Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA656617
`ESTTA Tracking number:
`02/18/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91220140
`Defendant
`Tansky, Leonid
`ALLISON M CORDER
`VALAUSKAS CORDER LLC
`150 S WACKER DR STE 620
`CHICAGO, IL 60606-4102
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`corder@vciplaw.com
`Motion to Suspend for Civil Action
`Allison M. Corder
`corder@vciplaw.com, mb@vciplaw.com
`/amc/
`02/18/2015
`00146315.PDF(1838803 bytes )
`
`
`ESTTA656617
`ESTTA Tracking number:
`02/18/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91220140
`Defendant
`Tansky, Leonid
`ALLISON M CORDER
`VALAUSKAS CORDER LLC
`150 S WACKER DR STE 620
`CHICAGO, IL 60606-4102
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`corder@vciplaw.com
`Motion to Suspend for Civil Action
`Allison M. Corder
`corder@vciplaw.com, mb@vciplaw.com
`/amc/
`02/18/2015
`00146315.PDF(1838803 bytes )
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial Nos. 86/199,235
`
`Published in the Official Gazette of December 16, 2014
`
`For the Mark: HYSON
`
`HYSON 2U, LTD.
`
`
`
`
`
`
`
`Opposer,
`
`Opposition No. 91220140
`
`
`
`
`
`
`
`
`
`v.
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`LEONID TANSKY,
`
`
`
`Applicant.
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`APPLICANT'S MOTION TO SUSPEND PROCEEDINGS
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`
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`Pursuant to 37 C.F.R. Section 2.117 and TBMP Section 510.02(a), Leonid Tansky
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`
`
`
`
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`
`
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`(“Applicant”) respectfully requests that the Board suspend the above-captioned proceeding
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`pending disposition of a civil action in the United States District Court for the Northern District
`
`of Illinois, which was filed by Applicant against Hyson 2U, Ltd. (“Opposer”) on June 11, 2014.
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`The civil action complaint Hyson USA, Inc., Leonid Tansky, Enna Gazaryan. vs. Hyson 2U, Ltd.,
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`Karolis Kaminskas, Inc., Karolis Kaminskas, Case No. 14 cv 04320 (“Civil Action”) is attached
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`as Exhibit 1. Both Applicant and Opposer are parties to the Civil Action, which involves
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`common issues of law and fact that may have a bearing on this opposition proceeding.
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`
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`1
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`
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`It is the policy of the Board to consider suspension of proceedings before it when a party
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`or both parties are involved in a civil action which may be dispositive of or have a bearing on the
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`Board case, until the termination of such civil action. The applicable rule is §2.l17(a), which
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`reads as follows:
`
`Whenever it shall come to the attention of the Trademark Trial and
`Appeal Board that a party or parties to a pending case are engaged
`in a civil action or another Board proceeding which may have a
`bearing on the case, proceedings before the Board may be
`suspended until termination of the civil action or the other Board
`proceeding.
`
`To the extent that civil action in a Federal district court involves issues in common with
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`
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`those in a proceeding before the Board, the decision of the district court is often biding on the
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`Board, while the decision of the Board is not binding on the court. See, e.g., Goya Foods Inc. v.
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`Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950 (2d Cir. 1988); American Bakeries Co.
`
`v. Pan-O-Gold Baking Co., 650 F. Supp. 563, 2 USPQ2d 1208, 1211 (D. Minn. 1986). See also
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`TBMP §510.02(a) (2014). Suspension of a Board proceeding pending the final determination of
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`another proceeding or proceedings is solely within the discretion of the Board. Id.
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`
`
`At issue in both this opposition proceeding and the Civil Action are the Applicant’s
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`HYSON marks. In this opposition proceeding, Opposer asserts grounds including priority and
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`likelihood of confusion. As seen in the the Civil Action complaint (Exhibit 1), Applicant asserts
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`grounds including trademark infringement, false designation of origin, and trademark dilution.
`
`
`
`Due to the nature of the claims in the Civil Action, the determination of the district court
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`may have a bearing on this opposition proceeding. Accordingly, the Board should suspend the
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`pending proceeding until a final determination in the Civil Action between the parties.
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`
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`2
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`
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`Applicant respectfully requests that the Board enter an order suspending this opposition
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`proceeding pending disposition of the Civil Action between the parties that is currently in the
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`United States District Court for the Northern District of Illinois.
