One Pass v. Weisser Distributing - Complaint

Case 3:17-cv-05798 Document 1 Filed 10/06/17 Page 1 of 16
1 JOHNSON & PHAM, LLP

Christopher D. Johnson, SBN: 222698
2 E-mail: cjohnson@johnsonpham.com
Christopher Q. Pham, SBN: 206697
3 E-mail: cpham@johnsonpham.com
Marcus F. Chaney, SBN: 245227
4 E-mail: mchaney@johnsonpham.com
Jason R. Vener, SBN: 267941
5 E-mail:jvener@johnsonpham.com
6355 Topanga Canyon Boulevard, Suite 326
6 Woodland Hills, California 91367
Telephone: (818) 888-7540
7 Facsimile: (818) 888-7544
8 Attorneys for Plaintiff
ONE PASS, LLC
9
10
UNITED STATES DISTRICT COURT
11
NORTHERN DISTRICT OF CALIFORNIA
12
SAN FRANCISCO DIVISION
13
ONE PASS, LLC, a California Limited Liability Case No.: 3:17-cv-05798
14 Company,
COMPLAINT FOR DAMAGES:
15 Plaintiff,
(1) FEDERAL TRADEMARK
16 v. INFRINGEMENT [15 U.S.C.
1114/Lanham Act 32(a)];
17 WEISSER DISTRIBUTING, INC., a South (2) FALSE DESIGNATION OF
Dakota Corporation, doing business as TOOL ORIGIN/UNFAIR COMPETITION
18 DEALS, AUTOBODYNOW and ABN; and [15 U.S.C. 1125(a)/Lanham Act
DOES 1-10, inclusive, 43(a)];
19 (3) UNFAIR BUSINESS PRACTICES
Defendants. [CALIFORNIA BUSINESS &
20 PROFESSIONS CODE 17200];
(4) FEDERAL PATENT
21 INFRINGEMENT [35 U.S.C. 271].
22 [DEMAND FOR JURY TRIAL]
23
24
///
25
26 ///
27
///
28
-1-
COMPLAINT FOR DAMAGES - CASE NO. 3:17-cv-05798
1 COMES NOW, Plaintiff ONE PASS, LLC (Plaintiff), to hereby file their Complaint for
2 Damages (Complaint) against Defendant WEISSER DISTRIBUTING, INC., d/b/a TOOL
3 DEALS, AUTOBODYNOW, and ABN; and DOES 1-10, inclusive (collectively Defendants).
4 PARTIES
5 1. Plaintiff ONE PASS, LLC (formerly Goldtime Products, LLC), is now, and was at
6 the time of the filing of this Complaint and at all intervening times, a California limited liability
7 company having a principal place of business in Hollister, California.
8 2. Plaintiff is informed and believes that Defendant WEISSER DISTRIBUTING,
9 INC., is now, and was at the time of the filing of this Complaint, and at all intervening times, an
10 active South Dakota corporation located in Tea, South Dakota, doing business as TOOL DEALS,
11 AUTOBODYNOW, and ABN (hereinafter WEISSER DISTRIBUTING, INC.)
12 3. The true names and capacities, whether individual, corporate, associate or
13 otherwise, of Defendants herein named as DOES 1-10, inclusive, are unknown to Plaintiff.
14 Plaintiff therefore sues said Defendants by such fictitious names. When the true names and
15 capacities of said Defendants have been ascertained, Plaintiff will amend this pleading
16 accordingly.
17 4. Plaintiff further alleges that Defendant WEISSER DISTRIBUTING, INC., and
18 DOES 1-10, inclusive, sued herein by fictitious names, are jointly, severally and concurrently
19 liable and responsible with one another upon the causes of action hereinafter set forth.
20 5. Plaintiff is informed and believes and thereon allege that at all times mentioned
21 herein Defendant WEISSER DISTRIBUTING, INC., and DOES 1-10, inclusive, and each of
22 them, were the agents, servants and employees of every other Defendant and the acts of each
23 Defendant, as alleged herein, were performed within the course and scope of that agency, service
24 or employment.
25 JURISDICTION / VENUE
26 6. This Court has jurisdiction over the subject matter of the First, Second, and Fourth
27 Causes of Action (violation of the Lanham Act and Patent law) pursuant to 15 U.S.C. 1121 and/or
28 28 U.S.C. 1331 and/or 1338(a).
-2-
1 7. This Court has personal jurisdiction over Defendants as Defendants conduct

