throbber
Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 1 of 12 PageID: 1
`
`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
`
`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.
`
`
`
`1
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 2 of 12 PageID: 2
`
`3.
`
`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.
`
`4.
`
`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.
`
`5.
`
`Despite advertising their Tile products as “new,” Defendant is deceiving
`
`customers by selling liquidated, used, or even potentially stolen Tile products.
`
`6.
`
`Consumers are likely to be and have been actually confused by Defendant’s sale
`
`of Tile products that are being falsely advertised as new product when they are in fact used,
`
`liquidated, or potentially stolen products.
`
`7.
`
`Defendant’s 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.
`
`8.
`
`As a result of Defendant’s 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 Defendant’s trademark
`
`infringement and unfair competition.
`
`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
`
`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
`
`
`
`2
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 3 of 12 PageID: 3
`
`business or has done business and sold products to consumers, including Tile products, within
`
`New Jersey.
`
`11.
`
`Venue is proper in the United States District Court for the District of New Jersey
`
`pursuant to 28 U.S.C. § 1391 because the sole Defendant resides in this judicial district, and
`
`because a substantial part of the events or omissions giving rise to this claim occurred in this
`
`District.
`
`PARTIES
`
`12.
`
`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”).
`
`13.
`
`Upon information and belief, Defendant 888 Digital Inc. is a New Jersey
`
`corporation with a principal place of business in Linden, New Jersey.
`
`14.
`
`Upon information and belief, Defendant owns and operates the website
`
`888digital.com. Nonetheless, Defendant attempts to mask its identity by registering the
`
`888digital domain with Perfect Privacy LLC.
`
`A. Tile’s Authorized Reseller Network
`
`FACTS
`
`15.
`
`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 New Jersey, the United States, and the
`
`world as a manufacturer of high quality products.
`
`16.
`
`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”).
`
`
`
`3
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 4 of 12 PageID: 4
`
`17.
`
`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. Tile also ensures that its Authorized Reseller
`
`Network is familiar with the subtle differences between its products to ensure that customers
`
`receive exactly the Tile product they intend to purchase.
`
`B. Tile’s Trademark Usage
`
`18.
`
`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”).
`
`19.
`
`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.
`
`20.
`
`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.”
`
`21.
`
`Tile advertises, distributes, and sells its products to consumers under the Tile
`
`Marks.
`
`22.
`
`Tile has also acquired common law rights in the use of the Tile Marks throughout
`
`the United States.
`
`23.
`
`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.
`
`
`
`4
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 5 of 12 PageID: 5
`
`24.
`
`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
`
`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.
`
`25.
`
`At no time has Tile consented to Defendant’s use of the Tile Marks.
`
`C. Defendant’s Infringing and Improper Conduct
`
`26.
`
`Defendant has sold Tile products on several retail platforms, including but not
`
`limited to 888digital.com.
`
`27.
`
`28.
`
`Defendant offers for sale and sells Tile products using the Tile Marks.
`
`Tile has never authorized or otherwise granted Defendant permission to use the
`
`Tile Marks in the sale of Tile products or otherwise.
`
`29.
`
`Defendant is falsely advertising the Tile products it lists for sale as “new” despite
`
`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.
`
`31.
`
`Defendant’s literally false advertisement of a used or liquidation product as a
`
`“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.
`
`
`
`5
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 6 of 12 PageID: 6
`
`32.
`
`33.
`
`The Tile products sold by Defendant do not come with a manufacturer’s warranty.
`
`Tile warrants that its products will be free from defects in materials and
`
`workmanship for a period of one year. However, Tile’s warranty does not apply to products
`
`purchased from unauthorized resellers such as Defendant.
`
`34. Warranty information is important to consumers when purchasing products and
`
`Defendant does not inform their customers that a Tile product purchased from it is missing this
`
`important feature.
`
`35.
`
`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
`
`harm, Tile as well as the consuming public.
`
`D. The Likelihood of Confusion and Injury Caused by Defendants’ Actions
`
`36.
`
`Defendant’s actions substantially harm Tile through their false advertising and
`
`infringing resale.
`
`37.
`
`Defendant’s actions substantially harm Tile and its consumers who ultimately
`
`purchase Defendant’s Tile products believing them to be the same genuine, warrantied products
`
`that they would receive from Tile or an Authorized Reseller.
`
`38.
`
`Defendant’s 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.
`
`39.
`
`The sale of Tile products by Defendant interferes with Tile’s ability to control the
`
`quality and reputation of products bearing the Tile Marks.
`
`40.
`
`As a result of Defendant’s actions, Tile is suffering the loss of the enormous
`
`goodwill it created in the Tile Marks.
`
`
`
`6
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 7 of 12 PageID: 7
`
`41.
`
`Defendant is 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)
`
`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.
`
`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.
`
`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.
`
`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
`
`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.
`
`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
`
`trademark infringement under 15 U.S.C. § 1114.
`
`
`
`7
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 8 of 12 PageID: 8
`
`49.
`
`Defendant’s 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.
`
`50.
`
`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.
`
`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.
`
`55.
`
`By selling or distributing products using the Tile Marks as alleged herein,
`
`Defendant is 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).
`
`56.
`
`By advertising or promoting products using the Tile Marks as alleged herein,
`
`Defendant is misrepresenting the nature, characteristics, geographic origin, and/or qualities of its
`
`goods and services in violation of 15 U.S.C. § 1125(a).
`
`
`
`8
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 9 of 12 PageID: 9
`
`57.
`
`Defendant’s 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.
`
`58.
`
`Tile is entitled to a judgment of three times its damages, Defendant’s ill-gotten
`
`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
`
`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.
`
`Accordingly, Tile is entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
`
`RELIEF REQUESTED
`
` 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
`
`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
`
`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,
`
`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;
`
`
`
`9
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 10 of 12 PageID: 10
`
`b. acquiring, or taking any steps to acquire, any Tile products 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 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;
`
`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 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
`
`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.
`
`
`
`
`
`
`
`10
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 11 of 12 PageID: 11
`
`
`
`Dated: April 15, 2020
`
`
`
`
`
`
`
`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
`
`

`

`Case 2:20-cv-04311-CCC-MF Document 1 Filed 04/15/20 Page 12 of 12 PageID: 12
`
`LOCAL CIVIL RULE 11.2 CERTIFICATION
`
`The undersigned hereby certifies at the time of filing this complaint that upon
`
`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)
`
`
`
`
`
`
`

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