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`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`/amc/
`Charles C. Valauskas
`Allison M. Corder
`
`Valauskas Corder LLC
`150 South Wacker Drive
`Suite 620
`Chicago, Illinois 60606
`(312) 673-0360 Telephone
`(312) 673-0361 Facsimile
`Attorneys for Applicant
`Leonid Tansky
`
`
`
`3
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`
`
`Date: February 18, 2015
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`
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`
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`CERTIFICATE OF MAILING
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`
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`This is to certify that I have served Applicant's Motion to Suspend Proceedings, by
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`mailing a true and correct copy on February 18, 2015, via United States first class mail, postage
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`prepaid, addressed to Opposer’s counsel of record as follows:
`
`
`
`Judi Smith
`The Law Office of Judi Smith, LLC
`1155 S. Washington St., Suite 101
`Naperville, IL 60540
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`
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`
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`/mb/
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`4
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`
`
`Exhibit 1
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`Exhibit 1Exhibit 1
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`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 1 of 45 PageID #:1
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 1 of 45 Page|D #:1
`
`UNITED STATES DISTRICT COURT FOR THE
`
`NORTHERN DISTRICT OF ILLINOIS
`
`EASTERN DIVISION
`
`HYSON USA, INC., an Illinois
`Corporation, LEONID TANSKY,
`Individually, and ENNA GAZARYAN,
`Individually
`
`Plaintiffs,
`
`vs.
`
`HYSON 2U, LTD., an Illinois Corporation,
`KAROLIS KAMINSKAS, INC., an Illinois
`Corporation, and KAROLIS KAMINSKAS,
`Individually.
`
`Defendants.
`
`\./%\—/H—/‘-u/‘-...o’\_/\../V&V../\.J\JH—/\-u.d"-../
`
`COMPLAINT
`
`Case No.
`
`JURY TRIAL DEMANDED
`
`NOW COME Plaintiffs, Hyson USA, Inc. (“Hyson USA”), Leonid Tansky (“Tansky”)
`
`and Enna Gazaryan (“Gaza1'yan”) (and collectively “Plaintiffs”), by and through their attorneys,
`
`Enterprise Law Group, LLP, and for their Complaint, state as follows:
`
`.1.’_fl§.§
`
`l. Hyson USA is an Illinois corporation with an office in Northbrook, Cook County,
`
`State of Illinois.
`
`2. Tansky is a resident of Northbrook, Cook County, State of Illinois.
`
`3. Gazaryan is a resident of Northbrook, Cook County, State of Illinois.
`
`4. Defendant, Hyson 2U, Ltd., (“Hyson 2U”) is an Illinois corporation with the office
`
`of its registered agent in Bensenville, State of Illinois.
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 2 of 45 PageID #:2
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 2 of 45 Page|D #22
`
`5. Defendant, Karolis Kaminskas, Inc., dfb/a Sojuz Enterprises (“Karninskas, Inc.’’) is
`
`an Illinois corporation with the office of its registered agent in Bensenville, State of
`
`Illinois.
`
`6. Upon information and beliefl Defendant, Karolis Karninskas (“Kaminskas”) is an
`
`Illinois resident, a former employee of Hyson USA and is currently an owner and
`
`corporate officer of Hyson 2U and Kaminskas, Inc.
`
`(Hyson 2U, Kaminskas, 1110.,
`
`and Kanninskas may be collectively identified as “Defendants”).
`
`Jurisdiction, Venue and Statement of Claims
`
`7. Plaintiffs’ claims are for federal trademark infringement, false designation of origin,
`
`trademark dilution pursuant to the Lanham Act 15 U.S.C. §1l25(c), deceptive trade
`
`practices under the Illinois Deceptive Trade Practices Act, 815 ILCS §510/I, er seq.,
`
`violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, 815
`
`ILCS §505/ 1, er seq., common law trademark infringement, cybersquatting under the
`
`Lanham Act 15 U.S.C. §l l25(d), violation of the Illinois Trade Secrets Act
`
`(“ITSA”)
`
`765
`
`ILCS
`
`§1065/ 1,
`
`er
`
`seq.
`
`and
`
`common
`
`law trade
`
`secrets
`
`misappropriation,
`
`tortious interference with business relationships, conversion,
`
`replevin, trespass to chattels, unjust enrichment, violations of the Illinois Wage
`
`Payment and Collection Act, violation of the Illinois Sales Representative Act, and
`
`an accounting.
