`
`Michael R. Murphy
`Jennifer J. Nagle
`K&L GATES LLP
`State Street Financial Center
`One Lincoln Street
`Boston, MA 02111
`(617) 261-3100
`(617) 261-3175
`michael.r.murphy@klgates.com
`jennifer.nagle@klgates.com
`Attorneys for Plaintiff
`Tile, Inc.
`
`TILE, INC.,
`
`
`
`v.
`
`Plaintiff,
`
`888 DIGITAL INC.,
`
` Defendant.
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`
`CIVIL ACTION NO. __________
`
`DOCUMENT ELECTRONICALLY
`FILED
`
`COMPLAINT AND DEMAND FOR
`JURY TRIAL
`
`
`Plaintiff Tile, Inc. (“Tile” or “Plaintiff”), by and through its undersigned counsel K&L
`
`
`
`Gates LLP, for its Complaint against Defendant 888 Digital Inc. (“888 Digital” or “Defendant”),
`
`alleges upon information and belief as follows:
`
`NATURE OF THIS ACTION
`
`1.
`
`Plaintiff seeks injunctive relief and monetary damages for Defendant’s trademark
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`infringement, unfair competition, false advertising under the Lanham Act, 15 U.S.C. § 1051, et
`
`seq., arising from Defendant’s wrongful, unauthorized promotion and sale of Tile’s products.
`
`2.
`
`Tile sells its products through a nationwide network of Authorized Resellers.
`
`
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`1
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`3.
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`Further, Tile sells its products under the “Tile” brand. Tile is the owner of a
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`federally-registered trademark TILE®, and has been utilizing that trademark since 2014.
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`4.
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`Defendant offers for sale and sells non-genuine Tile products bearing this
`
`registered trademark on its website, 888digital.com. Tile products sold via unauthorized
`
`resellers, such as 888 Digital, do not come with a Tile warranty.
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`5.
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`Despite advertising their Tile products as “new,” Defendant is deceiving
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`customers by selling liquidated, used, or even potentially stolen Tile products.
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`6.
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`Consumers are likely to be and have been actually confused by Defendant’s sale
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`of Tile products that are being falsely advertised as new product when they are in fact used,
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`liquidated, or potentially stolen products.
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`7.
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`Defendant’s conduct has produced and, unless enjoined by this Court, will
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`continue to produce a likelihood of consumer confusion and deception, to the irreparable injury
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`of consumers and Tile.
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`8.
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`As a result of Defendant’s actions, Tile is suffering a loss of the enormous
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`goodwill that Tile has created in its trademarks and is losing profits from lost sales of products.
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`This action seeks permanent injunctive relief and damages for Defendant’s trademark
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`infringement and unfair competition.
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`JURISDICTION AND VENUE
`
`9.
`
`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
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`Trademark Laws of the United States.
`
`10.
`
`This Court has personal jurisdiction over Defendant which is a New Jersey
`
`corporation with its principal place of business in Linden, New Jersey. Defendant regularly does
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`2
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`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 3 of 12 PageID: 3
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`business or has done business and sold products to consumers, including Tile products, within
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`New Jersey.
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`11.
`
`Venue is proper in the United States District Court for the District of New Jersey
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`pursuant to 28 U.S.C. § 1391 because the sole Defendant resides in this judicial district, and
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`because a substantial part of the events or omissions giving rise to this claim occurred in this
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`District.
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`PARTIES
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`12.
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`Plaintiff Tile, Inc. is a Delaware corporation with its principal place of business in
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`San Mateo, CA. Tile designs, manufactures, and sells a variety of wireless tracking devices used
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`to locate objects (“Tile products”).
`
`13.
`
`Upon information and belief, Defendant 888 Digital Inc. is a New Jersey
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`corporation with a principal place of business in Linden, New Jersey.
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`14.
`
`Upon information and belief, Defendant owns and operates the website
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`888digital.com. Nonetheless, Defendant attempts to mask its identity by registering the
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`888digital domain with Perfect Privacy LLC.
