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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
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`Civil Action No.
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`ECF CASE
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`FREI ENTERPRISES, INC. d/b/a
`INK GENIE,
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` v.
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`HP, INC.
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`Plaintiff,
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`Defendant.
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff, Frei Enterprises, Inc. (“Plaintiff” or “Ink Genie”) by and through its
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`undersigned attorneys, STERN & SCHURIN LLP, as and for its Complaint against Defendant,
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`HP, Inc. (“Defendant” or “HP”), alleges as follows:
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`NATURE OF ACTION
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`1.
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`This is a case of greed and improper market control disguised as legitimate “brand
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`protection.”
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`2.
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`Plaintiff Ink Genie legally operates within a market niche that serves as a
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`valuable, efficient segment of the economy. Specifically, Ink Genie sources various types of new
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`and 100% authentic ink and toner cartridges from surplus suppliers and other downstream
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`market participants. Ink Genie then advertises and offers these products to its customers for the
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`lowest possible price on its online website located at www.inkgenie.com.
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`3.
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`Ink Genie thus benefits consumers who can access authentic HP branded ink and
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`toner products at discount prices on the Ink Genie website.
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 2 of 11 PageID: 2
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`4.
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`HP and its purported authorized distributors desire to eliminate discount sellers –
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`like Ink Genie – in order to maintain control over the prices at which HP branded products are
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`advertised and sold to consumers, and thereby maintain the highest profit margins possible for
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`these products.
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`5.
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`With these goals, manufacturers, like HP, often use improper and unlawful means
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`to try to eliminate lawful market competition so as to increase their own profits.
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`6.
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`In this case, HP has employed such unlawful means, including threats from its
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`counsel to bring legal action against Ink Genie for trademark and trade dress infringement.
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`7.
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`For example, on May 10, 2021, HP’s counsel sent a “cease and desist” letter to an
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`entity named “Genie Trading Group LLC.” HP and its counsel mistakenly believed that “Genie
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`Trading Group LLC” was associated with Ink Genie, when in fact, Genie Trading Group LLC
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`has nothing to do with the sale of ink and toner cartridges, and its only relationship with Ink
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`Genie is that it is owned by both of Ink Genie’s principles.
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`8.
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`In its “cease and desist letter,” HP demands unequivocally that the recipient
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`“immediately remove all HP products” from its website, identifying www.inkgenie.com by
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`name, and all other “unauthorized websites, stop selling any and all HP Products, and identify all
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`sources of HP Products it is selling.” HP further states that to avoid a lawsuit, the recipient must
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`“immediately” comply with its demands. A copy of the original letter sent by HP’s counsel on
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`May 10, 2021, is attached hereto as Exhibit A.
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`9.
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`More recently, on July 6, 2021, HP’s counsel sent a second letter again
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`threatening and demanding that the recipient immediately stop advertising and selling HP
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`branded products.
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`2
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 3 of 11 PageID: 3
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`10.
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`HP again threatened to bring suit if its demands are not met immediately. A copy
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`of the letter dated July 6, 2021 is attached hereto as Exhibit B.
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`11.
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`Since Ink Genie legally procures, advertises, markets, promotes, offers for sale,
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`and sells HP branded products that are 100% genuine and authentic, Ink Genie has done
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`absolutely nothing wrong and rejects HP’s demands.
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`12.
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`Accordingly, Ink Genie now brings this action against HP seeking a declaration of
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`non-infringement, so as to once and for all stop HP’s misplaced and clumsy threats and
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`intimidation tactics.
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`JURISDICTION AND VENUE
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`13.
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` This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
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`1338 with respect to the claims arising under the Lanham Act, 15 U.S.C. § 1051, et seq., and
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`pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq.
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`14.
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` This Court also has diversity jurisdiction over this dispute under 28 U.S.C.
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`§1332(a) since the matter in controversy exceeds $75,000 and the dispute is between citizens of
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`different states.
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`15.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(2)
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`because a substantial part of the events giving rise to the claims in this Complaint occurred in
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`this judicial district.
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`THE PARTIES
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`16.
