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Case 2:12-cv-00302-GZS Document 15 Filed 11/01/12 Page 1 of 10

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UNITED STATES DISTRICT COURT DISTRICT OF MAINE ___________________________________ ) TAO LICENSING, LLC, ) ) Plaintiff, ) ) Civil Action No. 2:12-cv-00302-GZS v. ) ) TAO RESTAURANT, LLC d/b/a TAO, ) CECILE STADLER, JOHN STADLER, ) and CARA STADLER, ) JURY TRIAL DEMANDED ) Defendants ) ___________________________________ )

DEFENDANTS ANSWER AND AFFIRMATIVE DEFENSES Defendants, Tao Restaurant, LLC d/b/a Tao, Cecile Stadler, John Stadler, and Cara Stadler (collectively Defendants), by and through counsel, hereby answer the Complaint of Plaintiff Tao Licensing, LLC (Plaintiff) as follows: INTRODUCTION Tao is a small mother-daughter owned family restaurant in Brunswick, Maine. Chef Cara Stadler is a classically trained chef who has trained and practiced in some of the most highly acclaimed restaurants in the world. Returning home to Maine, the Stadlers chose a name for their restaurant that reflected a menu with influences from around the world. They chose Tao, which is written in Chinese as and which translates as peach. Plaintiff Tao Licensing is associated with a chain of nightclubs frequently visited by celebrities. http://taolasvegas.com/ According to its trademark registration, Plaintiffs use of the word TAO is written in Chinese as and translates to the way. See Complaint Ex. 1. Not only are the words graphically and

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by definition different, but there is no likelihood that consumers in the geographically relevant location of Brunswick, Maine would confuse Tao (), a quiet neighborhood restaurant in Maine with Plaintiff TAO (), a Las Vegas and New York nightclub whose website features hip/hop techno music and scantily clad employees and patrons. JURISDICTION AND VENUE 1. 2. Defendants admit the allegations contained in Paragraph 1 of the Complaint. Defendants admit the allegations contained in Paragraph 2 of the Complaint. PARTIES 3. 4. 5. 6. 7. 8. Defendants admit the allegations contained in Paragraph 3 of the Complaint. Defendants admit the allegations contained in Paragraph 4 of the Complaint. Defendants admit the allegations contained in Paragraph 5 of the Complaint. Defendants admit the allegations contained in Paragraph 6 of the Complaint. Defendants admit the allegations contained in Paragraph 7 of the Complaint. Defendants admit that Cecile Stadler and Cara Stadler are co-owners of Tao

Restaurant, LLC. The remaining allegations in Paragraph 8 are denied, as John Stadler is not a co-owner of Tao Restaurant, LLC. 9. Defendants admit the allegations contained in Paragraph 9 of the Complaint. PLAINTIFFS BUSINESS AND CLAIMED TRADEMARKS 10. Defendants admit that Plaintiffs, Tao Restaurants and night clubs are Asia-

themed food and entertainment venues located in Las Vegas and New York City, but are without knowledge or information sufficient to form a belief as to the truth of the remaining allegations in Paragraph 10 and therefore deny the same.

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11.

Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations contained in Paragraph 11 of the Complaint. 12. Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations contained in Paragraph 12 of the Complaint. 13. 14. Defendants admit the allegations contained in Paragraph 13 of the Complaint. Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations in Paragraph 14 and therefore deny the same. 15. Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations in Paragraph 15 and therefore deny the same. 16. Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations in Paragraph 16 and therefore deny the same. 17. Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations in Paragraph 17 and therefore deny the same. 18. Denied. 19. Denied. DEFENDANTS ALLEGED ACTIVITIES 20. Defendants admit that Tao Restaurant LLC operates a restaurant under the name Defendants deny the allegations contained in Paragraph 19 of the Complaint. Defendants deny the allegations contained in Paragraph 18 of the Complaint.

Tao (with the letters a and o uncapitalized) at 22 Pleasant Street, Brunswick, Maine, 04011. The remaining allegations in Paragraph 20 are denied including the allegation that the restaurant is Asian. 21. Defendants deny the allegations contained in Paragraph 21 of the Complaint.

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22.