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`A. Tile’s Authorized Reseller Network
`
`FACTS
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`15.
`
`To create and maintain goodwill among its customers, Tile has taken substantial
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`steps to ensure that Tile-branded products are of the highest quality. As a result, Tile has
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`become widely known and is recognized throughout New Jersey, the United States, and the
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`world as a manufacturer of high quality products.
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`16.
`
`One of the most significant steps taken in this regard is Tile’s development of a
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`nationwide network of exclusive and authorized Resellers (“Authorized Resellers” and the
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`“Authorized Reseller Network”).
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`
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`3
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`17.
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`As a prerequisite to becoming part of the carefully selected Authorized Reseller
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`Network, Tile requires that each of its Authorized Resellers agrees to sell Tile products only at
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`the locations and websites designated in their agreement (the “Authorized Reseller Agreement”).
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`The terms of the Authorized Reseller Agreement also prohibit the transshipment, diversion, or
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`transfer of any Tile products to any other party. Tile also ensures that its Authorized Reseller
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`Network is familiar with the subtle differences between its products to ensure that customers
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`receive exactly the Tile product they intend to purchase.
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`B. Tile’s Trademark Usage
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`18.
`
`On September 11, 2018, the U.S. Patent and Trademark Office (“USPTO”) issued
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`Reg. No. 5,561,760 for use of the Tile mark on, inter alia, a “Wireless tracking device…”
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`(hereinafter, the “Tile Mark”).
`
`19.
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`Tile is the sole and exclusive owner of the federally registered Tile Mark on the
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`USPTO’s Principal Register. The Tile Mark has been in continuous use since at least 2014.
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`Said registration is in full force and effect.
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`20.
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`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
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`trademarks, including the Tile Mark, are collectively referred to as the “Tile Marks.”
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`21.
`
`Tile advertises, distributes, and sells its products to consumers under the Tile
`
`Marks.
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`22.
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`Tile has also acquired common law rights in the use of the Tile Marks throughout
`
`the United States.
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`23.
`
`Tile’s federal trademark registrations were duly and legally issued, are valid and
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`subsisting, and constitute prima facie evidence of Tile’s exclusive ownership of the Tile Marks.
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`
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`4
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`24.
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`Tile has invested significant time, money, and effort in advertising, promoting,
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`and developing the Tile Marks throughout the United States and the world. Tile has also
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`implemented an Authorized Reseller Network in order to guarantee that Tile products sold to
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`consumers meet high standards of quality control. As a result of such actions, Tile has
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`established substantial goodwill and widespread recognition in its Tile Marks, and those marks
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`have become associated exclusively with Tile and its products by both customers and potential
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`customers, as well as the general public at large.
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`25.
`
`At no time has Tile consented to Defendant’s use of the Tile Marks.
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`C. Defendant’s Infringing and Improper Conduct
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`26.
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`Defendant has sold Tile products on several retail platforms, including but not
`
`limited to 888digital.com.
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`27.
`
`28.
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`Defendant offers for sale and sells Tile products using the Tile Marks.
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`Tile has never authorized or otherwise granted Defendant permission to use the
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`Tile Marks in the sale of Tile products or otherwise.
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`29.
`
`Defendant is falsely advertising the Tile products it lists for sale as “new” despite
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`the fact that they are in fact used, counterfeit, or liquidation products.
`
`30.
`
`Indeed, Tile’s investigation into other unauthorized resellers of products has
`
`confirmed that Defendant has improperly sold them used, counterfeit, or liquidation Tile
`
`products.
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`31.
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`Defendant’s literally false advertisement of a used or liquidation product as a
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`“new” Tile product is detrimental to Tile as consumers do not receive the product that they
`
`believe that they are obtaining and such false advertising by Defendant results in less sales of
`
`actual “new” Tile product.
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`
`
`5
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`32.
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`33.
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`The Tile products sold by Defendant do not come with a manufacturer’s warranty.
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`Tile warrants that its products will be free from defects in materials and
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`workmanship for a period of one year. However, Tile’s warranty does not apply to products
`
`purchased from unauthorized resellers such as Defendant.
