Case 8:14-cv-01973 Document 1 Filed 12/12/14 Page 1 of 8 Page ID #:1

1 Richard M. Wirtz (SBN 137812)

rwirtz@wirtzlaw.com

2 Erin K. Barns (SBN 286865)

ebarns@wirtzlaw.com

3 W I R T Z L A W APC

4365 Executive Drive, Suite 1460

4 San Diego, California 92121

voice: 858.259.5009

Thomas D. Foster (SBN 213414)

6 TD Foster - Intellectual Property Law

11622 El Camino Real, Suite 100

7 San Diego, CA 92130

voice: 858.922.2170

8 email:foster@tdfoster.com
9 Attorneys for Plaintiff TUFFSTUFF FITNESS INTERNATIONAL, INC.
10

UNITED STATES DISTRICT COURT

11

CENTRAL DISTRICT OF CALIFORNIA

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TUFFSTUFF
F I T N E S S Case Number:
INTERNATIONAL, INC., a California
COMPLAINT FOR DAMAGES
Corporation,
AND INJUNCTIVE RELIEF
Plaintiff,
1.
Infringement of Design
Patent No. D626609
v.
2.
Unfair Competition
(Cal. Bus. & Prof. Code
HEALTH IN MOTION LLC, a
17200)
California Limited Liability Company
3.
Trade Dress Infringement
dba Inspire Fitness; and DOES 1-10
4.
Declaratory Relief
Defendants.
(DEMAND FOR JURY TRIAL)

20
21
22

Plaintiff TUFFSTUFF FITNESS INTERNATIONAL, INC. (TuffStuff) alleges

23 as follows:
24

1.

TuffStuff is the owner of Design Patent No. D626609 for the ornamental

25 design for an exercise apparatus. Attached as Exhibit 1 is a true and correct copy of
26 Design Patent D626609.
27

2.

This Complaint arises from Defendant Health in Motion LLCs

28 unauthorized manufacture and/or sale (or exposure for sale) of the patented design

COMPLAINT

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1 and/or a colorable imitation thereof in violation of 35 U.S.C. 271 and 289.

2

I.

JURISDICTION AND VENUE

3.

This Court has personal jurisdiction over Defendant because it is a

5 California limited liability company which conducts business within the state of
6 California and maintains an office at 4945 E. Hunter Ave., Anaheim, California 92807.
7

4.

This Court has subject matter jurisdiction over this matter pursuant to 28

8 U.S.C. 1331, 1338, and 1367. Plaintiffs claims are, in part, based on violation of 35
9 U.S.C. 289. This Court has jurisdiction over the state law claims pursuant to 28
10 U.S.C. 1332, 1338(b), and 1367.
11

5.

Venue lies in the Central District of California pursuant to 28 U.S.C.

12 1391(b)(1) & (2), (c)(2), and (d). Plaintiff is informed and believes that Defendant
13 maintains an office in this district, manufactures, sells, or offers for sale their infringing
14 product to purchasers in this district, and that consumers use the infringing products in
15 this district.
16

II.

17

THE PARTIES

18

6.

Plaintiff TuffStuff is a California Corporation having its principle place of

19 business at 13971 Norton Ave., Chino, California 91710.

20

7.

Defendant Health in Motion LLC is a California Limited Liability

21 Company, with its principle place of business at 4945 E Hunter Ave., Anaheim,
22 California 92807. Plaintiff is informed and believes that Health in Motion LLC is doing
23 business as Inspire Fitness.
24

8.

Plaintiff is ignorant of the true names of defendants named as DOES 1-10

25 and thus names said defendants fictitiously. These fictitious defendants include, but are
26 not limited to, any subsidiaries, affiliates, and/or parent companies of Defendant Health
27 in Motion LLC of which Plaintiff is ignorant and which have participated and/or are
28 participating in the acts of infringement and unfair competition alleged herein. Plaintiff

COMPLAINT
2

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1 will amend its complaint to substitute the true names of DOES 1-10 as those names are
2 discovered.
3

9.