`
`8. This court has subject matter jurisdiction over the Plaintiffs’ claims under 28 U.S.C.
`
`§1331 and §1338. This court has supplemental jurisdiction over the remainder of
`
`Plaintiffs’ claims under 28 U.S.C. §l331, §l338(a) and (b), and §l367.
`
`9. Venue is proper in the United States District Court for the Northern District of
`
`2
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 3 of 45 PageID #:3
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 3 of 45 Page|D #:3
`
`Illinois under 28 U.S.C. §l391(b), as one or more Defendants conduct business
`
`primarily in this District and a substantial part of the activities giving rise to the
`
`claims alleged herein occurred in this District.
`
`General Allegations in Support of Plaintiffs’ Claims
`
`10. Hyson USA is a private label food importer and wholesale food distributor, serving
`
`the retail grocery industry in the USA. The company features an extensive line of
`
`Hyson brand products with a high degree of market recognition. Hyson USA is a
`
`service oriented company that goes to all lengths to satisfy its customers‘ needs.
`
`Hyson USA prides itself on being a reputable company and has invested significant
`
`time, money, and efforts in developing the following:
`
`a.
`
`a comprehensive advertising, business and marketing plan;
`
`b.
`
`long-standing relationships with vendors and suppliers of specialty foods,
`
`including olive oils, preserved meats and canned goods;
`
`c.
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`long term relationships with its customers and vendors that lead to sales of
`
`products and services;
`
`d. a website and a product catalogue that contains original and aesthetically pleasing
`
`content, organized information, images or photos; and
`
`e. use of the Hyson Family of Marks (as defined herein).
`
`Hyson USA’s Development and Acquisition
`of Federal Trademark Protection
`
`1l.Hyson USA is owner of Federal Registered Trademark, U.S. Reg. No. 3,543,222
`
`(Exhibit A) (hereinafter the “Hyson USA mark”).
`
`a. The “Hyson USA mark” has been used in commerce since at least as early as June
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 4 of 45 PageID #:4
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 4 of 45 Page|D #:4
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`1, 2006;
`
`b. Hyson USA has used the “Hyson USA mark” extensively to promote its services
`
`and products in interstate commerce, including in advertising on its website and
`
`newspapers and magazines, through marketing campaigns in the print media, at
`
`trade shows, and through the internet in various ways;
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`0. Hyson USA has earned significant revenues using the “Hyson USA mark”;
`
`d. Hyson USA’s exclusive and continuous use of, and advertising related to the
`
`“Hyson USA mark” has tremendous value to Hyson USA.
`
`12. Tansky is owner of Federal Trademark Applications, U.S. Serial. Nos. 86/ 199,257,
`
`86/ 199,235, 86/199,214 (Group Exhibit B) (hereinafter the “Hyson Marks”, and with
`
`the “Hyson USA mark”, collectively referred to as the “Hyson Family of Marks”).
`
`a. The Hyson Marks have been used in commerce since at
`
`least as early as
`
`September 11, 2009;
`
`b. Tansky has used the Hyson Marks extensively to promote his services and
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`products in interstate commerce,
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`including in advertising on its website and
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`newspapers and magazines, through marketing campaigns in the print media, at
`
`trade shows, and through the internet in various ways;
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`c. Tansky’s exclusive and continuous use of, and advertising related to the Hyson
`
`Marks have tremendous value to Tansky.
`
`Defendants Hygon 2U and Kaminskas’
`Violations of Hyson USA and Tanslgfs Trademark Rights
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`13. Upon information and belief, at certain times Defendants Kaminskas and Hyson 2U
`
`violated, and continue to violate, Hyson USA and Tansky’s trademark rights by
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 5 of 45 PageID #:5
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 5 of 45 Page|D #:5
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`using the Hyson Family of Marks, or confusingly similar derivatives of the Hyson
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`Family of Marks, in their advertising and marketing efforts.
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`14.
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`Also, Defendants Kaminskas,
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`Inc., and Hyson 2U’s uses of “Hyson 2U” are
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`confusingly similar to the Hyson Family of Marks and are designed to trade on the
`
`goodwill and reputations of Hyson USA and Tansky. Hyson 2U is a derivative of
`
`the Hyson USA mark and the Hyson Family of Marks and is likely to confuse and
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`mislead customers
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`into believing that products bought
`
`from Hyson 2U or
`
`Kaminskas, Inc. came from Hyson USA.
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`l5.