2 business within this jurisdiction and have committed the tortious activities of trademark and patent
3 infringement and unfair competition in this district. Defendants have sufficient minimum contacts
4 with this district such that the exercise of jurisdiction over Defendants by this Court does not offend
5 traditional notions of fair play and substantial justice. Among other things, Defendants have
6 advertised, offered to sell, sold, and distributed products that infringe the trademark and patents of
7 Plaintiff to consumers within this judicial district for Defendants own commercial gain and have
8 exploited Californias extensive marketplace, wherein Plaintiff maintains substantial business
9 contacts and financial interests. Defendants have also offered to sell and actually sold products
10 (described more fully below) using interactive internet websites knowing or having reason to know
11 that consumers throughout the United States, including within this judicial district, would purchase
12 said goods from Defendants, believing that they were goods manufactured and distributed by
13 Plaintiff or their authorized manufacturers when the opposite its true.
14 8. Additionally, supplemental jurisdiction exists over Defendants because, on
15 information and belief, Defendants conduct business in California and in this judicial district, have
16 purposefully directed action to California and this district, or have otherwise availed themselves
17 of the privileges and protections of the laws of the State of California, such that this Courts
18 assertion of jurisdiction over Defendants does not offend traditional notions of fair play and due
19 process.
20 9. Venue is proper in this district, inter alia, pursuant to 28 U.S.C. 1391(b) because,
21 on information and belief, a substantial part of the events or omissions giving rise to these claims
22 occurred in this judicial district, and has caused damage to Plaintiff in this district. The products
23 at issue in this litigation were purchased in California and Defendants purposefully distributed the
24 said products within California. Moreover, the products were paid with funds from a financial
25 institution in California, and the transactions were processed through PayPal, Inc., located in
26 California. Defendants actions within this district directly interfere with and damage Plaintiffs
27 commercial business and harms Plaintiffs goodwill within this Venue.
28 ///
-3-
1 INTRADISTRICT ASSIGNMENT
2 10. Pursuant to Rule 3-2(c) of the Local Rules of Practice in Civil Proceedings before
3 the United States District Court for the Northern District of California (Civil L.R.) and the
4 Courts Assignment Plan, this is an Intellectual Property Action to be assigned on a district wide-
5 basis.
6 11. Assignment to the San Francisco Division would nonetheless be appropriate
7 pursuant to Civil L.R. 3-2(d) because a substantial part of the events that give rise to Plaintiffs
8 claims against Defendants occurred in San Benito County, California, where Plaintiffs principal
9 place of business is located.
10 GENERAL ALLEGATIONS
11 Plaintiff and Their Well-Known T-BAR Brand and Products
12 12. Plaintiff is in the business of designing, manufacturing, and/or distributing devices
13 for cleaning automobiles, devices for removing liquids and/or debris from automobiles, and
14 cleaning, polishing, scouring, and abrasive preparations for automobiles, boats, recreational
15 vehicles, trailers, motorcycles, trucks and aircrafts. Such products include Plaintiffs T-BAR -
16 brand products, which are water blades used for the removal of water from widows, and curved or
17 flat surfaces.
18 13. Plaintiff has spent substantial time, money and effort in developing consumer
19 recognition and awareness of its T-BAR-brand products and associated trademark. Indeed,
20 Plaintiff has spent an enormous amount of money on print and Internet advertising in order to
21 inform consumers of the benefits of Plaintiffs T-BAR products.
22 14. Through the extensive use of Plaintiffs T-BAR mark, Plaintiff has built up and
23 developed significant goodwill in T-BAR-brand products. A wide array of newspapers,
24 magazines and television networks have included advertising of Plaintiffs products, which are
25 immediately identified by Plaintiffs T-BAR mark.
26 15. As a result of Plaintiffs efforts and the quality of Plaintiffs products, the T-BAR
27 mark has been prominently placed in the minds of the public. Consumers, purchasers and members
28 of the public have become familiar with Plaintiffs intellectual property and products, and have
-4-
1 come to recognize the T-BAR mark and products and associate them exclusively with Plaintiff.
2 Plaintiff has acquired a valuable reputation and goodwill among the public as a result of such
3 association.
4 Plaintiffs T-BAR Trademark and Patents
5 16. While Plaintiff has gained significant common law trademark and other rights in
6 its T-BAR products through their use, advertising and promotion, Plaintiff has also protected its
7 valuable rights by filing for and obtaining a federal trademark registration for same. Namely,
8 Plaintiff has registered the trademark T-BAR, with the United States Patent and Trademark
9 Office, in Class 21, for plastic water blade inserts used in a holder with an extension handle for
10 the removal of water from windows, curved, and flat surfaces, which has the USPTO Reg. No.
11 2,943,348, and which has claimed date of first use at least as of January 31, 1998.
12 17. Further, Plaintiff owns various valid and lawfully issued United States Patents for
13 its T-BAR-branded products, including but not limited to USPTO Patent Nos.: 5,920,947;
14 7,627,924; 7,861,362; 7,757,336; 7,134,163; 7,363,678; 6,126,756; 6,796,000; and 6,243,911 (T-
15 BAR Patents).
16 Defendants Wrongful and Infringing Conduct
17 18. Particularly in light of the success of Plaintiff and Plaintiffs products as well as the
18 reputation they have gained, Plaintiff and its products have become targets for unscrupulous
19 individuals and entities who wish to take a free ride on its goodwill and reputation. Plaintiff has
20 spent considerable effort and resources to build up its products and marks, including its patented
21 T-BAR-brand products.
22 19. A large number of these individuals and entities deal in knock-offs of T-BAR-
23 brand water blade and advertise same for sale as T-BAR products, when said products are not,
24 in fact, T-BAR-brand products and do not originate with Plaintiff. Their actions vary and include
25 manufacturing, copying, exporting, importing, advertising, promoting, offering for sale, selling,
26 and distributing unauthorized reproductions of the patented T-BAR-brand water blade.
27 20. To wit, Defendants primarily utilizes Internet commerce enabled websites and/or
28 listings to advertise, promote, and distribute water blades which constitute unauthorized copies
-5-
1 and/or reproductions of patented T-BAR-brand water blades, and which are falsely advertised