Plaintiff alleges on information and belief that at all relevant times each

4 Defendant was the agent, employee, representative, partner, attorney, successor, joint
5 venturer, assignee and related or an affiliated entity of the remaining Co-Defendants,
6 and in doing the things hereinafter mentioned, was acting in the course and scope of his,
7 her or its agency and employment with the permission, consent, authority and
8 ratification of the remaining Co-Defendants.
9

III.

10

GENERAL ALLEGATIONS

11

10.

TuffStuff is the owner of Design Patent No. D626609 for the ornamental

12 design for an exercise apparatus. Attached as Exhibit 1 is a true and correct copy of
13 Design Patent D626609, which is incorporated in full by this reference.
14

11.

In 2009, Plaintiffs President, Sherman Grider, developed and filed a

15 design patent application for a new ornamental design for an exercise apparatus, to be
16 used in both home gyms and in commercial applications. This application matured into
17 United States Design Patent Registration D626609, which was then assigned to
18 Plaintiff. At the time of assignment, Plaintiffs name was TuffStuff Fitness Equipment,
19 Inc. Plaintiffs name was changed last year, on or about December 13, 2013, to
20 TuffStuff Fitness International, Inc.
21

12.

TuffStuff sells its product under the name Six-Pak Trainer.

22

13.

On or about September 9, 2014, TuffStuff arrived to set up for the Heath

23 +Fitness Business Expo in Las Vegas, Nevada. The Expo was to take place on
24 September 10th and 11th, 2014. Upon arrival and while setting up, TuffStuff discovered
25 that Defendant Health in Motion, dba Inspire Fitness, was likewise setting up its booth
26 and that in Inspire Fitnesss booth was a product which infringed Patent No. D626609.
27

14.

As the side-by-side comparison below reveals, Defendants product which

28 it is calling its M1 Multi Gym misappropriates and copies Plaintiffs patented design.

COMPLAINT
3

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D626609 Patent

Defendants M1 Multi Gym

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10
11
12

15.

The following morning, on September 10, 2014, TuffStuffs

13 representatives approached Defendants booth. They asked those manning the booth,
14 who claimed to be minority owners of Defendant, if they were aware of Plaintiffs Six15 Pak Trainer. Defendants representatives responded that yes they were familiar with
16 Plaintiffs Six-Pak Trainer.

Plaintiffs representatives then notified Defendants

17 representatives that Defendants M1 Multi-Gym infringed Plaintiffs patent, and served

18 Defendant with a cease and desist letter.
19

16.

Despite this, Defendant went ahead with its exhibition of its infringing M1

20 Multi-Gym at the Expo. During demonstrations of the M1 Multi-Gym, Defendants

21 representatives advertised the product as Defendants version of Plaintiffs Six-Pak
22 Trainer, and touted that their version would be sold for a thousand dollars less.
23

17.

In addition, Defendant has since added the M1 Multi-Gym to the products

24 on its website, advertising the product as Coming Soon! Available December 2014."
25 Plaintiff is informed and believes that Defendant has taken and is currently fulfilling
26 orders for the infringing M1 Multi-Gym. Plaintiff is informed and believes that
27 Defendant solicited and accepted orders for the infringing M1 Multi-Gym at the Expo.
28 / / /

COMPLAINT
4

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FIRST CLAIM FOR RELIEF

Infringement of Design Patent No. D626609

35 U.S.C. 271 and 289

18.

Plaintiff re-alleges and incorporates by reference each of the foregoing

5 allegations as though set forth in full at this point.

6

19.

TuffStuff is the owner of Design Patent No. D626609 for the ornamental

7 design for an exercise apparatus.

8

20.

Defendant has infringed and continues to infringe, pursuant to 35 U.S.C.

9 271 and 289, the D626609 Patent by manufacturing, selling and/or offering to sell
10 in the United States, the M1 Multi-Gym product which copies the design covered by
11 the D626609 Patent. Specifically, the infringing M1 Multi-Gym incorporates several
12 elements covered by the Patent, including but not limited to the two curved vertical bars
13 joined by a U-shaped curved cross-bar.
14

21.