Defendants admit that Cara Stadler is the head chef at Tao. The remaining

allegations in Paragraph 22 are denied, including the allegation the Ms. Stadler has worked in the Asian food industry. 23. 24. 25. Defendants deny the allegations contained in Paragraph 23 of the Complaint. Defendants deny the allegations contained in Paragraph 24 of the Complaint. Defendants admit that they own and operate a website with the domain name

www.tao-maine.com. 26. 27. 28. Defendants deny the allegations contained in Paragraph 26 of the Complaint. Defendants deny the allegations contained in Paragraph 27 of the Complaint. Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations in Paragraph 28 and deny therefore deny the same. 29. 30. Defendants admit the allegations contained in Paragraph 29 of the Complaint. Defendants admit they have continued to operate TAO Maine but deny the

allegation related to Plaintiffs prior and superior rights in the TAO mark. 31. Defendants deny the allegations contained in Paragraph 31 of the Complaint.

Answering further, Defendants want no association with Plaintiffs business and believe that any such association with Plaintiffs business would be detrimental to Defendants business. 32. Defendants deny the allegations contained in Paragraph 32 of the Complaint. PLAINTIFFS CLAIMS FOR RELIEF CLAIM I ALLEGED INFRINGEMENT OF A REGISTERED TRADEMARK (FEDERAL) 33. Defendants incorporate by reference the responses to Paragraphs 1 through 32 as

set forth above. 34. Defendants deny the allegations contained in Paragraph 34 of the Complaint. 4

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35.

Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations in Paragraph 35 and therefore deny the same. 36. Defendants are without knowledge or information sufficient to form a belief as to

the truth of the allegations in Paragraph 36 and therefore deny the same. 37. 38. 39. 40. Defendants deny the allegations contained in Paragraph 37 of the Complaint. Defendants deny the allegations contained in Paragraph 38 of the Complaint. Defendants deny the allegations contained in Paragraph 39 of the Complaint. Defendants deny the allegations contained in Paragraph 40 of the Complaint.

CLAIM II ALLEGED FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION (FEDERAL) 41. In response to Paragraph 41, Defendants incorporate by reference the responses to

Paragraphs 1 through 40 as set forth above. 42. 43. 44. 45. 46. Defendants deny the allegations contained in Paragraph 42 of the Complaint. Defendants deny the allegations contained in Paragraph 43 of the Complaint. Defendants deny the allegations contained in Paragraph 44 of the Complaint. Defendants deny the allegations contained in Paragraph 45 of the Complaint. Defendants deny the allegations contained in Paragraph 46 of the Complaint. COUNT III ALLEGED TRADEMARK DILUTION (FEDERAL) 47. In response to Paragraph 47, Defendants incorporate by reference the responses to

Paragraphs 1 through 46 as set forth above. 48. 49. 50. Defendants deny the allegations contained in Paragraph 48 of the Complaint. Defendants deny the allegations contained in Paragraph 49 of the Complaint. Defendants deny the allegations contained in Paragraph 50 of the Complaint. 5

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51. 52. 53.

Defendants deny the allegations contained in Paragraph 51 of the Complaint. Defendants deny the allegations contained in Paragraph 52 of the Complaint. Defendants deny the allegations contained in Paragraph 53 of the Complaint. COUNT IV ALLEGED VIOLATION OF MAINES UNIFORM DECEPTIVE TRACE PRACTICES ACT

54.

In response to Paragraph 54, Defendants incorporate by reference the responses to

Paragraphs 1 through 53 as set forth above. 55. 56. 57. 58. Defendants deny the allegations contained in Paragraph 55 of the Complaint. Defendants deny the allegations contained in Paragraph 56 of the Complaint. Defendants deny the allegations contained in Paragraph 57 of the Complaint. Defendants deny the allegations contained in Paragraph 58 of the Complaint. COUNT V ALLEGED TRADEMARK INFRINGEMENT (COMMON LAW) 59. In response to Paragraph 59, Defendants incorporate by reference the responses to

Paragraphs 1 through 58 as set forth above. 60. 61. 62. 63. 64. 65. Defendants deny the allegations contained in Paragraph 60 of the Complaint. Defendants deny the allegations contained in Paragraph 61 of the Complaint. Defendants deny the allegations contained in Paragraph 62 of the Complaint. Defendants deny the allegations contained in Paragraph 63 of the Complaint. Defendants deny the allegations contained in Paragraph 64 of the Complaint. Defendants deny the allegations contained in Paragraph 65 of the Complaint. COUNT VI UNFAIR COMPETITION (COMMON LAW)

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66.