2 as being T-BAR water blades in Defendants online advertising and listings.
3 21. Plaintiff has never authorized or consented to Defendants use of Plaintiffs T-
4 BAR trademarks in commerce, or any confusingly similar marks, nor has Plaintiff authorized
5 Defendants to manufacture, copy, sell, import, advertise, offer for sale, market, or distribute any
6 T-BAR-brand products, to sell copies of Plaintiffs patented T-BAR water blade, or to sell
7 products which embody the claims of the T-BAR Patents.
8 22. Defendants use the Internet auction website www.eBay.com (eBay), owned by
9 eBay, Inc., and the online sales website www.amazon.com, owned by Amazon, Inc. (Amazon),
10 to offer for sale, sell and distribute reproductions of patented T-BAR-brand products to
11 consumers, or to sell products which embody the claims of the T-BAR Patents, while advertising
12 that said products are T-BAR products.
13 23. Many of the online commercial transactions accomplished by Defendants are also
14 accomplished through the PayPal.com (PayPal) payment service provided by PayPal, Inc. Using
15 PayPal, purchasers of products can transfer funds to sellers, electronically and online, from any
16 PayPal account to any other PayPal account.
17 24. Both eBay, Inc. and PayPal, Inc. are headquartered in California. In order for
18 sellers, including Defendants, to make use of eBay and PayPal, users must agree to terms and
19 conditions set forth in eBay and PayPals User Agreements, as well as pay various fees associated
20 with any listing or transaction accomplished through eBay and PayPals services.
21 25. Defendants operate interactive and commerce enabled webpage sales listings on
22 eBay under the seller ID autobodynow. Through these webpages, Defendants regularly and
23 systematically advertise, market, distribute and sell unauthorized copies of Plaintiffs patented T-
24 BAR-brand products and/or products which embody the claims of the T-BAR Patents to
25 consumers, while advertising, in the sales listings for said products that the products being offered
26 for sale are T-Bar products.
27 26. Defendants also operate interactive and commerce enabled webpage sales listings
28 on Amazon under the seller ID Tool Deals. Through these webpages, Defendants regularly and
-6-
1 systematically advertise, markets, distribute and sell unauthorized copies of Plaintiffs patented T-
2 BAR-brand products and/or products which embody the claims of the T-BAR Patents to
3 consumers, while advertising, in the sales listings for said products that the products being offered
4 for sale are T-Bar products.
5 27. On April 25, 2017, Defendants had listed for sale, on Amazon, through their Tool
6 Deals seller ID, a product described as ABN Automotive Squeegee Silicone T-Bar Soft and
7 Dry Water Blade 12 inches, Quick, Spot Free Drying. This product was purchased on April 25,
8 2017, for a total cost of $10.43. Upon receipt, said product was inspected by Plaintiff for
9 authenticity. Despite Defendants claims in their Amazon sales listing that the product was a T-
10 bar product, said product was not a T-BAR-brand product, nor originated with Plaintiff.
11 Additionally, said product was a copy of Plaintiffs patented T-BAR - brand products and/or
12 embodied the subject matter of the claims of the T-BAR Patents.
13 28. On April 25, 2017, Defendants had listed for sale, on eBay, through their
14 autobodynow seller ID, a product described as ABN Automotive Squeegee Silicone T-Bar
15 Soft and Dry Water Blade 12 inches. This product was purchased on April 25, 2017, for a total
16 cost of $9.99 through PayPal. Upon receipt, said product was inspected by Plaintiff for
17 authenticity. Despite Defendants claims in its eBay sales listing that the product was a T-bar
18 product, said product was not a T-BAR-brand product, nor originated with Plaintiff.
19 Additionally, said product was a copy and of Plaintiffs patented T-BAR - brand product and/or
20 embodied the subject matter of the claims of the T-BAR Patents.
21 29. By these sales and, on information and belief, Defendants have violated and
22 continue to violate Plaintiffs exclusive rights in its trademarked and patented T-BAR - brand
23 water blades, and use images and marks that are confusingly similar to, identical to, and/or
24 constitute reproductions of Plaintiffs T-BAR trademark and Plaintiffs patented T-BAR
25 products to confuse consumers and aid in the promotion and sales of its unauthorized goods.
26 Defendants conduct and use began long after Plaintiffs adoption and use of its T-BAR
27 trademark and T-BAR Patents and after Plaintiff obtained the trademark and patent registrations
28 alleged above. Indeed, Defendants had knowledge of Plaintiffs ownership of the T-BAR mark
-7-
1 prior to the actions alleged herein, and adopted it in bad faith and with intent to cause confusion
2 as to the source of Defendants products. Defendants also had knowledge of Plaintiffs ownership
3 of the T-BAR Patents and reproduced the subject matter thereof in bad faith and in violation of
4 Plaintiffs patent rights. Neither Plaintiff nor any authorized agents thereof have consented to
5 Defendants use of Plaintiffs T-BAR trademark or T-BAR Patents in the manner complained
6 of herein.
7 30. Defendants actions were committed in bad faith and with the intent to cause
8 confusion and mistake, and to deceive the consuming public and the public at large as to the source,
9 sponsorship and/or affiliation of Defendants, and/or Defendants unauthorized goods. By their
10 wrongful conduct, Defendants have traded upon and diminished Plaintiffs goodwill.
11 31. In committing these acts, Defendants have, among other things, willfully and in bad
12 faith committed the following acts, all of which have and will continue to cause irreparable harm
13 to Plaintiff: (i) infringed Plaintiffs rights in the T-BAR trademark and T-BAR Patents; (ii)
14 misled the public into believing there is an association or connection between Defendants and
15 Plaintiff and/or the products advertised and sold by Defendants and Plaintiff; (iii) used false
16 designations of origin on or in connection with its goods and/or services; (iv) committed unfair
17 competition; (v) infringed upon Plaintiffs patents in its T-BAR-brand water blades; and (vi)
18 unfairly profited from such activity. Unless enjoined, Defendants will continue to cause irreparable
19 harm to Plaintiffs.
20 FIRST CAUSE OF ACTION
21 (Infringement of Registered Trademarks against Defendants WEISSER DISTRIBUTING,
22 INC.; and DOES 1 through 10, Inclusive)
23 [15 U.S.C. 1114/Lanham Act 32(a)]
24 32. Plaintiff hereby incorporates by reference each of the other allegations set forth
25 elsewhere in this Complaint as though fully set forth in this cause of action.
26 33. Plaintiff has continuously used its T-BAR trademark in interstate commerce.
27 34. Plaintiff, as the owner of all right, title and interest in and to the T-BAR
28 trademark, has standing to maintain an action for trademark infringement under the U.S.
-8-
1 Trademark Statute 15 U.S.C. 1114.

