Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA551027
`ESTTA Tracking number:
`07/29/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057348
`Defendant
`Space Flex International LLC
`
`SPACE FLEX INTERNATIONAL LLC
`9500 7TH ST STE N
`RANCHO CUCAMONGA, CA 91730
`UNITED STATES
`Motion to Suspend for Civil Action
`Allan Howard Grant
`allan_grant@sbcglobal.net, allan@grants-law.com
`/ Allan Howard Grant /
`07/29/2013
`Notice and Motion to Suspend Proceeding, Point and Authorities, Dec of
`Allan.pdf(48344 bytes )
`Notice and Motion to Suspend (Exhibit A).pdf(1607149 bytes )
`Notice and Motion to Suspend (Exhibit B).pdf(648061 bytes )
`Notice and Motion to Suspend (Exhibit C).pdf(1331508 bytes )
`
`

`
`ALLAN H. GRANT, State Bar No. 213658
`GRANT’S LAW FIRM,
`3638 University Ave. # 203
`Riverside, CA 92503
`Telephone: (951) 544-5248
`Facsimile: (866) 858-6637
`www.grants-law.com
`
`Attorney for Respondent,
`SPACE FLEX INTERNATIONAL, LLC
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark Registration No.: 4,267,662
`For the mark “AQUA FRESH”
`Registered on January 1, 2013
`
`SEALED UNIT PARTS CO. INC.,
`
`OPPOSITION NO.: 92057348
`Assigned to: ELIZABETH A DUNN
`
`Opposition Filed: 6/7/2013
`
`NOTICE OF MOTION AND MOTION TO
`SUSPEND PROCEEDINGS; MEMORANDUM OF
`POINT AND AUTHORITIES AND
`DECLARATION OF ALLAN HOWARD GRANT
`IN SUPPORT THEREOF
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`vs.
`
`SPACE FLEX INTERNATIONAL, LLC
`
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TO EACH PARTY AND THEIR ATTORNEYS OF RECORD IN THIS
`
`CANCELLATION PROCEEDING:
`
`
`
`YOU ARE HEREBY NOTIFIED THAT, as soon as possible as
`
`counsel may be heard, in the Trademark Trial and Appeal Board of
`
`the United States Patent and Trademark Office, SPACE FLEX
`
`INTERNATIONAL, LLC (“Respondent”), will move the Trademark Trial
`
`and Appeal Board for an order to suspend this cancellation
`
`proceeding.
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`
`
`This motion will be made on the ground that there is
`
`another action pending in the United States District Court for
`
`the Central District of California, entitled SPACE FLEX
`
`INTERNATIONAL, LLC, vs. SEALED UNIT PARTS CO., INC., under Case
`
`No.: 5:13−cv−00567−VAP−OP, in which Petitioner (“SEALED UNIT
`
`PARTS CO., INC.”) in their Answer and Counter-Claims has prayed
`
`that the Court issue: (1) an order, pursuant to 15 U.S.C. §1119,
`
`directing the cancellation of United States trademark
`
`registration no. 4,267,622 for AQUA FRESH, as void ab initio,
`
`and (2) an order, pursuant to 15 U.S.C. §1119, directing the
`
`cancellation of United States trademark registration no.
`
`4,267,622 for AQUA FRESH, based on fraud committed by
`
`Plaintiff/Counter-Defendant (“SPACE FLEX INTERNATIONAL, LLC”)
`
`and/or its counsel in the prosecution of the trademark
`
`application that resulted in the Registration. As such, the
`
`above-cited civil action will have a bearing on this
`
`cancellation proceeding.
`
`
`
`This motion will be based on this notice , the points and
`
`authorities set for below, the attached declaration of Allan
`
`Howard Grant, the complete files and records in this proceeding,
`
`and if an oral hearing is requested by the Trademark and Trial
`
`Appeal Board, such further argument and evidence as permitted at
`
`the hearing.
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`
`
`
`
`
`
`
`
`GRANT’S LAW FIRM
`
`By: _/ Allan Howard Grant /______
`
`ALLAN HOWARD GRANT
`
`Attorney for Respondent,
`Space Flex International, LLC
`
`NOTICE MOT. & MOT. SUSPEND
`
`
`
`
`
`
`
`DATED: July 29, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`MEMORANDUM OF POINTS AND AUTHORIES
`
`I.
`
`INTRODUCTION
`
`
`
`Respondent, SPACE FLEX INTERNATIONAL, LLC, hereby moves the
`
`Trademark Trial and Appeal Board to suspend this notice of
`
`cancellation proceeding. There is another action pending between
`
`the Petitioner, SEALED UNIT PARTS CO. INC. (“Petitioner”) and
`
`Respondent that will have a bearing on this cancellation
`
`proceeding. According, the Trademark Trial and Appeal Board may
`
`properly suspend this cancellation proceeding pending the final
`
`determination of the civil action.
`
`II. STATEMENT OF FACTS
`
`On March 27, 2013 Respondent filed a Complaint in the
`
`United States District Court for the Central District of
`
`California, entitled SPACE FLEX INTERNATIONAL, LLC., vs. SEALED
`
`UNIT PARTS CO., INC., under Case No.: 5:13−cv−00567−VAP−OP
`
`(Declaration of Allan Howard Grant (“Grant Decl.”), ¶ 3; EXHIBIT
`
`A.) Respondent alleges claims of relief for Trademark
`
`Infringement, Unfair Competition & False Advertising, False
`
`Designation of Origin & False Description, Trademark
`
`Counterfeiting, State Trademark Dilution, Common Law Trademark
`
`Infringement, State Unfair Competition & False Advertising, and
`
`Tortious Conspiracy. ((“Grant Decl.”), ¶ 3; EXHIBIT A.)
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`On June 6, 2013 Petitioner filed an answer in which
`
`Petitioner has prayed that the Court issue: (1) “an order,
`
`pursuant to 15 U.S.C. §1119, directing the cancellation of
`
`United States trademark registration no. 4,267,622 for AQUA
`
`FRESH, as void ab initio,” and (2) “an order, pursuant to 15
`
`U.S.C. §1119, directing the cancellation of United States
`
`trademark registration no. 4,267,622 for AQUA FRESH, based on
`
`fraud committed by Plaintiff [“Space Flex International, LLC”]
`
`and/or its counsel in the prosecution of the trademark
`
`application that resulted in the Registration.” ((“Grant
`
`Decl.”), ¶ 4; EXHIBIT B.) As such, the above-cited civil action
`
`will have a bearing on this cancellation proceeding.
`
`On June 6, 2013 Petitioner alleged Counter-Claims against
`
`Respondent for: (1)CANCELLATION OF TRADEMARK REGISTRATION AS
`
`VOID AB INITIO, (2) CANCELLATION OF TRADEMARK REGISTRATION BASED
`
`ON FRAUD IN PROSECUTION, (3) Federal Unfair Competition,
`
`(4) Common Law Unfair Competition, (5) California Unfair
`
`Competition, (6) New Jersey Unfair Competition, (7) Tortious
`
`Interference, (8) Breach Of Contract, (9) Conversion, and
`
`(10) Defamation. ((“Grant Decl.”), ¶ 5; EXHIBIT C.) Petitioner
`
`in the Counter-Claims prayed for relief requesting that the
`
`Court issue: (1)”an order, pursuant to 15 U.S.C. §1119,
`
`directing the cancellation of United States trademark
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`registration no. 4,267,622 for AQUA FRESH, as void ab initio,”
`
`and (2) “an order, pursuant to 15 U.S.C. §1119, directing the
`
`cancellation of United States trademark registration no.
`
`4,267,622 for AQUA FRESH, based on fraud committed by
`
`Plaintiff/Counter-Defendant (“Space Flex International, LLC”)
`
`and/or its counsel in the prosecution of the trademark
`
`application that resulted in the Registration.” ((“Grant
`
`Decl.”), ¶ 5; EXHIBIT C.) As such, the above-cited civil action
`
`will have a bearing on this cancellation proceeding.
`
`III. STATEMENT OF LAW
`
`
`
`37 C.F.R. §2.117 provides in pertinent part:
`
`Whenever it shall come to the attention of the Trademark
`
`Trial & Appeal Board that a party or Parties to a pending
`
`case are engaged in a civil action or another proceeding
`
`which may have a bearing on the case, proceeding before the
`
`Board may be suspended until termination of the civil
`
`action or the other Board proceeding (37 C.F.R. §117(a).)
`
`A motion to suspend proceeding is well taken and should be
`
`granted where “[a] decision by the district court will be
`
`dispositive of the issues before the [Trademark Trial and
`
`Appeal] Board.” (Gen. Motors Corp v. Cadillac Club Fashions Inc.
`
`22 U.S.P.Q. 2d 1933, 1937 (TTAB 1992).)
`
`
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`IV. LEGAL ARGUMENT
`
`
`
`Approximately seventy-five (75) days after Respondent filed
`
`a Complaint in the United States District Court for the Central
`
`District of California, Petitioner initiated this Cancellation
`
`proceeding with the Trademark Trial & Appeal Board against
`
`Respondent.
`
`Additionally, two (2) days after Petitioner initiated this
`
`Cancellation proceeding with the Trademark Trial & Appeal Board,
`
`Petitioner filed an Answer and Counter-Claim against Respondent
`
`in a district court, which will be dispositive of the same
`
`issues before the Trademark Trial & Appeal Board. The actions
`
`pending in the district court will be dispositive of the issues
`
`before the Trademark Trial & Appeal Board as Petitioner has
`
`alleged in the district court and in this cancellation
`
`proceeding the same or similar causes of action between
`
`Petitioner and Respondent.
`
`
`
`Petitioner, moreover, seeks relief from the district court
`
`that Respondent’s trademark be cancelled, which is the same
`
`relief or similar relief sought in the cancellation proceeding.
`
`Should the district court grant Petitioner’s (SEALED UNIT PARTS
`
`CO. INC.’s) requested relief, the decision of the district court
`
`will be persuasive in the determination of the matters in this
`
`cancellation proceeding.
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`Accordingly, the Trademark Trial and Appeal Board may
`
`properly grant this motion, and, as such, should suspend this
`
`Cancellation proceeding pending the final determination of the
`
`civil action currently pending in the United States District
`
`Court for the Central District of California, entitled SPACE
`
`FLEX INTERNATIONAL, LLC, v. SEALED UNIT PARTS CO., INC., under
`
`Case No. 5:13−cv−00567−VAP−OP.
`
`V.
`
`CONCULSION
`
`
`
`For the foregoing reasons, the Trademark Trial and Appeal
`
`Board may properly suspending this Cancellation proceeding
`
`pending the final determination of the civil action currently
`
`pending in the United States District Court for the Central
`
`District of California, entitled SPACE FLEX INTERNATIONAL, LLC,
`
`v. SEALED UNIT PARTS CO., INC., under Case No.
`
`5:13−cv−00567−VAP−OP. Respondent respectfully requests that the
`
`Trademark Trial and Appeal Board grant this motion and stay this
`
`GRANT’S LAW FIRM
`
`Cancellation proceeding.
`
`
`
`DATED: July 29, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: _/ Allan Howard Grant /______
`
`ALLAN HOWARD GRANT
`
`Attorney for Respondent,
`Space Flex International, LLC
`
`
`
`DECLARATION OF ALLAN HOWARD GRANT
`
`I, Allan Howard Grant, declare as follows:
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`
`
`1.
`
`I am an attorney licensed to practice law in the State
`
`of California. I am the attorney for the Respondent, SPACE FLEX
`
`INTERNATIONAL, LLC (“Respondent”). I have personal knowledge of
`
`the facts stated herein, and if called as a witness, I could and
`
`would competently testify thereto, except as to those matters
`
`sated on information and belief, and as to such matters I
`
`believe them to be true.
`
`
`
`2.
`
`This declaration is being made in support of
`
`Respondent’s Motion to Suspend Proceedings.
`
`
`
`3.
`
`On March 27, 2013 Respondent filed a Complaint in the
`
`United States District Court for the Central District of
`
`California, entitled SPACE FLEX INTERNATIONAL, LLC., vs. SEALED
`
`UNIT PARTS CO., INC., under Case No.: 5:13−cv−00567−VAP−OP.
`
`Respondent alleges claims of relief for Trademark Infringement,
`
`Unfair Competition & False Advertising, False Designation of
`
`Origin & False Description, Trademark Counterfeiting, State
`
`Trademark Dilution, Common Law Trademark Infringement, State
`
`Unfair Competition & False Advertising, and Tortious Conspiracy.
`
`Attached as EXHIBIT A is a true and correct copy of the
`
`complaint filed by Respondent in the United States District
`
`Court for the Central District of California, entitled SPACE
`
`FLEX INTERNATIONAL, LLC., vs. SEALED UNIT PARTS CO., INC., under
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`Case No.: 5:13−cv−00567−VAP−OP, which is incorporated herein by
`
`reference as though fully set forth.
`
`
`
`4.
`
`On or about June 6, 2013 Petitioner filed an Answer to
`
`the Complaint filed by Respondent in the United States District
`
`Court for the Central District of California, entitled SPACE
`
`FLEX INTERNATIONAL, LLC., vs. SEALED UNIT PARTS CO., INC., under
`
`Case No.: 5:13−cv−00567−VAP−OP. Petitioner in its answer prayed
`
`that the Court issue: (1) “an order, pursuant to 15 U.S.C.
`
`§1119, directing the cancellation of United States trademark
`
`registration no. 4,267,622 for AQUA FRESH, as void ab initio,”
`
`and (2) “an order, pursuant to 15 U.S.C. §1119, directing the
`
`cancellation of United States trademark registration no.
`
`4,267,622 for AQUA FRESH, based on fraud committed by Plaintiff
`
`[“Space Flex International, LLC”] and/or its counsel in the
`
`prosecution of the trademark application that resulted in the
`
`Registration.” Attached as EXHIBIT B is a true and correct copy
`
`of the Answer filed by Petitioner in the United States District
`
`Court for the Central District of California, entitled SPACE
`
`FLEX INTERNATIONAL, LLC., vs. SEALED UNIT PARTS CO., INC., under
`
`Case No.: 5:13−cv−00567−VAP−OP, which is incorporated herein by
`
`reference as though fully set forth.
`
`
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`
`
`5.
`
`On or about June 6, 2013 Petitioner filed Counter-
`
`Claims against Respondent in the United States District Court
`
`for the Central District of California, entitled SPACE FLEX
`
`INTERNATIONAL, LLC., vs. SEALED UNIT PARTS CO., INC., under Case
`
`No.: 5:13−cv−00567−VAP−OP. Petitioner filed Counter-Claims
`
`against Respondent for:(1)CANCELLATION OF TRADEMARK REGISTRATION
`
`AS VOID AB INITIO,(2) CANCELLATION OF TRADEMARK REGISTRATION
`
`BASED ON FRAUD IN PROSECUTION, (3) Federal Unfair Competition,
`
`(4) Common Law Unfair Competition, (5) California Unfair
`
`Competition, (6) New Jersey Unfair Competition, (7) Tortious
`
`Interference, (8) Breach Of Contract, (9) Conversion, and
`
`(10) Defamation. Petitioner in the Counter-Claims prayed for
`
`relief requested that the Court issue: (1)”an order, pursuant to
`
`15 U.S.C. §1119, directing the cancellation of United States
`
`trademark registration no. 4,267,622 for AQUA FRESH, as void ab
`
`initio,” and (2) “an order, pursuant to 15 U.S.C. §1119,
`
`directing the cancellation of United States trademark
`
`registration no. 4,267,622 for AQUA FRESH, based on fraud
`
`committed by Plaintiff/Counter-Defendant (“Space Flex
`
`International, LLC”) and/or its counsel in the prosecution of
`
`the trademark application that resulted in the Registration.”
`
`Attached as EXHIBIT C is a true and correct copy of the Counter-
`
`Claims filed by Petitioner in the United States District Court
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`for the Central District of California, entitled SPACE FLEX
`
`INTERNATIONAL, LLC., vs. SEALED UNIT PARTS CO., INC., under Case
`
`No.: 5:13−cv−00567−VAP−OP, which is incorporated herein by
`
`reference as though fully set forth.
`
`6.
`
`I declare under penalty of perjury under the laws of the
`
`State of California that the foregoing is true and correct.
`
`Executed this 29th day of July at Riverside, California.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
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`
`
`By: _/ Allan Howard Grant /______
`
`ALLAN HOWARD GRANT
`
`NOTICE MOT. & MOT. SUSPEND
`
`
`
`
`
`
`
`
`
`
`
`

`
`PROOF OF SERVICE
`(37 C.F.R. § 2.119(a); TBMP § 113)
`
`
`The undersigned declares as follows:
`
` I
`
` am over the age of eighteen years and not a party to the
`proceeding. My business address is 3638 University Ave. #203,
`Riverside, CA 92503.
`
`On the date set forth below, following ordinary business
`practice, I served a copy of NOTICE OF MOTION AND MOTION TO
`SUSPEND PROCEEDINGS; MEMORANDUM OF POINT AND AUTHORITIES AND
`DECLARATION OF ALLAN HOWARD GRANT IN SUPPORT THEREOF on the
`following person(s) in this action:
`
`Jonathan A. David
`Lerner, David, Littenberg, Krumholz & Mentlik, LLP
`600 South Avenue West
`
`Westfield, NJ 07090
`E-mail: JDavid@ldlkm.com
`
` [X] (BY MAIL) I caused the above-mentioned document(s) to be
`deposited in the United States Postal Service, on the same day it
`is prepared, with the postage fully paid, in a sealed envelope
`and addressed to the person(s) being served.
`
`
`
`
`Telephone: (908) 518-6331
`Facsimile: (908) 654-7866
`
` [
`
` ] (BY OVERNIGHT DELIVERY) I caused the above-mentioned document(s)
`to be delivered to an overnight (express) delivery carrier, in an
`envelope designated by said overnight delivery carrier and
`addressed to the person(s) being served, with delivery fees
`provided for.
`
` [
`
` ] (BY MESSENGER) I caused the above-mentioned document(s) to be
`placed in a sealed envelope and delivered by hand this date to
`the offices of the person(s) being served.
`
` [
`
` ] (BY FACSIMILE) I caused the above-mentioned document(s) to be
`transmitted this date by facsimile transmission to the persons
`being served, from Newport Beach, California.
`
`
`[X] (BY EMAIL): I caused the above-mentioned document(s) to be sent
`via email to the email address of the person(s) being served
`
` I
`
` declare under penalty of perjury under the laws of the State of
`California that the foregoing is true and correct, and that this
`declaration was executed in Riverside, CA.
`
`July 29, 2013
` (Date)
`
`
`
`
`
`
`
`
`
`
`
`
`
`__/Allan Howard Grant /____
`
` By: Allan Howard Grant
`
`NOTICE MOT. & MOT. SUSPEND
`
`

`
`Ju|291311:47a
`
`GRANTS LAW FIRM
`
`8668586637
`
`EXHIBIT A
`
`

`
`.Ju|291311:47a
`
`GRANTS LAW FIRM
`
`8668586637
`
`F12
`
`Mar 23 ‘I3 09:24.3
`
`p.1
`8668585537
`GRANTS LAW FIRM
`Case} 5:l3—cv—OO567~VAP—OP Document 1 Filed 03/27/13” Page 1 of 43 Page ID #21
`
`1
`
`ALLAN I-I. GRANT (:33 No- 213553)
`GRANTS LAW F
`3_ 363.3 Universi
`r Ave. #203
`.. Riversuie, CA 2501
`3 Telephgnez 951) 544-5248
`4 Facslrmle: ( 66) 858-663’?
`a11ar1@grar1ts-1aw.com
`5 Attorne s for Plaintiff
`6 Space
`ex Intcmational, LLC
`
`7
`3
`9
`
`UNITED STATES DISTRICT COUR1;
`‘
`FOR THE CENTRAL DISTRICT OF CALEFO
`
`
`
`_
`‘
`
`3
`
`_"_=53_°
`
`:3
`--.l'
`5:2
`7,
`-
`0"
`
`_.,.J,
`7.‘-"LI
`ET’
`“J
`
`A
`A v 13 -=3
`”
`In
`CASE NO.:
`ll SPACE FLEX
`- LLC-, a Nevada Limited L1ab1l1ty
`COIVIPLAINT FOR:
`12 Company,
`
`5 6'7
`
`P ':._‘~»- .-Ki,-i’
`
`Plaiaatifl‘,
`
`Vs
`
`-
`
`SEALED UNIT PARTS COIKJPANY,
`II‘-IlC., a New York Corporation
`
`1.
`
`2'
`
`13
`
`14
`
`15
`16
`
`-
`Trademark II]fi‘iI! ement 15
`U.S.C-§1 I 14 (I)
`15 U.
`.C.
`§1125);
`.
`
`.
`
`.
`
`False
`
`§1 125( 21));
`
`n DOES ”’°"’=‘“°‘“‘*“""*
`13
`Defendants.
`
`3' £32: B::2e;;£:,;23§%€§i:3.
`§1 135(3));
`
`19:
`20
`21
`
`22
`23
`
`24
`
`25
`
`26
`
`C09?
`
`4. T adcrnark Counterfeiting (15
`Ur.S.C. §1114);
`5. Trademark Dilution (15
`U.S-C. $31125 C)‘ Cal- Bus. &
`Prof Code §1 3§0);
`6- Common Law Trade-rnark
`Infringement;
`
`7. Unfair _Cpmpe=E:i1:ion & False
`Advert1sm% Cal. Bus- 6’: Prof.
`Code 172
`et seq- and
`§175U et seq.)
`Torlious Conspiracy
`
`8.
`
`D FOR IURYTRIAL
`
`
`
`COMPLAEJT
`
`

`
`Jul 29 13 11:47a
`
`GRANTS LAW FIRM
`
`6666566637
`
`P-3
`
`:32
`8668586537
`GRANTS LAW FFRM
`Mar 28 13 09:24a
`Case 5:13-cv—O0567—VAP-OP Document 1 Filed 0327113 Page 2 of 43 Page ID #22
`
`1 2
`
`3 4 5 6
`
`7 3
`
`PLAINTIFF, SPACE FLEX INTERNATIONAL, LLC, complains and
`
`alleges against SEAL UNIT PARTS co, INC., a New York Corporation; and
`
`DOES 1 TO 10 (collectively, “DEFENDANTS”) as follows:
`
`1.
`
`PlaintiffSPACE FLEX INTERNATIONAL, LLC (“SPACE FLEX”) is, and
`
`I.
`
`THE PARTIES
`
`at all tinrtes herein mentioned was, a Limited Liability Company organized and
`9 A existing under the laws ofthe State ofNevada, with its principal place ofbusiness
`
`113
`
`1 I
`
`12
`
`located in Carson City, Nevada, registered with me California Secretary of State as
`
`a foreign Limited Liability Company qualified to do business in California, and
`
`13 doing business in the County of San Bernardino, State of California, with an ofiice
`14
`
`in the State ofCaIifornia located at 9500 7”‘ Sheet, Suite N, Rancho Cucamonga,
`
`15
`
`16 Cfllifflflll a.
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`17 2.
`I 8
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`Plaintiff is informed and believe and based on such information and belief
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`allege that Defendant SEALED UNIT PARTS CO., lI\IC. (“SEALED UNIT
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`1 9
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`29 "' PARTS”), is, and at all times herein mentioned was, a corporation organized and
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`21
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`existing under the laws ofthe State ofNew York, with its principal place of
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`22
`73 business located in Allenwood, New Jersey, registered with the New Jersey
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`24 Secretary of State as a foreign Corporation qualified to do business in New Jersey,
`25 with a business located at 2230 Lartdmark Place, Allenwood, New Jersey-
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`26
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`27 3.
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`The true names and capacities, whether individual, corporate, associate or
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`23 otherwise, of Defendants sued herein as Does I through 10, inclusive, are unknown
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`F
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`2
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`COIVEPLAINT
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`

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`Jul 29 13 11:47a
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`GRANTS LAW FIRM
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`5555555537
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`9-4
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`p.3
`866858663?
`GRANTS LAW FIRM
`Mar 28 13 EI9:24a
`Case 5:l3—cv-OO567~VAP-OP Document 1 Filed O3/27713 Page 3 of 43 Page ID #:3
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`4.
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`Plaintiffs are informed and believe, and upon such information and belief
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`allege, that each ofthe Defendants, including Does 1 through 10, inclusive, were, at
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`all times herein mentioned, acting in concert with, and in conspiracy with, each and
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`
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`every one of the remaining Defendants.
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`24 qualified.
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`25
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`26
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`H
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`JURISDICTION AND VENUE
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`27 6.
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`This is an action for Trademark Infiingernent, Unfair Competition, Passing
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`28 Off, False Designation of Origin and False Description, and common law
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`3
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`COMPLAINT
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`

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`Jul 29 13 11:47a
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`GRANTS LAW FIRM
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`8668586687
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`P-5
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`Mar 28 13 D9:24a
`Cas
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`p.4
`8658586637
`GF{ANT‘S LAW FIRM
`5:13—cv—OO567-VAFLOP Document 1 Filed O3/27113 Page 4 of 43 Page JD #:4
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`2 7.
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`This action involve a federal question pertaining to Trademarks and thus, the
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`Court has original jurisdiction pursuant to 28 U.S.C. § 1331 and 1338.
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`10
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`Constitution.
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`11
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`12
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`8.
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`Venue is proper in this jurisdiction under 28 U.S.C. §1391(b) and 139l(c} in
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`ii occurred within the Judicial District.
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`16
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`17
`::
`20 9.
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`n1.
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`FACTS common TO ALL CAUSES or ACTIONS
`(By Plaintiff against all Defendants)
`On or about 2304, Plaintiff SPACE FLEX and Defendant SEALED UNIT
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`
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`PARTS decided to go into business together, wherein Plaintiff would manufacture
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`replacement water filters and Defendant would sell and distribute those replacement
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`water filters. That business relationship between Plaintiff and Defendant continued
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`from 2004 continuously through the end of2D 12.
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`10. On or about November of2007, Plaintiff decided to brand their replacement
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`water filters under the mark AQUA FRESH® .
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`4
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`COMPLAINT
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`

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`Jul 29 13 11:47a
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`GRANTS LAW FIRM
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`6666566637
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`P-5
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`Mar281309:24a
`Cas
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`p.5
`8668586637
`GRANTS LAW FIRM
`5:l3—cv—O0567—VAP-OP Document 1 Filed 03/21/13 Page 5 of 43 Page ID #:5
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`1
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`I I- On or about June of 2003,.Pla.intiff created new packaging for the
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`2 replacement water filter to display the new mark AQUA FRESH®.
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`12.
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`From 2008 through 2012, Plaintiffmanufactured replacement water cartridge
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`3 4
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`5 Parts Nos: WF270; WF271; WF 282; ‘WP 283; WF284; WF285; WF286; WFZST;
`6
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`TVF288; ‘WF289; VVF290; ‘WF292; YVF293; and ‘WF294 for Defendant and sold
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`approximately 190,000 in 2003, 130,000 in 2009, 140,000 in 2010, 110,000 in
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`201 1, and 120,000 in 2012 to Defendant. Defendant distributed and sold the above
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`referenced water filters in all 50 US. States and Territories including in California
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`7 8 9
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`and in this District.
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`13 .
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`Since June 2008, Plaintiff has continuously and exclusively used the name
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`AQUA FRESH® as its trademark in connection with its goods “water filters”,
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`when Plaintiff goods were packaged and sold to Defendant.
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`14. On or about April 27, 2012, Plaintiff SPACE FLEX filed a trademark
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`thereby obtaining certain exclusive rights to the design mark AQUA FRESH® (the
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`“Mark”). Attached hereto as Exhibit A is a true and correct copy of the Trademark
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`Registration Certificate for the design mark AQUA FRESH®, Registration No;
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`4,261,622 which is incorporated herein by this reference as though set forth in full.
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`The Registration Certificate is submitted by the Plaintiff as proof of the validity of
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`the AQUA FRESH trademark and that the Plaintiff SPACE FLEX owns the
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`
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`23 trademark-
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`J
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`COMLPLAINT
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`

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`Jul 29 13 11:48a
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`GRANTS LAW FIRM
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`Mar 28 13 09:24.3
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`GRANTS LAW FIRM
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`8668586687
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`8668586637
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`P-7
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`P5
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`Case’ 5:13—cv-OO567—VAP—OP Document 1 Filed 03127113 Page 6 of 43 Page ID #26
`' 15. On or about June 2012, Plaintiff contacted Defendant because of the lack of
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`16.
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`On or about June 20, 2012, Defendant contacted Plaintiff to place a small
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`order for 3 £00 units, stating that SEAL UNIT PARTS still have “plenty in
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`17. On or about July 25, 2012, Plaintiff asked Defendant if there was anything
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`new regarding the status of water filter orders. Plaintiff at that time infomied
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`Defendant that all of SEALED UNIT PARTS current orders will be produced by
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`August 15, 2012, and there will be no further scheduied production of water filters-
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`18. On or about September 26, 2012, Defendant’s stated “Unfortunately, we
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`(SEAL UNIT PARTS) have no filter orders that we can give you (SPACE FLEX)
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`at this time. After doing an inventory count and looking at sales, we do have some
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`excess inventory. Sales are quite slow right now and we do not know why. It could
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`be someone else is selling these at a lower price that we are (of course we have no
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`proof ofthat) but for whatever reason we don’t have sales we once did.”
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`
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`24
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`19. On or about October 2, 2012, Plaintiff called John Muflen at SEALED UNIT
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`COMPLAINT
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`

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`Jul 29 13 11:48a
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`GRANTS LAW FIRM
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`8668586687
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`P-8
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`pf’
`8668586637
`GRANTS LAW FIRM
`Mar 28 13 (}9:25a
`Case 5:l3—cv—OO567—VAP—OP Document 1 Filed O3f27!13 Page 7 of 43 Page ID #7?
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`1 UNIT PARTS and was informed that there was too much risk in the filters without
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`2 having a hoid harmless clause against lawsuits, so they might possibly buy and
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`3
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`distribnte another brand.
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`5 i 20.
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`On or about October 5, 20 12, Plaintiff oontaoted the Defendant regarding the
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`remaining carbon blocks that were pre made for filters. Defendant agreed to have
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`the remaining carbon blocks made into usable filters.
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`6 7 S
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`9 I 21. On or about November 6 2012, Defendant placed their last purchase order for
`10 the remaining carbon blocks that Plaintiffwould turn into filters.
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`1 1
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`12 22. On or about November 7 2012, Plaintiffwas informed by one of its
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`13 customers that Defendant SEALED UNIT PARTS was now the exclusive
`I4
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`_ distributor of water filters for “EcoAqua” by Hong Kong EcoAqua Co. Ltd.
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`15
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`15 23.
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`Thereafter, on November 7, Plaintifl‘ discovered that Defendant was
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`17 distributing and selling a wrzgs water filter under the AQUA FRESI-E[® brand,
`18
`19 which Plaintiffnever n1anufactured_
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`29 24.
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`In light of the above information, Plaintiffcalled Chris Mariouso (President)
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`21 at SEALED UNIT PARTS to inquire as to their relationship with Ecofitqua and ask
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`22
`23 him about the WF295 water filter. During that Conversation, Plaintiff informed the
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`24 Defendant SEALED UNIT PARTS that the AQUA FRESH® name was
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`25
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`26
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`27
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`Trademarked by Plaintiff SPACE FLEX- Chris informed Plaintiffthat he would
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`have to check with John Miillen as to what is going on. Plaintiffthen contacted
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`28 John Mullen at SEAL UNIT PARTS, wherein John informed Plaintifi‘ that
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`7
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`COMPLAIDTE
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`

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`Jul 29 13 11'48a
`
`GRANTS LAW FIRM
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`5555555537
`
`9-9
`
`p.8
`8668585637
`GRANTS LAW FIRM
`Mar 28 13 o9:25a
`Case,5:l3—cv—DO567—\/AP-OP Document J. Filed 03127713 Page 8 of 43 Page ID #:8
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`Defendant had only produced some filters and John said it was only the “one” filter
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`number.
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`25. On November 8 2012, Plaintiff contact Chris Mancuso (President) at
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`SEALED UNIT PARTS, wherein Chris apologized and said he didn’t realize that
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`Piaintifihad tiademarlced AQUA FRESH® and that all future filters would be in a
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`difierent branded box going forward.
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`26.
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`Towards the end of January 2013, Plaintiff during a conversation with one of
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`its czustotners discovered that Defendant SEALED UNIT PARTS had re-introduced
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`the WF287 water filter into the marketplace under the AQUA FRESHIE trademark,
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`a filter which Plaintiffhad not sold since 2010 as a result of a patent lawsuit. In that
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`same conversation, Plaintiff also discovered that Defendant had in fact knocked off
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`
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`I counterfeited the entire line ofPlaintiffs water filters (Parts Nos: WFZTI};
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`WFZTI; WP 282.; ‘WP 283; ‘WF284;V-117285; WF286; WF287; WF288; WF2S9;
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`‘WF290; WF292; WF293; ‘WF294; and WF295) under the AQUA FRESH®
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`trademark shown on the boxes and on the labels attached to the product, which
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`states product was “Manufacmred for Sealed Unit Parts Co., Inc. Allenwood, NJ
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`08720 USA BV Hang Kgg Ec0Agua Co., Ltd.”. Attached hereto as Exhibit B is a
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`true and correct copy ofDefendanfs boxes that are being sold and distributed using
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`Plaintiffs AQUA FRESH® trademark, which is incorporated herein by this
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`reference as though set forth in fllfl.
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`COMPLAINT
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`

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`Jul 29 13 11:49a
`
`GRANTS LAW FIRM
`
`8668586637
`
`P-10
`
`p.9
`866858663?
`GRANTS LAW FIRM
`Mar 28 13 09:25::
`Case 5:13—cv-DO567—VAF1—OP Document 1 Filed O3/27113 Page 9 of 43 Page ID #:9
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`1 2?.
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`Plaintilfrespectfiilly asserts that before contacting an attorney to file this
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`2
`DJ
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`‘~DOO—JO'\U1
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`lawsuit, Plaintiff again called Chris Mancuso President of SEAL UNIT PARTS to
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`i
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`find out what is going on regarding the De-fenda11t’s infringement of Plaintiff's
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`AQUA FRESH® trademark, wherein Defendant stated that they are going to re—box
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`E the water filters in another brand and that Plaintiff was lucky that Defendant was
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`going to let Plaintifi keep the AQUA FRESI-I® trademark.
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`. 28.
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`Plaintiff is informed and believes and therefore alleges that as ofthe filing
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`date of this lawsuit, Defendant SEAL UNIT PARTS has not introduced a new
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`12 brandlnozr a new box as Chris Mancuso President of SEAL UNIT PARTS stated on
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`13 November 3, 2012.
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`29-
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`Plaintiff is informed and believes and therefore further alleges, Defendant
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`16 has intentionally continued to have manufactured or manufacture, distribute, and
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`17
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`sell the above identified water filters with Plaintiffs AQUA FRESH® trademark
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`displayed on the box and filter without Plaintiff’s consent.
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`30 30.
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`Plaintiff is informed and believes and therefore alleges Defendant used
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`31 AQUA FRESHIEI mark ofthe plaintiffs in amanner that is likely to cause
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`confusion among ordinary consumers as to the source, sponsorship, affiliation, or
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`24 approval of the goods-
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`25
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`26
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`31.
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`Plaintiff is informed and believes and therefore alleges that Hong Kong
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`27 EcoAqua Co-, Ltd. andfor Defendant has directly infringed upon P1aintift‘s AQUA
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`23 FRESI-I® trademark as a result of their manufacturing of the above identified water
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`9
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`COMPLAINT
`
`

`
`Jul 29 13 11:49a
`
`GRANTS LAW FIRM
`
`6666566637
`
`P-ll
`
`p.10
`8668586637
`GRANTS LAW FIRM
`Mar 28 13 0SI:26a
`Case :13—cv-U056?-VAP—OP Document 1 Filed O3/27:13 Page 10 of 43 Page ID #:10
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`1
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`filters with Plaintiffs trademark displayed on the box and on the filter itself, which
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`3 were being distributed and sold by Defendant.
`: 32-
`Plaintiffis informed
`believes and therefore alleges thatDefendant has
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`5 directly infiinged upon Plaintiffs AQUA FRESE-I® trademark as a result of the
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`6 distributing and selling ofthe above identified water filters with Plaintiffs
`; trademark displayed on the box and on the filter itself.
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`9 33.
`l0
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`Plaintiff is informed and believes and therefore alleges that Defendant
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`SEALED UNIT PARTS has contributorily infiinged upon Plaintiff’s AQUA
`I FRESH® trademark as a result of Defendant requesting that Hong Kong Eco-Aqua
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`ll
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`12
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`33 Co manufacture the above identified water filters for Defendant with Plaintiffs
`:: AQUA FRESH® trademark, which were being distributed and sold by Defendant
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`16 s 34.
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`Plaintiff is informed and believes that the actions of Defendant described
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`17 above and specifically, Without lintitation, their unauthorized use ofthe AQUA
`18 FRESI-E[® trademark and confixsingly similar variations thereof, in commerce to
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`go advertise, promote, market, distribute and sale water filters throughout the United
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`21 , States including in the Central District of California constitute trademark
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`infiingement. As a direct and proximate result of Defendant’s conduct, Plaintiff has
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`24 suffered damages in an amount in Excess of $300,000 to be determined at trial and
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`continues to be damaged.
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`.3? 35. Upon information and belief, Defendant has acted with reckless disregard for
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`28 the Plaintiff SPACE FLE'.X’s rights or were willfully blind in connection with their
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`10
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`COMPLAINT
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`

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`Jul 29 13 11:50a
`
`GRANTS LAW FIRM
`
`6666566637
`
`P-12
`
`p.11
`8668586637
`GRANTS LAW FIRM
`Mar 28 13 09:2E3a
`Case 5:13—ev—OD56?—VAP—QP Document 1 Filed O3/27!13 Page 11 of 43 Page ID #211
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`1 unlawfiil activifies.
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`2 36. Upon information and belief, Defendant has willfully and maliciously
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`3
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`engaged in their counterfeiting and infringing activities.
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`37. As a result of the foregoing, this case constitutes an exceptional case under
`15 U.S.C. §l 117(3) or a case ofintentio