In response to Paragraph 66, Defendants incorporate by reference the responses to

Paragraphs 1 through 65 as set forth above. 67. 68. 69. 70. 71. 72. Defendants deny the allegations contained in Paragraph 67 of the Complaint. Defendants deny the allegations contained in Paragraph 68 of the Complaint. Defendants deny the allegations contained in Paragraph 69 of the Complaint. Defendants deny the allegations contained in Paragraph 70 of the Complaint. Defendants deny the allegations contained in Paragraph 71 of the Complaint. Defendants deny the allegations contained in Paragraph 72 of the Complaint. COUNT VII ALLEGED CYBER-SQUATTING (15 U.S.C. 1125(d)(1)) 73. In response to Paragraph 73, Defendants incorporate by reference the responses to

Paragraphs 1 through 72 as set forth above. 74. 75. 76. 77. 78. 79. 80. 81. Defendants deny the allegations contained in Paragraph 74 of the Complaint. Defendants deny the allegations contained in Paragraph 75 of the Complaint. Defendants deny the allegations contained in Paragraph 76 of the Complaint. . Defendants deny the allegations contained in Paragraph 77 of the Complaint. Defendants deny the allegations contained in Paragraph 78 of the Complaint. Defendants deny the allegations contained in Paragraph 79 of the Complaint. Defendants deny the allegations contained in Paragraph 80 of the Complaint. Defendants deny the allegations contained in Paragraph 81 of the Complaint. AFFIRMATIVE DEFENSES FIRST AFFIRMATIVE DEFENSE Failure to State a Claim

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The Complaint fails to allege specific, non-conclusory facts sufficient to raise a claim upon which relief can be granted and are therefore barred under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009). SECOND AFFIRMATIVE DEFENSE Failure to Allege and/or Mitigate Damages Plaintiffs claims are barred for failure to show Plaintiff has suffered any loss or damages as a result of any actionable conduct of Defendants. THIRD AFFIRMATIVE DEFENSE Laches Plaintiff's claims are barred by the doctrine of laches. FOURTH AFFIRMATIVE DEFENSE Acquiescence Plaintiffs claims are barred by the doctrine of acquiescence. FIFTH AFFIRMATIVE DEFENSE Estoppel Plaintiffs claims are barred by the doctrine of estoppels. SEVENTH AFFIRMATIVE DEFENSE Trademark Act Defendants reserve the right to rely on any and all judicially recognized defenses under the Federal Trademark Act, 15 U.S.C. 1051 et seq, including without limitation, that the purported trademark registrations are invalid, void, or unenforceable. EIGHTH AFFIRMATIVE DEFENSE Secondary Meaning Plaintiffs purported trademark is not inherently distinctive and lacks secondary meaning. NINTH AFFIRMATIVE DEFENSE Foreign Equivalents Plaintiffs claims are barred by the doctrine of foreign equivalents. 8

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PRAYER FOR RELIEF WHEREFORE, Defendants pray for judgment as follows: A. That Plaintiff take nothing by reason of their Complaint and that judgment

be rendered in favor of Defendants; B. C. D. That Plaintiff be ordered to pay Defendants attorneys fees and costs; That Plaintiffs claimed rights be declared invalid; and That Plaintiff be ordered to provide such further legal and equitable relief

as the Court deems just and proper. Demand for Jury Trial Defendants demand a jury trial on all counts so triable.

Dated: November 1, 2012

/s/ James G. Goggin James G. Goggin jgoggin@verrilldana.com /s/ Benjamin E. Ford Benjamin E. Ford bford@verrilldana.com Verrill Dana, LLP One Portland Square Portland, ME 04112 (207) 774-4000 Attorneys for Defendants

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CERTIFICATE OF SERVICE I hereby certify that on November 1, 2012, I electronically filed the above documents with the Clerk of Court using the CM/ECF System which will send notification of such filing to the following:

Aaron Johnson, Esq. at ajohnson@kenyon.com Howard Shire, Esq. at hshire@kenyon.com Mark E. Porada, Esq. at mporada@pierceatwood.com

Dated: November 1, 2012

/s/ James G. Goggin James G. Goggin Verrill Dana, LLP One Portland Square Portland, ME 04112 (207) 774-4000 jgoggin@verrilldana.com Attorney for Defendants

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