state law claims, arising from Defendants’ wrongful, unauthorized
`
`promotion and sale of Tile’s products through online commerce sites including but not limited
`
`to, Amazon.com.
`
`2.
`
`3.
`
`Tile sells its products through a nationwide network of Authorized Resellers.
`
`Further, Tile sells its products under the “Tile” brand. Tile is the owner of a
`
`federally-registered trademark TILE®, and has been utilizing that trademark since 2014.
`
`
`304651914 v3
`
`1
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 2 of 12
`
`4.
`
`Defendants offer for sale and sell non-genuine Tile products bearing this
`
`registered trademark through websites including but not limited to Amazon.com. Tile products
`
`sold via unauthorized resellers do not come with a Tile warranty.
`
`5.
`
`Despite advertising their Tile products as “new,” Defendants are deceiving
`
`customers by selling liquidated or used Tile products.
`
`6.
`
`Defendants have undertaken these wrongful acts willfully and with full
`
`knowledge of their wrongdoing.
`
`7.
`
`Consumers are likely to be and have been actually confused by Defendants’ sale
`
`of Tile products that are being falsely advertised as new product when they are in fact used or
`
`liquidation products.
`
`8.
`
`Defendants’ conduct has produced and, unless enjoined by this Court, will
`
`continue to produce a likelihood of consumer confusion and deception, to the irreparable injury
`
`of consumers and Tile.
`
`9.
`
`As a result of Defendants’ actions, Tile is suffering a loss of the enormous
`
`goodwill that Tile has created in its trademarks and is losing profits from lost sales of products.
`
`This action seeks permanent injunctive relief and damages for Defendants’ trademark
`
`infringement and unfair competition.
`
`JURISDICTION AND VENUE
`
`10.
`
`This Court has jurisdiction over the subject matter of this Complaint pursuant to
`
`15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a) and (b), as these claims arise under the
`
`Trademark Laws of the United States.
`
`11.
`
`This Court has supplemental jurisdiction over the pendent state law claims
`
`pursuant to 28 U.S.C. § 1367(a).
`
`
`304651914 v3
`
`2
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 3 of 12
`
`12.
`
`Defendants are subject to personal jurisdiction in the Commonwealth of
`
`Massachusetts and this District pursuant to Mass. Gen. Laws ch. 223A §3 because (a)
`
`Defendants have sold numerous products into the Commonwealth and this District; (b)
`
`Defendants have caused tortious injury to Tile’s trademarks within the Commonwealth and this
`
`District; (c) Defendants practice the unlawful conduct complained of herein, in part, within the
`
`Commonwealth and this District; (d) Defendants regularly conduct or solicit business within the
`
`Commonwealth and this District; (e) Defendants regularly and systematically direct electronic
`
`activity into the Commonwealth and this District with the manifest intent of engaging in business
`
`within the Commonwealth and this District, including the sale and/or offer for sale to Internet
`
`users within the Commonwealth and this District; and (f) Defendants enter into contracts with
`
`residents of the Commonwealth and this District through the sale of items on various online
`
`retail platforms and in Internet auctions.
`
`13.
`
`Venue is proper in the United States District Court for the District of
`
`Massachusetts pursuant to 28 U.S.C. § 1391 because a substantial part of the events or omissions
`
`giving rise to this claim occurred in this District.
`
`PARTIES
`
`14.
`
`Plaintiff Tile, Inc. is a Delaware corporation with its principal place of business in
`
`San Mateo, CA. Tile designs, manufactures, and sells a variety of wireless tracking devices used
`
`to locate objects (“Tile Products”).
`
`15.
`
`Upon information and belief, defendant S&W Dealz is an Amazon Seller account,
`
`whose name and address are presently unknown. It does business or has done business and sold
`
`or offered to sell products to consumers, including Tile products, within the Commonwealth of
`
`Massachusetts through various online commerce sites, including, but not limited to,
`
`Amazon.com, using the seller name “S&W Dealz.”
`
`
`304651914 v3
`
`3
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 4 of 12
`
`16.
`
`The Amazon seller identification number for Defendant’s S&W Dealz seller
`
`account is AELADINQQCCQ7.
`
`17.
`
`Upon information and belief, defendant Trends Goods is an Amazon Seller
`
`account, whose name and address are presently unknown. It does business or has done business
`
`and sold or offered to sell products to consumers, including Tile products, within the
`
`Commonwealth of Massachusetts through various online commerce sites, including, but not
`
`limited to, Amazon.com, using the seller name “Trends Goods.”
`
`18.
`
`The Amazon seller identification number for Defendant’s Trends Goods seller
`
`account is A17W5Z9BSG4H6V.
`
`A. Tile’s Authorized Reseller Network
`
`FACTS
`
`19.