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`Ink Genie is a corporation organized and existing under the laws of the State of
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`New Jersey located at 11 Cayuga Court, Springfield, New Jersey.
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`17.
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`Ink Genie legally procures, then advertises, markets, promotes, offers for sale, and
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`sells ink and toner products to the public through its online store located at www.inkgenie.com.
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`3
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 4 of 11 PageID: 4
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`18.
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`Upon information and belief, HP is a corporation organized and existing under the
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`laws of the State of Delaware.
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`19.
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`Upon information and belief, HP has a principal place of business located in
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`California at 1501 Page Mill Road, Palo Alto, California.
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`20.
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`Upon information and belief, HP is in the business of advertising, marketing,
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`promoting, developing, offering for sale, and selling a variety of products, including the toner
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`and ink cartridges at issue in this case.
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`21.
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`The ink and toner cartridges at issue herein are advertised and sold under HP
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`trademarks, and the associated HP trade dress in its packaging.
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`22.
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`Upon information and belief, HP does a substantial amount of business in the
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`State of New Jersey and in this judicial district.
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`23.
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`Upon information and belief, HP advertises, markets, promotes, offers for sale,
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`and sells ink and toner products under the HP® trademarks, logos, and associated trade dress in
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`its packaging for ink and toner products which are at issue in this lawsuit, in the State of New
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`Jersey and in this judicial district.
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`24.
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`Upon information and belief, HP sells ink and toner products throughout the
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`United States and the world, including in the State of New Jersey and in this judicial district.
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`STATEMENT OF FACTS
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`INK GENIE’S LAWFUL ADVERTISEMENT AND SALE OF HP PRODUCTS
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`Ink Genie has built a business by legally procuring, then advertising, marketing,
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`25.
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`promoting, offering for sale, and selling different types of authentic and genuine ink and toner
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`cartridges on its own online website located at www.inkgenie.com.
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`4
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 5 of 11 PageID: 5
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`26.
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`Some of the authentic and genuine products that Ink Genie legally procures, then
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`advertises, markets, promotes, offers for sale, and sells are HP® branded ink and toner
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`cartridges.
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`27.
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`At all times material hereto, the HP® branded ink and toner cartridges advertised
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`on Ink Genie’s online website were brand new and had been legally purchased by Ink Genie.
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`28.
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`Ink Genie legally procures, then markets, promotes, advertises, offers for sale, and
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`sells 100% authentic and genuine HP® branded products under the HP® trademarks, logos, and
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`associated trade dress in its original packaging.
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`29.
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`Ink Genie does not use any of HP’s photos on its website. Rather, Ink Genie only
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`uses photos that it takes itself.
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`30.
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`Such pictures of HP® branded ink and toner products may be found on Ink
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`Genie’s online website at https://inkgenie.com/collections/genuine-hp-ink-and-toner-cartridges,
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`where there are currently over 400 listings being advertised and offered for sale.
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`31.
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`Each of these ink and toner products appearing on the Ink Genie website are
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`genuine and authentic HP® branded products.
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`32.
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`The ink and toner products appearing on the Ink Genie website appear in
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`packaging that serves as part of HP’s trade dress in its packaging design.
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`33.
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`By the same token, all of the HP®-branded products advertised and sold by Ink
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`Genie bear the original copyright designs and logos that are depicted on the packaging of the
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`HP®-branded products.
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`34.
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`Ink Genie unilaterally and lawfully controls the prices at which it advertises and
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`offers the goods that it sells on its website, including the HP®-branded products at issue herein.
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`5
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 6 of 11 PageID: 6
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`35.
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`Although unnecessary, in order to eliminate any conceivably possible likelihood
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`of confusion, Ink Genie makes it clear on its website that it is not affiliated with HP in any way.
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`36.
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`In particular, in connection with each HP® branded ink and toner product it
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`advertises and offers for sale, Ink Genie provides a clear and easily understood disclaimer
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`statement to its customers.
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`37.
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`The Ink Genie statement reads, “Ink Genie® is an independent ink and toner
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`reseller and is not affiliated with HP. This allows us to offer original, brand name ink and toner
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`cartridges at below retail prices.”