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`Upon information and belief, Hyson 2U and Kaminskas,
`
`Ir1c.,
`
`furthered this
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`confusion by reselling inventory that was misappropriated and stolen from Hyson
`
`USA.
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`Cybersguatting and Deceptive Trade Practices by Defendant Hyson 2U
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`l6.
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`Upon information and belief in furtherance of its efforts to deceive the customer,
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`Hyson 2U has registered and owns certain domain names, including, without
`
`limitation, the following: www.hyson2u.com; hysonusaorg; hysonusanet;
`
`hysonusainfo; hyson2u.net; and shophysoncom.
`
`17.
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`18.
`
`19.
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`Upon information and belief, Hyson 2U has registered domains that are derivatives
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`of the Hyson Family of Marks to prevent Hyson USA from acquiring and utilizing
`
`these domains.
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`Upon information and belief, Hyson 2U has registered these domains to further its
`
`efforts to divert Hyson USA’s customers, who perform internet searches for Hyson
`
`USA and its products or services.
`
`Upon information and belief, Hyson 2U has utilized similar derivatives of the Hyson
`
`5
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 6 of 45 PageID #:6
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 6 of 45 Page|D #:6
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`Family of Marks in its advertising and social media campaign, such as text and
`
`content found at www.facebook.com/hyson2u or substantially similar domains.
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`20. Upon information and belief, Hyson 2U’s business plan is to trade upon Hyson
`
`USA’s goodwill and name to deceive the customer or prospective customer into
`
`believing that products or services received from Hyson 2U are coming from Hyson
`
`USA.
`
`Further Allegations
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`21. Tansky is the President and the sole shareholder of Hyson USA.
`
`22. Tansky brought
`
`to Hyson USA his invaluable experience of working in the
`
`wholesale food distribution business, and the customers and vendors from his prior
`
`companies which distributed products for over 12 years.
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`23. Kaminskas was a manager and an employee of Hyson USA.
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`24. Gazaryan worked as the bookkeeper for Hyson 2U.
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`25. Hyson USA was iocated at a warehouse at 612 Supreme Drive, Bensenvilie, Illinois.
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`26. On or about March or April 2012, in the midst of financial difficulties, Hyson USA
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`lost its liability insurance, and transferred all of its property from 612 Supreme Drive
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`to the warehouse located at 464 Country Club Dr., Bensenville, Illinois, which was
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`leased by Goldfield Inc., and to Goldf1eld’s New York warehouse.
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`27. On information and belief, on or about September 21, 2012, Kaminskas established
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`Hyson 2U.
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`28. I-Iyson 2U began operations only after inventory was transferred from Hyson USA
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`on February 4, 2013. Before that date, Hyson USA had operated at 464 Country
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`Club Drive, Bensenville, Illinois, and Hyson 2U subsequently signed a new lease in
`
`6
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`
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`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 7 of 45 PageID #:7
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 7 of 45 Page|D #:7
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`its own name after the transfer of inventory.
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`29. Hyson 2U used and continues to use the Hyson USA mark and the other “Hyson
`
`Family of Marks” on a number of products that are being marketed and sold to
`
`customers.
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`30. Hyson 2U and Karninskas have used the Hyson USA domain and website to sell
`
`goods.
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`31. On or about October 2012, Goldfield’s New York Warehouse was destroyed by
`
`Hurricane Sandy, along with a significant amount of inventory that belonged to
`
`Hyson USA. However, some inventory and equipment was returned or was
`
`transferred to Hyson 2U at its Bensenville warehouse.
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`32. On or about February 2, 2014, attorneys for Hyson 2U sent letters firing Tansky and
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`Gazaryan from Hyson 2U.
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`33. On information and belief, Tansky performed services for Hyson 2U for which he is
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`entitled to commissions.
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`34. Hyson 2U failed to pay Tansky the compensation that he had earned and that is
`
`owed to him.
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`35. Hyson 2U retained property and documents that originally belonged to Hyson USA.
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`Hyson 2U also retained Gaza1'yan’s personal property.
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`36. Upon information and belief in 2014, Hyson 2U sold a large shipping container of
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`tea that had been ordered in 2013 by Tansky under the name of Hyson USA.
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`37. Upon information and belief, Kaminskas also is receiving checks from customers
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`made out to Hyson USA, and is endorsing such cheeks and depositing them in his
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`accounts or those of Kaminskas, Inc., or Hyson 2U. Kaminskas in not an officer or
`
`7
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`
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`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 8 of 45 PageID #:8
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 8 of 45 Page|D #:8
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`authorized signatory on Hyson USA bank accounts and has no authority to endorse
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`or deposit Hyson USA checks.