`
`To create and maintain goodwill among its customers, Tile has taken substantial
`
`steps to ensure that Tile-branded products are of the highest quality. As a result, Tile has
`
`become widely known and is recognized throughout Massachusetts, the United States, and the
`
`world as a manufacturer of high quality products.
`
`20.
`
`One of the most significant steps taken in this regard is Tile’s development of a
`
`nationwide network of exclusive and authorized Resellers (“Authorized Resellers” and the
`
`“Authorized Reseller Network”).
`
`21.
`
`As a prerequisite to becoming part of the carefully selected Authorized Reseller
`
`Network, Tile requires that each of its Authorized Resellers agrees to sell Tile products only at
`
`the locations and websites designated in their agreement (the “Authorized Reseller Agreement”).
`
`The terms of the Authorized Reseller Agreement also prohibit the transshipment, diversion, or
`
`transfer of any Tile products to any other party.
`
`
`304651914 v3
`
`4
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 5 of 12
`
`22.
`
`Tile’s requirement that each of its Authorized Resellers agrees not to transfer any
`
`Tile products to any other party is well known in the retail industry, particularly among retailers
`
`of consumer electronics. Upon information and belief, Defendants were fully aware of this at all
`
`relevant times.
`
`B. Tile’s Trademark Usage
`
`23.
`
`On September 11, 2018, the U.S. Patent and Trademark Office (“USPTO”) issued
`
`Reg. No. 5,561,760 for use of the Tile mark on, inter alia, a “Wireless tracking device…”
`
`(hereinafter, the “Tile Mark”).
`
`24.
`
`Tile is the sole and exclusive owner of the federally registered Tile Mark on the
`
`USPTO’s Principal Register. The Tile Mark has been in continuous use since at least 2014.
`
`Said registration is in full force and effect.
`
`25.
`
`Tile owns several other federal trademark and service mark registrations, many of
`
`which utilize the Tile Mark. Said registrations are in full force and effect. All of Tile’s
`
`trademarks, including the Tile Mark, are collectively referred to as the “Tile Marks.”
`
`26.
`
`Tile advertises, distributes, and sells its products to consumers under the Tile
`
`Marks.
`
`27.
`
`Tile has also acquired common law rights in the use of the Tile Marks throughout
`
`the United States.
`
`28.
`
`Tile’s federal trademark registrations were duly and legally issued, are valid and
`
`subsisting, and constitute prima facie evidence of Tile’s exclusive ownership of the Tile Marks.
`
`29.
`
`Tile has invested significant time, money, and effort in advertising, promoting,
`
`and developing the Tile Marks throughout the United States and the world. Tile has also
`
`implemented an Authorized Reseller Network in order to guarantee that Tile products sold to
`
`
`304651914 v3
`
`5
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 6 of 12
`
`consumers meet high standards of quality control. As a result of such actions, Tile has
`
`established substantial goodwill and widespread recognition in its Tile Marks, and those marks
`
`have become associated exclusively with Tile and its products by both customers and potential
`
`customers, as well as the general public at large.
`
`C. Defendants’ Infringing and Improper Conduct
`
`30.
`
`Defendants have sold and are currently selling Tile products on several online
`
`retail platforms, including, but not limited to, Amazon.com.
`
`31.
`
`32.
`
`Defendants offer for sale and sell Tile products using the Tile Marks.
`
`Tile has never authorized or otherwise granted Defendants permission to use the
`
`Tile Marks in the sale of its products or otherwise.
`
`33.
`
`Defendants are falsely advertising that the Tile products they list for sale on
`
`Amazon.com and other websites are “new” despite the fact that they are in fact used or
`
`liquidation product.
`
`34.
`
`Defendants’ literally false advertisement of a used or liquidation product as a
`
`“new” product is detrimental to Tile as consumers do not receive the product that they believe
`
`that they are obtaining and such false advertising by Defendants results in less sales of actual
`
`“new” Tile product.
`
`35. Moreover, Defendants advertise and/or infer that their Tile products come with a
`
`manufacturer’s warranty when they do not. Again, Defendants are falsely advertising the terms
`
`of Tile’s warranty.
`
`36.
`
`Tile warrants that its products will be free from defects in materials and
`
`workmanship for a period of one year. Tile’s warranty does not apply to products purchased
`
`from unauthorized resellers such as Defendants.
`
`
`304651914 v3
`
`6
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 7 of 12
`
`37. Warranty information is important to consumers as is evidenced by the
`
`Defendants’ listing on their Amazon pages that their Tile products come with a manufacturer’s
`
`warranty.
`
`38.
`
`Defendants’ continued advertisement and sale of used or liquidation Tile product
`
`as “new” as well as its false promise of a full Tie warranty has harmed, and continues to harm,
`
`Tile as well as the consuming public.