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`38.
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`Thus, the disclaimer statement clearly states that Ink Genie is not affiliated with
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`HP, thus eliminating any purported likelihood of confusion that HP may believe would somehow
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`otherwise exist.
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`39.
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`This disclaimer is prominent and impossible to miss. For example, this statement
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`appears twice on each product page, under the “add to cart” button and in the product
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`description.
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`40.
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`The Ink Genie website also provides additional disclaimer statements regarding
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`HP® branded items.
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`41.
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`For example, in connection with HP-branded ink and toner product it advertises
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`and offers for sale, Ink Genie also states: “Every HP product that Ink Genie® offers is a genuine
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`OEM product.”
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`DEFENDANT’S WRONGFUL ACTIVITIES
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`42.
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`HP manufactured or caused to be manufactured the HP®-branded ink and toner
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`products that were advertised and sold by Ink Genie, and which are at issue in this case.
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`6
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 7 of 11 PageID: 7
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`43.
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`Packaging of HP’s products comprises HP registered trademarks, including HP®,
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`U.S. Reg. No. 1840215, and the registered design logo
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`, U.S. Reg. No. 4272548
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`(collectively “the HP Trademarks”), as well as the associated trade dress in its packaging design.
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`44.
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`Upon information and belief, the packaging of HP® branded ink and toner
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`products also comprise copyrighted designs and textual material, which are also proprietary to
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`HP.
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`45.
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`HP advertises and sells its HP® branded ink and toner products directly to
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`consumers on its website located at www.hp.com.
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`46.
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`Upon information and belief, HP also sells these same products on a wholesale
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`basis to wholesale distributors, which then resell these products to other businesses and/or direct
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`to consumers through online retail websites.
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`47.
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`Ink Genie has no knowledge of the contractual terms or contractual relationships
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`between HP and its wholesale distributors, if any.
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`48.
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`Upon information and belief, all of the HP products at issue in this case were
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`already sold once by HP to or through at least one of its so-called “authorized distributors.”
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`49.
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`Accordingly, HP has already been paid for and has already received revenue from
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`each sale of HP®-branded ink and toner products advertised and sold by Ink Genie.
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`50.
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`The revenues received by HP were earned well before Ink Genie ever commenced
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`advertising and marketing the HP® branded ink and toner products for re-sale to consumers.
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`51. Well established doctrines make clear that trademark, trade dress and copyright
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`laws do not prevent purchasers of such items from re-selling them without permission of the
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`original manufacturer or original intellectual property rights holder. This is commonly referred
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`to as the “First Sale Doctrine.”
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`7
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 8 of 11 PageID: 8
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`52. Moreover, the long recognized “First Sale Doctrine” also permits a reseller to use
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`a party’s trademark and trade dress to identify the goods it is selling. Such use is entirely
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`legitimate and does not create a likelihood of confusion as to the source of the product nor with
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`respect to the trademark or trade dress holder’s sponsorship or affiliation.
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`53.
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`The marketplace is thus routinely presented with multiple sellers of the same
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`product, and customers can therefore shop for the best price.
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`54.
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`However, in this case, HP has undertaken various measures to try to prevent the
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`marketplace from working in this legitimate manner.
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`55.
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`For example, in HP’s May 10, 2021, letter to Ink Genie, HP states unequivocally
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`that “HP Products May Only Be Sold By Authorized Sellers Through Authorized Channels.”
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`56.
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`In addition, HP also purports to claim that the product sold by a so-called
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`“unauthorized re-seller” is materially different from the same exact product sold by an
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`“authorized” seller because they fail to conform to so-called “quality control” standards imposed
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`by HP on authorized sellers.
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`57.
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`Here, however, the alleged quality control requirements are all “pretextual” and
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`created exclusively for the purpose of restricting competition.
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`58.
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`HP’s May 10, 2021, letter also claims that the products Ink Genie sells are
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`materially different because HP “forbids Authorized Sellers from relabeling, repackaging or
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`otherwise altering HP Products or any labels or literature accompanying the products.” However,
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`as previously noted, Ink Genie does not alter the products in any way, and HP does not even
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`claim that Ink Genie does so.