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`38. Upon information and belief, Kaminskas and Hyson 2U used and continue to use
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`Hyson USA accounts with third party providers.
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`Counts I-VI
`
`Claims against Defendants Hyson 2U, Kaminskas, Inc., and Kaniinskas
`
`Count I
`
`Federal Trademark Infringement
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`39. Plaintiffs Hyson USA and Tansky reallege and reincorporate paragraphs 1 through
`
`38 of this Complaint.
`
`40. Defendants’ use of the Hyson Family of Marks or confusingiy similar derivatives,
`
`such as “Hyson 2U”, is without Hyson USA and Tansky’s authorization or consent.
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`41. Defendants unauthorized use of the Hyson Family of Marks or confusingly similar
`
`derivatives, such as “Hyson 2U”, is likely to cause confusion, mistake, or deception
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`as to the affiliation, connection, or association of Defendants or their products with
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`Hyson USA and Tansky, and the feclerally-registered Hyson USA mark, in violation
`
`of 15 U.S.C. §l1l4 (1) (a).
`
`42. Because Defendants had both actual and constructive notice of Hyson USA and
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`Tansky’s prior use of and rights to the Hyson Family of Marks before Defendants
`
`began using them or confusingly similar derivatives,
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`such as “Hyson 2U”,
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`Defendants have willfully infringed the Hyson Family of Marks.
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`43. Defendants’ unauthorized conduct has deprived and will continue to deprive Hyson
`
`USA and Tansky of the ability to control the customers’ perception of their products,
`
`8
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`
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`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 9 of 45 PageID #:9
`Case: 1:14—cv—O432O Document #: 1 Filed: 06/11/14 Page 9 of 45 Page|D #:9
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`marketed in connection with the Hyson Family of Marks, placing the valuable
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`reputations and goodwill of Hyson USA and Tansky in the hands of the Defendants,
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`over whom Hyson USA and Tansky have no control.
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`44. As a result of Defendants’ conduct, Hyson USA and Tansky
`
`have suffered
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`substantial damages and irreparable harm to the Hyson Family of Marks,
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`constituting injuries for which Hyson USA and Tansky have no adequate remedy at
`
`law. Unless the Court enjoins Defendants’ conduct, Hyson USA and Tansky will
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`continue to suffer irreparable harm.
`
`Count II
`
`False Designation of Origin
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`45. Plaintiffs Hyson USA and Tansky realiege and reincoiporate paragraphs 1 through
`
`44 of this Complaint.
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`46. Defendants’ actions complained of herein, are likeiy to cause confusion, mistake, or
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`deception among customers and suppliers as to the affiliation, connection, or
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`association of Defendants or their products with Hyson USA and Tansky and the
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`Hyson Family of Marks, and as to the origin, sponsorship, or approval of Defendants
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`and their products in violation of Section 43 of the Lanham Act, 15 U.S.C. §1 125(a).
`
`47. Defendants’ unauthorized conduct has deprived and will continue to deprive Hyson
`
`USA and Tansky of the ability to control the customers’ perception of the products
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`marketed in connection with the Hyson Family of Marks, placing the vaiuable
`
`reputations and goodwill of Hyson USA and Tansky in the hands of the Defendants,
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`over whom Hyson USA and Tansky have no control.
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`48. Defendants had both actual and constructive notice of Hyson USA and Tansky’s
`
`9
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`
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`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 10 of 45 PageID #:10
`Case: 1:14—cv—O432O Document #2 1 Filed: 06/11/14 Page 10 of 45 Page|D #:1O
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`prior use of and rights to the Hyson Family of Marks, before Defendants began using
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`them or confusingly similar derivatives, such as “Hyson 2U”. Thus, Defendants have
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`willfully engaged in a false designation of origin.
`
`49.
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`As a result of Defendants’ conduct, Plaintiffs have suffered substantial damages and
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`irreparable harm to their Hyson Family of Marks, constituting injuries for which
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`Plaintiffs have no adequate remedy at law. Unless the Court enj oins Defendants’
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`conduct, Plaintiffs will continue to suffer irreparable harm.
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`Count III
`
`Trademark Dilution
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`50.