Plaintiff will be irreparably injured by Defendants continued patent

15 infringement, in a manner which may be impossible to quantify, unless enjoined by this

16 Court. Plaintiff has no adequate remedy at law for this ongoing injury. Plaintiff
17 therefore seeks a preliminary and permanent injunction, pursuant to 35 U.S.C. 283, to
18 prohibit Defendants from any further infringement of the D626609 Patent.
19

22.

As a result of Defendants infringement and in addition to injunctive relief,

20 Plaintiff is entitled to damages in an amount no less than a reasonable royalty for the
21 use made of the invention by Defendant, plus interest and costs. Plaintiff is also entitled
22 to Defendants profits, pursuant to 35 U.S.C. 289.
23

23.

In addition, because Defendant has wilfully infringed the Patent with both

24 knowledge and notice of Plaintiffs rights, and with the intent to infringe those rights,
25 Plaintiff is entitled to increased damages of three times the damages assessed pursuant
26 to 35 U.S.C. 285, and attorneys fees pursuant to 35 U.S.C. 285.
27 / / /
28 / / /

COMPLAINT
5

Case 8:14-cv-01973 Document 1 Filed 12/12/14 Page 6 of 8 Page ID #:6

SECOND CLAIM FOR RELIEF

Unfair Competition

(Cal. Bus. & Prof. Code 17200)

24.

Plaintiff realleges and incorporates by reference each of the foregoing

5 allegations as though set forth in full at this point.

6

25.

Defendants acts described above constitute unfair competition in violation

7 of California Business and Professions Code 17200 et seq., as they are unlawful,
8 fraudulent, unfair, misleading and likely to deceive the public.
9

26.

As a result of Defendants acts of unfair competition, Plaintiff is entitled

10 to restitution of the profits and other ill-gotten gains by Defendants from Defendants
11 infringement of Design Patent No. D626609.
12

27.

Plaintiff is also entitled to injunctive relief pursuant to California Business

13 and Professions Code 17203.

14

THIRD CLAIM FOR RELIEF

15

Trade Dress Infringement

16

15 U.S.C. 1125

17

28.

Plaintiff realleges and incorporates by reference each of the foregoing

18 allegations as though set forth in full at this point.

19

29.

Plaintiff owns the Design of the Six-Pak Trainer as trade dress.

20

30.

Plaintiffs Six-Pak Trainer Design, including but not limited to the two

21 curved vertical bars and the U-shaped cross-member, is distinctive. Consumers have
22 come to associate the design of the Six-Pak Trainer only with Plaintiff.
23

31.

The design of the Six-Pak Trainer is nonfunctional.

24

32.

Defendants used trade dress similar to the design of the Six-Pak Trainer

25 without the consent of Plaintiff in a manner that is likely to cause confusion among
26 ordinary consumers as to the source, sponsorship, affiliation, or approval of the
27 Defendants goods.
28

33.

As a direct and proximate result of Defendants conduct, Plaintiff is

COMPLAINT
6

Case 8:14-cv-01973 Document 1 Filed 12/12/14 Page 7 of 8 Page ID #:7

1 entitled, pursuant to 15 U.S.C. 1117(a), to recovery of: (i) Defendants profits related
2 to all uses of Plaintiffs trade dress; (ii) any damages sustained by Plaintiff as a result
3 of Defendants conduct, the precise amount of which shall be established by Plaintiff
4 at trial; and (iii) the costs of this action.
5

34.

In addition, Plaintiff will be irreparably injured by Defendants continued

6 trade dress infringement, in a manner which may be impossible to quantify, unless

7 enjoined by this Court. Plaintiff has no adequate remedy at law for this ongoing injury.
8 Plaintiff therefore seeks a preliminary and permanent injunction to prohibit Defendants
9 from any further use of Plaintiffs trade dress without Plaintiffs express written consent
10 in advance.
11

35.