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`8
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 9 of 11 PageID: 9
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`COUNT I
`DECLARATION OF INVALIDITY, UNENFORCEABILITY AND/OR
`NON- INFRINGEMENT UNDER THE LANHAM ACT
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`Ink Genie repeats and realleges each of the preceding allegations in paragraphs as
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`59.
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`though fully set forth herein.
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`60.
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`Ink Genie has advertised, marketed, offered for sale, and sold products alleged by
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`HP to be infringing and which, according to HP, infringe its trademark and trade dress rights.
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`61.
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`However, and as described herein, Ink Genie is advertising and selling only 100%
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`authentic and genuine HP Products which it lawfully procured, and which were originally sold
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`by HP and or its authorized partners.
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`62.
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`Accordingly, an actual controversy has arisen and now exists between Ink Genie
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`and HP concerning whether Ink Genie has infringed and is infringing HP’s trademark and trade
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`dress rights in Ink Genie’s advertisements and sales of products on its website,
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`www.inkgenie.com.
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`63.
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`Upon information and belief, HP still believes and maintains that Ink Genie’s
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`activities with respect to its advertising, marketing, offer for sale, and sale of the HP® branded
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`ink and toner products constitute infringement of HP’s trademark and trade dress rights.
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`64.
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`HP objects to Ink Genie’s advertising and sale of HP® branded ink and toner
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`products.
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`65.
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`HP objects to Ink Genie’s advertising and sale of ink and toner products bearing
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`the HP Trademarks, including the registered word mark HP®, U.S. Reg. No. 1840215.
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`66.
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`HP objects to Ink Genie’s advertising and sale of ink and toner products bearing
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`the HP Trademarks, including the registered design logo
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`, U.S. Reg. No. 4272548 (“the HP
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`Design Logo”).
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`9
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 10 of 11 PageID: 10
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`67.
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`Upon information and belief, the HP Design Logo is also protectable under the
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`Copyright Act, 17 U.S.C. § 101 et seq.
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`68.
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`HP objects to Ink Genie’s advertising and sale of ink and toner products in
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`packaging bearing HP’s trade dress and the HP Design Logo.
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`69.
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`In contrast, Ink Genie believes and alleges that its products, advertisements, and
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`marketing and promotional materials do not infringe upon any valid rights of HP, and that it has
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`not committed any acts of infringement under the Lanham Act or the Copyright Act.
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`70.
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`By virtue of the foregoing, Ink Genie desires a judicial determination of the
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`parties’ rights and duties with respect to the intellectual property rights asserted by HP.
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`71.
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`A judicial declaration is necessary and appropriate at this time so that the parties
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`may proceed in accordance with their respective rights as determined by the Court.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays for judgment against Defendant as follows:
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`A.
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`For judgment declaring that HP’s trademark and trade dress rights are not
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`infringed by Ink Genie.
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`B.
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`Awarding Ink Genie costs, expenses, and reasonable attorney’s fees as permitted
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`by law; and
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`C.
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`Awarding Ink Genie such other and further relief as the Court may deem just and
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`proper.
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`JURY DEMAND
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`Plaintiff demands a trial by jury on all issues so triable.
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`10
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`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 11 of 11 PageID: 11
`Case 2:21-cv-14209—JXN-CLW Document 1 Filed 07/27/21 Page 11 of 11 PageID: 11
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`Dated: July 27, 2021
`Garden City, New York
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`STERN & SCHURIN LLP
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`Penina Green (PG 4648)
`-
`, eternachurineom
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`Attorneys for Plaintifi’
`595 Stewart Avenue, Suite 510
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`Garden City, New York 11530
`Telephone: (516) 248-0300
`Facsimile: (516) 283-0277
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`Steven Stern ($85203)
`Richard S. Schurin (R80199)
`STERN & SCHURIN LLP
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`(PRO HAC VICE APPLICATION
`FORTHCOMING)
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`11
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