`
`D. The Likelihood of Confusion and Injury Caused by Defendants’ Actions
`
`39.
`
`40.
`
`Defendants’ actions substantially harm Tile through their false advertising.
`
`Defendants’ actions substantially harm Tile and its consumers who ultimately
`
`purchase Defendants’ Tile products believing them to be the same genuine, warranted products
`
`that they would receive from Tile or an Authorized Reseller.
`
`41.
`
`Defendants’ conduct results in consumer confusion as well as the dilution of
`
`Tile’s goodwill and trade name as consumers are not receiving the products they believe they are
`
`purchasing.
`
`42.
`
`The sale of Tile products by unauthorized resellers interferes with Tile’s ability to
`
`control the quality and reputation of products bearing the Tile Marks.
`
`43.
`
`As a result of Defendants’ actions, Tile is suffering the loss of the enormous
`
`goodwill it created in the Tile Marks.
`
`44.
`
`Defendants are likely to continue to commit the acts complained of herein, and
`
`unless restrained and enjoined, will continue to do so, all to Tile’s irreparable harm.
`
`COUNT I
` (Trademark Infringement in Violation of 15 U.S.C. § 1114)
`
`45.
`
`Tile hereby realleges each and every allegation contained in the foregoing
`
`paragraphs as if fully set forth herein.
`
`
`304651914 v3
`
`7
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 8 of 12
`
`46.
`
`47.
`
`This is a claim for federal trademark infringement under 15 U.S.C. § 1114.
`
`The acts of Defendants alleged herein constitute the use in commerce, without the
`
`consent of Tile, of a reproduction, counterfeit, copy, or colorable imitation of the Tile Marks in
`
`connection with the sale, offering for sale, distribution, or advertising of goods, which use is
`
`likely to cause confusion or mistake, or to deceive consumers, and therefore infringes Tile’s
`
`rights in the Tile Marks, all in violation of the Lanham Act.
`
`48.
`
`Defendants have used, and continue to use, the Tile Marks in the sale of non-
`
`genuine Tile products that are not subject to Tile’s warranty and that are not “new” as
`
`Defendants advertise.
`
`49.
`
`Defendants’ infringing activities are likely to cause, are actually causing, and are
`
`willful and intended to cause, confusion, mistake, and deception among members of the trade
`
`and the general consuming public as to the origin and quality of such products, and constitute
`
`trademark infringement under 15 U.S.C. § 1114.
`
`50.
`
`Defendants’ use of the Tile Marks as described herein demonstrates an
`
`intentional, willful, and malicious intent to trade on the goodwill associated with the Tile Marks,
`
`thereby causing immediate, substantial, and irreparable injury to Tile.
`
`51.
`
`As a direct and proximate result of Defendants’ actions, Tile has been, and
`
`continues to be, damaged by Defendants’ activities and conduct. Defendants have profited
`
`thereby, and, unless their conduct is enjoined, Tile’s reputation and goodwill will continue to
`
`suffer irreparable injury that cannot adequately be calculated or compensated by money
`
`damages. Accordingly, Tile is entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
`
`
`
`
`
`
`304651914 v3
`
`8
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 9 of 12
`
`COUNT II
`(Unfair Competition and False Advertising in Violation of 15 U.S.C. § 1125(a))
`
`52.
`
`Tile hereby realleges each and every allegation contained in the foregoing
`
`paragraphs as if fully set forth herein.
`
`53.
`
`54.
`
`This is a claim for federal trademark infringement under 15 U.S.C. § 1125(a).
`
`Tile engages in interstate activities designed to promote its goods and services
`
`sold, as well as the goodwill associated with the Tile Marks, throughout the United States.
`
`55.
`
`The Tile Marks have been, and will continue to be, known throughout the United
`
`States as identifying and distinguishing Tile’s products and services.
`
`56.
`
`By selling or distributing products using the Tile Marks as alleged herein,
`
`Defendants are engaging in unfair competition, false advertising, and/or falsely representing
`
`sponsorship by, affiliation with, or connection to Tile and its goods and services in violation of
`
`15 U.S.C. § 1125(a).
`
`57.
`
`By advertising or promoting products using the Tile Marks as alleged herein,
`
`Defendants are misrepresenting the nature, characteristics, and qualities of its goods and services
`
`in violation of 15 U.S.C. § 1125(a).
`
`58.
`
`Defendants’ actions demonstrate an intentional, willful, and malicious intent to
`
`trade on the goodwill associated with the Tile Marks, thereby causing immediate, substantial,
`
`and irreparable injury to Tile.
`
`59.