2 35. Defendants are, and at the time of their actions complained of herein were, actually
3 aware that Plaintiff is the registered trademark holder of the T-BAR trademark.
4 36. Defendants did not and failed to obtain the consent or authorization of Plaintiff as
5 the registered owner of the mark to deal in and commercially distribute, market and sell products,
6 including water blades, into the stream of commerce while using Plaintiffs asserted T-BAR
7 mark.
8 37. Defendants negligently, recklessly, willfully, or in bad faith used in commerce the
9 reproductions, copies, and/ or colorable imitations of Plaintiffs asserted marks in connection with
10 the sale, offering for sale, distribution, or advertising of Defendants goods by offering,
11 advertising, promoting, retailing, selling, and distributing products marketed as being T-BAR -
12 brand products when this assertion is false.
13 38. Defendants reproduced, copied, and colorably imitated Plaintiffs registered T-
14 BAR trademark and applied such reproductions, copies, or colorable imitations to
15 advertisements and/or sales listings intended to be used in commerce upon or in connection with
16 the sale, offering for sale, distribution, and/or advertising of goods.
17 39. Defendants use and sale of items falsely advertised as T-BAR-brand products
18 is likely to cause confusion, or to cause mistake, or to deceive, mislead, betray, and defraud
19 consumers who believe that Defendants items are authentic products originating with Plaintiff,
20 and/or manufactured, and/or sponsored, by Plaintiff.
21 40. Defendants acts infringe on Plaintiffs exclusive rights and goodwill in the T-
22 BAR mark, as well as cause confusion, mistake or deception.
23 41. Plaintiff has suffered and will continue to suffer substantial and irreparable injury,
24 loss and damage to its rights in and to the T-BAR trademark and the goodwill associated
25 therewith, for which it has no adequate remedy at law. Thus, Plaintiff requests injunctive relief.
26 42. Defendants continued use of Plaintiffs asserted mark without Plaintiffs consent
27 or authorization constitutes intentional infringement of Plaintiffs federally registered trademark
28 in violation of 32 of the Lanham Act, 15 U.S.C. 1114. Based on such conduct, Plaintiff is
-9-
1 entitled to injunctive relief as well as monetary damages, and other remedies provided by 1116,
2 1117, and 1118, including Plaintiffs damages, Defendants profits, reasonable attorneys fees,
3 costs, and/or prejudgment interest.
4 SECOND CAUSE OF ACTION
5 (False Designation of Origin & Unfair Competition against Defendants WEISSER
6 DISTRIBUTING, INC.; and DOES 1 through 10, Inclusive)
7 [15 U.S.C. 1125(a)/Lanham Act 43(a)]
10 44. Plaintiff, as the owner of all common law right, title, and interest in and to the T-
11 BAR asserted mark, has standing to maintain an action for false designation of origin and unfair
12 competition under the Federal Trademark Statute, Lanham Act 43(a) (15 U.S.C. 1125).
13 Plaintiffs asserted mark is inherently distinctive and/or has acquired distinctiveness.
14 45. Defendants have, without authorization, on or in connection with its goods and
15 services, used in commerce marks which are confusingly similar to the asserted mark, and have
16 made false designations of origin which are likely to cause confusion or cause mistake or to
17 deceive as to the affiliation, connection or association of Defendants with Plaintiff, and as to the
18 origin, sponsorship or approval of Defendants goods or services or commercial activities.
19 46. Defendants conduct described above violates the Lanham Act, and Defendants
20 have unfairly competed with and injured and, unless immediately restrained, will continue to
21 injure Plaintiff, causing damage to Plaintiff in an amount to be determined at trial, and will cause
22 irreparable injury to Plaintiffs goodwill and reputation associated with the value of Plaintiffs
23 asserted mark.
24 47. On information and belief, the conduct of Defendants has been negligent, reckless,
25 willful, or in bad faith to cause confusion, or to cause mistake or to deceive and in blatant
26 disregard of Plaintiffs rights.
27 48. Defendants knew, or by the exercise of reasonable care should have known, that
28 their adoption and commencement of use in commerce and continuing use of marks which are
- 10 -
1 confusingly similar and/or identical to Plaintiffs asserted mark would cause confusion, mistake,
2 or deception among purchasers, users and the public.
3 49. Defendants use and sale of items advertised in conjunction with Plaintiffs
4 asserted mark unfairly competes with Plaintiff and is likely to cause confusion, mistake, or to
5 deceive, mislead, betray, and defraud consumers to believe that their substandard products are T-
6 BAR products.
7 50. Defendants continuing use of Plaintiffs asserted marks constitutes false
8 designation of origin and unfair competition in violation of 43(a) of the Lanham Act, 15 U.S.C.
9 1125(a), causing Plaintiff to suffer substantial and irreparable injury for which it has no adequate
10 remedy at law.
11 51. Defendants wrongful conduct has permitted or will permit them to make
12 substantial sales and profits on the strength of Plaintiffs marketing, advertising, sales and
13 consumer recognition. As a direct and proximate result of Defendants wrongful conduct, as
14 alleged herein, Plaintiff has been and will be deprived of sales of its T-BAR products in an
15 amount as yet unknown but to be determined at trial, and has been deprived and will be deprived
16 of the value of Plaintiffs mark as a commercial asset in an amount as yet unknown but to be
17 determined at trial. Plaintiff seeks damages and an accounting of Defendants profits.
18 52. Based on Defendants wrongful conduct, Plaintiff is entitled to injunctive relief as
19 well as monetary damages, and other remedies as provided by the Lanham Act, including
20 Plaintiffs damages, Defendants profits, reasonable attorneys fees, costs and prejudgment
21 interest.
22 THIRD CAUSE OF ACTION
23 (Unlawful, Unfair, Fraudulent Business Practices against WEISSER DISTRIBUTING,
24 INC.; and DOES 1 through 10, Inclusive)
25 [California Business & Professions Code 17200 et seq.]
28 54. By marketing, advertising, promoting, selling and/or otherwise dealing in products
- 11 -
1 in conjunction with the unauthorized use of the T-BAR trademark, Defendants have engaged in
2 unfair competition including unlawful, unfair and fraudulent business practices in violation of the
3 California Business and Professions Code 17200 et seq.
4 55. Defendants marketing, advertising, promoting, selling and/or otherwise dealing
5 in products in conjunction with the unauthorized use of the T-BAR trademark is in violation
6 and derogation of Plaintiffs rights and is likely to cause confusion, mistake and deception among
7 consumers and the public as to the source, origin, sponsorship, or quality of the goods of
8 Defendants, thereby causing loss, damage and injury to Plaintiff and to the purchasing public.
9 Defendants conduct was intended to cause such loss, damage and injury.
10 56. Defendants knew, or by the exercise of reasonable care should have known, that
11 their marketing, advertising, promoting, selling and/or otherwise dealing in products in