Defendants have willfully poached Plaintiffs trade dress, have admitted

12 awareness of Plaintiffs Six-Pak Design, and have advertised their infringing product
13 as their version of Plaintiffs Six-Pak Design. Given these exceptional circumstances
14 of flagrant and willful infringement, Plaintiff requests treble damages, judgment for a
15 sum that this Court finds to be just, and reasonable attorneys fees, pursuant to 15
16 U.S.C. 1117(a).
17

FOURTH CLAIM FOR RELIEF

18

Declaratory Relief

19

36.

Plaintiff realleges and incorporates by reference each of the foregoing

20 allegations as though set forth in full at this point.

21

37.

An actual and present controversy exists between Plaintiff and Defendants

22 with respect to Defendants right to manufacture, sell, and/or offer for sale, their M1
23 Mutli-Gym product, as well as their right to market the M1 Multi-Gym as their
24 version of Plaintiffs patented Six-Pak product.
25

38.

Plaintiff believes that an ordinary observer would find the two designs to

26 be substantially similar, in light of the prior art. Defendant claims that an ordinary
27 observer would not find the two designs to be substantially the same when viewed in
28 light of the prior art.

COMPLAINT
7

Case 8:14-cv-01973 Document 1 Filed 12/12/14 Page 8 of 8 Page ID #:8

39.

Plaintiff's and Defendants interests are adverse, and a judicial

2 determination is necessary and appropriate to resolve the parties respective interests.

3

40.

Plaintiffs request that this Court resolve the competing contentions of the

4 parties and declare that:

5

a.

Plaintiff holds a valid patent, Patent No. D626609.

b.

Defendants M1 Multi-Gym is substantially similar to Plaintiffs design,

as protected by Patent No. D626609.

7
8

c.

WHEREFORE, Plaintiff prays for relief as follows:

10

1.

Defendants M1 Multi-Gym infringes Patent No. D626609

Entry of an order and judgment enjoining Defendants, their officers,

11 agents, servants, employees, owners and representatives, and all other persons or
12 entities in active concert or participation with Defendants, from manufacturing, selling,
13 offering for sale, advertising, or promoting its infringing M1 Multi-Gym, or any other
14 product substantially similar to Plaintiffs patented design, and enjoining Defendants
15 acts of unfair competition, including but not limited to any representations that its M1
16 Multi-Gym, or any other product substantially similar to Plaintiffs patented design, is
17 Defendants version of Plaintiffs Six-Pak Trainer.
18

2.

A judgment in the amount of Plaintiffs actual damages, treble damages,

19 Defendants profits, Plaintiffs reasonable attorneys fees and costs of suit, an amount
20 that this Court deems just given Defendants wilful and flagrant infringement, and pre21 judgment interest;
22

3.

A judgment for restitution of Defendants profits and ill-gotten gains

23 acquired through its acts of unfair competition.

Respectfully Submitted,

24
25 DATED:

December 11, 2014

WIRTZ LAW APC

26

By:

27
28

COMPLAINT
8

/s/ Richard M. Wirtz

Richard M. Wirtz
Attorneys for Plaintiff

Case 8:14-cv-01973 Document 1-1 Filed 12/12/14 Page 1 of 6 Page ID #:9

USO0D626609S

(12) United States Design Patent (10) Patent N0.:

Grider
(54)

EXERCISE APPARATUS

D502,5l5 S
D506,516 S

(75)

Inventor:

(73)

Assignee: TuffStuff Fitness Equipment, Inc.,

Sherman Grider, Pomona, CA (US)

Term:

14 Years

(21)

APPI-NO-Z 29/352,002

(63)

. . . . ..

D21/676

3/2006 Kuo ............... ..

482/94

D594,072 S

SchulZ et al.

............ .. D21/691

8/2006 Stewart et al

10/2007 Husted et al
2/2008 Piane Jr.
*

D583,426 s *
_

. . . . . . . . . . . . .