`
`Plaintiffs Hyson USA and Tansky reallege and reincorporate paragraphs 1 through
`
`49 of this Complaint.
`
`51.
`
`The Hyson Family of Marks is famous and distinctive within the meaning of 15
`
`U.S.C. §i l25(c), and was famous and distinctive long before Defendants began their
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`unauthorized use of the Hyson USA mark or confusingly similar derivatives, such as
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`“Hyson 2U”.
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`52. Thus, Defendants’ conduct is likely to tarnish, diminish, and dilute the distinctive
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`quality of Hyson USA and Tansky’s rights in the famous Hyson Family of Marks in
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`violation of 15 U.S.C. §1l25(c).
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`53.
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`Moreover, Defendants conduct is likely to diminish the advertising value of the
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`Hyson Family of Marks, and due to the high disparity between the quality and
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`service Hyson USA and Tansky provide under the Hyson Family of Marks, and the
`
`quality and service provided by Defendants, Defendants’ conduct is also likely to
`
`tarnish the distinctiveness of the famous Hyson Family of Marks.
`
`10
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 11 of 45 PageID #:11
`Case: 1:14—cv—O432O Document #2 1 Filed: 06/11/14 Page 11 of 45 Page|D #211
`
`54.
`
`Because Defendants had both actual and constructive notice of Hyson USA and
`
`Tansky’s prior use of and rights to the Hyson Family of Marks before Defendants
`
`began using them or confusingiy similar derivatives,
`
`such as “Hyson 2U”,
`
`Defendants have willfully engaged in trademark dilution.
`
`55.
`
`As a result of Defendants’ conduct, Hyson USA and Tansky
`
`have suffered
`
`substantial damages and irreparable harm to the Hyson Family of Marks,
`
`constituting injuries for which Hyson USA and Tansky have no adequate remedy at
`
`law. Unless the Court enjoins Defendants’ conduct, Hyson USA and Tansky will
`
`continue to suffer irreparable harm.
`
`Count IV
`
`Violation of the Illinois Deceptive Trade Practices Act
`
`56.
`
`Plaintiffs Hyson USA and Tansky reallege and incorporate herein paragraph 1
`
`through 55 of this Complaint.
`
`57.
`
`Defendants’ actions complained of herein constitute deceptive trade practices in
`
`violation of 815 ILCS 510/2 because they are likely to cause confusion or
`
`misunderstanding as to source, sponsorship or approval of Defendants’ products.
`
`Defendants’ deceptive conduct also creates a likelihood of confusion as to the
`
`affiiiation, connection or association of its goods or services with Hyson USA.
`
`58.
`
`Because Defendants had both actual and constructive notice of Hyson USA and
`
`Tansky’s prior use of and rights to the Hyson Family of Marks before Defendants
`
`began using them, or confusingly similar derivatives, such as “Hyson 2U”,
`
`Defendants have wilifiilly engaged in deceptive trade practices.
`
`59. As a result of Defendants’ conduct, Hyson USA and Tansky
`
`have suffered
`
`ll
`
`
`
`Case:
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 12 of 45 PageID #:12
`1:l4—cv—O432O Document #2 1 Filed: 06/11/14 Page 12 of 45 Page|D #:12
`
`substantial damages and irreparable harm to the Hyson Family of Marks,
`
`constituting injuries for which Hyson USA and Tansky have no adequate remedy at
`
`law. Unless the Court enjoins Defendants’ conduct, Hyson USA and Tansky will
`
`continue to suffer irreparable harm.
`
`Count V
`
`Violation of the Illinois Consumer Fraud and
`
`Deceptive Business Practices Act
`
`60.
`
`Plaintiffs Hyson USA and Tansky reailege and incorporate herein paragraph 1
`
`through 59 of this Complaint.
`
`61.
`
`Defendants’ actions complained of herein constitute deception, misrepresentation,
`
`concealment, suppression or omission of material
`
`facts with the intent
`
`that
`
`consumers will
`
`rely upon the misrepresentation, concealment, suppression or
`
`omission of material facts in violation of the Illinois Consumer Fraud and Deceptive
`
`Business Practices Act, 815 ILCS 505/ 1 er seq., because they are likely to cause
`
`confusion or misunderstanding as to source, sponsorship or approval of Defendants’
`
`products or services. Defendants’ deceptive conduct also creates a likelihood of
`
`confusion as to the affiliation, connection or association of their goods or services
`
`with Hyson USA.
`
`62.