12 conjunction with the unauthorized use of the T-BAR trademark would cause confusion, mistake
13 or deception among purchasers, users and the public.
14 57. By marketing, advertising, promoting, selling and/or otherwise dealing in products
15 in conjunction with the unauthorized use of the T-BAR trademark, Defendants intended to and
16 did induce, and intend to and will induce customers to purchase their products by trading off the
17 extensive goodwill built up by Plaintiff in its mark.
18 58. Upon information and belief, the conduct of Defendants has been negligent,
19 reckless, willful, or in bad faith to cause confusion, or to cause mistake or to deceive, and in
20 disregard of Plaintiffs rights.
21 59. Defendants wrongful conduct, as alleged above, has permitted and will permit
22 them to make substantial sales and profits on the strength of Plaintiffs marketing, advertising,
23 sales and consumer recognition. As a direct and proximate result of Defendants wrongful
24 conduct, as alleged herein, Plaintiff has been and will be deprived of substantial sales of its
25 products in an amount as yet unknown but to be determined at trial, and has been and will be
26 deprived of the value of its trademarks as commercial assets, in an amount as yet unknown but to
27 be determined at trial. Plaintiff seeks restitution in this matter, including an order granting
28 Defendants profits stemming from its infringing activity, and its actual and/or compensatory
- 12 -
1 damages.
2 60. Plaintiff has no adequate remedy at law for Defendants continuing violation of its
3 rights set forth above. Plaintiff seeks injunctive relief.
4 61. Plaintiff further requests a court order that an asset freeze or constructive trust be
5 imposed over all monies and assets in Defendants possession which rightfully belong to Plaintiff.
6 FOURTH CAUSE OF ACTION
7 (Federal Patent Infringement Against WEISSER DISTRIBUTING, INC.; and DOES 1
8 through 10, Inclusive)
9 [35 U.S.C. 271]
10 60. Plaintiffs hereby incorporate by reference each of the other allegations set forth
12 61. Plaintiff is the owner of the T-BAR Patents with the USPTO Reg. Nos.:
13 5,920,947; 7,627,924; 7,861,362; 7,757,336; 7,134,163; 7,363,678; 6,126,756; 6,796,000; and
14 6,243,911.
15 62. Upon information and belief, Defendants have infringed and continue to infringe
16 the T-BAR Patents by using, selling and/or offering to sell, in the United States and/or importing
17 into the United States, water blade products which embody the claims covered by Plaintiffs
18 patents. Upon information and belief, Defendants infringing products embody claimed subject
19 matter of the T-BAR Patents. By their conduct, Defendants have violated 35 U.S.C. 271 by
20 direct infringement of Plaintiffs T-BAR Patents.
21 63. Plaintiff is informed and believes and, on that basis, alleges that Defendants have
22 gained profits by virtue of their infringement of the T-BAR Patents.
23 64. As a direct and legal result of Defendants wrongful conduct, Plaintiff has been and
24 will be irreparably and permanently harmed; wherefore Plaintiff is without an adequate remedy at
25 law. Accordingly, Plaintiff is entitled to, among other things, an order enjoining and restraining
26 Defendants from further engaging in the infringement of the T-BAR Patents.
27 65. Defendants infringement of the T-BAR Patents is and has been willful.
28 Accordingly, Plaintiff is entitled to its monetary damages, in an amount to be proven at trial, an
- 13 -
1 award of treble damages, and their reasonable attorneys fees and costs.
2 WHEREFORE, Plaintiff ONE PASS, LLC, prays for judgment against Defendants
3 WEISSER DISTRIBUTING, INC., and DOES 1 through 10, inclusive, and each of them, as
4 follows:
5 1. An order and judgment preliminary and permanently enjoining Defendants and their
6 officers, directors, agents, servants, employees, affiliates, attorneys, and all others
7 acting in privity or in concert with them, and their parents, subsidiaries, divisions,
8 successors and assigns from further acts of infringement of Plaintiffs asserted T-
9 BAR Patents.
10 2. For an award of Plaintiffs damages and Defendants profits adequate to compensate
11 Plaintiff for Defendants infringement of the T-BAR Patents, and in no event less
12 than a reasonable royalty for Defendants acts of infringement, including all pre-
13 judgment and post-judgment interest as the maximum rate permitted by law;
14 3. For an award of all damages, including treble damages, based on any infringement
15 found to be willful, pursuant to 35 U.S.C. 284, together with prejudgment interest.
16 4. For an award of all profits, pursuant to 35 U.S.C. 289 together with prejudgment
17 interest.
18 5. For an award of Defendants profits and Plaintiffs damages in an amount to be proven
19 at trial for trademark infringement under 15 U.S.C. 1114(a);
20 6. In the alternative to actual damages and Defendants profits for the infringement of
21 Plaintiffs Trademark pursuant to the Lanham Act, for statutory damages pursuant to
22 15 U.S.C. 1117(c), which election Plaintiff will make prior to the rendering of final
23 judgment;
24 7. For an award of Defendants profits and Plaintiffs damages in an amount to be proven
25 at trial for false designation of origin and unfair competition under 15 U.S.C. 1125(a);
26 8. For restitution in an amount to be proven at trial for unfair, fraudulent and illegal
27 business practices under Business and Professions Code 17200;
28 9. For damages to be proven at trial for common law unfair competition;
- 14 -
1 10. For temporary, preliminary and permanent injunctive relief from this Court prohibiting
2 Defendants from engaging or continuing to engage in the unlawful, unfair, or
3 fraudulent business acts or practices described herein, including the advertising and/or
4 dealing in any unauthorized product; the unauthorized use of any mark, patent or other
5 intellectual property right of Plaintiffs; acts of trademark infringement; false
6 designation of origin; unfair competition; and any other act in derogation of Plaintiffs
7 rights;
8 11. For an order from the Court requiring that Defendants provide complete accountings
9 and for equitable relief, including that Defendants disgorge and return or pay their ill-
10 gotten gains obtained from the illegal transactions entered into and or pay restitution,
11 including the amount of monies that should have been paid if Defendants complied
12 with their legal obligations, or as equity requires;
13 12. For an order from the Court that an asset freeze or constructive trust be imposed over
14 all monies and profits in Defendants possession which rightfully belong to Plaintiff;
15 13. For damages in an amount to be proven at trial for unjust enrichment;
16 14. For an award of exemplary or punitive damages in an amount to be determined by the
17 Court;
18 15. For Plaintiffs reasonable attorneys fees;
19 16. For all costs of suit; and
20 17. For such other and further relief as the Court may deem just and equitable.
21
22 DATED: October 6, 2017 JOHNSON & PHAM, LLP
23
By:/s/Christopher Q. Pham, Esq.
24 Christopher D. Johnson, Esq.
Christopher Q. Pham, Esq.
25 Marcus F. Chaney, Esq.
Jason R. Vener, Esq.
27 ONE PASS, LLC
28
- 15 -
1 DEMAND FOR JURY TRIAL