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`34. Warranty information is important to consumers when purchasing products and
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`Defendant does not inform their customers that a Tile product purchased from it is missing this
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`important feature.
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`35.
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`Defendant’s continued advertisement and sale of used, liquidation, or counterfeit
`
`Tile product as “new” as well as its Tile product lacking a warranty has harmed, and continues to
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`harm, Tile as well as the consuming public.
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`D. The Likelihood of Confusion and Injury Caused by Defendants’ Actions
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`36.
`
`Defendant’s actions substantially harm Tile through their false advertising and
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`infringing resale.
`
`37.
`
`Defendant’s actions substantially harm Tile and its consumers who ultimately
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`purchase Defendant’s Tile products believing them to be the same genuine, warrantied products
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`that they would receive from Tile or an Authorized Reseller.
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`38.
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`Defendant’s conduct results in consumer confusion as well as the dilution of
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`Tile’s goodwill and trade name as consumers are not receiving the products they believe they are
`
`purchasing.
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`39.
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`The sale of Tile products by Defendant interferes with Tile’s ability to control the
`
`quality and reputation of products bearing the Tile Marks.
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`40.
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`As a result of Defendant’s actions, Tile is suffering the loss of the enormous
`
`goodwill it created in the Tile Marks.
`
`
`
`6
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`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 7 of 12 PageID: 7
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`41.
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`Defendant is likely to continue to commit the acts complained of herein, and
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`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)
`
`42.
`
`Tile hereby realleges each and every allegation contained in the foregoing
`
`paragraphs as if fully set forth herein.
`
`43.
`
`44.
`
`This is a claim for federal trademark infringement under 15 U.S.C. § 1114.
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`Tile engages in interstate activities designed to promote its goods and services
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`sold, as well as the goodwill associated with the Tile Marks, throughout the United States.
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`45.
`
`The Tile Marks have been, and will continue to be, known throughout the United
`
`States as identifying and distinguishing Tile’s products and services.
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`46.
`
`The acts of Defendant alleged herein constitute the use in interstate commerce,
`
`without the consent of Tile, of a reproduction, counterfeit, copy, or colorable imitation of the
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`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.
`
`47.
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`Defendant has used, and continues to use, the Tile Marks in the sale of Tile
`
`products that are not subject to Tile’s warranty and that are not “new” as Defendant advertises.
`
`48.
`
`Defendant’s 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
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`trademark infringement under 15 U.S.C. § 1114.
`
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`7
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`49.
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`Defendant’s use of the Tile Marks as described herein demonstrates an
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`intentional, willful, and malicious intent to trade on the goodwill associated with the Tile Marks,
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`thereby causing immediate, substantial, and irreparable injury to Tile.
`
`50.
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`As a direct and proximate result of Defendant’s actions, Tile has been, and
`
`continues to be, damaged by Defendant’s activities and conduct. Defendant has 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.
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`Accordingly, Tile is entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
`
`COUNT II
`(Unfair Competition, False Advertising in Violation of 15 U.S.C. § 1125(a))
`
`51.
`
`Tile hereby realleges each and every allegation contained in the foregoing
`
`paragraphs as if fully set forth herein.
`
`52.
`
`53.
`
`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.
`
`54.
`
`The Tile Marks have been, and will continue to be, known throughout the United
`
`States as identifying and distinguishing Tile’s products and services.
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`55.
`
`By selling or distributing products using the Tile Marks as alleged herein,
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`Defendant is engaging in unfair competition, false advertising, and/or falsely representing
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`sponsorship by, affiliation with, or connection to Tile and its goods and services in violation of
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`15 U.S.C. § 1125(a).
`
`56.
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`By advertising or promoting products using the Tile Marks as alleged herein,
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`Defendant is misrepresenting the nature, characteristics, geographic origin, and/or qualities of its
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`goods and services in violation of 15 U.S.C. § 1125(a).
`
`
`
`8
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`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 9 of 12 PageID: 9
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`57.