`
`As a result of Defendants’ conduct, Hyson USA and Tansky have suffered
`
`substantial damages and irreparable harm, constituting injuries for which they have
`
`no adequate remedy at law. Unless the Court enjoins Defendants’ conduct, Hyson
`
`USA and Tansky will continue to suffer irreparable harm.
`
`12
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 13 of 45 PageID #:13
`Case: 1:14—cv—O432O Document #2 1 Filed: 06/11/14 Page 13 of 45 Page|D #213
`
`Count VI
`
`Common Law Trademark Infringement
`
`63.
`
`64.
`
`Plaintiffs Hyson USA and Tansky reallege and reincorporate paragraphs 1 through
`
`62 of this Complaint.
`
`Hyson USA and Tansky are the owners of valid common law rights in the Hyson
`
`Family of Marks, which they have used continuously and in connection with their
`
`products and services, prior to Defendants’ unauthorized use of them or confusingly
`
`similar derivatives, such as “Hyson 2U.”
`
`65.
`
`Defendants’ actions complained about herein are likely to cause confusion, mistake,
`
`or deception as to the perceived affiliation, connection, or association of Defendants
`
`or their products with Hyson USA and Tansky and the Hyson Family of Marks, and
`
`as to the origin, sponsorship or approval of Defendants and their services in violation
`
`of Illinois common law.
`
`66.
`
`Because Defendants had both actual and constructive notice of Hyson USA and
`
`Tansky’s prior use of and rights to the Hyson Family of Marks before Defendants
`
`began using them, or confusingly similar derivatives, such as “Hyson 2U”,
`
`Defendants have willfully infringed Hyson USA and Tansky’s common law
`
`trademark rights.
`
`67.
`
`Defendants’ unauthorized conduct has deprived and will continue to deprive Hyson
`
`USA and Tansky of the ability to control the consumers’ perception of products
`
`marketed in connection with the Hyson Family of Marks, placing the valuable
`
`reputations and goodwill of Hyson USA and Tansky in the hands of the Defendants,
`
`over whom Hyson USA and Tansky have no control.
`
`13
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 14 of 45 PageID #:14
`Case: 1:14—cv—O432O Document #2 1 Filed: 06/11/14 Page 14 of 45 Page|D #214
`
`68. As a result of Defendants’ conduct, Hyson USA and Tansky have suffered
`
`substantial damages and irreparable harm to the Hyson Family of Marks,
`
`constituting injuries for which Hyson USA and Tansky have no adequate remedy at
`
`law. Unless the Court enjoins Defendants’ conduct, Hyson USA and Tansky will
`
`continue to suffer irreparable harm.
`
`Prayer for Relief for Counts I-VI
`
`WHEREFORE, Plaintiffs Hyson USA and Tansky request that this Honorable Court find
`
`in their favor and against Defendants Hyson 2U, Karninskas, and Kaminskas, Inc., and award
`
`the following remedies:
`
`a) a permanent injunction prohibiting Defendants, and their respective owners,
`
`officers, employees and agents from violating Hyson USA and Tansky’s federal and
`
`common law trademark rights, engaging in deceptive trade practices and unfair
`
`competition;
`
`b) that Defendants return, destroy and refrain from using any document, emails
`
`files or materials containing Hyson USA and Tansky’s trademarks or substantially
`
`similar derivatives; and
`
`c) that the Court order Defendants to indemnify (including fees and costs of
`
`defense) and hold Plaintiffs harmless from any and all claims made by any third parties
`
`based on Defendants’ violation of Hyson USA and Tansky’s federal and common law
`
`trademark rights, and their deceptive trade practices and unfair competition.
`
`Additionally, Plaintiffs Hyson USA and Tansky request the following:
`
`d) that Defendants be required to pay Hyson USA and Tansl<y’s actual damages;
`
`e) that Defendants be required to pay statutory damages;
`
`14
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 15 of 45 PageID #:15
`Case: 1:14—cv—O432O Document #2 1 Filed: 06/11/14 Page 15 of 45 Page|D #215
`
`1) that Defendants be required to account for and to disgorge all advantages,
`
`gains, or profits from their infringing and deceptive acts;
`
`g) that Defendants actions were willful, and as applicable, award exemplary,
`
`punitive, or treble damages;
`
`h) that Defendants pay Plaintiffs’ costs and attorneys’ fees relating to this lawsuit;
`
`i) that Defendants be required to pay pre- and post-judgment interest for any
`
`damages awarded to the Plaintiffs; and
`
`j) that Hyson USA and Tansky be granted such other relief as this Court deems
`
`equitable.