2 Plaintiff ONE PASS, LLC, respectfully demands a trial by jury in this action pursuant to
3 Civil L.R. 3-6(a).
4
5 DATED: October 6, 2017 JOHNSON & PHAM, LLP
6
By:/s/Christopher Q. Pham, Esq.
7 Christopher D. Johnson, Esq.
Christopher Q. Pham, Esq.
8 Marcus F. Chaney, Esq.
Jason R. Vener, Esq.
ONE PASS, LLC
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
- 16 -
Case 3:17-cv-05798 Document 1-1 Filed 10/06/17 Page 1 of 2
JS 44 (Rev. 12/12) cand rev (1/15/13) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS

ONE PASS, LLC, a California Limited Liability Company WEISSER DISTRIBUTING, INC., a South Dakota Corporation, doing
business as TOOL DEALS, AUTOBODYNOW and ABN; and DOES
1-10, includive
(b) County of Residence of First Listed Plaintiff San Benito County of Residence of First Listed Defendant Lincoln
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
JOHNSON & PHAM, LLP
6355 Topanga Canyon Boulevard, Suite 326, Woodland Hills, CA 91367
Tel: (818) 888-7540; Fax: (818) 888-7544
II. BASIS OF JURISDICTION (Place an X in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4 4
of Business In This State
2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
Citizen or Subject of a 3 3 Foreign Nation 6 6