4/2006

D574,448 S

Related U-S-Appllcatmn Data

Panatta

D519,586 S

13,565,134 s *

Dec-15, 2009

12/2005

7,011,609 B1*

7335 141 B2

Flledi

Yang ....................... .. D21/694

132N694

13,552,193 s

6/2005

V2006 Glannelhet al' "

7 090 623 B2

(M)

Nov. 2, 2010

11/2005 Carter

13514476 S *

Pomona CA (Us)

*1,

3/2005 Carter
*

D512,113 5
D513,286

(22)

US D626,609 S

(45) Date of Patent:

3/2008 Brown etal. ............. .. D2l/694

8/2008

Webber et al.

.... .. D21/673

12/2008 Webber etal. ........... .. D2l/694

6/2009

Horita ..................... .. D21/694

D606,l35 s * 12/2009 Grider

Feb.
Continuation
22, 2008,of
noW
application
Pat. No. Des.
No. 29/301,317,
606,135. ?led on

.. D2l/694

(Z/$5,330; a1 ' """"""" "

* cited by examiner

52cc?) Cl
(

(58)

I. .

D21/694_ D21/691

. ...... .... ...... ... .................. ..

(7,014,201,110! Agent] or Firm%is1o &Th0mas LLP

Field of Classi?cation Search .............. .. D21/673,

D2l/675i676, 6864687, 694; 482/9394,

482/97il03, 133, 135*136,138, 140, 142
(56)

Primary ExamineriSusan E KrakoWer

See application ?le for Complete Search history

References Cited
U.S. PATENT DOCUMENTS
4,372,553 A *

2/1983

4,720,099 A *

1/1988 Carlson

Hat?eld .................... .. 482/105

4,746,114

5/1988

Grider

5,018,725

5/1991

Cook

482/133
.....

... ... ... .

. . . .. 482/104
. . . ..

5/1997 Montijo et al

D21/694

D404,432 S

1/1999

D21/662

Sands ........... ..

D412,953 S *

8/1999 Armstrong

6,102,836 A *

8/2000

6,165,110 A

Person

D21/694

..................... .. 482/103

12/2000 Gajda

6,561,960 B2

5/2003 Webber

6,585,626 B2*

7/2003

6,685,600 B1*

2/2004

CLAIM

The ornamental design for an exercise apparatus, as shoWn

and described
DESCRIPTION
FIG. 1 is a perspective vieW of my exercise apparatus;

FIG. 2 is a front vieW thereof;

FIG. 3 is a rear side vieW thereof;

482/103

D379,388 S *
*

(57)

FIG. 4 is a side vieW thereof; and,

FIG. 5 is an opposing side vieW thereof.
The broken line portions of the disclosure are included for the
purpose of illustrating environment and form no part of the

claimed design.

McBride ................... .. 482/130

1 Claim, 5 Drawing Sheets

Case 8:14-cv-01973 Document 1-1 Filed 12/12/14 Page 2 of 6 Page ID #:10

US. Patent

Nov. 2, 2010

Sheet 1 of5

FIG. 1

US D626,609 S

Case 8:14-cv-01973 Document 1-1 Filed 12/12/14 Page 3 of 6 Page ID #:11

US. Patent

Nov. 2, 2010

Sheet 2 of5

FIG. 2

US D626,609 S

Case 8:14-cv-01973 Document 1-1 Filed 12/12/14 Page 4 of 6 Page ID #:12

US. Patent

Nov. 2, 2010

Sheet 3 of5

US D626,609 S

manl
FIG. 3

Case 8:14-cv-01973 Document 1-1 Filed 12/12/14 Page 5 of 6 Page ID #:13

US. Patent

Nov. 2, 2010

Sheet 4 of5

FIG. 4

US D626,609 S

Case 8:14-cv-01973 Document 1-1 Filed 12/12/14 Page 6 of 6 Page ID #:14

US. Patent

Nov. 2,2010

Sheet 5 of5

FIG. 5

US D626,609 s