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`Defendant’s actions demonstrate an intentional, willful, and malicious intent to
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`trade on the goodwill associated with the Tile Marks, thereby causing immediate, substantial,
`
`and irreparable injury to Tile.
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`58.
`
`Tile is entitled to a judgment of three times its damages, Defendant’s ill-gotten
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`profits, together with reasonable attorneys’ fees and costs, pursuant to 15 U.S.C. § 1117(a).
`
`59.
`
`As a direct and proximate result of Defendant’s actions, Tile has been, and
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`continues to be, damaged by Defendant’s activities and conduct. Defendant has profited thereby,
`
`and unless its conduct is enjoined, Tile’s reputation and goodwill will continue to suffer
`
`irreparable injury that cannot adequately be calculated or compensated by money damages.
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`Accordingly, Tile is entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
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`RELIEF REQUESTED
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` WHEREFORE, Plaintiff Tile, Inc. prays for judgment in its favor and against Defendant
`
`providing the following relief:
`
`1.
`
`Finding that, (i) as to Count I, Defendant’s unauthorized sale of Tile products
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`infringes on Tile’s registered trademarks, in violation of 15 U.S.C. § 1114; (ii) as
`
`to Count II, Defendant’s unauthorized sale of Tile products constitutes unfair
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`competition and false advertising, in violation of 15 U.S.C. § 1125(a); resulting in
`
`Defendant, its officers, agents, servants, employees, attorneys, and any other
`
`persons or entities acting in concert or participation with Defendant, including but
`
`not limited to any online platform such as 888digital.com or any other website,
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`website host, website administrator, domain registrar, or internet service provider,
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`being preliminarily and permanently enjoined from:
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`a. using the Tile Marks or any other of Tile’s intellectual property;
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`
`
`9
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`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 10 of 12 PageID: 10
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`b. acquiring, or taking any steps to acquire, any Tile products in violation of
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`Tile’s Authorized Reseller Agreements, or through any other improper or
`
`unlawful channels;
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`c. selling, or taking any steps to sell, any Tile products unless Defendant 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 means, or unlawful channels;
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`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.
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`Award Tile its damages suffered as a result of Defendant’s acts and treble said
`
`damages as provided by law pursuant to 15 U.S.C. § 1117;
`
`3.
`
`Award Tile statutory damages up to $2,000,000.00 per Tile Mark infringed
`
`pursuant to 15 U.S.C. § 1117;
`
`4.
`
`Award Tile its reasonable attorneys’ fees in bringing this action as allowed by law
`
`pursuant to 15 U.S.C. § 1117;
`
`5.
`
`Award Tile pre-judgment and post-judgment interest in the maximum amount
`
`allowed under the law;
`
`6.
`
`7.
`
`Award Tile the costs incurred in bringing this action; and
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`Grant Tile such other relief as this Court deems just and proper.
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`DEMAND FOR JURY TRIAL
`
`Tile hereby requests a trial by jury on all causes of action so triable.
`
`
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`
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`10
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`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 11 of 12 PageID: 11
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`
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`Dated: April 15, 2020
`
`
`
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`
`
`
`Respectfully submitted,
`
`K&L GATES LLP
`
`
`
`By: /s/ Jennifer J. Nagle
`
`Michael R. Murphy, Esq.
`(NJ Attorney ID #: 034102007)
`Jennifer J. Nagle, Esq.
`(NJ Attorney ID #: 001832010)
`State Street Financial Center
`One Lincoln Street
`Boston, MA 02111
`(617) 261-3100
`Attorney for Plaintiff, Tile, Inc.
`
`
`
`
`
`11
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`
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`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 12 of 12 PageID: 12
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`LOCAL CIVIL RULE 11.2 CERTIFICATION
`
`The undersigned hereby certifies at the time of filing this complaint that upon
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`information and belief the matter in controversy is not the subject of any other action pending
`
`in any court, or of any pending arbitration or administrative proceeding.
`
`Dated: April 15, 2020
`
`/s/ Jennifer J. Nagle_____
`Jennifer J. Nagle
` (NJ Attorney ID #: 001832010)
`
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`