Foreign Country
IV. NATURE OF SUIT (Place an X in One Box Only)
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure 422 Appeal 28 USC 158 375 False Claims Act
120 Marine 310 Airplane 365 Personal Injury - of Property 21 USC 881 423 Withdrawal 400 State Reapportionment
130 Miller Act 315 Airplane Product Product Liability 690 Other 28 USC 157 410 Antitrust
140 Negotiable Instrument Liability 367 Health Care/ 430 Banks and Banking
150 Recovery of Overpayment 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS 450 Commerce
& Enforcement of Judgment Slander Personal Injury 820 Copyrights 460 Deportation
151 Medicare Act 330 Federal Employers Product Liability 830 Patent 470 Racketeer Influenced and
152 Recovery of Defaulted Liability 368 Asbestos Personal 840 Trademark Corrupt Organizations
Student Loans 340 Marine Injury Product 480 Consumer Credit
(Excludes Veterans) 345 Marine Product Liability LABOR SOCIAL SECURITY 490 Cable/Sat TV
153 Recovery of Overpayment Liability PERSONAL PROPERTY 710 Fair Labor Standards 861 HIA (1395ff) 850 Securities/Commodities/
of Veterans Benefits 350 Motor Vehicle 370 Other Fraud Act 862 Black Lung (923) Exchange
160 Stockholders Suits 355 Motor Vehicle 371 Truth in Lending 720 Labor/Management 863 DIWC/DIWW (405(g)) 890 Other Statutory Actions
190 Other Contract Product Liability 380 Other Personal Relations 864 SSID Title XVI 891 Agricultural Acts
195 Contract Product Liability 360 Other Personal Property Damage 740 Railway Labor Act 865 RSI (405(g)) 893 Environmental Matters
196 Franchise Injury 385 Property Damage 751 Family and Medical 895 Freedom of Information
362 Personal Injury - Product Liability Leave Act Act
Medical Malpractice 790 Other Labor Litigation 896 Arbitration
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 791 Employee Retirement FEDERAL TAX SUITS 899 Administrative Procedure
210 Land Condemnation 440 Other Civil Rights Habeas Corpus: Income Security Act 870 Taxes (U.S. Plaintiff Act/Review or Appeal of
220 Foreclosure 441 Voting 463 Alien Detainee or Defendant) Agency Decision
230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 871 IRSThird Party 950 Constitutionality of
240 Torts to Land 443 Housing/ Sentence 26 USC 7609 State Statutes
245 Tort Product Liability Accommodations 530 General
290 All Other Real Property 445 Amer. w/Disabilities - 535 Death Penalty IMMIGRATION
Employment Other: 462 Naturalization Application
446 Amer. w/Disabilities - 540 Mandamus & Other 465 Other Immigration
Other 550 Civil Rights Actions
448 Education 555 Prison Condition
560 Civil Detainee -
Conditions of
Confinement
V. ORIGIN (Place an X in One Box Only)
1 Original 2 Removed from 3 Remanded from 4 Reinstated or 5 Transferred from 6 Multidistrict
Proceeding State Court Appellate Court Reopened Another District Litigation
(specify)
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
15 U.S.C. 1114; 15 U.S.C. 1125(a); 35 U.S.C. 271
VI. CAUSE OF ACTION Brief description of cause:
Federal Trademark Infringement, False Designation, California Unfair Business Practices, Patent Infringement
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. JURY DEMAND: Yes No
VIII. RELATED CASE(S)
IF ANY (See instructions):
JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
10/06/2017 /s/ Christopher Q. Pham
,;',9,6,21$/$66,*10(17&LYLO/5
(Place an X in One Box Only) ( ) SAN FRANCISCO/OAKLAND ( ) SAN JOSE ( ) EUREKA
Print Save As... Reset