`
`By selling and advertising products under the Tile Marks as alleged herein, Tile is
`
`entitled to a judgment of three times its damages and Defendants’ ill-gotten profits, together with
`
`reasonable attorneys’ fees, pursuant to 15 U.S.C. § 1117(a).
`
`60.
`
`As a direct and proximate result of Defendants’ actions, Tile has been, and
`
`continues to be, damaged by Defendants’ activities and conduct. Defendants have profited
`
`
`304651914 v3
`
`9
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 10 of 12
`
`thereby, and unless their conduct is enjoined, Tile’s reputation and goodwill will continue to
`
`suffer irreparable injury that cannot adequately be calculated or compensated by money
`
`damages. Accordingly, Tile is entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
`
`COUNT III
`(Unfair Competition in Violation of M.G.L. c. 93A)
`
`61.
`
`Tile hereby realleges each and every allegation contained in the foregoing
`
`paragraphs as if fully set forth herein.
`
`62.
`
`Tile and Defendants are in the conduct of trade or commerce within the meaning
`
`of M.G.L. c. 93A.
`
`63.
`
`As detailed above, Defendants’ continued interference and unauthorized sale of
`
`Tile products constitutes an unfair and deceptive business practice.
`
`64.
`
`Defendants’ acts have irreparably harmed Tile and, unless enjoined, will continue
`
`to do so in a manner affording Tile no adequate remedy at law.
`
`65.
`
`Defendants have refused to desist from these wrongful acts, and therefore
`
`Defendants have indicated that they intend to continue their unlawful conduct, unless restrained
`
`by this Court.
`
`RELIEF REQUESTED
`
` WHEREFORE, Plaintiff Tile, Inc. prays for judgment in its favor and against
`
`Defendants providing the following relief:
`
`1.
`
`Finding that, (i) as to Count I, Defendants’ unauthorized sale of Tile products
`
`infringes on Tile’s registered trademarks, in violation of 15 U.S.C. § 1114; (ii) as
`
`to Count II, Defendants’ unauthorized sale of Tile products constitutes unfair
`
`competition and false advertising, in violation of 15 U.S.C. § 1125(a); as to Count
`
`III, Defendants have engaged in willful unfair competition in violation of Mass.
`
`
`304651914 v3
`
`10
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 11 of 12
`
`Gen. Laws c. 93A; resulting in Defendants, their officers, agents, servants,
`
`employees, attorneys, and any other persons or entities acting in concert or
`
`participation with Defendants, including but not limited to any online platform
`
`such as Amazon.com or any other website, website host, website administrator,
`
`domain registrar, or
`
`internet service provider, being preliminarily and
`
`permanently enjoined from:
`
`a. using the Tile Marks or any other of Tile’s intellectual property;
`
`b. acquiring, or taking any steps to acquire, any Tile products acquired in
`
`violation of Tile’s Authorized Reseller Agreements, or through any other
`
`improper or unlawful channels;
`
`c. selling, or taking any steps to sell, any Tile products unless Defendants can
`
`substantiate with documentary evidence that the specific Tile products they
`
`are listing for sale were not acquired in violation of Tile’s Authorized Reseller
`
`Agreements, or through any other improper or unlawful channels;
`
`d. engaging in any activity constituting unfair competition with Tile;
`
`e. inducing, assisting, or abetting any other person or entity in engaging in or
`
`performing any of the business activities described in the paragraphs above.
`
`2.
`
`Award Tile its damages suffered as a result of Defendants’ acts and treble said
`
`damages as provided by law pursuant to 15 U.S.C. § 1117 and M.G.L. c. 93A;
`
`3.
`
`Award Tile its reasonable attorneys’ fees in bringing this action as allowed by
`
`law;
`
`4.
`
`Award Tile pre-judgment and post-judgment interest in the maximum amount
`
`allowed under the law;
`
`
`304651914 v3
`
`11
`
`

`

`Case 1:20-cv-10712-ADB Document 1 Filed 04/10/20 Page 12 of 12
`
`5.
`
`6.
`
`Award Tile the costs incurred in bringing this action; and
`
`Grant Tile such other relief as this Court deems just and proper.
`
`DEMAND FOR JURY TRIAL
`
`Tile hereby requests a trial by jury on all causes of action so triable.
`
`Respectfully submitted,
`
`Plaintiff,
`Tile, Inc.,
`by its attorney,
`
`
`
`/s/ Morgan T. Nickerson
`Morgan T. Nickerson (BBO # 667290)
`morgan.nickerson@klgates.com
`K&L Gates LLP
`State Street Financial Center
`One Lincoln Street
`Boston, MA 02111
`(617) 261-3100
`(617) 261-3175
`
`
`
`
`
`Dated: April 10, 2020
`
`
`304651914 v3
`
`12
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket