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
`ESTTA576888
`ESTTA Tracking number:
`12/16/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92058196
`Defendant
`Wanzhu Li
`WANZHU LI
`633 WEST FIFTH STREET SUITE 5800
`LOS ANGELES, CA 90071
`UNITED STATES
`Motion to Suspend for Civil Action
`Bruce E. Van Dalsem
`brucevandalsem@quinnemanuel.com, calendar@quinnemanuel.com,
`ryankeech@quinnemanuel.com, marthaherrera@quinnemanuel.com
`/s/ Bruce E. Van Dalsem
`12/16/2013
`92058196.pdf(79681 bytes )
`Exhibit 1 Part 1 - OriginalComplaint.pdf(4784925 bytes )
`Exhibit 1 Part 2 - OriginalComplaint.pdf(3736160 bytes )
`Exhibit 1A Part 1 - FirstAmendedComplaint.pdf(5594591 bytes )
`Exhibit 1A Part 2 - FirstAmendedComplaint.pdf(4319034 bytes )
`Exhibit 1A Part 3 - FirstAmendedComplaint.pdf(4248148 bytes )
`Exhibit 1A Part 4 - FirstAmendedComplaint.pdf(2529726 bytes )
`Exhibit 2 Part 1 - OperativeAnswerAndCounterclaims.pdf(3694751 bytes )
`Exhibit 2 Part 2 - OperativeAnswerAndCounterclaims.pdf(1765129 bytes )
`Exhibit 2A - Dkt.190.pdf(97410 bytes )
`Exhibit 3 Part 1 - Dkt98-1.pdf(4174626 bytes )
`Exhibit 3 Part 2 - Dkt98-1.pdf(4035956 bytes )
`Exhibit 4 - Dkt.211-1.pdf(430860 bytes )
`Exhibit 5 - Dkt.231.pdf(66818 bytes )
`Exhibit 6 - Dkt.211.pdf(206989 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cancellation No.: 92058196
`
`
`Mark: RENA BIOTECHNOLOGY
`
`Registration No.: 4245461
`
`
`-----------------------------------------------------X
`Sis-Joyce International Co., Ltd.,
`
`
`
`
`
`Petitioner,
`
`
`
`
`v.
`
`
`
`WanZhu Li,
`
`
`
`Respondent.
`
`
`
`-----------------------------------------------------X
`
`
`MOTION TO SUSPEND THE PROCEEDING
`
`Pursuant to 37 CFR § 2.117(a) and TBMP § 510.02(a), Respondent WanZhu “Kathryn”
`
`Li (“Respondent”) hereby requests that the Trademark Trial and Appeal Board (the “T.T.A.B.”
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`or the “Board”) suspend this cancellation proceeding pending the final determination of
`
`American Rena International Corp. v. Sis-Joyce International Co., Ltd., Civil Action No.
`
`2:2012-cv-06972 (C.D. Cal.) (the “Civil Action”), ongoing between the parties and involving
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`Respondent’s mark RENA BIOTECHNOLOGY (“Respondent’s Mark”), because this action
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`will have a direct bearing on the instant proceeding.
`
`FACTUAL BACKGROUND
`
`Respondent filed Application Serial No. 85/586,995 for Registration No. 4,245,461 for
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`the mark RENA BIOTECHNOLOGY on April 2, 2012; began using a substantially similar
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`version of that mark as early as January 1, 2006; and registration issued on November 20, 2012.
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`On November 8, 2013, Petitioner initiated the present proceeding alleging, inter alia, fraud by
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`Respondent and abandonment of Respondent’s Mark.
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`On August 13, 2012, Respondent and her company, American Rena International
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`Corporation, the exclusive licensee of the RENA BIOTECHNOLOGY mark, filed a Complaint
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`with the United States District Court for the Central District of California (“C.D. Cal.”) (attached
`
`
`
`

`
`hereto as Exhibit 1)1 alleging, inter alia, that Petitioner’s use of its “ARëna” mark constitutes
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`federal
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`trademark
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`infringement of Respondent’s
`
`trademarks,
`
`including
`
`the RENA
`
`BIOTECHNOLOGY mark at issue in this cancellation proceeding. In the Complaint,
`
`Respondent seeks, among other relief, an order seeking the cancellation of Petitioner’s trademark
`
`registration and enjoining Petitioner from using or registering Petitioner’s ARENA mark. In its
`
`Operative Answer and Counterclaims (attached hereto as Exhibit 2), Petitioner asserts the
`
`affirmative defenses of estoppel (Exhibit 2, at 18-19); unclean hands (id., at 19-27); unjust
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`enrichment (id., at 30-31); misuse (id., at 31-32); no causation (id., at 35); no damage (id., at 35-
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`36); proximate cause (id., at 37-38); and fraud/illegality (id., at 38),2 all of which Petitioner bases
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`on allegations of fraud. In addition, Petitioner has asserted in the Civil Action that
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`Respondent’s “trademark is invalid because they closed their business.” (Exhibit 3, Dkt. 98-1, at
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`32), and asserts multiple claims based on an allegation that Respondent “closed [its] business
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`operations in the United States for almost two years…” (Exhibit 2, at 42; compare Exhibit 4,
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`Dkt. 211-1, at 4).
`
`Recently, Petitioner sought to belatedly amend its counterclaims in the Civil Action to
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`add claims for trademark cancellation based on the filing of an allegedly false statement of use
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`(Exhibit 4, Dkt. 211-1, at 14), an attempt which was denied by the district court. (Exhibit 5, Dkt.
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`231, at 2). Petitioner asserted in that motion that “[t]he amendments are necessary in order to
`
`judiciously and efficiently deal with all issues related to the [Civil Action]” (Exhibit 6, Dkt. 211,
`
`at 10) and represented to the district court that that the issues raised in their proposed
`
`
`1 With leave of the district court, respondent filed a First Amended Complaint in the
`Civil Action on or about March 27, 2013, which is attached hereto as Exhibit 1A.
`2 On or about October 16, 2013, Petitioner voluntarily withdrew its affirmative defenses
`of unjust enrichment, proximate cause, and fraud/illegality, without prejudice, in a filing attached
`hereto as Exhibit 2A.
`
`
`
`

`
`amendments were “inextricably intertwined with the issues in th[e Civil Action].” (Id.).
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`Petitioner even went so far as to assert that the district court “may have to put a stay on any
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`further proceedings in this case, including trial, while the USPTO decides the Cancellation
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`petition.” (Exhibit 6, Dkt. 211, at 11).
`
`ARGUMENT
`
`As Petitioner Concedes, The Determinations in the Civil Action Will Have A Direct Bearing On
`The Issues Before The Board.
`
`Where a party to a case pending before the Board is also involved in a civil action that
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`may have a bearing on the T.T.A.B. matter, the Board may suspend the proceeding until the final
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`determination of the civil action. 37 CFR § 2.117(a); TBMP § 510.02(a). This is because “a
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`decision by the United States District Court would be binding on the Patent Office whereas a
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`determination by the Patent Office as to respondent’s right to retain its registration would not be
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`binding or res judicata in respect to the proceeding before the federal district court.” Whopper-
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`Burger, Inc. v. Burger King Corp., 171 U.S.P.Q. 805, 807 (T.T.A.B. 1971). A court’s decision
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`regarding the right to registration is binding on the T.T.A.B. The Seven-Up Co. v. Bubble Up
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`Co., 136 U.S.P.Q. 210, 214 (C.C.P.A. 1963); see also In re Alfred Dunhill Ltd., 224 U.S.P.Q.
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`501, 503 (T.T.A.B. 1984); J. Thomas McCarthy, 6 McCarthy on Trademarks and Unfair
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`Competition § 32:94 (4th ed. 2009) (hereinafter “McCarthy”).
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`Respondent and Petitioner are both parties to the Civil Action, which are currently
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`pending before the District Court for the Central District of California and involve Respondent’s
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`RENA BIOTECHNOLOGY mark and similar legal issues related to fraud, abandonment and
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`related matters. Petitioner has itself argued to the district court in the Civil Action that the issues
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`in that action are “inextricably intertwined” with those it seeks to bring before this tribunal. See
`
`supra at 2-3. The Civil Action will conclusively determine the respective rights of Respondent
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`
`
`

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`and Petitioner with respect to, and the validity and infringement of, Respondent’s Mark. It is
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`clear that this type of determination will directly affect the resolution of the issues before the
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`Board. See The Other Tel. Co. v. Conn. Nat’l Tel. Co., Inc., 181 U.S.P.Q. 125, 126-7 (T.T.A.B.
`
`1974).
`
`Based on the foregoing, Respondent respectfully requests that the Board stay this
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`proceeding pending the final determination of the Civil Action.
`
`
`
`Dated:
`
`
`December 16, 2013
`
`
`
`
`
`
`
`
`
`
`
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`
`By: _________________________________
`Bruce E. Van Dalsem
`brucevandalsem@quinnemanuel.com
`B. Dylan Proctor
`dylanproctor@quinnemanuel.com
`Ryan Q. Keech
`ryankeech@quinnemanuel.com
`865 S. Figueroa St., 10th Floor
`Los Angeles, California 90017
`Telephone: (213) 443-3000
`Fax: (213) 443-3100
`
`Robert L. Raskopf
`robertraskopf@quinnemanuel.com
`Claudia T. Bogdanos
`claudiabogdanos@quinnemanuel.com
`51 Madison Ave., 22nd Floor
`New York, New York 10010
`Telephone: (212) 849-7000
`Fax: (212) 849-7100
`
`Attorneys for Respondent WanZhu “Kathryn” Li
`
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`
`I, Martha Herrera, certify that on December 16, 2013, a copy of Respondent’s MOTION
`TO SUSPEND THE PROCEEDING in Sis-Joyce International Co., Ltd. v. WanZhu Li (No.
`92/058,196) was served on counsel by First Class U.S. mail to:
`
`Ali Kamarei
`Alexander Chen
`Inhouse Co.
`Knight Ridder Building
`50 W. San Fernando St., Ste. 900
`San Jose, CA 95113
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Martha Herrera
`
`Martha Herrera
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`

`
`Exhibit 1 Part 1
`Exhibit 1 Part 1
`
`
`
`
`
`
`
`
`
`

`
`hi
`
`«
`
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`Case :l2—cv-O6972—F—JEM _Document 1 Filed O8/13/12 Fiage 1 of 51 Page ID #:l4
`5 1
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`
`COV
`
`Trww:
`
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`Bruce E. Van Dalsern (Bar No. 124128)
`brucevandalsem@ u1nnemanuel.com
`David
`Quinto ( ar No. 106232)
`davidc11uinto@quinnemanuel.com
`B. Dy an Proctor _(Bar No. 219354)
`cl lanproctor@quinnemanue .com
`86 South Figueroa Street, 10 Floor
`Los Angeles, California 90017-2543
`Telephone:
`213 443-3000
`Facsimile:
`213 443-3100
`
`"'*"“*'*"“‘A
`
`Attorne s for American Rena International
`Co%,
`_ anZhu “Kathryn” Li, and Robert
`
`illiken
`
`M.
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`WESTERN DIVISION
`
`American Rena International Corp., a
`California corporation; WanZhu
`“Kat
`” Li, an individual; and Robert
`M. Mi
`iken, an individual,
`
`843%.?
` .. I
`COMPLAINT F:
`
`FEDERAL TRADEMARK
`INFRINGEMENT;
`COMMON LAW TRADEMARK.
`INFRINGEMENT;
`TRADEMARK
`CANCELLATION;
`FEDERAL UNFAIR
`COMPETITION;
`COPYRIGHT
`.
`INFRINGEMENT;
`VIOLATION OF THE ANTI-
`CYBERSQUATTING
`SUMER PROTECTION
`TRADE SECRET
`MISAPPROPRIATION;
`INTERFERENCE WITH
`PROSPECTIVE ECONOMIC
`ADVANTAGE;
`TRADE LIBEL;
`. FALSE LIGHT INVASION OF
`PRIVACY-
`. VIOLATION OF RIGHT OF
`PUBLICITY;
`
`9
`
`1.
`
`2 3 4
`
`.
`
`5 6
`
`>‘
`
`COMPLAINT
`
`Plaintiffs,
`
`vs.
`
`Sis-Joyce International Co. Ltd., a
`California co oration; Alice “Annie”
`Lin, an indivi ual; Virginia Wu, an
`individual; and DOES 1-10,
`
`Defendants.
`
`1 2 3 4 5 6 7 8 9
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`Case :l2—cv—O6972—FMO—JEM Documentl Filed O8/13/12 Page2of5l Page |D#:l5
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`12.
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`13.
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`14.
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`15.
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`16.
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`CALIFORNIA STATUTORY
`UNFAIR COMPETITION;
`CALIFORNIA COMMON LAW
`UNFAIR COMPETITION;
`RACKETEER INFLUENCED
`AND CORRUPT
`ORGANIZATIONS ACT
`VIOLATION;
`CONSPIRACY TO VIOLATE
`RICO; AND
`UNJUST ENRICHMENT
`
`JURY TRIAL DEMAND
`
`
`
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`)4873.23644/48685728
`
`COMPLAINT
`
`

`
`Case
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`:12—cv—O6972—FMO—JEM Document 1 Filed 08/13/12 Page 3 of 51 Page ID #:16
`
`Plaintiffs American Rena International Corp. (“Rena”), WanZhu (“Kathryn”)
`
`Li, and Robert M. Milliken (“Milliken”) complain and allege as follows against
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`defendants Sis—Joyce International Co. Ltd., (“Sis—Joyce”), Alice “Annie” Lin
`
`(“Lin”), Virginia Wu (“Wu”), and DOES 1-10 as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action to prevent the complete theft of a business — lock,
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`stock, and barrel. Plaintiff WanZhu “Kathryn” Li is an entrepreneur who began
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`manufacturing and distributing skincare products in Los Angeles, California in
`2006. The company she founded, plaintiff Rena, quickly grew to directly employ 20
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`persons in California. By 2010 Rena generated $30 million in annual sales, with the
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`bulk of that sum resulting from exports to the People’s Republic of China and other
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`countries in Asia.
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`2.
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`Defendants Lin and Wu were customers and independent sales agents
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`for Rena’s products who are embarking on a brazen scheme to compete unfair-ly
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`with Rena and, ultimately, steal its business altogether. Initially, Lin and Wu
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`engaged in straightforward counterfeiting — they manufactured counterfeit labels
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`using Rena’s proprietary RENA and RENA BIOTECHNOLOGY marks, applied
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`them to generic bottles, and then sold adulterated RENA products they had
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`purchased from Rena in competition with Rena. When Rena learned of Lin’s and
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`Wu’s perfidy in late 2010, it cut off their supply of RENA products. On information
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`and belief, Lin and Wu then attempted to pass off bottles of tap water as genuine
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`RENA products.
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`3.
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`Lin and Wu were neither deterred by Rena’s cutting off their supply of
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`‘products nor satisfied with the harm they had caused through their counterfeiting.
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`On the contrary, when Rena sought to put an end to their counterfeiting of authentic
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`RENA products, Lin and Wu embarked on a secret campaign to co—opt the market
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`for RENA products, and to hijack Rena’s entire business. Operating under the name
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`of defendant Sis-Joyce, Lin and Wu secretly told Rena’s consumers that Rena was
`
`187323644/4868572.8
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`.1 _
`
`COMPLAINT
`
`

`
`Case
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`:12—cv—O6972—FMO—JEM Document 1 Filed O8/13/12 Eage 4 of 51 Page ID #:17
`5 ~
`L 4
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`out of business and that defendant Sis-Joyce — an entity owned by Lin and Wu —
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`now sold RENA products. Lin and Wu released a competing product called
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`“AR'e'na,” which they labeled as “new” and “improved.” Lin and Wu went so far as
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`to claim in marketing materials that “Rena is Now aRena!,” and described
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`“ARéna” as an “Activation Energy Serum” — the same description that Rena uses
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`for its product. Lin and Wu falsely told Rena’s independent sales agents and
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`customers that Rena had been acquired by “AR'e'na” or sold its proprietary product
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`formulas to “ARena,” and that Rena’s “new” products were “AR'e'na.” Lin and Wu
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`launched websites, including www.RenaSkin.com and wvvw.ArenaSkin.com, which
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`copy vast quantities of copyrighted materials from Rena’s website and even include
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`the names and photographs of Rena ’s founders. Lin and Wu launched YouTube
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`videos displaying and advertising Rena ’s products, but directing the public to Lin
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`and Wu’s knockoff websites. And Lin and Wu sold their “ARéna” products in
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`bottles that precisely copy the highly distinctive .51 oz plastic bottle designed by
`Rena for its principal product, the RENA Activation Energy Serum.
`
`Since Lin and Wu launched their bogus “ARéna” products and engaged
`4.
`in their campaign to steal Rena’s business and customers, Rena’s worldwide sales
`
`have dropped astronomically —— from an average of approximately $2.5 million a
`month as of 2010 and early 2011 to less than $500,000 a month now. By purporting
`to be Rena, defendants have destroyed virtually all of Rena’s U.S. sales and are now
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`cutting substantially into its foreign sales. Unless enjoined, Lin and Wu will
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`complete what they set out to achieve — the wholesale theft of Rena’s business.
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`5.
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`On July 4, 2012, Rena was notified by several sales agents in China of
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`overtures received from Lin and Wu to sell purported “AR'e'na” products. It was
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`only then that Rena discovered Lin and Wu’s surreptitious effort to steal Rena.’ s
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`business and clients through their misleading statements to purchasers, and it was
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`only then that Rena discovered Lin and Wu’s infringing “ARéna” products.
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`,_.4
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`3487323644/48685728
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`-2-
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`COMPLAINT
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`

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`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`Case :l2—cv—O6972—FMO—JEM Documentl Filed O8/13/12 F:age5of5l Page |D#:l8
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`6.
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`Plaintiffs seek preliminary and permanent injunctive relief to enjoin
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`and restrain defendants’ acts of trademark infringement, copyright infringement,
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`false and deceptive advertising, trade secret misappropriation, trade libel,
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`interference with prospective economic advantage, unfair competition, and invasion
`
`of privacy; cancellation of defendant Lin’s NEW! ARENA ACTIVATION
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`ENERGY SERUM trademark; an order transferring ownership of the purported
`
`wvvw.RenaSkin.com and www.ArenaSkin.com domain names to Rena; an order
`
`impounding the infringing goods; restitution of defendants’ illicit gains; damages;
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`and punitive and exemplary relief.
`
`PARTIES
`
`7.
`
`Plaintiff Rena is a California corporation having its principal place of
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`business in Los Angeles, California.
`
`8.
`
`Plaintiff WanZhu Li is an individual who resides in Los Angeles
`
`County, California. Li is sometimes known by her Chinese nickname, “WenJia,”
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`and sometimes by her American name, “Kathryn.”
`
`9.
`
`Plaintiff Robert M. Milliken is an individual who resides Los Angeles
`
`County, California. Milliken is the Chief Executive Officer of Rena.
`
`10. Defendant Sis-Joyce is a California corporation having its principal
`
`place of business in Elk Grove, California, and having 2 “leaders” in Los Angeles
`
`County, California, and one in San Francisco, California. Sis-Joyce is owned, in
`whole or in part, by defendant Lin.
`
`11. Defendant Alice “Annie” Lin is an individual who, upon information
`
`and belief, resides in Fremont, California and is an owner of Sis-Joyce.
`
`12. Defendant Virginia Wu is an individual who, upon information and
`
`belief, resides in Los Angeles County, California. She is identified on the Sis-Joyce
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`website as one of Sis—Joyce’s three “leaders,” enjoying co—responsibility for Sis-
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`Joyce’s Los Angeles operations.
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`)4873.23644/48685728
`
`COMPLAINT
`
`

`
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`Case :l2—cv—O6972—FMO—JEM Documentl Filed O8/13/12 Page6of5l Page |D#:l9
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`13.
`
`Plaintiffs are ignorant of the true names and capacities of the
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`defendants who are named herein under the fictitious names DOES 1-10, inclusive.
`
`Plaintiffs will seek leave of the court to amend the complaint to allege their true
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`names and capacities when ascertained. Plaintiffs are informed and believe, and
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`based thereon allege, that each of the fictitiously named DOE defendants is
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`responsible in some manner for the wrongfiJl conduct alleged herein. Plaintiffs
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`further allege that each defendant acted in concert and participation with, as agent of
`
`or representative for, at the request of, or on behalf of Sis—Joyce and/or Lin. Each
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`charge and allegation alleged herein is, therefore, also hereby alleged against each
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`fictitiously named DOE defendant.
`
`JURISDICTION AND VENUE
`
`14.
`
`This action arises under the Lanham Trademark Act, 15 U.S.C.
`
`Sections 1116, 1117, and 1125(a) and (d); 17 U.S.C. Sections 101, et seq.; and
`
`18 U.S.C. Section 1964(c). This Court has original subject matter jurisdiction
`
`pursuant to 20 U.S.C. Section 1331, et seq.; 28 U.S.C. Sections 1331 and 1338;
`15 U.S.C. Sections 1116 and 1121; and 18 U.S.C. Section 1964(c). This Court has
`
`supplemental jurisdiction over plaintiffs’ state law claims pursuant to 28 U.S.C.
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`Section 1367.
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`15. Venue lies in this District pursuant to 28 U.S.C. Sections 1391(b) and
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`(c); 28 U.S.C. Section 1400(a); and 18 U.S.C. Section 1965.
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`FACTUAL ALLEGATIONS
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`Rena’s Business and Trademarks
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`16.
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`Rena is an internationally acclaimed manufacturer and distributor of
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`high—end skin care, healthcare, and anti—aging products located in Los Angeles,
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`California. Since June 2006, it has sold its products using its RENA and RENA
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`BIOTECHNOLOGY trademarks. RENA BIOTECHNOLOGY is registered in the
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`United States in International Class 5. Rena was founded and is owned by plaintiff
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`Kathryn Li, who is also the registered owner of its trademarks and who has granted
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`3487323644/48685728
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`-4-_
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`COMPLAINT
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`

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`Case :l2—cv—O6972—FMO—JEM Documentl Fi|ed'O8/13/12 Page7of5l Page |D#:2O
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`an exclusive license of those trademarks to Rena. Plaintiff Robert Milliken is
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`Rena’s Chief Executive Officer.
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`17.
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`Rena manufactures and sells a suite of health—related products,
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`including Activation Energy Serum, Activation Mist, and Activation Energy Elixir.
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`Rena’s scientists have extracted nearly 100 minerals and trace elements for use in
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`products designed to help users resist the effects of aging. The Rena products
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`incorporating those natural minerals are absorbed through the skin and can reach a
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`depth of 30 to 50 millimeters. Rena’s products are designed to reduce wrinkles,
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`inflammation, and pain while moisturizing skin and promoting skin health.
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`18.
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`To protect its valuable and unique products, Rena has sought U.S.
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`trademark registrations for its marks. It obtained registration of its RENA
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`BIOTECHNOLOGY word mark, No. 3,332,867, in 2007 with a first-use-in-
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`commerce date of February 1, 2007. In April 2012, it applied for registration of a
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`stylized RENA BIOTECHNOLOGY mark, Serial No. 85,587,003, with a first-use-
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`in—commerce date of June 29, 2006. The stylized RENA BIOTECHNOLOGY
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`)—t O'\ mark, used on all Rena products since June 2006, is shown below.
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`19.
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`In addition, in April 2012, Rena applied to register various other
`
`l\.) [0
`
`l\J U3
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`stylized RENA and RENA BIOTECHNOLOGY marks, using both English letters
`and Chinese characters, including the stylized RENA mark standing alone. Those
`[0-l> applications are currently pending.
`
`20. The authentic products sold by Rena prominently display the RENA
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`and RENA BIOTECHNOLOGY marks, as shown below:
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`[\J U1
`
`l\.) ON
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`I\.) \l
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`28
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`3487323644/48685728
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`_ 5_
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`COMPLAINT
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`

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`Case :l2—cv—O697'2—FMO—JEM Documentl Filed O8/13/12 Page8of5l Page |D#:2l
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`\OO0\]O\U1-l>UJl\J*‘
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`10
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`11
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`12
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`13
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`14
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`15
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`Defendants’ Counterfeiting
`21. At one time, Lin and Wu were authorized distributors of RENA
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`-16 products. Yet while they were only authorized to sell genuine RENA products —
`17 placing orders that would be fulfilled by Rena itself — Lin and Wu in fact started
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`18
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`selling adulterated RENA products by applying counterfeited labels that used
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`19 Rena’s protected trademarks to generic spray bottles, which were then filled with
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`20 diluted RENA products and sold as genuine.
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`The photograph below depicts exemplars of two bottles used by
`22.
`21
`22 defendants to sell their counterfeit RENA products.
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`23
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`24
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`25
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`26
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`27
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`28
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`3487323644/4868572.8
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`_6 _
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`COMPLAINT
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`

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`
`ll
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`23. Upon discovering this counterfeiting in or about October or November
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`19 2010, Rena discontinued Lin and Wu’s supply of RENA products, believing that
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`20 cutting off Lin’s and Wu’s supply of product would force an end to their
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`21
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`counterfeiting and infringement.
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`22
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`23
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`'
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`24.
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`But Lin and Wu did not abandon their illegal activities. Instead, on
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`information and belief, they started selling tap water or contents other than the
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`24 genuine Rena product, which they passed off as genuine RENA products using their
`25 counterfeit labels.
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`26
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`27
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`28
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`3487323644/4868572.8
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`_1_
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`COMPLAINT
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`

`
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`Case :l2—cv—O6972—FMO—JEM Documentl Filed 08/13/12 Page lOof5l Page |D#:23
`(,3.
`LA
`i
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`i
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`Defendants’ Fraudulent Websites
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`25.
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`Starting in or about early 2011, Lin and Wu, operating through
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`defendant Sis-Joyce, started manufacturing and selling their so-called “ARéna”
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`products, including through fraudulent and infringing websites.
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`26. Defendants registered the www.RenaSkin.com website through an
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`intermediary or using an assumed name, “Damon Rith,” in an effort to hide her
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`involvement in the site. The “WHO IS” look up reflects that “Damon Rith” is the
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`registrant, administrative contact, and technical contact for RenaSkin.com and that
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`he purportedly resides at “123 Reed Street” in Blue Bell, Pennsylvania 19422 — an
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`address that does not exist. There is also apparently no known record of “Damon
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`Rith” in Pennsylvania. The RenaSkin.com domain name was registered using false
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`contact information in an effort to hide the identity of the actual registrant.
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`27.
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`The RenaSkin.com website has been carefully crafted to cause
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`maximum confusion with plaintiff Rena’s genuine products and plaintiff s
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`AmericanRena.com website. Virtually every page of the site has the following
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`header: “Genuine American Rena Anti-Aging Activation Serum.” The site
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`declares that “Rena Activation Energy contains innovative materials, processed
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`from natural minerals by an advanced purifying technology.” As shown below, the
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`site displays a photograph of Rena’s founder, Kathryn Li, and its Chief Executive
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`Officer, Robert Milliken, with the caption, “Who performs research and
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`development[‘?] Where does manufacturing take place?”
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`28
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`3487123644/48685728
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`COMPLAINT
`
`

`
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`Case :l2—cv—O6972—FMO—JEM Documentl Filed 08/13/12 Page 11 of5l Page |D#:24
`4.4
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`Genuine American Rena Anti-
`4g.i.!.1.g....A.1.9tirszti91z.:§I§z:Mz..............................._
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` o more youthful you
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`r~,a-.4r:c_-;,;.,_r,g%_,e,a;,x,-,£g<5-egggicgugui_
` PHIWICAL HEALTH, E_?l/IOIL'0NAL HEALTH
`AND SPIRITUAL HFAI TH’
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`research staff.
`
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`1.Who performs research and development
`Wher”e"doe;; manufacturing take place?
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`\Nil:h "creating health and bea uty“ and advocating "green
`[natural] products“-as guiding pnn<:_‘rple_s, American RENA
`intematiozialcorp has hired doctorsvbf medicine "and scientists
`\e\_Iith' rnanyvyaars of abundant cfinlcal experience to our
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`The man'ufacl:uring plant-is not only a Factory approved by
`the U13; 'F.DA,¥lt.fias QMP nxanufactufihg standards, and also
`has ficensés a'nd'n_:'e'rtifica't'es issued by the ‘state govemment
`"for prpiiuctswflflzh. special effects and the qualrflatlon to
`produce‘-i;hal‘mace'utica1s.
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`28.
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`The site copies substantially all the designs, graphics, photographs and
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`text of the AmericanRena.com website. The site declares, in the “Q&A” section,
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`that “American RENA external use products
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`do not contain alcohol or
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`preservatives” in response to the question, “I’ve heard that American RENA
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`Activation Spray external spray products are Very effective at restoring and
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`preserving skin with pimples or have been damaged as a result of using cosmetics
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`containing lead, mercury, or stimulants — is this true?” Remarkably, the
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`RenaSkin.com website even has a large reprint of Rena’s stylized RENA
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`BIOTECHNOLOGY trademark (shown below) and depictions of Rena ’s products
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`and brochures.
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`3487323644/4868572.8
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`COMPLAINT
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`

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`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
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`
`29.
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`The purported RenaSkin.com website copies extensively from Rena’s
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`AmericanRena.com website, even to the extent of reproducing a letter authored by
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`Mr. Milliken. The purported RenaSkin.com site includes such headings as “RENA-
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`LIQUID FAR INFRARED = ALKALINE NEGATIVE ION” and “DESCRIPTION
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`OF RENA LIQUID LIFE ACTIVATION ENERGY PRODUCTS,” and contains
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`descriptions of “American Rena Activation Serum,” among numerous references to
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`“American Rena,” “American RENA,” and “RENA.” It contains a “COMPARISON
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`OF BOTOX VERSUS American RENA,” and depicts two pages copied from the
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`American Rena brochure and website. Still further, the stylized RENA
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`BIOTECHNOLOGY trademark appears in conjunction with references to the
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`purported RenaSkin.com website.
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`30.
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`Rena is further informed and believes that although the
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`WwW.ArenaSkin.com website was purportedly registered by an intermediary or
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`3487323644/48685728
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`_ | 1)-
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`COMPLAINT
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`

`
`Case
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`:12—cv—O6972—FMO—gEM Document 1 Filed 08/13/12 Page 13 of 51 Page ID #226
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`using an assumed name, “Dave Simms,” it is in fact owned and controlled by
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`Defendants. The “WHO IS” information provided to the registrar of the
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`ArenaSkin.com domain name reflects that (i) the registrant is “Dave Simms,” (ii) the
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`administrative contact is “Dave Ded,” (iii) the technical contact is “Dave Sed,”
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`(iv) Ded and Sed can be found at “123 Red Road” in Blue Bell, Pennsylvania
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`19422; and (V) Simms can be found at “l24 Red Road” in Blue Bell, Pennsylvania
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`19422. In fact, there is no “Red Road” in Blue Bell, nor does there appear to be a
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`“David Simms” in that city. Thus, as to the ArenaSkin.com website as well, the
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`registrar was provided with false information to hide the true names and capacities
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`of the registrant, administrative contact, and technical contact.
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`31.
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`The purported ArenaSkin.com site is very similar to the RenaSkin.com
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`site, and is equally infringing of Rena’s rights. For example, the header at the top of
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`each page has been modified to proclaim, “Genuine American aRena Anti-Aging
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`Activation Serum” — but is accompanied by the explanation that, “Rena is Now
`aRena!” The purported “aRena” products are described as having a “New
`Improved Formula” in an effort to persuade consumers that Rena has become
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`“ARéna” when it has not. It, too, copies without authorization a letter authored by
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`Rena’s Chief Executive Officer, Robert Milliken, extolling the benefits of genuine
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`Rena products. Further, it has extensively copied graphics and text from Rena’s
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`"M $
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`Website.
`
`I\) )—t
`
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`28
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`32.
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`In addition, many of the images, graphics, and scientific references
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`found on Rena’s website (www.AmericanRena.com) also appear on Sis—Joyce’s
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`website (www.SisJoyce.com), purportedly registered by a third party but
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`beneficially owned by Lin.
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`Defendant’s Fraudulent Advertisements
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`33. Defendants have also taken measures to directly trade on the goodwill
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`and popularity of Rena’s products in advertisements for their own infringing
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`products. For example, defendants posted YouTube videos that appear to promote
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`3487323644/4868572.8
`
`— LL-
`
`COMPLAINT
`
`

`
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
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`1 genuine RENA products — and display those products, and even Rena’s place of
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`2 business in Los Angeles — but then direct consumers to the bogus RenaSkin.com
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`3 website that sells defendants’ infringing goods. Screen shots of defendants’
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`4 fraudulent Videos posted on YouTube include the following:
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`Aniericdn ‘Reno
`Anti-Aging Serum
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`wvvw.Reno_S1<in.com
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`Still further, defendants provide fliers and brochures with their products
`34.
`19
`20 that use many of the same photographs, images and designs as appear in Rena’s
`21 promotional materials. Indeed, the RenaSkin.com website itself displays Rena ’s
`22 promotional brochures in an effort to sell the infringing “ARéna” products, as
`23
`shown:
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`)4873.23644/4868572.8
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`_] 2_
`
`COMPLAINT
`
`

`
`&DVH FY)02-(0 'RFXPHQW  )LOHG  3DJH  RI  3DJH ,' 
`Case :l2—cv—O6972—FMO—JEM Do