JS 44 Reverse (Rev. 12/12) Case 3:17-cv-05798 Document 1-1 Filed 10/06/17 Page 2 of 2
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
then the official, giving both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".
II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
precedence, and box 1 or 2 should be marked.
Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
cases.)
III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
section for each principal party.
IV. Nature of Suit. Place an "X" in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is
sufficient to enable the deputy clerk or the statistical clerk(s) in the Administrative Office to determine the nature of suit. If the cause fits more than
one nature of suit, select the most definitive.
V. Origin. Place an "X" in one of the six boxes.

Original Proceedings. (1) Cases which originate in the United States district courts.
Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
When the petition for removal is granted, check this box.
Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
date.
Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
multidistrict litigation transfers.
Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407.
When this box is checked, do not check (5) above.
VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
numbers and the corresponding judge names for such cases.
Date and Attorney Signature. Date and sign the civil cover sheet.

One Pass v. Weisser Distributing - Complaint

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

One Pass v. Weisser Distributing - Complaint

Uploaded by

Copyright:

Available Formats

Case 3:17-cv-05798 Document 1 Filed 10/06/17 Page 1 of 16

1 JOHNSON & PHAM, LLP

1 7. This Court has personal jurisdiction over Defendants as Defendants conduct

1 Trademark Statute 15 U.S.C. 1114.

1 DEMAND FOR JURY TRIAL

I. (a) PLAINTIFFS DEFENDANTS

Citizen or Subject of a 3 3 Foreign Nation 6 6

(Place an X in One Box Only) ( ) SAN FRANCISCO/OAKLAND ( ) SAN JOSE ( ) EUREKA

Print Save As... Reset

V. Origin. Place an "X" in one of the six boxes.

You might also like