`
`Count VII
`
`Cyhersguatting under the Lanham Act, 15 U.S.C. §1125§d1, by Defendant Hyson 2U
`
`69. Plaintiff Hyson USA realleges and incorporates the allegations in paragraphs 1
`
`through 68 of this Complaint.
`
`70. Hyson USA owns all rights in and to the Hyson USA mark and derivative marks and
`
`the proprietary domain name www.hysonusa.com.
`
`71. The Hyson USA mark is a distinctive and famous mark, and was distinctive and
`
`famous prior to Hyson 2U’s registration of www.hyson2u.corn, hysonusaorg,
`
`hysonusanet, hysonusainfo, hyson2u.net, and shophysoncom.
`
`72. Hyson 2U has
`
`registered,
`
`trafficked in,
`
`and/or used: www.hyson2u.com,
`
`hysonusaorg, hysonusanet, hysonusainfo, hyson2u.net, and shophysoncom, which
`
`are almost identical to, and confusingly similar to, and/or dilutive of, the Hyson USA
`
`mark, and the proprietary domain name www.hysonusa.com.
`
`73. Upon information and belief, Hyson 2U’s use of the infringing domain names has at
`
`15
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 16 of 45 PageID #:16
`Case: 1:14—cv—O432O Document #2 1 Filed: 06/11/14 Page 16 of 45 Page|D #216
`
`all times been an intentional and wiilful attempt to profit in bad faith from the Hyson
`
`USA mark.
`
`74. Hyson 2U owns no trademark rights in or to “Hyson USA” or any similar marks.
`
`75. Hyson 2U has never used the infringing domain names with the authorization to
`
`register them or use them in connection with the bona fide offering of any goods or
`
`services.
`
`76. Hyson 2U has never made any bona fide, non-commercial or fair use of the Hyson
`
`USA mark on sites accessible under the infringing domain names, or otherwise.
`
`77. Hyson 2U has knowingly and in bad faith acquired infringing domain names to
`
`divert potential customers from the online locations of Hyson USA with the intent to
`
`create a likelihood of confusion as to the source, sponsorship, affiliation, or
`
`endorsement of the infringing domain names.
`
`78. Hyson USA has been damaged by such wrongful registration and use of the
`
`infringing domain names, and continues to be damaged, in violation of its valuabie
`
`trademark rights.
`
`79. As a direct and proximate result of Hyson 2U’s conduct, Hyson USA has suffered,
`
`and wiil continue to suffer, monetary loss and irreparabie injury to its business,
`
`reputation and goodwill.
`
`WHEREFORE, Plaintiff Hyson USA requests that this Honorable Court find in its
`
`favor and against Defendant Hyson 2U, and award the following remedies:
`
`a) a permanent injunction prohibiting Hyson 2U, and its respective owners, officers,
`
`employees and agents from acquiring or registering infringing domains;
`
`b) that Hyson 2U transfers all infringing domains to Hyson USA;
`
`16
`
`
`
`Case: 1:14-cv-04320 Document #: 1 Filed: 06/11/14 Page 17 of 45 PageID #:17
`Case: 1:14—cv—O432O Document #2 1 Filed: 06/11/14 Page 17 of 45 Page|D #217
`
`c) that Hyson 2U be required to pay all applicable statutory damages, fines and penalties;
`
`cl) that the Court order Hyson 2U to indemnify (including fees and costs of defense) and
`
`hold Hyson USA harmless for any and all claims made by any third parties based on its
`
`infringing domain names;
`
`e) that Hyson 2U’s actions were willful, and as applicable, award exemplary, punitive or
`
`treble damages;
`
`t) that Hyson 2U pay Plaintiffs costs and attorneys’ fees relating to this lawsuit;
`
`g) that Hyson 2U be required to pay pre- and post-judgment interest for any damages
`
`awarded to Hyson USA; and
`
`b) that Hyson USA be granted such other relief as this Court deems equitable.
`
`Count VIII
`
`Violations of the Illinois Trade Secrets Act and Common Law Trade Secrets
`
`Misappropriation against Defendants Hpson 2U, Kaminskas, Inc., and Kaminskas
`
`80.
`
`81.
`
`Plaintiff Hyson USA realleges and incorporates the allegations in paragraphs 1
`
`thr
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